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Richard S. Taffet, Esq.
Bingham McCutchen LLP
399 Park
Avenue
New York, New York 10022-4689
T: (212) 705-7729
F: (212) 702-3603
email:
richard.taffet@bingham.com
cell: (914)
582-2477
-----Original Message-----
From: Skitol, Robert A. [mailto:Robert.Skitol@DBR.COM]
Sent: Monday, March 20, 2006 9:55 AM
To: PP-DIALOG@listserv.ieee.org
Subject: Re: [PP-DIALOG] Application of per se rule to ex ante joint conductMichelle, Gil's reference to FTC Chairman Majoras's Sept. 2005 speech is also responsive to your inquiry in a subsequent Saturday email asking for "specifics where enforcement agencies support more material information in standards-setting" including "upfront material license terms . . . ." As Chairman Majoras observed in that same speech, "if owners stated their royalty rates upfront, then price could become part of the competition among technologies for incorporation into the standard." She more generally sought in that speech to knock down unwarranted antitrust concerns that have "unduly prevented announcements of pricing intentions . . . that may, in fact, provide procompetitive benefits."Three months earlier, then-Assistant Attorney General Hew Pare, Chief of DOJ's Antitrust Division, gave his own speech along the same lines. He noted, for example, that "a difficulty with RAND . . . is that the parties tend to disagree later about what level of royalty rate is reasonable"; he recognized how ex ante disclosures and indeed even ex ante negotiations over royalty rates could address that problem; and, in response to some expressed antitrust concerns over such steps, he observed that "[i]t would be a strange result if antitrust policy is being used to prevent price competition."Gil's note provides the website for Chairman Majoras's speech. The website for Assistant Attorney General Pate's speech is as follows:-----Original Message-----
From: Gil Ohana (gilohana) [mailto:gilohana@CISCO.COM]
Sent: Monday, March 20, 2006 1:17 AM
To: PP-DIALOG@listserv.ieee.org
Subject: Re: [PP-DIALOG] Application of per se rule to ex ante joint conductHi Michelle,Thank you for your thoughtful questions. I have tried to respond in-line below.Gil OhanaDirector, Antitrust and CompetitionCisco Systems, Inc.300 E. Tasman DriveMS 10/2San Jose, CA 95134United States of AmericaPhone: +1 408 525 2853Mobile: +1 408 203 5301E-mail: gilohana@cisco.com
From: Michelle Lee [mailto:mleelaw@NORTEL.COM]
Sent: Friday, March 17, 2006 10:27 PM
To: PP-DIALOG@listserv.ieee.org
Subject: Re: [PP-DIALOG] Application of per se rule to ex ante joint conductI've seen conflicting positions in this dialog about the voluntariness of disclosure of terms. It leaves me confused what is expected policy. The package of proposals appear designed to not only provide licensing position options under an LOA, but an assurance of guaranteed commercial prices and licensing terms in advance of the standard being available to the general public. If these proposals move IEEE to a regime that requires licenses or mandates an assurance of a license or blanket license as a condition of participation or contribution, IEEE may want to have outside counsel advise it further about imposing that type of policy agreement.
I believe that the rules changes being proposed for consideration by PatCom only provide for the assurance of commercial prices and licensing terms as one option that a participant that contributes what it believes are essential patents may provide. As a supporter of the changes, the way I see them working is that the other participants will draw their own conclusions from the choice that their fellow participant makes. Some of them may be more inclined to vote in favor of the inclusion of a particular technical contribution in a final IEEE standard if they are assured in advance that the technology will be available to them on set terms. For others the existence of a detailed licensing commitment may matter less.
I will let IEEE comment on the legal advice it may have received from IEEE counsel. As you may be aware, there have been a number of recent statements from US and European competition authorities that have expressed the view that, to quote FTC Chairman Deborah Majoras, “a patent holder’s voluntary and unilateral disclosure of its maximum royalty rate … is highly unlikely to raise antitrust scrutiny." (Chairman Majoras' speech is available at http://www.ftc.gov/speeches/majoras/050923stanford). I assume that this and other pronouncements by the Justice Department Antitrust Division, the Federal Trade Commission, and the European Union have given IEEE's antitrust counsel comfort with the proposed rules changes, but again, they can speak for themselves.
I would also like to know how voluntary disclosure will work in practice:
> Will IEEE expect and request or call for public disclosure of confidential rates/terms from members?
> Will IEEE allow its work groups to take any negative presumptions without disclosed terms? How is that voluntary?
> Can IEEE PatCom reject the terms if they don't satisfy some criteria it determines appropriate?
> Rates are much more complicated than fixed lumpsum fees. How will maximum rates be useful to IEEE process? Will they mislead rather than clarify?On the first question, it is not at all unsual for patentholders to disclose a licensing program including detailed terms. Once disclosed, of course, those terms become non-confidential. Also, to go back to an earlier point, the disclosure of terms is only one option that a patentholder may choose. If it wishes to keep its detailed tersm confidential, it is free to check the RAND box and invite questions from licensees regarding its terms.
