USPTO Upholds Eolas Patent and Microsoft Running out of Options

In a news release dated September 28, 2005, the University of California announced that the USPTO had reaffirmed the validity of the web-browser technology patent (US Pat No 5,838,906 – the "'906 Patent") held by its subsidiary, Eolas Technology Inc (Eolas). The "˜906 Patent relates to interactive programs within browsers that make "plug-ins" and "applets" possible. In 1999, Eolas claimed that Microsoft infringed the "˜906 Patent with its Internet Explorer browser (and in particular its Active-X functionality). In 2003, a US jury awarded Eolas $520 million in damages for infringement. The jury verdict was upheld in the US District Court for the Northern District of Illinois in 2004, and the damages, including interest, were reassessed at $569 million. Microsoft was partially successful on appeal in having certain prior art reconsidered against the "˜906 Patent. In particular, Microsoft relied on a 1993 browser called the Viola browser which enabled hypermedia markup language in a browser. The USPTO's decision reconsidered the "˜906 Patent in light of the Viola browser as prior art, and concluded that the Viola browser did not anticipate or fairly suggest the "embed text format", "object", "executable application" claim limitation. Accordingly, the USTPO reaffirmed that the "˜906 Patent remains valid. Microsoft's chances of ultimate success in the litigation would appear to have suffered a severe setback. The case highlights the importance of properly searching and assessing prior art when drafting patent claims. For the University of California news release, see: http://www.universityofcalifornia.edu/news/2005/sep28.html For the 73-page USPTO notice, see: http://www.universityofcalifornia.edu/news/2005/ptonotice0905.pdf For the Federal Circuit Court of Appeals decision, visit this site: http://fedcir.gov/opinions/04-1234.pdf For the trial court decision, see: http://www.eolas.com/Zagel-final-judgement-99c0626.pdf For news coverage of the USPTO ruling, see: http://news.com.com/2100-1012_3-5885657.html Summary by: Nicholas J. Whalen