RE: [PP-DIALOG] Reciprocity clause needed

[don@xxxxxxxxxxx]

Michael:

If memory serves, that box has not existed on the LOA form for a long period of time so there's minimal history to guide us but we can look.  I do share your concerned about the wisdom of someone checking the blanket LOA box except in some very specific circumstances such as you describe.  I suppose a patent holder who doesn't want to create and manage licenses for such a patent claim would also be a potential user of this option.

Do you think it would be better to explicitly allow for reciprocity and defensive suspension rather than saying "without condition" or adding yet another check box?

***************************************************************************
 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
***************************************************************************

"Sirtori, Michael J" <michael.j.sirtori@intel.com> Sent by: PP-DIALOG@ieee.org 03/14/2006 06:15 PM

To:        <PP-DIALOG@listserv.ieee.org>         cc:                 Subject:        RE: [PP-DIALOG] Reciprocity clause needed

Thanks Dennis and Hung.
 
I share Hung's concern that if a company checks box Box 2c ("The Patent Holder without conditions will not enforce any of its ... patents") it is potentially putting itself in a very dangerous position, as it likely no longer be able to use the relevant patents to defend itself.  
 
And I agree with Dennis that if a company wants to reserve any rights, it should not check that box.  I also agree that few commercial entities would want to, or be advised to, check the "without conditions will not enforce" box.  I doubt many of the legal advisors on this reflector will ever advise their clients to check that box.    
 
So why does that box even exist?  Is it for altruistic patent holders, or inventors with no commercial interests?  I am not opposed to that, but do we really think it is worth keeping, in light of the confusion it causes?  
 
Don, it might be worthwhile and informative for the PatCom to know how many times over the past few years any submitter has checked that box.  Does IEEE staff retain that information?
 
Thanks.
-Mike

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From: Brophy, Dennis [mailto:dennisb@MODEL.COM] 
Sent: Friday, March 10, 2006 9:50 PM
To: PP-DIALOG@listserv.ieee.org
Subject: 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

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From: Ling, Hung C (Hung) [mailto:hling@LUCENT.COM] 
Sent: Friday, March 10, 2006 1:36 PM
To: PP-DIALOG@listserv.ieee.org
Subject: Re: [PP-DIALOG] Reciprocity clause needed
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
-----Original Message-----
From: Don Wright [mailto:don@LEXMARK.COM]
Sent: Wednesday, February 08, 2006 2:34 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 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. 









*************************************************************************** 
 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 
***************************************************************************