Will Eolas’ Browser Technology Patent Be Revoked?

The World Wide Web Consortium’s (W3C) request to have the controversial
ActiveX patent reexamined and
might be unusual but it’s not without precedent.

Back in 1994, the U.S. Patent and Trademark Office (USPTO)
conducted a thorough reexamination and rescinded Patent Number 5,241,671,
which was previously issued to Compton’s New Media, a unit of Encyclopedia
Britannica. When Compton’s attempted to enforce the patent, which covered
the use of text, graphics and sounds in multimedia applications, a huge
public outcry forced the USPTO to order a re-examination.

Officials at the W3C are crossing fingers and hoping that an
industry-wide protest will force the patent office to launch a reexamination
to prevent “substantial economic and technical damage” to the operation of
the World Wide Web.

U.S Patent No. 5,838,906 is at the heart of a multi-million dollar
dispute between Microsoft and Chicago-based Eolas
Technology. In addition to forcing major changes
Microsoft’s flagship Internet Explorer browser, the enforcement of the ‘906
patent has sent Web developers scrambling to
prepare code re-writes for Web pages that carry embedded interactive

In an interview with internetnews.com, chairman of the W3C’s
patent policy working group Daniel Weitzner cited the Compton’s precedent
and insisted there was enough prior art available to lead to an invalidation
of the patent.

The W3C’s HTML Patent Advisory Group, in a citation sent to the
USPTO’s Prior Art Department, presented what Weitzner described as
“compelling evidence” of similar technology available long before Eolas
even applied for the patent.

“The sole difference between the web browser described in the ‘906 patent
and typical browsers that the patent acknowledges as prior art, is that with
prior art browsers, the image in such cases is displayed in its own window,
separate from the main browser window, whereas, with the ‘906 browser the
image is displayed in the same window as the rest of the Web page, without
the need for a separate window,” the W3C said in its filing.

“That feature, (i.e., displaying, or embedding, an image generated by an
external program in the same window as the rest of a Web page) had already
been described in the prior art publications submitted herewith and was
known to the Web development community. The claims of the ‘906 patent are
therefore plainly obvious in view of this prior art,” the standards group


According to Weitzner, the W3C has clearly identified technology that
established prior art to show that the patent Eolas applied for was “not at
all novel at the time.”

“It’s clear that the patent didn’t meet the required standard of novelty.
Software developers have long recognized the usefulness of adding objects in
word processing programs. This is certainly not novel and our filing
attempts to prove that,” Weitzner added.

Even if the W3C is successful with its reexamination request, legal
experts say the brouhaha is far from being settled. When a patent is
revoked, legal sources explained that a process known as “prosecution”
follows. During “prosecution,” patent attorneys and examiners at the USPTO
trade documents in what is usually a long, drawn-out process.

“The patent office throws out patents all the time but rejections don’t
mean it ends there. Usually, if there’s a bitter dispute, it can go all the
way to the Supreme Court,” the source said.

A spokesperson for the USPTO confirmed receipt of the W3C request and
said a decision could come in a few days or could take up to 90 days. “It
all depends on the merits of the request. If there are grounds for
reexamination and substantial new questions are raised, we can order a
reexamination,” the spokesperson told internetnews.com.

In addition to poring over the W3C’s prior art filings, the USPTO can
hold hearings around the country to seek industry-wide opinion, the patent
office spokesperson added.

Even as the W3C is insisting prior art is readily available, many wonder
why this was never uncovered during the Microsoft/Eolas case that has been
before the courts since

According to W3C’s Weitzner, efforts to have the jury consider the prior
art in the HTML standard was not allowed “for procedural reasons. “It [the
prior art] wasn’t rejected for any reason that won’t allow the patent office
to reexamine it. It wasn’t presented to the jury because of procedural
issues,” he insisted.

Microsoft officials declined comment, citing the ongoing appeals process.
Lawyers for Eolas Technology did not return calls for comment.

The USPTO has faced ongoing criticism for its patent examination
procedures and, with the W3C getting involved and throwing its weight behind
Microsoft, it’s sure to generate intense debate in the coming months.


For W3C’s Weitzner, the issue is one of maintaining Web standards. “We
are not involved with the political machinations here. Our fundamental
commitment is that Web standards should be royalty free. The enforcement of
this patent is a direct attack on the ability to participate in the Web on a
royalty-free basis. It goes beyond a damage award that one of our members
have to pay or wrangling between competitors,” he argued.

Weitzner, who is Technology and Society Domain Leader at the W3C, said unsuccessful efforts have been made in the past to contact Eolas. “We’ve reached out to them to understand their intentions and try to persuade them that this will cause major harm to the operation of the Web but we have not been successful,” he said.

In the midst of the legal squabbles, Web developers and software firms are busy creating workarounds to deal with changes to the way a new version of Internet Explorer will handle embedded content on Web pages.

Microsoft has already announced that the browser’s behavior will be changed in a coming update to prompt the user to determine whether an ActiveX control is loaded or whether to display alternate content. All Web pages with ActiveX controls are affected by this change unless the controls are created dynamically from script loaded from another location or the controls do not reference remote data.

The modification effectively means that users visiting Web pages have not been updated will be presented with a dialog box before the ActiveX Control is loaded by the browser.

Those IE changes, according to the W3C, would render the browser “incompatible with globally-accepted standards.” Even worse, Weitzner noted, it could disrupt millions of historically important Web pages that contain embedded files.


Microsoft was not the only big-name software firm rolling out modifications to deal with the ramifications of the patent.

Macromedia , which markets software for the creation of Flash content, has released details on “straightforward ways” to update Web pages to avoid the dialog box prompt. The company has launched a restricted beta of Active Content Update Utilities to provide tools to create workarounds.

Apple Computer also released instructions for Web developers and authors of QuickTime content (Windows or Mac) to avoid the dialog box interruption when streaming content is displayed.

RealNetworks plans to develop an Active Content Update Utility to deal with the IE changes. The company has also posted instructions on how content can be coded to work with the updated IE browser.

“To cause damages of this this magnitude to the entire web is wrong. The
Web has to be able to continue to function according to publicly agreed
standards,” Weitzner added.

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