Subject: W3C patent policy draft reference

From: Paul Gleichauf <[email-masked]>
Date: Thu, 14 Nov 2002 22:22:53 -0800

The most recent draft of the somewhat controversial W3C patent policy draft 
has been published and can be found at the URL below. It is likely to be 
useful background reading for the IETF IPR meeting.

http://www.w3.org/TR/2002/WD-patent-policy-20021114/

Paul

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---

From: Brian E Carpenter <[email-masked]>
Date: Sat, 16 Nov 2002 14:21:41 +0100

Sorry, I think it's irrelevant, since it is an untested policy
from a membership organization. Ours is a tested policy from an
open organization, and that is totally different.

   Brian

---

From: Paul Gleichauf <[email-masked]>
Date: Sat, 16 Nov 2002 10:45:22 -0800

Brian,

Irrelevant is a strong word, though I agree that membership based criteria 
do not apply.

There is an iterative character to the W3C disclosure process that 
surprised me when I read this most recent draft when I first read it a 
couple of days ago.

Knowledge of what other standards bodies are doing, and coordinating 
mechanisms where appropriate seems like a good idea to me. Even disclosure 
form structure and their solicitation schedule might be usefully modelled 
on what other people are trying to do, or have a tradition of doing.

The PAG process might be useful to deal with exceptional behaviors.

Some of the definitions are also of interest, such as essential claims.

Paul

---

From: Harald Tveit Alvestrand <[email-masked]>
Date: Sat, 16 Nov 2002 14:13:33 -0500

--On 14. november 2002 22:22 -0800 Paul Gleichauf <[email-masked]> 
wrote:

> The most recent draft of the somewhat controversial W3C patent policy
> draft has been published and can be found at the URL below. It is likely
> to be useful background reading for the IETF IPR meeting.
>

Thanks for providing the link!

Of course, the W3C patent policy presents lots of room for gaming the 
system....

imagine that the XYZ WG is considering alternatives A, B and C.
Organization X wants B to be the outcome, or, failing that, to delay the 
production of a standard.

X files a patent claim (the content doesn't matter), and files disclosure 
with the W3C stating that alternatives A and C, section 1.3.7.8, infringe 
on the (undisclosed) patent claim, and that it will not grant an RF license.
It then resigns from the group, possibly conditionally upon alternatives A 
or C being chosen for the next round of drafts.

Under the proposed W3C policy, there is no choice for the WG except to:

- Stop working for 12 months or so until the actual patent claims are 
disclosed
- Establish a PAG, discuss the matter for a while, and get told to design 
around the IPR statement or be closed down
- Choose alternative B

This is a fairly heavy club to hand to people.....

                Harald

---

From: "Lawrence E. Rosen" <[email-masked]>
Date: Sat, 16 Nov 2002 17:14:17 -0800

> Of course, the W3C patent policy presents lots of room for gaming the 
<snip>
> This is a fairly heavy club to hand to people.....

A company will do that only once and apologize for it forever
thereafter!

/Larry Rosen

---

From: Harald Tveit Alvestrand <[email-masked]>
Date: Sat, 16 Nov 2002 22:47:40 -0500

> A company will do that only once and apologize for it forever

if you believe that, I've got a nice bridge to sell you....

variants of that scenario have played out in at least one IETF working 
group I have had reported to me - under the *current* IETF rules, which 
give you far less formal leverage from playing that game.

                          Harald

---

From: Paul Gleichauf <[email-masked]>
Date: Sat, 16 Nov 2002 21:34:31 -0800

Harald,

I share your concern, and regard it as the biggest weakness of any proposal 
I have seen to date (including my own). Yet in my opinion the present vague 
process and RAND language in RFC 2026 makes the ability to manipulate the 
system worse than it needs to be. The voluntary consensus structure of the 
IETF complicates matters because there is no formal mechanism for 
expulsion, and because such games can be played before aggrieved parties 
have invested enough that they can easily claim damages in external court 
proceedings. The best, albeit poor, substitute I have found is to keep more 
systematic and easily retrievable records of who behaves themselves and who 
does not. Then everything rides on reputation.

Paul

---

From: Scott W Brim <[email-masked]>
Date: Sun, 17 Nov 2002 10:19:12 -0500

> does not. Then everything rides on reputation.

