[cabfpub] PAG - Interpretation of IPR Policy provisions

Kirk Hall Kirk.Hall at entrustdatacard.com
Mon Feb 6 22:46:53 UTC 2017


You are correct, Virginia – I stand corrected.

I would say to PAG members, and to all Forum members – as the PAG works through these issues and the application of our IPR Policy, you should all (1) consult with your own IP counsel concerning the legal interpretation of these documents and how to proceed, and (2) every member must make its own judgment, and proceed at its own risk.

From: Public [mailto:public-bounces at cabforum.org] On Behalf Of Virginia Fournier via Public
Sent: Monday, February 6, 2017 1:44 PM
To: CA/Browser Forum Public Discussion List <public at cabforum.org>
Cc: Virginia Fournier <vfournier at apple.com>
Subject: [cabfpub] Fwd: Public Digest, Vol 58, Issue 28

Hi Kirk,

Please keep in mind that summarizing sections of the IPR Policy can introduce misinterpretations and inconsistencies.  We should all rely on the exact wording of the IPR Policy to determine what the specific rights and obligations are.

Virginia


Begin forwarded message:

From: Kirk Hall <Kirk.Hall at entrustdatacard.com<mailto:Kirk.Hall at entrustdatacard.com>>
Subject: RE: Public Digest, Vol 58, Issue 28
Date: February 6, 2017 at 11:21:16 AM PST
To: "vfournier at apple.com<mailto:vfournier at apple.com>" <vfournier at apple.com<mailto:vfournier at apple.com>>

Understood.  One issue is, most of the people on the call aren’t lawyers, and also will not have read or understood the IPR Agreement as applied to these Exclusion Notices.  I was trying to bring people up to speed.

Why don’t you respond to my message (now) saying “Kirk, you should probably not summarize the IPR Policy for people because ***”  I can respond “You’re right, sorry”.  But that way we will have gotten people’s attention.

From: vfournier at apple.com<mailto:vfournier at apple.com> [mailto:vfournier at apple.com]
Sent: Monday, February 6, 2017 11:19 AM
To: Kirk Hall <Kirk.Hall at entrustdatacard.com<mailto:Kirk.Hall at entrustdatacard.com>>
Subject: Fwd: Public Digest, Vol 58, Issue 28

Hi Kirk,

Sorry to bombard your inbox - I’m just getting to all of these.

Would it be possible for us to coordinate on the legal issues before sending these messages out please?  Summarizing can change the meaning, which can cause confusion and misinterpretations.  Just quoting the existing language is the safest way to go.  Thanks.









Best regards,

Virginia Fournier
Senior Standards Counsel
 Apple Inc.
☏ 669-227-9595
✉︎ vmf at apple.com<mailto:vmf at apple.com>





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Today's Topics:

  1. PAG - Summary of Selected Sections from IPR Policy on
     Licenses (Kirk Hall)


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Message: 1
Date: Sat, 4 Feb 2017 18:54:53 +0000
From: Kirk Hall <Kirk.Hall at entrustdatacard.com<mailto:Kirk.Hall at entrustdatacard.com>>
To: CA/Browser Forum Public Discussion List <public at cabforum.org<mailto:public at cabforum.org>>
Subject: [cabfpub] PAG - Summary of Selected Sections from IPR Policy
            on Licenses
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I have summarized or quoted the most relevant parts of our IPR Policy regarding "Royalty Free Licenses" to help us at our meeting on Feb. 7.  See end of message.

Here is my preliminary analysis of how these provisions work in general:


*       Sec. 3 - Forum members must offer RF licenses to their Essential Claims contained in any Forum guidelines, except as otherwise stated in Sec. 4.

*       Sec. 4 - Members may exclude their Essential Claims from RF licenses during a Review Period [so if they don't exclude, presumably they automatically provide RF licenses as defined in Sec. 5.1].

*       Sec. 4.2 - When a member excludes an Essential Claim during the review period, the member can say either (1) there will be no RF license, or (2)  there will be a RF license under Sec. 5.1 except for sub (f) [meaning the Member can offer the license "conditioned on payment of royalties, fees or other consideration" - so the license is no longer royalty-free]

*       Sec. 4.2 - a member who made "Contributions" to a guideline that includes the member's Essential Claim cannot file an Exclusion Notice for that Essential Claim during the Review Period [meaning, if the guideline passes the member who made "Contributions" automatically provides a RF license as defined in Sec. 5.1].

It seems the three possible outcomes from these provisions are as follows (but I may be wrong):

(1) A royalty-free license as defined in Sec. 5.1 is granted (either voluntarily if the member decides not to file an Exclusion Notice, or if the member forgets to file an Exclusion Notice, or if the member provideed Contributions to the guideline),

(2) A license is granted as defined in Sec. 5.1, but "conditioned on payment of royalties, fees or other consideration" (if a proper Exclusion Notice was filed and the member makes that choice), or

(3) No license is granted at all (if a proper Exclusion Notice was filed and the member makes that choice).


