10/30. The U.S. Patent and Trademark Office (USPTO) issued a "Director Initiated Order for Reexamination" of U.S. Patent No. 5,838,906 titled "Distributed hypermedia method for automatically invoking external application providing interaction and display of embedded objects within a hypermedia document". This is also known as the "Eolas" and "906" patent.

Reexamination is an administrative procedure that allows the USPTO, if a substantial new question of patentability is raised by prior art citations (that is, previous patents and publications not reviewed by the patent examiner on the original grant of the patent), to resolve the question of whether the patent is valid in light of the prior art.

This order determines that there is "a substantial new question of patentability" affecting claims 1-3 and 6-8 of the 906 patent, and orders reexamination of "all of the claims" of the 906 patent. The order was issued by Stephen Kunin, Deputy Commissioner for Patent Examination Policy, "on his own initiative".

However, the World Wide Web Consortium (W3C) and its Director, Tim Berners-Lee, made written submissions to the USPTO regarding prior art. They argued, not only that the patent is invalid in light of prior art, but also that unless the patent is held invalid, there will be substantial economic and technical damage to the web. Basically, they argued that Microsoft, and others, will modify their browsers to avoid patent infringement liability, and in so doing, will render many existing web pages incompatible with the modified browsers, and hence, inaccessible to web users.

On August 11, 2003, a trial jury of the U.S. District Court (NDIll) returned its verdict that Microsoft's Internet Explorer infringed this patent. The jury also awarded damages of $521 Million. See, story titled "Jury Returns Verdict of Infringement Against Microsoft in Eolas Browser Patent Case" in TLJ Daily E-Mail Alert No. 716, August 12, 2003.

The patent application was filed in October 1994. The patent was issued on November 17, 1998. The inventors are Michael Doyle, the founder of Eolas Technologies, David Martin and Cheong Ang.

On October 24, the law firm of Pennie & Edmonds, attorneys for the W3C, filed a document titled "Citation of Prior Art Under 35 U.S.C. S 301 and 37 CFR 1.501 In Relation to U.S. Patent No. 5,838,906" with the Commissioner of Patents. The W3C is the primary standard setting body for the world wide web.

35 U.S.C. § 301 provides, in part, that "Any person at any time may cite to the Office in writing prior art consisting of patents or printed publications which that person believes to have a bearing on the patentability of any claim of a particular patent. If the person explains in writing the pertinency and manner of applying such prior art to at least one claim of the patent, the citation of such prior art and the explanation thereof will become a part of the official file of the patent."

The October 24 filing states that "we strongly believe that the '906 patent is invalid in view of prior art, submitted herewith, that was never previously considered by the United States Patent & Trademark Office."

It elaborates that "The '906 patent is generally directed to a Web browser able to invoke external programs to display portions of a Web page that the browser cannot directly display itself. A Web browser may not be capable of displaying certain types of image data, for example, in which case the browser would invoke a separate program that is capable of doing so. The sole difference between the web browser described in the '906 patent and typical browsers that the patent acknowledges as prior art, is that with prior art browsers, the image in such cases is displayed in its own window, separate from the main browser window, whereas, with the '906 browser the image is displayed in the same window as the rest of the Web page, without the need for a separate window. 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 '906 patent are therefore plainly obvious in view of this prior art." (Emphasis in original.)

On October 28, 2003, Tim Berners-Lee, the Director of the W3C wrote a letter to USPTO Director James Rogan in which he stated that "we urge you to initiate a reexamination of the '906 patent in order to prevent substantial economic and technical damage to the operation of World Wide Web. As a result of a recent infringement judgment against Microsoft Corporation based on the '906 patent, they have stated publicly that they intend to redesign the Internet Explorer browser to avoid infringing the '906 patent. Although Microsoft's proposed redesign covers only a small portion of its entire browser program, it would render millions of Web pages and many products of independent software developers incompatible with Microsoft's product."

Berners-Lee, who is also generally credited with being the primary inventor of the web, continued in his letter to Rogan that "A patent whose validity is demonstrably in doubt ought not be allowed to undo the years of work that have gone into building the Web. Removing the improperly disruptive effect of this invalid patent is important not only for the future of the Web, but also for the past. Even if the Web has to endure several years of disruption, we are confident that currently active Web pages will eventually be fixed and brought into compliance with whatever the prevailing standard is. However, pages that are inactive but have historical value may well remain in a state of impaired accessibility indefinitely if Web technology is forced to deviate from standards in this manner. The Web functions only on the strength of its common standards." (Emphasis in original.)

