Re: Fwd: IPR Notification on RFC 2462 and 2464

["James Kempf" <[e-mail]>]

Greg,

I'm glad you've been following up on this, but there is a key point missing 
I think. US Patent Law is based on litigation, not regulation. The US Patent 
Office typically only conducts a cursory examination of prior art, and 
unless the patent application is contested before approval, the Patent 
Office rarely denies a patent unless its incorporation of prior art is 
egregious. I don't know what the case is with other countries.

Disputes about the validity of patents in the US are routinely handled 
through litigation. After the patent is granted, a patent holder typically 
claims infringement in a letter to parties it believes are using the IPR, 
attempts to extract royalties (or not if the intent is to force the parties 
out of the market completely to eliminate competition), then takes the case 
to court if the parties refuse to pay. Thereafter comes the long and 
expensive process of litigating the patent. Most patent litigation cases are 
decided for the patent holder these days, though there are occasional 
exceptions.

The upshot of this is that, as far as the law is concerned, it doesn't 
really matter what the facts are with respect to prior art. If there is a 
patent on some basic technology in IPv6 and the IETF or some other 
organization thinks that the patent was invalidly granted, then until the 
IETF or some other party is willing to go to court to contest the patent, 
the patent holder is free to claim that IPR, ask for royalties, and take 
whoever has implemented it and is selling it without a license to court.

The IETF could of course politely request one of the royalty-free IPR 
releases it routinely asks for in cases such as this, but I am told that 
some of the Open Source IPv6 stacks refuse to incorporate *any* IPRed 
software, even if such releases are granted. It will be interesting to see 
what they do with this particular case, since the techology is pretty deeply 
embedded into IPv6. In addition, the legal status of those IPR releases is 
somewhat questionable. Suppose, for example, a company holding IPR granted 
such a release and the technology was widely implemented such as in this 
case, then the company holding the IPR was taken over by another company 
whose business model was charging for IPR. Suppose that company then 
cancelled the the IPR release and started trying to extract royalties. What 
would happen? Fortunately, I don't think we have to worry about such a 
scenerio in this case, because the company in question is pretty large and 
in no danger of being taken over.

                     jak

----- Original Message ----- 
From: "Greg Daley" <[e-mail]>
To: "Margaret Wasserman" <[e-mail]>
Cc: <[e-mail]>
Sent: Thursday, November 03, 2005 5:14 PM
Subject: Re: Fwd: IPR Notification on RFC 2462 and 2464


