Patent search - Patentability

In the past you could start a software business without knowing anything about patents. This is no longer the case. At the end on the 90’s it seemed possible to patent almost any kind of process or method. This is no longer the case. The current software patenting system favors corporations, which can support the cost of building patent portfolios and dedicate more resources to infringement disputes: legal departments of companies like IBM or Microsoft are bigger than most software companies. Furthermore while patents exist to reward innovation, the software industry provides numerous examples of blatant copy, which seems to show that the patent system fails to achieve its purpose. One reason is that a credible software patent deters other companies of using its method or process. If the patentee has no follower, if the patented function is not trendy customers do not buy the product and the patented function has no commercial value. Therefore quite often a company tolerates first what it complains about later on. To learn more about this aspect you can read Society and Computing.

However patenting is not the only way to protect your intellectual property. The patent system makes increasingly difficult to keep secret your intellectual property but at the same time the technological evolution makes easier and increasingly effective to publish or donate this intellectual property.

In this document we explain what a patent is and we present the patent system with its national patent offices and its treaties. We discuss software patents’ pending issues and we present the different Intellectual Property strategies. This document can also help for market intelligence. Patents are usually a reliable source of information. The document alternates the explanations, examples and links (including all pages from where we borrowed ideas and sentences) needed to understand the matter. We also introduce a method and a set of Open Source tools to help finding patents and prior art.

The original version of this document was published in December 2002. The November 2003 version and the current October 2004 were major updates.

We wrote another document, called Business Method and Software patents, in which

1. we consider in more detail technical aspects,

2. we try to define what an invention is,

3. we present an innovation assessment method, and

4. analyze the MercExchange v. eBay case.

We avoid as much as possible to use legal language. However we quote and link to legal documents. You also need to understand this language to read USPTO manuals. Some words are old English, some are French but most of them come from the Latin. http://www.users.globalnet.co.uk/~loxias/legal.htm is entertaining. You can also look at http://www.mylawyer.com/glossary.htm for a glossary.

In this section we briefly explain:

1. Why patents exist

2. Why software patents exist

3. What is patentable

Patents exist to grant inventors "the right to exclude others from making, using, offering for sale, or selling" inventions. The idea is to provide an incentive for inventing, the inventing process being perceived as an expensive and risky business. The American constitution says: "Congress shall have power ... to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries."

That is arguably true for some inventions:

In 1902, a patent was granted in the United States to William Heal on the float glass process. Heal described the feasibility of continuously melting and delivering molten glass onto molten tin in a chamber, and then drawing the sheet of glass along the surface of tin into an annealing lehr. This concept was not actively pursued until the l950’s when Pilkington Brothers in Great Britain initiated an active program to develop a float process for commercial use. The process turned to be so successful that Pilkington competitors had no choice but to use the process and during a while most of the Pilkington revenue came from license fees.

The idea was known of everybody. Pilkington was the only company to take the risk to invest on the concept up to the point it was effective. The very reason why patents exist is to reward and encourage that sort of attitude.

If you want more information you can read the FAQ of the Office of Intellectual Property Management of the University of New Hampshire.

Software patents exist because software programs implement processes and methods and because these processes and methods can be patented. The things are however subtler: According to the American law it should be possible to patent "anything under the sun that is made by man". However it is not possible to patent mathematical algorithms because they are the expressions of natural laws that are merely abstract ideas constituting disembodied concepts or truths that are not useful. See http://cyber.law.harvard.edu/is98/final_papers/Lee.html for more information: algorithms that do not manipulate abstract ideas can be patented.

The idea is that we can patent human inventions but not natural laws. Einstein could not patent the relativity whereas Bell could patent the telephone. In the past it was easy to distinguish between natural laws and inventions though a natural law is indeed a human invention that turned to be the simplest explanation for a set of observations. In the future the simplicity criteria could be replaced by usefulness for a given set of applications and different explanations to observations could co-exist. Therefore the patentable domain may broaden again.

• New or Novel: The invention must be demonstrably different from publicly available ideas, inventions, or products (so-called "prior art"). This does not mean that every aspect of an invention must be novel. For example, new uses of known processes or machines are patentable. Incremental improvements on known processes may also be patentable.

• Useful: The invention must have some application or utility or be an improvement over existing products and/or techniques.

• Non-obvious: The invention cannot be obvious to a person of "ordinary skill" in the field; non-obviousness usually is demonstrated by showing that practicing the invention yields surprising, unexpected results.

Most software patents are filed by firms. In an Empirical Look at Software Patents, James Bessen and Robert Hunt conclude; "U.S. legal changes have made it easier to obtain patents on inventions that use software. Software patents now comprise 15% of all patents, mostly acquired by manufacturing firms and large firms. Only 6% belong to software publishers. Our regression analysis finds that these patents differ from others: they are cheap patents." They also explain: "Firms that acquire the largest share of software patents appear to be just those firms that acquire large portfolios of patents for strategic purposes."

