Don,
While I am at it, may I raise a conceptual
question about the “not aware of any essential patent claims”
response in Section D “Assurances”?
I think it is simpler and more realistic
to move the “not aware” option out of this section. What benefit
is it to IEEE or the specification developers or implementers if a respondent
checks this box? To allow a respondent to say, even in perfectly good faith, “We
don’t know if we have any patents” only begs the question: “What
if you do?”
Unless we can get a respondent to say
something like “Without a doubt, we are absolutely sure that we do not
have any Essential Patent Claims” (in which case, that is what the box
should say; but then in that case, we are much less likely to ever get anyone
to check it), what we really need them to say is “To the extent that
Patent Holder owns or controls Essential Patent Claims, its licensing position
is [select one]: …”.
Any definition of Organizational Knowledge,
or other carefully crafted and detailed knowledge qualifier about who knows
what and when, is really outside the scope of an “Assurances”
section. The real issue for that section is how will that party license
essential patent claims that it does own.
If we want to retain a check box to allow
a respondent to state they are “not aware of essential patent claims”,
perhaps it ahould be in addition to, rather than in place of, an assurance
response. Disclosure of essential patent claims, whether mandatory or
voluntary, when it should occur, whether or not there should be any
qualifications or limitations on knowledge, etc., are all important and interesting
issues for the PatCom to consider. But it seems to me those issues should be
addressed in a different section of the LOA.
Thanks for the chance to comment.
-Mike
From: Sirtori, Michael
J [mailto:michael.j.sirtori@INTEL.COM]
Sent: Tuesday, March 14, 2006 7:22
PM
To: PP-DIALOG@listserv.ieee.org
Subject: Re: [PP-DIALOG]
Reciprocity clause needed
Thanks Don,
I agree that explicitly allowing for
reciprocity and defensive suspension might help, but that sort of undermines
the “without conditions” aspect, which seems to be the main desire
for creating this check box in the first place.
Personally I would propose streamlining
the form by deleting this check box
2C altogether. Anyone who owns a patent and for whatever
reason doesn’t want to assert any royalties can simply check box A
“license without compensation”. That is probably good enough
for 99.9% of the cases, and I am confident that no one will come knocking on
the patent holder’s door asking for a definitive royalty free license.
-Mike
From: don@lexmark.com
[mailto:don@lexmark.com]
Sent: Tuesday, March 14, 2006 3:30
PM
To: Sirtori, Michael J
Cc: PP-DIALOG@listserv.ieee.org
Subject: RE: [PP-DIALOG]
Reciprocity clause needed
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
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
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
***************************************************************************