The case Bob mentions is the FTC action against Dell in regards to the
VL-Bus Standard done in VESA.
Reading from the FTC decision, one learns that the facts of the case were
such that Dell's failure to make VESA aware of its IP was not inadvertent.
>From http://www.ftc.gov/opa/1996/06/dell2.htm:
"The Commission noted that other commenters suggested that the theory
supporting this law enforcement action “could impose liability for an
unknowing (or 'inadvertent') failure to disclose patent rights. Again, the
Commission’s enforcement action is limited to the facts of this case, in
which there is reason to believe that Dell’s failure to disclose the patent
was not inadvertent. The order should not be read to create a general rule
that inadvertence in the standard-setting process provides a basis for
enforcement action. Nor does this enforcement action contain a general
suggestion that standard-setting bodies should impose a duty to disclose,"
the statement says."
The bottom line is that all the facts of the example cited in Bob's meeting
were not disclosed at Bob's meeting. The FTC determined that the statement
made at the VL-Bus meeting was not correct and more importantly was
intentionally not correct. Because of this determination and under the
concept of equitable estoppel, in which courts preclude patent-holders from
enforcing patents when they fail to properly disclose the existence of
those patents, Dell was precluded from enforcing the patent only against
those implementing the VESA VL-Bus standard.
**********************************************
Don Wright don at lexmark.com
Chair, IEEE SA Standards Board
Member, IEEE-ISTO Board of Directors
f.wright at ieee.org / f.wright at computer.org
Director, Alliances & Standards
Lexmark International
740 New Circle Rd
Lexington, Ky 40550
859-825-4808 (phone) 603-963-8352 (fax)
**********************************************
|---------+---------------------------->
| | Robert Herriot |
| | <bob at herriot.com>|
| | Sent by: |
| | owner-ipp at pwg.org|
| | |
| | |
| | 07/21/2004 05:21 |
| | AM |
| | |
|---------+---------------------------->
>-----------------------------------------------------------------------------------------------------------------------|
| |
| To: Harry Lewis <harryl at us.ibm.com>, "McDonald, Ira" <imcdonald at sharplabs.com> |
| cc: "'carl at manros.com'" <carl at manros.com>, don at lexmark.com, "'Hastings, Tom N'" |
| <hastings at cp10.es.xerox.com>, "Ipp at Pwg. Org" <ipp at pwg.org> |
| Subject: RE: IPP> FW: Copyright statements in drafts |
>-----------------------------------------------------------------------------------------------------------------------|
At a recent non-PWG meeting, I listened to a discussion of IP. One part
of the discussion is perhaps relevant to recent discussions on this email
group.
Here is my recollection of it. A person cited an example of a Dell employee
attending a meeting where the employee checked a box on the attendance
sheet stating that he/she was not aware of any patents relevant to the
subject of the meeting. Dell later found that it had a relevant patent,
but was unable to enforce it because of the innocuous statement by the Dell
employee.
So, I wonder if the IETF statement could trigger such a problem for the
company whose employee makes the required IP claim.
Bob Herriot
At Monday 7/12/2004 08:03 PM, Harry Lewis wrote:
Doubt I'll have a problem (because I'm not aware of any related IP in
this case)... but, of course, need to check with lawyers. What is the
context and timeframe of the part that says I will disclose any
related IP I BECOME aware of. What.. in 20 years if I become aware I
have to disclose? Doesn't seem well enough defined. I would have to
assume the statement is limited to the timeframe in which the RFC is
being authored, edited, reviewed etc... not AFTER it has been issued.
----------------------------------------------
Harry Lewis
IBM STSM
Chairman - IEEE-ISTO Printer Working Group
http://www.pwg.org
IBM Printing Systems
http://www.ibm.com/printers
303-924-5337
----------------------------------------------
"McDonald, Ira" <imcdonald at sharplabs.com>
07/12/2004 02:54 PM
To
Harry Lewis/Boulder/IBM at IBMUS, don at lexmark.com, "'Hastings, Tom N'"
<hastings at cp10.es.xerox.com>
cc
"'carl at manros.com'" <carl at manros.com>, "McDonald, Ira"
<imcdonald at sharplabs.com>, "Ipp at Pwg. Org" <ipp at pwg.org>
Subject
RE: IPP> FW: Copyright statements in drafts
Hi Harry and Tom,
To take this out of the speculative realm, let's get specific.
