Marc P. Misthal and Joshua Matthews were interviewed for an article in Investor's Business Daily on Google five years after its IPO.  The article can be found here. 

 

Maria A. Savio was extensively quoted in an article in E Commerce Times regarding the injunction issued against Microsoft Word (see discussion below).  The article is available here.

 

Marc P. Misthal was interviewed for an article in Target Marketing regarding keyword advertising.  The article can be found here.

In a case that may have far-reaching implications for all of us who use word processors, whether as a professional or as an amateur, Microsoft, the world's biggest software company, was, initially, temporarily enjoined from distributing MS Word, the word processing program used by over 500 million people worldwide.  Shortly thereafter, an appeals court stayed the injunction.

 

At this point, it is unclear as to whether Microsoft will actually be stopped from selling MS Word.  The background of the case is as follows: 

 

In August, an injunction was issued by a federal district court in Texas ordering Microsoft to stop selling or importing that part of MS Word that uses a particular code allowing the program to open certain file extensions.  The injunction issued after a trial in a lawsuit, brought by software company i4i, Inc. of Toronto, sought to stop Microsoft from using i4i's patented technology regarding "XML", a page identification system which represents a vast improvement over the prior HTML system. 

The jury in the case found that Microsoft had infringed i4i's patent and assessed $200 million in damages against Microsoft.  Despite the amount, the damages may be "small potatoes" in comparison to the injunction issued by the Court.  (The Court has subsequently tacked on $40 million for willful infringement and at least another $50 million for pre-judgment interest, bringing the total Microsoft owes, if it loses, to $290 million.)

Microsoft has challenged the Court's decision and the jury verdict and requested a stay of the onerous judgment from the Court of Appeals for the Federal Circuit while it appeals to that Court.  In an unusual move, the Federal Circuit granted Microsoft's Motion, and stayed the injunction until the appeal is heard later this month (and presumably until the Court decides the case).  Microsoft can also pursue at least two other avenues to escape the impact of the i4i decision, namely seek a settlement with i4i or, as is likely happening right now, design around whatever claim coverage i4i has under its U.S. Patent No. 5,787,449, and thereby establish a clearer non-infringement position.

 

We will certainly update our newsletter readers on further developments in this case, which will undoubtedly make headlines whichever way it is decided.

 

 

 

In 2003, Congress passed the Fair and Accurate Credit Transactions Act ("FACTA"), and federal agencies, including the Federal Trade Commission ("FTC"), were directed to issue rules directing certain businesses to prepare and implement identity theft prevention policies. This "Red Flags Rule" goes into effect on November 1, 2009, and can be found here.

So which businesses are covered? FACTA applies to any business that allows deferred payments (provides goods or services now and bills later), and the FTC has said that professional services, such as medical practices and law firms, fall within this definition. But a business which only accepts credit cards wouldn't be covered.

The Rule requires that a business conduct a formal assessment of its risk of identity theft and then prepare and implement a written policy to prevent it. Businesses that don't comply may be subject to sanctions. Acceptable preventive actions may include restricting employee access to sensitive information, conducting criminal background checks prior to an offer of employment, monitoring janitorial staff, verifying the identity of new clients, and destroying credit card records after the card has been charged. Since most medical practices and attorneys don't lock up their paper files or restrict access to computer files, implementation of this Rule will require major changes in the operation of these businesses.

The opinion of the American Bar Association is that FACTA and the Red Flags Rule do not apply to attorneys, and it recently sued the FTC to prevent enforcement. The ABA is concerned that implementation of the Rule by attorneys would be costly for both attorneys and clients. We will be monitoring the progress of this suit.
 
For further information, contact Amy B. Goldsmith.

 

Intellectual Property News Editorial Board: Richard S. Schurin (rschurin@grr.com), Marc P. Misthal (mmisthal@grr.com), and Steven Stern (sstern@grr.com) of Gottlieb, Rackman & Reisman, P.C.

Suggestions, questions and comments should be directed to the Editorial Board by email or telephone (212) 684-3900.

For nearly forty years, Gottlieb, Rackman & Reisman, P.C. has provided legal advice and guidance on all aspects of patent, trademark, copyright, and unfair competition law, tailoring its counsel to the specific needs of its clients.