August 18, 2004 3:28 PM PDT

Microsoft wins again in Eolas patent dispute

The U.S. Patent and Trademark Office has handed Microsoft a second victory in its dispute with Eolas, rejecting browser patent claims that could roil the Web if upheld.

The patent in question, owned by the University of California and licensed exclusively to its Eolas software spinoff, describes the way a Web browser opens third-party applications, or "plug-ins," within the browser. Download the full ruling here (1MB PDF file).

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What's new:
U.S. patent agency rejects browser patent claims against Microsoft that threatened to disrupt the way the Web works.

Bottom line:
The decision is a big victory for the software giant and another setback for Eolas, the university spinoff that claimed the rights to the way browsers open third-party applications. But Eolas has at least one more opportunity to argue its case.

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In the second of what are projected to be three opinions, or "office actions," on the case, the Patent Office rejected all 10 patent claims under review, according to a source familiar with the document. The agency's first office action on the matter came in February.

Attorneys for Eolas and the university could not be reached for comment. The Patent Office confirmed it had mailed the office action Monday but declined to comment on its substance. A UC representative said the university had not yet seen the office action and declined to comment further.

Microsoft praised the PTO's move.

"Today's action is another step in the Patent Office's reconsideration of the Eolas patent," said Microsoft spokesman Jim Desler. "We've maintained all along that when scrutinized closely, the Eolas patent would be ruled invalid."

Patents and copyrights have been taking on a higher profile in the software industry in recent months. The issue is especially contentious in the open-source arena, where the Linux operating system has become embroiled in a number of intellectual-property disputes. And Microsoft itself, which is trying to boost the licensing of its intellectual property to other companies, says it is on track to file 3,000 patent applications this year.

Eolas and the university still have at least one more chance to argue their case before the patent examiner in a decision being watched closely by the software industry.

If upheld, the patent could force Microsoft and other browser makers to take out a license if they want to run, within the browser, applications like Macromedia's Flash animation software, Adobe's PDF document software, or Sun Microsystems' Java programming language. A workaround could disrupt millions of pages around the Web, industry and standards experts warn.

The fight between UC and Microsoft is proceeding on two fronts. The legal battle has seen UC win against Microsoft a $521 million infringement judgment, later raised to $565 million and poised to climb from there. Microsoft is appealing that decision.

On the second front, Microsoft's allies in the software industry last fall persuaded the Patent Office to initiate a re-examination of the patent on the grounds that it was awarded improperly.

In its first office action, the Patent Office in February appeared to side with Microsoft and its allies, mirroring their argument that similar technologies, or "prior art," had been demonstrated before Eolas filed its application in 1994.

The university and Eolas subsequently replied to the office action, arguing that the cited technologies were irrelevant to the patented one.

Even if UC and Eolas fail to sway the patent office and it winds up ruling against them, they have two levels of appeal, the first to the Board of Patent Appeals and Interferences and the second to the Federal Circuit Court of Appeals in Washington, D.C.

17 comments

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One issue worth getting behind Microsoft on..
as it potenially affects everyone who uses and developes for the Internet.
Posted by unknown unknown (1951 comments )
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The Specter of Manifest Destiny
When is being right considered wrong? The answer is, when you are being challenged by the dominion of Microsoft and its minions. There are potentially millions of lines of code and billions of dollars at stake because of the deceit that has been perpetrated by the usurping of the Eolas patent. And because of the fact that the .Net is inextricably bound by this original sin, the innocent shall become victim.
Posted by EmbSysPro (57 comments )
Reply Link Flag
Did you even read the article?
The patent is invalid because prior use can be proven. Sheesh... Any patent will fail because of this, and it has absolutely nothing to do with Microsoft. Eolas tried to patent something they didn't invent, and the system refused to uphold the patent rights. Everything worked as it should.
Posted by David Arbogast (1709 comments )
Link Flag
Microsoft has nothing to do with patent's "validity"
'Prior Art' means that the invention/technology in question was being used before the patent was granted. The fact that Eolas patented something that people were already using has nothing to do with who was using it, or Microsoft.

The patent is going to be declared bogus, plain and simple. You should read the article and check your facts before posting, "Unknown".
Posted by critical_section (6 comments )
Link Flag
Patent validity twist
It'll be interesting to see how many open-source proponents suddenly start supporting this invalid patent only because Microsoft stands to gain from the ruling. It is the open-source crowd that has been most vocal in its opposition to the patent system.
Posted by David Arbogast (1709 comments )
Reply Link Flag
Gain?
Microsoft is not the only one to gain here. In this one instance it is the web developers and the web users that are going to gain a lot more.

Microsoft already has a modified version of IE ready to by-passes the patent. Microsoft won't loose much if they have to release it.

Who will loose is the web developers and the web users because this change will break 90% of the web sites out there. It would basically bring a scretching halt to the web and cost web developers and web site owners a ton of money to fix.

