Subject: [codec] Skype IPR disclosure

From: Stephan Wenger <[email-masked]>
Date: Tue, 23 Mar 2010 14:37:08 -0700

Folks,
The secretariat has just posted Skype¹s expected IPR disclosure related to
the SILK codec draft: https://datatracker.ietf.org/ipr/1297/.  Relative to
their previous statement ( https://datatracker.ietf.org/ipr/1164/), the
commercial terms have changed, and the new disclosure lists a number of
additional patent applications.  (The exercise of determining whether the
patent applications belong to the same patent family is left to the esteemed
reader.  Same goes for the interpretation of the commercial terms :-)
Regards,
Stephan

---

From: "Kevin P. Fleming" <[email-masked]>
Date: Tue, 23 Mar 2010 16:43:19 -0500

Stephan Wenger wrote:
> Folks,
> The secretariat has just posted Skype’s expected IPR disclosure related
> to the SILK codec draft: https://datatracker.ietf.org/ipr/1297/.
>  Relative to their previous statement (
> https://datatracker.ietf.org/ipr/1164/), the commercial terms have
> changed, and the new disclosure lists a number of additional patent
> applications.  (The exercise of determining whether the patent
> applications belong to the same patent family is left to the esteemed

Well, the previous disclosure didn't actually include any commercial
licensing terms, so I'm not sure the term 'changed' is warranted :-) I
am glad to see that they've chosen the expected royalty-free
patent-non-assert licensing path.

-- 
Kevin P. Fleming
Digium, Inc. | Director of Software Technologies
445 Jan Davis Drive NW - Huntsville, AL 35806 - USA
skype: kpfleming | jabber: [email-masked]
Check us out at www.digium.com & www.asterisk.org

---

From: "Michael Ramalho (mramalho)" <[email-masked]>
Date: Wed, 24 Mar 2010 09:56:41 -0500

Huh #1? A change from <null> to <anything_non_null> is a "change".

Huh #2? Re: " I am glad to see that they've chosen the [codec WG?]
expected royalty-free patent-non-assert licensing path."

>From https://datatracker.ietf.org/ipr/1164/ I read: "Skype is currently
contemplating the licensing terms. It is the intention that there will
be a royalty free license option available to companies implementing the
standard."

I see no commitment/choice to royalty-free in this statement; I am
fairly sure that no lawyer would either.

Perhaps the statement was updated since the last time you read it?

Huh #3? Re: "commercial terms"

>From https://datatracker.ietf.org/ipr/1164/ I see no mention of any
commercial terms other than licensing intent (e.g., support costs,
indemnification, etc.).

Do you have information other than
https://datatracker.ietf.org/ipr/1164/ that you are basing these
comments on?

Michael Ramalho

-----Original Message-----
From: [email-masked] [mailto:[email-masked]] On Behalf
Of Kevin P. Fleming
Sent: Tuesday, March 23, 2010 5:43 PM
Cc: Codec WG
Subject: Re: [codec] Skype IPR disclosure

Stephan Wenger wrote:
> Folks,
> The secretariat has just posted Skype's expected IPR disclosure
related

-- 
Kevin P. Fleming
Digium, Inc. | Director of Software Technologies
445 Jan Davis Drive NW - Huntsville, AL 35806 - USA
skype: kpfleming | jabber: [email-masked]
Check us out at www.digium.com & www.asterisk.org
_______________________________________________
codec mailing list
[email-masked]
https://www.ietf.org/mailman/listinfo/codec

---

From: "Kevin P. Fleming" <[email-masked]>
Date: Wed, 24 Mar 2010 10:14:23 -0500

> https://datatracker.ietf.org/ipr/1164/ that you are basing these

The current version is:

https://datatracker.ietf.org/ipr/1297/

That was in the original message from Stephan Wenger and is what I was
responding to.

---

From: "Benjamin M. Schwartz" <[email-masked]>
Date: Wed, 24 Mar 2010 12:04:12 -0400

Kevin P. Fleming wrote:
> I

Their patent non-assert is so full of holes as to be of little use to me.
Two holes stand out:

"""
Skype retains the right to terminate any license grants and assert its
patents (including the right to claim past royalties) against any entity
... that brings any lawsuit against Skype or any of Skype’s affiliates
"""

So if I find out that Skype has been taunting my chihuahua, I can't sue
them.  If I sue them, they'll retroactively remove my right to use the
patents, and demand arbitrarily large royalties for practicing it.  This
clause is noxious and absurd.  As written, it would effectively render
Skype/Ebay immune to all litigation on any grounds once the IWAC is
well-established.

"""
Skype retains the right to assert its patents against any product or
portion thereof that is not necessary to comply with the standard
"""

This sentence, if it makes sense at all, would dramatically curtail
innovation around the IWAC.  Every program not "necessary to comply with
the standard" would require a separately negotiated patent license.  Got
an idea to tweak the codec for improved performance? Can't do it; you're
out of the standard.  Want to write an add-on to the reference encoder
that still complies with the standard?  Too bad: your add-on isn't
_necessary_ to comply with the standard, so Skype can get you for patent
infringement.

Skype doesn't need either of these clauses.  Personally, I doubt either is
enforceable, not that I'd stake my fate on it.  Both of them should be
removed from the grant in order to make the terms acceptable.

--Ben

---

From: stephen botzko <[email-masked]>
Date: Wed, 24 Mar 2010 14:04:40 -0700

I think it is unreasonable to require IPR holders to unconditionally promise
to not assert their patents under any and all circumstances.  You are much
more likely to get more limited royalty-free terms.  In my view these two
clauses from Skype are acceptable.

In practice the first clause does not immunize Skype from lawsuits.  Many
companies have similar "defensive suspension" clauses, and they still get
sued fairly regularly.  I agree that it might reduce the incidence of
lawsuits, and that it would act to offset any damages or settlement costs
that Skype might have to pay.  However, I do not see how this is a problem
for the IETF. Skype does have IPR on their codec, it seems reasonable to
allow them to use it defensively when someone sues them.

The second clause ensures that someone outside the IETF cannot take the
Skype technology, improve it, and offer a competitive proprietrary codec
that uses Skype IPR. If you modify the codec, you should be doing it in the
context of the IETF standard.  In your "add on" example, if you are breaking
interoperability with the standard, then it is a new codec, and it is
understandable why Skpye would not want you to do that without a license.

Steve Botzko

---

From: "Benjamin M. Schwartz" <[email-masked]>
Date: Wed, 24 Mar 2010 17:30:10 -0400

stephen botzko wrote:
> to not assert their patents under any and all circumstances. 

I am not asking for such an unconditional promise.  I am just noting some
restrictions that seem especially onerous to me.

> sued fairly regularly.  

There are different kinds of defensive suspension.  For example, the W3C
allows defensive suspension, but only for lawsuits on patent infringement:
"""
a W3C Royalty-Free license ... may be suspended with respect to any
licensee when licensor is sued by licensee for infringement of claims
essential to implement any W3C Recommendation ... [but] may not impose any
further conditions or restrictions
"""
(http://www.w3.org/Consortium/Patent-Policy-20030520#sec-Requirements)

That seems like a reasonable case for defensive suspension.  Skype's
wording, by contrast, is totally unreasonable, as it extends the defensive
suspension to _all_ lawsuits, no matter their object.  I expect most
companies to use the IWAC, and maybe even most humans eventually.  The
retroactive revocation means that these people can be deterred from suing
Skype/Ebay even after the patents have all expired.

It's absurd, not to mention legally questionable.

> context of the IETF standard.

And once the standard is made?  Skype could effectively block the IETF
from creating an improved version of its own codec, or any optional
extensions (they're not "necessary").  I don't think that's reasonable at all.

--Ben

---

From: Rob Glidden <[email-masked]>
Date: Wed, 24 Mar 2010 15:13:31 -0700

I would agree that the wording seems to go beyond a narrow non-assert
into business strategy, and this is furthered by potentially ambiguous
phrasings such as "royalty free, reasonable and non discriminatory
terms".  "RF" and "RAND" might overlap in some definitions, but they
are not the same.

Also I would note the two statements (1297 and 1164) appear to be
(only?) a single patent application for a method of estimating noise
levels with 3 independent claims.  As further progress is made, it
might be helpful to understand scope and prior art, and relationship to
an entire contribution, and the specific quantified value of the
novelty identified in the international search opinion of applying
opposite non-linear functions.

Though not reflected in the disclosure, the US application claims
priority to a Great Britain Application No. 0703275.8, filed Feb. 20,
2007.

http://appft1.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&p=1&u=%2Fnetahtml%2FPTO%2Fsearch-bool.html&r=1&f=G&l=50&co1=AND&d=PG01&s1=12%2F006057&OS=12/006057&RS=12/006057

The PCT is at:

http://www.wipo.int/pctdb/en/wo.jsp?WO=2008102207

Perhaps someone familiar with this application would correct any
mis-impressions above?

