June 1^st , 2003

Posted online, added MailBlocks patents

June 2^nd, 2003

Added prior art section, added prior art for MailBlocks patents, added original patent documents provided by MailBlocks;

June 5th, 2003

Added more prior art references for MailBlocks, added Microsoft's filtering patent and SpamAvenger's patent application

June 8^th, 2003

Added Jakob Nielsen's patent on coordinated spam detection, fixed notes section; changed introduction

June 12^th, 2003

Added MailBlocks's response regarding IPR claims, added links section

June 14^th, 2003

Added ASRG Official IPR Policy

June 26^th, 2003

Added IPR disclosure for TitanKey; added a new patent for C/R

July 8^th, 2003

Added section on e-postage patents and some patents to it (#5), added new list posting references (#0.2), added another response from MailBlocks, Inc. (#1)

2. Type of IP.

copyrights, trademarks, patents, trade secrets, etc

3. IP Information.

Patent, Serial, Publication, Registration, or Application/File number(s), Date(s) granted or applied for, Whether this disclosure relates to an unpublished pending patent application.

4. References.

Include links, ASRG list postings, Internet drafts, etc.

5. Licensing Declaration.

The IP Holder states that its position with respect to licensing any IP claims disclosed above that would be necessary to implement the technology required by an IETF Proposed Standard, Draft Standard, or Standard (or other IETF document) is as follows (select one option only):

___ No License Required for Implementers

___ Royalty-Free, Reasonable and Non-Discriminatory License to All Implementers

___ Reasonable and Non-Discriminatory License to All Implementers with Possible Royalty/Fee

___ Licensing Declaration to be Provided Later (implies a willingness to license in some form to all implementers; otherwise, "Unwilling to License to All Implementers" must be selected)

___ Unwilling to License to All Implementers

6. Possible Prior Art.

Description and links to possible prior art

7. Notes.

Additional Notes

2. Type of IP.

Patents

3. IP Information.

US Patent # 6,199,102, filed August 26, 1997 and issued March 6, 2001 (aka Cobb Patent);

US Patent # 6,112,227, filed on August 6, 1998 and issued August 29, 2000 (aka Heiner Patent).

4. References.

1. United States Patents and Trademarks Office (USPTO) – http://www.uspto.gov

2. Press Release about Earthlink Suite (http://about.mailblocks.com/press_0507_2003.html)

[Include links, ASRG list postings, Internet drafts, etc.]

5. Licensing Declaration.

The IP Holder states that its position with respect to licensing any IP claims disclosed above that would be necessary to implement the technology required by an IETF Proposed Standard, Draft Standard, or Standard (or other IETF document) is as follows (select one option only):

(X) Licensing Declaration to be Provided Later (implies a willingness to license in some form to all implementers; otherwise, "Unwilling to License to All Implementers" must be selected)

[Added on June 12^th, 2003 based on a phone conversation with MailBlock's Director of Business Stategy]

6. Prior Art.

1. From list posting by David Wheeler (https://www1.ietf.org/mail-archive/working-groups/asrg/current/msg05145.html):

Challenge-response is simply an automation of the "Halt! Who goes there!" challenge that guards have been issuing for millenia. Thus, this patent can be challenged as a trivial automation of previous approaches that have been used for millenia.

In 1992, Cynthia Dwork and Moni Naor of IBM described a challenge-response system in which the sender would be asked to process a particular solution before the receiver would accept the email [Dwork 1992]. This work was publicly presented at Crypto '92.

On May 26, 1996, Otmar Lendl (lendl at cosy.sbg.ac.at) posted how to implement a challenge-response system using procmail. This was publicly posted to the newsgroup "news.admin.net-abuse.misc" as the subject "Re: Unsolicited junk email from exd48265@interramp.com", message-ID <4o8cqk$8ah@dwst13.wst.edvz.sbg.ac.at>#1/1. This was a simple script that accepted email that accepted email if it came from certain sources or included a special password in the "Subject" line; otherwise, a challenge was replied back to the original sender. This posting included the code to implement the approach, as a response to another query in the newsgroup. Indeed, there are hints that others have implemented challenge-response systems far earlier as well.

