Cover Pages: Patents and Open Standards  SEARCH | ABOUT | INDEX | NEWS | CORE STANDARDS | TECHNOLOGY REPORTS | EVENTS | LIBRARYSEARCHAdvanced SearchABOUTSite MapCP RSS ChannelContact UsSponsoring CPAbout Our SponsorsNEWSCover StoriesArticles & PapersPress ReleasesCORE STANDARDSXMLSGMLSchemasXSL/XSLT/XPathXLinkXML QueryCSSSVGTECHNOLOGY REPORTSXML ApplicationsGeneral AppsGovernment AppsAcademic AppsEVENTSLIBRARYIntroductionsFAQsBibliographyTechnology and SocietySemanticsTech TopicsSoftwareRelated StandardsHistoricLast modified: June 15, 2006LibraryPatents and Open Standards"It was never the object of patent laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufactures. Such an indiscriminate creation of exclusive privileges tends rather to obstruct than to stimulate invention. It creates a class of speculative schemers who make it their business to watch the advancing wave of improvement, and gather its foam in the form of patented monopolies, which enable them to lay a heavy tax on the industry of the country, without contributing anything to the real advancement of the arts. It embarrasses the honest pursuit of business with fears and apprehensions of unknown liability lawsuits and vexatious accounting for profits made in good faith." — U.S. Supreme Court, Atlantic Works vs. Brady, 1882"[Through the U.S. Patent Office] Any idiot can get a patent for something that should never be granted a patent." — Irving Wladawsky-Berger, IBM Vice President of Technology and Strategy (InfoWorld 2005-03-07)ContentsIntroduction: Patent Nonproliferation and DisarmamentWhy RAND is Not Appropriate for Internet Open StandardsWhy RAND is Appropriate for Internet Open StandardsA Way ForwardFor Individual CompaniesHewlett-PackardApple ComputerSun MicrosystemsO'Reilly & AssociatesHonorable MentionFor Standards BodiesInternet Engineering Task Force (IETF)Java Community ProcessOpen Application Group, Inc (OAGI)Open Geospatial Consortium (OGC)Organization for the Advancement of Structured Information Standards (OASIS)UN/CEFACTWorld Wide Web Consortium (W3C)For Business Leaders as Public ServantsPatent Learning Center: Some Case StudiesDDR/SDRAM (Rambus)eBook Transmission (E-Data/MediaBay)ebXML CPPA (IBM)Applets and Browser Plugins (Eolas/University of California)GIF Image Format (Unisys)Hyperlinking/Hypertext (British Telecom)IETF Sender ID Specification (Microsoft)JPEG (Forgent Networks)MPEG-4 (ISO/IEC JTC 1/SC 29/WG 11)W3C P3P (Intermind)RDF (Unified Data Technologies, Ltd.)Rights Expression Language (ContentGuard's XrML)Stylesheets: CSS, XSL (Microsoft)XPointer (Sun Microsystems)Patent ReformPatents: General ResourcesArticles, papers, news clippingsNotesIntroduction: Patent Nonproliferation and DisarmamentDisclaimer: Most content in this document was written in 2001 and early 2002, when broad consensus had been growing about the "astonishing stupidity" of the U.S. patent system and the consequent need for deep reform. Some progress had been made as of 2003 Q4, after which this became a not-actively-maintained document. Any judgments, analysis, or opinions offered (may) belong to the principal author or to other authors whose publications are cited; they may not be assumed to represent opinions held by OASIS management or by any website sponsor. See some parallel references in "XML and Digital Rights Management (DRM)."This document is about patents and IP licensing terms in the arena of open standards designed for the Internet. By "standards" we mean the de facto and de jure standards and specifications governing protocols and (meta-)markup languages that have come to provide a technological foundation for the Internet — standards which (until now) can be freely implemented without fear that someone will decide to begin levying license fees for their usage (e.g., TCP/IP, HTTP, FTP, TELNET, HTML, XML, P3P, CSS, XSL, SVG). By "open" we do not refer simply to standards produced within a democratic, accessible, and meaningfully "open" standards process; we refer to standards that can be implemented without asking for someone's permission or signing a license agreement which demands royalty payments or places the licensee under onerous obligations. We mean "open" in the sense of implementable within an open source framework, free of legal encumbrance. We mean "open standards" especially in the sense of Internet protocols and (meta-)markup languages that do not represent, nor have the potential to become, private tollbooths on the Internet highways.A great many issues in this discussion are unsettled, as revealed by is owned by Time Warner, Inc. and Microsoft Corporation, with Xerox Corporation holding a small equity interest. The company's website and marketing literature make sweeping claims about the breadth and depth of the ContentGuard patent portfolio "pertaining to the distribution of digital works and to any rights language", including the (trademarked) eXtensible rights Markup Language (XrML).On 2004-04-01, MPEG-21 Part 5 was published as an ISO Standard: ISO/IEC 21000-5:2004, Information technology — Multimedia framework (MPEG 21) — Part 5: Rights Expression Language [REL]. ISO MPEG REL defines "an XML-based language for expressing rights related to the use and distribution of digital content as well as access to services." ISO MPEG REL is based upon the proprietary XrML specification owned by ContentGuard. According to a June 01, 2004 message posted to the Atom-Syntax mailing list, ContentGuard believes "products or systems that implement either of the [XrML or ISO MPEG REL] specifications may infringe one or more of ContentGuard's patents and will need a patent license from us." Concrete discussions about license fees payable to ContentGuard "usually entail signing an NDA [non-disclosure agreement] before discussing actual fee structures." See the memo posted by Asbjørn Ulsberg, quoting Rajan Samtani (Director, Sales & Marketing, CONTENTGUARD, Inc.) in response to an inquiry about ContentGuard's XrML patents.