Monday, March 21, 2011

Microsoft sues Barnes & Noble, Foxconn and Inventec over 5 patents infringed by Android -- quick first comments

I just saw that Microsoft has announced a patent lawsuit against Barnes & Noble, Foxconn and Inventec over five patents allegedly infringed by Android. Barnes & Noble sells the Nook e-book reader. I also read a post on Microsoft's corporate blog that says "Licensing is the Solution" for patent infringements by Android.

Microsoft filed a complaint with the US District Court for the District of Western Washington, which I have downloaded from, and one with the US International Trade Commission (ITC). Microsoft lodged complaints against Motorola in the same two fora, and asserted the same patents in both of them. I haven't yet seen the ITC complaint against Barnes & Noble but wouldn't be surprised if the ITC complaint mirrored the federal lawsuit, just like in the Motorola case. [Update] Meanwhile Bloomberg has confirmed that the ITC complaint mirrors the federal lawsuit.

There are five patents-in-suit. One of them was previously asserted against Motorola in a counterclaim; the other four patents have not been previously asserted against Motorola, but if they're infringed by Android, then Microsoft could always elect to do so. Given the breadth and depth of Microsoft's patent portfolio, this isn't surprising.

The patents-in-suit are:

At first sight, five patents may not seem to be a huge number, considering that in some other Android-related suits there are several dozen patents in play. But Barnes & Noble, Foxconn and Inventec will certainly be aware of the list of 23 patents asserted by Microsoft against Motorola (for the latest update on that dispute, read this blog post; there's also a visualization on Scribd).

While Barnes & Noble is the first defendant named in today's complaint, the implications of this lawsuit go way beyond just the Nook e-book reader. Microsoft also decided to sue manufacturing companies Foxconn and Inventec. If Microsoft prevails and obtains an injunction (and/or an ITC import ban) against those companies, they will be enjoined from selling any other Android-based products infringing the same patents unless there is a license agreement in place for a given product. According to Wikipedia, Foxconn manufactures devices for many major players, including some well-known vendors of Android-based devices such as Acer, Asus, Dell, Samsung and SonyEricsson.

Microsoft explains in the blog post I mentioned above that other companies are already paying royalties for Microsoft patents that read on Android:

"Last year, HTC took a license covering its Android-based smartphones, confirming the viability of our license-first approach. In the e-reader space, signed a patent license with Microsoft last year covering its Kindle device. And many other device makers have also taken licenses to Microsoft’s patents under a number of existing licensing programs."

HTC, and any other licensees compete with Barnes & Noble's Nook. For, Barnes & Noble is a particularly relevant competitor. If Barnes & Noble refused to pay (which is what Microsoft says), it's actually a matter of fairness that Microsoft enforces its patents because otherwise those who respect Microsoft's rights would be at a competitive disadvantage versus non-paying infringers. I would personally prefer for no such patents to be granted in the first place -- but if they exist and are enforced, which is the law of the land, then there must be a level playing field. A lawyer working for various companies paying patent royalties told me last year how important it is that everyone in a given market has to pay royalties or, alternatively, no one.

If you'd like to be updated on the smartphone patent disputes and other intellectual property matters I cover, please subscribe to my RSS feed (in the right-hand column) and/or follow me on Twitter @FOSSpatents.

Share with other professionals via LinkedIn: