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  <title>US Patent Office '906 Letter</title>
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<p><a href="/"><img src="/Icons/WWW/w3c_home" alt="W3C" width="72"
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<p>28 October 2003</p>

<p><span style="text-decoration: underline">By Facsimile &amp; Overnight
Mail</span><br />
Hon. James E. Rogan<br />
Under Secretary of Commerce for Intellectual Property<br />
Director, United States Patent and Trademark Office<br />
Suite 906<br />
Crystal Park 2<br />
2121 Crystal Drive<br />
Alexandria, VA 22202</p>

<p>Dear Under Secretary Rogan,</p>

<p>As the Director of the World Wide Web Consortium, the global
standard-setting body for the Web, I write to urge you to consider the impact
of U.S. Patent No. 5,838,906 ("the '906 patent") on World Wide Web users,
software developers, and the many commercial and non-commercial organizations
that depend on the Web every day around the world.</p>

<p>On October 24 2003, we filed a statement under 35 U.S.C. Section 301
presenting prior art not considered by the Patent and Trademark Office in
issuing the '906 patent and explaining why the claims of the patent are
invalid based upon that prior art. For the reasons given in our statement, 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.</p>

<p>The impact of the '906 patent reaches far beyond a single vendor and even
beyond those who could be alleged to infringe the patent. The existence of
the patent and associated licensing demands compels many developers of Web
browsers, Web pages, and many other important components of the Web to
deviate from the fundamental technical standards that enable the Web to
function as a coherent system. In many cases, those who will be forced to
incur the cost of modifying Web pages or software applications <strong>do not
even themselves infringe the patent</strong> (assuming it is even valid).
Given the interdependence of Web technology, those who wrote Web pages or
developed software in reliance on Web standards will now have to retrofit
their systems in order to accommodate deviations from standards forced by the
'906 patent. These deviations will either reflect individual decisions by
developers about how to avoid infringement liability, or will be an effort to
be compatible with decisions individual vendors make in the course of their
own re-design. What's more, the inevitable fragmentation and re-tooling costs
caused by the ability to enforce this patent, which we believe to be invalid,
cannot even be remedied by individual parties choosing simply to pay
licensing fees to the patent holder. If some parties are granted a license,
while others either don't or can't obtain one, we will still be left with
impared functionality of the Web. Global standards have been the basis of
assuring interoperability on the Web. 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.</p>

<p>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.</p>

<p>The Web functions <strong>only</strong> on the strength of its common
standards. The costs of widely divergent implementation of standards is borne
by all who rely on the Web. The enormous expense and the more general threat
the '906 patent poses to the Web community is completely unwarranted because
the '906 patent is, we firmly believe, invalid in view of the prior art
described in our filing to the Patent Office under the authority of 35 U.S.C.
Section 301.</p>

<h2>The World Wide Web Consortium and Global Web Standards</h2>

<p>W3C -- an international organization made up of over 350 members from
industry, academe, users' organizations and public policy experts -- is
responsible for setting the core technical standards for the World Wide Web.
Since the infancy of the Web in 1994, W3C has led the development of Web
standards and, with these standards, established the basic architecture for
the World Wide Web. We have produced over 50 technical Recommendations
ranging from the HyperText Markup Language (HTML) and the Extensible Markup
Language (XML) to digital signatures, guidelines for Web accessibility, and
the Platform for Privacy Preferences (P3P). These specifications are
developed through a collaborative process that brings technical and social
requirements to working groups of engineers and scientists from around the
world. I founded W3C in 1994 and serve as the Director of the Consortium.</p>

<h2>Practical Impact on Web Users</h2>

<p>The practical impact of withholding unrestricted access to the patented
technology from use by the Web community will be to substantially impair the
usability of the Web for hundreds of millions of individuals in the United
States and around the world. The object embedding technology supposedly
covered by the '906 patent provides critical flexibility to Web browsers
giving users seamless access to important features that extend the
capabilities of Web browsers. Nearly every Web user relies on plug-in
applications that add services such as streaming audio and video, advanced
graphics and a variety of special purpose tools. Some examples of popular
plug-in software that rely on object embedding include:</p>
<ul>
  <li>multimedia applications that extend the Web from text and simple
    graphics to high quality interactive video and audio: RealAudio and
    RealVideo streaming, Apple QuickTime video, and Macromedia Flash and
    Shockwave players.</li>
  <li>rich document formats: plug-ins such as Adobe's PDF document Reader
    enable the incorporation of sophisticated document formats in standard
    Web pages;</li>
  <li>advanced scripting languages: languages such as Sun Microsystems's Java
    are implemented through plug-in tools that enable a huge variety of Web
    site customizations</li>
</ul>

<p>The power of plug-in components on the Web not only gives users the
benefits of new state-of-the-art services, but also enables continued
innovation in new technologies that are not yet part of the accepted base of
Web standards. The ability to embed content to be processed by external
applications has enabled early testing and adoption of emerging standards
such as Scalable Vector Graphics (SVG). New standards such as SVG develop
faster than the rate at which many users actually upgrade their browser
software. With the ability to plug in new software components, such as SVG
readers, users can take advantage of new technologies simply by installing
software plug-ins, as opposed to having to upgrade their entire browser.
Knowing that this capability is available to users encourages Web page
designers and those who write software that creates Web pages to use the
latest new standards with the knowledge that users can simply plug in the
tools needed to render those new data formats. Without the ability to call
external code from within a browser window, which is the feature apparently
claimed in the '906 patent but which was squarely in the prior art, the cycle
of innovation on the Web would be substantially retarded.</p>

