Second Look For Dynamic Web Patents

The U.S. Patent and Trademark Office (PTO) will review two patents held by EpicRealm, a Texas firm that has filed a number of infringement lawsuits against companies employing dynamic Web technology.

Dynamic Web sites produce custom responses for users and are widely used to personalize their site experience. EpicRealm has filed more than a dozen infringement suits against well-known sites such as eHarmony and FriendFinder.

The Public Patent Foundation (PubPat) filed the request, which argued that the PTO was not aware of existing technology when it granted two patents to EpicRealm in 1996 and 1999. In granting the re-examination request, the PTO said PubPat raised “substantial questions” about the validity of the EpicRealm patents.

PubPat claims IBM applied for a patent in 1995 that covers a “method for fulfilling requests of a Web browser.” The PTO granted the patent in 1997.

Kevin Meek, an attorney representing EpicRealm, told the re-examination was no surprise. “I’m not even sure it’s much of an event. We don’t anticipate any difficulty.”

PubPat Executive Director Dan Ravicher called Meek’s statement “posturing. It’s like we called the cops and told them there was a crack house across the street. The cops will come out and investigate.” Ravicher said the PTO takes re-examinations “very seriously.”

In a statement issued Monday, Ravicher accused EpicRealm of a being a patent troll, a common reference to patent holding companies that acquire patents for the sole purpose of forcing settlements through litigation.

“EpicRealm is yet another example of the growing trend of businesses whose sole purpose and activity is to sue others for patent infringement,” Ravicher said in the statement. “The fact that they are claiming rights over the vast majority of websites based on these patents that the Patent Office has now found have substantial issues relating to their validity only makes the matter that much more unsettling.”

In theory, the re-examination process should take several months, but in reality it often take years. EpicRealm would also be able to appeal in the event of an unfavorable ruling. If it loses that appeal, EpicRealm could then take its case to court.

That leaves plenty of time for name-calling in the meantime. While the PTO re-examines the EpicRealm patents, Ravicher said the company’s “dinged credibility” would hurt its infringement litigation. “No one will give the patents any respect,” he said.

“Perhaps some day soon Congress will fix the patent system so that such exploitation cannot occur,” Ravicher said.

Both the courts and Congress have expressed an increasing interest in patent issues over the last few years as infringement litigation clogs the dockets.

In May, the U.S. Supreme Court partially sided with online auction giant eBay in its long-running patent dispute with Virginia patent holding firm MercExchange, which claims eBay’s Buy It Now feature infringes on patents owned by MercExchange.

The Falls Church, Va.-based MercExchange won a lower court decision that eBay infringed on its patents and was seeking a permanent injunction against eBay. The Supreme Court did not disagree with the lower court infringement decision, but said courts are not obligated to issue automatic injunctions in patent-infringement cases.

In November, the high court heard KSR International v. Teleflex, which seeks to determine if a patent should be issued if the invention is obvious to those with knowledge of the skills involved, particularly patents that combine two known elements.

Congress is also considering patent reform legislation. That process, though, could take years, followed by more years of litigants challenging a new law.

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