[How] do ContentGuard's patent claims pose a substantial threat to the freedom of information in the Internet context? Interested readers should consider the following data, seeking to understand the combined significance. See also the analysis which follows items 1-5.ContentGuard claims to have "invented the rights expression language concept" [*]ContentGuard claims that its patents pertain "to the distribution of digital works and to any rights language" [*]ContentGuard has "submitted" XrML to MPEG-21, TV-Anytime, and OASIS; the company "plans to propose XrML to any standards organization seeking a Rights Language" [*]ContentGuard envisions XrML as a "single extensible rights language standard" broadly applicable to Internet domains in which transactions need to be governed by "rights and conditions in any part of a value chain," for example, web services, "financial services [portfolio analysis, real time video, on-line consulting, research reports], metadata, content management, content delivery and distribution, and access control, security services, ebooks, digital publishing, digital broadcasting, music, video, digital cinema, digital TV, and all other content/media types" [*]ContentGuard earlier [2000] offered royalty-free licensing of XrML, but in more recent statements [2002] has been promising "reasonable and non-discriminatory [RAND] terms and conditions" [*] Analysis of ContentGuard's ClaimsIf Xerox and Microsoft can succeed in a legal defense of ContentGuard's patent claims, and succeed in having XrML (and derivatives) incorporated into a significant proportion of Internet "trust" transactions under RAND royalty/licensing terms, the Internet will be profoundly changed -- to the severe detriment of the average user/consumer. Under that scenario, the analysis of Leslie Gornstein in Online Journalism Review may prove to be correct: "the information you get over your laptop, Palm or pen probably won't be free. And if it is free to peek at, you probably won't be able to copy and paste it, print it, look at it a second time, or store it on your hard drive in any way -- unless you pay for the privilege... What's scary about DRM is that there's nothing built into the forthcoming rights protection software that protects consumers' rights under fair use laws -- the same laws that allow people to tape their favorite TV shows. But [ContentGuard CEO Michael] Miron says assuring such rights is too much of a burden for his [ContentGuard] software team, arguing that every country has different intellectual property laws..."Whether the XeroxPARC/ContentGuard claims to have "invented the rights expression language concept" will withstand legal challenge is as yet (?) undetermined. Who knows what will happen once a public appeal has been issued for revelation of prior art, as was done in the case of P3P and the Intermind patent. From casual, non-legal investigation of the ContentGuard 'Sturdy Patent Portfolio' and a not-so-casual investigation of the early history of markup (1970s, 1980s), one could conclude that the notions granted "invention" and "US patent" status were ideas obvious to almost everyone who thought about and published on (GenCode, SGML) markup in the earliest years. The important pioneering work of Mark Stefik notwithstanding, one may question whether the ContentGuard claims would hold up under a worldwide concerted effort to legally overthrow them; see for example these US patents: #6,236,971 [November 10, 1997; May 22, 2001]; #5,638,443 [November 23, 1994; June 10, 1997] #5,634,012 [November 23, 1994, May 27, 1997]; #5,715,403 [November 23, 1994; February 3, 1998]; #5,629,980 [November 23, 1994; May 13, 1997].Readers need to understand the significance of ContentGuard's "contribution" (also called "submission") of the XrML specification to OASIS, MPEG-21, TV-Anytime (and potentially to "any standards organization seeking a Rights Language"). This act surrenders nothing of critical importance, though it can serve to deceive. While the "contribution" of the XrML specification to the OASIS TC process opens up future development of XrML to (potentially) a wider body of critical opinion, the submission itself does not diminish the public threat from ContentGuard's patented IP. As the ebXML community learned recently, donating the draft specification and donating the IPR are two different things. Because ContentGuard believes it has patents relevant to "any rights language," there is no potential risk in "offering" the specification to multiple standards organizations. For little or no effort/cost, putting XrML into play broadly within standards work can represent a few well-spent marketing dollars for XrML: visibility, prestige, legitimacy, international approval, and ubiquity. ContentGuard seems to have (?) elected OASIS as the principal custodian for XrML-TNG, but how the OASIS "standard" actually turns out in technical terms vis-à-vis MPEG-21 REL and XrML Version 2.0 could be inconsequential from ContentGuard's point of view. So long as XrML delivered into the hands of multiple standards bodies is conceived and characterized as a "rights language" or "rights expression language," ContentGuard can take this position: "The DTD/schema/code for XrML 2.0 can diverge (fork) in several ways under the requirements of the various standards organizations using XrML as a (contributed) basis for their rights language; XrML does not even need to survive as the official name; so long as the relevance of ContentGuard patents is sustained in all standards environments, the effective monopoly of ContentGuard on DRM is achieved."Most people see this plainly; Bill Rosenblatt's article in "DRM Watch Update" (April 02, 2002) serves as an example: "ContentGuard is able to relinquish control of OASIS' rights language design while retaining the ability to charge for licenses to the language. ContentGuard can do this because it holds patents on any rights language, not just XrML as it exists today. OASIS, unlike other standards bodies (such as the W3C), allows companies like ContentGuard to contribute technology that can be licensed for money, as long as it's on RAND (reasonable and nondiscriminatory) terms... ContentGuard's patents allow it to take legal action against other organizations that would advance their own rights language. As another important step towards market acceptance, ContentGuard will need to assure the industry that it does not intend to use its patent portfolio as a stick with which to beat other organizations. Only the passage of time will provide this assurance..." [DRM Standards. GiantSteps/Media