It’s Apple vs. Microsoft over iPod Patent - Apple’s Options
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It’s clear what Microsoft would like to see Apple do. David Kaefer, Microsoft’s director of intellectual property licensing, said in a statement that “In general, our policy is to allow others to license our patents so they can use our innovative methods in their products. Microsoft and Apple have previously licensed their respective patent portfolios to one another and we maintain a good working relationship with Apple.” That may be, but it’s likely to be a very cold day in hell before Steve Jobs sends Microsoft a licensing check for every iPod sold.
So what can Apple do? Fortunately the USPTO grants a three month window after a final rejection during which the company can reply. Potential replies offer Apple many other, far more palatable options. Some of these options include appealing the decision, requesting reconsideration, or filing a continuation of the original application.
Apple can file a declaration that it invented the technology before Microsoft filed its patent request; in theory, a simple look at all the iPods on the market before May 2002 should give the claim a lot of strength. This could encourage the patent office to launch an investigation into who actually invented the technology.
The technical term, if Apple requested the investigation, is applying for a Patent Interference. If Apple won the Interference proceeding, Microsoft’s patent would be revoked and Apple would be issued the patent. But it could involve incredible amounts of documents from both companies. According to patent lawyer Scott Culpepper, “Most large companies maintain lab notebooks where they keep logs of daily investigative activities. The patent office will take a look at those books to try to determine who conceived the idea. It’s going to come back to lab notebooks, internal memorandum and other internal documentation.”
Another approach Apple could take involves altering its patent claims so that they don’t conflict with Microsoft’s. Or, if Apple believes its claims already do not conflict with Microsoft’s, it could use a procedure known as a “swear behind.” If Apple successfully argued that Microsoft’s patent did not cover Apple’s technology, then Apple would gain a patent while Microsoft kept its patent.
Even if the patent office rejects Apple’s patent again, that may not be the end of the story. The company could literally make a federal case out of it by taking its complaint to the courtroom. The federal courts have the power to overturn rejections issues by the USPTO. They have done so in the past. One has to wonder if any judge in the land would award the patent to Microsoft in such a situation.
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