Rob

Benjamin M. Schwartz wrote:

stephen botzko wrote:

--Ben

---

From: Stephan Wenger <[email-masked]>
Date: Wed, 24 Mar 2010 16:02:35 -0700

Hi Rob, all,

Wearing my ³technical advisor on IPR matters hat²:

Please let me remind you that the IETF takes no position on scope and
validity of patent claims.  I don¹t believe that the use of an IETF mailing
list to collaboratively create such a position‹even it it were not marked as
an IETF position‹is appropriate.  Please refrain from using this list for
such discussions.  

Further, I¹m also not sure that everyone here‹even a majority‹appreciates
being advised of patents through means other than the IETF¹s IPR tracking
system.  It is certainly against language and spirit of BCP 79.  If you want
to advise people of third party IPR henceforth, please use the tracker.
Feel free to contact me in private it you need logistic help with that.

Thanks,
Stephan

On 3.24.2010 15:13 , "Rob Glidden" <[email-masked]> wrote:

> I would agree that the wording seems to go beyond a narrow non-assert into
> business strategy, and this is furthered by potentially ambiguous phrasings
> such as "royalty free, reasonable and non discriminatory terms".  "RF" and
> "RAND" might overlap in some definitions, but they are not the same.
> 
> Also I would note the two statements (1297 and 1164) appear to be (only?) a
> single patent application for a method of estimating noise levels with 3
> independent claims.  As further progress is made, it might be helpful to
> understand scope and prior art, and relationship to an entire contribution,
> and the specific quantified value of the novelty identified in the
> international search opinion of applying opposite non-linear functions.
> 
> Though not reflected in the disclosure, the US application claims priority to
> a Great Britain Application No. 0703275.8, filed Feb. 20, 2007.
> 
> http://appft1.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&p=1&u=%2Fne
> tahtml%2FPTO%2Fsearch-bool.html&r=1&f=G&l=50&co1=AND&d=PG01&s1=12%2F006057&OS=
> 12/006057&RS=12/006057
> 
> The PCT is at:
>

---

From: Rob Glidden <[email-masked]>
Date: Wed, 24 Mar 2010 17:50:13 -0700

Stephan:

(apologies for long email)

Thanks for the reminder.  I've re-read 3979 and 4879 (on third party
disclosures), and you are wise to encourage care.

However, in this case the IPR has already been responsibly disclosed by
the owner.  So this thread is not disclosing any IPR of a third party,
for which as you indicate sections 6.1.2 and 3 (on IPR of others) would
be appropriate -- by form or email.

Rather, 3979 clearly expects working groups to use the disclosures,
once made, in their evaluations and deliberations.

6.5 Since IPR disclosures will be used by IETF working groups during
their evaluation of alternative technical solutions, it is helpful if
an IPR disclosure includes information about licensing of the IPR in
case Implementing Technologies require a license.

This includes the licensing information in the disclosures:

The inclusion of licensing information in IPR disclosures is not
mandatory but it is encouraged so that the working groups will have
as much information as they can during their deliberations.

And in weighing alternatives:

8. IETF working groups have the discretion
to adopt technology with a commitment of fair and non-discriminatory
terms, or even with no licensing commitment, if they feel that this
technology is superior enough to alternatives with fewer IPR claims
or free licensing to outweigh the potential cost of the licenses.

and even in developing broader IETF consensus:

An IETF consensus
has developed that no mandatory-to-implement security technology can
be specified in an IETF specification unless it has no known IPR
claims against it or a royalty-free license is available to
implementers of the specification unless there is a very good reason
to do so.

And you are also wise in reminding that the IETF will not make
determinations for many excellent reasons, but

Although the IETF can
make no actual determination of validity, enforceability or
applicability of any particular IPR claim, it is reasonable that a
working group will take into account on their own opinions of the
validity, enforceability or applicability of Intellectual Property
Rights in their evaluation of alternative technologies.

So I'd suggest this dialog is both in scope and constructive, fully in
spirit and letter of BCP 79, seeking to clarify the nature of a
licensing disclosure and the specific value of a particular technique
of noise level estimation and application of opposite non-linear
functions.

Rob

Stephan Wenger wrote:

Hi Rob, all,

Wearing my “technical advisor on IPR matters hat”:

Please let me remind you that the IETF takes no position on scope and
validity of patent claims.  I don’t believe that the use of an IETF
mailing list to collaboratively create such a position—even it it were
not marked as an IETF position—is appropriate.  Please refrain from
using this list for such discussions.

Further, I’m also not sure that everyone here—even a
majority—appreciates being advised of patents through means other than
the IETF’s IPR tracking system.  It is certainly against language and
spirit of BCP 79.  If you want to advise people of third party IPR
henceforth, please use the tracker.  Feel free to contact me in private
it you need logistic help with that.

Thanks,

Stephan

On 3.24.2010 15:13 , "Rob Glidden" <[email-masked]>
wrote:

I would agree that the wording seems to go
beyond a narrow non-assert into business strategy, and this is
furthered by potentially ambiguous phrasings such as "royalty free,
reasonable and non discriminatory terms".  "RF" and "RAND" might
overlap in some definitions, but they are not the same.

The PCT is at:

Rob

stephen botzko wrote:

I think it is unreasonable to require IPR holders to unconditionally
promise

I am not asking for such an unconditional promise.  I am just noting
some

In practice the first clause does not immunize Skype from lawsuits.
Many

companies have similar "defensive suspension" clauses, and they still
get

sued fairly regularly.

allows defensive suspension, but only for lawsuits on patent
infringement:

"""

essential to implement any W3C Recommendation ... [but] may not impose
any

"""

wording, by contrast, is totally unreasonable, as it extends the
defensive

retroactive revocation means that these people can be deterred from
suing

that uses Skype IPR. If you modify the codec, you should be doing it in
the

extensions (they're not "necessary").  I don't think that's reasonable
at all.

--Ben

codec mailing list

[email-masked]

codec mailing list

[email-masked]

---

From: stephen botzko <[email-masked]>
Date: Wed, 24 Mar 2010 18:02:25 -0700

I much prefer the tracker alone.  Individuals in the working group then can
review the patents as they wish, and come to their own conclusions.

Stephen Botzko

On Wed, Mar 24, 2010 at 5:50 PM, Rob Glidden <[email-masked]>wrote:

> However, in this case the IPR has already been responsibly disclosed by the
> owner.  So this thread is not disclosing any IPR of a third party, for which
> as you indicate sections 6.1.2 and 3 (on IPR of others) would be appropriate
> -- by form or email.
>
> Rather, 3979 clearly expects working groups to use the disclosures, once
> made, in their evaluations and deliberations.
>
> spirit and letter of BCP 79, seeking to clarify the nature of a licensing
> disclosure and the specific value of a particular technique of noise level
> estimation and application of opposite non-linear functions.
>
> Rob
>
>
> Stephan Wenger wrote:
>
> Hi Rob, all,
>
> validity of patent claims.  I don’t believe that the use of an IETF mailing
> list to collaboratively create such a position—even it it were not marked as
> an IETF position—is appropriate.  Please refrain from using this list for
> such discussions.
>
> Further, I’m also not sure that everyone here—even a majority—appreciates
> being advised of patents through means other than the IETF’s IPR tracking
> phrasings such as "royalty free, reasonable and non discriminatory terms".
> "RF" and "RAND" might overlap in some definitions, but they are not the
> same.
>
> Though not reflected in the disclosure, the US application claims priority
> to a Great Britain Application No. 0703275.8, filed Feb. 20, 2007.
>
>
> ------------------------------
>
> ------------------------------

---

From: Stephan Wenger <[email-masked]>
Date: Wed, 24 Mar 2010 18:58:20 -0700

Hi Rob,

Wearing my ³technical advisor to the IESG on IPR matters² hat:

I¹m commenting in this email only on the ³third party disclosure² subject.
I may comment on the other subject later, as, admittedly, they are more
murky.  Phrasing a reply certainly requires more undistracted time than I
have now (sitting in the IETF77 plenary).

I note that you have provided information of two patent applications that
have not been recited in Skype¹s declaration.  Specifically, neither the GB
application, nor the PCT application, have been disclosed by Skype.  Nowhere
in BCP 79 or in the IETF¹s current practice I find language or common
conduct indicating that, by disclosing one or more patent family members,
one has to infer that all patent family members are disclosed.  If you are
aware of such language, I would appreciate a pointer.

In this light, I continue to believe that you were not within the language,
nor the spirit, of BCP 79 when you cited these patent numbers.

Advisor hat off, private statement:

Rob, you are a lawyer, and are listed in the IP law section of the CA bar
association.  You are a professional in this field.  Most of the subscribers
of this *technical* working group list are not.  They may not know what harm
could befall them, and their employers, if they start reading someone else¹s
patents, and perhaps start commenting in public on it.

It is my understanding that one motivation for moving the IPR disclosures to
an isolated area of the IETF¹s web page has been to ensure that accidental
reading and commenting on someone else¹s patents is not facilitated.  By
providing patent numbers and handy hyperlinks to those patents, you have
very efficiently interrupted this isolation.

