Re: [Geopriv] Fwd: IPR Disclosure: Qualcomm Incorporated's Statement about IPR related to RFC 4119

Given that Martin Thomson has submitted a great many draft in that time, perhaps you would care to elaborate specifically as to which ones you are referring to?

Regards

James Winterbottom
Global Product Manager
CommScope GeoLENs
IP Location Product Portfolio
Email: james.winterbottom@commscope.com
Phone: +61-2-42-212938
Mobile: +61-447-773-560

> -----Original Message-----
> From: geopriv-bounces@ietf.org [mailto:geopriv-bounces@ietf.org] On Behalf
> Of Gonell, Fabian
> Sent: Friday, 17 June 2011 6:01 AM
> To: John C Klensin; Alan Clark
> Cc: Resnick, Pete; geopriv@ietf.org; 'WG Chairs'
> Subject: Re: [Geopriv] Fwd: IPR Disclosure: Qualcomm Incorporated's
> Statement about IPR related to RFC 4119
> 
> Pete Resnick brought this mailing list to my attention and I have
> subscribed to it to respond to the recent discussion regarding Qualcomm's
> IPR disclosure related to RFC 4119.  I will continue to subscribe through
> the end of June 2011 to respond to any further inquiries on this matter.
> Thereafter, I can be reached at the email address from which I sent this
> message.
> 
> The disclosure to RFC 4119 was made in error, and will be withdrawn
> shortly.  The particular patent was identified as one that might be
> necessarily infringed by Implementing Technology if one or more drafts
> submitted in 2010 and 2011 by M. Thomson of Andrew Corporation were
> developed into an RFC.  RFC 4119 was mistakenly identified as a relevant
> document in our internal disclosure processes and that error was not
> caught before the disclosure was made.  We apologize for the confusion.
> 
> That said, much of the recent discussion appears to be based on
> misunderstandings of the applicable IETF rules.  The applicable IETF rules
> are found in RFC 3979. Disclosure rules are in section 6 of that document.
> Those participating in or following the recent discussion should note the
> following three points.
> 
> First, RFC 3979 requires disclosures based on the personal knowledge of
> the participants.  See Section 6.1.2:
> 
>    Any *individual* participating in an IETF discussion who *reasonably
> and
>    personally knows* of IPR meeting the conditions of Section 6.6 which
>    the individual believes Covers or may ultimately Cover a Contribution
>    made by another person, or which such IETF participant reasonably and
>    personally knows his or her employer or sponsor may assert against
>    Implementing Technologies based on such Contribution, must make a
>    disclosure in accordance with this Section 6.  (emphasis added)
> 
> Second, RFC 3979 specifically and unequivocally states that there is no
> requirement to perform a patent search.  See Section 1.l. (stating that
> the term "reasonably and personally known" "should not be interpreted as
> requiring the IETF Contributor or participant (or his or her represented
> organization, if any) to perform a patent search to find applicable IPR").
> 
> Third, RFC 3979 specifically contemplates and acknowledges that
> disclosures made after an RFC is published may be timely.  See Section
> 6.2.2:
> 
>    If a participant first learns of IPR that meets the conditions of
>    Section 6.6 in a Contribution by another party, for example a new
>    patent application or *the discovery of a relevant patent in a patent
>    portfolio, after the Contribution was published in an Internet-Draft
>    or RFC,* a disclosure must be made as soon as reasonably possible
>    after the IPR becomes reasonably and personally known to the
>    participant. (emphasis added)
> 
> Given the plain text of RFC 3979, the insinuations of wrongdoing in the
> recent discussion are ill founded.  I have spoken with Randall Gellens,
> who was one of the WG co-chairs during the relevant time period, and he
> did not know anything about the patent at issue.  That is not surprising,
> because the patent was developed by a subsidiary company in which Randall
> did not work at a time when such subsidiary was an independent company not
> yet owned by Qualcomm.  Further, Randall's product development
> responsibilities at Qualcomm did not involve position location.  We also
