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Dear PatCom members, PP-Dialog members, This email is sent on behalf of Stefanie Mielert, Fraunhofer-Gesellschaft. It is understood that the proposed amendments to the IEEE letter of assurance, as discussed at the last
PatCom meeting, will not be further actioned. The opportunity to provide feedback on Phil Wennblom’s further proposed amendment to the IEEE letter of assurance (“Proposal”) is welcomed (Item 6 of today’s PatCom meeting). As of today, the “D.1.d LOA Proposal” (item 6.1 of the Agenda for the next PatCom meeting) leaves an open question regarding rationale, and consistency with all IEEE
documents. The main considerations follow:
In the proposal, it is stated that “the value to the standards development process of a D.1.d LOA that identifies specific patent claims is greater than the value of
a blanket D.1.d LOA”. The reasons behind this assumption have not been shared, and further background is appreciated (for example, the source of the assumption and any counterbalancing policy issues to be considered).
If the proposal is adopted, the declaratory burden on owners of standard-essential patents will rise (perhaps significantly), since it may be thought that the patentee
is obliged to submit a separate negative letter of assurance for each patent claim (while still being able to submit a positive blanket letter of assurance). This would in turn mean that the risk of not specifying all the relevant standard essential patents
and required information would increase, together with all the attached liabilities, particularly under antitrust law. In this regard, the different regime proposed for positive and negative blanket letters of assurance appears to create a prejudice against
those companies that cannot or do not determine to have their investments in R&D impacted by the IP policy currently in place within IEEE and, subsequently, have submitted negative letters of assurance. The different treatment of positive and negative letters
of assurance without apparent justification could be seen as discriminatory towards patent holders and unfairly raise costs and risks of participation in IEEE. Without more, the proposal may also lay the foundation for claims of waiver of IP rights, should a relevant patent not be listed in a negative letter of assurance (see
implied waiver elements argued in Core Wireless v. Apple).
From another perspective, in order to reduce any increased risk of patent ambush or waiver of IP rights allegations, owners of standard essential patents might err on
the side of caution and over declare. This in turn could result in uncertainty for stakeholders, or on the flip side prolong negotiations through extensive challenges.
It is noted that the majority of current blanket letters of assurance do not list patent numbers. There is a concern that the proposed amendment will increase the cost
of participation in IEEE in terms of time and resources needed to gather all the required information, thus resulting in a barrier to entry to standardisation and posing a risk from an antitrust law perspective. In particular, small- and medium-sized enterprise
and start-up companies may lack the necessary resources to undertake the task and therefore might not be able to compete to have their technology incorporated in IEEE´s technical standards, ultimately harming the average quality of IEEE standards. Proposed amendments to the IEEE-SA Standards Board Operations Manual Matteo Sabattini’s proposal regarding this section is supported: A Submitter may provide the IEEE with a Blanket Letter of Assurance only when the Letter of Assurance indicates licensing 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. Suggested Next steps In light of the abovementioned concerns, it is requested that the IEEE-SA Standards Board Patent Committee exercise caution in its deliberations, in consideration of
the overall innovation system. If the proposal should be approved, could consolidated reasons be provided (for and against). Should the proposal proceed, then in order to ensure that (i) the proposal is consistent with the rest of the letter of assurance and other relevant sections of the IEEE
governing documents; and (ii) no patent search is required, it is further asked ask that the proposal be amended as follows: LOA Form: D.1.d: The Submitter is unwilling or unable to grant licenses according to the provisions of either a or b above or to agree that it will not enforce its Essential Patent
Claims as described in c above. This statement only applies to the Patent Claims of which the Submitter is reasonably aware, identified in E.1 below. In addition to the following: 6.3.4 Multiple Letters of Assurance and Blanket Letters of Assurance (IEEE-SA Standards Board Operations Manual) A Submitter may provide the IEEE with a Blanket Letter of Assurance only when the Letter of Assurance indicates licensing 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. Proposed New FAQ (maybe 81A): Is it permissible for an LOA with D.1.d selected to be a Blanket LOA? No. As of 01 January 2019, a Submitter may provide a Blanket Letter of Assurance to IEEE only when the LOA indicates licensing assurance. (See also question 28A.) Given the proposed 81A, and in continued pursuit of transparency, allowance should be made for licensing information to be indicated for any negative letters of assurance (eg weblink). This
was contemplated in the earlier proposal and is a missing element here. It is considered that this would go towards bringing increased value to the standards process (eg providing clarity to the market). Draft Meeting Report On a separate agenda topic, Fraunhofer earlier requested that the draft meeting report be amended to reflect discussions at last meeting. Regarding the agenda item on
updates from the Department of Justice Antitrust Division, could you please replace “speeches” with “policy statements”. Thank you, Michael Atlass among others, for flagging this as well. AAOP Proposal Thank you to Cindy Bianlixin for pursuing other possible means of addressing transparency. After careful consideration, the AAOP proposal is not supported for the same
reasons stated for the original proposal. Proposed FAQ 28A The purpose of the disclaimer, and a discussion on the proposed FAQ, is welcome. This will have to be reconsidered in light any actual amendments to the letter of assurance
and the Operations Manual, along with Sandy Block’s proposed addition. As a final general comment, transparency in relation to standards development and standard essential patents is supported and should be reflective of context – being
(i) the nature of R&D; (ii) the nature of IP; and (ii) dynamic standards development. If the objective of the subject proposal is to achieve greater transparency, certainty and efficiency in the licensing of standards essential patents, it is respectfully
concluded that these objectives do not appear to be promoted by the proposal. I hope that these observations and suggestions are helpful to the deliberation of the proposal, and would be happy to discuss any element in further detail. Wishing you
a good meeting. Sincerely, Stefanie Mielert, Fraunhofer-Gesellschaft ---------------- Kind regards / Mit freundlichen Grüßen, +49 89 7407 6475 (direct) 80333 Munich From: Dave Ringle <d.ringle@xxxxxxxx> Dear PP-Dialog participants, The current LOA Form is located at https://development.standards.ieee.org/myproject/Public/mytools/mob/loa.pdf The current FAQs are located at https://standards.ieee.org/content/dam/ieee-standards/standards/web/documents/other/patents.pdf The current SASB OpMan is located at https://standards.ieee.org/about/policies/opman/index.html Please see the attached proposal that will be included for discussion/action at the 03 December 2018 PatCom meeting. As always, please feel free to share your thoughts on
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