Voice Browser Patent Statements

For more information see the Voice Browser home page. This page was last updated on 18 May 2004.

The following statements are the patent disclosures and license commitments associated with the Voice Browser Working Group (WG) as required by the W3C Current Patent Practice (CPP). These statements may be subject to modification based on discussions during the Recommendation track process.

The W3C does not take a position regarding the validity or scope of any intellectual property right or other rights that might be claimed to pertain to the implementation or use of the technology, nor the extent to which any license under such rights might or might not be available. Copyright of WG deliverables is vested in the W3C.

Results of the Voice Browser Patent Advisory Group (PAG)

Under the terms of the Current Patent Practice (CPP) a PAG will be triggered for a Working Group by one of two conditions:

1. incomplete patent disclosures from current Working Group participants in good standing
2. discovery of specific patent claims likely to be essential that are not available on RF terms.

There have been two PAG's for the Voice Browser activity. The first PAG (W3C Members only) was held in 2001 and was instrumental in collecting patent disclosures and resolving trademark issues. The second PAG (W3C Members only) was launched in March 2003 and has now concluded its work. The PAG reported in June 2003. that it had satisfactorily resolved the issues relating to VoiceXML surrounding 3 of the 4 identified patents.

The first two patents are now owned by Scansoft, which offers royalty-free licenses to Essential Claims contained in these patents. The third patent is owned by Avaya. Gene Potkay, Vice-President, Intellectual Property for Avaya, stated that Avaya does not own any patents that meet the criteria of Essential Claims with respect to VoiceXML 2.0. With regards to the fourth patent (disclosed by Rutgers), the PAG noted that the representations made by the owner do not include an assertion that it contains Essential Claims, and thus does not create an issue that the PAG must resolve. As a result, there are no known impediments to Royalty Free implementations of the W3C Speech Interface Framework specifications. For details see the PAG report.

Summary of Voice Browser WG Patent Statements

This table summarizes patent statements from W3C Members relating to the Voice Browser Working Group. Either these Members have provided patent disclosures and license commitments statements or representatives have stated that they are personally not aware of intellectual property rights essential to the specifications developed by the Voice Browser WG. A further case is where Members have indicated that a full disclosure is to follow. Such entries are marked as deferred.

The 'license summary' column is a W3C Team characterization of the Member's statement into one of three general types of licenses: 1) Royalty Free, 2) Reasonable and non-discriminatory terms (RAND), or 3) unknown if no license is needed at this time, and no licensing information has been supplied to cover the possibility that a relevant patent may turn up at a future date. This summary is not offered to suggest the exact licensing terms. Organization names with the suffix "VBWG" are current members of the W3C Voice Browser working group. Names mentioned with an * were invited experts at the time of their declaration.

The disclosure statements are in the W3C Member or Team site and consequently not available to the general public. As a result, the statements are reproduced after this table, where IPR has been disclosed.

Summary of Patent Disclosures and Licensing Statements

Any disclosed patents and licensing offers brought to the attention of the PAG will be listed here. This section reproduces only the patents statements which disclose IPR known to the representative making the statement. Representatives were not asked to make patent searches, but were expected to apply due diligence and to make their statements in good faith.

Avaya

This letter is to provide assurance that Avaya Inc. will provide licenses under its patents that are essential to implementing the proposed Voice Browser standard.

Although a comprehensive legal search has NOT been conducted, the "Britton patent" U.S. 4,785,408 now owned by Avaya may indeed be relevant and essential to the proposed Voice Browser standard with respect to certain claims. We also believe that several pending applications will yield patents that pertain to the proposed standard.

Avaya Inc. is not prepared to waive its patent rights. However, if Avaya's submission relating to the proposed standard is adopted, Avaya is prepared to make a license relating to the future Standard available to any qualified applicant, upon reasonable, non-discriminatory terms and conditions, to the extent that Avaya Inc. has existing patents or applications which are directed to and necessary (i.e. essential) for the implementation of the practice of that standard. Such licenses would be subject to reciprocation (grantback) by a putative licensee and would be in accordance with Avaya's then-current normal licensing terms and royalty rates.

This letter does not grant any right to the W3C Voice Browser Working Group with respect to the company's copyrights or other intellectual property rights that cover contributions to the proposed standard, other than provided above. All license negotiations will be held with the parties concerned, outside the standards body. Please direct all such licensing matters to my attention.