I don¹t think this is a fair tactic, and I don¹t think it can do us any
good‹not even those parts of the community with business interests that are
apparently aligned with yours.  In the worst case, legal departments of
careful companies may require their employees to unsubscribe from the codec
WG, and stop attending meetings.  No contributions from these people to the
IETF, no disclosures, no other IPR data points to consider.  Fog over the
minefield.  This cannot be your intention.  I hope.

Individuals with sufficient knowledge and interest to assist you in reading
patents and interpreting patent subject matter almost certainly have the
knowledge to find a patent or application once they have a number.  Those
who don¹t probably could ask you in private.  Or they can ask google.  As we
all know, google has answers for everything :-)

Trying to be constructive, I wonder whether you, or someone else, would be
willing to run a mailing list outside of the IETF¹s organized setting, in
which you and other interested participants can discuss patent claims to
your hearts content, without contaminating the IETF list with patent
numbers, claim language, and other legal stuff that raises red flags in so
many IETF companies.

Regards,
Stephan

On 3.24.2010 17:50 , "Rob Glidden" <[email-masked]> wrote:

> Rather, 3979 clearly expects working groups to use the disclosures, once made,
> in their evaluations and deliberations.
> 
> And you are also wise in reminding that the IETF will not make determinations
> for many excellent reasons, but
> Although the IETF can
> So I'd suggest this dialog is both in scope and constructive, fully in spirit
> and letter of BCP 79, seeking to clarify the nature of a licensing disclosure
> and the specific value of a particular technique of noise level estimation and
> application of opposite non-linear functions.
> 
> Rob
> 
> Stephan Wenger wrote:
>>  Re: [codec] Skype IPR disclosure Hi Rob, all,
>>  
>> to advise people of third party IPR henceforth, please use the tracker.  Feel
>> free to contact me in private it you need logistic help with that.
>>  
>> Thanks,
>> Stephan
>>  
>>  
>>  
>>> http://appft1.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&p=1&u=%2F
>>> netahtml%2FPTO%2Fsearch-bool.html&r=1&f=G&l=50&co1=AND&d=PG01&s1=12%2F006057
>>> &OS=12/006057&RS=12/006057
>>>  
>>> The PCT is at:
>>>

---

From: Koen Vos <[email-masked]>
Date: Thu, 25 Mar 2010 00:17:11 -0700

Stephan: I couldn't agree more - please let's keep this list free of  
patent discussions.

Rob: Skype's legal counsel is more than happy to address any questions  
you may have about our patents. You'll find their phone number and  
email address in our IPR disclosure.

best,
koen.

Quoting Stephan Wenger <[email-masked]>:

>>>> (only?) a

---

From: Rob Glidden <[email-masked]>
Date: Thu, 25 Mar 2010 09:23:56 -0700

Stephan:

I don't see why you seem to be implying that Skype has failed to
disclose IPR -- seems opposite to me.

As said below, this IPR was already responsibly disclosed by the owner
-- the PCT is listed right there in 1164, and the GB application is
referenced for priority and incorporated by reference in the patent.
Hard to see how this could be more clear.

Yes, BCP 79 section 6.4.1 says disclosures "must list the numbers of
any issued patents or published patent applications or indicate that
the claim is based on unpublished patent applications" and section
6.4.2 encourages disclosing material changes -- Skype is doing all
this, no?

Please don't lose the substance here -- ie the nature of a licensing
disclosure and the specific value of a particular technique of noise
level estimation.

Your surmise that IETF might have a motive in BCP 79 to defacilitate
deliberation by working groups looks counter to the text of the doc.

Rob

Stephan Wenger wrote:

Hi Rob,

Wearing my “technical advisor to the IESG on IPR matters” hat:

I’m commenting in this email only on the “third party disclosure”
subject.  I may comment on the other subject later, as, admittedly,
they are more murky.  Phrasing a reply certainly requires more
undistracted time than I have now (sitting in the IETF77 plenary).

I note that you have provided information of two patent applications
that have not been recited in Skype’s declaration.  Specifically,
neither the GB application, nor the PCT application, have been
disclosed by Skype.  Nowhere in BCP 79 or in the IETF’s current
practice I find language or common conduct indicating that, by
disclosing one or more patent family members, one has to infer that all
patent family members are disclosed.  If you are aware of such
language, I would appreciate a pointer.

In this light, I continue to believe that you were not within the
language, nor the spirit, of BCP 79 when you cited these patent numbers.

Rob, you are a lawyer, and are listed in the IP law section of the CA
bar association.  You are a professional in this field.  Most of the
subscribers of this *technical* working group list are not.  They may
not know what harm could befall them, and their employers, if they
start reading someone else’s patents, and perhaps start commenting in
public on it.

It is my understanding that one motivation for moving the IPR
disclosures to an isolated area of the IETF’s web page has been to
ensure that accidental reading and commenting on someone else’s patents
is not facilitated.  By providing patent numbers and handy hyperlinks
to those patents, you have very efficiently interrupted this isolation.

I don’t think this is a fair tactic, and I don’t think it can do us any
good—not even those parts of the community with business interests that
are apparently aligned with yours.  In the worst case, legal
departments of careful companies may require their employees to
unsubscribe from the codec WG, and stop attending meetings.  No
contributions from these people to the IETF, no disclosures, no other
IPR data points to consider.  Fog over the minefield.  This cannot be
your intention.  I hope.

Individuals with sufficient knowledge and interest to assist you in
reading patents and interpreting patent subject matter almost certainly
have the knowledge to find a patent or application once they have a
number.  Those who don’t probably could ask you in private.  Or they
can ask google.  As we all know, google has answers for everything :-)

Trying to be constructive, I wonder whether you, or someone else, would
be willing to run a mailing list outside of the IETF’s organized
setting, in which you and other interested participants can discuss
patent claims to your hearts content, without contaminating the IETF
list with patent numbers, claim language, and other legal stuff that
raises red flags in so many IETF companies.

Regards,

Stephan

On 3.24.2010 17:50 , "Rob Glidden" <[email-masked]>
wrote:

Stephan:

An IETF consensus

to do so.

Although the IETF can

Rob

Stephan Wenger wrote:

Thanks,

Stephan

The PCT is at:

Rob

stephen botzko wrote:

sued fairly regularly.

"""

"""

--Ben

codec mailing list

[email-masked]

codec mailing list

[email-masked]

---

From: Rob Glidden <[email-masked]>
Date: Thu, 25 Mar 2010 09:35:07 -0700

Koen:

Thanks for the offer, but wouldn't Skype be capable to describe proposed 
contribution directly to the working group?

Rob

Koen Vos wrote:
>> that
>> language,
>> bar
>> disclosures to
>> reading
>>>>> priority
>>>>>> extensions (they're not "necessary"). I don't think that's 
>>>>>> reasonable at
>>>>>> all.
>>>>>>
>>>>>> --Ben
>>>>>>
>>>>>>
>>>>>>
>>>>>>
>>>>>>
>>>>>>
>>>>>>

---

From: Stephan Wenger <[email-masked]>
Date: Thu, 25 Mar 2010 11:25:30 -0700

Hi Rob, list,

Again a long email; sorry for that.

With hat:

I missed the PCT application as I was focused only on the newer of the two
Skype disclosures, and was multitasking between listening to the IETF 77
plenary and writing my last email.  I apologize for this mistake.  And I
agree with you that the Skype PCT application has been properly disclosed to
the IETF.  

I have not intended to imply that Skype or its IETF-contributing employees
have failed its disclosure obligation with respect to the GB patent.  They
may have, or they may have not.  I would think that this depends on factors
such as whether the GB application is being prosecuted‹it may have been
abandoned‹and similar factors.  (The same holds even more so for the PCT
application, given the transitory nature of PCT applications.)

When I provide information about my impression of the compliance of
individuals and/or a company with BCP79, I do so based on statements
received in the form of IETF contributions and IPR disclosures.  If, for
example, Dr. Chen mentions during his IETF presentation that Broadcom has
essential patents on their proposal, but there is no IPR disclosure on file,
that¹s most likely a situation where BCP 79 rules were not followed, and Dr.
Chen and/or Broadcom should fix that.  But I¹m not going to hunt down the
status and prosecution history of every single patent or application in a
family, in order to identify whether there may actually be other patents or
applications that would be in need for disclosure.  That¹s their job, not
mine.  The consequences of not following IPR policies are known to those of
us with legal inclinations.

In the Skype GB patent application case, the situation is unclear to me as I
did not, and will not, study the status of the GB patent application myself.
In such a case I assume by default that they are in compliance with BCP 79.

I guess that we will learn over time, by the presence or the absence of an
updated IPR disclosure, whether Skype thinks that they have a disclosure
obligation of the GB patent application.
  
I stick to my previous assertion that it is inappropriate to post patent
numbers and/or hyperlinks to patents on the mailing list.  The tracker is
the right place to inform people about patents.

