Re: [codec] Skype IPR disclosure

[Rob Glidden <[e-mail]>]

Koen:

Thanks for the offer, but wouldn't Skype be capable to describe proposed 
contribution directly to the working group?

Rob

Koen Vos wrote:
> Stephan: I couldn't agree more - please let's keep this list free of 
> patent discussions.
>
> Rob: Skype's legal counsel is more than happy to address any questions 
> you may have about our patents. You'll find their phone number and 
> email address in our IPR disclosure.
>
> best,
> koen.
>
>
>
> Quoting Stephan Wenger <[e-mail]>:
>
>> Hi Rob,
>>
>> Wearing my ³technical advisor to the IESG on IPR matters² hat:
>>
>> I¹m commenting in this email only on the ³third party disclosure² 
>> subject.
>> I may comment on the other subject later, as, admittedly, they are more
>> murky. Phrasing a reply certainly requires more undistracted time than I
>> have now (sitting in the IETF77 plenary).
>>
>> I note that you have provided information of two patent applications 
>> that
>> have not been recited in Skype¹s declaration. Specifically, neither 
>> the GB
>> application, nor the PCT application, have been disclosed by Skype. 
>> Nowhere
>> in BCP 79 or in the IETF¹s current practice I find language or common
>> conduct indicating that, by disclosing one or more patent family 
>> members,
>> one has to infer that all patent family members are disclosed. If you 
>> are
>> aware of such language, I would appreciate a pointer.
>>
>> In this light, I continue to believe that you were not within the 
>> language,
>> nor the spirit, of BCP 79 when you cited these patent numbers.
>>
>> Advisor hat off, private statement:
>>
>> Rob, you are a lawyer, and are listed in the IP law section of the CA 
>> bar
>> association. You are a professional in this field. Most of the 
>> subscribers
>> of this *technical* working group list are not. They may not know 
>> what harm
>> could befall them, and their employers, if they start reading someone 
>> else¹s
>> patents, and perhaps start commenting in public on it.
>>
>> It is my understanding that one motivation for moving the IPR 
>> disclosures to
>> an isolated area of the IETF¹s web page has been to ensure that 
>> accidental
>> reading and commenting on someone else¹s patents is not facilitated. By
>> providing patent numbers and handy hyperlinks to those patents, you have
>> very efficiently interrupted this isolation.
>>
>> I don¹t think this is a fair tactic, and I don¹t think it can do us any
>> good‹not even those parts of the community with business interests 
>> that are
>> apparently aligned with yours. In the worst case, legal departments of
>> careful companies may require their employees to unsubscribe from the 
>> codec
>> WG, and stop attending meetings. No contributions from these people 
>> to the
>> IETF, no disclosures, no other IPR data points to consider. Fog over the
>> minefield. This cannot be your intention. I hope.
>>
>> Individuals with sufficient knowledge and interest to assist you in 
>> reading
>> patents and interpreting patent subject matter almost certainly have the
>> knowledge to find a patent or application once they have a number. Those
>> who don¹t probably could ask you in private. Or they can ask google. 
>> As we
>> all know, google has answers for everything :-)
>>
>> Trying to be constructive, I wonder whether you, or someone else, 
>> would be
>> willing to run a mailing list outside of the IETF¹s organized 
>> setting, in
>> which you and other interested participants can discuss patent claims to
>> your hearts content, without contaminating the IETF list with patent
>> numbers, claim language, and other legal stuff that raises red flags 
>> in so
>> many IETF companies.
>>
>> Regards,
>> Stephan
>>
>>
>> On 3.24.2010 17:50 , "Rob Glidden" <[e-mail]> wrote:
>>
>>> Stephan:
>>>
>>> (apologies for long email)
>>>
>>> Thanks for the reminder. I've re-read 3979 and 4879 (on third party
>>> disclosures), and you are wise to encourage care.
>>>