This is why the burden of evaluating IPR continues to lie with WG
participants (or their employers).  Because anyone can disrupt progress
in any procedural system we've come up with so far, someone has to
decide -- without taking a legal stance -- when to give little attention
to an IPR claim.
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From: "Reb Thomas" <[email-masked]>
Date: Mon, 18 Nov 2002 20:36:15 -0500

Another option would be for the WG to start encouraging people to look for
applicable prior art to provide to the USPTO to prevent the claimed patent
from being allowed.  This possible response from the members of the IETF or
W3C is likely to limit the number of times that organization's such as X
will try to manipulate the system.  Doing so in this fashion has been know
to create a backlash that can destroy their IPR and their image.

Calhoun "Reb" Thomas, III
Thomas Law Firm
1201 Main Street, Suite 1980
Columbia, SC 29201
803-748-1303 (office)
803-261-1721 (mobile)
803-787-9959 (fax)
[email-masked]

-----Original Message-----
From: [email-masked] [mailto:[email-masked]]On Behalf Of
Harald Tveit Alvestrand
Sent: Saturday, November 16, 2002 2:14 PM
To: Paul Gleichauf; [email-masked]
Subject: Re: W3C patent policy draft reference

                Harald

---

From: "Lawrence E. Rosen" <[email-masked]>
Date: Mon, 18 Nov 2002 19:12:22 -0800

Reb Thomas wrote:
> Another option would be for the WG to start encouraging 
> people to look for applicable prior art to provide to the 
> USPTO to prevent the claimed patent from being allowed.  This 
> possible response from the members of the IETF or W3C is 
> likely to limit the number of times that organization's such 
> as X will try to manipulate the system.  Doing so in this 
> fashion has been know to create a backlash that can destroy 
> their IPR and their image.

Unfortunately the patent system doesn't work quite that way in practice.
The public may not know about the contents of most patents until they
issue.  Invalidating a patent with prior art is not an inexpensive court
procedure.  Prior art may not apply as closely as you "remember" it
does.  

I remember briefly trying to help a non-profit try to attack patents
from the "prior art" side of the equation.  It was like pushing a rope
uphill.  

The only effective way to deal with patents is head-on.  You need
licenses to practice other companies' patents.  Make sure those licenses
give you all the rights you need.  If the licenses are to practice
industry standards, make sure the licenses are royalty-free and
otherwise unencumbered.  

If you wait until the patent is already published and you don't have a
license, it's usually too late to get it cheap.  

/Larry Rosen

---

From: "Reb Thomas" <[email-masked]>
Date: Tue, 19 Nov 2002 18:54:01 -0500

While there is room for disagreement over its effectiveness, in the last
several years Congress has revised portions of the Patent Act to
specifically enhance the ability of third parties to provide evidence of
prior art to the PTO.  It is true that the public does not typically know
about the contents of most patents until they either (1) are published or
(2) are issued, however the example situation involved the suggestion that a
company would assert a claim to a patent or patent application in a specific
area and that the assertion would be made to IETF members.  These IETF
members (by virtue of their self-selection and experience in the WG area)
are likely to be some of the people most likely to be aware of applicable
prior art.  It does not cost them much, if anything, for them to check their
memories regarding any articles or other things they may have written or
read to find prior art to forward to the PTO.  This does not require a court
procedure.  In the example situation, a court procedure would certainly not
have been started and probably would not have even been contemplated yet.

In the discussion example, it was suggested that Company X might assert
certain rights.  These may be in a patent application that is still under
examination that X hopes will mature into a patent.  What better time for
members of a standards body or other similarly knowledgeable people to
provide the PTO with prior art.  The PTO has been embarassed in recent years
by allowing some patents to issue when a more thorough review might have
prevented such issuance.  The current new Director (Rogan) is insisting that
the examining corp reduce the likelihood of this happening in the future.
They are likely to welcome pertinent new prior art references if it keeps
them from issuing a patent that would later cause them embarassment if and
when new evidence of prior art not found by the examining agent come to
light.  If the patent has been published 18 months after its filing and has
not yet been allowed, then interested parties such as an IETF WG can even
more precisely target prior art.  If the patent has been issued and the WG
feels relevant prior art was not considered, reexamination is an option
without the requirement for a "court procedure."  Reexamination is an
administrative proceeding.  In the past, it operated only between the patent
owner and the PTO.  More recently, the American Inventors Protection Act
(AIPA) has provided a way for third parties to make use of the reexamination
procedure to challenge the validity of a patent or its claims in light of
new evidence affecting its patentability.  This new procedure provides cost
savings over court litigation.

