A look at the US Supreme Court's decision in Microsoft v. i4i

In 2009, a Canadian software development company out of Toronto named i4i Inc. won a $290 million law suit against Microsoft for wilfully infringing its patents.  The company developed a new form of document encoding known as XML (Extensible Markup Language). The versatility of the .xml extension lead to its integration into a number of software applications, including Microsoft Office. Microsoft, however, did not license the XML code.   

The Eastern District Court of Texas ruled in favor of i4i stating that a party accused of patent infringement, when asserting the invalidity of a patent, must convince the court of the invalidity by “clear and convincing evidence”.  This is a particularly high burden of proof and one not easily met.  

Photo by Darren Robertson

Microsoft fought the District Court’s interpretation in appeal but the outcome was the same.  Both the Court of Appeals for the Federal Circuit and the United States Supreme Court affirmed the trial judge’s decision and rejected Microsoft’s arguments demanding a lowering of the burden of proof and upheld the trial court’s ruling.

Justice Sotomayor wrote for a unanimous court (8-0 – Justice Thomas concurring. Chief Justice Roberts recused himself because he owns Microsoft stock) in saying that §282 of the American Patent Act of 1952 clearly states that a patent, once issued “shall be presumed valid”.  This places the burden of invalidating the patent on the other party. According to Sotomayor, it has long been settled law that the party alleging invalidity must prove it by clear and convincing evidence.  She cites a 1984 decision rendered by Judge Rich, one of the principal drafters of the 1952 Patent Act, supporting the clear and convincing standard.  In the 30 plus years since the aforementioned decision, the CAFC has never varied their opinion. 

Microsoft’s invalidity defense was twofold: First, they attempted to apply §102(b) of the Act that prohibits the issuing of patents when:

“the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States”

This provision, known as the “on-sale bar”, says that a patent that has been used or sold or has been disclosed in a publication more than one year before the patent is applied for is not patentable under the law. Microsoft claimed that the entirety of the XML patent was disclosed in a previously released i4i product called “S4”.  The Court, however, rejected this defence after hearing from two expert witnesses (the two principal inventors of the XML patent).

Microsoft’s second argument relied on the fact that when the XML patent was being examined, the United States Patent and Trademark Office (USPTO) didn’t have the S4 patent to compare it to.   Relying on a recent decision, Microsoft asserted that when it is brought to light that the PTO didn’t have all relevant information during examination, the strength of their examination is greatly diminished.  Microsoft ultimately asserted that this lowered level of deference for the PTO should concordantly lower the standard of proof incumbent on a party alleging invalidity. 

Both of these arguments were utterly rejected by the Supreme Court who said that the “hybrid” burden of proof system Microsoft proposes has no precedent and no founding in law.  

Though the decision in this case turned primarily on statutory interpretation and the intention of Congress in enacting the law, Microsoft tried as hard as possible to make it seem that the issue at hand was the prior disclosure of the patent and the incomplete analysis of the PTO. 

Many IP professionals are skeptical of the value of this decision.  Surely had the ruling gone the other way, this case would be of paramount importance as it would be reversing a 35 year old interpretation that has thus far remained unchallenged.  Though some may question the importance of this decision outright, I am of the belief that the Supreme Court’s verdict affirms at least two points.

First, that the courts still show a high degree of deference towards the USPTO and therefore should continue to exercise judicial restraint in overturning its rulings.

Second, that smaller companies are capable of defeating behemoths like Microsoft when the law is in their favor.  Doubtless Microsoft fielded an expert team of attorneys who managed to conjure up and elucidate arguments that could have overturned a solid precedent.  Add to that the fact that a long list of tech giants such as Facebook, Google, Apple, Verizon etc. rallied behind Microsoft in support and you have a true David v. Goliath victory in favour of the Canadian i4i Inc. 

