[3rd version. I discovered this in unsent mail; I'm sending it in case it's still useful, although events may have moved on past that.]
Kirk suggests it would be wise for all members to consult their attorneys before determining which understanding of the IPR policy they support. Position 1 ---------- This position states that the order of events should be: 1) Ballot Formulation 2) Optional Straw Poll 3) Discussion Period* 4) IPR Review Period 5) PAG, if necessary 6) Voting Period 7) "Approval" 8) Document is updated * May be before, after or during IPR review but must be before voting The proponents of this position make the following points: A) "Prior to the approval of a CAB Forum Draft Guideline as a CAB Forum Final Guideline, there shall be..." in IPR Policy section 4.1 means "Before a CAB Forum Draft Guideline is voted on (the Forum's stamp of 'approval' which makes it a CAB Forum Final Guideline), there shall be...". B) IPR policy section 2 states: "CAB Forum will ordinarily not approve a Guideline if it is aware that Essential Claims exist which are not available on RF terms." This suggests that approval comes after the PAG, where Essential Claims are discovered. C) The documented purpose of our IPR Policy for a Review Period is to discover claims of conflicting IP held by a member that the member will not give a free license to, before the Forum adds a new guideline in conflict with those IP claims. That only works if the Review Period occurs before any vote of approval by the Forum and change of documents. D) If we adopt Position 2, then our current strategy of ballots 180 through 182 will fail, because they will all automatically be approved even if there are Exclusion Notices filed, and so the end result is that we will be in a position with the BRs containing all 10 validation methods (and no "any other" method) while we run the PAG. This is contrary to the plan outlined, which was that we would have only ballots 180 and 181 in effect while we run the PAG. This position means that if a PAG proposes to continue with a ballot unchanged, and this recommendation is accepted, then we move to the voting stage. If the PAG proposes a modified ballot text, and this recommendation is accepted, then one would need to start the process again from the beginning with such a ballot. Position 2 ---------- This position states that the order of events should be: 1) Ballot Formulation 2) Discussion Period 3) Voting Period 4) IPR Review Period 5) "Approval" (regardless of IPR Review result) 6) Document is updated 7) PAG, if necessary The proponents of this position make the following points: J) This is what we have done historically (in those instances where we've actually done IPR review at all). K) "Prior to the approval of a CAB Forum Draft Guideline as a CAB Forum Final Guideline, there shall be..." in IPR Policy section 4.1 means "Before a CAB Forum Draft Guideline can be approved as a CAB Forum Final Guideline (which is the final step in the process), there shall be...". L) Sections 7.1 of the IPR guidelines says "The PAG is an ad-hoc group constituted specifically in relation to the Final Guideline or Final Maintenance Guideline containing the conflict." This suggests that while the PAG is working, the document does actually contain the problem - it's not "pending". M) Section 8.1 of the IPR guidelines says: "'Essential Claims' shall mean all claims in any patent or patent application in any jurisdiction in the world that would necessarily be infringed by implementation of any Normative Requirement in a Final Guideline or Final Maintenance Guideline." Therefore, something only becomes an Essential Claim when it's actually included as a Normative Requirement in a Final Guideline. If the PAG happens before the vote, as in Position 1, then nothing is an Essential Claim because it is not so included, and so no disclosures would ever be made. N) Position 1 would allow a small number of Forum members to perform 'denial of service' or 'exploratory reviews' by starting ballots which would not be approved by the Forum but which can be used to explore members' IPR portfolios for free. O) Position 1 would mean that if some members could procedurally deadlock a PAG, then we would never reach the point of voting. This position means that if something IPR-encumbered is voted on and this is discovered by an Exclusion Notice, the change is nevertheless incorporated into the document, and the PAG convenes and works while this is true. The Forum does, of course, have the option of passing another ballot to remove or postpone the application of the provisions in question. Gerv _______________________________________________ Public mailing list [email protected] https://cabforum.org/mailman/listinfo/public
