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Now TomTom Sues Microsoft for Patent Infringement -- Guess Who Their Lawyers Are? MoFo!!! - Updated
Friday, March 20 2009 @ 02:38 AM EDT

Can you believe it? This is so great!! Morrison & Foerster are representing TomTom in a new patent infringement lawsuit TomTom has just filed against Microsoft! I love covering their cases. Patent law is usually soooo boring to me, but these guys will keep me awake, and no doubt if I pay attention, I'll learn a lot.

I'd already decided to cover the lawsuit Microsoft filed against TomTom in Seattle last month, and we'll cover this one too. Eventually one or both sides will probably file a motion to consolidate the two cases, either in Washington State, where Microsoft filed, or in Virginia, where TomTom has just filed its Complaint [PDF]. But they could also just lope along on two separate tracks. So far, Microsoft's statement, on both TechFlash, linked above, and in part on Bloomberg, indicates they want to stay on their home turf:

"We are reviewing TomTom's filing, which we have just received," said Horacio Gutierrez, Microsoft deputy general counsel, in a statement released by the company today. "As has been the case for more than a year, we remain committed to a licensing solution, although we will continue to press ahead with the complaints we initiated in the U.S. District Court for the Western District of Washington and the International Trade Commission."

[ Update: If, like me, you were wondering why Virginia, this article explains the advantages to filing in what was the first state to be called The Rocket Docket. I assume TomTom figures Microsoft might want to drag things out, since it can afford to do that and TomTom less so, and Virginia apparently handles patent cases very, very fast.]

What does it mean? It means TomTom intends to fight and fight hard. Microsoft always does that. So, it'll be a real dogfight. And we're probably going to get to see some fabulous lawyering on both sides. Not to make anybody nervous or anything, but it's exciting to see lawyers who really know what they are doing.

Sidley Austin represents Microsoft. That's the firm where Michelle and Barack Obama met, if you recall, when he was a summer associate there. She did antitrust law there. He turned down an offer to work there. We're going to be seeing some really good lawyering. That will be the fun part. The hard part will be that they'll know a lot more than we do, and some of what happens may fly over our heads, but I'll do my best to find legal commentary for us for those parts.

This dispute now has three fronts, actually, because Microsoft filed a complaint with the ITC, too. Here's a blog that specializes on ITC issues, the ITC Blog. Whew. Because I know very little about the ITC, except that I know it's not unusual to file there too when you file a patent infringement case. And I know you file there to ask that the ITC issue an order to ban importation of something that you allege infringes your patents, or for a cease and desist order.

One recent entry on the blog explains how the ITC interfaces with the district court, or in this case two of them. What happens, for example, if the ITC reaches a decision before Virginia or Washington State does? Here's the answer, "Did You Know . . . Determinations Of Patent Issues At The ITC Are For Purposes Of Section 337 Only And Do Not Have Res Judicata Effect?"

OK. Kidding. I just wanted to demonstrate that they go deeply into ITC stuff, in other words, and they are lawyers writing like lawyers. But we can peek inside, and I'll try to explain in our language here and there, as I can. In this case, I don't need to much, because here's how the entry explains what Section 337 means, etc.:

Patent owners often simultaneously file suits in both the ITC and district court on the same patent(s). If an ITC investigation is ongoing, an accused infringer can request, as a matter of right, a stay of the parallel district court action under 28 U.S.C. § 1659. Even if the accused infringer does not request a stay, the ITC investigation typically will conclude before (and sometimes well before) a trial in district court. After the ITC issues a final determination on infringement, validity, and/or enforceability of a U.S. patent, one might think this ruling would be binding on a district court. This is not the case, however, because the doctrine of res judicata does not apply to ITC determinations concerning patents.

