Apple Inc. v. Samsung Electronics Co. Ltd. et al

Filing 847

Administrative Motion to File Under Seal Samsung's Opposition to Apple's Motion for Partial Summary Judgment filed by Samsung Electronics Co. Ltd.. (Attachments: #1 Trac Declaration in Support of Motion to File Under Seal, #2 Samsung's Opposition to Apple's Motion for Partial Summary Judgment, #3 Hecht Declaration in Support of Opposition to Motion for Partial Summary Judgment, #4 Ex A, #5 Ex B1, #6 Ex B2, #7 Ex C1, #8 Ex C2, #9 Ex D, #10 Ex E, #11 Ex F1, #12 Ex F2, #13 Ex F3, #14 Ex F4, #15 Ex G, #16 Ex H, #17 Ex I, #18 Ex J1, #19 Ex J2, #20 Ex J3, #21 Ex J4, #22 Ex J5, #23 Ex J6, #24 Ex J7, #25 Ex J8, #26 Ex J9, #27 Ex J10, #28 Ex J11, #29 Ex K1, #30 Ex K2, #31 Ex K3, #32 Ex L, #33 Ex M, #34 Ex N, #35 Ex O1, #36 Ex O2, #37 Ex P1, #38 Ex P2, #39 Ex Q1, #40 Ex Q2, #41 Ex Q3, #42 Ex Q4, #43 Ex Q5, #44 Ex Q6, #45 Ex Q7, #46 Ex R, #47 Ex S1, #48 Ex S2, #49 Rosenbrock Declaration in Support of Opposition to Motion for Partial Summary Judgment, #50 Ex 1, #51 Ex 2, #52 Ex 3, #53 Ex 4, #54 Ex 5, #55 Ex 6, #56 Ex 7, #57 Ex 8, #58 Ex 9, #59 Ex 10, #60 Ex 11, #61 Ex 12, #62 Ex 13, #63 Ex 14, #64 Ex 15, #65 Ex 16, #66 Ex 17, #67 Ex 18, #68 Proposed Order Denying Apple's Motion for Summary Judgment, #69 Proposed Order Granting Samsung's Administrative Motion to File Under Seal)(Maroulis, Victoria) (Filed on 4/2/2012) Modified on 4/3/2012 Attachment #1 Trac Declaration placed under seal. Posting of attachments #16, 18, 19, 20 through 33, 37, 38, 47 and 48 are NOT in compliance with General Order 62 (dhm, COURT STAFF).

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EXHIBIT 9 ETSI/GA20(94)2 ANNEX XX Final Texts from 3rd Plenary meeting 4 Pages Confidential Business Information, Subject to Protective Order S-ITC-003390494 ETSI Special Committee on IPR 24 June, 1994 SAUNTEHUS Final text - 180 days The parts between brackets, [ ], are not agreed upon. All committee members agree that lg A complete and stable draft of a standard available to all ETSI members is necessary before a member can effectively identify IPRs and evaluate whether or not to withhold a licence for such IPRs. A TC-approved draft, when typed, reproduced and distributed ta all ETSI members can form a stable draft sufficient to perform an IPR evaluation. Efforts should be undertaken to attempt to achieve such a stable draft at an earlier time. 3~ 4 ¯ Unless an IPR holder has participated in the elaboration of a TC-approved draft standard, IPR holders shall have 180 days from the time of distribution of an approved draft standard by the TC to provide notice to ETSI of the withholding of Essential IPRs. If an IPR holder is such a participant and has received the TC approved draft of the standard, then the IPR holder has 90 days from the time of distribution of the approved draft by the TC. Any essential IPRs not withheld by the end of this 180day (90-day) period shall be available for license by other ETSI members on terms and conditions consistent with the Undertaking. ETSI should, before implementation of the notice procedure, review its practices to have the definition of "Participation" reflect actual involvement in the elaboration of draft standards. A review should be conducted after one year after the new notice procedure begins to review its effects. A member whose written technical proposal is approved by the TC substantially as proposed has waived its right to withhold his essential IPR contained in that technical proposal. [IPR searches, to the extent they are to be performed, shall be carried out [by IPR holders or on their behalf] [by ETSI or on its behalf]. Note i: Preferably the period of withholding should be completed before the start of public enquiry. [Note 2: once a standard is approved, the right of use for any IPR related to the implementation of that standard may be refused only if the IPR owner can prove that the IPR is not Essential for the implementation of the standard. In case the previous paragraph is not finally agreed upon, the inclusion of the term "Essential" contained above is also not agreed upon.] C:\FNL\24D.3rd Confidential Business Information, Subject to Protective Order S-ITC-003390495 Special Committee on IPR PROCESS FOR NEGOTIATION OF A The Chairmanship intends to build of working groups at the first having, at least initially, a groups. The use of small groups members have an opportunity to see as well as the Common Objectives plenary meeting, are covered. 21 June 1994 COMMON SOLUTION on the success of the use two plenary meetings by number of small working should ensure that all that their own concerns, established at the last The process that will be followed in this meeting is as follows: I. In each group the members will negotiate towards establishing a draft Common Solution on each of the 4 issues. 2. As the work progresses the groups will be combined and/or reformed to bring together the various draft Common Solutions emerging. 3. In plenary session, the committee will review and integrate the drafts into a final text for a Common Overall Solution for the 4 issues. WORKING PROCED~E FOR GROUPS i. Each group will work separately, and publicise its progress through Plenary or other Sessions in the Plenary room. A group may report on its progress to the Chairmanship at any time, or at the request of the Chairmanship. 2. Each group will be self governing - the Chairmanship is available to resolve disputes that cannot be settled internally. During the process the Chairmanship will monitor progress being achieved in the groups and the Chairmanship will be available for consultation, advice and assistance to groups, as well as individual members, whenever needed. 3. Merger, creation, or disbanding of groups will be with the agreement of the Chairmanship. 4. The Chairmanship will be available each day between 08.00 and 22.00 to assist in the work of groups as mediator, or to meet with members in private bilateral consultations or multilateral meetings. 5. New Documents should only be introduced into the committee through the Chairmanship. Confidential Business Information, Subject to Protective Order S-ITC-003390496 III Most Favoured Licensee Provision [A Clause 3.1 4th indent should be deleted.] Note i: Note 2: IV A minority insisted to keep this clause. An alternative proposal was made to delete the present clause (which obliges the licensor to notification) and to address this question within the context of non discrimination. Clauses 6.216.3 of the Undertakinq [A B [C ETSl-members holding essential IPRs should be entitled to royalties for past use.] Clause 6.2 should be maintained. Clause 6.3 should be deleted.] Note i: V Maximum royalty provision - clause 6.5 of the Undertakina [A Clause 6.5 should be deleted.] Note i: vI A minority felt that principle A was not acceptable and that clause 6.3 should be maintained. A minority is against such deletion Clause 3.4 of the Undertakinq [A Maintain present clause, but add at the end: Any such license granted upon settlement may be subject, however, to a reservation permitting the licensor to recover any additional compensation in excess of compensation due for the period of use prior to the settlement date.] Note I: A minority is against such addition. C:\FNL\24M.3rd Confidential Business Information, Subject to Protective Order S-ITC-003390497 page 2 the Work Programme to the end of Public Enquiry. The group underlined that there is a difference between members who participate in the technical work in TCs and STCs. Mr. H~nauk asked whether WG A had considered dl/PRs in genera!,~ or made a ~¢tlon for eesential IPRs. Mr, Peters answered that it is to the IPR holder to consider if his IPR is essential or not. Mr. Viklund asked whethe~ WG A had considered during their discussions the question of Accelerated Unified Approv~l Procedure and stressed that the members should be aware that there could be an acceIerated pme, zdurz. ML Pelion answered that the WG A had not been into details at lids stage. Th~ Chairman thanked Mr. Pelion for his preseatation and gave the floor to the spokesman of Group B. Mr. Hendon, spokesman of Group l], presented the results from his group. They considered two principles: In the case a member is participating in the standardization work in an STC, he shall luive a period of 60 days to state withkolding of specific essential IPR from the date when the stable draft is STCiTC approved. In the case a member is not participating in the standard~fion work, he shall have a period of 90 days to state withholding of specific essential IPR from the date whm ETSI distributes the stable draft to Members requesting to receive such distribution. WG B left for discussion whether a draft is stable at the point of STC approval or TC approval. Mr. Hendon informed the Chainmnship that WG g had started working on the issue of "monetary compensation’, that they had agr~d on the main points but that they had not finished their work. Mr. Ruikka said that all companies are not interested in all the work of all technical committees and did not want to receive alI huge piles of documents. The Chairman thanked Mr.Hendon for his presentation. Mr. Becker. st~okesman of Grout> C, presented the result of his group. He reported that discussions arose in the group regarding the terms "fioensor" and "licensee’. Then, he read a statement on behalf of STET and ITALTEL that the rest of the group accepted to note, although they did not agree with the content: "SIFT and ITALTEL do not agree with any solutions (on any issue) that implies acquiescence in the pasition that licences are needed by any member of ETSl for use of essenaal IPRs owr~d by other ntonb,~ of ETSL Rather STET and tZ4LTEL would use language r(ferring to terms and conditions governing the use of IPRs that are essential for practicing E~[ standards. 