Re: [PP-DIALOG] Application of per se rule to ex ante joint conduct

[don@xxxxxxxxxxx]

Michelle:

I'll try to briefly answer a few of your questions since you have not been involved in this since the beginning of the PatCom discussion last year:

>I'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. 

What is on the table at this time is voluntary disclosure of not-to-exceed rates.  There nothing being considered in the way of mandatory licensing in order to participate.

>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?

If a patent holder is unwilling to disclose a not to exceed rate then they don't have to.

>>Will IEEE allow its work groups to take any negative presumptions without disclosed terms?
>>How is that voluntary?

The IEEE cannot control what participants in working group think.  If a silicon supplier refuses to disclose its prices, it will likely have less business.  Why should it be different in a competitive and free market for a supplier of intellectual property?  It is voluntary because a patent holder can always choose not to license if they don't believe they will receive satisfactory compensation.

>> Can IEEE PatCom reject the terms if they don't satisfy some criteria it determines appropriate?

The IEEE will not review rates, terms and conditions.  It will make sure the letter of assurance is complete and submitted according to the IEEE's process

>>Rates are much more complicated than fixed lumpsum fees.  How will maximum
>>rates be useful to IEEE process? Will they mislead rather than clarify?

We propose to allow rates in any form: lump sum, annual sum, per unit royalty, royalty based on selling price, etc.

>> Is IEEE promoting licensing terms through its LOA process by accepting and collecting license rates and T&Cs?

Sorry, I don't understand this question.

>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?

There will be a disclaimer on the IEEE LOA specifically disclaiming any acceptance or reasonableness of rates, terms or conditions provided.

> 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?

For the same reason working groups often want to compare the manufacturing costs of competing proposals.  If a WG understands that proposal A requires twice as much silicon as proposal B, it can weigh that factor in its decision making.  Why should the licensing cost be treated any differently?

>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?  

In much the same way we provided guidance on the disclosure of the IEEE Patent Policy at working group meetings, working group chairs will be provided guidance in how to run their meetings in regards to discussion of patents.

>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.

It is the goal of the IEEE not to increase its risks while acting in such a way that is consistents with the IEEE 501c(3) goals of working for the good of society in the areas of science, engineering, standards and education.

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 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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