To: John Rieman who wrote (47718 ) 11/24/1999 10:31:00 AM From: BillyG Respond to of 50808
1394 Licensing Association..........eetimes.com Group formed to oversee 1394 patent licensing By Junko Yoshida EE Times (11/23/99, 5:18 p.m. EDT) DENVER — Piggybacking on the creation of a successful patent pool for MPEG-2 video and its oversight by a licensing body, a spinoff of the MPEG LA licensing group, called 1394la, has taken on a similar challenge of implementing a joint licensing program for patents essential to the IEEE 1394 digital interface. Larry Horn, vice president of licensing and business development at MPEG LA, said that the IEEE 1394 joint licensing program takes effect immediately, with patents held by Apple Computer Inc., Compaq Computer Corp., Matsushita Electric Industrial Co. Ltd. (Panasonic), Royal Philips Electronics, Sony Corp., STMicroelectronics and Toshiba Corp. The patents have all been identified by an independent, third-party patent expert as essential for compliance with various portions of the published IEEE 1394-1995, IEEE P1394a and IEC 61883 Part 1 specifications, according to Horn. In addition to those seven companies, Horn said, Canon has submitted a U.S. patent that has been identified as essential. The Japanese company is expected to join the program as a licensor. Before 1394la came into existence, 11 companies that claimed to hold patents related to IEEE 1394 got together last May and stated their intention to form an intellectual property one-stop-shopping program for the IEEE 1394 bus. The group agreed to set the license royalty at 25 cents per system. The roster of participants comprised six companies that had initially agreed on a basic licensing scheme in February — Apple, Compaq, Matsushita, Philips, Sony and Toshiba — as well as Canon Corp., Intel Corp., Mitsubishi Electric Corp., STMicroelectronics and Zayante Inc. Oversight of the program subsequently fell to 1394la, Horn said. The group will be responsible for registering owners of intellectual property (IP) essential to 1394 as members of the program. As administrator of the program, 1394la will also collect royalties from users of the IP. The patents will be licensed for the previously agreed-upon fee of 25 cents per system, regardless of the number of 1394 ports per system. Essential patents for the IEEE P1394b specification will be included in the portfolio license under the same terms and conditions. Among those on the original list of 11 companies, three — Mitsubishi, Intel and Zayante — are missing from the current 1394la roster. Without offering specifics, Horn pointed out three possible reasons for their absence. "Either their patents are still in the process of being evaluated, they were declared to have no essential IPs or they joined the group last May simply to express their support for the concept of a joint licensing program," he said. "No conclusions should be directly drawn from this." Intel was contacted for comment but did not return the call by late Tuesday (Nov. 23). The licensing program for essential IEEE 1394 patents is open to all holders of essential 1394 patents; evaluation of submitted patents is an ongoing process. As additional essential patents held by the existing member companies are identified, those patents will be added to the licensing program. Companies outside the group whose patents are deemed essential to 1394 implementation will be invited to join the program. Patent holders wishing to participate in 1394la should submit a letter stating their interest and listing the pertinent patents to Garrard Beeney, Esq., at Sullivan & Cromwell, 125 Broad St., New York, N.Y. 10004. Potential licensees are encouraged to direct inquiries to the 1394la Web site, said Horn.