Experts cast doubt on Microsoft's patent claims

Microsoft's accusation that the open-source software industry has infringed 235 Microsoft patents has spotlighted a difficult issue: how aggressively should a company police itself for patent violations?

Microsoft said it released the tally — though not the 235 specific patents — in an effort to bring open-source companies to the table to hammer out intellectual property licensing deals similar to the one struck by Linux seller Novell in 2006. But industry experts said the declaration's implicit demand — that companies with open-source software should figure out what Microsoft patents they're infringing and come to the negotiating table — is unrealistic at best.

In general, searching for potential software patent violations isn't practical, given the number, breadth and opacity of patents in the US. Not only that, but it's at odds with Microsoft's own policy to wait for patent holders to get in touch with it if they think there's infringement.

In fact, searching for potential patent problems can actually leave a company financially exposed: if a lawsuit concludes a patent was infringed, a company or individual that knew about the potential infringement must pay triple the financial damages compared with an unknowing infringement.

The fear of wilfulness is so great that often firms instruct their engineers not to look at patents

Matthew Schruers, Computing & Communications Industry Association

"The fear of wilfulness is so great that often firms instruct their engineers not to look at patents," said Matthew Schruers, general counsel to a tech lobbying firm called the Computer & Communications Industry Association (CCIA). Because of the wilfulness issue, the expense of searching patents and the difficulty of actually understanding them: "It's gotten to the point where most software application developers cannot plausibly say they've conducted complete patent searches," he said. (The CCIA, although counting Microsoft among its clients, scorned its patent move on Monday as "very troubling".)

Though Microsoft has paid $1.4bn in three years to license others' patents, the company indicated that it takes a more passive role when it comes to licensing others' patents.

"If a company believes we are using its intellectual property, they should come talk to us," the company said in a statement. It didn't respond on Tuesday to questions about whether it has notified specific parties, such as Red Hat or Linux kernel leader Linus Torvalds, of any of the alleged infringements.

Torvalds defiant
Microsoft said the Linux kernel infringes 42 Microsoft patents, but Torvalds is among those who refuse to investigate whether they're violating any.

"There are several reasons why engineers should not read other people's patents, only their own. And it's not a 'hide your head in the sand' issue, it's a very practical issue of it being a waste of time," Torvalds said.

For one thing, developing technology without looking at patents lets a person honestly say they developed that technology independently, which helps show that the patent in question doesn't meet the requirement of a technology not being obvious, he said. And engineers aren't likely to comprehend patents in the first place: "Unless you have a patent attorney at your side, patent language usually makes no sense."

He derided Microsoft for spreading FUD (fear, uncertainty and doubt) rather than tackling the issue forthrightly. "If Microsoft were to actually tell people what patents they claim we violate, we could either laugh in their face and show prior art, or just show them to be obvious, or we could do things differently," he said.

Some, including David Jenkins, an intellectual property attorney with Eckert Seamans, believe in a more active patent-hunt approach. For example, Motorola should probably look for patent issues in Linux before shipping a Linux-powered mobile phone, he said.

But doing so isn't easy, and "most people should not attempt to perform a search," he said.

"Finding a patent, especially a software patent, on the US Patent and Trademark Office website is very difficult," Jenkins said. "Almost nobody calls everything the same thing... Either you use a [search] term so broad that you get a return of 1,000 patents or, if you narrow it down, it's likely you're going to miss a lot."

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Jenkins' firm charges about $1,000 for a patent infringement search, but the prices go up in cases where a search yields more patents that must be scrutinised.

And even Jenkins could think of only a single instance when a client went back to refresh an existing search with up-to-date results. The frequency of checking "depends on how litigious the patent owner is going to be, and are they going to catch you," he said.

Another issue complicating Microsoft's case is the widespread belief that patent infringement is the rule rather than the exception. "People are infringing other people's patents all the time and don't pay for it," said Mark Radcliffe, an intellectual property attorney with DLA Piper.

"By sitting in my chair right now I'm probably violating somebody's patent," adds Matt Asay, vice president of business development for open-source document-management firm Alfresco, a competitor with Microsoft's SharePoint software. Asay, also a lawyer, doesn't want to violate Microsoft's intellectual property rights…