As to "negative presumptions" that working groups may draw from a failure of a patentholder to disclose terms, my view is that individual participants may well draw a negative presumption. In the situation in which there are two substitute technologies competing for inclusion in a standard, the fact that one of the submitters has disclosed concrete licensing terms may be seen by other participants as a reason, all other things being equal, to favor that technology. In my view, that's a good thing.
On your question regarding IEEE PatCom rejecting terms, I will let the PatCom members speak to this point, but my understanding is that there is no expectation that the adoption of the proposed rules changes would change the role of PatCom in reviewing LoAs, which will remain focused on compliance with the formal requirements of the IEEE rules, not the substance of particular LoAs.
As to your last point, I agree that licensing terms are more complicated than fixed lumpsum fees. My own view, however, is that more information about licensing intentions, made available earlier in the standards development process, is better than less information made available later. We can trust participants (and the counsel that represent them) to assist in untangling detailed disclosures.
> Is IEEE promoting licensing terms through its LOA process by accepting and collecting license rates and T&Cs?
> If IEEE accepts by signing the conditional terms under a LOA contract, has it agreed the terms are acceptable or that it accepts the commercial conditions offered?Here too, I will let IEEE speak for itself, but from the perspective of an observer of IEEE-SA and PatCom, I don't believe IEEE sees its role as "promoting" particular license terms or Ts and Cs. Likewise, I don't believe IEEE sees its role as validating the acceptability (or, for that matter, the "reasonableness") of proposed terms when it accepts an LoA.
> It's a simple example Don provides below, but why do Working Groups want/need to get into the level of the type of discussion alluded beyond the LOA?
Working groups, and individual members of working groups, may feel that more information regarding the terms under which particular essential patents will be provided assists them in making decisions regarding which technologies to support for inclusion in a standard. In a world where the only disclosure permitted is RAND, participants in a working group may feel that they are being asked to make those decisions without much information on which to compare alternative technology proposals or decide whether a marginal feature should be included as a mandatory part of a standard. This problem is compounded by the lack of consensus as to what either "reasonable" or "non-discriminatory" means, and specifically whether a commitment to license patents on "reasonable" terms in any way constrains a patentee from charging what the market will bear.
I agree that rules against discussion in meetings or development of the standard must be tight and strongly enforced by IEEE over its participants. Practically speaking, if terms are being requested to provide information to IEEE process, how will IEEE/engineer participants avoid the temptation of discussing them?
We agree that legal risks should be minimized in IEEE development process to the greatest extent possible. Participants should be able to expect that more certain, less risk environment and efficient process. I assume that this is a universal principal we all share and is not controversial. I don't see that it is in IEEE interests to discourage participation in development in any way due to uncertain process or risks of legal exposure.
Recent agency statements regarding the antitrust risks associated with disclosure of licensing terms may give a more realistic picture of the antitrust risks that IEEE and participants in IEEE working groups face from rules that permit disclosure of licensing terms. As to the desire for mitigation of legal risk, mitigation of legal risk is certainly one value that is important in the process of creating standards and commercializing standards-compliant products. Another value that Cisco and other companies that participate regularly in standard-setting believe is important is transparency in standard-setting, so that participants and other implementers of standards-compliant products know as early as possible what terms they will need to accept to implement standards-compliant products. The proposed rules changes regarding the definition of "reasonable" and the option to disclose at least a not-to-exceed royalty rate support that goal.
Thanks,
MichelleFrom: Don Wright [mailto:don@LEXMARK.COM]
Sent: Tuesday, March 14, 2006 5:32 PM
To: PP-DIALOG@listserv.ieee.org
Subject: Re: [PP-DIALOG] Application of per se rule to ex ante joint conduct
Amy:
The NEED for the change in what is now clause 5.3.8 of the SASB Ops Manual will be a part of the discussion in agenda item 6.2.6. I want PatCom to first decide whether to recommend allowing for the voluntary disclosure of not-to-exceed rates before we propose any specific language changes to 5.3.8. I don't want to waste everyone's time arguing about the word changes there unless and until PatCom decides to recommend allowing the disclosure.
I tend to agree with you that the language needs a little "tightening" especially to insure group negotiation of pricing does not happen in standards development meetings. On the other hand, I don't know how we can forbid "discussion" in the meetings because that might preclude the following:
Party 1: "We've committed to charge $10,000 to use our patent"
Party 2: "Is that a one time fee, an annual fee or something else?"
Party 1: "That's a one time fee."
Is the above a discussion? Many would answer yes. Should it be forbidden? Personally, I don't think so.
The question then becomes how to draw the line to allow for the above and other similar interchanges while not allowing overt negotiation in standards development meetings.
