Thank you for sharing!

Your article was successfully shared with the contacts you provided.
It turned out to be the most important thing they ever wrote. But when Charles Kulas and Charles Krueger drafted the University of California’s patent covering Web browser technology, it was just another in a long list of legal assignments. Eight years later, the seemingly innocuous patent had become the centerpiece of an expensive scuffle pitting the University of California and its exclusive patent licensee Eolas Technologies Inc. against Microsoft Corp. And for Kulas and Krueger, it was a test of how well they had done their work. “I was sitting on pins and needles,” Kulas said. “It was frightening. Now it is exhilarating. Most people go through their whole careers without having a patent litigated to this level.” Their work was vindicated two weeks ago when a federal jury in Chicago found that Microsoft had infringed the patent and ordered the software giant to pay UC and Eolas $520.6 million in damages. The university’s attorney, Martin Lueck, a partner at Minneapolis-based Robins, Kaplan, Miller & Ciresi, said it was the second-largest verdict ever awarded in a patent case. The UC patent covers browser plug-ins, the tools that enable Web page developers to embed interactive programs in Web pages. The technology is used with video players, games, virtual real estate tours and other interactive content on the Web. UC proved at trial that Microsoft used the technology in its Internet Explorer browser. Kulas wrote the patent in 1994 while he was an associate at Townsend and Townsend and Crew. When he left the firm the following year, his fellow Townsend lawyer Krueger took it over and worked on the claims that were ultimately cleared by the U.S. Patent and Trademark Office in 1998. Last week, the two talked about having their work scrutinized so closely. They spoke by phone from San Diego, where the two longtime friends were vacationing with their wives and learning to surf. As a patent prosecutor, “you write 40 to 60 patents per year,” Kulas said. “You never know if one of several hundred you write will be put under the highest scrutiny by lawyers in the country.” “We saw every word we wrote attacked in every possible way,” Krueger said. And while they are happy about the verdict, he said they aren’t cutting any cake yet, since the case isn’t over. Microsoft’s lead attorney in the case, David Pritikin, a partner at Sidley Austin Brown & Wood’s Chicago office, could not be reached for comment. But Microsoft announced after the verdict that it would appeal the decision to the U.S. Court of Appeals for the Federal Circuit. “It’s important to note that the court has already rejected the claims that there was any willful infringement,” Microsoft said in a release. “We believe the evidence will ultimately show that there was no infringement of any kind, and that the accused feature in our browser technology was developed by our own engineers based on preexisting Microsoft technology.” The patent covers technology developed by a research team at UC-San Francisco. At the time, the team was working on software systems to give medical students and medical practitioners interactive access to 3-D medical images over the Internet. Soon after filing the patent application, the group founded Eolas Technologies. The jury determined damages based on a royalty of $1.47 for each copy of Windows that Microsoft sold from the time the patent issued in November 1998 through September 2001. Lueck said the university would ask U.S. District Judge James Zagel to extend the royalty period through 2003. Krueger, who has been a patent prosecutor for 20 years, said most patents cover small improvements on an invention. “There are few inventions that the public would get excited about, and this is one of the few I worked on,” he said. “It has been kind of the capstone of my career.” Krueger and Kulas each have their own firms now. Kulas, who had returned to Townsend after a two-year stint at Sony Corp. of America, left again in April to found Carpenter & Kulas with former Townsend of counsel John Carpenter. Based in Palo Alto, the firm does patent and trademark prosecution, licensing and some litigation. Krueger, who started at Townsend in 1983, left the firm two years ago to become a solo practitioner in Walnut Creek. The UC victory over Microsoft has certainly given them something to brag about. “I can say I’ll write a $1 million patent for $10,000,” Kulas joked. “But I haven’t gotten any extra business.”

This content has been archived. It is available exclusively through our partner LexisNexis®.

To view this content, please continue to Lexis Advance®.

Not a Lexis Advance® Subscriber? Subscribe Now

Why am I seeing this?

LexisNexis® is now the exclusive third party online distributor of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® customers will be able to access and use ALM's content by subscribing to the LexisNexis® services via Lexis Advance®. This includes content from the National Law Journal®, The American Lawyer®, Law Technology News®, The New York Law Journal® and Corporate Counsel®, as well as ALM's other newspapers, directories, legal treatises, published and unpublished court opinions, and other sources of legal information.

ALM's content plays a significant role in your work and research, and now through this alliance LexisNexis® will bring you access to an even more comprehensive collection of legal content.

For questions call 1-877-256-2472 or contact us at [email protected]


ALM Legal Publication Newsletters

Sign Up Today and Never Miss Another Story.

As part of your digital membership, you can sign up for an unlimited number of a wide range of complimentary newsletters. Visit your My Account page to make your selections. Get the timely legal news and critical analysis you cannot afford to miss. Tailored just for you. In your inbox. Every day.

Copyright © 2020 ALM Media Properties, LLC. All Rights Reserved.