Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
Brian E Carpenter brian.e.carpen...@gmail.com writes: On 2009-12-01 23:57, Simon Josefsson wrote: Scott Brim scott.b...@gmail.com writes: Simon Josefsson allegedly wrote on 11/30/2009 10:11 AM: There is no requirement in the IETF process for organizations to disclose patents as far as I can see. The current approach of only having people participate, and disclose patents, in the IETF is easy to work around by having two persons in an organization doing different things: one works on specifying and standardizing technology, and the other is working on patenting the technology. Simon, from rfc3979: l. Reasonably and personally known: means something an individual knows personally or, because of the job the individual holds, would reasonably be expected to know. This wording is used to indicate that an organization cannot purposely keep an individual in the dark about patents or patent applications just to avoid the disclosure requirement. But this requirement should not be interpreted as requiring the IETF Contributor or participant (or his or her represented organization, if any) to perform a patent search to find applicable IPR. I don't see how this modifies anything? The legal obligation is on the IETF participant, not on the organization. The organization is not bound by this text. IANAL. But if the participant is acting as an agent of the employer, it seems to me that the employer is bound. In any case, you'd have to be a brave or reckless employee not to assume that to be the case. You'd also have to be a very obtuse employer to fund your employees to participate if you didn't like the IETF's rules. Now you are moving the responsibility on to the organizations. I can't see how that modify my assertion that the IETF does not have any legal means to pressure organization to file patent disclosures. Either the IETF has a legal ability to apply pressure on organizations, or it does not. I don't see why that is a controversial statement. Nothing in the IETF history suggests it even wants to have a legal link to organizations who sends participants to the IETF. The text in RFC 3979 and other documents suggests strongly that this approach is intentional. /Simon ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
Simon Josefsson writes: Arnt Gulbrandsen a...@gulbrandsen.priv.no writes: Simon Josefsson writes: There is no requirement in the IETF process for organizations to disclose patents as far as I can see. The current approach of only having people participate, and disclose patents, in the IETF is easy to work around by having two persons in an organization doing different things: one works on specifying and standardizing technology, and the other is working on patenting the technology. How can you practically avoid the first person knowing about it? Make sure (through confidentiality agreements) that the second one do not talk with the first? Putting them in different continents helps. The patent submitter has to be the inventor, so the person who works on standardisation has to not talk to the inventor at all for this scheme to work. This seems rather far-fetched to me. Not one of my greatest worries. Arnt ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
Arnt Gulbrandsen wrote: Simon Josefsson writes: Arnt Gulbrandsen a...@gulbrandsen.priv.no writes: Simon Josefsson writes: There is no requirement in the IETF process for organizations to disclose patents as far as I can see. The current approach of only having people participate, and disclose patents, in the IETF is easy to work around by having two persons in an organization doing different things: one works on specifying and standardizing technology, and the other is working on patenting the technology. How can you practically avoid the first person knowing about it? Make sure (through confidentiality agreements) that the second one do not talk with the first? Putting them in different continents helps. The patent submitter has to be the inventor, so the person who works on standardisation has to not talk to the inventor at all for this scheme to work. This seems rather far-fetched to me. Not one of my greatest worries. absolutely. And actually at least a few years back, the process was that you have to obtain acknowledgement from all inventors (by signature) so it would be virtually impossible to be named on a patent in the US without knowing it. Anyway, all not relevant as this case is pretty straight forward. Tobias Arnt ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
Scott Brim scott.b...@gmail.com writes: Simon Josefsson allegedly wrote on 11/30/2009 10:11 AM: There is no requirement in the IETF process for organizations to disclose patents as far as I can see. The current approach of only having people participate, and disclose patents, in the IETF is easy to work around by having two persons in an organization doing different things: one works on specifying and standardizing technology, and the other is working on patenting the technology. Simon, from rfc3979: l. Reasonably and personally known: means something an individual knows personally or, because of the job the individual holds, would reasonably be expected to know. This wording is used to indicate that an organization cannot purposely keep an individual in the dark about patents or patent applications just to avoid the disclosure requirement. But this requirement should not be interpreted as requiring the IETF Contributor or participant (or his or her represented organization, if any) to perform a patent search to find applicable IPR. I don't see how this modifies anything? The legal obligation is on the IETF participant, not on the organization. The organization is not bound by this text. /Simon ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
On 2009-12-01 23:57, Simon Josefsson wrote: Scott Brim scott.b...@gmail.com writes: Simon Josefsson allegedly wrote on 11/30/2009 10:11 AM: There is no requirement in the IETF process for organizations to disclose patents as far as I can see. The current approach of only having people participate, and disclose patents, in the IETF is easy to work around by having two persons in an organization doing different things: one works on specifying and standardizing technology, and the other is working on patenting the technology. Simon, from rfc3979: l. Reasonably and personally known: means something an individual knows personally or, because of the job the individual holds, would reasonably be expected to know. This wording is used to indicate that an organization cannot purposely keep an individual in the dark about patents or patent applications just to avoid the disclosure requirement. But this requirement should not be interpreted as requiring the IETF Contributor or participant (or his or her represented organization, if any) to perform a patent search to find applicable IPR. I don't see how this modifies anything? The legal obligation is on the IETF participant, not on the organization. The organization is not bound by this text. IANAL. But if the participant is acting as an agent of the employer, it seems to me that the employer is bound. In any case, you'd have to be a brave or reckless employee not to assume that to be the case. You'd also have to be a very obtuse employer to fund your employees to participate if you didn't like the IETF's rules. At least, that's how it's worked for the last 12 or 13 years. Brian Brian ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
