Re: [PP-DIALOG] Third draft of IEEE-SA Standards Board Bylaws open for comment - reminder

[Sandy Block <msb@xxxxxxxxxx>]

All:

Pursuant to Gil's prior note and Paul's submission, attached are my comments on the current IEEE Patent Policy Draft.

To summarize a few of the points:

• Enabling those who do not seek reciprocity to exclude "Affiliates" from the license assurance provides a special benefit to non-practicing entities (who do not need licenses back). Should NPEs participate in creating standards and then exclude SEPs of  their patent-owning subsidiaries?
• "Transfer" provision should better wait for ANSI action to ensure compliance. [Sentence seeking to impose broad liability can be problematic for all.]
• I suggest a fair "injunctive relief" provision, which includes conditions approved by governmental agencies. For example, a SEP holder should not be bound by its assurance when an implementer does not reciprocate with its SEPs or when an implementer is beyond court jurisdiction.  
• While implementers have a concern about premature "injunctive relief", patent holders have concerns over premature governmental investigations over anticompetition. Both remedies can be costly, time-consuming, and disruptive. It is noted first that anti-competition charges have become pro forma when there is a RAND dispute.   It is proposed that if implementers are not presumed "unwilling" and are not subject to injunctive relief until RAND is determined and not complied with by the implementer, a SEP holder should not be subject to implementer-initiated anti-competition charges based on RAND until RAND is determined and not complied with by the SEP holder.  
• It is also noted that any perceived need for extreme anti-injunction provisions has shrunk due to recent events:
  1. eBay case turned "automatic injunction" whenever patent is valid and infringed into an equitable process with four factors.
  2. Recent cases have relied heavily on RAND in viewing the eBay factors and denying injunction.
  3. Recent cases have applied a "causal nexus" to eBay requiring that the asserted patents "drive customer demand" for the product, further limiting access to this remedy.  
  4. Recent cases have penalized improper resort to injunction in the standards context.
  5. USTR reversed ITC Exclusion Order [for Samsung] -- requiring development of record on whether patents are SEPs and on the RAND issue.
  6. Agencies (expressing concerns with injunctive relief)  have not required measures as severe as IEEE draft.
     

		While injunction and exclusion order can be disruptive, IEEE should be balanced in addressing the issue and cognizant of recent events. . 

(See attached file: IEEE Policy Draft v4 MSBlock Comments 04052014.xls)

Marc Sandy Block,
Counsel, Intellectual Property Law
1B117 /  North Castle Drive /  Armonk, NY  10504
msb@xxxxxxxxxx
TL 251-4295  (outside 914-765-4295); fax 251-4290

PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED 

This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege.  If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail.

paul hashim ---04/07/2014 01:02:29 AM---David/Patcom participants, Attached are my inputs to the third draft of the IEEE-SA Standards Board

From:	paul hashim <paul.hashim@xxxxxxxxxx>
To:	PP-DIALOG@xxxxxxxxxxxxxxxxx, 
Date:	04/07/2014 01:02 AM
Subject:	Re: [PP-DIALOG] Third draft of IEEE-SA Standards Board Bylaws open for comment - reminder

---

David/Patcom participants,
 
Attached are my inputs to the third draft of the IEEE-SA Standards Board Bylaws, entered with respect to the “clean” version of the document 
 
Best regards,
 
Paul
 
Paul C. Hashim
Vice President
Chief IP Counsel 
Futurewei Technologies, Inc
Huawei US R&D Center

5340 Legacy Drive, Bldg. 3
Plano, TX  75024
Tel:  (469) 277-5762
Fax: (469) 277-5901
e-mail: paul.hashim@xxxxxxxxxx 
 
From: Dave Ringle [mailto:d.ringle@xxxxxxxx] 
Sent: Wednesday, April 02, 2014 5:28 PM
To: PP-DIALOG@xxxxxxxxxxxxxxxxx
Subject: [PP-DIALOG] Third draft of IEEE-SA Standards Board Bylaws open for comment - reminder
 
Just a reminder that the comment submission deadline is 6 April.
******************************************************************
David L. Ringle
Director, IEEE-SA Governance
IEEE Standards Association
445 Hoes Lane                              
Piscataway, NJ  08854-4141 USA
TEL: +1 732 562 3806
FAX: +1 732 875 0524               
EMAIL: d.ringle@xxxxxxxx
******************************************************************
---------- Forwarded message ----------
From: Law, David <dlaw@xxxxxx>
Date: Fri, Mar 7, 2014 at 11:02 AM
Subject: [PP-DIALOG] Third draft of IEEE-SA Standards Board Bylaws open for comment
To: PP-DIALOG@xxxxxxxxxxxxxxxxx


Dear pp-dialog members,

The third IEEE-SA Standards Board Bylaws draft is now available for comment and can be accessed at <http://grouper.ieee.org/groups/pp-dialog/drafts_comments/index.html>. The comment period will open today, and will close at 23:59 Anywhere on Earth (AOE) on 6th April 2014. As you will observe, the comment period overlaps the IEEE-SA Standards Board PatCom meeting. The draft will be discussed at this meeting, and the discussion may assist reviewers in framing their comments.

Please ensure your comments are with respect to either the comment dispositions <http://grouper.ieee.org/groups/pp-dialog/drafts_comments/PatCom_sort_by_commentID_040314.pdf> or the 'clean' version of the current draft <http://grouper.ieee.org/groups/pp-dialog/drafts_comments/SBBylaws_040314.pdf>. The redline versions are provided for your reference to assist in your review. Please also clearly note your concern and the change in text that would address the concern.

The PatCom comment entry spreadsheet must be used for the submission of comments <http://grouper.ieee.org/groups/pp-dialog/comment-tool/index.html>. Use of the spreadsheet is required in order for your comments to be considered in a systematic manner. For this reason, edited copies of the documents will not be considered. One request in respect to comments, for line and page numbers please insert the starting line number or page number of the text being referenced. Please do not use the format '4-5' for line or page numbers. If you wish to reference a span of lines or pages, that text can be in the comment itself.

Best regards,
  David Law
  IEEE-SA PatCom Chair


 [attachment "IEEE Patcom - Paul_Hashim_comments.xls" deleted by Sandy Block/Thornwood/IBM]

Attachment: IEEE Policy Draft v4 MSBlock Comments 04052014.xls
Description: application/msexcel