> reached out to Ted Hardie, who was Applications Area Director and who no
> longer works at Qualcomm, and confirmed that he also knew nothing about
> the particular patent.  Ted also did not work in the subsidiary that owned
> the patent, and in any event the patent was developed years before Ted
> joined Qualcomm.
> 
> In light of these facts, the suggestion that this situation was "pretty
> darn close" to one in which the *author* of a draft document is also the
> *named inventor* of a patent disclosed after an RFC was published is
> completely erroneous and, frankly, inappropriate. Nor was this a situation
> in any way analogous to what the FTC alleged with respect to Rambus, a
> matter in which Rambus was alleged to have *refused* to give a RAND
> commitment while Qualcomm's (erroneous) disclosure to RFC 4119 explicitly
> included a RAND commitment to offer licenses.  Randall and Ted have given
> years of service to the IETF in general and to this WG in particular.
> They deserve better than to have their good names casually smeared on this
> mailing list.
> 
> Fabian Gonell
> QUALCOMM Incorporated
> 
> 
> -----Original Message-----
> From: geopriv-bounces@ietf.org [mailto:geopriv-bounces@ietf.org] On Behalf
> Of John C Klensin
> Sent: Wednesday, June 15, 2011 4:59 PM
> To: Alan Clark
> Cc: Resnick, Pete; geopriv@ietf.org; 'WG Chairs'
> Subject: Re: [Geopriv] Fwd: IPR Disclosure: Qualcomm Incorporated's
> Statement about IPR related to RFC 4119
> 
> Alan,
> 
> I'm not defending Qualcomm - I don't know the facts of this
> matter and have no opinion on whether I would defend them if I
> did.  However... (inline below)....
> 
> --On Wednesday, June 15, 2011 17:07 -0400 Alan Clark
> <alan.d.clark@telchemy.com> wrote:
> 
> > Pete
> >
> > Many large companies have substantial patent portfolios and
> > could avoid the disclosure requirements of standards
> > organizations if they could claim that the participants in
> > standards activities were not personally aware of patents that
> > may affect standards under development.  IMHO if this were
> > allowed to happen then patent disclosure requirements become
> > completely ineffective.
> >...
> 
> Some others have done exactly that before.  The rule that you
> prefer is certainly a possible one (but see below).  However,
> the IETF's various IPR WGs considered the issue very carefully
> and arrived at the "personal knowledge" requirement, so, in
> commenting about personal knowledge, Pete is merely reflecting
> the way our rules are written.
> 
> IANAL, but I understand that there is some case law in which
> judges have taken a dim view of companies organizing themselves
> in ways that seem to have the sole purposes of evading the
> requirements of SDOs or of surfacing submarine patents at times
> that give them unreasonable or unfair advantages.
> 
> > In my opinion - any company participating in any standards
> > activity should either:
> >
> > (i) Establish an internal process by which they monitor the
> > standards activities in which they participate and constantly
> > review their patent database for potential applicability
> > (relatively easy given that everything is electronic).  If
> > they find a matching patent or application related to an
> > in-process standards activity they should disclose it and
> > state the applicable licensing terms - if the standards
> > activity has already completed then they should waive their
> > right to enforce the patent with reference to the standard.
> 
> > (ii) Make a blanket statement to the standards body that they
> > were willing to make licenses available royalty-free with the
> > condition of reciprocity. This avoids the need to track
> > anything and preserves some ability to use patents defensively.
> 
> Unfortunately, there is a third possibility, one that companies
> take when they perceive the requirements of a particular SDO or
> consortium are too expensive or otherwise burdensome: they drop
> out and prohibit their employees and others over whom they have
> control from participating.   While I think many of us would
> prefer one of the two choices you outline, the possibility of
> the third should continue to make us cautious about too-sweeping
> rules.
> 
>      john
> 
> 
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