In order to get out the final I-D version of IPP Admin Ops,
Tom Hastings (Xerox) and Harry Lewis and Carl Kugler
(both of IBM) are going to have to put their names and
their companies names to that exact statement (which
only has the "reasonably" qualification in the referenced
RFC 3668,but NOT in the actual statement).
Do you Harry plan to sign as co-editor of the new I-D
whose first sentence MUST be exactly
By submitting this Internet-Draft, I certify that any applicable
patent or other IPR claims of which I am aware have been disclosed,
or will be disclosed, and any of which I become aware will be
disclosed, in accordance with RFC 3668.
I will be pleasantly surprised if at least Xerox's lawyers
don't balk at this text.
Cheers,
- Ira
Ira McDonald (Musician / Software Architect)
Blue Roof Music / High North Inc
PO Box 221 Grand Marais, MI 49839
phone: +1-906-494-2434
email: imcdonald at sharplabs.com
-----Original Message-----
From: Harry Lewis [mailto:harryl at us.ibm.com]
Sent: Monday, July 12, 2004 12:59 PM
To: don at lexmark.com
Cc: 'carl at manros.com'; McDonald, Ira; Ipp at Pwg. Org
Subject: RE: IPP> FW: Copyright statements in drafts
If (as w/g participant) I "have been made aware... of... essential
claims..." then someone in the know must have made me aware. Would
seem more appropriate (and effective) for THEM to disclose, not me.
----------------------------------------------
Harry Lewis
IBM STSM
Chairman - IEEE-ISTO Printer Working Group
http://www.pwg.org
IBM Printing Systems
http://www.ibm.com/printers
303-924-5337
----------------------------------------------
don at lexmark.com
Sent by: owner-ipp at pwg.org
07/12/2004 09:59 AM
To
"McDonald, Ira" <imcdonald at sharplabs.com>
cc
"'carl at manros.com'" <carl at manros.com>, "McDonald, Ira"
<imcdonald at sharplabs.com>, "Ipp at Pwg. Org" <ipp at pwg.org>,
owner-ipp at pwg.org
Subject
RE: IPP> FW: Copyright statements in drafts
Ira:
The IEEE's policy is one of assurance rather than disclosure.
Disclosure
is informally encouraged.
The W3C; however, does have a policy mandating disclosure. It does
carefully walk this line by stating in clause 6.7:
"Disclosure of third party patents is only required where the
Advisory
Committee Representative or Working Group participant has been made
aware
that the third party patent holder or applicant has asserted that its
patent contains Essential Claims, unless such disclosure would breach
a
pre-existing nondisclosure obligation."
It is important to realize that in RFC3668, from which clause 6.1.3
it
says:
"If a person has information about IPR that may Cover IETF
Contributions,
but the participant is not required to disclose because they do not
meet
the criteria in Section 6.6 (e.g., the IPR is owned by some other
company),
such person is encouraged to notify the IETF by sending an email
message to
ietf-ipr at ietf.org. Such a notice should be sent as soon as
reasonably
possible after the person realizes the connection."
Notice the use of the word "may" in the first sentence. If you have
even
the faintest idea that a patent might be on material in an I-D you
should
disclose the existence of the patent but I don't read that section to
mean
that you are claiming its applicability. Also notice that disclosure
of
the IPR of others is encouraged and not required.
The statement mandated to be included is actually extracted from
RFC3667,
clause 5.1. Since it states "in accordance with RFC3668" and since
RFC3668
only encourages the disclosure of IPR belonging to others I'm not
sure what
the hang up is. There seems to be enough weasel words here that
unless you
intentionally obfuscating the patents on your submission you'd be OK
especially if they are owned by someone else and for whom you are not
an
agent or employee.
BTW: I am not a lawyer.
