RE: [PP-DIALOG] Reciprocity clause needed
Hung Ling,
My position is they would have to pay. There
are issues with standards development that one participant could mine a standard
with the IPR of another and in effect scuttle that standard. There is also
a specific lack of reciprocity in today's LOA which could merit
discussion. Maybe there could be something added to the front mater of
each standard where license for use is granted.
If you want to hold ALL threats in abeyance, this
might work:
If a
Party institutes patent litigation
against a party who has submitted an LOA (LOA Party) with respect to a patent
(including a cross-claim, counterclaim or declaratory judgment claim in a
lawsuit), then any patent licenses granted by that LOA Party to such Party under
the LOA shall terminate as of the date such litigation is filed. In addition, if
Party institutes patent litigation against any entity (including a cross-claim,
counterclaim or declaratory judgment claim in a lawsuit) alleging that the
Standard itself (excluding combinations of the Standard with other software or
hardware) infringes such Party's patent(s), then the rights granted to Party
by the IEEE shall terminate as of the date such litigation is filed.
If you want to hold only threats
related to the specific standard in abeyance, this might
work:
If a Party institutes patent litigation against
a party who has submitted an LOA (LOA Party)
with respect to a patent applicable to the Standard (including a cross-claim,
counterclaim or declaratory judgment claim in a lawsuit), then any patent
licenses granted by that LOA Party to such Party under the LOA shall terminate as of the date such
litigation is filed. In addition,
if Party institutes patent litigation
against any entity (including a cross-claim, counterclaim or declaratory
judgment claim in a lawsuit) alleging that the Standard itself (excluding combinations of
the Standard with other software or
hardware) infringes such Party's
patent(s), then the rights granted to the Party by the IEEE shall terminate as of the
date such litigation is filed.
I don't think the IEEE wishes to see its standards
held hostage or mined with other's IPR. And since entities will probably
want to reserve as many rights to themselves, one could predict that few if any
would want to, or be advised to, check the "without conditions" terms.
However, I think entities that come together and do just demonstrate how they
hold standards in high esteem and value.
-Dennis
Don
has said on a number of occasions that the LoA should be binding
on the patent holder (who submits it) to any third party
beneficiaries.
If I
may, let me put you into a hypothetical scenerio. You are an IEEE
participant representing company A that has submitted a LoA on an essential
patent claim that you are aware of, and has checked off Box 2 C (The Patent
Holder without conditions will not enforce any of its ... patents .....).
Along comes a third party B with its own essential claim on the same
standard. Let's assume party B did not participate in IEEE standards
activitiy and hence has not submitted a LoA. Should Company A honor
its LoA by granting a "free" license to Party B while at the same time, pay a
royalty fee to Party B? This is not an equitable situation for Company A
or for an individual patent holder to be in. Thus, a box
for checking off "reciprocity required" seems to be reasonable, and mostly
likely a "must" for many companies.
I am
interested in hearing the views of PatCom members, including Don of
course.
Hung
Ling
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 sole 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.
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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
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