Subject: Issue #1238 Shoud secretariat ask for IPR clarification from IPR holders on 3rd party IPR disclosures

From: Harald Alvestrand <[email-masked]>
Date: Tue, 04 Apr 2006 18:41:43 +0200

I've started the process of updating the ticket system with the 
thoughts/issues from the IPR WG meeting in Dallas (minutes being worked on).

--- update
The IPR WG meeting in Dallas identified that there might be legal issues 
with taking such action ("lawsuits waiting to happen" was the term David 
Black used).
Apart from that issue, the room seemed clearly of the opinion that 
following up such disclosures was a Good Thing - reducing the FUD aspect 
of 3rd party notices.
--- end update

For the list:
- correct sense of the room?
- corresponds to sense of the mailing list?

Thoughts, mine:
- I don't think the IETF as such should care (except for giving fair 
warning) about liability that might be incurred by the filer of an IPR 
disclosure.
The IETF should be worried about liability accruing to the IETF 
secretariat for maintaining the DB or sending out the notices.
- I think the possible liability is lessened the less judgment there is 
in the system. Form letters are less dangerous than judgments.
- It's OK to refuse to send out letters where the filer did not give 
contact info for the alleged IPR holder (common sense).

Other thoughts?

_______________________________________________
Ipr-wg mailing list
[email-masked]
https://www1.ietf.org/mailman/listinfo/ipr-wg

---

From: "Spencer Dawkins" <[email-masked]>
Date: Tue, 4 Apr 2006 12:05:53 -0500

Sorry that I couldn't attend the Dallas IPR session (there actually is a 
limit to how much General Area stuff I can pay attention to).

> warning) about liability that might be incurred by the filer of an IPR 

I think I agree with this, but can also imagine a chilling effect the first 
time a third-party discloser gets sued. If we think third-party disclosure 
matters, and think that collecting the minimum amount of information from 
the discloser would limit the discloser's exposure to lawsuits, it would be 
nice to collect only the minimum information.

IANAL, but I'm thinking of a form disclosure that looks like: "IETF may wish 
to contact (Contact information), who may have IPR that is applicable to 
(working group or specification)"

Would any additional information be required?

As David said - I'm deferring to Jorge at this point, too.

Thanks,

Spencer

---

From: "David B Harrington" <[email-masked]>
Date: Tue, 4 Apr 2006 13:14:07 -0400

My personal opinion is I believe the followup of such disclosures is a
good thing, and a necessary one to prevent the standards process from
being undermined by IPR holders.

David Harrington
FutureWei Technologies, a Huawei company
[email-masked] 
[email-masked]
[email-masked]

> -----Original Message-----
> From: Harald Alvestrand [mailto:[email-masked]] 
> Sent: Tuesday, April 04, 2006 12:42 PM
> To: [email-masked]
> Subject: Issue #1238 Shoud secretariat ask for IPR 
> clarification from IPR holders on 3rd party IPR disclosures
> 
>

---

From: Thomas Narten <[email-masked]>
Date: Tue, 04 Apr 2006 14:36:21 -0400

On this topic, it's been pointed out to me that:

> As to the IETF secretariat contacting folks, there is a precedent
> the IETF might want to explore.  The IEEE follows this type of
> process.  A participant or 3rd party informs the WG chair that a
> company or individual may have technology within a particular area.
> The WG chair than contacts the IEEE secretariat to communicate with
> the potential technology holder.  The IEEE takes no position on the
> technology.  The IEEE only acknowledges the response (or no
> response) that it receives.  This has worked successfully for them
> for years and has kept the membership at arms length from the
> essentiality discussions.

Thomas

---

From: Simon Josefsson <[email-masked]>
Date: Tue, 04 Apr 2006 20:42:38 +0200

"Spencer Dawkins" <[email-masked]> writes:

> Sorry that I couldn't attend the Dallas IPR session (there actually is
> a limit to how much General Area stuff I can pay attention to).
>
>
>> The IPR WG meeting in Dallas identified that there might be legal
>> issues with taking such action ("lawsuits waiting to happen" was the
>> term David Black used).
>> following up such disclosures was a Good Thing - reducing the FUD
>> aspect of 3rd party notices.
>> --- end update
>>
>> For the list:
>> warning) about liability that might be incurred by the filer of an
>> IPR disclosure.
>
> I think I agree with this, but can also imagine a chilling effect the
> first time a third-party discloser gets sued. If we think third-party
> disclosure matters, and think that collecting the minimum amount of
> information from the discloser would limit the discloser's exposure to
> lawsuits, it would be nice to collect only the minimum information.
>
> IANAL, but I'm thinking of a form disclosure that looks like: "IETF
> may wish to contact (Contact information), who may have IPR that is
> applicable to (working group or specification)"
>

The relevant patent number would be quite useful for others, so they
can perform their own review.  Otherwise, I think it is too easy to
spread FUD or DoS someone's legal contact office.

