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Xerox's Patent Claim pertaining to the RFC2301 - File Format for Internet Fax

This IPR disclosure was submitted by e-mail.

Sections I, II, and IV of "The Patent Disclosure and Licensing Declaration Template for Legacy" have been completed for this IPR disclosure. Additional information may be available in the original submission.

The text of the original IPR disclosure is available further down, and also here:

Update this IPR disclosure. Note: Updates to IPR disclosures must only be made by authorized representatives of the original submitters. Updates will automatically be forwarded to the current Patent Holder's Contact and to the Submitter of the original IPR disclosure.

Submitted Date: September 9, 1999

I. Patent Holder/Applicant ("Patent Holder")
Legal Name: Xerox Corporation
II. Patent Holder's Contact for License Application
Name: Dr. Jan Jaferian
Title: Vice President
Department: Xerox Intellectual Property Operations (XIPO), ATTN: MRC License Inquiries
Address1: 100 Willowbrook Office Park, Bldg. 832-01A
Address2: Fairport, New York 14450 U.S.A.
III. IETF Document or Other Contribution to Which this IPR Disclosure Relates:
RFC 2301:"File Format for Internet Fax"

The text of the original IPR declaration:

The following was conveyed via email on September 9, 1999 by Clarke Wixon
Patent Attorney, Xerox

Mr. Stephen Coya
Executive Director
Internet Engineering Task Force
c/o Corporation for National Research Initiatives
1895 Preston White Drive, Suite 100
Reston, Virginia 20191-5434

Re:     IETF RFC 2301 (TIFF-FX) IPR Statement

Dear Mr. Coya:

Xerox is currently aware of two U.S. Patents which may relate to implementations of
the IETF RFC 2301 (TIFF-FX) standard. U.S. Patent No. Re35,657 is owned by Xerox
Corporation. U.S. Patent No. 5,778,092 is owned by ScanSoft, Inc., but Xerox has
rights to sublicense the technology for these purposes.

To the extent that Xerox's existing intellectual property rights under the above two
patents may cover the implementation of a product compliant with the TIFF-FX
standard, Xerox agrees to provide, upon request, a royalty-free, world-wide,
non-exclusive license under certain claims of the above two patents (not including
the segmentation technology described in the specification and set forth in claims
2-4, 7, 8, or 12-14 of U.S. Patent No. 5,778,092, which is not considered to be an
essential technology for the implementation of the TIFF-FX standard) for the purpose
of making, having made, using, selling, offering for sale, or otherwise disposing of
a product implementing the TIFF-FX standard, and only to the limited extent
necessary for the product to comply with the TIFF-FX standard.

Any license granted by Xerox under this Statement shall be subject to the following
condition: any party receiving such a grant from Xerox must agree to grant Xerox
Corporation, Xerox Ltd., Fuji Xerox Co. Ltd., Modi Xerox Limited and any
corporation, firm, partnership, individual, or other form of business organization
at least forty percent (40%) owned or controlled, directly or indirectly, by Xerox
Corporation, Xerox Ltd., Fuji Xerox Ltd. or Modi Xerox Limited, upon request, a
license under that party's patents relating to the TIFF-FX standard, on terms and
conditions no less favorable than those granted by Xerox to that party.

Parties interested in obtaining a license may contact:

Xerox Intellectual Property Operations (XIPO)
ATTN: MRC License Inquiries
100 Willowbrook Office Park, Bldg. 832-01A
Fairport, New York 14450  U.S.A.

Very truly yours,


Dr. Jan Jaferian
Vice President

c:      James Rafferty (IFax WG Chair) 
        Keith Moore (IETF Area Director) 
        Patrik Faltstrom (IETF Area Director) 

Clarke Wixon
Patent Attorney
Xerox Corporation