OS and Software > All Things Unix > ITC Lawyer: Barnes & Noble Didn't Infringe MS Patents

The big news being reported by Bloomberg* is that Jeff Hsu, a staff attorney at the ITC, said in an interview he will be recommending that ITC Judge Theodore Essex find Barnes & Noble has not infringed three Microsoft patents. Essex rules in April [April 27, 2012]on that.

If I were a FUDster, I'd write that this means Barnes & Noble has prevailed, but I just tell you the truth, which is that this is one step in a longer process. It is, undeniably, however, fabulously good news for Barnes & Noble.

It is also not a total surprise, in that the quality of Microsoft's patents is pitiful. It may also explain why Microsoft keeps dropping patents from the case. Microsoft says it's doing it to "streamline the investigation"...

Microsoft typically does not allow cases to reach a final decision if it thinks it might lose. That way, the claims live to fight against the next victim, I guess. So what I believe is that it is dropping the '522 patent because it's a stupid patent that won't survive a close examination, but it might come in handy in private negotiations over a license if folks aren't paying close attention or who'd just rather pay than be sued.

The case is part of a strategy by Redmond, Washington-based Microsoft to push Barnes & Noble into paying patent royalties for the Nook, which runs on Google Inc.’s Android operating system. Microsoft claims all Android devices use its technology and has said it collects fees on 70 percent of Android smartphones in the U.S.

Barnes & Noble has refused to pay Microsoft and complained to the government about its adversary’s tactics. Microsoft "uses these patents to demand that every manufacturer of an Android-based mobile device take a license from Microsoft and pay exorbitant licensing fees," Barnes & Noble said in a trade commission filing.

Essex has thrown out the patent misuse claim, leaving only the question of whether the patents are valid and have been infringed.

what "technology" does MS have? oh let me guess since its software patents its likely something dumb like "Use of icons to represent programs"

Barnes & Noble is asking the U.S. International Trade Commission to reconsider its decision last week to to dismiss Barnes & Noble's "patent misuse" defense in its case against Microsoft.

A motion, filed with the agency by Barnes & Noble lawyers yesterday, asks the agency to review the ruling by Administrative Law Judge Theodore Essex, which the company says "rests on both erroneous conclusions of law and a misstatement of the facts." The bookseller argues that the ruling doesn't address its arguments or analyze them under the appropriate patent laws.

In the new filing, Barnes & Noble also blasted Microsoft's tactics of seeking licensing fees from device makers that use Google's Android mobile operating system, which powers the Nook devices.

"Barnes & Noble asserts that Microsoft's conduct in connection with its 'Android licensing program,' when examined as a whole, constitutes patent misuse because through this conduct Microsoft is leveraging trivial patents--patents that could otherwise easily be worked around--in order to charge licensing fees for products that do not infringe any Microsoft patents at all," the company said in its filing.

Both Barnes & Noble and Microsoft declined to comment on the filing.

Barnes & Noble has now filed a petition for review of the order on the following bases:

The ALJ’s decision rests on both erroneous conclusions of law and a misstatement of the facts. Rather than reviewing all facts in the light most favorable to Barnes & Noble, as is required under ITC precedent, the ALJ’s decision actually mischaracterizes Barnes & Noble’s factual allegations (and the evidence supporting them) and, indeed, simply overlooks the central basis for Barnes & Noble’s patent misuse defense.

Consistent with the Federal Circuit’s en banc decision in Princo Corp. v. International Trade Commission, 616 F.3d 1318 (Fed. Cir. 2010), Barnes & Noble alleges and has adduced evidence demonstrating that Complainant Microsoft Corporation (“Microsoft”) has impermissibly “leveraged” or broadened the scope of the patents-in-suit through its “Android licensing program”.

“And what they basically told us was, it doesn’t matter if you have defenses, whether you don’t infringe, whether our patents are invalid, you’re going to need to take a license, because there’s no way that you can get out of our grasp, that we have so many patents that we could overwhelm you.”

Patent misuse is characterized as a patentee’s act of “impermissibly broaden[ing] the ‘physical or temporal scope’ of the patent grant with anticompetitive effect”.

“We hold that conditioning the grant of the patent license upon payment of royalties on products which do not use the teaching of the patent does amount to patent misuse”.

quote:

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“And what they basically told us was, it doesn’t matter if you have defenses, whether you don’t infringe, whether our patents are invalid, you’re going to need to take a license, because there’s no way that you can get out of our grasp, that we have so many patents that we could overwhelm you.”

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I still don't understand why nobody is going after these guys for racketeering. Put a few MS guys in the slammer and see if this kind of behavior continues.

The real question here is, WTF was the patent examiner thinking when he granted patent 5,889,522?

We learned a couple weeks ago that Barnes & Noble lost a key preliminary decision to Microsoft in their patent dispute. A new court filing explains the judge’s reasoning, and sheds light on some of the legal issues behind Microsoft’s effort to collect patent royalties from Android device makers.

Theodore Essex, administrative law judge for the International Trade Commission, wrote in his Jan. 31 decision that Microsoft’s negotiations with Barnes & Noble over the use of Android in the Nook were “certainly hard bargaining,” but he concluded they didn’t qualify as patent misuse.

“Even assuming that these transactions and the related evidence establishes that Microsoft is bent on eliminating Android as a competitor, the mere fact that Microsoft is targeting Android for destruction is insufficient to establish an antitrust violation let alone patent misuse,” he wrote.

The judge’s ruling was previously noted in the court docket, but the text of his decision wasn’t initially made public. A redacted version was filed this week: PDF, 18 pages.