[OpenID board] FW: [Marketing] IPR Info on Specs Page

Gabe Wachob gwachob at wachob.com
Fri Jul 20 16:35:01 UTC 2007


Thanks for the link!

Not sure why this is going to my personal email, but I just wanted to
respond that I had no idea Simon Phipps had been blogging on this
topic so frequently (there's some chasm between the identity blogs - I
haven't seen any cross linking!), and I wish I had seen these earlier!

As for the necessary claims, I am sympathetic (believe me, as someone
with both open source development and legal education background, I
appreciate the issues around requiring judgment calls). But I think
eliminating the necessary claims language is a big jump and would
raise red flags for many parties.

Simon is right in that removing the necessary claims language takes
the judgment call out of the hands of the developer, but it also
eviscerates the patent-holder's right to enforce the claims in many
cases where they may want to enforce the claims. For example, in a
situation where someone who infringes a claim in an implementation of
a spec, but in a way that is not required for the spec (perhaps the
spec says "use encryption method X or stronger" and an implementer
implements a stronger encryption method that is patented and not

How does the patent holder say "you can implement the spec, but I'm
not giving you license to all my patent claims just because you happen
to be implement them in an implementation of the spec"? How else does
a patent owner/promisor limit their promise to the actual stuff needed
to implement a spec?

Obviously Sun didn't feel this was an issue - and that probably says a
lot about their attitude towards offensive patent litigation - but for
companies that do have offensive patent infringement litigation as a
business practice, how do you give them the clarity about what they
are giving up? (offensive in the sense of going after patent
infringees that have no initiated patent action against the patent
owner -- I'm not making a judgment call here ;)


On 7/20/07, Eve L. Maler <Eve.Maler at sun.com> wrote:
> Hi folks-- No permission needed, really, to copy the Sun
> non-assertion covenant; we encourage people to base theirs on ours.
>   If you have questions, don't hesitate to get in touch with me.
> David is right that "necessary claims" (or "essential claims")
> language is more restrictive and provides less assurance to
> developers.  Simon Phipps has blogged in detail on this and on other
> characteristics of such declarations:
> http://onesearch.sun.com/search/blog/index.jsp?col=blog&charset=utf-8&weblog=webmink&qt=covenant
>         Eve
> Recordon, David wrote:
> > My understanding, and I certainly don't play a lawyer on tv, is that in
> > order of openness it is Sun first, then VeriSign, and then Microsoft.
> > While Microsoft might disagree, the covenants issued by Sun and VeriSign
> > are much simpler and have fewer places where there could be considered
> > ambiguity.
> >
> > The difference between Sun's statement and VeriSign's is that VeriSign
> > chose the "necessary claims" wording when referring to our patents and
> > whereas Sun removed the ability to argue if a claim is necessary by
> > covering all of their patents.  This is something that will be balanced
> > by IPR counsel and what they're comfortable with.
> >
> > All three of the covenants include termination wording in case of a
> > patent lawsuit.  Sun's and VeriSign's apply to threats or suits against
> > any OpenID 1.1 implementation whereas Microsoft's only terminates if the
> > suit is against Microsoft versus any implementer.  Once again, this will
> > have to do with your companies IPR policies, though IMHO it is better to
> > work to protect every implementer especially given the less than perfect
> > IPR situation thus far.
> >
> > I know very little about the IBM statement itself, though cc'ing Gabe
> > and Eve who hopefully can provide some information.
> >
> > Please also feel free to copy the VeriSign wording, we copied it with
> > permission from Sun, if it would be useful.
> >
> > --David
> >
> > -----Original Message-----
> > From: board-bounces at openid.net [mailto:board-bounces at openid.net] On
> > Behalf Of Johannes Ernst
> > Sent: Friday, July 20, 2007 12:33 PM
> > To: board at openid.net
> > Subject: Re: [OpenID board] FW: [Marketing] IPR Info on Specs Page
> >
> > Is there a wording that we can use?
> >
> > Dick, are you using the same that VeriSign is using, or the Sun one, or
> > Microsoft, IBM ... there seem to be many to choose from these days ;-)
> >
> >
> >
> > On Jul 19, 2007, at 19:54, Recordon, David wrote:
> >
> >> Had meant to do this for a while, but seemed especially important
> >> given the article by Dave Kearns and then a blog post by Phil Hunt of
> >> Oracle (http://blogs.oracle.com/identityprivacy/2007/07/19#a67).
> >>
> >> I know the board passed a motion a few months ago for all board
> >> members to issue non-assertion statements.  I'm thinking now would be
> >> a good time to start getting that rolling since VeriSign has issued
> >> one and Sxip has said they will to Dave Kearns.
> >>
> >> I'd be happy to start contacting companies around this as well.
> >>
> >> --David
> >>
> >> -----Original Message-----
> >> From: marketing-bounces at openid.net [mailto:marketing-
> >> bounces at openid.net] On Behalf Of Recordon, David
> >> Sent: Friday, July 20, 2007 11:51 AM
> >> To: marketing at openid.net
> >> Subject: [Marketing] IPR Info on Specs Page
> >>
> >> Just added a section on IPR status and efforts around OpenID specs to
> >> http://openid.net/specs.bml.  This is becoming quite relevant given
> >> some of the discussions and articles this week.
> >>
> >> Now to build out this list of companies! :)
> >>
> >> --David
> >> _______________________________________________
> >> marketing mailing list
> >> marketing at openid.net
> >> http://openid.net/mailman/listinfo/marketing
> >> _______________________________________________
> >> board mailing list
> >> board at openid.net
> >> http://openid.net/mailman/listinfo/board
> >
> > Johannes Ernst
> > NetMesh Inc.
> >
> >
> >
> --
> Eve Maler                                         +1 425 947 4522
> Technology Director                           eve.maler @ sun.com
> CTO Business Alliances group                Sun Microsystems, Inc.

Gabe Wachob / gwachob at wachob.com \ http://www.wachob.com
CTO, Amsoft / gabe.wachob at amsoft.net \ http://www.amsoft.net

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