Subject: RE: IPR conditions for advancement - technology-rights-02 (was: R e: revised IDs)

From: [email-masked]
Date: Wed, 5 Mar 2003 10:09:13 -0500

> > do you have a specific suggestion for wording?
> >
> > as I said, I do worry about the DoS potential
> >
> > I also worry that implementors will be *very* reluctant to make
> > any kind of could-be-used-in-court statement that they
> > considered  the patent bogus
> >
> > jorge - can you weigh in on this one?
> 
> I think specific language is Jorge's department -- I'm not going 
> to try to play lawyer.  But I'd think that my needs would be met 
> by a simple assertion that the technology was implemented and 
> deployed without requiring any licensing arrangements that, to 
> the knowledge of the implementing organization, others could not 
> make.  Something to that effect would avoid assertions of 
> bogusness, and would avoid people having to explicitly disclose 
> information about private cross-licensing agreements (which are 
> often, in my experience covered by NDAs), but ought to get us 
> the information we need to evaluate whether [further] 
> standardization is likely to involve serious restrictions on 
> implementation and deployment.

There's a potential problem here with *public* cross-licensing
agreements.  Large companies often engage in wholesale patent
cross-licenses, and the existence of these agreements is often
made public (although the specific terms may be under NDA).
These are arrangements that "others could not make", and
asserting that such agreements are not involved entails an
implementer at company X being familiar with company Y's patent
portfolio that is available to X by virtue of an X-Y cross license
(not a reasonable expectation in general, IMHO).

Another application of something like Scott Bradner's "reasonably
and personally known" language may do the trick here, as the
contents of another company's patent portfolio are generally not
"reasonably and personally known" to an implementer.  OTOH,
a specific crucial patent might be, and we'd probably want to
know something in that case, although asking the implementer
to name the specific patent for which the cross-license was
crucial plunges us back into the third-party disclosure tarpit.

> It seems to be that asking someone whether they are aware, based 
> on their implementation and deployment experience, of any IPR 
> issues that would prevent someone else from implementing and 
> deploying is not much different than asking them if they really 
> implemented the standard and whether they discovered anything 
> that would prevent someone else from doing so (and doing so 
> interoperably).

As long as this doesn't impose an obligation to search another
company's patent portfolio in order to determine that a broad
cross-license is not relevant to the implementation, I think that's
ok, and I read John's "are aware" and "whether they discovered"
language as being concerned with things known and affirmative steps
taken rather than imposing obligations to ensure non-applicability
of broad cross-licensing agreements.

Thanks,
--David
----------------------------------------------------
David L. Black, Senior Technologist
EMC Corporation, 176 South St., Hopkinton, MA  01748
+1 (508) 293-7953             FAX: +1 (508) 293-7786
[email-masked]        Mobile: +1 (978) 394-7754
----------------------------------------------------
_______________________________________________
Ipr-wg mailing list
[email-masked]
https://www1.ietf.org/mailman/listinfo/ipr-wg

---

From: John C Klensin <[email-masked]>
Date: Wed, 05 Mar 2003 10:50:52 -0500

--On Wednesday, 05 March, 2003 10:09 -0500 "[email-masked]" 
<[email-masked]> wrote:

>...
>> It seems to be that asking someone whether they are aware,
>> based  on their implementation and deployment experience, of
>> any IPR  issues that would prevent someone else from
>> implementing and  deploying is not much different than asking
>> them if they really  implemented the standard and whether
>> they discovered anything  that would prevent someone else
>> from doing so (and doing so  interoperably).
>
> cross-license is not relevant to the implementation, I think
> that's ok, and I read John's "are aware" and "whether they
> discovered" language as being concerned with things known and
> affirmative steps taken rather than imposing obligations to
> ensure non-applicability of broad cross-licensing agreements.

That was certainly my intent, although my prediction would be 
that, in many cases, the level of knowledge would be somewhat 
higher than you infer.  In many, although certainly not all, 
organizations that have become sufficiently patent-sensitive to 
start doing extensive cross-licensing, the question "are there 
any encumbrances on this that we need to worry about" has gotten 
routine.  With many, although presumably not all, internal legal 
departments, if cross-licensing exists, the answer is more 
likely to come back "no, we have a cross-licensing deal with the 
claimant, so it isn't an issue" rather than "no" or "no 
problem".  And, if that first answer comes back, the information 
falls immediately into the "reasonably
and personally known" category (although I'm still hoping that 
Jorge will suggest some language).

I am certainly not trying to propose anything that requires 
either universal knowledge or the proof of a universal negative. 
And, if the answer from the legal dept is just "no", then the 
implementer isn't "aware" and hasn't "discovered", so there is 
no obligation.

We can only hope that such a provision doesn't encourage legal 
departments to keep implementers in the dark about what 
arrangements the company has but, if they do, I don't see what 
we can rationally do about it.

    john