Subject: IPR conditions for advancement - technology-rights-02 (was: Re: revised IDs)

From: John C Klensin <[email-masked]>
Date: Tue, 04 Mar 2003 19:06:30 -0500

Scott,

Since, as far as I can tell, no one else has commented on this, 
let me clarify my position and make a suggestion here.  The 
position is that I would like to see an explicit statement from 
those who have implemented a document that is suggested for 
Draft (or Full Standard), rather than guessing that things are 
ok from the fact that there are implementations.  The latter 
could get us into a number of interesting problems that I don't 
want to think about in addition to the cross-licensing examples, 
e.g., deciding that a claimed patent wasn't valid in the country 
of implementation regardless of its status in the the country of 
the claimant.  But I really don't care what the statement says 
as long as it makes clear that the IPR claims have been 
considered as part of the implementation process.  E.g., any of 
"we licensed this", "we didn't have to license this, or worry 
about whether that was needed, because our company already had a 
cross-licensing agreement with the claimant", "we decided the 
IPR claims were nonsense and no one has tried to actually 
enforce them, although your experience might differ" would 
suffice as statements.  _Then_ we can use the usual processes to 
reach consensus as to whether whatever statements have been made 
are adequate to demonstrate that the standard can, in practice, 
be implemented and distributed.

regards,
   john

--On Saturday, 01 March, 2003 15:34 -0500 Scott Bradner 
<[email-masked]> wrote:

> I think these docs are getting close but there are a few
> issues that are still open and I think need further discussion
>
> one particular one comes from jck
>
>   Section 3(A) and 3.1 are slightly inconsistent: 3(A) appears
>   that there be an explicit statement that the IPR provisions
> have   been exercised as part of advancing a document, while
> 3.1   indicates that the existence of independent
> implementations     causes presumption that they have been
> exercised.  I prefer the   former and hope it is the current
> practice since the practice of   patent cross-licensing
> arrangements among companies makes it   quite possible that
> two independent implementations would come      into being
> without exercising any provisions that would apply   across
> the IETF.
>
> there is actually no real current practice on this - we have
> had only one document with IPR claims against it try to go
> from PS to DS since 2026 was done that I know of - and a
> complaint was raised in that case the complaint was from
> someone who claimed IPR and claimed that the doc could not
> advance because we did not have documentation that
> implementers had taken out licenses - but the implementers
> (and much of the working group) felt that no licenses were
> needed.   actually requiring documentation of a license when
> the implementer  does not think the claim is valid can become
> a DoS attack
>
> I am not sure what to do here - when the issue 1st came up I
> thought that 3.1 was right (take the fact of multiple
> implementations as an indication that the needed licensing has
> been done (which  could be that no licensing is actually
> required)
>
> I've changed the text to say this but it is an issue that
> should be discussed.
>
> but this does not deal with case where all implementations are
> by folk with cross licensing agrrements - need ideas on how to
> deal with  that case

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---

From: Scott Bradner <[email-masked]>
Date: Tue, 4 Mar 2003 21:57:52 -0500 (EST)

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?

Scott

--------

Date: Tue, 04 Mar 2003 19:06:30 -0500
From: John C Klensin <[email-masked]>
To: Scott Bradner <[email-masked]>, "[email-masked]" <[email-masked]>
 (was: Re: revised IDs)

Scott,

regards,
   john

---

From: John C Klensin <[email-masked]>
Date: Tue, 04 Mar 2003 22:25:20 -0500

--On Tuesday, 04 March, 2003 21:57 -0500 Scott Bradner 
<[email-masked]> wrote:

> any kind of could-be-used-in-court statement that they
> considered  the patent bogus
>

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.

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).

Note that suggestion goes a bit beyond the text of 2026, 
although not its intent as I understand it.  To illustrate the 
problem, assume you have a clear patent (i.e., issued and 
without any obvious basis for a challenge) on some technology 
that is covered by a standard.  Now, assume I implement the 
standard, but keep a very low profile: I might quietly show it 
to a few friends, maybe even carry out an interoperability test 
with folks who are similarly disposed, but not have any 
intention of marketing or distributing the implementation.   Am 
I infringing?  Yes.  However, you might not see it as in your 
interest to go after me since the harm is very limited, thrice 
nothing is still nothing, etc.  A narrow reading of 2026 would 
permit my implementation to be taken as evidence for an 
inference that the standard can be implemented and that no 
problems were encountered in the absence of a license.

That is exactly the wrong inference, but, to get past it, those 
two implementations required for Draft must not just exist, but 
must be sufficiently deployed to give us a reasonable chance of 
discovering whether the putative patent holder is actually going 
to try to enforce the thing.

       john

> To: Scott Bradner <[email-masked]>, "[email-masked]"
> <[email-masked]>  (was: Re: revised IDs)
>
> Scott,
>
> Since, as far as I can tell, no one else has commented on
> this,  let me clarify my position and make a suggestion here.
> The  position is that I would like to see an explicit
> statement from  those who have implemented a document that is
> suggested for  Draft (or Full Standard), rather than guessing
> that things are  ok from the fact that there are
> implementations.  The latter  could get us into a number of
> interesting problems that I don't  want to think about in
> addition to the cross-licensing examples,  e.g., deciding that
> a claimed patent wasn't valid in the country  of
> implementation regardless of its status in the the country of
> considered as part of the implementation process.  E.g., any
> of  "we licensed this", "we didn't have to license this, or
> worry  about whether that was needed, because our company
> already had a  cross-licensing agreement with the claimant",
> "we decided the  IPR claims were nonsense and no one has tried
> to actually  enforce them, although your experience might
> differ" would  suffice as statements.  _Then_ we can use the
> usual processes to  reach consensus as to whether whatever
> statements have been made  are adequate to demonstrate that
> the standard can, in practice,  be implemented and distributed.
>
> regards,
>    john
>
>