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Supreme Court Sides With Microsoft Over AT&T

Journal written by trianglman (1024223) and posted by ScuttleMonkey on Mon Apr 30, 2007 04:41 PM
from the fluent-in-loopholeanese dept.
The Supreme Court today sided with Microsoft in another important patent case filed by AT&T. The case centered around whether selling Windows overseas infringed on AT&T's patents that are in Windows. Microsoft argued [PDF] that the copies being sold in Asia were "...not technically supplied from the United States because overseas manufacturers of its computers made copies of the software from a master disk and installed those copies into the operating system. Microsoft said it could not be considered a supplier since the copies, not the original software, were in the computers built abroad." Now, while I support the weakening of software patents in general, by this logic, would that mean that MS's patents don't apply to those that use pirated copies of Windows?
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[+] Supreme Court Weakens Patents 331 comments
ajakk writes "The U.S. Supreme Court, in a unanimous opinion, overturned the decades old test for determine whether a patent is obvious. The Court ruled that the Court had looked at obviousness in a "narrow, rigid manner." This should allow patents to be more easily invalidated because they are obvious."
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  • WTF? (Score:2, Insightful)

    That makes absolutely no sense. Surely I misunderstood this:

    You can wash your hands of patent infringement by hiding behind a redistribution license!?

    That sounds like a loophole big enough for a 18-wheeler to drive through!

    Xesdeeni
    • Re:WTF? (Score:5, Insightful)

      by Spazmania (174582) on Monday April 30 2007, @04:59PM (#18933077) Homepage
      IANAL, but I suspect the ruling has been misrepresented.

      Generally, a company operating abroad is responsible for complying with local law, not US law. You can't sue a company in a US court for its behavior overseas. That's the the general rule; there are exceptions.

      The law makes an exception for building devices in the US which would infringe a patent if sold in the US but are instead exported -- the patent holder can sue in the US where the device is made. Microsoft argued that the general principle (local law) applies here, not the exception, because the would-be infringing device was actually manufacturered abroad.

      The Supreme Court agreed and applied the general rule: if AT&T wants to collect, they'll have to sue in the countries where the infringement occurred.
        • Re:WTF? (Score:4, Interesting)

          by Spazmania (174582) on Monday April 30 2007, @05:12PM (#18933227) Homepage
          Patents are a little different than copyright. You infringe a copyright by copying the work. You infringe a patent using the patent -- in the sense that you use a physical device which implements the patent. Accordingly, manufacture of the device occurs when the components are combined into a physical form capable of using the patent.
        • Re: (Score:3, Informative)

          "Windows isn't "manufactured" abroad. It's copied abroad."

          That's pretty much what the Supremes decided. It's not subject to US patent law unless components of the infringing device are made in the US. They decided that making a master here and copying it abroad does not constitute infringement in the US.

          The decision is also remarkable because Justice Alito compares Windows to a shrimp deveiner.

          Note to editors: you can circle around or center on but you can't "center around".
    • by pavon (30274) on Monday April 30 2007, @05:04PM (#18933137)
      Copy and pasted from my post in the the other patent thread that mentioned this case as an aside:

      You cannot enforce patents on algorithms/idea themselves, just devices/actions that implement them - this has been true since the beginning. The Supreme Court has never ruled that software is patentable, just that a device implemented using software is just as patentable as one implemented using hardware. It has long been believed that source code would not be considered a device, but just a description of a device, and is thus no more protected by patent law than a technical spec or published paper. However, programs running on a computer have been ruled to be a device, and therefore in practice sofware is patentable, even though technically it is not.

      This case focused in part on the question of whether compiled code is a device - and the answer was no, it too is just a description. In practical terms this means very little for domestic software producers - since you can't run software without a computer, either you or your customer will be breaking the law if one of you does not license the patents, and knowingly selling software that needs patents licenses, without informing your customers about it will get you in bit trouble. Furthermore, even if you do inform your customers, you could have problems depending on the circumstance.

      As far as international trade, it has the effect that patent export laws do not apply to software. With a physical device if you build it here and ship it abroad you have to pay patent royalties, but if you send the plans abroad and produce and sell it there, then US patent laws don't apply. Since software is simply a description, as long as the computer (or embedded device) is produced abroad, and the software is installed abroad, you don't have to pay US patent royalties. Of course you do still have to pay patent royalties in the other country if they apply.

      Another area that it could have an impact in is open source drivers, especially firmware. You could argue that anyone that uses the software has paid for any required patent licenses when they bought the hardware in question. And since the court ruled that there is no difference between machine language and source code as far as patents go, they are no longer an excuse for providing binary only drivers. (Of course all the companies that are claiming "patent issues", are really probably trying to protect trade secrets).

      Now, while I support the weakening of software patents in general, by this logic, would that mean that MS's patents don't apply to those that use pirated copies of Windows?
      If those copies are in in the US they still apply, but in say China, they wouldn't. Note that copyright still applies.
      • by ronanbear (924575) on Monday April 30 2007, @05:58PM (#18933801)
        Had AT&T won this would have strengthened software patents and increased damages across the board. That's because companies sued in the US for a software patent infringement could have damages set based on their worldwide sales, many (even the majority) in areas where software patents aren't valid.

