The University of California could lose more than $500 million
within the next two months if a patent held by the UC is determined
to be invalid.
The U.S. Patent and Trademark Office is reexamining a patent
held by the UC and will decide within the next 60 days whether to
invalidate the patent, potentially overturning a recent lawsuit the
university won over Microsoft Corporation.
Last August, the UC and Eolas Technologies Inc., which owns the
license for the patent, successfully sued Microsoft for $520.6
million for patent-infringement on a patent held by the UC
concerning Web browser technology.
The patent pertains to technology which allows hypermedia, often
in the form of Adobe Acrobat or Java Applets, to launch and be
displayed in the same window while loading a Web site.
“That patent is in a process called re-examination,”
said Brigid Quinn, a spokeswoman for the U.S. Patent and Trademark
Office.
“A re-examination occurs when either prior patents or
something in the scientific or technical literature, which we call
prior art, raises substantial new questions of
patentability,” she said.
After the UC won the lawsuit, the patent office began to look at
the patent’s merits to determine patentability. The prior art
cited by the office pertained to previously developed technology
allowing hypermedia to be displayed in a separate window.
“In this instance the examiner found there was prior art
that would invalidate this patent,” said Quinn.
The patent office began a director’s order reexamination
on Oct. 30 of last year and issued a preliminary ruling Feb. 26,
2004. The UC has 60 days from that ruling to respond before the
final ruling is determined.
If the patent is invalidated, the lawsuit against Microsoft
could be overturned.
Shortly before the reexamination was ordered, Tim Berners-Lee,
director of the World Wide Web Consortium, sent a letter to the
patent office urging it to invalidate the patent because he
believes it restricts Internet access for hundreds of millions of
users.
Trey Davis, a spokesman for the UC Office of the President, said
the patent does not restrict access to the Internet because the UC
has offered to provide the license to the patent royalty-free in
the future.
“We’re willing to make the license to that patent
available to anyone,” he said. “Who pays for the
technology doesn’t have an impact on the efficiency of or
access to the Web.”
Davis also said the UC does not believe the patent will be
invalidated.
“What is really crucial to this is that the prior art that
was mentioned in the complaint filed with the patent office … has
already been considered and rejected by the judge and jury in the
Microsoft trial,” Davis said.
The UC will present its case to the patent office in the next
two months and will file an appeal if the patent is
invalidated.