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[802SEC] Re: Request of Stds Bd members to Evaluate Patent Letter ofAssurance Template

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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 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 

(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 

(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