[DMCA-Activists] Eolas Suffering Under Patent Re-examination

[Seth Johnson]

(From Digital Copyright in Canada list.  Article text pasted
below.  -- Seth)

-------- Original Message --------
Subject: address@hidden Eolas suffering under patent re-examination
Date: Thu, 19 Aug 2004 14:59:19 -0700
From: "Chris Brand" <address@hidden>
To: "General Discussion" <address@hidden>

Sounds like the US Patent Office is deciding that all
ten claims under review in the Eolas patent are invalid 
due to prior art.

http://www.globetechnology.com/servlet/story/RTGAM.20040819.gteolasaug19/BNStory/Technology/

Chris

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> http://www.globetechnology.com/servlet/story/RTGAM.20040819.gteolasaug19/BNStory/Technology/

BREAKING NEWS

Microsoft wins again in Eolas patent dispute

By Paul Festa
Thursday, Aug 19, 2004 


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.

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 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 licence 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
(U.S.) 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.