Most software patents describe a process implemented in a project or in a prototype. Because they did not require a specific R&D effort such software patents are cheap. The project was funded only to fulfill a marketing request and designers of "ordinary skills" made reasonable design choices, which allowed a successful implementation. As a result:

1. A company does not pay its designers and programmers to identify surprising and unexpected results. Therefore the invention is usually obvious for a person of the art.

2. The invention is new for the first company that chooses to develop a product with some new functions. The patented process is the most obvious means to offer the new functions.

3. The inventors do not aim to be granted the right to exclude others from using the same process or method. The inventors aim to be granted the right to exclude others from releasing products with the same functions.

We have shown in this section that Intellectual Property is a rapidly evolving area. Because it must remain consistent for all invention domains and in time, Intellectual Property becomes increasingly complex.

A software patent has to be written in terms that someone that never heard about computers can understand. To the opposite of biotech patents there are no formal coding rules.

An interesting aspect of software development is that this is a cross-domain activity: an invention can serve many needs – almost as many needs as the hardware that run the programs. However patent offices usually follow another way. They classify inventions according to their claims AND to the business activity where the invention was first applied. This approach reduces the scope of the protection granted by the patent regardless of the novelty and usefulness of the patent. It makes patent scatting possible: someone who knows two business domains can file a patent in domain B with a process of domain A: the patent is a new use of a known process.

In this section we present the existing classifications and we comment an example.

The two most common classifications are the United States Patent and Trademark office (USPTO) and the World Intellectual Property Organization (WIPO) classifications.

You can find the USPTO classification at http://www.uspto.gov/go/classification/ and the international classifications at http://www.wipo.int/classifications/en/index.html.

The most useful parts for the beginner in the USPTO page are:

• A search US Manual of Classification tool

• The link to the Class numbers and titles

On the WIPO page select the International Patent Classification. You will find eight sections:

• SECTION A – HUMAN NECESSITIES

• SECTION B – PERFORMING OPERATIONS; TRANSPORTING

• SECTION C – CHEMISTRY; METALLURGY

• SECTION D – TEXTILES; PAPER

• SECTION E – FIXED CONSTRUCTIONS

• SECTION F – MECHANICAL ENGINEERING; LIGHTING; HEATING; WEAPONS; BLASTING

• SECTION G – PHYSICS

• SECTION H – ELECTRICITY

Computers are classified in Physics like tobacco is classified in human necessities.

Software is classified in Electric Digital Data Processing (G06F) though software processes are usually not linked to a particular hardware model: an optical computer implementing a Von Neuman machine could run them.

We describe later in this document how to find the classes of interest for your business domain.

Many articles have been written on the case described in this section.

Our intent here is to give information and not to comment decisions or acts.

CRSs, also known as Global Distribution Systems (GDSs) were invented at the end of the 60’s mainly to serve air transportation needs. The air transportation industry comprised airlines and travel agencies. Travel agents sold the tickets whereas the airlines provided the transportation means. The CRS idea was to connect the travel agents to an intermediate system connected to the airline systems. The concept was similar to Internet online sell today. When we exclude the technology available at design time from the scope we find that CRSs and Internet business use the same processes:

1. In both cases a large number of devices are connected to the same machine cluster. Only protocol and network topology differ.

2. In both cases a software program handles user requests, a transaction monitor in case of CRSs, a HTTP server in case of Internet business.

3. CRSs activity implies the exchange of messages with airlines like Internet business implies exchanging messages with partners for Credit card processing and delivery. CRSs use Host-to-Host communication whereas Internet Web service uses TCP. Quite interestingly CRSs and airlines were early adopters of the EDIFACT standard when XML was designed to facilitate online business and B2B.

The travel agent equipment is different in two ways from end-user equipment:

• The travel agent has a special printing facility. Because air tickets have a value, they must be issued only once. This requirement has an impact on the printer hardware that must be more reliable and report incidents and on the CRS system that must handle these incidents.

• The travel agent has a card reader to accept payment

An inventor called Lawrence B. Lockwood filed a set of patents:

1. 4,359,631 filed in 1980 and reissued in 1986 as RE32,115 that describes a self-service terminal

2. 4,567,359 filed in 1984 that describes an automatic information, goods and services dispensing system

3. 5,309,355 filed in 1993 that describes an automated sales system

4,359,631/RE32,115 "relates first to automatic reservation and ticketing terminals; second, to programmed audio-visual displays used in connection with the sale of goods and services, and to automatic, around-the-clock service tellers" and describes something similar to the self service terminals we find now in airports and railway stations, to the ATMs and even to the good dispensers.

