Re: [PP-DIALOG] Reciprocity clause needed
Some background on the non-assert from my memory.
When the discussion to add a non-assert to the LOA was pursued, the intent
was for a "full" non assert option. Thus when someone availed themselves
of this option they were allowing the implementer full unlimited use of the
claims in the field of use. This box may be rarely used, but the intent
was that there would be no conditions associated with the assert. There
would be no pressure or requirements for one to select this option. (I
would expect it to be rarely employed, but if it is selected, the
implementer would have no licensing obligations within the specific
field.).
Should one want to offer associated terms with the grant, the approach was
to continue to allow the patent holder to select the RF grant with RAND
terms. as was available in the past. The non-assert was provided as an
incremental offering for those that saw an interest in an open promotion of
the standard. Should reciprocity, suspension, etc be desired, the existing
boxes were felt to provide those options. I believe this revision to the
LOA has been in existence for a little over a year.
Interestingly the discussion for providing this option was somewhat the
reverse. I.e., how does one provide an intent to the IEEE that they want
to provide an unconditional non-assert. It has only been available a short
time, and we would have to check with Dave as to whether anyone found it
useful.
Chuck
Chuck Adams
Program Director of Standards & Open Source
Technology,Intellectual Property,Open Source,Standards
IBM Corporation
North Castle Drive, Armonk, New York,10504
(914)-765-4382 [Internal 8/251-4382] Fax (914)-765-4420
Internet: WCADAMS@US.IBM.COM
http://w3.ibm.com/standards
http://www.ibm.com/ibm/licensing/standards
"Sirtori, Michael
J"
<michael.j.sirtor To
i@INTEL.COM> PP-DIALOG@listserv.ieee.org
cc
03/14/2006 06:15
PM Subject
Re: [PP-DIALOG] Reciprocity clause
needed
Please respond to
"Sirtori, Michael
J"
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
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