By Eric Schweibenz
On February 13, 2012, ALJ Theodore R. Essex issued the public version of Order No. 32 (dated January 31, 2012) granting Microsoft’s Motion for Summary Determination, thereby eliminating an affirmative defense of patent misuse raised by Barnes & Noble, Inc. and barnesandnoble.com (collectively, “Barnes & Noble”) in Certain Handheld Electronic Computing Devices, Related Software, And Components Thereof (Inv. No. 337-TA-769).

The investigation relates to allegations of infringement by the Barnes & Noble Nook e-readers, which run the Android operating system.  According the Order, Barnes & Noble alleged that Microsoft was guilty of patent misuse because of Microsoft’s (1) licensing program; (2) alleged unfair licensing terms; (3) agreements with Nokia relating to the Windows mobile operating systems; and (4) purchase of other patents.

Barnes & Noble alleged these actions are part of a scheme to “kill Android” and perpetuate Microsoft’s monopoly in PC operating systems.

Patent misuse is an equitable doctrine of limited scope.  The key inquiry is whether the patentee has impermissibly broadened the physical or temporal scope of the patent in an anticompetitive manner.  ALJ Essex ruled that Barnes & Noble could not show that Microsoft’s actions, even if true, constituted patent misuse because Barnes & Noble presented only generalized allegations of commercial misconduct that did not relate to the patents-in-suit or their licensing.

ALJ Essex found that Microsoft’s licenses with Nokia did not even relate to the patents-in-suit and, therefore, could not support a patent misuse defense.  Likewise, the mere fact that Microsoft may drive a hard bargain and may even desire to “kill Android” does not rise to the level of any antitrust violation and certainly not patent misuse.  Finally, Microsoft’s proposed licensing provisions relating to what subsequent versions of the software are licensed do not extend the scope of the patents, a necessary requirement for a finding of patent misuse.  Accordingly, ALJ Essex granted Microsoft’s summary determination motion and determined that Barnes & Noble would not be permitted to present evidence on its patent misuse defense at the evidentiary hearing.