<p>Changes forced by the '906 patent will also have a <strong>permanent
impact on millions of Web pages that may have historical importance</strong>
but are no longer actively maintained by their creators. In many cases these
pages contain non-commercial content or older material that is not generating
revenue, hence there is no way to cover the cost of modifying those pages to
bring them into compliance with whatever changes are made in response to the
'906 patent. The Web community has traditionally recognized the problem of
historically-important but dormant pages and has therefore sought to ensure
'backward compatibility' when developing new technical standards and new
software. However, in this case, the behavior of those historically important
pages will be significantly impaired because the changes were forced by the
'906 patent, without consideration of backward compatibility.</p>

<h2>Invalidity</h2>

<p>For as much as the disruptive impact of the '906 patent is clear, there
are significant questions regarding its validity. The '906 patent is
generally directed to a Web browser's ability 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, in which case the browser would invoke a 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 itself acknowledges as prior art,
is that, with prior art browsers, the image is displayed in a new window,
whereas, with the '906 browser, the image is displayed in the same window as
the rest of the Web page. 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) was already described in the prior art publications submitted in
our section 301 filing.</p>

<p>The claims of the '906 patent are plainly not patentable given this prior
art. Moreover, even prior to the development of this feature in Web browsers,
software developers had recognized the usefulness of adding a similar feature
to prior art word processing programs, which display documents instead of Web
pages. For example, more than a year before the claims of the '906 patent was
filed, a word processing program called Write, provided with Microsoft
Windows 3.1, enabled users to embed into Write documents graphic images
created with the Paint program. The Write program would then invoke the Paint
program to display the illustration within the same window as the rest of the
document. Thus even without considering the several prior art publications
annexed to our Section 3.01 filing, it is apparent that the '906 patent added
nothing to the art -- it only applied a well known concept in the display of
documents to the display of a particular kind of document -- Web pages. Our
301 filing provides a more detailed analysis of some of this art.</p>

<h2>Disruption of Global Web Standards</h2>

<p>The barriers imposed on the information technology industry by the '906
patent are of such concern because they cause fragmentation in the basic
standards that weave the Web together. Denial of access to any particular
technology is a problem that engineers can successfully address, provided
they have knowledge of the barrier <strong>before</strong> it becomes part of
a standard. However, as the '906 patent threatens widely deployed, standard
technology, the damage is magnified. If the '906 patent remains in force, Web
page designers and software developers will face a dangerous dilemma. They
may comply with globally-recognized Web standards resulting in an inadequate
user experience of their content. Or, they may attempt to design to the
various work-arounds chosen by different browser developers and face the
uncertainly of not knowing who will be able to use their content or
applications properly. W3C's development and the industry's acceptance of a
single common base of standards for Web infrastructure arose out of a need to
avoid just this sort of dilemma. The '906 patent is a substantial setback for
global interoperability and the success of the open Web.</p>

<p>Recognizing the sensitivity of Web standards to patent licensing demands,
the W3C has recently enacted a formal patent policy that requires
specifications suggested for standardization to be implementable on a
royalty-free basis. The disruption of the Web caused by the '906 patent
certainly underscores the reasons for W3C's patent policy. In the history of
the Web, low legal and financial barriers to use of Web standards have been
as important as ease of deployment from a technical perspective. W3C
Recommendations are often implemented in a large number of interoperable
individual software environments. Indeed, the Web standards design process
depends on the implementation experience of a large number of developers to
assure that each component of the Web is well designed and satisfies the
needs of the increasingly diverse communities of Web users. What's more, the
diversity of content represented by the over three billion Web pages is only
possible because the creators of each of those pages is able to use key Web
standards such as HTML and Cascading Style Sheets (CSS) without paying a
royalty. While it is not beyond imagination that an existing standard might
be found to require payment of patent royalties, there is no reason to burden
the entire Web community based on a patent that is invalid.</p>

<p>None of these concerns were examined at trial in Chicago. Just as the
trial court failed to consider the merits of the art we present in our
Section 301 filing, it also failed to consider the large impact of its ruling
on the Web. While that case was nominally a bilateral dispute between a
patent holder and an alleged infringer, it should be clear now that the
ruling and particularly its failure to consider relevant prior art will
likely have a highly detrimental impact on the entire Web community unless
you initiate reexamination of the patent..</p>

<h2>Conclusion</h2>

<p>The '906 patent will cause cascades of incompatibility to ripple through
the Web. I hope that you will take into account the fact that the material we
have presented in our Section 301 filing bears directly on the validity of
the '906 patent, that the merits of this prior art were not considered at
trial, and that allowing the patent holder to control the use of technology
required for compliance with World Wide Web standards is having a
substantially disruptive effect on the Web industry and users both in the
United States and around the world. I would be grateful for the chance to
meet with you on this matter at your earliest convenience. Please feel free
to have you or your staff contact Daniel Weitzner, Technology and Society
Domain Lead at the W3C at &lt;djw@w3.org&gt; or +1 202 364 4750.</p>

<p>Thank you for your consideration of this important matter.</p>

<p></p>

<p>Sincerely,</p>

<p></p>

<p>Tim Berners-Lee<br />
Director, World Wide Web Consortium</p>
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