Companies and standards bodies are hoping to unearth technology that predates the patent and performs essentially the same functions--a legal concept known as "prior art."
If Web technologists can find the right example, they believe they can help set aside a federal jury's recent finding that Microsoft had violated a patent held by tiny Web developer Eolas Technologies. The so-called '906 patent describes a way that a Web browser can call up a separate application from within a Web page.
Web designers are rallying behind Microsoft by searching for "prior art" that could be used to invalidate a patent by Eolas.
Microsoft's earlier loss in the patent dispute threatens to force wide-ranging changes in how Web pages are built.
Prior art has been key to the case since its inception, but the issue is once again on the front burner, after an unusual filing by the leading Web standards body this month to the U.S. Patent and Trademark Office. The filing, from the World Wide Web Consortium (W3C), asks the USPTO to re-examine the Eolas patent in light of HTML+, which is technology previously considered by the judge in the Eolas case as potential prior art but barred from evidence at trial.
"In view of the invalidity of (Eolas') claims and the considerable adverse impact the '906 patent will have on the larger World Wide Web community, a Director-initiated re-examination is appropriate," the W3C said in its Oct. 23 filing.
Eolas gained international attention with its $521 million patent infringement victory over Microsoft, a judgment that has focused the attention of the software industry in a way few other patent cases have. Microsoft has already detailed plans to change its Internet Explorer browser, which could force countless Web developers to rewrite their Web pages.
Fear of the implications of the patent has inspired vendors of plug-in technologies--including Macromedia and Sun Microsystems--and Microsoft's direct competitors in the browser market to rush to Microsoft's defense.
The case has brought together not only people who are professionally dependent on Internet Explorer and the way it handles plug-in applications, but also entities--activist groups, companies and standards bodies alike--that have taken up a philosophy that is restrictive of patents, if not outright hostile to them.
The W3C, for one, recently underwent a lengthy, public and polarizing re-evaluation of its patent policy, opting in the end to severely restrict the use of patented technologies in its recommendations.
Calls to restructure the patent system led this week to recommendations by the U.S. Federal Trade Commission that--in part through changes to rules on the consideration of prior art.
A lawsuit has Microsoft rivals rushing
to the defense of the software giant's
Internet Explorer browser.
"The W3C has a public policy against software patents," Eolas founder Mike Doyle said in an interview. "And what they're doing now is driven by their political agenda to fight against the whole concept of software patents. It's clear that they're trying to circumvent the rules to overturn a ruling by a jury in a federal lawsuit."
Determinations about prior art are typically the province of lawyers, judges and juries. But in this case--perhaps an indication of how severely the Eolas patent has rattled the Web industry--seemingly everyone is getting into the prior art act.
Since the Eolas verdict in August, software engineers meeting in online newsgroups have been digging through old technologies, in a somewhat belated search for prior art. In September, Lotus Notes co-creator Ray Ozzie issued a prior art call to arms, urging others to re-examine decade-old applications and detailing ways in which Lotus Notes might be relevant to the search.
Whileas part of preliminary moves to appeal the patent verdict, the W3C has bypassed the courts to argue its prior art case to the USPTO itself.
The agency rarely revokes patents on re-examination, although such an action is not unprecedented. In 1994, the USPTO rejected a patent for multimedia search technology from Compton's NewMedia on re-examination. Other examples include a patent covering advertisements on computer displays that was rejected on re-examination in the midst of a dispute over a screensaver featuring the Eveready Energizer bunny.
The W3C--which in May--did not return calls for comment. Microsoft declined to comment for this story, citing the ongoing status of the case.
But one W3C participant who testified in the Eolas patent trial on Microsoft's behalf lauded the consortium's filing, given that the judge disallowed testimony about prior art to the jury.
"My feeling was that we never got to argue whether there was prior art," Dale Dougherty, a vice president of online publishing and research at Sebastapol, Calif.-based publisher O'Reilly & Associates, said in an interview this week. "At the end of the day, it's a ruling by a court, and has more to do with procedural things than anything else."
The refusal by U.S. District Judge James Zagel for the Northern District of Illinois to allow evidence of prior art followed detailed examinations of various technologies brought forward by Microsoft during the trial's evidentiary hearing. These included the Viola browser, written by Perry Pei-Yuan Wei, an artist, software engineer and then a student at the University of California at Berkeley; and the HTML+ specification written by W3C staff member Dave Raggett.