The doctrine of res judicata, which is also referred to as claim preclusion, means “the thing has been decided.” The doctrine is rooted in the principle that once a competent court has rendered its final judgment on a matter, that judgment has a conclusive effect upon subsequent litigation between the parties regarding the same cause of action. However the Federal Circuit has held that “ITC findings neither purport to be, nor can they be, regarded as binding interpretations of the U.S. patent laws in particular factual contexts. Therefore, it seems clear that any disposition of a Commission action by a federal court should not have a res judicata or collateral estoppel effect in cases before such courts.” Tandon Corp. v. U.S.I.T.C., 831 F.2d 1017, 1018 (Fed. Cir. 1987). The reason often cited for lack of a preclusive effect for ITC holdings is that Congress intended the ITC to be primarily responsible for administrating the trade laws and not the patent laws which is specifically referenced in the legislative history of Section 337. Texas Instruments v. Cypress Semiconductor Corp., 90 F.3d 1558 (Fed. Cir. 1996).

I don't dare quote any more than that, since it's written by four lawyers and all. But if you hop on over there, you'll find that they go on to explain that while a judge may be influenced somewhat by an ITC finding, he or she doesn't have to follow the decision there. They say the winner at the ITC can use the decision as "persuasive evidence" in district court, meaning the judge there will find it useful to consider in a patent case. But it's not like a decision by the US Supreme Court, which all lower courts are supposed to follow. It also doesn't mean the ITC has no effect, since it can ban importation, for example, as a trade matter.

Here's the Texas Instruments ruling, where the court of appeals affirmed that there was no patent infringement by Cypress even though the ITC had earlier found that there was. It's a ruling you will like, because some of you worry about juries who may not grasp technical issues. The jury found for the plaintiff, but the judge threw out their verdict, and the appeals court reviewed and agreed with him:

In conclusion, this case has presented a fairly uncommon situation of a trial judge overriding a jury verdict in a patent case, following an earlier ITC decision on some of the same subject matter. Although we have been mindful of the deference accorded to a jury on fact findings, as the trial judge surely was, we have felt it necessary to affirm the district court's judgment. The trial judge did a careful and thorough job of analyzing the case. His factual and legal analyses fully support his decision. He observed the jury and believed that it lacked a grasp of the issues before it. The judge was convinced that the jury failed to meaningfully deliberate on the case.
So you'll be relieved to know that can happen. Here's another paragraph from the ruling, which will show you why I find patent cases so hard to follow sometimes:
TI asserts that even accepting the court's claim construction, it presented substantial evidence to support a finding of literal infringement. TI argues that during the encapsulation processes used by the defendants, the semiconductor device was supported by the "die pad," which acted like a "conductor." TI relies on evidence that allegedly demonstrates that, during encapsulation, the semiconductor device was mechanically attached to the die pad with an electrically conductive adhesive; in turn, the die pad was connected through the lead frame to an external ground, forming a conductive, continuous current path from the die to ground. According to TI, this current path protected the die from static electricity during assembly and encapsulation. TI contends that the testimony of its expert witnesses supports this theory.
Sigh. But I'm committed, and no matter what Microsoft writes or TomTom, I'll be reading the sentences as often as I must to get from the beginning of the sentences to the very end, without mind-wandering detours. No doubt you guys will help me, because you will understand the tech so much better, and your lips will curl if I nod off mid-sentence or write that there was no protection of the die from static electricity during assembly when there actually was.

So here goes. Section 337. I'll let the ITC explain what that is:

Section 337 investigations conducted by the U.S. International Trade Commission most often involve claims regarding intellectual property rights, including allegations of patent infringement and trademark infringement by imported goods. Both utility and design patents, as well as registered and common law trademarks, may be asserted in these investigations. Other forms of unfair competition involving imported products, such as infringement of registered copyrights, mask works or boat hull designs, misappropriation of trade secrets or trade dress, passing off, and false advertising, may also be asserted. Additionally, antitrust claims relating to imported goods may be asserted. The primary remedy available in Section 337 investigations is an exclusion order that directs Customs to stop infringing imports from entering the United States. In addition, the Commission may issue cease and desist orders against named importers and other persons engaged in unfair acts that violate Section 337. Expedited relief in the form of temporary exclusion orders and temporary cease and desist orders may also be available in certain exceptional circumstances. Section 337 investigations, which are conducted pursuant to 19 U.S.C. § 1337 and the Administrative Procedure Act, include trial proceedings before administrative law judges and review by the Commission.
So a 337 investigation relates to unfair practices, most often related to IP, I gather. Here's an example of an exclusion order, related to logic boards that the ITC said couldn't be imported to the US from France any more.