4,567,359 "relates to a system for automatically dispensing information, services and products to customers in a self-service fashion. Such a system may be used, for example, for automatically dispensing insurance quotations and policies". 4,567,359 extends the CRS concept to other industries.

5,309,355 "is directed to an automated sales system. Specifically this invention is directed to a tool for augmentation of sales and marketing capabilities of travel agency personnel in conjunction with computerized airline reservation systems. Travel agents are able to synergistically compose individual customized sales presentations and itineraries for their clients, representing thousands of tour destinations and criteria, from multiple permutations of data sources in a fully automated fashion." This patent is a continuation of three abandoned patents and presents CRSs as prior art. The patent mainly describes a means for composing and displaying individualized sales presentations according to determinants entered into the travel agent and based on a customer's profile and requests and in combination with remotely-accessible sources of information.

We recommend reading these patents (see the USPTO URL below).

Lockwood believes in videodisks and in audio-video experience.

We found later that users require a more interactive experience. Audio-video experience is time-consuming for both the user and the expensive self-service terminals. Furthermore the audio-video experience is very demanding in language skills: maybe 1 billion persons can effectively use an English site when only English speakers can appreciate an audio-video experience. Audio-video experience is also expensive to produce and culture dependent. We learnt that audio experience is not effective in a commercial location. Lockwood did not predict the evolution of the society, for instance the rise of delinquency and vandalism. Please do not see here a political statement. When you work on flight check-in software you get an instruction: "Everything that can be stolen will be stolen. Do not even use a mouse". A self-service terminal is armored today. Such features increase the device cost and reduce its application to short operations like getting money on an ATM, which is good for the device that can serve more users and for the user who stands less time in a vulnerable position.

Lockwood missed the most important revolutions ongoing in 1980’s:

1. Xanadu and other hypertext projects, which were at the origin of the Web,

2. PARC and Mac Intosh that changed the user interface,

3. Ubiquitous, inexpensive because mass produced personal computers,

4. Internet, a general purpose network where providers and consumers could meet.

The current environment is different of what was envisioned in Lockwood inventions. There is no single organization that control terminals, networks and central systems. Internet, where users and server systems connect, acts as a market place. Users own their equipment. Servers process requests and manage data.

Lockwood was right in 4,567,359 when he identified a customer need for getting insurance quotations and policies online. But we believe that he missed a key point that prevented the extension of the CRS concept to other industries: Travel industry has a large number of products that often complement rather than compete with each other. Sharing information, for instance schedules and fares, actually increased the total revenue of Travel industry. Insurance companies had no business case to create a centralized system because they had less products and more comprehensive offers.

In 1996 Lockwood sued American Airlines (the CRS inventor) asserting that a new product of American Airlines allowing to access schedule and fare information, to book itineraries, and to retrieve photographs of places of interest, including hotels, restaurants, and cruises, for display to consumers infringed his three patents. In a first judgement the district court found that the American Airlines didn't meet the conditions of the Lockwood invention:

1. The Travel agent rather than the customer used the American product. The American product was a program and not a "substantially self-contained apparatus dimensioned to be easily transported". This product lacked "audio-visual means," "customer operated means," and "means for collecting payment."

2. The American product did not compose "individualized sales presentations" or "selectively combine" customer information to retrieve its photographs

The district court also found that

• 4,567,359 was obvious in light of the American CRS, SABRE and of 4,359,631/RE32,115,

• Claims of 5,309,355 were anticipated in 4,567,359.

Therefore the court invalidated 4,567,359 and 5,309,355.

To correctly read the judgement you must understand how patents read in court.

A patent contains:

• An abstract

• Claims

• A description itself divided in Field of the Invention, Background of the Invention, Summary and Description of the preferred embodiment

If you are just interested by learning about the IT system of your competitors, you can focus on the description of the preferred embodiment, usually the most readable part for programmers. But if you want to know if you infringe a patent you must focus on the claim section that defines the scope of the patent owner’s exclusionary rights. The rest of the patent exists because:

• The counterpart of the granted exclusionary rights is the publication of the invention details. After expiration of the patent, the public has free use of the invention and should be able to reconstruct it from the description. This is called enablement.

• When the meaning of a term used in a claim is not clear, an enhanced understanding may come from the description of the invention

There are two sorts of claims:

• Dependent claims that refer to another claims. A dependent claim starts with "the system of claim ..." or in case of 5,309,355 with "The merchandising apparatus of claim 1..."

• Independent claims

Each claim defines a scope. Independent claims are the most important, they stand on their own and they provide a complete definition. It is enough to infringe an independent claim to infringe a patent. Dependent claims mainly exist to provide a fallback protection if the independent claim is invalidated.

