RE: [PP-DIALOG] An LOA draft addressing some but not all issues on the table at PatCom

[don@xxxxxxxxxxx]

Larry:

First, let me thank you for your comments, suggestions and ideas.  I know you and others are very busy and I appreciate you taking the time to respond.

The whole idea of providing this draft LOA is so people can see a potential embodiment of a future Patent Policy so that PatCom can come to an agreement on the concepts contained therein.  If PatCom agrees with the concept, we will then make the necessary changes to the IEEE Patent Policy to support these concepts and therefore an eventual approved LOA embodying them.  Therefore, it would be inappropriate to consider any of your comments that are supported only by statements that the current patent policy does not support the draft LOA.

Therefore, I believe the only item lefts for consideration by PatCom are:

In paragraph F, there is a long statement attempting to bind the Patent Holder.  The present patent policy clearly states that an  "assurance shall be provided without coercion".  This paragraph clearly attempts to coerce the Patent Holder, and is improper.

TI must submit that the present patent policy has been working well for many standards for some time.  TI has heard or seen no evidence that aspects of the present patent policy need revision to correct an injustice or to made the process more efficient.  The arguments advanced for these changes appear to be based solely on anecdote.
 
In the case of the first item, I don't believe coercion is being used but PatCom will consider your position since there is no expectation that the IEEE will remove it's prohibition of coercion in obtaining a letter of assurance.

***************************************************************************
 Don Wright                      don@lexmark.com
                                 f.wright@ieee.org / f.wright@computer.org
 Director of Standards
 Lexmark International           Past Chair, IEEE SA Standards Board
 740 New Circle Rd               Chair, Patent Committee IEEE SASB
 Lexington, Ky 40550             Member-at-large, IEEE CS SAB
 859-825-4808 (phone)            Member, IEEE-ISTO Board of Directors
 603-963-8352 (fax)              Member, W3C Advisory Committee
***************************************************************************

"Bassuk, Larry" <l-bassuk@ti.com> 03/09/2006 06:05 PM

To:        <don@LEXMARK.COM>, <PP-DIALOG@listserv.ieee.org>         cc:                 Subject:        RE: [PP-DIALOG] An LOA draft addressing some but not all issues on the table at PatCom

Don,
 
Thank you for sending us this draft LoA for comment.
 
Unfortunately, TI must respectfully disagree with several aspects of this revised LoA for the reason that they find no support in the present patent policy.
 
In paragraph D 1., since the present patent policy has no provision for disclosing patents that may be essential, defining "organizational knowledge" in this LoA is improper.  Moreover, TI would disagree with the definition for the reason that the TI employees that develop IEEE standards do not have complete knowledge of TI's patent portfolio.  Further, TI has no employee charged with interpretation of patent claims relative to any standard.
 
In paragraphs D 2., A. and B., the correct language from the patent policy should be:  "a license for such implementation will be made available" in place of the draft language "The Patent Holder will grant".
 
The patent policy has no mention of a "Blanket Letter of Assurance".  Further, since this appears to be a new term of art, TI has no understanding of the meaning of this phrase in litigation and asks that it be withdrawn.
 
Paragraph E contains an extensive statement concerning affiliates.  The present patent policy contains no such discussion.  This statement is improper.
 
In paragraph F, there is a long statement attempting to bind the Patent Holder.  The present patent policy clearly states that an  "assurance shall be provided without coercion".  This paragraph clearly attempts to coerce the Patent Holder, and is improper.
 
The note at the end mentions signing by the IEEE.  The present patent policy envisions no such signature and is improper.  Further, TI does not know who will have capacity under the IEEE Bylaws to sign this LoA as agent for the IEEE or under what conditions.
 
TI must submit that the present patent policy has been working well for many standards for some time.  TI has heard or seen no evidence that aspects of the present patent policy need revision to correct an injustice or to made the process more efficient.  The arguments advanced for these changes appear to be based solely on anecdote.
 
In conclusion, the Letter of Assurance should be amended to conform to the present patent policy and should not be amended to present new policy.
 
TI thanks the Patent Committee for providing time for its views to be heard.  We question whether a consensus of interested parties agree with these changes and note that TI does not have a vote in this matter.
<?xml:namespace prefix = o ns = "urn:schemas-microsoft-com:office:office" /> 
Regards,
 
Larry Bassuk 
Senior Patent Counsel                            Tele: 972-917-5458
Intellectual Property Rights                     Fax:  972-917-4418
Standards Organizations                        Cell:  214-458-5975
<?xml:namespace prefix = st1 ns = "urn:schemas-microsoft-com:office:smarttags" />Texas Instruments Incorporated

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From: Don Wright [mailto:don@LEXMARK.COM] 
Sent: Wednesday, February 08, 2006 1:34 PM
To: PP-DIALOG@listserv.ieee.org
Subject: [PP-DIALOG] An LOA draft addressing some but not all issues on the table at PatCom


PatCom Interested Parties: 

Attached, please find a draft of the LOA addressing a number of the issues on the PatCom agenda and incorporating many of the ideas and comments that were provided at the September 2005 and December 2005 PatCom meetings.  Admittedly, this draft does not include proposed language to address all the issues on the table.  For example, we have excluded: 

a. the definition of reasonable rates, terms and conditions 
b. the application of LoA to amendments and revisions 
c. mandatory (or optional) inclusion of not-to-exceed royalty rates.   

