Don,
Will the Business review letter be made
available to the Patent Committee today? I understand it was submitted last
week.
Thanks.
Susan
Susan Hoyler
Senior Manager, IPR Policy & Compliance Group
QUALCOMM Incorporated
2001 Pennsylvania
Ave, NW Ste 350
Washington, DC
20006
(703)395-7513 (mobile)
From: Don Wright
[mailto:don@lexmark.com]
Sent: Tuesday, November 07, 2006
7:13 PM
To: PP-DIALOG@listserv.ieee.org
Subject: 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.
***************************************************************************
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
***************************************************************************