Hmm. I wonder what exactly happens if the ITC issues an exclusion order, based on finding patent infringement, and then a district court refuses to find patent infringement? Does the ITC back down? I presume so, following some sort of established procedure. Here are the ITC Rules. I notice the Rules on page 80 say the ITC can back down, modify, or change its mind based on new info brought to its attention. And the FAQ, on page 32 of the PDF, says that you can appeal a Commission order to the federal court of appeals, so that's the answer. I see the President has to sign off on any Commission orders too, and he can negate them if he thinks the order isn't good policy. That's on page 31 of the FAQ.

I guess that's why the defendants often ask for a stay of the ITC matter, to try to avoid intersection crashes between the ITC and the courts. But clearly when it comes to patent infringement, the courts are the main tent, not the ITC.

There's a page on ITC's website called Section 337 Publications, but they use that word in their own way, to mean their decisions in their investigations. They have names like "Certain NOR and NAND Flash Memory Devices and Products Containing the Same." Here's the law, 19 U.S.C. Section 1337 [PDF]. They have a list of recent complaints, including Microsoft's against TomTom, Docket No: 2654.

The status of the Microsoft letter requesting an investigation by the ITC says, "Status: Pending Institution". The Rules, on page 4, indicate that "institution" is a term of art at the ITC, and it means they agree to investigate, and you find out by means of a notice in the Federal Register. That hasn't happened yet. No doubt it will, though. My brain hurts. That's enough for now. But first, here's the other case the ITC Blog mentioned, Tandon Corp. v. U.S.I.T.C., which was a case where the decision of noninfringement by the ITC was appealed to the United States Court of Appeals for the Federal Circuit, the same folks that gave us In Re Bilski. Judge Pauline Newman wrote the decision.

So, what's the bottom line? TomTom is not going to just roll over and settle. Or beg.


  


Now TomTom Sues Microsoft for Patent Infringement -- Guess Who Their Lawyers Are? MoFo!!! - Updated | 220 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Corrections Come Here:-
Authored by: complex_number on Friday, March 20 2009 @ 03:09 AM EDT
So that PJ can make the changes


---

Ubuntu & 'apt-get' are not the answer to Life, The Universe & Everything which
is of course, "42"

[ Reply to This | # ]

Off Topic Posts
Authored by: complex_number on Friday, March 20 2009 @ 03:11 AM EDT
Should be filed here

---

Ubuntu & 'apt-get' are not the answer to Life, The Universe & Everything which
is of course, "42"

[ Reply to This | # ]

News Picks Comments : Post 'em Here
Authored by: complex_number on Friday, March 20 2009 @ 03:13 AM EDT
Please start the thread using the title of the Newspick as comment title to
limit duplication.


---

Ubuntu & 'apt-get' are not the answer to Life, The Universe & Everything which
is of course, "42"

[ Reply to This | # ]

Microsoft Comment
Authored by: complex_number on Friday, March 20 2009 @ 03:27 AM EDT
"We are reviewing TomTom's filing, which we have just received," said Horacio Gutierrez, Microsoft deputy general counsel, in a statement released by the company today. "As has been the case for more than a year, we remain committed to a licensing solution, although we will continue to press ahead with the complaints we initiated in the U.S. District Court for the Western District of Washington and the International Trade Commission."

IMHO, this means then
- Yeah, Ok. We got the legal papers you sent us
- We don't think you have a leg to stand on
- Our offer is still on the table for a little while longer
- Plese be a nice little company and settle with us or we will get very angry and when we do it ain't gonna be pretty

It sure is nice to see the largest industry in the US thriving in this time of economic hardship to many millions.



