Document No:
GSC16bis-IPR-05
Source:
TIA
Contact:
Amy Marasco, Brian Scarpelli
GSC Session:
IPR Working Group
Agenda Item:
4.5
"Update on Activities of the
TIA IPR Standing Committee
(IPR SC) and the new
Standards and IPR Policy
Committee (SIPC) Since
GSC-16"
Amy Marasco,
TIA SIPC Chair
Geneva, October 9, 2012
Brian Scarpelli,
TIA
GSC16bis-IPR-05
Structure
• This presentation focuses on important issues that were
discussed within two TIA committees:
– The TIA Standards & IPR Policy Committee (SIPC)
• Reports to the TIA Board of Directors
• Develops and communicates TIA standards and IPR policy
positions external to TIA
• Increased focus on standards and IPR issues worldwide
– The TIA IPR Working Group (IPRWG)
• IPRWG’s responsibility is to review and maintain TIA’s IPR Policy
and associated Guidelines Document, used within TIA’s
standardization process and which are available on TIA’s website
www.tiaonline.org
Geneva, October 9, 2012
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GSC16bis-IPR-05
NIST RFI on Federal Engagement in Standardization
•On behalf of the National Science and Technology Council’s
(NSTC) Sub-Committee on Standardization, NIST sought
public comment (Request for Information) on Federal agency
participation in the development and implementation of
standards and conformity assessment activities and programs
–Specifically, comment was sought on:
•Standards-Setting Processes, Reasons for Participation
and the Benefits of Standardization
•Perspectives on Government’s Approach to Standards
Activities
•Issues Considered during the Standards Setting Process
(including IPR)
•Adequacy of Resources
•Process Review and Improvement Metrics
Geneva, October 9, 2012
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NIST RFI on Federal Engagement in Standardization
•TIA’s filing is available here:
http://www.tiaonline.org/gov_affairs/fcc_filings/documents/TIA%20Comment%20to%
20NIST%20on%20Standards%20022211.pdf
•TIA submitted in its comment that voluntary, consensus-based standards promote
efficiency and interoperability and enable access to new technologies and markets.
•TIA noted that, for governmental entities, the ability to partake in voluntary
consensus standard development has many benefits and is consistent with goals of
the U.S. Government as reflected in the National Technology Transfer and
Advancement Act and OMB Circular A-119.
•TIA noted support for IPR policies which allow patent holders to make commitments
to offer licenses to essential patented technology on reasonable and
non‐discriminatory (RAND) terms and conditions, with or without compensation
•TIA noted its endorsement of the GSC-15-affirmed definition of the term “Open
Standard”
•TIA noted that mandating the ex ante disclosure of specific licensing terms within
such standards bodies would have a chilling effect on participation, contributions and
the resulting standards
Geneva, October 9, 2012
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GSC16bis-IPR-05
NIST RFI on Federal Engagement in Standardization
• In
October 2011, the National Science and Technology Council’s Subcommittee on
Standards issued a report and proposed policy recommendations with regard to “Federal
Engagement in Standards Activities to Address National Priorities:
(http://standards.gov/upload/Federal_Engagement_in_Standards_Activities_October12_fi
nal.pdf
• The proposed policy recommendations included a proposal to “lay out key principles
underpinning voluntary standardization processes”, including that “agencies should
give consideration to the following attributes of standards organization processes:
– “Access and Availability: the text of standards and associated documents
should be available to all interested parties on a reasonable basis, which may
include monetary compensation where appropriate.”
– “Clear Intellectual Property Rights (IPR) Policies: “standards organization IPR
policies should take into account the interests of both IPR holders and those
seeking to use or implement the IP included in the standard or standards. These
policies should be easily accessible and the rules governing the disclosure and
licensing of IPR should be clear and unambiguous.”
– “Timeliness: standards should be available in a timely manner.”
Geneva, October 9, 2012
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NIST RFI on Federal Engagement
• White House Memorandum to the Heads of Executive
Departments and Agencies dated January 17, 2012 (see
http://www.whitehouse.gov/sites/default/files/omb/memoranda
/2012/m-12-08_1.pdf)
– “Both in national priority areas and more generally, agencies
should take into account the impact of their standards-related
choices on innovation and the global competitiveness of U.S.
enterprises, including the impact of intellectual property
incorporated in standards, consistent with international
obligations. On these matters, agencies should consult with
USTR, which has statutory authority on international trade
issues arising from standards and conformity assessment
procedures.”
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Geneva, October 9, 2012
GSC16bis-IPR-05
Office of Management and Budget (OMB) RFI on Federal
Agencies’ Standards and Conformity Assessment Related
Activities
•In March, OMB issued a request for comment and
notice of a May15, 2012 public workshop on current
issues regarding Federal agencies’ standards and
conformity assessment related activities, specifically
to inform OMB’s consideration of whether and how to
supplement OMC Circular A-119 (see
http://standards.gov/a119.cfm).
