Subject: Re: RIM patents a URN (and ignores IETF IPR rules)

From: Michael Montemurro <[email-masked]>
Date: Thu, 19 Nov 2009 19:38:26 -0500

Dear all,

I understand the community’s concerns regarding the timeliness of the
disclosure.  As I’m sure everyone can understand, 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.

Thanks,

Mike

---

From: [email-masked]
Date: Thu, 19 Nov 2009 20:28:45 -0500

> this matter to alleviate the concerns of the community.

This is true, but as participants in the IETF, you can (and are
expected to) refuse to bring forward specifications for
standardization that blatently violate IETF's rules and processes....

						- Ted

---

From: "Randy Presuhn" <[email-masked]>
Date: Thu, 19 Nov 2009 17:49:14 -0800

Hi -

> From: "Michael Montemurro" <[email-masked]>
> To: "IETF-Discussion list" <[email-masked]>; "Cullen Jennings" <[email-masked]>
> Sent: Thursday, November 19, 2009 4:38 PM
> Subject: Re: RIM patents a URN (and ignores IETF IPR rules)
...
> My company
...

With the long history of "Note Well" slides and notices,
and the claim of http://tools.ietf.org/html/draft-montemurro-gsma-imei-urn
to be in full conformance with BCP 79,
it would seem the time for evaluating "an appropriate course of action"
was some time in the past.

This looks really bad to me, and I'm having a hard time figuring out what an
innocent explanation for this might be.

Randy

---

From: Fred Baker <[email-masked]>
Date: Fri, 20 Nov 2009 10:52:54 +0900

In my company's case, we file IPR disclosures on patent applications  
as well as allowed claims. That is consistent with our corporate  
policy of encouraging innovation and patenting defensively; our  
disclosures as a rule include the fact that we do not seek monetary  
reward unless another party would rather trade IPR licenses mediated  
by expensive lawyers than accept a free RFC 1988 license.

One of the concerns with filing IPR-laden concepts in a standard  
without disclosure is that courts have been known to disallow the  
protections a patent provides when IPR has been disguised in the  
standards process. The IETF policy of disclosure is there to protect  
your patent rights, not disrupt them.

Your patent attorneys may want to rethink that matter.

On Nov 20, 2009, at 9:38 AM, Michael Montemurro wrote:

> _______________________________________________
> Ietf mailing list
> [email-masked]
> https://www.ietf.org/mailman/listinfo/ietf

---

From: "Andrew G. Malis" <[email-masked]>
Date: Fri, 20 Nov 2009 14:00:48 -0500

In this particular case, the patent was published on Jan. 4, 2007, so
it's difficult to imagine any valid reason to not have disclosed then.

Cheers,
Andy

On Thu, Nov 19, 2009 at 8:52 PM, Fred Baker <[email-masked]> wrote:
> In my company's case, we file IPR disclosures on patent applications as well
> as allowed claims. That is consistent with our corporate policy of
> encouraging innovation and patenting defensively; our disclosures as a rule
> include the fact that we do not seek monetary reward unless another party
> would rather trade IPR licenses mediated by expensive lawyers than accept a
> free RFC 1988 license.
>
> One of the concerns with filing IPR-laden concepts in a standard without
> disclosure is that courts have been known to disallow the protections a
> patent provides when IPR has been disguised in the standards process. The
> IETF policy of disclosure is there to protect your patent rights, not
> disrupt them.
>

---

From: "Contreras, Jorge" <[email-masked]>
Date: Fri, 20 Nov 2009 14:38:22 -0500

> -----Original Message-----
> From: [email-masked] [mailto:[email-masked]] On 
> Behalf Of Fred Baker
> Sent: Thursday, November 19, 2009 8:53 PM
> To: Michael Montemurro
> Cc: Cullen Jennings; IETF-Discussion list

Fred - this is not only good corporate practice, disclosure of patent
applications
is unambiguously required by RFC 3977.

---

From: "Contreras, Jorge" <[email-masked]>
Date: Fri, 20 Nov 2009 15:03:17 -0500

> From: Contreras, Jorge 
> Sent: Friday, November 20, 2009 2:38 PM
> To: 'Fred Baker'; Michael Montemurro
> Subject: RE: RIM patents a URN (and ignores IETF IPR rules)
> 
>  
> 
> Fred - this is not only good corporate practice, disclosure 
> of patent applications

Just to clarify:  I was referring to the first part of Fred's paragraph:
what's required is disclosing patent applications, not the other
corporate policies that Fred's company might adopt.

---

From: Fred Baker <[email-masked]>
Date: Sat, 21 Nov 2009 06:50:09 +0900

On Nov 21, 2009, at 4:38 AM, Contreras, Jorge wrote:

>> In my company's case, we file IPR disclosures on patent  
>> applications as well as allowed claims. That is consistent with our  
>> corporate policy of encouraging innovation and patenting  
>> defensively; our disclosures as a rule include the fact that we do  
>> not seek monetary reward unless another party would rather trade  
>> IPR licenses mediated by expensive lawyers than accept a free RFC  
>> 1988 license.
>
> Fred - this is not only good corporate practice, disclosure of  
> patent applications is unambiguously required by RFC 3977.

Of course. But to my small mind, the stronger argument is not "the  
rules say..." but "the reason the rules say that is...".