Android Patent Infringement: Licensing is the Solution

As you may have seen, Microsoft today filed legal actions against Barnes & Noble, Inc., Foxconn International Holdings Ltd., and Inventec Corporation in both the U.S. International Trade Commission and the U.S. District Court for the Western District of Washington. Today’s actions focus on the patent infringement by the Nook e-reader and the Nook Color tablet, both of which run the Android operating system.

Together with the patents already asserted in the course of our litigation against Motorola, today’s actions bring to 25 the total number of Microsoft patents in litigation for infringement by Android smartphones, tablets and other devices. Microsoft is not a company that pursues litigation lightly. In fact, this is only our seventh proactive patent infringement suit in our 36-year history. But we simply cannot ignore infringement of this scope and scale.

To help companies address Android’s ongoing infringement, we’ve established an industry-wide licensing program. Last year, HTC took a license covering its Android-based smartphones, confirming the viability of our license-first approach. In the e-reader space, Amazon.com signed a patent license with Microsoft last year covering its Kindle device. And many other device makers have also taken licenses to Microsoft’s patents under a number of existing licensing programs. Unfortunately, after more than a year of discussions, Barnes & Noble, Foxconn and Inventec have so far been unwilling to sign a license, and therefore, we have no other choice but to bring legal action to defend our innovations.

The Microsoft-created features protected by the patents infringed by the Nook and Nook Color tablet are core to the user experience. For example, the patents we asserted today protect innovations that:

• Give people easy ways to navigate through information provided by their device apps via a separate control window with tabs;

• Enable display of a webpage’s content before the background image is received, allowing users to interact with the page faster;

• Allow apps to superimpose download status on top of the downloading content;

• Permit users to easily select text in a document and adjust that selection; and

• Provide users the ability to annotate text without changing the underlying document.

By bringing this case, we are protecting our investments on behalf of our customers, partners and shareholders – just as other companies do. Our firm view remains, however, that licensing is the best way forward for the industry, and we will continue to prefer the licensing path to litigation.

About the Author

Deputy General Counsel & Corporate Vice President, Legal and Corporate Affairs, Microsoft

Horacio Gutiérrez is Corporate Vice President and Deputy General Counsel in charge of the Microsoft products and services group (PSG). In this role, he oversees the team that provides front-line legal support to all of Microsoft's engineering and marketing teams, including Devices and Studios, Applications, Services and Dynamics, Operating Systems, Cloud and Enterprise, and Marketing. Previously, Horacio led the worldwide intellectual property group, including the development, maintenance and enforcement of the company’s IP portfolio, inbound and outbound patent licensing, and IP legal and public policy strategy. Prior to his eight years leading the IP group, Mr. Gutiérrez was based in Paris, where he was Microsoft's associate general counsel for Europe, the Middle East and Africa. Mr. Gutiérrez started his career at Microsoft in Fort Lauderdale, Fla. at the company’s Latin American regional headquarters, where he was responsible for commercial and corporate matters for the region.