RE: [PP-DIALOG] Reciprocity clause needed
It seems there is discrepancy that others consider reciprocity
otherwise. That in itself supports the need to make reciprocity explicit
part of the LOA. I agree with Hung that a reciprocity box is needed to
ensure equities, fairness, to avoid manipulation and provide clarity.
The LOA is a facilitating statement patent holders make to the public.
IEEE cannot dictate what those licenses are or what the public statement
is in the words of the patent holder, but it should be clear to users
that reciprocity is expected as a condition on the irrevocable offer to
license, when it is.
Michelle
-----Original Message-----
From: Chuck AdamsJr [mailto:wcadams@US.IBM.COM]
Sent: Friday, March 17, 2006 10:21 AM
To: PP-DIALOG@listserv.ieee.org
Subject: Re: [PP-DIALOG] Reciprocity clause needed
Hung, you raise an interesting question regarding reciprocity and
suspension terms. I do not believe that you will find an argument that
reciprocity and suspension can be considered reasonable terms. Several
years ago the SA's LOA contained a paragraph indicating that reciprocity
and suspension were reasonable. However, a challenge was raised
referencing the IEEE-SA policy of not addressing nor promoting
licensing terms through its LOA process. Consequently this terminology
was removed from the LOA, with the assumption that determining
reasonable terms would be between the parties involved in the licensing
process, as long as the terms were not discriminatory..
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
"Ling, Hung C
(Hung)"
<hling@LUCENT.COM
To
> PP-DIALOG@listserv.ieee.org
cc
03/17/2006 08:12
AM
Subject
Re: [PP-DIALOG] Reciprocity
clause
needed
Please respond to
"Ling, Hung C
(Hung)"
Mike, Don and All:
There has been good discussion on Box 2C in the last few days. (Sorry
I
was out of commission for the past few days.) It is also not clear to
me why this box is needed.
In my original email starting this thread on reciprocity, I used Box 2C
as an hypothetical example to illustrate the case why a reciprocity
clause (and may be defense suspension) is needed. I did not mean to
restrict my comment to that box only.
The need equally applies to Box 2B or any other box. If one is willing
to license on RAND its essential patent claims, that entity should be
protected by reciprocity so that any implementer or third party cannot
come back and ask for more-than-RAND terms on their own essential patent
claims (should they hold any). Thus, explicitly allowing for
reciprocity would greatly help the situation.
I, therefore, specifically disagreed with Dennis Brophy's statement that
"My position is they would have to pay."
Hung Ling
-----Original Message-----
From: Sirtori, Michael J [mailto:michael.j.sirtori@INTEL.COM]
Sent: Tuesday, March 14, 2006 10:22 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> To:
Sent by: PP-DIALOG@ieee.org <PP-DIALOG@listserv.ieee.org>
cc:
Subject: RE:
03/14/2006 06:15 PM [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
************************************************************************
***