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

From: Yakov Rekhter <[email-masked]>
Date: Thu, 5 Mar 2009 07:47:35 -0800

Folks,

Due to some "glitches" Ross was not able to post the following
to the IDR mailing list, so I am re-posting it on his behalf.

Yakov.
------------------------------------------------------------------
 
From: Ross Callon <[email-masked]>
To: <[email-masked]>, "Thomas Narten" <[email-masked]>
CC: "David Ward" <[email-masked]>, "Ross Callon" <[email-masked]>
Date: Tue, 3 Mar 2009 13:55:07 -0500
Subject: RE: [Idr] IPR related to the flow-spec I-D
 
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

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: John Leslie <[email-masked]>
Date: Thu, 5 Mar 2009 11:26:46 -0500

>> 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

   (It is a significant annoyance to those of us without "free" access to
patent applications not published by the US patent office to be left
guessing what IPR claims may be being disclosed.)

> group, and are not authors of the flow spec document.

   I am certainly happy to take Ross's word for this -- but additional
possible (unknown) IPR claims still leave me wondering...

> 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).

   Indeed -- I hope nobody is asking to add such a requirement.

> connection are contributors to the document in question.

   That is the way I read it, also.

   As far as the additional patent applications being listed, I fear
we have to accept this: the requirement of "contributors" to disclose
IPR claims they become aware of is unambiguous, while their ability
to disclose the particulars of those claims is often severely limited
by company policy.

   In this particular case, we're faced with a late disclosure (the
December one, not the revision), and serious reason to believe that
a "contributor" was aware of IPR claims but trusted Juniper lawyers to
handle the disclosure. Lawyers habitually put things off as long as
possible; and that's the behavior we'd like to change.

   We have two "sticks" we might apply:

1) asking for actual "royalty-free" terms, not Mutually-Assured-
   Destruction terms, based upon either the late filing or the
   vagueness of the claims disclosed;

2) refusing to proceed until the actual claims in all disclosed patent
   applications are available to all WG participants.

   Under the circumstances, I think either of these would be reasonable;
though I could probably live with an assurance that the Juniper lawyers
are willing to change their ways and that Juniper "contributors" will
not in the future tolerate lenghty delays by Juniper lawyers.

--
John Leslie <[email-masked]>

---

From: Ross Callon <[email-masked]>
Date: Thu, 5 Mar 2009 17:55:31 -0500

> ...   Under the circumstances, I think either of these would be 
> reasonable; though I could probably live with an assurance that
> the Juniper lawyers are willing to change their ways and that
> Juniper "contributors" will not in the future tolerate lengthy
> delays by Juniper lawyers.
>

Ron Bonica, Tom Walsh and I have most certainly "educated" our lawyers
in very strong terms. Tom is also working to make sure that Juniper
employees involved in the IETF are reminded that they can't tolerate
long delays by the lawyers and have an individual responsibility to make
sure that any IPR that they know about is disclosed in a timely fashion.

In addition, the IESG is planning on stating the same thing publicly
(for all contributors from any company), both via email (as soon as we
can agree on precisely what to say) and quite likely at the plenary in
San Francisco. Also, I will make a very short statement at the routing
area open meeting reminding people that they have an individual
responsibility to disclose IPR in a timely fashion (a small single digit
number of weeks, definitely not years). 

Ross

---

From: Thomas Narten <[email-masked]>
Date: Thu, 19 Mar 2009 12:51:59 -0400

> guessing what IPR claims may be being disclosed.)

My understanding is that all patent applications that are public are
findable via the free http://patft.uspto.gov/ web site. However,
anyone applying for a patent may request that it remain private until
it is issued. My assumption is that that is the situation we are in
here, since I have not been able to access any of the applications
either.

> possible (unknown) IPR claims still leave me wondering...

There is always the possibility (some would say likelyhood) of
additional, unknown patents covering any given IETF document. Not much
we can do about the unknown.

>    Indeed -- I hope nobody is asking to add such a requirement.

The IPR WG (when it discussed this in the past) understood this
reality very well. Hence, the disclosure  rules apply to
"contributers" to an effort. If you aren't participating in an effort,
you don't have to worry about making disclosures.

> to disclose the particulars of those claims is often severely limited

Right. Like it or not, this is reality. Many companies consider patent
applications "confidential". This is one reason why the IPR rules
don't *require* that patent applications be made available to WGs. 

> possible; and that's the behavior we'd like to change.

Sorry, while it may be somewhat true, I don't agree with the
implication. It is the contributor's responsibility to make
disclosures. If they have to go through their own lawyers first (which
I would strongly advise!), they need to keep pushing on them to come
to closure.

>    Under the circumstances, I think either of these would be
> reasonable; though I could probably live with an assurance that the
> Juniper lawyers are willing to change their ways and that Juniper
> "contributors" will not in the future tolerate lenghty delays by
> Juniper lawyers.

Without taking a particular stance on how the WG should proceed, I do
think it is worth noting that the WG has a number of options on what
to do. Many may not be particularly attractive, or may not be
particularly realistic.

Some options:

1) do nothing. I.e., forward the document on Standards Track to the
   IESG anyway,

   Actually, this isn't "doing nothing", this needs to be "the WG has
   considered the IPR disclosures, but believes that publishing this
   document on standards track still is the best thing to do, all
   things considered". 

2) publish as info/experimental rather than on standards track. 

3) Table the document, and try to extract more attractive licensing
   terms from the IPR holder first. This approach could take a long
   time, and there are no assurances better terms could be
   obtained. Moreover, could the WG even agree on what would be
   acceptable terms? (The definition of what are "acceptable" terms
   tends to vary among different folk.)

4) Kill the document outright. I.e, to punish the IPR holders for
   failing to disclose. (And note, I'm talking specifically about the
   patent that should have been disclosed many years ago).

Or something else.

Overall, the WG needs to be realistic about what its options are and
then make a decision about how to proceed. The worst thing it could do
is simply not decide and leave the issue of what to do with the
document unresolved indefinitely...

Thomas

---

From: Scott Brim <[email-masked]>
Date: Thu, 19 Mar 2009 16:58:54 -0400

Excerpts from Thomas Narten on Thu, Mar 19, 2009 12:51:59PM -0400:
> >    In this particular case, we're faced with a late disclosure
> >    (the December one, not the revision), and serious reason to
> >    believe that a "contributor" was aware of IPR claims but
> >    trusted Juniper lawyers to handle the disclosure. Lawyers
> >    habitually put things off as long as possible; and that's the
> >    behavior we'd like to change.
> 
> disclosures. If they have to go through their own lawyers first
> (which I would strongly advise!), they need to keep pushing on them
> to come to closure.

and keep mum while it's happening.