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Microsoft to Appeal Browser Plug-in Ruling

Microsoft will face a panel of U.S. Circuit Court judges Thursday and try once again to overturn a ruling that the ActiveX technology used in its Internet Explorer browser infringes on a patent.

The ruling has raised concerns over the prospect that Microsoft might have to alter its dominant IE browser, a move that could cripple a wide variety of common Web applications, such as online ads that depend on Macromedia Flash technology.

The patent is owned by the University of California and licensed to a tiny Chicago company called Eolas. Microsoft lost an appeal of the patent infringement suit, filed by Eolas in 1999.

The hearing will be a quick affair, said John Rabena, a partner at Sughrue Mion, a law firm specializing in intellectual property cases, with arguments limited to fifteen minutes per side.

"The judges are supposed to have read through everything and be on top of the issues," Rabena said. "The judges want to use the session to clarify their understanding of things."

Microsoft's lawyers will likely present three arguments, Rabena said: That ActiveX does not infringe Eolas' patent; that the patent isn't valid; and that the $521 million judgment was incorrectly based in part on foreign sales and therefore should be lowered by 64 percent.

Eolas, a spin-off from the University of California founded by Michael Doyle, a co-inventor of the process, was awarded patent No. 5,838,906 in 1998. The patent covers the technique of embedding small interactive programs, including plug-ins, applets, scriptlets or ActiveX Controls, into Web pages.

The timing of the appeal is very interesting, Rabena said, because concurrently, the U.S. Patent Office is in the process of re-examining the Eolas patent. The U.S. Court of Appeals is expected to deliver its ruling within six months; the USPTO should conclude its review before then.

If the USPTO says the patent is invalid, Microsoft could go back to the U.S. District Court in Illinois and argue that they should be let off the hook. "That's a pretty strong argument," Rabena said. "They should win that."

While Microsoft fought the patent infringement case, a group of Internet heavyweights led by HTML inventor Tim Berners-Lee, appealed to the USPTO to re-examine the patent, arguing that its enforcement could cause "substantial economic and technical damage" to the operation of the Internet."

The W3C submitted new "prior art," that is, information showing that the method in question had been discussed or was in use by others before Eolas applied for the patent. Under U.S. law, a patent should not be awarded to someone who was not the originator of the idea. Neither should someone be able to patent something that would have been obvious to others working in the field.

On August 16, Alexander Caldwell, the original USPTO examiner, rejected Eolas' patent claims on re-examination, based on some e-mails from the W3C's Dave Raggett and a paper by George Toye, referring to NoteMail, which was part of a collaborative Internet communication project called SHARE.

Eolas' response is that the patent examiner incorrectly joined together the two new pieces of prior art presented to it. According to Eolas, Mosaic and the two emails from Dave Raggett refer to loading a static image in an HTML page, not an executable application. While Mosaic could launch "helper applications" to read data formats not supported by the browser itself, those were opened in a separate window -- not within the original browser page. Raggett's EMBED tag was a tool for embedding foreign data inline in the HTML source and displaying foreign formats as MIME content, not launching an external application.

Eolas also argued that Toye's SHARE architecture makes no mention of a browser. Instead, all the data objects would be stored in a single database where they would be remotely accessed.

But Eolas argued that combining these two very different ideas would have been far from obvious to the average person who had graduated from a good computer science program at a university or had gained similar knowledge by working in the industry.

It's possible, said Rabena, that rather than outright overturning the patent, the patent examiner might allow it to be narrowed, re-opening the question of whether Microsoft's ActiveX infringes. "So the question of whether the judge should hold off making Microsoft pay could get held up for years," he said.

Meanwhile, it seems that the task of defending the patent has fallen on its owner, the University of California. According to a March 10 story in the Chicago Tribune, news of the first rejection of the patent caused investors to back out of a new round of funding that would have kept Eolas afloat for two years. The phone number listed for Eolas had been disconnected, and UC spokesperson Trey Davis said inventor Michael Doyle was unavailable.

"Our position is still that we're technically right on the issues," Davis said. "In this case, in the courts, Microsoft had four or five years to examine all the possible prior art to present."



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