Subject: Forthcoming draft: draft-farrresnickel-ipr-sanctions

From: Pete Resnick <[email-masked]>
Date: Thu, 26 Jan 2012 17:11:39 -0600

Just a heads-up:

Adrian Farrel and I started work on a draft to focus discussion on 
sanctions that could be applied to violators of the IETF's IPR policy. 
Because of incidents like the present one, we've each been asked by WG 
chairs and others what can be done in response to such violations. We've 
centered our draft around sanctions that are available under current 
IETF procedures, not introducing new ones. The draft  should be 
available in the I-D repository soon. We think this could usefully 
become an RFC and we would welcome discussion.

Thanks,

pr

-- 
Pete Resnick<http://www.qualcomm.com/~presnick/>
Qualcomm Incorporated - Direct phone: (858)651-4478, Fax: (858)651-1102

---

From: "Adrian Farrel" <[email-masked]>
Date: Thu, 26 Jan 2012 23:21:19 -0000

http://www.ietf.org/internet-drafts/draft-farrresnickel-ipr-sanctions-00.txt

> -----Original Message-----
> From: [email-masked] [mailto:[email-masked]] On Behalf Of Pete
> Resnick
> Sent: 26 January 2012 23:12
> To: IETF-Discussion list
> Subject: Forthcoming draft: draft-farrresnickel-ipr-sanctions
> 
> Just a heads-up:
> 
> _______________________________________________
> Ietf mailing list
> [email-masked]
> https://www.ietf.org/mailman/listinfo/ietf

---

From: "Richard L. Barnes" <[email-masked]>
Date: Thu, 26 Jan 2012 18:35:22 -0500

I appreciate that there need to be disincentives to infringing the IPR policy, but I'm a little wary of the idea of codifying a system of sanctions.  Mainly for the sorts of "gaming the system" thinking they engender:
-- Is the benefit of infringing worse than the cost of the sanction?
-- If it's not sanctionable, it must be ok!

Plus, if there are sanctions, then you need a judgement process to decide when the sanctions will be applied.  Is the IETF set up for that?

Rather than bright lines and clear sanctions, it seems like a general culture of conservatism, staying far away from things that could possibly be construed as violations, would be more in tune with the way other things work at the IETF.

No real answers here, just expressing a gut reaction.

--Richard

On Jan 26, 2012, at 6:11 PM, Pete Resnick wrote:

> Just a heads-up:
> 
> Adrian Farrel and I started work on a draft to focus discussion on sanctions that could be applied to violators of the IETF's IPR policy. Because of incidents like the present one, we've each been asked by WG chairs and others what can be done in response to such violations. We've centered our draft around sanctions that are available under current IETF procedures, not introducing new ones. The draft  should be available in the I-D repository soon. We think this could usefully become an RFC and we would welcome discussion.
> 
> Thanks,
> 
> pr
> 
> --

---

From: "Adrian Farrel" <[email-masked]>
Date: Thu, 26 Jan 2012 23:46:34 -0000

Richard,

I think this is exactly the right situation for gut reactions.

The I-D specifically tries to stay away from being formulaic on the application
of sanctions. IMHO the circumstances are too complex to write code to handle.
Each application of sanctions will need human judgment.

We did (under some pressure :-) include an appendix to give some high-level
guidance on "things to think about".

Bright lines and sharp axes would be nice, but even civilized nations rarely
manage to achieve that in law systems. Unfortunate executions of innocent
bystanders is to be avoided.

But I do think the IETF can handle these decisions. They are no harder than
reaching rough consensus on intractable technical issues. And there seemed to me
(when writing the I-D) to be something of a swell of opinion that supports
applying sanctions.

Please continue to massage your gut, and react some more.

