ITU - Telecommunication Standardization Sector s1

ITU - Telecommunication Standardization Sector Temporary Document 15 (WP 1/16)

STUDY GROUP 16

Geneva, 13 – 17 November

Question(s): x/16

SOURCE*: TSB

TITLE: Patent Statement and Licensing Declaration on Draft Recommendation ITU-T T.800 ______

The attached is a Patent Statement and Licensing Declaration submitted by Teralogic, Inc.

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TeraLogic, Inc. 1240 Villa Street Mountain View, CA 94041- 2005 Tel 650.526.2000 Fax 650.526.2006 FACSIMILE TRANSMITTAL FORM

DATE: 11 02 00

TO: Dr. Istvan Sebestyen FROM: Murray McLachlan Dept. ICN M SR CC: DIRECT PHONE #: 650-526-6007

FAX #: 49 89 722 47713 # OF PAGES (incl. cover sheet): 4

Dear Dr. Sebestyen,

Attached to this fax cover sheet is the requested ITU-T / ISO/IEC Form regarding the patent position of TeraLogic, Inc. and its subsidiary PicSurf, Inc., together with a cover letter providing additional information.

Although your recent email regarding this form mentioned a date of November 13, 2000, in your letter dated October 24, 2000, you requested that we return the form to the ITU by November 3, 2000, so we are doing as you requested.

Unfortunately, I do not have a fax number for Mr. Houlin Zhao, so I would appreciate if you would forward a copy of the attached to Mr. Zhao, so that he receives it by the requested date. I will send the originals to Mr. Zhao by FedEx, so he will receive them next week.

Regards, This facsimile may contain confidential and privileged material for the sole use of the intended recipient. Any review or distribution by others is strictly prohibited. If you are not the intended recipient please contact the sender and destroy all copies.

TeraLogic, Inc. 1240 Villa Street Mountain View, CA 94041 Tel 650.526.2000

November 2, 2000

Dr. Istvan Sebestyen ITU Rapporteur

Dear Dr. Sebestyen: Thank you for your letter dated October 24, 2000. We appreciate your desire to clarify our patent position and to investigate the relevance of our patents. The purpose of this letter is to clarify our position with respect to patents and patent applications of TeraLogic, Inc. and its subsidiary PicSurf, Inc. TeraLogic and PicSurf may be willing to enter into negotiations with entities that wish to obtain licenses under their patents, but, at this time, we are not undertaking any obligation to license these patents and patent applications in connection with the JPEG2000 (Draft ITU-T T.800) standard or any other standard. Accordingly, we have attached the requested form with paragraph 3 selected. With regard to the requested information regarding our patents and patent applications, we have not undertaken a comprehensive or definitive review of our patents or patent applications or of the proposed standard. In addition, we are not in a position to comment on the legal interpretation that may be applied to the proposed standard or to our patents and patent applications and nothing in this letter or the enclosed form should be relied upon for such purposes or give rise to any implied rights, estoppel or other limitation on our patents or patent applications. Nonetheless, we are providing you with selected information in Attachment A to this letter, which may be of assistance. However, our pending patent applications may be modified during prosecution and new applications may be filed with varying scope and coverage, including continuations, foreign counterparts and the like. In addition, there may be other subject matter or other patents and patent applications of TeraLogic and PicSurf, which may be implicated by, or used in connection with, the proposed standard. We hope that this information is of assistance. Yours truly,

Murray L McLachlan Vice President Corporate Development

Attachment cc ITU-TSB Director Mr. Houlin Zhao International Telecommunications Union (ITU) Place des Nations CH-1211 Geneva 20 Switzerland

ATTACHMENT A

The following patents and patent applications may be relevant to JPEG-2000 Part 1, JPEG 2000 Part 2 and/or JPEG 2000 Part 3:

1. U.S. Patent No. 5,748,116 2. U.S. Patent No. 5,886,651 3. U.S. Patent No. 5,949,911 4. U.S. Patent No. 6,041,143 5. PCT/US97/20326 6. Japan Application # 10-524666 7. EPO Application # 97946587.9 8. PCT/US98/09186 9. Japan Application # 10-549290 10. Additional patents pending

Additional applications and foreign counterparts may be pending or may be filed in the future.

Patent claims for the above may include, without limitation, subject matter relating to one or more of the following:

1. Block splitting 2. Coding of bit depth (such as, without limitation, maximum bit depth B or, equivalently, minimum C-B for some pre- assigned constant C) 3. Coding of deviation (such as, without limitation, deviation from B (or C-B)) 4. Bit plane coding 5. Multiresolution and/or scalability coding 6. Wavelet transform of tiled images

The above is not intended to interpret or limit the scope of any claims and should not be relied upon for such purposes.

ITU-T\SG_DOC\SG16\NOV00\WP1-16\1-015.DOC - 5 - ITU ISO IEC International Telecommunication Union International Organization International Electrotechnical Telecommunication Standardization Sector for Standardization Commission

Patent Statement and Licensing Declaration (One or more per ITU-T Recommendation ISO/IEC International Standard) This declaration does not represent an implied license grant Please return to: Director Place des Nations Secretary General 1 rue de Varembe Telecommunication Standardization Bureau CH-1211 Geneva 20, International Organization for Standardization CH-1211 Geneva 20 International Telecommunication Union Switzerland Switzerland Fax: +41 22 730 5853 Fax: +41 22 734 1079 Patent Holder/Organization: Legal Name PicSurf, Inc., a subsidiary of TeraLogic, Inc. Contact for license application: Name & Department Murray L McLachlan, TeraLogic, Inc. Address 1240 Villa Street Mountain View, CA 94041, USA Tel. 650 526 6007 Fax 650 526 2006 E-mail [email protected] ITU-T Recommandation  ISO/IEC International Standard : Number ITU-T T.800 / ISO/IEC 15444-1 Title JPEG2000 – Part 1 Licensing declaration The Patent Holder believes to hold granted patents and/or pending applications, whose use would be required to implement the above ITU-T Recommendation | ISO/IEC International Standard and hereby declares, in accordance with the Statement on ITU-T Patent Policy (see ITU-T web site) and the ISO/IEC Patent Policy (JTC 1 Directives), that (check one box only).

1. The Patent Holder is prepared to grant – on the basis of reciprocity for the above ITU-T Recommendation | ISO/IEC International Standard – a free license to an unrestricted number of applicants on a worldwide, non-discriminatory basis to manufacture, use and/or sell implementations of the above ITU-T Recommendation | ISO/IEC International Standard.

2. The Patent Holder is prepared to grant – on the basis of reciprocity for the above ITU-T Recommendation | ISO/IEC International Standard – a license to an unrestricted number of applicants on a worldwide, non-discriminatory basis and on reasonable terms and conditions to manufacture, use and/ or sell implementations of the above ITU-T Recommendation | ISO/IEC International Standard. Such negotiations are left to the parties concerned and are performed outside the ITU-T |ISO/IEC.

3. The Patent Holder is unwilling to grant licenses according to the provisions of either 1 or 2 above. In this case, the following x information must be provided as part of this declaration:  patent registration/application number;  an indication of which portions of the ITU-T Recommendation | ISO/IEC International Standard are affected.  a description of the patent claims covering the ITU-T Recommendation | ISO/IEC International Standard; Signature Organization PicSurf, Inc and its parent company TeraLogic, Inc. Name of authorized person Murray L McLachlan Title of authorized person Director, PicSurf, Inc. and Vice President Corporate Development, TeraLogic, Inc. Signature Place, Date Mountain View November 2, 2000

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