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).

EXHIBIT 11

European Telecommunications Standards institute

ETSI

10th Technical Assemb}y
Nice, 4-6 June 1991

ETSI/’I’A 10 (91) 17

D ate:

15 May 1991

Source:

S, Temple, Chairman of the Technical Assembly

Title:

Reflections of the TA Chairman on ETSI’s IPR policy

Agenda item:

6

Document for:

Decision

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ETSI/TA 10 (91) 17
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Source: Chairman of %he TA
Subject: Reflections of %he TA Chairman on ETSI’s IPR policy
i.
This is the most difficult issue I’ve been required to
handle as Chairman of the TA. The matter is complex and I’m no
IPR expert. I’ve even managed to misquote the ISO text. But I’ve
now spent enough hours under the guidance of real experts to know
enough to come to a fairly firm conclusion that:
i

The present ISO policy is quite insufficient for ETSI.

ii

We are in the risk reduction not the risk elimination
business

iii

There is no perfect answer.

iv

We find ourselves seeking a delicate compromise between
conflicting but quite legitimate interest of members.

V

We are not likely to improve the quality of that compromise
by further negotiation, bearing in mind that we have already
had two years of discussion in the IPRC

2.
At the last TA I undertook a personal initiative to find
a way out of the impasse ETSI finds itself in. I had envisaged
an informal meeting of some interested parties to find a
compromise. In fact I’ve had some 5 meetings of varying size and
twenty telephone calls. The public network operators will be no
doubt pleased to note that some of the telephone calls were very
long indeed.
I’ve emerged with a compromise proposal. Its
weakness is that nobody is yet committed to it and most members
can no doubt find something in it to criticise. Its strengths are
the following:
1

It preserves the right of members to decide whether
to put specific IPR they own into the ETSI arrangement
or not.
It reduces the risks of IPR complications in a
progressive way. For example when a work item begins
we all know immediately that all members’ IPR not
otherwise declared will be available on fair and
reasonable non discriminatory terms. This will help
keep the IPR lawyers out of the arguments in ETSI
Technical Committees since the IPR rules are the same
for all solutions.
It fully recognises the financial reality that IPR
searches will be expensive° The division of standards
into two categories will allow ETSI to contain costs
of searches but those it does embark on can be
thorough. This priority setting provision is in keeping
with ETSI’s businesslike management approach,

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ETSI/TA 10 (91) 17
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4

It also recognises that IPR searches will be time
consuming. It is not just a question of finding IPR
titles from a computer search. The claims must be
compared by experts with the detailed content of our
standards° Thus the 21 months offers a practical
working basis. This leads logically onto separating
the IPR search from the approval procedures.

5

The indemnity proposal is a compromise based on an
analysis of what exactly is new and where the risk
break points are. Before GSM came along I doubt if any
Engineer had heard of IPR indemnity provisions in
procurement contracts. Now the matter has grown into
a tiger frightening us all. My compromise proposal is
aimed at slaying this tiger. I’ve set out to
significantly reduce the size of the problem and then
asking for an effort from all sides for an equitable
sharing of the much reduced problem.
It addresses the criticisms made of the current IPR
undertaking such as the practical aspects of the
cumulative royalty provision. The problem is not
ignored but solutions are not imposed.
The careful balancing of different interests, after
wide consultation, gives grounds for thinking that it
stands the best chance, given good will, of securing
a consensus.

3. All members have the right to put alternative proposals to
the Technical Assembly. If presented in writing in advance they
will be given preference in the TA discussion, in the absence of
any such alternatives, I will put my compromise proposal forward
to the TA as a package of principles. Note the word "principles".
I propose we avoid getting involved in discussion of detail. The
TA is not being asked to approve a text but only a set of
principles. Note also the word "package". In theory everything
can be changed. In practice it is likely to mean that if anyone
tries too hard to eliminate one bit they don’t particularly like,
others are likely to emerge to try to eliminate other bits.
However, we must face the fact that we may have to make changes
in the light of advice from the political/regulatory authorities.
There is also a lot of detail to be filled in afterwards.
4.
It is my intention to make every effort to secure a
consensus° However, the TA has to come to a clear view on where
we go from here.