Cheers,
Adrian

> From: [email-masked] [mailto:[email-masked]] On Behalf Of
Richard
> L. Barnes
> Sent: 26 January 2012 23:35
> To: Pete Resnick
> Cc: IETF-Discussion list
> Subject: Re: Forthcoming draft: draft-farrresnickel-ipr-sanctions
> 
> I appreciate that there need to be disincentives to infringing the IPR policy,
but
> I'm a little wary of the idea of codifying a system of sanctions.  Mainly for
the
> sorts of "gaming the system" thinking they engender:
> Plus, if there are sanctions, then you need a judgement process to decide when
> the sanctions will be applied.  Is the IETF set up for that?
> 
> Rather than bright lines and clear sanctions, it seems like a general culture
of
> conservatism, staying far away from things that could possibly be construed as
> violations, would be more in tune with the way other things work at the IETF.
> 
> > Adrian Farrel and I started work on a draft to focus discussion on sanctions
that
> could be applied to violators of the IETF's IPR policy. Because of incidents
like the
> present one, we've each been asked by WG chairs and others what can be done
> in response to such violations. We've centered our draft around sanctions that
> are available under current IETF procedures, not introducing new ones. The
draft
> should be available in the I-D repository soon. We think this could usefully

---

From: Hector <[email-masked]>
Date: Thu, 26 Jan 2012 19:07:38 -0500

> become an RFC and we would welcome discussion.

Personally, this may be addressing the wrong problem.

However, I do think that a document or change in existing documents 
has merit to strongly focus on the fundamental idea that the 
integration of IETF RFC published technology is not subject to any 
kind of IPR restriction now or in the future.

Thats really the key problem here and its 100% related to the changes 
to the patent laws and how that has negatively affected the IETF IPR 
model which is old dated.

To the layman, experts call it the new timeline. The problem is the 
simplistic ideas that integrating existing known parts where never 
patentability prior to 1996.  This was relaxed in 1996 with whats 
called "Software Methods" or "Business Methods."  But what really 
changed is the the due diligence was no longer the patent examiner to 
perform the full Markus Analysis. He looked for the obvious but much 
of the responsibility was expected to be done by the applicant.

This is important because it hits home with all the long time systems, 
especially the all the systems out there that use some and/or these 
IETF parts and there is no reason to not expect they could use other 
IETF parts in the future (i.e. SIP).

 From the patent standpoint:

    pre-1996  :  SIP+SIEVE patent WOULD be denied. The PATENT is on 
the new METHOD
                 unique in the SIP+SIEVE integration, not the 
integration itself.
                 And a PHYSICAL DEMO must exist. The IDEA itself is 
not enough.

    1996-~2009:  SIP+SIEVE patent MAY be denied.  The patent MAY 
includes the
                 integration and encompasses all METHODS of integration.

    ~2009+    :  Further relaxation, SIP+SIEVE patent WILL NOT be denied
                 Any prior art disputes must be added to patent.  The 
RIGHT
                 to challenge is not denied but its 100% the burden of 
others.

IOW, now this the patent was filed for SIP+SIEVE, the impact is ALL 
existing systems, based on the 2009+ laws, CAN NOT add SIP to their 
SMTP/IMAP system using SIEVE.

Thats the problem Pete.  In short, I can no longer even consider the 
idea of using SIP with SIEVE any more even if my integrated method is 
unique.

The IETF needs to begin to address this serious problem of people 
using IETF technology parts in some integrated method and makes a 
"Business Method" patent claim.

I guess, if there is any "sanctions" it would be a simple idea that 
once a discovery of a claim is made purely based in the integration of 
IETF parts with nothing novel in the claim, then the I-D and/or RPC 
would be PULLED and no longer be a IETF document for consideration 
without a 100% PUBLIC/FREE/OPEN usage declaration.

Its a tough issue, but I think it becomes simply to deal with once the 
strong idea that mere integration of IETF parts is not patentable 
material.

--
HLS

---

From: Hector <[email-masked]>
Date: Thu, 26 Jan 2012 19:24:06 -0500

I believe one "strong axe" is a fundamental one:

    The mere integration of IETF parts is not patentable material or
    one that allows an new I-D based on the integration that is not
    patent free.