27~e terms qicence ", "licensor" and "licensee" are used for simplicity of reference only." He reported that the group agreed that a complete and stable draft available to all ]~TSI members was necessary to identify essential IPRs. They agreed that the starting point to perform an ]]3R evaluation was identified as stage 7 (STC approval). The next point of agreement was that 180 days from the time a stable draft is available should be provided to provide notice to HTSI if n Member wants to withhold his IPRs or not. If substantial changes are made between STC sppmval and TC approval, then another period of 180 days should be givem. WG C could not reach agreement on the nature of the evaluation and there were two fundamental differences: - if an IPR is not specifically withheld after the 180 day period, then it shall be available for licensing by default; - a good faith effort sludl be undertaken by the IPR owner without incurring an obligation to license if IPR is not discovered during the 180 days period. The group could not reach an agreemeat on the nature of the notice to be given to ETSI: - notice need only be giwn on essential IPRS; - notice of all withheld IPRs need to be notified to ETSL Confidential Business Information, Subject to Protective Order S-ITC-003390498 3 Mr, Booker concluded that every Member should be informed alxmt the work of STCs, to be abl~ to carry a search. Substantial changes to the draft must be notified to all ETSI Members. In the liBht of what Mr. Becket reported for WG C, r.~ reported that the principle of licensing by default was also ~med in WG B. The Chairman thanked Mr. Becket for his presentation. Mr. Loyau, spokesman for Group D, presented the r~uIts of his group through h’ausparencies. The group started with the principle that ETSI Members are willing to grant lieea~s, Whe~ an STC ~ stAr~g to work on a work item, ETSI has to inform about the scope, the table of contents and the key e|emeilts. During the period between the start of work and the draft is m:eived by ET$I, ETSI has to pre-notify when importa~ milestones are azhieved in order to focus on oertain se.arc, hes, When the STC has approved a document (with a preseatati~m of search oriented information), ETSI notifies to all ETSI Members with copy of the document. All Members have 60 days w notify beforv start of PIi of wi&holding of essential IPRs. After the start of PE, and if no information on withholding, IPRs are deemed to be licensed. The Chairman thanked Mr.Loyau for his presentation, but asked for clarification, why only the milestones STC approval and Public Enquiry were mentioned, while there was no mention of TC approval in the presentation. Mr.I.~yau answered that they did not take too much care about TC approval, because, u~ally, no substantial modifications ~-e made. Mr.Hendon stated that people had to recognize that all Members had to give concessions and had dear ideas about what they vvtfld give away and what things they were not prepared to give away. Mr.Loyau said that the target of the Committee was to come up with a proposal to the GA and that nobody was bound to vote in favour. The ultimate answer would be the vote at the GA~ The Chairman thanked the four groups for their good work and reminded the meeting that the work would atart the day after at 9.00 hours. Wextnesiay 22 June 1994 The plenary se.~ion reconvened at 9.00 hours. The Chairman thanked the Committee members for the excellent work carried out stud stated that the results achieved exceeded the Chaimumship’s expectations. On the basis of the experience gained, the Chairmanship wondered whether some adjustments on the procedure were appropriate. The Chairman stated that the aim was the establishment of a common solutionby the end of Thursday to enabl~ the Committee to elaborate a more de,~il~l common ~olution on Friday, Thus, he advised memb~B to dediva~ Thursday on the integration of the results of the work of the four groups who should then ~ their work by the end of the day. The 4 groups should produce a paper r~flecting the results achieved and the 4 group documents will serve to start the integration process. In order to facilitate the integration process, the Ctmirman asked members to produce the results in a common form, He then asked the Vice Chairman to present the Chairmanship’s conclusion regarding a common format for solutions. Confidential Business Information, Subject to Protective Order S-ITC-003390499 ETSI/GA20(94)2 ANNEX XVIII Minutes of 3rd Plenary meeting + List of Participants 23 Pages Confidential Business Information, Subject to Protective Order S-ITC-003390500 Third Plenary Meeting of the IPR Special Committee Satmtehm, 21 - 24 June 1994 Mr. ,Jr AbiM Az~derseq, Chairman of the ~R Special Committee, opened the seasion and bid the participants welcome to Sauntehus. He gave some historical background about the place and its good reputation: it is the place where the former Prime Minister, Mr. Poul ScMfiter, used to hold meetings with his Cabinet, inter alia, to prepare his opening speech to the Parliament. He made refezence to the fact that Mr. Schlfiter’s Cabinet - ev~t though it was a minority govemmeat - was in office for ten years. Thus, Ssuntehns has proved to be a good place for obtaining a compromise. He thanked the members who had submitted camtn~utions to the Chairmanship to allow the drafting of the consolidated document which was seat by fax to the Committee members. The Chairman stated that he highly appreciated the efforts utrried out and that he had great expectatitms for the work to be carried out in order to reach a compromise on the 4 is~aes of the mandate. Regarding the schedule for next week, the Chairman said that the meeting origimdly planned for two days will be reduced to a one day meeting for the drafting of the report, i.e. 29 June, as all discussions on substance wer~ supposed to be finalized this week. He reminded the members of the Committee that they should respect the boundary lines, i.e. to only deal with the 4 issues mentioned in the mandate and to respect that only a pragmatic approach by members would enable the Committee to reach a common solution before the deadline of the end of the week. The Chairman went through the Agenda and reminded the meeting that the day had come when discussions on SOLUTIONS should take place. Mr. R. Buttdck, Vice Chairman of the IPR Special Committee, also welcomed the pmic~t8 and presented a paper on the "process for negotiation of a common solution’. He explained the thnm stage, of the process: each group to establish a draft common solution on each of the 4 isstum; the groups to be combined or reformed in order to bring together the various draft common solutions; the committee then to review in plenary session the drafts into a final text for a common overall solution for the 4 issues. He reminded the meeting that the Chairmanship would be available from 8.00 to 22.00 to assist the work of the groups. Mr. panfili stated that the aim of the Committee was to create comensm, i.e. the same feeling on the matter discussed. He said that his impression was that no step forward had been accomplished through the work of the Committee and felt that the splitting into 4 different groups was a loss of time. The Chairman explained that the Chairmanship had chosm to present the working papers as 4 separate papers and advised members to start with the first 3 items, i.e. "180 Days’, ’Monetary Compensation" aad "Arbitration’, leaving the issue of "Standards Application Area" for the last part of the discussions. Mr. Viklmad read the def’mition of "consensus’, ,r.ording to the ISO Guide 2, Pare. 1.7: "General agreement, characterized by the absence of sustained oppositio~ to substantial issues by any important part of the concerned interests and by a proceas that involves seeldng to take into account the views of all parties concerned and to reconcile any conflicting arguments. Note: Con.