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Microsoft Wins One in IE Battle

In a preliminary ruling, the U.S. Patent and Trade Office Friday said the original HTML specs precede a patent for Web page plug-ins owned by Eolas Technologies, invalidating its patent claims against Microsoft .

The decision has the potential to block a $521 million payout by the Redmond, Wash.-based software vendor to Eolas -- a spin-off from the University of California. In 1999, Chicago-based Eolas notified the Microsoft that its Internet Explorer (IE) Web browser had invalidated its claims. In August 2003, a jury found that Microsoft did infringe on Eolas' patents.

In his review, patent examiner Andrew Caldwell rejected all ten claims of the Eolas patent. His ruling references the new prior art submitted by the Internet regulatory body W3C, including the draft specifications for Hypertext Markup Language by Tim Berners-Lee and others, published in June 1993; Dave Raggett's specification HTML+ Internet Draft, published in July of that year; and a post by Raggett to an Internet news group around that time. Raggett works with the W3C on developing standards.

In a written statement, Microsoft spokesperson Jim Desler said, "This decision, while welcome, is not surprising. We have maintained all along that, when scrutinized closely, this patent would be ruled invalid."

Eolas executives were not immediately available for comment. The company has 60 days to review the examiner's ruling and the prior art he considered. The entire process could take 12 to 18 months.

According to Caldwell's report, the Berners-Lee document showed a method for a browser to parse a document for HTML tags -- including an EMBED tag. He said the document illustrated an executable application external to the original Web page that the browser could cause to be executed on a client workstation.

His conclusion: "It would have been obvious to one of ordinary skill in the art at the time the invention was made to implement the browser and controllable application."

William Abrams, co-chair of the intellectual property group at the law firm Pillsbury Winthrop, said he was surprised that the W3C specs weren't considered in the original application process. Patent applicants are supposed to present any prior art they know about, he said. "And you can't be an ostrich." He pointed out that Berners-Lee was already well-known and highly regarded at that time.

Microsoft's Desler pointed out that this is not a final ruling -- and that Microsoft continues to fight Eolas' claims in the U.S District Court of Appeals. The implementation of an injunction against the use of ActiveX controls and plug-ins in IE was stayed pending the result of that appeal.

According to Patent office papers, Eolas executives Michael D. Doyle, David C. Martin and Cheong Ang received U.S. Patent 5,838,906 on November 17, 1998. They applied in October 1994, at the very dawn of the Web, and, according to company statements, first demonstrated the technique in 1993. Eolas (which stands for "Embedded Objects Linked Across Systems") says the patents cover the embedding of small interactive programs, such as plug-ins, Java applets, scriptlets or ActiveX Controls, into online documents, so that they're triggered when the page loads or when a user clicks.

Soon after the patent was granted, Eolas sued Microsoft for infringement, and that case continues to work its way through appeals courts.

There are four bases for granting a patent, according to Brigid Quinn, deputy director of public affairs for the USPTO: The invention must be new, useful, workable and "non-obvious," that is, not something already in common knowledge. To determine the obviousness of a potential patent, the USPTO looks at prior art, or any technology or information that was relevant and publicly available at the time the invention was made.

When an appeals court upheld the ruling against Microsoft, in October 2003 the World Wide Web Consortium weighed in, asking the Patent Office to reconsider. When the USPTO agreed in November, the W3C presented prior art in the form of early drafts of the HTML specification.

According to Microsoft's Desler, since 1988, the USPTO has only reviewed 151 patents, out of approximately 4 million patents issued during that time.

Quinn said the review process is similar to that of an initial patent application, but a different examiner than the one who granted the patent does the review, and the new examiner considers only prior art.

While Windows XP Service Pack 2, expected in June 2004, will contain updates to the browser, they're security oriented, according to Desler. While IE continues to evolve, he said, it wouldn't be hard to implement the necessary changes if Eolas prevailed. Microsoft has said it would simply cause a box to appear on the Web page that the user would have to manually click to invoke the applet.

"The changes we were contemplating would have been minor steps, and we believe they still can be made, if need be," he told internetnews.com.



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