Subject: Re: IPR: analysis of Microsoft patent applications (Safe to Read Even If You Are Avoiding Reading the Patents)

From: "Anne P. Mitchell, Esq." <[email-masked]>
Date: Fri, 17 Sep 2004 18:52:35 -0700

First, for what it's worth, I concur with John's analysis, although 
while IAAL, I should add that I am not a patent lawyer.

> If '585 issues as a patent in anything like its current form and
> Microsoft's license doesn't change, it would make SPF or any other
> similiar system legally very risky since the MS license only lets you
> implement Sender-ID, not other things that are like Sender-ID.
> Regardless of what the MS IPR said, their patent rights depend on
> what's in the patent, and if you look at cases where patents were
> broader than the IPR disclosure in the standards process, the results
> can be really ugly.  Google for RAMBUS JEDEC for a notorious example.
>
> At this point, I see a variety of unappetizing alternatives.  One is
> to wait and see what patents issue, but that could take years.
> Another is to standardize only what MS is willing to license.  Or we
> could decide that the '585 claims are implausible and ignore them, at
> our peril.
>

Actually there are a few other alternatives.  In the first instance, 
anyone who has already developed processes which these patents arguably 
cover, and most especially anyone who has already patented such a 
process, can send that information (by registered mail to provide proof 
of receipt) to the Microsoft attorneys.

Beyond that, for anyone who has in fact obtained a patent, or for 
anyone who has filed a patent or who does file a patent during the 
pendancy of these patent applications (i.e. before they are granted), 
they can file an "interference action" with the PTO.   To quote a 
colleague of mine who does do patent work, "An interference is a 
proceeding, conducted before the Board of Patent Appeals and 
Interferences, to determine priority of invention between a pending 
application and one or more pending applications and/or one or more 
unexpired patents."

I should note here that interference actions are very unusual, and 
extremely expensive (but then so is infringement litigation).  I should 
also say that I have no personal opinion for or against such an action, 
and am not recommending (or disrecommending) such an action.

Finally, I would like to take this opportunity to address the advice 
which has been making the rounds regarding how one should not read 
patents so that one won't be prosecuted for willful infringement.

There _are_ situations in which it's best not to look at patents.  For 
example, if you are an inventor, and you have _zero_ idea about what's 
out there, and there is no way you could know, and then you go 
traipsing through the patents, and you find a patent which makes claims 
identical to your invention, and then you go forward with your 
invention, then yes, you *could* be found guilty of willful 
infringement.  However, according to my (very highly placed patent 
litigation partner in a big patent firm, and highly experienced 
litigator in another big IP firm) sources, you have to try Really Hard 
to be found guilty of willful infringement - willful means, well, 
willful.  It has to pretty much border on malfeasance.

On the other hand, if you are already on notice, if you have _reason_ 
to believe that your code may possibly infringe on a patent..such as, 
oh, say, the MS patent - if it's been discussed in forums in which you 
participate, or if it's been all over the press...then you can be found 
to have been on notice, in which case _not_ reading the patent can be 
seen as not exercising reasonable care and due diligence.

There is "had no idea, and NO WAY could have known", and there is 
"absolutely knew and did the infringing act anyways with full knowledge 
and malice", and then there's everything in between.  And everything in 
between is a grey area.  However, the above scenario, where the issue 
of whether the MS patent covers SPF and other sorts of authentication 
technologies are being discussed wide and far, and is in the press, you 
are more likely to get in trouble for failure to do due diligence, as 
you are on notice.  Indeed, instead of protecting you, it may damn you.

I should point out that, as in all grey areas, reasonable minds can 
differ.  So it's entirely possible that another similarly highly placed 
source may say something quite different.  The bottom line is - you 
know, if you think that it's going to be infringing - don't do it.

Anne

Anne P. Mitchell, Esq.
President/CEO
Institute for Spam and Internet Public Policy
Professor of Law, Lincoln Law School of SJ
Committee Member, Asilomar Microcomputer Workshop

---

From: Hadmut Danisch <[email-masked]>
Date: Sat, 18 Sep 2004 16:29:54 +0200

> of receipt) to the Microsoft attorneys.

I'd like to do that. Unfortunately I'm not familiar with US 
patent law, so every hint and advice is welcome.

Where do I have to send this? Just to 
  Microsoft Corporation
  One Microsoft Way
  Redmond, WA 98052
  US
?

regards
Hadmut