~ensus need not impty unanimity," Dx. Bolos replied that uasuimity without consensus does not exist. The plenary meeting then split into working groups to prepar~ a draft solution in each group. After dinner, the working groups reconvened at 20.00 hours for tt one-hour session. At 21.00 hours, the Committee members came back into a plenary session. The purpose was to give information from each of the 4 groups to the other 3 groups regarding the issues. "180 DAYS" ISSUE M,. Pel)on. sookesmsu of Grout~ A, presented through a diagram the reaults of the discussions in WO A regarding a proposed solution. The group identified the different stages of the standards elaboration process, from the creation of a work item in Confidential Business Information, Subject to Protective Order S-ITC-003390501 page 4 The Vice Chairman asked the groups to produce their ideas i, the similar format used by WG B the day before, i.e. establishing first statements or principles agreed within the group by consensus, then writing a series of notes on divergence of opinion. Mr, Dunkel said that the paper of Group B had riot been distritmted. Mr. Hendon, spokesman of WG B said that it had been agreed within Group B net to distribute their paper. Mr. H~anlt said that just the model of the presentation would be enough. "I’Ve Vice Chairman undertook to prepare a model for use by the groaps. The Chairman predated the tvTised draft Agenda. The modification of the time schedule aimed at taking into account the fact that information on the progress made in each gro~ should be available to the other groups; lind that we had to limit the number of plenary’ sessions to help the work of the woridng groups. Mr, Hasse stated that the time allocated for the working gtonps was too limited and proposed not to sprit the two group sessions. Mr. Hendon agreed with Mr. Hasse and proposed a one-hour plenary session before lunch after the two-hours group session. This was agreed and a new revised Agenda would be issued. The meeting adjourned and reconvened at 11.00 hours. "MONETARY COMPENSATION" ISSUE Mr. Peters presented the results fromGroup A on monetary compensation. He started with the prh~iple that both monetary and non-monetary compensation shoutd be allowed. According to some members the non-monetary compensation should apply to relat~ IPRs only, notably improvement parrots, other members showed great flexibility and proposed no limitation at all regarding n~-m~netary compensation, provided that it was fair and reasonable. - Regarding "fair and reasonable’, them was a general consensus that it should be fair and reasonable both to licensee and licensor. Regarding "non-discriminatory" terms and conditions, nonMiscriminatory does not mean identical trmttw~t. Regarding the most-favoured clause: it was proposed to keep it as it is i. the Undertaking, Regarding Clause 6.3: it was proposed to change it into the MDB proposed text. Regarding Clause 6.4: there was a genend consensus to maintain the present text and add the second pamgrsph of MFC. Regarding Clause 6.5: them was a general consenstm to delete it. Mr. Peters reported that it was too early to report on the issue of "Arbitration’. ~[’he Chairman thanked Mr. Peters for his report. Mr. Hendon presented the results from Grotr0B on monetary unn~nsation. He stated that the group had reached a good level of agreement. On the main issue, it was stated as a principle that licenees may include both monetary and non-monetary compemation, and that non-monetary compensation should be restricted to patent llcences only and to the same or related technical field. Inability to give non-monetary compensation should not lead to a refusal of licence, Both monetary and non-monetary compensation must be fair, ~ble and non-discrimlnatory. Nondiscriminatory does not noeessarily imply identica/terms. Regarding "past infringement’, the group found it sufficient to state the principle of Clause 6.2 and proposed to delete Clause 6,3. Mr. Hendon underlined the fact that each country has its own national laws regarding contractual matters and that it is not the role of the Undertaking to amend national laws. Confidential Business Information, Subject to Protective Order S-ITC-003390502 page 5 Regarding "maximum royalty’, the group considered that Clause 6.5 should be deleted since its role could be fullfilhd by good faith negotiations, or perhaps by a new clause: "As ~ as ETS] becomes aware that the total loyalty level may become burdensome (e.g. where there are multiple potentially eesential IPRs), ETSI shall take the initiative to convene a mooting to consider poss~ilities to reduce the burden (by establishing appropriate lic~asing terms with the essential IPR holders or by amendment or withdrawal of the Standard)." Regarding "fair and reasonable terms’: if there is a dispute, that should be addressed through the dispute resolution mechanisms. Regarding "most favoured licensee’, the group believed that tho requlmaaent of most favoured licensee is related to both "fair and reasonable" and "non-dlscriminatory" aspects, and should be leR at the s~tem~t of principle. The Chairman thanked Mr. Hendon for his report. ,., Mr. Lovau vreseated the results from Oronv D on moneta~ coition. The group had more or less reached an agreement on: The licence has to be non-exclusive, fair, t~tsonable, non-discriminatory (not n~.essarily identical) for lioensor as well as licensee. The licenoe can be against monetary or non-m~etary compensation. In case of non-monetary compensation, it has to be related to the area covered by the IPR. Unless otherwise agrood by licensor and lioeaseo. One member of the group wanted no limitation in case of n~-monetary compensation. The group agreed on 6.2 but reached no agreement on 6.3. The group agreed on the proposed teat in MEC (re Clause 6.5) The group agreed on the proposed texts of MFB or MFC (re Claus~ 3.4) The Chairman thanked Mr. Loyau for his report. Mr. Becker presented the results from Group C aad apologiz~ for the delay in producing a paper. He first reported small amendments to the paper produced the day before on the "I80 Days" issue: the group r~onsidered the starting point from TC approval (instead of STC approval) and indicated a period of 180 days from this stsnmg point. Howevez, there is a point of flexibility to agree on a period of 90 days from this starting point, depending on the results of the whole package, Regarding monetary/non-monetary compensation, principles were agreed upon: Both monetary and (if requested) non-monetary compensation must be allowed. Compensation must be fair, reasonable and non-discriminatory. Any non-monetary compensation shall be limltedto li~ of patents. Non-monetary compensation should be limited to granthacks of lioeaoos ander patents wh;¢h are improven~ats to ~ t~sential lic¢~nsed patent. The group was faced with points of disagreement: Is "essential" required in the granthack provision? (50/50) What should be the tim~ of notice of ~quired compensation? The majority was for the availability before TC approval. A minority said that there should be no specified time. Regarding payment for past use of IPRs, the majority was for no compensation for past infringement. Regarding "fair, reasonable aad non-discriminatory’, there were two opinions expressed: upon proof by an IPR owner to an ETSI "compensation committee"; upon negotiation between licensor and licenaee. In caae of non-monetary compensation, the question was raised about the ~ to have a "compensation committee’. Regarding the most-favoured licensee provision, the majority of the group was in favour. Confidential Business Information, Subject to Protective Order S-ITC-003390503 page 6 Mr. Nasrullah expressed his confusion about the presmtation on what was actually agreed UlXm in Group C. Mr.H6nault mmwered that there were clear agreements on WHAT was fair, reasomtble eta. Thate was still some divergmce of opinion on HOW to ~ if it is fair, reasonable etc. bat th~ there was no teal eontatdi~om. The Chairman thanked all Committee members He invited the ffroups to reconven~ after lunch at 13.30 hours and informed tlmt the plenary will reconvene at 16.30 hours. "ARBITRATION" ISSUE The Chairman invited the spokesmem of the four groups to present the results from ear& group. Dr. Huber t~resemted tho rt~lts from Group A on "Arbitration’, The group agreed on the principles that Arbitration should be based ee ICC rules, using the ICC Court of Arbitration; that Arbitration should final and binding; that French substantive law should apply to Arbitration; that disputes on Essentiality shmdd not be decided by Arbitration. He reported that the majority of the group thought Arbitration should be mandatory whereas the minority felt that arbitration should only take place if the ~uting parties so agreed. Mr. Lox.