Barnes & Noble takes on Microsoft’s Android patents

Microsoft’s Android legal steamroller may just have hit a speed bump, in the form of a challenge over the validity of its patents by Barnes & Noble. Where other makers of Android devices have rolled over and agreed to pay Microsoft licensing fees, Barnes & Noble is fighting back — and Microsoft may have met its match.

Microsoft sued Barnes & Noble in March for patent infringement in the Android-based Barnes & Noble Nook and Nook Color. Now Barnes & Noble has filed a Supplemental Notice of Prior Art. In the U.S. patent system, if an invention has been described in prior art, a patent on that invention is not valid. In all, Barnes & Noble lists more than 100 examples of prior art.

Legal documents filed by Barnes & Noble claim Microsoft is improperly expanding the scope of its patents in an attempt to dominate mobile operating systems that threaten its monopoly in personal computer OSes: “In addition to the oppressive restrictions and prohibitions in Microsoft’s proposed licensing agreement, Microsoft is also demanding exorbitant licensing fees for the use of Android.”

Yes, Barnes & Noble has rushed in where HTC, Samsung, and the others feared to tread.

Last year, Microsoft convinced mobile phone manufacturer HTC to pay an undisclosed amount for each phone it sold with Android installed. Microsoft’s big guns started leaning on other firms earlier this year, extracting  patent license agreements. One by one they fell. First the smaller fry — Acer, Itronix, Onkyo, Velocity Micro, ViewSonic, and Wistron — then mighty Samsung settled and agreed to pay Microsoft for each Samsung Android device that hits the streets. As a result, more than half of the Android phones sold in the United States right now carry a Microsoft tax. Microsoft’s probably making more from Android license fees than it is with its own mobile software.

Microsoft general counsel Brad Smith said in a blog post noting Samsung’s acquiescence, “These agreements prove that licensing works. They show what can be achieved when companies sit down and address intellectual property issues in a responsible manner. The rapid growth of the technology industry, and its continued fast pace of innovation are founded on mutual respect for IP.”

But a more cynical person might say manufacturers probably took a look at the cost of the proffered Android-related patent license, compared it to the cost of fighting Microsoft, and decided to fold.

But the folks at Barnes & Noble looked at the cost of settling and the cost of fighting, and decided to fight. Finally, one organization (other than Google, of course) is willing to take on Microsoft’s patent lawyers, mano a mano.

Barnes & Noble’s Supplemental Notice of Prior Art (PDF) covers five patents Microsoft is using in its complaint against Barnes & Noble: numbers 5778372, 5889522, 6339780, 6891551, and 6957233. All of the patents cover behaviors that are, at least on the surface, fundamental to many operating environments. Barnes & Noble’s Supplemental Notice contains 43 pages of prior art for those five patents — instances where the behavior described in the patent existed prior to the patent being issued.

For example, the abstract for patent 6339780 states, “Described herein is a portable computer having a limited display area. An Internet or other hypermedia browser executes on the portable computer to load and display content in a content viewing area. During times when the browser is loading content, the browser displays a temporary, animated graphic element over the content viewing area. The graphic element is removed after the content is loaded, allowing unobstructed viewing of the loaded content.” Of course, an abstract isn’t a patent; the patent itself runs nine pages of dense techno-jargon. If you read the patent, though, you might be struck by the observation that it’s wholly obvious and trivial, and it describes one of just a few reasonable ways a program could behave, given the circumstances.

Take a look and see if you agree.

Barnes & Noble’s claimed prior art for that patent goes all the way back to Mosaic, DeckScape, Penpoint, Prodigy, NetHopper, the Newton, PocketWeb, even Internet Explorer 2, drawing on publications from IBM, IEEE, MIT, Microsoft, and many others.

It’s important to note that Microsoft’s potential arsenal includes thousands of patents, including those acquired indirectly from Nokia, through a Canadian company called Mosaid Technologies. Groklaw has an excellent analysis of the international hide-and-seek game being played by Mosaid, on Microsoft’s behalf.

Microsoft hasn’t responded to the prior art claims yet, and the legal process will no doubt take years. But at last one firm is standing up to the Microsoft patent onslaught, in the name of Android.

All the more impressive: Barnes & Noble is trying to do all of this out in the open, while Microsoft repeatedly tries to keep the proceedings secret.

Makes me want to run out and buy a Nook Color.

This story, “Barnes & Noble takes on Microsoft’s Android patents,” was originally published at InfoWorld.com. Get the first word on what the important tech news really means with the InfoWorld Tech Watch blog. For the latest developments in business technology news, follow InfoWorld.com on Twitter.