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Beating the TomTom: Drums of War? (Not)

Intellectual property Rights

Updated 3:30 PM:  Jim Zemlin, Executive Director of the Linux Foundation has just posted a statement, which you can find at the end of this blog entry.  In addition, Dow Jones reports that "TomTom spokesperson Taco Titulare told Dow Jones Newswires Thursday that TomTom rejects the Microsoft claims and that the firm will "vigorous defend" itself, without elaborating."

I first learned of Microsoft bringing suit against in-car navigation company TomTom NV when I got an email from a journalist asking for comment.  He in turn, had gotten the news from Todd Bishop's Microsoft Blog.  Why all the buzz?  Because apparently several of the patent claims relate to TomTom's implementation of the Linux kernel - and while Microsoft has made noises publicly and threats privately for years alleging that Linux infringes multiple Microsoft patents, it has never actually brought a suit against a Linux implementer specifically alleging infringement by the Linux portion of their product.

The result is that across the industry, everyone is asking the same question:  What Does it All Mean?  For what it's worth, here's my take.

Disclaimers first:  I am legal counsel to the Linux Foundation, but the following are my thoughts alone, and do not reflect the views, or any conversations I've yet had, with LF or any other client.

Let's go next to the facts such as they are known at this point in time.  Microsoft has sued the Dutch parent company, TomTom NV and its U.S. subsidiary, TomTom, Inc.  The complaints are available on line (the copies you can find here and here are courtesy of Pamela Jones at Groklaw; PJ's short initial comment can be found here).  TomTom is a Dutch company, and Microsoft has therefore elected to proceed on two fronts: a federal district court action in Microsof't's home state of Washington (the first complaint), and also a complaint brought before the United States International Trade Commission (the second document).  According to an article in Bloomberg News, the civil case is likely to be put on hold until the ITC announces whether it will, or will not, agree to act on the complaint.

Next, there is a terse press release from Microsoft, which you can find here (the complete text also appears at the end of this blog entry, for the usual archival reasons).  The press release is only a few sentences long, and claims that Microsoft tried for "more than a year" to persuade TomTom to purchase a license.  The release is largely a quote attributed to and includes a quote from Horacio Gutierrez, corporate vice president and deputy general counsel of Intellectual Property and Licensing, who expresses the hope that this "highly respected and important company" will still come to the table.  The press release does not specifically mention that any of its infringement allegations implicate Linux.

Rounding out what there is to know at this time on the factual side, CNET.com's Ina Fried reports on an interview that she had with Gutierrez yesterday afternoon, in which she quotes him saying that the suit is "specific" to TomTom, and does not indicate a change of policy regarding either Linux specifically, or open source software generally:

It is the "TomTom implementation of the Linux kernel that infringes these claims," Gutierrez said. "There are many flavors of Linux (and) many implementations of the Linux kernel. Cases such as these are very fact-specific."... Gutierrez said Microsoft chose to include the open source claims alongside the proprietary GPS system claims because both related to TomTom. He characterized the suit as a dispute with TomTom as opposed to a new salvo against Linux.

...Asked whether that meant that Microsoft would seek compensation from all products that use the Linux kernel, Gutierrez said, "No. That is really not what we have in mind. This case is about TomTom's infringement."

...Gutierrez said that the move did not reflect a change in Microsoft's overall position toward open-source software. "I think there shouldn't be any ambiguity on our expectations as a company. We recognize that open-source software will continue to be a part of the industry."

You should read the entire article, as it presents what I assume is the de facto second press release issued by Microsoft, and granting the same-day interview in Microsoft's back yard to Fried was clearly not an accident.  I'm therefore sure that the statements from the chief Microsoft licensing offier were quite carefully weighed befoere they were made.  With that in mind, consider the two following additional bits (among others):

Gutierrez said that the move did not reflect a change in Microsoft's overall position toward open-source software. "I think there shouldn't be any ambiguity on our expectations as a company. We recognize that open-source software will continue to be a part of the industry."

But, he said that the company's "appreciation and respect for the open-source community is not inconsistent" with its desire to protect its intellectual property.

That said, he acknowledged the suit could hurt some of the efforts the company has tried to make in recent years to mend fences with the Linux world.

