SAN FRANCISCO — A high-stakes patent fight over “interactivity” on the Web is rearing its head again following a bloody battle last year in the Eastern District of Texas.
Eolas Technologies Inc., a licensing arm of the University of California, has been sending cease-and-desist letters to some of the same companies it fought—and lost to—in a closely watched 2012 jury trial. Eolas also has asked the U.S. Patent and Trademark Office to take another look at its patents under a provision of the 2012 America Invents Act.
Despite having won in Texas, Google decided to strike first this week, filing for declaratory judgment in the Northern District of California that its websites, software and Chrome browser don’t infringe Eolas’ patents.
Represented by Kasowitz, Benson, Torres & Friedman, Google says the new patents being asserted by Eolas and the Regents are “siblings” of patents that have already been litigated, with “every asserted claim … struck down as invalid.” J.C. Penney, another company Eolas sued in East Texas, filed a nearly identical suit on Tuesday signed by senior managing counsel Derek Lipscombe.
The patents at issue describe “a system allowing a user of a browser program on a computer connected to an open distributed hypermedia system to access and execute an embedded program object.”
Backed by McKool Smith and Robins, Kaplan, Miller & Ciresi, Eolas asserted two similar patents, known as the ’906 and ’985, against Microsoft in 2003. Eolas won a $521 million verdict before negotiating a license. The company then sued Google, Amazon, Yahoo and 20 other companies, with the tech industry portraying the fight as a showdown over who invented the Internet. The companies brought in Internet pioneers including MIT professor Tim Berners-Lee to testify before U.S. District Judge Leonard Davis, and a jury eventually found the inventions to be obvious and anticipated—though not before a dozen companies settled out.
Since then Eolas has sued other companies including Facebook and The Walt Disney Co. in Texas over unadjudicated claims on the ’906 and ’985 patents, plus new claims under its related ’293 and ’662 patents. All four patents trace to a 1994 patent application filed by three UC–San Francisco software researchers. They are set to expire in November 2015.
Earlier this month, Eolas moved to stay the Texas litigation while it asks the PTO for supplemental examination of all four patents. If Eolas can make out a “substantial new question of patentability,” it will get an opportunity to bolster the patents via full ex parte reexamination.
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