"The difference between ITI and other companies I've worked with is ITI did it right."

Analyst or Advocate: A review of the Eolas rebuttals to the USPTO's office actions with regard to US Patent No. 5,838,906.

I. Introduction

In August 2003, a jury awarded Eolas Technologies Inc. more than $500 million in damages for Microsoft's alleged infringement of US Patent No. 5,838,906. The '906 patent, which covers a method of embedding interactive content in Web pages, is unfortunately the type of patent that contributes to the negative reputation of software patents and, by extension, the USPTO. Moments after the ubiquitous anti-Microsoft celebration ended, the realization sunk in: this is not good for the Web.

In response, Tim Berners-Lee, father of the Web, author of the initial HTTP and HTML specifications and the director of the W3C, and others in the community urged the USPTO to re-examine the patent in light of a set of prior art herein referred to as the Raggett references. Berners-Lee cautioned that the patent would cause "substantial economic and technical damage to the operation of the World Wide Web," the impact of which "...will be felt not only by those who are alleged to directly infringe, but all whose web pages and applications rely on the stable, standards-based operation of browsers threatened by this patent."[1]

Like the '906 patent, the Raggett references teach a method of embedding interactive content in Web pages using interactive external applications. Based upon the Raggett references, the USPTO re-examined the '906 patent and issued an office action that rejected the '906 claims as being unpatentable.

In response, Eolas prepared and submitted rebuttal arguments to the USPTO. The bulk of the technical argument was presented through Dr. Edward Felten, a professor at Princeton and the paid expert for Eolas during the trial. While Dr. Felten framed his arguments in patent jargon, particularly with regard to the understanding of those "having ordinary skill in the art," in reality, the acceptance of his arguments required that one in the art suspend the application of common sense. Moreover, Dr. Felten's arguments as to how one of skill would have understood Dave Raggett's publications seemed directly contrary to how those working on the Web actually did understand Dave Raggett's words at the time of their publication.

Unfortunately, those who were concerned about the impact this patent could have on the Web may have reason to be concerned about the subsequent events in the USPTO. Despite the plain technical disclosures of the Raggett references, the USPTO returned a second office action which, although it upheld the rejection[2] of the '906 patent claims, seemed swayed at least in part by Dr. Felten's arguments. Eolas and Dr. Felten now seek to build on that through another recent filing in the USPTO that again seeks to suspend the application of common sense to any technical analysis. Those who urged this reexamination should be concerned that the USPTO may act upon this one-sided record.

II. Overview

The following is a summary of the main points addressed in the document. The summary outlines each topic in this document, and each topic links to the sections of the document that describe it thoroughly. The intent is that the reader of this document is able to digest the arguments quickly, but at any time may drill down into a given argument to access a more rigorous discussion.

1) Background (Section III) - Patent infringement disputes tend to make things more complicated than they need to be. Because of the potential for confusion, it is often a useful exercise to take a step back from the problem and apply a measure of common sense.

a) The amount of interactivity on the Web did not change with the introduction of the '906 patent (Sections III.a, III.b, III.c)

• A large portion of Eolas' argument is based on the interactivity provided by the VIS application, however, the external application - including the type and amount of interactivity it provides - is not claimed by the '906 patent.
• Interactivity on the Web existed before the '906 patent.
• Mosaic helper applications provided the same type and amount of interactivity as well as the ability for the browser to support non-native formats using external applications. The difference between helper applications and the '906 patent was simply where the output of the programs was displayed.
• Methods for embedding interactive objects were well known in 1993.

b) Raggett teaches the '906 invention (Section III.d)

• Raggett teaches a method for object level embedding enabling the in-line display of foreign data formats without modification of the browser.
• Raggett teaches an EMBED tag, including a type attribute identical to that described in the '906 patent.
• Raggett teaches the use of external applications to provide interactivity with embedded objects.
• Those of skill in the art understood the teachings of Raggett as a method to embed fully interactive content within Web pages.
• Methods for displaying the output of applications in any window, as well as methods for any client program to reparent another client program's main window inside of its own window were functions of the X-Window system and were present since its inception in 1984. Furthermore, these methods were used by programs in and before 1993.

c) Embedding interactive objects was well known in 1993 (Section III.e)

• Mark Andreessen proposed using external applications to embed MIME documents in browser windows in 1993, including embedded controls that enabled interactivity with the embedded object.
• Those of skill in the art understood the potential to embed interactive content such as drawing objects, animations, spreadsheets, message objects, and clickable areas within images.