Certainly you are right in suggesting that an excellent way of dealing "head
on" with a patent is to secure a RF license, however many patent holders are
unwilling to grant RF licenses.  You fail to suggest alternatives when such
RF licenses are not forthcoming.  Short of the final options of (1)
abandoning pursuit of the technology as a standard or (2) paying for the
license rights, the two best options for dealing with the asserted patent
would appear to be (a) revising standards to work around the patent claims
and/or (b) working to produce prior art that invalidates the patent as I
suggested in my earlier e-mail.

-----Original Message-----
From: Lawrence E. Rosen [mailto:[email-masked]]
Sent: Monday, November 18, 2002 10:12 PM
To: 'Reb Thomas'; 'Harald Tveit Alvestrand'; 'Paul Gleichauf';
[email-masked]
Subject: RE: W3C patent policy draft reference

/Larry Rosen

---

From: "Lawrence E. Rosen" <[email-masked]>
Date: Tue, 19 Nov 2002 16:21:26 -0800

Calhoun "Reb" Thomas wrote:
> Certainly you are right in suggesting that an excellent way 
> of dealing "head on" with a patent is to secure a RF license, 
> however many patent holders are unwilling to grant RF 
> licenses.  You fail to suggest alternatives when such RF 
> licenses are not forthcoming.  Short of the final options of 
> (1) abandoning pursuit of the technology as a standard or (2) 
> paying for the license rights, the two best options for 
> dealing with the asserted patent would appear to be (a) 
> revising standards to work around the patent claims and/or 
> (b) working to produce prior art that invalidates the patent 
> as I suggested in my earlier e-mail.

I agree with you that all alterntives, including invalidation by prior
art, should be pursued when an industry standard is encumbered by
patents.  Obtaining a royalty-free license is not always possible.  

This problem has been explored at great length in the W3C Patent Policy
Working Group and in open source conferences.  We recognize that prior
art analysis, particularly when it is focused on specific patents and
not some generalizable project for all software patents, can be
effective.  But what is the responsibility for a working group
participant who knows of his company's patents or patent applications in
the field?  Should there be a default obligation of every working group
participant to license his company's patents royalty free?  Should the
practice of an IETF standard create any reciprocal licensing obligations
by users, so that someone can't simultaneously sue for patent
infringement and also practice other's patents?  

What unfortunately has happened is that people see this is a
royalty/no-royalty on/off switch.  There are *patent policies* to be
decided upon, not just whether someone can charge a royalty to practice
a patent.  And when a patent is asserted against an IETF standard, what
should the community/members do about it?

/Larry Rosen

---

From: Scott W Brim <[email-masked]>
Date: Tue, 19 Nov 2002 19:39:17 -0500

Speaking as an individual, as part of groping toward rough consensus ...

On Tue, Nov 19, 2002 04:21:26PM -0800, Lawrence E. Rosen allegedly wrote:
> But what is the responsibility for a working group
> participant to license his company's patents royalty free?  

No.  Working group participants have no authority to do that to start
with.  Perhaps you are asking if it should be an obligation of every
organization that sponsors someone's participation in the IETF ... but
still the answer is no, because a significant amount of IETF work
depends on technology developed outside of the IETF, so this rule would
merely hurt those you collaborate with.

> Should the

Many organizations have such policies already.  I don't see how forcing
such a thing would benefit the Internet.  If some organization decides
not to protect itself, why would you force it to?  What do you lose by
letting them decide themselves?

---

From: "Lawrence E. Rosen" <[email-masked]>
Date: Tue, 19 Nov 2002 23:03:24 -0800

I think I jumped a couple of steps in the analysis.  First, let's agree
on what the problem is, then let's see what possible solutions there
are.  What I described in my last email were questions that arose in the
context of the W3C patent working group, where working group
participants DO represent their companies and where company commitments
matter.  I gather from recent email comments that IETF is indeed a
significantly different beast, where decisions are taken by concensus of
self-appointed attendees at meetings, representing nobody in particular
but some amorphous set of "interested" parties -- and so perhaps
different patent policies would be appropriate for the two
organizations.

