Sunday, October 16, 2005

Does the Eolas re-exam result make it harder for Microsoft in court?

Technewsworld quoted Bruce Sunstein on the result of the re-exam of Eolas/Berkeley US 5,838,906: "That decision is certainly going to make it harder for Microsoft in court."

In an earlier post on IPBiz, I had noted the distinct art at issue in the director-ordered re-examination and in the remanded litigation. I don't think the re-exam result will have much impact on whether or not the Wei Browser is deemed invalidating prior art. Further, I think the issue that is looming larger is whether UC/Berkeley's failure to disclose the Wei Browser to the USPTO will be found to be inequitable conduct, rendering the Eolas patent unenforceable.

More from the Technewsworld article (as reproduced on counterthink):

Sunstein said the standard for invalidating the patent is "clear and convincing" evidence that this prior art is within the scope of the claims of the patents.

Considering that the USPTO just validated the patent, that argument will be tough to make.

The university and Eolas first sued Microsoft in 1999 and won the civil case in 2003, with the jury awarding Eolas $520.6 million in back royalty fees and interest.

Microsoft appealed, but a Chicago District Court [LBE note: N.D. Illinois] upheld the verdict in January 2004, and also banned the company from distributing the infringing software. That injunction was stayed during the appeals process.

Microsoft argued that it should have been allowed to present the browser Viola, which it said constituted prior art, but the trial judge excluded that evidence. [LBE note: the trial court mistakenly applied 102(g) principles of abandonment to 102(a)/102(b) prior art, which was a serious legal error.]

The software giant won its appeal and will get another trial in District Court, however, in order to win the case, Microsoft must prove the patent invalid. [LBE note: Microsoft can "win" by showing that UC/Berkeley committed inequitable conduct, WITHOUT proving the patent invalid.]

Bad coverage by Technewsworld (and counterthink).


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