We have: 
  
1)   provided an expanded definition of "essential patent claim".  We have bracketed language about whether an essential patent claim should include/exclude continuations in part and are interested in your thoughts. 
  
2)   taken the 5 different licensing statements in the current form and grouped them into two parts in Section D.  Either the Patent Holder is not aware of any essential patent claims (Box 1) or the Patent Holder "may" have essential patent claims (Box 2). 
  
With respect to Box 1, we have expanded on the Patent Holder's knowledge of any Essential Patent Claims which is currently captured in the fifth licensing statement on the current form.  The fifth statement provides "I am not aware of any [Essential Patent Claims" which contemplates that the signer of the form is the "I" and has the relevant knowledge.  Several attendees at the December PatCom meeting suggested that we should separate "knowledge" regarding essential patent claims from the knowledge of the authorized signer of the LoA.  We have used the ABA's proposed definition of "Organizational Knowledge" but have bracketed language regarding the knowledge of person responsible for the patent portfolio which is included in the ABA's proposed definition of "Organizational Knowledge" but we are interested in your thoughts. 
  
With respect to Box 2, we have offered Patent Holders three assurance options which are currently reflected in the first, second and fourth licensing statements on the current form:  RF, RAND, or the Patent Holder won't enforce.  We have also given the Patent Holder the option of saying that it is unwilling to provide any of the foregoing assurances which was formerly in third licensing statement in the current LoA. 
  
3)    noted that currently the LoA appears to be an all or nothing form, i.e., the current form doesn't anticipate that a Patent Holder may be willing to agree to different licensing statements for different Essential Patent Claims.  Thus, we have added a note to the LoA to make it clear that a Patent Holder may provide a different assurance for a specific Essential Patent Claim by submitting a separate LoA for such claim provided there isn't a blanket assurance on file (see definition below) and there isn't a prior LoA on file covering the same claim. 
  
4)   clarified that a Patent Holder does not need to do a patent search and "may, but is not required to" list specific Essential Patent Claims. 
  
5)   given Patent Holders the ability to check a box indicating that the LoA is a Blanket Assurance, i.e., all Essential patent Claims that the Patent Holder may currently or in the future hold or control or otherwise have the right to license shall be available under the terms described above provided the Blanket Assurance can't supersede any pre-existing or simultaneously submitted assurance identifying a specific Essential Patent Claims. 
  
6)   noted that the current LoA does not apply to a Patent Holder's Affiliates.  In the last discussion draft, we gave the Patent Holder the opportunity to indicate whether or not the LoA applied to its Affiliates.  Some have suggested that the LoA should apply to Affiliates at the Patent Holder's option, some have suggested that the LoA should apply by default to Affiliates unless the Patent Holder explicitly excluded its Affiliates and some have suggested that no Patent Holder should have the ability to exclude an Affiliate.  This draft proposes that the LoA applies by default to an Affiliate unless the Patent Holder explicitly excludes its Affiliates.  We are interested in your feedback.  We have also incorporated the ABA's proposed definition of Affiliate -- although we have broadened to include control over nonprofit affiliates which isn't currently captured in the ABA's proposed definition. 
  
7)   remembered that in the last draft we discussed in March that the Patent Holder represent that the terms of the LoA would be binding on any assignee or transferee of specific Essential Patent Claims referenced in the LoA and that the Patent Holder would notify IEEE-SA of any assignment and notify the assignee or transferee of the existence of the commitments.   Many of you raised concerns about having to ensure that the LoA would be binding on assignees/transferees and having to notify the IEEE.  Some suggested that in the alternative, we get a commitment from the Patent Holder that it would not transfer any rights in any Essential Patent Claims that is inconsistent with the commitments made in the LoA and that the Patent Holder should notify any transferee of the commitments in the Letter and shall obtain the commitment of such transferee to notify any subsequent transferee of the commitment.  However, we have clarified that the Pate! nt Holder's sol!
 e responsibility is to provide Notice and that the Patent Holder won't be liable for the failure of any subsequent assignee to honor the assurances made in the LoA. 

8)   made it clear that this is a binding agreement.  Implementers of the standard are third party beneficiaries with rights of enforcement. 

We have also attached a comparison of this draft with the existing LOA. 

Any comments about this draft should be sent to the pp-dialog mailing list.  We especially welcome comments about the high level concepts being included but will also accept comments about specific choice of words, grammar, etc.  Don't wait until the meeting to speak up because "silence equals agreement."   

Once we conclude the discussion on these topics, PatCom can then consider which, if any, might require an update to the IEEE SASB Bylaws or Operations Manual. 









*************************************************************************** 
 Don Wright                      don@lexmark.com 
                                 f.wright@ieee.org / f.wright@computer.org 
 Director of Standards 
 Lexmark International           Past Chair, IEEE SA Standards Board 
 740 New Circle Rd               Chair, Patent Committee IEEE SASB 
 Lexington, Ky 40550             Member-at-large, IEEE CS SAB 
 859-825-4808 (phone)            Member, IEEE-ISTO Board of Directors 
 603-963-8352 (fax)              Member, W3C Advisory Committee 
***************************************************************************