Whether this modify third-party disclosure liability is beyond me.

Thanks,
Simon

---

From: "Lawrence Rosen" <[email-masked]>
Date: Tue, 4 Apr 2006 12:35:51 -0700

I don't want to give IETF specific legal advice about what it should do to
avoid "legal issues" when IPR claims are asserted or disclosed. But here's
what I would do in the general case:

1. Take all claims seriously. Post them in an obvious place and ask
technical people to read them. Ignorance is not necessarily bliss; that's a
myth perpetrated by people who don't like patents or don't like lawyers.

2. Publicize those claims for future implementers. Even though you don't
find it important, someone else may.

3. Review IPR claims within the WG to ensure they are in a form suitable for
IETF purposes. For example, all IPR claims accompanied by an IETF-acceptable
Open Standard license should be accepted with gratitude. 

4. Review IPR claims having unacceptable licenses or which are ambiguous
with your attorney. Don't waste everyone's time developing specifications we
can't freely implement just to save an hour or two of attorney time. For
serious IPR challenges, pro bono legal assistance may be available.

/Larry

Lawrence Rosen
Rosenlaw & Einschlag, a technology law firm (www.rosenlaw.com)
Stanford University, Lecturer in Law
3001 King Ranch Road, Ukiah, CA 95482
707-485-1242  *  fax: 707-485-1243
Author of "Open Source Licensing: Software Freedom and 
                Intellectual Property Law" (Prentice Hall 2004)

> Sent: Tuesday, April 04, 2006 9:42 AM
> To: [email-masked]
> Subject: Issue #1238 Shoud secretariat ask for IPR clarification from IPR
> holders on 3rd party IPR disclosures
>

---

From: "todd glassey" <[email-masked]>
Date: Tue, 4 Apr 2006 13:08:08 -0700

Larry's workflow for IPR disclosures is a good one. It however doesnt take
into account that IPR owners may not want to be publicly identified and may
have privacy legislation protecting them which the IETF's Policies cannot
mandate the violation of.

Its for this reason that the IPR process should not accept any 3rd party
notices,  and only accept notices of IPR from principals in those rights, or
their agents. It seems to me that anything else opens the IETF to privacy
litigation IMH lay opinion.

Todd Glassey

----- Original Message ----- 
From: "Lawrence Rosen" <[email-masked]>
To: <[email-masked]>
Sent: Tuesday, April 04, 2006 12:35 PM
Subject: RE: Issue #1238 Shoud secretariat ask for IPR clarification fromIPR

> avoid "legal issues" when IPR claims are asserted or disclosed.

Why not? Aren't you an IP lawyer?

> But here's

As long as this doesnt violate those IP Owners rights to privacy.

> Open Standard license should be accepted with gratitude.

As long as this doesnt violate those IP Owners rights to privacy.

> serious IPR challenges, pro bono legal assistance may be available.

Ah so this is about Specifications that are Free to Implement and NOT
Proprietary ones.

---

From: Harald Alvestrand <[email-masked]>
Date: Wed, 05 Apr 2006 01:33:17 +0200

> Would any additional information be required? 
I think that companies with patent portofolios the size of IBM's would 
have a hard time finding the right place to look with only this 
information..... in general, I think any identifying information (patent 
number, application number... ) that refers PUBLIC resources is a Good 
Thing, and I can't see a reason why it should be legally risky in any way.

"Required" and "useful" are two very different things here, probably.

                       Harald

---

From: Harald Alvestrand <[email-masked]>
Date: Tue, 04 Apr 2006 17:29:33 -0700

>myth perpetrated by people who don't like patents or don't like lawyers.
we do that now - if you believe that the IPR disclosure tool is an 
"obvious place".

>find it important, someone else may.
We do that now.

>Open Standard license should be accepted with gratitude. 
I think WGs are supposed to do that now. I'm not sure how much people 
like the way the process works.

>serious IPR challenges, pro bono legal assistance may be available.
Here I worry a bit, and am not sure what you think we should do.

1) Who do you think should be the subject of that sentence? IETF 
leadership, WG chair, WG, or someone else?
2) The IETF has so far carefully avoided defining what an "unacceptable" 
license would be, leaving that to be determined by the WG working on the 
standard, and ultimately by IETF consensus. Do you suggest that we 
should reopen that discussion?

---

From: Ted Hardie <[email-masked]>
Date: Tue, 4 Apr 2006 18:27:27 -0700

At 5:29 PM -0700 4/4/06, Harald Alvestrand wrote:
>I think WGs are supposed to do that now. I'm not sure how much people like the way the process works.

Working groups don't have to except IPR claims at all; assuming that they should
always accept them when they are licensed in specific ways would short circuit
an important part of the working group's job (and would presume that the licensing
will always be the same, which is not necessarily true for all licenses a working
group might find acceptable).  The key here is that it is still the working group's
job to make this determination.