~ said that French courts will only be able to deal with ~tiality as a subsidiary question in an infringement case. Mr. I-Iasse asked which tmfional court will be used? a court of the country where the patent is valid? Mr. Hendon pres~ted the results from Grouv B on * Arbitration’. The group had disctmed a three-step compromise approach. - Parties should use all necessary efforts to resolve their disputes through bilateral discussions. He said that, although this was to state the obvious, the group wanted to put an emphams on this first phase. In case negotiations failed to succeed, the parties should carry out arbitration under ICC rifles, This award is binding unless one of the parties refers the dispute to the French courts within 30 days after the award. The group issued three notes: - Each party ~ould appoint au arbitrator and the third arbitrator (chairman) could be agreed by the first two ones or appointed by the ICC. The C",airman should have qualifications and experieace. Disputes related to essentiality, infringement, and validity slxadd be within the jurisdiction of the courts. It should be leR to the pattie, to determine whea the negotiations should be considered as having failed. Mr..Booker preoented the results from Group (2 on "Arbitration’. The group stated principles similar to Groups A and B: Parties should be encouraged to settle disputes fl~ough bilateral negotiations. When the parties cannot settle the disputes, they should seek settlement through non-binding mediation. ETSI should have no role in negotiationB, mediation or arbitration, unless the parties so agree or unless ETSI itself is a party in the dispute. If parties cannot agree on negotiation, mediation, tcbitr~on, the matter should be settled in court. Arbitration p~_.eedings should be conducted in ~ce with the ICC rules. Questiom of infringement, validity and essentiality could only be d~ided by a court of competent jurisdiction. The group could not agree on: whether questions of essentiality should be de~rmined by a single court of competent jurisdiction or whether any court of competcut jurisdiction can decide on questiom of essentiality. whether, if a single court should decide questions of essentiality, that court should be the com’t where XTSI is located. whether the IPR owner must demoastrate non-esseatiality in any court proceeding of an IPR after the publication of the standard. Confidential Business Information, Subject to Protective Order S-ITC-003390504 page 7 They could not agree that disp.te.s between ETSI Members and ETSI can be put to Arbitration provided that it is ruled by apptication of the ETSI Statutes and PoP. Dr. Bores said that this problem rose the most difficult discussions in the group if arbitration should apply to disputes between Members against Members and ETSI Members against ETSI. H~ continued by saying that it would be morn appropriate to modify the Statutes and the RoP to avoid the sing of the Undertaking. The Chairman replied to Dr, Bores that the question of sigaam~ of the Undertal~g will be deah with at a later stage. Mr. Lovau orese~ted the results fzom Grouu D on "Arbitration’. The group agreed in general to keep the present text as it is. They had similar views as the other groups, i.e. the 1aLlies should try first an amicable ~r,,edm’e; if the parties agree on arbitration, the arbitration should be final and binding; the third arbitrator should be appointed by the ICC if the two first arbitrators fail to appoint the third one. He reported that WIPO (World IntelJectmd Property Organization) had proposed to set up an intematiorml tribunal, which might be considered as a future solution.He also reported that one member wanted essentiality out of the scope of arbitration. "STANDARDS APPLICATION AREA" ISSUE Mr. Pelion presented the results from Group A on "$AA’. The group reached no agreement on guy principle which could form a basis for a solution. The unre~Ivod issues were noted: The fundamental objection relates to the wi]Iingneas to address the licensing of ETSI standards outside CEPT countries. This unwillingness to apply the ETSI IPR rules does not automatically mean that lice, aces related to ETSI standards will not be made available outside CEPT c, oun~es. It was proposed that each standardization body approving an ETSI standard might decide not to apply the ETSI IPR rules in its territory. One member considered this as self-evident. Some members are unwilling to have affiliates outside CEPT bound by the Undertaking when they have no vote in the acceptance of those obligations. Mr, H~ndon uresented the results from Orouu B on "SAA’. The group was unable to reach a consensus. He reported the two approaches which received the widest support. The first appro~h was to remove the concept of SAA entirely and have world-wide commitment. This would mean that licenc, es would extend to both exports from Europe to any country for products manufactured according to an ETSI standard and to imports from anywhere for use in Europe. The second approach was to modify the structure of SAA, and adopt the main principle stated iu the SG proposal, i.e. "let local standardization body IPR rules apply, unless they fall short of actual availability of lice4aces on fair, reasonable and non-discriminatory terms, but provide that if such availability is in an actual case not achieved for a given standard (corresponding to an ETSI Standard), the~ ETSI rules would apply between SIGNATORIES (and their AFFILIATES) for licensing of Essential IPR for that standard." r.~ asked the group whether they had discussed the issu~ of who has the burden of proof regarding this availability. It was answered that the group did not discu~ this i~. A dlscussion ensued regarding the nez:d to have lib.,ace agreements for each standard in e,~h couatry, depending on the rules of the NSO. Mr. Becket uresented the results ho~n Grouu C on *SAA’. The group agreed on the principle that SAA should include CEPT countries, with rights to manufacture outside CEPT countries for import and use in CEPT countries. Confidential Business Information, Subject to Protective Order S-ITC-003390505 page 8 The group discussed the proposals contained in SF and SG of the Chairmanship consolidated dooument and agreed on some support for SG. Mr. LoTau.presented the results from Group D on "SAA’0 The group considered the principle contained in SF as acceptable as A starting point, but had concerns on how to solve the problem of reciprocity and world-wide manufacturing. The only alternative would be to have world-wide licensing. The Chairman thanked all four groups and onsidet’ed that now the four ~s were able to deliver four papers on each issue to the secretariat in order to produce a consolidated paper showing the areas of agreement and the areas of disagreement for all groups on each issue. The plenary meeting adjourned at 18.00 hours. Thursday 23 June 1994 Preparation of "Integrated" drafts The Chub’man welcomed the Committe~ m~mbo~ and thanked them for the good work carried out, The task of e,a~h group now would be to work on ta "integrated" draft document for each issue, taking into account the drafts of all four groups. The consofidatod "superdraRs" on the two issues of "180 DAys" and "Arbitration" should be submitted to the Chairmanship before lunch. Regarding the issues of "SAA" and "Monetary Compensation’, the Chairmanship proposed to establish two small ad hoc groups to work on these ~ific issues on the basis of a set of terms of r~ference. The ,,t hoc groups should submit their work to the Chairmanship as soon as possible. This was agreed. The ad hoc group on "SAA" was chaired by Mr. Hendon (DTI), assisted by Messrs. Pellon (Motorola), Dunkel (IBM), Peters (’Philips), and Ha,sse (Siemens). The act hoc group on "Monetary Compensation" was chaired by Mr. Ruikka (’Nokia), assisted by Christine MAury-Panis Crhomson) and Dr. Huber (Bosch). The plenary adjourned for members to work in the working groups and ad hoc groups. The plenary reconvened after lunch At 13.30 hours. Back in the plenary, the Chairman welcomed the new participants in the Committee: Mr. Bonnier (France Telecom) and Mr. Montfort (French P&T), tad asked the chairmen of the two ad hoe groups to present the results of their work. Mr. Hendon presented the results of the work of the ad hoe erouo on "SAA’. He stated that each member of the group reserved the positions of their companies, but had tried to reconcile the opinions which were fundamentally different. However, the group had tried to find a compromise. Mr. Hendon presented four elements of a possible compromisa: The Signatory should undertake to grant lice, n0es inside CEPT i. accordance with the Undertaking, and licences should allow importation of equipment manufacturgi inside or outside CEPT. The Signatory should affirm his intention to enable ETSI standards to be adopted outside CEPT. The Signatory should undertake, following such adoption, to enter negotiations in good faith and use reasonable eadeavours to achieve agreemeat on licensing outside CEPT, on fair, reasonable and on-discriminatory terms, with any ETSI Member who seeks such A lice, ace, which licences will allow the import of equipment manufactured inside or outside CEPT. Once a standard is adopted by a standards body in s non-CEPT country, the principles of the previous paragraph should continue to be applied within the rules of th~ standards body when licensing in that territory. Confidential Business Information, Subject to Protective Order S-ITC-003390506 page 9 Mr. Nasrullah made the remark that when looking at the objective of ETSI in the Statutes and PoP, we find the basic principle of SAA, i.e. ’the large unified telecommmlicefions market’. Dr. Boros asked what was the differ~ov betw~n the text of the Unde~king and the text pmlmsed by the ad hoe group. Mr. Hextdon attswered that, whereas the Uadeaaking ~pulated a firm obligation, the text proposed by the act hoe group merely conUfined an undertaking to enter into negotiations in good faith. The concept of SAA was deleted and it was a question of normal bilateral negotiations. Mr. Ruikka ore, stated th~ results of the ad hoe mrouv on "Monetary Coition’. He reported that it was really a tough task to find any area acceptable to all parties. The group stated that: Parties are frame to conclude license agreements on any basis found mutually acceptable and shall use all necessary efforts on vohmtary basis and in accordance with their commercial practices. All compensation must be fair, reasonable and non-discriminatory. Unless otherwise agreed by the parties, non-monetary compensation shall be restricted to grant-backs of IPRs for the same or closely related standard; and/or restricted to know-how for the same or closdy rdated standard. Inability to give non-monetary ompensation shall not lead to a refusal of licence. Parties shall not commence infringement action unless and until negotiations and arbitration proceedings have been earned through on the aspect of whether monetary and non-monetary compensation sought meets the requirements set forth above. He then expressed concerns of the ad hoe group that: the limitation to patents and know-how might be too restrictive in the light of normal business practlce.s; the dispute resolution mechanism might caus~ significant delays in the licensing process; non-mon~ary compeasation beyond IPR in the same Standard should only be possible on the basis of voluntary agreemem between the parties. He concluded that these submitted proposals would be hard to "sell" but invited the Commige~ members to "buy’ as much ss possible. .P~ said that he was ready to ’buy" a lot of things but found some contradictions in the paper: regarding the words "parties are fr~ to conclude license agreements’, he said that there was no freedom but a must to give patents. A discussion ensued about the meaning of the term "know-how" and Mr. Ruikka answered that the group had not gone too much in depth regarding this issue, and that the wording would need to be earefidly considered. The Chairman invited the memb~ to reassume the work of creating "integrated" drafts in the working groups on the basis of the documents which had been distributed at the beginning of the morning session regarding the 3 issues: 180 Days, Arbitration, and Monetary Compeax~tion. The Chairmanship accepted Mr. ttendon’s proposal that, regarding the issue of SAA, the goups used the doeumont issued by the ad hoe group on SAA. The plenary reconvened at i8.00 hours, Results regarding the "Standards Application Area" issue on the basis of the ad hoc group paper Mr. Peters uresented the results from Group A- The group had failed to come to an agreement. They could only agree on the first sentence of point 1, i.e. "In signing the Undertaking, the Signatory undertakes to gram licences inside CEPT in accordance with the Undertaking." The group could not agree on points 2 ,rid 3 of the ad hoc group paper. Mr. Hendon vresented the results from G~up B. The group managed to accept the text proposed by the ad hoc group, with small ehange.s. They did not agree whether "adoption" included the notion of a substantial purehaso by a major public telecommtmications operator. Furthermore, it was also unclear to the group how to deal with associate members. Confidential Business Information, Subject to Protective Order S-ITC-003390507 page I0 Mr. Beaker p~ted the results from Grotto C. The group did not reach an agreement except on the first sentence of point 1 (like Group A), Some members gave some support to sentence two of point 1. Point 2 was not agreed, and points 3 and 4 received very’ small support. The point of view had beea raised in the group that it was not the purpose of a European standant~don body to try to regulate the US nmrk~. Mrs. Maurv-Panls presented the results from Group D. The group considered the elements of the ad hoc group paper on SAA ts a basis of compromise pmvlded that their concerns wer~ addressed on a satisfactory basis: How does the grant of liceaces apply to associate members? How do we address the question of manufacture for companies having manufacturing facilities outside CEFT? Clarification is needed for the sentence "liceece~ should allow the importation of equipment manufactured outside CEPTL The words "adopted by a standards body in a non-CEPT country" have to be clarified, i.e. an NSO or what? Mr. Bonnier said that he was not i. favour of the document presented by the ad hoc group on SAA. He said that Members should have an obligation to lic, on~, and not just an obligation to negotiate. "INTEGRATED" DRAFTS Results on hiS0 Days" issue Mr. Peters presented the "intvg~ated" d~f! from Group A. He started by correcting a drafting error: instead of "Two solutions are proposed’, read "The following solution is proposed’. The group could agree on a number of principles based on the following ca~goriz~tion of members: A member who votes in favour of a draft standa~ in an STC has waived his right to withhold his essential IPR for that draft standard. A member whose writte~ technical proposal is accepted by the STC has waived his right to withhold his essential IPR contained in that t~hnical proposal, Upon distribution of the approved draft STC standard, members who have objected to an approved STC draft standard can withhold their IPRs r~ted to that standard, provided notice is given to BTSI prior to th~ closure of the Publiv Enquiry, Mr. Ruikka vresented the "i~t~rsted" draft fron~ Group B. The group has basically retained the ideas put forward in the previous papers, i.e. Licensing by default is ~tained 90 days from STC approval. :~r. Becket vresented the "inte.