Re: [codec] Skype IPR disclosure

[stephen botzko <[e-mail]>]

This is not the right mailing list for this discussion, as it has moved well
beyond CODEC and the IPR disclosure on SILK.

Seems to me that the IPR-WG list is more appropriate.

Stephen Botzko

On Fri, Mar 26, 2010 at 9:49 AM, Rob Glidden <[e-mail]>wrote:

>  Stephan:
>
> A lot of what you say seems very sensible.
>
> However, it looks like you may have a disagreement with the IETF policy
> itself -- disclosure obligations apply to all participants, and individuals
> are explicitly not sheltered by company policy or any other reason.
>
> The obligation if there is a problem with this is to not contribute or
> participate:
>
> "7...where individuals are not permitted by their employers or by other factors to
> disclose the existence or substance of patent applications or other IPR...
> [the person] must not contribute to or participate in IETF activities with
> respect to technologies that he or she reasonably and personally knows to be
> Covered by IPR which he or she will not disclose"
>
> The idea that IETF policy is instead to facilitate willful ignorance and/or
> avoidance by anyone seems wrong on many levels.
>
> Rob
>
>
>
> Stephan Wenger wrote:
>
> Hi Rob, list,
>
> Again a long email; sorry for that.
>
> With hat:
>
> I missed the PCT application as I was focused only on the newer of the two
> Skype disclosures, and was multitasking between listening to the IETF 77
> plenary and writing my last email.  I apologize for this mistake.  And I
> agree with you that the Skype PCT application has been properly disclosed to
> the IETF.
>
> I have not intended to imply that Skype or its IETF-contributing employees
> have failed its disclosure obligation with respect to the GB patent.  They
> may have, or they may have not.  I would think that this depends on factors
> such as whether the GB application is being prosecuted—it may have been
> abandoned—and similar factors.  (The same holds even more so for the PCT
> application, given the transitory nature of PCT applications.)
>
> When I provide information about my impression of the compliance of
> individuals and/or a company with BCP79, I do so based on statements
> received in the form of IETF contributions and IPR disclosures.  If, for
> example, Dr. Chen mentions during his IETF presentation that Broadcom has
> essential patents on their proposal, but there is no IPR disclosure on file,
> that’s most likely a situation where BCP 79 rules were not followed, and Dr.
> Chen and/or Broadcom should fix that.  But I’m not going to hunt down the
> status and prosecution history of every single patent or application in a
> family, in order to identify whether there may actually be other patents or
> applications that would be in need for disclosure.  That’s their job, not
> mine.  The consequences of not following IPR policies are known to those of
> us with legal inclinations.
>
> In the Skype GB patent application case, the situation is unclear to me as
> I did not, and will not, study the status of the GB patent application
> myself.  In such a case I assume by default that they are in compliance with
> BCP 79.
>
> I guess that we will learn over time, by the presence or the absence of an
> updated IPR disclosure, whether Skype thinks that they have a disclosure
> obligation of the GB patent application.
>
> I stick to my previous assertion that it is inappropriate to post patent
> numbers and/or hyperlinks to patents on the mailing list.  The tracker is
> the right place to inform people about patents.
>
> Hat off:
>
> You asked me not to loose substance here.  Fair.  Let’s not loose
> substance:
>
> In your posting, you have pointed engineers, many of which without formal
> legal training, let alone being qualified patent lawyers, to patent
> documents and, at least implicitly, encouraged the study of patents.  You
> facilitated this by posting patent numbers and hyperlinks to patents on a
> technical mailing list.  I believe we both agree that such a study can
> expose individuals, and certainly their employers, to certain risks.
>
> I believe that we share a basic interpretation of the policy in that it is
> within the mandate of an IETF working group to take into account known
> patent rights, and, to a certain extend, even their commercial
> (licensing/non-assert) terms.  That may include discussions of patent
> subject matter, work around solutions to avoid patent claims, and such.  I
> believe that the core of our disagreement is only the question how related
> discussions are conducted.  Is it really necessary to directly point people
> towards patent claims, with patent numbers, hyperlinks, possible cut-paste
