XPointer and the '729 patent

["Eve L. Maler" <eve.maler@east.sun.com>]

On 6 December 2000, Sun Microsystems published on the XML Linking
comments list[1] a proposed set of terms and conditions under which Sun
has agreed to grant certain rights to a patent it owns to developers
implementing XPointer 1.0[2], U.S. Patent No. 5,659,729 (the "'729
Patent"). We have received some comments on the circumstances
surrounding the patent and the terms, and we wanted to take this
opportunity to respond.

Sun has never made any claim that an implementation of XPointer
infringed on the '729 Patent. In fact, Sun's then-AC representative to
W3C was not even aware of the patent until W3C notified him in November
1997 of its existence.

About a year later, W3C requested that Sun take action with regard to
the '729 Patent to make it available to developers implementing
XPointer. We presume W3C felt that it would be preferable for Sun to
grant rights in advance to avoid potential issues at a later date.

Our goal in granting rights to the '729 Patent has been to ensure that
everyone has the ability to implement XPointer without being subject to
burdensome legal restrictions or royalty payments. We have been working,
and continue to work, with W3C in order to develop terms and conditions
that eliminate encumbrances for all developers.

We believe that Sun's approach to the issue avoids costly and time-
consuming legal wrangling that would certainly be involved in
determining whether the '729 Patent is valid and/or infringed.  At the
same time, it provides assurance to the development community that Sun
will not assert the '729 Patent against implementations of XPointer
under the terms.

After reviewing and considering the comments that have been submitted
since the time of the posting, we offer to do the following:

1 Request a reexamination of the '729 Patent at our own expense.

   As part of the reexamination, we request that you provide us with
   any prior art of which you are aware so that Sun may submit any
   relevant prior art to the U.S. Patent Office.

2 Consider specific requests for changes to the terms.

   In order to accommodate the concerns of the development community,
   we are willing to consider alternative terms.  We have already
   received some comments along these lines, and additional comments
   are welcome.

Information on BOTH prior art and suggested changes to the terms should
be sent to Sun by 7 MARCH 2001 at mailto:729-patent@east.sun.com.

We are hopeful that this explanation addresses the concerns voiced to
date, and look forward to seeing your additional comments.

           Eve Maler
           Sun representative to W3C's Advisory Committee

[1]
http://lists.w3.org/Archives/Public/www-xml-linking-
comments/2000OctDec/0092.html
[2] http://www.w3.org/TR/xptr
--
Eve Maler                                          +1 781 442 3190
Sun Microsystems XML Technology Center    eve.maler @ east.sun.com