Brian E Carpenter brian.e.carpen...@gmail.com writes: On 2009-11-24 06:44, Steven M. Bellovin wrote: On Mon, 23 Nov 2009 08:16:49 -0500 Scott Brim scott.b...@gmail.com wrote: Simon Josefsson allegedly wrote on 11/23/2009 5:03 AM: John-Luc said he is bound by confidentiality obligations from his company, and I think the same applies to most employees of larger organizations. There is nothing explicit in BCP 79 to protect against this apparent conflict of interest, or is there? Since disclosure is required for anyone submitting documents or participating in IETF discussions, a person who does not disclose IPR for this reason, or any other reason, 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. Precisely. The conflict Simon mentions was of course known to most of the WG; that's one reason we have that clause. IMHO, BCP79 creates no particular problem for corporate lawyers who are instructed by their corporate management to ensure that the company behaves as a good citizen in its standards activities. This is strongly in the company's interests, anyway, since failure to disclose when required by a standards process threatens the validity of the patent. There is no requirement in the IETF process for organizations to disclose patents as far as I can see. The current approach of only having people participate, and disclose patents, in the IETF is easy to work around by having two persons in an organization doing different things: one works on specifying and standardizing technology, and the other is working on patenting the technology. It really is not the IETF's problem. It is a problem for a company that chooses not to behave as a good citizen. The situation remains that the IETF does not have any mechanism to apply pressure on organizations to disclose patent information. /Simon ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
Simon Josefsson wrote: Brian E Carpenter brian.e.carpen...@gmail.com writes: On 2009-11-24 06:44, Steven M. Bellovin wrote: On Mon, 23 Nov 2009 08:16:49 -0500 Scott Brim scott.b...@gmail.com wrote: Simon Josefsson allegedly wrote on 11/23/2009 5:03 AM: John-Luc said he is bound by confidentiality obligations from his company, and I think the same applies to most employees of larger organizations. There is nothing explicit in BCP 79 to protect against this apparent conflict of interest, or is there? Since disclosure is required for anyone submitting documents or participating in IETF discussions, a person who does not disclose IPR for this reason, or any other reason, 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. Precisely. The conflict Simon mentions was of course known to most of the WG; that's one reason we have that clause. IMHO, BCP79 creates no particular problem for corporate lawyers who are instructed by their corporate management to ensure that the company behaves as a good citizen in its standards activities. This is strongly in the company's interests, anyway, since failure to disclose when required by a standards process threatens the validity of the patent. There is no requirement in the IETF process for organizations to disclose patents as far as I can see. The current approach of only having people participate, and disclose patents, in the IETF is easy to work around by having two persons in an organization doing different things: one works on specifying and standardizing technology, and the other is working on patenting the technology. Hi Simon, This is certainly correct in principles. But to which extent the IETF disclosure approach is easy to work around by having two persons ... is a matter of appreciation. My understanding is that it is not easy to arrange protocol engineer rolls in such a way. I'm quite sure you don't have a clear case which you can refer to support the opposite view. The reason I am confident is that both inventor status and an IETF contributor require creativity in general. The IETF collective engineering faces technological challenges like any other design group. I guess it is not realistic to expect managers to send protocol engineers with little creativity traits to the IETF in order to preserve the ability to file patent applications without disclosure. It really is not the IETF's problem. It is a problem for a company that chooses not to behave as a good citizen. The situation remains that the IETF does not have any mechanism to apply pressure on organizations to disclose patent information. This is certainly correct, but I am afraid the cause is more profound than the above IPR disclosure work around. Specifically, the Qualcom vs Broadcom case on JVT over H.264 IPR would have taught corporate lawyers that a standardization body membership contract binding to the corporation is a must for IPR disclosure enforcement against the corporation. (I am not a lawyer ...) The IETF does not use this approach. Regards, - Thierry Moreau /Simon ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
Simon Josefsson writes: There is no requirement in the IETF process for organizations to disclose patents as far as I can see. The current approach of only having people participate, and disclose patents, in the IETF is easy to work around by having two persons in an organization doing different things: one works on specifying and standardizing technology, and the other is working on patenting the technology. How can you practically avoid the first person knowing about it? Arnt ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
Arnt Gulbrandsen a...@gulbrandsen.priv.no writes: Simon Josefsson writes: There is no requirement in the IETF process for organizations to disclose patents as far as I can see. The current approach of only having people participate, and disclose patents, in the IETF is easy to work around by having two persons in an organization doing different things: one works on specifying and standardizing technology, and the other is working on patenting the technology. How can you practically avoid the first person knowing about it? Make sure (through confidentiality agreements) that the second one do not talk with the first? Putting them in different continents helps. /Simon ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
