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Re: [PP-DIALOG] IEEE-SA Standards Board Patent Committee (PatCom) - December 2016 draft meeting agenda available online (Gil Ohana-- Proposal to Expand Discussion Under Agenda Item 5.2]



Greg,

You make excellent points.  Your charitable characterization of Gil’s proposal, however, misses the basic flawed legal premise of his proposal – that IEEE-SA should breach the contract with legacy SEP holders. The contract involves patent holders’ agreement to pledge SEPs under the specific terms of the previous patent policy, terms which IEEE-SA accepted and is therefore legally bound by.   Gil’s proposal is that IEEE-SA breach its obligations under those contract to compel those legacy SEP holders to LOA terms they never agreed to – i.e., unilaterally reopen the contract to new terms.  It is of no moment that there might have been “work in progress” pertaining to the SEPs that were pledged under the previous patent policy. That “work in progress” created neither express nor implied obligations by the SEP holders to be bound by terms other than those they agreed to in the legacy LOAs.   To take Gil’s proposal to its logical equitable conclusion, if IEEE-SA were to reopen these legacy LOA submitters’ rights and obligations, the only way it can lawfully do so is through a bilateral reopening which would also permit the legacy SEP holders to withdraw their previous LOA commitments altogether without any substitution.   

I do not think IEEE-SA wants to do that.

 

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

Email: ron@xxxxxxxxxxxxxxx

Selected Works: http://works.bepress.com/rkatznelson

 

 

 

 

From: Georg Nolte [mailto:Georg.Nolte@xxxxxxxxxxxxxxxx]
Sent: Friday, December 02, 2016 7:53 AM
To: PP-DIALOG@xxxxxxxxxxxxxxxxx
Subject: Re: [PP-DIALOG] IEEE-SA Standards Board Patent Committee (PatCom) - December 2016 draft meeting agenda available online (Gil Ohana-- Proposal to Expand Discussion Under Agenda Item 5.2]

 

Dear Dave, (Gil, and all PP-Dialog members)

 

I'm writing in reply to Gil's email below.

As far as I understand his email (Gil: please correct

me if I got you wrong), Gil proposes to "retroactively"

change existing LoAs. His proposal that "... PARs approved

on or after March 15, 2015 would be governed by the

updated policy text." And that "This would be true even

if the patentee that submitted an LoA accepted before

March 15, 2015 claims that the patent is within the scope

of that LoA."

 

But this proposal results in patents being declared under

the old Patent Policy (pre 15.03.2015) will be governed

by the new Patent Policy! This is not just totally

unacceptable, but also in contradiction to the Business

Review Letter (BRL) by Renata Hesse (see PDF available at

https://www.justice.gov/atr/response-institute-electrical-and-electronics-engineers-incorporated) [note that there is an error in

the web page text; use the PDF!] as that BRL states that:

"the Department offers no statement regarding its

intentions concerning the application of the Update

retroactively to previously submitted LOAs.(55)"

with footnote 55 being:

"(55) Request, supra note 1, at 19 (the revised Policy

'does not retroactively amend previously Accepted Letters

of Assurance.')."

In addition the BRL request letter also states in its

footnote 33 that:

"IEEE has publicly stated that it does not seek to

amend retroactively the terms of any previously

submitted Letter of Assurance, ...".

 

Again, Gil's proposal is inconsistent with the BRL

request from the IEEE to the DoJ and out of scope of

the received BRL from the DoJ.

 

Also his suggestion to give the patentee a 'grace period'

to withdraw the LoA is not acceptable either. And this is

actually (at least) for two reasons.

 

He suggests that: "... within a reasonable time after

the approval of a new PAR, [the patentee may] choose to

withdraw that previously accepted LoA and substitute a

new accepted LoA without being subject to a continuing

commitment to license under the previous LoA under the

current Operations Manual 6.3.4."

 

Reasons why this is not acceptable:

1) No accepted LoA might ever be withdrawn (at least

not if there were SEPs included at any time) and

2) even a "reasonable time" is void if a company that

gave the LoA does not exist anymore, or does not get

any notice (in whatever form) that such a "change"

for their LoA might happen.

 

Again, the proposed change does not match with current

practice and understanding and will create even more

confusion among IEEE participants and implementers.

 

Besides that, his sentence "One troubling issue raised

by the potential application of different patent policy

texts to the same standards development effort is that

different participants will be participating under

different versions of the patent policy text."

is exactly what IEEE-SA created with the change of its

Patent Policy: there are now LoAs that have been submitted

and are governed by quite different Patent Policies.