The story goes on in the same 'on the one hand we haven't changed but on the other hand we realize that open source folks won't like this manner,' and finally include the following:

Although Microsoft did not call out the Linux claims, Gutierrez said the company was not trying to hide them. While Linux is not mentioned in the federal lawsuit, he said, they are noted in two paragraphs of the ITC claim.

For benchmarking purposes, it's important to know that while Microsoft has spent a great deal of time urging vendors over the years to take out licenses to multiple patents, including those that it claims are infringed by Linux (and other open source software), it has almost never sued anyone, ever, for infringement of any of its patents relating to any of its products.  But it does make its expectations very clearly known to those vendors that it drops in to visit.  According to Microsoft, its five year old licensing program has resulted in licensing deals with over 500 vendors. Hence the question that everyone is asking today: why now, and why against this particular company?

On the latter question, I think it's worth noting what products are involved.  None of Microsoft's flagship products are involved.  Rather, it's GPS mapping software (TomTom competitor Garmin Ltd. has reportedly signed a licensing agreement with Microsoft already for MSN Direct, which provides traffic, flight and weather information to GPS devices).  According to the Bloomberg story:

 

The GPS patents cover ways to run multiple applications, provide "more natural" driving instructions, integrate with other devices and access the Web, Gutierrez said. The file-management patents relate to ways to name, organize and access data and to work better with flash memory, used to store music and image files.  Electronics makers Alpine Electronics Inc., Pioneer Corp. and JVC Kenwood Holdings Inc. license the patents, Gutierrez said.

To end this fact gathering, I'll throw two final pieces of data into the mix:  the first is that Microsoft has recerntly announced the first layoffs in its history, and is feeling the impact of Linux-based netbooks and mobile devices as well as the overall down economy.  And the second is that Gutierrez, an IP attorney, was promoted to Microsoft's top licensing spot just one week ago.  In that capacity, he leads the company's IP-related strategic business, legal and public policy efforts, and also manages Microsoft's patent portfolio and licensing program.

So with all of that as prelude, what do I think?  The answer is this: No sea change.  at most, a minor course correction, reflecting:

1.  A new guy at the wheel, letting the marketplace know that they better not take him for granted.

2.  The ongoing internal divisions within Microsoft between the proprietary old guard and the more enlightened new guys (including Ozzie) that either "get" open source software, or at least understand that Microsoft's customers do.  With layoffs and a bad quarter, perhaps the it was politically expedient to throw the old guard a bone.

3.  A desire to beef up the credibility of the licensing folks that will be knocking on the doors of the smaller mobile device and netbook vendors in the months ahead.

What I don't see, really, is any likelihood that a major shift has occurred, and that this is the beginning of the long-feared Microsoft vs. Linux Armageddon.  Simply put, it just doesn't make sense.

What is most interesting to me is that Microsoft is willing to take the hit in public, and in particular with the open source community.  Time after time, whenever any of its more enlightened employees begin to gain a measure of tentative trust in the community, the other side of the house, like Lucy, yanks the football out from under poor 'ole, trusting Charley Brown once again.  It must get to be pretty tedious for them, I would think.

I should not close without noting that there is another issue of note here: what happens if TomTom doesn't knuckle under, and Microsoft wins in court on the patent claims that it alleges are infringed by Linux?

There are a number of things to note in this context.

1.  While the ITC MAY decide to act on Microsoft's complaint and MAY decide to take action based upon it, it will NOT determine whether or not patent infringement in fact exists.  So whatever happens in any proceeding before the ITC will have no bearing on the validity of Microsoft's patents.

2.  Litigating the patent suit will take a very long time.  In the unlikely event that Microsoft brings suit against anyone else, those courts will sit on the complaints and do nothing until the first court comes to a final conclusion, and all appeals are exhausted.  Result: no one else is spending real dollars defending a law suit for a very long time to come.

3.  Perhaps most significantly, now that Microsoft - finally - after so much posturing has finally identified some of its patent claims, those claims will be subjected to a level of scrutiny the likes of which has never been seen before.  One way to bust a patent is by revealing "prior art" - in layman's terms, evidence that someone else developed the same technology before, or that the patented invention could reasonably be inferred by one skilled in the trade. 

