PASUG -- Eolas vs. Microsoft

Univ. of Cal patent US 5,838,906, inventor Michael Doyle, assigned to Eolas Technologies.
Filed Oct. 17, 1994. Issued Nov. 17, 1998
Claims a method of, and program for, automatically invoking an external program to display media information in a browser.
Based on modifications to Mosaic code to automatically invoke plugins required by embedded links in page code.

Filed 10/17/94. Published Nov 17, 1998. Two independent claims.
Rejected 3 times during prosecution under 103a.
- Mosaic plus Andrew Toolkit (Hansen ref.)
- Mosaic plus Khoyi object patent (US 5,206,951).
- Mosaic plus Koppolu OLE patent (US 5,581,686) (MS).
Each time inventors overcame rejections, without narrowing claims or definit's.

Claims directed to a process (or method) for automatically invoking from within the browser a second program to allow interaction or editing of data from within the browser window, and to a computer program which accomplishes the same thing.
Examples: Flash or shockwave plugins, streaming audio, java programs within a Java VM

Eolas sued Microsoft in February 1999.
Markman issues (Sept 2000)
Key phrase disputed is: "wherein said object has type information associated with it utilized by said browser to identify and locate an executable application".
What is an executable application? What is the type information that must be associated with the object? What does it mean for the type information to be utilized by said browser to identify and locate the executable application?

On each of the issues in dispute, Microsoft argued for a narrow interpretation, and Eolas argued for a broad interpretation.
In the opinion Dec 28, 2000, the judge adopted Eolas' interpretation in each instance.

Invalidate based on OLE 2.0 design specs.
They disclaimed reliance on '696 reissue. As near as I can tell, the reissue of the '686 patent failed in the PTO, and the judge precluded each side from using that information at trial.
Viola as prior art.
Failure to provide an adequate written description (Sect. 112 para. 1)
Argue non-infringement based on IE/Windows relationship.

Allegation of inequitable conduct during prosecution of the '906 patent.
MS alleged that Doyle had information about the "Viola browser" prior to and during prosecution of his application which was or would have been material to the PTO and failed to disclose it.
The judge ruled that while Doyle had email communications with Wei prior to his application, there was no information provided which indicated he knew what the product could do, how it did it, or had access to source code, and therefore made it material.
Finding of no inequitable conduct by Doyle. Not introduced at trial

Jury found MS infringed the '906 patent through IE and found damages of $520 MM. Fundamentally, this is through ActiveX.
Judgement and award based on every copy MS has sold of Windows which contains IE since patent issued, even overseas.

MS could license the '906 patent.
Modify IE code so it doesn't infringe. (Remove ActiveX) Of course this breaks a lot of web pages.
Insert a dialog box which requires user input prior to loading applets. (no longer automatic)
Effect on Mozilla, Sahara, Netscape?

Presented to the PASUG, September 25, 2003, by Doug Leach