The U.S. Patent and Trademark Office (USPTO) issued a formal ruling Tuesday that a tiny Canadian firm’s patent is valid, paving the way for Microsoft to appeal the $290 million patent infringement case to the U.S. Supreme Court.
That is, if the Supreme Court, which receives hundreds of requests each term, will agree to hear the case.
Tuesday’s issuance of a so-called “Reexamination Certificate,” which the USPTO said in May it planned to issue, was expected — but was still not good news for Microsoft. The certificate formalizes the mid-May decisionthat the USPTO had upheld the patent’s validity.
“The USPTO put [i4i’s] patent through a rigorous examination, so we’re delighted it got a clean bill of health,” Loudon Owen, chairman of Toronto-based i4i, told InternetNews.com.
A Tyler, Texas jury last year found that Microsoft had infringed i4i’s patent for a custom XML editor in Microsoft Word 2003 and 2007, as well as in Office 2004 and 2007. I4i sued Microsoft in 2007, claiming that the software giant had infringed its 11-year-old patent — Patent 5,787,449.
The smaller firm claimed that Microsoft had fooled it into revealing its secrets and then wrote its own custom XML editor.
The jury found for i4i in May 2009, and in August, the judge awarded i4i approximately $290 million.
Microsoft appealed the decision, but lost. A motion for the entire appeals courtto rehear the case was later denied.
In May 2010, Microsoft’s second line of defense also stumbled when the USPTO said its reexamination found i4i’s patent to be valid, and that it would release the Reexamination Certificate.
With the Reexamination Certificate (available here in PDF formatnow complete, Microsoft has fewer options to appeal.
“We continue to believe there are important matters of patent law that still need to be properly addressed, and we are considering our options for going forward,” Kevin Kutz, Microsoft director of public affairs, said in an e-mail to InternetNews.com.
In mid-June, Microsoft’s legal team petitioned the U.S. Supreme Court for an extension of time to file an appeal to the high court. That extension runs until August 27, according to the filing (available here as a PDF).
Stuart J. Johnston is a contributing writer at InternetNews.com, the news service of Internet.com, the network for technology professionals. Follow him on Twitter @stuartj1000.