United States: The Internet Of Things: Evaluating The Interplay Of Interoperability, Industry Standards, And Related IP Licensing Approaches (Part 2)

Last Updated: April 18 2016
Article by Stephanie Lynn Sharron and Nikita A. Tuckett

 We recently published a client alert on January 26, 2016 that addressed some of the more significant Internet of Things ("IoT") -specific standards and initiatives and emphasized the importance of interoperability as central to the growth and success of the products and services that leverage the IoT. This Part 2 in a series of alerts on IoT provides a detailed update regarding one of the leading efforts around standardization, the Open Connectivity Forum (OCF). The alert also covers three additional industry standards that have particular potential when used in IoT: Bluetooth Low Energy, Wi-Fi (including 5G) and Blockchain.

"FRAGMENTATION IS THE ENEMY"

On February 19, 2016, the Open Connectivity Forum ("OCF"), a new standards effort for the IoT, was announced. Led by Intel, Qualcomm, ARRIS, CableLabs, Cisco, Electrolux, GE Digital, Microsoft and Samsung, the OCF reportedly seeks to merge the current efforts towards standards development in the IoT, uniting the former Open Interconnect Consortium with companies at all levels, and is "dedicated to providing this key interoperability element of an IoT solution." The initiative hopes to circumvent the expenditure of time and resources in building consensus between multiple standards approaches, accelerating innovation and assisting developers create solutions that map to one open IoT interoperability specification. Emphasizing this point, Qualcomm recently published on its website that "fragmentation is the enemy of IoT". The OCF sponsors the IoTivity open source project (covered in Part 1 of this Alert) which includes a reference implementation of the OCF specification licensed under the open source Apache 2.0 license.

OCF INTELLECTUAL PROPERTY POLICY

The Intellectual Property Policy adopted by the OCF shows a high level of attention to detail, thoroughness and nuance. Those considering joining would be well-advised to get some help in understanding how these terms will apply to their specific intellectual property portfolio, products, components and services. We have chosen to take a deeper dive into the intellectual property policy for this standard because the details of the policy reveal a number of areas of focus of the founding members.

While the policy imposes obligations on members as well as their affiliates to grant licenses under copyrights and patents, the scope and cost of those licenses will depend on a number of specifics that will vary depending on the precise contours of the final specifications. Members are required to represent that they are authorized to bind their affiliates to the terms of the policy, including parent and sister companies.

1. Patent Claims Captured. The patent claims captured by the policy are limited in a number of ways:

  • The only claims captured are those that would be necessarily infringed by implementing the mandatory portions of the specifications within the bounds of a tightly defined scope that ties specifically to enabling the compliant portions of products to interoperate, interconnect or communicate.
  • Necessary infringement is defined as there being no "commercially reasonable" non-infringing alternative for this enablement.

The policy requires that any transfer of these necessary patent claims to unaffiliated third parties must be subject to the terms and conditions of the policy, and transfer or assignment agreements must explicitly address the fact that the transfer or assignment is subject to existing licenses and obligations imposed by standards bodies such as OCF. Those who practice in the merger and acquisition arena will want to take note of the potential issues for both sellers and acquirers in light of these requirements.

2. Patent License Scope. The license scope is also limited in similarly nuanced ways. The license under the above patent claims extends to only those portions of products and services that implement the protocols, functions, APIs and their adaptation layers, input parameters, data structures, services and firmware descriptors that fall within the mandatory portions of the final specification (including mandatory portions of optional components of the specification). Moreover, the policy goes to great lengths to ensure that, unless the final specification is explicit and describes in detail these items where the description's sole purpose is to enable interoperability, interconnection or communication, no license will apply. This would seem to place a heavy burden on the developers of the specification taking this into account in developing the details of the specifications.

3. Opt-Out is not true Opt-Out. Another interesting aspect of the policy is that while the policy allows for members to exclude specified patent claims from the royalty-free license, this opt-out mechanism is constrained. Most importantly, members cannot opt out entirely. The policy imposes a requirement to license those excluded patent claims on reasonable and necessary non-discriminatory terms – again, this applies even if patent claims are excluded in accordance with the opt-out framework. The opt-out mechanism also only can be exercised 4 times in any 60 month period.

4. Copyright and Software. While we have focused on patents here due to the policy's emphasis on the patent rights granted, the policy also imposes obligations to license copyrights. The policy only addresses rights under copyright to contributions made by members to the specification itself. The policy also includes a brief statement permitting members to contribute OCF open source that OCF deems acceptable and non-confidential as well as modifications and additions to such open source software to open source projects. It is not clear what will be considered "acceptable" and what software will be made non-confidential. It is also not and does not appear to extend to software beyond acknowledging that members may license their software source code that implements the specification under open source licenses and may make contributions of such source code to open source projects. No limitations on which open source projects are permitted appear. This seems odd given that this could result in OCF open source software ending up being contributed to projects that impose license terms that conflict with one another. It seems that OCF may have decided to defer these issues to the future once it has determined what is "acceptable" and what software OCF itself will make available.

5. Rights on Termination.

Termination also raises issues for terminating as well as continuing members. Once members join, they may not terminate the licenses they have previously granted to other members prior to termination with respect to versions of the final specification that existed while they were members or contributions to draft specifications that they made which become part of subsequent versions of the specification after their termination. Continuing members are also required to provide more or less reciprocal grants.

Read our client alert.

Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Morrison & Foerster LLP. All rights reserved

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Stephanie Lynn Sharron
Nikita A. Tuckett
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.