Microsoft, TomTom End Legal Dispute

The high-profile legal dispute between Microsoft and TomTom has reportedly come to an end.  Although specific terms of the agreement were not disclosed, TomTom will pay Microsoft for coverage under its patents, and Microsoft will receive coverage under four TomTom patents as well, reports MarketWatch.

The dispute originated in February, as Microsoft filed suit against TomTom, alleging that the GPS maker was infringing on eight of its patents related to car-navigation.  TomTom countersued soon after, stating that its intellectual property was being infringed by Microsoft.

Shortly after filing their countersuit, TomTom joined the Open Invention Network, an organization that accumulates defensive patents in order to protect Linux from patent infringement lawsuits.  This maneuver led many to believe that there might be a bigger fight on the horizon between the Open Invention Network and Microsoft.

Yet, this agreement has quieted any such conflict.  In addition to paying Microsoft, TomTom has also agreed to remove some of its functionality related to file-management system patents within two years.  Also, TomTom’s coverage for Microsoft’s patents is designed to be compliant with the free software-licensing system adhered to by open-source providers.

TomTom Countersues Microsoft

Last month, Microsoft sued TomTom for violating eight of its patents.  However, the GPS maker recently fought back by issuing its own countersuit against Microsoft, reports Electronista.  The suit accuses Microsoft of infringing on four patents, while also stating that Microsoft’s use of the technology “has been and continues to be willful and without license from TomTom.”

This case has received interest from the open-source community, as Microsoft’s original lawsuit related to patents involving the Linux operating system.  But when Microsoft was asked if open-source software was a target of their lawsuit, Horacio Gutierrez of Microsoft said the following:

Microsoft respects and appreciates the important role that open-source software plays in our industry and we respect and appreciate the passion and the great contribution that open-source developers make in our industry.

One GPS maker that does hold licenses from Microsoft for similar technologies is Garmin, TomTom’s top competitor.  Microsoft claims it is only trying to maintain its previous position of licensing the technology to TomTom.  “As has bee then case for more than a year, we remain committed to a licensing solution, although we will continue to press ahead with the complaints.”

Microsoft, Lexmark Ink Licensing Deal

Yesterday, Microsoft and Lexmark announced that they have entered into a patent cross-licensing agreement.  Financial terms of the agreement were not disclosed, but the deal will allow “greater mutual access” to the patent portfolios of both companies.

According to CNET News, the deal will license patents for Lexmark’s printers and multifunction devices to Microsoft.  In return, Lexmark will have access to a wide range of Microsoft’s software.

This deal is one of more than 500 cross-licensing deals that Microsoft already has in place.  Many of those agreements can be attributed to Microsoft’s IP licensing program, which was put in place in 2003.

Said Marty Canning, Lexmark’s printing solutions and services division president, “We believe this agreement will improve the productivity of both our companies and result in enhanced product offerings and increased satisfaction for all our customers.”

Microsoft Settles Xbox Suit

Last week, we reported that Microsoft was being sued by PalTalk over the Xbox video game system.  Now it looks like that suit may be settled, as Seattle Tech Report has reported that the two have come to an “amicable agreement.”

The lawsuit stemmed over the Halo first-person shooter games and the Xbox console on which they are played.  PalTalk had claimed that this system infringed on two patents, both developed by MPath Interactive Inc.  Even though PalTalk had bought the patents for less than $200,000, the company was seeking more than $90 million in royalties.  Microsoft claimed they were aware of the patents, but chose a different path in developing the Halo game.

Financial terms of the agreement have not been disclosed, but the settlement cuts short the trial that had started earlier this week.  Max Tribble, a PalTalk lawyer, said “The parties have settled the case, and PalTalk is quite pleased with the outcome.”

Microsoft Sued Over Xbox, Halo

PalTalk Holdings Inc. is currently suing Microsoft over its Xbox video gaming system.  According to Boston.com, PalTalk  alleges Microsoft of infringing on two patents for inventions developed by MPatch Interactive Inc. 

PalTalk is especially targeting the Halo games for Xbox, since their patents relate to controlling interactive applications on multiple computers.  However, Microsoft said that although they did review these inventions and patents, they ultimately chose a different path in developing the games.  As a lawyer for Microsoft said, “Microsoft had many meetings with MPath regarding their technology, and Microsoft found the technology to be very valuable.”  Paltalk’s patents supposedly cover an older dial-up method of communicating between computers, but Microsoft says they don’t cover how the Halo games work.

Microsoft is not only challenging the validity of the patents, but they are also challenging how much the patents are worth.  Microsoft said, “the patents aren’t worth much, certainly not $90 million.”  This claim may have some validity, as PalTalk purchased the patents from MPatch for a mere $200,000.

Linux Companies Sign Protection Agreements

Microsoft made headlines last week when it announced that it was suing GPS navigation company, TomTom.  The lawsuit stems from Microsoft’s claim that TomTom’s use of Linux in its navigation devices has violated three file system patents owned by Microsoft.  Yet, what some may not know is that Microsoft may be pursuing litigation because it already has patent cross-licensing agreements with other Linux-using companies.

As reported on Computerworld, Microsoft’s corporate vice president and deputy general counsel of IP and licensing, Horacio Gutierrez, has already commented on the licensing of technology to companies such as TomTom.  He said, “We have a history of licensing the patents in this case through patent cross licensing agreements with other leaders in the car navigation space, including Kenwood, Alpine and Pioneer, and through our FAT LFN (File Allocation Table/Long File Name) patent licensing program, where we have 18 licensees to date.”  Therefore, Microsoft gets revenue from open-source projects, but it also increases that cost of commercially supported open-source programs.