~-ated" draft from Orouv C, The group considered that Members who participate in the technical work should have stronger obligations than Members who have not participated in TCs and STCs. They proposed that if an ETSI Member proposes a written technical solution to an STC and does not include a legend to the effect that "not tll IPR clearances have been obtained for the subject matter of this proposaI’, then this member may not withhold Iicences to any IPRs that are essential to the standaxd ~y adopted c, orresponding to the proposal substantially as submitted. On the other hand, if a legend is included, son~ time for withholding should be allowed. Mr. H6nanh stated that the reason for the legend was that technical working parties are not always aware of the exact IPR situation in their companies. Members therefore needed s safeguard. Mr. Becket, oa behalf of group C, also drew the attention of the Committee to the possibifity of delaying the Public Enquiry process as a consequence of using 180 days after TC approval for withdrawal of IPRs. Mr. Vildund presented the ’integrated" draft from (3mud D. The group had worked on the basis of the paper submitted o~ 2I June and mad~ ~ome amendments. They proposed to delete point B of the revised paper and change the period of 60 days to 90 days for notification before start of Public Enquiry of withholding of ess~tial IPRs. Confidential Business Information, Subject to Protective Order S-ITC-003390508 page 11 Mr. Panfill stated that the sltuation was becoming more difficult than expee.ted, and that STET and rrALTEL would issu~ a declaration, as they were not prepared to give up important positions on legal points. Mr. Vildund said that ETSI should inform everybody on equal terms and that no distinction should be made betweeal Mem~rs participating in the technical work and those who do -ot. The plenary reconvened at 21.30 hours. Results on "Arbitration" issue Mr. Peters uresented the "in,grated" cIraft from Groun A. The group had used the same paper as the previous one submitted on 22 lune and had added two elements. They adopted point 1 of the integrated draR of Group B, i.e. "Parties must hom)ur the principle of using all necessary effort~ to re~olve their disputes through bilateral discussions. Member~ are encouraged to use mediation, expert advice and conciliation methods as means to achieve mutual agreement." They ould not agree on the question of mandatory vs. non-mandatory arbitration. Mr. Ruikka presented the "integrated" draft from Group B. The group used the samo paper as the previous one submitted on 22 June. Mr. Becket presented the "imegrated" draft from Group C. The group agreed with the proposals from the other groups: 1st step: negotiations 2rid step: non-binding mediation 3rd step: matter settled ia court no role of ETSI in negotiations, mediation, or arbitration ICC rules, unless otherwise agreed by the parties questions of infringement, validity and essentiality by a court of competeet jurisdiction The areas not agreed upon remained the samo as the ones expressed previously. Mr. Viidund vresented the "integrated" draft from Grouv D. Th~ group had used the integrated draft from Group B on which they had generally agreed. They changed the words "refer the dixplae to the French courts" into "refer the dispute So a competent court" and added a new note that WIPO had proposed to set up a tribunal, which might be considered as a future system Results on "Monetary Compensation" issue Mr. Peters reported for Group A that they had used the paper from the ad hoe group as a basis, starting with the statement that partie~ are free to conclude licence agreements whatever the Undertaking is, and that they agreed to delete Clause 6.5 aad add some provision to Clause 3.4 regarding damages and r~covery from infringement prior to the signing of the license agreement, Mr. Ruikim re_rotted for Group /t that paragraph A was what remained from the previous proposal. There was some reluctance regarding "know-how" permitted as non-monetary compensation. They proposed a new Clause 6.5, and regarding 3.4, their position was similar to Group A. Mr. ~eker re=rotted for Group C that the new proposal was based oa the ad hoe group paper. The group could not accept point 1 of the td hoc group paper, but agreed on points 2, 4 and 5, a,d paxtly on point 3. Some points of non-agreement stitl remained. Mrs. Maury-panis reported for Grouv D that the group eonoentrated on th~ lid hoe group paper and that some members were reluctant regarding know-how as non-monetary ompetuattion. The Chairman thanked the four groups and suggested a new p~.ess to better ae.hieve consensus from all four groups on each issue: each group should invite another 8ronp to negotiate and ~bmit a proposal merging the results. He said that members might probably be discouraged after the re~ts on SAA. He underlined that he would not like to see so many efforts spent in vain. He therefore urged the members to try at least to establish a common solution on the other 3 Confidential Business Information, Subject to Protective Order S-ITC-003390509 page 12 issues, starting with the issue of Arbitration. made a general comment that everybody should think what would be a solution they could just accept on SAA, and then carry on with their work on the other 3 issues on the basis of the assumption ttua this solution on the SAA issue had been achieved. Dr. Boros said that he was afraid that the members could not reach my solution if they continued to work in groups and he would have preferred working in plenary, analyzing all the points of agreements and the reasons for disagreements. Mr. Becket asked for clarification shout the process. Should the members only try to get ~ on the pohzts already agreed ill each group and exclude the points of non-agreement? Dr. Boros wanted to know exactly the reasons behind all members’ opinion/position snd was ready to hear convincing arguments explaining why he was wrong. Mr. Hendon responded that the Committee members were not in the position of being pemudvd that they were wrong, but world have to see what they were prepared to give away. He said that it was not so much a matter of understanding but rather a matter of making concessions. Mr. Hass~ found it reasonable to narrow the positions and proceed stepwise. He then invited Group D to join Group B. Mr. Nasrullah proposed the Committee to take the opl~site Ixmition, i.~. assuming that a compromise could be re.bed on the 3 issues; the group should devote time to reach consensus or compromise on the issue of SAA. The Chaimumship invited members to make an attempt for a common solution on Arbitration. The plenary session reconvened at 2.00 in the morning (of 24 June). "Joint super draft" on "Arbitration" issue: Mr. Vildund presented the "joint super draft" submitted by Groups B, C, and D, and reported that after very long diseu~iom, Groups A. B, C, and D accepted the compromise in a good spirit of co-operation, but with strong objections from some members. They agreed on the "joint super draft" with the deletion of paragraph 5 (’An IPR owner who refuses a lieence on grounds that this IPR is not F~rsential for the Standard in question, has the burden of proof that it is not "E.rxential’. ") and deletion of Note 3 (’WIPO has proposed to set up an international tribunal. May be consid6,red as a futur~ xystera. "), Mr. Blommd underlined that, whilst his group accepted the prvpossd "joint super draft’, he thought that this was not an efficient procedure, He also raised a concern about the enforceability of awards granted under the suggested text and suggested that ETSI should conduct a further investigation on the matter. Mr. Peters stated that Mr, Blornn~ might be right regarding the issue of enforceability of arbitration decisions. l, lr. Panfili declared that he was strongly opposed to the deletion of paragraph 5 of the proposed "joint super draft" from Groups B, C, and D, as for him the burden of proof on essentiality was a very important element. The Chairman concluded that the Committee members agreed on the proposal but that there world be made a general comment to the ETSI GA, before adoption on this issue, that an examination would be carried out as fax as the legal issues are concerned, i.e. the workability snd enforceability of the dispute resolutions procedure described in the "joint super draft" as well as the importance of the placing of the burden of proof. ~e Chairmanship thanked the members and invited them to meet again at 9.00 in plenary. Friday 24 June 1994 The plenary reconvened at 9.00. Mr. Hendon made a m’esentatlon of the vre~ situation re~ardinlZ the issue of SAA. As the proposal submitted by the ad hoe group had not been agrevd, there has been an attempt to try to elaborate a new pruposaI based on a code of conduct. This was presented by Mr. Hendon to the Committee members but it was rejected. Confidential Business Information, Subject to Protective Order S-ITC-003390510 page 13 As Mr. Hendon did not find the present text of the Undertaking as a good compromise, he proposed to ease the