On 2009-12-01 06:03, Thierry Moreau wrote: Simon Josefsson wrote: Brian E Carpenter brian.e.carpen...@gmail.com writes: On 2009-11-24 06:44, Steven M. Bellovin wrote: On Mon, 23 Nov 2009 08:16:49 -0500 Scott Brim scott.b...@gmail.com wrote: Simon Josefsson allegedly wrote on 11/23/2009 5:03 AM: John-Luc said he is bound by confidentiality obligations from his company, and I think the same applies to most employees of larger organizations. There is nothing explicit in BCP 79 to protect against this apparent conflict of interest, or is there? Since disclosure is required for anyone submitting documents or participating in IETF discussions, a person who does not disclose IPR for this reason, or any other reason, 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. Precisely. The conflict Simon mentions was of course known to most of the WG; that's one reason we have that clause. IMHO, BCP79 creates no particular problem for corporate lawyers who are instructed by their corporate management to ensure that the company behaves as a good citizen in its standards activities. This is strongly in the company's interests, anyway, since failure to disclose when required by a standards process threatens the validity of the patent. There is no requirement in the IETF process for organizations to disclose patents as far as I can see. The current approach of only having people participate, and disclose patents, in the IETF is easy to work around by having two persons in an organization doing different things: one works on specifying and standardizing technology, and the other is working on patenting the technology. Replying first to Simon: The requirement is indeed on individual participants and only if they reasonably and personally know about the IPR. But employees participating in an activity for their employer are (afaik, IANAL) acting as agents of their employer, and it's standard practice in most companies for them to have their legal obligations such as IPR disclosure handled by a company lawyer or IPR specialist. So the distinction really doesn't matter. I believe that we included reasonably and personally known exactly because of the problem of employees of one department of a big company not knowing what other departments were doing, and to avoid the onerous cost of a patent search for employees of companies holding tens of thousands of patents. I believe that this setting of the rules has worked well since the disclosure requirement was introduced in 1996. Hi Simon, This is certainly correct in principles. But to which extent the IETF disclosure approach is easy to work around by having two persons ... is a matter of appreciation. My understanding is that it is not easy to arrange protocol engineer rolls in such a way. I'm quite sure you don't have a clear case which you can refer to support the opposite view. The reason I am confident is that both inventor status and an IETF contributor require creativity in general. The IETF collective engineering faces technological challenges like any other design group. I guess it is not realistic to expect managers to send protocol engineers with little creativity traits to the IETF in order to preserve the ability to file patent applications without disclosure. It really is not the IETF's problem. It is a problem for a company that chooses not to behave as a good citizen. The situation remains that the IETF does not have any mechanism to apply pressure on organizations to disclose patent information. This is certainly correct, but I am afraid the cause is more profound than the above IPR disclosure work around. Specifically, the Qualcom vs Broadcom case on JVT over H.264 IPR would have taught corporate lawyers that a standardization body membership contract binding to the corporation is a must for IPR disclosure enforcement against the corporation. (I am not a lawyer ...) The IETF does not use this approach. Replying to Thierry: Again, IANAL, but I understand that participants and their employers are bound by the IETF rules by the simple fact of participation, with no need for an explicit contract. The famous Note Well text is simply a reminder of that. The IETF doesn't need to enforce anything; patent holders who break the rules will have to explain why to a judge, if someone challenges their patent in court. Of course, we can underline the point by choosing to rescind a standard if a participant is found to have broken the rules. Brian ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
On Mon, 2009-11-30 at 18:50 +0100, Simon Josefsson wrote: Arnt Gulbrandsen a...@gulbrandsen.priv.no writes: Simon Josefsson writes: There is no requirement in the IETF process for organizations to disclose patents as far as I can see. The current approach of only having people participate, and disclose patents, in the IETF is easy to work around by having two persons in an organization doing different things: one works on specifying and standardizing technology, and the other is working on patenting the technology. How can you practically avoid the first person knowing about it? Make sure (through confidentiality agreements) that the second one do not talk with the first? Putting them in different continents helps. Not relevant in this case - the participating individuals were named on the patent applications as inventors. It would be hard to convince a judge that they didn't know... ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
RE: RIM patents using a mime body in a message (and ignores IETF IPR rules)
Arnt Gulbrandsen [mailto://a...@gulbrandsen.priv.no] writes: Simon Josefsson writes: There is no requirement in the IETF process for organizations to disclose patents as far as I can see. The current approach of only having people participate, and disclose patents, in the IETF is easy to work around by having two persons in an organization doing different things: one works on specifying and standardizing technology, and the other is working on patenting the technology. How can you practically avoid the first person knowing about it? It seems very easy to me, and need not imply any kind of plotting. Many large companies offer incentives for filing patents and in that case it is in one's own self interest to be on the lookout for patentable ideas whatever the source may be... Arnt ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
