[cabfpub] Revised Draft of IPR Policy and Resolution

[kirk_hall at trendmicro.com]

Ben – I have never understood what is meant by “stand around licensing”.  Can you define?

Our current IPR policy doesn’t depend on whether a member “contributes” or not – it simply imposes a duty on the member to check, during the last 60 days before Guidelines are finally adopted, to see if anything in the Guidelines infringes on the member’s IP (whether or not the member “contributed” during discussion of the Guidelines).  I think that’s the way to do.  I would not favor a new IPR that exempted a member from the disclosure/exclusion/licensing requirement just because the member didn’t “contribute” on a particular point.  How could we ever keep track of who “contributed” when a complex set of rules was discussed over several months.

On the “Affiliates” issue, I think it is easily solved if a member wants to exempt one of its “Affiliate” from the duty to disclose/exclude/license its IP if infringed by a new Guideline.  The Forum would ask the member two main questions: (1) have you ever transferred any of your IP to an Affiliate?  If yes, please explain.  (If yes, the Affiliate probably should have to come under the IPR Policy), and (2) do you license any IP from an Affiliate that is not generally available to other companies on the same or similar terms?  If yes, explain.  (If a member is using the IP of an Affiliate under a special license, the Affiliate should probably be subject to the IPR Policy.)  Otherwise, we would likely agree to exempt a member’s Affiliates from the IPR Policy (unless I’ve forgotten something).

From: Ben Wilson [mailto:ben at digicert.com]
Sent: Sunday, November 04, 2012 12:00 PM
To: Kirk Hall (RD-US); public at cabforum.org
Cc: 'David Rudin (LCA)'; 'Jay Kendry'; Heather_Molleur at symantec.com; 'Marc Braner'; jon.callas at entrust.com
Subject: RE: [cabfpub] Revised Draft of IPR Policy and Resolution

Thanks for your comments, Kirk.  I agree that the models proposed have flaws, but as I may have mentioned before, I see two approaches if we are to amend– the working group model (which your comments address) and the “contribution” –based model (which is already built in to the existing IPR), so maybe I agree with your position.  (I can’t argue that the use of “contribution” in the current IPR actually addresses the concerns of those worried about stand-around RF licensing, but it goes a long way.)

If we are to amend the IPR (and I am not saying we have to, but it may be the preferable approach when all is said and done), a couple of goals from this latest go-around should be met:  (a) gating stand-around RF licensing, and (b) a better safe-harbor than the one that presently exists in the IPR (which you’ve mentioned below when discussing the option to charge royalties).  I think the two are somewhat related.  The issue of affiliates is tangential, and if we are going to make proposed amendments, then I think many would favor a revision to the definition of “affiliates”.    It would be good though, to look at these first two issues.

So, (a)  could everyone look at the use of the term “contribution” as it appears in the current IPR and respond whether that could/should be amended to address concerns about stand-around licensing, (b) whether anything could be done to improve a safe-harbor in a model that is not working-group based; and (c) whether we should scrap our IPR and adopt the IETF model.  If you have an important aspect of this debate to which I haven’t assigned a lower-cased letter, please assign a new letter (d, and so on) so we can keep track of the discussions. (If any simultaneous assignments of issue letters occurs, we’ll deal with it at the time.)

Also, I’m sure that some persons interested in commenting on this discussion on the public list do not have posting rights.  Could those persons (and especially someone from Identrust, Entrust, T-Systems, and RSA, if interested in commenting) contact Wayne Thayer at GoDaddy directly and request posting privileges?

Thanks,

Ben

From: public-bounces at cabforum.org [mailto:public-bounces at cabforum.org] On Behalf Of kirk_hall at trendmicro.com
Sent: Sunday, November 04, 2012 12:07 PM
To: public at cabforum.org
Cc: 'David Rudin (LCA)'; 'Jay Kendry'; Heather_Molleur at symantec.com; 'Marc Braner'
Subject: Re: [cabfpub] Revised Draft of IPR Policy and Resolution

We have finally had a chance to review the proposed changes to our existing IPR policy.  We do not support the adoption of a new policy.  It would not solve the objections of the members who left the Forum, whose issues are already addressed by the current IPR policy.

Here are our comments.

NEED FOR AN IPR POLICY

First, as a reminder, Trend Micro never believed the Forum needed an IPR policy, as the creation of operational requirements for CAs did not seem to be the type of activity that could or would infringe IP.  We still feel that way, but the browsers and a few CAs insisted on an IPR policy.

If we are going to have an IPR policy, we believe it should promote maximum disclosure, openness, and transparency so that any potential IP infringement is identified as soon as possible.

In virtually all cases, we expect the Forum will modify its Guidelines (or eliminate them) rather than infringe on a member’s clear intellectual property rights, so this is mostly a hypothetical discussion.

