RE: [chairs] Patent license friction...

John,

 

Sun's abstract sounds fancy - but when you really analyze what its
describing - it boils down to a snapshot of what is the entrenched
reality!?!  Prior to computers I'm sure this is exactly how the
Army and other services wrote procedures to handle access to
confidential information for example for the past 100 years.

We seem to have gotten ourselves into a position somewhat akin to a
medical doctor finding that in addition to patents on drugs - now
patents on procedures and practice are allowed too - so if he
recommends that his patient lose weight and exercise more - that is
actually covered as a patent!!  Who wants to wager $5 that if
you run a search on PTO for patented computer system for weight loss
management - you'll find something...

 

The simple answer beckons - put a moritorium on the PTO being able to
issue software patents - but asking the Bar Association to review this
is like asking a drug addict to devise how they can take drugs in a
more socially acceptable way....

 

At least I enjoyed reading Alice in Wonderland.

 

DW

-------- Original Message --------
Subject: RE:
[chairs] Patent license friction...
From: John Messing
<>
Date: Fri, April 28, 2006 9:21
am
To: "David RR Webber (XML)" <>
Cc: Chairs
OASIS <>, "ext
Wachob,Gabe"
<>, Frederick Hirsch
<>

Hi David and Gabe:

The
below-referenced U.S. patent was awarded in 2005 to Sun
Microsystems
as assignee for "Single sign-on framework with
trust-level mapping to
authentication
requirements"

http://patft1.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&p=1&u=%2Fnetahtml%2FPTO%2Fsearch-bool.html&r=10&f=G&l=50&co1=AND&d=PTXT&s1=sun.ASNM.&s2=authentication.ABTX.&OS=AN/sun+AND+ABST/authentication&RS=AN/sun+AND+ABST/authentication

I
think Gabe's original question is complicated by the period in
which
an OASIS standard was approved: one must keep in mind whether
it
occurred under a legacy IPR mode or one of the newer IP modes
that are
designed to be adopted by TC's by no later than next
year.

The American Bar Association's Science and Technology Law
Section has a
committee that is working on the relationship between
patents and
standards work.

Currently IMHO there is no easy
or simple answer to Gabe's inquiry.

John Messing

>
-------- Original Message --------
> Subject: RE: [chairs] Patent
license friction...
> From: "David RR Webber (XML)"
<>
> Date: Thu, April 27, 2006 8:43
pm
> To: Frederick Hirsch
<>
> Cc: Chairs OASIS
<>, "ext Wachob,Gabe"
>
<>
> 
> 
> Gabe, 
>
  
> Of course the other option is to have TC work that
precludes patented
> material. 
>   
> I still
do not see any IPR policy that specifically supports that
option
> - other than the legacy policy. 
>   
>
To my knowledge the BOD - despite Patricks assertions that OASIS would
-
> still has made no effort to accommodate the OSI concerns in
this regard
> nor arranged any conference calls or interactions
with OSI to move toward
> having OASIS TC work able to comply to
OSI licensing needs. 
>   
> For the life of me I
cannot see anything in SAML that anyone could
> legitimately
claim to have a patented invention around.  But then again
>
people have patents on the menu key sequence for bank ATMs - clearly
a
> ground breaking invention - key pad sequences.  Would be
interesting to
> know exactly what about SAML is using such a
unique mechanism that it is
> a patented system? 
>  

> Assuming the patent may fall under the
not-really-an-invention-at-all
> category - hopefully the SAML TC
can re-factor their work so that it does
> not rely on any dubious
or questionable patents in the first place... 
>   
>
DW
>  
> 
> 
>  -------- Original
Message --------
> Subject: Re: [chairs] Patent license
friction...
> From: Frederick Hirsch
<>
> Date: Thu, April 27, 2006
5:51 pm
> To: "ext Wachob, Gabe" <>
>
Cc: Frederick Hirsch <>, "Chairs
OASIS"
> <>
> 
>
Gabe
> 
> I believe the SSTC is operating under the legacy
IPR policy. TCs  
> under the current (new) policies incur
much clearer and well- 
> understood obligations, which should go
a long way toward reducing  
> friction and
confusion.
> 
> In general I believe the reason law tends
to be difficult is that it  
> is difficult to clearly state
in language precise rules where the  
> concerns of various
parties are met. The new OASIS policy attempts to  
> do
this as clearly as possible, specifying the "features" of the
 