On 2009-11-24 06:44, Steven M. Bellovin wrote: On Mon, 23 Nov 2009 08:16:49 -0500 Scott Brim scott.b...@gmail.com wrote: Simon Josefsson allegedly wrote on 11/23/2009 5:03 AM: John-Luc said he is bound by confidentiality obligations from his company, and I think the same applies to most employees of larger organizations. There is nothing explicit in BCP 79 to protect against this apparent conflict of interest, or is there? Since disclosure is required for anyone submitting documents or participating in IETF discussions, a person who does not disclose IPR for this reason, or any other reason, 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. Precisely. The conflict Simon mentions was of course known to most of the WG; that's one reason we have that clause. IMHO, BCP79 creates no particular problem for corporate lawyers who are instructed by their corporate management to ensure that the company behaves as a good citizen in its standards activities. This is strongly in the company's interests, anyway, since failure to disclose when required by a standards process threatens the validity of the patent. It really is not the IETF's problem. It is a problem for a company that chooses not to behave as a good citizen. Brian ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
Russ Housley hous...@vigilsec.com writes: John-Luc: I am sending this note to help you understand the IETF IPR policies; they are fully described in BCP 79 (http://www.ietf.org/rfc/bcp/bcp79.txt). I hope this note clarifies the responsibilities of RIM employees (and anyone else) who participate in IETF. IETF participants engage as individuals, not as representatives of their employers (See Section B.1 of RFC 4677; http://www.ietf.org/rfc/rfc4677.txt). The obligation to follow the IPR policies in BCP 79 is an individual one, not a corporate one. Section 6.1of BCP 79 is quite clear; IETF Participants are required to disclose IPR which they reasonably and personally know applies to a Contribution. The BCP specifically excludes cases in which a participant is unaware of IPR held by their employer. John-Luc said he is bound by confidentiality obligations from his company, and I think the same applies to most employees of larger organizations. There is nothing explicit in BCP 79 to protect against this apparent conflict of interest, or is there? /Simon Please do not hesitate to contact me if you need further clarification. Russ Housley IETF Chair At 06:46 PM 11/19/2009, John-Luc Bakker wrote: Dear all, With regard to the recent discussion regarding RIM's recent IPR disclosures, I understand the community's concerns regarding the timeliness of the disclosure. As employees of companies we are bound by confidentiality obligations and, in addition, cannot always control our company's internal processes. The community's concerns have been brought to the attention of my employer and they are in the process of evaluating the concerns. My company has asked for your patience while they take the time to evaluate the concerns and determine if there is an appropriate course of action in this matter to alleviate the concerns of the community. Your understanding is appreciated. Kind regards, John-Luc ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
On Mon Nov 23 10:03:25 2009, Simon Josefsson wrote: John-Luc said he is bound by confidentiality obligations from his company, and I think the same applies to most employees of larger organizations. There is nothing explicit in BCP 79 to protect against this apparent conflict of interest, or is there? Being horribly naïve, I'd have thought that it was obvious that if you cannot satisfy both your obligations as an employee, and your obligations as an IETF participant, then one or other rôle has to be dropped - ie, either you quit your job, or cease to participate within the IETF. I simply don't see what other solution there is, or could be, and I don't see what on earth BCP 79 could usefully say. So, as of now, it seems manifest that any RIM employees should not be participating within the IETF until they have resolved this conflict - indeed, I get the sense that this is RIM's decision, from the statements that RIM employees have made on this list. As I say, though, I am horribly naïve in my understanding of the word obligation, and I do appreciate that some organizations exist which might put pressure on employees to participate in willful disregard for the IPR rules. I also appreciate that those individuals affected - especially in these times - would then be placed in a very uncomfortable position - one I'm very glad not to be in. The problem is, though, that an organization in such a position will end up eventually be seen to be in such a position, meaning that they are in the position of RIM as I outline above. That is, if the intention is to take commercial advantage of ignoring the IETF's rules for participants, then when such advantage is taken, it'll be obvious that the rules have indeed been ignored, and will threaten their ability to further participate. There is an argument that RIM employees should be removed from all IETF mailing lists until such time as RIM publically states they shall henceforth follow IETF IPR rules, and order their employees to do the same. This has happened to individuals before, when they have clearly stated that they cannot follow the Note Well, and in this case the employees are clearly stating much the same. I'd like to think that this is not required - that, in effect, RIM have taken more or less this decision themselves - but I do look forward to RIM's explanation of how they intend to resolve the apparent conflict of obligations they have foisted upon their employees. Dave. -- Dave Cridland - mailto:d...@cridland.net - xmpp:d...@dave.cridland.net - acap://acap.dave.cridland.net/byowner/user/dwd/bookmarks/ - http://dave.cridland.net/ Infotrope Polymer - ACAP, IMAP, ESMTP, and Lemonade ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
Dave Cridland d...@cridland.net writes: On Mon Nov 23 10:03:25 2009, Simon Josefsson wrote: John-Luc said he is bound by confidentiality obligations from his company, and I think the same applies to most employees of larger organizations. There is nothing explicit in BCP 79 to protect against this apparent conflict of interest, or is there? Being horribly naïve, I'd have thought that it was obvious that if you cannot satisfy both your obligations as an employee, and your obligations as an IETF participant, then one or other rôle has to be dropped - ie, either you quit your job, or cease to participate within the IETF. I simply don't see what other solution there is, or could be, and I don't see what on earth BCP 79 could usefully say. The document could say just that, if that is indeed the general opinion. It may be useful for employees to be able to point at such text when discussing the IETF rules internally with their organization. I'm not sure if that text would have helped in this instance because it is not clear whether the RIM employees were unaware of the obligations in the IETF rules, or if they decided (or were ordered) to pursue anyway. Referring to confidentiality obligations suggests the latter to me, though, because otherwise you could simply have said you weren't aware of the rules instead. /Simon ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