Should PatCom decide to recommend allowing disclosure, I will welcome your suggestions for wording!
***************************************************************************
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
***************************************************************************
"Amy Marasco (LCA)" <amarasco@microsoft.com>
Sent by: PP-DIALOG@ieee.org
03/14/2006 07:43 PM
To: <don@LEXMARK.COM>, <PP-DIALOG@listserv.ieee.org>
cc:
Subject: RE: [PP-DIALOG] Application of per se rule to ex ante joint conduct
Don, will this clause be discussed at the upcoming PatCom meeting? With all due respect, I am concerned that the wording in what was ops-manual-clause 5-3-9-v3.doc does not sufficiently delineate what activity is permitted when and under what rules or parameters. For example, can proposed licensing terms be discussed at a technical committee meeting and, if so, what are the procedures governing that activity?
Many thanks,
Amy
From: Don Wright [mailto:don@LEXMARK.COM]
Sent: Tuesday, March 14, 2006 1:44 PM
To: PP-DIALOG@listserv.ieee.org
Subject: Re: [PP-DIALOG] Application of per se rule to ex ante joint conduct
Amy, et al:
If you examine the agenda for the December 5th PatCom Meeting (http://standards.ieee.org/board/pat/1205patagen.html) and look at the attachment to agenda item 5.3, you'll find a ZIP file containing a document named ops-manual-clause-5-3-9-v3.doc. This was proposed to address the issue of allowing the disclosure of licensing rates but not allowing group negotiation of those rates at a standards development meeting. PatCom could decide otherwise at any time but the committee has been heading toward your (a) item below and not your (b) item.
(BTW: Due to recent changes made in the Standards Board Operations Manual (http://standards.ieee.org/guides/opman/index.html), that clause is now 5.3.8)
"Amy Marasco (LCA)" <amarasco@microsoft.com>
Sent by: PP-DIALOG@ieee.org
03/12/2006 01:24 PM
To: "Skitol, Robert A." <Robert.Skitol@DBR.COM>, <PP-DIALOG@listserv.ieee.org>
cc:
Subject: RE: [PP-DIALOG] Application of per se rule to ex ante joint conduct
I guess I am a little confused by the exchange of e-mails in this
string. I am wondering if there is any degree of consensus around the
notion that there is a difference between:
(a) the disclosure of possible licensing terms (I say "possible" because
it is likely that not all licensees will end up with the exact same
license), and
(b) the discussion or negotiation of such terms as a group under the
auspices of a standards body or as part of a standards-setting activity.
In other words, is there any consensus that the PatComm should continue
to debate the former, but that IEEE should expressly prohibit the
latter?
My reading of the Hydrolevel case is that ASME was held liable because
it permitted arguably anti-competitive conduct under its roof and under
its "apparent authority". Doesn't it seem that, based on the Hydrolevel
and Golden Bridges decisions, IEEE as a standards-setting organization
would better protect itself and its members from possible antitrust
claims by prohibiting group discussions or negotiations of commercial
licensing terms under its auspices than by facilitating such activity?
Whatever IEEE determines are the appropriate parameters, I think that
they should be spelled out very clearly so that everyone understands
exactly what activity is permitted under IEEE's rules and what is not.
I suspect that we can all agree that any ambiguity in this regard would
be problematic.
-----Original Message-----
From: Skitol, Robert A. [mailto:Robert.Skitol@DBR.COM]
Sent: Friday, March 10, 2006 9:36 PM
To: PP-DIALOG@listserv.ieee.org
Subject: Re: [PP-DIALOG] Application of per se rule to ex ante joint
conduct
Richard conflates the idea of encouraging unilateral disclosure
of material license information -- the main proposal now before the
IEEE's PatCom -- with "collective negotiation" and "collusive" conduct
of the kind alleged in the Golden Bridges case, which nobody is now
advocating for the IEEE. There is no credible basis whatsoever for any
suggestion that the unilateral disclosure policy idea now before PatCom
would increase antitrust risk or any other litigation exposure to IEEE
or participants therein. To the extent the proposal would result in
participants' disclosures of more license information during standard
setting, it would do precisely what (a) Congress expressly encouraged
SDOs to do in its enactment of the SDOAA two years ago (see House
Report) and (b) both Assistant Attorney General Pate and FTC Chairman
Majoras expressly encouraged SDOs to do in their speeches within the
past year. Numerous published in-depth analyses (many cited in Chairman
Majoras's speech) confirm the complete antitrust legality as well as
affirmative desirability of more meaningful information disclosures
along these lines. I am unaware of even a single contrary analysis,
published or otherwise, that even begins to refute the supportive
literature on this subject. As already noted, both enforcement agencies
endorse the idea of an unqualifiedly "good" result from more rather than
less material information being available during a standard-setting
proceeding.
