Subject: Fwd: IPR disclosure question

From: Pete Resnick <[email-masked]>
Date: Mon, 30 Apr 2012 09:12:16 -0700

Hi all,

I think we made this clear in the run-up to the new shepherding 
template, but I just got a question about it from a participant, so I 
thought I'd forward my answer to all of you just in case:

-------- Original Message --------
Date: 	Mon, 30 Apr 2012 09:04:50 -0700
From: 	Pete Resnick <[email-masked]>

[The person asked]

> [...] how to reply to a Chair when non-necessary IPR exists. I was 
> asked again how to answer the question of "Do you have any IPR?" when 
> you have an IPR which will not be necessarily infringed [...]

You can find the list of questions that a document shepherd (sometimes 
the chair, but sometimes a person assigned by the chair) is supposed to 
answer for the IESG: 
<http://www.ietf.org/iesg/template/doc-writeup.html> In there, it says:

"(7) Has each author confirmed that any and all appropriate IPR
disclosures required for full conformance with the provisions of BCP 78
and BCP 79 have already been filed."

When it says "any and all appropriate IPR disclosures required for full 
conformance with the provisions of BCP 78 and 79", according to BCP 79 
that means any IPR that "Covers or may ultimately Cover" the document, 
where "Covers" is defined as:

       ...a valid claim of a patent or a
       patent application in any jurisdiction or a protected claim, or
       any other Intellectual Property Right, would necessarily be
       infringed by the exercise of a right (e.g., making, using,
       selling, importing, distribution, copying, etc.) with respect to
       an Implementing Technology.

So I think you are only required to declare IPR that would necessarily 
be infringed by the implementation of the document.

If a chair or document shepherd asks the question in an imprecise way, 
the participant should mention the above discussion to the chair and 
perhaps the AD, but simply answering, "I have disclosed all appropriate 
IPR as per BCP 78 and 79" is good enough. I agree that trying to answer 
the question "Do you have any IPR related to this document?" is 
problematic and we should remind chairs and shepherds that all we are 
asking for is disclosures that need to be made under BCP 78 and 79.

I hope that helps.

pr

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

---

From: Dave Crocker <[email-masked]>
Date: Mon, 30 Apr 2012 09:22:58 -0700

> where "Covers" is defined as:
...
>        ...with respect to

There is an unfortunate ambiguity or potentially larger scope in the 
wording "implementation".  It has two different technical meanings. One 
is for development and the other is for operations.

One is the instantiation of the technology, such as by software 
programming.  The other is deployment of the technology, as in 
operational use.  They really are distinct meanings in our profession.

Indeed it is possible to have a patent that is not infringed on by the 
creation of the software, but is instead infringed on by the /use/ of 
the software.

We should clarify exactly what scope the IPR declaration requirements 
cover and we should modify the existing language to avoid the potential 
for misunderstanding.

d/
-- 
  Dave Crocker
  Brandenburg InternetWorking
  bbiw.net

---

From: Peter Saint-Andre <[email-masked]>
Date: Mon, 30 Apr 2012 09:26:33 -0700

> operational use.  They really are distinct meanings in our profession.

FWIW, I always use "implementation" for the first and "deployment" for
the second...

Peter

-- 
Peter Saint-Andre
https://stpeter.im/

---

From: Dave Crocker <[email-masked]>
Date: Mon, 30 Apr 2012 09:33:02 -0700

> FWIW, I always use "implementation" for the first and "deployment" for

Me too, but neither of us is primarily an operations person.   In the 
world of operations, implementation is used to mean deployment...

At this point, I try to say "develop" and "deploy" since they seem to be 
unambiguous both to the development and the operations community.

d/

---

From: "Joel M. Halpern" <[email-masked]>
Date: Mon, 30 Apr 2012 12:42:07 -0400

I would also note that "necessary" is fuzzy.
I have seen lawyers argue that the other sides patent is "necessary" 
precisely so they could then say "and not disclosed, you violated the 
rules..."

Yours,
Joel

---

From: Barry Leiba <[email-masked]>
Date: Mon, 30 Apr 2012 12:50:55 -0400

> I would also note that "necessary" is fuzzy.

The IETF counsel can obviously speak for himself, but the outcome of
my conversations with him have led me to understand that the phrase
requires disclosure only when the document in question cannot be
implemented without infringing.

Thus, if a patent is about doing X, and the document provides the
option of doing X or Y, the "necessarily" condition is NOT met.

Barry

---

From: Dave Thaler <[email-masked]>
Date: Mon, 30 Apr 2012 16:54:42 +0000

> -----Original Message-----
> From: [email-masked] [mailto:[email-masked]] On
> Behalf Of Barry Leiba
> Sent: Monday, April 30, 2012 9:51 AM
> To: Joel M. Halpern
> Cc: WG Chairs
> Subject: Re: Fwd: IPR disclosure question
> 
> The IETF counsel can obviously speak for himself, but the outcome of my
> conversations with him have led me to understand that the phrase requires
> disclosure only when the document in question cannot be implemented
> without infringing.
> 
> Thus, if a patent is about doing X, and the document provides the option of
> doing X or Y, the "necessarily" condition is NOT met.
> 
> Barry

"Cannot be implemented" is not boolean.   There are often many SHOULDs
and MAYs that are not mandatory-to-implement, but for which some patent
may be relevant.

-Dave

---

From: "Joel M. Halpern" <[email-masked]>
Date: Mon, 30 Apr 2012 13:00:09 -0400

There are some clear cases, but if you have not watched the lawyers play 
these games you would be amazed how muddied they can make it.  I think 
that in terms of "rules" things are written right.  It is just that 
folks trying to decide whether to disclose should be aware that reality 
is often much messier than theory.
Just my personal take, from working with these folks in past lives.

Yours,
Joel

---

From: Paul Hoffman <[email-masked]>
Date: Mon, 30 Apr 2012 10:35:49 -0700

> I would also note that "necessary" is fuzzy.

+l/Like

Having said that, it's the best we can do and the WG chair can in good faith say "I guessed as best I can".

--Paul Hoffman

---

From: Pete Resnick <[email-masked]>
Date: Mon, 30 Apr 2012 10:48:00 -0700

> Having said that, it's the best we can do and the WG chair can in good faith say "I guessed as best I can".

Just to be clear, the chair does not have to do any guessing here, in 
that the chair never has to do any of the calculation of whether 
something is "necessarily infringing". That's up to the person who has 
or knows about the IPR. And though it's annoying to us IETFers if that 
person doesn't disclose because they guessed wrong, it's the person who 
has the IPR who gets into legal hot water if they guess wrong and don't 
disclose. Chairs only have to ask, "Did you do everything that 3979 says 
you need to do?" Then the chair can in good faith say, "I asked; they 
said 'Yup.'"

pr