There's an old saying in open source software that goes like this:  "many eyes make all bugs shallow."  Certainly, if there is a shred of prior art on the planet, it will be found and made available to the court.  Now that Microsoft has brought some of its "235 patents infringed by open source software, including Linux" out of the closet, the attack on those claims will begin.

One need only look to the abysmal experience of SCO to see how much blood, sweat and tears (and, in that case, an unparalleled amount of folly as well) can be spilled in tilting at Linux.  With SCO vanquished, are plenty of trained troops itching for another fight.

So that's my take. I'll be very surprised to learn that this carefully crafted law suit and announcement is more than business as usual.  And I'll be even more surprised if it doesn't turn out, when the technology historians look back and write the tale of our times, to have hurt Microsoft far more than it did open source. 

For further blog entries on Intellectual Propery Rights issues, click here

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Calm Down

Right now the Microsoft claim against Tom Tom is a private dispute between those two entities concerning GPS mapping software. We do not feel assumptions should be made about the scope or facts of this case and its inclusion, if any, of Linux-related technology. Any patent litigator will tell you that the path between asserting a claim under a patent and an actual, final determination that the patent is (1)valid and (2) that the claims of the patent are actually infringed is an extremely long road. If this case is in any way directed at Linux (in fact, Horacio Gutierrez, Microsoft’s corporate vice president and deputy general counsel of Intellectual Property and Licensing, has specifically stated that it isn’t), the Linux ecosystem has enormously sophisticated resources available to assist in the defense of any claim that is made against Linux.

Hope for the Best

It is our sincere hope that Microsoft will realize that cases like these only burden the software industry and do not serve their customers’ best interests. Instead of litigating, we believe customers prefer software companies to focus on building innovative products.

Plan for the Worst

The Linux Foundation is working closely with our partner the Open Invention Network, and our members, and is well prepared for any claims against Linux. We have great confidence in the foundation they have laid. Unfortunately, claims like these are a by-product of our business and legal system today. For now, we are closely watching the situation and will remain ready to mount a Linux’s defense, should the need arise.

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Microsoft v. TomTom: Patent Infringement Action

Microsoft has filed an action today after attempting for more than a year to engage in licensing discussions with TomTom.

REDMOND, Wash. — Feb. 25, 2009 —

"Microsoft has filed an action today in the U.S. District Court for the Western District of Washington and in the International Trade Commission (ITC), against TomTom NV and TomTom Inc. for infringement of Microsoft patents. We have taken this action after attempting for more than a year to engage in licensing discussions with TomTom.

"We have an established intellectual property licensing program, and the patents involved in this case, relating to innovations in car navigation technology and other computing functionality, have been licensed by many others. In situations such as this, when a reasonable business agreement cannot be reached, we have no choice but to pursue legal action to protect our innovations and our partners who license them. Other companies that utilize Microsoft patents have licensed and we are asking TomTom to do the same.

"TomTom is a highly respected and important company. We remain open to quickly resolving this situation with them through an IP licensing agreement."

 

 
Beating the TomTom: Drums of War? (Not) | 1 comments | Create New Account
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Beating the TomTom: Drums of War? (Not)
Authored by: Winter on Friday, February 27 2009 @ 07:35 AM CST
After reading the articles and many comments, I got the impression that MS is beating the patent drums to get into the embedded space. It seems. MS is loosing out in the embedded and netbook market. It can use special licensing terms to sugar it's own embedded offerings.

The 500 licensees will undoubtedly include the biggest portable music/video players and photo camera producers. Which means that MS can milk everyone who sells some gadget with a file system.

This must be a very big cash cow for MS. Important after stagnating PC sales and tanking of Vista. There seems to have been a nearly avoided stock holders revolt recently. MS need to show agression on that front too.

The 'Why now?' question can possibly be answered with:
1 With the recession, producers will be less willing to pay up and might go totally MS free, like TomTom did. It would pay to set an example.
2 Producers might have less money to defend themselves. TomTom has been hit hard by the resent crash of the share prices and car sales.

Winter
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