Don and PP-Dialog,
I wanted to offer a few comments on the questions and answers that PatCom has provided. While I very much appreciate the careful thought that went into the proposed FAQs and answers, I fear that PatCom has not addressed
several issues that are causing uncertainty for participants in standards development, particularly in 802.11. Specifically:
(1)
What patent policy text applies to standards under development on March 15, 2015, the effective date of the updated patent policy?
It seems to me that it would be entirely fair to apply the updated patent policy to any contribution made to any ongoing standard being developed on March 15, 2015. Participants in standards development at IEEE-SA
made contributions knowing of the updated patent policy, and for those that view the updated patent policy as effecting a change in when prohibitive orders are available or how RAND should be interpreted, their decision to submit new contributions was informed
by the possibility that the updated policy could apply to those contributions.
I note that the contribution made a few days ago by Scott Gilfillan does not take this approach. Instead, Scott proposes that the updated policy apply only to PARs initiated after March 15, 2015. That seems like
an accommodation to me. It is one that I can support at this time, in the hope that it leads to quick resolution of this issue. That support should not be understood as an admission that a different result, such as applying the updated policy to PARs approved
before March 15, 2015 but where the LoA covers contributions made after March 15, 2015, would in any sense be unfair to participants. I do not believe that it would be unfair.
(2)
Is there an exception to the principle that the updated patent policy applies to any amendment initiated through a PAR approved after March 15, 2015 for blanket LoAs issued before March 15, 2015?
As I noted in a submission I made to PP-Dialog on November 24, 2015, I am concerned that the effect of accepting the position that an LoA submitted for a particular standard or amendment before March 15, 2015 thereby
applies the pre-update patent policy to amendments initiated by PARs approved after March 15, 2015 will be to create confusion as to what patent policy text applies to different patentees. That confusion may extend far into the future. Patentees that believe
that the updated policy works a substantive change will hunt for pre-March 15, 2015 LoAs they can buy. Indeed, this seems already to have happened. Patentees that came later to IEEE-SA or that cannot find a pre-March 15, 2015 LoA with the right scope will
operate under a different text. This creation of different groups of submitters operating under what they perceive as different rules is an concern in an organization that rightly promotes equality between different participants in standards development and
that wants to be welcoming to new participants.
It seems to me that, consistent with the view that a blanket LoA is an LoA expressed in PatCom’s proposed responses to the 4 questions, IEEE-SA should harmonize the treatment of blanket LoAs and LoAs that reference
specific patents with respect to standards and amendments initiated by PARs approved after the effective date of new patent policy text. As to both, the rule (accepting the position set out in Scott Gilfillan’s proposal) should be that as to any standard
resulting from a PAR initiated after March 15, 2015, the updated patent policy text applies.
To the extent that a particular patentee is concerned with the application of the updated patent policy text to patents it committed to license under an earlier blanket LoA, that patentee should be permitted, within
a short time after the adoption of a new patent policy, to submit a new LoA with prospective effect only. The patentee should be able to avoid the effect of current clause 6.3.4 of the Operations Manual, which provides (to summarize) that if a submitter provides
multiple LoAs, a licensee can choose between them. It seems to me that this result could be accomplished with a change to clause 6.3.4 of the Operations Manual. I have drafted proposed language below (new text in red):
6.3.4 Multiple Letters of Assurance and Blanket Letters of Assurance
A
Submitter may provide the IEEE with a
Blanket Letter of Assurance for a specific [Proposed] IEEE Standard that covers all
Essential Patent Claims the Submitter may currently or in the future have the ability to license. A Submitter may submit separate Letters of Assurance providing different licensing positions for different potential Essential Patent Claims.
Over time, a Submitter may also provide multiple assurances for a given Patent Claim by submitting multiple
Letters of Assurance for such claim. For Essential Patent Claims, each such Letter of Assurance shall be binding on the Submitter. Each potential licensee may choose to invoke
the terms of any applicable Letter of Assurance accepted by the IEEE, with one exception: If a Submitter has signed and submitted a Letter of Assurance specifically identifying a
Patent Claim before or concurrently with signing and submitting a Blanket Letter of Assurance, the Blanket Letter of Assurance cannot be invoked as to the specified Patent Claim. (The Submitter, however, may submit a separate specific Letter of Assurance
offering the Blanket Letter of Assurance terms for the specified Patent Claim.) The intention of this paragraph is to permit the Submitter to offer alternative assurances, and to permit the potential licensee to choose from among the alternative assurances
offered.
