Beyond Binary

While reaction to Microsoft's settlement with TomTom was varied on Monday, there seemed to be a consensus that it will do little to settle the many questions related to whether Linux infringes on Microsoft's intellectual property.

Attorney James Gatto, the leader of the intellectual property section at Pillsbury Winthrop Shaw Pittman, said the quick settlement in the case may have as much to do with a pragmatic business decision by TomTom as it does with the legal merits of Microsoft's case. Complex litigation, such as the patent suit and countersuit in this case, could easily add up to $10 million to $15 million in costs, Gatto said.

"I don't think this answers any questions in terms of whether Microsoft's patents in any way cover Linux," Gatto said. Microsoft has long asserted that various implementations of Linux do infringe on its intellectual property and has struck a number of patent deals with companies that either distribute Linux or use it in their products.

The TomTom case, however, marked the first time that Microsoft had made those allegations in court papers.

Open-source pioneer Bruce Perens criticized the settlement, saying that it may instill fear in other companies that are using embedded Linux and thus have something of a chilling effect.

"What strikes me is the un-justice of it all," said Perens, who is the chief executive of open-source software development company Kiloboot. "Microsoft's patents (in the TomTom case) are not innovative, yet TomTom is forced to pay for the patents when a court would probably find them invalid. But rather than spend the money to prove the patents are invalid, because they probably can't afford to go to court and fight it, TomTom licenses the patents."

Gatto said that Microsoft's TomTom move doesn't necessarily mean the company is ready to go to war with Linux.

Microsoft and TomTom have reached a settlement in their respective patent suits, the companies said Monday.

As part of the deal, as TomTom will pay Microsoft for patent protection related to mapping patents and file-management patents that Microsoft claimed were infringed by TomTom's use of the Linux kernel. Microsoft will also get access to the TomTom patents that were cited in TomTom's countersuit against Microsoft, although Microsoft won't make any payment to TomTom.

In a statement, the two companies said that the settlement provides TomTom patent coverage "in a manner that is fully compliant with TomTom's obligations under the General Public License Version 2." As part of the agreement, TomTom will "remove from its products the functionality related to two file management systems patents" over the next two years. The agreement protects TomTom's customers under the patents during that time, the companies said.

The settlement has a five-year term. Specific financial terms were not disclosed. With respect to Microsoft's mapping patents and TomTom's patents, the two companies have agreed to take no further legal action for the duration of the term. In the case of the three file management patents, Microsoft is providing an agreement not to sue customers for their use of TomTom's products.

"We are pleased TomTom has chosen to resolve the litigation amicably by entering into a patent agreement," Microsoft deputy general counsel Horacio Gutierrez said in a statement.

Microsoft filed its legal actions against TomTom last month. Attention was focused on the Linux claim as it marked the first time that Microsoft had filed court papers with its long-held assertion that Linux infringes on its intellectual property.

"This agreement puts an end to the litigation between our two companies," said Peter Spours, Director of IP Strategy and Transactions at TomTom, in a statement. "It is drafted in a way that ensures TomTom's full compliance with its obligations under the GPLv2, and thus reaffirms our commitment to the open source community."

Although the pact may settles things for TomTom, it adds further questions marks for where Microsoft is headed with its broader claims against Linux. The software maker has refused to go into detail as to what actions it might take against other companies that use Linux commercially.

However, the company has aggressively sought patent deals with companies that use Linux commercially. In addition to its deals with Linux vendors such as Novell, TurboLinux, and Xandros, Microsoft has also signed pacts with consumer electronics firms that use Linux, such LG, Samsung, and Fuji Xerox.

In recent interviews, Gutierrez has said that, although each case is different, Microsoft has an obligation to its shareholders as well as to the companies that have taken patent licenses to ensure that Microsoft is being fairly compensated for its intellectual property, including in cases involving Linux.

Until the TomTom case, we had only seen examples where Microsoft was able to convince companies to take a license. The TomTom case shows, though, that we may see Microsoft begin to take further action when negotiations don't lead to a deal.

TomTom, the GPS maker being sued by Microsoft, has joined a collective of companies that have pooled their patents in an effort to help defend open-source software against legal threats.

In a press release on Monday, the Open Invention Network said that TomTom had joined its ranks. The collective aims to create a "supportive and shielded ecosystem to ensure the growth and adoption of Linux" and has amassed a pool of 275 pending and issued patents.

"Linux plays an important role at TomTom as the core of all our portable navigation devices," Peter Spours, director of IP at TomTom, said in a statement. "We believe that by becoming an Open Invention Network licensee, we encourage Linux development and foster innovation in a technical community that benefits everyone."

Microsoft announced late last month that it was suing TomTom over a number of patents, including several related to TomTom's use of the Linux kernel. The suit marked the first time Microsoft has turned to the courts to enforce its long-held assertion that Linux infringes on Microsoft's patents.

Last week TomTom countersued Microsoft, saying the software maker violates some of TomTom's patents.

As for Open Invention Network, the effort was founded in 2005 by Red Hat, IBM, and others. Companies such as and have since joined.

Keith Bergelt, OIN's chief executive, has been critical of Microsoft's patent actions against TomTom and Linux.

"This indicates that they don't understand how to actually participate as a responsible member of the open-source or Linux community," he said of Microsoft, following its suit. "And their behavior is clearly antagonistic to Linux. It's unfortunate they decided to adopt this tact."