        It would be punishing companies for infringements that don't exist. If I use software in Ireland and the maker gets sued in the US they shouldn't be charged for patent violations that aren't violations here. If the software was legally sold here and didn't violate locally recognised patents then the maker didn't do anything wrong (except for directly exporting).

        In the long run this will be good for Linux. It also has implications for other judgements such as the EOLAS case, I think.
    • Re: (Score:3, Insightful)

      Right, but wasn't this reported a while back and the statement was made that MS had earlier argued in court that they should be allowed to count all of the individual copies sold overseas for deductions on their taxes. And now they are arguing the other side for the purposes of the AT&T patent infringement case. I just think that they should have to choose a side for the argument. If they claim for the purposes of US tax accounting that all of the copies sold originate here, then that holds for the A
  • ...for the copy then they are the supplier.

    • by Ungrounded Lightning (62228) on Monday April 30 2007, @05:12PM (#18933223) Journal
      Uh, in the digital world, if MS gets paid ...for the copy then they are the supplier.

      The issue is "who is the manufacturer" - Microsoft, or the guys who built the box and loaded the software onto it.

      The patents cover the final system. (That's because you can't patent the software itself, only the total system using the software.) The software is a component of the system, like a chip full of AND gates, a capacitor, or even a complex integrated circuit that was designed specifically to perform the patented functionality.

      If you look at the documentation that comes with your typical chip, you'll see a manufacturers disclaimer of patent liability. Essentially "If you use this chip to do something patented, getting a license from the patent holder, fighting his suit, or paying the judgement is your problem."

      Microsoft just wants to be in the same position as a chip manufacturer with respect to the computerized-device manufacturer who builds a final product that incorporates their software and somebody else's chips.

      The supreme court just said that Microsoft gets the same deal as Intel, AMD, Broadcom, etc.
      • I thought MS's big argument against Linux was that MS would stand behind their product and its intellectual status.

        Now they're telling me that if I use Windows in China, AT&T can come sue me because MS won't back up their product? So why not just go with Linux to begin with?
  • that if I steal one copy of Windows, and make 1,000,000 copies of it, that I am only liable for the one copy? After all, since Microsoft only produced one copy. I am only depriving them of the use of one copy. The lawyers are going to have a field day with this decision.
    • by jfengel (409917) on Monday April 30 2007, @05:01PM (#18933091) Homepage Journal
      I don't think so. There are a couple of things going on here:

      1. This only applies to other countries.

      2. It only applies to the AT&T patents inside the software.

      It seems that the OEMs are nominally responsible for securing AT&T's patents in those countries before distributing the software. So if you're in Asia pirating copies of Windows, both Microsoft and AT&T will be suing you.

      If you're in the US, only Microsoft will sue you, and part of the money they take out of your hide should go to AT&T.

      So AT&T should, theoretically, be going after these OEMs; Microsoft isn't on the hook to pay them. But it's a lot easier for AT&T to pursue Microsoft than a bunch of Microsoft's OEMs. /IANAL
  • Now, while I support the weakening of software patents in general, by this logic, would that mean that MS's patents don't apply to those that use pirated copies of Windows?

    A lawsuit from AT&T hurts Microsoft's bottom line and thus this ruling is ok. Pirating overseas in Asia also hurts Microsoft's bottom line and thus this ruling wouldn't be applied.

    Glad we have that cleared up.
  • That the Asian OEM code is substantially different than what is sold in the US.
  • What it simply means is that the Supreme Court is being consistent with existing law regarding patents, i.e. the method that M$ uses to export Windows to foreign companies means that certain types of patents don't apply therefore MS can't be sued for using patented code oversees if it obeys certain export rules.


    But this has nothing to do with "pirated copies", because software piracy is a matter of copyright law, not patent law, and there are numerous treaties governing the protection of copyrights internationally that still apply.

  • Could someone read the decision and tell us what it really says? Because the posted summary makes absolutely no sense at all. I can't believe an argument that fatuous would fly in the SCOTUS.

    Schwab

    • Re: (Score:3, Informative)

      Other stories I've seen about the case said that the court ruled that US patents do not apply outside the US. Therefore microsoft can't be infringing AT&T patents outside the US. I'm sure AT&T's argument was on the theory that all copies of windows came from the US therefore they could stretch US patent laws to cover windows sold outside the US.
    • by Adhemar (679794) on Monday April 30 2007, @05:46PM (#18933661)

      You might remember that this was the Supreme Court case where the Freedom Software Law Center (Eben Moglen's organisation) did write an Amicus Curiæ Brief [slashdot.org] technically in support of Microsoft. The SFLC wanted the Court to decide that software isn't a (patentable) component altogether. Sadly, the Court did not follow that logic. (It was a long shot, and worth the try.)

      Instead, it held that software in the abstract isn't a component. It's not the method but the apparatus capable of executing the method that can be patented.