Its is far to easy today under the extremely relaxed patent laws to 
apply for a patent purely based on the integration of existing parts 
and rather than just patent the unique METHOD added to the 
integration, it now covers ALL methods of integrating the parts.

In other words, the IETF IPR guidelines needs to be updated to cover 
the issue.  If this new "sanctions" I-D attempts to update the IPR 
guidelines, then that may be good.

But it needs to address the fundamental problem that existing systems 
can not be denied to add an IETF technology that MAY be very natural 
in its evolution.  I may have a system with IMAP and SIEVE, should 
IETF recognize an IPR claim purely based on adding SIP to this system? 
or should it recognize only the UNIQUE METHOD employed in the integration?

These are all Markus Analysis concepts once used by patent examiners 
and a very strong part of that analysis was that a patent claim COULD 
NOT deny existing systems implement what would be a natural concept in 
its system.

--
HLS

---

From: Eric Burger <[email-masked]>
Date: Thu, 26 Jan 2012 19:53:56 -0500

Shall we also set up a formal committee to hear patent filing accusations, a jury of nomcom-eligible members to pass judgement on the claim, an appeals board for the party that feels the jury made the wrong decision, a process document for the IESG to hear the appeal from the appeals board, a process document for the IAB to hear the appeal from the IESG, a process document for the ISOC President to hear the appeal from the IAB, and a prayer to G-d if the ISOC President gets appealed?

Would it not be easier if we just did public flogging?  It is so much easier to do and so much more fun to watch.

---

From: Stephan Wenger <[email-masked]>
Date: Thu, 26 Jan 2012 16:55:30 -0800

Dear Hector,

I'm not quite sure that your understanding of the US patent law and MPEP
rules is inline with most patent practitioners, or that your post
otherwise make all that much sense.

First, the thing you are talking about are known as "Markush Claim".  From
MPEP, 803.02: "A Markush-type claim recites alternatives in a format such
as "selected from the group consisting of A, B and C."  It deals with the
examiners reaction to situations where there are too many group members
(typically much more than three, A, B, C; those group members are not
sufficiently closely related to deal with them as a group, and where the
examiner would face a burden to examine the the claim because A, B, and C,
each in combination with the rest of the claim, would require a very
different Prior Art search for each A, B, and C.

Second, based on my very quick scanning over the patent application in
question here, your whole discussion does not appear to apply as the
application contains not a single Markush claim.

Third, the developments in patent law (more precisely here: US examination
rules, MPEP, re Markush claims) are US local.  Surely, you don't want to
tie the operating procedures of an international organization like the
IETF to a mere rule change in one legislation.
 
Fourth, your analysis below of what was/is patentable does not seem
correct.  AFAIK, nothing earth-shattering has changed with respect to
patentability of novel combinations of known subject matter.  Markush
claims are about a certain way to express selections, but there are many
other ways.  For example, I believe in bioscience it is now common
practice to avoid Markush claims and rather spell out all combinations in
dependent claims, and just absorb the excess claim fees.  (I have seen
biotech patents with more than 500 claims).

Fifth, and finally, your "idea of a sanction" would result in a major
policy change, essentially disallowing any IETF work moving forward that
is not "100% PUBLIC/FREE/OPEN".  This may or may not be a good idea, but
it's not the discussion we have here.

Best regards,
Stephan

---

From: Dave CROCKER <[email-masked]>
Date: Thu, 26 Jan 2012 17:19:47 -0800

> I appreciate that there need to be disincentives to infringing the IPR policy, but I'm a little wary of the idea of codifying a system of sanctions.  Mainly for the sorts of "gaming the system" thi…

It is likely that we have already been seeing gaming by organizations.  More 
than once and by more than one.

The reality is that people and companies that want to find ways to work around 
barriers they don't like will do that.  The belief that codification encourages 
this is, I believe, without empirical basis.[1]  What /is/ empirically 
demonstrated is that the IETF is in a poor position with respect to such actions 
that run contrary to our culture.

