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PatCom members and interested participants, I write for Nokia Technologies, Nokia Networks and Alcatel-Lucent (collectively, “Nokia”) to indicate formal agreement with, and support of, the arguments raised
by Panasonic against the concepts set forth in Gil Ohana’s November 11, 2016 submission to the PP-Dialog listserv. In addition, I make these additional points: 1.
Letters of Assurance are of course contractual commitments between the patent holder and IEEE that have as third party beneficiaries the users of the standards.
What is proposed here, as noted by Panasonic, is retroactive application of terms and conditions by one party to the contractual commitment to the other party. As far as I’m aware, this would not be permitted under the contract laws of any jurisdiction.
That one would be “invited” to withdraw the prior LoA and submit a “new” one under the current policy would not matter. The original LoA submission was made by the patent holder under the terms and conditions that governed at the time when the technology
was incorporated into a standard under development. If IEEE wishes to change the terms of that deal, then it must either obtain the Submitter’s consent or find alternative technology – the Submitter cannot be penalized for allowing IEEE to use its technology
but then having IEEE later change the conditions under which the permission was provided. Indeed, IEEE has in the past made it clear that its new patent policy does not retroactively amend previously accepted LoAs, and Gil acknowledges the need to avoid retroactive
amendment. However, in our view, adoption of a new (PAR-based) approach does not simply “add clarity” (as Gil suggests). Rather, it has substantive effect on previously submitted and accepted LoAs, which themselves make no mention of PARs and which were
submitted at a time when PARs were not mentioned in the patent policy at all. 2.
It is unclear exactly what Gil proposes. Is it a further addition to the proposed language in “Possible Addition to the Patent Slides for Standards Development
Meetings of the FAQs” that is to be discussed under Agenda Item 5.2 at Monday’s PatCom meeting? Is it a substantive change elsewhere in the Patent Slides, FAQs, or IPR Policy? Clarification is needed so all can better know the potential ramifications. As
such, I would expect that any decisions made by the PatCom on Monday concerning this item 6.1 would be
at most a decision to continue discussion at future meetings by which time more information on intentions will have been provided. Regards, John Kolakowski From: Georg Nolte [mailto:Georg.Nolte@xxxxxxxxxxxxxxxx]
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]
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]
The draft 05 December 2016 PatCom agenda is located at http://standards.ieee.org/about/sasb/patcom/agenda.pdf ****************************************************************** Panasonic R&D Center Germany GmbH |