However, such an agreement violates the GPL, which makes it a violation if any company signs a patent cross licensing agreement and does not cover its users.  If any company publicly acknowledged that it had signed a deal with Microsoft, it could not legally distribute software or hardware using Linux.  But Microsoft has been able to keep all of these patent licensing agreements quiet, since they are all under non-disclosure agreements.  While it is known that 18 agreements have been signed, no one knows what companies have signed these deals.

Microsoft is essentially giving open-source projects an ultimatum: secretly pay us and violate the GPL, or refuse and risk an expensive lawsuit.  How the case will pan out between Microsoft and TomTom remains to be seen, but one thing is for certain – this lawsuit has opened up a new can of worms.

Red Hat Sued by Software Tree

Software Tree, a database company that develops object-relational mapping technologies, has filed a patent infringement lawsuit against Red Hat.  The suit alleges that Red Hat’s new Java-based server application, JBoss, infringes on one of Software Tree’s patents.  Software Tree is seeking unspecified damages, as well as an injunction to stop Red Hat from distributing the product.

As reported by Ars Technica, the infringed patent describes a “system and method for exchanging data and commands between an object oriented system and relational system.”  Software Tree claims that the patent was originally awarded in December 2000, and it was reexamined in April 2008 and was found to be valid and enforceable.

Red Hat acquired JBoss in 2006 for $350 million.  Software Tree contends that JBoss Hibernate, part of the JBoss platform, infringes on their patent. 

Red Hat is not new to database patent disputes, as it faced litigation last year with Firestar and DataTern.  Red Hat did eventually come to terms with the two companies, but one those agreements may come back to haunt them.  Red Hat cited the Software Tree patent as prior art during its lawsuit with Firestar.  Consequently, Software Tree is stating that Red Hat’s infringement on their patent was willful.

It is also worth noting that this current suit may be an extension of the ongoing Microsoft-Linux battle, as Software Tree is partnered with Microsoft, Borland, IBM and Sun.  In addition to naming Red Hat in the lawsuit, Software Tree has also named Hewlett Packard, Genuitec and Dell as defendants.

Microsoft Sues TomTom

Earlier today, Microsoft filed a lawsuit against TomTom, a GPS navigation company.  Microsoft filed complaints with a U.S. District Court as well as the ITC, and claimed that TomTom infringed on eight patents – five related to car navigation systems, and three related to file management technologies.  The federal lawsuit is seeking damages, while Microsoft hopes the ITC case will block future imports of infringing products.

As reported on Cnet News, Microsoft deputy general counsel Horacio Gutierrez said that they had been trying to initiate licensing talks with TomTom for over a year.  Microsoft has already negotiated licensing deals with GPS makers Pioneer, Alpine, and Kenwood.  “All of these patents have been licensed before by many other companies.  We are asking TomTom to do what other companies have done and take a license,” Gutierrez said.

While Microsoft is often named as a defendant in infringement lawsuits, this case marks only the third patent case that Microsoft has taken to court.  In 2006, Microsoft had a dispute with Belkin which was eventually settled.  Last year, Microsoft sued Primax but the two ended up settling as well.

Microsoft Receives Patent for PDA Button Pushing

A Microsoft patent that was filed in 2002 has just been granted by the patent office.  As reported by Smartphone Mobile, the patent concerns the concept of having a handheld device perform different functions when a button is pressed multiple times or held down for a certain period of time.

As the abstract of the patent states:

A method and system are provided for extending the functionality of application buttons on a limited resource computing device. Alternative application functions are launched based on the length of time an application button is pressed. A default function for an application is launched if the button is pressed for a short, i.e., normal, period of time. An alternative function of the application is launched if the button is pressed for a long, (e.g., at least one second), period of time. Still another function can be launched if the application button is pressed multiple times within a short period of time, e.g., double click.

With the addition of this patent, Microsoft may be able to collect licensing fees from companies that now, or have in the past, used this technique.  However, if there is proof that this technique arose before 2002, Microsoft’s patent will not hold up in court.

Microsoft Appoints Attorney to Steer IP Policy

Sometimes promoting from within can be the best policy.  Microsoft certainly agrees, as the company has recently appointed one of its intellectual property attorneys, Horacio Gutierrez, to steer its IP policy and licensing programs.  According to PCWorld, Microsoft confirmed on Friday that Gutierrez is now corporate vice president and deputy general counsel of intellectual property and licensing.

Gutierrez, who has been with Microsoft’s Law and Corporate Affairs department since 1998, will now lead the company’s strategic business, legal, and public policy efforts related to Microsoft’s IP assets.  In addition, he will manage Microsoft’s patent portfolio and commercial licensing of IP.

Recently, Microsoft has become friendlier towards open-source interests and it has loosened some restrictions.  Some have credited this change in policy to Gutierrez, who has been fostering engagement with the open-source community.  Thus, one can assume that Gutierrez will continue this policy in his new role.

In addition to his involvement in IP, Gutierrez has also been involved with Microsoft’s pro bono legal program.  Attorneys involved in this program donate their time to helping immigrants attain legal status in the U.S. and avoid deportation.

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