I'm serious about wanting to understand IETF processes.  What would IETF
expect to do if you discovered that a royalty-bearing patent blocked the
implementation of an industry standard?  If you discovered that the
patent was invented by someone who worked on creating the standard in
the working group?  If you discovered that the inventor kept his patent
secret until after the standard was published?  If you discovered that
the inventor was another engineer in the cubicle next to the working
group participant?  If you discovered that the inventor's manager
ordered him to keep the invention secret from the IETF working group?  
What would you do if the patent was licensed royalty-free but prohibited
use under the GPL or other "IPR Impairing" license?  (Microsoft actually
pulled that one in its CIFS license!)  In the absence of a policy that
deals with all these issues, will IETF just wing it?

At least one reason that Rambus lost its patent infringement lawsuit
against Infineon was because Rambus failed to disclose its pending
patents despite the written intellectual property rights policy of the
standards-setting organization to which Rambus belonged.  If IETF
doesn't have a written policy, then it is possible that even outrageous
conduct like that of Rambus would go unpunished in the IETF context.  It
is important legally to have a written patent policy.  

Perhaps we can spend some time in a later email talking about the
advantages of reciprocity provisions in standards-related patent
licenses.  But first let's agree on fundamentals.

/Larry Rosen

> From: [email-masked] [mailto:[email-masked]] On 
> Behalf Of Scott W Brim
> Sent: Tuesday, November 19, 2002 4:39 PM
> To: [email-masked]
> > But what is the responsibility for a working group participant who 
> > knows of his company's patents or patent applications in 
> the field?  
> > Should there be a default obligation of every working group 
> No.  Working group participants have no authority to do that 
> to start with.  Perhaps you are asking if it should be an 
> obligation of every organization that sponsors someone's 
> participation in the IETF ... but still the answer is no, 
> because a significant amount of IETF work depends on 
> technology developed outside of the IETF, so this rule would 
> > practice of an IETF standard create any reciprocal licensing 
> > obligations by users, so that someone can't simultaneously sue for 
> > patent infringement and also practice other's patents?
> 
> Many organizations have such policies already.  I don't see 
> how forcing such a thing would benefit the Internet.  If some 
> organization decides not to protect itself, why would you 
> force it to?  What do you lose by letting them decide themselves?
>

---

From: Gabe Wachob <[email-masked]>
Date: Wed, 20 Nov 2002 03:02:25 -0800 (PST)

> deals with all these issues, will IETF just wing it?

What can IETF do besides demote the spec to "unrecommended because of
unreasonable IP encumberances"? IETF has no formal relationship with the
IPR holders (unless the IPR holders happen to be the individuals
participating in the WG themselves). The IETF has no standing (in any
theory I could come up with) to take legal action against the employer of
a WG participant. And besides, its not clear that the IETF is a legal
entity capable of bringing legal action anyway.

Now, I suppose a court could construe a senior technical employee's
participation in a WG as the company's participation in the IETF, and thus
trigger the patent infringment lawsuit defense you mention below. Probably
unlikely though. And certainly not the sort of high-risk process you'd
like to have to depend on.

ALSO, it may be possible for an *implementer* to claim some sort of
estoppel (I'm not practicing, so you probably know better than me) -- that
the IPR holder *should have spoken up* when the IPR was being included in
the WG spec and the IPR holder knew about it. In that case, a written
policy to that effect probably would be useful (if in fact there is an
estoppel or reliance theory that has teeth).

But in general, since individuals are involved in the spec work, and not
their employers, and since employers usually hold and control IP, most IP
claims would essentially becoming from parties who are technically 3rd
parties to the spec efforts. I'm not sure what the IETF could do in that
case.

Perhaps the IETF could be extremely proactive about giving the wider
software and internet community notice of what technical solutions are
being proposed so as to constitute notice to all potential IP holders
(culled perhaps from a list of participants email addresses). At least
this would form the basis for a reliance or estoppel argument... Seems
perhaps a little unwieldy though.

Another issue I am wondering about is legal liability for participants of
wg's for contributory patent infringement. I don't think its happened, but
is it possible that a WG participant could be named as a defendant (esp if
they happened to work for a well funded employer) in a patent infringment
case? That would REALLY put the chill on a lot of participants and would
be a REALLY bad outcome.

