Jury Verdict Against Microsoft in $242 Million Patent Lawsuit May Have Turned on Expert Witness Testimony

Being an expert witness in a lawsuit can be financial rewarding and impactful.

To wit, a jury delivered a $242M verdict on May 10 in favor of plaintiff IPA Technologies in a federal patent infringement lawsuit against Microsoft. The jury found that Microsoft’s Cortana virtual assistant infringed a patented invention conceived in the late 90’s by researchers at SRI International, a nonprofit spinoff of Stanford University. Quandary Peak Research, a software analysis firm based in Los Angeles, analyzed Cortana’s source code on behalf of IPA. At trial, Quandary Peak’s analysis and findings featured heavily in the testimony of IPA’s infringement expert, Dr. Nenad Medvidovic.

The patent claims at issue in the case, IPA Technologies Inc. v. Microsoft Corporation, involved methods for using “autonomous electronic agents” for “cooperative task completion.” Various elements of the patented methods relate to the system’s internal design, and a look under the hood at Cortana’s proprietary and confidential source code was necessary to determine whether Cortana included those design elements. Two source code analysis experts from Quandary Peak, Drs. George Edwards and Jae Young Bang, collaborated closely with Medvidovic over a period of several years to analyze Cortana’s source code in detail.

On the third day of the one-week trial, Medvidovic took the stand to explain his infringement opinions to the jury. Medvidovic opined that Microsoft infringed three claims of U.S. Patent No. 7,069,560, also known as the ‘560 Patent. In his testimony, Medvidovic noted the essential role the source code analysis played in establishing Microsoft’s infringement. Medvidovic specifically credited Quandary Peak’s work on the case and described Edwards and Bang as “brilliant” source code analysts.

Medvidovic also used Quandary Peak’s analysis to rebut Microsoft’s arguments. In particular, Microsoft’s legal team and experts advanced a theory that Microsoft did not infringe the asserted claims because Cortana did not receive a service request “adhering to an interagent communication language,” or ICL, which is a required element of the invention claimed in the ‘560 Patent. Microsoft argued that the service request received by Cortana was not recited in an ICL. However, Medvidovic explained to the jury that based on the source code identified by Quandary Peak, Cortana’s service request was recited in an ICL because it adhered to a particular set of structural rules and included parameters consistent with the ‘560 Patent’s written description.

A second non-infringement argument advanced by Microsoft was that the alleged agents within Cortana, which were known internally at Microsoft as “skills,” were not autonomous as required by the ‘560 Patent. Microsoft called witnesses who testified that Cortana’s skills were not autonomous because they were dependent on an internal component of Cortana known as Cortex. To rebut Microsoft’s assertion, Medvidovic again relied on technical documents and source code evidence unearthed by Quandary Peak’s experts, Edwards and Bang. Medvidovic used that evidence to support his opinion that Cortana’s skills met the patent’s definition of autonomous agents, as that term would have been understood by a person of ordinary skill in the field at the time of the invention in 1999.

Under applicable U.S. law, the lifespan of the ‘560 Patent was 20 years from its first disclosure to the U.S. Patent Office. As a result, the ‘560 Patent expired in January 2019. The time period at issue in the trial was the five-year interval between Cortana’s first public release in 2014 and the patent’s expiration in 2019. During that time, users accessed Cortana from phones, tablets, laptops, and desktop computers running the Windows 10 operating system. Because the patent has now expired, there is no possibility of ongoing infringement, and the trial was solely focused on whether Microsoft owed damages for past infringement.

Dr. Edwards, who is Quandary Peak’s President and Principal Computer Scientist, is an expert in software and source code analysis, having worked on scores of intellectual property lawsuits. His expertise and source code analysis skills are generally applicable to all types of software, including mobile apps, websites, digital media, embedded systems, enterprise architectures, and databases. Edwards received his Ph.D. in computer science from the University of Southern California in 2010. Fittingly, his Ph.D. research focused on software analysis methods and tools, and he later leveraged that expertise by going on to co-found Quandary Peak in 2012.

Dr. Bang joined Quandary Peak in 2019. As Director of Software Development, he leads the development of Quandary Peak’s software analysis tools, such as the Simian Similarity Analyzer. As a Senior Computer Scientist, he has reverse-engineered and analyzed software designs in a variety of complex, real-world systems. Bang also holds a position on the faculty at the University of Southern California (USC), where he teaches graduate-level software engineering classes. He received his Ph.D. in computer science from USC in 2015.