Microsoft

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."

Updated at 3:30 p.m. PDT with additional detail and to correct the filing date for TomTom's suit, which was Monday.

TomTom has responded to Microsoft's patent suit by filing a patent claim of its own against the software maker.

The GPS device maker, based in The Netherlands, filed the countersuit in the U.S. District Court for the Eastern District of Virginia on Monday. TomTom says Microsoft's Streets and Trips products infringe on four patents it owns related to vehicle navigation software.

In a statement, Microsoft lawyer Horacio Gutierrez said the company is still in the process of reviewing TomTom's court filing.

"As has been the case for more than a year, we remain committed to a licensing solution, although we will continue to press ahead with the complaints we initiated in the U.S. District Court for the Western District of Washington and the International Trade Commission."

Microsoft sued TomTom in late February, accusing the company of infringing on eight patents. The suit was notable because it included, for the first time in a court filing, Microsoft's long-asserted position that the Linux kernel infringes on Microsoft patents.

Despite Microsoft assurances that a patent lawsuit against GPS navigation company TomTom is not targeting the overall Linux community, open-source leaders said on Thursday that the legal action is antagonistic toward the movement.

Microsoft on Wednesday filed two separate actions against TomTom before the U.S. District Court in Washington and the International Trade Commission, alleging infringement of eight patents, three of which involve Linux. Microsoft deputy general counsel Horacio Gutierrez said the legal actions were taken after attempts to negotiate on licensing failed.

Asked whether Microsoft would sue other open-source developers, Gutierrez said the software giant's dispute was with TomTom and should not be interpreted as a new salvo against Linux or as a shift in its 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," he said.

However, open-source leaders were still bracing for a fight.

"Microsoft's behavior is threatening," said Eben Moglen, a Columbia Law School professor and chairman of the Software Freedom Law Center, a nonprofit that provides legal representation to developers and distributors of open-source software.

"The free (software) world has to defend itself," he said. "We are considering our options and evaluating the situation."

The move runs counter to Microsoft's efforts to work with open source, including announcing an interoperability alliance with Red Hat, embedding open source in its software, and adopting open-source strategies.

"The ongoing attempts to find a way of working more peacefully together are going to be hurt by this," Moglen said.

"I'm surprised Microsoft thinks they can get away with this and retain good relations to FLOSS (Free, Libre and Open Source Software) developers," Jeremy Allison, a prominent figure in the Samba open-source community, wrote in an e-mail. "Now we're seeing the mailed fist behind the velvet glove."

For now, Samba isn't affected by the litigation and Samba development won't change, Allison said.

Jim Zemlin, executive director of the Linux Foundation, said he wasn't making assumptions about the scope or intent of Microsoft's legal action, but was cautious nonetheless.

"It is our sincere hope that Microsoft will realize that cases like these only burden the software industry and do not serve their customers' best interests," he wrote in a blog posting entitled "Note on Microsoft TomTomSuite: Calm Down, Hope for the Best, Plan for the Worst."

The Linux Foundation "is well prepared for any claims against Linux," Zemlin wrote. "For now, we are closely watching the situation and will remain ready to mount a Linux defense, should the need arise."

Keith Bergelt, chief executive of the Open Invention Network, an intellectual property company that uses patents to promote a collaborative Linux ecosystem, predicted that the Microsoft litigation would have limited negative impact on the Linux landscape, partly because it remains to be seen whether the patents are valid. He too took jabs at Microsoft for its action.

"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. "And their behavior is clearly antagonistic to Linux. It's unfortunate they decided to adopt this tact."

Bruce Perens, a founder of the open-source software movement, said he is concerned that Linux software is involved in the litigation and is watching the situation closely.

"Obviously we are looking at the software patent situation as we have been for 10 years," he said. "We do have our own defensive patents and we may bring some of them into action at some point" against a company like Microsoft.

Asked for comment, Microsoft spokesman Michael Marinello reiterated Gutierrez' statements that the litigation is targeting TomTom's specific implementation of the Linux kernel and that open-source software "is not the focal point of this action."

Patents at issue
While the open-source leaders accused Microsoft of being anti-open source in its latest litigation--which was only the third time Microsoft has sued over patent infringement--they said the Microsoft patents at issue do not seem valid.

"This case could come out very much to our advantage because it could finally put those patents to bed," Perens said.

One of the patents, which deals with the Windows 95 version of Microsoft's FAT file system entitled "A Common Namespace for Long and Short Filenames," was invalidated by the U.S. Patent and Trademark Office, but then part of it was re-issued on Microsoft appeal, Moglen said.

Microsoft could have trouble convincing a court of the validity of most of the other patents involved, too, said Van Lindberg, an attorney at Haynes and Boone and author of "Intellectual Property and Open Source."

Another patent, which deals with embedding a computer in a car, is questionable because of previous examples of Linux being used in cars before that patent application was filed in 1999, Lindberg said. And several of the other patents could be challenged under a 2008 federal court ruling "In re Bilski" which placed restrictions on "method" patents, excluding general business methods that are deemed to be abstract ideas, according to Lindberg.

Individual developers shouldn't be worried because the litigation is most likely part of Microsoft's licensing negotiations and an attempt to get TomTom to pay up, he said. However, longer term, it could be a first step in a broader campaign against Linux-using companies and a way to intimidate them into agreeing to patent cross-licensing deals, Lindberg said.

Microsoft spokesman Marinello said the two FAT Long File Name patents involved have been licensed to 18 companies and have each been affirmed twice by the patent office, and the car navigation technology patents also have been widely licensed.

"It is also important to note that our patent portfolio was recently given the topic rating for quality by the IEEE patent scorecard for the second year in a row, and we believe that is a testament to the innovation taking place at Microsoft and the quality of our patent portfolio," he said in an e-mail.

One Linux company, Timesys, wasn't worried.

"Linux has already been accepted as an embedded OS and is rapidly gaining popularity," Atul Bansal, chief executive of Timesys, wrote in an e-mail. "Microsoft recognizes this trend and clarified in their interview that this is a dispute between the two companies and not about Linux."

CNET News' Stephen Shankland contributed to this report.

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.