Subject: Re: [Geopriv] Fwd: IPR Disclosure: Qualcomm Incorporated's Statement about IPR related to RFC 4119

From: "James M. Polk" <[email-masked]>
Date: Thu, 02 Jun 2011 12:46:34 -0500

Regardless of the impact, what's this with Qualcomm bringing this IPR 
declaration 6 years after the document became an RFC *WHILE* being 
the WG chair of this group at the time of _every_ version of this 
draft and while the RFC was being published?

I believe there were also Qualcomm (employed) contributing members of 
this WG through the lifecycle of the draft during its creation and 
editing as well.

I believe Qualcomm employed the responsible AD for this WG too at this time.

this has me scratching my head wrt the very existence of the NOTE 
WELL everybody is supposed to live within the IETF.

James

BTW - I don't know if this is exactly like the ALU case Russ just 
posted about, but it's pretty darn close, and should seriously be looked at.

At 12:34 PM 5/24/2011, Richard L. Barnes wrote:
><hat type="individual"/>
>
>For your convenience, the referenced patent is titled "Reducing 
>satellite signal interference in a global positioning system receiver"
><http://www.google.com/patents?id=YqsIAAAAEBAJ>
>
>As far as I can tell, this has basically no relationship to the data 
>format defined in RFC 4119.  Even if the geolocation fields in a 
>PIDF-LO document were filled from an infringing GPS receiver, it 
>would be the receiver that caused the infringement, not the PIDF-LO encoding.
>
>--Richard
>
>
>
>Begin forwarded message:
>
> > From: IETF Secretariat <[email-masked]>
> > Date: May 24, 2011 1:21:11 PM EDT
> > To: [email-masked]
> > Cc: [email-masked], [email-masked], 
> [email-masked], [email-masked], [email-masked], 
> [email-masked], [email-masked]
> > Subject: IPR Disclosure: Qualcomm Incorporated's Statement about 
> IPR related to RFC 4119
> >
> > Dear Jon Peterson:
> >
> > An IPR disclosure that pertains to your RFC entitled "A 
> Presence-based GEOPRIV
> > Location Object Format" (RFC4119) was submitted to the IETF Secretariat on
> > 2011-05-24 and has been posted on the "IETF Page of Intellectual 
> Property Rights
> > Disclosures" (https://datatracker.ietf.org/ipr/1560/). The title of the IPR
> > disclosure is "Qualcomm Incorporated's Statement about IPR 
> related to RFC 4119."
> >
> > The IETF Secretariat
> >
> >
>
>_______________________________________________
>Geopriv mailing list
>[email-masked]
>https://www.ietf.org/mailman/listinfo/geopriv

---

From: Alan Clark <[email-masked]>
Date: Thu, 2 Jun 2011 14:06:50 -0400

Independently from anything the IETF may choose to do (or not), the US
Federal Trade Commission (www.ftc.gov) sometimes gets involved in matters
relating to US companies failing to disclose intellectual property related
to standards activities in which they participate.  There have been a number
of cases in which the FTC have penalized the patent holder where it could be
clearly shown the that patent holder participated in the development of a
standard and failed to disclose the existence of patent rights related to
the standard.

Alan

---

From: Pete Resnick <[email-masked]>
Date: Wed, 15 Jun 2011 15:46:45 -0500

[Resending, Cc'ing chairs]

Folks,

I'm discussing this with people inside of Qualcomm, and I expect we'll 
get an official answer soon. But I did want to let you know at this 
point that as far as I can tell, none of the Qualcomm people who were 
involved in geopriv were aware of the existence this patent before it 
was publicly disclosed to the IETF (nor was I), and I believe the 
disclosure was made as soon as reasonably possible after it was thought 
that the patent might have had anything to do with RFC 4119 (which is 
what anyone with IPR is supposed to do). But again, I'm expecting a more 
official answer soon.

pr

-- 
Pete Resnick<http://www.qualcomm.com/~presnick/>
Qualcomm Incorporated - Direct phone: (858)651-4478, Fax: (858)651-1102

---

From: Alan Clark <[email-masked]>
Date: Wed, 15 Jun 2011 17:07:13 -0400

Pete

Many large companies have substantial patent portfolios and could avoid the
disclosure requirements of standards organizations if they could claim that
the participants in standards activities were not personally aware of
patents that may affect standards under development.  IMHO if this were
allowed to happen then patent disclosure requirements become completely
ineffective.

In my opinion - any company participating in any standards activity should
either:

(i) Establish an internal process by which they monitor the standards
activities in which they participate and constantly review their patent
database for potential applicability (relatively easy given that everything
is electronic).  If they find a matching patent or application related to an
in-process standards activity they should disclose it and state the
applicable licensing terms - if the standards activity has already completed
then they should waive their right to enforce the patent with reference to
the standard.

