Monday, August 23, 2004

Eolas/Berkeley lose in second round of re-examination of browser patent

In the director-ordered reexamination of the Eolas browser patent which started in October 2003, there has been a first Office Action (rejecting all 10 claims as obvious under 35 USC 103), a response, and, in an action signed Aug. 15, 2004, a rejection of all 10 claims as obvious, once again. Because new grounds for part of the rejection were used, the examiner did not make this final, but announced that he intended that the next action would be treated as a final rejection.

A pdf file of the second Office Action is available at

I discussed earlier parts of the re-examination in Intellectual Property Today, "Be careful what you ask for," p. 32, April, 2004:

There has been a director-ordered re-examination (37 CFR 1.520) of the Eolas patent, US 5,838,906 (with claims encompassing a Web browser able to invoke external programs to display portions of a Web page that the browser cannot directly display itself),13 and an initial rejection of claims. In August 2003 the patent led to a
$ 521 million award against Microsoft. In 68% of all re-examinations, one or more patent claims are amended, and in 19% of re-examinations, all claims are canceled.14

Endnote 13. Two submissions under 37 CFR 1.501 were made in October 2003. That of the World Wide Web Consortium [W3C] may be viewed at Therein, two electronic publications of Dave Raggett pertaining to HTML+ were submitted pursuant to M.P.E.P. ยง 2128, complete with claim charts, by the then-existent firm of Pennie & Edmonds LLP (the firm which represented Barnes & Noble against's one-click patent, US 5,960,411; see L. B. Ebert, Int. Prop. Today, p.24 (July 2000)). The Office Action comprises rejections for obviousness over the admitted art and the art of the 501 filings (and for some claims over additional art); see

Endnote 14. Barbara Rose, "Patent Ruling Threatens Award in Microsoft Case," Chicago Tribune, p. 1 (March 6, 2004).

Jeff Norman of Kirkland and Ellis had said of the rejection in the first Office Action that there was reason to believe the patent might not be upheld. "The good news here for the rest of the world -- other than Eolas -- is that the examiner has come up with some very strong reasons why the Eolas patent should be invalidated," he said.

In his finding, the patent office examiner referred to a "seminal" paper and a number of extensions to the HTML (Hypertext Markup Language) "embed" tag that suggest that the university's technology may have been previously implemented and is, therefore, not patentable, said Norman.

"I think the entire programming community has been scratching their heads and saying this embed tag has been around since the beginning of time," he said.

**However, the art and reasons in the first Office Action did not prevail in the face of the response of Eolas to the first Office Action, and new art and reasons were presented in the second Office Action in August.


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