Victor Krichker and Maya Medeiros of Bereskin & Parr LLP have posted the following remarks concerning the above case on the Bereskin & Parr website:
“December 7, 2010
U.S. Supreme Court will hear Microsoft’s appeal of a judgment awarded to Toronto-based i4i
The Supreme Court of the United States (SCOTUS) will hear Microsoft’s appeal to overturn a judgment finding that Microsoft Word infringes U.S. Patent Number 5,787,449 held by Toronto-based i4i. The judgment awarded US$290 million in damages to i4i and issued a permanent injunction barring Microsoft from selling infringing versions of Microsoft Word. The injunction has been stayed pending the appeal. The judgment is said to be the largest patent infringement verdict ever to be affirmed on appeal.”
This case is jurisprudentially important because it will review the standard for testing the validity of an issued US patent, namely whether such testing should proceed on the basis of the standard of a “preponderance of evidence” as opposed to a standard of “clear and convincing evidence”, depending on whether prior art was reviewed by the US patent office.
Here is a short characterization of the US patent under appeal taken from the face of the patent:
“United States Patent 5,787,449 Vulpe, et al. July 28, 1998
Title: Method and system for manipulating the architecture and the content of a document separately from each other
A system and method for the separate manipulation of the architecture and content of a document, particularly for data representation and transformations. The system, for use by computer software developers, removes dependency on document encoding technology. A map of metacodes found in the document is produced and provided and stored separately from the document. The map indicates the location and addresses of metacodes in the document. The system allows of multiple views of the same content, the ability to work solely on structure and solely on content, storage efficiency of multiple versions and efficiency of operation.”
This present posting is about the Canadian patent based on the same invention.
The corresponding Canadian patent CA2150765 is available here.
The administrative Status of this Canadian patent is here.
In other words, this Canadian patent lapsed beyond recall as of June 1, 2004 for nonpayment of a $100 annual Canadian maintenance fee!
The maintenance fee history over the previous years shows that the annual fee was always paid on the last day. This could be interpreted as the existence of a condition of financial stress on the part of the patent owner. However, payment on the very last day may be indicative of something else, possibly considerable ambivalence as to whether the fee should be paid at all.
No official Agent of Record is shown as being associated with this patent on the CIPO webpage.
What does this all mean? We can only guess at the drama behind the facts that have led to such an enormous judgment for damages in the United States while the Canadian patent was allowed to lapse.