Subject: Re: [Idr] IPR related to the flow-spec I-D

From: Thomas Narten <[email-masked]>
Date: Mon, 02 Mar 2009 11:40:24 -0600

Yakov Rekhter <[email-masked]> writes:

> I'd like to explain a bit of the confusion surrounding the IPR
> disclosure issue. On 12/23/2008 Juniper disclosed IPR on the flow-spec
> draft (https://datatracker.ietf.org/ipr/1052/), but it contained
> an incorrect "terms" section.

Actually, I believe there is slightly more to it than this. IIRC, the
December disclosure only listed a single patent application. The
revised one lists one patent (issued) plus 5 patent applications (no
information available AFAICT). So the disclosure has been expanded to
include significantly (?) more possible IPR compared with the original
disclosure.

Correct?

That said, the revised terms are IMO an improvement. Thanks.

> The disclosure was removed at Juniper's request and resubmitted on
> 02/09/2009 with the proper "terms" section. Unfortunately, Juniper's
> legal team released a number of IPR disclosures on or about
> 12/23/2008 and had to remove and correct all of them so, the sudden
> flurry of activity may have been worrying to some. You may have seen
> many corrected IPR disclosures on the IETF's IPR webpage
> (https://datatracker.ietf.org/ipr/about/) and more are to
> come. Juniper intended no harm or malice by these actions and
> Juniper is working to make certain that disclosures are made in a
> more timely manner.

Regardng timing. The flow-spec document lists 6 authors, four of them
with Juniper affiliations.

The flow spec document was originally submitted as
draft-marques-idr-flow-spec-00.txt back in June, 2003. Two of the
authors on that document listed Juniper affiliations at that time.

It seems surprising that the IPR that Juniper has just disclosed was
only "recently" filed. If so, it is likely that there is significant
prior art (since the document has been published and under discussion
for so long). On the other hand, if the IPR was filed quite some time
ago (i.e., when the work started), it raises the question of whether
one of the IETF's most basic IPR obligations as described in RFC 3979
has been followed:

   6.1.1.  A Contributor's IPR in his or her Contribution

   Any Contributor who reasonably and personally knows of IPR meeting
   the conditions of Section 6.6 which the Contributor believes Covers
   or may ultimately Cover his or her Contribution, or which the
   Contributor reasonably and personally knows his or her employer or
   sponsor may assert against Implementing Technologies based on such
   Contribution, must make a disclosure in accordance with this Section
   6.

...

   6.2.1.  Timing of Disclosure Under Section 6.1.1

   The IPR disclosure required pursuant to section 6.1.1 must be made as
   soon as reasonably possible after the Contribution is published in an
   Internet Draft unless the required disclosure is already on file.

...    

   If a Contributor first learns of IPR in its Contribution that meets
   the conditions of Section 6.6, for example a new patent application
   or the discovery of a relevant patent in a patent portfolio, after
   the Contribution is published in an Internet-Draft, a disclosure must
   be made as soon as reasonably possible after the IPR becomes
   reasonably and personally known to the Contributor.

Can the Contributers to this document please clarify the history and
their role in it better w.r.t the IPR disclosures? I'm particularly
concerned about the timing of the filing of the IPR and its subsequent
disclosure. It seems rather odd that an ID that has been under
discussion within the IETF for some 5 1/2 years would be subject of an
IPR disclosure at such a late date (only after IETF LC starts) in the
process.

For example, do any of the patent applications list any of the
document authors as inventors (and if so when was the application
filed)? Or is this a case where the IETF contributers weren't involved
in the patent application and wouldn't "reasonably" have been expected
to known about it, i.e., as covered by the following in 3979:

   l. "Reasonably and personally known": means something an individual
      knows personally or, because of the job the individual holds,
      would reasonably be expected to know.  This wording is used to
      indicate that an organization cannot purposely keep an individual
      in the dark about patents or patent applications just to avoid the
      disclosure requirement.  But this requirement should not be
      interpreted as requiring the IETF Contributor or participant (or
      his or her represented organization, if any) to perform a patent
      search to find applicable IPR.

It would be most helpful if all the contributers associated with the
patent applications clarified their role to the WG, as was recently
done in the case of draft-ietf-tcpm-tcp-auth-opt-03 in the TCPM
WG. TCPM is also grappling with a disclosure made late in the process
and the patent author in that case graciously published the patent
application to help the WG in its deliberations on how to proceed.

