Re: [nwcrg] Recent IPR disclosure against RFC 8681

[Marie-Jose Montpetit <[e-mail]>]

Thank you for your reply.

it is not the role of the IETF (and we are the IRTF BTW) to make a
determination on the validity of a patent. It is not our role. The IRTF is
there to foster research. We just need to know about the IPR for potential
licensing aspects in the future.

I made the comments you refer as to justify the fact that I had not made
the disclosure as an expert with technical knowledge of both the RFC and
the patent content. This   could be interpreted as a potential conflict of
interest. I would have appreciated being advised of this disclosure as it
created some questioning but as you say you did not have to. I dealt with
the consequences like I will do in the future on other potential
disclosures that involve my patents.

It is fine that you made the disclosure but again the timeliness of it was
another issue that i think was important as CodeOn was aware of the work
from the beginning. Again you disagree and it is well noted.

This morning we decided to close this issue. It showed the importance of
the IPR issues is the IETF/IRTF and we will continue to be vigilant.

mjm

Marie-José Montpetit, Ph.D.
[e-mail]



On April 6, 2020 at 12:23:52 PM, [e-mail] (
[e-mail]) wrote:

Dear All,

Following the email (here enclosed) of Marie-José Montpetit, co-chair of
the NWCRG, we would like to point out the following:

   1. Code On Network Coding (“Code On”) is a small start-up having to
   promote a technology / ecosystem and manage a portfolio of over 100 patents
   (many of them licensed from over 10 Universities) with limited resources.

   2. Despite not having in-house IP capabilities, Code On takes IPR
   activity very seriously and adheres to IETF policies to the best of its
   ability.


   1. Code On understands that RFC 8179 provides that participants
*must* disclose
   the existence of any IPR that they believe might cover the technology under
   discussion.  And it is in this spirit that Code On has consistently made
   IPR disclosures to the IETF since 2013, as per the links hereafter [
   https://datatracker.ietf.org/ipr/search/?draft=&rfc=&doctitle=&group=&holder=code+on&submit=holder&iprtitle=&patent=
   ];[
   https://www.linkedin.com/feed/update/urn:li:activity:6651777131674238976
   ]


   1. We strongly reject the statement of the Co-Chair that our disclosure
   was done against the rules:
      - In general, all of our disclosures have followed the rules of RFC
      8681;
      - In particular, this disclosure, relevant for a contribution made by
      somebody else, is a “timely disclosure” because it was made by
us promptly
      once we reached a belief of the relevancy of this specific patent.
   2. We reject the notion that we should have discussed the relevance of
   our disclosure either at a general meeting or in private emails, since the
   duty to disclose is personal to each participant.



   1. We will not comment on the Co-Chair’s statement that she did not
   disclose this IPR because she did not feel that there was a direct
   relationship between the patent and RLC from its initial ID to the RFC, but
   are surprised that a Co-Chair would comment on the relevance of a
   disclosure of one of the contributors in light of the fact that RFC 8179
   specifically states that the IETF will make no determination about the
   validity of any particular IPR claim.

Best

*Kavim Shroff*

M: [phone] | Skype: kavimds

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Dear NWCRG list members:

There was a recent IPR disclosure related to RFC 8681 - Sliding Window
Random Linear Code (RLC) Forward Erasure Correction (FEC) Schemes for
FECFRAME -
https://datatracker.ietf.org/ipr/4069/
This refers to a patent that has me as co-inventor.  This disclosure puts
me in a delicate position as the patent co-inventor hence someone who
should have disclosed the IPR and at the same time as the NWCRG chair who
has been following the RLC development since 2015 and should be impartial.

(w/o chair hat on)
1. This patent was submitted following some work I did as an MIT researcher
in Muriel Médard’s laboratory and as such all my IPR is now owned by MIT
for them to license at will. It is the licensee that made the disclosure,
not MIT, not me or any of the patent co-inventors most of which have been
or are still involved in the NWCRG. I was not made aware of the disclosure
and have no relationship with the discloser but it puts me like I said in a
delicate position.

According to RFC 8179 I should have disclosed this IPR at the time of the
first ID in 2015 or throughout its evolution in the TSVWG from 2017-2019
and its presentations in the NWCRG meetings during that time if I felt that
it was related to the work of RFC 8681. I understand the rules of 8179 for
the need for timely disclosure. I did not disclose any IPR, as I did not
feel that there was a direct relationship between the patent and RLC from
its initial ID to the RFC. I also understand that the entity disclosing the
IPR does not agree with me.

As far as I am concerned, the work that lead to the patent, where I was
co-PI, was a master student thesis on using network coding (the MIT/Caltech
RLNC) as an alternative to some of the layer 2 reliability mechanisms in
WIMAX-2 networks with wider applicability to other wireless networks. The
patent in thus on a novel implementation of coding not a code development.

Since RFC 8681 is about developing a code with sliding windows and one
that compared to the RLNC used in the patent does not allow for
re-encoding. I believe our patent to be not directly related hence the
reason I never pointed to the IPR. Of course the field of applicability of
RFC 8681 includes wireless networks but also many others; applications are
not crux of the RFC 8681. As a co-inventor I would have welcomed the
discussion at our meetings or in private emails before the disclosures.

(with co-chair hat one)
2. Other co-inventors from MIT and now Harvard and the disclosing entity,
via one of their representatives, were present at almost every NWCRG
meetings throughout the development of the RLC since 2015 and are part of
our mailing list. Our patent or any other that are now disclosed against
RFC 8681 was pointed out as being related. Some of the concerned
participants even supported the RLC work. There is a rule in IETF that
is followed by the IRTF about "timely disclosures" of related IPR. I am
surprised that the disclosing entity took so long against the rule. And at
every meeting we emphasized the IPR rules.

Vincent and I welcome comments on this as we are strategizing for the
future of the group.

mjm

Marie-José Montpetit, Ph.D.
[e-mail]


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