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The Eolas-Microsoft case--patent ending?

From: Mike Leach (Cubic Compass) <mike@cubiccompass.com>
Date: Tue, 16 Mar 2004 11:52:20 -0800
To: <public-web-plugins@w3.org>
Message-ID: <WM7BDF9774B1C44370A79811F54AE30DEE@cubiccompass.com>
From http://news.com.com/2100-1032_3-5173287.html 

The Eolas-Microsoft case--patent ending?

The next round in Microsoft's Web browser patent fight will unfold in an
obscure bureaucratic proceeding that offers the company and its allies few,
if any, chances to argue their side. 

The United States Patent and Trademark Office (USPTO) last month issued a
preliminary finding that appeared to tip the closely watched case in
Microsoft's favor: A patent licensed by Eolas Technologies at the heart of a
$521 million infringement verdict against the software giant may have been
wrongly granted, the agency acknowledged.

Microsoft was quick to tout the findings as a victory--an outcome that would
save it a considerable amount of money and allow it to avoid rewriting
portions of its Internet Explorer browser. Standards body the World Wide Web
Consortium (W3C) has joined Microsoft's side, arguing that a loss for the
company would wreak havoc with millions of Web pages.

But legal experts said last month's preliminary finding in Microsoft's
favor, coming just months into what will likely be a years-long process, is
far from the last word.

"In the long term this doesn't make a heck of a lot of difference," said
Greg Aharonian, editor and publisher of the
<http://dw.com.com/redir?destUrl=http%3A%2F%2Fwww.bustpatents.com%2F&siteId=
3&oId=2100-1032-5173287&ontId=1023&lop=nl_ex> Internet Patent News Service
and a prominent critic of the USPTO. "This will probably wind up in front of
the court of appeals at some point. Right now I wouldn't bet any money on
the outcome, because there are too many fifty-fifties all around."

Wherever Microsoft's battle with Eolas ultimately winds up, it has for now
thrown a spotlight on a little-known review procedure that from time to time
has led the USPTO to overturn or revise patents. Known as director-ordered
re-examinations, such reviews have been conducted just 159 times in the
agency's history, resulting in at least partial changes in patents about 87
percent of the time.

Although that bodes well for Microsoft, a detailed look at the
re-examination process reveals advantages and pitfalls for both sides.

Microsoft and the
<http://dw.com.com/redir?destUrl=http%3A%2F%2Fw3.org%2F&siteId=3&oId=2100-10
32-5173287&ontId=1023&lop=nl_ex> W3C in the fall spurred the rare
re-examination after a federal court found Microsoft guilty of infringing a
patent relating to widely used browser plug-ins owned by the University of
California and licensed solely to Eolas. If the federal court's verdict
stands, it could force Microsoft and other Web software developers to pay
royalties in order to launch other applications, such as Macromedia's Flash
animation software, within a browser window. Microsoft attorneys were
preparing to appeal the decision before the patent office launched its
review, and they could resume the process should the patent survive USPTO
review.

On Feb. 25,
<http://dw.com.com/redir?destUrl=http%3A%2F%2Fwww.uspto.gov%2F&siteId=3&oId=
2100-1032-5173287&ontId=1023&lop=nl_ex> USPTO examiner Andrew Caldwell
issued a preliminary finding that upheld the premise of the re-examination
request: that older technologies, or "prior art," existed that could
invalidate the patent.

Now it's UC and Eolas' turn to defend the patent. They have two months from
the date of the filing to do so and have expressed confidence that
Caldwell's preliminary finding will not stand.

"It's not a decision, it's a nonfinal office action," said Eolas patent
inventor Mike Doyle of the February filing. "It's the first step in the
dialogue between the patent owner and the patent office. It's routine for
him to present the arguments that have been submitted, as a straw man for
the patent owners to knock down."

