Subject: Standards-essential patents under RAND licensing

From: [email-masked] (Dale R. Worley)
Date: Thu, 10 Jan 2013 16:22:54 -0500 (EST)

Recent actions by the US Department of Justice, the US Patent Office,
the US Federal Trade Commission (which handles antitrust and consumer
protection matters), and the US International Trade Commission (which
has the power to exclude imports which violate US patents) suggest
that US officials are starting to understand the proper way to handle
"standards-essential patents", that is, patented inventions which are
incorporated into standards and the patent owner has promised to
license under "reasonable and non-discriminatory" terms.  It seems
that in some cases, patent owners have not followed through to issue
the required licenses, and then prosecuted other standard-users based
on patent infringement.

In particular (from the New York Times article linked below):

    Over the years [...] companies took Motorola at its word and
    developed products assuming they could routinely license Motorola's
    patents. But Motorola later refused to license its standard-essential
    patents and sought court injunctions to stop shipment of rival
    products.

    "After Google purchased Motorola [...] it continued these same
    abusive practices."

    In recent months, the F.T.C. has issued position papers and filed
    friend-of-the-court briefs, opposing the motions for injunctions using
    standard patents. The Justice Department and European regulators have
    echoed the commission's stance.

"Justice Department and Patent Office Issue Policy Statement on
Patents"
http://bits.blogs.nytimes.com/2013/01/08/justice-department-and-patent-office-issue-policy-statement-on-patents/
"On Google, F.T.C. Set Rules of War Over Patents"
http://www.nytimes.com/2013/01/05/technology/in-google-patent-case-ftc-set-rules-of-engagement-for-battles.html?_r=0
"United States Department of Justice and United States Patent &
Trademark Office Policy Statement on Remedies for Standards-Essential
Patents Subject to Voluntary F/RAND Commitments"
http://www.justice.gov/atr/public/guidelines/290994.pdf

Dale

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From: tglassey <[email-masked]>
Date: Thu, 10 Jan 2013 14:04:10 -0800

> http://www.justice.gov/atr/public/guidelines/290994.pdf

What do you do where a patent predates any standards use of the IP. I 
understand the issues of developing IP but what about IP that already 
existed before the standards processes incorporated it into their work 
product?

Todd

-- 
Regards TSG
"Ex-Cruce-Leo"

//Confidential Mailing - Please destroy this if you are not the intended recipient.

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From: Michael Richardson <[email-masked]>
Date: Thu, 10 Jan 2013 20:15:44 -0500

>>>>> "tglassey" == tglassey  <[email-masked]> writes:
    tglassey> What do you do where a patent predates any standards use of the IP. I
    tglassey> understand the issues of developing IP but what about IP that already existed
    tglassey> before the standards processes incorporated it into their work product?

I think that it depends upon whether the owner of the patent was
involved in producing the standard.  If not, and nobody knew of the
patent, there is certainly a problem.

-- 
]               Never tell me the odds!                 | ipv6 mesh networks [ 
]   Michael Richardson, Sandelman Software Works        | network architect  [ 
]     [email-masked]  http://www.sandelman.ca/        |   ruby on rails    [

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From: Eric Burger <[email-masked]>
Date: Thu, 17 Jan 2013 08:06:31 -0500

Absolutely nothing. We're screwed. That's why one has to laugh out loud when we charter a work group to produce a royalty-free version of foo, because there are encumbered versions of foo out there. Unless the people with the rights to foo are participating and have offered their rights as part of the standardization process, what will be produced will almost certainly not be royalty-free, unless an active, conscious effort is made to ensure the encumbrances in the existing foos are not present in the new foo.

On Jan 10, 2013, at 5:04 PM, tglassey <[email-masked]> wrote:

> What do you do where a patent predates any standards use of the IP. I understand the issues of developing IP but what about IP that already existed before the standards processes incorporated it into their work product?
> 
> Todd
> 
> -- 
> Regards TSG
> "Ex-Cruce-Leo"
>