Given an independent claim that describes three elements, element1, element2 and element3, you infringe the patent if your process uses element1 AND element2 AND element3.

Given a dependent claim n that depends on a dependent claim j that itself depends on an independent claim i, your process infringes claim n only if your process infringes the claim i AND claim j AND claim n.

Here is the way it works:

• The patent protection scope is the union of the claim arrays

• If you find prior art in a claim array then the claim is invalidated

• If your process sits in a valid claim array then you infringe a patent

Independent claims being by definition the broadest in scope are the most vulnerable.

Actually you can also infringe the patent if the court finds that your process employs essentially the same method in essentially the same way to achieve essentially the same result as the invention. This is called the doctrine of equivalence. There was a restriction in USA between November 2000 and May 2002 to the doctrine of equivalence defined by the Festo ruling. On November 29, 2000, the United States Court of Appeals Court held; (1) Any reason for amendment to a patent claim that is related to patentability will give rise to prosecutions history estoppel; and (2) When the amendment creates a prosecution history estoppel, there is no range of equivalents available for the amended elements

Just in case you do not know what estoppel means, here is the explanation. If someone states that something is so and, in reliance upon that statement, another person acts in a particular way, possibly to their detriment, then the person who made the statement is prevented, or estopped, from denying the correctness of the statement which they originally made. During the patent prosecution an examiner checks the claim novelty. When the examiner objects to a claim the applicant usually amends this claim. If the examiner finds no objection to the amended version of the claim the patent is granted. If the patentee (the former applicant) uses the doctrine of equivalence for the amended claim it denies in some way the correctness of the amendment that allowed the examiner to grant the patent.

On May 28, 2002 the Supreme Court vacated the Festo decision. As reported here the Supreme Court acknowledged that the doctrine of equivalents introduces uncertainty into the issue of claim interpretation, however, the Court disagreed with the complete bar rule set out by Federal Circuit, preferring instead a flexible approach to the doctrine of equivalents. While the Court agreed that any narrowing amendment made for a reason related to patentability could give rise to prosecution history estoppel, the Court stated that the Federal Circuit ignored the instruction in Warner-Jenkinson "that courts must be cautious before adopting changes that disrupt the settled expectations of the inventing community. Inventors who amended their claims under the previous case law had no reason to believe that they were conceding all equivalents" of amended elements when responding to a rejection. Festo decision being retroactive the Supreme Court was arguably true on this point. You can find the Supreme Court decision here.

The cancellation of the Festo decision does not mean that the history of the patent prosecution can be ignored. Before Festo "previous decisions had held that prosecution history estoppel constituted a flexible bar, foreclosing some, but not all, claims of equivalence, depending on the purpose of the amendment and the alterations in the text." Basically if the claim was narrowed because of prior art and in light of the nature of this prior art the doctrine of equivalence could not apply. This is what the Supreme Court calls the flexible bar. The consequence of this cancellation is that we are again in the same situation as before 2000. The Supreme Court wrote: "The doctrine of equivalents allows the patentee to claim those insubstantial alterations that were not captured in drafting the original patent claim but which could be created through trivial changes. When, however, the patentee originally claimed the subject matter alleged to infringe but then narrowed the claim in response to a rejection, he may not argue that the surrendered territory comprised unforeseen subject matter that should be deemed equivalent to the literal claims of the issued patent."

Therefore the Supreme Court concedes that a patent has to be interpreted in light of the proceedings in the PTO during the application process, which makes difficult for a patent holder to know what he owns, and for the public to know what he does not. This complexity makes of the patent system a tool for rich corporations. We must however say that the application of the doctrine of equivalence has never been easy, before like during and after Festo ruling. Before Festo applicants tent to file patents with broad claims that examiners had to narrow. With Festo ruling this method did not work anymore and applicants wrote more claims, narrow enough to not be rejected, which made patents harder to read.

Similar restrictions may exist in other countries. Reading the claims of a patent may be not enough to state if a product infringes a patent. You must study the correspondence between the applicant and the examiner. To get a first feeling you may look at the Patent Application Information Retrieval (PAIR) page of USPTO that we present below. Also carefully read claims. As explained on http://www.iusmentis.com/patents/crashcourse/rights/ "everyone knows a nail is equivalent to a screw, and that the accepted general term is 'fastening means'. If a claim then nevertheless mentions the use of a nail to connect two elements, the chance that a court will rule the use of a screw to be equivalent is small. After all, when the patent does not use the general term, the author must have had a reason to use the specific term." Therefore when you find for instance the same specific name or adjective in all independent claims you may suspect that the claims were amended.

There is a nice explanation of scope at http://www.iusmentis.com/patents/claims/.