Simon Josefsson allegedly wrote on 11/23/2009 5:03 AM: John-Luc said he is bound by confidentiality obligations from his company, and I think the same applies to most employees of larger organizations. There is nothing explicit in BCP 79 to protect against this apparent conflict of interest, or is there? Since disclosure is required for anyone submitting documents or participating in IETF discussions, a person who does not disclose IPR for this reason, or any other reason, 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. Also, If a Contributor first learns of IPR in its Contribution that meets the conditions of Section 6.6, for example a new patent application or the discovery of a relevant patent in a patent portfolio, after the Contribution is published in an Internet-Draft, a disclosure must be made as soon as reasonably possible after the IPR becomes reasonably and personally known to the Contributor. ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
On Mon, 23 Nov 2009 08:16:49 -0500 Scott Brim scott.b...@gmail.com wrote: Simon Josefsson allegedly wrote on 11/23/2009 5:03 AM: John-Luc said he is bound by confidentiality obligations from his company, and I think the same applies to most employees of larger organizations. There is nothing explicit in BCP 79 to protect against this apparent conflict of interest, or is there? Since disclosure is required for anyone submitting documents or participating in IETF discussions, a person who does not disclose IPR for this reason, or any other reason, 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. Precisely. The conflict Simon mentions was of course known to most of the WG; that's one reason we have that clause. ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
I don't see the issue as being whether the decision would have been different, the rules were not followed. Rescinding the decision is certainly appropriate. It would be useful to know whether any other parties have implemented this spec to date. If so the situation is rather different since the other parties would be affected in two ways, first by the withdrawal of the registration itself but secondly as it may affect defenses against a RIM infringement claim under the Dell decision. We should remember that the intention of the rules was to make them self-policing by attempting to engage legal sanctions in the case of default. If a company does not make timely disclosure of its IPR it risks having damaged it. On Wed, Nov 18, 2009 at 9:13 PM, Brian E Carpenter brian.e.carpen...@gmail.com wrote: How about the IESG simply rescinds its decision in this week's meeting? I don't see any need for an appeal; if there's a prima facie violation of the disclosure rules, it's just a management item. Much less bother than an appeal. Of course, the rescission would be subject to appeal, but that's another story. Brian On 2009-11-19 15:02, Cullen Jennings wrote: On October 8, the IESG approved the registration of application/3gpp-ims+xml Media Type. On Nov 2, RIM filed an IPR disclosure related to this at https://datatracker.ietf.org/ipr/1219/ The associated patent, filed Oct 2008, is at http://www.google.com/patents?id=Mk7GEBAJ and the related draft is http://tools.ietf.org/html/draft-bakker-sipping-3gpp-ims-xml-body-handling I will note John-Luc Bakker from RIM is an author of both the patent and and the draft. The draft has been widely discussed at IETF with no mention of IPR before this. As an IESG member, I was not aware of this IPR at the time the approval was made and I do not believe any other IESG members were aware of it. I do believe the discussion would have been different had the IESG been aware of this IPR. If anyone thinks this is, ah, inappropriate, I would recommend they appeal the IESG decision to approve this. (see section 6.5 of RFC 2026 for how this works). An IETF LC on this in the future would allow the community to make an decision that was informed of the IPR. Cullen ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf -- -- New Website: http://hallambaker.com/ View Quantum of Stupid podcasts, Tuesday and Thursday each week, http://quantumofstupid.com/ ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
This was the case in the past. Recently one of my lawyers suggested that this is not necessarily the case at present. The USPTO appears to be (slowly) getting its act together. While USPTO behavior has been rent-seeking in recent years, preferring to issue stupid patents rather than risk being sued by the applicant, the frequency of re-examination requests during court proceedings has increased substantially and is providing more of a counterbalancing interest. In this case there are only applications, not actual patent claims. The applicant is obliged to provide any information received that might affect the validity of the patent to the USPTO. Failure to do so can lead to the patent being invalidated. So it is not a question of a re-exam. As always, IANAL and this is not legal advice. On Thu, Nov 19, 2009 at 3:32 PM, ty...@mit.edu wrote: On Thu, Nov 19, 2009 at 10:51:16AM -0800, Stephan Wenger wrote: The mechanisms to challenge the validity of a patent depend on the legislation. In the US, one example is a request for re-examination. A good foundation for such a request would be the presence of Prior Art not considered during the prosecution phase. The effort and cost involved is significant and can be compared to the prosecution of a patent. One problem with re-examination is that one has to show that the patent office was wrong in issuing the patent originally. That is, one does not only fight the interests of the rightholder, but also the established opinion of the patent office. No one likes to be proven wrong, and, therefore, re-examination is often an uphill battle against an established bureaucracy. Worse yet, if you don't have all of your expensive patent lawyers lined up, and the patent office decides it doesn't want to admit that it screwed up, the patent actually ends up being *stronger* afterwards --- that is, a patent which survives a re-exam is presumed by the courts to be more likely valid. This brings up an interesting strategy by patent trolls to secretly get a sock-puppet to deliberately launch a incompentent patent re-examine, just to make the patent appear stronger. As a result, some patent attorneys, upon examination of the unique facts of a particular patent, might decide that it's better to not try to challenge the patent, and wait for the troll to make the first strike. It's amazing how screwed up the US Patent system is, isn't it? - Ted P.S. This is not legal advice, and I don't play a lawyer on TV. P.P.S. The opinions expressed in this e-mail are my own, and do not reflect the views or business strategies of my employer. ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf -- -- New Website: http://hallambaker.com/ View Quantum of Stupid podcasts, Tuesday and Thursday each week, http://quantumofstupid.com/ ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
