A request to federal regulators by the World Wide Web Consortium (W3C) to invalidate a controversial patent rests on shaky ground, according to an attorney representing the patent holder.
That patent for embedding components into Web pages must be revoked to “prevent substantial economic and technical damage to the operation of the World Wide Web,” wrote Tim Berners-Lee, director of the W3C, in a letter sent to the U.S. Patent and Trademark Office yesterday.
The W3C contends the patent — No. 5,838,906, commonly known as “906” — held by Eolas Technologies of Chicago should be invalidated based on “prior art.” The W3C asserts that Eolas has patented something that was invented by someone else and in use prior to the filing of the patent.
Examples of prior art cited by the W3C in another filing with the patent office include references to documents by HP researcher Dave Raggett. Those documents, published a year before Eolas’ patent filing, allegedly describe the company’s technology exactly as it is described in the patent.
In August, Eolas won a US$521 million patent-infringement case against Microsoft for incorporating the patented technology into its Internet Explorer Web browser. The appeals process could drag that case out for years to come.
“The art that they refer to does not represent a prior use of the 906 invention,” Martin Lueck, a partner with Robins, Kaplan, Miller & Ciresi in Minneapolis, Minnesota, told TechNewsWorld. “In fact, the material that they are referring to from Mr. Raggett was in front of the court and part of the trial record and simply does not describe the 906 patent.
“There were prior art defenses asserted in court, but through one mechanism or another they were found not to invalidate the 906 patent,” he added.
If the patent isn’t invalidated, though, its impact will go beyond alleged infringers of the technology, Berners-Lee argued in his letter.
“The existence of the patent and associated licensing demands compels many developers of Web browsers, Web pages and many other important components of the Web to deviate from the fundamental technical standards that enable the Web to function as a coherent system,” he wrote.
In many cases, wrote Berners-Lee, those who will be forced to incur the cost of modifying Web pages or software applications do not even infringe the patent themselves — assuming it is even valid. “Given the interdependence of Web technology, those who wrote Web pages or developed software in reliance on Web standards will now have to retrofit their systems in order to accommodate deviations from standards forced by the 906 patent.”
The practical impact of withholding unrestricted access to the patented technology from use by the Web community, Berners-Lee argued, will be to impair the usability of the Web for hundreds of millions of individuals in the United States and around the world.
The uncertainty created by the Eolas lawsuit has some software developers rethinking their approach to business. “We asked ourselves why we aren’t filing our own patents,” said Hector Santos, president and chief technology officer of Satronics Software. “So we’ve begun the process of filing patents.
“It’s silly,” he observed, “but you’ve got to defend yourself these days.”
Santos said he was surprised that Microsoft lost the Eolas case. “There was so much prior art, it’s hard to believe that Microsoft failed in this one,” he noted.
While it may take years for Eolas’ case against Microsoft to be settled in court, the path on which the W3C has embarked could be equally drawn out. Reexaminations can take as long as two years, said David Schwartz, a partner with Wallenstein Wagner & Rockey, a law firm in Chicago. “If the timing isn’t right, the remedy the W3C is seeking here may be worthless,” he said.