Gene Potkay
Vice-President, Intellectual Property
Patent & Licensing Management
Avaya Inc.
Rm 3W524
211 Mt. Airy Road
Basking Ridge, NJ 07920-2332

Genesys

My organization has patents that may be essential to the above deliverables. Patent numbers: U.S. patent 6011844, 6324276. If they are essential, we agree to license them on Royalty-Free terms (as defined in section 6 of the Current Patent Practice Note) to all implementers, whether or not they are Members of W3C.

Hewlett Packard

Neither I, Jim Bell, (HP's AC Rep) nor Marianne Hickey (HP's representative in the voice browser working group) are aware of any HP patent claims that we believe are essential to any recommendation track technical report in the voice browser activity.

We would like to identify a recently issued patent as possibly being of interest to the voice browser activity. We are not aware that this patent has any essential claims. However, so that others can make their own judgment as to its relevance, we identify the patent as follows: US Patent 6,243,443 Title: Method of making available content resources to users of a telephone network Issued: June 5, 2001. Assignee: Hewlett-Packard Company.

Jim Bell
Hewlett Packard

IBM

Extracted from response to call for review on rechartering the Voice Browser working group. Section 3 of the form is for disclosures of patent claims.

My organization will respond to Section 3 (Patent Claims) regarding the other proposed deliverables, at a later date, based upon knowledge of the subsequent specification requirements. Under the W3C Current Patent Practice Note, a complete disclosure obligation response is expected by the time the Recommendation-track deliverable(s) enter Candidate Recommendation (or Proposed Recommendation if there is no Candidate Recommendation).

Lernout & Hauspie

L&H has been acquired by Scansoft

Lernout & Hauspie Speech Products N.V. has patents, patent applications and other IP rights that relate to speech recognition technology, speech synthesis technology and dialogue technology.

To the best of my knowledge, these do not contain IPR Claims that are essential for the specifications that the Voice Browser Working Group is currently producing.

I have no personal knowledge of any IPR Claims held by Lernout & Hauspie regarding Voice Browsers other than in the technology fields mentioned above.

Lernout & Hauspie Speech Products did not conduct a full search of all its IP rights, patents, or patent applications that may relate to voice browsers. Lernout & Hauspie Speech Products reserves all rights to its intellectual property, including, but not limited to, its patents, copyrights, trademarks and trade secrets. Persons who wish to contact L&H about licensing conditions for these patents are requested to contact

Kris Seyen
Director Worldwide Intellectual Property and International Legal Affairs
Lernout & Hauspie Speech Products N.V.
Flanders Language Valley, 50
B-8900 IEPER, BELGIUM
e-mail: Kris.Seyen@lhs.be

Luc Van Tichelen
Director Dialogue Technology
W3C AC Representative for L&H
W3C Voice Browser Working Group member

Motorola

VoiceXML 2.0

To the best of my personal knowledge as the W3C Advisory Council representative for Motorola, Inc. ("Motorola"), we believe that Motorola has one or more patents containing claims which may be essential to the "VoiceXML v2.0 deliverable" ("VoiceXML v2.0") as defined in the Voice Browser working group charter dated September 25th, 2002, and based on the definition of "Essential Claims" provided below. These have been previously identified in our initial Voice Browser patent disclosure statement (15 August 2001).

If the implementation of "VoiceXML v2.0" as part of a W3C Recommendation requires the use of Essential Claims of any Motorola patents, any company (W3C member or not) will be able to obtain a worldwide, non-exclusive license on royalty-free and other reasonable and non-discriminatory terms to those Patent Claims owned or controlled by Motorola which are essential to implement the "VoiceXML v2.0" as a part of a W3C Recommendation.

Motorola may also have patent claims which are not essential to the implementation of "VoiceXML v2.0", but may facilitate the implementation of "VoiceXML v2.0" as a part of a W3C Recommendation into products. In addition, Motorola has patent claims which may be essential to implement technical alternatives to "VoiceXML v2.0" which may be considered by the Voice Browser working group. In such cases, Motorola will provide nonexclusive, non-discriminatory licenses under reasonable terms and conditions, in accordance with Motorola's normal licensing policies, should these claims be employed in the implementation of a W3C Recommendation.

