Sandy, thanks for sharing your thoughts. It may be easiest to address your intervention point by point. I’ll excerpt text from your e-mail and respond.
**********************
MSB comment:
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.
GYO Response:
The proposal permits a Submitter that has given a blanket LoA in the past to respond to a change in the text of the IEEE-SA patent policy by withdrawing its past blanket LoA with
prospective effect only. While it would have been convenient not to have needed to revise Ops Manual Section 6.3.4 to achieve that goal, the point of 6.3.4 (part of the 2007 changes to the text of the by-laws) is to permit a prospective licensee to choose
from among multiple licensing statements made by a patentee. So if we did not revise 6.3.4, then a submitter that responded to changes in the text of the patent policy by issuing a new LoA (for example, moving to an LoA in which it refuses to license patents)
would still be bound to honor its previous LoA. I have proposed a revision to 6.3.4 to address that issue.
On your comment that the submitter is “subject to whatever new terms the policy may add”, it sounds like you are arguing against any (even purely prospective) application of the
updated patent policy text. That seems like a denial of the right of an organization to review its governing rules.
Let me offer a parable: At a particular intersection in a town there are a series of car accidents. Some people in the town urge town government to install a traffic light at
the intersection. The town holds hearings to evaluate the issue, and the relevant committees of the town council, including the council itself, vote by super-majorities to authorize the building of the traffic light. Some people in the town thought that
the traffic light was an excessive response to an insignificant problem. They were given the opportunity to express that view, but they ultimately failed to convince the town government not to go ahead with building the traffic light.
It sounds like your position would be that those that opposed the construction of the traffic light could ignore it, forever. My position is different: from the day the traffic
light starts working (we’ll call that day March 15, 2015), everyone has to stop at a red light. As I noted in my initial contribution, though it would be reasonable to apply the updated patent policy text to any CONTRIBUTION made after March 15, 2015, that
is not the position Intel is taking, nor is it the position that Cisco is taking at this point. Some may argue that if the decision to participate in a new standards development effort that began under the previous patent policy text, it would be unfair
to apply the updated text to subsequent contributions to the same standards development effort. While I disagree with that position, I don’t feel strongly enough to insist that the updated text apply to ongoing work organized under PARs approved before March
15, 2015. However, it seems to me that as to a new standards development effort (one organized under a PAR approved on March 15, 2015 or later), any participant at IEEE-SA that chooses to participate does so with full knowledge of the updated text. If that
participant decides to go ahead, it should be bound by the updated text. Indeed, if it is not bound by the updated text, the will of the majority (those townspeople that supported the new traffic light, in my parable) is frustrated, and different participants
are playing by different rules (some get to run the red light, others wait patiently for the green).
The PatCom FAQ would permit the prospective application of previously provided LoAs, including blanket LoAs. I do not believe that is the right position for IEEE-SA to take, because
it would have the effect of rewarding past submitters of blanket LoAs with the opportunity to play by different rules, potentially far into the future. So I am proposing that the submitter of a blanket LoA be permitted to withdraw its past blanket LoA with
prospective effect only. If the submitter chooses not to take advantage of the opportunity to withdraw, it would be bound by the updated text for new work only. While I can’t claim objectivity, I’m hoping that others will see that approach as striking a
balance between respecting the will of the majority, indeed the super-majority, of the various IEEE-SA governance bodies that voted in favor of the updated text while not applying the updated text to any work begun prior to its effective date.
********************************
MSB Comment:
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.
GYO Response:
As you note, I am taking a position that is different than the position taken in the draft response to FAQ 85. While I respect the views of PatCom in creating the draft FAQ response,
I think that “grandfathering” past LoAs indefinitely as applied to new work under new PARs is the wrong road for IEEE-SA to take. PatCom’s proposal risks creating a situation in which different participants in the same standards development effort are governed
by different patent policy texts, a situation that may continue into the indefinite future. That will complicate work in IEEE-SA, as it will require participants to evaluate contributions differently based on when the LoA that covers a specific contribution
was made. It also seems to privilege existing participants over newcomers in a way that will not make IEEE-SA attractive to new participants.
On your “ex post facto” or “impairment of contracts” point, I have to defer to you on US constitutional law, except to note that I do not believe the IEEE-SA is a state actor.
In any case, I do not understand either constitutional doctrine to prohibit a government from changing laws with prospective effect only. If you are aware of different law, please enlighten me.
***************************************
MSB Comment:
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?
GYO Response:
Yes, my proposal provides that a participant may choose to submit a new LoA that applies to prospective work, but must do so within 90 days after a change in the text of the patent
policy. The new LoA would be submitted on the required IEEE-SA form, and the submitter would be able to select among the full range of options available under the form.
*********************************************
By the way, I agree with your position that IEEE-SA should provide remote access to PatCom, SASB, and BOG meetings. As you may recall, I fought successfully to restore remote access to ETSI
IPR SC meetings. While I don’t recall IBM supporting me on that point at ETSI, I’m not one to bear grudges. As Cisco has done for ETSI IPR SC meetings in Mainz, we would be happy to provide WebEx bridges so that remote participants can join IEEE-SA meetings.
From: Sandy Block [mailto:msb@xxxxxxxxxx]
Sent: Tuesday, June 28, 2016 1:48 PM
To: PP-DIALOG@xxxxxxxxxxxxxxxxx; don@xxxxxxxxxxxxxxxxxxxxxxxx
Cc: Gil Ohana (gilohana)
Subject: Proposed change to 6.3.4 -- Problematic
Importance: High
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.
________________________________________________________
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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