Technology Strategies]Contrariwise, a document sponsored by ContentGuard recently addressed the XrML patent issues in this manner:"There are some concerns about XrML being the intellectual property of ContentGuard, and not yet being managed by an independent standards body. However, ContentGuard has made clear its intent to turn XrML over to an independent standards body and make their patents, if needed to implement a system using XrML, available under 'Reasonable and Nondiscriminatory' terms. Furthermore, they have recently announced their involvement with OASIS by chairing a new OASIS technical committee, The OASIS Rights Language Technical Committee, and will contribute XrML to this committee. With those two things in place, the question of XrML becoming the standard should rest on its merits as a rights expression language." [See: "Rights management and the new infrastructure for truly dynamic product development for publishers of all kinds." White Paper sponsored by ContentGuard, written by Bill Trippe for The Gilbane Report; April 23, 2002.]In this text, ContentGuard seems to suggest that the promise of RAND and the "contribution" of the XrML specification to an OASIS TC should eliminate public "concerns" about the patents. To the contrary: RAND implies a license to exact tariffs on a global scale, and "submission" to OASIS may imply eventual conferral of a "standards" seal of approval and legitimacy upon a legally encumbered specification. Thoughtful people will not be fooled by this kind of language.ContentGuard's attempt to position XrML as a "single extensible rights language standard" with broad applicability to Internet domains in which transactions need to be governed by "rights and conditions in any part of a value chain" may be viewed positively or negatively. Interoperable computing solutions are good. Monopolistic control of DRM transactions on a universal scale backed by RAND royalty fees is not good, and rightfully will be opposed. There is a certain appeal to the notion of a markup-based rights/security/permission framework applied to digital content from its inception (authoring) through editing and distribution; there is likewise a certain appeal to the notion of a DRM framework applicable to all of web services, "financial services [portfolio analysis, real time video, on-line consulting, research reports], metadata, content management, content delivery and distribution, and access control, security services, ebooks, digital publishing, digital broadcasting, music, video, digital cinema, digital TV, and all other content/media types." But attaching a micro-penny royalty fee to every metered transaction (payable to ContentGuard) has little appeal. As Len Bullard observed: "Business will not accept tollbooths on business transactions." As Lawrence Lessig and other legal experts have warned, this kind of monopolistic control embedded into the foundations of Internet "code" would constitute a serious threat to the freedom of information. Competitive efforts will be launched to answer this RAND monopoly threat -- to oppose and neutralize the (proposed) universal relevance of ContentGuard's patented (XrML) DRM technologies.The ContentGuard promise to license XrML and related standards under RAND terms and conditions should not be viewed as a comforting statement. We present elsewhere some arguments against RAND in the context of foundational Internet services based upon open standards.Sources for ContentGuard Patent StatementsNote: The goal here is to ensure that no statement reproduced here is taken out of context so as to be misleading or otherwise to misrepresent any authorial intent; the reader should examine all original contexts.The "invention" of the digital rights language concept:See: "ContentGuard Releases New Version of Digital Rights Language, XrML 2.0, and Proposes It to Standards Bodies." - "Xerox Palo Alto Research Center (PARC) [which] invented the rights expression language concept..." See also the PR from ContentGuardSee ContentGuard - Driving The Standard With XrML" - "Based on years of research at Xerox Palo Alto Research Center (PARC), which invented the Digital Rights Language concept, XrML is currently the only Rights Language being used in working DRM solutions, including DRM solutions from Microsoft..." [text as of 2002-05-09]Patents relevant to any rights language:The document "ContentGuard Patent Licensing Options" [as of 2002-05-09] asserts: "ContentGuard has an important and early foundation patent portfolio pertaining to the distribution of digital works and to any rights language. These United States issued patents have also been filed in Japan, Europe and other countries. They contain broad fundamental claims covering: (1) Association of usage rights to content. (2) A grammar to define rights or conditions. (3) Persistent protection. (4) Distribution of composite digital content. (5) Fee accounting and reporting associated with the distribution or use of content." [Note the emphasized word any in the quoted text; numbers (1-5) have been added here for inline display of the five items in the unordered list.]ContentGuard Patent Policy: Claims cover the use of any Rights Language - See slide 6 in the 2001-12 presentation "The Language for Digital Rights."ContentGuard is able to relinquish control of OASIS' rights language design while retaining the ability to charge for licenses to the language. ContentGuard can do this because it holds patents on any rights language, not just XrML as it exists today... Cited in a ContentGuard Reprint from DRM Watch (April 02, 2002).In response to the published "ContentGuard OASIS RL TC Intellectual Property Disclosure" of May 21, 2002, Mairéad Martin posted a query to the RIGHTS-L forum: "I haven't read the patents in question but wondered what the infringement through 'use of a rights expression language ... to implement digital rights management technologies' entails? Surely this doesn't refer to all rights languages? Would anyone from ContentGuard or involved in the OASIS Rights Language effort care to comment?" Brad Gandee of ContentGuard responded: 'You asked: Surely this doesn't refer to all rights languages? Answer: Yes the patents are not specific to XrML. In fact, the patents were filed and