Summary of Selected Sections from IPR Policy on Licenses

Sec. 3: Sec. 3: As a condition of CAB Forum participation, each CAB Forum Participant shall, subject to Section 4 below, agree to make available under a CAB Forum Royalty-Free ("RF") License, any Essential Claims related to any CAB Forum Final Guideline or Final Maintenance Guideline.  This requirement includes Essential Claims that the Participant or its Affiliates owns and any that the Participant or its Affiliates has the right to license without obligation of payment or other consideration to an unrelated third party.

Sec. 4.1: During Review Period, members may exclude Essential Claims from "CAB Forum RF Licenses"

Sec. 4.2: "Except for Essential Claims encompassed by a Participant's Contributions that are actually incorporated into a Final Guideline or Final Maintenance Guideline approved in accordance with the CAB Forum Guideline approval process," members may exclude Essential Claims AND "either make an election, (i) not to grant a license or (ii) to provide a license with all of the requirements of Section 5.1 with the exception of subsection 5.1 f [meaning the license may "be conditioned on payment of royalties, fees or other consideration."]

Sec. 5.1 License Requirements
With respect to Final Guidelines or Final Maintenance Guidelines developed under this policy, a CAB Forum Royalty-Free License shall mean a non-assignable, non-sublicensable license to make, have made, use, sell, have sold, offer to sell, import, and distribute and dispose of Compliant Portions (provided that such license need not extend to any part or function of a product (other than the Compliant Portion therein in which a Compliant Portion is incorporated but that is not itself part of the Compliant Portion) of the Final Guideline or Final Maintenance Guideline that:

a. shall be available to all, worldwide, whether or not they are CAB Forum Members;

b. shall extend to all Essential Claims owned or controlled by the Participant and/or its Affiliates;

c. may be conditioned on licensee providing notice to a buyer of its products or services that they implement an Essential Patent of a particular entity relating to a particular CAB Forum Final Guideline or Final Maintenance Guideline and that licensee's right to sell the products or services to buyer, and buyer's use of the products or services, are conditioned on the buyer's acceptance of the same terms of the RF or RAND License granted to licensee under the CAB Forum IPR Policy

d. may be limited to implementations of the Final Guideline and Final Maintenance Guideline, and to what is required by the Final Guideline and Final Maintenance Guideline;

e. may be conditioned on a grant of a reciprocal RF license (as defined in this policy) to all Essential Claims owned or controlled by the licensee or its Affiliates. A reciprocal license may be required to be available to all, and a reciprocal license may itself be conditioned on a further reciprocal license from all.

f. may not be conditioned on payment of royalties, fees or other consideration;

g. may be suspended with respect to any licensee when licensor is sued by licensee for infringement of claims essential to implement any CAB Forum Final Guideline or Final Maintenance Guideline;

h. may not impose any further conditions or restrictions on the use of any technology, intellectual property rights, or other restrictions on behavior of the licensee, but may include reasonable, customary terms relating to operation or maintenance of the license relationship such as the following: choice of law and dispute resolution;

i. shall not be considered accepted by an implementer who manifests an intent not to accept the terms of the CAB Forum Royalty-Free License as offered by the licensor.

Sec. 5.2 License Term

a. The CAB Forum RF license conforming to the requirements in this policy shall be made available by the licensor and/or its Affiliates as long as the Final Guideline or Final Maintenance Guideline is in effect. The term of such license shall be for the life of the patents in question, subject to the limitations of 5.2(b).

b. If the Final Guideline or Final Maintenance Guideline is rescinded by the CAB Forum, then no new licenses need be granted but any licenses granted before the Final Guideline or Final Maintenance Guideline was rescinded shall remain in effect.

Sec. 5.3: RF License continues even if member quits forum

8.1. Essential Claims
"Essential Claims" shall mean all claims in any patent or patent application in any jurisdiction in the world that would necessarily be infringed by implementation of any Normative Requirement in a Final Guideline or Final Maintenance Guideline. A claim is necessarily infringed hereunder only when it is not possible to avoid infringing it because there is no non-infringing alternative for implementing a Normative Requirement of a Final Guideline or Final Maintenance Guideline. Existence of a non-infringing alternative shall be judged based on the state of the art at the time the guideline is adopted as a Final Guideline or Final Maintenance Guideline. If a Normative Requirement in a Final Guideline or Final Maintenance Guideline may be fulfilled by any of a list of specified alternatives, then for determination of whether a claim is an Essential Claim, each of the specified alternatives should be considered independently as if it were the only method for fulfilling that requi
rement.

Sec. 8.3
b. "Compliant Portion" means only those specific portions of a product (hardware, software or combinations thereof) that implement and are compliant with all Normative Requirements of the Final Guideline or Final Maintenance Guideline (as applicable to such portions that are adopted) and that are within the bounds of the Scope.

c. "Contribution" means material, including Draft Guidelines, Draft Guideline text, and modifications to other Contributions, made verbally or in a tangible form of expression (including in electronic media) which is provided by a Participant in the process of developing a Draft Guideline for the purpose of incorporating such material into a Draft Guideline or a Final Guideline or Final Maintenance Guideline. For a verbal contribution to be deemed a Contribution hereunder it must be memorialized within approved meeting minutes of the CAB Forum.

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