**********************************************
Don Wright don at lexmark.com
Chair, IEEE SA Standards Board
Member, IEEE-ISTO Board of Directors
f.wright at ieee.org / f.wright at computer.org
Director, Alliances & Standards
Lexmark International
740 New Circle Rd
Lexington, Ky 40550
859-825-4808 (phone) 603-963-8352 (fax)
**********************************************
|---------+---------------------------->
| | "McDonald, Ira" |
| | <imcdonald at sharpl|
| | abs.com> |
| | |
| | 07/12/2004 11:09 |
| | AM |
| | |
|---------+---------------------------->
>-----------------------------------------------------------------------------------------------------------------------|
|
|
| To: "'don at lexmark.com'" <don at lexmark.com>, "McDonald,
Ira" <imcdonald at sharplabs.com> |
| cc: "'carl at manros.com'" <carl at manros.com>, "McDonald,
Ira" <imcdonald at sharplabs.com>, "Ipp at Pwg. Org" |
| <ipp at pwg.org>, owner-ipp at pwg.org
|
| Subject: RE: IPP> FW: Copyright statements in drafts
|
>-----------------------------------------------------------------------------------------------------------------------|
Hi Don,
Disclosing someone else's patent worries me.
Disclosing that _in the judgment of that someone else_ this
patent has applicability to this spec is legally very dangerous.
Patent holders are typically very touchy about the timing of
making such judgments public.
Making document authors certify that they are not aware
of any relevant patent (belonging to other parties) is
_not_ consistent with the IPR policies of W3C or IEEE
(as far as I know).
Cheers,
- Ira
Ira McDonald (Musician / Software Architect)
Blue Roof Music / High North Inc
PO Box 221 Grand Marais, MI 49839
phone: +1-906-494-2434
email: imcdonald at sharplabs.com
-----Original Message-----
From: don at lexmark.com [mailto:don at lexmark.com]
Sent: Monday, July 12, 2004 8:09 AM
To: McDonald, Ira
Cc: 'carl at manros.com'; McDonald, Ira; Ipp at Pwg. Org; owner-ipp at pwg.org
Subject: RE: IPP> FW: Copyright statements in drafts
Ira:
Yes you would be required to disclose the patent held by someone else
that
you were told about; however, it is not your responsibility to assess
whether the patent is applicable. Today, virtually all standards
organization's patent policies (IEEE, W3C, ISO, etc.) either
encourage or
mandate the submitter to disclose any patents which might be
applicable to
the submission whether held by you, your employer or someone else IF
you
actually know about it.
I don't understand the problem. Why should you worry about
disclosing
someone else's patent... it's public information anyway.
**********************************************
Don Wright don at lexmark.com
Chair, IEEE SA Standards Board
Member, IEEE-ISTO Board of Directors
f.wright at ieee.org / f.wright at computer.org
Director, Alliances & Standards
Lexmark International
740 New Circle Rd
Lexington, Ky 40550
859-825-4808 (phone) 603-963-8352 (fax)
**********************************************
|---------+---------------------------->
| | "McDonald, Ira" |
| | <imcdonald at sharpl|
| | abs.com> |
| | |
| | 07/11/2004 03:10 |
| | PM |
| | |
|---------+---------------------------->
>---------------------------------------------------------------------------
--------------------------------------------|
|
|
| To: "'don at lexmark.com'" <don at lexmark.com>, "McDonald,
Ira"
<imcdonald at sharplabs.com> |
| cc: "'carl at manros.com'" <carl at manros.com>, "Ipp at Pwg.
Org"
<ipp at pwg.org>, owner-ipp at pwg.org |
| Subject: RE: IPP> FW: Copyright statements in drafts
|
>---------------------------------------------------------------------------
--------------------------------------------|
Hi Don,
My very point: "or someone has told you about it". The reference
to RFC 3668 has no protection benefits at all. In law, the
direct text is everything.
If a collaborator on a public standard (from another vendor)
tells me out of courtesy about a probably applicable patent
(only lawyers really know about applicability), then this
I-D boilerplate requires _me_ to disclose _their_ patent.
Not even close to acceptable.
