Update 2003-11-11: On October 30, 2003 the USPTO ordered a re-examination of the Eolas/University of California patent, saying saying 'a substantial outcry from a widespread segment of the affected industry has essentially raised a question of patentability.' See USPTO Authorizes Patent Re-Examination below.

A letter from Tim Berners-Lee (Director, World Wide Web Consortium) to the Director of the United States Patent and Trademark Office (James E. Rogan, Under Secretary of Commerce for Intellectual Property) appeals for a "reexamination of the '906 patent in order to prevent substantial economic and technical damage to the operation of World Wide Web."

The '906 patent granted by the USPTO to the University of California is described as applicable to Java applets, browser plug-ins, ActiveX components, Macromedia Flash, Windows Media Player, and related "embedded program objects." In September 2003 W3C launched an HTML Patent Advisory Group due to the "discovery of specific patent claims likely to be essential to W3C work that are not available on royalty free terms." The W3C letter cites evidence of prior art, described in a "Citation of Prior Art Under 35 U.S.C. § 301 and 37 CFR 1.501 In Relation to U.S. Patent Number 5,838,906," which renders the Eloas patent invalid and justifies reexamination of the '906 patent by the USPTO.

The Berners-Lee letter argues that the "impact of the '906 patent reaches far beyond a single vendor and even beyond those who could be alleged to infringe the patent. 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. In many cases, those who will be forced to incur the cost of modifying Web pages or software applications do not even themselves infringe the patent (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. These deviations will either reflect individual decisions by developers about how to avoid infringement liability, or will be an effort to be compatible with decisions individual vendors make in the course of their own re-design. What's more, the inevitable fragmentation and re-tooling costs caused by the ability to enforce this patent, which we believe to be invalid, cannot even be remedied by individual parties choosing simply to pay licensing fees to the patent holder."

On October 28, 2003 the US Federal Trade Commission "issued its report on how to promote innovation by finding the proper balance of competition and patent law and policy." The report draws several conclusions and makes several recommendations of potential relevance to the W3C appeal. It concludes that "questionable patents are a significant competitive concern and can harm innovation." Currently, for example, an issued patent is presumed valid [and] courts require a firm that challenges a patent to prove its invalidity by clear and convincing evidence. This standard appears unjustified..." FTC therefore recommends enacting new legislation to specify that challenges to the validity of a patent are to be determined based on a "preponderance of the evidence." See the announcement and references to the executive summary and full report.

From the W3C Briefing

A W3C briefing of October 28, 2003 was released under the title: "World Wide Web Consortium Presents US Patent Office with Evidence Invalidating Eolas Patent. W3C Director Tim Berners-Lee Urges USPTO Director to Review Prior Art, Take Action." Excerpts:

The World Wide Web Consortium (W3C), the global standard-setting body for the Web, has presented the United States Patent and Trademark Office with prior art establishing that US Patent No. 5,838,906 (the '906 patent) is invalid and should therefore be re-examined in order to eliminate this unjustified impediment to the operation of the Web. The W3C is urging US Under Secretary of Commerce for Intellectual Property James E. Rogan to initiate a re-examination of the patent because the critical prior art was neither considered at the time the patent was initially examined and granted, nor during recent patent infringement litigation.

In an unprecedented step, Tim Berners-Lee, W3C Director and inventor of the Web, sent a letter today to Under Secretary Rogan requesting that his office reinvestigate the matter. "W3C urges the USPTO to initiate a reexamination of the '906 patent in order to prevent substantial economic and technical damage to the operation of World Wide Web," stated Berners-Lee. "The impact of this patent will be felt not only by those who are alleged to directly infringe, but all whose web pages and application rely on the stable, standards-based operation of browsers threatened by this patent. In many cases, those who will be forced to incur the cost of modifying Web pages or software applications do not even themselves infringe the patent - assuming it is even valid."

The object embedding technology has been part of the HTML standard since the early days of the Web. This feature, supposedly covered by the '906 patent, provides critical flexibility to Web browsers, and giving users seamless access to important features that extend the browsers' capabilities. Nearly every Web user today relies on plug-in applications that add services such as streaming audio and video, advanced graphics and a variety of special purpose tools.

Changes forced by the '906 patent will also have a permanent impact on millions of historically important Web pages. In many cases, these pages contain non-commercial content or older material that is not generating revenue. As a result, there is no way to cover the cost of modifying those pages to bring them into compliance with whatever changes are made in response to the '906 patent.

From the Letter of Tim Berners-Lee

Excerpts from the Letter from Tim Berners-Lee (W3C) to James E. Rogan (USPTO):

As the Director of the World Wide Web Consortium, the global standard-setting body for the Web, I write to urge you to consider the impact of U.S. Patent No. 5,838,906 ("the '906 patent") on World Wide Web users, software developers, and the many commercial and non-commercial organizations that depend on the Web every day around the world.

On October 24 2003, we filed a statement under 35 U.S.C. Section 301 presenting prior art not considered by the Patent and Trademark Office in issuing the '906 patent and explaining why the claims of the patent are invalid based upon that prior art. For the reasons given in our statement, we urge you to initiate a reexamination of the '906 patent in order to prevent substantial economic and technical damage to the operation of World Wide Web. As a result of a recent infringement judgment against Microsoft Corporation based on the '906 patent, they have stated publicly that they intend to redesign the Internet Explorer browser to avoid infringing the '906 patent. Although Microsoft's proposed redesign covers only a small portion of its entire browser program, it would render millions of Web pages and many products of independent software developers incompatible with Microsoft's product.

