Microsoft files counter suit to Hill patent claim

Marilyn Tennissen Nov. 7, 2007, 3:51pm

The Microsoft Corp. has filed a counter suit against Charles E. Hill after the Marshall resident claimed the software giant infringed on his patents.

Microsoft's complaint comes after Charles E. Hill & Associates filed a suit in June that accused Abercrombie & Fitch Co., Alibris, Inc., Alloy, Inc., Delia's, Inc., Hanover Direct, Inc., Harry & David Holdings, Inc., Northern Tool & Equipment Company, Inc., Saks Incorporated, Smartbargains, Inc., Valuevision Media, Inc., West Marine, Inc. and 1-800 Contacts, Inc. of infringing on several of its patents.

Charles E. Hill & Associates vs. Abercrombie & Fitch et al (No. 2:07-cv-234-DJF) was filed in the Eastern District of Texas regarding U.S. Patent Nos. 5,528,490; 5,761,649; and 6,029,142 (the Hill Patents). Hill's complaint argues that the defendants are Microsoft customers.

"In particular, Hill alleges that each of the Microsoft customers is in the business of selling products over the Internet, and that the operation of their Web sites infringes one or more claims of the Hill Patents," the complaint states.

The Microsoft customers use Microsoft Windows Server and other Microsoft software in the operation of the Web sites, therefore Hill's accusations of infringement against Microsoft customers implicate Windows Server and other Microsoft software.

Because of the implication, "a case or controversy exists as to whether Microsoft and /or Microsoft's customers that use Microsoft software infringe one or more claims of the Hill Patents."

Microsoft denies that either it or its customers that use Windows or other Microsoft software infringe the '490, '649 or '142 Patents, and is asking for a declaratory judgment of non-infringement.

In addition, Microsoft claims that the Hill Patents are invalid for failing to meet one or more of the requirements of patentability.

Microsoft says that the inventor Charles E. Hill and others involved in the patent applications "committed inequitable conduct."

"This inequitable conduct includes material misrepresentations and/or omissions to the U.S. Patent and Trademark Office with an intent to deceive the PTO," the original complaint states. "Further, this inequitable conduct … renders each of the Hill Patents unenforceable."

Microsoft alleges that Hill withheld information related to all three patents with intent to deceive the PTO. In particular, Microsoft claims that Hill failed to disclose the existence and commercial development of the E_CAT system, which was on sale or in the public use for more than a year before the respective filing of the Hill Patents.

"The E_CAT system is highly material to the patentability of the Hill Patents because, inter alia, the name E-CAT appears in specifications of these patents," the complaint states.

Microsoft is asking that the court declare that Microsoft and its customers that use Microsoft software do not infringe any claim of the Hill Patents, declare that the Hill Patents are unenforceable, award Microsoft attorney fees, expenses and costs and other legal relief that may be proper.

Eric H. Findlay of Ramey & Flock PC in Tyler, with assistance from Covington & Burling LLP in Washington, D.C., and San Francisco, are representing Microsoft.

The case has been assigned to U.S. District Judge David Folsom.

Case No. 2:07-cv-478-DF

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