granted before XrML even existed...' See the posting [cache].See also any rights language, whether XrML or not in the quoted statement from ContentGuard CEO Michael Miron.Submission of XrML to multiple standards bodies:See "About XrML - The Digital Rights Language for Trusted Content and Services" [text as of 2002-05-09]: - "ContentGuard also plans to propose XrML to any standards organization seeking a Rights Language and has recently submitted the specification to MPEG-21 and TV-Anytime for consideration."See "ContentGuard Contributes XrML to OASIS Standards Consortium. ContentGuard, HP, Microsoft, Reuters and VeriSign among the first to join the OASIS Rights Language Technical Committee." Display text as of 2002-05-09. The announcement was dated April 03, 2002. "... ContentGuard also confirmed today that it will hand control of XrML to an international standards organization. The company is currently in discussions with several standards organizations about accepting this governance role. By allowing the governance and development of XrML to be managed by an independent body, ContentGuard is seeking to open up XrML's future development to broad industry participation..."XrML as designed for all content/media types:From Standards Bodies [text as of 2002-05-09]: "... Some of the areas of technological standards work into which we expect to submit XrML for consideration would be in DRM, Metadata, Content Management, Content Delivery and Distribution, and Access Control/Security Services. We have also strived very hard to maintain a broad scope of applicability for XrML with respect to media type. The content 'products' of the future will be collections of many types of content in many forms. Text will be combined with graphics, streamed video/audio, and subscription-based content available from a particular network resource or web service. Because of this confluence of content types we expect to submit XrML for consideration as the Rights Management Language in standards efforts in the areas of eBooks, digital publishing, digital broadcasting, music, video, digital cinema, digital TV, and all other content/media types..."From the 2002-04-03 announcement: "... XrML is a general-purpose rights language, agnostic to the type of resource, platform, media or business applications. The latest release, XrML 2.0, expands the capabilities of a Digital Rights Language to enable developers to establish the rights and conditions needed to access Web Services in addition to discrete digital content. It also contains additional capabilities in the areas of extensibility, security and life cycle management..."From "Extensible Rights Markup Language (XrML) Interoperability with Digital Transmission Content Protection (DTCP)" [2002-02-27, by ContentGuard. Intel, and Microsoft] "... [XrML makes] it possible to express precise rights on a given type of content or 'bundle of bits' that are clear, interpretable, and consistent across multiple systems... XrML is also content and application agnostic, easily extensible and scalable, and adaptive to any applications that requires granting of rights and conditions in any part of a value chain."XrML under RF and RAND terms:April, 2000. "Contentguard, Inc. Marks Its Spin-Off From Xerox With Microsoft Alliance and XrML Standards Initiative. Microsoft collaborates with ContentGuard, Inc. and Xerox on rights management. Industry leaders announce support for XrML standard" - "To accelerate market growth, ContentGuard is announcing the royalty-free licensing of its eXtensible rights Markup Language(XrML). This initiative has already received support from 20 industry leaders, including Adobe Systems..." [alt URL]April, 2000. "Microsoft Takes Stake in Xerox E-Commerce Spinoff to Deliver Total Publishing and Rights Management Solution for eBooks, Digital Content on the Web. ContentGuard Offers Secure Internet Management and Distribution of Copyright Material, Greater Freedom for Publishers" Announcement April 27, 2000. "...ContentGuard and Microsoft will also collaborate on future development of digital rights management (DRM) technology and standards, including the establishment of XrML (eXtensible rights Markup Language) as a common standard. The XrML code will be freely licensed to the industry to enable interoperability across rights management systems..."April, 2000. "Preview Systems to Support New Digital Rights management Specification from XEROX Spin-Off, ContentGuard, Inc." Announcement April 27, 2000. "... The XrML specification, originally developed at Xerox's Palo Alto Research Center (PARC), has been licensed to the industry, royalty-free, by ContentGuard, Inc..."October, 2000. "Digital Content Industry Moves Step Closer to Choosing Standard for Controlled Internet Distribution. More than 1000 XrML licenses issued since April 2000, accelerating the establishment of a universal digital rights management standard". October 10, 2000. "... The language was first contributed to the industry as an open specification and licensed on a royalty-free basis in April 2000... By freely licensing XrML, ContentGuard, Inc. is promoting the seamless interpretability of digital rights specifications across authors, artists, publishers, distributors and retailers, who use products from many different vendors..."January 2001. "ContentGuard Position Paper for W3C DRM Workshop." Workshop 22-23 January 2001. "ContentGuard develops DRM technology and solutions and has a number of active customers that have implemented our technology and deployed our solutions as part of their digital content business initiative. ContentGuard has also developed and licenses, on a royalty-free basis, XrML, eXtensible rights Mark-up Language in order to enable the digital content marketplace."March 2002. Rights Language Technical Committee Proposal': "ContentGuard will submit the eXtensible rights Markup Language (XrML) Version 2.0 at the initial meeting of the TC. ContentGuard's contribution will be submitted with the following intellectual property rights statement: 'ContentGuard agrees to offer a license, on reasonable and nondiscriminatory terms, to use any patent claim of US Patents 5,638,443, 5,634,012, 5,715,403, and 5,629,980 and which is necessarily infringed by the use of the contribution'."April 02, 