discussions on the three other issue, to put on hold the proposal of the ad hoc group on SAA, and invited members to come up with proposals on the issue of SAA (m parallel with the work on the thr~ other issue). He invited members to come forward with proposals which would form a bridge between the present text of the Policy and Undertaking sad the situation where there was nothing. Thim Mr. Heazdon would inform the chairmanship on the progress regarding this issue. The Chairman th~ked Mr. Hendon for his constructive proposals and asked each Committee member whether they could support Mr. Hendon’s attempt regarding SAA. There was a large suppon in favour. Dr. Boros, who had abstained, said that it would be more frui~l if the members who were against the formulation of the Undertaking could explain why they were against. The Chairman invited the Committee members to work in working group with the issue of "180 Days" ia order to produce a "joint super draft’. He proposed that the 4 spokesmen of the groups had an initial discussion on the merging approach regarding this issue. The plenary reconvened at 12.00 hours. "loint super draft" on "180 Days" issue: Mr. Reeker was the rapp0rteur from Groups A, Bj and C sad said tl~ they had invited Grono D to liste~. Groups A, It, and C hsd come to an agreement on most issues related to the issue of "IS0 Days’, i.e. they agreed on the starting point, on the principle of licensing by default, on the period, intt~ucing a distinction between members who partieipatz in the technical work and members who do not; they also agree that those members who had submitted written contributions should waive their rights to withhold. The question on who had to have the burden of patent search was put on hold (should it be the IPR owners2 or the task of BTSIT). asked Group D if they could accept the agreement reached by Groups A, B, and C. Some members of Group D (Mrs. Maury-PBu~is and Mr. Vildund) agreed with the summary. Some members (Mr. Nasrullah and Mr. Bonnier) found it too complicated and burdensome to introduce a differentiation between members participating in the technical work and members who do not. They would have preferred a more simple system, but accepted the results achieved. Mr. Ask informed the Committee that the problem of participation and non-participation could be dealt with by the ET$I Secretariat, without major problems. Dr. Panfifi underlined that with the super draft on the "Ig0 days’ issue substantial changes hsd been introduced in the present Undertaking and that the new proposal for withholding now related to Essential IPRs only. He stated that ST’ET and Italtel in the meanwhile were aot in agreement th, t the withholding mechanism referred only to F.ssential ]’PR’s, unless - in case of dispute - the IPR owner prove~ that the IPR which he intends to withhold is non-~tial. They were stiU expressing their opposition, while recognizing that some members had demonst~ted the willingness to make ste~ towurds STET’s and Italtel’s positions. The Chairman concluded that he considered that there had been an agreement on the majority of the issues related to th~ "1.80 Days" issue. He proposed that the groups carried on with the integration process on the "Monetary Compensation" issu~ as soon as possible after hmch and invited the members to come back in plenary at 16.00 hours. He asked whether Mr. Hendon eonld give information on the SAA issue. Mr. H~don said that a t~xt, to be put as an almmative to the ad hoc group paper, was being elaborated, and reminded the members that he would respect the confide, ace of the proposals submitted by them if they so wished. The plensry reconvened after lunch. Confidential Business Information, Subject to Protective Order S-ITC-003390511 page 14 "Joint super draft" on "Monetary Compensation" issue: Mr. Peters was the rapportrur on this issue. Grouns A and D have started from the integrated super draft submitted by Group A on 23 June. Gfoul3s B and C joined the meeting. The majority agreed that paragraph A could be deleted as it was superfluous. The group accepted paragraph B with the deletion of the fttst work "All" and the deletion of the parenthesis, then malting a second clause to that paragraph. The group found no agreement on paragraph C Regarding paragraph C (b), the group proposed to delete "know-how in the form of" l~garding Note 1, the group proposed to replac~ ’know-how’ with "technical information’, Regarding the most ~.oured licensee provision, the majority favoured deletion Regarding Clauses 6.2/6.3, the majority was in favour of maintaining Clause 6.2 as it is aad delete 6.3. The group was in the middle of the discussions on maximum royalty provision. The Chairman invited the members to finalize the issue of "Monetary Compensation" before 18.00 hours, and informed the Committee that the Chairmanship would submit all the final texts by fax as soon as possible i, order to have them circulated to Committe n~mbers to allow comments on these submitted texts by fax by Wednesday 29 June, or at the next meeting. Mr. Hendon stated that nothing could be reported so far regarding the SAA issue. At 18.30 hours, the Chairmanship joined the working groul~ in their discussions and invited the members to try to finalize their report on the "Monetary Compensation" issue before dinner and submit a revised draft to be typed at the secretariat and prc~mted in plenary at 20.00 hours. The plenary reconvened after dinner at 20.00 hours. In addition to Messrs. Loyau and Prsgsten, who had lett on Thursday, some members had to leave before the end of the meeting and were then absent from the discussions: Mes~rs. Becker, Blonm~, Hasae, Huber, Montfort, Nasrullsh, Ruikka and Viklund. bit’. Rvan. advisor for AT&T, presented the final text from Grouas A. B. and C. on the "180 Days" issue, Point 1 was agreed Point 2 was agreed Small changes were proposed to point 3: replace "devdopmeat" by "elaboration’; change "the drafts of the standard" into "the TC approved draft"; "actual awareness of the content of draft standards" into "actual involvement in the elaboration of draft standards’. Point 4 was agreed Regarding the text in square brackets (meaning that it was not agreed upon) replace "by IPR holders (or ETSI)" by "[by IPR holders] [by or for ETSq’, The |ast paragraph in square brackets was strong|y supported by STET and ITALTEL, but not agreed upon by the groups. The Chairman asked Mr. Ask for some clarificafio~ regarding the distribution of tzchafical documents from the ETSI Secretariat to the ETSI Members. Mr. Ask responded that a distinction had to be made between the draft standards sent fo~ Public Enquiry (seat to all ET$I Members via Collective Letters) and the interim documents sent to members participating in the work of the TCs/STCs in question. The TC approved draft standards a~ not automatically sent out to all Members. Mr. Hendon said that the presemt practice was not to send out to all members STCi’YC approved documents and that the procedure should be changed so that all Members could rec~ve them. Dr. Boros. stated that he would declare his decision and position only at the end, m the name of ITALTEL and STET, for all four issues. Mr. Madadi made a declaration regarding the issue of IPR search. He proposed that the people who actually benefit from this Confidential Business Information, Subject to Protective Order S-ITC-003390512 page 15 sea~h should not put the ~mrden of the search on administrations. Mr.~k dsew the attretion to Clause 14 of the Undertaking wt~ich sta~ that there is no obligation on Signatod~ to carry out patent search. Therefore, one should be c.a~ful in using the term ’IPR ~atch~ ... are to be performed" sincz this is in contradiction with the s~dd Clause 14. The miaut~ should reflect this possibility of mlsand~rslanding. ~rman concluded that consensus had been achieved on "180 Days" issue, noting the reservation of STET and Italtel concerning the final note which remains unaccepted. Mr. Peters vresented the "ioh~t suner draft" from all ~roum on the "Monetary C~_nensat Regarding point [.A: agieement was reachexL Regarding point LB.