For more information look at http://www.iusmentis.com/patents/crashcourse/procedure/, http://www.baypatents.com/glossary/default.asp?ID_Glossary=27, http://www.tms.org/pubs/journals/JOM/matters/matters-0102.html, http://inventors.about.com/library/weekly/aapatentdescriptionsa.htm.

Lockwood appealed. The decision of the appeal court is also worth some analysis.

First the court noted that though the American CRS, SABRE was introduced to the public in 1962 the essential algorithms of the SABRE software were proprietary and confidential and therefore not enough information had been made apparent to enable one skilled in the art to duplicate the system. Therefore the internal nature of the Sabre system could not be considered as prior art. But the court confirmed the decision of the district court by finding that the aspects of the SABRE system that made 5,309,355 obvious were public

The whole story is http://www.law.emory.edu/fedcircuit/mar97/96-1168.html. Note that some moments the decision refers to '631 (4,359,631) and at others '115 (for RE32,115, the renewal of 4,359,631).

Then Lockwood filed a patent 5,576,951, continuation-in-part of 4,567,359 and 5,309,355, describing an "Automated Sales and services system" and a patent 6,289,319 describing an "automatic business and financial transaction processing system". In 5,576,951 Lockwood thoroughly presents the CRSs in their 1994 form as the prior art and describe improvements such as end consumer access using a multimedia terminal.

A company called PanIP represents Lockwood interests and sues small Internet companies. Here is an example of lawsuit filing with the text and drawings of 5,576,951 and 6,289,319. One of the defendants, Tim Beere created a Web site http://www.youmaybenext.com where you can find this comment:" First, through the support of the public and the help of a private prior art search firm, we have found substantial evidence undermining PanIP's patents. In May we used this evidence to file requests with the U.S. Patent and Trademark Office ("PTO") to re-examine and invalidate both of them. At the same time we moved to stay PanIP's lawsuits, and in June the federal court in San Diego issued an order staying the cases to allow our re-examination requests to be considered. In July, we received notice that the PTO has accepted our request for re-examination and agrees that we have raised "a substantial new question of patentability" as to the claims of the first of PanIP's patents. Thus, this patent will now be re-examined in its entirety and we are confident that it will be invalidated. We anticipate a similar finding with respect to the second PanIP patent shortly."

You can find the re-examination procedure on http://www.uspto.gov/web/offices/pac/mpep/documents/2200.htm. This procedure is a part of the Manual of Patent Examining Procedure. This mail lists the main documents of interest. We used to recommend visiting the Panip site, which was a good site about Intellectual Property. Regarding the dispute above you can find decisions regarding a trademark infringement and a defamation by http://www.youmaybenext.com.

October 2004 update:

The defendants created a group called the PanIP Group Defense Fund, Inc. (PGDF).

On March 22, 2004, PanIP has dismissed it case against the PGDF and its individual members in exchange for a waiver of the attorney fee award granted to the PGDF. The PGDF did not take a license of any kind from PanIP.

The U.S. Patent and Trademark Office has issued an initial rejection of the claims in the re-examination of 5,576,951. On May 5, 2004, this news story said: "nine of the 10 individual claims in the patent were rejected on the basis of anticipation in prior art. That essentially means that the Patent Office examiner determined that every element that the patent holder claimed to originate actually predated the patent and could be found in a single reference, such as an article [...]. The remaining claim in the patent was rejected on the basis of obviousness, meaning that most elements of the claim existed in prior art and that the remaining elements would have been obvious to someone skilled in the art." I understand that this re-examination takes place with an application number 90/006,625.

The U.S. Patent and Trademark Office also granted the re-examination of 6,289,319. I understand that this re-examination takes place with an application number 90/006,623. I analyze the PanIP re-examination documents on the Examination page.

The PanIP entry page contained on October 3, 2004 a notice: "PanIP.com has been taken down for maintenance for maintenance and redesign, in view of new developments. Please return soon!"

On November 3, 2003 we checked the patent status of 6,289,319 on the Patent Application Information Retrieval (PAIR) page of USPTO. We found this prosecution history:

The application was filed on November 30, 1994 and granted on September 11, 2001, almost seven years later, much more than the average claimed by USPTO (24.6 months). The following events happened:

1. Non-final rejection

2. Final rejection

3. Amendment

4. Appeal brief

5. Appeal to the Board of Patent Appeals and Interferences (BPAI)

The two first events are common. The examiner rejects the application usually because she finds that a claim is obvious or not novel. He reports his findings to the applicant. In case of final rejection the examiner fills a PTOL-326 form. After a final rejection the applicant can abandon her application, use a Continuing Prosecution Application practice that permit applicants to obtain further examination of an application or appeal against the examiner decision, which was the choice of Lawrence B. Lockwood. An amendment consists mainly in claim changes. Some claims can be cancelled, some others may be added and some others may be modified. The brief is a list of the authorities and arguments on which the applicant will rely to maintain his or her appeal. The BPAI may have been involved because of a procedure problem. See MPEP #2274 and the Examination page for details.

