Subject: Re: [rtcweb] Proposal for H.263 baseline codec

From: "Paul E. Jones" <[email-masked]>
Date: Sun, 1 Apr 2012 23:56:40 -0400

Stephan,

> The most commonly cited timeline for a widely in use technology to be
> "save" from a patent viewpoint, based on equitable defenses such as laches
> (in the US) is six years.  In some countries of significant size, this
> time is longer, and in others, equitable defenses do not exist.  (Very
> briefly, and perhaps incorrectly put, those equitable defenses allow a
> defendant to argue successfully that a patent cannot be enforced as the
> right holder knew that the patent claim was likely being infringed, and
> did not enforce the patent.).

Recall that Unisys forced people to pay royalties for using the GIF file
format long after it became widely popular.  The company asserted IPR claims
on GIF since it used a compression algorithm to which it acquired the
rights, and it started doing so right near the end of the 20-year period
during which a patent is considered valid.

In short, I really do not think one should ever assume it might be safe to
use any technology.

> In addition, as I pointed out in the meeting, the use of a video codec
> created by a body such as MPEG or ITU-T SG16 has the advantage of that the
> patents of all participating players are available at least under
> Reasonable and Non Discriminatory (RAND) terms.  This may sound like a Bad
> Thing if you operate under a business model that prevents you to pay
> anything for patent licenses, but it is surely a Good Thing if you are
> willing to dish out a moderate amount of money for a license.  RAND
> recently has gotten teeth, not so much in terms of the monetary
> compensation aspect, but in terms of difficulty (if not unavailability) to
> obtain injunctive relive, among others.  H.26x and the MPEG standards
> benefit from RAND commitments, VP8, AFAIK, does not.

I believe your point here is perhaps worth even more consideration.

I really know nothing about the IPR that exists or might be claimed on VP8.
That said, I know there has such an incredible amount of work by so many
companies to produce H.264 that I would be utterly surprised to find that
VP8 does not infringe on something.  All of the technology that went into
H.264 represents only a subset of all of the IPR that exists in the video
coding space.

It's the rest of the IPR, a bunch of IPR owned by companies who actually
have significant investment in video coding technologies, that I believe
people should worry about.  Everyone who worked on H.264 did so as part of
an open standards process, as you mention above.  They spent a lot of time
and energy in the process, coming to an agreement to license the technology
that went into H.264.  They did not agree to license technology that did not
go into H.264.  So, if one of those participating companies were to
subsequently sue over some IPR used in VP8, I would not dare call them a
troll.

Trolls always exist and may even lay claims to H.264, but I suspect it would
be much harder for a troll to lay claim to H.264.  That codec spent years in
development with input from tons of people.  If a troll were to come in and
lay claim to some part of H.264, I suspect there would be several companies
that would stand up and beat them down.  After all, a claim against H.264
would not only present a problem for the defendant in a lawsuit, but would
be an issue for every company with IPR on H.264.  Further, no matter what
part of H.264 such a troll might decide to pick on, there are a number of
world-class engineers who (as you indicated about H.263) could probably name
the person or persons who contributed the section of text, algorithm,
procedure, etc., all of which is covered with a known license.

VP8 does not have the benefit of such significant peer review and
collaboration, nor does it benefit from any IPR licensing agreements from
legitimate companies holding tons of video coding-related IPR.

Paul

---

From: Silvia Pfeiffer <[email-masked]>
Date: Sun, 1 Apr 2012 22:28:34 -0700

Note that H.264 isn't even under discussion here.

Also, my question on H.263 hasn't been answered yet. I do wonder about
the patent situation there!

Cheers,
Silvia.

On Sun, Apr 1, 2012 at 8:56 PM, Paul E. Jones <[email-masked]> wrote:
> _______________________________________________
> rtcweb mailing list
> [email-masked]
> https://www.ietf.org/mailman/listinfo/rtcweb

---

From: "Paul E. Jones" <[email-masked]>
Date: Mon, 2 Apr 2012 03:16:43 -0400

Silvia,

I believe H.263 would be covered if you license the MPEG-4 Visual "patent
pool".  I might be wrong, but you can certainly get clarification from MPEG
LA. You could also reach out to the list of companies who have claimed IPR
at the ITU (search for ITU IPR database).  I think there are about 14
companies who have IPR claims submitted.

