USPTO Reexam Finds $521M Eolas Patent Valid

theodp writes "As predicted earlier on Slashdot, looks like the W3C goofed by shutting out the public and asking the Patent Office to base its reexamination of the Eolas Web Plug-In Patent solely on prior art promoted by Microsoft. The USPTO has reaffirmed the validity of the $521M patent, rejecting the W3C's prior art as deficient for not demonstrating the capability of ongoing real-time manipulation and control by the user. The USPTO also considered but rejected the prior art of the Viola Browser, which formed the basis for Microsoft's appellate argument. Ironically, Eolas' defense was bolstered by the arguments of its expert witness, 2005 EFF Pioneer Award Winner Ed Felten."

Comments

Re:I forget

[troc]

Erm. No.

First to file is much better than first to invent. In the case you mention that you invent someting first but someone else files first (both arrived at the same invention independently), your invention would make their invention INVALID as it would be perfectly valid prior art against their invention.

There's a few complications as regards the way certain countries and regions handle situations like this, but they system, isn't designed to punish you for being slow to file.

Here in Europe we have situations like this quite frequently where someone will oppose a granted patent using as evidence their own (or other) internal documents (or even product brochures). If it can be shown they genuinely have a point, then the patent could be invalidated or, in rare cases they could get to share the patent.

First to invent requires HUGE amounts of perfect paperwork at all times and is open to all sorts of fraud.

Plus, the US is the only major country that doesn't have first-to-file as a basic concept. In fact, that plus opposition boards etc - they are simply copying the European patent office.

external display or built-in functionality is OK

[idlake]

I looked it up again. The patent is entitled "Distributed hypermedia method for automatically invoking external application providing interaction and display of embedded objects within a hypermedia document", and that's the way the claims seem to read, too.

So, invoking external applications that don't embed, or invoking built-in functionality, would seem to be OK. I believe this means invoking a built-in MPEG4 player would be fine, as would be Javascript/SVG animation. Furthermore, both of those do have clear prior art and probably weren't addressed in this lawsuit.

You can read the patent yourself.

Re:Payday

[mavenguy]

1) As another reply has indicated, independent invention is not, per se, a defense against infringement. Of course, the timing and nature of the various acts leading to the invention by the inventor and the infringer could have an effect on the validity of the patent claims.

Firstly, if the inventor (that is the person(s) identified as the inventors in the patent) copied the invention from anyone else (the accured infringer or a third party) the patent claims are invalid under 35 USC 102(f). Also, if the the invention was patented or described in a printed publication, or in public use or one sale in the US more than one year prior to the effective filing date of the patent application it is similarly invalid.

2) The patent, from the day it is issued, can be applied against the acts making, using, and selling of the invention, regardless of when the accused infringer started those acts; liability for infringing, however, can only be assessed for those acts actually occuring on or after the issued date; previous acts don't count. Also, regarding liability, acts more than 6 years prior to filing the infringement case don't count. This, of course, applies only in cases brought relatively late in the life of the patent.

Additionally, and most important in the case of newly issued patents, the Court can enjoin the infringer from performing further such acts as part of the remedies granted the patentee. This is how, other than the costly assessment of damages, that the patentee can shut down the infringer's actions.

There is an interesting doctrine I vaguely recall that might be relevant in some circumstances of timing to software patents, that accused infringers might be able to escape liability if they were practicing a method covered by a method claim in a patent; this doctrine is called a "shop right". While searching title 35 (the patent law) I stumbled on 35 USC 273 which on a quick glance, seems to express that long held judicial doctrine. Traditionally, this protected a person using a secret method to make something from being shut down due to another getting a patatent on the method, if the the infringer came up with the method prior to the inventor of the patent. Perhaps an IP lawyer can comment on that.