> license that may be used in the different IPR modes,
providing more  
> clarity on the licenses that may be
obtained.
> 
> However, within the scope of the OASIS
policy it is the right of a  
> patent holder to write their
license. Likewise it is not unreasonable  
> to have more
than one means of obtaining a license from a patent  
>
holder, although it may be in everyone's interest to make it
easier.
> 
> In the specific example, I would take the
"would" to indicate that a  
> license will be granted if
and when needed, which seems reasonable.  
> I'd recommend
consult your attorney for advice if you haven't already  
>
done so.
> 
> However, I believe the current IPR policy is
a big step forward  
> toward clarity. However, as you note,
it is realistic to expect to  
> contact patent holders for
licenses as needed.
> 
> Thanks
> 
> regards,
Frederick
> 
> Frederick Hirsch
> Nokia
>

> [1]
http://www.oasis-open.org/who/intellectualproperty.php
> 
>
On Apr 27, 2006, at 4:59 PM, ext Wachob, Gabe wrote:
> 
>
> This is a real basic questions that has been nagging at me for
 
> > quite a while.
> >
> > Lets say I
want to use a OASIS specification (lets take SAML 2.0 -  
>
> I'm not picking on them - but it makes a good illustration). I
note  
> > that there are various IPR disclosures at
http://www.oasis-open.org/ 
> > committees/security/ipr.php -
and some of these disclosures state  
> > that the patent
owners *will* license their Patents for the purpose  
> >
of SAML. Some express covenants not to assert claims. Some point to
 
> > blanket licenses on web sites.
> >
>
> If I were a lawyer I would find this situation a) confusing, b)
 
> > scattered and c) potentially dangerous. For
example, on that page,  
> > Fidelty states that it
"would grant to any other person or legal  
> > entity a
royalty-free, nonexclusive, nontransferable, license under
 
> > Fidelity's NECESSARY CLAIMS to implement the SAML
v2.0 OASIS  
> > Standard, and sell, promote or otherwise
distribute the resulting  
> > implementation. "
>
>
> > Note the word "would". I don't see that Fidelty
actually *has*  
> > granted a license. Thus, while they
would now have a hard time  
> > enforcing the patent
(given theories of estoppel, etc), I don't  
> > believe
that Fidelty actually *has* granted a license. It appears
 
> > that I have to go to Fidelty and get a license if I
wish to use  
> > SAML. (Not picking on Fidelity - they
are just first on the list of  
> > disclosers).
>
>
> > Are people aware of this? Do users of SAML
specifications actually  
> > know that they apparently
aren't actually licensed to use the  
> > patents that
Fidelity believes it has? Doesn't this (or rather, if  
>
> lawyers were paying attention, *shouldn't* this) be a concern? I
 
> > realize this TC operated under the legacy IPR
policy - I wonder how  
> > that affects things.
>
>
> > If a implementer/user of SAML were to actually be
careful with  
> > their use of the SAML specs, they'd
actually have to contact  
> > Fidelity to execute the
license. I think this should be  
> > highlighted! If a
contributor wants to contribute, and they don't  
> >
offer a covenant or other blanket license (or a URL to a blanket
 
> > license, etc), this potentially increases the
friction for adoption.
> >
> > In an ideal world,
there'd be one patent license that every patent- 
> > holder
contributor would agree to -- I'm not naive to believe that
 
> > would happen (or that OASIS could force that to
happen), but I do  
> > believe in notice. Only as a
persistent person who actually read  
> > the entire IPR
disclosure page did I notice that to use SAML 2 I  
> >
have to somehow negotiate a license with Fidelity.. Most people
 
> > aren't going to do this and will be blissfully
ignorant.
> >
> > I think as a practical matter, most
patent holders who are  
> > contributing to OASIS specs
don't really want to deal with  
> > individual licensing
-- but OASIS IPR policy doesn't really push or  
> > guide
patent holders to put up blanket unilateral licenses -- its
 
> > up to each IPR holder to license (or covenant) in
what ever way  
> > they want.
> >
> >
THE PROPOSAL:
> > I think, in short, that OASIS should guide
patent holders towards  
> > the lowest friction licenses
possible by suggesting (not forcing)  
> > patent holders
to use a standardized license (or at least suggest  
> >
that patent holders post a "click-through" or unilateral
license).
> >
> >    -Gabe
>
>
> > P.S. If I'm wrong about any of the facts, please let
me know ... I  
> > could have easily missed
something.
> >
__________________________________________________
> >

> > Chief Systems Architect
> >
Technical Innovation and Standards Management
> > Visa
International
> > Phone: +1.650.432.3696   Fax:
+1.650.554.6817
> >
> >