Subject: [Sip] IPR disclosure on MESSAGE and related use of SIP

From: Dean Willis <[email-masked]>
Date: Mon, 01 Nov 2004 19:31:00 -0600

I've just noticed that Nortel has recently been issued a patent for 
which they have made an IPR disclosure relative to RFC 3428, the SIP 
MESSAGE method.

The disclosure document is listed at:

http://www.ietf.org/ietf/IPR/nortel-ipr-rfc-3428.txt

The issued patent is US patent number 6,757,732

and you can retrieve its full text from:

http://patft.uspto.gov/netahtml/srchnum.htm

--
Dean Willis
SIP co-chair

_______________________________________________
Sip mailing list  https://www1.ietf.org/mailman/listinfo/sip
This list is for NEW development of the core SIP Protocol
Use [email-masked] for questions on current sip
Use [email-masked] for new developments on the application of sip

---

From: Jonathan Rosenberg <[email-masked]>
Date: Tue, 02 Nov 2004 09:24:08 -0500

Suffice it to say, I am very unhappy about this.

This patent was filed in 2000. I do not understand why the disclosure 
was only made just now, some four years after it was filed and two years 
after issuance of the RFC. The only reasons I can think of are not very 
nice.

The licensing terms are also unclear. Does Nortel plan on extracting 
licensing revenues for this?

I think some clarifications and explanations from participants from 
Nortel are in order.

-Jonathan R.

-- 
Jonathan D. Rosenberg, Ph.D.                   600 Lanidex Plaza
Director, Service Provider VoIP Architecture   Parsippany, NJ 07054-2711
Cisco Systems
[email-masked]                              FAX:   (973) 952-5050
http://www.jdrosen.net                         PHONE: (973) 952-5000
http://www.cisco.com

---

From: Adam Roach <[email-masked]>
Date: Tue, 02 Nov 2004 10:18:57 -0600

I want to make three observations of fact.

    * Patent 6,757,732 was filed March 16, 2000.

    * The MESSAGE method was used to exchange instant messages using SIP
      in August of 1999, and the source code to the client used to do so
      ("insipid," later renamed "kphone") was published on a publicly
      accessible web site at that time. A screen shot of the client
      performing instant messaging can be seen here:

      http://web.archive.org/web/20010624055115/http://www.billybiggs.com/screenshots/insipid-19-aug-99.gif

    * By April of 2000, there were enough implementations of the SIP
      MESSAGE method to have testing between multiple independent
      implementations at the 4th SIP bakeoff. I was a party to several
      of these tests.

To be clear: I make no claims about the validity of this patent. I am 
simply stating facts that I believe may be of interest to this 
community. Draw your own conclusions.

/a

---

From: Srini Krishnamoorthy <[email-masked]>
Date: Tue, 2 Nov 2004 11:33:58 -0500 (EST)

Jonathan et.al,

  Agree, and I think a LOT of people will be unhappy too ..

  Do we read this as specific to the use of "INFO + HTML body" or
  in general :-
   "communicating the text-based chat message includes embedding the 
    text-based chat message" (which the the first claim states)?"

  How does this IPR affect the use of MESSAGE method with content-types
  other than text/html  (say plain, xml) - what would be considered 
  infringment? .. anybody Nortel??

  Please help understand the detailed impact of this ... thanks.

  Or should I just wait to see what transpires?? 

-Srini

On Tue, 2 Nov 2004, Jonathan Rosenberg wrote:

jdrose>Suffice it to say, I am very unhappy about this.
jdrose>
jdrose>This patent was filed in 2000. I do not understand why the disclosure 
jdrose>was only made just now, some four years after it was filed and two years 
jdrose>after issuance of the RFC. The only reasons I can think of are not very 
jdrose>nice.
jdrose>
jdrose>The licensing terms are also unclear. Does Nortel plan on extracting 
jdrose>licensing revenues for this?
jdrose>
jdrose>I think some clarifications and explanations from participants from 
jdrose>Nortel are in order.
jdrose>
jdrose>-Jonathan R.
jdrose>
jdrose>
jdrose>Dean Willis wrote:
jdrose>
jdrose>> 
jdrose>> I've just noticed that Nortel has recently been issued a patent for 
jdrose>> which they have made an IPR disclosure relative to RFC 3428, the SIP 
jdrose>> MESSAGE method.
jdrose>> 
jdrose>> The disclosure document is listed at:
jdrose>> 
jdrose>> http://www.ietf.org/ietf/IPR/nortel-ipr-rfc-3428.txt
jdrose>> 
jdrose>> The issued patent is US patent number 6,757,732
jdrose>> 
jdrose>> and you can retrieve its full text from:
jdrose>> 
jdrose>> http://patft.uspto.gov/netahtml/srchnum.htm
jdrose>> 
jdrose>> 
jdrose>> -- 
jdrose>> Dean Willis
jdrose>> SIP co-chair
jdrose>> 
jdrose>> _______________________________________________
jdrose>> Sip mailing list  https://www1.ietf.org/mailman/listinfo/sip
jdrose>> This list is for NEW development of the core SIP Protocol
jdrose>> Use [email-masked] for questions on current sip
jdrose>> Use [email-masked] for new developments on the application of sip
jdrose>> 
jdrose>
jdrose>

