RE: [PP-DIALOG] Business Review Letter
Thanks for your input, Michelle.
At this point in time, I believe it is likely we will
make available our letter requesting a Business Review Letter once it has
been officially submitted. I understand, this process can include
some exchanges where we might change our initial letter to address some
point brought up in the process so the letter we initially submit may be
edited, updated or otherwise changed in the course of the process.
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Don Wright
don@lexmark.com
f.wright@ieee.org / f.wright@computer.org
Director of Standards
Lexmark International INCITS Executive
Board Vice-Chair
C14/082-3
IEEE SA Standards Board Past Chair
740 New Circle Rd IEEE
SASB Patent Committee Chair
Lexington, Ky 40550 Member: IEEE
SA Board of Governors
859-825-4808 (phone) Member: IEEE CS
SAB & W3C AC
603-963-8352 (fax) Director,
IEEE-ISTO
***************************************************************************
|
| "Michelle Lee" <mleelaw@nortel.com>
Sent by: PP-DIALOG@ieee.org
11/07/2006 04:58 PM
|
To:
<PP-DIALOG@listserv.ieee.org>
cc:
Subject:
RE: [PP-DIALOG] Business Review Letter |
Don, Clare, Michael:
Thank you for keeping us advised and asking
for input into the Business Review Letter.
I had assumed that at least SASB officers
would see and pre-approve the DOJ review letter about the IEEE SA policy,
and that once the letter was in a form that's near ready for submission
to the DOJ, it would be public and not privileged. Is that not the case?
I find it difficult to provide informed input without seeing the review
letter request that is proposed.
In any case, here are topics we would like
addressed in the letter for DOJ guidance on IEEE proposed policy and process:
1. IEEE SA experience
of abuse restricting use of IEEE standards - findings of patent
licensing terms held unreasonable contrary to RAND, the extent of
anti-competitive hold-up of IEEE standards and the extent of IEEE member
firms that have caused significant restriction of use of an IEEE standard.
2. Rate conditions on
adoption without full transparency for evaluation - Unlike VITA
proposed policy, IEEE SA does not have a patent disclosure policy.
Declaration of ex ante terms are not based on patent
disclosure or limited to member disclosed essential patents or applications.
Voluntary maximum rates and licensing terms conditioned on selection
of member's technology may be declared without patent disclosure and knowing
the likelihood of patent validity, essentiality or minor vs. core feature
coverage of the IEEE standard at issue. Further to that, we would like
to know DOJ position with respect to:
a) Member declaration and IEEE SA acceptance
of ex ante assurances of maximum rates for member essential patent
claims to an IEEE standard, without known essential IPR position by the
member making the licensing declaration for the standard.
b) Blanket maximum rates to a standard (portion
of product price) vs. maximum rates to essential claims of a disclosed
patent(s) for a single patented technology to a feature.
3. Guidance about how
to absolutely avoid anti-competitive purposes or effects in operation of
the ex ante royalty communications in IEEE SA conduct given
the severe penalty consequences
Unlike VITA, IEEE SA process is not limited
to a particular standard. That makes ex ante royalty declaration
processes dramatically more complex and uncertain in IEEE. IEEE SA would
allow and accept ex ante T&C conditions on numerous IEEE SA
standards with widely varying technical objectives, scope, markets, maturity
levels, participants and IPR landscapes (irrespective of standardization).
We would like DOJ guidance whether and how IEEE SA can properly carry
out process to avoid anti-competitive effects and with respect to competitors
setting their maximum rate conditions on IEEE standards adoption in this
context, including:
a) When complex interrelated, complementary
or premature technologies are involved, any of which may not have multiple
substitutes
b) When component features will be used no
matter which technology solution is selected
c) When selection of the standard by owners
of technologies competing for the standard based on maximum royalty will
not amount to technology price fixing or bid rigging of terms for the patented
technology selected.
d) When selection by competing implementer
participants (but not necessarily all market users) based on maximum rates
declared ex ante will not directly or indirectly/expressly or impliedly
fix a portion of product price they will sell
e) If the mere exchange of voluntary royalty
through IEEE process and selection of technology will amount to adherence
to the announced price
f) Whether prohibitions on discussions are
enough to help avoid signalling about appropriate rates between the patent
holder and WG members in IEEE standards setting process.
