Subject: Status of a disclosure when technology is removed from a draft?

From: Brian E Carpenter <[email-masked]>
Date: Sat, 27 Apr 2013 07:44:44 +1200

Hi,

A case has just occurred of the following sequence:

1. A draft is posted that contains an algorithm;
2. A corresponding IPR disclosure is posted;
3. After WG discussion, the draft is updated with the algorithm removed.

What next? The IPR disclosure is still there. Normally, we assume
that the disclosure remains relevant to following versions of the
draft without being re-posted each time. (In fact, do we even expect
a repeat disclosure for the eventual RFC? I don't think so.)

Is there a need for a formal rule for this case?

And what should the IPR holder do now? If they do nothing, the
updated draft might be assumed to be encumbered.

(FYI the draft is draft-krishnan-opsawg-large-flow-load-balancing
and the disclosure is https://datatracker.ietf.org/ipr/2060/ .)

    Brian

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From: tsg <[email-masked]>
Date: Fri, 26 Apr 2013 12:50:17 -0700

Brian - the IETF published with a permanent and non revokable license to 
use the first IP publication. Now that it has a piece of objectionable 
IPR in it - its too late. The cat is already out of the bag and based on 
the license there is an issue.

todd

On 04/26/2013 12:44 PM, Brian E Carpenter wrote:
> _______________________________________________
> Ipr-wg mailing list
> [email-masked]
> https://www.ietf.org/mailman/listinfo/ipr-wg
>

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From: "GTW" <[email-masked]>
Date: Fri, 26 Apr 2013 16:24:27 -0400

it depends on what the patent holder has stated in the disclosure.  In this 
case:

"The Patent Holder states that its position with respect to licensing any 
patent claims contained in the patent(s) or patent application(s) disclosed 
above that would necessarily be infringed by implementation of the 
technology required by the relevant IETF specification ("Necessary Patent 
Claims"), for the purpose of implementing such specification"

If no patent claims would necessarily be infringed then ...

George T. Willingmyre, P.E.
President GTW Associates
-----Original Message----- 
From: tsg
Sent: Friday, April 26, 2013 3:50 PM
To: [email-masked]
Subject: Re: Status of a disclosure when technology is removed from a draft?

todd

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From: Brian E Carpenter <[email-masked]>
Date: Sat, 27 Apr 2013 08:49:11 +1200

George,

On 27/04/2013 08:24, GTW wrote:
> it depends on what the patent holder has stated in the disclosure.  In
> this case:
> 
> "The Patent Holder states that its position with respect to licensing
> any patent claims contained in the patent(s) or patent application(s)
> disclosed above that would necessarily be infringed by implementation of
> the technology required by the relevant IETF specification ("Necessary
> Patent Claims"), for the purpose of implementing such specification"
> 

Yes, for someone who follows up the details, there is no issue,
but meanwhile there is the chilling effect of a disclosure that
is objectively no longer relevant. We know from experience that
many IETF participants simply recoil in horror when they see a
disclosure, without looking at the details.

    Brian

---

From: Scott Brim <[email-masked]>
Date: Fri, 26 Apr 2013 16:55:40 -0400

> disclosure, without looking at the details.

That should be handled as an education problem (of both claimants and
IETF participants), not a problem with freedom of what to say in
disclosures.

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From: Carsten Bormann <[email-masked]>
Date: Fri, 26 Apr 2013 22:58:38 +0200

On Apr 26, 2013, at 22:49, Brian E Carpenter <[email-masked]> wrote:

> meanwhile there is the chilling effect of a disclosure that
> is objectively no longer relevant.

Resubmit cleaned-up draft under new name.

Grüße, Carsten

---

From: tsg <[email-masked]>
Date: Fri, 26 Apr 2013 14:04:21 -0700

No William - it doesnt. The issue here is whether the IETF process has 
the potential to be used to create IP Fraud and the answer is of course 
it can.  Any IP licensing process which creates a one-way publication 
and disclosure/use license is an issue if that is true.

The real issue is who pays for that damage.

Todd

On 04/26/2013 01:24 PM, GTW wrote:
> disclosed above that would necessarily be infringed by implementation 
> of the technology required by the relevant IETF specification 
> ("Necessary Patent Claims"), for the purpose of implementing such 
> specification"
>
> -----Original Message----- From: tsg

---

From: Brian E Carpenter <[email-masked]>
Date: Sat, 27 Apr 2013 09:04:54 +1200

> IETF participants), not a problem with freedom of what to say in

Certainly, but my question was whether we need either a specific rule
or (more likely) a recommended procedure for the case where the
encumbered technology is removed from a draft.

    Brian

---

From: Scott Brim <[email-masked]>
Date: Fri, 26 Apr 2013 17:12:26 -0400

> encumbered technology is removed from a draft.

"Claimants should be aware that as drafts evolve, text may be added or
removed, and it is recommended that they keep this in mind when
composing text for disclosures."

---

From: Brian E Carpenter <[email-masked]>
Date: Sat, 27 Apr 2013 09:17:44 +1200

> composing text for disclosures."

I think a bit more is needed, such as

If there is a substantive change to the draft that affects an existing
disclosure, an updated disclosure should be made as soon as reasonably
possible.

     Brian

---

From: "Black, David" <[email-masked]>
Date: Fri, 26 Apr 2013 17:43:44 -0400

I agree w/Brian - an effective thing to do in this particular case would be
to submit a disclosure against the revised version of the draft stating
that changes to the draft have rendered the previous disclosure no longer
applicable.  That combo of two disclosures turning up in an IPR search on
that draft should lead people to the correct conclusion (no longer applicable).

Thanks,
--David

> From: [email-masked] [mailto:[email-masked]] On Behalf Of
> Brian E Carpenter
> Sent: Friday, April 26, 2013 5:18 PM
> To: Scott Brim
> Cc: GTW; [email-masked]

---

From: tsg <[email-masked]>
Date: Mon, 29 Apr 2013 10:07:24 -0700

> IETF participants), not a problem with freedom of what to say in
When the DISCLOSURE in and of itself has an IP Publication License such 
that the IP is published under that license, then any disclosure as you 
put it is in fact a licensing event for IP in that disclosure. So no...

Todd

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From: tsg <[email-masked]>
Date: Mon, 29 Apr 2013 10:40:09 -0700

The ONLY way this works is if the previous license to use the earlier 
DRAFT is formally revoked and if not then this is meaningless. If you 
are not formally changing the license to the previous IP by the new 
publication then the limiting power of the new draft to protect the WG 
and its sponsors is vapor... by the way did the sponsor's legal teams 
issue any statement on this? I bet not...

The real issue is whether this august bunch of professionals is able to 
convince the world it never considered these things and plausible 
deniablity applies here too. I personally think you stand a snowball's 
chance in hell but hey... it is what it is.

todd