Richard's suggestion of an antitrust problem with IEEE's adoption
of a definition of "reasonable" is equally vacuous. IEEE already
encourages patent owners to make RAND commitments. How can it suddenly
become an antitrust problem to explain or clarify what RAND is intended
to mean for this purpose? Is the world better off with controvery and
confusion over what RAND means? That is a formula for more litigation of
the sort that is already burdening IEEE and other SDOs' standards.
The irony is that, while policy changes of the kind now under
consideration would entail no new legal risk of any kind, failure to act
on them would leave unaddressed the all-too-real existing risk of
abusive patent holdup conduct in connection with IEEE standards. This is
a reality of the status quo that has already generated litigation
messes, past and present. No need to get more specific about them unless
Richard wants to do so. Suffice it to say that failure to address in any
manner existing conditions enabling those disputes to have evolved and
enabling more such disputes to arise in the future is nothing less than
irresponsible.
Instead of chasing antitrust ghosts boo-hooing about any move
forward, we should worry more about exposure from (a) continued
collective suppression of highly material license information during
standard setting; and (b) continued collective refusal to adopt measures
to prevent anticompetitive manipulations of IEEE processes. Grounds for
real concern on those fronts can be found in (a) United States v.
National Society of Professional Engineers, 435 U.S. 679 (1978); and (b)
American Society of Mechanical Engineers v. Hydrolevel Corp., 456 U.S.
556 (1982).
-----Original Message-----
From: Taffet, Richard S. [mailto:richard.taffet@BINGHAM.COM]
Sent: Friday, March 10, 2006 3:32 PM
To: PP-DIALOG@LISTSERV.IEEE.ORG
Subject: Re: [PP-DIALOG] Application of per se rule to ex ante joint
conduct
Gil
Thank you for your comments.
First, it may be that your perspective is focused narrowly on the agenda
posted for the March 27 meeting. If so, I can see how you are having
trouble in understanding how the Golden Bridges decision may have an
impact on discussions at the IEEE PatCom, and how the decision may cause
some concern even with the issues that have been teed up for the next
meeting.
However, we certainly have no control over how the agenda is set, or how
the PatCom is going to tackle all of the issues that have been raised
over the past 9 to 10 months. As you commented yesterday, neither you
nor I have any vote in what the PatCom does, and the Chair has made it
clear that he is not bound to abide by any consensus of interested
parties. Accordingly, I think it is very important for all interested
parties and the IEEE organization to be sensitive to how specific issues
that might be on the instant agenda will lead to the discussion of
future issues that have already been identified and proposed for
discussion. Included in this group of issues that may be discussed in
the future is a policy that would have license terms decided by "[a]
group of licensees negotiating collectively with owners of competiting
technologies." (source: June 2005 submission to DOJ and FTC). As you
pointed out in connection with that possibility there may be competitive
justifications for that type of arrangements, but whether there are or
not would not change the fact that a per se antitrust claim could be
asserted in connection with such conduct, and depending on the pleading
such a claim could very easily survive a motion to dismiss, or applying
the Golden Bridges' type of reasoning a motion for summary judgment.
So, I think it is reasonable to consider specific proposals that may be
discussed early in the process for some reason in the context of the
broader proposals that have been made and which underlie this effort. I
do not think it is too far of a stretch to think that there is some plan
to establish positions, for example in connection with the LoA, that
will then compel policy changes that might not otherwise be supported if
addressed in the first instance from a full policy position. Indeed,
the email from the PatCom chair to Larry Bassuk yesterday, as I
understand it, says exactly this -- that the LoA is not intended to be
amended to reflect current policy, but is to be used to drive future
changes in the policy. I am not sure why it is not a legitimate
comment, as I believe Larry made, to suggest that this is not a proper
approach, but the Chair has indicated that he will not entertain such
discussion. Putting aside whether this procedural step itself, coupled
with the indication that decisions will not be made based on a consensus
of interested parties, raises some issues, including as might be
asserted under an Allied Tube analysis, it does suggest that there may
be some strategy that is being pursued to progress the IEEE policy to
include matters not identified on the March 27 agenda.
Included in such later to be addressed issues may be your proposal for
collective negotiation of license terms. Whether such collective
negotiations occur ex ante (as I assume you would prefer) or ex post, it
would seem not to matter for the Golden Bridges' decision apply.
Similarly, mandatory rate caps, which have also been proposed and is on
the agenda for the March 27 meeting, may foster a far greater likelihood
of claims such as is the subject of the Golden Bridges case. Here, too,
I think you would agree from the perspective of antitrust counselling
that while justifications may be offered, the practical fact that even a
rule providing for voluntary rate caps could lead to uncontrolled
discussions (outside the meeting room as alleged in Golden Bridges) that
then are implemented in the meeting to set rates collectively. Again,
the fact that justifications may exist and that a rule of reason
analysis should be applied, or that the rule is nominally voluntary, is
not going to stop a claim from being asserted or the possibility of a
court rejecting the justifications and application of the rule of
reason. That risk, which as illustrated by Golden Bridges (as well as
the Conexant case in which TI prevailed but was still required to
litigate) is not fanciful or remote.