The patent exercise is not cheap at ten to twenty thousand dollars in USA, ten times more for a Worldwide application. This exercise is also time-consuming: two months for patent writing and many requests to reply during two to seven years. You also need the help of a patent attorney. We found this comment in a PTOL-326: "An examination of this application reveals that applicant is unfamiliar with patent prosecuting procedure. While an inventor may prosecute the application, lack of skill in this field usually acts as a liability in affording the maximum protection for the invention disclosed. Applicant is advised to secure the services of a registered patent attorney or agent to prosecute the application, since the value of a patent is largely dependent upon skillful preparation and prosecution."

We would like to turn now our attention on another example that recently hit the headlines, the Eolas v. Microsoft case. This example illustrates several aspects of software patents like the re-examination procedure. The story is not ended but in any case this case can have implications of interest.

A first interesting aspect is that the suit was initially unnoticed. An Internetnews document of February 2, 1999 contained: "Eolas Technologies Inc., a Chicago-based Internet technology firm, filed suit for infringement of its patent [5,838,906] on browser technology, charging that Microsoft's Windows 98, Windows 95 and Internet Explorer programs infringe on Eolas' worldwide exclusive commercial rights to interactive programs." The main plaintiff was Michael D. Doyle. Some sources say that he is the only employee of Eolas. The University of California, which was the patent assignee helped him in the trial and maybe also in the patent application. The patent is not without merit. It cites an unusually large number of references and was well written. We may also note that Eolas sued Microsoft almost as soon as it was granted the patent (November 17, 1998).

The first claim of this patent filed in October 1994 contains: "a first distributed hypermedia document includes an embed text format, located at a first location in said first distributed hypermedia document, that specifies the location of at least a portion of an object external to the first distributed hypermedia document, wherein said object has type information associated with it utilized by said browser to identify and locate an executable application external to the first distributed hypermedia document, and wherein said embed text format is parsed by said browser to automatically invoke said executable application to execute on said client workstation in order to display said object and enable interactive processing of said object within a display area created at said first location within the portion of said first distributed hypermedia document being displayed in said first browser-controlled window." The patent claims just cover the way applets, plug-ins, scriptlets and Active X controls are working.

It may be useful to remind that Mosaic, the first workable browser started to be widely used on Unix sites in 1994 and Netscape came soon after. The first version of Java was released in 1995 and was designed primarily to be used in applets. In the confusion a patent could come unnoticed. However this is not what happened for 5,838,906. On November 6, 2003 we checked its status on the Patent Application Information Retrieval (PAIR) page of USPTO. We found this prosecution history:

The application was complete at the end of 1994, examined and rejected a first time in 1996, rejected a second time in August 1997 before being eventually accepted in March 1998. In 1996 and even more in 1997 the value of applets was apparent. The examiner could not ignore the implications of the claims when he chose to grant the patent. Furthermore because the Web was considered as a technological revolution there were plenty of books, articles and pages describing the main contributions. Never an examiner had easier access to prior art. From a legal point of view 5,838,906 was serious but nobody took it seriously.

5,838,906 being useful there were two solutions for the defendant:

• Demonstrate that there is prior art

• Demonstrate that the invention is obvious in light of the prior art

Prior art is made of expired patents and of everything that has been published or presented before. In USA and in some other countries like Australia you can publish or present your invention and file a patent later as far as a grace period has not expired. The grace period is of one year in USA. In their search for prior art, Microsoft turned up Pei Wei, who, in May of 1993 demonstrated Viola, a browser that integrated an application in basically the same way that is claimed in the patent. But Pei Wei developed Viola at University of California where Michael Doyle and other filed their patent in October 1994, therefore after the expiration of the grace period if the Viola demonstration was found valid. This is interesting to note that Microsoft did not try to demonstrate the obviousness of the invention. They could have objected that (1) the original browser of Tim Berners-Lee displayed images on different windows (2) the key breakthrough had been to embed pictures on the same window as text (3) the obvious next step was to embed controls able to communicate with servers, these controls being already used notably with Microsoft Visual Basic.

On August 12 2003 a Chicago jury ordered Microsoft to pay $521 million to the University of California and Eolas Technology for its past infringement of 5,838,906 in Internet Explorer. Microsoft said it would appeal the ruling in the U.S. Circuit Court of Appeals. "We believe the evidence will ultimately show that there was no infringement of any kind, and that the accused feature in our browser technology was developed by our own engineers based on pre-existing Microsoft technology," At the same time Microsoft said it would work hard to ensure there is "very little if any impact on our customers." Microsoft said in a statement. Michael Wallent, general manager of the Windows Client Platform at Microsoft explained: The company decided to make changes to avoid any accruing liability if it lost a planned appeal of the jury verdict and because there could be the risk of an injunction as the case proceeds.