>>> However, in this case the IPR has already been responsibly disclosed 
>>> by the
>>> owner. So this thread is not disclosing any IPR of a third party, 
>>> for which
>>> as you indicate sections 6.1.2 and 3 (on IPR of others) would be 
>>> appropriate
>>> -- by form or email.
>>>
>>> Rather, 3979 clearly expects working groups to use the disclosures, 
>>> once made,
>>> in their evaluations and deliberations.
>>>
>>> 6.5 Since IPR disclosures will be used by IETF working groups during
>>> their evaluation of alternative technical solutions, it is helpful if
>>> an IPR disclosure includes information about licensing of the IPR in
>>> case Implementing Technologies require a license.
>>> This includes the licensing information in the disclosures:
>>>
>>> The inclusion of licensing information in IPR disclosures is not
>>> mandatory but it is encouraged so that the working groups will have
>>> as much information as they can during their deliberations.
>>> And in weighing alternatives:
>>>
>>> 8. IETF working groups have the discretion
>>> to adopt technology with a commitment of fair and non-discriminatory
>>> terms, or even with no licensing commitment, if they feel that this
>>> technology is superior enough to alternatives with fewer IPR claims
>>> or free licensing to outweigh the potential cost of the licenses.
>>> and even in developing broader IETF consensus:
>>>
>>> An IETF consensus
>>> has developed that no mandatory-to-implement security technology can
>>> be specified in an IETF specification unless it has no known IPR
>>> claims against it or a royalty-free license is available to
>>> implementers of the specification unless there is a very good reason
>>> to do so.
>>>
>>> And you are also wise in reminding that the IETF will not make 
>>> determinations
>>> for many excellent reasons, but
>>> Although the IETF can
>>> make no actual determination of validity, enforceability or
>>> applicability of any particular IPR claim, it is reasonable that a
>>> working group will take into account on their own opinions of the
>>> validity, enforceability or applicability of Intellectual Property
>>> Rights in their evaluation of alternative technologies.
>>> So I'd suggest this dialog is both in scope and constructive, fully 
>>> in spirit
>>> and letter of BCP 79, seeking to clarify the nature of a licensing 
>>> disclosure
>>> and the specific value of a particular technique of noise level 
>>> estimation and
>>> application of opposite non-linear functions.
>>>
>>> Rob
>>>
>>> Stephan Wenger wrote:
>>>> Re: [codec] Skype IPR disclosure Hi Rob, all,
>>>>
>>>> Wearing my ³technical advisor on IPR matters hat²:
>>>>
>>>> Please let me remind you that the IETF takes no position on scope and
>>>> validity of patent claims. I don¹t believe that the use of an IETF 
>>>> mailing
>>>> list to collaboratively create such a position‹even it it were not 
>>>> marked as
>>>> an IETF position‹is appropriate. Please refrain from using this 
>>>> list for
>>>> such discussions.
>>>>
>>>> Further, I¹m also not sure that everyone here‹even a 
>>>> majority‹appreciates
>>>> being advised of patents through means other than the IETF¹s IPR 
>>>> tracking
>>>> system. It is certainly against language and spirit of BCP 79. If 
>>>> you want
>>>> to advise people of third party IPR henceforth, please use the 
>>>> tracker. Feel
>>>> free to contact me in private it you need logistic help with that.
>>>>
>>>> Thanks,
>>>> Stephan
>>>>
>>>>
>>>>
>>>> On 3.24.2010 15:13 , "Rob Glidden" <[e-mail]> wrote:
>>>>
>>>>
>>>>> I would agree that the wording seems to go beyond a narrow 
>>>>> non-assert into
>>>>> business strategy, and this is furthered by potentially ambiguous 
>>>>> phrasings
>>>>> such as "royalty free, reasonable and non discriminatory terms". 
>>>>> "RF" and
>>>>> "RAND" might overlap in some definitions, but they are not the same.
>>>>>
>>>>> Also I would note the two statements (1297 and 1164) appear to be 
>>>>> (only?) a
