Wednesday, September 28, 2005

Eolas' US 5,838,906 to survive re-examination

On Sept. 27, 2005, the USPTO sent out a "notice of intent to issue a re-examination certificate," indicating that US 5,838,906, in this case with unamended claims, will survive re-examination.

In the re-exam (90/006,831; filed 30 Oct 2003), there was a non-final rejection on August 16, 2004, and a response received by the USPTO on October 12, 2004. [In passing, one notes that the re-exam process took about two years in this case.]

The thirty (30) page response, by Charles E. Krueger of Walnut Creek, CA, made points about MPEP 2143.03 and MPEP 2143.01 and argued

no suggestion of automatically invoking an external application to execute on a client computer...

no suggestion of passing an embed text format at a first location in a hypermedia document.

The Eolas case places Eolas and the University of California/Berkeley in the nominal position of patent trolls. Keeping with the academic flavor, Eolas submitted three Rule 132 declarations, two by Edward W. Felten (Princeton) and one by Robert J. Dolan, Dean of the University of Michigan Business School. Of the litigation, in March 2005, in 399 F.3d 1325; 2005 U.S. App. LEXIS 3476; 73 U.S.P.Q.2D 1782, the CAFC remanded the case back to D. Ill.

The CAFC noted that during the initial prosecution, the examiner cited three main prior art references during prosecution:
(1) the Mosaic Web Browser, which allows users to go from one website to another by clicking links on web pages and has some capability to display objects;
(2 )U.S. Patent No. 5,206,951 to Khoyi et al. (Khoyi), which describes an Object Linking and Embedding System (OLE); n2 and
(3) U.S. Patent No. 5,581,686 to Koppolu et al. (Koppolu), which covers some OLE technology where the application displaying data may be a component,

At the trial, Microsoft presented evidence that the Viola Web browser (Viola), invented by Pei-Yuan Wei (Wei), was in public use more than one year before Eolas' invention. Microsoft asserted that this prior art would invalidate the invention under 35 U.S.C. § 102(b). Microsoft also used the Viola reference to challenge validity on the basis of sections 102(a), 102(g) and 103. Wei testified at trial that he had written code for Viola so that the browser could
handle embedded automatically-launched interactive programs in May
1993. Wei testified as well that he demonstrated that capability to Sun Microsystems engineers at that time. Microsoft corroborated existence of this code at trial through a computer demonstration of an archived file, dated May 12, 1993. The parties refer to this version of Viola as DX34. Wei demonstrated DX34 to two Sun
Microsystems engineers on May 7, 1993.

The district court erroneously found as a matter of law that Wei abandoned, suppressed or concealed DX34 within the meaning of section 102(g) because Wei disclosed that version only to the Sun engineers and then changed it.

On remand, the district court must analyze Wei as prior art AND the failure of the patent applicant to disclose Wei to the USPTO. Neither of these matters was at issue during re-examination.

The discussion by the CAFC does not bode well for the inequitable conduct issue raised by the failure to disclose Wei:

Michael D. Doyle (Doyle), one of the inventors of the '906 patent, knew of Viola yet did not disclose any information regarding that reference to the United States Patent and Trademark Office (PTO). On August 31, 1994, Doyle issued a press release to an e-mail list indicating that researchers at the University of California had "created software for embedding interactive
program objects within hypermedia documents." That same day, Wei
contacted Doyle via e-mail in response to the press release. Wei alleged that his May 1993 demonstration of Viola (version DX34) to Sun Microsystems engineers exhibited a way to embed interactive objects and transport them over the web. Wei directed
Doyle to his paper about Viola (the Viola paper ), which was available on the Internet at least by August 13, 1994. Doyle downloaded and read the paper. In a later email exchange, Doyle attempted to get Wei to concede that he was not the
first to invent. Additionally, Doyle told Wei the inventions were

On October 17, 1994, the University of California filed the '906
patent application. In 1998, before issuance of the '906 patent, Doyle did more research on Viola and made a folder labeled "Viola stuff." This folder included press releases of two "beta" n4 versions of Viola from February and March of 1994. Although available on the Internet, Doyle never obtained the Viola code.

The failure to acknowledge relevant art in the Eolas case may prove to be be bad to the patentee, if inequitable conduct is found. All claims would be rendered unenforceable.