2002. "ContentGuard Turns XrML Over to OASIS." By [Seybold Bulletin Staff.] In The Bulletin: Seybold News and Views on Electronic Publishing Volume 7, Number 26 (April 3, 2002). "ContentGuard has found a new home for its XrML rights specification language: the OASIS vendor consortium. The recently formed Rights Language technical committee of OASIS will draft a rights language specification using XrML as the initial submission. Initial members of the technical committee include Hewlett-Packard, Microsoft, Reuters and Verisign, in addition to ContentGuard... According to Bruce Gitlin, ContentGuard's VP of business development and its representative on the OASIS committee, the plan is to develop a core specification, with extensions handling media- and market-specific requirements. This is the same approach taken by MPEG, which recently adopted XrML as its rights specification language... According to Gitlin, because ContentGuard's patent covers any rights language, not just XrML, ContentGuard expects to extract license fees from vendors implementing whatever rights language emerges from OASIS' standards process. The terms and conditions of the license will depend on the implementation, and ContentGuard has pledged that it will license XrML to other vendors under reasonable and nondiscriminatory terms..."April 03, 2002. From the article of Kevin Murphy (Yahoo News UK), April 03, 2002: "'Among our patents is the use of any rights language, whether XrML or not,' said Miron, adding that the company has already committed to RAND licensing terms, and that ContentGuard already offers risk-free licenses for developers of DRM applications. 'We propose to license our patents to anybody for free... for development purposes only,' said Miron. 'When you go to market for commercial purposes, then you pay us a license fee'..."May 2002. From [2002-05 display text] 'Patent Licensing Options': "...To enable the industry use of the functionality and power of XrML, ContentGuard is licensing the necessary patents that enable you to deploy applications based on XrML. ContentGuard is licensing these patents throughout the world on reasonable and non-discriminatory terms and conditions..."Some rights language activities:OASIS Rights LanguageXML and Digital Rights Management (DRM)Open Digital Rights Language (ODRL)"Extensible Rights Markup Language (XrML)."Digital Property Rights Language (DPRL)MPEG Rights Expression Language"<indecs>2rdd Consortium - Rights Data Dictionary."Extensible Media Commerce Language (XMCL)PRISM Rights Language (PRL)Open Ebook Initiative Rights and Rules Working Group (OeBF)Electronic Book Exchange (EBX) Working GroupStylesheets: CSS, XSL (Microsoft)Summary from the Web Standards Project document entitled "Web Standards Project Calls For Clarification of Whether Patent Gives Microsoft Control Over Two Key Web Standards":U.S. Patent No. 5860073 appears to include key concepts used in W3C's Cascading Style Sheets (CSS) and eXtensible Style Language (XSL) standards, which could potentially require these currently-open standards to be licensed from Microsoft.If the CSS and XSL standards are in fact covered by the patent, WaSP believes Microsoft, which participated in W3C's development of these standards, should immediately take legal steps to ensure these Web standards remain openly available on a nondiscriminatory basis, assuming that it has not already done so.This could include turning over the patent to W3C, or other legal licensing agreements that irrevocably protect these open standards, WaSP also called on any other companies that may be pursuing other patents that affect W3C standards to take similar measures.The patent application was filed in 1995 as the W3C deliberations on the CSS standards began. While Microsoft representatives to W3C may have been unaware of the patent effort, the patent application itself refers to W3C's efforts, which WaSP believes means that Microsoft as an applicant was aware of the issue and should have disclosed its patent effort to W3C. [...][April 18, 2002] W3C's Daniel J. Weitzner testified 2002-04-18 that the Microsoft Style Sheet Patent issue had been "resolved in a way that enabled widespread adoption of the standard: ... During the development of W3C's style sheet specifications, Microsoft announced that it had been issued a patent (US Patent #5860073) which might cover W3C's Cascading Style Sheet (CSS) Recommendations. Microsoft was a participant in various W3C style sheet activities and quickly offered royalty-free licenses to W3C members in order to assure that implementation of this standard would proceed."References:"Web Standards Project Calls For Clarification of Whether Patent Gives Microsoft Control Over Two Key Web Standards." February 4, 1999.The World Wide Web Consortium Statement on US Patent #5860073US5860073: Style sheets for publishing systemXPointer (Sun Microsystems)On December 6, 2000 Sun published "XPointer patent terms and conditions" which fairly rocked the W3C XLink/XPointer development community. The opening statement in the 'TERMS AND CONDITIONS' is shocking (as relevant to a W3C specification) even if one reads no further: "By receiving and/or implementing the XPointer Specification, You acknowledge and agree to be bound by the following terms and conditions:" Other statements read (in part) "The term of this Agreement shall begin on the date that You download or otherwise receive the XPointer Specification and shall extend through the last date on which a Patent expires... In no event shall Sun or You be obligated to extend the covenant not to sue granted hereunder to any product not incorporating a fully compliant implementation of the XPointer Specification... You agree to provide documentation of any Modification to W3C no later than the first date on which such Modification is made available to others, including but not limited to the first date on which such Modification is made available to others through alpha distributions or distributions under obligations of confidentiality..."The patent at issue was United States Patent number 5,659,729 [use number search], with application #595477, filed February 1, 1996 in the name of Jakob Nielsen. The abstract reads: "Embodiments of the present invention use a new extension to the