g) How to avoid WG boycotts in the process
and not preclude firms from licensing alternatives, complements or non-essential
patent technology based on selection of a technology with a declared maximum
royalty
h) How to prevent manipulative or misleading
advanced pricing schemes with declared terms that lock in technology selection
i) When a person declaring royalty conditions
may dominate the WG selection process or have market power, and including
if others copy or discount their maximum royalty conditions, irrespective
of actual value of contributions
4. Group discussions
inside the IEEE Standards context or induced by IEEE process
- Communication of LOA licensing terms
to Working Groups enticing but prohibiting discussion amongst participants
in meetings, including when the WG faces no immediate or actual known risk
of anti-competitive hold-up
- backroom licensing term discussions
and information sharing amongst participants outside open WG process
5. Impacts on economic
incentives and pro-competitive benefits of policies that attract wide open
patent holder membership and contribution to IEEE national/multi-national
standards
LOA assurances of licenses on non-discriminatory
basis are a voluntary promise of a patent holder that do not relinquish
granted patent rights. The more open the patent policy is to encourage
access to patented essential technologies, the more potential to sustain
the pro-competitive benefits of IEEE standardization. The DOJ review letter
needs to outline impacts on future IEEE membership and contribution of
patented technologies to IEEE standards that could reduce competition between
technology rivals in IEEE standards setting and between downstream implementers,
and which can increase rather than lessen the potential for hold-up risks.
6. Impacts on benefits
of ex ante and ex post licensing of technology
a) Selection of technologies based on ex
ante maximum pricing replacing, or at a minimum reducing incentives
for, bilateral licensing negotiations on reasonable terms and non-discriminatory
basis.
b) How will bid competition for an IEEE standard
by patent holders not reduce price competition between licensees on a non-discriminatory
basis and not limit licensing flexibility for use of the patented technology
that is proposed for adoption or that is selected as the IEEE standard.
c) Refusal or non-availability of licenses
from essential patent holders on less than their declared maximum rate
7. Soliciting affirmative
non-awareness of IPR assurances based on reasonable and good faith inquiry
of participants when there can't be actual knowledge of all patent claims
of patent portfolios to verify these promise statements even in good faith
and vis-a-vis Dell
Thank you,
Michelle
From: Don Wright [mailto:don@LEXMARK.COM]
Sent: Wednesday, November 01, 2006 4:48 PM
To: PP-DIALOG@listserv.ieee.org
Subject: [PP-DIALOG] Business Review Letter
A number of you have expressed interest in the process for the IEEE-SA’s
request for a business review letter, and I wanted to let you know what
the process will be. We have decided to seek the business review
letter from the U.S. Department of Justice. (For those of you not
familiar with the business review letter process, see http://www.usdoj.gov/atr/public/busreview/procedure.htm.)
I will be working with IEEE-SA senior leadership, senior staff and counsel
to draft the request which we plan to submit no later than November 15
but possibly sooner. The request will describe the background, the
proposed policy and its key provisions (i.e., ex ante disclosures, affiliates,
and assignees), and the key concerns (e.g., to ensure that Justice Department
would not view the ex ante disclosure provisions of the policy as a form
of price-fixing or otherwise unlawful concerted behavior).
I do not plan to circulate drafts of the letter for comment, but I want
to advise you of two avenues for input in the process. First, we
do want to make sure that our request includes all topics that might reasonably
concern interested parties, so if there are topics or specific phrasing
that you want to suggest, we will consider it (at least if it is received
before November 7). Second, we are preparing a list of interested
persons (with contact information) that we will submit with our request,
so that the Justice Department can contact anyone from whom it wishes to
receive further input. We prepared a tentative list based on attendance
at the 2006 PatCom meetings, but if you want to be sure that your name
is included, please send a note to Dave Ringle (d.ringle@ieee.org), with
your company name and your contact information.
Finally, if you have not seen it already, you should take a look at the
business review letter that the Justice Department issued this past Monday,
October 30, concerning an ex ante disclosure policy of the VITA standards
development group. We would be particularly interested in knowing
if you have a concern about the IEEE policy that is not addressed in the
Justice Department’s VITA letter. (See http://www.usdoj.gov/atr/public/press_releases/2006/219379.htm)
Thanks again for all of your input throughout this process.
***************************************************************************
Don Wright
don@lexmark.com
f.wright@ieee.org / f.wright@computer.org
Director of Standards
Lexmark International INCITS Executive
Board Vice-Chair
C14/082-3
IEEE SA Standards Board Past Chair
740 New Circle Rd IEEE
SASB Patent Committee Chair
Lexington, Ky 40550 Member: IEEE
SA Board of Governors
859-825-4808 (phone) Member: IEEE CS
SAB & W3C AC
603-963-8352 (fax) Director,
IEEE-ISTO
***************************************************************************