•This Circular establishes policies on Federal use and
development of voluntary consensus standards and
on conformity assessment activities.
Geneva, October 9, 2012
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GSC16bis-IPR-05
Office of Management and Budget (OMB) RFI on Federal
Agencies’ Standards and Conformity Assessment Related
Activities
•TIA submitted comments which are available at http://bit.ly/OUfOz0. TIA specifically
addressed the issue of “incorporation by reference” or IBR, which refers to the
situation when a Federal Agency refers to a standard developed in the private sector
in a regulation.
•Some parties were advocating that any standard IBR should be made freely
available on the internet in order to ensure “reasonable access” to all aspects of
regulations
• “TIA strongly believes that currently, there is reasonable access to standards
which are incorporated by reference (‘IBR’), and is not aware of any issues
related to lack of access to standards IBR that have arisen in a rulemaking or for
stakeholders that require access to such standards. We believe that numerous
statements of policy from the Federal government reflect a similar understanding
on the part of the Administration and Federal agencies. We urge OMB to consult
the December 2011-adopted recommendations of the U.S. Administrative
Conference (USAC).”
• “TIA wishes to unequivocally state that the term ‘reasonably available’ does not
mean that the information must be available ‘for free’ nor does it necessarily
mean that must be ‘available to anyone online,’ as it has been recently argued in
a petition to the Office of the Federal Register.”
Geneva, October 9, 2012
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GSC16bis-IPR-05
Office of Management and Budget (OMB) RFI on
Federal Agencies’ Standards and Conformity
Assessment Related Activities
•IBR-related points continued:
• “Implementing a blanket policy that all standards IBR are to be made available for
free would seriously jeopardize this ecosystem of trust through which companies
and governmental entities can convene to create standards for industry-wide use.
The fees charged by SDOs for electronic versions of some standards are used to
support the continued activity of those standards organizations. To remove the
ability to collect and protect these fees for protected standards referenced – even
those potentially referenced without the knowledge or consent of the SDO –
would severely curtail the development of further standards to the detriment of
the Federal government and all other stakeholders.”
• “Significant resources and costs are invested in the development and revision of
voluntary standards. While the level of resources and costs required varies from
sector to sector, investment in the development of standards generally reflects
the importance of standards to that sector. In the case of the ICT industry,
standards are crucial to maintaining a competitive marketplace that has proven to
be, aside from one of the most dynamic industries in the U.S. economy, a
cornerstone for the general health of the economy.”
Geneva, October 9, 2012
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Office of the Federal Register (OFR) Request for
Comments on Incorporation by Reference Petition for
Rulemaking
•In May, the OFR sought comment on a Petition for Rulemaking that requests that
regulations be amended to define “reasonably available,” and to include several
requirements related to the statutory obligation that material incorporated by
reference (IBR) be reasonably available.
•TIA submitted comments which are available at http://bit.ly/O1pab4. Key points:
•
•
“TIA holds the position that the text of standards should be made available to any
party on a reasonable basis. We emphasize that, consistent with U.S. copyright law,
the contents of a standard are the intellectual property of the developing organization,
entitling that developing organization to associated rights which cannot be removed
without just compensation. Therefore, when a standard is incorporated into some
other creation, intellectual property rights attached to it should be viewed no
differently than the intellectual property rights of other aspects of the creation.”
“If the Petition is obliged, a great number of voluntary, consensus-based standard
development organizations will either (1) be forced to grossly increase membership
dues on participants, resulting in much lower participation from member companies
and governmental organizations, decreasing and degrading the development of
standards; or (2) be forced to completely cease activities due to a lack of resources,
depriving those reliant on standards – including the Federal government – of their
use.”
Geneva, October 9, 2012
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GSC16bis-IPR-05
The National Academies’ Symposium on Intellectual
Property Management
in Standard-Setting Processes
•The National Academies’ Board on Science, Technology,
and Economic Policy (STEP) has been commissioned by
the US Patent and Trademark Office to prepare a report
on how leading national, regional, and multinational
standards bodies address issues of intellectual property
(IP) arising in connection with the development of
technical standards.
–See
http://sites.nationalacademies.org/PGA/step/IPManage
ment/index.htm
•The National Academies held a symposium on these
issues on October 3-4.
Geneva, October 9, 2012
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GSC16bis-IPR-05
Various Regulatory/Judicial Developments re:
F/RAND Commitments
•The US Department of Justice’s Antitrust Division
approving “Decision to Close Its Investigations of
Google Inc.’s Acquisition of Motorola Mobility Holdings
Inc. and the Acquisitions of Certain Patents by Apple
Inc., Microsoft Corp. and Research in Motion Ltd.,” is
available at http://1.usa.gov/wXgxNv.
•In its announcement, DOJ noted that “during the course
of its investigation of the Google/Motorola Mobility
transaction, the Department of Justice cooperated
closely with the European Commission.”