Unpicking prior art
Microsoft's attorneys have highlighted the Viola browser in their request for a new trial. By contrast, the W3C bypassed the Viola software altogether in its USPTO filing and concentrated instead on the Raggett technology.
Raggett's HTML+ draft, according to the W3C, proposed a tag called "embed" that would let a browser display, within its own window, data rendered by another application. It also described a way in which external editing applications could let someone interact with that data, still within the browser.
The Raggett draft falls far short of prior art, Doyle contended.
"It is as if they are trying to completely ignore the elements of the patent claims that require the embedded application to enable interactive processing of the data while it is being displayed within the Web page," Doyle wrote in an e-mail interview. "Raggett was focused on a tool that would make it easier for a Web page author to create static images for Web pages. Our invention, on the other hand, transformed the end user's interactive experience, which was a paradigm shift over what Raggett was suggesting."
Prior art comes in two types: anticipatory and obvious.
Prior art that anticipates a patent does so completely. That is, a single piece of technology encompasses all the claims of the patent and predates it.
Claims of obvious prior art, by contrast, pick and choose elements from various products. They typically say that while there is no single example that predates the patent in its entirety, all the parts of the idea are in plain view. Putting them together is an obvious move, goes the argument, not a patentable invention.
In addition to mounting an anticipation argument based largely on the Viola browser, Microsoft also raised an obviousness claim, which the court also declined to let the jury hear. With its filing to the USPTO, the W3C raised its own obviousness argument, citing elements of the Raggett draft and elements of the Mosaic browser (designed in part by Marc Andreessen).
An attorney for Eolas said prior art defenses against the '906 patent were wishful thinking.
"There's no good prior art against this patent," Martin Lueck, an attorney with Chicago-based Robins Kaplan Miller & Ciresi, said in an interview. "And wishing that there was doesn't make it so. Microsoft can appeal the various rulings that the court made, but when you get down to it, we don't believe there's any good anticipation analysis, and they never proposed to the court or the jury a proper obviousness argument."
Lueck gave the obviousness claim poor odds of succeeding either in Microsoft's appeal or in the W3C's request for re-examination by the patent office.
"If the invention is so obvious, why didn't the W3C think of it?" Lueck asked. "They invented this that and other, so why not this? Everyone wants to rail against the patent, but the W3C didn't come up with it. Microsoft and Netscape didn't come up with it...It's entirely fair that the patent owner and Eolas be compensated for the extent of Microsoft's use of the invention in protecting its Windows franchise."
Among Eolas' critics, Microsoft is the least committed to an antipatent stance. With a formidable patent arsenal of its own, the company in some casesin order to take them to standards organizations with fewer restrictions on the use of patented technologies.
For many of Microsoft's defenders, however, the case against Eolas is a case against software patents--a view that frequently surfaces in the battle over prior art.
"The fundamental design and implementation of the World Wide Web, which we all benefit from today, was not patented by Tim Berners-Lee and many others who contributed separate inventions that became part of it," Dougherty noted in an e-mail interview.
Dougherty, who testified on Microsoft's behalf in the trial, pointed to the collaborative spirit of the Web's early development to explain why legitimate instances of prior art were not considered.
"Unfortunately, the (Patent and Trademark Office) didn't have access to a lot of the materials about the Web's early development, and Doyle himself did little to call attention to projects like Viola which helped advance the Web," he wrote. "I hope that the re-exam of the EOLAS patent will cause the PTO to looker deeper into the available sources and see that Doyle's claims are too broad, if not completely inaccurate."
Doyle dismissed antipatent advocacy as the reflection of Microsoft's corporate public relations strategy, and defended the use and fairness of software patents.
"There are a number of cases in point where companies like Microsoft essentially cloned other people's innovations, and they had no recourse," Doyle said. "A lot of the public sentiment you're hearing now is the result of a well-funded public relations campaign. And I think that people are reacting to that very carefully crafted PR message without considering the fact that the patent laws are there to protect the little guys against the theft of their ideas by large, powerful, well-funded companies."