[xacml] RE: ContentGuard IPR Declaration for OASIS re. XACML

[Carlisle Adams <carlisle.adams@entrust.com>]

Title: Re: ContentGuard IPR Declaration for OASIS re. XACML

Hi Bruce,

 

Once again, thank you for responding.  I have copied the XACML TC because this topic is of great interest to all the members.

 

Yes, the patent numbers can be found on the ContentGuard Web site.  Yes, there was speculation shortly after the formation of the TC regarding whether these might be relevant to its work.  But idle speculation cannot help an implementer make a decision.  Most implementers are not trained patent lawyers can cannot easily make such a determination.  This is precisely why we repeatedly asked ContentGuard for its opinion.  Waiting until the specification was frozen, formally approved, and ready to submit to OASIS before giving such an opinion appears to be behaviour specifically calculated to undermine the efforts of this TC and the progress of this specification.  The features and functionality of XACML have been frozen for a long time; only the specific syntax to achieve that functionality has been evolving.  ContentGuard could have made its statement many months ago (in accordance with the encouraged behaviour specified in the OASIS IPR policy).

 

As for your statement that my previous e-mail "would appear to engage OASIS in "evaluating the applicability " of our patent claims", this is completely false.  The e-mail was crystal clear (in fact, could not possibly have been more clear) that we were asking ContentGuard for this evaluation.  The XACML specification says exactly what areas it covers; we would like to know which of those areas (if any) ContentGuard feels may infringe its IP.

 

My understanding of your text below is that what is important and relevant is not the XACML specification itself, but rather whether an implementation incorporating that specification infringes.  Thank you for this clarification.

 

Carlisle.

 

-----Original Message-----
From: Gitlin, Bruce [mailto:Bruce.Gitlin@CONTENTGUARD.COM]
Sent: Thursday, December 12, 2002 8:47 AM
To: Karl F. Best
Cc: Gandee, Brad; Carlisle Adams
Subject: Re: ContentGuard IPR Declaration for OASIS re. XACML

Karl:
 
I would like to respond to your e-mail of December 3. First, the five patents are from 1994. A listing of the patents can be found on the ContentGuard Web site (www.contentguard.com/patents.asp <http://www.contentguard.com/patents.asp>) and from there you can link directly to the USPTO site and see the patents themselves. This information has been on our web site for quite a while.

We have consistently told the XACML TC that we would make an IPR statement when the specification was frozen for review. We made it clear that we did not believe it appropriate to make a statement on the TC's work in progress, only to have to do it over because the specification and intended uses changed. Anyone in the XACML TC, or elsewhere, could have looked at our patents at any time to decide if they might have essential claims. All they had to do was go to our web site. Furthermore, the XACML TC identified some of our patents as being important right after the TC was formed.  Indeed, as early as June of 2001 several of our patents were listed on the XACML web site as possibly being "relevant" to the work of the TC. 

We think what is important, at this point, is not which patents we hold, but the RAND declaration. The OASIS IPR Policy Section 3.2 (C) provides for the Executive Director to seek a written assurance from someone who makes an IPR claim that anyone can obtain the right to implement on reasonable and non-discriminatory (RAND) terms.  Note that we have provided such assurance (although are not obligated to) at the time of our IPR declaration, eliminating this extra step.

The OASIS.IPR Policy Section 3.2(B) states that the OASIS Board of Directors disclaims any responsibility for identifying the existence of or for evaluating the applicability of any claimed copyrights, patents, patent applications, or other rights, and will take no position on the validity or scope of any such rights. While Carlisle Adams' e-mail may be well intentioned, it would appear to engage OASIS in "evaluating the applicability " of our patent claims.  Furthermore we do not believe it is appropriate to engage in such an exercise. The relevant question is not necessarily what part of a specification may infringe, but whether an implementation incorporating such a specification infringes. In the case of XACML we have said that its use may infringe, not that it definitely does. Any useful evaluation would start with understanding a specific system and how the specification is implemented. This is appropriately done by the party who has designed the system and who best understands how the specification will be implemented.

We hope that the XACML TC can view as a positive the fact that if an implementation of the specification infringes, we are committed to our IPR declaration. We encourage implementers to discuss their systems and intended uses directly with us.

Bruce

Bruce Gitlin
VP, Business Development
ContentGuard Inc.
240-694-1223
bruce.gitlin@contentguard.com