Re: [codec] Skype IPR disclosure

[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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>>>>   
>>>>  
>>>  
>>>  
>>>  
>>> 
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> 
>