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Patent News: Prior Art + Outcry = Holy Cow, It Worked!
Thursday, November 13 2003 @ 05:00 AM EST

The U.S. Patent and Trademark Office has agreed to re-examine the Eolas patent that Microsoft's Internet Explorer browser was recently ruled to have infringed, after the World Wide Web Consortium (W3C) presented the USPTO with examples of prior art and asked them to re-examine the issue.

"'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.' . . .

"'The thing that's exciting to me is that the (US)PTO sort of made the ruling on the basis of how much interest there is in this issue on the Internet,' said Dale Dougherty, a vice president of online publishing and research at Sebastapol, Calif.-based publisher O'Reilly & Associates, who posted news of the USPTO's decision on the O'Reilly Web site. 'And it seems that they felt they had to respond to it.'"

It's encouraging to know outcry works. Of course, it is Microsoft, so that probably didn't hurt the cause either. You can read about the efforts by folks over the internet to find prior art to invalidate this patent here. There just is something to this many eyeballs thing. I don't suppose MS will get that part of the story, even though it is the beneficiary this time.

In other patent news, there is an interview with Dan Ravicher, Esq., Executive Director of the newly launched Public Patent Foundation on The Inquirer.

PubPat's mission statement reads, in part, like this:

"The Public Patent Foundation works against illegitimate patents in many ways, including requesting re-examinations of issued patents (asking the Patent Office to reconsider the validity of an issued patent with the goal of having it narrowed or revoked). The Public Patent Foundation also advocates for improvements to the patent laws and educates the general public on the esoteric issues implicated by patents and how they impact their everyday life."

Here's a sample of the interview, and of course I zeroed in on his remarks on the SCO case:

"Q: Do you suspect that closed-source software companies will use their patents and legal resources to fight Open Source software in the courts?

"A: Those companies most likely to be sued for patent infringement are those that are either posing the largest competitive threat to a patent holder or are reaping significant profits from the allegedly infringing activity. Well, those same companies are also likely to be fairly large and capable of dealing with any patent threat. For instance, IBM or HP are more likely to get sued for patent infringement than Apache or the kernel developers, because suing a small group or individual is not worth the cost of litigation for a patent holder. Thus, since the larger members of the Free Software community are the ones most likely to be sued, the Free Software community would be adequately represented. . . .

"Q: Do you have any comments on the SCO related litigation now underway?

"A: Having agreed to a trial date in 2005 and having not sought any preliminary relief, SCO seems to have brought this action primarily to get press. While they have been wildly successful in achieving their goal, they have also caused the marketplace to educate itself about Free Software, which is a tremendous benefit to the community."

I admire Dan for taking time out from a lucrative and prestigious career track (Patterson, Belknap isn't chicken liver, folks) to serve as a public interest attorney and set up the foundation.

If you are curious about patent law and software issues, here is an article you might enjoy, either as a PDF or as HTML, although as is typical with PDFs to HTML, it's a bit hard to read. Pick your poison. It's hard to find even, so scroll down until you find: "What a Patentee Must Do to Prove Infringement and Damages of a Method Claim for Computer Software" by Marc Lorelli of Brooks & Kushman, P.C.


Patent News: Prior Art + Outcry = Holy Cow, It Worked! | 30 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Patent News: Prior Art + Outcry = Holy Cow, It Worked!
Authored by: Anonymous on Thursday, November 13 2003 @ 05:56 AM EST
Well, yeah, this is good news.

However, there have been outcries before, but notice how when it's MS (being a
large, wealthy corporation) the USPTO steps up and takes notice.

That part I find less encoraging. It seems to suggest that the problem with the
patent (from the USPTO's prerspective) is NOT the prior art, but the fact that
it could impact a large, wealthy corporatation, like MS.

[ Reply to This | # ]

Patent News: Prior Art + Outcry = Holy Cow, It Worked!
Authored by: Hygrocybe on Thursday, November 13 2003 @ 05:59 AM EST
Microsoft or not - I am very pleased with the apparent results. I understand
that the possible impacts on Linux and its various browsers were also
considerable, so that this is something that needed to be resisted very


[ Reply to This | # ]

Patent News: Prior Art + Outcry = Holy Cow, It Worked!
Authored by: Anonymous on Thursday, November 13 2003 @ 06:02 AM EST
"It's encouraging to know that outcry works"

Perhaps, but I think the real problem is that the patent office doesn't examine
it's patents critically. Reacting to outcry is the worst possible way to
organize things: it requires constant vigilence by the outcriers, who might
themselves not be in possession of all the facts, and certainly aren't in
possession for the relevant facts for all cases.

They should just do their job right all the time.

[ Reply to This | # ]

Premature celebration
Authored by: amcguinn on Thursday, November 13 2003 @ 06:58 AM EST
It's great news, but it's one thing for a bureaucracy to agree to reexamine something, it's another thing altogether for it to agree it got something wrong and reverse its decision.

PJ, please help us all keep an eye on this issue, so that they know they can't get away with quietly confirming the patent on a good day to bury bad news

[ Reply to This | # ]

Is the USPTO liable for its mistakes?
Authored by: Anonymous on Thursday, November 13 2003 @ 08:00 AM EST
Has anyone ever sued the USPTO for damages related to invalid patents being
issued? It seems strange to me that they can make mistakes which cost people
considerable amounts of money and there seem to be no consequences. Are they
protected by law from such suits?