In my humble opinion, I think this case is most interesting for its rallying cry effect on smaller businesses than its actual implications on the legal framework of the US Patent system. As damaging as a $290 million verdict is, one would posit that if anyone could absorb such a loss it would be a company on the scale and magnitude of Microsoft. Though this decision surely is a blow to the tech giant, I don’t think too many people are (or should be) balling their eyes out for them right now...except Chief Justice Roberts that is...

Inside the Protect IP Act

Early last month, United States Congress introduced a Bill entitled “Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 2011”, also known as the “Protect IP Act”.  The stated goal of the legislation is quite simple: to protect the economic interests of American intellectual property owners from theft and piracy online. 

Shortly after the Bill was tabled, Senator Ron Wyden (D-Oregon) exercised his power to put a temporary hold on the Bill.  In his estimation, the Act, as worded would have the undesired effects of limiting free speech and negatively impacting e-commerce. In a press release on the issue Wyden said: 

"At the expense of legitimate commerce, [the bill's] prescription takes an overreaching approach to policing the Internet when a more balanced and targeted approach would be more effective. The collateral damage of this approach is speech, innovation and the very integrity of the Internet."

The senator’s appraisal of the Bill is quite accurate.  As written, the Protect IP Act gives power to the Attorney General as well as private IP rights holders to not only sue owners and operators of American based websites, but to execute what is known as an In Rem action- essentially an action against property without involving the owner- against web sites where the owner is not American or cannot be located.  

Many critics of the Bill including The Electronic Frontier Foundation (EFF) warn that allowing individual IP owners to execute actions In Rem will limit the ability of site owners to defend themselves before a judgement is rendered. EFF points out that this is ostensibly an offence to due process. 

The Bill vests plaintiffs with the powers of restraining orders, preliminary-injunctions and injunctions to enforce their rights against non-domestic domain owners so long as their service is being used by Americans and that the service “harms holders of United States intellectual property rights.”

One of the tools the Protect IP Act would provide rights holders is the ability to prevent what the Bill calls Domain Name System (DNS) servers (such as Internet service providers) from allowing access to infringing web sites.  In other words, access to websites being attacked in a law suit under this law would be restricted at the ISP level. This will obviously put an additional strain on ISP’s; one the government won’t reimburse them for.  

 

EFF also warns that the definition of DNS in the law is too broad and could easily be interpreted to cover things like personal and corporate e-mail clients, routers and even operating systems.  It should be noted that such interpretations, if ever made, would be left to the courts.  That being said, powerful IP rights holders tend to hire pretty good lawyers.

Two other major groups are affected by the legislation: online financial transaction providers (most notably PayPal) and online advertising services.

E-commerce providers would be forced to cease all payments and transfers of funds being made to or by American customers located in the US upon being presented with an order to do so. Online ad companies would be forced to immediately stop doing business with any site listed in the order. The Bill says this must be done “expeditiously”, once again, at the cost of the service provider.

 I share Senator Wyden’s feelings on the Bill in that even though the cause may be noble, the legislation may produce broad and overarching undesirable effects.

First, the targets of this Act are stated as being entities “dedicated to infringing activities”. Though the U.S  Supreme Court has rendered decisions on the subject (See: Sony Corp. of America v. Universal City Studios, Inc.; A&M Records, Inc. v. Napster, Inc.; MGM Studios, Inc. v. Grokster, Ltd.), the introduction of this law would likely cause a flare up in the debate on what is and what isn’t “dedicated to infringing activities”.

Second, the fact that any IP owner can go and get a judgement In Rem against a website so long as they complete “due diligence” in attempting to identify the domain owner is a little farfetched.  If nothing else, it certain disrupts due process and what most legal systems refer to as Audi Alterem Partem, a principal of fundamental justice essentially meaning the right to plead ones case and make arguments against the other party’s assertions. What if the web site owner is out of the country or otherwise indisposed when the plaintiff is supposedly trying his best to locate them? 

Third, it’s my belief that this Bill may ultimately come to cover not only the use infringing material at the front end or service level of the site (eg. Streaming of pirated TV shows or movies) but the coding level as well. 

