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Appeals court revisits Eolas decision

From: Richard M. Smith <rms@computerbytesman.com>
Date: Wed, 2 Mar 2005 18:09:11 -0500
Message-Id: <3sp35g$6pui8@smtp04.mrf.mail.rcn.net>
To: "W3C Public Web Plugins List" <public-web-plugins@w3.org>

 <http://news.com.com/2001-1_3-0.html?tag=prntfr> CNET News.com
http://www.news.com/ <http://www.news.com/2001-1_3-0.html?tag=prntfr>  

Appeals court revisits Eolas decision 

By Paul Festa

Story last modified Wed Mar 02 13:35:00 PST 2005 


A federal appeals court partially reversed a lower-court decision that had
exposed Microsoft to $565 million in damages. 

The patent
483373.html?tag=nl> infringement case, brought by the University of
California and its Eolas
00-1032_3-5275745.html?tag=nl> Technologies spinoff, had riled the Web over
potential ripple
effects that could have forced changes in millions of Web pages that use
plug-in applications like Macromedia Flash and Adobe Acrobat that run inside
the browser.

Both sides claimed victory in the mixed ruling, which reversed part of the
lower-court ruling, affirmed other parts of it, vacated the decision as a
whole and sent it back for a new trial.

"We cleared most of the serious issues, so I would consider this a victory
for the university," UC spokesman Trey Davis said. "On the issues that would
have mattered most to Microsoft, they lost."

Microsoft said that, on the contrary, the company had won on the most
important points, particularly its claim that UC's patent was predated by
similar technology by artist
and software engineer Perry Pei-Yuan Wei.

"It's a huge victory," said Andy Culbert, associate general counsel of
patent litigation for Microsoft. "The essence of our defense was that this
patent was invalid, based on the good work done by Pei Wei, and the court of
appeals has completely vindicated our assertions. We are looking forward to
establishing the invalidity and unenforceability of this patent when the
case is remanded."

The appeals court said the lower court had incorrectly kept Microsoft from
showing the jury the Viola
-5100693.html?tag=nl> browser. That browser was written by Wei in 1993, a
year before the filing date of the UC patent, when he was a student at the
University of California at Berkeley.

According to Microsoft, Viola constituted "prior art," or technology both
older than the patent and similar to what it claims.


But the jury in the lower court didn't hear about Viola after district court
Judge James Zagel ruled that Wei had "abandoned, suppressed or concealed"
his browser, therefore invalidating it as prior art.

The appeals court on Wednesday ruled that because he showed the browser to a
group of Sun Microsystems engineers, Wei couldn't be said to have suppressed
or concealed his work. The appeals court also said Wei's posting of a new
version of Viola did not constitute "abandonment," as the district court had

The appeals court reversed the lower court's decision that Viola didn't
anticipate the UC patent, sounding a testy note in sending the issue back
for a jury's consideration.

"This court hesitates to disturb the district court's role in assessing
evidence, but anticipation is a question of fact," the decision said.
"Accordingly, this particular determination lay within the province of the

In another win for Microsoft, the appeals court ruled that the lower court
had erred in dismissing the company's claim of inequitable conduct against
Eolas inventor and former UC researcher Mike Doyle.

At the district court proceedings, the company
ml?tag=nl> had claimed that Doyle, when he filed the patent application
originally, had misled the U.S. Patent and Trademark Office by withholding
information about the Viola browser. The lower court had thrown out the
charge based on its finding that Viola didn't constitute prior art.

By reversing that decision, the appeals court opened another avenue for
Microsoft to prevail in the new trial. Attorneys familiar with the case said
that if Doyle is found to have deceived the patent office, the patent will
be rendered unenforceable.

Microsoft lost on two key points. The first was a dispute over whether or
not the patent applied to programs that couldn't be run independently, such
as spellchecking components and other DLLs, or dynamic link libraries. The
district court had ruled that the patent did apply to those kinds of
programs, giving the UC patent much broader application, and the appeals
court upheld it on that point.

Microsoft also lost on the issue of whether or not copies of IE distributed
abroad after being copied in a foreign country from a "golden master" disk
were subject to U.S. patents.

The appeals court upheld the lower court's determination that those copies
are indeed subject to the patent. Foreign distribution accounted for about
two-thirds of UC's now vacated $565 million judgment.

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Received on Wednesday, 2 March 2005 23:09:13 UTC

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