Up to then only internetnews.com showed an interest for the story. On August 29 internetnews.com reported that W3C said Microsoft's changes to the IE browser may affect a large number of existing Web pages and urged the Web community to start considering and contributing to the range of technical options available if the patents are rigidly enforced. "Microsoft has been representing to the world that they have no choice but to remove technology from the browser and disrupt the Internet," Doyle anwered in an interview on September 19. "And I want to make it very clear that that is not the case. Microsoft has had in its power the ability to settle this case, and to the extent that they're refusing to settle, it's their decision." On October 6 Microsoft announced steps to address Eolas Patent Ruling. Microsoft originally announced substantial changes to the Default Handling of ActiveX Controls by Internet Explorer:

• They affect the <object>, <applet> and <embed> elements

• By default when an Active X control is loaded the user must acknowledge a message box that displays: "Press OK to continue loading the content of this page". The reason for this message is that 5,838,906 describes a method for the browser to automatically execute a program. If it requires the user to acknowledge the Microsoft browser no longer automatically executes a program and therefore no longer infringes the patent.

• There are three solutions to avoid the message box. The first one is to use DHTML to dynamically insert the control stuff. The second solution is to define the <object>, <applet> or <embed> element without any attribute or <param> child that could specify a URI. The third solution is to add a new attribute NOEXTERNALDATA attribute to the <object> element. We understand that this also applies for <embed> and <applet>. NOEXTERNALDATA is remarkable: it declares that the control does not make network accesses and prevents the control from receiving URI data from page parameters. However technically nothing can prevent a control written in a native language from networking.

You may have to do something for applets and ActiveX controls and Flash, Media Player, QuickTime and RealOne handling. For Web sites that usually do not extensively use these facilities the problem is manageable. For browser-based professional applications the message box is not an option and changes are extensive.

In January 2004 the court entered its final judgment in the Eolas case and Microsoft intends to appeal. The court stayed implementation of the judgment, including implementation of an injunction, until the appeal has been heard and decided. Then Microsoft made a step back: "Given the present legal status as well as requests made by partners and customers, Microsoft will, for the time being, not move ahead with the modest steps it intended to take to modify Windows and Internet Explorer." This is a good illustration of the switching costs in the software industry. If Internet Explorer was a regular product, customers would move to a competing product but if Microsoft settled a licence agreement with the patentee. But Internet Explorer has a huge market share and the switching costs associated to a migration to another browser are higher than the changes proposed by Microsoft. So Microsoft can show that they can design around the patent and cope with their internal switching costs, to the opposite of their customers and partners and the public interest is to keep the ActiveX handling in Internet Explorer unchanged.

Now we can turn our attention to the last development of the story, the patent re-examination asked by W3C. 5,838,906 describes a way of summoning content located on a server other than the one serving the page in question. The concern for W3C, which manages the HTML standard is that <applet>, <object> and <embed> tags in HTML may fall under the wording of the Eolas patent. W3C standards like HTML were produced according to a patent policy whose goal is to assure that standards produced under this policy can be implemented on a Royalty-Free (RF) basis. The fact is that even without 5,838,906 the W3C was considering using another policy allowing producing standards using patented technology. A Patent Policy Working Group (PPWG) "acknowledged a central conflict to the standardization process: Companies that spend serious time and effort coming up with the technology behind the standards may be reluctant to simply give away the rights to what they consider their intellectual property." The proposal of the PPWG, called Reasonable And Non-Discriminatory (RAND), faced a serious opposition and the W3C had to step back. The chairman of the W3C advisory committee, Daniel Weitzner wrote "this does NOT mean that W3C has made final decision in favor of a RF-only policy, nor does it mean that we have made a final determination about the role RAND licensing will play. The final decision about W3C's patent policy will be made after the PPWG has developed a new proposal, the public has had another chance to comment, and the W3C membership has had it's chance to express its views formally to the Director".

We first cite another excellent paper on InternetNews:

"Even as the W3C is insisting prior art is readily available, many wonder why this was never uncovered during the Microsoft/Eolas case that has been before the courts since 1999. According to W3C's Weitzner, efforts to have the jury consider the prior art in the HTML standard was not allowed for procedural reasons: "It [the prior art] wasn't rejected for any reason that won't allow the patent office to reexamine it. It wasn't presented to the jury because of procedural issues," he insisted.

For W3C's Weitzner, the issue is one of maintaining Web standards. "We are not involved with the political machinations here. Our fundamental commitment is that Web standards should be royalty free. The enforcement of this patent is a direct attack on the ability to participate in the Web on a royalty-free basis. It goes beyond a damage award that one of our members have to pay or wrangling between competitors," he argued.