When viewed in context the issue of whether to include the definition of
"reasonable rates, terms and conditions" as proposed, or any definition
of what reasonable rates and license terms will be, in an LoA also could
give rise to what may be alleged as a garden variety per se unlawful
antitrust violation. The proposed definition is particularly problematic
because it would impose a standard upon patent owners that is not
supported by law. Notwithstanding that some commentators, as identified
by Scott Peterson, have discussed that from economists perspective it is
possible to identify value attributable to a patent itself and an
additional amount to the fact that the patented technology is
standardized, this assessment is not universally accepted, and it is the
very rare commentator that has suggested that patent owners should be
stripped of the value of their IP based upon such an analysis. Nor
would this theory apply in each case, as you have acknowledged, for
example where there is only a single patented alternative under
consideration for standardization. Such a step, even in the standards
context, also would be fundamentally contrary to patent law.
Accordingly, it is certainly conceivable that one could allege that an
SDOs adoption of such a rule constitutes concerted action (especially
where consensus is not the basis for the decision). Moreover, because
the proposed definition only includes selective factors, and not many
other factors that would be relevant to a full determination of what a
willing licensor and willing licensee would agree to at the time of the
negotiations, it could be argued too that it is equivalent to a price
fixing agreement. Again, the purpose of this point is not to say that
such a claim would necessarily succeed, but rather to point out that it
may survive a motion to dismiss. This may not be a Golden Bridges' type
allegation, but I don't think the IEEE should be limiting itself to only
those type of antitrust theories. (This comment also does not address
the fact that in my view, wearing an SDO hat, this is just bad policy
because it would impose a rigid definition that is not applicable to
many situations that arise in the standards process.)
Likewise, although not related to the Golden Bridges' decision, the
approach of the LoA is problematic because it could have the exact
contrary effect than I had thought was intended. Rather than providing
information early in the standards development process, it could result
in causing patent owners to wait until the very last minute to disclose
IP and to submit an LoA. This likelihood is already more probable than
not because of the fact that any LoA will not be binding and
irrevocable. The very real problem is that it may be impossible to
identify what is an "essential patent" until the standard is well along
the way to being final. Accordingly, unless a patent owner wishes to
give a blanket license (which as proposed would apply to all essential
patents whether disclosed or not, which itself reflects a fundamental
change from the ANSI policy), it runs the risk of having to make
licensing commitments without even knowing whether its IP is essential.
If such IP is then subjected to a collective negotiation of terms or
mandatory rate caps, prices for non-essential competing patents would be
fixed as would rates for essential patents. I think you do understand
the potential antitrust risk there.
Similarly, the proposed LoA's approach to Organizational Knowledge could
exacerbate these problems, especially for companies that themselves are
not members, but who's employees are members. How would the concept of
Organizational Knowledge as proposed even apply in that circumstance?
Further, how could an employee who has nothing to do with licensing
issues or his employer's patent portfolio be in a position to bind his
company, much less affiliates, successors and assigns?
Further, the proposal to make the LoA binding by having it signed by the
IEEE also involves antitrust issues. Such a step clearly would allow
the argument that the concerted action element of a Section 1 Sherman
Act claim is satisfied, and any anticompetitive effects achieved through
implementation of the LoAs, especially under a rule of reason analysis,
would require extensive analysis, and resulting costs and times.
I hope these comments help you. Please understand they are not being
offered for any purpose other than to express what I believe may result
in less efficient, and thereby less procompetitive, standards
development. These are my views regarding the standards process, and
should not be ascribed to any particular company that I may or may not
represent. I hope you take them in that way, and that you do not think
that they are offered to counterbalance your positions. I do think it
would be a very bad result, however, if rules are adopted, no matter how
well intentioned, that will not accommodate all stakeholders' interests
in the IEEE type of open standards body, and that will give rise to even
the prospect of greater litigation risks, to say nothing of liability
risks. I think this would be especially unfortunate if such rules are
adopted because of a flawed process or a failure to consider all of the
very complex variables that exists in standards development, as well as
in connection with the current state of technology, competition and
licensing.
Look forward to seeing you soon.
Richard S. Taffet, Esq.
