Subject: [MEDIACTRL] AT&T IPR on MRB

From: "Eric Burger" <[email-masked]>
Date: Wed, 2 Jan 2008 10:01:22 -0800

The IETF has received notice from AT&T that they have a few patent
applications that MAY be applicable to the MRB work
(draft-boutlon-mediactrl-mrb).

If you have any comments or questions, please direct them directly to
the Chairs ([email-masked]).  DO NOT DISCUSS THIS ISSUE
ON THE LIST; IT IS BEYOND THE SCOPE OF THE WORK GROUP AT THIS TIME.

Please refer to:
U.S. Application Serial Numbers 11/321760 and 11/321734
https://datatracker.ietf.org/ipr/897/ 
https://datatracker.ietf.org/ipr/898/
https://datatracker.ietf.org/ipr/899/

Before everyone freaks out, a few things to keep in mind:

1. AT&T is being a good citizen by announcing the existence of these
applications.

2. A patent application is NOT the same as a patent.  There is a decent
chance the patent office will reject the patent.  Even if the USPTO
awards the patent, there is a virtual guarantee the patent office will
reject some of the claims.

3. One could argue that since one of the inventors on the patent has
been involved in the work, all the way back to the work group inception,
it would be difficult for AT&T to use the "no patent search burden"
escape clause in the IETF Note Well.  There is case law that invalidates
the ability of a patent holder to enforce the patent in the case the
company knowingly did not disclose the intent to file.  However, the
applicability of this situation and taking this approach would be a
matter for you and your legal team, not for the IETF or the work group.
I could not advise you on how to deal with this issue.

4. In a similar vein, one could argue AT&T would have had a duty to
announce the application at the time it was filed (12/29/2005) or when
it was published (10/26/2006).  Again, I cannot advise you on a legal
strategy, if you needed one.

5. AT&T is offering Reciprocal RAND terms, meaning they will let you use
their IPR if you let them use yours to implement the specification.  You
may or may not have to pay an additional fee.  You might be lucky and
end up getting paid for your IPR.  I have seen that happen, too.  Then
again, there may be no IPR at the end of the day.  See #2 above.

6. It is quite common for commercial entities to offer their IPR royalty
free to non-commercial entities.  Just because AT&T says they might
charge for a license does not mean they have to charge for a license.
Again, I cannot advise you on a legal strategy.  However, especially if
you are in the open source or non-commercial world, it probably cannot
hurt to ask AT&T directly for a free license.  Of course, there may not
be anything to license.  See #2 above.

7. AT&T may announce their intentions here, like stating typical
licensing fees ($0 would be good); a commitment to offer the patent, if
issued, to the Patent Commons or IETF Trust; or abandoning the
application, putting any IPR, if any, into the public domain.  I cannot
speak for AT&T and do not presume to advise them on such issues.

One example of this model are the SnowShore patents, which protect
implementers of RFC 5022. See https://datatracker.ietf.org/ipr/580/

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