On October 29, the W3C released a memorandum titled "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, take action". It summarizes the actions taken by the W3C.

35 U.S.C. § 302 provides, in part, that "Any person at any time may file a request for reexamination by the Office of any claim of a patent on the basis of any prior art cited under the provisions of section 301 of this title."

35 U.S.C. § 303 provides, in part, that "Within three months following the filing of a request for reexamination under the provisions of section 302 of this title, the Director will determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request, with or without consideration of other patents or printed publications."

35 U.S.C. § 304 provides that "If, in a determination made under the provisions of subsection 303(a) of this title, the Director finds that a substantial new question of patentability affecting any claim of a patent is raised, the determination will include an order for reexamination of the patent for resolution of the question. The patent owner will be given a reasonable period, not less than two months from the date a copy of the determination is given or mailed to him, within which he may file a statement on such question, including any amendment to his patent and new claim or claims he may wish to propose, for consideration in the reexamination. If the patent owner files such a statement, he promptly will serve a copy of it on the person who has requested reexamination under the provisions of section 302 of this title. Within a period of two months from the date of service, that person may file and have considered in the reexamination a reply to any statement filed by the patent owner."

On October 30, 2003 the USPTO issued its "Director Initiated Order for Reexamination". It states that "a substantial outcry from a widespread segment of the affected industry has essentially raised a question of patentability with respect to the '906 patent claims. This creates an extraordinary situation for which a Director ordered reexamination is an appropriate remedy."

The reexamination order reviews the claims of the 906 patent, reviews the prior art (writings of Tim Berners-Lee, David Raggatt and others from 1993), and applies the prior art to the patent claims. It concludes that the requirements of the applicable statute and regulation that there be a substantial new question of patentability is met.

11/12. The General Accounting Office (GAO) released a report [58 pages in PDF] titled "Electronic Government: Potential Exists for Enhancing Collaboration on Four Initiatives".

This report examines just four of the 25 e-government initiatives identified by the Office of Management and Budget (OMB). Specifically, it examined (1) e-Payroll (an initiative to standardize payroll operations across all federal agencies), (2) Geospatial One-Stop (an initiative to help coordinate the collection and maintenance of geospatial data across all levels of government), (3) Integrated Acquisition Environment (an initiative to create electronic tools to improve federal agencies’ acquisition of goods and services), and (4) Business Gateway (an initiative to reduce the paperwork burden on small businesses and help them find, understand, and comply with federal, state, and local laws and regulations).

The GAO report found that "The four e-government initiatives we reviewed have made progress in meeting the objectives and milestones of their early phases. For example, Web portals were established for two of the initiatives -- www.geodata.gov for the Geospatial One-Stop initiative and www.BusinessLaw.gov for the Business Gateway. In addition, the Integrated Acquisition Environment initiative established an online capability that federal customers can use to access a variety of available interagency contracts."

However, it also found that "While the four initiatives we reviewed have all taken steps to promote collaboration with their partner agencies, none of the initiatives has been fully effective in adopting these practices to fully involve important stakeholders."

11/12. The General Accounting Office (GAO) released a report [42 pages in PDF] titled "Telecommunications: Uneven Implementation of Wireless Enhanced 911 Raises Prospect of Piecemeal Availability for Years to Come".

The report states that "Implementation of wireless E911 is several years away in many states, raising the prospect of piecemeal availability of this service across the country for an indefinite number of years to come."

It finds that "Lack of funding for equipment upgrades and a lack of coordination among the parties involved are factors slowing the pace of the rollout of wireless E911 technologies."

It also states that "The federal government has been involved in the promotion of wireless E911, but has limited authority over the entire process. FCC has concentrated its regulatory efforts toward the wireless carriers, where it has the most enforcement authority. FCC has established implementation schedules with each of the major wireless carriers and has recently taken enforcement actions against wireless carriers that failed to meet deadlines. According to FCC, the Commission does not have clear jurisdiction over wireline carriers with regard to wireless E911 implementation and looks to the state public utility commissions, which have clear and sufficient authority, to take the lead."

This report was prepared for Sen. Conrad Burns (R-MT), Chairman of the Senate Commerce Committee's Subcommittee on Communications. Sen. Burns is the sponsor of S 1250, the "Enhanced 9-1-1 Emergency Communication Act of 2003", and has sponsored other E911 legislation in the past. S 1250 bill has been approved by the Senate Commerce Committee. The House passed a related bill last week. See, story titled "House Passes E-911 Implementation Act" in TLJ Daily E-Mail Alert No. 773, November 6, 2003.