HOW OUR CURRENT IPR POLICY WORKS

Here is how our current IPR (v.1) works:


1.       Prior to approval of a CAB Forum “Draft Guideline” as a final guideline, there is a 60-day review period where members can exclude their patents from royalty free licenses.  Sec. 4.1



2.       During the 60-day review period, a member can send an Exclusion Notice listing the member’s IP (patent number, etc.) that contains an Essential Claim being infringed by the Draft Guideline, and the member can then make an election either:

(a) Not to grant a license for the Essential Claim (and thereby retain all IP rights), Sec. 4.2(i), or

(b) To grant a non-discriminatory license for the Essential Claim to all other members (but the IP holder can any royalty it chooses) Sec. 4.2(ii).

If the member fails to send the Exclusion Notice during the 60 day period and later notices the IP infringement in the Guidelines after adoption, the member must grant a royalty free license.


This seems to us a very sensible policy, as it promotes the early disclosure by a member of any IP it believes would be infringed by a draft Guideline or other requirement.  No member is required to grant any license at all, and can charge any royalty it wants for its IP – but the member must disclose any IP infringement before we adopt a Guideline.  We all want to avoid “submarining” by a member who fails to disclose its IP, then later comes back and asserts its rights after a Guideline has been adopted and implemented by the Forum members.



Note also that Section 2 of our current IPR policy provides: “*** [The] CAB Forum will ordinarily not approve a Guideline if it is aware that Essential Claims exist which are not available on RF terms.  CAB Forum Members are encouraged to bring to the attention of the CAB Forum any known patent or pending patent application of other organizations that might contain Essential Claims.”  In other words, if a member notifies the Forum of IP that conflicts with a proposed Guideline, in most cases the Forum will revise the Guideline to avoid the conflict.



The current IPR policy applies to members and their “Affiliates”, which is defined as:



“Affiliate” means an entity that directly or indirectly controls, is controlled by or is under common control with, a Participant. Control for the purposes of this Agreement shall mean direct or indirect beneficial ownership of more than fifty percent of the voting stock, or decision-making authority in the event that there is no voting stock, in an entity. The CAB Forum Board of Directions may, in its discretion, grant exclusions for related companies of CAB Forum Members which would technically fall within the “Affiliate” definition in situations where it can be shown that there is no intent to circumvent the licensing obligations of Section 5.



Note that our current policy already allows a member to seek an exclusion of IPR policy application to an Affiliate “where it can be shown that there is no intent to circumvent the licensing obligations of Section 5.”  We wonder why none of the members who left the Forum tried this approach before they left.



MODEL CHOSEN FOR PROPOSED IPR VERSION 3



Again, kudos and thanks to Marc Braner and others for trying to respond to the objections of those former members who left the Forum rather than sign IPR v1.



The new approach was based on the IPR approach of other groups, such as W3C, and attempted to limit a member’s duty to disclose IP infringement to those “working groups” on which the member “participates”.   While that approach is very appropriate for the W3C, it won’t work for the CAB Forum.



W3C is an organization with hundreds of members.  By my count, there are 105 Community and Business Groups, 55 Working Groups, 15 Interest Groups, 5 Coordination Groups, a Technical Architecture Group, etc., and multiple list-serv discussion groups.  See:



http://www.w3.org/community/groups/

http://www.w3.org/Consortium/activities#wgs



So it makes perfect sense to limit a W3C member’s IP disclosure and licensing obligations to the specific Working Group(s) that the member has signed up for (so, for example, signing up for the Cascading Style Sheets (CSS) working group should require IP disclosure for CSS issues, but not for another group where the member is not participating, such as Model-Based User Interfaces working group).



However, the W3C approach will not work for the CAB Forum.  We have, at most, 25 active members (the number who voted on the final governance ballot), and all of our teleconferences, meetings, and list-serv discussions happen as a “committee-of-the-whole” – in essence, the Forum itself is a single working group.  So even if we go to a “working group / participation” model like Marc’s IPR draft v3, all CAs and browsers who participate in Forum general meetings would still have to disclose all their IP to the Forum for all draft Guidelines or else have to grant a royalty-free license.  In other words, adopting the IPR v3 wouldn’t change anything for those members who quit.



To try to satisfy the former members who left the Forum, the redraft authors attempted to limit the obligation to disclose IP to only those times when the Forum member is a “participant” on a “working group.”  Here is what the latest draft of IPR v3 says in the Definitions:



g. “Join a Working Group” means that a Member or third party communicates by affirmative written statement to the Chair, Vice Chair, Working Group Chair, or two or more Members that it is joining, requests to join, or has joined a Working Group and that communication is affirmatively acknowledged by one or more of the recipients listed above.



j. “Participant” means a Member or third party that has “Joined a Working Group”.



l. “Working Group” means any committee or subcommittee of the CAB Forum created in accordance with the Bylaws to work on Guidelines.