Geneva, October 9, 2012
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Various Regulatory/Judicial Developments re:
F/RAND Commitments
•On October 10, the ITU will be holding a one-day IPR
Roundtable:
• TIA staff will attend as an observer.
• “This Roundtable will assess the effectiveness of RAND
(reasonable and non-discriminatory) – based patent
policies. The purpose of this initiative is to provide a
neutral venue for industry, standards bodies and
regulators to exchange innovative ideas that can guide
future discussions on whether current patent policies
and existing industry practices adequately respond to
the needs of the various stakeholders.” (see
http://www.itu.int/en/ITU-T/Workshops-andSeminars/patent/Pages/default.aspx)
Geneva, October 9, 2012
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GSC16bis-IPR-05
Various Regulatory/Judicial Developments re:
F/RAND Commitments
•Notable Judicial Decisions:
• APPLE, INC., v. MOTOROLA MOBILITY, INC. (No. 11–cv–178–bbc)
(W.D.Wis.) (Aug. 10, 2012)
• APPLE, INC. v. SAMSUNG ELECTRONICS CO., LTD (No. 11–CV–
01846–LHK) (N.D.Cal.) (June 30, 2012)
• FRACTUS, S.A. v. SAMSUNG ELECTRONICS CO., LTD. (No. 6:09–
CV–203) (E.D.Tex.) (June 28, 2012)
• APPLE, INC. and Next Software Inc., (f/k/a Next Computer, Inc.) v.
MOTOROLA, INC. and Motorola Mobility, Inc. (No. 1:11–cv–08540)
(N.D.Ill.) (June 22, 2012)
• MICROSOFT CORPORATION v. MOTOROLA, INC., et al. (No. C10–
1823JLR.) (W.D.Wash.) (June 6, 2012)
• BARNES & NOBLE, INC. v. LSI CORPORATION, et al. (No. C–11–
2709 EMC) (N.D.Cal.) (Feb. 2, 2012)
Geneva, October 9, 2012
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Various Regulatory/Judicial Developments re:
F/RAND Commitments
•Notable Judicial Decisions cont’d:
•
•
•
•
•
•
•
MEDIOSTREAM, INC. v. MPEG LA, L.L.C. (No. 5:10–CV–05979 LHK)
(N.D.Cal.) (Jan. 24, 2012)
MOTOROLA MOBILITY, INC. v. MICROSOFT CORPORATION (No. 11–
3136 SC) (N.D.Cal.) (Nov. 21, 2011)
Apple v. Motorola (S.D. Cal., Case No. 12CV0355 JLS BLM)
Apple v. Samsung (District Court – Hague, Netherlands, Case numbers
400367 / HA ZA 11-2212, 400376 / HA ZA 11-2213 and 400385 / HA ZA 112215)
Huawei v. InterDigital (Del. Ch., No. 6974)
In the Matter of CERTAIN WIRELESS COMMUNICATION DEVICES,
PORTABLE MUSIC AND DATA PROCESSING DEVICES, COMPUTERS
AND COMPONENTS THEREOF, Inv. No. 337-TA-745 (U.S. I.T.C.)
In the Matter of Certain Gaming and Entertainment Consoles, Related
Software, and Components Thereof, Inv. No. 337-TA-577
Geneva, October 9, 2012
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GSC16bis-IPR-05
Various Regulatory/Judicial Developments re:
F/RAND Commitments
•Notable Judicial Decisions:
• In the Matter of Certain Wireless Communication Devices, Portable
Music and Data Processing Devices, Computers and Components
Thereof, Inv. No. 337-TA-745
• Nokia OYJ (Nokia Corporation) v IPCom GmbH & Co Kg [2012] EWCA
Civ 567 (10 May 2012) http://www.ft.com/cms/s/2/215afb90-e86d-11e1b724-00144feab49a.html#axzz23oVdWpxZ
• Motorola v Microsoft (Germany) (May 2, 2012)
http://www.ft.com/cms/s/2/215afb90-e86d-11e1-b72400144feab49a.html#axzz23oVdWpxZ
•Other Standards-Related Litigation:
• TRUEPOSITION, INC. v. LM ERICSSON TELEPHONE COMPANY
(Civil Action No. 11–4574) (E.D.Pa.) (Aug. 21, 2012.)
Geneva, October 9, 2012
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GSC16bis-IPR-05
Updates/Alterations to TIA’s Engineering Manual by its
IPRWG
•Currently, TIA’s IPR policy appears throughout the
Engineering Manual in different sections.
•TIA’s IPRWG is currently undertaking an effort to
update and consolidate into one standalone document
all IPR-related topics.
Geneva, October 9, 2012
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• Thank You!
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Geneva, October 9, 2012
GSC16bis-IPR-05
Supplementary Slides
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Geneva, October 9, 2012