Cheers,
- Ira
Ira McDonald (Musician / Software Architect)
Blue Roof Music / High North Inc
PO Box 221 Grand Marais, MI 49839
phone: +1-906-494-2434
email: imcdonald at sharplabs.com
-----Original Message-----
From: don at lexmark.com [mailto:don at lexmark.com]
Sent: Sunday, July 11, 2004 2:16 PM
To: McDonald, Ira
Cc: 'carl at manros.com'; Ipp at Pwg. Org; owner-ipp at pwg.org
Subject: RE: IPP> FW: Copyright statements in drafts
It seems to me saying "of which I am aware" and then "in accordance
with
RFC 3668" in the I-D would explicitly qualify awareness to be
"reasonably
and personally known to the submitter."
If you don't know about it then it can't be held against you. How
could
you reasonably and personally be aware of a patent held by someone
else
unless you spend your days trolling the various countries patent
databases
or someone has told you about it?
*******************************************
Don Wright don at lexmark.com
Chair, IEEE SA Standards Board
Member, IEEE-ISTO Board of Directors
f.wright at ieee.org / f.wright at computer.org
Director, Alliances and Standards
Lexmark International
740 New Circle Rd C14/082-3
Lexington, Ky 40550
859-825-4808 (phone) 603-963-8352 (fax)
*******************************************
"McDonald, Ira" <imcdonald at sharplabs.com>
Sent by: owner-ipp at pwg.org
07/10/2004 12:57 PM
To: "'carl at manros.com'" <carl at manros.com>, "Ipp at Pwg. Org"
<ipp at pwg.org>
cc:
Subject: RE: IPP> FW: Copyright statements in drafts
Hi,
Harald Alvestrand replied to Carl-Uno Manros (see below):
We do - which is why the phrase "reasonably and personally known to
the submitter" in RFC 3667 / 3668 is so important.
But "reasonably and personally" is NOT part of the IPR statement
required at the beginning of every submitted I-D (without which
the I-D Editor will no longer publish any I-D).
Here's the relevant verbatim quote from "1id-guidelines.txt":
All Internet-Drafts must begin with the following intellectual
property rights (IPR) statement:
"By submitting this Internet-Draft, I certify that any applicable
patent or other IPR claims of which I am aware have been disclosed,
or
will be disclosed, and any of which I become aware will be disclosed,
in accordance with RFC 3668."
Personally, I'm not writing any more I-Ds. Because there's not any
limitation in this IPR boilerplate about patents or IPR of _other_
parties that the editor may be or become aware of.
Cheers,
- Ira
Ira McDonald (Musician / Software Architect)
Blue Roof Music / High North Inc
PO Box 221 Grand Marais, MI 49839
phone: +1-906-494-2434
email: imcdonald at sharplabs.com
-----Original Message-----
From: owner-ipp at pwg.org [mailto:owner-ipp at pwg.org]On Behalf Of
carl at manros.com
Sent: Saturday, July 10, 2004 3:22 AM
To: Ipp at Pwg. Org
Subject: IPP> FW: Copyright statements in drafts
All,
Regarding some of the new required text in Internet Drafts.
This has been discussed for a while on the IETF Chairs list.
I raised a similar qustion to the one brougth up by Ira.
See my question and the official answer from the IETF Chair Harald
Alvestrand below.
Carl-Uno
Carl-Uno Manros
700 Carnegie Street #3724
Henderson, NV 89052, USA
Tel +1-702-617-9414
Fax +1-702-617-9417
Mob +1-702-525-0727
Email carl at manros.com
Web www.manros.com
-----Original Message-----
From: Harald Tveit Alvestrand [mailto:harald at alvestrand.no]
Sent: Sunday, June 06, 2004 10:02 AM
To: carl at manros.com; wgchairs at ietf.org
Subject: RE: Copyright statements in drafts
--On 3. juni 2004 15:49 -0700 carl at manros.com wrote:
> Hi,
>
> I am not sure whether I missed this in the discussion, but I can
see
some
> problems with Copyright statements in early drafts. There may well
be
> people or organizations which already hold patents or copyrights
for
> things that find their way into I-Ds. If they are not actively
involved
> in that particular WG, they may not discover any infringements
until the
> RFC is in IETF wide Last Call. Hopefully we provide for Copyright
> objections at that stage, even if there has been umpteen earlier
I-Ds on
> the subject.
We do - which is why the phrase "reasonably and personally known to
the
submitter" in RFC 3667 / 3668 is so important.
Harald