Feds To Take Second Look at Web Crippler Patent

A patent that critics say will vitiate the Web will be reexamined in a rare move by the U.S. Patent Office.

The patent, No. 5,838,906 — or 906 for short — governs the embedding of components into Web pages, a practice that, among other things, enables use of such popular applications as RealAudio, Apple QuickTime, Macromedia Flash, Adobe Acrobat and Sun Microsystems Java.

In its order issued October 30th, Deputy Commissioner Stephen G. Kunin found that, in the case of the 906 patent, “a substantial outcry from a widespread segment of the affected industry has essentially raised a question of patentability with respect to ‘906 patent claims.” This creates an “extraordinary situation,” he wrote, “for which a Director ordered examination is an appropriate remedy.”

Impairs Web

That outcry was led by the Big Daddy of the Web, Tim Berners-Lee, director of the World Wide Web Consortium (W3C), who in a letter to the Patent Office declared, “The practical impact of withholding unrestricted access to the patented technology from use by the Web community will be to substantially impair the usability of the Web for hundreds of millions of individuals in the United States and around the world.”

The 906 patent is held by Eolas Technologies of Chicago. In August, Eolas won a US$521 million patent-infringement case against Microsoft for incorporating the patented technology into its Internet Explorer Web browser. Microsoft has vowed to appeal that verdict.

“We cannot comment on any pending legal proceeding,” Microsoft spokesperson Lou Gellos told TechNewsWorld. “Nevertheless, Microsoft is heartened by the fact that the United States Patent Office will take a close look at this patent. As we have maintained all along, when scrutinized closely, we believe the Patent Office will find that this is not a valid patent.”

Sanity Check

The federal agency’s move was hailed in other quarters, too. “It sounds like the Patent Office is taking appropriate steps to sanity-check the validity of a patent that is obvious to anybody that’s ever built software,” Ted Schadler, an analyst with Forrester in Boston, told TechNewsWorld.

“I can only imagine what the prior art search looked like for this idea, but it surely missed the vast bulk of work that had been going on since at least 1995,” Schadler said.

The term “prior art” can be used as a basis for rejecting a request for a patent. It essentially means a patent seeker is trying to patent something invented by someone else and in common use. The search for prior art conducted by the Patent Office before granting 906 was extensive, according to the attorney for Eolas, Martin Lueck, a partner with Robins, Kaplan, Miller & Ciresi in Minneapolis.

“The 906 patent was examined for four and a half years and underwent five rejections,” he told TechNewsWorld. “The 906 file is very thick in terms of the amount of prior art. If you just looked at the prior art in the file history, you’re looking at something that’s a couple of feet high.”

Rare Move

“It’s my view that once the Patent Office compares the art that the W3C has cited to them to what they did when it examined the patent originally, they’ll conclude they were right the first time,” Lueck added.

According to Patent Office spokesperson Brigid Quinn, it can take up to a year or more to complete a reexamination of a patent. However, the patent remains in force while the examination is taking place.

She explained that the reexamination procedure has been in place since 1981. Since that time, the office has received requests to review almost 7,000 patents. About 43 percent of those requests came from the patent holders themselves, another 55 percent from the public and, as is the case with the 906 review, just 2 percent at the request of the director of the Patent Office.

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