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“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.” Indeed, that is a simple but inevitable consequence of contract law. It appears that Gil Ohana now finally gets the concept of disharmony in FRAND patent policies. This, after he publically stood up and argued that there is no FRAND disharmony problem, as he rebutted my paper on the subject. My paper given at IEEE SIIT 2015 is entitled “Perilous Deviations from FRAND Harmony— Operational Pitfalls of the 2015 IEEE Patent Policy” and is available at http://bit.ly/SIIT-2015 . What Gil describes below is none other than what happens when an SDO deviates from what I call in the paper “FRAND Harmony.” Try as he might in his email below, and despite the IEEE-SA FAQ’s textual gymnastics expressing “no view as to whether … the March 2015 update … represents a substantive change,” neither Gil nor the IEEE-SA can change the fact that the IEEE 2015 patent policy is a substantive change from its predecessor, with changes that entail additional material binding concessions from SEP holders who agree to be bound by it. Gil also cannot change the irrevocable contractual obligations that SEP holders made to implementers under previous legacy LOAs not to discriminate against them, for example, by later providing more favorable terms on the same SEPs to other licensees. My paper explains the reasons why under the 2015 IEEE patent policy those terms are necessarily more favorable to new licensees. This is so, for example, with respect to the new SEP holders’ covenants not to seek injunctions and the new requirement that consideration of comparable licenses for purposes of determining a FRAND royalty should include only licenses for which the SEP holder had relinquished the right to seek, enforce, or even threaten, an injunction. There can be no doubt that IEEE-SA intended and obtained a substantive and material change in the IEEE patent policy; otherwise it would not have bothered with nearly two years of controversial and highly contested amendment process. But neither Gil nor IEEE-SA can have it both ways; one cannot, on the one hand, make material changes to the patent policy and on the other hand, expect everybody to pretend that material differences do not exist. That is what the draft FAQ 84A as currently written now properly explains without identifying any changed provisions. Finally, Gil’s notion of a patent policy “applying to work in process” is totally disconnected from reality and the legal meaning of FRAND commitments. His notion of “resurrecting an earlier LOA” shows fundamental misapprehension of the scope and time-span of LOAs. LOAs do not expire and therefore cannot be “resurrected.” FRAND commitments are made not only for the standards’ work in process at the time the commitments are made; they are made for past, present, and future work on any “amendment, corrigendum, edition, or revision” of the standard. These irrevocable commitments made in perpetuity are solemnly undertaken by SEP holders with the additional expectation to prospectively license uncertain scope of future applications of their patented technologies. In exchange, SEP holders are assured of locking-in the terms understood at the time as FRAND per the then countervailing patent policy. There are two sides to this contract, and IEEE-SA is the counterpart who is not free to unilaterally redefine the terms of the contract. By keeping its end of this bargain, IEEE-SA and standard implementers receive substantial and valuable consideration: It has been the IEEE’s patent policy to cast the broadest possible net and include as many relevant SEPs as possible under the submitter FRAND pledge, including for future work. And under the IEEE Blanket LOA pledge, SEP holders have committed to license “all Essential Patent Claims the Submitter may currently or in the future have the ability to license.” Here again, reference to future work is unambiguous and because ownership of record can be manipulated, it was IEEE’s express intent of receiving the broadest possible consideration: that ownership of the SEP would not be necessary for binding a submitter to license under FRAND terms if it otherwise has the ability to license. Clearly, the prospective contractual features of LOAs are inextricable components of the bundle of benefits that all parties derive from the FRAND contract. Gil’s desires notwithstanding, bringing into the FRAND fold additional new SEPs for a developing standard through an earlier LOA is precisely the result intended by the IEEE patent policy. It is the “grandfathering” of these legacy LOAs (which Gil regards as objectionable) that permits IEEE-SA and standard implementers to reap the benefits of SEP holders’ commitment to license future projects. Gil apparently recommends that IEEE-SA ignore these considerations it received from SEP holders in earlier LOAs and somehow renege on its past commitments to LOA submitters—telling them that their earlier LOAs are no longer operable for the very projects for which they were expressly pledged. This would not only make no sense, but it is legally infeasible. I do not question Gil’s good faith in raising this issue. It seems to me, however, that the mere fact that he or others seriously hold this position is sufficient proof that FAQ 84A as currently written is necessary. Best regards, Ron ------------------------------------------------------- Ron D. Katznelson, Ph.D. President, Bi-Level Technologies 1042 N El Camino Real, Suite B-250 Encinitas, CA 92024 Office: 760 753-0668 Mobile: 858 395-1440 Email: ron@xxxxxxxxxxxxxxx Selected Works: http://works.bepress.com/rkatznelson From: Gil Ohana (gilohana) [mailto:gilohana@xxxxxxxxx] 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) |