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:As long as they don't attack Open Source

[Anonymous Coward]

Then you should be on Microsofts side, and not Eolas. Microsoft hasn't sued anyone over patents they hold, which is more than can be said for Eolas.

wtf?

[wingman358]

"...art promoted by Microsoft..." what the heck?

Payday

[chill]

Eolas has only 100 shareholders, so not counting legal fees that would mean $5.21 million each. After fees it'll probably be about $49.95 each. :-)

Still, this is a broad patent and will have serious implications if those 100 start seeing dollar signs. Microsoft could be target #1 and while I've heard rumors of Eolas vowing not to go after FOSS infringers -- like Mozilla -- all bets are off once the greed fever takes hold.

I wonder if AOL/Time-Warner is a potential target for all their infringing years as owners of Netscape/Mozilla. They have some cash laying around that I'm sure some patent lawyers would like to "liberate".

  -Charles

Re:Payday

[Peyna]

The University of California owns the patent and licenses it to Eolas. I wouldn't be surprised if UC wasn't helping foot the bill for the litigation and will receive a chunk of the reward as well.

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.

I forget

[lheal]

Are we for Microsoft because we hate software patents or are we for Eolas because we hate Microsoft?

Congress is too busy worrying about baseball players taking steroids to actually fix the system.

Re:I forget

[pgpckt]

Are you serious???? Have you not heard of the Patent Reform Act of 2005, H.R. 2795 ?

http://thomas.loc.gov/cgi-bin/bdquery/z?d109:h.r.0 2795: ( the bill)

http://www.ipo.org/template.cfm?Section=Patent_Ref orm1&Template=/TaggedPage/TaggedPageDisplay.cfm&TP LID=196&ContentID=18391&requestTimeout=500 (everything you could ever possibly want to know)

This is making major MAJOR changes to patent law (prior use rights, first to file instead of first to invent, creation of public opposition proceedings, publication of all patents, etc, etc, etc.) in 10 or 12 MAJOR areas of patent law.

And this thing is going to pass. It has wide congressional bipartisan support and the support of the all the major players. And it is a good thing for consumers.

Yikes, get your facts straight.

Re:I forget

[Krach42]

So, first to file is a *good* thing? Because way I see it, First to File would give Eolas an undeniable clinch.

Forget prior art. Did they file before you? That's the only thing you have to worry about.

I don't call that better. Now granted, I'm sure many provisions do benefit consumers, and innovation, but this whole first to file thing is just trying to get rid of red-tape that they have to deal with finding prior art. Now, they just have to look through their records and see if you're the first one to file for it. If you are, congratulations, otherwise, too bad, we'll put you in contact with who you need to to speak to about getting a license to use the technology that you independently developed before them.

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.

Re:I forget

[Kuscheltier]

*cough* First to file a patent instead of first to invent is NOT a good thing. The patent law needs a reform, but this one goes into the wrong direction. Also, its less the law, then the USPTO being the problem.

Oh yes

[lightknight]

*cue evil laugh* Muahahahaha! Power to the patent (I'm biased, having my own hand in the game)!

But in all seriousness, this is both a good and bad thing.

It's a bad thing (in the eyes of most /.ers, OSS, etc.) in respect to the fact that this confirms a broad patent, with all the WMD-type damage that in can incur.

It's a good thing (again, in the eyes of /.ers) in that this patent is pointed at Microsoft. As MS is quite adept at dishing it out (destroying competition, litigating projects out of existance, etc.), it's nice to see a little fair play. Bonus points because it's the little guy (small inventor) giving it to the big guy (corporation).

Re:Oh yes

[craXORjack]

Maybe its a bad thing it was pointed at Microsoft. By putting up a lame defense, ensuring that Eolas would win, now Microsoft can buy Eolas for a billion or so and use the now affirmed patent against everyone else. I wonder if the patent can be challenged again when it is aimed at someone new by a new owner.

Slashdot EZ Post TM

[Hack Jandy]

Slashdot EeziPost (TM) MK I

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[ ] Slashdotted already!. I bet their server runs on $topic_item too

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[X] Profit!!

[X] Still no cure for cancer

Re:Is this still an issue?

[Keeper]

Nope. Nobody has deployed a non-infringing solution as of yet. Just about every browser (except maybe lynx) infringes on this.

As predicted earlier on Slashdot,

[Anonymous Coward]

Oh great oracle, Slashdot. You are so wise. Your insights in to the future are renowned across the land. I beseech thee, please cast your all knowing eye across my destiny and pray tell me when will I get a girlfriend?

Re:As predicted earlier on Slashdot,

[Anonymous Coward]

I am the great Slashdot. I am all user accounts, and yet I am none--I am THE Anonymous Coward. As you have humbly submitted thyself to my greatness, I shall take pity on thee and bestow my answer...

I cannot provide an exact date, but the following events will foretell the coming of a woman in your life:

Microsoft adds support for the OpenDocument format.
SCO realizes the error in their ways and open sources Unix.
A full year will pass here on Slashdot without a single dupe.
Duke Nukem Forever will be released.

As a final blessing, I foresee that you will meet this woman though the relationship services provided by Googlezon's EPIC system.

That's because patents don't affect..

[CyricZ]

.. your average Joe and Jill American. At least not directly, as far as they're aware. Baseball does, unfortunately. That is why, as sad as it is, real issues don't get the attention they deserve, while farcery like athletes using steroids does.

