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RE: [PP-DIALOG] Definition of Reasonable Rates



Scott,
 
Thank you for the questions.  You are correct that TI would like to see answers to many questions.
 
As far as my advice to IEEE, I represent TI and can only advise it.
 
With that being said, here is how my client has asked me to respond.
 
The IEEE PatCom Chairman is proposing that the IEEE amend its IPR Policy to define a phrase in that Policy as follows:
 
Reasonable rates, terms and conditions shall mean rates, terms and conditions that a willing licensor and a willing licensee would agree to in an arms-length negotiation before the adoption of the standard, taking into consideration any alternative technologies and any alternative implementation methods which eliminate the essentiality of the patent claim(s). 

TI sees no compelling reasons for making such an amendment.
 
TI sees no facts compelling this amendment.  The only facts presented are an anecdote from Cisco on a difficult licensing situation.  We do not know how this proposed amendment would have affected that situation.  We do not know the underlying facts of that situation, thus the many questions.
 
TI has also faced similar difficult licensing situations with other companies with no manufacturing base.  We believe the proposed amendment would not have changed the outcome of those situations in TI's favor.
 
The "arms-length bargaining" rule comes from litigation for determining damages after negotiations have failed.  We fail to see its application to our present "arms-length bargaining" licensing negotiations.  Our licensing negotiations occur both before and after adoption of many standards and many of our licensing negotiations relate to field of use, portfolio licenses.  TI does not see how this proposed amendment applies to our licensing activities.
 
TI believes that, even if adopted, the proposed definition is ineffective; it is undetectable and unenforceable.  Most licensing negotiations are conducted under a non-disclosure agreement and so no outsider can detect a company ignoring this definition.  The parties will know, but cannot say anything publicly.  Even if detected, the IEEE cannot enforce this definition against anyone, and a court is not bound to follow it over other, established rules of damages.
 
This proposed amendment introduces unknown risks in our business.  TI does not know how potential licensees or courts will interpret this new definition.  Our licensing activities: protect TI's right to do business, gain access to essential technology so TI can compete in markets, and earn a return on our R&D expenses.  TI already faces substantial risk in our business and cannot accept additional, unknown risks.
 
TI suggests that if any company or group of companies desire, they could implement this proposal in another, smaller forum.  The results can be made public and everyone can determine if the results are favorable.  Alternatively, any company or group of companies can publicly implement this proposal unilaterally and they can make the results public.  If favorable, then TI can re-consider its position.
 
TI believes that the IEEE should not further define the present IPR Policy phrase "reasonable rates, with reasonable terms and conditions".  The range of TI's business activities demands the flexibility provided by the present IEEE IPR Policy.
 
I trust that these comments respond to your requests and further this discussion.
 
I hope to see responses to my many questions.
 

Regards,

 

Larry Bassuk

Senior Patent Counsel                            Tele: 972-917-5458

Intellectual Property Rights                     Fax:  972-917-4418

Standards Organizations                        Cell:  214-458-5975

Texas Instruments Incorporated

 


From: Peterson, Scott K (HP Legal) [mailto:scott.k.peterson@HP.COM]
Sent: Tuesday, January 31, 2006 5:53 PM
To: PP-DIALOG@listserv.ieee.org
Subject: Re: [PP-DIALOG] Definition of Reasonable Rates

Larry --
 
From the two messages that you have posted in this thread, I appreciate that you would like to see answers to many questions. It appears that some advice might be implied by these questions, but it is not clear what exactly, if any, that advice might be.
 
At the present, do you have advice to offer to the IEEE as to the IEEE adopting a definition of what it means in its bylaws by "reasonable rates, with reasonable terms and conditions" or adopting the particular definition proposed in the email from Don that started this thread?  If so, I would appreciate if you would offer it as a part of this dialog. 
 
-- Scott