University of California Office of the President

FOR IMMEDIATE RELEASE
Wednesday, Sept. 28, 2005
Trey Davis, (510) 987-0056
trey.davis@ucop.edu

U.S. Patent Office reaffirms University’s Web-browser technology patent

The University of California’s patent for Web-browser technology essential to the Internet was reaffirmed this week by the U.S. Patent and Trademark Office, when it published its notice that the office has completed its re-examination process and will issue a re-examination certificate of the patent first challenged by Microsoft Corp. two years ago.

“We are gratified that the patent office’s re-examination has validated its original evaluation of the University’s unique contribution to the technology, which fuels the Internet,” said James E. Holst, the university’s general counsel. “This decision ensures that the patent rights of the public institution that developed this technology, a significant innovation with wide-reaching public benefits and use, will be protected.”

U.S. Patent No. 5,838,906 (‘906 patent, for short) was first issued to UC on Nov. 17, 1998. Reexamination of the patent was initiated by the PTO director in October 2003 after Microsoft was found liable for patent infringement in a lawsuit brought by UC and Eolas Technologies Inc., the company to whom UC exclusively licensed the ‘906 patent.

In its “Reasons for Patentability/Confirmation” notice, the patent examiner rejected the arguments for voiding UC’s previously approved patent claims for the Web-browser technology as well as the evidence presented to suggest that the technology had been developed prior to the UC innovation. The examiner considered the Viola reference – the primary reference asserted by Microsoft at trial – as a prior art publication and found that Viola does “not teach nor fairly suggest that instant ‘906 invention, as claimed.”

The 73-page notice is available online at:
universityofcalifornia.edu/news/2005/ptonotice0905.pdf

In 1993, Michael Doyle, Eolas’ president and a former UC researcher working on transforming how scientific information was accessed and published, co-invented the patent's technology to allow interactive applications in Web pages, which were previously limited to static information and helper applications.

As part of their research, Doyle and a UC team began to explore the possibility of expanding the sciences by allowing scientists to read not only what was published online, but to interact with that data. While early Web participants struggled to implement helper applications, the team was already examining the potential of the Web to become a platform for fully interactive embedded applications.

With a UC licensing agreement reached in October 1994, Eolas was founded by Doyle and his research group to create and market new technologies and innovative products that make the Web a more interactive medium. In 1995, the patented technology’s features began appearing in commercial Web browser programs; and interactivity has become a hallmark of the Internet ever since.

In the U.S. District Court in the Northern District of Illinois, Eastern Division, on Aug. 11, 2003, a jury found that Microsoft improperly put the ’906 patented Web browser technology into its Internet Explorer product, helping the computer giant win critical market share from rival Netscape Navigator. The 12-member jury awarded UC and Eolas more than $520 million in damages.

On Jan. 14, 2004, the court entered judgment for $565.9 million, a total reflecting the amount of damages plus prejudgment interest. Microsoft appealed the verdict to the U.S. Court of Appeals. The appeals court left the jury’s finding that Microsoft infringed the patent and the damages award untouched, but remanded the case to trial on certain of Microsoft’s invalidity defenses. The case is currently awaiting further proceedings before the district court.

“Given the appeals court’s affirmation of Microsoft’s infringement and the favorable resolution of the reexamination, we look forward to quickly dispatching the remaining issues before the district court so that the university and Eolas can be fairly compensated for the use of their property right,” said Eolas’ lead trial attorney, Martin R. Lueck, of Robins, Kaplan, Miller & Ciresi LLP.

About the University of California

A powerful engine for economic growth and a vital resource in improving medical care, the University of California is the world’s premier public research university system, with more than 208,000 students, 150,000 faculty and staff, 10 campuses, three national laboratories, and five medical centers.

The transfer of technology and knowledge generated at UC campuses creates a direct resource to California’s economy by providing companies with new technologies that have commercial potential and by generating spin-off and start-up companies. More than 1,100 California biotech, high-tech and other R&D-intensive companies put UC research to work every day. In the last decade, UC campuses reported more than 2,600 inventions that lead to new technologies and products. UC has been the nation’s leading university in the number of patents developed for the past 11 consecutive years and its researchers create an average of three new inventions per day – fueling business innovation and California’s economic competitiveness.

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For court documents and background material:
www.rkmc.com and www.eolas.com.