US Patent Office affirms i4i patent, rejects Microsoft challenge

invisibleSHIELD case for iPadi4i has announced that the United States Patent and Trademark Office (PTO) has confirmed the patentability of all claims of the U.S. Patent 5,787,449 (‘449) that had been put into a reexamination proceeding by Microsoft.

Loudon Owen, Chairman of i4i, says in the press release, “This is a very material step in our litigation against Microsoft. Put simply: i4i’s patent is clearly and unequivocally valid. Even though Microsoft attacked i4i’s patent claims with its full arsenal, the Patent Office agreed with i4i and confirmed the validity of our ‘449 patent.” Mr. Owen adds, “The protection of patents and intellectual property is vital to small inventors and pioneers, like i4i, especially when confronted by giant industry competitors like Microsoft.”

Michel Vulpe, founder of i4i and co-inventor, says in the press release, “i4i is naturally very pleased with the decision of the PTO. The ‘449 patent application was filed in 1994, and this has now been a 16 year journey.” Mr. Vulpe adds, “Our patent claims were put under intense scrutiny by the PTO during its reexamination and this decision is a resounding confirmation and a further validation of the ‘449 patent.”

Mr. Owen says, “i4i’s ‘449 patented invention infuses life into the use of Extensible Mark Up Language (XML) and dramatically enhances the ability to structure what was previously unstructured data. As the magnitude of data grows exponentially, this is a critical technological bridge to controlling and managing this sprawling octopus of data and converting it into useful information.”

In March 2007, i4i sued Microsoft for willful infringement of its ‘449 patent. Awaiting trial, in late 2008, Microsoft filed an ex parte application with the PTO seeking a reexamination of certain claims of the ‘449 patent. Based on Microsoft’s representations, the PTO agreed to reexamine the patent. As a matter of procedure, any patent claim subjected to reexamination should be viewed as only ‘provisionally invalid’ until the reexamination is complete. While defendants often tout an interim finding of ‘provisional invalidity’ as being profoundly important, what it simply means is the PTO is conducting a serious and detailed review of an existing patent and that the onus is placed back on the shoulders of the patent owner to prove the patentability of the contested claims.

On May 20, 2009, Microsoft was determined to have willfully infringed i4i’s ‘449 patent. On August 11, 2009, i4i was granted a Final Judgment against Microsoft that included both an award of damages to i4i and a permanent injunction. Microsoft unsuccessfully appealed the decision to the Court of Appeals for the Federal Circuit late last year, and also unsuccessfully sought a rehearing of the decision of the Court of Appeals earlier this year. Throughout the process, defendant Microsoft has made extensive reference to the concept that the patent was ‘provisionally invalidated by the PTO’. Confirmation of the validity of i4i’s ‘449 patent should put this matter to rest. An NIRC (Notice of Intent to Issue Ex Parte Reexamination Certificate) was issued April 28, 2010, and a Reexamination Certificate will be issued in due course by the PTO which will formally conclude the reexamination proceeding favorably for i4i.

The successful i4i reexamination team was lead by Rob Sterne and Lori Gordon of Sterne, Kessler, Goldstein & Fox, and supported by i4i’s trial team at McKool Smith and its Court of Appeals team at Finnegan.
i4i is a global technology company headquartered in Toronto, Canada. For more information on i4i v. Microsoft, selected court documents can be found on

Source: i4i


  1. The patent system is fundamentally broken. Too much stuff that is not really original is being patented. Even for original inventions, a 20-plus year protection makes no sense in the technology area.

    I think the system has to be reformed to become a lot more selective on which patents to approve and the duration of the patent should be 3-5 years at the most.

    Right now the only people benefiting from patents are lawyers and patent trolls.

    – HCE

  2. @HCE

    In terms of electronic/computing technology, yes the patent life should be shortened, with a life expectancy of 4-5 years max, a 20 year patent is absourd.

    However not all technology should be limited to 5 years, robotics has a much longer life span as does manufacturing. As beurocracy goes, I can’t see the rules changing anytime soon

  3. @HCE

    You can whine all you want about the IP system in the US. However, this thing went to trial by a jury that found the claims valid and awarded i4i $200,000,000. Are you now going to say that juries are flawed just to support your notion that patents are flawed?

  4. This is just insanely horribly and totally bad. Don’t be a fscking retard and think that everything that goes against Microsoft is a good thing. Its not.

    This is just about one of the worst decisions i’ve seen in a long time.. could this basically decimate the use of XML? IANAL….

  5. I see the problem, this is a quote from the w3c website:

    XML was developed by an XML Working Group (originally known as the SGML Editorial Review Board) formed under the auspices of the World Wide Web Consortium (W3C) in 1996. It was chaired by Jon Bosak of Sun Microsystems with the active participation of an XML Special Interest Group (previously known as the SGML Working Group) also organized by the W3C.

    If the patent was filed in 1994 then it is valid in that it predates XML.

  6. Sounds like there are some 14 yr olds here who want their own way and will stomp their feet to get it. It is also obvious they never invented anything.

    When you spend 5 years developing something and $50,000 protecting it against thieves, you have a right to your baby, whether HCE likes it or not.

    No one is arguing that the Patent System is perfect, only that it works better than thievery. Look a China, where you can buy any illegal knockoff you want and the govt doesn’t care.

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