To remove any confusion caused by the coexistence of

LoAs governed by different Patent Policies, I propose

another (simple) solution: just change back to old

Patent Policy!

 

I trust that you (and the whole PatCom) will give this

email and the concerns raised herein due consideration

in your meeting next week, for which I wish you all the

best.

 

Kind regards,

Georg

 

 

Mr. Georg NOLTE

Patent Representative

Panasonic R&D Center Germany GmbH

Monzastr. 4c

63225 Langen

Germany

 

Office: +49.6103.766.131

Mobile: +49.172.79.72.744

 

 

From: Gil Ohana (gilohana) [mailto:gilohana@xxxxxxxxx]
Sent: 11. November 2016 18:56 CET
To: PP-DIALOG@xxxxxxxxxxxxxxxxx
Subject: Re: [PP-DIALOG] IEEE-SA Standards Board Patent Committee (PatCom) - December 2016 draft meeting agenda available online (Gil Ohana-- Proposal to Expand Discussion Under Agenda Item 5.2]

 

Hi Dave,

 

Thank you for circulating the agenda.  I wanted to propose an expansion of the discussion of Agenda Item 5.2.  The current agenda item involves the addition of FAQ text to suggest to Working Group chairs that they consider asking for a new LoA when an Accepted LoA pre-dates the effective date of the text of the patent policy (currently, March 15, 2015).  I agree with the proposal.  I am concerned, however, that it does not resolve the uncertainty that has existed since March 15, 2015 regarding the applicability of the updated policy text to “work in process” – i.e. standards development efforts that were ongoing on March 15, 2015, and even standards development that began after March 15, 2015, but which arguably are within the scope of LoAs accepted before March 15, 2015.

 

In its resolution approving the “Draft 39” text that became the text of the updated patent policy, the Standards Association Standards Board of Governors (resolution dated December 2014, available here: https://standards.ieee.org/about/bog/resolutions.html) provided for the March 15, 2015 effective date for the updated policy tex.  However, IEEE-SA but did not expressly address the question of the application of the updated policy text to “work in process”.  As Chuck Adams noted at the June 2016 PatCom meeting questions have arisen regarding the application of the updated policy text to “work in process”.  One troubling issue raised by the potential application of different patent policy texts to the same standards development effort is that different participants will be participating under different versions of the patent policy text.

 

The proposal under Agenda Item 5.2 helpfully calls the attention of Working Group participants to the possibility that the submitter of a pre-update LoA may be relying on an LoA submitted before the effective date of the updated patent policy text.  However,  IMHO more is needed to provide clarity and create a “level playing field” for participants in IEEE-SA standards development.  Specifically, PatCom needs to draw a bright line identifying what standards development activities are covered by the updated text. 

 

One approach would be to look at the date on which the PAR governing the creation of a standard, amendment, or revision for which a patent may be essential.  The declaration and licensing of patents essential to standards developed based on PARs approved on or after March 15, 2015 would be governed by the updated policy text.  This would be true even if the patentee that submitted an LoA accepted before March 15, 2015 claims that the patent is within the scope of that LoA. 

The PAR-based rule both avoids retroactive application of the patent policy and provides certainty to participants regarding which patent policy text governs which IEEE-SA standards development effort. 

 

To anticipate questions regarding the interplay between the PAR-based approach to the coverage of the updated policy text and Operations Manual 6.3.4, it should be clear that a patentee that has submitted a previously accepted LoA that covers patents essential to a standard created under a PAR approved after the effective date of a by-law change may, within a reasonable time after the approval of a new PAR, choose to withdraw that previously accepted LoA and substitute a new accepted LoA without being subject to a continuing commitment to license under the previous LoA under the current Operations Manual 6.3.4.

 

I look forward to discussing this proposal at the December meeting.

 

Best regards,

 

Gil Ohana

 

 

From: Dave Ringle [mailto:d.ringle@xxxxxxxx]
Sent: Tuesday, November 01, 2016 8:21 AM
To:
PP-DIALOG@xxxxxxxxxxxxxxxxx
Subject: [PP-DIALOG] IEEE-SA Standards Board Patent Committee (PatCom) - December 2016 draft meeting agenda available online

 

The draft 05 December 2016 PatCom agenda is located at http://standards.ieee.org/about/sasb/patcom/agenda.pdf

 

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David L. Ringle
Director, IEEE-SA Governance
IEEE Standards Association
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