Project: IEEE 802.15 Working Group for Wireless Personal Area Networks (WPANs)

1. Project: IEEE 802.15 Working Group for Wireless Personal Area Networks (WPANs) Submission Title: [DS-UWB IPR Comments Resolution] Date Submitted: [9Sept2004] Source: [John Barr] Company [Motorola] Address [1303 E. Golf Road, Schuamburg, IL 60196] Voice:[+1 847 576-8706], FAX: [+1 847 576-6758], E-Mail:[John.Barr@Motorola.com] Re: [15-04-0377-11-003a-consolidation-explanations-no-vote-confirmation.doc] Abstract: [Response to 802.15.3a No Vote Comments] Purpose: [Explain rationale for how one or more no votes for confirmation of DS-UWB merger #2 proposal have been addressed by the merger #2 comment resolution team.] Notice: This document has been prepared to assist the IEEE 802.15. It is offered as a basis for discussion and is not binding on the contributing individual(s) or organization(s). The material in this document is subject to change in form and content after further study. The contributor(s) reserve(s) the right to add, amend or withdraw material contained herein. Release: The contributor acknowledges and accepts that this contribution becomes the property of IEEE and may be made publicly available by 802.15. Dr. John R. Barr, Motorola

2. DS-UWB IPR Comments Resolution John R. Barr, Ph.D. John.Barr@Motorola.com Dr. John R. Barr, Motorola

3. Overview • Summary of no voter comments regarding IPR. • IEEE policy on patent claims in IEEE standards • Proposed resolution of comments 5, 16, 28, 40, 52, 65, 70, 81, 117, 145, 159, 169, 193, 199, 226, 239, 240, 248, 262 • Comments from no voters Dr. John R. Barr, Motorola

4. Summary of IPR Comments (1) • Roberto Aiello - Intellectual property and RAND: I am concerned that 15 companies have been identified as having potentially IP in the DS-UWB proposal. • Anuj Batra - There are strong IP uncertainties concerning Merged Proposal #2. • Mark Bowles - Intellectual Propterty I have been concerned since the beginning of the process that there were significant IP issues related to merged proposal #2. They have never made a substantial effort to clear up the questions around IP, specifically as it relates to CDMA (I understand that Qualcomm has 3500 patents in this area) and many other areas. It was discussed during the IEEE 802.15.3a meetings that there are 15 companies that may have intellectual property claims to merge proposal #2, and I would need to feel comfortable with their RAND statements before changing my no vote to a yes, especially as it relates to direct sequence spread spectrum technologies and ultrawideband impulse radios, rake receivers, etc. It would be foolish and irresponsible to support a proposal with this kind of IP cloud over it so it will take a full reconciliation of this issue in front of the 15.3a committee for me to change my no vote to yes. Dr. John R. Barr, Motorola

5. Summary of IPR Comments (2) • David Brenner - IP ownership - This remains an issue and must be clearly identified and declared • Ron Brown - There are significant open issues related to IP included in merged proposal #2. • Manoj Chaudhary - Clarity on IPR policy and status - which company holds essential IPRs and policy. • Javier del Prado Pavon - No clear IP position in merged proposal 2 • Jason Ellis, Dave Patton - It was brought up during the IEEE 802.15.3a meetings that there are 15 companies that may have intellectual property claims to merge proposal #2, and I would need to feel comfortable with their RAND statements before changing my no vote to a yes, especially as it relates to direct sequence spread spectrum technologies and ultrawideband impulse radios, rake receivers, etc Dr. John R. Barr, Motorola

6. Summary of IPR Comments (3) • Yongsuk Kim - Unclear on IPR policy for the #2 proposal especially on DS-CDMA and Impulse radio tech. which used in the proposal. I don't know which company has the essential IPR on DS-CDMA and Impulse radio tech, and what the company's policy on the IPR is. • Kursat Kimacioglu - Unclear IPR situation, especially potential infringement on existing wireless technologies • Akira James Miura - The reason is that many companies have IPs relating to DSUWB PHY. We don't know how much the patent royalties are, but may be expensive. That is the reason to vote NO. • Jay O’Conor - Uncertainty of IP positions within Merged Proposal #2 • Mark Rich - I am concerned that there are significant IP uncertainties with the adoption of DS-UWB. • Glyn Roberts - I believe there are IPR/RAND issues with the proposal which have not been adequately dealt with. Jason Ellis provided to the Task Group a list of companies who potentially held critical IPs to this proposal. Dr. John R. Barr, Motorola

7. Summary of IPR Comments (4) • Huai-Rong Shao - I would like the proposers to clear up IP uncertainties. This includes the two options for narrowband interference avoidance scheme. • John Terry - IP ownership - This remains an issue and must be clearly identified and declared • Steve Turner - Freescale has not addressed the IP concerns with their proposal. • Chunhui Zhu - It seems to me that more than 10 companies have potential IP problems with the proposal. Dr. John R. Barr, Motorola