Thomas

---

From: Danny McPherson <[email-masked]>
Date: Mon, 2 Mar 2009 19:26:31 -0700

> IPR disclosure at such a late date (only after IETF LC starts) in the

I had no knowledge of IPR regarding flow-spec until
the disclosure was filed with the IETF.  Nor did Jared,
I believe.

-danny

---

From: Robert Raszuk <[email-masked]>
Date: Tue, 03 Mar 2009 01:37:16 -0800

Hi Thomas,

Since the original draft's publication date June 2003 (well even earlier 
as I started to discuss this idea with Pedro Marques around beg of 2003 
if not earlier) I was fully aware about Juniper's authors filing the 
patent application for this work. There was no mystery of any sort made 
reg this filing.

That was and still is the common industry practice in any vendor for any 
novel work which is going to be publicly presented. AFAIK you can safely 
assume that vast majority of IETF drafts have patents filed behind. The 
fact that some lawyers did not disclosed it on time is regrettable, but 
should not be a point of any discussion in IDR WG.

As I recommended already before if such disclosures are so important 
IETF should add a mandatory section of any draft template or mandatory 
field on the draft submission page to list them or explicitly state 
"none". Having the draft publishing and IPR disclosures submission 
taking totally independent paths as it is today is just a clear receipt 
for more cases like this one to happen.

Header of the original authors/co-authors:

Network Working Group                                      Pedro Marques
INTERNET DRAFT                                             Nischal Sheth
Expiration Date: December 2003                     Juniper Networks, Inc
                                                            Robert Raszuk
                                                       Cisco Systems, Inc
                                                              Jared Mauch
                                                                NTT/Verio
                                                          Danny McPherson
                                                           Arbor Networks
                                                                June 2003
Cheers,
R.

> _______________________________________________
> Idr mailing list
> [email-masked]
> https://www.ietf.org/mailman/listinfo/idr
> 
>

---

From: Thomas Narten <[email-masked]>
Date: Tue, 03 Mar 2009 18:09:44 -0600

Robert,

> patent application for this work. There was no mystery of any sort made 

Hmm. Why did you not then file a 3rd party IPR disclosure? 

> should not be a point of any discussion in IDR WG.

The obligation is not on lawyers to disclose, it is on IETF
_participants_ (called "Contributers in RFC 3979). This is absolutely
clear in RFC 3979. 

> "none".

You may want to consult with a lawyer. There is boilerplate text
included in all IDs that says you understand the IETF rules (including
those w.r.t IPR). I.e., submitting an ID with the following text:

   This Internet-Draft is submitted to IETF in full conformance with the
   provisions of BCP 78 and BCP 79.

has real legal implications. Ignorence is no excuse and all that.

Same goes for "NOTE WELL" text that you have to acknowledge on a
regular basis.

> Having the draft publishing and IPR disclosures submission taking
> totally independent paths as it is today is just a clear receipt for
> more cases like this one to happen.

Sorry, I don't buy this. The IETF has had many discussions over many
years about how to ensure that participants know their obligations
w.r.t. IPR. The processes/rules we have adopted are designed to
protect the IETF and _all_ of its participants. The IETF has even
received legal advice on how to construct its rules and to adequately
notify participants of their obligations. IETF participants are
obligated to follow the rules. If they chose not to, they expose
themselves (and their employers) to potential legal risk. For example,
they may find that by not disclosing, they are later unable to enforce
the patents they have obtained.  Consult your own lawyer please if you
disagree. The IETF IPR rules were designed to protect the IETF process
and they were designed with such scenarios as participants acting in
"bad faith" when it comes to disclosing IPR.

Thomas

---

From: Robert Raszuk <[email-masked]>
Date: Tue, 03 Mar 2009 16:28:49 -0800

Hi Thomas,

> _participants_ (called "Contributers in RFC 3979). This is absolutely

RFC3979 date is 2005. For this particular draft we are talking about 
draft preparation which tool place in 2002/2003.

> protect the IETF and _all_ of its participants. 

I was not trying to say that adopted processes/rules are bad. I was just 
gently trying to suggest how to make it more effective in practice.

Cheers,
R.

---

From: John Leslie <[email-masked]>
Date: Tue, 3 Mar 2009 21:36:04 -0500

Robert Raszuk <[email-masked]> wrote:
> Thomas Narten <[email-masked]> wrote:
>> Robert Raszuk <[email-masked]> wrote:
>> 
>>> That was and still is the common industry practice in any vendor for
>>> any novel work which is going to be publicly presented. AFAIK you
>>> can safely assume that vast majority of IETF drafts have patents
>>> filed behind.