2. See the list maintained by Scott Nelson (http://www.spamwolf.com/patents/prior_art.html) [list posting].

3. Prior art by David F. Skoll (posted to the list on March 24, 2003):

http://groups.google.ca/groups?hl=en&lr=&ie=UTF-8&oe=UTF-8&selm=56luge%246on%40bertrand.ccs.carleton.ca

4. Multiple items at “We Can Stop Spam” (http://wecanstopspam.org/jsp/Wiki?Legal).

5. From Brad Templeton's page (http://www.templetons.com/brad/spam/challengeresponse.html):

“Back in 1997 I wrote what is probably the first of the challenge/response (C/R) spam-blocking systems. “

7. Notes.

Additional Notes

2. Type of IP.

Patent

3. IP Information.

US Patent # 6,246,996, initial filing on Sep. 16, 1994, filed on May 7, 1998, granted on June 12, 2001.

4. References.

1. From original list posting by Bob Wyman (http://www1.ietf.org/mail-archive/working-groups/asrg/current/msg05633.html):

Reference to patent at the USPTO (http://patft.uspto.gov/netacgi/nph-Parser?patentnumber=6246996)

2. Comments by list members (http://www1.ietf.org/mail-archive/working-groups/asrg/current/msg05634.html and http://www1.ietf.org/mail-archive/working-groups/asrg/current/msg05635.html):

“Peter Kay wrote: 'I think that's a reach on this patent. This one talks about facilitating transactions, maybe like a paypal system. It has virtually nothing to do with spam.'

Bob Wyman wrote: “I agree that it is a bit of a stretch, however, even though it is not written as an "anti-spam" patent, it still incorporates a process of "challenge and response" via email messages that somewhat resembles the method used in C/R systems which are specifically intended to prevent spam. One might argue that sending email messages is a form of "transaction." Or, it might be that you would infringe on this patent if you combined a C/R system with one of the "pay to send" or "postage stamp" systems that have been proposed elsewhere. In that case, the transaction would be paying for the postage. It is also possible that one might argue that since this process of "challenge and response" (although not called that in this patent) had been incorporated into a patent application whose predecessor was filed as long ago as 1994, that establishes that the method of C/R was "obvious" to one skilled in the art by the time that later C/R related patent applications were being filed five, six or more years later. Also, at least one of the inventors on this patent has claimed that he believes it *may* be relevant to spam.” [emphasis added]

4. References on the creators website's:

Lee Stein's site – List of patents (http://www.stein.to/patents.html)

Nathaniel S. Borenstein's site – list of patents (http://ahimsa.guppylake.com/~nsb/nsb-patents.html)

5. Licensing Declaration.

none

6. Possible Prior Art.

none

7. Notes.

none

2. Type of IP.

Patent

3. IP Information.

US Patent # 6,161,130, filed June 23, 1998 and issued on December 12, 2000.

4. References.

1. United States Patents and Trademarks Office (USPTO) – http://www.uspto.gov

2. Paul Graham's site (http://www.paulgraham.com/paulgraham/msftpatent.html).

Include links, ASRG list postings, Internet drafts, etc.

5. Licensing Declaration.

[none]

6. Possible Prior Art.

1. From Paul Graham's site (http://www.paulgraham.com/paulgraham/msftpatent.html):

Jason Rennie's ifile (http://www.ai.mit.edu/~jrennie/ifile/old/README-0.1A)

Pantel and Lin's paper (http://www.cs.ualberta.ca/~ppantel/Download/Papers/aaai98.ps)

7. Notes.

Additional Notes

2. Type of IP.

Patent

3. IP Information.

US Patent # 6,453,327, filed June 10, 1996 and issued on September 17, 2002 .

4. References.

1. United States Patents and Trademarks Office (USPTO) (http://patft.uspto.gov/netacgi/nph-Parser?patentnumber=6453327).

2. From list posting from Bob Wyman referencing the patent (https://www1.ietf.org/mail-archive/working-groups/asrg/current/msg05304.html):

“Note: The method of having groups vote on what is and is not spam, which he claims is used by Cloudmark SpamNet and Matador, may be an infringement or use of US patent 6,453,327”

3. Author's page (http://www.useit.com/jakob/publications.html).

4. Web log reference (http://www.eamonn.com/archives/000169.html).

5. From list posting by Phillip Hallam-Baker ():

“The patent claims do appear to cover DCC type schemes. I do not think it
prudent to discuss the claims in detail.”

Include links, ASRG list postings, Internet drafts, etc.

