Re: [codec] Skype IPR disclosure

stephen botzko <> Wed, 24 March 2010 21:05 UTC

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Date: Wed, 24 Mar 2010 14:04:40 -0700
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From: stephen botzko <>
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Subject: Re: [codec] Skype IPR disclosure
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I think it is unreasonable to require IPR holders to unconditionally promise
to not assert their patents under any and all circumstances.  You are much
more likely to get more limited royalty-free terms.  In my view these two
clauses from Skype are acceptable.

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.  I agree that it might reduce the incidence of
lawsuits, and that it would act to offset any damages or settlement costs
that Skype might have to pay.  However, I do not see how this is a problem
for the IETF. Skype does have IPR on their codec, it seems reasonable to
allow them to use it defensively when someone sues them.

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.  In your "add on" example, if you are breaking
interoperability with the standard, then it is a new codec, and it is
understandable why Skpye would not want you to do that without a license.

Steve Botzko

On Wed, Mar 24, 2010 at 9:04 AM, Benjamin M. Schwartz <> wrote:

> Kevin P. Fleming wrote:
> > I
> > am glad to see that they've chosen the expected royalty-free
> > patent-non-assert licensing path.
> Their patent non-assert is so full of holes as to be of little use to me.
> Two holes stand out:
> """
> Skype retains the right to terminate any license grants and assert its
> patents (including the right to claim past royalties) against any entity
> ... that brings any lawsuit against Skype or any of Skype’s affiliates
> """
> So if I find out that Skype has been taunting my chihuahua, I can't sue
> them.  If I sue them, they'll retroactively remove my right to use the
> patents, and demand arbitrarily large royalties for practicing it.  This
> clause is noxious and absurd.  As written, it would effectively render
> Skype/Ebay immune to all litigation on any grounds once the IWAC is
> well-established.
> """
> Skype retains the right to assert its patents against any product or
> portion thereof that is not necessary to comply with the standard
> """
> This sentence, if it makes sense at all, would dramatically curtail
> innovation around the IWAC.  Every program not "necessary to comply with
> the standard" would require a separately negotiated patent license.  Got
> an idea to tweak the codec for improved performance? Can't do it; you're
> out of the standard.  Want to write an add-on to the reference encoder
> that still complies with the standard?  Too bad: your add-on isn't
> _necessary_ to comply with the standard, so Skype can get you for patent
> infringement.
> Skype doesn't need either of these clauses.  Personally, I doubt either is
> enforceable, not that I'd stake my fate on it.  Both of them should be
> removed from the grant in order to make the terms acceptable.
> --Ben
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