Re: [codec] Fwd: COM 16-LS 124 - Outgoing LS from SG16 meeting (26 October - 6 November 2009)

[Stephan Wenger <[e-mail]>]

Hi Kevin,

While, in some jurisdictions, there are tests on what qualifies as RAND and
what does not, it is true that RAND commitments alone typically do not
provide a potential user with guidance about the commercial terms of a
license.  However, it gives the potential user an assurance that a license
is actually available.  Some say that it makes the hurdle much higher in
obtaining injunctions for unlicensed use of a patent.  Both are Good Things,
from a righttaker's viewpoint.  Remember, without a RAND commitment, a
patent allows the rightholder to forbid anyone in the jurisdiction, for
whatever reason, to use the claimed subject matter.

The definition of "Reasonable" in RAND, and "Fair and Reasonable" in FRAND,
are both heavily discussed and litigated.  I doubt that you will full
agreement on these definition if you ask more than one person.  However, I
have, so far, never heard that the NDA part of the story has been questioned
in the licensing community.  It is common that those discussions are held
under NDA.  There are valid commercial and legal reasons why this is the
case.

RAND does NOT mean that all possible users will get the same terms after the
bilateral discussions that are common in licensing.  That is one reasons why
licensing discussions are typically under NDA.

All that said, there is a movement ongoing in the patents&standards
community to allow a rightholder, using the SDOs communication process, to
provide potential users voluntarily with information of licensing
terms--typically something like the maximum royalty that is being charged,
and expressed as a percentage of the unit price.  IEEE was the first major
organization to add this to their policy.  Google "patent standard ex ante"
if you are interested.  In a few cases, ex ante mechanisms have actually
started to see use; in others, I would argue they have seen abuse.  Neither
the ITU nor the IETF embrace ex ante disclosures of licensing terms in their
policies, although, at least in the IETF, it's possible to make those.  If a
rightholder were truly interested in publishing its terms, there would also
be other non-SDO means to do so.

For a number of (mostly antitrust-related) reasons, IMO and AFAIK, ex ante
disclosures will remain voluntary in most legislations and in the
foreseeable future.

Stephan


On 11/11/09 10:03 AM, "Kevin P. Fleming" <[e-mail]> wrote:

> Cullen Jennings wrote:
> 
>>> From: TSBSG16, ITU [mailto:[e-mail]]
>>> Sent: 10 November 2009 10:57
>>> To: Cullen Jennings; [e-mail]; Robert Sparks; Gregory
>>> Lebovitz; Russ Housley; Patrik Fältström
>>> Cc: Campos, Simao; [e-mail];
>>> [e-mail]; [e-mail];
>>> [e-mail]
>>> Subject: COM 16-LS 124 - Outgoing LS from SG16 meeting (26 October - 6
>>> November 2009)
>>> 
>>> 
>>> 
>>> Dear all,
>>> 
>>> Kindly find attached the Liaison Statement COM16 - LS 124  on "speech
>>> and audio coding standardization" addressed to IETF RAI, IESG agreed
>>> at the ITU-T SG 16 meeting held in Geneva from 26 October to 6
>>> November 2009.
> 
> At the risk of inflaming the licensing discussion even further, in the
> ITU-T process, is it only required that the IPR disclosure claim to
> offer the IPR under RAND, but that there is no actual confirmation that
> the discloser's terms would in fact be widely agreed upon to be RAND?
> 
> For example, to my knowledge, Polycom has recently begun offering
> royalty-free (under a patent non-assert) licensing for their IPR
> including in G.719. However, the other primary IPR holder in G,719 is
> Ericsson, and the process of determining licensing terms for their IP
> begins with signing a non-disclosure agreement with them. Given that,
> it's completely impossible to know whether a licensing offer from them
> is discriminatory or not, because the recipient cannot discuss the
> proposed terms with other existing or potential licensees.
> 
> If this arrangement qualifies under the ITU-T's definition of RAND, then
> it seems that doesn't result in licensability under terms that most
> people would term 'reasonable', let alone compatible with open source
> licensing.