Fight for your right to inter partes
Whatever the patent holders say in their response to Caldwell could go
substantially unanswered. Because Microsoft and the W3C could only request
an "ex parte" re-examination, government rules sideline them in the ensuing
debate. In ex parte proceedings, the debate will be conducted as Doyle
described it: as a dialogue between the patent examiner and the patent
holder.

A process that excludes the patent challenger from the highly technical and
contentious intellectual property debates that characterize patent disputes
is not one that intellectual property attorneys enter into lightly. Many
recommend the step only after exhausting traditional legal options, in which
opponents are given equal time and say.

The exclusive nature of the ex parte re-examination process inspired
sufficient complaints from its inception in 1981 that the patent office
instituted reforms in 1999. Now those seeking a re-exam can opt for an
"inter partes" re-examination, which allows for input by the patent's
opponents.

But Microsoft said that option was not available to it, given the date of
the original patent filing.

"Microsoft is evaluating all its legal options as the case continues," said
representative Jim Desler. "Like everyone else, we will continue to watch
the patent re-exam process, and we believe in the end they will conclude
what we've maintained all along--that the Eolas patent is not valid."

The W3C, which cited the interoperable nature of the Web in joining
Microsoft's fight against the patent, said that despite being ex parte, a
director-ordered re-exam was the best hope for an invalidation.

"The reason we opted to motivate the director to order a re-exam is that we
felt that if we could persuade the director to act on his own initiative,
the case would get a higher level of attention within the patent office,"
said
<http://dw.com.com/redir?destUrl=http%3A%2F%2Fwww.w3.org%2FPeople%2FWeitzner
.html&siteId=3&oId=2100-1032-5173287&ontId=1023&lop=nl_ex> Danny Weitzner,
director of the W3C's technology and society work. "We thought we had a
strong case on the merits, and the challenge was to make sure it was
addressed at a level more sophisticated than it was to begin with."

Patent office statistics suggest that director-ordered re-exams bode well
for patent challengers.

Of the 6,899 re-examinations the patent office has conducted since 1981,
3,804 of them, or 55 percent, were requested by third parties. Another
2,936, or 43 percent, were requested by patent-owners seeking clarification
of the validity of their own patents.

A scant 159, or 2 percent, were initiated by the director. Of those, the
patent examiner invalidated the patents 19 percent of the time, altered some
claims 68 percent of the time and upheld the patents 13 percent of the time.

Weitzner contended that the patent's challengers had passed a more than
usually stringent test in persuading the director to order the patent
re-exam.

The patent office agreed.

"The bar is higher when the director orders the re-exam," said USPTO
representative Brigid. "The prior art has to raise a prima facie claim
against at least one claim in the process."

But one attorney for UC and Eolas warned against calculating their odds
based on prior director-ordered re-exams.

"It is classified as director-ordered, but keep in mind that the letters and
the prior art were submitted by Microsoft and others in the Web community,"
said
<http://dw.com.com/redir?destUrl=http%3A%2F%2Fwww.rkmc.com%2Fattorney.asp%3F
bioId%3D427%26iba%3DYes&siteId=3&oId=2100-1032-5173287&ontId=1023&lop=nl_ex>
Jan Conlin, partner with Robins, Kaplan, Miller & Ciresi. "It's not like the
director woke up one day and said, 'We have to re-examine this thing.'"

Unappealing for challengers
Whatever the statistical odds, important procedural rules heavily favor
patent holders. Patent re-examinations offer two levels of appeal, the first
to the
<http://dw.com.com/redir?destUrl=http%3A%2F%2Fwww.uspto.gov%2Fweb%2Foffices%
2Fdcom%2Fbpai%2F&siteId=3&oId=2100-1032-5173287&ontId=1023&lop=nl_ex> Board
of Patent Appeals and Interferences and the second to the Federal Circuit
Court of Appeals in Washington, D.C.

But only patent holders--not challengers--can appeal.