---

Ubuntu & 'apt-get' are not the answer to Life, The Universe & Everything which is of course, "42"

[ Reply to This | # ]

Now TomTom Sues Microsoft for Patent Infringement -- Guess Who Their Lawyers Are? MoFo!!!
Authored by: Anonymous on Friday, March 20 2009 @ 04:44 AM EDT
I have lived in Amsterdam for over 10 years. It's easy to overlook the influence
of culture. The Dutch are pragmatic but they really, really, really do not like
to be pushed around and once the switch flips you've got a bulldog on your
hands. After all they have wrestled a good portion of their country from the
ocean.

Personally I would like to see all FOSS supporters unite on this and apply a
scorched earth policy to MS. Why not pick this fight and send MS back so broken
and bloody that they never try again? By that I mean, if FOSS wants to, it can
be the "whole world". MS can only be MS. It would be good for everyone
to know that once and for all.

Mark

[ Reply to This | # ]

The choice of being tarred and feathered or just tarred
Authored by: IMANAL_TOO on Friday, March 20 2009 @ 05:07 AM EDT
The choice of being tired and fettered or just tired, just plain tired of
patents.

I had a brief look at TomTom's patents. They are no more fun than those of
Microsoft. If you turn right, you're left on your own. Ad nauseam.


.

---
______
IMANAL


.

[ Reply to This | # ]

Mind-Wandering Detours
Authored by: DaveJakeman on Friday, March 20 2009 @ 05:17 AM EDT
When you find it hard to make it to the end of a sentence without mind-wandering
detours, find the word in the sentence, or earlier, that you didn't understand
and look it up. Works best with a comprehensive but easy-to-understand
dictionary, or wikipedia. Then you won't nod off.

The trouble with patent stuff is you have to understand the law *and* the
technology of the patent. And the patent is often crafted in non-specific
language that could mean anything -- with technical terms thrown in besides.

We sympathise. Groklaw likewise presents a challenge for us software types. I
spend much of my time here buried in my dictionary. But it doesn't hurt to
understand.

---
Monopolistic Ignominious Corporation Requiring Office $tandard Only For
Themselves

[ Reply to This | # ]

Thinking of buying a new TomTom?
Authored by: tiger99 on Friday, March 20 2009 @ 06:47 AM EDT
The new models have so many compelling features, like the ability to update the maps yourself and share the updates, and also live traffic information, that I can now justify an upgrade. Just comparing them to the other brands, they are definitely the best.

Not yet decided which model to get, and of course I will be looking for the cheapest deal, but TomTom can expect some business soon.

My old TomTom has performed excellently over several years. It feels very robust too, unlike some competing products.

If anyone here is thinking about a new satnav, now is your chance to have a positive effect. It would be very nice if their sales spiked in the US, despite the recession.

[ Reply to This | # ]

It's obvious to me what they said. ;-)
Authored by: JamesK on Friday, March 20 2009 @ 07:30 AM EDT
"So you'll be relieved to know that can happen. Here's another paragraph
from the ruling, which will show you why I find patent cases so hard to follow
sometimes:

TI asserts that even accepting the court's claim construction, it presented
substantial evidence to support a finding of literal infringement. TI argues
that during the encapsulation processes used by the defendants, the
semiconductor device was supported by the "die pad," which acted like
a "conductor." TI relies on evidence that allegedly demonstrates that,
during encapsulation, the semiconductor device was mechanically attached to the
die pad with an electrically conductive adhesive; in turn, the die pad was
connected through the lead frame to an external ground, forming a conductive,
continuous current path from the die to ground. According to TI, this current
path protected the die from static electricity during assembly and
encapsulation. TI contends that the testimony of its expert witnesses supports
this theory."

---
There are 10 kinds of people in the world, those who understand binary and those
who don't.

