PUBPAT News: Patent Office Grants PUBPAT Requests to Reexamine EpicRealm Dynamic Website Patents

Date:  Mon, 2007-01-29

Dr. David E. Martin January 29, 2007

PATENT OFFICE GRANTS PUBPAT REQUESTS TO REEXAMINE EPICREALM DYNAMIC WEBSITE PATENTS: Government Finds PUBPAT Raised ‘Substantial Questions’ Regarding Patent Licensing Company’s Widely Asserted Patents

New York, NY — January 29, 2007 — The U.S. Patent & Trademark Office has granted each of the Public Patent Foundation’s (“PUBPAT”) formal requests to review two patents held by EpicRealm Licensing Inc. that the patent licensing company is widely asserting against providers of dynamic websites, i.e. websites that can produce custom responses to individual visitors or users. In its filings, PUBPAT had submitted prior art that the Patent Office was not aware of when reviewing the applications that led to the two patents and described in detail how the prior art invalidates the patents. The Patent Office found that PUBPAT’s filings indeed raised “substantial questions” regarding the validity of the EpicRealm patents.

Despite no longer making any product or service itself, EpicRealm is asserting the patents against those that provide information and services to the public over the internet, a group which includes many private citizens, public service organizations and even the U.S. Patent and Trademark Office itself. EpicRealm’s assertion of the patents has included the filing of infringement lawsuits against more than a dozen mere end users of allegedly infringing web site systems. PUBPAT challenged the patents because EpicRealm’s aggressive assertion of them is causing substantial public harm by threatening the way in which much of the most useful aspects of the Web are provided to the public. Having now granted PUBPAT’s requests to review the patents, the Patent Office will turn to decide whether the patents deserve to exist or not.

“EpicRealm is yet another example of the growing trend of businesses whose sole purpose and activity is to sue others for patent infringement, but the fact that they are claiming rights over the vast majority of websites based on these patents that the Patent Office has now found have substantial issues relating to their validity only makes the matter that much more unsettling,” said Dan Ravicher, PUBPAT’s Executive Director. “Perhaps some day soon Congress will fix the patent system so that such exploitation cannot occur. In the interim, with respect to these specific patents, now that the Patent Office has looked at the new evidence we provided and agreed with us that there is substantial doubt about the worthiness of the patents, we expect that the Patent Office will withdraw the patents from issuance.”

Copies of the U.S. Patent Office’s Orders Granting PUBPAT’s Requests for Reexamination against the two patents EpicRealm is widely asserting dynamic websites can be found at http://www.pubpat.org/epicrealmdynamicwebsites.htm