Despite the patent office's pledge to act on re-exams with "
<http://dw.com.com/redir?destUrl=http%3A%2F%2Fwww.uspto.gov%2Fweb%2Foffices%
2Fpac%2Fmpep%2Fdocuments%2F2200_2261.htm&siteId=3&oId=2100-1032-5173287&ontI
d=1023&lop=nl_ex> special dispatch," particularly in cases subject to
litigation, the average length of a patent re-exam is 21 months. An original
patent application, by comparison, takes an average of 26 months.

For so-called electrical patents, which include software patents, the
average re-exam takes three years.

"Re-exams are supposed to be decided speedily," said
<http://dw.com.com/redir?destUrl=http%3A%2F%2Fwww.hosteny.com%2F&siteId=3&oI
d=2100-1032-5173287&ontId=1023&lop=nl_ex> Joseph Hosteny, an attorney with
Niro, Scavone, Haller & Niro. "In my experience that does not always
happen."

Hosteny successfully defended two patents in re-exams that lasted five years
apiece.

"Often they last longer than that," he noted.

Quinn defended the transparency of the patent office's procedure, noting the
new inter partes option and also the fact that anyone can, after paying a
$2,520 fee, ask the patent office to consider, ex parte, prior art not
considered in the original application. (An inter partes request, at $8,800,
is somewhat costlier.)

But Quinn also noted that the patent office, which grants two thirds of the
300,000 patent applications it reviews every year, did not base its
decisions on community feedback.

"It's certainly not an open process and was never intended to be a process
where y'all come," Quinn said. "It's an inherently governmental process
based on the patent examiner's knowledge of the science or technology and
their knowledge of the law. That said, the office is always looking for ways
of making it easier to find a suitable alternative to time-consuming
litigation in the courts."

The patent office is revising its practices under considerable public and
legislative pressure. Critics of the office claim it has issued a whole
class of  <http://news.com.com/2100-1023-962182.html?tag=nl> questionable
"business method" patents. The patent office has acknowledged problems and
countered that it is understaffed and underfunded to keep up with demand. In
a vote of confidence for the office, the U.S. House earlier this month
<http://news.com.com/2100-1028-5169558.html?tag=nl> passed a bill that would
prevent patent office fees from being siphoned off to other agencies and
offices.

Before his resignation early this year, Director James Rogan outlined a
comprehensive
<http://dw.com.com/redir?destUrl=http%3A%2F%2Fwww.uspto.gov%2Fweb%2Foffices%
2Fcom%2Fspeeches%2Fstratplan2003apr03rogan.htm&siteId=3&oId=2100-1032-517328
7&ontId=1023&lop=nl_ex> five-year plan for revamping the patent office--a
plan that includes revising procedures for "post-grant opposition."

Meanwhile, some think the ex parte re-examination rules leave more room for
third-party input than was generally recognized.

"The rules do not obligate the examiner to listen to or respond to any third
party," said Carl Oppedahl, an attorney with the Colorado-based firm
Oppedahl & Larson who is not involved in the case. "It is nonetheless within
the power of the examiner to choose to listen if the examiner exercises that
discretion."

Oppedahl noted that while letters from Microsoft and the W3C were widely
credited with having spurred Rogan's decision to re-examine,
<http://dw.com.com/redir?destUrl=http%3A%2F%2Fwww.uspto.gov%2Fweb%2Foffices%
2Fpac%2Fmpep%2Fdocuments%2Fappxr_1_520.htm&siteId=3&oId=2100-1032-5173287&on
tId=1023&lop=nl_ex> patent office guidelines all but rule out that kind of
solicitation.

Patent news service editor Aharonian--himself the target of a patent
infringement lawsuit that is suspended pending the results of a
re-exam--questioned the logic of the patent office's process.

"We pay money to the patent office to do a job," he said. "They should do it
right the first time around, and if they don't, why do we pay more money to
have them take another look?"
Received on Tuesday, 16 March 2004 14:53:39 GMT

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