> Hi,
>
> Sorry to follow myself up, but I have further information
> which may be relevant to establishment of prior art for
> IPv6 Stateless Address Autoconf.
>
> The previous e-mails' description of existing published
> documents may only describe 102(a) prior art, (As
> described by PUBPAT's own information on prior art).
>
> As such, it is susceptible to a prior unpublished
> invention date by the patent holders (documented
> internally to the patent holder's Lab for example).
>
> There seems to be evidence though that
> FTP software was shipping IPv6 code with SAA
> more than 1 year before the patent was applied for
> (August 1996 ship):
>
> www.connectathon.org/talks97/helen.pdf
>
> This would constitute 102(b) prior art if the
> presentation's contents were true.
>
> In that case, there could not be applicability of this
> patent to IPv6 Stateless Address Autoconfiguration,
> so long as the product was available in the USA at the
> time (as far as I can tell).
>
> Greg
>
> Greg Daley wrote:
>> Hi Margaret,
>>
>> I'm not sure how this affects the IPR notification,
>> but I've had a quick look at existing art available
>> at the time of the patent application.
>>
>> There are existing specifications of IPv6 autonomous
>> address configuration in published drafts which
>> significantly predate the patent application (> 12 months).
>>
>> This I guess, it substantively the same as the current
>> RFC2462bis, and RFC2462 (and RFC1971 - August 1996).
>>
>> The descriptions of Address configuration with DAD were
>> also described in earlier published drafts:
>>
>> http://www.watersprings.org/pub/id/draft-ietf-addrconf-ipv6-auto-02.txt
>>
>> And a fairly complete description of how DAD works (with
>> different message names) is contained in the earlier version:
>>
>> http://www.watersprings.org/pub/id/draft-ietf-addrconf-ipv6-auto-01.txt
>>
>> The latest of these two documents is dated June 5, 1995
>> (although it may have been received in the repository later?).
>>
>> Since provisional patent applications have only been supported
>> for IPR protection since June 8 1995, and the Patent application
>> for patent number 6,101,499 is April 8, 1998 (and doesn't
>> reference any provisional application anyway), my guess is that
>> the existing draft publications provide a clear prior art for
>> IPv6 autonomous addressing.
>>
>> Provisional applications description:
>> http://www.uspto.gov/web/offices/pac/provapp.htm
>>
>> Actually, given the wealth of existing IPv6 autonomous address
>> configuration techniques, it's amazing that there's no reference
>> to them in the description of the patent, made at application time.
>>
>> Clearly, I'm not able to provide legal advice about this
>> situation, but the above information may be able to help someone
>> who is.
>>
>> Greg Daley.
>>
>>
>> Margaret Wasserman wrote:
>>
>>>
>>> FYI --
>>>
>>> The official disclosure will probably be posted by the secretariat 
>>> shortly, but in the meantime I thought that the IPv6 WG should be aware 
>>> of this incoming IPR notification.
>>>
>>> Margaret
>>>
>>>> Date: Mon, 24 Oct 2005 12:01:49 -0400
>>>> From: Dan Ravicher <[e-mail]>
>>>> X-Accept-Language: en-us, en
>>>> To: Margaret Wasserman <[e-mail]>,
>>>>         Mark Townsley <[e-mail]>,
>>>>         Robert Hinden <[e-mail]>,
>>>>         Brian Haberman <[e-mail]>
>>>> Subject: Fwd: IPR Notification
>>>> X-Spam: [F=0.0001020200; B=0.500(0); S=0.010(2005092001); 
>>>> MH=0.500(2005102404); R=0.010(s3/n722); SC=none; spf=0.500]
>>>>
>>>> Dear Ms. Wasserman and Messrs. Townsley, Hinden and Haberman:
>>>>
>>>> The Public Patent Foundation ("PUBPAT") formally notified IETF today of 
>>>> the existence of intellectual property rights that may relate to 
>>>> technology described in IETF documents.  Specifically, U.S. Patent No. 
>>>> 6,101,499 ("the '499 patent") owned by Microsoft Corporation may relate 
>>>> to RFC 2462 - IPv6 Stateless Address Autoconfiguration and RFC 2464 - 
>>>> Transmission of IPv6 Packets over Ethernet Networks (collectively 
>>>> referred to as "IPv6").  A copy of the formal notification appears 
>>>> below.
>>>>
>>>> As stated in the notification, although others have disclosed the '499 
>>>> patent with respect to IPv4, its claims may also relate to IPv6. For 
>>>> example, claims 1 and 30 could relate to the technology described in 
>>>> RFC 2462.  However, other than identifying this potential relationship, 
>>>> PUBPAT takes no position regarding the validity or scope of the '499 
>>>> patent.
>>>>
>>>> If PUBPAT can provide any further information or be of any other 
>>>> assistance to IETF in its review of this matter, including perhaps 
>>>> raising this issue with the entire IPv6 Working Group, should that be 
>>>> desirable, please do not hesitate to contact me.
>>>>
>>>> Sincerely,
>>>>
>>>> Daniel B. Ravicher
>>>> Executive Director
>>>> Public Patent Foundation
>>>> 1375 Broadway, Suite 600
>>>> New York, NY 10018
>>>> [phone] direct
>>>> [phone] main
>>>> [phone] fax
>>>> [e-mail]
>>>> www.pubpat.org
>>>>
>>>>
>>>>
>>>> -------- Original Message --------
>>>> Subject: IPR Notification
>>>> Date: Mon, 24 Oct 2005 11:53:54 -0400
>>>> From: Dan Ravicher <[e-mail]>
>>>> To: [e-mail]
>>>>
>>>> Dear IETF:
>>>>
>>>> Pursuant to IETF RFC 3979 Section 6.1.3, the Public Patent Foundation
>>>> ("PUBPAT") hereby notifies IETF of the existence of intellectual
>>>> property rights that may relate to technology described in IETF
>>>> documents.  Specifically, U.S. Patent No. 6,101,499 ("the '499 patent")
>>>> owned by Microsoft Corporation may relate to RFC 2462 - IPv6 Stateless
>>>> Address Autoconfiguration and RFC 2464 - Transmission of IPv6 Packets
>>>> over Ethernet Networks (collectively referred to as "IPv6").
>>>>
>>>> Although IETF was previously notified of the '499 patent with respect 
>>>> to
>>>> IPv4 related documents (see
>>>> http://www.ietf.org/ietf/IPR/MICROSOFT-499.txt and
>>>> https://datatracker.ietf.org/public/ipr_detail_show.cgi?ipr_id=554), 
>>>> the
>>>> '499 patent's claims, including for example claims 1 and 30, could
>>>> possibly be read as also relating to IPv6.  However, other than
>>>> identifying this potential relationship, PUBPAT takes no position
>>>> regarding the validity or scope of the '499 patent.
>>>>
>>>> If we can provide any further information or be of any other assistance
>>>> to IETF in its review of this matter, please do not hesitate to contact 
>>>> me.
>>>>
>>>> Sincerely,
>>>>
>>>> Daniel B. Ravicher
>>>> Executive Director
>>>> Public Patent Foundation
>>>> 1375 Broadway, Suite 600
>>>> New York, NY 10018
>>>> [phone] direct
>>>> [phone] main
>>>> [phone] fax
>>>> [e-mail]
>>>> www.pubpat.org
>>>>
>>>
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