W3C Calls for Reversal on ActiveX Patent

Warning that the enforcement of U.S Patent No. 5,838,906 could cause
“substantial economic and technical damage” to the operation of the
Internet, the World Wide Web Consortium (W3C) on Wednesday called for an
immediate re-examination of the patent that is forcing major changes
to the world’s most popular Web browser.

“The impact of this patent will be felt not only by those who are alleged
to directly infringe, but by all whose web pages and applications that rely on the
stable, standards-based operation of browsers threatened by this patent,”
W3C director Tim Berners-Lee declared in a letter to the United States
Patent and Trademark Office (USPTO).

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 Flash technology, which would be virtually hobbled by the changes resulting from the patent enforcement.

In many cases, Berners-Lee argued that the companies that will force to
incur the cost of modifying Web pages or software applications do not even
themselves infringe the patent — assuming it is even valid.

The USPTO confirmed receipt of the W3C request and said a decision on whether the patent will be re-examined could be made within 90 days.

“There is a process for re-examination. We have received the W3C request and it will go through that process. If there are substantial new questions raised, it can lead to a re-examination,” said Ruth Nyblog, a spokesperson of the USPTO.

Nyblod told internetnews.com the W3C’s filing would go through the USPTO’s legal process before a decision is made. “It could be made within a day or it could be 90 days. It all depends on our review of the request,” she explained.

If a patent re-examination is ordered, the process could take about 18 months to be resolved, Nyblod said.

The controversial patent, which is at the heart of a dispute between
Microsoft and Chicago-based Eolas Technology, covers
technologies for the creation of a Web browser system that allowed for the
embedding of small interactive programs, such as plug-ins, applets,
scriptlets or ActiveX Controls, into online documents. (See our Special
Report
).

Faced with a $521 million patent infringement verdict, Microsoft has
already spelled out
changes
it will make to its Internet Explorer browser.

Specifically, Microsoft will change the browser’s behavior to prompt the
user to determine whether an ActiveX control is loaded or whether to display
alternate content. The modification effectively means that users visiting
Web pages that have not been updated will be presented with a dialog box before
the ActiveX Control is loaded by the browser.

But, according to the W3C, there is prior art available to the USPTO to
render the patent invalid. “Based on our investigations, we feel we have a
prior art to provide conclusive evidence of the invalidity of the ‘906
patent,” W3C spokesperson Janet Daly told internetnews.com.

PRIOR ART

The W3C’s HTML Patent Advisory Group has put together prior art which it
claims will establish that the Eolas patent is invalid and “should therefore
be re-examined in order to eliminate this unjustified impediment to the
operation of the Web.”

Berners-Lee, in a letter to U.S. Under Secretary of Commerce for
Intellectual Property James E. Rogan, said that critical prior art was never
considered at the time the patent was initially examined and granted.
During the recent patent infringement litigation, the prior art was again
not examined, he argued.

According to the standards-setting body, the object embedding technology
being claimed by Eolas has been a part of the HTML standard since the early
days of the Web. “This feature provides critical flexibility to Web
browsers, and giving users seamless access to important features that extend
the browsers’ capabilities. Nearly every Web user today relies on plug-in
applications that add services such as streaming audio and video, advanced
graphics and a variety of special purpose tools,” the group said.

It warned that changes enforced by the Eolas patent will have a
“permanent impact on millions of historically important Web pages,”
including pages with non-commercial content or older material that is not
generating revenue.

“As a result, there is no way to cover the cost of modifying those pages
to bring them into compliance with whatever changes are made in response to
the ‘906 patent,” the group argued.

More worrying, the W3C added, is that the enforcement of the patent would
have a “disruptive impact” on established Web standards. It said Web
developers who have followed Web standards for embedding objects will face a
need for additional work, as browsers are re-engineered to avoid the
patented features. “Even though page authors haven’t violated the patent,
they will still bear the cost of rewriting Web pages or software
applications, as browsers will no longer be able to perform in the manner
they once did,” the group said.

“The ‘906 patent will cause cascades of incompatibility to ripple through
the Web. Yet, it’s not too late to remedy this problem. The material W3C
presented in its Section 301 filing clearly establishes that the ‘906 patent
is invalid,” the W3C said.

Microsoft officials declined comment on the W3C move, noting that the software giant is going through with its appeal of the patent infringement judgment.

Eolas has since filed for an injunction to permanently enjoin Microsoft from distributing the Internet Explorer browser. If granted, the injunction would stop Microsoft from shipping any version of Internet Explorer or the Windows operating system which includes the patented technology.

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