Russ Housley wrote: John-Luc: I am sending this note to help you understand the IETF IPR policies; they are fully described in BCP 79 (http://www.ietf.org/rfc/bcp/bcp79.txt). I hope this note clarifies the responsibilities of RIM employees (and anyone else) who participate in IETF. IETF participants engage as individuals, not as representatives of their employers (See Section B.1 of RFC 4677; http://www.ietf.org/rfc/rfc4677.txt). The obligation to follow the IPR policies in BCP 79 is an individual one, not a corporate one. Section 6.1of BCP 79 is quite clear; IETF Participants are required to disclose IPR which they reasonably and personally know applies to a Contribution. The BCP specifically excludes cases in which a participant is unaware of IPR held by their employer. Please do not hesitate to contact me if you need further clarification. In the present instance, the invitation to use the lack of personal knowledge as an excuse is ill-advised: a quick search for inventor name john-luc bakker in the US patent office database of published patent applications returns 34 patent applications with titles indicating a connection to data networks and mobility. It could have been that RIM internal IPR management would have isolated IETF contributors from personal knowledge of specific applications, but that seems not to be the case. Perhaps the Note Well has some intrinsic enforcement limitations (enforcement in the meaning that it would be useful for a third party - neither IESG not its trust - against a patent holder who had failed to comply). But I am not a lawyer and I don't know. Regards, - Thierry Moreau Russ Housley IETF Chair At 06:46 PM 11/19/2009, John-Luc Bakker wrote: Dear all, With regard to the recent discussion regarding RIM's recent IPR disclosures, I understand the community's concerns regarding the timeliness of the disclosure. As employees of companies we are bound by confidentiality obligations and, in addition, cannot always control our company's internal processes. The community's concerns have been brought to the attention of my employer and they are in the process of evaluating the concerns. My company has asked for your patience while they take the time to evaluate the concerns and determine if there is an appropriate course of action in this matter to alleviate the concerns of the community. Your understanding is appreciated. Kind regards, John-Luc ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
RE: RIM patents using a mime body in a message (and ignores IETF IPR rules)
John-Luc: I am sending this note to help you understand the IETF IPR policies; they are fully described in BCP 79 (http://www.ietf.org/rfc/bcp/bcp79.txt). I hope this note clarifies the responsibilities of RIM employees (and anyone else) who participate in IETF. IETF participants engage as individuals, not as representatives of their employers (See Section B.1 of RFC 4677; http://www.ietf.org/rfc/rfc4677.txt). The obligation to follow the IPR policies in BCP 79 is an individual one, not a corporate one. Section 6.1of BCP 79 is quite clear; IETF Participants are required to disclose IPR which they reasonably and personally know applies to a Contribution. The BCP specifically excludes cases in which a participant is unaware of IPR held by their employer. Please do not hesitate to contact me if you need further clarification. Russ Housley IETF Chair At 06:46 PM 11/19/2009, John-Luc Bakker wrote: Dear all, With regard to the recent discussion regarding RIM's recent IPR disclosures, I understand the community's concerns regarding the timeliness of the disclosure. As employees of companies we are bound by confidentiality obligations and, in addition, cannot always control our company's internal processes. The community's concerns have been brought to the attention of my employer and they are in the process of evaluating the concerns. My company has asked for your patience while they take the time to evaluate the concerns and determine if there is an appropriate course of action in this matter to alleviate the concerns of the community. Your understanding is appreciated. Kind regards, John-Luc ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
Cullen Jennings wrote: On October 8, the IESG approved the registration of application/3gpp-ims+xml Media Type. On Nov 2, RIM filed an IPR disclosure related to this at https://datatracker.ietf.org/ipr/1219/ The associated patent, filed Oct 2008, is at http://www.google.com/patents?id=Mk7GEBAJ and the related draft is http://tools.ietf.org/html/draft-bakker-sipping-3gpp-ims-xml-body-handling I will note John-Luc Bakker from RIM is an author of both the patent and and the draft. The draft has been widely discussed at IETF with no mention of IPR before this. As an IESG member, I was not aware of this IPR at the time the approval was made and I do not believe any other IESG members were aware of it. I agree with this assessment. I was not aware of any related IPRs when I sponsored this MIME type registration and I don't think other IESG members knew either. I do believe the discussion would have been different had the IESG been aware of this IPR. ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