HTML language to support remotely specified named anchors. A remotely specified named anchor, when embedded within a source document, instructs a browser program to access a portion of a destination document indicated in the remotely specified named anchor. When the browser program reads a remotely specified named anchor such as <a href="http://foo.com/bar.html/SCROLL="Some Text"> from the source document, the browser program performs the following steps: 1) the browser retrieves the destination file 'bar.html' from the server 'foo.com', 2) the browser searches the file bar.html for 'Some Text', and 3) if the browser finds the character swing being searched for, then the browser displays the file bar.html, scrolled to the line containing the first character of the character string being searched for."W3C's Daniel J. Weitzner testified 2002-04-18 that the Sun XPointer/XLink Patent issue had been "resolved in a way that enabled widespread adoption of the standard: ... A patent (US Patent #5659729) on technologies relevant to the XLink specification was disclosed by Sun during the process of developing the XLink specification. Though there was not a clear model for Royalty-Free licensing in W3C, Sun worked to develop a license that would enable Royalty-Free implementation of this standard."Sun IPR statement on XPointer. Posted to XML-DEV by Eve L. Maler on 24-April-2001. It reads in part: "Sun Microsystems, Inc. ('Sun') agrees it will grant royalty-free licenses, under reasonable terms and conditions, and on a non-discriminatory basis, under Sun's essential patent claims to make, use, sell, offer for sale, or import implementations of XPointer. One precondition of any license granted to a party shall be the party's agreement to grant royalty-free licenses to Sun and other companies to make, use, sell, offer for sale, or import implementations of XPointer under the party's essential patent claims. Sun expressly reserves all other rights it may have..." Note that this statement was intended to correct and supersede the previous Sun IPR statement (which created the public debate). [source]The patent itself is/was widely perceived to be unsustainable. See for example the April 25, 2001 posting "Sun IPR Statement on XPointer," written by [Dr.] Steve DeRose (Brown University Scholarly Technology Group; also W3C Editor, XML Linking Language [XLink] Version 1.0 = W3C Recommendation 27-June-2001; also W3C Editor, XML Pointer Language (XPointer) Version 1.0, = W3C Candidate Recommendation 11-September-2001). Re: the comment/opinion of Len Bullard, viz., "Sun believes it can defend the [XPointer] patent..." [Steve writes:] "Actually, if their technical people have clue 1, they cannot believe this. I suspect what they believe is what you said later, that no one will bother fighting them. The patent is so utterly bogus there's not the faintest chance they could defend it against a halfway competent attack. I personally implemented 3 [three] systems, each at least 3 [three] years prior to their application, that 'infringe' it. If you read the patent broadly enough for XPointer to infringe, then HTML infringes it as well. Sun is clearly counting on not having to fight it (sadly, given the way patent law is set up, that's a good bet -- the reason we have myriad patents this foolish)..." Local commentary: Steve DeRose and Eve Maler (Eve sought to recuse herself in the Sun/W3C context) are both eminently wonderful and smart people, and both are editors of the W3C XLink Recommendation. This leads me to conclude that Eve, forced (unfortunately for her) into the role of messenger for Sun legal department, was simply conveying messages she was politically obligated to convey. Few people in the world, bar none, have as much knowledge of "hypertext linking" as Dr. Steve DeRose. His locution utterly bogus as predicated of the putative Sun patent, unless uttered irresponsibly, leads me to conclude that Sun's legal department, exercising inordinate power, as is commonplace for legal departments in US companies, ruled on a matter out of scope and beyond its sphere of technical competence [a general problem of knowledge specialization, and a special problem of US companies]. US companies seem prone to do what their powerful legal departments tell them they are obligated to do: "make extravagent and overreaching claims, even outrageous claims, thereby putting the onus upon competitors to dislodge the assertions..." Good people like Eve and Steve are unfairly caught in the crossfire.Other references:[January 12, 2001] "White Hat Patents." By Len Bullard. "Patent licensing is an extremely lucrative business. Don't be naive here. They don't do this for the pride of holding patents. We have to take this very seriously. We are being drawn toward an event horizon of a black hole of singular patents that can paralyze the evolution of infrastructure of the Internet for decades. This is very real, very bad, and must be propagated to as many lists where technical discussions are held quickly. Sun may be asserting what they consider to be a valid patent. Que bueno. We know for a fact there is prior art. We know the patent covers a vital part of the web document design. This must be overturned and a case made clear both to corporations and individuals that work for these corporations that pursuing such patents will face patient and persistent opposition and may cost them considerable business. It has to stop. The [US] Patent Office can no longer be counted on to be the control. As the American elections just dramatically proved, American institutions for regulation and selection often come down to political controls. In such a situation, as the Web is an international utility, larger institutions must be able to intervene. As their is no governing body and the force of financial resource is governing by default, we have no choice but to go to the streets and insist that corporations abide by community, not commercial, interests."[January 17, 2001] "XPointer and the Patent." By Leigh Dodds. From XML.com[January 9, 2001] "XPointer, D.O.A." XML-DEV posting by Tim Bray. A fatal verdict by the godfather of XML.