IPP> FW: Copyright statements in drafts

IPP> FW: Copyright statements in drafts

IPP> FW: Copyright statements in drafts

don at lexmark.com don at lexmark.com
Wed Jul 21 08:36:14 EDT 2004


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






















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