RE: [PP-DIALOG] An LOA draft addressing some but not all issues on the table at PatCom
- To: "Bassuk, Larry" <l-bassuk@xxxxxx>, <PP-DIALOG@xxxxxxxxxxxxxxxxx>
- Subject: RE: [PP-DIALOG] An LOA draft addressing some but not all issues on the table at PatCom
- From: "Brophy, Dennis" <dennisb@xxxxxxxxx>
- Date: Fri, 10 Mar 2006 21:50:39 -0800
- Sender: PP-DIALOG@xxxxxxxx
- Thread-Index: AcYs55wgQ1M4kP7WSuG/RvdjXV8+rwW4CjlgADiS8CA=
- Thread-Topic: [PP-DIALOG] An LOA draft addressing some but not all issues on the table at PatCom
> Further, TI has no employee charged with
interpretation of patent claims relative to any standard.
This may be the case today, but the history I know shows TI
active to interpret the claims of others within the IEEE and other industry
consortia [IRS 503(3) (6)] entities in its quest for IEEE Std. 1076.6 and IEEE
Std 1364.1. By definition of not compelling patent searches in conjunction
with our LOAs I think we can easily assume most participants have incomplete
knowledge of their company's patent portfolios.
Thank you for sending us this draft LoA for
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
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
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.
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
b. the application of LoA to amendments and
c. mandatory (or optional) inclusion of
not-to-exceed royalty rates.
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
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
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
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
firstname.lastname@example.org / email@example.com
Director of Standards
Past Chair, IEEE SA Standards Board
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Chair, Patent Committee IEEE SASB
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