This report has been endorsed by consensus of the 3rd Voice Browser PAG.
Nortel Inc. has excluded the U.S. patent no. 6,701,366 from W3C RF licensing commitment. Nortel Inc. does not believe there are essential claims as in the definition of the W3C Patent Policy, but they do not guarantee the absence of essential claims. If there are essential claims, Nortel Inc told in their first disclosure statement, they are willing to license U.S.Patent no. 6,701,366 on RAND terms.
The PAG recommends:
CCXML, the language on call control, is developed by the Voice Browser WG within W3C. CCXML is currently in Last Call.
The Voice WG is a long standing Group within W3C that already produced VoiceXML as a Recommendation. W3C's work on Voice started already in 2000. In 2004, W3C issued a Patent Policy that introduced new rules for Working Groups. In January 2005, the Voice WG made the transition from the former Current Patent practice to the new Patent Policy. According to the transition procedure laid down by W3C, the Participants of the Voice WG had to re-join the Working Group while giving the appropriate IPR-Statements.
While other Participants re-joined the Voice WG, Nortel Inc. did not re-join the Voice WG. But in June 2005, Nortel decided to join the Voice WG. Nortel made the appropriate statements while joining by asserting that any patent under the control of Nortel Inc. that contains essential claims on Recommendations produced by the Voice WG would be available according to the W3C licensing requirements. According to the rules of the Patent Policy, Nortel Inc also excluded U.S. patent no. 6,701,366 reading on CCXML upon joining the Voice WG with the following wording:
This is to inform the W3C Voice Browser Working Group that Chris Passaretti has become personally aware that Nortel Networks owns an issued patent that may have certain relevant claims and may be essential to the proposed draft Call Control XML Version 1.0 specification under development.
That patent is U.S. patent no. 6,701,366 entitled "Providing Communication Services".
Further, this submission is made to the Voice Browser Working Group, and the W3C generally, with the understanding that Nortel Networks is not prepared to be make available any Essential Claims of such patent under the Royalty-Free licensing requirements of the W3C Patent Policy now adopted by the Voice Browser Working Group. However, to the extent the above patent contains Essential Claims to the approved Voice Browser Call Control XML specification, Nortel Networks will make available a license under such Essential Claims on a non-discriminatory basis and upon reciprocal, reasonable terms and conditions (RAND), including royalties and/or other fees, for the practice of and compliance with the resulting Call Control XML standard recommendation.
In addition, this letter does not grant any right to W3C or the W3C Voice Browser Working Group with respect to the company's copyrights or other intellectual property rights that cover the proposed standard, other than provided above. All license negotiations will be held with the parties concerned, outside the standards body.
A 3rd Voice PAG was chartered and all stakeholders were invited to participate. Despite repeated invitations, Nortel Inc. did not join the Voice PAG. This made communications around the patent issue very difficult. On the one hand, participants of the PAG were reluctant to analyze the patent. On the other hand, Nortel Inc. was not willing to give additional information on the match of individual claims of the excluded patent and on which part of the CCXML specification it would read on.
Consequently, the PAG made no substantive analysis of U.S. patent no. 6,701,366. The creation of a claim chart was discussed but not implemented.
A discussion within the Patent and Standards Interest Group was triggered about the future requirements for exclusion and also for disclosure statements. This tricky discussion took a long time and the result came too late for the 3rd Voice PAG.
On 14 November 2006, Michelle Lee from Nortel Inc legal department sent a message to the Chair of the 3rd Voice PAG with the follwoing content:
Reference is made to Nortel Networks Patent Disclosure and Statement to the W3C Voice Browser Working Group regarding Call Control XML, version 1.0 specification (CCXML 1.0), at http://www.w3.org/2004/01/pp-impl/34665/375868/show-license#x1181. On our understanding, we have made that disclosure in accordance with W3C Patent Policy, but are not required to perform an essential patent analysis of the relationship between patents and a W3C specification proposed for Candidate Recommendation.
However, to assist the W3C Voice Browser Patent Advisory Group (PAG) resolution, Nortel Networks makes this further voluntary statement, which is qualified based only on present belief of Nortel's patent attorney and not on expertise in CCXML or on expert opinion:
Nortel Networks has concluded that it believes Nortel U.S. Patent no. 6,701,366 does not contain claims that meet the definition of Essential Claims, as defined in the W3C Patent Policy (5 February 2004), with respect to the CCXML 1.0 Candidate Recommendation as specified in the W3C Working Draft, 29June 2005 http://www.w3.org/TR/2005/WD-ccxml-20050629/. This statement is not a representation or warranty of any kind.
This mail was brought to the attention of the PAG by the Chair. The PAG asked for a new statement from Nortel Inc. that would cover all the changes since June 2005. Consequently, the CCXML task force of the Voice WG published a new Draft CCXML Specification that was brought to Nortel's attention. The Voice WG finally made the decision to publish CCXML as a Last Call Draft. This Draft was published on 19 January 2007.
The PAG then asked Nortel Inc. to confirm their earlier statement but this time reading on the Last Call Draft. Nortel Inc. confirmed on 2 March 2007 with the following archived message:
Further to Abbie's discussion with Mr. Bratt and our email to the PAG dated November 14, 2006, Nortel maintains the same voluntary statement for the CCXML 1.0 Last Call Working Draft (Jan 19/07), as follows:
Reference is made to Nortel Networks Patent Disclosure and Statement to the W3C Voice Browser Working Group regarding Call Control XML, version 1.0 specification (CCXML 1.0), at http://www.w3.org/2004/01/pp-impl/34665/375868/show-license#x1181.
On our understanding, we have made that disclosure in accordance with W3C Patent Policy, but are not required to perform an essential patent analysis of the relationship between patents and a W3C specification proposed for Candidate Recommendation. However, to assist the W3C Voice Browser Patent Advisory Group (PAG) resolution, Nortel Networks makes this further voluntary statement, which is qualified based only on present belief of Nortel's patent attorney and not on expertise in CCXML or on expert opinion:
Nortel Networks has concluded that it believes Nortel U.S.Patent no. 6,701,366 does not contain claims that meet the definition of Essential Claims, as defined in the W3C Patent Policy (5 February 2004), with respect to the CCXML Version 1.0 Candidate Recommendation as specified in the W3C Last Call Working Draft, 19Jan 2007 http://www.w3.org/TR/2007/WD-ccxml-20070119/. This statement is not a representation or warranty of any kind.
In doing so, as before, this statement is made to the PAG and Voice Browser Working Group on the understandings that:
We would also ask you post the contents of this email on the CCXML PAG public record and the Voice Browser Working Group Patent Disclosure website http://www.w3.org/2004/01/pp-impl/34665/status, so that it is publicly visible with Nortel's additional information.
Kind Regards,
Michelle Lee
Counsel, IP Law
Nortel Networks