Hat off:

You asked me not to loose substance here.  Fair.  Let¹s not loose substance:

In your posting, you have pointed engineers, many of which without formal
legal training, let alone being qualified patent lawyers, to patent
documents and, at least implicitly, encouraged the study of patents.  You
facilitated this by posting patent numbers and hyperlinks to patents on a
technical mailing list.  I believe we both agree that such a study can
expose individuals, and certainly their employers, to certain risks.

I believe that we share a basic interpretation of the policy in that it is
within the mandate of an IETF working group to take into account known
patent rights, and, to a certain extend, even their commercial
(licensing/non-assert) terms.  That may include discussions of patent
subject matter, work around solutions to avoid patent claims, and such.  I
believe that the core of our disagreement is only the question how related
discussions are conducted.  Is it really necessary to directly point people
towards patent claims, with patent numbers, hyperlinks, possible cut-paste
of claim language?  Or would be it sufficient to be just a bit more subtle?

Using the concrete example at hand, starting a discussion on the abstract
concept of ³the specific value of a particular technique of noise level
estimation² is absolutely within the mandate of this WG and this list.  I
have never objected to that.  Making a request like ³In the context of IETF
IPR declaration xxx, I would like to get a full understanding of the
specific value of a particular technique of noise level estimation² is IMO
also absolutely within the mandate here.  Stating ³the commercial terms
identified in the IETF IPR disclosure xxx may not be fully aligned with my
business interest.  Therefore, I would prefer designing around the protected
technology.  In this context, would someone help me with an understanding of
the specific value of a particular technique of noise level estimation²
seems also ok to me (although the wisdom of making such a statement is not
immediately apparent to me).  Paraphrasing a particular technique certainly
is.  Even limited citations from the patent specification may be.

Using such formulations provide interested individuals with sufficient
information to access the patents which you want them to study, and/or
identify the subject matter.  Those other people, however, who, by company
policy, lack of interest on patent matters, or for any other reason, are not
interested in patents, are not confronted with offending numbers, nor are
they in danger of accidently downloading patent documents they are neither
qualified, nor allowed by company policy, to study.

Regards,
Stephan

On 3.25.2010 09:23 , "Rob Glidden" <[email-masked]> wrote:

> Stephan:
> 
> I don't see why you seem to be implying that Skype has failed to disclose IPR
> -- seems opposite to me.
> 
> As said below, this IPR was already responsibly disclosed by the owner -- the
> PCT is listed right there in 1164, and the GB application is referenced for
> priority and incorporated by reference in the patent. Hard to see how this
> could be more clear.
> 
> Yes, BCP 79 section 6.4.1 says disclosures "must list the numbers of any
> issued patents or published patent applications or indicate that the claim is
> based on unpublished patent applications" and section 6.4.2 encourages
> disclosing material changes -- Skype is doing all this, no?
> 
> estimation.
>>  Re: [codec] Skype IPR disclosure Hi Rob,
>>  
>> I¹m commenting in this email only on the ³third party disclosure² subject.  I
>> may comment on the other subject later, as, admittedly, they are more murky.
>> Phrasing a reply certainly requires more undistracted time than I have now
>> (sitting in the IETF77 plenary).
>>  
>> in BCP 79 or in the IETF¹s current practice I find language or common conduct
>> indicating that, by disclosing one or more patent family members, one has to
>> infer that all patent family members are disclosed.  If you are aware of such
>> providing patent numbers and handy hyperlinks to those patents, you have very
>> efficiently interrupted this isolation.
>>  
>> knowledge to find a patent or application once they have a number.  Those who
>> don¹t probably could ask you in private.  Or they can ask google.  As we all
>> know, google has answers for everything :-)
>>  
>> which you and other interested participants can discuss patent claims to your
>> hearts content, without contaminating the IETF list with patent numbers,
>> claim language, and other legal stuff that raises red flags in so many IETF
>> companies.  
>>  
>> Regards,
>> Stephan
>>  
>>  
>>>> list to collaboratively create such a position‹even it it were not marked
>>>> as an IETF position‹is appropriate.  Please refrain from using this list
>>>> for such discussions.
>>>>  
>>>> system.  It is certainly against language and spirit of BCP 79.  If you
>>>> want to advise people of third party IPR henceforth, please use the
>>>> tracker.  Feel free to contact me in private it you need logistic help with
>>>> that.
>>>>  
>>>> Thanks,
>>>> Stephan
>>>>  
>>>>  
>>>>  
>>>>> business strategy, and this is furthered by potentially ambiguous
>>>>> Also I would note the two statements (1297 and 1164) appear to be (only?)
>>>>> a single patent application for a method of estimating noise levels with 3
>>>>> understand scope and prior art, and relationship to an entire
>>>>> contribution, and the specific quantified value of the novelty identified
>>>>> in the international search opinion of applying opposite non-linear
>>>>> functions.
>>>>>  
>>>>> http://appft1.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&p=1&u=%
>>>>> 2Fnetahtml%2FPTO%2Fsearch-bool.html&r=1&f=G&l=50&co1=AND&d=PG01&s1=12%2F00
>>>>> 6057&OS=12/006057&RS=12/006057
>>>>>  
>>>>> The PCT is at:
>>>>>

---

From: Rob Glidden <[email-masked]>
Date: Fri, 26 Mar 2010 09:49:26 -0700

Stephan:

A lot of what you say seems very sensible.

However, it looks like you may have a disagreement with the IETF policy
itself -- disclosure obligations apply to all participants, and
individuals are explicitly not sheltered by company policy or any other
reason.

The obligation if there is a problem with this is to not contribute or
participate:

"7...where individuals are not permitted by their employers or by other factors to
disclose the existence or substance of patent applications or other IPR...
[the person] 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"

The idea that IETF policy is instead to facilitate willful ignorance
and/or avoidance by anyone seems wrong on many levels.

Rob

Stephan Wenger wrote:

Hi Rob, list,

With hat:

I missed the PCT application as I was focused only on the newer of the
two Skype disclosures, and was multitasking between listening to the
IETF 77 plenary and writing my last email.  I apologize for this
mistake.  And I agree with you that the Skype PCT application has been
properly disclosed to the IETF.

I have not intended to imply that Skype or its IETF-contributing
employees have failed its disclosure obligation with respect to the GB
patent.  They may have, or they may have not.  I would think that this
depends on factors such as whether the GB application is being
prosecuted—it may have been abandoned—and similar factors.  (The same
holds even more so for the PCT application, given the transitory nature
of PCT applications.)

When I provide information about my impression of the compliance of
individuals and/or a company with BCP79, I do so based on statements
received in the form of IETF contributions and IPR disclosures.  If,
for example, Dr. Chen mentions during his IETF presentation that
Broadcom has essential patents on their proposal, but there is no IPR
disclosure on file, that’s most likely a situation where BCP 79 rules
were not followed, and Dr. Chen and/or Broadcom should fix that.  But
I’m not going to hunt down the status and prosecution history of every
single patent or application in a family, in order to identify whether
there may actually be other patents or applications that would be in
need for disclosure.  That’s their job, not mine.  The consequences of
not following IPR policies are known to those of us with legal
inclinations.

In the Skype GB patent application case, the situation is unclear to me
as I did not, and will not, study the status of the GB patent
application myself.  In such a case I assume by default that they are
in compliance with BCP 79.

I guess that we will learn over time, by the presence or the absence of
an updated IPR disclosure, whether Skype thinks that they have a
disclosure obligation of the GB patent application.

I stick to my previous assertion that it is inappropriate to post
patent numbers and/or hyperlinks to patents on the mailing list.  The
tracker is the right place to inform people about patents.

Hat off:

You asked me not to loose substance here.  Fair.  Let’s not loose
substance:

In your posting, you have pointed engineers, many of which without
formal legal training, let alone being qualified patent lawyers, to
patent documents and, at least implicitly, encouraged the study of
patents.  You facilitated this by posting patent numbers and hyperlinks
to patents on a technical mailing list.  I believe we both agree that
such a study can expose individuals, and certainly their employers, to
certain risks.

I believe that we share a basic interpretation of the policy in that it
is within the mandate of an IETF working group to take into account
known patent rights, and, to a certain extend, even their commercial
(licensing/non-assert) terms.  That may include discussions of patent
subject matter, work around solutions to avoid patent claims, and such.
I believe that the core of our disagreement is only the question how
related discussions are conducted.  Is it really necessary to directly
point people towards patent claims, with patent numbers, hyperlinks,
possible cut-paste of claim language?  Or would be it sufficient to be
just a bit more subtle?

Using the concrete example at hand, starting a discussion on the
abstract concept of “the specific value of a particular technique of
noise level estimation” is absolutely within the mandate of this WG and
this list.  I have never objected to that.  Making a request like “In
the context of IETF IPR declaration xxx, I would like to get a full
understanding of the specific value of a particular technique of noise
level estimation” is IMO also absolutely within the mandate here.
Stating “the commercial terms identified in the IETF IPR disclosure
xxx may not be fully aligned with my business interest.  Therefore, I
would prefer designing around the protected technology.  In this
context, would someone help me with an understanding of the specific
value of a particular technique of noise level estimation” seems also
ok to me (although the wisdom of making such a statement is not
immediately apparent to me).  Paraphrasing a particular technique
certainly is.  Even limited citations from the patent specification may
be.

