Robert Sterne Discusses the Recent i4i Reexamination Victory Over Microsoft Confirming the Patentability of All Claims

May 26th, 2010

On May 11, 2010 i4i announced that the United States Patent and Trademark Office (USPTO) confirmed the patentability of all claims of the U.S. Patent 5,787,449 (’449) put into a reexamination proceeding by Microsoft in connection with litigation in the U.S. District Court for the Eastern District of Texas.

In this short video, Robert Sterne of Sterne, Kessler, Goldstein & Fox PLLC discusses the recent i4i reexamination victory over Microsoft.  As i4i’s reexamination attorney, Sterne highlights the implications of the ruling for patent owners in view of new standards for determining and defending patent validity.

Watch the video here.

More coverage about the recent i4i patent reexamination success and its relation to i4i’s litigation struggle with Microsoft can be found in the National Law Journal on the news portal. Additionally, i4i issued a press release on this result available in numerous news outlets.


In March 2007, i4i sued Microsoft for willful infringement of its ‘449 patent. Late in 2008, Microsoft filed an ex parte request for reexamination of certain claims of the ‘449 patent. On May 20, 2009, Microsoft was determined to have willfully infringed i4i’s ‘449 patent in the concurrent district court litigation. On August 11, 2009, i4i was granted a Final Judgment against Microsoft, including both an award of damages to i4i and a permanent injunction.

Microsoft unsuccessfully appealed the decision to the Court of Appeals for the Federal Circuit late in 2009 and also unsuccessfully sought a rehearing early in 2010. Throughout the process, Microsoft made extensive reference to the notion that the patent was “provisionally invalidated by the PTO” while undergoing reexamination. Confirmation of the validity of i4i’s ‘449 patent represents a significant development and squarely settles this issue.

A Notice of Intent to Issue Reexamination Certificate (NIRC) was issued April 28, 2010, and a Reexamination Certificate will be issued in due course, formally concluding the reexamination proceeding favorably for i4i. The successful i4i reexamination team was lead by Rob Sterne and Lori Gordon of Sterne, Kessler, Goldstein & Fox PLLC and supported by i4i’s trial team at McKool Smith and its Court of Appeals team at Finnegan.