One precondition of any such license granted to a company ("licensee") shall be the licensee's agreement to grant a reciprocal worldwide, royalty-free, nonexclusive license to any Essential Claims owned or controlled by the licensee or its Affiliates (its parent company or any company in which it or its parent company have more than 50% of the ownership or control), to Motorola necessary to implement in products or services any W3C Recommendation which incorporates "VoiceXML v2.0". Motorola expressly reserves all other patents and intellectual property rights it may have, including the right to refuse to grant or terminate a license to any company and its Affiliates if it or one of its Affiliates asserts a claim of infringement against Motorola's products or services that implement any W3C Recommendation.

We understand that under the W3C Current Patent Practice Note, a complete disclosure obligation response is expected by the time the Recommendation-track deliverable(s) enter Candidate Recommendation (or Proposed Recommendation if there is no Candidate Recommendation).

Definition of Essential Claims:

"Essential Claims" shall mean all claims in any patent or patent application with an effective filing date within one year and one day after the publication of the first Public Working Draft, in any jurisdiction in the world, that a Member (or a licensor or licensee, with reference to entities other than Members) owns, or under which a Member (or a licensor or licensee) has the right to grant licenses without obligation of payment or other consideration to an unrelated third party, that would necessarily and unavoidably be infringed in remaining compliant with the "VoiceXML v2.0 deliverable". A claim is necessarily and unavoidably infringed hereunder when there are no other possible implementations of the Recommendation that avoid infringing the claim, for technological rather than commercial reasons. Existence of a non-infringing alternative shall be judged based on the state-of-the-art at the time the specification becomes a Recommendation.

The following are expressly excluded from and shall not be deemed to constitute Essential Claims:

1. any claims other than as set forth above even if contained in the same patent as Essential Claims; and

2. claims which would be infringed only by

   • portions of an implementation that are optional or not necessary or required by the Recommendation, or

   • combinations of elements of the Recommendation; or

   • enabling technologies that may be necessary to make or use any product or portion thereof that complies with the Recommendation but are not themselves expressly set forth in the Recommendation (e.g., semiconductor manufacturing technology, compiler technology, object-oriented technology, basic operating system technology, and the like); or

   • the implementation of technology developed elsewhere and merely incorporated by reference in the body of the Recommendation.

XHTML+Voice

At this time, and without performing a detailed patent search, neither the Motorola W3C Advisory Council representative, nor the participants of Motorola, Inc. ("Motorola") in the W3C's Multimodal Interaction Working Group, are aware of any patents or pending applications which contain Essential Claims necessary to implement the "xHTML + VoiceXML v1.0 profile" ("x + V v1.0"), as submitted to the W3C by IBM, Motorola and Opera and acknowledged by the W3C on December 21, 2001, and based on the definition of Essential Claims as provided below, apart from those noted on our IPR statement regarding the "VoiceXML 2.0 deliverable".

In the future, if the implementation of "x + V v1.0" as part of a W3C Recommendation requires the use of Essential Claims of any Motorola patents, any company (W3C member or not) will be able to obtain a worldwide, nonexclusive license on royalty-free and other reasonable and non-discriminatory terms to those Essential Claims owned or controlled by Motorola essential to implement in products or services "x + V v1.0" as a part of that W3C Recommendation.

Motorola may also have patent claims which are not essential to the implementation of "x + V v1.0", but may facilitate the implementation of "x + V v1.0" as a part of a W3C Recommendation into products. In addition, Motorola has patent claims which may be essential to implement technical alternatives to "x + V v1.0" being considered in the Multimodal Interaction working group. In such cases, Motorola will provide nonexclusive, non-discriminatory licenses under reasonable terms and conditions, in accordance with Motorola's normal licensing policies, should these claims be employed in the implementation of a W3C Recommendation.

One precondition of any such license granted to a company ("licensee") shall be the licensee's agreement to grant a reciprocal worldwide, royalty-free, nonexclusive license to any Essential Claims owned or controlled by the licensee or its Affiliates ( its parent company or any company in which it or its parent company have more than 50% of the ownership or control), to Motorola necessary to implement in products or services any W3C Recommendation which incorporates "x + V v1.0". Motorola expressly reserves all other patents and intellectual property rights it may have, including the right to refuse to grant or terminate a royalty-free license to any company and its Affiliates if it or one of its Affiliates asserts a claim of infringement against Motorola's products or services that implement any W3C Recommendation.

We understand that under the W3C Current Patent Practice Note, a complete disclosure obligation response is expected by the time the Recommendation-track deliverable(s) enter Candidate Recommendation (or Proposed Recommendation if there is no Candidate Recommendation).

