[PP-DIALOG] Proposed change to 6.3.4 -- Problematic

[Sandy Block <msb@xxxxxxxxxx>]

To the extent I understand what is proposed,
it is problematic. If the proposal involves cancelling contracts accepted
by the parties (Submitter and IEEE), I oppose it. If a third party (or
member) Submitter who does not follow IEEE Policy changes and does not
submit a new LOA within the deadline (after a Policy change) is subject
to whatever new terms the policy may add, I oppose that. I assume other
lawyers would also. To the extent the proposal is at odds with existing
IEEE policy/FAQs, I question it. How does the proposed text fit with FAQ
85,  "Q: Will the updated
 IEEE-SA Patent Policy apply to existing standards development projects
currently underway as well as new standards development projects? A: The
updated policy will apply to any LOAs for any project or standard) submitted
on or after the effective date."  
I do not know if this proposal would promote ex post facto or just
impairment of contract or would just promote a freeze on submissions for
fear of the unknown, but I oppose the red, white, and blue proposal below.

Among other things, I do not know what
is intended by a former Submitter "may,  within 90 days...,submit
a new LOA" for new activities. Does it mean that the Submitter can
enter a non-assurance LOA going forward, as the text would suggest? 

If this text proceeds, clarification
would be appreciated. 

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



From:      
 "Gil Ohana (gilohana)"
<gilohana@xxxxxxxxx>
To:      
 PP-DIALOG@xxxxxxxxxxxxxxxxx
Date:      
 06/28/2016 08:20 AM
Subject:    
   [PP-DIALOG]
FW: [PP-DIALOG] 4 Questions on Letters of Assurance

---

I have revised the text I proposed to revise
current Ops Manual section 6.3.4 to implement my proposal regarding the
coverage of updated By-Laws text.  The new text below is in blue.
 My original suggested revision
(from my e-mail on June 17) is in red.
   I look forward to the Patent
Committee meeting tomorrow.
 
Best regards,
 
Gil Ohana
 
*****************************************************
 
6.3.4 Multiple Letters of Assurance
and Blanket Letters of Assurance 
A Submittermay 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 an
Essential Patent Claim.
 Such new Letter of Assurance shall apply only to the Submitter’s
participation in new standards,
revisions, corrigenda,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.  In
the event that the Submitter does not avail submit a new Letter of Assurance
that applies to the Submitter’s participation in new standards or amendments,
revisions, or corrigenda to existing standards initiated through a PAR
approved after the effective date of the changed text within the specified
time period, the Submitter shall be bound by the updated text as to any
claim that is an Essential Patent Claim as to any standard, amendment,
revision, or corrigendum resulting from a PAR approved after the effective
date of the changed text. 
 
 
From: Gil Ohana (gilohana) 
Sent: Friday, June 17, 2016 5:46 PM
To: 'Don Wright'; PP-DIALOG@xxxxxxxxxxxxxxxxx
Subject: RE: [PP-DIALOG] 4 Questions on Letters of Assurance
 
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 Submittermay 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 an
Essential Patent Claim.
 Such new Letter of Assurance shall apply only to the Submitter’s
participation in new standards,
revisions, corrigenda,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.  In
the event that the Submitter does not avail itself of the opportunity to
submit a new Letter of Assurance that applies to the Submitter’s participation
in new standards or amendments to existing standards initiated through
a PAR approved after the effective date of the changed text within the
specified time period, the Submitter shall be bound by the updated text
as to any claim that is an Essential Patent Claim as to any standard, amendment,
revision, or corrigendum resulting from a PAR approved after the effective
date of the changed 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.
 
 
________________________________________________________

Don Wright, President Standards Strategies, LLC 10420 Vista Hills Blvd Louisville, KY  40291 don@xxxxxxxxxxxxxxxxxxxxxxxx +1 859-396-7812

 
 
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