5. Licensing Declaration.

[none]

6. Possible Prior Art.

Description and links to possible prior art

7. Notes.

Additional Notes

2. Type of IP.

Patent Application

3. IP Information.

US Patent Application # 20030009698, filed on May 29, 2002; based on provision application # 60/294,718 filed May 30, 2001.

4. References.

1. From the USPTO (http://appft1.uspto.gov/netacgi/nph-Parser?Sect1=PTO1&Sect2=HITOFF&d=PG01&p=1&u=/netahtml/PTO/srchnum.html&r=1&f=G&l=50&s1='20030009698'.PGNR.&OS=DN/20030009698&RS=DN/20030009698).

Include links, ASRG list postings, Internet drafts, etc.

5. Licensing Declaration.

[none]

6. Possible Prior Art.

Description and links to possible prior art

7. Notes.

Additional Notes

2. Type of IP.

patent (pending)

3. IP Information.

1. From original disclosure by Peter Key:

Provisional application 60/152,025 filed 09/01/1999, Second provisional application 60/180,937 filed 02/02/2000.

US Patent application 09/648,894 filed 8/25/2000, International Patent PCT/US00/23561. Filed 8/25/2000.

CIP (improvement) 10/404,631, filed 3/31/2003

4. References.

1. From Original Disclosure by Peter Key:

International patent application  (identical to USPTO application)

How it works

How a VPM (Virtual Private Email) works

5. Licensing Declaration.

(X) Licensing Declaration to be Provided Later (implies a willingness to license in some form to all implementers; otherwise, "Unwilling to License to All Implementers" must be selected)

6. Possible Prior Art.

none

7. Notes.

1. From original disclosure by Peter Kay:

“This core of invention modifies the traditional SMTP transaction in that the MAIL FROM address is compared against a database of various rules including a whitelist. The rules analysis decides whether to continue the SMTP transaction, or if not, a 550 "no such user" response is given and the transaction stops before the DATA command, effectively stopping unwanted email before it is sent.

Depending on the rule conditions, an invitation email can be sent to the MAIL FROM address asking the sender to identify themselves. Proper response to the invitation email may allow the sender to be added to the whitelist and subsequent emails can be sent without being rejected.

A functional layer atop the core provides a "VPM" (Virtual Private Email): A user can create an email address and assign specific policies as to how that email address can be used. Senders that violate the policy bound to the email address are rejected with the 550 response before the DATA command.  This VPM invention addresses  drawbacks associated with Challenge/Response systems that make it difficult for users to subscribe to newsletters or critical notification emails like order confirmations.”

2. Type of IP.

Patent

3. IP Information.

US Patent # 6,192,114, filed on September 2, 1998, granted on February 20, 2001; related to US patent # 6,587,550..

4. References.

1. Abstract:

“A method and apparatus for determining whether a party sending an email communication is on a list of parties authorized by the intended receiving party. If the sending party is not on the list of authorized parties, a fee is charged to the sending party in return for the message being provided to the intended receiving party, or if the sending party has not authorized such fees to be charged, the message is simply discarded. Preferably, the present invention is implemented with Internet communications. However, the present invention can be used in private networks as well, such as local area networks (LANs) and wide area networks (WANs). Preferably, the present invention is implemented at the intended receiving party's ISP. In accordance with the well known Transmission Control Protocol/internet Protocol (TCP/IP), the destination address of the intended receiving party and the source address the sending party are contained in the IP message, commonly referred to as a datagram. When a datagram is received at the ISP, the ISP server analyzes the destination address and the source address to determine whether the source address is on a list of authorized source addresses associated with the destination address.“

5. Licensing Declaration.

[none]

6. Possible Prior Art.

[none]

7. Notes.

[none]

2. Type of IP.

Patent

3. IP Information.

US Patent # 6,587,550, filed on February 14, 2001, granted on July 1, 2003; related to US patent # 6,192,114.

4. References.

1. Original list posting by Bob Wyman (https://www1.ietf.org/mail-archive/working-groups/asrg/current/msg06033.html):

ABSTRACT: A method and apparatus for determining whether a party sending an email communication is on a list of parties authorized by the intended receiving party. If the sending party is not on the list of authorized parties, an electronic billing agreement is emailed to the sending party indicating a fee that will be charged to the sending party in return for the message being provided to the intended receiving party. Preferably, the present invention is implemented with Internet communications and utilizes a security protocol to enable the electronic transaction to be transacted in a secure manner.

5. Licensing Declaration.

[none]

6. Possible Prior Art.

[none]

7. Notes.

[none]