The Opinion of the W3C's Counsel

November 3, 1999

The Opinion of the W3C's Legal Counsel

First of all it is important to clarify that there are really two different legal situations to consider in this particular situation. The first is whether or not P3P implementations would infringe upon the "communications object" patent claimed by Intermind. The second is whether or not the patent itself is valid; an issue that the W3C's counsel did not set out to address in the course of its analysis, although they did note"that the independent claims are rife with serious ambiguities."

The problem facing the W3C, however, was dealing with a developer public that was becoming hesitant to implement the P3P technology, due to the potential of having to deal with intellectual property complications.

The W3C's counsel first established that Intermind's patent describes "communications object" that would be construed by a court as "limited to a combination of metadata, data, and instructions organized as an object-oriented combination of metadata, data, and methods for operating on the data, to encapsulate location transparency and completely define the communications relationship between two computers in both directions via any network, protocol, or middleware."

The counsel then proceeded to argue that the P3P proposals (renamed to "policies" in the November Working Draft of P3P, but hereafter referred to as "proposals" for consistency with the legal analysis), used to define a site's privacy practices, were a static declaration that did not include anything resembling "methods".

As well as "proposals", the P3P platform includes APPEL (A P3P Preference Exchange Language). This language allows the expression of a user's privacy preferences. Furthermore, this expression may be transferred between computers, by the transfer of an APPEL file. Although such a file does constitute a "control structure" in that it dictates rules for the negotiation of privacy preferences, it cannot be construed as the control structure claimed in the patent, as it is not transferred from the client to the server.

In some cases, claims can be expanded beyond their literal terms under what is called the "doctrine of equivalents". According to the legal opinion, the amendments and arguments contained in the Information Disclosure Statement (IDS), filed by Intermind with the Patent Office, placed additional restrictions on the special type of control structure its patent defines. Anything disclaimed during any amendments is automatically excluded from any future proceedings.

Specifically, the W3C's counsel held that because Intermind had qualified its "control structure" in its IDS filing—in order to distinguish it from prior art, and thus justify its patent application—it had in fact placed significant limits on the patent by foregoing the right to assert infringement by any other type of control structure under the doctrine of equivalents.

Intermind conceded in its IDS that prior art included "control structures transferred from provider to consumer to control communications" and that their control structure was different because it was a "metadata-defined control structure" within a "communications object", capable of abstracting the instructions required for transport.

This then led the counsel to conclude:

"The use of P3P does not involve a communications object, much less a communications object that completely defines the communications relationship between a provider and consumer, or that provides location transparency. Accordingly, P3P does not infringe any claim of the '325 patent under the doctrine of equivalents."

The following table provides a summary of the various disqualifying factors which mean an implementation of P3P would not infringe the Intermind patent.

Where does this leave the world of open standards?

After establishing that P3P didn't infringe upon Intermind's patent, the W3C commented that they hoped not to make such analyses "a regular practice".

A certain amount of protection for standards is afforded by antitrust regulations. Professor Pamela Samuelson, a specialist in intellectual property at the University of California, Berkeley, explains:

"If you are participating in the standards process, and you are aware that a patent is in process, and you don't give notice to people, you can't just do a sneak attack."

"If you try to use your patent intentionally to monopolize the marketplace beyond the boundaries of normal exploitation, that could get you into trouble. You have to be relatively prompt in asserting your patent. That is, you can't sit back and quietly watch till everyone adopts a technology and it becomes a standard and then expect to be able to get money from everyone who's using it because of a patent."

"Some standard-setting organizations have rules that if you participate in a standards effort, and you don't reveal that you are getting a patent in the course of the standards negotiations, and you eventually get a patent, you will waive your right to get more than a reasonable license fee for its use."

ANSI, for instance, will not standardize on a patented technology unless the owner of the patent agrees to license it on fair and non-discriminatory terms.

Could more have been done earlier by the W3C?

Should the W3C have taken action to clarify this issue earlier in the P3P process? Intermind's Peter Heymann stated that the P3P working group were made aware of Intermind's work:

"We have repeatedly asserted to the standards group the existence of our intellectual property. This is something we have taken very seriously, at the risk of being perceived mildly abrasive."

Certainly it was made clear to the membership at the Push Workshop in September of 1997, because Intermind stated it clearly and included it in writing in their presentation at the workshop. A Microsoft Word file of the presentation has been available online since late fall 1997, so the membership was notified long before the patent. Still, the W3C took no action in dealing with the situation until the patent was received in early 1999.

Conclusion

What does all this mean for XML programmers and implementors of W3C standards?

The good news for the W3C is that it is highly unlikely that any court of law will judge that a P3P implementation infringes the Intermind patent. This is specifically because P3P includes no "communications object", the technology that distinguishes Intermind's patented communications system from prior art.

The bad news is that, however much the W3C doesn't want to repeat this process, it is likely that an issue of this sort will arise again before long. The Internet, XML and associated technologies are fast becoming the platform on which the majority of future commerce will be conducted. Were anyone able to attain it, the advantages of control of those means of communication will be great.

If the innovation and open development processes which have so far characterized the rapid growth of the web are to continue, then careful measures must be taken to avoid the capture of open standards by individual corporations.