REDMOND, Wash.--Microsoft's top intellectual property lawyer said that the company's legal action against TomTom over Linux was specific to that company, but he declined to say whether other suits over the open source operating system might follow.

"I wouldn't speculate at this point," Horacio Gutierrez told CNET News in an interview late Wednesday. Gutierrez did add that Microsoft's patent suit against TomTom, which includes three claims related to file management techniques used in the Linux kernel, was specific to that company.

It is the "TomTom implementation of the Linux kernel that infringes these claims," Gutierrez said. "There are many flavors of Linux (and) many implementations of the Linux kernel. Cases such as these are very fact-specific."

Microsoft filed complaints in federal court and with the International Trade Commission on Wednesday alleging eight counts of patent infringement by TomTom. While five of the patents relate to car navigation systems specifically, three of the claims pertain to TomTom's use of the Linux kernel in its products, Gutierrez said.

Gutierrez said Microsoft chose to include the open source claims alongside the proprietary GPS system claims because both related to TomTom. He characterized the suit as a dispute with TomTom as opposed to a new salvo against Linux.

"This is just a normal course-of-business dispute between two companies," he said, adding that no special thought was given to what it meant to include the Linux claims in the suit.

"That is not the focal point of the action," he said.

Asked whether that meant that Microsoft would seek compensation from all products that use the Linux kernel, Gutierrez said, "No. That is really not what we have in mind. This case is about TomTom's infringement."

He stressed Microsoft's preference for signing licensing deals with companies, including those using Linux.

"Our position is and has been that we believe licensing is the right way to approach and resolve these things," he said.

Gutierrez said that the move did not reflect a change in Microsoft's overall position toward open-source software. "I think there shouldn't be any ambiguity on our expectations as a company. We recognize that open-source software will continue to be a part of the industry."

But, he said that the company's "appreciation and respect for the open-source community is not inconsistent" with its desire to protect its intellectual property.

That said, he acknowledged the suit could hurt some of the efforts the company has tried to make in recent years to mend fences with the Linux world.

Sometimes, he said, disputes will lead to lawsuits. "Sometimes they will evoke hard feelings. Sometimes those feelings will make moving ahead with our open-source strategy more challenging, but there is no change to our open-source strategy and the work many teams across Microsoft do every day to move it forward."

Although Microsoft did not call out the Linux claims, Gutierrez said the company was not trying to hide them. While Linux is not mentioned in the federal lawsuit, he said, they are noted in two paragraphs of the ITC claim.

REDMOND, Wash.--Although Microsoft is not highlighting the issue, the patent infringement lawsuits it filed on Wednesday against TomTom include claims related to that company's use of the Linux kernel.

While the software maker has asserted for years that Linux infringes on its patents, this appears to be the first time Microsoft has made the claim in court.

In an interview with CNET News earlier on Wednesday, Microsoft deputy general counsel Horacio Gutierrez noted that five of the claims related to car navigation technologies while three were related to file management technologies. However, neither in its federal court filing nor in the interview did Gutierrez mention that the suit involved Linux, although Gutierrez did confirm that fact to Seattle-area technology site TechFlash.

Back in 2007, Microsoft made public its claim that Linux violates 235 of Microsoft's patents.

Since then, Microsoft has struck a number of patent licensing deals, most notably with Novell, that provide signing companies with patent protection against Linux claims. Microsoft also announced a year ago that it would not sue individual open source developers, though it said it retained the right to sue companies over their use of Linux.

I've asked Microsoft for further details and expect to update this post later this evening.

Update 9:15 p.m. PT: Gutierrez had a fair amount to say on the topic, so I have posted an additional story here.

This post was updated at 2:34 p.m. to reflect TomTom's declining to comment.

It looks like TomTom will need to find the directions to the courthouse.

Microsoft said on Wednesday that it is filing two separate patent infringement actions against the GPS navigation company. In complaints before the U.S. District Court in Washington and the International Trade Commission, Microsoft is alleging infringement of eight patents.

Microsoft deputy general counsel Horacio Gutierrez.

(Credit: Microsoft)

In an interview, Microsoft deputy general counsel Horacio Gutierrez said that the software giant has been trying to start licensing talks with TomTom for more than a year.

"They basically never were prepared to have a discussion with us with respect to licensing terms," Gutierrez said.

A TomTom spokesman said, as a corporate policy, the company "does not comment on legal matters."

Although Microsoft has been on the receiving end of many patent complaints, this is only the third patent case Microsoft has taken to court. Last year it sued Taiwanese mouse maker Primax, before subsequently settling. It also had a dispute with Belkin back in 2006, which was eventually settled as well.

Microsoft already has deals with several other GPS system makers including Pioneer, Alpine, and Kenwood as part of its efforts to license its technology, a push that began back in 2003.

"All of these patents have been licensed before by many other companies," Gutierrez said. "We are asking TomTom to do what other companies have done and take a license."

The federal lawsuit (PDF) seeks damages for the past infringement, while the ITC case (PDF) is aimed at blocking future imports of infringing patents, Microsoft said.

"By filing both actions simultaneously we are seeking to both recoup past losses and stop continued infringing activity, which would thus minimize potential future losses," Microsoft said in a statement. ITC cases typically take about 15 months, Microsoft said, while federal patent suits can take much longer.

Of the eight patents involved, Gutierrez said that five relate to car navigation systems specifically, while the others have to do with file management technologies.