Microsoft doesn't make money off of using browser plug-ins. IE is free and Microsoft as far as I know doesn't offer browser plug-ins. It is Macromedia, Adobe and the others that are going to be loosing.

Some things should not be patentable and this is one of them. Software interfaces are another, there are only so many ways to design a usable interface.

Robert
Posted by (336 comments )
Link Flag
Re-visit the patent law
The real problem is the lack of capable patent investigators within the USPTO. Many, many of the patents granted over the last two decades should never have been granted at all. It is really interesting the attitude of the big IP holders, because they almost never pay a licensee fee, they just allow the “offender” to license something from their pool. If Microsoft is filing 3,000 patent applications this year, as the article stated, I wonder how many will be simply to there to be used against someone else, and not ever used by Microsoft?

The real problem is that we need a top to bottom overhaul of the USPTO, starting with Congress not allowing any copyright to be granted for a period longer than 7 years. But there is fat chance of Congress doing anything useful (is Congress the opposite of Progress?).
Posted by connectr (6 comments )
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RE:Re-visit the patent law
Microsoft certainly isn't the only company around that are filing patents. Numerous companies are filing patents today for seemingly minor technologies and ideal. In fact, given the litigious nature of people today they must file all those patents.

The patents aren't being filed so that those companies can go out and sue everyone, it's to keep those companies from being sued in the first place.

The fact is, to this day Microsoft has never filed a patent infringement lawsuit against anyone. They are just covering their butts, as any resonably intelligent corporation would do.
Posted by g8crapachino (220 comments )
Link Flag
I have to disagree
I read an article about a year ago when those whole plug-in mess started that indicated most companies now are patenting everything because it is a great way to increase profits. Simply wait until another company has used your patented technology for a few years, gotten themselves make a lot of money and the go after them. Sure they are out some for court costs (which in most cases they get back as part of the settlement). Many companies have made a considerable amount of money doing thing without ever offering anything to the public or industry at large. Look at theis plug-in law suite. Neither of the groups involved in filling the law suite has offered much of anything to anyone. But, if they win they get $565 million or more from Microsoft. Now I call that a win fall for a patent that they aren't even using.

The one and only thing you can count in when it comes to dealing with patent holder and big corporations or organizations is that greed wins out. They don't get a damn about anything other than the all mighty buck.

Robert
Posted by (336 comments )
Reply Link Flag
You are kidding, right?
"Neither of the groups involved in filling the law suite has offered much of anything to anyone."

You are suggesting that neither Microsoft nor Eolas has offered anything to anyone?

You are kidding, right?
Posted by David Arbogast (1709 comments )
Link Flag
They Should do away with software patents
Software Patents are just profound, it's like someone patenting books. copyright's should be the only issue with software not patents.
Posted by simcity1976 (136 comments )
Reply Link Flag
Yes, But...
I agree, software patents are dangerous, but it's also a bit of a slippery slope.

Where does process end and data begin? The problem is, suppose I have a number of software components that do specific things (read files, display data, etc.) Now, the concepts behind those individual components can't -- or shouldn't be -- patented. However, the components themselves CAN be copyrighted. It gets even more complicated when you talk about componentware -- software that's made completely out of pre-rolled objects. Today, almost all large applications are componentware to a greater or lesser degree.

So, does rolling together a number of non-original components make a new, original piece of software? Where does the line between component (process) and finished product (data) lie?

It's a legally complex issue; it's not as clear-cut as some would have you believe. However, I do agree that the entire area of patent and copyright law needs a thorough overhaul. We're using essentially 19th century laws to govern a 21st century culture.
Posted by prothe113 (32 comments )
Link Flag
m$ is killing inovation
This is realy bad becourse this means that you may only use third party plugin for viewing .pdf, Java applets, movie files, etc in IE. In this way m$ is killing inovation by doing this, IE is a bad browser
but it is used by a lot of people and they are trying to protect there position from Mozilla Firefox and Opera by limit others to inovate.
Posted by (2 comments )
Reply Link Flag
Refute to your arguement
How can you say that MS's position on this is bad? This patent affects ALL browsers, its just that MS makes the most money so Eolas went after them first. If they win on this front, you can bet their sights will be set on all other browser companies out there, including free, or open-source, browsers like Mozilla.

This is basically Eolas's bid to make money off a patent that was issued before the ramifications of such issuing could fully be observed. Eolas did us a favor by waiting though, if they had pulled this back at the beginning of the net boom, we would have seen less browsers and even less enovation. Now we get a chance to throw out this true threat to software development while being able to reap the tech advances that have already occured.
Posted by ok_tanis (8 comments )
Link Flag
MS had it coming
It's unfortunate, but this points out the need to adhere to W3C standards, rather that trying to "embrace, extend, and extinguish" with proprietary protocols.

riffraff
Posted by aabcdefghij987654321 (1721 comments )
Reply Link Flag
 

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