Feeds

Patent Office upholds Eolas browser patent

Scene set for re-trial

Securing Web Applications Made Simple and Scalable

Microsoft has suffered a blow in its battle against a claim that Internet Explorer infringes a web browser patent: the US Patent and Trademark Office (USPTO) announced this week that it has re-examined the patent and found it to be valid.

The patent relates to a method that allows web browsers to access interactive application programs, and is owned by the University of California, but licensed by tiny tech firm Eolas Technologies.

Eolas and the University of California sued Microsoft in 1999, and many were stunned when a jury agreed with the claim in 2003 and awarded damages of $520.6 million plus interest.

That verdict was upheld in January 2004 and a Chicago District Court imposed an injunction on Microsoft, banning it from distributing the infringing software. But the ban was stayed pending an appeal, and in March this year an Appeals Court granted Microsoft a reprieve.

Microsoft's appeal related to limitations placed on the extent of prior art evidence that the District Court allowed Microsoft to put forward to support its claim that the technology behind the Eolas patent was already in the public domain and that the patent was therefore invalid.

The Appeals Court agreed, finding that while there had been infringement of Eolas’ patent, the trial judge had erred in not allowing Microsoft to put forward evidence of an earlier browser with the same abilities, known as Viola, or evidence that Michael Doyle, one of the inventors of the Eolas patent, had allegedly held back evidence of the Viola browser from the USPTO.

The case has therefore been sent back to the District Court for a retrial on these issues – effectively meaning that Microsoft has to show that the Eolas patent is invalid.

Its case will be made harder by Wednesday’s USPTO decision that the patent is indeed valid.

The USPTO began its re-examination of the patent in 2003, following complaints from Microsoft and other developers in the wake of the jury infringement finding.

The concern was that the patent, if upheld, could be applied widely. Even the W3C, the international standards-setting body for the internet, stepped in. In October 2003, W3C director Sir Tim Berners-Lee, the man credited with inventing the World Wide Web, wrote to the USPTO asking that the patent be declared invalid.

The USPTO agreed to look again, and in two earlier stages of the re-examination process found the patent to be invalid. But on Wednesday, it ruled that the patent was valid, and that a re-examination certificate would be granted to the University of California.

Eolas’ lead trial attorney, Martin R Lueck, said: “Given the appeals court’s affirmation of Microsoft’s infringement and the favourable resolution of the re-examination, we look forward to quickly dispatching the remaining issues before the district court so that the university and Eolas can be fairly compensated for the use of their property right."

Speaking to CNET News.com, a Microsoft spokesman said, “This is very disappointing news, but we remain committed to seeing this case through to a successful resolution.”

According to anti-software patent campaigner Florian Mueller, “Pro-patent politicians told us that broad and trivial patents can be invalidated. If even Microsoft with all of its resources doesn't always succeed in that, what can smaller companies do?”

“Microsoft isn't quite ready yet to support our cause directly, but that might change after several more Eolas cases," he added.

See: The USPTO's Reasons for Patentability/Confirmation Notice" (77-page / 2.8MB PDF)

Copyright © 2005, OUT-LAW.com

OUT-LAW.COM is part of international law firm Pinsent Masons.

Bridging the IT gap between rising business demands and ageing tools

More from The Register

next story
NO MORE ALL CAPS and other pleasures of Visual Studio 14
Unpicking a packed preview that breaks down ASP.NET
Cheer up, Nokia fans. It can start making mobes again in 18 months
The real winner of the Nokia sale is *drumroll* ... Nokia
Mozilla fixes CRITICAL security holes in Firefox, urges v31 upgrade
Misc memory hazards 'could be exploited' - and guess what, one's a Javascript vuln
Put down that Oracle database patch: It could cost $23,000 per CPU
On-by-default INMEMORY tech a boon for developers ... as long as they can afford it
Google shows off new Chrome OS look
Athena springs full-grown from Chromium project's head
Apple: We'll unleash OS X Yosemite beta on the MASSES on 24 July
Starting today, regular fanbois will be guinea pigs, it tells Reg
HIDDEN packet sniffer spy tech in MILLIONS of iPhones, iPads – expert
Don't panic though – Apple's backdoor is not wide open to all, guru tells us
prev story

Whitepapers

Designing a Defense for Mobile Applications
Learn about the various considerations for defending mobile applications - from the application architecture itself to the myriad testing technologies.
Implementing global e-invoicing with guaranteed legal certainty
Explaining the role local tax compliance plays in successful supply chain management and e-business and how leading global brands are addressing this.
Top 8 considerations to enable and simplify mobility
In this whitepaper learn how to successfully add mobile capabilities simply and cost effectively.
Seven Steps to Software Security
Seven practical steps you can begin to take today to secure your applications and prevent the damages a successful cyber-attack can cause.
Boost IT visibility and business value
How building a great service catalog relieves pressure points and demonstrates the value of IT service management.