Using such formulations provide interested individuals with sufficient
information to access the patents which you want them to study, and/or
identify the subject matter.  Those other people, however, who, by
company policy, lack of interest on patent matters, or for any other
reason, are not interested in patents, are not confronted with
offending numbers, nor are they in danger of accidently downloading
patent documents they are neither qualified, nor allowed by company
policy, to study.

Regards,

Stephan

On 3.25.2010 09:23 , "Rob Glidden" <[email-masked]>
wrote:

Stephan:

Rob

Stephan Wenger wrote:

Regards,

Stephan

Stephan:

An IETF consensus

to do so.

Although the IETF can

Rob

Stephan Wenger wrote:

Thanks,

Stephan

The PCT is at:

Rob

stephen botzko wrote:

sued fairly regularly.

"""

"""

--Ben

codec mailing list

[email-masked]

codec mailing list

[email-masked]

---

From: stephen botzko <[email-masked]>
Date: Fri, 26 Mar 2010 10:15:07 -0700

This is not the right mailing list for this discussion, as it has moved well
beyond CODEC and the IPR disclosure on SILK.

Seems to me that the IPR-WG list is more appropriate.

Stephen Botzko

On Fri, Mar 26, 2010 at 9:49 AM, Rob Glidden <[email-masked]>wrote:

> itself -- disclosure obligations apply to all participants, and individuals
> are explicitly not sheltered by company policy or any other reason.
>
> The idea that IETF policy is instead to facilitate willful ignorance and/or
> avoidance by anyone seems wrong on many levels.
>
> Rob
>
>
>
> Stephan Wenger wrote:
>
> Hi Rob, list,
>
> such as whether the GB application is being prosecuted—it may have been
> abandoned—and similar factors.  (The same holds even more so for the PCT
> that’s most likely a situation where BCP 79 rules were not followed, and Dr.
> Chen and/or Broadcom should fix that.  But I’m not going to hunt down the
> applications that would be in need for disclosure.  That’s their job, not
> In the Skype GB patent application case, the situation is unclear to me as
> I did not, and will not, study the status of the GB patent application
> myself.  In such a case I assume by default that they are in compliance with
> BCP 79.
>
> concept of “the specific value of a particular technique of noise level
> estimation” is absolutely within the mandate of this WG and this list.  I
> have never objected to that.  Making a request like “In the context of IETF
> specific value of a particular technique of noise level estimation” is IMO
> also absolutely within the mandate here.  Stating “the commercial terms
> the specific value of a particular technique of noise level estimation”
> I don't see why you seem to be implying that Skype has failed to disclose
> IPR -- seems opposite to me.
>
> As said below, this IPR was already responsibly disclosed by the owner --
> the PCT is listed right there in 1164, and the GB application is referenced
> for priority and incorporated by reference in the patent. Hard to see how
> this could be more clear.
>
> issued patents or published patent applications or indicate that the claim
> is based on unpublished patent applications" and section 6.4.2 encourages
> I’m commenting in this email only on the “third party disclosure” subject.
> have not been recited in Skype’s declaration.  Specifically, neither the GB
> in BCP 79 or in the IETF’s current practice I find language or common
> could befall them, and their employers, if they start reading someone else’s
> It is my understanding that one motivation for moving the IPR disclosures
> to an isolated area of the IETF’s web page has been to ensure that
> accidental reading and commenting on someone else’s patents is not
> facilitated.  By providing patent numbers and handy hyperlinks to those
> patents, you have very efficiently interrupted this isolation.
>
> good—not even those parts of the community with business interests that are
> who don’t probably could ask you in private.  Or they can ask google.  As we
> willing to run a mailing list outside of the IETF’s organized setting, in

---

From: Rob Glidden <[email-masked]>
Date: Sat, 27 Mar 2010 11:51:27 -0700

Stephen:

You should take your objections to whatever forum you think
appropriate, but it is common for working groups to have to deal with
IPR claims, and timely IPR disclosure is important because working
groups need to have as much information as they can while evaluating
alternative solutions.

Rob

stephen botzko wrote:

This is not the right mailing list for this discussion, as
it has moved well beyond CODEC and the IPR disclosure on SILK.

Stephen Botzko

On Fri, Mar 26, 2010 at 9:49 AM, Rob Glidden
<[email-masked]>
wrote:

Stephan:

Rob

Stephan Wenger wrote:

Hi Rob, list,

With hat:

Hat off:

Regards,

Stephan

Stephan:

Rob

Stephan Wenger wrote:

Regards,

Stephan

Stephan:

An IETF consensus

to do so.

Although the IETF can

Rob

Stephan Wenger wrote:

Thanks,

Stephan

The PCT is at:

Rob

stephen botzko wrote:

sued fairly regularly.

"""

"""

--Ben

codec mailing list

[email-masked]

codec mailing list

[email-masked]

codec mailing list

[email-masked]

---

From: Marc Petit-Huguenin <[email-masked]>
Date: Sun, 28 Mar 2010 08:22:43 -0700

On 03/24/2010 06:58 PM, Stephan Wenger wrote:
> subject.  I may comment on the other subject later, as, admittedly, they
> are more murky.  Phrasing a reply certainly requires more undistracted
> time than I have now (sitting in the IETF77 plenary).
> 
> neither the GB application, nor the PCT application, have been disclosed
> by Skype.  Nowhere in BCP 79 or in the IETF’s current practice I find
> language or common conduct indicating that, by disclosing one or more
> patent family members, one has to infer that all patent family members
> are disclosed.  If you are aware of such language, I would appreciate a
> pointer.
> 
> not know what harm could befall them, and their employers, if they start
> reading someone else’s patents, and perhaps start commenting in public
> on it.  

http://news.swpat.org/2010/03/transcript-tridgell-patents/

The arguments presented were for FOSS, but I am thinking that one argument in
this presentation may apply to the CODEC work.

My thinking is this:  The goal of this WG, as described in the charter is to
produce a RF codec.  Producing a royalty-free codec means that each time a
technique is used in the codec, it should be either covered by an expired
patent; or have plenty of prior art anterior by at least one year to the oldest
valid patent; or been so new that there is no patent; or been covered by a
patent with a royalte-free license that apply to this work.  If a non-expired
patent without an RF license is found for the technique, then there is only one
way to fix this: remove the technique from the codec and find another way.  If
the goal of this WG is really to produce a RF codec, then it does not matter if
we discuss patent and prior art and so on in this mailing-list, because neither
single or triple damages can apply, as any technique that could trigger either
of them will be removed.

Now finding a workaround for a technique that we cannot use is impossible
without discussing it.  If we want our best minds trying to find how to not
employ a specific technique, then we have to explain why this specific technique
cannot be used, and I do not see how to do this without discussing the patent in
this mailing-list.  In fact I think that each single line of the codec
description should be annotated in some way with all the prior art, expired
patent and so on all the way to the Sumerians to prove to everybody that there
is no issue.  (I suspect that the triple damage thing is used to frighten the
very people that could really do harm a patent by finding a way to ignore it).

The only possible collateral damage would be if a developer is reading this
mailing-list and discover that a technique applies to its own code and thus will
be eventually open to triple damages on its own code.  I think that somebody
like this should not be in this mailing-list in the first place.

And, BTW, IANAL.

-- 
Marc Petit-Huguenin
Personal email: [email-masked]
Professional email: [email-masked]
Blog: http://blog.marc.petit-huguenin.org

---

From: Stephan Wenger <[email-masked]>
Date: Sun, 28 Mar 2010 09:19:35 -0700

Hi Rob,
Again, we are mostly in agreement on the policy interpretation.  We just
draw different conclusion of what¹s necessary, or sensible, to do.

On 3.26.2010 09:49 , "Rob Glidden" <[email-masked]> wrote:

> [..]
> 
> However, it looks like you may have a disagreement with the IETF policy itself
> -- disclosure obligations apply to all participants, and individuals are
> explicitly not sheltered by company policy or any other reason.
> 
Absolutely true.  One clarification, though:  For third party IPR, there is
no MUST, and no hard disclosure requirement.  Participants are ³encouraged²
only (section 6.1.3).
> [...]

I continue to believe that it is within the IETF policy (and, arguably,
within common sense) to let people decide for themselves whether they want
to participate in discussions concerning third party patent matter, and,
independently of the outcome of this decision, still participate in the WG
(for example on purely technical subjects).  My fear is that, by exposing
folks to patent numbers and handy hyperlinks to patent material, you take
some of this choice away.

So I believe that both ³willful ignorance² and ³avoidance [of exposure to
patent numbers]² are both within the language and the spirit of the IETF¹s
patent policy.  

