Michel Vulpe

Michel Vulpe (born December 8, 1952 in Montreal, Quebec) is the co-inventor of a technology described in US patent 5,787,449. In 2007 Michel Vulpe launched a successful suit against Microsoft for willfully infringing on this patent.

Career

In 1993, Michel Vulpe founded Infrastructures for Information Inc. (i4i), an independent software company specializing in the delivery of XML / SGML document processing solutions. Prior to founding i4i, Michel worked for a diverse collection of enterprises Canada and the US such as Geac, OCLC, The Smithsonian, PFW and SoftQuad. He holds a Masters in Political Science from the University of Toronto and a Bachelors (Honours) from the University of Victoria.

Patent

In 1994, Michel Vulpe and Stephen Owens filed for a patent for an invention that makes it possible for computer users to use regular word processors as XML /SGML editors. In 1998, the United States Patent and Trademark Office issued patent #5,787,449 [1], which describes the invention as "a system and method for the separate manipulation of the architecture and content of a document, particularly for data representation and transformations. The system, for use by computer software developers, removes dependency on document encoding technology. A map of metacodes found in the document is produced and provided and stored separately from the document. The map indicates the location and addresses of metacodes in the document. The system allows of multiple views of the same content, the ability to work solely on structure and solely on content, storage efficiency of multiple versions and efficiency of operation."

In 2007 Microsoft filed an ex parte re-examination request with the USPTO citing prior art as invalidating the 5,787,449 patent. The USPTO reviewed the prior art and Microsoft's assertions of patent invalidity in light of the prior art. In April 2010 the USPTO affirmed all the challenged claims. Microsoft also filed for patent re-examination with the USPTO. The re-examination confirmed all the challenged claims. Not satisfied with this result Microsoft file an appeal to the Commissioner of Patents. This was turned down. Microsoft then filed another re-examination request. This second request was denied by the USPTO [2].

Patent Infringement by Microsoft

In May 2007 Vulpe and i4i successfully sued Microsoft, in the Federal Court for the Eastern District of Texas, for willfully infringing the '449 patent [3]. The court awarded over $240 million in damages and granted the first ever injunction against the infringing product, Microsoft Word. The injunction was stayed by the US Court of Appeals for the Federal Circuit pending Microsoft's appeal. On December 22, 2009 the Court affirmed in full the decision of the lower court: the injunction was reinstated, the damages awarded affirmed and the validity of the patent affirmed.

Microsoft subsequently filed a writ of certioria with the United States Supreme Court [4]. The question put to the Court is: "The Patent Act provides that “[a] patent shall be presumed valid” and that “[t]he burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.” 35 U.S.C. § 282. The Federal Circuit held below that Microsoft was required to prove its defense of invalidity under 35 U.S.C. § 102(b) by “clear and convincing evidence,” even though the prior art on which the invalidity defense rests was not considered by the Patent and Trademark Office prior to the issuance of the asserted patent. The question presented is: Whether the court of appeals erred in holding that Microsoft’s invalidity defense must be proved by clear and convincing evidence."

The writ was granted in November 2010.

Supreme Court ruling

Main article: Microsoft Corp. v. i4i Ltd. Partnership

On June 9, 2011, the US Supreme Court ordered Microsoft to pay $290 million in damages to i4i.^[1]

References

1. ^ "SC orders Microsoft to pay $290m to i4i". http://www.ft.com/intl/cms/s/2/47b15c06-92c1-11e0-bd88-00144feab49a.html#axzz1OoEOudq2. 

• http://www.bloomberg.com/apps/news?pid=20601204&sid=app1kLHGmKHg
• http://www.patentstorm.us/patents/5787449.html
• http://xml.coverpages.org/i4iDesktop21.html
• http://www.archimuse.com/mw97/speak/vulpe.htm
• http://www.patentlore.com/articles/efs.htm
• http://www.thestar.com/business/article/680142
• http://www.patentstorm.us/patents/5787449.html
• http://news.cnet.com/8301-10805_3-10308013-75.html?tag=mncol;txt
• http://www.groklaw.net/article.php?story=20090812144154814&query=i4i
• http://www.i4ilp.com
• http://www.supremecourt.gov/Search.aspx?FileName=/docketfiles/10-290.htm
• http://www.whda.com/blog/2010/11/pto-refuses-microsoft-request-for-2nd-reexamination-of-i4i-patent-but-supreme-court-grants-cert-on-clear-convincing-standard/