This report, issued on 27 June 2003, has been endorsed by consensus of the Voice Browser PAG, with 12 members voting in favor and 4 abstentions.
This Voice Browser PAG was announced on 15 Feb 2003. The PAG held its first meeting on March 14, 2003. The goals of the PAG, as stated in its charter were to consider 4 identified patent disclosures and
The PAG made no substantive analysis of any of the identified patents. The PAG solicited input from the identified patent owners in case additional information would help clarify the situation.
The above patents are now owned by ScanSoft, which is a member of W3C and this PAG. On March 31, 2003, ScanSoft issued a new licensing statement covering these patents. In this statement ScanSoft offers royalty-free licenses to Essential Claims contained in these patents. While certain details of the statement are not in precise conformance with the Current Patent Practice, the W3C Team, with advice of the PAG, concluded that the licensing statement was acceptable. Thus the PAG agreed that the Philips/ScanSoft patent issue was resolved according to the requirements of the PAG charter and the CPP.
In response to a request to Avaya for further information, Gene Potkay, Vice-President, Intellectual Property, provided the PAG with a memorandum which states, in part, "To the best of my personal knowledge, Avaya does not own any patents at this time that meet the criteria of Essential Claims with respect to the VoiceXML 2.0 Candidate Recommendation. In particular, with respect to U.S. Patent 4,785,408 ("Britton"), Avaya has concluded that Britton does not contain claims that meet the criteria of Essential Claims as defined in the W3C Note - Current Patent Policy (24 January 2002)." Thus the PAG agreed that the Avaya patent issue was resolved according to the requirements of the PAG charter and the CPP.
The PAG attempted to contact the licensing office of Rutgers University on March 28, 2003, seeking further clarification. On May 6, the PAG received a response from Rutgers, referring us to their exclusive licensing agent. On May 13, the PAG requested further information from the licensing agent, with a deadline of 31 May for a response. While an acknowledgement was received on May 13, no substantive response has arrived.
The PAG did not substantively address the issue of whether or not the Rutgers Patent contains Essential Claims. The Rutgers Patent was disclosed to the Voice Browser Working Group without any assertion that it contains Essential Claims. To date, no assertions have been made by Rutgers, its exclusive licensing agent or anyone else, that the Rutgers Patent contains Essential Claims. The PAG made efforts to discuss this issue with Rutgers and its exclusive licensing agent, but no substantive discussion took place. Because no Essential Claims have been asserted to exist, the Rutgers Patent does not raise an issue that the PAG must resolve. No inference should be drawn with respect to whether or not the Rutgers Patent contains Essential Claims from the PAG's conclusion that the Rutgers Patent does not create an issue that the PAG must resolve.
The PAG believes it has satisfactorily resolved the issues surrounding 3 of the 4 identified patents. With regard to the Rutgers patent, 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.
The PAG advises the Director that work should continue on the VoiceXML 2.0 specification.
The PAG is not able to ensure the Director or implementors that either the Rutgers patent or any presently unknown patent claims will not be asserted against implementors of VoiceXML 2.0. Only time will tell. We can only say that we have considered the patents identified in the Charter and have addressed the issues as described above.
In the interest of being able to respond quickly should W3C receive notification from Rutgers or its agents that requires action by a PAG, we propose that the charter of the PAG be extended for six months (to 12 Dec 2003), covering the expected time to advance VoiceXML 2.0 to Recommendation. The PAG would be dormant until and unless such issues arise, at which time the Chair would reconvene the group.