[ Reply to This | # ]

He who hath the money
Authored by: Anonymous on Friday, March 20 2009 @ 07:59 AM EDT
Much as I like to see Tom Tom stand up to Microsoft's legal tripping, I can't
help but reflect on the sad fact that Microsoft has a ton more money than Tom
Tom and they can therefore keep this train rolling for as long as it takes for
Tom Tom to run out of steam.
That's not justice, that's might is right.
Please convince me I am wrong...

[ Reply to This | # ]

Supporting TomTom
Authored by: Anonymous on Friday, March 20 2009 @ 11:29 AM EDT
My best friend's birthday is coming up... she didn't specifically ask for a
GPS... but I figure it's a great reason to get her one...

Guess what brand it'll be :-)

[ Reply to This | # ]

E-mail from TomTom in my mailbox this morning
Authored by: Anonymous on Friday, March 20 2009 @ 11:42 AM EDT
It seems that TomTom has come up with an idea that will help them raise some
cash. They are now offering a "map subscription service" which will
give you four updates per year at a cost of $10 each. In order to start using
the service, you must also pay to update your map to the current version.

Even though I don't need this service, I may sign up anyway just to help keep
them afloat. I would really like to seem them prevail against M$.

JSL

[ Reply to This | # ]

TI patent
Authored by: kenryan on Friday, March 20 2009 @ 12:45 PM EDT

Interesting article mentioning the patent case:

TI Package Lawsuit

According to that article, TI first applied for the patent in 1963 and the USPTO repeatedly rejected it for the next 14 years. When they finally accepted it TI started suing the world. Evidently the patent in question was for a transistor package, and TI claims it also covered ICs (I have not read the patent myself).

In integrated circuits the substrate (the IC chip itself) must be attached to a ground or negative voltage in order for the transistors on the chip to operate properly (it's called substrate bias voltage - early ICs required a negative voltage, eventually IC designs progressed to where the power supply ground would do). Therefore every IC had, and still has, an electrical path from the die to the ground pins of the package. Individual transistors, such as what TI was doing in 1963, do not require an electrical connection to the lead frame (all of the electrically relevant connections are brought out to the leads themselves, or for high-power packages to the package body).

BTW, the linked article mentions an embarassing experiment by a TI witness to prove a substrate connection by probing the ends of the package with an ohm meter (an instrument to measure conductivity). It didn't work, and the Cypress attorney was able to make a fool of him. In certain types of plastic IC package there are little nubs left poking slightly out of the ends of the package; those are parts of the leadframe left from the molding of the plastic.

Also, a couple definitions for the non-technical (or technical in a different field):

  • Leadframe - the "pins" of the integrated circuit and how they attach to the chip. For the most common packages at the time, the lead frame looks like a flattened spider with the IC in the middle. It's manufactured with metal all the way around the outside edge, primarily to withstand handling during the connection and encapsulation process. The excess metal is cut off when the leads are formed.
  • die - the integrated circuit chip itself. Early ICs were so small and the wafer they were made from so thick they resembled tiny gambling dice. The term stuck even though modern chips are far larger and unbelievably thin.
  • die pad - the flat bit of metal on the lead frame or package substrate the die is attached to.
  • die attach - (noun) the electrically and thermally conductive epoxy used to bond the die to the package substrate.
  • encapsulation - The act of moulding plastic around the die and leadframe to form the package. Usually injection moulded for modern ICs. Can also refer to attaching the lid onto a ceramic package.
  • ground - Conventionally the "negative" lead of the power source, though can refer to any common electrical reference point (voltage is measured between two points, normally ground and the point of interest).
  • static electricity - The "zap" we all get when touching a metal surface (doorknob is the canonical example) in the winter. All movement generates static electricity, which gets discharged through any metal object (technically the charge equalizes), and it happens all year round. ICs are generally sensitive enough that a discharge we can't even feel can cause damage on the die. Most ICs nowadays have built-in circuitry that provides some degree of protection, still a zap large enough for a human to feel is plenty to send bits of metal spattering across the die.