8. IEEE-SA Patent Policy • Within the IEEE-SA standards process, essential patent claims are allowed as long as the companies holding essential patent claims agree to license those patents to companies implementing a device that conforms to a current IEEE standard. • Essential patent: • Essential patents are those patents whose infringement is, or in the case of patent applications, potential future infringement the applicant asserts will be, unavoidable in a compliant implementation of either mandatory or optional portions of a standard. The oversight of the IEEE process is only concerned with essential patents. Dr. John R. Barr, Motorola

9. Call for Essential Patents • The chair informs the members of the working group that if any individual believes that a patent or patent application might be essential to the implementation of the standard, that fact should be made known to the entire working group. • Anyone can respond to this call, be they observers or members of the group. There is no obligation to search patent portfolios and no patent numbers are required to be identified as part of the call for patents--just information that something may be of issue. Once the chair is made aware of this, he or she can send out a patent letter of assurance request to the potential patent holder for official confirmation of information. Dr. John R. Barr, Motorola

10. Patent Letter of Assurance • The patent letter of assurance request is a formal request from IEEE standards developers to potential patent holders both for information concerning their patent and whether the patent holder will be willing to license that patent for use on reasonable and nondiscriminatory terms. • There are three general responses that you can expect to a patent letter of assurance request: • That someone has essential patents and that they'll license them • That someone has essential patents and won't license them • That someone isn't aware of any essential patents • Of course, there may also be no response. • The response from the patent holder serves as further guidance as to whether or not to proceed with the inclusion of the referenced patented technology in the draft standard. Dr. John R. Barr, Motorola

11. Patented Technology in IEEE Standards • If your working group chooses to include possible patented technology in its draft standard, early disclosure of such patents is critical to avoid problems later on in the development process. Early disclosure notifies you and the IEEE of the patent in the most timely manner and gives you and potential patent holders the greatest opportunity to evaluate the benefits that the patented technology may offer your draft standard. However, you should not take any action that could be interpreted as requiring any participant in the development process to undertake a patent search of either its own portfolio or of any other organization. Dr. John R. Barr, Motorola

12. IEEE Standards Disclaimer • "Attention is called to the possibility that implementation of this standard may require use of subject matter covered by patent rights. By publication of this standard, no position is taken with respect to the existence or validity of any patent rights in connection therewith. The IEEE shall not be responsible for identifying patents or patent applications for which a license may be required to implement an IEEE standard or for conducting inquiries into the legal validity or scope of those patents that are brought to its attention." Dr. John R. Barr, Motorola

13. Disclaimer Addendum for LoAs • "A patent holder or patent applicant has filed a statement of assurance that it will grant licenses under these rights without compensation or under reasonable rates and nondiscriminatory, reasonable terms and conditions to applicants desiring to obtain such licenses. The IEEE makes no representation as to the reasonableness of rates, terms, and conditions of the license agreements offered by patent holders or patent applicants. Further information may be obtained from the IEEE Standards Department." Dr. John R. Barr, Motorola

14. General Atomics Royal Philips Electronics XtremeSpectrum (now Freescale) ParthusCeva Ireland (now decaWave) Yokosuka Radio Communications Research Center (now NiCT) Staccato Communications Motorola (includes Freescale) WiQuest Communications Golden Bridge Technology 802.15.3a LOA’s on File Dr. John R. Barr, Motorola

15. DS-UWB Merger #2 Proposal IPR Status • The companies that have contributed to the DS-UWB proposal have filed the necessary LOAs with the IEEE-SA. • The DS-UWB proposal does not require many of the essential patent claims required for the implementation of CDMA cellular phones. The coding techniques used by the DS-UWB proposal are similar to those used in other IEEE 802 standards or have been available to the public for many years. • No company has been identified as having essential patent claims against the current DS-UWB proposal that has refused to license those patents if the DS-UWB proposal is included in the 802.15.3a standard. Dr. John R. Barr, Motorola

16. Proposed Resolution • Accept in Principle: • Resolution: • An IEEE standard must have LOAs on file for all known essential patent claims required to implement a conforming device. The IEEE 802.15.3a task group will ensure that this condition is met. Dr. John R. Barr, Motorola

17. Comments from No Voters • Roberto Aiello, Anuj Batra, Mark Bowles, Dave Brenner, Ron Brown, Manoj Chaudhary, Javier del Prado Pavon, Jason Ellis, Yongsuk Kim, Kursat Kimyacioglu, James Akira Miura, Jay O’Conor, Dave Patton, Mark Rich, Glyn Roberts, Huai-Rong Shao, John Terry, Steve Turner, and Chunhui Zhu: • Do you accept this resolution? Dr. John R. Barr, Motorola