Bingham McCutchen LLP
399 Park Avenue
New York, New York 10022-4689
T: (212) 705-7729
F: (212) 702-3603
email: richard.taffet@bingham.com
cell: (914) 582-2477
-----Original Message-----
From: Gil Ohana (gilohana) [mailto:gilohana@cisco.com]
Sent: Thursday, March 09, 2006 7:27 PM
To: Taffet, Richard S.; PP-DIALOG@listserv.ieee.org
Subject: RE: [PP-DIALOG] Application of per se rule to ex ante joint
conduct
Thanks Richard. I'm not aware that the issue of royalty caps, which as
we both know is alive in ETSI, is on the IEEE-SA agenda. I'm also not
aware that the rules changes that PatCom is being asked to consider, as
you put it, "rules that will invariably (at least allegedly) lead to
fixing of license terms by joint conduct." PatCom is being asked to
consider rules that will give patricipants in standard-setting and
implementers of IEEE standards more information about what terms they
will have to accept to practice those standards. I'm missing how that
leads to "fixing of license terms."
On your suggestion regarding agenda efficiency and the views you ask me
to present, all I can say in response is that it was you, not me, that
posted the Golden Bridge opinion in what could be seen as an attempt to
raise in the minds of PatCom members the specter of antitrust risk as a
reason not to favor the ex ante proposals. Further to my prior postings
in response, perhaps you can make your reasoning explicit. You are a
leading practitioner that has been engaged in standard-setting and
antitrust issues since for a while, and your views would, I'm sure, be
illuminating.
Gil Ohana
Director, Antitrust and Competition
Cisco Systems, Inc.
300 E. Tasman Drive
MS 10/2
San Jose, CA 95134
United States of America
Phone: +1 408 525 2853
Mobile: +1 408 203 5301
E-mail: gilohana@cisco.com
-----Original Message-----
From: Taffet, Richard S. [mailto:richard.taffet@bingham.com]
Sent: Thursday, March 09, 2006 3:44 PM
To: Gil Ohana (gilohana); PP-DIALOG@listserv.ieee.org
Subject: RE: [PP-DIALOG] Application of per se rule to ex ante joint
conduct
I certainly agree wholeheartedly with your point that it is important to
consider how enforcement agencies will consider changes in SDO rules.
Some may be positive and some may be negative, as I understand has been
the reaction of the EC officials to certain positions in ETSI.
I am not too concerned with agenda efficiency, however. I am more
concerned that whomever is making the decision does so on a fully
informed basis and not to advance a specific agenda.
I think specifically when you get into issues such as royalty caps, and
rules that will invariably (at least allegedly) lead to fixing of
license terms by joint conduct, grave concerns should exist.
Likewise, I would think that if agenda efficiency is the primary
motivating factor here, please do share with us your views how each of
the proposals that have been made will not conclusively allow any claim
of concerted action or an anticompetitive effect. If you can do that by
first of next week, we will have a basis to continue the dialog.
Richard S. Taffet, Esq.
Bingham McCutchen LLP
399 Park Avenue
New York, New York 10022-4689
T: (212) 705-7729
F: (212) 702-3603
email: richard.taffet@bingham.com
cell: (914) 582-2477
-----Original Message-----
From: Gil Ohana (gilohana) [mailto:gilohana@cisco.com]
Sent: Thursday, March 09, 2006 6:17 PM
To: Taffet, Richard S.; PP-DIALOG@listserv.ieee.org
Subject: RE: [PP-DIALOG] Application of per se rule to ex ante joint
conduct
Thanks Richard. For better or worse, neither of us is a member of the
Patent Committee. I'm hoping that the people that actually get to do
the voting are monitoring this list, and they would benefit from hearing
your views as to why the specific legal theory asserted by the plaintiff
in the Golden Bridge case you chose to post to the list is relevant to
the votes they will be asked to cast on the 27th. They also may benefit
from understanding more generally, particularly in the wake of the
various statements regarding the issue of ex ante disclosure rules and
antitrust risks that have been made by the European Commission and the
leadership of both US federal antitrust agencies, what role
consideration of antitrust risk should play in their consideration of
the various proposals for the changes to the IEEE-SA rules involving ex
ante disclosure of licensing comitments.
That is not an easy question, and it merits careful consideration from
the members of PatCom (after all, if you're right about the connection
you seem to posit between between ex ante rules and increased antitrust
risk, then IEEE-SA would seem to have a significant organizational
interest at stake in avoiding the "messy and unpredictable" process of
antitrust litigation). I'm hoping that you share my goal of addressing
those issues in advance of the meeting so that we can proceed through
the agenda efficiently.
Best regards,
Gil Ohana
Director, Antitrust and Competition
Cisco Systems, Inc.
300 E. Tasman Drive
MS 10/2
San Jose, CA 95134
United States of America
Phone: +1 408 525 2853
Mobile: +1 408 203 5301
E-mail: gilohana@cisco.com
-----Original Message-----
From: Taffet, Richard S. [mailto:richard.taffet@bingham.com]
Sent: Thursday, March 09, 2006 2:57 PM
To: Gil Ohana (gilohana); PP-DIALOG@listserv.ieee.org
Subject: RE: [PP-DIALOG] Application of per se rule to ex ante joint
conduct
Gil
What's your rush? What conclusions will you draw? I am not sure what
the basis will be to conclude anything one way or the other, or what
signficance it will have in what the IEEE is considering on the merits.