Stephan  

> Rob
> 
> 
> Stephan Wenger wrote:
>>  Re: [codec] Skype IPR disclosure Hi Rob, list,
>>  
>> individuals and/or a company with BCP79, I do so based on statements received
>> in the form of IETF contributions and IPR disclosures.  If, for example, Dr.
>> Chen mentions during his IETF presentation that Broadcom has essential
>> patents on their proposal, but there is no IPR disclosure on file, that¹s
>> most likely a situation where BCP 79 rules were not followed, and Dr. Chen
>> and/or Broadcom should fix that.  But I¹m not going to hunt down the status
>> and prosecution history of every single patent or application in a family, in
>> order to identify whether there may actually be other patents or applications
>> that would be in need for disclosure.  That¹s their job, not mine.  The
>> consequences of not following IPR policies are known to those of us with
>> legal inclinations.
>>  
>> numbers and/or hyperlinks to patents on the mailing list.  The tracker is the
>> right place to inform people about patents.
>>  
>> Hat off:
>>  
>> legal training, let alone being qualified patent lawyers, to patent documents
>> and, at least implicitly, encouraged the study of patents.  You facilitated
>> this by posting patent numbers and hyperlinks to patents on a technical
>> mailing list.  I believe we both agree that such a study can expose
>> individuals, and certainly their employers, to certain risks.
>>  
>> within the mandate of an IETF working group to take into account known patent
>> rights, and, to a certain extend, even their commercial
>> (licensing/non-assert) terms.  That may include discussions of patent subject
>> matter, work around solutions to avoid patent claims, and such.  I believe
>> that the core of our disagreement is only the question how related
>> towards patent claims, with patent numbers, hyperlinks, possible cut-paste of
>> claim language?  Or would be it sufficient to be just a bit more subtle?
>>  
>> IPR declaration xxx, I would like to get a full understanding of the specific
>> value of a particular technique of noise level estimation² is IMO also
>> absolutely within the mandate here.  Stating ³the commercial terms identified
>> in the IETF IPR disclosure xxx may not be fully aligned with my business
>> interest.  Therefore, I would prefer designing around the protected
>> the specific value of a particular technique of noise level estimation² seems
>> also ok to me (although the wisdom of making such a statement is not
>>>> application, nor the PCT application, have been disclosed by Skype.
>>>> Nowhere in BCP 79 or in the IETF¹s current practice I find language or
>>>> common conduct indicating that, by disclosing one or more patent family
>>>> members, one has to infer that all patent family members are disclosed.  If
>>>> you are aware of such language, I would appreciate a pointer.
>>>>  
>>>> association.  You are a professional in this field.  Most of the
>>>> subscribers of this *technical* working group list are not.  They may not
>>>> know what harm could befall them, and their employers, if they start
>>>> reading someone else¹s patents, and perhaps start commenting in public on
>>>> it.  
>>>>  
>>>> to an isolated area of the IETF¹s web page has been to ensure that
>>>> accidental reading and commenting on someone else¹s patents is not
>>>> who don¹t probably could ask you in private.  Or they can ask google.  As
>>>> we all know, google has answers for everything :-)
>>>>  
>>>>> the owner.  So this thread is not disclosing any IPR of a third party, for
>>>>> which as you indicate sections 6.1.2 and 3 (on IPR of others) would be
>>>>> appropriate -- by form or email.
>>>>>  
>>>>>> validity of patent claims.  I don¹t believe that the use of an IETF
>>>>>> mailing list to collaboratively create such a position‹even it it were
>>>>>> not marked as an IETF position‹is appropriate.  Please refrain from using
>>>>>> this list for such discussions.
>>>>>>  
>>>>>> tracker.  Feel free to contact me in private it you need logistic help
>>>>>> with that.
>>>>>>  
>>>>>> Thanks,
>>>>>> Stephan
>>>>>>  
>>>>>>  
>>>>>>  
>>>>>>> terms".  "RF" and "RAND" might overlap in some definitions, but they are
>>>>>>> not the same.
>>>>>>>  
>>>>>>> levels with 3 independent claims.  As further progress is made, it might
>>>>>>> be helpful to understand scope and prior art, and relationship to an
>>>>>>> entire contribution, and the specific quantified value of the novelty
>>>>>>> identified in the international search opinion of applying opposite
>>>>>>> non-linear functions.
>>>>>>>  
>>>>>>> http://appft1.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&p=1&u
>>>>>>> =%2Fnetahtml%2FPTO%2Fsearch-bool.html&r=1&f=G&l=50&co1=AND&d=PG01&s1=12%
>>>>>>> 2F006057&OS=12/006057&RS=12/006057
>>>>>>>  
>>>>>>> The PCT is at:
>>>>>>>  
 
stephen botzko wrote:

 

    

 

 

    

 

  

 

 
And once the standard is made?  Skype could effectively block the IETF
from creating an improved version of its own codec, or any optional
extensions (they're not "necessary").  I don't think that's reasonable at
all.
 
--Ben

---

From: Stephan Wenger <[email-masked]>
Date: Sun, 28 Mar 2010 09:21:43 -0700

I normally would concur for the policy discussion part; however, considering
the high number of newcomers in this WG, I consider this discussion a piece
of educational material.  The time to move this exercise to another list may
come soon, though.
Stephan

On 3.26.2010 10:15 , "stephen botzko" <[email-masked]> wrote:

>>> On 3.25.2010 09:23 , "Rob Glidden" <[email-masked]
>>> <http://[email-masked]> > wrote:
>>>  
>>>   
>>>> Stephan:
>>>>  
>>>>> have not been recited in Skype¹s declaration.  Specifically, neither the
>>>>> GB application, nor the PCT application, have been disclosed by Skype.
>>>>> members, one has to infer that all patent family members are disclosed.
>>>>>  If you are aware of such language, I would appreciate a pointer.
>>>>>  
>>>>> good‹not even those parts of the community with business interests that
>>>>> are apparently aligned with yours.  In the worst case, legal departments
>>>>> of careful companies may require their employees to unsubscribe from the
>>>>> codec WG, and stop attending meetings.  No contributions from these people
>>>>> to the IETF, no disclosures, no other IPR data points to consider.  Fog
>>>>> over the minefield.  This cannot be your intention.  I hope.
>>>>>  
>>>>> number.  Those who don¹t probably could ask you in private.  Or they can
>>>>> ask google.  As we all know, google has answers for everything :-)
>>>>>  
>>>>> On 3.24.2010 17:50 , "Rob Glidden" <[email-masked]
>>>>> <http://[email-masked]> > wrote:
>>>>>  
>>>>>   
>>>>>   
>>>>>> Stephan:
>>>>>>  
>>>>>> level estimation and application of opposite non-linear functions.
>>>>>>  
>>>>>> Rob
>>>>>>  
>>>>>> Stephan Wenger wrote:
>>>>>>   
>>>>>>   
>>>>>>> not marked as an IETF position‹is appropriate.  Please refrain from
>>>>>>> Further, I¹m also not sure that everyone here‹even a
>>>>>>> majority‹appreciates being advised of patents through means other than
>>>>>>> the IETF¹s IPR tracking system.  It is certainly against language and
>>>>>>> On 3.24.2010 15:13 , "Rob Glidden" <[email-masked]
>>>>>>> <http://[email-masked]> > wrote:
>>>>>>>  
>>>>>>>   
>>>>>>>   
>>>>>>>   

 
 http://appft1.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&p=1&u=%2
Fnetahtml%2FPTO%2Fsearch-bool.html&r=1&f=G&l=50&co1=AND&d=PG01&s1=12%2F00605
7&OS=12/006057&RS=12/006057
 
The PCT is at:

 
Rob

  
 
stephen botzko wrote:

 

    

 

 

    

 

  

 

 
 
--Ben

 

_______________________________________________
codec mailing list
 [email-masked] <http://[email-masked]>
 https://www.ietf.org/mailman/listinfo/codec

 

_______________________________________________
codec mailing list
 [email-masked] <http://[email-masked]>
 https://www.ietf.org/mailman/listinfo/codec

---

From: Stephan Wenger <[email-masked]>
Date: Sun, 28 Mar 2010 10:13:31 -0700

Hi Marc, all,

The article you linked is IMO a useful thing to read for those who do not
know how to study patents.  But, please understand, it is really 101 level.
There are many, many subtleties when interpreting claim language, and this
is an ever-evolving field, just as technical codec design is,

The article is written from an US law perspective, but that's IMHO alright,
considering where the majority of the patent litigation is ongoing today.
The business situation addressed is clearly that of an open source
developer, not that of a multi-national corporation, but you indicated that
in your posting already.

Commenting on your own post, there are two key problems in your logic about
the non-issue of willful infringement (which many people inadequately
circumscribe as "triple damages"--triple damages are a consequence of
willful infringement, but not the root cause.)

The first flaw, as I perceive it, is that your (and your employer's)
exposure to the patent is not restricted to your work in this working group.
It may come haunt you on past and future projects, and on anything you are
doing in parallel with the work here, as well.  That may be a non-issue if
the work in the codec WG is a hobby of yours, but if you are a codec
professional, it is something to consider.