-- 
Srini K
ksrini at motorola 
Finger [email-masked] for pub key.

---

From: Adam Roach <[email-masked]>
Date: Tue, 02 Nov 2004 13:49:57 -0600

>  Or should I just wait to see what transpires?? 

Well, as heinous as all of this is, I think the appropriate response 
would be to put your efforts into developing an MSRP client instead of a 
MESSAGE-based implementation.

/a

---

From: Tom Taylor <[email-masked]>
Date: Wed, 03 Nov 2004 09:17:39 -0500

I'm probably going to get into trouble for responding, but I can't sit by and let 
you throw mud at my colleagues.

Jonathan, you once worked for a large company.  Now you do, again.  Can you really 
say you know everything that's going on in Cisco that might relate to your ETF 
activities?

It's getting tougher as we get slimmed down, but Nortel (and BNR before that) has 
had a long tradition of people in odd corners exploring the possibilities of 
technology and coming up with new ideas unrelated to their current products.  And 
like it or not, Nortel views intellectual property as a source of value, so people 
are encouraged to take out patents on new ideas.

Mary was unaware of the patent concerned until a week before the patent 
announcement.  At that point she took the necessary steps to have it announced.

And we who participate at the IETF are not patent lawyers -- we can only refer you 
to our own legal people for further advice.

-- 
Tom Taylor
Carrier VoIP Standards Development
Nortel Networks
Phone +1 613 763 1496  (ESN 393-1496)
E-mail: [email-masked]

---

From: David R Oran <[email-masked]>
Date: Wed, 3 Nov 2004 17:24:23 -0500

On Nov 3, 2004, at 9:17 AM, Tom Taylor wrote:

> I'm probably going to get into trouble for responding, but I can't sit 
> by and let you throw mud at my colleagues.
>
Don appropriate lead BVDs Tom.

> Jonathan, you once worked for a large company.  Now you do, again.  
> Can you really say you know everything that's going on in Cisco that 
> might relate to your ETF activities?
>
No, not for any single individual, but there is a process for IPR 
disclosures at Cisco, and it is followed rigorously and taken VERY 
seriously. In fact, you can't even file a Patent disclosure into our 
patent system without filling in a statement as to whether the IPR 
might apply to a standard and if so which one(s). As a check/balance, 
each of our patent committees has at least one member who is up to date 
on standardization activities in that technology area.

It is particularly troubling when such disclosures appear on 
submarines. In order to support your point, I believe you have to 
demonstrate that none of the co-inventors, nor any of the internal 
reviewers in the line to filing and issuance, were aware of the ongoing 
IETF activities.

> It's getting tougher as we get slimmed down, but Nortel (and BNR 
> before that) has had a long tradition of people in odd corners 
> exploring the possibilities of technology and coming up with new ideas 
> unrelated to their current products.  And like it or not, Nortel views 
> intellectual property as a source of value, so people are encouraged 
> to take out patents on new ideas.
>
If that is the case here, 'll be happy to cut some slack. Could you 
ascertain, please?

> Mary was unaware of the patent concerned until a week before the 
> patent announcement.  At that point she took the necessary steps to 
> have it announced.
>
Thank you, Mary. What about the other Nortel IETF participants who work 
with SIP?

> And we who participate at the IETF are not patent lawyers -- we can 
> only refer you to our own legal people for further advice.

Thanks. Dave.

>> was only made just now, some four years after it was filed and two 
>> years after issuance of the RFC. The only reasons I can think of are 
>> not very nice.

---

From: Jonathan Rosenberg <[email-masked]>
Date: Wed, 03 Nov 2004 22:56:21 -0500

> by and let you throw mud at my colleagues.