The IETF currently relies on a bit of mythology that worked well 20 years ago 
but is very skewed with respect to reality today.  The core of that mythology 
concerns individual contribution and it's important that we keep it, for all 
sorts of reasons.

What I believe is /not/ worth keeping -- and which we have already made 
piecemeal concessions to -- is that corporations in fact /do/ participate in the 
IETF and need to be treated as responsible participants.  (Note that the word 
responsible, here, has two interpretations.  I mean both of them.)

Organizations that do not adapt to a changed world experience the same fate as 
species that don't adapt.

The fear about codification that /does/ make sense to me is in making rules that 
are superficial, overly detailed, misdirected, excessively rigid, or the like. 
In other words, yes, we need to make changes carefully.  We need to formulate 
clear principles, proper procedures, adequate mechanisms for exceptions, etc., etc.

d/

-- 

   Dave Crocker
   Brandenburg InternetWorking
   bbiw.net

---

From: Pete Resnick <[email-masked]>
Date: Thu, 26 Jan 2012 20:18:26 -0600

Reinforcing some of what Adrian said:

> -- If it's not sanctionable, it must be ok!

This is a line we have worried about. Remember, this document came out 
of us being asked, "What can we do about these violations?" and our 
answer being, "You already have the tools in your bag. Apply them to the 
situation as you see fit." I'm pretty sure we *don't* want a "codified 
system of sanctions", and if the document is too far in that direction, 
I'd certainly be open to suggestions to make it less so.

> Plus, if there are sanctions, then you need a judgement process to decide when the sanctions will be applied.  Is the IETF set up for that?

My view here is that you don't need a "judgment process"; you need 
judgment. That's what the bit in section 6 and the appendix are getting 
at: Members of the community and chairs and ADs have to take a look at 
the situation and decide what is appropriate to the situation. If 
someone is disrupting the process by making late disclosures, they can 
be sanctioned for it, and that sanction might amount to a chair saying, 
"Please try to contribute more productively to the WG by making these 
disclosures earlier", just as they would say to someone who is making 
obnoxious comments to a WG, "Please try to contribute more productively 
by sticking to the technical issues." Or they might fire the person as a 
document editor. Or they might initiate a PR Action. None of these are 
required, and most don't require much formal process. They do require 
some judgment on the part of the WG and chair.

> Rather than bright lines and clear sanctions, it seems like a general culture of conservatism, staying far away from things that could possibly be construed as violations, would be more in tune wit…

I couldn't agree more. As cited in the document, coming up with ways to 
make it more likely that people do the right thing is the topic of 
another document. This was strictly aimed at, "Are there things to do 
when the situation goes pear-shaped?"

> No real answers here, just expressing a gut reaction.

Exceedingly helpful. Thanks.

pr

---

From: Hector <[email-masked]>
Date: Thu, 26 Jan 2012 22:17:02 -0500

> different Prior Art search for each A, B, and C.

My experience come from three folds:

1) As a chemical engineer at Mobil R&D and recalling all the patent 
conflicts (and case history) with Exxon strictly based on the "left 
hand, right hand," twisting and mirroring of chemical and molecular 
structures;

2) Westinghouse training when I was part of a think tank (Advanced 
Ventures Division) where the charter was to "Bring back the light bulb 
business!" We had a "Card Blanc" to look at everything, to see what 
patents will stick, regardless of how simplistic and frivolous.  In 
order to not waste people time, especially the lawyers, I specifically 
recall the chief counsel presentations on Markush with a specific 
summarize outline on the two points:

    a) You can not patent an combination of prior arts.  One new 
unique part
       must exist.

    b) Very importantly, dealing with existing companies that already 
used the
       prior art and in natural evolution could use a new part.  In 
other words,
       you can not deny a company to grow.