[January 9, 2001] "(Second) Last Call for XPointer 1.0." By Elliotte Rusty Harold. Post to XML-DEV. "... It's very questionable whether this is truly an original invention with no prior art. HyperCard and Xanadu both had capabilities like this. It's also questionable whether the patent as written really applies to XPointer. For instance, the patent mandates a certain behavior of browsers. XPointer doesn't. I also think that the proposed 'XPointer patent terms and conditions' are unenforceable as currently published. I recommend complete rejection of this specification until such time as Sun's patent can be dealt with more reasonably..." See also the followup by Uche Ogbuji."Will a Sun patent burn XPointer?" By Simon St.Laurent.Patent Reform[March 11, 2005] Innovation and Its Discontents: How Our Broken Patent System is Endangering Innovation and Progress, and What to Do About It. [Abstract for book] By Adam B. Jaffe and Josh Lerner. Princeton University Press, 2004. ISBN: 0-691-11725-X. The Introduction "They Fixed It, And Now It's Broke" is available online. See also the TOC and endorsements. "The United States patent system has become sand rather than lubricant in the wheels of American progress. Such is the premise behind this provocative and timely book by two of the nation's leading experts on patents and economic innovation. New laws have made it easier for businesses and inventors to secure patents on products of all kinds, and the laws have tilted the table to favor patent holders, no matter how tenuous their claims... We find ourselves where we are today because the institutional changes of the last two decades have altered the incentives of inventors, firms, and the patent office in ways that encourage legal maneuvering and discourage innovation. The solution is to understand how these perverse incentives work, and to modify patent procedures and policy to restore the incentives for socially desirable behavior... After analyzing the economic incentives created by the current policies, Jaffe and Lerner suggest a three-pronged solution for restoring the patent system: create incentives to motivate parties who have information about the novelty of a patent; provide multiple levels of patent review; and replace juries with judges and special masters to preside over certain aspects of infringement cases... When issues of patent policy are considered by the courts, the Congress, and the Executive branch, you can be sure that the opinions of patent lawyers and patent holders will be heard. While their arguments will often be couched in terms of the public interest, at bottom their interest is in their own profits and livelihoods, not in designing a patent system that fosters the overall rate of innovation. Even the PTO itself cannot be expected to advocate necessary reform, if such reform reduces its revenues (by discouraging bogus applications) and threatens its established mode of operation. Yet the long-term well-being of everyone depends on a robust innovation system, and patents play a crucial role in that system..."[April 15, 2004] Ideas Into Action: Implementing Reporm of the Patent System. "On April 15-16, 2004 the Berkeley Center for Law and Technology (BCLT) held a major policy event. Along with the Federal Trade Commission (FTC) and the National Academy of Sciences, BCLT brought together scholars, lawyers, and policy-makers to discuss both the substance of patent reform and how it might be implemented. Join government officials, judges, academics, lawyers, and industry representatives convened to discuss the most significant recommendations made in the two reports [FTC and NAS] and decide where to go from here. The conference featured presentations of the FTC and NAS reports, keynote speeches, and a roundtable of industry leaders. The conference also included substantive debates on several key reform proposals: changes to the obviousness standard, proposals for opposition and post-grant review, and changes to litigation rules...""It was announced by FTC Commissioner Mozelle Thompson at the close of the conference on Friday [April 16, 2004] that a new technology industry group would begin working on making the patent systent more responsive to technological innovation. Cisco, Intel, eBay, Symantec, Chiron, Microsoft, and Genentech agreed to work with regulators and legislators on patent reform..." [from the BCLT Events page]References:Conference web siteProgram ScheduleConference SpeakersTranscript of presentations April 16, 2004Opening Remarks. Robert Merges (BCLT and Boalt Hall School of Law), Mark Myers (NAS, and Xerox Corporation), and FTC Commissioner Mozelle Thompson.Panel on Non-obviousnessPanel on Opposition and Post-Grant ReviewFederal Trade Commission Patent Reform Workshop. Bancroft Hotel, Berkeley, California. April 16, 2004. 82 pages. Industry/Institutional Issues Panel. Co-moderated by Carl Shapiro (Haas School of Business, UC Berkeley) and FTC Commissioner Mozelle Thompson [recipient of BCLT Distinguished Service Award].Judge Whyte: Remarks on Patent Reform[November 11, 2003] US Federal Trade Commission Report Calls for Patent Law and Policy Reform. Several conclusions and recommendations on software patent reform published in the FTC's recent report seek to restore a proper balance of interests between competition and current patent policy. The 315-page report summarizes the results of extensive Hearings held by the US Federal Trade Commission and the DOJ during 2002. "The Hearings took place over 24 days, and involved more than 300 panelists, including business representatives from large and small firms, and the independent inventor community; leading patent and antitrust organizations; leading antitrust and patent practitioners; and leading scholars in economics and antitrust and patent law. In addition, the FTC received about 100 written submissions." The FTC report observes that questionable patents can deter or raise the costs of innovation, and that in industries with incremental innovation such as computer hardware and software, questionable patents can increase 'defensive patenting' and licensing complications, "creating a 'patent thicket' of overlapping intellectual property rights that a company must hack its way through in order to actually commercialize new technology." The FTC recommends the creation of a new administrative procedure "that will make it easier for firms to challenge a patent's validity at the US Patent and Trademark Office (PTO), without having to raise an expensive and time-consuming federal court challenge. It also recommends allowing courts to find patents invalid based on the mere preponderance of the evidence, without having to find that clear and convincing evidence compels that result. The current standard of 'clear and convincing evidence' undermines courts' ability to weed out questionable patents. This is especially troubling, since certain PTO procedures and rules tend to favor the issuance of patents. The FTC recommends tightening certain legal standards used to evaluate whether a patent is 'obvious'. In appropriate circumstances, the FTC will ask the PTO Director to reexamine questionable patents that raise competitive concerns."