The United States Patent and Trademark Office (USPTO) has ordered a
reexamination of the controversial ‘906 browser patent, handing a crucial
victory to Microsoft and the World Wide Web Consortium
(W3C).
USPTO spokesman Richard Maulsby told internetnews.com a direct
order was issued by deputy commissioner Steve Kunin calling for a
reexamination of all claims relating to U.S Patent No. 5,838,906 (known as
the ‘906 patent). “The notifications have been sent to the parties
involved…Our examiners will begin the process of a thorough
reexamination,” Maulsby explained.
The ‘906 patent is at the heart of a multi-million dollar dispute between
Microsoft and Chicago-based Eolas Technologies that could lead to changes in
the way the widely deployed Internet Explorer browser displays embedded
content on a Web page.
Changes brought about by the patent enforcement would likely bring a wide
variety of common Web applications to their knees. Online advertisers,
marketers, and Web developers have, for example, grown increasingly
dependent on Macromedia’s Flash technology, which would
be virtually hobbled by the changes resulting from the patent
enforcement.
Even as Web developers are scrambling to
prepare code re-writes for Web pages that carry embedded interactive
content, the USPTO acknowledged a “substantial outcry from a widespread
segment of the affected industry has essentially raised a question of
patentability.”
The reexamination order, first entered into the public record on October
30, was officially scanned in the USPTO’s central reexamination unit on
November 4. It was docketed to examiner Andrew Caldwell on November 10,
less than two weeks after the W3C filed a request
to have the patent rescinded on the grounds that prior art
existed long before Eolas applied for the patent.
USPTO’s Maulsby declined comment on the strength of the W3C’s claims,
noting that there is a legal process to handle reexaminations. According to
the public record, USPTO deputy commissioner has acknowledged that the W3C’s
filings raised substantial new questions of patentability.
Even if the W3C’s move to have the patent overturned by the USPTO is
successful, legal experts say the brouhaha is far from being settled.
Typically, when a patent is revoked, a process known as “prosecution”
follows where patent attorneys and USPTO examiners exchange documents.
“This could be a long, never-ending process, especially in a case of this
magnitude,” a legal source told internetnews.com.
“Usually, in major disputes, it can go all the way to the Supreme Court,”
the source added.
In addition to using prior art claims as part of the reexamination
process, the USPTO can summon hearings around the country to seek
industry-wide opinion.
If public hearings are held, the W3C’s HTML Patent Advisory Group is
expected to be in the thick of things. The standards body has already sent a
citation to the USPTO’s Prior Art Department detailing “compelling
evidence” of technologies available before the ‘906 patent was granted to
Eolas.
“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
argued.
The W3C has warned that the enforcement of the patent could cause
“substantial economic and technical damage” to the operation of the Web.