Second, there is also the issue of statuary rights under patent law.
Especially in the open source community, but also in other standardization
and implementation circles, individuals tend to worry mostly about patent
rights being violated by "implementing".  This corresponds to the "make"
category in patent law.  However, the (US-) patent law also allows to
exclude others from the "use" and "sell" of a patented invention (the
formulation in other jurisdictions vary, but are generally similarly wide as
in the US).  Arguably, if your employer (through your participation here)
learns of a patent today, and your employer is currently selling products
containing another codec that is encumbered by the patent right, and a bunch
of other conditions are met, then willful infringement may trigger.

The business decision to study patents is, of course, up to you (and
possibly to your employer).  If your goal is the design of a freely
practicable codec, it could be helpful to do so.  My guess is, though, that
the risk/benefit equation is very different between different employers,
even if they are of similar size.  That's why I'm arguing so strongly to
give people a chance stay ignorant and out of patent discussions.

Stephan

On 3.28.2010 08:22 , "Marc Petit-Huguenin" <[email-masked]> wrote:

>> I¹m commenting in this email only on the ³third party disclosure²
>> that have not been recited in Skype¹s declaration.  Specifically,
>> by Skype.  Nowhere in BCP 79 or in the IETF¹s current practice I find
>> reading someone else¹s patents, and perhaps start commenting in public
>> on it.  
>

---

From: stephen botzko <[email-masked]>
Date: Sun, 28 Mar 2010 13:24:50 -0400

>>> Stephan Wenger worte....

So I believe that both “willful ignorance” and “avoidance [of exposure to
patent numbers]” are both within the language and the spirit of the IETF’s
patent policy.
I agree completely (also with  your reply to Marc).

In practice, we begin by individually reviewing the IPR disclosures are they
announced.  99.9% of the time, the commercial terms are completely
acceptable, so there is no reason to do anything further.

The only case where examining the details of the patents in an IPR is ever
necessary  is when (1) the terms are unacceptable to the community,
*and*(2) we need to use
*some* of the referenced technology in the standard.  Even in that case, it
is best if the work is structured in such a way that so people can opt out.

In this particular situation, there has been no decision yet to use the
Skype contribution in the standard, so there is no reason to start diving
into this IPR disclosure are all right now.

Stephen Botzko

---

From: Marc Petit-Huguenin <[email-masked]>
Date: Sun, 28 Mar 2010 11:13:40 -0700

> professional, it is something to consider.

Well, this is not new for professional developers.  E.g. as a former Java
Licensee, I cannot contribute to the Apache Harmony project.  C'est la vie.

> give people a chance stay ignorant and out of patent discussions.

I think that there is a problem here.  Let's say that the CODEC's codec
algorithm uses a specific technique, let's call it "T".  I then discover that T
is patented.  I can (and will) fill a third party IPR disclosure.  People in the
mailing-list will know about this but cannot discuss it, according to what you
are saying.  OK, then I propose a modification to the specification to replace T
by T'.  According to you I still cannot discuss why T' is better than T, because
it is not a technical argument.  Let's say that people got a clue and decide to
put T' in the specification instead of T.  According to you we still cannot say
in the specification that T' is here because even if T seems obvious (a common
characteristic of all things patented) we cannot use it.  Now 5 years from now,
someone wanting to implement the specification has no idea why it is so complex,
because the reason is not in the spec and not in the mailing-list archives.

How is that not fundamentally broken?

---

From: stephen botzko <[email-masked]>
Date: Sun, 28 Mar 2010 14:27:07 -0400

Note well the emphasized clause.
> The first flaw, as I perceive it, is that your *(and your employer's)*

Stephen Botzko

On Sun, Mar 28, 2010 at 2:13 PM, Marc Petit-Huguenin <[email-masked]>wrote:

> they
> disclosed
> start
> >> patent without an RF license is found for the technique, then there is
> only
> >> one
> >> the goal of this WG is really to produce a RF codec, then it does not
> matter
> >> if
> >> cannot be used, and I do not see how to do this without discussing the
> patent
> >> in
> >> mailing-list and discover that a technique applies to its own code and
> thus
> >> will

---

From: Stephan Wenger <[email-masked]>
Date: Sun, 28 Mar 2010 14:17:48 -0700

Hi Marc,

It is not difficult to convey a patent-related motivation--even
information--without exposing other people and their employers in an obvious
way.  

Allow me to put exaggerated words into your mouth: "I believe our current
draft, especially algorithm T, is infringing on US 1,234,567, claim 8.  We
may be better off with T', because <non-infringement argument>"  (Believe it
or not, I have seen this type of language, and not from a plaintiff's
attorney in a closing argument--which is the only place where such words
ought to be uttered :-)  And here is what I would write: "In conjunction
with IPR disclosure #1234, I have studied certain documents.  It may be to
all (well, almost all) of our advantage if we were replacing algorithm T
with algorithm T'.  One advantage would be <non-infringement argument>"

The first alternative exposes all subscribers to a patent number, and would
show up with a simple google search of a patent numbers (even lawyers
representing trolls know google, unfortunately, and probably a bit better
than some of us...).  The second conveys information that an informed and
interested reader can probably quite easily use to end up with the same
factual information, but is not so obvious.

That's all what I ask for.

(That I, personally, like my hide enough not to discuss someone else's
patent is a different story.)

As for the documentation of motivations for historic reasons: motivations
for design choices get lost in standardization all the time.

Regards,
Stephan

---

From: Marc Petit-Huguenin <[email-masked]>
Date: Mon, 29 Mar 2010 08:03:14 -0700

Hi Stephan,

> factual information, but is not so obvious.

So double indirection would be OK, but not simple indirection.

> for design choices get lost in standardization all the time.

And it is probably the reason why it takes so much time to someone even
motivated to implement this specs right.

---

From: Stephan Wenger <[email-masked]>
Date: Mon, 29 Mar 2010 08:21:34 -0700

Hi Marc,

> So double indirection would be OK, but not simple indirection.

It's certainly preferable to me.  Even more preferable is not talking about
patented technology at all, but I know that I'm in a minority position here.

> motivated to implement this specs right.

I believe that a spec should be implementable with or without motivational
information for design choices.  There are many SDOs which create "lean"
specs, without any motivation, and related implementations interoperate just
fine (MPEG comes to mind).  IETF RFCs contain a rather large amount of
explanatory language, comparatively speaking.  I'm not sure that all the
explanation necessarily helps in call cases.  But that's a discussion for
another day.

Stephan

---

From: Rob Glidden <[email-masked]>
Date: Mon, 29 Mar 2010 09:03:41 -0700

Stephan:

This is exactly the point.

BCP 79 rightly creates a "must" disclose obligation for patent holders
(and their employees), and only a "should" disclose obligation for 3rd
parties.

So if a participant were to inadvertently learn about a third party's
IPR, there is no "must" disclose obligation created, so BCP 79 does not
create a reason why there should be concern.

It is only if someone were to learn about their own company's
undisclosed IPR that a "must" obligation would be created by
BCP 79.  And in that situation, BCP 79, and the policy reasons it
describes, are rightly clear:  disclosure is a must anyway.

Your approach would thus impose an unwise and contradictory obligation
or practice on all participants for the only purpose of helping patent
holders and their employees to not discover (and disclose) their own
patents, to no relevant BCP 79 benefit, risk avoidance or choice
removal.

Rob

Stephan Wenger wrote:

Hi Rob,

Again, we are mostly in agreement on the policy interpretation.  We
just draw different conclusion of what’s necessary, or sensible, to do.

On 3.26.2010 09:49 , "Rob Glidden" <[email-masked]>
wrote:

[..]

Absolutely true.  One clarification, though:
For third party IPR, there is no MUST, and no hard disclosure
requirement.  Participants are “encouraged” only (section 6.1.3).

[...]

I continue to believe that it is within the IETF policy (and, arguably,
within common sense) to let people decide for themselves whether they
want to participate in discussions concerning third party patent
matter, and, independently of the outcome of this decision, still
participate in the WG (for example on purely technical subjects).  My
fear is that, by exposing folks to patent numbers and handy hyperlinks
to patent material, you take some of this choice away.

So I believe that both “willful ignorance” and “avoidance [of exposure
to patent numbers]” are both within the language and the spirit of the
IETF’s patent policy.

Stephan

Rob

Stephan Wenger wrote:

list,

With hat:

Hat off:

Regards,

Stephan

Stephan:

Rob

Stephan Wenger wrote:

Regards,

Stephan

Stephan:

An IETF consensus

to do so.

Although the IETF can

Rob

Stephan Wenger wrote:

Thanks,

Stephan

The PCT is at:

Rob

stephen botzko wrote:

sued fairly regularly.

"""

"""

--Ben

codec mailing list

[email-masked]

codec mailing list

[email-masked]

---

From: Rob Glidden <[email-masked]>
Date: Mon, 29 Mar 2010 09:22:06 -0700

This is an example of why attempting to impose a
lets-talk-about-IPR-without-talking-about-IPR coded language is unwise
and unwarranted.

When there is an IPR disclosure, by definition the patent holder will
know anyway. (If the disclosure is by the patent holder, they will know
because they made the disclosure.  If the disclosure is by a third
party, the patent holder will know because they will be notified by
IETF under BCP 4879).