(a): it was proposed to replace "IPRs" by "pat~t" and add a note that a minority was ag~Lst Ibis ~iement. Mr. Hdnault pointed out that the proposal made by group C t~ limit non-monetary compeasafion to 8rantbacks for improven~nt patents slmuld be considered in addition to the points made under I-B. The Chairman responded by saying that Group C proposal would figure in the minutes. ARer discussions, it was decided to put the whole point I.B in square brackets as it seemed that agreement could not be re~chod, and as some members reserved their position depending on the whole package. Regarding point IV: it was also decided to put it in square brackets and add a note that a minority was against this statement Regarding point Vh no agreement wu reached. The Chairman proposed to leave the "Monetary Compez~tion" issue with the agreed changes. Regarding the issue of "Standards Application Area": The Chah’man invited two ’supe~ £ronps’, A+C and B+D, to consider the two papers available, i.e. the paper submitted by the ~I hoc group on this isstm end the other document proposed by two nmm~ who had worked on this issue, and do~ide which would form the best basis for bridging between the present text of the Policy and Undertaking and the situation where there would be nothing. Dr. Bores stated that he had not had the much time to study carefully the two papers but made a general statement that the two documents do not treat the principle of reciprocity. The plenary reconvened at 22.30 hours. Mr. Petsrs vrr.sented the re,~ults from the ".Super freud A + C" (Dr. Bores (STEW), Messrs. H~nauIt (AT&T), Madadi (’Fujitsu), Panfili (Italtel), Pelion (Motorola) and Pe~rs (’PhiHps)). The members worked on the basis of the two papers: the one submltt~l by the ad hoc group, and the one submitted by AT&T and Motorola, STET and ]taltel did not agree on any of the two documsnts, as they did not consider them as a good basis for further elaboration. Fujitsu was in favour of the ad hoc group paper because AT&T and Motorola’s paper was not found sufficiently binding. Ph.ilips also supported the ad hoc group paper, ]~r. Hendon presented the results from the "super ~rou~" B + D (Mrs. Maury-Panis (Thomson), Messrs. Bonnier (-France Telecom), Dunkel (IBM), Hendon (DTr) and van Voorst (Royal PTT Netherlands)). IPRSC/3-OO2/msm Page \18 Confidential Business Information, Subject to Protective Order S-ITC-003390513 page 16 The members considered the ad hoc group paper as a good basis for a compromise. Regarding item 2, they proposed to add the wording contained in the AT&T and Motorola’s paper: "For the avo~lance ofdoubt...reoso~" Mr. Dunkel continued Mr. Hendons comments by stressing that the ad hoc paper raised a number of issues which would have to be resolved in the further elaboration of this issue. Mr. Hendon reported that the other paper did not receive much support as it wu too general aud non-committing. Mr. van V~orst expressed geo~ral support for the ad hoc group paper, Mr. Bonnier also expressed general mxpport for the lid hoe group paper as a way to find a compromise and expressed some concerns regarding point 3 as there was only commitment for negotiation. Cbalrman concluded that a majority (Group (B+D) members and the members of group (A÷C) identified as in favour by Mr. Pete~) found the ad hoe ~ to be the more appropriate basis to find a compromise but that some issues no.led to be elaborated further. Mr. Pelion made a declaration on fundamental objection to the ad hoc group paper. He presented the AT&T and Motorola’s paper as an attempt to describe the type of behaviour which could be supported. He wanted members to understand that an attempt to use the ad hoc group paper as the direction for further elaboration could not be supported by Motorola because it specified certain behaviour outside CEPT.l~a’thermore, he presented the s~t limit: "If an ETSI standard, as fltmlly alrproved By ETSI, is adopted as a standard By the 17Y.l, the Signatory agrees to make available licences in accordance with the IPR practicer of the ITU. * Mr Peters said that this declaration did not take the issue further forward because ~ IPR roles would themselves require an IPR holder to make a declaration under ITU prse~ce before the ITU could adopt a standard Mr. H~nsult said that his position was that he wautmt to be fair to ETSI, fair to other standards bodies, fair to ITU, fair to his customers and that he had dentonst~ a lot of flexibility by accepting licensing by default, going to French courts, etc. He stated that he would make all efforts that ETSI standards should be promoted i, 1TU. The Chairn~an thanked the groups for their results tad said that it would not be helpful to pursue further discussion of substance at this stage. He reminded the members that no discussions of substance should take place at next meeting. Dr. Bores made a statement that the sucw.ess of work is conditioned to a good and correct knowledge of the juridical nature of ETSI. STBT and Italtel consider that the problems discossed by the Special Committee may find the right solutions only if due consideration is given to the existing rights and obligations of the ETSI members. To this end STET and ltaltel have distributed to the Committee members It document dated June 6, 1994, which has not been however discussed by the Committee. The document outlines that, by becoming ETSI member, each member puts at the disposal of all the other members, for mutual use, and without paying additional payments, all its knowledge~, patented and not patented, for the elaboration and implementation of the ETSI standards. STET and Italtel however declared their agreement to find a rule which allow the ETSI member to preclude, subject to certain terms and conditions, the us~ of some of their lmowledges and to receive an additional compensation, without however modifying and/or prejudice the juridical nature of ETSI, as an association under french law of 1901. Dr. Bores, in continuation, has indicated the problems in relation to which STET and Italtcl were forced to express opposition to the proposed solutions to maintain the juridical nsmre of ETSI and declared that he will send to the Chairman a do~tnsmt which responds in writing this statement, which certainly - he declared - was not perfect considering his difficUlties with the English language. Dr, Boros kss *lso requested that such urri~n documents be an integral part of this meeting mim~te~. Dr. Boros underlined that it is necessary to regulate in the Statutes and Rule of Procedure the issue of arbitration for disputes between ETSI and its members. The Chairman has taken note of the above statement done by Dr. Bo~os, and the written document b enclosed as a. annex to these minutes. IPRSCI3-(~32/msm Page \18 Confidential Business Information, Subject to Protective Order S-ITC-003390514 page 17 ~Dr. Boros congratulated th~ Chairman and his collaborators for the wry ~fficimt organization of the work carried out. He raid that for the first time, during disa~siom in h-’TSI on IPR, th~re ha, been a genuine discussion. The Chairman thanked Dr. Boros for his kind words and said that he will take acx~mt of the statement that Dr. Boros would send by fax. Regarding the issue of "Mone/ary Compensation", the Chairman thanked his Vice Chairman for the efforts carried out in an attempt to deal with the texts in square brackets and gave him the floor. expressed the Chekmaxmhip’s oncerns on the preparation of the re~rt to the GA Chairman on the overall situation tad presented a paper on the Chairmamthip’s ingression on the fitml position in the discusaion of monetary onktmasatlon principle I(B), and noted members comments on the paper.. Mr. Peters proposed to delete point 4 on page 2 of the Chairmaaship’s impression paper. This was agreed. The Chairman expr~,maed his gratitude to the Committee members for the excellent work carried out. Although the members had not been able to reach common solutions ~m all four issues to widen ~, he found that the Committee had achieved remarkable remflts in a number of areas. He said that he had had. a very positive experience during the Committee work and thanked the Vice Chairman for his remarkable contribution. He also expressed thanks to the secreXa~t which provided great support. Mr. Hex~don, in the name of all Committee members, present and absent, expressed congratulations on tim way this work had been e.atried out. He underlined the in~redib|e commitment of the Chairman and the Vice Chairman and their companies. He thanked National Telecom Agency for its impeccable hoRpitality allowing the members to work in a very special environment. He tmrticuiarly thanked the se, w.t~at for the excellent m~pon provided, mid concluded that it was really a very pleasant experience. ~e ~imum thanked everybody, and closed the meeting. IPRSC/3002/msm Page \18 Confidential Business Information, Subject to Protective Order S-ITC-003390515

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