Mud? Where is there mud? I have asked what I think are legitimate 
questions about this patent - why was the disclosure made only now, and 
what are the terms. I have no doubt that you would ask the same if our 
roles were reversed.

> 
> And we who participate at the IETF are not patent lawyers -- we can only 
> refer you to our own legal people for further advice.

One of the things that has driven success for SIP (and the resulting 
business for us all) has been its relatively IPR-free status for the 
core specifications (in terms of the known disclosures made to IETF; I 
can't say anything about patents we don't know about that might be out 
there). MESSAGE is fairly core to SIP, and I would hate to see its usage 
and deployment be derailed as people run from it due to very unclear IPR 
applicability and licensing terms. I suspect that any strong drive to 
extract revenue from it would just result in quicker abandonment and 
usage of MSRP instead. As such, in the end such an attempt would equate 
to an RF license. While at dynamicsoft, I pushed for us to adopt a 
"don't bug us and we won't bug you" stance 
(http://www.ietf.org/ietf/IPR/DYNAMICSOFT-SIP-UNIFY.txt), which brings 
some of the benefits of RF (doesn't scare folks off) but preserves the 
defensive value of the IPR. Cisco has made similar statements 
(http://www.ietf.org/ietf/IPR/cisco-ipr-draft-ietf-nemo-basic-support-03.txt). 
I hope you agree that this kind of stance is good for us all, and if you 
could help your legal folks understand this and make a similar 
statement, it would be outstanding. I'd be happy to help with that in 
any way that I can.

-Jonathan R.

---

From: "Sean Olson" <[email-masked]>
Date: Wed, 3 Nov 2004 22:18:40 -0800

For what it is worth, there may be prior art here. Billy Biggs demonstrated
an implementation of MESSAGE based IM at the 4th SIP bake-off hosted by 3Com
(April 17th-19th 2000) and had an even earlier implementation.

-----Original Message-----
From: [email-masked] [mailto:[email-masked]] On Behalf Of Srini
Krishnamoorthy
Sent: Tuesday, November 02, 2004 8:34 AM
To: Jonathan Rosenberg
Cc: [email-masked]; Dean Willis
Subject: Re: [Sip] IPR disclosure on MESSAGE and related use of SIP

Jonathan et.al,

-Srini

jdrose>Suffice it to say, I am very unhappy about this.
jdrose>
jdrose>This patent was filed in 2000. I do not understand why the 
jdrose>disclosure was only made just now, some four years after it was 
jdrose>filed and two years after issuance of the RFC. The only reasons I 
jdrose>can think of are not very nice.
jdrose>
jdrose>The licensing terms are also unclear. Does Nortel plan on 
jdrose>extracting licensing revenues for this?
jdrose>
jdrose>I think some clarifications and explanations from participants 
jdrose>from Nortel are in order.
jdrose>
jdrose>-Jonathan R.
jdrose>
jdrose>
jdrose>Dean Willis wrote:
jdrose>
jdrose>> 
jdrose>> I've just noticed that Nortel has recently been issued a patent 
jdrose>> for which they have made an IPR disclosure relative to RFC 
jdrose>> 3428, the SIP MESSAGE method.
jdrose>> 
jdrose>> The disclosure document is listed at:
jdrose>> 
jdrose>> http://www.ietf.org/ietf/IPR/nortel-ipr-rfc-3428.txt
jdrose>> 
jdrose>> The issued patent is US patent number 6,757,732
jdrose>> 
jdrose>> and you can retrieve its full text from:
jdrose>> 
jdrose>> http://patft.uspto.gov/netahtml/srchnum.htm
jdrose>> 
jdrose>> 
jdrose>> --
jdrose>> Dean Willis
jdrose>> SIP co-chair
jdrose>> 
jdrose>> _______________________________________________
jdrose>> Sip mailing list  https://www1.ietf.org/mailman/listinfo/sip
jdrose>> This list is for NEW development of the core SIP Protocol Use 
jdrose>> [email-masked] for questions on current sip 
jdrose>> Use [email-masked] for new developments on the application of 
jdrose>> sip
jdrose>> 
jdrose>
jdrose>

_______________________________________________
Sip mailing list  https://www1.ietf.org/mailman/listinfo/sip
This list is for NEW development of the core SIP Protocol Use
[email-masked] for questions on current sip Use
[email-masked] for new developments on the application of sip