ActiveX May Win Reprieve

The United States Patent and Trademark Office (USPTO) has ordered a reexamination of the controversial ‘906 browser patent, handing a crucial victory to Microsoft and the World Wide Web Consortium (W3C).

USPTO spokesman Richard Maulsby told internetnews.com a direct order was issued by deputy commissioner Steve Kunin calling for a reexamination of all claims relating to U.S Patent No. 5,838,906 (known as the ‘906 patent). “The notifications have been sent to the parties involved…Our examiners will begin the process of a thorough reexamination,” Maulsby explained.

The ‘906 patent is at the heart of a multi-million dollar dispute between Microsoft and Chicago-based Eolas Technologies that could lead to changes in the way the widely deployed Internet Explorer browser displays embedded content on a Web page.

Changes brought about by the patent enforcement would likely bring a wide variety of common Web applications to their knees. Online advertisers, marketers, and Web developers have, for example, grown increasingly dependent on Macromedia’s Flash technology, which would be virtually hobbled by the changes resulting from the patent enforcement.

Even as Web developers are scrambling to prepare code re-writes for Web pages that carry embedded interactive content, the USPTO acknowledged a “substantial outcry from a widespread segment of the affected industry has essentially raised a question of patentability.”

The reexamination order, first entered into the public record on October 30, was officially scanned in the USPTO’s central reexamination unit on November 4. It was docketed to examiner Andrew Caldwell on November 10, less than two weeks after the W3C filed a request to have the patent rescinded on the grounds that prior art existed long before Eolas applied for the patent.

USPTO’s Maulsby declined comment on the strength of the W3C’s claims, noting that there is a legal process to handle reexaminations. According to the public record, USPTO deputy commissioner has acknowledged that the W3C’s filings raised substantial new questions of patentability.

Even if the W3C’s move to have the patent overturned by the USPTO is successful, legal experts say the brouhaha is far from being settled. Typically, when a patent is revoked, a process known as “prosecution” follows where patent attorneys and USPTO examiners exchange documents. “This could be a long, never-ending process, especially in a case of this magnitude,” a legal source told internetnews.com.

“Usually, in major disputes, it can go all the way to the Supreme Court,” the source added.

In addition to using prior art claims as part of the reexamination process, the USPTO can summon hearings around the country to seek industry-wide opinion.

If public hearings are held, the W3C’s HTML Patent Advisory Group is expected to be in the thick of things. The standards body has already sent a citation to the USPTO’s Prior Art Department detailing “compelling evidence” of technologies available before the ‘906 patent was granted to Eolas.

“The sole difference between the web browser described in the ‘906 patent and typical browsers that the patent acknowledges as prior art, is that with prior art browsers, the image in such cases is displayed in its own window, separate from the main browser window, whereas, with the ‘906 browser the image is displayed in the same window as the rest of the Web page, without the need for a separate window,” the W3C said in its filing.

“That feature, (i.e., displaying, or embedding, an image generated by an external program in the same window as the rest of a Web page) had already been described in the prior art publications submitted herewith and was known to the Web development community. The claims of the ‘906 patent are therefore plainly obvious in view of this prior art,” the standards group argued.

The W3C has warned that the enforcement of the patent could cause “substantial economic and technical damage” to the operation of the Web.