---
ken
(speaking only for myself, IANAL)

[ Reply to This | # ]

To Bilski or Not to Bilski...
Authored by: RFD on Friday, March 20 2009 @ 03:49 PM EDT
that is the question Microsoft must ponder. Under Bilski, these patents may not
be valid--but will Microsoft dare argue that? This could be a lose-lose
situation for Microsoft--Microsoft could lose it's suit because it's patents are
found to be invalid and Tom-Tom could win it's suit if Microsoft does not argue
that Tom-Tom's patents are invalid under Bilski.

---
Eschew obfuscation assiduously.

[ Reply to This | # ]

Microsoft's lawsuit even more daffy
Authored by: Anonymous on Friday, March 20 2009 @ 04:26 PM EDT

You have to assume TomTom had told Microsoft about its own patents. You also
have to assume, therefore, that there was at least minimal discussion about a
cross-licensing deal. I mean, really. This is classic cross-licensing territory
here, as Andy Updegrove pointed out.

Microsoft must have known when it filed suit that TomTom would counterclaim with
its own patents. Did Microsoft do no research on this?

Why is this in court at all?

By the way, I would like to think that MoFo is hoping to mine Microsoft's money
veins for patent damages. If MoFo becomes a shadow across any other Microsoft
patent fantasies, that would definitely be a good thing.

How will TomTom finance this litigation? With Microsoft's money.

[ Reply to This | # ]

Microsoft's lawsuit about intimidating embedded hardware manufacturers to join MS cartel.
Authored by: Anonymous on Saturday, March 21 2009 @ 06:13 AM EDT
Microsoft's patents are nothing to do with Linux. One is to do with FAT
truncated filenames, which is part of FAT filesystem support which can be used
in a Linux system, but isn't part of Linux and can easily be removed or changed,
another is to do with driving instructions.

Microsoft is not trying to collect royalty money from its patents. What
Microsoft is doing is suing companies who use Linux in order to force them to
sign an agreement that Microsoft can then leverage to form a cartel which it can
manipulate with the strings attached to the agreement in order to prevent the
adoption of Linux (as it currently does with PC OEM manufacturers).

What Microsoft is afraid of is ARM based Linux netbooks, which Windows cannot
run on, which will be cheaper, give much longer battery life than ix86 based
netbooks, and which will bridge the gap between netbooks and mobiles. Coming at
the same time as mobile broadband, this promises to do serious damage to
Microsoft's desktop monopoly, and Microsoft knows it. That is why Microsoft is
acting now after long talking about patent suits.

[ Reply to This | # ]

Hurray!
Authored by: skuggi on Saturday, March 21 2009 @ 12:24 PM EDT
Wow! Groklaw/PJ is still at it! This is sooo great!
I did take some rest from Groklaw after it was announced that it would be
focusing primarily on library work instead of annoying Microsoft but I still
kept checking weekly for any miracle happening. Now it is suddenly squirming
with life. Ahhh.. Now I will celebrate and have me an ice-cold beer! Cheers!!!


---
-Skuggi.

[ Reply to This | # ]

Hard to understand?
Authored by: Anonymous on Saturday, March 21 2009 @ 04:13 PM EDT
Is that description of how an IC is made hard to follow? Then just ask us :) When you make an IC ("integrated circuit" -- an electronic chip, like those found in computers, phones, etc.), you process a silicon wafer with all kinds of chemicals, including light-sensitive ones (which is how you use a mask to project a really tiny picture of the circuit onto the wafer). You then cut it up (this is the "die pad").

They're just saying that it's really vulnerable to static electricity at this time, so they make sure that it's grounded the whole time. And they use some kind of conductive fluid so that a charge doesn't build up. They keep the fluid in use until they get the chip into a plastic case (which is almost always black and which has little metal pins coming out of it). Apparently that way of protecting chips when they're made is patented, though.

[ Reply to This | # ]

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