Definition of Essential Claims:

"Essential Claims" shall mean all claims in any patent or patent application with an effective filing date within one year and one day after the publication of the first Public Working Draft, in any jurisdiction in the world, that a Member (or a licensor or licensee, with reference to entities other than Members) owns, or under which a Member (or a licensor or licensee) has the right to grant licenses without obligation of payment or other consideration to an unrelated third party, that would necessarily and unavoidably be infringed in remaining compliant with the "xHTML + VoiceXML v1.0 Profile". A claim is necessarily and unavoidably infringed hereunder when there are no other possible implementations of the Recommendation that avoid infringing the claim, for technological rather than commercial reasons. Existence of a non-infringing alternative shall be judged based on the state-of-the-art at the time the specification becomes a Recommendation.

The following are expressly excluded from and shall not be deemed to constitute Essential Claims:

1. any claims other than as set forth above even if contained in the same patent as Essential Claims; and

2. claims which would be infringed only by

   • portions of an implementation that are optional or not necessary or required by the Recommendation, or

   • combinations of elements of the Recommendation; or

   • enabling technologies that may be necessary to make or use any product or portion thereof that complies with the Recommendation but are not themselves expressly set forth in the Recommendation (e.g., semiconductor manufacturing technology, compiler technology, object-oriented technology, basic operating system technology, and the like); or

   • the implementation of technology developed elsewhere and merely incorporated by reference in the body of the Recommendation.

Nokia

See disclosure of 26 August 2002, and included here for convenience:

Under condition that all members of the Voice Browsing Working Group agrees to change its current patent practice to act as a Royalty-Free Working Group, Nokia is prepared to grant a Royalty-Free license according to the following statement:

Regarding Essential claims in respect of the Voice Browser specifications in W3C standardisation, to the extent those Essential claims are included into the final Voice Browser specifications in W3C standards, Nokia and its Affiliates agrees not to assert those claims in Nokia patent(s), as specified below, that is/are technically necessary to implement those parts of the final Voice Browser specifications against any other party in respect of its implementation of the specification, provided that the party relying on this commitment agrees not to assert patents against Nokia or its Affiliates.

Patent application: PCT/EP98/06030

Philips

Philips speech interests have been acquired by Scansoft

The following Philips patent US 6035275 (Brode) may be relevant to the W3C's VoiceXML Working Group. Please be informed that the policy of Philips is to license its IPR under RAND conditions.

The following Philips patent US 5,621,891 may be relevant to the W3C's VoiceXML Working Group. Please be informed that the policy of Philips is to license its IPR under RAND conditions.

Jan van der Meer
AC Rep Philips

Rutgers University

This is to advise you that Rutgers, The State University of New Jersey ("Rutgers") will offer patent licenses for US Patent 6,240,448 B1 relating to a standard adopted by your organization including but not limited to Voice Browsers, as follows:

If Rutgers has patents and/or pending applications which are applicable to the implementation of said standard, Rutgers is prepared to grant - on the basis of reciprocity (grant back) - a patent license on reasonable, non-discriminatory terms and conditions.

You are free to publish the above on your Web page and refer it to all other Advisory and Working Groups.

This letter does not grant any right with respect to copyright or other intellectual property rights that relate to said standard other than as provided above. All license negotiations will be held with the parties concerned, outside the standards body. Please direct all such licensing matters to my attention.

Any questions should be directed to:

Peter J. Crefeld
Asst. Dir., Information Tech./Eng.
Office of Corporate Liaison
And Technology Transfer
Rutgers, The State University
58 Bevier Road
Piscataway, NJ 08854-8010
Phone: 732/445-2864
Fax: 732/445-5670
email: pcrefeld@ocltt.rutgers.edu

William T. Adams, Director

Scansoft

To the best of my personal knowledge, as the W3C Advisory Committee representative for ScanSoft, Inc. ("ScanSoft"), I believe that ScanSoft has one or more patents containing claims that may be essential to a compliant implementation of the VoiceXML 2.0 specification, based upon the definition of "Essential Claims" set forth below. These include two patents that were formerly owned by Philips and which were identified by Philips' patent disclosure to W3C.

If the implementation of VoiceXML 2.0 as part of a W3C Recommendation requires the use of Essential Claims of any ScanSoft patents, any company (W3C member or not), upon written request, will be able to obtain a worldwide, non-exclusive license on royalty-free terms and other reasonable and non-discriminatory terms to those patent claims owned or controlled by ScanSoft or under which ScanSoft has the right to grant licenses without obligation of payment or other consideration to an unrelated third party that are essential to implement the VoiceXML 2.0 specification as a part of a W3C Recommendation.