You can find a good presentation of the re-examination process at http://www.baypatents.com/reexam.asp. The procedure for patent re-examination is at http://www.uspto.gov/web/offices/pac/mpep/documents/2200_2201.htm.

The W3C did two things:

• It sent a citation of prior art to the USPTO on October 24. You can find on the PAIR page above a Decision of Granted for Commissioner-Initiated Re-examination Proceeding: the re-examination is ongoing (55 - 56).

• Tim Berners-Lee sent a letter to the Under Secretary of Commerce for Intellectual Property, James E. Rogan on October 28.

Whereas Microsoft chose to minimize the impact of the IE change the W3C writes in the citation: "Although Microsoft's proposed redesign, as we understand it, involves only a small portion of Internet Explorer, it would render Microsoft's browser incompatible with globally-accepted standards and impair the operation of millions of Web pages. The cost to the larger World Wide Web community of fixing the problems created by such a change to Internet Explorer is incalculable, but would likely require changes to millions of Web pages, as well as changes to Web page authoring tools and other software and systems designed for the World Wide Web."

Then the W3C writes: "We strongly believe that the 5,838,906 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 5,838,906 patent invalid was never considered." Then the W3C recalls that embedding the image with text had been described before and already implemented in Microsoft Write. This is true but at the same time few inventions and almost no software invention stand if you accept this reasoning. Furthermore 5,838,906 cites the <embed> element and OLE. W3C understand this and presents two references published more than one year prior to the filing date of the 5,838,906 patent, which are messages posted on a mailing list and subsequently disseminated. Such documents have a status of printed document because "An electronic publication, including an on-line database or Internet publication, is considered to be a 'printed publication' within the meaning of 35 U.S.C. 102(a) and (b) provided the publication was accessible to persons concerned with the art to which the document relates." You can find one of these documents at http://ksi.cpsc.ucalgary.ca/archives/WWW-TALK/www-talk-1993q2.messages/467.html.

W3C finds that claims 1-3 and 6-8 are obvious, which actually follows the understanding of Microsoft: They did not remove <embed>, <applet> and <object> from IE. They just disabled the capability for the called applets and controls to use page parameters to invoke a remote server, therefore precisely the function covered by claims 4-5 and 9-10 that stand, especially when read in light of the description: "However, this open distributed hypermedia system as it currently exists has shortcomings in that today's large data objects are limited largely by bandwidth constraints in the various communication links in the Internet and localized networks, and by the limited processing power, or computing constraints, of small computer systems normally provided to most users. Large data objects are difficult to update at frame rates fast enough (e.g., 30 frames per second) to achieve smooth animation. Moreover, the processing power needed to perform the calculations to animate such images in real time does not exist on most workstations, not to mention personal computers." This sentence lists reasons why programs like RealOne were developed and browser applications were so appealing for professional users.

The second document is the letter of Tim Berners-Lee. In this letter he stresses the disruptive effect of the court decision. For us the strongest argument is the "impact on millions of Web pages that may have historical importance". But we are not entirely convinced by the reasoning. A historical page cannot depend on a proprietary and unpublished technology. Historical pages are usually written in pure HTML because proprietary technologies require the use of proprietary authoring tools and imply higher authoring costs than HTML. The court could also find that

1. the plug-ins (including the free Java and Flash plug-ins) versions are frequently incompatible and cannot be used for historical content,

2. internet archives (like archive.org) don’t properly handle non-html content

Tim Berners-Lee writes: "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. If some parties are granted a license, while others either don't or can't obtain one, we will still be left with impaired functionality of the Web. Global standards have been the basis of assuring interoperability on the Web. A patent whose validity is demonstrably in doubt ought not be allowed to undo the years of work that have gone into building the Web."

"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."

This case demonstrates that the software patent law itself yields surprising and unexpected results. Thank to a succession of errors the industry used a patented technology to implement key functions. The cost of bringing in compliance pages and applications may be of the same order of magnitude as the so-called 2000 bug. A decision consistent with the current practice would be the invalidation of the 5,838,906 claims 1-3 and 6-8, which should be sufficient for historical pages. This decision can popularize and facilitate re-examination. A possible consequence could be that each time a company A sues company B for patent infringement company B asks for the re-examination of the patent. 5,838,906 does not demonstrate that software patents are bad. First this case could demonstrate that a single person can win against industry interests. Second this case may help improving the examination process.

October 2004 update:

The re-examination of 5,838,906 is ongoing. I understand that this re-examination takes place with an application number 90/006,831. On February 26, 2004 and August 8, 2004 two non-final actions rejected the claims of 5,838,906. I analyze the Eolas re-examination documents on the Examination page.

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