      Such an apparatus is, in pratice, a computer on which said software is installed.

      The contended software was a speech encoding and compression algorithm included in a version of Windows sold to foreign manufacturers.

      The Court held that since the actual copying of the Windows software on the computer was done outside the United States (Düsseldorf or Tokyo, if I recall), the United States patent law does not apply. The fact that the software (on the master disk) was created inside the United States, and copied from the United States to Düsseldorf or Tokyo, is considered irrelevant.

      So basically, the Court held that software patents are unenforceable under US patent law as long as you don't load the software on any device inside the US.

      • by vux984 (928602) on Monday April 30 2007, @06:32PM (#18934227)
        To make a more layman analagy:

        Suppose I design a chair that infringes AT&Ts patent in the US (and the patent only applies in the US). If I make the chair in the US, I have to pay the license. If I make the chair in china and import it to the US I have to pay to license.

        If I have a chair factory in the US that makes chairs for US use, and another factory in china that makes chairs for Chinese use. Then I don't have pay licensing on the Chinese chairs, because the patent doesn't apply where they are produced or sold. This isn't controversial, and is how patent laws work. You only have to license patents in the countries you make/sell the products affected by them.

        Now, of course for me to set up a chair factory in china I have to send them blueprints and a prototype for the chair. This is of course, perfectly legal. Again, no controversy. At most I might pay a royalty on the single unit.

        Now in this case, AT&T asserted that distributing windows elsewhere, by having sent a copy of the CD sent there constituted making the product in the US and then distributing it, entitling AT&T to patent royaltys for each copy sold abroad.

        MS, asserted it was really more like sending a single blueprint and prototype to the chair factory, for them to produce copies locally, and that AT&T was not entitled to royaltees for each copy of the product made and distributed abroad.

        I personally agree with SCOTUS, and side with MS on this. Its consistent with how patent law is normally applied.
  • I'll take a shot.... (Score:3, Interesting)

    by Otter (3800) on Monday April 30 2007, @04:59PM (#18933079) Journal
    Decision here [supremecourtus.gov]. I'm not sure I follow it, but since my understanding could hardly be worth less than the submitter's, here's a shot at summarizing it:

    The issue is whether the US patent held by AT&T applies to copies of Windows that are installed on foreign-built computers. The ruling is that OS installs from a master disk made in the US don't qualify as US-made export goods themselves, and therefore aren't subject to US patents.

  • by Nosajjason (613456) on Monday April 30 2007, @05:32PM (#18933461)

    Let's clarify something. Section 271 of the Patent Act defines many different types of infringing acts. Section 271(a) defines infringement as the making, using, selling, or importing (the most common types of infringement). Section 271(f)(1) defines another type of infringing act, namely, exporting "components" of a patented invention.

    Section 271(f)(1) states:

    Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

    Section 271(f)(1) was created to close a loophole in patent laws that allowed companies to manufacture the "patented invention" by manufacturing the components of the invention and then shipping the components overseas to be assembled and sold. Because the individual components did not infringe to the "patented invention," these companies were not infringers.

    Section 271(f)(1) was an attempt to close that loophole, and provides that infringement does occur when one "suppl[ies] ... from the United States," for "combination" abroad, a patented invention's "components."

    In Microsoft, the SC addressed Section 271(f)(1), and specifically the term "component." The Supreme Court held that "component" means "component," or a part of the whole which is combined to form the final product. The master disks exported by Microsoft were not "components" because the disks themselves where not combined with the "whole." Instead, the disks where used to make software, which then became part of the whole. The Supreme Court analogized the master disks to tools. Tools are used to make a "component" but they are not "components." Section 271(f)(1) only applies to "components" and not to tools for making components. Thus, Microsoft did not infringe (as defined by 271(f)(1)). The opinion is limited to section 271(f)(1), and likely will not affect "normal" infringing activities.

  • It might be more instructional than reading dozens of comments that start with, "I don't know a thing about law, but... ." It's like marketers talking about programming: "I don't know C# from sharp cheddar, but... ." Here are a few views from lawyers who know patent law:

    KSR v. Teleflex:

    Microsoft v. AT&T:

    • Re: (Score:3, Informative)

      by Anonymous Coward
      There have been two separate significant rulings by the Supreme Court. One is Microsoft Corp. v. AT&T (the subject of this article) and the other is KSR Int'l Co. v. Teleflex Inc. (the subject of the article you linked to).

      HTH
    • Re: (Score:3, Insightful)

      I know it's not fashionable to RTFA, but come on. Just because the summaries contain the words "patent" and "Supreme Court," that does not automatically mean they are the same. These are completely different stories.
    • Re: (Score:3, Informative)

      Just in case anyone is interested in the actual opinions:

      The Supreme Court opinion of Microsoft v. AT&T [supremecourtus.gov].

      For completeness: The previous story was (mainly) about KSR v. Teleflex [supremecourtus.gov], although it did mention Microsoft v. AT&T as well, in the fifth paragraph.