Source - TA Chairman

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ETSI/TA 10 (91) 17
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COMPROMISE PROPOSAL ON THE PRINCIPLES OF AN IPR POLZCY FOR ETSI

The 10th Technical Assembly:
RECOGNISXNG
that the mission of ETSI is to contribute to a high
order of standardisation, facilitating compatibility
between telecommunications infrastructure and interoperability of services across Europe and between
Europe and the rest of the world
that ETSI needs to have an IPR policy for its mission
to be successful and that the ISO/IEC or CCITT policy
is not sufficient for all ETSI standards both now and
in the future
that the objective of an ETSI IPR policy to reduce the
risks to its mission can best be achieved by some sort
of undertaking given by ETSI members in respect of
their IPR
that in drawing up such an undertaking it is necessary
to achieve a balance bearing in mind the significant
R&D investments members have had to invest in order to
create their IPR and the not insignificant benefits to
them, both directly and indirectly, that an ETSI
standard can confer.
that an undertaking has to be put in the context of
ETSI’s rules and standards making procedures and the
IPR policy needs to include an IPR search for the more
significant standards to further reduce the risks of
IPR complications
NOT ING
the high risk ETSI and its members are incurring in
there being no ETSI IPR policy and therefore the
urgency to agree the procedures, rules and undertaking
related to iPR matters in ETSI
the fact that there is no perfect solution to the IPR
issue and that any solution will be a compromise that
attempts to find the fairest possible balance between
quite legitimate, but at times conflicting, interests
of different members that ETSI, as a private
organisation, needs to take care that it doesn’t itself
create distortions in the market and at the same time
cannot be expected to redress the distortion that can
arise when regulatory authorities legally enforce
voluntary ETSI standards and such problems are the
province of the regulatory authorities

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INSTRUCTS THE DIRECTOR, in consultation with the GA Chairman and
TA Chairman and drawing upon the expertise of the IPRC, to draw
up an IPR policy document (in a form understandable to all
members), comprising a revised members’ undertaking, procedures
and consequential amendments to the ETSI Rules of Procedure
according to the following principles :
1

Members rights to refuse use of their IPR
Members having IPR should have the discretion to decide
that a specific IPR is not to be included in the ETSI IPR
policy arrangements for a specific standard. However, to
be fair to other members, that decision and associated
details must be made known before work begins on a specific
standard so as to avoid nugatory work and investments by all
other members. The ETSI IPR policy arrangements will be
based on the premise that silence on the matter after a
defined period following the Technical Assembly that adopts
the work item is an undertaking by all members that,
subsequently, all relevant essential IPR they may have comes
within the arrangements. This shall apply to all ETSI
standards. Here and subsequently "standards" shall mean both
ETSS and I-ETSs. Where any software, algorithms and mask
work is included in a standard it shall result from a
proposal to ETSI from a member or members who, in submitting
the proposal, will be undertaking that the associated IPR
will come within the ETSI IPR policy arrangements.
Setting priorities for IPR risk reduction
At the Technical Assembly that adopts the work item for a
specific standard, the members shall decide whether the
standard is to fall into one of two categories:
Category A -

Those for which there shall be no IPR search
activity organised by ETSI.

Category B -

Those for which ETSI will organise an IPR
search activity. Standards where members
feel
particularly
difficult
indemnity
problems may arise are likely to be put in
this category.

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An effective IPR search activity will be expensive and the
TA may be expected to take budgetary guidance from the GA
into account, as well as other factors, in deciding which
standards will fall into category B.
3

Disclosure by members of essential IPR for category B
standards during the public enquiry
For category B standards, at the time of the public enquiry,
members shall undertake, on a best endeavour basis, to
submit to the Director any relevant essential IPR they are
aware they have. This will significantly reduce the cost of
search activities. As a confidence building measure between
members, particular effort will be made by members to submit
relevant essential IPR filed during the work programme
period but only that for that specific standard. For IPR
filed during the work programme period that is not declared
or found in the subsequent ETSI organised search, members
undertake not to seek retrospective royalty.

4

Partial information on essential IPR for category A
standards during the public enquiry
For category A standards members may, at the time of the
public enquiry and if they so wish, submit to the Director
any information they have on essential IPR, either their own
or belonging to others. The Director will circulate this
information to all members.
ETSI organised IPR search for category B standards to
further reduce risks
For category B standards ETSI shall organise an IPR search
paid for from one of the ETSI budgets. This will begin as
soon as the draft standard is put out on public enquiry. At
least 18 months after the draft standard is put out on
public enquiry, a top-up search shall be carried out to
flush out any IPR in the patent system pipe line.

6

Fair and reasonable non-discriminatory reward for IPR owners
Members will be entitled to just recompense for the use of
their IPR. This shall be on fair and reasonable non
discriminatory terms. Payment shall be in cash unless the
two parties mutually decide to the contrary. Non
discriminatory shall mean that those entitled to receive a
llcence shall be given comparable terms.

