Court ruling puts brakes on sales of Microsoft Word

'Custom XML' at the heart of patent dispute; Microsoft must pay $290 million in damages

Microsoft's loss in a patent dispute with Toronto-based i4i LP means that it will have to stop selling Microsoft Word in U.S. markets.

The issue concerned the use of "custom XML" in Word in the Microsoft Office 2003 and Microsoft Office 2007 productivity suites. A final judgment (PDF) issued Aug. 11 by Leonard Davis, U.S. District Judge for East Texas, found that Microsoft "willfully" infringed on i4i's patent. A jury had handed down the verdict back in May.

The judgment orders Microsoft to stop selling Word products "that have the capability of opening a .XML, .DOCX, or .DOCM file ('an XML file') containing custom XML." In addition, Microsoft must pay $290 million in damages to i4i, as well as interest and other costs.

The ruling takes effect 60 days from the date of the judge's order, so Microsoft may have to stop selling Word in the United States by around Oct. 10, based on the court's conditions.

Microsoft didn't provide details on the case, but Microsoft spokesperson Kevin Kutz suggested that the company plans to fight the judgment.

"We are disappointed by the court’s ruling," Kutz stated in an e-mailed response. "We believe the evidence clearly demonstrated that we do not infringe and that the i4i patent is invalid. We will appeal the verdict."

Beyond XML

XML is a recommendation of the Worldwide Web Consortium and consequently is an open specification. However, i4i received a patent on a method of manipulating an XML document's content and architecture separately from each other.

"The invention does not use embedded metacoding to differentiate the content of the document, but rather, the metacodes of the document are separated from the content and held in distinct storage in a structure called a metacode map, whereas document content is held in a mapped content area," according to i4i's filing with the U.S. Patent and Trademark Office (USPTO).

The invention sounds a lot like using a schema to describe metadata for an XML file. However, it's apparently more complex and centers around i4i's custom XML.

"XML is clearly in the public domain," said i4i Chairman Loudon Owen. "What we have developed at i4i is what's customarily referred to as 'customer-centric' or 'custom XML,' which is allowing people to create customer-driven schema -- we'll call it templates or forms. So, while XML is used to tag and to mark the data that's created, our technology is used to create the whole schema and the management of the data."

The invention goes beyond XML, according to Owen.

"XML in and of itself -- just like the letters in the alphabet -- is not terribly useful," he said. "This implementation leverages XML."

The dispute concerned Microsoft Word, but Owen suggested that other applications using the technology might be next.

"Clearly, if there are other applications using it and other parties using it, and we have validation of the integrity of the patent itself, it could have a wider ranging application."

Other implications

The court's final judgment might even affect Microsoft's broader Office Open XML document format technology, which has been approved as an international standard (ISO/IEC 29500). Microsoft currently uses an earlier form of OOXML technology in Microsoft Office 2007 applications, such as Word, Excel and PowerPoint.

Michel Vulpe, the inventor of the patented i4i technology and founder of i4i, suggested that ISO/IEC 29500 might be affected.

"i4i will do its utmost to support custom XML users, which is particularly important to implement the ISO 29500 OOXML standard," Vulpe stated in a press release.

Owen provided further explanation about what Vulpe's statement might mean relative to ISO/IEC 29500.

"One, we are well aware of the standard and we clearly believe that it's a very important standard," Owen said. "Secondly, we believe this [patent] is potentially integral to the standard. And we've been in business since 1993. We're going to do whatever we can as a business to help people comply with the standard and support custom XML users."

Guy Creese, vice president and research director at the Burton Group, explained that the patent could hold trouble for the next version of OpenDocument Format (ODF), which is another international standard for document formats. The current version, ODF 1.1, doesn't use this custom XML approach, but "ODF 1.2 will move to a similar custom schema that OOXML has," he said in a phone interview.

The whole move toward using XML for document formats started in the first place because older binary file formats were proprietary to the software companies that devised them, resulting in document files that became unreadable as applications disappeared from general use, Creese noted.

On the idea that the Microsoft's other Office apps might be subject to litigation, Owen said that "we have not brought any other cases at this point."

i4i currently provides its XML technologies to life sciences companies such as Amgen, Merck and Bayer, as well as other industries, Owen said. For instance, the technology is used to help maintain the integrity of drug label data. The USPTO itself is a client and gave i4i an award for what it has done, he added.

Ironically, earlier this month, Microsoft was granted a U.S. patent on a technology that's also concerned preserving document formats using XML.

"The present invention is directed at providing a word processing document in a native XML file format that may be understood by an application that understands XML or to enable another application or service to create a rich document in XML so that the word processing application can open it as if it was one of its own documents," states the filing for Microsoft's patent.

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