2) Felten I (Section IV) - The Felten I declaration presents two major arguments in an attempt to convince the USPTO that the first office action is incorrect and the '906 patent should stand. First, Dr. Felten contends that the Raggett references are a "slight" extension of Berners-Lee's ability to display static images, and therefore teach away from interactivity.[3] Second, he argues that Raggett doesn't teach interactivity within a browser window, and that this type of interactivity is claimed by the '906 patents.[4]

a) Dr. Felten misrepresents the state of the art in 1993-4 (Section IV.a)

• Browsers in this time period provided the same level and types of interactivity as the '906 invention. Simply placing the output of external applications in the browser window did not change the level of interactivity on the Web.
• The '906 patent claims were adjusted to distinguish the invention from existing interactivity on the Web. The limitations that the application providing interactive processing must be external to the browser, running on the client computer, and display its output within the browser window were added to overcome forms, scripts, and helper applications.
• Interactivity within Web browsers was known in 1993.

b) Dr. Felten understates the vision and contribution of Berners-Lee (Section IV.b)

• Dr. Felten's declaration that Berners-Lee "teaches away from the provision of rich interactivity within a page" is incorrect.
• Berners-Lee did not consider his invention as being limited to static text and hyperlinks.
• The Mosaic browser, admitted prior art to the '906 patent, was an implementation of a Web browser described by the Berners-Lee reference.
• Mosaic provided interactivity with external objects using helper applications.

c) Dr. Felten's argument with regard to external editors and Mosaic is misleading and incorrect (Section IV.c)

• Dr. Felten describes Mosaic's ability to launch an external HTML editor in order to edit the contents of a Web page. His argument is misleading; the external application must enable interactive processing with the embedded object, not the Web page itself.
• Dr. Felten is also incorrect in asserting that there was no realistic way to edit a Web page from a client workstation. This technology existed in 1993 and is a popular feature of the Web today.

d) Dr. Felten's argument against the Raggett references is misleading, incorrect, and contradicts the '906 patent (Section IV.d)

• The use of static images, including rendering an image of an object server-side, does not preclude interactivity.
• Dr. Felten misleadingly applies the term static to the input and output of the external application without regard to the fact that the '906 invention uses the same "static" object data and image data.
• The '906 patent does not claim enabling interactive processing of the embedded object by clicking the object's display window inside the browser.

i) Raggett was a significant improvement over Berners-Lee (Section IV.d.i)

ii) The use of "static" images does not preclude interactivity (Section IV.d.ii)

iii) Implementation of Raggett I would not be limited to single frame data (Sections IV.d.iii, IV.d.iv)

iv) Dr. Felten's argument with regard to external editors is misleading and incorrect (Section IV.d.v)

v) Interactivity within browser window is not claimed by '906 patent (Section IV.d.vi)

vi) Raggett teaches adding support for data types using external applications (Section IV.d.vii)

3) Felten II (Section V) - Dr. Felten declares that the combination of the Berners-Lee and Raggett references does not teach the claim element of automatically invoking an executable application to enable interactive processing. He is incorrect. Furthermore, the Toye reference also teaches this claim element.

a) Dr. Felten misconstrues Berners-Lee in support of his arguments against Toye (Section V.a)

• Dr. Felten misleadingly restricts Berners-Lee to "static pages." In reality, an implementation of Berners-Lee, Mosaic, provided the same type and level of interactivity as the '906 patent.
• Dr. Felten misleadingly defines "distributed hypermedia environment" to support a future argument that Toye does not teach a hypermedia environment.
• Dr. Felten misleadingly restricts hyperlinks to "simple, unidirectional hyperlinks" to support a future argument that Toye does not teach a hypermedia browser. Hyperlinks are not limited in direction. Furthermore, the '906 patent does not claim any kind of hyperlink.

b) With regard to the Raggett references, Felten II presents the same arguments as Felten I (Section V.b)

c) Toye (Section V.c) - Assuming that the Raggett references lack the claim element of automatically invoking an executable application to enable interactive processing of an embedded object, the '906 invention is unpatentable over a combination of Berners-Lee, Raggett I, Raggett II, and Toye. Any arguments against Toye that don't pertain to this claim element are irrelevant, as they are taught by the Berners-Lee and Raggett references.

i) Toye teaches hypermedia documents in a distributed environment (Section V.c.i)

ii) Toye teaches a hypermedia browser (Section V.c.ii)

iii) Dr. Felten's argument with regard to type information is unclear and irrelevant (Section V.c.iii)

iv) Toye teaches the required '906 claim element and is consistent with the '906 invention (Section V.c.iv)

v) Toye teaches automatic invocation (Section V.c.v)

vi) Interactivity in an embedded window is not required by the '906 claims (Section V.c.vi)

vii) Toye teaches modification of external applications to embed interactive content (Section V.c.vii)

viii) Toye provides ample suggestion to combine (Section V.c.viii)

4) Conclusion (Section VI)

5) List of Supporting Documents

Click here to view the complete document including this introduction and overview.