FWIW, I agree with Brian. Pulling this (waiting until the IESG approves and only then filing the disclosure) on a media type registration seems particularly egregious but is, in any event, exactly the type of situation the IPR rules are intended to prevent. Like him, I believe that the IESG can recind its action on this basis without having to go through the procedural clutter of an appeal. In addition, if an appeal were really necessary, nothing prevents one or more of the IESG members who believe that they would have acted differently had the disclosure occurred on a timely basis from filing it. john --On Thursday, November 19, 2009 15:13 +1300 Brian E Carpenter brian.e.carpen...@gmail.com wrote: How about the IESG simply rescinds its decision in this week's meeting? I don't see any need for an appeal; if there's a prima facie violation of the disclosure rules, it's just a management item. Much less bother than an appeal. Of course, the rescission would be subject to appeal, but that's another story. Brian On 2009-11-19 15:02, Cullen Jennings wrote: On October 8, the IESG approved the registration of application/3gpp-ims+xml Media Type. On Nov 2, RIM filed an IPR disclosure related to this at https://datatracker.ietf.org/ipr/1219/ The associated patent, filed Oct 2008, is at http://www.google.com/patents?id=Mk7GEBAJ and the related draft is http://tools.ietf.org/html/draft-bakker-sipping-3gpp-ims-xml- body-handling I will note John-Luc Bakker from RIM is an author of both the patent and and the draft. The draft has been widely discussed at IETF with no mention of IPR before this. As an IESG member, I was not aware of this IPR at the time the approval was made and I do not believe any other IESG members were aware of it. I do believe the discussion would have been different had the IESG been aware of this IPR. If anyone thinks this is, ah, inappropriate, I would recommend they appeal the IESG decision to approve this. (see section 6.5 of RFC 2026 for how this works). An IETF LC on this in the future would allow the community to make an decision that was informed of the IPR. Cullen ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
On Wed, 2009-11-18 at 19:02 -0700, Cullen Jennings wrote: On October 8, the IESG approved the registration of application/3gpp- ims+xml Media Type. On Nov 2, RIM filed an IPR disclosure related to this at https://datatracker.ietf.org/ipr/1219/ The associated patent, filed Oct 2008, is at http://www.google.com/patents?id=Mk7GEBAJ and the related draft is http://tools.ietf.org/html/draft-bakker-sipping-3gpp-ims-xml-body-handling Quite aside from the question of what the IESG should do about the registration, my reading of this patent finds nothing novel. Almost all the claims (including the first one, upon which all others are based), are essentially just claiming invention of multi-part mime, which predated the application by several years. Is there (should there be) a mechanism whereby the IETF or one of our more corporate parents can file some challenge to the patent having been issued? ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
FWIW, I agree with Brian. Pulling this (waiting until the IESG approves and only then filing the disclosure) on a media type registration seems particularly egregious but is, in any event, exactly the type of situation the IPR rules are intended to prevent. Like him, I believe that the IESG can recind its action on this basis without having to go through the procedural clutter of an appeal. In addition, if an appeal were really necessary, nothing prevents one or more of the IESG members who believe that they would have acted differently had the disclosure occurred on a timely basis from filing it. +1 I'll also note that nothing prevents then from registrering this in the media type vnd. tree. Ned ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
Hi, I would suggest to handle this issue calmly from here on. In this specific case, even assuming validity of the patent, the rightholder may already have a enforceability problem based on what I also perceive as a clear IETF process violation. As the very minimum, if the patent were ever asserted, the process violation gives the alleged infringer's lawyers something to work with. If the IESG were inclined, as a body, to document its perception of a process violation, then things would look even brighter to me. Rescinding the RFC-to-be in question may be an option, unless the technology is really a big step forward. If it were, though, I would probably vote (if I had a vote, which I do not) to issue the RFC anyway. It's clearly within our policy to issue the RFC, if we choose to do so, even in the presence of a process violation like this. Rescinding RFCs-to-be only based on late disclosures may set a precedence for the future we may not like. The mechanisms to challenge the validity of a patent depend on the legislation. In the US, one example is a request for re-examination. A good foundation for such a request would be the presence of Prior Art not considered during the prosecution phase. The effort and cost involved is significant and can be compared to the prosecution of a patent. One problem with re-examination is that one has to show that the patent office was wrong in issuing the patent originally. That is, one does not only fight the interests of the rightholder, but also the established opinion of the patent office. No one likes to be proven wrong, and, therefore, re-examination is often an uphill battle against an established bureaucracy. For patent families with significant international coverage, multiply effort and risk by the number of legislations involved. Regards, Stephan On 11/19/09 3:40 AM, Scott Lawrence scott.lawre...@nortel.com wrote: On Wed, 2009-11-18 at 19:02 -0700, Cullen Jennings wrote: On October 8, the IESG approved the registration of application/3gpp- ims+xml Media Type. On Nov 2, RIM filed an IPR disclosure related to this at https://datatracker.ietf.org/ipr/1219/ The associated patent, filed Oct 2008, is at http://www.google.com/patents?id=Mk7GEBAJ and the related draft is http://tools.ietf.org/html/draft-bakker-sipping-3gpp-ims-xml-body-handling Quite aside from the question of what the IESG should do about the registration, my reading of this patent finds nothing novel. Almost all the claims (including the first one, upon which all others are based), are essentially just claiming invention of multi-part mime, which predated the application by several years. Is there (should there be) a mechanism whereby the IETF or one of our more corporate parents can file some challenge to the patent having been issued? ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
