In 2015, IEEE changed its Patent Policy in ways that InterDigital believes significantly disadvantage companies that conduct research and development and contribute solutions to its standards. InterDigital opposed those policy changes and openly expressed concerns about the negative impact those changes would have on patent holders and on the IEEE standard-development process itself. InterDigital informed IEEE in an open letter that, while we will continue to work within IEEE to advance key technologies for the benefit of industry participants and consumers -- and honor each of our commitments under the IEEE patent policies in place prior to the effective date of the March 2015 Patent Policy -- going forward, InterDigital will not make licensing assurances under the March 2015 Patent Policy and will instead provide alternative licensing assurances consistent with the goals of driving technology adoption while ensuring fair compensation for research success.
As the IEEE has previously stated, submission of LOAs under the March 2015 Patent Policy is “entirely voluntary,” and “[p]atent owners who do not wish to submit a Letter of Assurance under the proposed [March 2015] policy are free not to do so.”
Accordingly, InterDigital provides the following licensing assurance in connection with IEEE 802.11ax, High Efficiency WLAN (HEW) (the “IEEE Standard”), which is intended to be of the same scope and on the same terms as the Letters of Assurance that InterDigital has previously submitted to IEEE with respect to other projects prior to March 2015 and the adoption of the March 2015 Patent Policy:
- With respect to InterDigital’s Essential Patent Claims, and subject to reciprocity, InterDigital will make available non-exclusive licenses to an unrestricted number of applicants on a worldwide basis under reasonable terms and conditions that are demonstrably free of unfair discrimination to make, have made, use, sell, offer to sell, or import product implementations that are fully compliant with the IEEE Standard. For purposes of this assurance, “Essential Patent Claim” means one or more claims of any patent or patent application the use of which was necessary to create a compliant implementation of either mandatory or optional portions of the normative clauses of the IEEE Standard when, at the time of the IEEE Standard’s approval, there was no commercially and technically feasible non-infringing alternative. An Essential Patent Claim does not include any patent claim that was essential only for enabling technology that is neither explicitly required by nor expressly set forth in the IEEE Standard or any claim other than that set forth above even if contained in the same patent as the Essential Patent Claim.
- InterDigital will not sell or otherwise transfer rights in its Essential Patent Claims with the intent of circumventing or negating any of the representations and commitments made in this licensing assurance. This licensing assurance is intended to be binding upon any and all assignees and transferees of any Essential Patent Claims covered by this assurance.