If, after providing a Blanket Letter of Assurance, the Submitter acquires an Essential Patent Claim or a controlling interest
in an entity that owns or controls an Essential Patent Claim, the existing Submitter's Blanket Letter of Assurance shall apply to such acquired Essential Patent Claims unless the acquired entity or the prior holder of the acquired Essential Patent Claim has
submitted a Letter of Assurance before the acquisition. Any Blanket Letter of Assurance submitted by the acquired entity or the prior holder of the acquired Essential Patent Claim before the acquisition shall continue to apply to acquired Essential Patent
Claims covered by such assurance (but not to the acquirer's Essential Patent Claims). Letters of Assurance covering specified Essential Patent Claims shall continue to apply to specified Essential Patent Claims, whether acquired in the acquisition or held
by the acquirer before the acquisition, as provided in this Operations Manual. Nothing in this paragraph shall prevent an acquiring party from asking a seller of an acquired Essential Patent Claim or an acquired entity to submit additional Letters of Assurance
before closing of the acquisition.
Notwithstanding anything in the preceding text of this clause 6.3.4, in the event of a substantive change to the text
of the clause 6 of the IEEE-SA Standards Board By-Laws, the Submitter of a previously accepted Blanket Letter of Assurance may, within ninety (90) days following the effective date of the change to text, submit a new Letter of Assurance, which may be
a Blanket Letter of Assurance or a Letter of Assurance that specifically identifies a Patent Claim. Such new Letter of Assurance shall apply only to the Submitter’s participation in new standards or amendments to existing standards that are initiated through
a PAR approved after the effective date of the changed text. As to the changed text effective as of March 15, 2015 only, Letters of Assurance may be submitted under this paragraph at any time up to ninety (90) days after [the date on which this revision to
the text of clause 6.3.4 of the IEEE-SA SASB Operations Manual is approved]. This paragraph shall not limit the application of clause 6.3.5 of this IEEE-SA SASB Operations Manual to Letters of Assurance submitted before the effective date of a substantive
change to the text of clause 6 of the IEEE-SA Standards Board By-Laws to amendments, corrigenda, editions, or revisions resulting from PARs that are initiated after the effective date of the substantive change in text.
I look forward to a productive meeting in Berlin.
Best regards,
Gil Ohana
From: Don Wright [mailto:don@xxxxxxxxxxxxxxxxxxxxxxxx]
Sent: Friday, May 20, 2016 7:07 PM
To: PP-DIALOG@xxxxxxxxxxxxxxxxx
Subject: [PP-DIALOG] 4 Questions on Letters of Assurance
Members of PP-Dialog:
The IEEE Standards Board Patent Committee (PatCom) has been discussing four questions asked by an IEEE Working Group chair regarding how certain Letter of Assurance apply in regards to amendments.
PatCom has discussed several proposed responses. While PatCom has not completed its deliberations, we would now like to share with you the draft answers in the attached document.
In addition, PatCom considered changing the existing FAQs 14 and 17 to add “including Blanket Letters of Assurance” when those FAQs reference “Letters of Assurance.” However, PatCom has tentatively
concluded that the term “Letters of Assurance” already applies to both Letters of Assurance identifying one or more specific patents as well as Letter of Assurance that indicate they are Blanket Letters of Assurance and therefore does not believe those existing
FAQs need to be changed.
The participants on PP-Dialog are asked to:
Offer their views and, if necessary, specific wording changes and justification of same on the 4 answers to improve clarity
Offer their views as to whether FAQs 14 & 17 need to be updated to specifically note that Letters of Assurance includes Blanket Letter of Assurance.
Please submit written input to this PP-Dialog mailing list by 17 June 2016 in order to allow PatCom members sufficient time to consider your comments prior to the June PatCom meeting where these
items will be on the agenda.
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2016 IEEE Standards Association President-Elect
Member, IEEE SA Standards Board, PatCom (Chair) & ProCom
Chair, IEEE-ISTO Board of Directors
Chair, IEEE SA Nominations & Appointments Committee
Member, IEEE Nominations & Appointments Committee
Past Chair, IEEE Admission & Advancement Committee
Past Chair, INCITS Executive Board