[DMCA-Activists] EOLAS Patent to be Reexamined

[Seth Johnson]

> http://www.oreillynet.com/pub/wlg/3969


PTO Director Orders Re-Exam for '906 Patent


By Dale Dougherty
Nov. 11, 2003 05:08 PM
 

In what could be good news for the Web, the Director of the US Patent 
and Trademark Office has ordered a re-examination of the '906 patent, 
which was the subject of a patent infringement lawsuit this summer 
brought by Eolas against Microsoft. 

Issued in 1998 to Michael Doyle of Eolas Technologies, the patent 
(#5,838,906) covers the ability to embed and control applications (or 
objects) in a web browser. Doyle succeeded in obtaining a $500M 
judgement against Microsoft. In the aftermath, Microsoft said that 
changes to the browser were necessary to work around paying royalties 
on the patent, and that these changes would impact developers who 
create and maintain web pages. Many believe that the patent would also 
affect other technologies such as Flash and Java as well, which are 
launched from a browser. 

On October 23, the World Wide Web Consortium (W3C) filed a request for 
re-examination, citing prior art that defined the early HTML standard, 
written by Tim Berners-Lee and Dave Raggett. In their appeal to the 
Commissioner of the PTO, the W3C said: "The cost to the larger World 
Wide Web community of fixing the problems created by such a change to 
Internet Explorer is incalculable, but would likely require changes to 
millions of Web pages, as well as changes to Web page authoring tools 
and other software and systems designed for the World Wide Web." It 
called this kind of "disruption" to the web "completely unwarranted, 
in view of the patent's invalidity." 

Apparently, the PTO responded to this request, saying "a substantial 
outcry from a widespread segment of the affected industry has 
essentially raised a question of patentability." This order, issued on 
October 30, reviewed the claims and declared that the prior art 
introduced by Berners-Lee and Raggett raised "a substantial new 
question of patentabity." The order, signed by Steve Kunin, Deputy 
Commissioner of the US PTO, called for a reexamination of all claims 
relating to the '906 patent. 

A patent lawyer that I spoke to said that the quick response by the 
PTO was unusual, and he thought it was a good sign. He said that the 
order seemed to give a clear indication of support for the claims 
against the patent. We'll now have to wait for a patent examiner to 
examine the evidence in more detail and rule on the patent. 

If you want to follow the adminstrative procedures, go to 
http://pair.uspto.gov/cgi-bin/final/home.pl and the type in the 
application number: 90/006,831. 

Note: I testified in the trial this summer on behalf of Microsoft's 
claim that the early Viola browser developed by Pei Wei was prior art 
for this invention. 

Dale Dougherty is the Publisher of the O'Reilly Network.