On Thu, Nov 19, 2009 at 10:51:16AM -0800, Stephan Wenger wrote: The mechanisms to challenge the validity of a patent depend on the legislation. In the US, one example is a request for re-examination. A good foundation for such a request would be the presence of Prior Art not considered during the prosecution phase. The effort and cost involved is significant and can be compared to the prosecution of a patent. One problem with re-examination is that one has to show that the patent office was wrong in issuing the patent originally. That is, one does not only fight the interests of the rightholder, but also the established opinion of the patent office. No one likes to be proven wrong, and, therefore, re-examination is often an uphill battle against an established bureaucracy. Worse yet, if you don't have all of your expensive patent lawyers lined up, and the patent office decides it doesn't want to admit that it screwed up, the patent actually ends up being *stronger* afterwards --- that is, a patent which survives a re-exam is presumed by the courts to be more likely valid. This brings up an interesting strategy by patent trolls to secretly get a sock-puppet to deliberately launch a incompentent patent re-examine, just to make the patent appear stronger. As a result, some patent attorneys, upon examination of the unique facts of a particular patent, might decide that it's better to not try to challenge the patent, and wait for the troll to make the first strike. It's amazing how screwed up the US Patent system is, isn't it? - Ted P.S. This is not legal advice, and I don't play a lawyer on TV. P.P.S. The opinions expressed in this e-mail are my own, and do not reflect the views or business strategies of my employer. ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
Hi Ted, I believe you are right. Let me further add a) it's IMO foolish to attempt to force re-examination without a *good* patent lawyer (even if it's allowed in the US), and b) that, AFAIK, this aspect of the perceived brokenness of the patent system is not local to the US. Stephan On 11/19/09 12:32 PM, ty...@mit.edu ty...@mit.edu wrote: On Thu, Nov 19, 2009 at 10:51:16AM -0800, Stephan Wenger wrote: The mechanisms to challenge the validity of a patent depend on the legislation. In the US, one example is a request for re-examination. A good foundation for such a request would be the presence of Prior Art not considered during the prosecution phase. The effort and cost involved is significant and can be compared to the prosecution of a patent. One problem with re-examination is that one has to show that the patent office was wrong in issuing the patent originally. That is, one does not only fight the interests of the rightholder, but also the established opinion of the patent office. No one likes to be proven wrong, and, therefore, re-examination is often an uphill battle against an established bureaucracy. Worse yet, if you don't have all of your expensive patent lawyers lined up, and the patent office decides it doesn't want to admit that it screwed up, the patent actually ends up being *stronger* afterwards --- that is, a patent which survives a re-exam is presumed by the courts to be more likely valid. This brings up an interesting strategy by patent trolls to secretly get a sock-puppet to deliberately launch a incompentent patent re-examine, just to make the patent appear stronger. As a result, some patent attorneys, upon examination of the unique facts of a particular patent, might decide that it's better to not try to challenge the patent, and wait for the troll to make the first strike. It's amazing how screwed up the US Patent system is, isn't it? - Ted P.S. This is not legal advice, and I don't play a lawyer on TV. P.P.S. The opinions expressed in this e-mail are my own, and do not reflect the views or business strategies of my employer. ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
The associated patent, filed Oct 2008, is at http://www.google.com/patents?id=Mk7GEBAJ and the related draft is http://tools.ietf.org/html/draft-bakker-sipping-3gpp-ims-xml-body-handling Quite aside from the question of what the IESG should do about the registration, my reading of this patent ... Not to belabor the obvious, but this is not a patent. It is a patent APPLICATION. No patent has been issued. Indeed, it sounds like no patent should be issued. The PTO has a protest process that appears appropriate in this situation. You can file a protest including prior art with an explanation of how it relates to the application which will be included with the application for the examiner. The rules are quite strict. See here for details: http://www.uspto.gov/web/offices/pac/mpep/documents/1900_1901.htm R's, John ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
RIM patents using a mime body in a message (and ignores IETF IPR rules)
On October 8, the IESG approved the registration of application/3gpp- ims+xml Media Type. On Nov 2, RIM filed an IPR disclosure related to this at https://datatracker.ietf.org/ipr/1219/ The associated patent, filed Oct 2008, is at http://www.google.com/patents?id=Mk7GEBAJ and the related draft is http://tools.ietf.org/html/draft-bakker-sipping-3gpp-ims-xml-body-handling I will note John-Luc Bakker from RIM is an author of both the patent and and the draft. The draft has been widely discussed at IETF with no mention of IPR before this. As an IESG member, I was not aware of this IPR at the time the approval was made and I do not believe any other IESG members were aware of it. I do believe the discussion would have been different had the IESG been aware of this IPR. If anyone thinks this is, ah, inappropriate, I would recommend they appeal the IESG decision to approve this. (see section 6.5 of RFC 2026 for how this works). An IETF LC on this in the future would allow the community to make an decision that was informed of the IPR. Cullen ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
Re: RIM patents using a mime body in a message (and ignores IETF IPR rules)
How about the IESG simply rescinds its decision in this week's meeting? I don't see any need for an appeal; if there's a prima facie violation of the disclosure rules, it's just a management item. Much less bother than an appeal. Of course, the rescission would be subject to appeal, but that's another story. Brian On 2009-11-19 15:02, Cullen Jennings wrote: On October 8, the IESG approved the registration of application/3gpp-ims+xml Media Type. On Nov 2, RIM filed an IPR disclosure related to this at https://datatracker.ietf.org/ipr/1219/ The associated patent, filed Oct 2008, is at http://www.google.com/patents?id=Mk7GEBAJ and the related draft is http://tools.ietf.org/html/draft-bakker-sipping-3gpp-ims-xml-body-handling I will note John-Luc Bakker from RIM is an author of both the patent and and the draft. The draft has been widely discussed at IETF with no mention of IPR before this. As an IESG member, I was not aware of this IPR at the time the approval was made and I do not believe any other IESG members were aware of it. I do believe the discussion would have been different had the IESG been aware of this IPR. If anyone thinks this is, ah, inappropriate, I would recommend they appeal the IESG decision to approve this. (see section 6.5 of RFC 2026 for how this works). An IETF LC on this in the future would allow the community to make an decision that was informed of the IPR. Cullen ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf ___ Ietf mailing list Ietf@ietf.org https://www.ietf.org/mailman/listinfo/ietf