(ii) Make a blanket statement to the standards body that they were willing
to make licenses available royalty-free with the condition of reciprocity.
This avoids the need to track anything and preserves some ability to use
patents defensively.

Alan

---

From: John C Klensin <[email-masked]>
Date: Wed, 15 Jun 2011 19:58:40 -0400

Alan,

I'm not defending Qualcomm - I don't know the facts of this
matter and have no opinion on whether I would defend them if I
did.  However... (inline below)....

--On Wednesday, June 15, 2011 17:07 -0400 Alan Clark
<[email-masked]> wrote:

> Pete
> 
> Many large companies have substantial patent portfolios and
> could avoid the disclosure requirements of standards
> organizations if they could claim that the participants in
> standards activities were not personally aware of patents that
> may affect standards under development.  IMHO if this were
> allowed to happen then patent disclosure requirements become
> completely ineffective.
>...

Some others have done exactly that before.  The rule that you
prefer is certainly a possible one (but see below).  However,
the IETF's various IPR WGs considered the issue very carefully
and arrived at the "personal knowledge" requirement, so, in
commenting about personal knowledge, Pete is merely reflecting
the way our rules are written.

IANAL, but I understand that there is some case law in which
judges have taken a dim view of companies organizing themselves
in ways that seem to have the sole purposes of evading the
requirements of SDOs or of surfacing submarine patents at times
that give them unreasonable or unfair advantages.
 
> In my opinion - any company participating in any standards
> activity should either:
> 
> (i) Establish an internal process by which they monitor the
> standards activities in which they participate and constantly
> review their patent database for potential applicability
> (relatively easy given that everything is electronic).  If
> they find a matching patent or application related to an
> in-process standards activity they should disclose it and
> state the applicable licensing terms - if the standards
> activity has already completed then they should waive their
> right to enforce the patent with reference to the standard.
 
> (ii) Make a blanket statement to the standards body that they
> were willing to make licenses available royalty-free with the
> condition of reciprocity. This avoids the need to track
> anything and preserves some ability to use patents defensively.

Unfortunately, there is a third possibility, one that companies
take when they perceive the requirements of a particular SDO or
consortium are too expensive or otherwise burdensome: they drop
out and prohibit their employees and others over whom they have
control from participating.   While I think many of us would
prefer one of the two choices you outline, the possibility of
the third should continue to make us cautious about too-sweeping
rules.

     john

---

From: Alan Clark <[email-masked]>
Date: Thu, 16 Jun 2011 08:29:15 -0400

John

Unfortunately - the "loose policy" approach introduces a strong bias against
small technology companies, and this has impacted my company on a number of
occasions in both IETF and ITU.  We have been directly told by WG chairs in
both IETF WG's and ITU Rapporteur's Groups that if we had any IPR associated
with our proposals then they would not be accepted for inclusion in a
standard.

An example of this was ITU-T SG12 in respect of G.107.  We made a technical
contribution and did disclose at the time that we had IPR - we were told "we
want to keep this standard IPR free - proposal rejected"; Lucent (now ALU)
made a similar technical contribution in a similar timeframe to the same
committee to address the same issue and did not disclose that they had
related IPR, until a year after the updated standard was published.  Our
technology is the most widely used in the industry and has been proven to
work well (by both independent subjective testing and field experience), so
the selection of algorithm was not a matter of technical merit but was
directly a result of a loose application of ITU patent policy.

Whilst I can agree that it is desirable for IETF to continue to attract
technical experts, it does not seem reasonable if IETF patent disclosure
policy permits large companies to make technical contributions without
disclosing related IPR in a timely manner but forces small-mid sized
technology companies to make early disclosure (and in our experience - to
make contributions that do NOT have associated IPR).

Alan

---

From: Paul Hoffman <[email-masked]>
Date: Thu, 16 Jun 2011 08:27:47 -0700

Is the WG chairs mailing list really the best place to recycle/rehash the discussion of the IETF's IPR policy? I would think that [email-masked] would be a more useful forum.

--Paul Hoffman

---

From: Ted Hardie <[email-masked]>
Date: Thu, 16 Jun 2011 21:33:33 -0700

>
> We also reached out to Ted Hardie, who was Applications Area Director and
> who no longer works at Qualcomm, and confirmed that he also knew nothing
> about the particular patent.  Ted also did not work in the subsidiary that
> owned the patent, and in any event the patent was developed years before Ted
> joined Qualcomm.
>

Just so that this statement is not made only at third hand, I confirm that I
was not aware of this patent during the time I was AD, nor during my other
participation in Geopriv.

best regards,

Ted Hardie