Document No GSC 16 bisIPR05 Source TIA Contact

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Document No: GSC 16 bis-IPR-05 Source: TIA Contact: Amy Marasco, Brian Scarpelli GSC Session:

Document No: GSC 16 bis-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

Structure GSC 16 bis-IPR-05 • This presentation focuses on important issues that were discussed

Structure GSC 16 bis-IPR-05 • 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 2

GSC 16 bis-IPR-05 NIST RFI on Federal Engagement in Standardization • On behalf of

GSC 16 bis-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 3

GSC 16 bis-IPR-05 NIST RFI on Federal Engagement in Standardization • TIA’s filing is

GSC 16 bis-IPR-05 NIST RFI on Federal Engagement in Standardization • TIA’s filing is available here: http: //www. tiaonline. org/gov_affairs/fcc_filings/documents/TIA%20 Comment%20 to% 20 NIST%20 on%20 Standards%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 4

GSC 16 bis-IPR-05 NIST RFI on Federal Engagement in Standardization • In October 2011,

GSC 16 bis-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_October 12_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 5

GSC 16 bis-IPR-05 NIST RFI on Federal Engagement • White House Memorandum to the

GSC 16 bis-IPR-05 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. ” 6 Geneva, October 9, 2012

GSC 16 bis-IPR-05 Office of Management and Budget (OMB) RFI on Federal Agencies’ Standards

GSC 16 bis-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 May 15, 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/a 119. cfm). • This Circular establishes policies on Federal use and development of voluntary consensus standards and on conformity assessment activities. Geneva, October 9, 2012 7

GSC 16 bis-IPR-05 Office of Management and Budget (OMB) RFI on Federal Agencies’ Standards

GSC 16 bis-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/OUf. Oz 0. 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 8

GSC 16 bis-IPR-05 Office of Management and Budget (OMB) RFI on Federal Agencies’ Standards

GSC 16 bis-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 9

GSC 16 bis-IPR-05 Office of the Federal Register (OFR) Request for Comments on Incorporation

GSC 16 bis-IPR-05 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/O 1 pab 4. 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 10

GSC 16 bis-IPR-05 The National Academies’ Symposium on Intellectual Property Management in Standard-Setting Processes

GSC 16 bis-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 11

GSC 16 bis-IPR-05 Various Regulatory/Judicial Developments re: F/RAND Commitments • The US Department of

GSC 16 bis-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/w. Xgx. Nv. • 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 12

GSC 16 bis-IPR-05 Various Regulatory/Judicial Developments re: F/RAND Commitments • On October 10, the

GSC 16 bis-IPR-05 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-and. Seminars/patent/Pages/default. aspx) Geneva, October 9, 2012 13

GSC 16 bis-IPR-05 Various Regulatory/Judicial Developments re: F/RAND Commitments • Notable Judicial Decisions: •

GSC 16 bis-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. C 10– 1823 JLR. ) (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 14

GSC 16 bis-IPR-05 Various Regulatory/Judicial Developments re: F/RAND Commitments • Notable Judicial Decisions cont’d:

GSC 16 bis-IPR-05 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. 12 CV 0355 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. Inter. Digital (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 15

GSC 16 bis-IPR-05 Various Regulatory/Judicial Developments re: F/RAND Commitments • Notable Judicial Decisions: •

GSC 16 bis-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 Gmb. H & Co Kg [2012] EWCA Civ 567 (10 May 2012) http: //www. ft. com/cms/s/2/215 afb 90 -e 86 d-11 e 1 b 724 -00144 feab 49 a. html#axzz 23 o. Vd. Wpx. Z • Motorola v Microsoft (Germany) (May 2, 2012) http: //www. ft. com/cms/s/2/215 afb 90 -e 86 d-11 e 1 -b 72400144 feab 49 a. html#axzz 23 o. Vd. Wpx. Z • 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 16

GSC 16 bis-IPR-05 Updates/Alterations to TIA’s Engineering Manual by its IPRWG • Currently, TIA’s

GSC 16 bis-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 17

GSC 16 bis-IPR-05 • Thank You! 18 Geneva, October 9, 2012

GSC 16 bis-IPR-05 • Thank You! 18 Geneva, October 9, 2012

GSC 16 bis-IPR-05 Supplementary Slides 19 Geneva, October 9, 2012

GSC 16 bis-IPR-05 Supplementary Slides 19 Geneva, October 9, 2012