As with H.264, it was a very open process.  Those involved are likely the
only ones with IPR claims.  Perhaps not, but given the pervasive use of
H.263 already on the Internet, one would think if there was some IPR in
hiding, it would have appeared already.

Paul

> -----Original Message-----
> From: Silvia Pfeiffer [mailto:[email-masked]]
> Sent: Monday, April 02, 2012 1:29 AM
> To: Paul E. Jones
> Cc: Stephan Wenger; Basil Mohamed Gohar; [email-masked]
> Subject: Re: [rtcweb] Proposal for H.263 baseline codec
> 
> Also, my question on H.263 hasn't been answered yet. I do wonder about the
> patent situation there!
> 
> Cheers,
> Silvia.
> 
> >> "save" from a patent viewpoint, based on equitable defenses such as
> >> laches (in the US) is six years.  In some countries of significant
> >> size, this time is longer, and in others, equitable defenses do not
> >> exist.  (Very briefly, and perhaps incorrectly put, those equitable
> >> defenses allow a defendant to argue successfully that a patent cannot
> >> be enforced as the right holder knew that the patent claim was likely
> >> being infringed, and did not enforce the patent.).
> >
> > Recall that Unisys forced people to pay royalties for using the GIF
> > file format long after it became widely popular.  The company asserted
> > IPR claims on GIF since it used a compression algorithm to which it
> > acquired the rights, and it started doing so right near the end of the
> > 20-year period during which a patent is considered valid.
> >
> > In short, I really do not think one should ever assume it might be
> > safe to use any technology.
> >
> >> In addition, as I pointed out in the meeting, the use of a video
> >> codec created by a body such as MPEG or ITU-T SG16 has the advantage
> >> of that the patents of all participating players are available at
> >> least under Reasonable and Non Discriminatory (RAND) terms.  This may
> >> sound like a Bad Thing if you operate under a business model that
> >> prevents you to pay anything for patent licenses, but it is surely a
> >> Good Thing if you are willing to dish out a moderate amount of money
> >> for a license.  RAND recently has gotten teeth, not so much in terms
> >> of the monetary compensation aspect, but in terms of difficulty (if
> >> not unavailability) to obtain injunctive relive, among others.  H.26x
> >> and the MPEG standards benefit from RAND commitments, VP8, AFAIK, does
> not.
> >
> > That said, I know there has such an incredible amount of work by so
> > many companies to produce H.264 that I would be utterly surprised to
> > find that
> > H.264 represents only a subset of all of the IPR that exists in the
> > video coding space.
> >
> > It's the rest of the IPR, a bunch of IPR owned by companies who
> > actually have significant investment in video coding technologies,
> > that I believe people should worry about.  Everyone who worked on
> > H.264 did so as part of an open standards process, as you mention
> > above.  They spent a lot of time and energy in the process, coming to
> > an agreement to license the technology that went into H.264.  They did
> > not agree to license technology that did not go into H.264.  So, if
> > one of those participating companies were to subsequently sue over
> > some IPR used in VP8, I would not dare call them a troll.
> >
> > Trolls always exist and may even lay claims to H.264, but I suspect it
> > would be much harder for a troll to lay claim to H.264.  That codec
> > spent years in development with input from tons of people.  If a troll
> > were to come in and lay claim to some part of H.264, I suspect there
> > would be several companies that would stand up and beat them down.
> > After all, a claim against H.264 would not only present a problem for
> > the defendant in a lawsuit, but would be an issue for every company
> > with IPR on H.264.  Further, no matter what part of H.264 such a troll
> > might decide to pick on, there are a number of world-class engineers
> > who (as you indicated about H.263) could probably name the person or
> > persons who contributed the section of text, algorithm, procedure, etc.,
> all of which is covered with a known license.
> >
> > collaboration, nor does it benefit from any IPR licensing agreements
> > from legitimate companies holding tons of video coding-related IPR.
> >
> > Paul
> >

---

From: Marshall Eubanks <[email-masked]>
Date: Mon, 2 Apr 2012 08:43:41 -0400

> companies who have IPR claims submitted.

