Step one in the process: Microsoft files appeal of Word injunction

Almost everyone who has been observing the patent infringement case in US District Court in Eastern Texas surrounding Microsoft Word (Betanews correspondents included) have predicted that this is the opening round in a very long dance whose steps are pretty much pre-determined: The merits of Canadian software firm i4i's case seem questionable at the very least, and cases like this are typically either overturned on appeal or settled out of court. But one can't help feeling that there's an ever-so-slight chance of this being not really a dance but a train wreck in progress, the slim possibility that the ironically named i4i has found the one loophole in US patent law just waiting to be exploited: the notion that a heretofore unclaimed function that should seem obvious on its face, may not qualify as prior art for the sake of a patent challenge.

Yesterday, as first reported by the Seattle P-I, Microsoft filed its emergency motion for a stay of injunction, with the US Federal Circuit Court of Appeals. It could have filed a boilerplate appeal, simply saying the company has a viable case but needs time to present it. It didn't. Instead, it gave everyone including i4i a peek at the big cards it's willing to play, an advance look at the Supreme Court argument it's willing to make if the case should go that far.

What i4i has been contesting is not, as some have reported, that it created XML or custom XML. Rather, i4i says it developed and patented a method for separating markup tags from content when formatting a file that uses custom XML. Since Office 2003, Microsoft has been using the concept of separating tags from content for custom XML, in a way that the company's attorneys cite that i4i actually publicly praised at the time the feature was introduced.

Here's the argument: The same concept is used to format non-custom XML files; and i4i, Microsoft states, already conceded that fact, saying that application of the concept is non-infringing. If that's the case, i4i's single patent merely authenticates the application of an existing and obvious function, to an existing and obvious purpose.

"i4i has not alleged that use of Word necessarily infringes the '449 patent," reads Microsoft's appeal. "Rather, i4i has alleged that Word users infringe the '449 patent only when they use Microsoft's software to open files of certain formats (.xml, .docx, or .docm) that contain custom XML instructions, asserting that when used in this manner, Word separates tags from content and stores them in the manner claimed by the '449 patent. It is undisputed that opening files and the familiar and most-common '.doc' and '.dot' formats -- even if such files contain custom XML -- is not an infringing act."

The concept of separating formatting instructions from content, and utilizing an encoded map to place the instructions in their proper place, predates XML considerably. As Microsoft said, the old .DOC and .DOT formats utilized this method; but actually, so did WordPerfect. With regard to markup languages specifically, Microsoft cites what it claims as prior art in its appeal: the use of metacode separation in two different SGML-based editors called Rita and DeRose -- a realization that has already led the US Patent Office, cites Microsoft, to reach a preliminary conclusion that i4i's patent is invalid.

So Microsoft's argument can be borne out like this: If i4i has no complaint about Microsoft's method in the general sense, but only in the specific instance of custom XML, then its complaint is not about the methodology of metadata separation, but the application of the concept of it to a market that i4i would claim for itself. And i4i has no claim on that, since the idea pre-dates both companies' involvement in word processing. A patent cannot be used to claim a market.

The lower court did throw out 13 of i4i's claims, but ended up keeping the few on which it eventually prevailed. Keeping those claims, Microsoft's appeal says, reflects an inconsistency on the part of the lower court's interpretation of the i4i '449 patent. The patent requires the interpreter program (in this case, the word processor) to enable independent manipulation of the content and the code that formats the content, in such a way that one can be changed without the interpreter having to pore through the map of the other. Microsoft says it was going to argue that its methodology did not meet that requirement of the i4i patent, and therefore did not match i4i's methods that it says Microsoft infringed upon. But then the court, Microsoft said, accepted the arguments of an i4i expert witness who stated on the stand that independent manipulation of the code and content was a "benefit" of the patented method, not a requirement.

So Microsoft is saying i4i changed the rules in mid-game, and the Texas court went along with it.

In closing its appeal, Microsoft cited the final ruling in a landmark 1892 patent dispute, Pope v. Gormully: "It is as important to the public that competition should not be repressed by worthless patents, as that the patentee of a really valuable invention should be protected in his monopoly." When Microsoft is willing to use that last word in its own defense, it's signaling that it has no fear.