Removing the improperly disruptive effect of this invalid patent is important not only for the future of the Web, but also for the past. Even if the Web has to endure several years of disruption, we are confident that currently active Web pages will eventually be fixed and brought into compliance with whatever the prevailing standard is. However, pages that are inactive but have historical value may well remain in a state of impaired accessibility indefinitely if Web technology is forced to deviate from standards in this manner.

The Web functions only on the strength of its common standards. The costs of widely divergent implementation of standards is borne by all who rely on the Web. The enormous expense and the more general threat the '906 patent poses to the Web community is completely unwarranted because the '906 patent is, we firmly believe, invalid in view of the prior art described in our filing to the Patent Office under the authority of 35 U.S.C. Section 301... [see the full text for context]

From the Citation of Prior Art

On behalf of the World Wide Web Consortium, the primary standard-setting organization for the World Wide Web, please find enclosed two prior art publications to be included in the file wrapper of U.S. Patent No. 5,838,906 ("the '906 patent") pursuant to 35 U.S.C. § 301 and 37 C.F.R. §1.501. The enclosed publications are prior art to the '906 patent under 35 U.S.C. § 102(b). They were never considered by the United States Patent & Trademark Office during the prosecution of the '906 patent. These publications, taken alone, anticipate at least claims 1, 2, 3, 6, 7 and 8 of the '906 patent, and, taken together with the Mosaic browser that was acknowledged in the patent as prior art, plainly render those claims invalid as obvious under 35 U.S.C. § 103.

The enormous expense and attendant incalculable disruption, not to mention the threat the '906 patent as construed by the court poses to other browsers widely used in the Web community, are completely unwarranted because we strongly believe that the '906 patent is invalid in view of prior art, submitted herewith, that was never previously considered by the United States Patent & Trademark Office. While we understand that the submitted prior art was introduced during the course of the recent trial proceedings, the issue of whether it renders the '906 patent invalid was never considered. In view of the pervasive negative impact of the '906 patent on the larger World Wide Web community, which is unwarranted in view of the patent's invalidity, the World Wide Web Consortium believes that the Director should, on his initiative, commence a reexamination of the '906 patent..." [see the complete text]

USPTO Authorizes Patent Re-Examination

• [November 11, 2003] "PTO Director Orders Re-Exam for '906 Patent." By Dale Dougherty. From O'Reilly Developer Weblogs (November 11, 2003). "In what could be good news for the Web, the Director of the US Patent and Trademark Office has ordered a re-examination of the '906 patent, which was the subject of a patent infringement lawsuit this summer brought by Eolas against Microsoft. Apparently, the PTO responded to the W3C's request for re-examination, saying 'a substantial outcry from a widespread segment of the affected industry has essentially raised a question of patentability.' This order, issued on October 30, 2003 reviewed the claims and declared that the prior art introduced by Berners-Lee and Raggett raised 'a substantial new question of patentabity.' The order, signed by Steve Kunin, Deputy Commissioner of the US PTO, called for a reexamination of all claims relating to the '906 patent. A patent lawyer that I spoke to said that the quick response by the PTO was unusual, and he thought it was a good sign. He said that the order seemed to give a clear indication of support for the claims against the patent. We'll now have to wait for a patent examiner to examine the evidence in more detail and rule on the patent..." Background: In October 2003, Tim Berners-Lee (Director, World Wide Web Consortium) sent a letter to the Director of the United States Patent and Trademark Office (James E. Rogan, Under Secretary of Commerce for Intellectual Property) appealing for a "reexamination of the '906 patent in order to prevent substantial economic and technical damage to the operation of World Wide Web." The '906 patent granted by the USPTO to the University of California is described as applicable to Java applets, browser plug-ins, ActiveX components, Macromedia Flash, Windows Media Player, and related "embedded program objects."

• [November 11, 2003] "Patent Office to Re-Examine Eolas Patent." By Paul Festa. In CNET News.com (November 11, 2003). "The U.S. Patent and Trademark Office has stepped squarely into a fight roiling the Web by agreeing to re-examine the Eolas patent for a browser plug-in, a development likely to bring cheer to Microsoft and software patent foes alike. The 906 patent, owned by the University of California and licensed exclusively to one-man software company Eolas, describes how a Web browser can use external applications. The patent also earned that school and company a $521 million judgment after a federal jury found that Microsoft's Internet Explorer browser infringed on it. After Microsoft made public planned changes to IE that held the potential to break millions of Web sites, the World Wide Web Consortium (W3C) last month urged the USPTO to re-examine the so-called 906 patent in light of W3C technologies that it said predated Eolas' patent. Specifically, the consortium pointed out early HTML drafts by W3C Director Tim Berners-Lee and W3C staff member Dave Raggett that it said qualified as prior art in the case. The W3C's public call came as part of a larger campaign to identify prior art relevant to the Eolas case. Prior art is a similar invention that predates a patent, therefore invalidating it. The USPTO responded quickly to the W3C's request, and on Oct. 30 the office initiated an order for re-examination. On Monday that order was docketed to the patent examiner. 'A substantial outcry from a widespread segment of the affected industry has essentially raised a question of patentability with respect to the 906 patent claims,' Stephen Kunin, the USPTO's deputy commissioner for patent examination policy, wrote in his order for re-examination. 'This creates an extraordinary situation for which a director-ordered examination is an appropriate remedy'..."