Hey Eolas!

[Chordonblue]

Party in Middle Earth tonight! You're buying!

Signed,

Frodo and Gimli

Re:As long as they don't attack Open Source

[SpaceLifeForm]

They are waiting. They lost this on purpose basically to give legitimacy to software patents. They are gaming the system.

They won't need to sue anyone once they have total control. And that is their goal.

Math error

[lheal]

Eolas has only 100 shareholders, so not counting legal fees that would mean $5.21 million each.

That assumes they all have an equal number of shares. I think one guy has a majority, a couple of others have good-sized chunks, and everyone else was optioned in in lieu of salary. There's probably a bank or two involved, and the lawyers will get half anyway.

Not Ironic

[Anonymous Coward]

Ironically, Eolas' defense was bolstered by the arguments of its expert witness, 2005 EFF Pioneer Award Winner Ed Felten."

Unless I'm missing something, this isn't ironic.

Irony is a gulf between what you would expect and what happened. This isn't; in fact, it's EXACTLY WHAT YOU WOULD EXPECT.

You would EXPECT that Eolas's defense would be bolstered by arguments of its witnesses, that's why they are Eolas's witnesses.

(Now, you may find it ironic that Ed Felten was testifying for them, but that's not what the sentence says.)

Eolas isn't what scares me

[serutan]

Forget about the 10 shareholders. The major players in the world of "Intellectual Property" have always been people who create nothing but merely buy rights from others. I don't fear the Eolas shareholders as much as I fear somebody else with a few hundred $million who might buy their rights and start systematically going after people for a few thousand or tens of thousands of dollars a pop. And all the while they'll be making self-righteous proclamations about protecting "their" technology.

Even if the Eolas claim is valid, it's pretty sad that the government can let somebody sit on something like this for years while other people innovate, and then dive in and claim they own it. This news illustrates the need to place a time limit on "sleeper" patent claims.

Premature panic

[1ucius]

Just because the USPTO reissues the patent doesn't mean that it has the same scope as the original. The new art may have forced Eolas to narrow the claims so much that they are not relevant anymore (or maybe not). My point is that we still don't know anything important.

Re:Is this still an issue?

[Unordained]

Shouldn't that mean that it's a rather obvious solution to practitioners in the field, possibly the only truly reasonable solution? These teams all developed similar solutions independently, without the help of the patent holders, yes? The teams didn't even know about the patent beforehand?

Maybe, in a few rare cases, patents have spurred development of new, truly innovative, technologies. But, to quote Lyndon Johnson, "You do not examine legislation in the light of the benefits it will convey if properly administered, but in the light of the wrongs it would do and the harms it would cause if improperly administered." I would feel vaguely sorry for the little and truly innovative companies if we took away patents, but not sorry enough.

does it still matter?

[idlake]

If the patent only covers applets, Flash, plug-ins, and ActiveX, then it probably doesn't matter anymore: they are not being used for much that is important anymore, and anything that eliminates these from the web is a good thing as far as I'm concerned.

That doesn't change the fact, of course, that the patent is stupid and has prior art., it's just that in this case, the incorrect decision may not have a lot of serious consequences.

Good news and mostly bad news

[FlorianMueller]

Bad news:

• Don't let us gloat over the damage to Microsoft. The Eolas patent is a threat to large parts of the Internet as we know it.

• Eolas' success will encourage investments in industrialized deep-pocket patent trolls by venture capitalists, corporations, and high net-worth individuals. Look at this Goldman Sachs venture here, for an example: www.ipvalue.com

• The Eolas case will be used as a key argument of the IT industry to support that Patent Reform Bill in US Congress, a piece of legislation that would limit the damage an Eolas can cause to a Microsoft while giving the large players ever more advantages and disadvantaging the defensive power of open-source projects and smaller companies.

Good news:

• Microsoft backed virtually any pro-patent lobbying entity in Europe (ACT, CompTIA, Campaign for Creativity, EICTA, BSA, and numerous local ones). A dozen Eolas-like cases down the road, they may reconsider their stance.

• As a representative of the anti-software patent movement in Europe, I've been nominated by a jury for the Europeans of the Year award, which is sponsored by Microsoft. It's a public Internet poll in which I might even win, either in the EU Campaigner of the Year or the overall European of the Year category, and I've already vowed to give the prize money to the FFII, which fights against software patents. If you feel like supporting this Microsoft money to anti-patent group effort, please vote for me there in both categories (Campaigner and the long overall list at the end). Don't have to be European for that. Thanks. End of campaign message :-)

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.

Key question for USPTO officers

[Morgaine]

Q. "Would an average software developer with an average education and average experience in computing ever need to refer to Eolas' patent on plug-ins, either directly or indirectly, in order to introduce optional functionality into an application?"

A. "No."

In fact, no software developer of any standing would need the information allegedly protected by the patent, because it is 100% obvious. And if you don't need the information in a patent, either directly or indirectly, then clearly the patent does not contribute the technical novelty which is allegedly being infringed. It has not offered the claimed item of value to the commonweal through its publication.

Given the above, nothing else in this case is relevant. Regardless of the form of words on the application, there can be no rational claim of infringement of a protected invention here, because the likelihood that the patent played any part whatsoever in the development of the allegedly infringing products is zero.