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