3) Moving in my own business and having Reed-Smith as my legal counsel and
dealing with our technologies.  Main point here, much of our system is 
already integration of prior art, and what is not, we decided to use 
trade secrets instead. I was not allowed to patent ideas of the system 
that today I could using the new Patent TimeLine where prior art means 
less.

> application contains not a single Markush claim.

And thats by design because the trick is to claim Plausible 
Deniability because once upon a time, it was a criminal fine to 
intentional ignore prior art and if it were before a judge, he will 
quick toss the patent and will not accept ignorance.   That has 
changed under today's patent laws where now the applicant is allowed 
to update the patent and add the prior art claim.

> IETF to a mere rule change in one legislation.

+1, and the fact its global, makes it more difficult. But the problem 
is universal.

> biotech patents with more than 500 claims).

See above.  The approach today is not to claim specifics and encompass 
the basic integration to avoid the problems in the past.  Its goes 
along with the idea that beneficiary was generally not the inventor 
but rather the 2nd copy cat who was privy now to learn from the 
invention and business/market failures of the inventor.

> it's not the discussion we have here.

I generally try to get away from specific issues and generally more 
interested in solving the overall problem that will serve all.  This 
case is more than likely typical of things to come and the IETF needs 
to be ready for it.

For one thing, the "Note Well" statement means nothing. Its not 
binding whatsoever and its most likely skipped by people.  Its #1 
problem is that it does nothing to address the lurkers. Of course not. 
  So simply reading a work group is just a good material to get ideas 
to patent and guess what?  I don't have to write a single note to the 
group or even write an I-D or anything like that.  So one question may be:

      Does becoming a list member to a working group qualifies you as 
part of the
      Note Well "awareness" regardless of your silent participation?

Second, my only point as a possible consideration is to look at how 
Markush is used as a model for the IETF.  In other words, all the 
parts in the case:

   SMTP
   IMAP
   SIEVE
   SIP

are already IETF sanctioned material and anyone can implement these 
technologies without any IPR related issue.

The problem is not the patent itself, that is already questionable, 
the problem is that the IETF needs to mold the industry mindset so 
that the basic idea of adding SIP to your current system using SIEVE 
is not IPR restricted.   I have no problem with the "Extra Part" that 
makes the integration patentable.  But combing the two MUST not be 
restricted simply because individually there are already unrestricted 
IETF technologies.

Finally, whether or not I am out of the loop of what you deem 
appropriate for the discussion, my only point and I won't waste any 
more time on this, is how I see the issue.  Its more a general problem 
and really not specific to this SIP+SIEVE issue and if the IETF 
doesn't deal with that, this is going to be a very common problem. 
Just consider, maybe I am not the norm, like to do I am, but today I 
will avoid any IETF I-D that even walks, talks and smells like there 
will be any IPR restrictions.

One last point is that my advisers has long recommended that I 
completely stay away from the IETF and especially the working groups 
and list forums, exactly for many of the reasons we see.  I am very 
careful of any I-D I did submit and avoided submitting I-D for ideas I 
felt had possibilities to be patentable material, especially under the 
new patent relaxations for "Business Methods" and less emphasis on 
Markush.  So in one view, maybe that is the outcome we want - for 
people to be more aware of what they are doing.  Don't submit 
something that you know can be problematic,

Anyway, thanks for your comments.

--
HLS

---

From: Lou Berger <[email-masked]>
Date: Fri, 27 Jan 2012 16:05:23 -0500

I agree there are many "gray area" cases that I think it would be best
to shy away from over specifying.  But what do we do when there is a
bright line violation of RFC3979?  IMO I think we should have consensus
on a very small set of repercussions for blatant violations of RFC3979.
 Even if the consensus is no repercussions.  (In which case we've
established that compliance with the IPR policy is optional.)

While I understand the desire for the WG chairs to deal with such cases
on an as-needed basis, it means that the WG chairs scope is being
expanded from managing the development of technical consensus to
enforcing  IPR disclosure rules (including needing to consider about
legal repercussions.)  I don't think this is a good idea.

Lou