The U.S. Patent and Trademark Office announced the move last week in letters to the Public Patent Foundation, which last November requested the re-examination. PubPat, as it is known, is a public interest legal group whose directors include free and open-source software advocates.
The patents in question, Nos. 5,894,554 and 6,415,335, cover systems and methods for managing dynamic Web page generation requests--that is, sites that return a customized page based on user input. An enormous number of Web sites use some form of dynamic processing, often through programming languages, such as PHP, that are designed to create Web pages based on database queries.
A Texas-based company called EpicRealm Licensing filed for the patents in 1996 and 1999. Critics have said the firm, which once offered, now exists solely to seek settlements or licensing fees from companies accused of infringing on its patents.
As recently as last week, EpicRealm sued Various, a firm that describes itself as an operator of "numerous online ventures," in federal court, accusing the company of violating EpicRealm's two dynamic Web site patents. Beginning in 2005, it filed two similar suits against more than a dozen online players, including matchmaking sites eHarmony.com and Friendfinder.com, day-planner specialist FranklinCovey, weight-loss drug company Herbalife, and automobile-glass repair company SafeLite. Those suits were filed in the U.S. District Court for the Eastern District of Texas, which has a reputation for being friendlier toward patent holders.
The Patent Office's decision to re-examine the patents in question won't have any bearing on those suits, which are still in progress, said Kevin Meek, an attorney representing EpicRealm.
Meek characterized the Patent Office's move as a "nonevent," as the commissioners grant the vast majority of re-examination requests they receive. "We think they're valid," he said of the pair of patents.
Dan Ravicher, executive director of PubPat, argued that EpicRealm has been using its patent holdings as a weapon against other companies.
"The fact that they are claiming rights over the vast majority of Web sites based on these patents that the Patent Office has now found have substantial issues relating to their validity only makes the matter that much more unsettling," he said in a statement.
His New York City-based group is not the first to challenge the EpicRealm patents. Last summer, Oracle asked a Delaware federal court to declare the two patents invalid. The firm made that move in part because Safelite, one of the subjects of an EpicRealm infringement suit, said it had used Oracle's e-business software to generate its dynamic pages. That case is still pending.
Oracle declined to comment on Monday but has been among the high-tech corporate voices calling for an. Critics say the existing system makes it too easy for people to obtain "junk" patents solely for the purpose of asserting them against others and reaping inflated settlements.
The U.S. Supreme Court has been mulling recently the question ofto warrant protection. Many are hopeful that Congress will also step in. The has said he plans to make a a top priority this year, although that has become in recent years.
The Patent Office is supposed to award protection for inventions that are novel, useful and not obvious. It said it agreed to re-examine the EpicRealm patents because they may have been predated by other inventions, such as IBM's Patent No. 5,701,451, called "method for fulfilling requests of a Web browser."
EpicRealm will have two months to file arguments in its favor with the Patent Office, after which PubPat will have two months to give its final input. Such proceedings can drag on for years, as the patent holder has a chance to appeal an unfavorable re-examination decision to an internal Patent Office appeals board and then, if still dissatisfied, to a federal court that specializes in patent appeals.