The failure to acknowledge pertinent work reminds one of the failure of intellectual property academics to acknowledge the problems with the 85% patent grant rate of Quillen and Webster. Although the work has been discredited, the academics are still citing it.

At the end of the day, not disclosing the relevant work of others can be harmful, especially in the world of patents. A finding of inequitable conduct would be an interesting end to the Eolas patent, after all the failed efforts to invalidate it.

A URL with significant information is

From this website:

I do not know what search means were between 1994 and 1998. [LBE note: the USPTO patent database was not available.] I started to use the USPTO site only in December 1999. In my opinion it would be hard to believe that, in 2000 or later, a patent or patent application [? in 2000 ?] on a given subject matter could be unnoticed by all people in a corporation having a dozen of ongoing patent applications on the same subject matter.
This is also reasonable to think that in term of patent watch and business intelligence related to computing Microsoft is the second best company in the world, the first one being IBM and that Microsoft had the way to effectively monitor patent applications in 1994. Therefore someone in Microsoft probably read 5,838,906 soon after it was made public. However the knowledge of a company is not the sum of what all people working for this company have heard about:

Patent analysis requires knowing both the patent system and the domain to which the invention pertains. This job requires experience. The analyst misses many things if he was not working in the patent domain when the patent was filed.

For an organization that publishes many complex products, there are many patents that cannot be safely eliminated without an analysis.

Patent analysis takes time, three hours to report a first impression, one week to check if a process or method may infringe the patent. An opinion of counsel (the opinion of a third party attorney) may cost $15,000 and more.

So companies do not have the resources to analyze all patents and patent applications of interest. They actually concentrate their effort on competitors’ patents for two reasons: (1) The risk is higher in case of infringement of a competitor patent; a competitor can more easily demonstrate that it suffers non-monetary damage harm and be granted an injunction or even a preliminary injunction. (2) The analysis of competitors’ patents returns business intelligence data. This analysis gives useful results in any case.

The judge denied a first plaintiffs’ request for discovery explaining that he saw it "as a useless endeavor." He added that "given the practice of citation before the Patent Office, particularly in Interference proceedings, I am unlikely to attach a great deal of weight to the fact that somebody has actually cited a patent." [Note to CHI Research: this is what judges think of patent citations.]
The judge observed that "in the application that resulted in US Patent No. 6,049,671, the [US]PTO sent Microsoft a rejection of its application, one of its grounds being a citation to the 5,838,906 patent as prior art. What this document shows is that the examiner found some prior art not relied upon in the application that was 'considered pertinent to the applicant’s disclosure', and it included a citation of 5,838,906 patent as disclosing 'that self-extracting data objects are known in the art.'"

Of relevance to the inequitable conduct issue:

The solution of Dr Doyle (compiled program objects) and the solution of Dr Wei (interpreted program objects) were different. Dr Doyle disclosed Java and could feel that a ViolaWWW disclosure would have been cumulative (redundant). Dr Doyle was the respected expert in the e-mail discussion. Dr Wei, with his inferior English skills (pitilessly reproduced by the judge) was looking for an agreement and maybe even for a kind of recognition. The discussion sounded like the debate between Andrew Tanenbaum and Linus Torvalds, in which Linus Torvalds desperately tried to defend his Operating System, Linux.

Though "applicants are not conscripted to serve as an investigative arm of the USPTO", "one should not be able to cultivate ignorance, or disregard numerous warnings that material information or prior art may exist, merely to avoid actual knowledge of that information or prior art." This case was close and the judge logically found that the materiality of the ViolaWWW disclosure had to be decided at trial and that a summary judgment on the issue of intent was inappropriate at this time


An October 4 headline in the Daily Californian
says: UC Defeats Microsoft Patent Suit.

Wrong. The '906 survived a director-ordered re-examination. The first paragraph of the Daily Californian article implies a Microsoft connection to the re-examination: UC's coveted patent for Web browser technology was reaffirmed last Wednesday by the U.S. Patent and Trademark Office after a six-year legal battle with Microsoft Corp. over the technology giant's alleged infringement of the university's patented browser technology.

"We are pleased that the patent office has validated, for a second time, the university's patent," said UC spokesperson Trey Davis. "This re-examination reflects an exhaustive veting of the patent claims and puts to rest any future questions about the validity of UC's patent."

Wrong. There are prior art, invalidity issues in the present remand to ND Ill.


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