Microsoft issues Word patch, appeals i4i decision

Microsoft issued a patch this week for Word 2007 to comply with a court ruling that enjoins the use of i4i's proprietary "custom XML" technology in Microsoft's product.

In addition, Microsoft plans to seek additional legal remedies in the case. On Friday, Microsoft petitioned the Federal Circuit Court of Appeals seeking a rehearing of the i4i vs. Microsoft case by that court.

Last year, Toronto-based i4i sued the software giant, alleging infringement of its patent (United States Patent No. 5,787,449). The patent describes an invention that allows the creation of user-defined schemas using XML. The technology can be used to "open and save a document with application-specific XML coding," according to an i4i spokesperson via e-mail. It's primarily used by businesses and governments "to help them manage the mountains of content they produce everyday," the spokesperson added.

A Texas jury had awarded i4i approximately $290 million — plus interest and court costs — in May of 2009. The Texas district court judge overseeing the case subsequently ordered Microsoft to stop selling future Word products that utilize the technology after a certain date, which was later pushed out to Jan. 11, 2010. This prohibition on Word sales was upheld in December by the federal appeals court.

On Wednesday, Microsoft responded to the injunction by issuing an update for Word 2007. The patch is intended for copies of Word 2007 bought or licensed after Jan. 10, 2010. Microsoft indicated in its patch notes that users "must install this update if you are instructed by Microsoft in a separate communication."

Microsoft refers to a similar patch for Word 2003 in a KnowledgeBase article, but it was not clear at press time where to get it.

The spokesperson for i4i confirmed that the court's injunction applies to future versions of Word, as well as Word 2007 and Word 2003. i4i plans to continue to monitor Microsoft's compliance, including the new patch.

"i4i will take whatever steps it can to evaluate the patch to determine its impact on Word and how this relates to Microsoft’s obligations under the terms of the injunction," the i4i spokesperson explained.

Kevin Kutz, director of public affairs at Microsoft, described what Microsoft plans to contest in its appeal.

"The petition details significant conflicts we believe the December 22 decision creates with established precedents governing trial procedure and the determination of damages, and we are concerned that the decision weakens judges' authority to apply appropriate safeguards in future patent trials," Kutz explained in an e-mailed statement. "We look forward to the next steps as the Court considers our petition, while continuing to move ahead with our plans to comply with the injunction by January 11, 2010."

In statements made in its 2009 appeal, Microsoft said that the injunction would threaten sales and result in chaos with OEMs such as HP and Dell. Microsoft watcher Matt Rosoff — research vice president for the consulting firm Directions on Microsoft — was skeptical.

"In my opinion, this is Microsoft's legal team doing due diligence to try and get the $290 million fine overturned or at least postponed," Rosoff said in an e-mail. "I doubt it'll work. This is sort of the legal equivalent of a 'Hail Mary' pass."