According to legal observer site Groklaw, Barnes & Noble has filed a supplemental notice of prior art that contains a 43-page list of examples Barnes & Noble believes counters Microsoft's claim that Nook violates five of Microsoft's patents.
Barnes & Noble is being particularly noisy about the patents Microsoft is leveraging against the Nook, as it sees Microsoft as launching this lawsuit against Barnes & Noble and co-defendants Foxconn and Inventec as an effort to derail the Android operating system and device sales, as opposed to a genuine need to protect Microsoft's innovation.
Microsoft filed the lawsuit back in March, only doing so after it tried to negotiate in good faith with the Nook device makers. Horacio Gutierrez, Microsoft Corporate Vice President and Deputy General Counsel for Intellectual Property & Licensing, said at the time:
"We have tried for over a year to reach licensing agreements with Barnes & Noble, Foxconn and Inventec. Their refusals to take licenses leave us no choice but to bring legal action to defend our innovations and fulfill our responsibility to our customers, partners, and shareholders to safeguard the billions of dollars we invest each year to bring great software products and services to market."
Barnes & Noble, for its part, refused to sign a non-disclosure agreement when first approached by Microsoft to discuss the alleged infringement. Because of this, Barnes & Noble executives have been extremely vocal in calling out Microsoft for what they see as leveling "trivial" and "insignificant" patents in an effort to damage Android growth.
To that end, Barnes & Noble is using what Groklaw describes as an affirmative defense, even to the point of complaining to the US Department of Justice about Microsoft's alleged misuse of patents:
"In addition to the oppressive restrictions and prohibitions in Microsoft's proposed licensing agreement, Microsoft is also demanding exorbitant licensing fees for the use of Android. Indeed, shortly after Microsoft sent Barnes & Noble a proposed licensing agreement on or about January 6, 2011, Microsoft confirmed to Barnes & Noble that it was demanding licensing fees [redacted] for each NookTM and [redacted] for each Nook ColorTM. It is Barnes & Noble's understanding that these licensing fees that Microsoft demands for the use of the Android are the same, or higher, than the licensing fees that Microsoft charges for its own Windows Phone 7--despite the fact that Microsoft only claims ownership of only trivial and non-essential design elements in Android-based devices, as opposed to an entire operating system."
The list of prior art for the five patents that Microsoft claims the Nook infringes is very much a walk down memory lane. The first group of prior art evidence presented by Barnes & Noble for U.S. Patent No. 5,778,372 alone lists 172 pieces of prior art (including, I was surprised to note, a book by Laura Lemay on HTML 3.0 that I edited back in 1995 as a development editor for Sams).
Besides the personal connection, the '372 prior art made reference to a lot of technology and people from the early days of the public Internet… like Mosaic, the NCSA, and (I kid you not) the Arena web browser. The list was like old home week for the early World Wide Web.
Prior art is considered to be pretty important in any patent litigation suit, since it can show that the technique or innovation outlined in a patent was pretty much already in use before the patent was filed. This minimizes the value of and can even invalidate the patent. Prior art is no guarantee that the case will blow up for a patent plaintiff, but its not helpful, and with the preponderance of prior art that Barnes & Noble just leveled at Microsoft, it seems likely that at least one of these pieces of prior art will stick.
What's interesting to me, as a clear layman observer, is why Microsoft didn't know that it would be so easy to find so much evidence of prior art against these five asserted patents. Just looking at the '372 evidence--surely they would have known about the technology in Mosaic; Internet Explorer was originally conceived from the commercially licensed version of that browser, Spyglass Mosaic (though it was engineered from the ground up by Spyglass and not based on NCSA Mosaic's source code).
With so much prior art, it lends a lot of credence to Barnes & Noble's assertions that Microsoft is only doing this to trip Android up. From my point of view, it looks like the first line of attack is to threaten infringement and then settle behind an NDA. If that doesn't work, Microsoft files a lawsuit and hopes that the defendants will cave and settle before the case goes to trial--again, all nice and quiet.
Barnes & Noble, it should be noted again, is being anything but quiet, and is not following Microsoft's playbook, if this is indeed the play.
But even if Microsoft loses this case, they still feel like they can get a win. By spreading FUD about Android's so-called patent violations, even with a case that may not win in court, it gives Microsoft time to leverage their patent portfolio against other vendors and sign them up for licensing agreements.
That, more than anything, is probably why Barnes & Noble is being so loud. Forty three pages of prior art is not just a message to the judge about how frivolous these patents can be, but also to other Android vendors who might be getting squeezed by Microsoft even now. Perhaps those vendors may want to wait and see how Microsoft's case against Barnes & Noble goes before signing on the dotted line.
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