	-Gabe

-- 
Gabe Wachob                       [email-masked]
Personal                       http://www.wachob.com
Founder, WiredObjects    http://www.wiredobjects.com

---

From: Scott W Brim <[email-masked]>
Date: Wed, 20 Nov 2002 09:29:56 -0500

On Tue, Nov 19, 2002 11:03:24PM -0800, Lawrence E. Rosen allegedly wrote:
> implementation of an industry standard?  

By "block" I assume you mean that no licenses are to be granted under
any circumstances?  Since a standard needs at least two independent
implementations, and in the case of licensed technology at least two
independent licenses issued, in order to progress to full standard, this
is unlikely.  If an IPR holder decided to stop issuing licenses at some
point, I guess we would move on.

> If you discovered that the
> the working group?  

This happens all the time and isn't a problem.  Inventors may have some
understanding of the technology under discussion, eh?  

I doubt it would ever happen that an inventor worked in a WG where
non-licensable technology was developed into a standard, since the IETF
policy is that the inventor must disclose what he knows wrt IPR.  If he
discloses that the technology will never be licensed, the WG would stop
work on it.  If he refuses to divulge licensing terms, that would set
off the warning bells in people's minds, they would push, and either
get something published or probably abandon the work.  This is a
personal conjecture.

> If you discovered that the inventor kept his patent
> secret until after the standard was published?  

See your reference to Rambus, for example.

> If you discovered that
> group participant?  

See the definition of "reasonably and personally known" in
draft-ietf-ipr-technology-rights-00.txt.  

> If you discovered that the inventor's manager

See your reference to Rambus, for example.

> deals with all these issues, will IETF just wing it?

I think this is one of the issues we're dealing with now.  First
clarification of existing policy, then perhaps extension to cover new
areas.

> is important legally to have a written patent policy.  

See the definition of "reasonably and personally known" in
draft-ietf-ipr-technology-rights-00.txt.

---

From: Brian E Carpenter <[email-masked]>
Date: Wed, 20 Nov 2002 16:54:32 +0100

> merely hurt those you collaborate with.

The IETF is an unincorporated association with no defined membership,
so any such rule appears to be a legal impossibility anyway.

> letting them decide themselves?

In any case, an open spec published by the IETF cannot place obligations
on anybody who practices it, under any legal theory I've heard of. 

   Brian

---

From: Brian E Carpenter <[email-masked]>
Date: Wed, 20 Nov 2002 19:44:28 +0100

> On Tue, Nov 19, 2002 11:03:24PM -0800, Lawrence E. Rosen allegedly wrote:
...
> clarification of existing policy, then perhaps extension to cover new

However, our current theory is that if two independent implementions
have successfully interoperated, then not only is the specification
technically adequate, but the license conditions are (at worst)
reasonable and non-discriminatory. As an open standards body, that's
as far as we go. The IETF isn't an open source consortium, despite the
fact that many IETF participants may be in favour of open source. 

  Brian

---

From: "Lawrence E. Rosen" <[email-masked]>
Date: Wed, 20 Nov 2002 13:32:37 -0800

Brian Carpenter wrote:
> The IETF 
> isn't an open source consortium, despite the fact that many 
> IETF participants may be in favour of open source. 

Please don't conflate two issues into one.  The requirement for a patent
policy is not just for open source.  Such a policy is needed by
proprietary vendors and their customers, too.  I would say, however,
that open source cannot thrive when standards are encumbered by patents.
/Larry

---

From: Brian E Carpenter <[email-masked]>
Date: Wed, 20 Nov 2002 23:03:58 +0100

"Lawrence E. Rosen" wrote:
> proprietary vendors and their customers, too.  

Which is why the IETF has had such a policy for many years.

> I would say, however,

Which is why I mentioned that the IETF isn't an OSS consortium.

   Brian

---

From: "Reb Thomas" <[email-masked]>
Date: Sun, 24 Nov 2002 11:03:44 -0500

In my earlier e-mail responding to this e-mail regarding invalidating
patents with prior art, I should have mentioned the example of
www.bountyquest.com to make it clear that this is a real option.

-----Original Message-----
From: Lawrence E. Rosen [mailto:[email-masked]]
Sent: Monday, November 18, 2002 10:12 PM
To: 'Reb Thomas'; 'Harald Tveit Alvestrand'; 'Paul Gleichauf';
[email-masked]

/Larry Rosen