These days there is a lot of talk about ways to reform the patent system. Some
measure of accountability for failing to find prior art would seem to go a long
way tword achieving this.

[ Reply to This | # ]

A bizarre idea for your amusement.
Authored by: Jude on Thursday, November 13 2003 @ 10:01 AM EST
I think it's grossly unfair that one of the most lucrative industries in the
U.S. doesn't have to live with the burden of constantly worrying about
Intellectual Property issues: Lawyers.

Think about it: A big client pay millions of dollars in legal fees to win a
case, and then some young pup laywer fresh out of school can freely cite that
case in their own arguments without ever compensating the original lawyers (or
the clients who paid for it) for the use of their work.

The combined body of case histories probably represents quadrillions of dollars
worth of legal work, yet anyone can come along and cite it in their own cases
without paying a nickel. Brilliant legal arguments that win cases and set new
precedents are subsequently re-used by other lawyers who don't pay anything for
their use of this valuable intelletual property. Such arguments should really
be patented, so that other lawyers can be compelled to pay licensing fees when
they use them.

I think it's high time we got the law industry out of the dark ages and into
the present, so they can spend their time suing each other over patent and
copyright infringement. Then, maybe the rest of us can go back to making useful
things that improve people's lives.

[ Reply to This | # ]

Patent News: Prior Art + Outcry = Holy Cow, It Worked!
Authored by: Anonymous on Thursday, November 13 2003 @ 10:43 AM EST
It's important to keep in mind that the USPTO was forced into granting patents for computer software by our Courts. Our Congress had only extended copyright protections to software.

Everyone should read Professor Donald Knuth's letter on this very subject. It's an eye opener from an ACM Turing Award recipient, the author of TeX, and The Art of Computer Programming.

Many people never grok the concept that computer source code is simply symbolic human speech. Some people get distracted by the fact that it is sometimes functional. When any other speech "actually works" we usually call that communication;-) If you are looking for a site to help you grasp that idea here is a good one.

The following is an extract from an Appeals Court ruling on export controls that are applied to encryption software and source code:

"The government defendants appeal the grant of summary judgment to the plaintiff, Professor Daniel J. Bernstein ("Bernstein"), enjoining the enforcement of certain Export Administration Regulations ("EAR") that limit Bernstein's ability to distribute encryption software. We find that the EAR regulations (1) operate as a prepublication licensing scheme that burdens scientific expression, (2) vest boundless discretion in government officials, and (3) lack adequate procedural safeguards. Consequently, we hold that the challenged regulations constitute a prior restraint on speech that offends the First Amendment.

If the courts can see it's a bad idea to "vest boundless discretion in government officials", and that the "lack of any procedural safeguards" might "burden scientific expression", and even the "offend the First Amendment" - then why allow government officials to issue patents on computer software and it's concepts and methods at all?

Our Supreme Court has reversed itself before, and they should revisit the issues in the 1981 case of Diamond v. Diehr. It violated the seperation of powers as much as any line item veto, and it's had fairly predictable and undesirable results. Write your representatives, I have.

[ Reply to This | # ]

YAMCT: Yet Another Microsoft Conspiracy Theory
Authored by: Anonymous on Thursday, November 13 2003 @ 12:43 PM EST
It is possible that Microsoft never intended to fight the Eolas patent.
Consider the recent announcment of a Macromedia Flash replacement codenamed

"Losing" the Eolas patent case led Microsoft to announce changes to
the plugin architecture of Internet Explorer such that many existing pages with
plugin content will no longer display properly (Of course they provided some
recommendations to correct the problem, but consider pages that are not actively
maintained). One of Marcomedia's primary advantages is a huge installed base.
Breaking all of those existing web pages in one fell swoop would seem to be a
huge advantage to Microsoft, with the added bonus that they were not abusing
their monoploy power, but were "forced" to do it because of the
patent case.

Face it, if Microsoft wanted to win the suit, they would have.


[ Reply to This | # ]

Patent News: Prior Art + Outcry = Holy Cow, It Worked!
Authored by: mdchaney on Thursday, November 13 2003 @ 02:19 PM EST

There just is something to this many eyeballs thing. I don't suppose MS will get that part of the story, even though it is the beneficiary this time.

They benefitted hugely 4 years ago when they forgot to pay their registration. Not to toot my own horn, but plenty of people working together on slashdot were able to figure it out and fix it long before Microsoft was able to figure out what the problem was (or even if there was a problem). To be fair, it was Christmas Eve and Christmas Day, so I'm sure they didn't have their best and brightest in there working. Regardless, the open source community determined their problem and fixed it for them.

They get it, without a doubt. But if I were Bill Gates, I wouldn't admit it, either...

[ Reply to This | # ]

Patent News: Prior Art + Outcry = Holy Cow, It Worked! - blacklight
Authored by: Anonymous on Thursday, November 13 2003 @ 08:42 PM EST
Cleaning up after the USPTO is about as much fun as following a horse to put
away its poop - And there is much more where that came from. And count on these
guys to tell us that the system "worked"!

[ Reply to This | # ]

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