Sen. Burns stated in a release that "My primary concern is to improve the level of America’s public safety in a post-September 11th world, and I believe this is best accomplished through the creation of a seamless emergency response infrastructure".

11/12. Charles Brown died. He was named Chairman and CEO of AT&T in 1979, replacing John DeButts. He presided at the time of the Federal Communications Commission's (FCC) Second Computer Inquiry (Computer II) decision, William Baxter's tenure as Assistant Attorney General in charge of the Antitrust Division, and Judge Harold Greene's divestiture decree. He presided over the breakup of the old Bell system. He stepped down in 1986. See, for example, The Fall of the Bell System: A Study in Prices and Politics, by Peter Temin and Louis Galambos.

10/20. The Computer Systems Policy Project (CSPP) announced in a release that Bruce Mehlman will become its Executive Director on December 1, 2003. He is currently the Assistant Secretary for Technology Policy at the Department of Commerce (DOC). He will replace Ken Kay, who will open an office of Infotech Strategies in Tucson, Arizona. The CSPP is a CEO lead technology association. Its members are Dell, HP, Motorola, Intel, Unysis, EMC, NCR, and IBM.

11/12. Federal Communications Commission (FCC) Commissioner Kevin Martin announced that Jason Williams will be a Special Assistant in his office, and that Lori Alexiou will be his Confidential Assistant. An FCC release states that "Williams joined the Commissioner's staff after completing his second year of law school at the University of Montana School of Law. While in law school, Mr. Williams interned for Blackfoot Telephone Cooperative, Inc., where he assisted the general counsel with a wide variety of regulatory and legal issues. Before law school, Mr. Williams served as Manager, Regulatory Affairs at XO Communications. He also worked in the business development group at NeuStar, Inc." Alexiou was previously a legal secretary at the law firm of Wiley Rein & Fielding. Martin also previously worked at Wiley Rein.

The House will meet at 10:00 AM for legislative business. See, Republican Whip Notice.

Day one of a three day convention of The Federalist Society. At 1:15 - 2:45 PM there will be a panel discussion titled "Media Ownership Rules". The participants will be Federal Communications Commission (FCC) Chairman Michael Powell, Mark Cooper (Consumer Federation of America), Raymond Gifford (Progress & Freedom Foundation), David Reinhard (The Oregonian), and Judge Stephen Williams (U.S. Court of Appeals for the DC Circuit). See, schedule. Location: East Room, Mayflower Hotel.

9:00 AM. Phil Bond, Under Secretary of Commerce for Technology, and Sharon Cohen, Vice President for Government Relations of the Biotechnology Industry Organization, will hold a press conference to release  Department of Commerce report titled "A Survey of the Use of Biotechnology in U.S. Industry". See, notice. Location: Room 902, Hart Building.

9:00 AM - 12:00 NOON. The Telecommunications Service Priority (TSP) System Oversight Committee will meet. See, notice in the Federal Register, October 10, 2003, Vol. 68, No. 197, at Page 58725. Location: 2nd floor conference room, National Communications System (NCS), 701 South Courthouse Road, Arlington, VA.

9:00 AM - 3:45 PM. The National Institute of Standards and Technology's (NIST) Advanced Technology Program Advisory Committee hold a partially closed meeting. See, notice in the Federal Register, October 27, 2003, Vol. 68, No. 207, at Page 61189. Location: NIST, Administration Building, Employees' Lounge, Gaithersburg, MD.

POSTPONED. 9:30 AM. The Senate Commerce Committee will hold a hearing to examine the General Accounting Office's (GAO) study [94 pages in PDF] titled "Telecommunications: Issues Related to Competition and Subscriber Rates in the Cable Television Industry". The witnesses will be Mark Goldstein (GAO), James Robbins (P/CEO of Cox Communications), George Bodenheimer (President of ESPN and ABC Sports), Gene Kimmelman (Consumers Union), Robert Sachs (P/CEO of the NCTA), Rodger Johnson (P/CEO of Knology). See, story titled "GAO Releases Study on Cable Industry", in TLJ Daily E-Mail Alert No. 766, October 27, 2003. Press contact: Rebecca Hanks (McCain) at 202 224-2670 or Andy Davis (Hollings) at 202 224-6654. Location: Room 253, Russell Building.