> of claim language?  Or would be it sufficient to be just a bit more subtle?
>
> Using the concrete example at hand, starting a discussion on the abstract
> concept of “the specific value of a particular technique of noise level
> estimation” is absolutely within the mandate of this WG and this list.  I
> have never objected to that.  Making a request like “In the context of IETF
> IPR declaration xxx, I would like to get a full understanding of the
> specific value of a particular technique of noise level estimation” is IMO
> also absolutely within the mandate here.  Stating “the commercial terms
> identified in the IETF IPR disclosure xxx may not be fully aligned with my
> business interest.  Therefore, I would prefer designing around the protected
> technology.  In this context, would someone help me with an understanding of
> the specific value of a particular technique of noise level estimation”
> seems also ok to me (although the wisdom of making such a statement is not
> immediately apparent to me).  Paraphrasing a particular technique certainly
> is.  Even limited citations from the patent specification may be.
>
> Using such formulations provide interested individuals with sufficient
> information to access the patents which you want them to study, and/or
> identify the subject matter.  Those other people, however, who, by company
> policy, lack of interest on patent matters, or for any other reason, are not
> interested in patents, are not confronted with offending numbers, nor are
> they in danger of accidently downloading patent documents they are neither
> qualified, nor allowed by company policy, to study.
>
> Regards,
> Stephan
>
>
> On 3.25.2010 09:23 , "Rob Glidden" <[e-mail]> wrote:
>
>  Stephan:
>
> I don't see why you seem to be implying that Skype has failed to disclose
> IPR -- seems opposite to me.
>
> As said below, this IPR was already responsibly disclosed by the owner --
> the PCT is listed right there in 1164, and the GB application is referenced
> for priority and incorporated by reference in the patent. Hard to see how
> this could be more clear.
>
> Yes, BCP 79 section 6.4.1 says disclosures "must list the numbers of any
> issued patents or published patent applications or indicate that the claim
> is based on unpublished patent applications" and section 6.4.2 encourages
> disclosing material changes -- Skype is doing all this, no?
>
> Please don't lose the substance here -- ie the nature of a licensing
> disclosure and the specific value of a particular technique of noise level
> estimation.
>
> Your surmise that IETF might have a motive in BCP 79 to defacilitate
> deliberation by working groups looks counter to the text of the doc.
>
> Rob
>
> Stephan Wenger wrote:
>
> Re: [codec] Skype IPR disclosure Hi Rob,
>
> Wearing my “technical advisor to the IESG on IPR matters” hat:
>
> I’m commenting in this email only on the “third party disclosure” 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 Skype’s declaration.  Specifically, neither the GB
> application, nor the PCT application, have been disclosed by Skype.  Nowhere
> in BCP 79 or in the IETF’s 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 else’s
> 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 IETF’s web page has been to ensure that
> accidental reading and commenting on someone else’s patents is not
> facilitated.  By providing patent numbers and handy hyperlinks to those
> patents, you have very efficiently interrupted this isolation.
>
> I don’t think this is a fair tactic, and I don’t 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 don’t 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 IETF’s 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 “technical advisor on IPR matters hat”:
>
> Please let me remind you that the IETF takes no position on scope and
> validity of patent claims.  I don’t 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, I’m also not sure that everyone here—even a majority—appreciates
> being advised of patents through means other than the IETF’s 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=%2Fnetahtml%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
>
>
>
>
>
>
> ------------------------------
>
> _______________________________________________
> codec mailing list
>  [e-mail]
>  https://www.ietf.org/mailman/listinfo/codec
>
>
>
>
>
>
>
>
> ------------------------------
> _______________________________________________
> codec mailing list
>  [e-mail]
>  https://www.ietf.org/mailman/listinfo/codec
>
>
>
>
>
>
>
>
>
>
>
>
> _______________________________________________
> codec mailing list
> [e-mail]
> https://www.ietf.org/mailman/listinfo/codec
>
>