W3C Seeks Re-examination of Eolas Browser Patent

UPDATED: The Web standards group claims that the patent, which has dealt Microsoft a major legal defeat, would damage use of the Web and is invalid because of previous inventions.

The World Wide Web Consortium is seeking a reexamination of a Web browser patent that it says threatens to undermine the smooth operation of the Web.

The patent is at the heart of a legal wrangle between Eolas Technologies Inc., which holds a license to it from the University of California, and Microsoft Corp. Microsoft in August lost a $521 million patent-infringement jury verdict in the case and since has announced changes to its Internet Explorer browser that it says sidesteps the patents method for embedding and invoking interactive applications such as plug-ins and applets from Web browsers.

On Tuesday, W3C Director Tim Berners-Lee sent a letter to the United States Patent and Trademark Office formally requesting a reexamination of the patent, U.S. Patent No. 5,838,906. The Web standards group claims 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.

"A patent whose validity is demonstrably in doubt ought not be allowed to undo years of work that have gone into building the Web," Berners-Lee wrote in his letter to James E. Rogan, undersecretary of commerce for intellectual property in the patent office

In a separate filing with the patent office, the W3C last week outlined examples of prior art, including two publications from a Hewlett Packard Laboratories researcher, Dave Raggett, about a proposed HTML+ specification that it says were published a year before the patent filing.

The W3C claims that the publications describe the EMBED tag in HTML+ in an identical way to the EMBED tag in the patent.

Eolas founder Michael Doyle, who as a researcher at the University of California at San Francisco helped to invent the technology in the patent, disputes the W3Cs claims. Testimony from the patent-infringement trail against Microsoft, including from Raggett, contradicts the W3Cs claims of prior art, he said.

"We went through a five-week trial that was incredibly detailed, and its getting to the point where it would behoove many people to read that transcript," Doyle told eWEEK.com. "Its clear that these guys are trying to circumvent the rules and trying to put political pressure to bear to try to overturn a finding from a jury in a federal lawsuit."

Officials at the U.S. patent office confirmed that they had received the W3C request. Now a technology patent examiner or the patent office director will determine whether to order a formal reexamination, a process that typically takes about 90 days, a patent office spokeswoman said.

Microsoft officials declined to comment on the W3C filing because of the pending lawsuit with Eolas. Both sides are waiting for a U.S. District Court judge in Chicago to issue his final judgment in the case and rule on a series of post-trial motions, including one seeking an injunction to stop Microsoft from shipping IE.

Beyond the claims of prior art, the W3C also cited the far-flung impact of the patent as a reason for it to be re-examined. As well as Web and software developers being forced to modify Web pages and applications at a considerable expense, millions of Web pages that are no longer being actively maintained but that have historical significance could be broken because no one is responsible for covering the cost of changing them, Berners-Lee wrote.

"The practical impact of withholding unrestricted access to the patented technology from use by the Web community will be to substantially impair the usability of the Web for hundreds of millions of individuals in the United States and around the world," Berners-Lee wrote.

The use of object-embedding technology in the patent is central to popular plug-in software, including multimedia applications such as streaming media and Macromedia Flash and Shockwave, rich document formats such as Adobe Reader for viewing PDFs, and advanced scripting languages such as Sun Microsystems Java, he said.

The decision to pursue a patent reexamination came after the W3C in September formed an HTML Patent Advisory Group to analyze the patents impact on the Webs main language.

The advisory group determined that seeking a patent reexamination was the most viable action since changes to HTML would heavily burden the Web community and a conclusion to the Eolas-Microsoft case was likely to take years as it winds through the appeals process, said Daniel Weitzner, chair of the W3Cs Patent Policy Working Group. Microsoft has said it plans to appeal the jury verdict.

The advisory group will be holding off on any other action as it awaits the patent offices decision, Weitzner said.

"Our interest is to eliminate the threat of this patent overall," he said. "If patent office declares that these claims are no longer valid, then that would be the end of it."

Editors Note: This story was updated to include comment from W3C officials.

Discuss this in the eWEEK forum.