HTML PAG Report

Status of this document:

This is the final version approved by the PAG, published 22 March 2004.

Background

The HTML Patent Advisory Group has operated under its Charter since 24 September 2003. As stated in the charter:

"The mission of this Patent Advisory Group is to study issues for HTML-related Working Drafts and Recommendations raised by the court case of Eolas v. Microsoft and US Patent 5,838,906. The court ordered that in the specific case at hand, royalty fees should be paid to the holder of US Patent 5,838,906. As a consequence, this PAG is triggered by condition 2) in Section 4 of the CPP, which states that a PAG can be created in the case of 'discovery of specific patent claims likely to be essential that are not available on RF terms'."

Work of the PAG

The PAG studied the issues in its charter. On 17 October 2003, the PAG endorsed the proposal that the W3C Director send a letter to the United States Patent and Trademark Office (USPTO) requesting a reexamination of US Patent 5,838,906 ("'906 Patent"), supported by a Section 301 filing detailing prior art. The letter was sent, and the USPTO subsequently ordered the reexamination.

Conclusion

The Charter requests that:

"The HTML PAG should:

1. advise the W3C Director on the probability that the above patent claims will in practice result in a requirement that implementers of HTML take licenses from Eolas for essential claims for HTML-related specifications that deviate from the W3C Royalty-Free Licensing Requirements as defined in the W3C Patent Policy
2. attempt to resolve concerns raised by the claims in the subject patent."

We are gratified that on 26 February, 2004, the USPTO issued a rejection of all claims of the '906 patent. While this is not a final decision from the PTO, and still leaves opportunity for the patentee to contest the finding, we see no immediate need for further action by W3C at this time.

In response to Question 1, the only known target of an enforcement action by Eolas, Microsoft, has decided not to make changes which impact users of HTML (see Microsoft's public announcement on 29 January 2004). Our answer to question 1 is to observe that current litigation has not either required or compelled implementers to deviate from the W3C standard, to the best of our knowledge.

Should any of the following occur:

1. Implementors of HTML applications introduce changes into their products which impacts compatibility with W3C HTML specifications in order to avoid infringement of the '906 patent;
2. The W3C is informed by parties that they are the target of an infringement action which could require them to no longer implement current HTML specifications;
3. Legal or administrative action related to the PTO's re-examination of the '906 patent or related matters requires comment and/or intervention from the Web community;

this PAG would recommend to the Director to convene a PAG to address the issues at hand.

Respectfully submitted,

Alan Kotok

HTML PAG Chair

Alan Kotok
kotok@w3.org
$Date: 2004/05/17 14:29:00 $