The United States Patent & Trademark Office (USPTO) completed
a reexamination of two Microsoft patents and decided to let them
The patent office ruled that there was no prior art to invalidate
Microsoft's '517 and '352 patents, covering aspects of the file
allocation table (FAT) file system, which is used to keep track of
the location and sequence of specific files stored on a PC's hard
drive, a floppy disk or a Flash memory card.
The Public Patent Foundation (PUBPAT), a non-profit that works to
improve patent quality and invalidate what it considers bad patents,
requested the reexamination in June 2004.
"This reexamination is concluded, but that doesn't mean this
patent can't ever be challenged again," said Dan Ravicher, PUBPAT's
executive director. Moreover, if Microsoft were to take another
company to court for infringing the FAT file patent, the defendant
could ask the judge to determine whether the patent was valid.
But David Kaefer, director of business development for
Microsoft's intellectual property and licensing group, said
Microsoft isn't inclined to sue.
"In the history of Microsoft, we haven't initiated a single
patent lawsuit against an infringer of a Microsoft patent," he said.
"We are very committed to licensing."
The FAT file system is one of the technologies Microsoft has
placed in its royalty-bearing licensing portfolio.
Pricing for the FAT file system license has been set at 25 cents
per unit, with a cap on total royalties of $250,000 per
manufacturer. The 25 cents per unit fee is available for devices
that use removable media to store data, including PDAs, digital
cameras, digital camcorders and portable digital audio players.
Kaefer said that Creative, Lexar, Pentax, Rockwell and Seiko
Epson were among the companies that had licensed the technology.
Other companies held off pending the results of the reexam.
"The rationale for the licensing program has been to allow people
to improve their implementations," he said. "We have mutual
customers that may have Flash memory disks and want to transfer
files between Windows and non-Windows devices."
Linux support for FAT32, used in today's systems, started with
the 2.0.34 kernel. Some industry watchers wondered if the FAT
patents would let Microsoft stop distribution of Linux.
Ravicher believes the deck was stacked against PubPat because the
reexamination was ex parte, meaning that only the examiner and the
patent holder take part in the proceedings.
"They want a one-sided debate where we weren't allowed to
participate," Ravicher said. "Microsoft gets an unlimited number of
arguments, and we're barred from participating, so it's a pretty
Steven Frank, an attorney specializing in intellectual property
with the law firm of Goodwin Proctor, said he generally advises
clients not to request an ex parte reexamination.
"It's a very risky move," he said. "Typically, the examiner who
is responsible for the reexamination is the same one who was
responsible for issuing the patent. You're telling the examiner,
'You did such a lousy job, you didn't notice this reference.'"
Another problem for a company hoping to get a patent thrown out,
Frank said, is that, because the complaining party doesn't
participate, the examiner and the patent holder work together to
defuse the argument.
But under current U.S. law, only patents issued before Nov. 29,
1999, can be reexamined inter parte, a process in which any
interested party can participate.
In response to a request for public comment by the USPTO on
whether inter parte reexaminations were fair, Ravicher argued that
they could help improve patent quality by increasing the information
available to examiners while affording businesses a less costly
alternative than filing suit.
"We're very supportive of the reexamination process," Kaefer
said. "We often use it ourselves. An important check on patent
quality is allowing third parties to submit prior art."
Recently, one of Microsoft's lead intellectual property counsels
requested that the patent office reexamine the Eolas patent on