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trial, Rhyne agreed that the custom XML editor could be used in three noninfringing

ways,

but

opined

that

none

were

“substantial.”

Rhyne

explained

that

saving

a

document in the noninfringing, binary format deprived users of the very benefit XML was

intended

to

provide:

namely,

allowing

another

program

to

search

and

read

the

document’s metacode tags.

Despite Microsoft’s contention to the contrary, evidence that some users saved

XML documents in these noninfringing formats does not render the jury’s verdict

unreasonable. Whether a use is “substantial,” rather than just “unusual, far-fetched,

illusory, impractical, occasional, aberrant, or experimental,” cannot be evaluated in a

vacuum. Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1327 (Fed. Cir. 2009).

In assessing whether an asserted noninfringing use was “substantial,” the jury was

allowed to consider not only the use’s frequency, but also the use’s practicality, the

invention’s intended purpose, and the intended market. See id. Here, the jury heard

ample testimony that the noninfringing, binary file format was not a practical or

worthwhile use for the XML community, for which the custom XML editor was designed

and marketed.

Further, the jury could have reasonably concluded that Microsoft knew that use

of the editor would infringe the ’449 patent, based on the circumstantial evidence

presented at trial. Cf. Lucent, 580 F.3d at 1318, 1321-22; Fuji Photo Film Co. v. Jazz

Photo Corp., 394 F.3d 1368, 1377-78 (Fed. Cir. 2005). Here, the evidence showed that

the Word development team heard a presentation by i4i about software practicing the

’449 patent, asked how the software worked, and received marketing materials on the

software. Internal Microsoft emails showed that other Microsoft employees received a

2009-1504

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