For example, a company that owns patents or copyrights on a web player or its supporting software that believes their player is being used by a site would be able to avail themselves to the remedies afforded by the Act.  It wouldn’t technically matter if the content being played on the players is infringing if the alleged use of the player on the website infringes someone’s software patent or copyright.

Finally, and perhaps most importantly to the average American, I fear that the additional economic burden sustained by ISP’s and e-commerce providers may ultimately be transferred onto the backs of consumers.  It would be unreasonable to assume that these corporations, in an act of benevolence, would bear these additional costs that do nothing but subtract from their bottom line.

It remains to be seen if Congress will scrap the Bill, re-tool it or carry on with the Bill in its current form.  Though the US (and Canada for that matter) may require new and up to date legislation that addresses the reality of online pirating, one can only hope that the final product will attempt the achievement of its goals with more finesse than the currently tabled version of the Protect IP Act.

Showdown Between Dental Associations at the Trademark Opposition Board

When I read the summary of this TMOB case I just knew I had to write about it. This is a perfect example of the absurdity that can result from time to time in the IP world.  

In a decision dated January 24^th 2011, the trademark opposition board ruled in favour of the Canadian Dental Hygienists’ Association in their effort to foil the Canadian Dental Associations attempt to register a trademark for “NATIONAL DENTAL HEALTH MONTH/MOIS NATIONAL DE LA SANTÉ DENTAIRE”.

The Board member ruled that the mark was invalid on two grounds: 

First, The CDHA (opponent) was successful in convincing the board that the CDA’s (applicant) marks was confusing with their own: “NATIONAL DENTAL HYGIENE WEEK/SEMAINE NATIONALE DE L’HYGIÈNE DENTAIRE”.  It was found that the marks were very similar in appearance and that the nature of the trade or service undertaken by the parties was- though not identical- quite similar.  That coupled with the Board’s conclusion that CDA did not provide any evidence of use of the mark was sufficient to cause confusion in the eyes of the average consumer. 

Second, the Board found that the mark was descriptive of the service and therefore not eligible for registration under the trademark act. The CDA disclaimed all the individual words in the mark claiming benefit of protection on the whole phrase only.  The Board found that the phrase in English and its French translation were both descriptive in the respective language.  

The CDA argued for a narrow interpretation of section 12(1)(b) TMA which says that a mark is may not be registered when:

(b) Whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language (emphasis added).

They argued that the mark is only invalid if it is descriptive or deceptively misdescriptive in English OR French and not when it is descriptive in both languages at the same time.  

In the past, the TMOB has interpreted this section to mean that a mark composed of words in both English and French can escape the fate of invalidity even though the individual words may be purely descriptive in either language. For example, in Coca-Cola Co. v. Cliffstar Corp (1993), 49 C.P.R. (3d) 358 (T.M.O.B.), the Board allowed the registration of “LE JUICE” even though each word on its own would not be eligible for protection nor would the mark if both words were in either English or French (“THE JUICE” or “LE JUS”).

In this case however, the Board member found that argument unconvincing. Including a mere translation of a descriptive phrase does not make the mark as a whole any less descriptive. The English version is descriptive in English and the French version is descriptive in French. Allowing the mark in this case would be a misinterpretation of parliament’s intentions in enacting the measure. 

Ironically, the Board member mentioned in passing that it was not her place in the course of this matter to comment on the descriptive nature of the opponents mark.  In claiming that the CDA’s mark is confusing with their own and then claiming that the mark is descriptive they essentially labeled their own mark as descriptive.  One can’t help but laugh at this instance of pot and kettle.

Though I completely agree with the ruling of the Board in this case, I think it represents somewhat of a low point in the world of trademarks.  After all, these are two non-profit entities whose common mission is the promotion of dental health and hygiene in Canada.  The fact that these two bodies are registering and opposing trademarks of this nature is kind of sad.  The fact that tax payer dollars are going into settling these matters is both sad and frustrating. 

But hey, at least internet is affordab…forget it.