Re: [802SEC] Re: Request of Stds Bd members to Evaluate Patent Letter of Assurance Template
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One fundamental issue not brought up in the attached note, or in the letter
is that companies may not want to take a position as to whether or not
patents that they hold are necessary to implement a standard. Until you
have received feedback from a number of the major companies, like IBM,
Lucent, Nortel, Alcatel, and Cisco, I wouldn't make any assumptions as to
how close we are to having a workable document that almost all companies
will be willing to work with.
Best regards,
Robert D. Love
Chair, Resilient Packet Ring Alliance
President, LAN Connect Consultants
7105 Leveret Circle Raleigh, NC 27615
Phone: 919 848-6773 Mobile: 919 810-7816
email: rdlove@ieee.org Fax: 720 222-0900
----- Original Message -----
From: "Roger B. Marks" <r.b.marks@ieee.org>
To: <c.camp@ieee.org>
Cc: <stds-802-sec@ieee.org>
Sent: Wednesday, March 28, 2001 12:28 PM
Subject: [802SEC] Re: Request of Stds Bd members to Evaluate Patent Letter
of Assurance Template
>
> Replies sent only to originator. Use "reply all" to reply to the list
>
> Clyde:
>
> Since you and I discussed these issues at the last two Standards
> Board meetings, I wanted to respond directly to you regarding the
> letters that Jim Carlo distributed to the 802 Executive Committee.
>
> I think you are on the right track. I believe we must have a "form
> letter of assurance" so that everyone is in the same position. This
> is much better than each company crafting its own letter and looking
> for an edge. Some of the ways some companies try to find an edge are
> detailed in "Beating the System: Abuses of the Standards Adoption
> Process" (_IEEE Communications Magazine_, July 2000, or
> http://www.comsoc.org/ci1/private/2000/jul/Kipnis.html for
> subscribers). The article abstract says "The current processes by
> which telecommunications standards are adopted are flawed. Certain
> companies are able to exploit these flaws to extract hundreds of
> millions of dollars in patent royalties from the telecommunications
> industry." A form letter doesn't solve all of the problems
> highlighted in the article, but it does address some. I think that
> the form should be mandatory.
>
> Your cover letter says "The Letter of Assurance form would be
> forwarded to a patent owner, when a specific patent is identified as
> having a potential necessary claim, which would result in a patent
> infringement when the IEEE standard is implemented." I think that we
> need to refine this process to address a number of issues, some of
> which are discussed in the paper cited above. One thing I've been
> worrying about lately is this realistic situation: a standard has two
> modes of operation; the user must implement one to comply with the
> standard. Let's say that each mode has an associated patent. Neither
> patent is "essential", since both modes are optional. Therefore, IEEE
> would not require a letter of assurance. However, compliance with the
> standard is impossible without infringing on at least one of the
> patents so, without licenses from at least one of the parties, it
> will be impossible to implement the standard. I think that the form
> letter should address this situation, though it might not be easy to
> do so.
>
> Here are a few specific concerns I have with the form:
>
> (1) The opening premise:
>
> "The Patent Holder owns or controls granted patent(s) and/or pending
> applications that it believes would be infringed by compliance to the
> Proposed IEEE Standard."
>
> seems to be inconsistent with answering "No" to item 3a:
>
> "Does Patent Holder agree that its patent is infringed by compliance
> to the [Proposed] IEEE Standard?"
>
> I do think the form should offer an opportunity for people to declare
> that there is no patent infringement. Some rearrangement would let
> them do so consistently.
>
> (2) There ought to be an option for the form to cover _all_ IEEE
> standards. The IEEE-SA now has many corporate members. It could
> suggest that corporate "good citizens" who support the IEEE-SA might
> be willing to submit such a blanket letter and never have to deal
> with it again. There might be few takers, but if one company signed
> on, IEEE-SA could trumpet the result as an endorsement of our
> process, and maybe others would follow the lead.
>
> Of course, people could always write "All IEEE Standards" on the
> line, but I think that an explicit checkbox would let people know
> that the IEEE-SA thinks this is a realistic option.
>
> (3) I don't understand why "license" is italicized. Also, the
> asterisk on "license" is misplaced; it should be on
> "non-discriminatory".
>
> (4) In the footnote, the second part (the non-sentence starting with
> "Nor") is vague. I don't think it's relevant to discuss what is
> "reasonable"; the issue is whether a certain behavior is allowable
> under this agreement. The footnote's first sentence is a good model
> of how to write this. The form should also define "reciprocity
> requirement".
>
> (5) More generally, I would like a definition of
> "non-discriminatory", since it has a number of interpretations ("The
> Effect of Industry Standard Setting on Patent Licensing and
> Enforcement", _IEEE Communications Magazine_, July 2000
> <http://www.comsoc.org/ci1/private/2000/jul/Rees.html>).
>
> Roger