Re: [codec] Skype IPR disclosure

Rob Glidden <rob.glidden@sbcglobal.net> Mon, 29 March 2010 16:04 UTC

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Date: Mon, 29 Mar 2010 09:03:41 -0700
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Subject: Re: [codec] Skype IPR disclosure
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Stephan:

This is exactly the point.

BCP 79 rightly creates a "must" disclose obligation for patent holders (and their employees), and only a "should" disclose obligation for 3rd parties.

So if a participant were to inadvertently learn about a third party's IPR, there is no "must" disclose obligation created, so BCP 79 does not create a reason why there should be concern.

It is only if someone were to learn about their own company's undisclosed IPR that a "must" obligation would be created by BCP 79.  And in that situation, BCP 79, and the policy reasons it describes, are rightly clear:  disclosure is a must anyway.

Your approach would thus impose an unwise and contradictory obligation or practice on all participants for the only purpose of helping patent holders and their employees to not discover (and disclose) their own patents, to no relevant BCP 79 benefit, risk avoidance or choice removal.

Rob

Stephan Wenger wrote:
Re: [codec] Skype IPR disclosure Hi Rob,
Again, we are mostly in agreement on the policy interpretation.  We just draw different conclusion of what’s necessary, or sensible, to do.

On 3.26.2010 09:49 , "Rob Glidden" <rob.glidden@sbcglobal.net" rel="nofollow">rob.glidden@sbcglobal.net> wrote:

[..]

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.  

Absolutely true.  One clarification, though:  For third party IPR, there is no MUST, and no hard disclosure requirement.  Participants are “encouraged” only (section 6.1.3).    

[...]

The idea that IETF policy is instead to facilitate willful ignorance and/or avoidance by anyone seems wrong on many levels.

I continue to believe that it is within the IETF policy (and, arguably, within common sense) to let people decide for themselves whether they want to participate in discussions concerning third party patent matter, and, independently of the outcome of this decision, still participate in the WG (for example on purely technical subjects).  My fear is that, by exposing folks to patent numbers and handy hyperlinks to patent material, you take some of this choice away.  

So I believe that both “willful ignorance” and “avoidance [of exposure to patent numbers]” are both within the language and the spirit of the IETF’s patent policy.  

Stephan  

Rob


Stephan Wenger wrote:
Re: [codec] Skype IPR disclosure 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" <rob.glidden@sbcglobal.net" rel="nofollow">rob.glidden@sbcglobal.net> 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" <rob.glidden@sbcglobal.net" rel="nofollow">rob.glidden@sbcglobal.net> 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" <rob.glidden@sbcglobal.net" rel="nofollow">rob.glidden@sbcglobal.net> 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" rel="nofollow">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" rel="nofollow">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" rel="nofollow">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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