Barnes & Noble responds to Microsoft with 44 pages of prior art, requests evidence of patent misuse

On Monday we updated you on Microsoft’s ongoing attempts to collect royalties from Barnes & Noble for their use of Android in Nook devices. In the process we got a look into some of the tactics Microsoft has been using to sign up Android vendors in licensing agreements.

Now, in another detailed report from Groklaw, we learn that Google has filed an objection to Microsoft’s most recent request for the company to respond to its motion in a reduced period of time. More importantly perhaps, Barnes & Noble has bombarded the ITC with almost 44 pages of prior art, in a “Supplemental Notice of Prior Art” filing. We of course can’t go over even a fraction of all the prior art listed in the full PDF, but you can expect to see just about everything from a ton of old Netscape Navigator stuff, to articles and technical documents on Adobe products, Hypercard, Mosaic, IBM OS/2, the Arena web browser, and articles on Apple’s Newton MessagePad 2000.

Barnes & Noble is also requesting the ITC issue a letter rogatory to Canadian company MOSAID Technologies, who hasn’t voluntarily handed over evidence of a deal it made with Nokia and Microsoft. As they describe (below), B&N seeks to use evidence of that deal to defend itself against Microsoft’s claims. A letter rogatory is essentially a letter of request from one country’s court to another, in this case the appropriate Canadian court, to request permission of an act that might “constitute a violation of that country’s sovereignty” otherwise. In other words, they need to get the Canadian’s court permission before going after MOSAID.

B&N described the situation in filing 464403 from November 16, 2011:

Barnes & Noble seeks documents and deposition testimony from MOSAID Technologies Incorporated (“MOSAID”), a patent licensing company, to be used at trial to defend against the allegations made in Microsoft’s complaint in this proceeding. Specifically, as part of Barnes & Noble’s affirmative defense of patent misuse, Barnes & Noble seeks the evidence requested in order to prove that Microsoft is improperly expanding the scope of its patents in an attempt to dominate mobile operating systems such as the AndroidTM Operating System (“Android”) that threaten Microsoft’s monopoly in personal computer operating systems. On information and belief, to further that strategy, Microsoft and Nokia Corporation (“Nokia”) and MOSAID recently entered into a series of agreements transferring approximately 2,000 Nokia patents to MOSAID in exchange for MOSAID’s efforts to license those patents (or sue those that do not take a license) and promise to pay approximately two-thirds of any royalties back to Microsoft and Nokia. Microsoft had previously entered into partnership agreements with Nokia, whereby one of the stated motivations for this partnership was to combine the parties’ respective patent portfolios and to coordinate their offensive use of patents to drive out open source operating systems, including Android specifically. Such conduct constitutes patent misuse, which renders the patents at issue unenforceable.

Accordingly, Barnes & Noble respectfully requests that the Administrative Law Judge grant Barnes & Noble’s application and recommend that the United States District Court for the District of Columbia issue Barnes & Noble’s Letter Rogatory to the appropriate judicial authority in Canada for international judicial assistance pursuant to Section 43 of the Canada Evidence Act or Section 60 of the Evidence Act of Ontario.

Barnes & Noble then provides specific examples of Microsoft’s “patent misuse” regarding MOSAID:

As part of that affirmative defense, Barnes & Noble has alleged that Microsoft is using its licensing practices to improperly broaden the scope of its patents in an attempt to dominate mobile operating systems such as Android that threaten Microsoft’s monopoly in personal computer (“PC”) operating systems.

In the latest of a series of tactics designed to further that strategy, Microsoft recently entered into an agreement with Nokia Corporation (“Nokia”) and MOSAID to share in royalties derived from licensing (or suing those that do not take a license) approximately 2,000 Nokia patents acquired by MOSAID. On September 1, 2011, MOSAID acquired Core Wireless Licensing S.a.r.l. (“Core Wireless”), a company which holds a portfolio of 400 patent families, consisting of 2,000 wireless patents and patent applications originally filed by Nokia. Nokia had previously assigned its patents to a trust, which then assigned the patents to Core Wireless. Microsoft secured a license in the Nokia patents acquired by MOSAID. The arrangement effectively gives Microsoft greater power to assert patents against rival technologies.

We’ll keep you updated as the proceedings continue.