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Federal judge rules Microsoft violated patents
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by Virginia Zignego
Wednesday, February 4, 2004
A federal judge ruled Microsoft violated patents on software held by Research Corporation Technologies Jan. 27 after the company filed a lawsuit in 2001.
Under the judge’s summary ruling, Microsoft was charged with violating three patents. The University of Rochester developed the software, and RCT owns the patents in exchange for royalties paid to Rochester.
The Microsoft software in question is called Blue Noise Mask technology, which improves the quality of images from ink jet digital printers while making the process faster, according to a product description on RCT’s website.
Two researchers at the University of Rochester, Kevin Parker and Theopano Mitsa, developed BNM technology in the early 1990s. Parker is now dean of the School of Engineering and Applied Sciences at Rochester, and Mitsa is currently an assistant professor in computer and electrical engineering at the University of Massachusetts at Dartmouth.
“RCT looked at Microsoft’s technology in its programs and discovered Blue Noise Mask’s distinct sign, and that’s how they knew Microsoft was using the BNM technology,” Mark Coburn, director of technology transfer at the University of Rochester, said.
RCT has previously sued and settled with Hewlett Packard, Seiko Epson and Lexmark over BNM technology. The three companies currently license the technology from RCT, which in turn pays Rochester royalties.
Microsoft representatives did not return phone calls Monday, but according to an article in the Chronicle of Higher Education, Microsoft said the company’s engineers developed their own technology and RCT’s patents were invalid.
Tim Reckert, senior vice president and general counsel at RCT, said the company is open to settling the lawsuit but is not commenting on any of the proceedings.
“I hope everyone is properly compensated by infringement. Proper compensation is what’s at stake,” he said.
Coburn explained that although Rochester is not involved in the legal proceedings because it no longer owns the rights, the ideal situation would be to settle the lawsuit as opposed to going to trial.
“I don’t think either party wants to go to trial. Juries don’t have the knowledge to understand the extensive technology involved,” Coburn said. “It’s an issue of sitting down with Microsoft and deciding how to settle it.”
Reckert said RCT is not looking to prohibit Microsoft from using BNM technology under license in the future, but proper monetary compensation is still an important issue.
Coburn said the BNM issue with Microsoft and RCT has not negatively affected research at Rochester. Instead, he feels it has brought positive media feedback and showed the commercial utilization of the media.
“The BNM [patent] has brought in significant revenue, so Rochester has become more careful about its technology transfer operations,” Coburn said. “But I think this really shows how out of basic research can come a lot of opportunities for commercialization.”
