Microsoft Asks for Review of i4i Patent-Infringement Decision

Microsoft requests that all 11 judges on the U.S. Court of Appeals for the Federal Circuit review a long-running case between the software giant and i4i, a small tech company that alleges that its XML-related patent is violated by Microsoft Word's coding. In upholding the 2009 verdict in the case, the court ordered Microsoft to stop selling copies of Word by Jan. 11. Although Microsoft issued a patch for Word that theoretically sidesteps the alleged patent violation, it likely wants to negate the nearly $300 million in accumulated penalties leveled against it by the court.

Microsoft has asked for a review of a recent court decision, apparently wanting all 11 judges on the U.S. Court of Appeals for the Federal Circuit to review the complaint against it by Toronto-based i4i.

On Dec. 22, the U.S. Court of Appeals for the Federal Circuit decided to uphold the verdict in a patent-infringement case leveled by i4i against Microsoft, and ordered that Microsoft Word be pulled from store shelves by Jan. 11.
"We look forward to the next steps as the court considers our petition, while continuing to move ahead with our plans to comply with the injunction by January 11," Microsoft spokesperson Kevin Kutz told Reuters on Jan. 7.
The original verdict in the case, handed down in August, ordered Microsoft to remove copies of Word, which allegedly included code that violated i4i's XML-related patent from store shelves, by mid-October. Microsoft appealed that decision, and on Sept. 3 the U.S. Court of Appeals for the Federal Circuit granted Microsoft's request to keep selling Word for the duration of the court proceedings. Microsoft's appeal also sought relief from the nearly $300 million in accumulated fines related to the case.
A full breakdown of the lawsuit, and how Word allegedly violated i4i's patent, can be found here.

Should the court uphold its verdict despite Microsoft's most recent petition for review, Microsoft would still be allowed to provide technical support to customers. However, the company would be unable to instruct users on how to use the custom XML editor or to market copies of Word that allegedly violate the patent.
On Dec. 22, less than a day after the court upheld the verdict, Microsoft issued a patch that seemed to allow Word to sidestep the alleged infringement.
"With respect to Microsoft Word 2007 and Microsoft Office 2007, we have been preparing for this possibility since the District Court issued its injunction in August 2009 and have put the wheels in motion to remove this little-used feature from these products," Kevin Kutz said in a Dec. 22 statement. "Therefore, we expect to have copies of Microsoft Word 2007 and Office 2007, with this feature removed, available for U.S. sale and distribution by the injunction date" of Jan. 11.
That last sentence suggested that Microsoft could have fixed copies in stores by Jan. 11. The 12.9MB patch itself was immediately made available on Microsoft's OEM Partner Center Website. After its installation, any custom XML elements will be removed from documents with those file types.
On the OEM site, a note read: "Microsoft has released a supplement for Office 2007 (October 2009). The following patch is required for the United States. The patch will work with all office 2007 languages. ... After this patch is installed, Word will no longer read the custom XML elements contained within DOCX, DOCM or XML files."

In his Dec. 22 statement, Kutz indicated that Microsoft would continue to fight the case, particularly with regard to the massive fines leveled against it by the court.
"While we are moving quickly to address the injunction issue," Kutz said, "we are also considering our legal options, which could include a request for a rehearing by the Federal Circuit Court of Appeals en banc or a request for a writ of certiorari from the U.S. Supreme Court."
It seems increasingly clear now which strategy Microsoft has chosen to pursue.