Eolas patent defended before US patent office

The Regents of the University of California have defended a controversial patent it holds and that critics fear could damage the...

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

The US Patent and Trademark Office (USPTO) granted to the university in 1998 a patent that 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 and Microsoft was ordered to pay $521m in damages.

The verdict triggered an outcry from industry and internet experts. World Wide Web creator Tim Berners Lee wrote a letter to the US 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. A USPTO official could not immediately be reached for comment, but the agency has in the past said that a review process such as this one can drag on for two years or longer.

In an initial finding issued in February, 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. "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.

"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, 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 is likely to collapse.

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

Next week, Microsoft will file its opening brief in its appeal of the lawsuit the university and Eolas won against it last year, Desler said.

Juan Carlos Perez writes for IDG News Service

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