>Here I worry a bit, and am not sure what you think we should do.

I agree that spending attorney time for clarity may be a good idea, but
the people who really need to spend it are the implementors--whose behavior
actually has to change if they don't understand the consequences of a license
or don't get it right.  The IETF can't get into the position of saying:  "Company X won't
sue you if you implement, based on their license".  Company X has to use a license
that's clear enough about saying "I won't sue you if you implement" that
the implementor can understand it.

>1) Who do you think should be the subject of that sentence? IETF leadership, WG chair, WG, or someone else?
>2) The IETF has so far carefully avoided defining what an "unacceptable" license would be, leaving that to be determined by the WG working on the standard, and ultimately by IETF consensus. Do you suggest that we should reopen that discussion?
>

I suggest we do not, since it is not in charter for this group.

					regards,
						Ted Hardie

---

From: Harald Alvestrand <[email-masked]>
Date: Wed, 05 Apr 2006 16:58:41 +0200

> job to make this determination.
Thanks for the clarification - I was referring to "review" when I said 
"WGs are supposed to do that".
I do, however, agree with Larry that there are licensing terms that we 
really should regard as "no problem", and that it would be good to have 
advisory (informational) documents that tell the WG which they are.

---

From: Thomas Narten <[email-masked]>
Date: Thu, 06 Apr 2006 09:12:52 -0400

> like the way the process works.

I think most folk don't particularly like it. But until someone has a
better suggestion...

> leadership, WG chair, WG, or someone else?

IMO, the individual WG members. After all, it is they (or their
employers, presumably) that must make the decision regarding what sort
of risk the alleged IPR poses for them as implementors and/or how the
licensing terms play into that. (And consulting with an attorney at
this point makes a lot of sense.) Those people, as individuals, can
come back to the WG saying "I'm OK with the WG continuing to use this"
or "I have a problem with the WG using this".

Thus, the WG does not need to take a formal stand on the validity of
the IPR itself. But a number of individuals (with individual opinions)
can reach a collective position on whether to go forward, or not, or
something else. Thus, the WG does decide what to do, but without
having to have a formal position as to what degree of risk there is or
getting into a detailed analysis of the claims made in the IPR. The WG
decides based on what its members are saying that they (individually)
believe the risks are.

Thomas

---

From: Thomas Narten <[email-masked]>
Date: Thu, 06 Apr 2006 09:20:50 -0400

> I do, however, agree with Larry that there are licensing terms that
> we really should regard as "no problem", and that it would be good
> to have advisory (informational) documents that tell the WG which
> they are.

The devil is in the details. While I agree in spirit, in detail folk
(in the past) have complained even about certain royalty-free
licenses, if, for example, they they require implementors and/or users
to actually request permission to use the feature, even if they will
be given permission to do so.

Thus, we have work to do to get to the point of being able to say any
specific licence really is "acceptable" in a broad sense. The details
really do matter, and it matters which WG/area the IPR applies in.

Thomas

---

From: Scott W Brim <[email-masked]>
Date: Thu, 06 Apr 2006 09:37:56 -0400

> really do matter, and it matters which WG/area the IPR applies in.

... and thus I still think it's good that the IETF as a whole not take
an official position.  It would be good to gather institutional history
of how WGs deal with IPR issues, for future WGs to refer to.

---

From: Brian E Carpenter <[email-masked]>
Date: Fri, 07 Apr 2006 11:08:46 +0200

> of how WGs deal with IPR issues, for future WGs to refer to.

I think that's right. It would seem OK for the IETF to post a page that
starts like this:

Here are some examples of license conditions that have been offered in the
past for technology used in successful IETF standards track specifications:

but going beyond that pure FYI level would seem problematic.

    Brian (personal opinion)

---

From: "Lawrence Rosen" <[email-masked]>
Date: Tue, 11 Apr 2006 08:21:15 -0700

> should reopen that discussion?

Regarding my suggestion #4:

1. Assuming a license is not among IETF's already-approved licenses, then
the WG should ask IETF's leadership, and through them IETF's attorney, for
advice. That is how Apache groups operate, and I think it can also fit the
IETF mold.

2. I suggest that IETF reopen the discussion about "acceptable" and
"unacceptable" licenses. For example, I think the "acceptable" list should
include the recent covenants not to sue from Sun and Microsoft. Those are
both very good ways to release patent claims for IETF and the world.

/Larry

Lawrence Rosen

> Sent: Tuesday, April 04, 2006 5:30 PM
> To: [email-masked]
> Cc: [email-masked]
> Subject: Re: Issue #1238 Shoud secretariat ask for IPR clarification from
> IPR holders on 3rd party IPR disclosures
> 
> Lawrence Rosen wrote:
>