>>>>> single patent application for a method of estimating noise levels 
>>>>> with 3
>>>>> independent claims. As further progress is made, it might be 
>>>>> helpful to
>>>>> understand scope and prior art, and relationship to an entire 
>>>>> contribution,
>>>>> and the specific quantified value of the novelty identified in the
>>>>> international search opinion of applying opposite non-linear 
>>>>> functions.
>>>>>
>>>>> Though not reflected in the disclosure, the US application claims 
>>>>> priority
>>>>> to a Great Britain Application No. 0703275.8, filed Feb. 20, 2007.
>>>>>
>>>>>
>>>>> http://appft1.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&p=1&u=%2F 
>>>>>
>>>>> netahtml%2FPTO%2Fsearch-bool.html&r=1&f=G&l=50&co1=AND&d=PG01&s1=12%2F006057 
>>>>>
>>>>> &OS=12/006057&RS=12/006057
>>>>>
>>>>> The PCT is at:
>>>>>
>>>>> http://www.wipo.int/pctdb/en/wo.jsp?WO=2008102207
>>>>>
>>>>> Perhaps someone familiar with this application would correct any
>>>>> mis-impressions above?
>>>>>
>>>>> Rob
>>>>>
>>>>>
>>>>> Benjamin M. Schwartz wrote:
>>>>>
>>>>>>
>>>>>> stephen botzko wrote:
>>>>>>
>>>>>>
>>>>>>
>>>>>>>
>>>>>>> I think it is unreasonable to require IPR holders to 
>>>>>>> unconditionally
>>>>>>> promise
>>>>>>> to not assert their patents under any and all circumstances.
>>>>>>>
>>>>>>>
>>>>>>>
>>>>>>
>>>>>>
>>>>>> I am not asking for such an unconditional promise. I am just 
>>>>>> noting some
>>>>>> restrictions that seem especially onerous to me.
>>>>>>
>>>>>>
>>>>>>
>>>>>>
>>>>>>>
>>>>>>> In practice the first clause does not immunize Skype from 
>>>>>>> lawsuits. Many
>>>>>>> companies have similar "defensive suspension" clauses, and they 
>>>>>>> still get
>>>>>>> sued fairly regularly.
>>>>>>>
>>>>>>>
>>>>>>>
>>>>>>
>>>>>>
>>>>>> There are different kinds of defensive suspension. For example, 
>>>>>> the W3C
>>>>>> allows defensive suspension, but only for lawsuits on patent 
>>>>>> infringement:
>>>>>> """
>>>>>> a W3C Royalty-Free license ... may be suspended with respect to any
>>>>>> licensee when licensor is sued by licensee for infringement of 
>>>>>> claims
>>>>>> essential to implement any W3C Recommendation ... [but] may not 
>>>>>> impose any
>>>>>> further conditions or restrictions
>>>>>> """
>>>>>> (http://www.w3.org/Consortium/Patent-Policy-20030520#sec-Requirements) 
>>>>>>
>>>>>>
>>>>>> That seems like a reasonable case for defensive suspension. Skype's
>>>>>> wording, by contrast, is totally unreasonable, as it extends the 
>>>>>> defensive
>>>>>> suspension to _all_ lawsuits, no matter their object. I expect most
>>>>>> companies to use the IWAC, and maybe even most humans eventually. 
>>>>>> The
>>>>>> retroactive revocation means that these people can be deterred 
>>>>>> from suing
>>>>>> Skype/Ebay even after the patents have all expired.
>>>>>>
>>>>>> It's absurd, not to mention legally questionable.
>>>>>>
>>>>>>
>>>>>>
>>>>>>
>>>>>>>
>>>>>>> The second clause ensures that someone outside the IETF cannot 
>>>>>>> take the
>>>>>>> Skype technology, improve it, and offer a competitive 
>>>>>>> proprietrary codec
>>>>>>> that uses Skype IPR. If you modify the codec, you should be 
>>>>>>> doing it in
>>>>>>> the
>>>>>>> context of the IETF standard.
>>>>>>>
>>>>>>>
>>>>>>>
>>>>>>
>>>>>>
>>>>>> And once the standard is made? Skype could effectively block the 
>>>>>> IETF
>>>>>> from creating an improved version of its own codec, or any optional
>>>>>> extensions (they're not "necessary"). I don't think that's 
>>>>>> reasonable at
>>>>>> all.
>>>>>>
>>>>>> --Ben
>>>>>>
>>>>>>
>>>>>>
>>>>>>
>>>>>>
>>>>>>
>>>>>>
>>>>>> _______________________________________________
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>>>>>> https://www.ietf.org/mailman/listinfo/codec
>>>>>>
>>>>>>
>>>>>
>>>>>
>>>>>
>>>>>
>>>>> _______________________________________________
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>>>>>
>>>
>>>
>>
>>
>
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