Eolas patent defended before US patent office

The Regents of the University of California on Tuesday defended a controversial patent the university holds and that critics fear could damage the World Wide Web's operation.

The U.S. Patent and Trademark Office (USPTO) granted to the university in 1998 patent number 5,838,906, which covers technology for the broad practice of embedding interactive elements in Web pages.

The following year, the university and the sole licensee of the technology covered by the patent, a company called Eolas Technologies, sued Microsoft for infringing on the patent in its Windows operating system and Internet Explorer browser. The plaintiffs won the case in August 2003 in the U.S. District Court for the Northern District of Illinois and Microsoft was ordered to pay US$521 million in damages.

The verdict triggered an outcry from industry and Internet experts. World Wide Web creator Tim Berners Lee wrote a letter to the U.S. Under Secretary of Commerce for Intellectual Property, requesting that the USPTO re-examine the patent's validity, arguing that the technology in question already existed when the patent was applied for, a common antipatent argument known as "prior art." He also said the patent's existence could damage the Web's operation.

Shortly afterwards, the USPTO initiated the process of reviewing the patent's validity, which could result in the stripping of the technology from patent protection, a rare occurrence in the agency's history.

In an initial finding issued in February of this year, the USPTO rejected the patent's validity. On Tuesday, the University of California filed a response to that preliminary decision. "Our general argument is that the prior art that was cited in the request for re-examination isn't relevant to the merits of our patent," said Trey Davis, director of special projects and new media for the University of California system, on Tuesday. "It's the same argument we made in the case against Microsoft. We're just in a different venue."

The adverse February ruling was expected, because that initial decision is made based on the argument of the side contesting the patent's validity, Davis said. "Now that we've had a chance to file our response, we're confident the university's patent claim will prevail," he said.

The University of California now will wait for the USPTO to review its response. Eventually, the USPTO will decide whether or not the university retains the patent.

In addition to either striking it down completely or leaving it untouched, the USPTO could also decide to modify the patent by narrowing its scope, said Brigid Quinn, a USPTO spokeswoman, on Wednesday.

A review process such as this one takes on average 21 months to complete, she said. Before issuing a final decision, the USPTO official in charge of re-examining a patent typically goes back and forth several times with the patent holder by requesting information and posing additional questions, she said.

Before a final decision is reached, a patent that is being re-examined is presumed valid in its entirety, which means that in this case the University of California still holds the patent and that all the claims that make up the patent are considered valid, she said.

"The ultimate consequence of what we're talking about is whether Microsoft gets to continue to use technology it didn't develop to make exorbitant profits or whether they should they pay a fair market price for the use of technology that was developed by other people," Davis said.

The technology in question was developed by a team led by Michael D. Doyle, a former professor at the University of California, San Francisco, who later founded Eolas.

Meanwhile, Microsoft, while not a participant in the USPTO review process, is watching closely from the sidelines, for obvious reasons: should the patent become invalid, the case against the company likely collapses.

"We have maintained all along that when scrutinized closely, this patent will be ruled invalid," said Microsoft spokesman Jim Desler on Tuesday. Microsoft hadn't seen a copy of the university's filing with the USPTO, so the company couldn't comment on the document, Desler said.

Microsoft plans to file next week its opening brief in its appeal of the lawsuit the university and Eolas won against it last year, Desler said. Microsoft filed the appeal in the U.S. Court of Appeals for the Washington, D.C. Circuit, Desler said.

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