[October 28, 2003] "FTC Issues Report on How to Promote Innovation Through Balancing Competition with Patent Law and Policy." - "The Federal Trade Commission today issued its report on how to promote innovation by finding the proper balance of competition and patent law and policy. Although both competition in markets and patents for inventors can work together to foster innovation, the report states that each policy requires a proper balance with the other to do so. 'Consumers and innovators win when patents and competition policy are aligned in the proper balance. Although questionable patents can harm competition and innovation, valid patents work well with competition to promote innovation. This Report analyzes and makes recommendations for the patent system to maintain the proper balance with competition,' said Timothy J. Muris, FTC Chairman. Today's report -- which makes recommendations for the patent system -- is the first of two reports about how to maintain that balance. A forthcoming second report by the FTC and the Antitrust Division of the Department of Justice (DOJ) will make similar recommendations for antitrust law. Among the ten recommendations of today's report, the FTC proposes legislative and regulatory changes to improve patent quality. Patents of questionable validity can slow further innovation and raise costs to consumers. Specifically, the report recommends: (1) Creating a new administrative procedure that will make it easier for firms to challenge a patent's validity at the U.S. Patent and Trademark Office (PTO), without having to raise an expensive and time-consuming federal court challenge; (2) Allowing courts to find patents invalid based on the preponderance of the evidence, without having to find that clear and convincing evidence compels that result. The current standard of 'clear and convincing evidence' undermines courts' ability to weed out questionable patents. This is especially troubling, since certain PTO procedures and rules tend to favor the issuance of patents. The report also recommends that Congress limit the award of treble damages for willful patent infringement. Some hearings participants explained that they do not read their competitors' patents because of concern that learning about others' innovations will expose them to treble damages infringement liability. Failure to read competitors' patents, however, can harm innovation and competition. The FTC's recommended legislative change would allow firms to read patents to learn about new innovations and to survey the patent landscape to assess potential infringement issues, yet would retain a viable willfulness doctrine that protects both wronged patentees and competition..."Patents: General ResourcesPatent Laws: United States Code. Title 35 - Patents. US Patent Act Index (35 U.S.C.). Updated March 2000."TAF Special Report: All Patents, All Types." A Technology Assessment and Forecast Report. January 1977 -- December 2001. US Patent and Trademark Office (USPTO). On the rapid rise of patent applications/grants, see the references following."Search 500,000 Documents, Review 160,000 Pages In 20 Hours, And Then Do It All Over Again. The detailed life of a patent examiner." By Quentin Hardy. In Forbes ASAP [Forbes.com] (June 24, 2002). Hardy supplies some metrics: "The U.S. Patent and Trademark Office (USPTO) receives 2 million documents yearly, including 375,000 applications, amendments to existing claims, and pleas for consideration or appeals for reconsideration. Those join more than 190,000 patents that will be granted this year, in regular announcements each Tuesday. Every one of the new and pending claimants wants attention now; the cramped and frantic postal facility, occupying one of 18 USPTO buildings dispersed over a one-mile swath in Crystal City, Virginia, is the world's largest recipient of Express Mail... To that urgency add a dizzying increase in complexity of new claims. A typical patent is now about 20 to 40 pages, up from the single-page descriptions of 1790, when Thomas Jefferson and two friends met monthly as America's first patent examiners (approving three inventions that year, the first for converting wood ashes into farm fertilizer). Some biotechnology patents now carry 160,000 pages of information... 'We get CDs now containing the equivalent of 72,000 pages. The number and fundamental complexity of our patents are becoming too great.' In the 1980s, efficiency was improved, he says, cutting the wait time from filing to approval from 25 months to 18 months. But the wait has crept back to more than 24 months... Not only did the annual growth rate of the number of applications expand from 8% in the 1990s to 12% in 2000 and 2001, applications for complex biotech patents have jumped 24% during the past two years. Electrical-technologies applications have risen even higher..."Intellectual Property Strategies in Standards Activities. Transcript of April 18, 2002 Proceedings. Morning Session: Disclosure of Intellectual Property in Standards Activities. Afternoon Session: Licensing Terms in Standards Activities. US Department of Justice Antitrust Division and Federal Trade Commission. Hearings on Competition and Intellectual Property Law and Policy in The Knowledge Based Economy. Day 14:         Receive daily news updates from Managing Editor, Robin Cover.    Document URI: http://xml.coverpages.org/patents.html — Legal stuffRobin Cover, Editor: robin@oasis-open.org |
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