Subject: Re: DEPLOY: Prior Art for Sender-ID (was Re: DEPLOY: SPF/Sender ID support in Courier.)

From: "Anne P. Mitchell, Esq." <[email-masked]>
Date: Tue, 31 Aug 2004 11:04:18 -0700

> IMHO, in light of the possible prior art, it may be very probably that
> the potential patent application is invalid or will not approved.
> Therefore, it might be feasible to ignore the IPR claim all together  
> and
> preceed with approval of Sender-ID.

Oh dear.

Never, *ever* make the mistake of thinking that a patent application 
will not be approved because of prior art.

You'd be stunned at the things which are granted patents where the 
prior art seems *so* obvious to anyone who knows (and that is a key - 
the guys at the USPTO can't know everything, and it is not their job to 
know everything).

Right now the MO at the USPTO seems to be "approve everything, and let 
them sort it out in the courts".

Anne

---

From: Yakov Shafranovich <[email-masked]>
Date: Tue, 31 Aug 2004 14:41:08 -0400

Anne P. Mitchell, Esq. wrote:
>> Therefore, it might be feasible to ignore the IPR claim all together  and
> You'd be stunned at the things which are granted patents where the prior 
> art seems *so* obvious to anyone who knows (and that is a key - the guys 
> at the USPTO can't know everything, and it is not their job to know 
> everything).
> 

Thanks for the correction. Ah, the wonders of our legal system.

Yakov

---

From: Ted Hardie <[email-masked]>
Date: Tue, 31 Aug 2004 11:55:19 -0700

Please note that this advice is contrary to the advice given
in RFC 3669.  An evaluation of prior art may be considered
in the IETF process; it should be part of a much broader
range of considerations (and I urge folks who have not
read RFC 3669 lately to read it again), but such evaluations
_do_ have their place.

Many folks are stunned by the actions of their governments,
and that prior behavior may be taken into account.  But
assuming a result without analysis is a poor response to
a working group's responsibility to determine how to
proceed in the light of IPR claims and offered licenses.

		regards,
			Ted Hardie

At 11:04 AM -0700 8/31/04, Anne P. Mitchell, Esq. wrote:
>prior art seems *so* obvious to anyone who knows (and that is a key 
>- the guys at the USPTO can't know everything, and it is not their 
>job to know everything).
>
>Right now the MO at the USPTO seems to be "approve everything, and 
>let them sort it out in the courts".
>
>
>Anne

---

From: Yakov Shafranovich <[email-masked]>
Date: Tue, 31 Aug 2004 15:33:01 -0400

Ted,

What about the actual list of possible prior art that I provided in the 
original message? My reading of RFC 3669 seems to indicate that its 
beneficial:

"
o  Possibilities of prior art should be considered.
o  It's all right, and sometimes beneficial, to discuss IPR claims and 
gather information about possible prior art on the group list.
"

Yakov

Ted Hardie wrote:
>> the guys at the USPTO can't know everything, and it is not their job 
>> to know everything).
>>

---

From: "jpinkerton" <[email-masked]>
Date: Tue, 31 Aug 2004 21:35:13 +0200

As a  matter of urgency - could we please have the details of how to contact
the United States Patent Office regarding patent applications.  It would be
*most* useful if the people on this list who know of prior art and
obviousness "proofs" could get in touch with that office immediately the
patent application is lodged.

Slainte,

JohnP.
[email-masked]
ICQ 313355492

----- Original Message -----
From: "Anne P. Mitchell, Esq." <[email-masked]>
To: "IETF MARID WG" <[email-masked]>
Sent: Tuesday, August 31, 2004 8:04 PM
Subject: Re: DEPLOY: Prior Art for Sender-ID (was Re: DEPLOY: SPF/Sender ID
support in Courier.)

---

From: Hadmut Danisch <[email-masked]>
Date: Wed, 1 Sep 2004 00:37:57 +0200

> patent application is lodged.

Prior art of what exactly? 

I didn't have the time to read all postings since the San Diego 
meeting, and I still don't know what exactly Microsoft claims to 
have a patent on.

If there is a precise description then we know what to look for in the 
archives.

regards
Hadmut

---

From: Yakov Shafranovich <[email-masked]>
Date: Tue, 31 Aug 2004 19:29:20 -0400

> If there is a precise description then we know what to look for in the 

That's the problem - there isn't a precise description and the Microsoft 
lawyers might even be right on this one - they don't know what they can 
claim until the Patent office actually gives them a decision. Although, 
they could let us know what they are trying to claim but then it would 
defeat the whole purpose of filing the patent application in secret?

The relevant question to us here, is whether the IPR issue will affect 
deployment. Part of it is whether we should ignore the IPR claims all 
together if they appear to be meaningless. In RFC 3669, section 4.6 
examples are given of IPR claims that were choosen to be ignored by the 
WG because they were frivilous. The best quote is this part which in 
light of previous posting referencing the ASRG list might be relevant:

------------------------------------------------------------------------------
    In another case, patent claims were asserted that appeared to be
    derived from working group discussion, rather than vice versa (or
    independent discovery).  The claimants were known to be following the
    working group's work when the ideas were proposed, and their patent
    filing was considerably subsequent to that time.
------------------------------------------------------------------------------

Yakov