Microsoft can likely sidestep a recent injunction by a Texas federal judge that bars the company from selling Word with an "easy technical workaround," a patent attorney said today.
"The injunction doesn't apply to existing product that has already been sold," said Barry Negrin, a partner with the New York firm Pryor Cashman LLP who has practiced patent and trademark law for 17 years.
"Headlines that say Microsoft can't sell Word are not really true," said Negrin, pointing out that the injunction granted by U.S. District Court Judge Leonard Davis on Tuesday only prohibits Microsoft from selling Word as it exists now after Oct. 10. "All Microsoft has to do is disable the custom XML feature, which should be pretty easy to do, then give that a different SKU number from what's been sold so it's easy to distinguish the two versions."
Microsoft does not need to provide an update to users running already-purchased copies of Word 2003 and Word 2007, the two versions that Davis barred the company from marketing after it lost a patent infringement case brought by Toronto-based i4i in 2007. Those copies' infringements have already been "paid for" by the $200 million in damages, and another $12 million in damages from the jury verdict in May until this week.
In May, a jury awarded i4i $200 million in damages for infringing an i4i patent; Davis tacked on additional damages and interest to bring the total to nearly $300 million.
"If I were Microsoft, I would be a lot more upset with the jury award than the injunction. [The latter] is annoying, but there should be some easy technical workarounds," said Negrin.
Microsoft has said it will appeal the verdict, but it has not put a timetable on that move.
An appeal could take one to two years, said Negrin. "I'd put the over-under at 18 months," he said, noting that much more complex patent cases with more patents and more claims work their way through the appeals process in longer time frames.
But he declined to put a number on Microsoft's chances of getting the verdict and thus the injunction, overturned on appeal. "That really depends on the issues they plan to raise," Negrin said. "I'd expect them to raise invalidity of the patent."
However, a 2006 Supreme Court ruling that set aside a lower court's injunction against eBay in a patent dispute over its "Buy It Now" auction feature may favor Microsoft. In that decision, the Supreme Court said lower courts must use a four-factor test when considering patent injunctions.
"One of the four is that the public interest is not disserved with the injunction," said Negrin. But with the numbers of Word users and the possible disruption to business if the company did stop selling the product in two months, Microsoft may be able to make the case that the injunction is not in the public interest. "That may depend on how Microsoft wants to paint how easy it is, or not, to change Word," Negrin continued.
The bigger factor, he said, is whether i4i can be adequately compensated without the injunction -- in other words, by money. "It might be difficult for i4i to argue that $290 million is not adequate compensation," Negrin said.