Groklaw Says Microsoft Patent Portfolio Now Worthless

twitter writes "P.J. concludes her look at the Bilski decision: 'you'll recall patent lawyer Gene Quinn immediately wrote that it was bad news for Microsoft, that "much of the Microsoft patent portfolio has gone up in smoke" because, as Quinn's partner John White pointed out to him, "Microsoft doesn't make machines." Not just Microsoft. His analysis was that many software patents that had issued prior to Bilski, depending on how they were drafted, "are almost certainly now worthless." ... He was not the only attorney to think about Microsoft in writing about Bilski.'"

Comments

Some patents still apply

[Locke2005]

Sure, but the Microsoft Butt hinge with integrally formed butt straps patent is still valid, so watch out for Microsoft cornering the world market on butt hinges! (I suspect Microsoft does have a fair number of hardware patents for mice, keyboards, etc.)

Re:Some patents still apply

[EmTeedee]

Actually, this either never was or isn't anymore a Microsoft patent. It's now assigned to Kawneer Company, Georgia. See page 15 here: http://www.google.com/patents?id=14gCAAAAEBAJ&printsec=drawing&zoom=4&dq=Butt+hinge+with+integrally+formed+butt+straps#PPA15,M1

Mice, keyboards, xbox, ...

[xbytor]

Microsoft has put out some good hardware over the years. They must surely own some patents that cover this stuff.

Bilski wasn't about software patents

[The Empiricist]

Bilski was about business method patents not tied to any machine. The Federal Circuit tried to make this clear in the In re Bilski opinion itself (page 21):

We further reject calls for categorical exclusions beyond those for fundamental principles already identified by the Supreme Court. We rejected just such an exclusion in State Street, noting that the so-called "business method exception" was unlawful and that business method claims (and indeed all process claims) are "subject to the same legal requirements for patentability as applied to any other process or method." 149 F.3d at 1375-76.[Fn23 Therefore, although invited to do so by several amici, we decline to adopt a broad exclusion over software or any other such category of subject matter beyond the exclusion of claims drawn to fundamental principles set forth by the Supreme Court.]

It is true that the validity of many broadly drafted claims may be at issue, but many software claims just do not make sense unless the claims are understood to be tied to computational devices. For example, Beauregard claims, which are claims on a computer readable media adapted to implement a method or system, are considered patentable by the PTO. These kind of claims are very popular because they allow patent holders to go after the software distributors rather than end-users.

It will be harder to enforce software patents, now that the defense lawyers can wield Sec. 101 with more power. But it is a mistake to declare victory against software patents based on a case where all the PTO wanted was for the patent applicant to add "computer implemented" to the claim language.

Re:Bilski wasn't about software patents

[Zordak]

You nailed it (are you a lawyer? Who else reads Patently-O?). I like PJ. I really do. But this is a case where she just heard what she wanted to hear in the opinion, found somebody who agrees with her, and has run with it ever since. As you pointed out, the PTO has upheld Beuregard claims since Bilski issued. That is a trivially-easy way of turning a software claim into a device claim. Honestly, I wondered about the viability of most software claims after Bilski issued, but now that we've gotten a clear signal that Beauregard claims are still good, it would be malpractice not to write software claims for your clients.

So no, Microsoft's patent portfolio is not dead. If they have patents that they think are in danger after Bilski, they can go into reissue and either do Beauregard claims (if they don't have them) or tie them to a particular machine. They can do this even on old patents, because they will be asking for narrowing amendments. In any case, Microsoft's patent portfolio is largely about volume. Each patent stands on its own. It's not "dead" until each and every one of those patents is individually attacked and killed, which is unlikely to happen for two reasons. One, litigation is expensive. Two, some (maybe even most) of them are going to survive in some manner or another (or in other words, if you throw enough spaghetti against the wall, something will stick).

Cue the onslaught of basement-dwelling armchair lawyers who come out of the woodwork to "correct" me any time I say anything about IP law on Slashdot.

"Microsoft doesn't make machines."

[ionix5891]

dont they make XBOXs ...

Re:"Microsoft doesn't make machines."

[Tastecicles]

no, NT was a rename of the OS/2 3.0 development snapshot which Microsoft ended up with after their spat with IBM in the early 1990's and continued to evolve into the NT kernel, which they first used in NT3.1, released on 27 July 1993.

The reason NT started at version 3 is because versions 1 and 2 were already released as the collaborative effort and named OS/2 versions 1 and 2.

(sources: MSDN, Technet, Wikipedia - all correspond with each other timeline-wise and factually, so they can't /all/ be wrong).

Re:"Microsoft doesn't make machines."

[lgw]

The NT kernel was mostly the vision of Dave Cutler, and you can see his VMS roots in places. While OS/2 was co-developed with IBM, the "OS/2 parts" of the NT kernel were mostly hidden in the OS/2 compatibility layer (which technically isn't the kernal at all). Win32 was a new direction, and IMO reflected Dave Cutler's work on making VMS work with 32-bit addressing.

On top of the kernel, NT offered the choice of programming against Win32, WOW, the POSIX-compatility layer, or the OS/2-compatility layer. The fact that you could write against multiple compatibility layers, and these layers could wrap multiple kernels (Win95, plus NT for I386, Alpha, AMD64, Itanic), was the key to Microsoft's early success: they used to be all about backwards compatibility.

Now, for some reason, Microsoft seems to disdain any sort of backwards compatibility. Clearly a culture shift.