The
patent relates to a method that allows web browsers to access
interactive application programs, and is owned by the University of
California, but licensed by tiny tech firm Eolas Technologies.
Eolas and the University of California sued Microsoft in 1999,
and many were stunned when a jury agreed with the claim in 2003 and
awarded damages of $520.6 million plus interest.
That verdict was upheld in January 2004 and a Chicago District
Court imposed an injunction on Microsoft, banning it from
distributing the infringing software. But the ban was stayed
pending an appeal, and in March this year an Appeals Court granted
Microsoft a reprieve.
Microsoft's appeal related to limitations placed on the extent
of prior art evidence that the District Court allowed Microsoft to
put forward to support its claim that the technology behind the
Eolas patent was already in the public domain and that the patent
was therefore invalid.
The Appeals Court agreed, finding that while there had been
infringement of Eolas’ patent, the trial judge had erred in not
allowing Microsoft to put forward evidence of an earlier browser
with the same abilities, known as Viola, or evidence that Michael
Doyle, one of the inventors of the Eolas patent, had allegedly held
back evidence of the Viola browser from the USPTO.
The case has therefore been sent back to the District Court for
a retrial on these issues – effectively meaning that Microsoft has
to show that the Eolas patent is invalid.
Its case will be made harder by Wednesday’s USPTO decision that
the patent is indeed valid.
The USPTO began its re-examination of the patent in 2003,
following complaints from Microsoft and other developers in the
wake of the jury infringement finding.
The concern was that the patent, if upheld, could be applied
widely. Even the W3C, the international standards-setting body for
the internet, stepped in. In October 2003, W3C director Sir Tim
Berners-Lee, the man credited with inventing the World Wide Web,
wrote to the USPTO asking that the patent be declared invalid.
The USPTO agreed to look again, and in two earlier stages of the
re-examination process found the patent to be invalid. But on
Wednesday, it ruled that the patent was valid, and that a
re-examination certificate would be granted to the University of
California.
Eolas’ lead trial attorney, Martin R Lueck, said: “Given the
appeals court’s affirmation of Microsoft’s infringement and the
favourable resolution of the re-examination, we look forward to
quickly dispatching the remaining issues before the district court
so that the university and Eolas can be fairly compensated for the
use of their property right."
Speaking to CNET News.com, a Microsoft spokesman said, “This is
very disappointing news, but we remain committed to seeing this
case through to a successful resolution.”
According to anti-software patent campaigner Florian Mueller,
“Pro-patent politicians told us that broad and trivial patents can
be invalidated. If even Microsoft with all of its resources doesn't
always succeed in that, what can smaller companies do?”
“Microsoft isn't quite ready yet to support our cause directly,
but that might change after several more Eolas cases," he
added.
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