So the idea that there is a need or benefit to talk about a patent
holder's IPR without the patent holder knowing is wrong on several
levels, and it isn't made right by characterizing certain patent
holders as trolls with Google skills.

Trying to develop a coded language about patents that patent holders
themselves could not decipher when they know it is going on would just
create a situation where there are IETF IPR disclosures with no
corresponding record the IPR was ever removed -- exactly the FUD-laden
situation this working group was chartered to fix.  This is not a
who-cares-if-the-design-motivation-gets-lost situation.

Rob

Stephan Wenger wrote:

Hi Marc,

Regards,
Stephan

Hi Marc, all,

I think that there is a problem here. Let's say that the CODEC's codec
algorithm uses a specific technique, let's call it "T". I then discover that
T
is patented. I can (and will) fill a third party IPR disclosure. People in
the
mailing-list will know about this but cannot discuss it, according to what you
are saying. OK, then I propose a modification to the specification to replace
T
by T'. According to you I still cannot discuss why T' is better than T,
because
it is not a technical argument. Let's say that people got a clue and decide
to
put T' in the specification instead of T. According to you we still cannot
say
in the specification that T' is here because even if T seems obvious (a common
characteristic of all things patented) we cannot use it. Now 5 years from
now,
someone wanting to implement the specification has no idea why it is so
complex,
because the reason is not in the spec and not in the mailing-list archives.

Stephan

Hi Rob,

The arguments presented were for FOSS, but I am thinking that one argument
in
this presentation may apply to the CODEC work.

My thinking is this: The goal of this WG, as described in the charter is to
produce a RF codec. Producing a royalty-free codec means that each time a
technique is used in the codec, it should be either covered by an expired
patent; or have plenty of prior art anterior by at least one year to the
oldest
valid patent; or been so new that there is no patent; or been covered by a
patent with a royalte-free license that apply to this work. If a
non-expired
patent without an RF license is found for the technique, then there is only
one
way to fix this: remove the technique from the codec and find another way.
If
the goal of this WG is really to produce a RF codec, then it does not matter
if
we discuss patent and prior art and so on in this mailing-list, because
neither
single or triple damages can apply, as any technique that could trigger
either
of them will be removed.

Now finding a workaround for a technique that we cannot use is impossible
without discussing it. If we want our best minds trying to find how to not
employ a specific technique, then we have to explain why this specific
technique
cannot be used, and I do not see how to do this without discussing the
patent
in
this mailing-list. In fact I think that each single line of the codec
description should be annotated in some way with all the prior art, expired
patent and so on all the way to the Sumerians to prove to everybody that
there
is no issue. (I suspect that the triple damage thing is used to frighten
the
very people that could really do harm a patent by finding a way to ignore
it).

The only possible collateral damage would be if a developer is reading this
mailing-list and discover that a technique applies to its own code and thus
will
be eventually open to triple damages on its own code. I think that somebody
like this should not be in this mailing-list in the first place.

And, BTW, IANAL.

---

From: Rob Glidden <[email-masked]>
Date: Mon, 29 Mar 2010 09:30:12 -0700

A system of required and allowed IPR disclosure hobbled by a
requirement that the disclosures can't or shouldn't be discussed would
just create an opportunity for anyone with a patent application to
create FUD that a specification is covered by IPR whether it is or
isn't.

Characterizing the BCP 79 disclosure procedure as an unnecessary design
choice motivation is a red herring.

Rob

Stephan Wenger wrote:

Hi Marc,

[...]

Stephan

---

From: Rob Glidden <[email-masked]>
Date: Mon, 29 Mar 2010 09:40:22 -0700

Even if the licensing terms are acceptable, offered IPR may well depend
on blocking patents owned by others.

All the more likely in the case of more recent and narrowly-defined
technologies.

Rob

>>> Stephan Wenger worte....

I continue to believe that it is within the
IETF policy (and, arguably, within common sense) to let people decide
for themselves whether they want to participate in discussions
concerning third party patent matter, and, independently of the outcome
of this decision, still participate in the WG (for example on purely
technical subjects).  My fear is that, by exposing folks to patent
numbers and handy hyperlinks to patent material, you take some of this
choice away.

So I believe that both “willful ignorance”
and “avoidance [of exposure to patent numbers]” are both within the
language and the spirit of the IETF’s patent policy.

In practice, we begin by individually reviewing the IPR disclosures are
they announced.  99.9% of the time, the commercial terms are completely
acceptable, so there is no reason to do anything further.

The only case where examining the details of the patents in an IPR is
ever necessary  is when (1) the terms are unacceptable to the
community, and (2) we need to use some of the
referenced technology in the standard.  Even in that case, it is best
if the work is structured in such a way that so people can opt out.

In this particular situation, there has been no decision yet to use the
Skype contribution in the standard, so there is no reason to start
diving into this IPR disclosure are all right now.

Stephen Botzko

---

From: Rob Glidden <[email-masked]>
Date: Mon, 29 Mar 2010 10:14:29 -0700

IPR disclosed in this forum as reading on the spec that is being
charged for elsewhere is exactly the IPR to be disclosed, discussed and
potentially removed under this working group charter.

BCP 79 rightly doesn't impose obligations on participants to deduce and
operate under other partipants' presumed stay-dumb clauses (i.e. give
people a chance stay ignorant), rather the opposite.

Rob

Stephan Wenger wrote:

Hi Marc, all,

Stephan

Hi Rob,

cannot be used, and I do not see how to do this without discussing the patent

And, BTW, IANAL.

---

From: stephen botzko <[email-masked]>
Date: Mon, 29 Mar 2010 13:28:17 -0400

BCP 79 specifically says "No patent search is required" either by
individuals or by the working group.

If you know of blocking patents held by a third party, you should simply
file the third-party disclosure, there is no need to discuss it on the
list.  If you don't know of blocking patents, then there is nothing to
discuss.

So I stand by my assertion -

The only case where examining the details of the patents in an IPR
disclosure is ever necessary  is when (1) the license terms are unacceptable
to the community, *and* (2) we need to use *some* of the referenced
technology in the standard.

Stephen Botzko

On Mon, Mar 29, 2010 at 12:40 PM, Rob Glidden <[email-masked]>wrote:

>  Even if the licensing terms are acceptable, offered IPR may well depend on
> blocking patents owned by others.
>
> necessary  is when (1) the terms are unacceptable to the community, *and*(2) we need to use
> *some* of the referenced technology in the standard.  Even in that case,
> it is best if the work is structured in such a way that so people can opt
> out.
>

---

From: Rob Glidden <[email-masked]>
Date: Mon, 29 Mar 2010 11:03:33 -0700

Stephen:

Exactly, well said, this is the point of my original email.

To restate original email, the licensing terms on this particular
disclosure are questioned, and unless there is a specific reason
provided to use the particular IPR, there would be no apparent need to
use it.

Rob

stephen botzko wrote:

BCP 79 specifically says "No patent search is required"
either by individuals or by the working group.

If you know of blocking patents held by a third party, you should
simply file the third-party disclosure, there is no need to discuss it
on the list.  If you don't know of blocking patents, then there is
nothing to discuss.

The only case where examining the details of the patents in an IPR
disclosure is
ever necessary  is when (1) the license terms are unacceptable to the
community, and (2) we need to use some of the
referenced technology in the standard.

Stephen Botzko

On Mon, Mar 29, 2010 at 12:40 PM, Rob
Glidden <[email-masked]>
wrote:

Rob

Stephen Botzko

---

From: stephen botzko <[email-masked]>
Date: Mon, 29 Mar 2010 19:06:55 -0400

I saw one person asking questions, to my mind that is not the same as "the
license terms are unacceptable to the community".  The jury is still out on
that one.

Stephen Botzko
On Mon, Mar 29, 2010 at 2:03 PM, Rob Glidden <[email-masked]>wrote:

> disclosure are questioned, and unless there is a specific reason provided to
> use the particular IPR, there would be no apparent need to use it.
>
> Rob
>
>
> stephen botzko wrote:
>

---

From: Rob Glidden <[email-masked]>
Date: Tue, 30 Mar 2010 09:12:40 -0700

Hard to say, unanswered question to Skype pending, but following W3C RF
requirements would seem natural minimum.

Rob

stephen botzko wrote:

I saw one person asking questions, to my mind that is not the
same as "the license terms are
unacceptable to the community".  The jury is still out on that one.

Stephen Botzko

On Mon, Mar 29, 2010 at 2:03 PM, Rob Glidden
<[email-masked]>
wrote:

Stephen:

Rob

stephen botzko wrote:

BCP 79 specifically says "No patent search
is required" either by individuals or by the working group.

The only case where examining the details of the patents in an IPR
disclosure is ever necessary  is when (1) the license terms are
unacceptable to the community, and (2) we need to use some
of the referenced technology in the standard.

Stephen Botzko

Even if the licensing
terms are acceptable, offered IPR may well depend on blocking patents
owned by others.

Rob

Stephen Botzko