NO JMOL? / NO BASIS FOR APPEAL. / MICROSOFT ENJOINED

i4i Limited Partnership v. Microsoft Corporation, [2009-1504](December 22, 2009)[PROST, Schall, Moore] The Federal Circuit affirmed a $200 million damage award, and an injunction against future selling, offering to sell, importing, or using copies of Word with the infringing custom XML editor. Microsoft is also prohibited from instructing or assisting new customers in the custom XML editor’s use.
DISCUSSION: The Federal Circuit rejected Microsoft’s claim construction which the Federal Circuit found improperly imported benefit of the claim limitation, rather than the limitation.
CANON: Generally, a claim is not limited to the embodiments described in the specification unless the patentee has demonstrated a “clear intention” to limit the claim’s scope with “words or expressions of manifest exclusion or restriction.” CANON: "By the same token, not every benefit flowing from an invention is a claim limitation." TIP: The use of permissive language in the specification, can help prevent the preferred embodiment from becoming the only embodiment.
The Federal Circuit also held that Microsoft could not challenge the non-obviousness determination, because Microsoft failed make a JMOL, holding that a party must file a pre-verdict JMOL motion on all theories, and with respect to all prior art references, that it wishes to challenge with a post-verdict JMOL. The Federal Circuit rejected Microsoft’s argument that the clear and convincing burden of proof should have been less for prior art that was not before the PTO. Finally the Federal Circuit affirmed the permanent injunction, with potentially serious impact on futures sales of Microsoft Word.