If there is a need for you to find out more information on a particular
schedule, give me a call and we can schedule a time to discuss each of
the proposals and each of their implications. If it is important to
you, we can try to schedule such a call in advance of the March 27
meeting Let me know.
Richard S. Taffet, Esq.
Bingham McCutchen LLP
399 Park Avenue
New York, New York 10022-4689
T: (212) 705-7729
F: (212) 702-3603
email: richard.taffet@bingham.com
cell: (914) 582-2477
-----Original Message-----
From: Gil Ohana (gilohana) [mailto:gilohana@cisco.com]
Sent: Thursday, March 09, 2006 5:28 PM
To: Taffet, Richard S.; PP-DIALOG@listserv.ieee.org
Subject: RE: [PP-DIALOG] Application of per se rule to ex ante joint
conduct
Richard, why wait for the meeting? You have the chance to enlighten all
of us now.
To frame the question again, I'm not asking you generally for your view
of why ex ante disclosure rules increase the risk that SDOs and
companies participating in standard-setting will face antiturst
ligitation. I'm going back to the Golden Bridge decision you chose to
bring to the attention to the list and asking you to explain which of
the specific rules changes that IEEE-SA's Patent Committee would
increase the risk that IEEE-SA or participants in IEEE-SA's technical
working groups would face group refusal to deal claims. It's a simple
enough question, and if your response is that you'll need all the time
between now and March 27 to think of an answer, then we'll draw the
appropriate conclusions. I'm optimistic (there I go again) that we
won't have to wait that long.
Gil Ohana
Director, Antitrust and Competition
Cisco Systems, Inc.
300 E. Tasman Drive
MS 10/2
San Jose, CA 95134
United States of America
Phone: +1 408 525 2853
Mobile: +1 408 203 5301
E-mail: gilohana@cisco.com
-----Original Message-----
From: Taffet, Richard S. [mailto:richard.taffet@BINGHAM.COM]
Sent: Thursday, March 09, 2006 2:14 PM
To: PP-DIALOG@listserv.ieee.org
Subject: Re: [PP-DIALOG] Application of per se rule to ex ante joint
conduct
I am sure the PatCom chair will afford us plenty of time to discuss how
the IEEE proposals could raise the same type of claims as alleged in the
Golden Bridges case. I think you are also truly the optimist in
thinking that rules, which have already engendered significant debate
when merely being proposed, will lead to anything but more litigation.
Words have a funny way of being interpreted in interesting ways in the
context of lawsuits.
Richard S. Taffet, Esq.
Bingham McCutchen LLP
399 Park Avenue
New York, New York 10022-4689
T: (212) 705-7729
F: (212) 702-3603
email: richard.taffet@bingham.com
cell: (914) 582-2477
-----Original Message-----
From: Gil Ohana (gilohana) [mailto:gilohana@cisco.com]
Sent: Thursday, March 09, 2006 5:10 PM
To: Taffet, Richard S.; PP-DIALOG@listserv.ieee.org
Subject: RE: [PP-DIALOG] Application of per se rule to ex ante joint
conduct
Thanks Richard. Recognizing your point that the 3GPP standards are
being revised, what Golden Bridge has alleged is a group refusal to deal
by a number of large potential licensees, effectuated through an
informal agreement reached in what the opinion terms is an "offline
session." I'm still not seeing the connection between any of the
proposed rules changes that IEEE-SA is considering and the conduct
alleged in Golden Bridge. Nothing about, for example, permitting
patentees disclosing essential patents to an IEEE-SA working group to
state a "not to exceed" royalty or attaching to their LoA a binding
licensing commitment would in any way increase the exposure that IEEE-SA
or participants in IEEE-SA working groups face under the antitrust laws
from the kinds of claim asserted by Golden Bridge.
So I go back to the point made in my earlier e-mail: are you just trying
to remind us that participants in standard-setting face antitrust risk?
Or are you trying to argue that there is something specific in the
proposed IEEE-SA rules changes that the Patent Committee is to consider
in a few weeks that increases the risk IEEE-SA and participants in
IEEE-SA standards working groups face from group refusal to deal claims?
It's easy enough to mention ex ante and antitrust risk in the same
sentence and hope that people associate the two. But, after the
endorsement of ex ante disclosure rules provided both in Chairman
Majoras' speech and in the press release the European Commission issued
in December following the change to ETSI's rules, it would be helpful to
the debate if you could provide a more specific causal linkage between
the rules that IEEE-SA is considering adopting and increased antitrust
risk to IEEE-SA or its members.
One more thing: I agree with you that litigation is "messy and
unpredictable." Of course, a major benefit of the adoption of ex ante
rules is that they avoid the need for companies seeking to implement a
standard to avoid the need to litigate patent disputes with patentees
that seek to define what a "reasonable" royalty is expansively. Those
cases, too, can be "messy and unpredictable."
