NAS Symposium on Management of Intellectual Property in Standards Setting Processes

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Simon McKenzie
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1 NAS Symposium on Management of Intellectual Property in Standards Setting Processes Dan Bart President and CEO Valley View Corporation Past Chairman ANSI IPRPC October 3-4, 2012

2 Topics Today Some things I learned over last 2 days Some observations on the presentations Areas for future work? A real-world question 2

3 Disclaimer Although I am on the ANSI Board and Past Chair of the ANSI Intellectual Property Rights Policy Committee (ANSI IPRPC) and I am a past chair of the ANSI Patent Group and ANSI Copyright Group, this is NOT a presentation on behalf of ANSI, but my personal views and observations. Although I am an attorney, this presentation is for general education and NOT presented as legal advice, there is currently no attorney/client relationship with you, you should always seek legal advice from your legal counsel. 3

4 Why Standards Can be Confusing International De-facto Standardization Organizations 4

PROOFING: cover it inside and out with pitch LINEAR DIMENSIONS (pre Metric): the

thirty cubits ENHANCEMENTS: Make a roof for the ark, and finish it to a cubit above

5 Standards Have Early Roots! Design Standard for an ark (Genesis 6-9) MATERIAL SPECS: gopher wood WATER PROOFING: cover it inside and out with pitch LINEAR DIMENSIONS (pre Metric): the length of the ark three hundred cubits, its breadth fifty cubits, and its height thirty cubits ENHANCEMENTS: Make a roof for the ark, and finish it to a cubit above ACCESS PORTAL PLACEMENT: set the door of the ark in its side STRUCTURE: make it with lower, second, and third decks PASSENGER MANIFEST ALSO SPECIFIED! 5

6 Alexander Graham Bell (IPR in Standards also)

7 IPR WARS? Patents and patent disputes mark the beginning of the telephone industry. As noted in John Brooks book, "Telephone, The First Hundred Years," Alexander Graham Bell, a teacher for the deaf, had no knowledge or association with electricity until he began the long series of experiments that culminated in the "invention" of the telephone. From these earliest roots, "commercial terms" for patent licenses for the use of inventions were required when a deaf student's father, Thomas Sanders, a prominent leather merchant from Salem, Massachusetts, and Gardiner Hubbard, a prominent Boston attorney and President of the Clarke School for the Deaf in Northampton who had a deaf daughter, became the financial backers of Bell on February 27,1875 with the formal signing of the Bell Patent Association agreement. On February 14, 1876, Hubbard, on behalf of Bell, filed Bell's patent application a few hours before Elisha Gray filed a "caveat," or warning to other inventors for a speaking telephone. Thus, Bell's U.S. Patent No. 174,465, which was allowed on March 3, 1876, became the basis of the Bell System and this patent withstood numerous challenges to its validity. Thus, patent disputes have been a part of the telecommunications industry since its very beginning.

8 IPR Disputes Congress Intervenes!

9 Things I learned! 24,400,000 nanometers in an inch and 1 sheet of newspaper is 100K nanometers thick! ETSI Declared SEP Data Base now covers 126,602 patents How Standards in Computer Laptops are Licensed (Biddle, 2010) 3% Pool 22% RF 75% RAND Ex Ante, ANSI PAT POL removed requirement to send proposed licensing terms to ANSI mid 90 s, rarely done, not effective. IEEE has no Ex Ante licensing Declarations same with ETSI, since both organizations modified policies for optional ex ante. Wish List, have SSOs include mandatory ADR language in policy DVB Forum has such mandatory language, but has never been used. 9

10 Things that could be Harmonized or Standardized? Holdup, Hold-up, Hold up? The USDC Eagle and ITC Eagle? Four Criteria of E-Bay vs. ( 337(d)(1))? RAND or FRAND, does the F add much?

11 REAL WORLD Question? Are the licenses that are finally signed covering: Only the SEP for that ONE STANDARD? The SEP and non-sep for that ONE STANDARD? SEP and non-sep for the Family or Technology area? Full portfolio with Cross-licenses and maybe some cash? If an SSO did define RAND and a RAND RATE, would it not only cover the first item above, and is that really useful or a major part of the deal?

Finding Aid for the Alexander Graham Bell Collection, No online items

Finding Aid for the Alexander Graham Bell Collection, No online items http://oac.cdlib.org/findaid/ark:/13030/kt8c6008r5 No online items Processed by K. Lopaty; machine-readable finding aid created by Caroline Cubé Room A1713, Charles E. Young Research Library Box 951575