2004 Web and Downloadable Games White Paper 

IGDA Online Games SIG 

2003 Eolas Technologies filed a motion to permanently stop Microsoft from distributing its Internet 

Explorer browser capable of running plug in applications and applets that the Eolas patent 

covers. 

On October 29, 2003 the World Wide Web Consortium ("W3C") released a memorandum entitled 

 World Wide Web Consortium Presents US Patent Office with Evidence Invalidating Eolas 

Patent  and subtitled  W3C Director Tim Berners Lee urges USPTO Director to review prior art 

and take action.  The World Wide Web Consortium submitted written submissions to the Patent 

Office arguing that the Eolas patent is invalid in light of prior art, but also that the patent should be 

held invalid because there will be substantial economic and technical damage to the web. They 

argue that Microsoft and others will modify their browsers to avoid patent infringement liability, 

and in doing so will render many existing web pages incompatible with the  modified  browsers 

and hence inaccessible to web users. In their written submission they state  But that feature (i.e., 

displaying, or embedding, an image generated by an external program in the same window as the 

rest of a Web page) had already been described in the prior art publications submitted herewith 

and was known to the Web development community. The claims of the Eolas patent are therefore 

plainly obviously incorrect in view of this prior art.   

On October 30 The U.S. Patent and Trademark Office issued a  Director Initiated Order for 

Reexamination of the Eolas patent.  Reexamination is an administrative procedure which allows 

the Patent Office to reexamine the patent in question and determine if a patent should have ever 

been issued in the first place. The October 30th order stated "a substantial outcry from a 

widespread segment of the affected industry has essentially raised a question of patentability with 

respect to the Eolas patent claims. This creates an extraordinary situation for which a Director 

ordered reexamination is an appropriate remedy." 

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 It determined  a substantial new question of 

patentability  affecting certain of the claims and ordered a reexamination of the entire Eolas 

patent.  

As of this writing, the time table is as follows: the US Patent Director has three months from W3C 

submission to determine whether a substantial new question of patentability affecting any claim 

was raised by the submission. If the Director determines that a question of patentability is raised, 

then Eolas may file a statement on such a question, including any amendment to this patent and 

new claims. The Director will set how long Eolas has to respond to the question, but that 

response time will at a minimum be at least two months. After Eolas files a response, W3C has 

two months to respond. 

The bottom line is that developers may face the possibility of having to significantly rewrite their 

Web pages or strip them of commonly used technologies like Macromedia 

s Flash. Microsoft said 

it is well on its way to side stepping both the patent and potential injunction with an Internet 

Explorer alteration it previewed on October 6, 2003, a version it expects to introduce early in 

2004. The previewed alteration would change the way Internet Explorer renders pages that use 

ActiveX controls to launch plug ins. Microsoft also recommended to developers some methods of 

invoking external applications in a way it claims would prevent the patented plug in method.

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 Yet 

all this may be unnecessary if the Eolas patent is declared invalid by the US Patent Office. Until 

the validity of the patent is decided, this author recommends that developers should take a wait 

and see attitude. 

(2) 

Acacia Media Technologies 

Over the past several years, Acacia Media Technologies has acquired a series of patents it 

believes cover the ubiquitous system of compressing streaming media files (audio and video 

steaming and video on demand) over the Internet, cable TV lines, satellites and wireless services. 

As reported in C/Net News.com News (2/6/03), the license fee Acacia wants is three quarters of 

one percent of the gross revenue. 

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 www.uspto.gov and www.w3.org/2003/10/28 906 briefing, Tech Law Journal November 13, 2003 

14

 C/Net News.com 8/11/03, 8/14/03, 9/11/03, 9/19/03, 9/25/03, 10/8/03  

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