The Web browser patent behind a $521 million verdict against Microsoft Corp. is undergoing a reexamination, the United States Patent and Trademark Office confirmed on Wednesday. Eolas lawyer as well as the patent-holder, the University of California, however, remained confident in the patents claims and the eventual outcome of the reexamination.
The patent office on Oct. 30 ordered a reexamination of the Patent No. 5,838,906, commonly called the 906 patent, that is a basis of Eolas Technologies Inc.s patent infringement lawsuit against Microsoft. The patent office cited the response from the Web community and industry as an "extraordinary situation" that called for a rare reexamination being initiated directly by the patent offices director, James E. Rogan.
Only 2 percent of the 6,786 reexaminations orders have been director initiated, a patent office spokeswoman said. Most are sought directly from the patent holder or from a member of the public filing a request.
"In the case of the 906 patent, a substantial outcry from a widespread segment of the affected industry has essentially raised a question of patentability with respect to the 906 patent claims," the reexamination order stated.
Eolas holds a license to the patent from the University of California. The two won a jury verdict in August against Microsoft that that sent shockwaves through the Web community. The patent covers a method for embedding and invoking interactive applications such as plug-ins and applets from Web browsers.
The World Wide Web Consortium on Oct 28 wrote to Rogan urging him to start a reexamination of the patent and claiming that the patent is invalid because "prior art" (a legal term in patent law referring to whether an invention existed prior to the filing of a patent) was not considered at the time the patent was granted in 1998 or during the trial.
W3C officials could not be reached for comment on the reexamination order.
But a lead attorney in Eolas case remains confident in the patents claims, saying he doubts that the patent office could have conducted a thorough review of the prior art claims in the day between the time the W3C made its request and the reexamination began.
"When the patent examiner gets into the file history and compares the art to what was already considered, they will find out that they were right the first time," said Martin Lueck of Robins, Kaplan, Miller & Ciresi LLP, of Minneapolis.
As for the court case with Microsoft, Lueck said he doesnt expect the reexamination process to have impact because many of the prior art claims being considered in the reexamination are similar to what were considered in the case.
The patent holder, the University of California, also stands behind the patent. Spokesman Trey Davis said that while the university is still reviewing the reexamination order, it believes the prior art issues being raised have already been covered.
"The same arguments that would have applied in the courts review of this issue would hold for the evidence that this new request involved," Davis said.
Despite the reexamination order, the 906 patent is far from any changes or from being revoked. The patent office now assigns a new patent examiner to review the case, a process that typically takes between a year and 18 months, the patent office spokeswoman said. The patent holder is allowed opportunities to dispute the prior art claims. Reexamination decisions can change just some of a patents claims, can change nothing or revoke a patent.
Before asking for a reconsideration of the patent, the W3C had formed an HTML Patent Advisory Group to consider whether the patent would require changes to be made to HTML. Microsoft itself also has announced changes to its Internet Explorer browser to circumvent the patent and has vowed to appeal the verdict.
Microsoft officials declined to comment on the impact of reexamination order on the patent infringement case but welcomed the patent offices decision to reconsider the patent.
"Were heartened by the fact the patent office is taking a closer look at this patent," Microsoft spokesman Lou Gellos said. "We have maintained all along that when scrutinized closely the patent office would find this is not a valid patent."
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