The seemingly never ending Microsoft v. i4i dispute continued on to the doorstep of the Supreme Court last week. In 2009, Microsoft was found to have infringed i4i’s 5,787,449 patent, which allegedly claims certain XML translation features of Microsoft Word. An appeal to the CAFC earlier this year was unsuccessful. On August 27th, Microsoft filed a petition for certiorari questioning the lower court’s use of the clear and convincing standard relative to art not before the USPTO during prosecution of the original patent application.
Along the way, Microsoft sought ex parte reexamination of the ‘449 Patent (90/010,347), largely as an afterthought to hedge against a willfulness finding. Not surprisingly, since the request ignored definitions of certain claim terms of the ‘449 Patent specification, the reexamination attempt was unsuccessful and all claims exited reexamination in July of this year. With the trail now over, and appeal options exhausted (save the last ditch appeal to the Supreme Court), it would seem that at least the patent reexamination chapter of this saga was complete.
Yet, as reported by IPWatchdog yesterday, Microsoft has filed a second request for ex parte reexamination of the ‘449 patent (90/011,198) just last Tuesday. So, what exactly is Microsoft hoping to accomplish?
Immediately prior to the printing of the reexamination certificate in July of this year, Microsoft filed some petitions with the USPTO. As a third party has no right to file any argumentation or petitions in an ongoing ex parte reexam, these filings appear to have been expunged, although the filings receipts remain. The filing receipts indicate that 182/183 petitions were filed including appendices that directed the PTO to certain litigation positions relative to claim construction. These filings appear to have argued that the Patent Holder’s had taken inconsistent positions in the parallel proceedings, characterizing certain statements before the court as admissions that the USPTO should consider. The PTO did not consider these filings, as they were procedurally improper….the first patent reexamination formerly concluded thereafter.
While the most recent request for patent reexamination is not yet scanned to public PAIR, many of the same appendices are present as those expunged in the first reexamination, along with additional litigation transcripts, as well as additional prior art.
Reading the petition for cert (which you should if you haven’t yet) Microsoft is arguing that the use of the clear and convincing evidentiary standard relative to art never before the PTO made the difference in the case. Microsoft argues that the Patent Owner admitted that certain software manuals included the patented features, but since the underlying software code was not available, the clear and convincing standard could not be met.
If I were a betting man (and I am, take the Falcons to cover this Sunday) I would bet that Microsoft is trying to get the Patent Office to accept the admission theory laid out in their petition for cert. In other words, Microsoft is arguing to the Supreme Court that a preponderance of evidence standard would make the difference….if the second patent reexamination goes forward as a “substantial new question” under this very standard, with the same art, such would be compelling evidence to present to the court should cert be granted.
At this point, Microsoft has nothing left to lose.