9:30 AM. The Federal Communications Commission (FCC) will hold a meeting. Location: FCC, 445 12th Street, SW, Room TW-C05 (Commission Meeting Room).

9:30 AM. The Senate Judiciary Committee will hold a an executive business meeting. The agenda includes consideration of judicial and Department of Justice nominees. Press contact: Margarita Tapia (Hatch) at 202 224-5225 or David Carle (Leahy) at 202 224-4242. See, notice. Location: Room 226, Dirsksen Building.

9:30 AM. The U.S. Court of Appeals (DCCir) will hear oral argument in Adams Comm Corp v. FCC, No. 02-1232. Judges Randolph, Roberts and Williams will preside. Location: Courtroom 20, 333 Constitution Ave. NW.

10:00 AM. The Internal Revenue Service (IRS) will hold a hearing regarding its notice of proposed rulemaking (NPRM) regarding computation and allocation of the credit for increasing research activities for members of a controlled group of corporations or a group of trades or businesses under common control. The rules implement the research and development tax credit codified at 26 U.S.C. § 41. Location: IRS Auditorium, 7th Floor, 1111 Constitution Ave., NW. See, notice in the Federal Register, July 29, 2003, Vol. 68, No. 145, at Pages 44499 - 44506.

2:00 - 3:00 PM. The Heritage Foundation will host an event titled "Beyond Do-Not-Call: The FTC Agenda". The speakers will be Timothy Muris, Chairman of the Federal Trade Commission (FTC), and James Gattuso of the Heritage Foundation. Refreshments will be provided. See, notice. Location: Heritage Foundation, Lehrman Auditorium, 214 Massachusetts Ave., NE.

6:00 - 9:15 PM. The D.C. Bar Association will host a CLE course titled "How to Litigate an Intellectual Property Case Series: Part 1 How to Litigate a Trademark Case". Prices vary. For more information, call 202 626-3488. Location: D.C. Bar Conference Center, 1250 H Street NW, B-1 level.

Day two of a three day convention of The Federalist Society. At 3:35 - 5:15 PM there will be a panel discussion titled "NGO Influence Over the Harmonization of International Intellectual Property Policy". The participants will be Judge Edward Damich (U.S. Court of Federal Claims), Jon Dudas (Deputy Director of the U.S. Patent and Trademark Office), Ralph Oman (Dechert Price & Rhoads), Jerome Reichman (Duke University School of Law), and Judge Randall Rader (U.S. Court of Appeals for the Federal Circuit). See, schedule. Location: Chinese, Mayflower Hotel.

RESCHEDULED FOR NOVEMBER 20. 9:30 AM. The U.S. Court of Appeals (DCCir) will hear oral argument in CA Metro Mobile Comm v. FCC, No. 02-1370. Judges Sentelle, Henderson and Garland will preside. Location: 333 Constitution Ave. NW.

12:00 NOON - 2:00 PM. The Progress and Freedom Foundation (PFF) will host a panel discussion titled "Copyright Protection and the Broadcast Flag". The speakers will be Rick Chessen (Chair of the FCC's Digital Television Task Force), Mike Godwin (Public Knowledge), William Adkinson (PFF), Robert Atkinson (Progressive Policy Institute), and James DeLong (PFF). There will be a buffet lunch. See, notice [PDF]. Location: Room 1539, Longworth Building.

12:30 PM. The Federal Communications Bar Association's (FCBA) Legislation Committee will host a brown bag lunch. The topic will be the "The Northpoint Issue: Will Congress Provide Spectrum Without an Auction? The View From the Hill". For more information, contact Lee Carosi at 202 224-0990 or Lee_Carosi@commerce.senate.gov. Location: Wiley Rein & Fielding, 1750 K Street Building, 5th Floor Conference Room.

11:00 - 12:30 PM. The Heritage Foundation will host an event titled "Preserving Privacy, Providing Security: Information And Technology At The DHS". The speakers will be Nuala Kelly (Chief Privacy Officer of the Department of Homeland Security) and Paul Rosenzweig (Heritage Foundation). See, notice. Location: Heritage Foundation, Lehrman Auditorium, 214 Massachusetts Ave., NE.

Deadline to submit written comments to the Trade Policy Staff Committee (TPSC) regarding negotiations with Bahrain on a free trade agreement (FTA). The TPSC seeks comments and testimony to assist the Office of the U.S. Trade Representative (USTR) on many topics, including "Relevant trade-related intellectual property rights issues that should be addressed in the negotiations" and "Existing barriers to trade in services between the United States and Bahrain that should be addressed in the negotiations". See, notice in the Federal Register, August 25, 2003, Vol. 68, No. 164, at Pages 51062 - 51064.