Section 3 then limits IP disclosure and licensing requirements to those members who participate in a Forum working group.



How on earth is this supposed to work?  Do we disband our general Forum meetings, teleconferences, and list-servs, and only operate through multiple working group meetings?  Or do we somehow segment our current unified Forum meetings, teleconferences, and list-servs into multiple sub-meetings and list-servs where each is designated as a “working group”?  If we do the latter, can “non-participant” members remain silently in the room or on the call while the others talk about a proposed new Guidelines?



Now why would a member choose not to be a “participant” on a particular matter?  There is only one reason– because the Forum member already knows it owns IP that would be infringed by a draft Guideline.  In that case, why wouldn’t we require the member to disclose what it knows right away, so the Forum can avoid the IP conflict?  It seems to me IPR v3 presents exactly the wrong approach by allowing Forum members to declare “I’m not a participant on this” and then to listen in silently to the rest of the discussion (and maybe go back and file supplemental claims on its existing IP to clearly cover the proposed new Guidelines).  Why would we want to encourage this?



Or is the idea that Forum members who have decided not to “participate” on an issue leave the teleconference or room when the issue comes up?  That’s a recipe for chaos.  And again, why wouldn’t we want the member to disclose the known IP conflict at that time?



Who would keep track of which issues particular Forum members have decided not to participate in?  Who will keep notes of whether the member was present and spoke (i.e., participated) on a particular issue?



Some former members complained that it would be “burdensome” for them to have to stay on top of all their IP, so they don’t want to have to disclose their to the Forum when there is potential IP infringement in a draft Guideline.  Well, this new IPR v3 approach is just as difficult for those members – they will have to stay on top of their IP so they can either “join” or “not join / not participate” on specific “working groups” – otherwise, they must declare their IP in order to avoid granting royalty free licenses.  IPR v3 is not a solution.



Some have proposed that a vote for adoption of final Guidelines should not constitute “participation” or trigger an IP disclosure/licensing requirement.  We disagree – who wants a Forum member to sit silently by, not disclose its IP, vote for adoption and then hit all other Forum members with an IP infringement claim?  We believe voting on a final Guideline is participation by a member that requires early IP disclosure.



Finally, some have pointed out that the draft Bylaws proposed by Trend Micro contemplate the increased use of Working Groups by the Forum.  That’s true – but only as a way to increase the participation of outside  Interested Parties (non-Forum members) on solutions to particular issues like the current Revocation Working Group.  We can see limiting the IP disclosure obligations of an Independent Party who participates in an authorized Forum Working Group to just the issues covered by the Working Group (similar to the W3C model) – but Forum members themselves should have to follow the Forum’s IP disclosure and licensing rules at all times (whether in Forum general meetings or Working Group meetings).  If this is still unacceptable to former Forum members, then they can limit their activities to future Working Groups only (as Interested Parties), but not general Forum teleconferences, meetings, or list-servs.



RETURN OF FORUM MEMBER WHO WOULD NOT SIGN THE IPR



We hope the Forum members who quit rather than sign the IPR Policy v1 would reconsider their decision.  Contrary to the press releases that went out, the current IPR policy does not require any member to grant an IP license of any kind (royalty free or otherwise).



The current policy would also allow a member to ask for an Affiliate to be excluded from the IP disclosure/licensing requirements on a showing that “there is no intent to circumvent the licensing obligations of Section 5” – which should solve the problems of CAs that are owned by venture capital companies.



Finally, the working group/participation model will not solve anything for those CAs who quit, as they will still have to stay on top of their IP in order to avoid “participation” on issues where they don’t want to disclose their conflicting IP (or grant a license if they fail to disclose) – IPR policy v3 is no better for them than the current IPR policy v1.  It’s also unworkable from a meeting standpoint.



It is Trend Micro’s view that we should discontinue further discussion of edits to our adopted IPR policy v1, and simply ask the CA members who quit to reconsider and to return to the Forum.




TREND MICRO EMAIL NOTICE

The information contained in this email and any attachments is confidential

and may be subject to copyright or other intellectual property protection.

If you are not the intended recipient, you are not authorized to use or

disclose this information, and we request that you notify us by reply mail or

telephone and delete the original message from your mail system.




<table class="TM_EMAIL_NOTICE"><tr><td><pre>
TREND MICRO EMAIL NOTICE
The information contained in this email and any attachments is confidential 
and may be subject to copyright or other intellectual property protection. 
If you are not the intended recipient, you are not authorized to use or 
disclose this information, and we request that you notify us by reply mail or
telephone and delete the original message from your mail system.
</pre></td></tr></table>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://lists.cabforum.org/pipermail/public/attachments/20121104/4ce22eac/attachment-0004.html>