   The numbers don't support this. Counting just RFCs, there are
substantially more RFCs than disclosures; and there are _far_ more
I-Ds than RFCs.

   (Though the IDR WG _may_ have a different balance...)

>>> The fact that some lawyers did not disclosed it on time is
>>> regrettable, but should not be a point of any discussion in IDR WG.

   Alas, this is exactly where it _should_ be discussed. (And I think
you'll find the discussion here more friendly than most of the other
options.)

>> _participants_ (called "Contributers in RFC 3979). This is absolutely

   Note particularly Section 7:
] 
] There are cases where individuals are not permitted by their
] employers or by other factors to disclose the existence or substance
] of patent applications or other IPR.  Since disclosure is required
] for anyone submitting documents or participating in IETF discussions,
] a person who does not disclose IPR for this reason, or any other
] reason, must not contribute to or participate in IETF activities with
] respect to technologies that he or she reasonably and personally
] knows to be Covered by IPR which he or she will not disclose.
] Contributing to or participating in IETF discussions about a
] technology without making required IPR disclosures is a violation of
] IETF process.

> draft preparation which tool place in 2002/2003.

   Actually, the appropriate language for 2003 gave you even less
wiggle room. RFC3979 allws you:
] 
] The IPR disclosure... must be made as soon as reasonably possible
] after the Contribution is published in an Internet Draft...

which your lawyers will perhaps happily stretch to five years. (I
wouldn't suggest pushing it quite that far in this WG, though.)

   Frankly, I doubt even your lawyers would seriously argue that
Section 7 of RFC3979 didn't apply to your participation after 3979
was published just because an initial I-D was published before then.

   (YMMV, I suppose...)

--
John Leslie <[email-masked]>

---

From: Thomas Narten <[email-masked]>
Date: Wed, 04 Mar 2009 14:51:35 -0600

> draft preparation which tool place in 2002/2003.

In 2002, the relevant IPR RFC would have been RFC 2026 (dated
1996). It says:

   6. The contributor represents that he has disclosed the existence of
      any proprietary or intellectual property rights in the
      contribution that are reasonably and personally known to the
      contributor.  The contributor does not represent that he
      personally knows of all potentially pertinent proprietary and
      intellectual property rights owned or claimed by the organization
      he represents (if any) or third parties.

The obligation to disclose IPR is hardly new and certainly applied to
the authors of the draft in question in 2002.

Thomas

---

From: Ross Callon <[email-masked]>
Date: Tue, 3 Mar 2009 13:55:07 -0500

I am not on the IDR email list, but Dave Ward forwarded Thomas' email to
me.

The additional applications in the more recent Juniper disclosure are
patents where the inventors have not been involved in the IDR working
group, and are not authors of the flow spec document. Therefore the
connection between the applications and the IDR document was not noticed
until very recently (there is no requirement that all IETF participants
pay attention to every document in every IETF working group just in case
they happen to have IPR on it).  In fact the disclosure was posted
approximately one week after the connection was noticed. 

The text that you refer to talks about "contributors". It is my
impression however that if someone notices IPR that applies to an IETF
document then they are supposed to disclose it when the connection is
discovered, even if neither the inventors nor the person noticing the
connection are contributors to the document in question. 

Ross

From: Thomas Narten <[email-masked]>

Date: March 2, 2009 11:40:24 AM CST

To: Yakov Rekhter <[email-masked]>

Cc: [email-masked]

Subject: Re: [Idr] IPR related to the flow-spec I-D

	disclosure issue. On 12/23/2008 Juniper disclosed IPR on the
flow-spec

Correct?

	02/09/2009 with the proper "terms" section. Unfortunately,
Juniper's

	12/23/2008 and had to remove and correct all of them so, the
sudden

	flurry of activity may have been worrying to some. You may have
seen

	Juniper is working to make certain that disclosures are made in
a

	more timely manner.

...

...    

Thomas

---

From: Thomas Narten <[email-masked]>
Date: Thu, 19 Mar 2009 12:05:06 -0400

[playing catchup now...]

Ross,

> approximately one week after the connection was noticed.

Thanks for this. To be clear, the above is 100% consistent with IETF
IPR rules.  Folks who hold IPR but are not participating in a
particular effort are not expected or required to make
disclosures. Again, disclosures are needed when:

And "Contributer" specifically refers to folk that are participating
in the effort.

Thomas