Saturday, March 31, 2012

Motorola uses a definition from a Microsoft Press book against a Microsoft patent

The evidence that litigants adduce in patent infringement lawsuits can be exhilarating, such as one of Samsung's tablet design prior art references. Motorola is now turning one of Microsoft's own books against it in a Seattle lawsuit that is mostly about Motorola's alleged breach of FRAND licensing obligations but also involves a couple of patents that Microsoft used in counterclaims against Motorola.

The patent at issue is U.S. Patent No. 7,411,582 on a "soft input panel system and method". Microsoft is also asserting the European equivalent, EP1040406, against Motorola (the Munich I Regional Court held a first hearing on this one in February). This patent covers the concept of having an operating system provide a soft input panel, such as a software-generated on-screen keyboard, to all applications (as opposed to apps having to come with their own input panels).

Motorola claims that Android does not infringe this patent, and it appears that one of its non-infringement theories is based on the fact that Android brings up an on-screen keyboard after the user activates a text field that accepts entries, as opposed to requiring the user to tap on a keyboard symbol. (Actually, in some situations Android devices do require just that: on my Galaxy Note it is necessary to tap on a keyboard icon to go back from the stylus input, or optical character recognition, mode to the software-generated keyboard).

Microsoft's proposed interpretation of the term "icon" for the purposes of this patent is "an on-screen representation of something". Motorola writes that the meaning of the word "icon" is "surprisingly" in dispute, and proposes "a small image displayed on the screen to represent an object that can be manipulated by the user".

The funny story here is that Motorola's proposed definition is derived from the third edition of the Microsoft Press Computer Dictionary:

That particular edition was published in 1997 (the year with respect to which the patent claims priority):

On its page 243, that book provides the following definition of "icon":

Microsoft argues that Motorola's Android-based devices infringe the '582 patent even based on that definition. Motorola dismisses Microsoft's proposed construction as "overbroad".

In my opinion, there's no doubt that the Microsoft Press book back in 1997 defined icon too narrowly because icons don't necessarily represent objects that the user can manipulate. In other words, the book certainly has a quality problem in this respect, while the patent may not. Microsoft's proposed construction, "an on-screen representation of something", is derived from some other dictionaries -- books that at some point presumably competed with Microsoft's own book. I haven't looked at this patent and its prosecution history in sufficient detail to know whether or not Microsoft's broader proposal is appropriate for the particular purposes of this patent. We will find out soon how the judge decides to interpret the term.

It would certainly be ironic if Motorola ultimately owed a finding of non-infringement in no small part to a definition a Microsoft Press book provided 15 years ago. Even though the outcome of this patent infringement claim should depend on what the appropriate claim construction is under patent law rather than what a Microsoft publication said 15 years ago, Motorola certainly made a smart move by proposing a definition that was published in Microsoft's name and forcing Microsoft to rely on definitions provided by third parties.

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