8:00 AM - 5:30 PM. The Department of Commerce's (DOC) National Institute of Standards and Technology's (NIST), Judges Panel of the Malcolm Baldrige National Quality Award will hold the first day of a four day closed meeting. See, notice in the Federal Register, October 27, 2003, Vol. 68, No. 207, at Pages 61189 - 61190. Location: NIST, Building 222, Red Training Room, Gaithersburg, MD.

9:00 AM - 4:15 PM. The Federal Communications Commission (FCC) will hold electronic licensing and filing systems training (ECFS, EDOCS, ULS, CDBS and IBFS). Location: FCC, 445 12th Street, SW, Room TW-C305 (Commission Meeting Room).

9:30 AM. The U.S. Court of Appeals (DCCir) will hear oral argument in Mountain Communications, Inc. v. FCC, No. 02-1255. Judges Sentelle, Garland and Silberman will preside. Location: 333 Constitution Ave., NW.

9:30 AM. The Senate Judiciary Committee will hold a hearing "to examine America after the 9/11 terrorist attacks". Press contact: Margarita Tapia (Hatch) at 202 224-5225 or David Carle (Leahy) at 202 224-4242. Location: Room 226, Dirsksen Building.

12:15 PM. The Federal Communications Bar Association's (FCBA) Cable Practice Committee will host a brown bag lunch. The speaker will be Stacy Fuller, Legal Advisor to FCC Commissioner Kathleen Abernathy. RSVP to ttruong@dlalaw.com. Location: Dow Lohnes & Albertson, 1200 New Hampshire Ave., NW, 8th Floor.

2:30 PM. The Senate Governmental Affairs Committee will hold a hearing on the nomination of James Loy to be Deputy Secretary of Homeland Security. Room 342, Dirksen Building.

8:00 AM - 5:30 PM. The Department of Commerce's (DOC) National Institute of Standards and Technology's (NIST), Judges Panel of the Malcolm Baldrige National Quality Award will hold the second day of a four day closed meeting. See, notice in the Federal Register, October 27, 2003, Vol. 68, No. 207, at Pages 61189 - 61190. Location: NIST, Building 222, Red Training Room, Gaithersburg, MD.

9:00 AM. Day one of a two day meeting of the Department of Commerce's (DOC) Bureau of Industry and Security's (BIS) Information Systems Technical Advisory Committee. This meeting will be partially closed. The agenda of the open portion of the meeting on November 19 includes a discussion of field programmable gate arrays. See, notice in the Federal Register, November 3, 2003, Vol. 68, No. 212, at Pages 62279. Location: DOC, Hoover Building, 14th Street Pennsylvania and Constitution Avenues, Room 3884.

9:30 AM. The Senate Judiciary Committee will hold a hearing on pending judiciary nominations. Press contact: Margarita Tapia (Hatch) at 202 224-5225 or David Carle (Leahy) at 202 224-4242. Location: Room 226, Dirsksen Building.

10:00 AM. The House Commerce Committee's Subcommittee on Commerce, Trade, and Consumer Protection will hold a hearing titled "Cybersecurity & Consumer Data: What's at Risk for the Consumer?". The hearing will be webcast. See, notice. Press contact: Ken Johnson or Jon Tripp at 202 225-5735.

10:30 AM. The House Commerce Committee's Subcommittee on Telecommunications and the Internet will hold a hearing titled "Digital Dividends and Other Proposals to Leverage Investment in Technology". The hearing will be webcast by the Committee. Press contact: Ken Johnson or Jon Tripp at 202 225-5735. See, notice. Location: Room 2322, Rayburn Building.

12:00 NOON. The Federal Communications Bar Association's (FCBA) Transactional Practice Committee will host a brown bag lunch. For more information, contact Laurie Sherman laurabsherman@hotmail.com. Location: Latham & Watkins, 555 11th Street, NW.

12:15 PM. The Federal Communications Bar Association's (FCBA) Online Communications Committee will host a brown bag lunch. The topic will be "FCC's Cable Broadband Access Order". The speakers will be Mike Schooler (NCTA), Cheryl Leanza (Media Access Project), and Geoff Cook (Cole Raywid). RSVP to Evelyn Opany at 202 689-7163. Location: Piper Rudnick, 1200 19th Street, NW.