Re: [PP-DIALOG] Reciprocity clause needed

[don@xxxxxxxxxxx]

Mike:

I'm rather inclined to agree with Chuck.

When a third party states it believes company XYZ (they're not a participant in the WG) has a patent containing claims that may be essential, this box might be just what company XYZ needs to be able to respond.  For example, suppose company XYZ went all out and did a search of all their patents and they could find nothing that was even remotely related to the standards project.  Without this option, how would they respond?  They have nothing and they're not involved in the standard's development so why would we expect them to offer a licensing commitment of any kind?

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

Chuck AdamsJr <wcadams@us.ibm.com> Sent by: PP-DIALOG@ieee.org 03/15/2006 08:48 AM

To:        "Sirtori, Michael J" <michael.j.sirtori@INTEL.COM>         cc:        PP-DIALOG@listserv.ieee.org         Subject:        Re: [PP-DIALOG] Reciprocity clause needed

Mike, you address an interesting question that relates to both process and
the submission of LOA's (especially from non-affiliated 3rd parties). With
a process whereby no disclosure is required and one whereby the WG Chair
requests the SA to solicit an LOA (unless it was a voluntary LOA
submission), and with no searching being requested, this approach would
allow an option for 3rd parties to respond to an LOA inquiry.

I agree that it provides very little in useful information, but it has
allowed 3rd parties a way of responding.  Some thought this was better than
no response at all (which can occur).  About all it provides is a statement
that the IEEE-SA made an inquiry and that the SA did get a response, though
not one of great use. Later should the 3rd party find something in their
portfolio, they would not be prohibited from updating their LOA, based on
current awareness.  Something akin to the IETF approach.

Interested in your thoughts, 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                                             
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             03/14/2006 10:41                                              
             PM                                                    Subject 
                                       Re: [PP-DIALOG] Reciprocity clause  
                                       needed                              
             Please respond to                                             
             "Sirtori, Michael                                             
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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>             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
***************************************************************************