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Microsoft v. Barnes and Noble: Take The Design-Around Challenge

On March 21st, Microsoft Corp., filed patent infringement claims (Microsoft v Barnes and Noble) against Barnes & Noble Inc., seeking to block U.S. imports of the Nook e-reader.   As reported in a recent Business Week article, Microsoft said it filed complaints with the U.S. International Trade Commission in Washington and in federal court in Seattle against Barnes & Noble and the Nook’s manufacturers, Foxconn International Holdings Ltd. and Inventec Co. Ltd., after year long licensing talks failed.  The Nook uses Google Inc.’s Android operating system.

Microsoft Corp., alleges infringement of the following four US Patents:

US Patent No. 5889522, entitled, “System provided child window controls,” involves API’s or classes for creating tabbed windows.

US Patent No. 5778372, entitled, “Remote retrieval and display management of electronic document with incorporated images,” recites systems and methods for retrieving images or resources for display in an electronic document.

US Patent No. 6339780, entitled, “Loading status in a hypermedia browser having a limited available display area,” claims methods and systems for indicating the loading status of a downloading electronic document.

US Patent No. 6957233, entitled, “Method and apparatus for capturing and rendering annotations for non-modifiable electronic content,” involves methods and systems for annotating an electronic document.

US Patent No. 6891551, entitled, “Selection handles in editing electronic documents,” recites methods and systems for selecting text strings.

As reported in the Business Week article, Microsoft has established a patent- licensing program for Android device manufacturers, and at least two manufacturers have signed license agreements, including HTC Corp., which makes phones for both the Android and Windows systems, Inc., which makes the Kindle, signed a license with Microsoft last year.

For those of you out there that are interested to know if your client may infringe one or more of these patents, or you or your client are considering the options for designing around the patents in issue, I invite you to test your proposed designs using the attached interactive claim map, created with assistance of the ClaimBot® claim mapping software available from Lucid Patent, LLC.  The claim map, which charts the claim limitations of the five patents listed above, recites 54 claim limitations extracted from and representing the cumulative claim limitations of all five patents.  By indicating whether a proposed design includes or does not include some or all of the mapped limitations, the spreadsheet determines, by the process of eliminating claims using the “all elements rule,” whether or not any particular claim is infringed.  While the chart represents the claims of all five patents, it can be used to determine the likelihood of infringement of any single one patent, by working only with the limitations for that particular patent, or for all patents, by working with all the limitations in the map.

Please note that the claim map is not intended to be a substitute for an opinion by a qualified patent attorney, but rather a tool for a rough evaluation of infringement.  In fact, even if the tool indicates possible infringement for any particular design, it is still possible that a closer inspection may reveal that no infringement exists, because the map may not contain each and every limitation of a particular claim.  On the other hand, if the map indicates that infringement is unlikely, and the determination of the missing claim limitation is clear and unequivocal, there is a very good chance that the proposed design does not infringe the patent or patents being analyzed.  Nonetheless, the patent map should not be relied on as a substitute for an opinion by a qualified patent attorney.   

Here is the map:  Microsoft Patents v. Barnes and Nobles – Claim Chart – April 3

Principal & Chief Innovation Officer

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