According to this

http://www.nine-9s.com/h-263-codec-software.htm

Lucent is not covered by MPEG-LA, although it is not clear if they
actually claim IPR.

Regards
Marshall

---

From: Randell Jesup <[email-masked]>
Date: Thu, 19 Apr 2012 03:15:26 -0400

On 3/29/2012 1:12 PM, Silvia Pfeiffer wrote:
> Very interesting discussion. Out of personal curiosity, I have some
> questions inline.
>
> On Thu, Mar 29, 2012 at 7:20 AM, Stephan Wenger<[email-masked]>  wrote:
>>
>> (in the US) is six years.
>
> Very interesting to know the usually used limit on the number of
> years. IIUC that would make Speex, Vorbis and Theora "save" codecs,
> since they were released in 2003, 2000, and 2004 respectively?

IANAL:  No, since the defense (with some notable exceptions) is by a 
specific person against delayed assertion of a suit against them, so 
someone using Speex for example could not use that defense for circa 6 
years after they began using it.  Note that publication of a spec 
doesn't violate a patent (though using it may).  In practice the defense 
might be even more limited, for example if the infringer made very 
limited use of the patent for years such that the owner didn't even know 
they were infringing; it's possible the court might start the clock when 
the owner knew or could/should have known of the infringement.

-- 
Randell Jesup
[email-masked]

---

From: Marshall Eubanks <[email-masked]>
Date: Thu, 19 Apr 2012 07:32:52 -0400

On Thu, Apr 19, 2012 at 3:15 AM, Randell Jesup <[email-masked]> wrote:
>>> laches
> specific person against delayed assertion of a suit against them, so someone
> using Speex for example could not use that defense for circa 6 years after
> they began using it.  Note that publication of a spec doesn't violate a
> patent (though using it may).  In practice the defense might be even more
> limited, for example if the infringer made very limited use of the patent
> for years such that the owner didn't even know they were infringing; it's
> possible the court might start the clock when the owner knew or could/should
> have known of the infringement.
>

I found a fairly detailed analysis of the defense of laches in patent
cases starting at page 27 of this

http://www.fdml.com/defenses.pdf

Reading this dense legal reasoning makes me very nervous about relying
on any of this for any IETF decision. Engineers should not
pretend they are lawyers.

Regards
Marshall

---

From: Randell Jesup <[email-masked]>
Date: Thu, 19 Apr 2012 11:32:32 -0400

On 4/19/2012 7:32 AM, Marshall Eubanks wrote:
> On Thu, Apr 19, 2012 at 3:15 AM, Randell Jesup<[email-masked]>  wrote:

Quite true (though I've played one on TV^H^H^H^H^H^H^H^H^H amateur 
lawyer quite a bit in a former job).  That document agrees with my 
comments (IANAL!!) so far as I can tell, and the basic answer is still 
"No, do not assume you're safe because you're using a codec published 
more than 6 years ago."  Not assuming you're safe is always the safe 
thing to do.  ;-)

-- 
Randell Jesup
[email-masked]

---

From: Dean Willis <[email-masked]>
Date: Thu, 19 Apr 2012 23:42:39 -0500

On Apr 19, 2012, at 10:32 AM, Randell Jesup wrote:

>> 
> 
> Quite true (though I've played one on TV^H^H^H^H^H^H^H^H^H amateur lawyer quite a bit in a former job).  That document agrees with my comments (IANAL!!) so far as I can tell, and the basic answer is still "No, do not assume you're safe because you're using a codec published more than 6 years ago."  Not assuming you're safe is always the safe thing to do.  ;-)
> 

To paraphrase Whedon: You're never truly safe; the ancient ones are down there waiting. Miss a blood sacrifice, and there''s hell to pay.

Or,  Lubarsky's alternative cognate: There's always one more patent.

There is, however, a margin of safety in numbers. If many little red riding hoods have walked the path before you and others walk beside you, the chance of meeting a wolf are reduced. Or you might just meet a VERY HUNGRY wolf. But you have a chance of hearing the screams and being able to run away.

On the other hand, if you KNOW there's  a wolf on the hunt, stay home.

--
Dean