ScanSoft may also have patent claims that are not essential to the implementation of VoiceXML 2.0 but may facilitate the implementation of VoiceXML 2.0 as a part of a W3C Recommendation into products. In addition, ScanSoft may have patent claims that may be essential to implement technical alternatives to VoiceXML 2.0 which may be considered by the Voice Browser working group. ScanSoft expressly reserves all rights it may have in such patent claims.

One condition of any license granted to a company ("licensee") shall be the licensee's agreement to grant to any company (W3C member or not) a reciprocal worldwide, royalty-free, nonexclusive license to any Essential Claims owned or controlled by the licensee, or a parent company or any company in which it or a parent company have more than 50% of the ownership or control (collectively, "Affiliates"), that are essential to implement the VoiceXML 2.0 specification as a part of a W3C Recommendation.

ScanSoft will grant such licenses as long as the VoiceXML 2.0 specification is part of a W3C Recommendation that is in effect. ScanSoft expressly reserves all other patents and intellectual property rights it may have, including the right to refuse to grant or to terminate a license to any company and its Affiliates if it or one of its Affiliates asserts a claim of infringement against ScanSoft, its Affiliates, or ScanSoft's or its Affiliate's products or services.

"Essential Claims" shall mean all claims in any patent or patent application with an effective filing date prior to the publication of the first public Working Draft of the specification and extending until one year and one day after the publication of the first public Working Draft, in any jurisdiction in the world that would necessarily be infringed by implementation of the Recommendation. A claim is necessarily infringed hereunder only when it is not possible to avoid infringing it because there is no non-infringing alternative for implementing the normative portions of the Recommendation for technological rather than commercial reasons. Existence of a non-infringing alternative shall be judged based on the state of the art at the time the specification becomes a Recommendation.

The following are expressly excluded from and shall not be deemed to constitute Essential Claims:

1. any claims other than as set forth above even if contained in the same patent as Essential Claims;

2. claims that would be infringed only by:

   • portions of an implementation that are not specified in the normative portions of the Recommendation, or
   • combinations of elements of the Recommendation; or
   • enabling technologies that may be necessary to make or use any product or portion thereof that complies with the Recommendation and are not themselves expressly set forth in the Recommendation (e.g., semiconductor manufacturing technology, compiler technology, object-oriented technology, basic operating system technology, and the like); or
   • the implementation of technology developed elsewhere and merely incorporated by reference in the body of the Recommendation; and

3. design patents and design registrations.

Please direct all licensing inquiries to

Richard M. Wong
Legal Counsel
ScanSoft, Inc.
9 Centennial Drive
Peabody, MA 01960
978-977-8143
richard.wong@scansoft.com

Snowshore Networks

We may have unpublished patent applications that may or may not cover essential technology. If SnowShore Networks, Inc.'s does have intellectual property that does cover essential technology, it is our intention to make it available on a royalty-free basis, assuming there is no other encumbered intellectual property in the specification.

Telera

Telera has been acquired by Genesys

The following extract is from the disclosure of 17 August 2001. This has now been superceded by the disclosure of 28 January 2003, which offers Royalty Free terms.

Telera employees involved with the W3C Voice Browser/XML Working Group activities are not personally aware of any issued Telera patents that include claims that are essential to implement currently known Voice Browser / XML specifications. Telera does have pending patent applications that may relate to current or future W3C Voice Browser/XML Working Group technical report(s), specification(s), recommendation(s) or other work product, however, it is Telera's policy, in accordance with W3C guidelines, not to disclose specific information regarding pending patent applications until such applications have been published or issued, as applicable.

In the event that an essential patent (i.e., one which claims subject matter necessary for a compliant implementation of the W3C Voice Browser Working Group Specification or related documents) issues, Telera is willing to grant licenses under the essential claims of such a patent to those parties wishing to obtain such a license under nonexclusive, reasonable, nondiscriminatory terms, according to the then-current, standard Telera licensing terms and conditions; provided that a reciprocal license is granted by the prospective licensee under its essential patents, if any.

Parties wishing to request a license may direct inquiries to:

Steve Tennis
Vice President & General Counsel
Telera, Inc.
910 East Hamilton Ave., Ste. 200
Campbell, CA 95008
+1 408-626-6614; +1 408-377-2670 (fax)
tennis@telera.com