7

Final assessment of financial risk in implementing a
category B standard
For category B standards members shall submit to the
Director the maximum royalty they seek for their essential
IPR. The Director will write to third parties identified as

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holding essential IPR and seek the same information. This
information shall be submitted to a meeting of the IPRC on
that standard. This IPRC meeting shall be termed an IPR
declaration meeting for that standard and shall be held
typically 21 months after the public enquiry date. Where the
IPRC decides that the cumulative royalties are likely to
prejudice the successful implementation of that standard,
it may initiate a cumulative royalty negotiation between
members having essential IPR. The IPRC may invite third
parties to this negotiation. Members undertake to enter such
negotiations in good faith but there is no obligation on
members to accept any particular outcome. The IPRC shall
issue a IPR declaration statement on the standard in
question containing all the available information. This
shall be available to all members and any party in the
territory.
8

Risk sharing against a third party blocking IPR being
revealed prior to completion of the search activity
Where members place purchasing contracts that include a
requirement of compliance with a category B standard and
where these contracts are placed prior to the IPRC
declaration meeting, then there is a high risk that a third
party IPR could be discovered where a licence is not
available on fair and reasonable non discriminatory terms.
Members placing such contracts in this period agree to share
the risks with their supplier on a 50:50 basis. After the
IPRC declaration meeting a risk still remains of third party
IPR being discovered. However the risk is considerably
lower. Thus purchasers and suppliers agree their own terms
on indemnity in the usual way.
Territory, entitlement for a licence and reciprocity
Licences must be for all the territory. To be entitled to
a licence parties, who may be ETSI members or non members,
must be established in the territory and the relevant
equipment and systems to the ETSI standard must be
manufactured in the territory. However, licences must allow
manufacturers to have sub-equipment and components only
manufactured outside the territory. There is no requirement
for technology transfer other than that agreed between the
parties. The territory shall be as defined in the present
IPRC draft undertaking. Associate Members who have signed
the IPR undertaking and apply the ETSI standard are also
entitled to a licence. However, ETSI members shall not be
required to grant a licence to any party who refuses to
grant to them a licence for an essential IPR for the ETSI
standard or a directly equivalent standard.

i0

Irreducible third party £PR blockage
Where, for either category of standard, a third party
refuses to licence their IPR on fair and reasonable non

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discriminatory terms, members having a relationship with the
third party will, on a best endeavour basis, make every
effort to resolve the problem according to the principles
of ETSI’s IPR policy. If this is not possible the standard
will be withdrawn and returned to the Technical Committee
with a view to finding an alternative non-infringing
solution. If this is not possible the standard will not be
re-issued.
ii

Legal aspects
The undertaking shall be binding on members and their
affiliates. The precise legal form of the undertaking is to
be studied taking into account, to the extent possible~ any
special problems. There needs to be an incentive for members
to sign the undertaking. The preferred one is to make it a
condition of membership. But an alternative of making it a
condition of participation in ETSI Technical Committees will
be kept open for the GA to take a decision on the basis of
the political and legal advice. Enforcement of the
undertaking between members as well as between a member and
ETSI shall be possible. Disputes between members on IPR
matters shall be resolved through arbitration.

12

Decision taking in ETSI
Decision taken within ETSI in support of the operation of
an ETSI IPR policy shall be based on weighted individual
member voting.

FURTHER INSTRUCTS THE DIRECTOR
TO seek the advice of the EC Commission and the EFTA
Secretariat on the principles set out above from the
viewpoint of competition policy, standardisation policy,
telecommunications policy and external trade policy.
B.

To seek the views of CEN and CENELEC via the Joint
Presidents Group.

C.

To seek the opinions of the Director of the CCITT and CCIR.

m.

To seek the opinions of the USA T1 Committee and the
Japanese TTC at the inter-regional meeting in September on
the draft ETSI undertaking as the basis for a new CCITT
policy.

E~

To clear the final draft of the IPR undertaking and other
associated documents with the EC Competition authorities.

F~

TO put before the next Technical Assembly an IPR policy
document comprising a revised members undertaking,
procedures and consequential amendments to the ETSI Rules
of Procedure for comment and to the next General Assembly
for their consideration and approval.

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DRAWS THE ATTENTION OF THE EC COMMISSION AND THE EFTA SECRETARIAT
TO
i

the potential problem that could arise in respect of
utilities directive where a member decides to withhold
for the highest known technology~ This relates to
derogation on the mandatory use of standards, where
solution is of a genuine innovative nature.

the
IPR
the
the

ii

the potential problems arising more generally with the EC
legal enforcement of ETSI standards, since these standard
are likely to infringe Intellectual Property Rights held by
individuals and organisations both inside and outside the
EC.

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