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David and David, I wanted to follow up on my suggestion below regarding how the IEEE-SA might address the question of what version of the By-Laws applies to work in process at the IEEE-SA. Since my October 14 posting to PP-Dialog, the
IEEE-SA has proposed a new draft FAQ and response, FAQ 84A, which bears on the issue I raised. Draft FAQ 84A provides as follows: 84A. Is an Accepted LOA that was accepted before the effective date of the updated IEEE-SA Patent Policy interpreted under the updated
patent policy or under the patent policy that was in effect on the date of acceptance?
An Accepted LOA is subject to the IEEE-SA patent policy in effect at the time of IEEE’s acceptance of that LOA. The March 2015 patent policy update does not amend retroactively the terms of any previously Accepted LOA. In updating
its patent policy, the IEEE-SA expresses no view as to whether any specific provision in the March 2015 update does, or does not, represent a substantive change from the pre-March 2015 IEEE-SA patent policy. I very much appreciate PatCom’s effort to address the question of the applicability of the updated patent policy to Essential Patent Claim that is within the scope of an Accepted LOA accepted prior to March 15,
2015. I am concerned, however, that the position taken in draft FAQ 84A will not prove a good foundation for future standards development at IEEE-SA. Specifically, the position that an LOA accepted at a point in time is subject to the patent policy in effect
at that point in time would “grandfather” old LOAs (and the submitters of old LOAs, or the companies that come to own those submitters). This creates a situation in which different participants in IEEE-SA standards development that submitted LOAs of different
scopes at different times will be subject to different patent policy texts. While the text of FAQ 84A (wisely) leaves open the question of whether the 2015 updates represent a substantive change relative to the previous patent policy, I am conscious of the fact that one company has resurrected
an earlier LoA issued by a corporate affiliate to try to bring itself under the previous policy. That suggests to me that the submitting company believes that the 2015 updates are a change. While other participants in IEEE-SA standards development may disagree
with that position, all participants in IEEE-SA standards development benefit when participants are governed by the same policy text rather than by different texts that they may understand differently. The draft FAQ 84A, in its current form, will perpetuate,
in principle forever, a situation in which different participants operate under different policy texts, to the detriment of standards development at IEEE-SA. Therefore, I propose that the Patent Committee consider carefully whether it wants to release draft FAQ 84A in its current form, or whether there are alternatives that would serve the goals of a uniform policy
text that governs all participants in IEEE-SA standards development at a point in time. I look forward to discussing this issue under agenda item 6.3 at the December 4 Patent Committee meeting. Happy Thanksgiving to those in the United States. Best regards, Gil Ohana (employed by and affiliated with Cisco Systems) From: Gil Ohana (gilohana)
To: David Law, Chair, Patent Committee; David Ringle, IEEE-SA Patent Administrator David and David, I am writing to ask that at its December meeting the Patent Committee discuss the question of the application of the updated IEEE-SA By-Laws to “work in process” at IEEE-SA. My request is prompted by the submission on September 1st of the letter attached to document IEEE 802.11-15/1026r0 (available at
https://mentor.ieee.org/802.11/dcn/15/11-15-1026-00-0000-communication-to-patcom-related-to-802-11ah.pdf ). The reference in the September 1st letter to a 2009 blanket Letter of Assurance submitted by CSR to cover ongoing work in the IEEE-SA
802.11ah working group suggests a possibility that the Patent Committee should carefully consider. The possibility is that the submitter of the September 1st letter believes that its reference to a Letter of Assurance dated before the effective
date of the updated By-Laws (March 15, 2015) means that all patents identified by the submitter of the earlier Letter of Assurance (or, in this situation, a subsequent acquirer of the submitter) as essential to 802.11ah are covered by the By-Laws text as of
the date the earlier Letter of Assurance referenced in the September 1st letter was submitted.
If that belief is correct, the effect would be that any participant in IEEE-SA standards development that can find a blanket LoA submitted before March 15 can continue to participate in standards development at
IEEE, avoid the implications of a refusal to license patents under option (d) of the IEEE-SA Letter of Assurance form, yet evade the application of the updated By-Laws indefinitely. Acceptance of that position would create significant uncertainty among participants
in IEEE-SA standards development and implementers of IEEE-SA standards, uncertainty that IEEE-SA should quickly address. As an initial matter, it would be helpful for the Patent Committee (and, if necessary, the Standards Board) to understand what position the submitter of the September 1st letter is taking relative to the application
of the updated By-Laws to patents and applications it has identified and may identify in the future as essential to 802.11ah.
Second, the Patent Committee may wish to offer guidance to participants in IEEE-SA standards development regarding how the updated By-Laws apply to work in process. For example, IEEE-SA could take one or more
of the following positions (which are not mutually exclusive):
·
The updated By-Laws apply to any Essential Patent Claim (as defined in the By-Laws) essential to an IEEE-SA standard approved by RevCom on or after March 15, 2015
·
The updated By-Laws apply to any Essential Patent Claim essential to an IEEE-SA standard that results from a PAR approved by RevCom on or after March 15, 2015
·
The updated By-Laws apply to any contribution incorporated into an IEEE-SA standard and made by the owner of an Essential Patent Claim if such contribution was first made on or after March 15, 2015
·
The updated By-Laws apply to any Essential Patent Claim contained in a patent that claims a priority date on or after March 15, 2015 The points of potential guidance provided above are illustrative only. The discussion during the December Patent Committee meeting may identify additional possibilities. Please note that
I am not asking the IEEE-SA to deviate from its position that it will not decide whether the updated By-Laws do or do not apply retroactively. Instead, I am asking the Patent Committee to clarify to what work ongoing at IEEE-SA on March 15, 2015 the updated
By-Laws apply. Thank you in advance for your consideration of my request that the issue of guidance regarding the application of the updated By-Laws to work in process be included in the agenda for the December meeting of the
Patent Committee. Best regards, Gil Ohana (employed by and affiliated with Cisco Systems) |