Gil Ohana
Director, Antitrust and Competition
Cisco Systems, Inc.
300 E. Tasman Drive
MS 10/2
San Jose, CA 95134
United States of America
Phone: +1 408 525 2853
Mobile: +1 408 203 5301
E-mail: gilohana@cisco.com
-----Original Message-----
From: Taffet, Richard S. [mailto:richard.taffet@bingham.com]
Sent: Thursday, March 09, 2006 1:45 PM
To: Gil Ohana (gilohana); PP-DIALOG@listserv.ieee.org
Subject: RE: [PP-DIALOG] Application of per se rule to ex ante joint
conduct
Not sure your very careful attempt to distinguish the import of this
case from the discussion of joint ex ante is terribly meaningful, or
would be found persuasive by either a court or a plaintiff's lawyer who
seeks to address ex ante conduct that eliminates the inclusion of a
patented technology in a standard or deprives a patent owner of
flexibility in licensing terms. Not suggesting that the allegations
of the case have merit, but there are quite a number of companies that
now are spending a lot of money and time litigating for what might be
considered competitively benign conduct.
Happy to discuss these points further, but one fact I think you will
agree is that especially in the 3GPP context, standards are continuously
being revised, and there is no simple conclusion that can be reached
when a standard is final. So, in connection with this specific case,
the elimination of of Golden Bridge's technology was part of the
evolution of the 3GPP standard.
Accordingly, the key take away might be that nice theories can always be
justified, but legal claims and litigation are messy and unpredictable
-- which leads to high costs and less efficiency in standards
development.
Speak to you soon.
Richard S. Taffet, Esq.
Bingham McCutchen LLP
399 Park Avenue
New York, New York 10022-4689
T: (212) 705-7729
F: (212) 702-3603
email: richard.taffet@bingham.com
cell: (914) 582-2477
-----Original Message-----
From: Gil Ohana (gilohana) [mailto:gilohana@cisco.com]
Sent: Thursday, March 09, 2006 4:34 PM
To: Taffet, Richard S.; PP-DIALOG@listserv.ieee.org
Subject: RE: [PP-DIALOG] Application of per se rule to ex ante joint
conduct
Richard, thank you for providing the Golden Bridge opinion. As I read
the opinion, it stands for the (uncontroversial) position that a group
refusal to deal among competitors that collectively have market power
can violate Section 1 of the Sherman Act. Aside from the fact that the
particular group refusal to deal alleged happened in the context of
standard-setting, I'm having trouble understanding how the case relates
to (as the title of your e-mail states) "ex ante joint conduct". Per
the facts of the opinion, the discussion among the defendants that led
to Golden Bridge's technology being dropped as an optional feature of
the 3GPP standard occurred after the 3GPP standard had already been
approved by 3GPP. See Opinion at 2 ("In 1999 cPCH [Golden Bridge's
patented technology] was adopted by 3GPP as an optional part of the 3GPP
standard."). The allegedly anticompetitive acts Golden Brdge is
complaining of did not occur until years later.
If your goal is to remind participants in IEEE standard-setting that
antitrust issues swirl around standard-setting, then the Golden Bridge
opionion is a useful reminder of that point. But if (as I suspect from
the title of your e-mail) your goal is to suggest that the antitrust
risks standards bodies or their participants face are increased by the
adoption of those bodies of ex ante disclosure rules, then I must admit
that the support the Golden Bridge opinion provides for that proposition
is escaping me.
Gil Ohana
Director, Antitrust and Competition
Cisco Systems, Inc.
300 E. Tasman Drive
MS 10/2
San Jose, CA 95134
United States of America
Phone: +1 408 525 2853
Mobile: +1 408 203 5301
E-mail: gilohana@cisco.com
-----Original Message-----
From: Taffet, Richard S. [mailto:richard.taffet@BINGHAM.COM]
Sent: Thursday, March 09, 2006 11:27 AM
To: PP-DIALOG@listserv.ieee.org
Subject: [PP-DIALOG] Application of per se rule to ex ante joint conduct
The recent decision from the United States District Court for the
Eastern District of Texas is another example where joint ex ante
standards conduct relating to IP was alleged to violate the antitrust
laws, including under a per se theory. In this case, defendants' motion
for summary judgment was denied, including on the ground that per se
treatment might be appropriate. Even without the issue of whether the
conduct should be considered under a per se or rule of reason approach,
the fact is the case is now going to trial and will involve all of the
costs and uncertainties that necessarily result.
<<show_case_doc.pdf>>
Richard S. Taffet, Esq.
Bingham McCutchen LLP
399 Park Avenue
New York, New York 10022-4689
T: (212) 705-7729
F: (212) 702-3603
email: richard.taffet@bingham.com
cell: (914) 582-2477
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