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Q: May the Submitter of an Accepted LOA seek or seek to
enforce a Prohibitive
Order under the IEEE SA Patent Policy?
A:In all cases, national/regional laws ultimately determine the availability of Prohibitive Orders. Under the IEEE SA patent policy, the Submitter of an Accepted LOA who has committed to make available a license for one or more Essential Patent Claims agrees that it shall neither seek nor seek to enforce a Prohibitive Order based on such Essential Patent Claim(s) in a jurisdiction against an implementer who is willing to negotiate in good faith for a license. In jurisdictions where the failure to request a Prohibitive Order in a pleading waives the right to seek a Prohibitive Order at a later time, a Submitter may conditionally plead the right to seek a Prohibitive Order to preserve its right to do so later, if and when this policy’s conditions for seeking, or seeking to enforce, a Prohibitive Order are met.
Regarding the “Prohibitive Orders” Q/A, a few questions.
1. Sentence 1 makes “national law” determinative of injunction availability. The remainder of the Answer discusses IEEE limitations on injunctions and Exclusion Orders ("Prohibitive Orders") BEYOND WHAT THE LAW WOULD DETERMINE. If statutory or case “law” authorizes injunction, but IEEE policy does not, which prevails? For example, if the law allows for SEP injunction if the implementer is unable to comply with RAND royalty provisions, is injunction precluded by IEEE policy because the (bankrupt) implementer is "willing to negotiate in good faith"? (QUERY: Would someone from the public know what a "Prohibitive Order" is? Would they have to dig into the Policy or other QA's to get the meaning? Also, the tilted, pejorative, coined "prohibitive" title is unfortunate.)
2. If a SEP holder makes a RAND offer, is it precluded from seeking injunction if the implementer refuses the offer and sends a letter that it is “willing to negotiate”? What if the offer terms were previously adjudicated as RAND with this or a similar implementer?
3. Is it implied that the “license” the implementer is willing to negotiate is a “RAND” license?
4. What is the timing of the “if and when” provision? Is it correct that a SEP holder may “conditionally plead” with its initial pleadings even if the policy conditions are not yet met, but may arise later? Which seems to make sense. If the IEEE policy “conditions” for injunction are met at the time of initial pleading, why would the injunction pleading be conditional? For example, if the implementer states or acts to indicate “unwillingness to negotiate,” is it correct that injunction may be affirmatively (not conditionally) sought? Put otherwise, one interpretation could be "A Submitter may..conditionally plead...[injunction]...if and when policy conditions are met" -- which makes the provision worthless. Alternatively, "A Submitter...preserves it right to enjoin later, if and when the conditions are met..." The latter view makes more sense to me.
Q: What does it mean when IEEE SA updates its patent policy
by adding or
removing text?
A: The IEEE SA may update the patent policy for any number of
reasons, including but
not limited to the fact that the previous text needed additional
clarity, was duplicative,
or was encompassed by other provisions in the patent policy.
Regarding “updates”, are “updates” being distinguished from revisions or amendments? If the Q/A is intended to differentiate between updates and substantive revisions, so that typos etc are readily fixed, I can understand that. I would also support the noticing of a change as formal versus substantive, so that the public appreciates the intent of the new text, and where the difference is "clearly" expressed.
However, if “updates” are intended more generically to mean any additions, deletions, revisions, or changes, the Q/A may be problematic. The examples offered reference “clarity” or non-substantive terms. A change that affects parties’ rights, obligations, and position is generally not mere “clarification.” Suggesting that a new term has been in force all along (and is just a clarification) may apply retroactively. That may create major mischief among members and the public, for SEP holders and implementers. Recent substantive (debated) revisions provide useful examples.
The “including but limited to” is helpful, however a party might ask why no “substance” items were mentioned in the examples. Does “ejusdem generis” apply? That’s a fancy Latin phrase that means “of the same kind.” The phrase is used in contract interpretation to mean that if a general term is joined with specific terms, the general term may be limited by the type/class of the listed items. While suggesting that disputed impactful changes are “clarifications” may seem a stretch, prior discussions at IEEE meetings warrant concern of this point. If the intent is to clarify the rules, the list of items fails of that purpose.
Colleagues,
In regards to the proposed new FAQs, to record the comments I made during the PatCom meeting today:
On the FAQ after #67:
I view this FAQ to be a result of the proposed FAQ that I suggested at the December PatCom on identifying the exception, indicated in unchanged text on prohibitive orders, in the modified text of the 2023 patent policy. As I understand, an accepted LOA is made under the patent policy that was in force at its acceptance. As there have been at least three instances of the patent policy, this FAQ should indicate that the explanation in the second paragraph is referring to the 2023 patent policy. That is, change:
Under the IEEE SA patent policy, …
To
Under the IEEE SA patent policy that took effect 1 January 2023,…
On the FAQ after #93:
The text may suggest that there have to be a few reasons together to update the patent policy, and I do not believe that is the case. So I suggest removing “number of”. That is, change:
The IEEE SA may update the patent policy for any number of reasons, including but not limited to the fact that the previous text needed additional clarity, was duplicative, or was encompassed by other provisions in the patent policy.
To
The IEEE SA may update the patent policy for any reason, including but not limited to the fact that the previous text needed additional clarity, was duplicative, or was encompassed by other provisions in the patent policy.
Cheers,
Glenn.
--
Glenn Parsons
IEEE-SA Board of Governors
+1-514-379-9037
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