From kathrin.schweppe at sap.com Wed Aug 3 09:55:45 2011 From: kathrin.schweppe at sap.com (Schweppe, Kathrin) Date: Wed, 3 Aug 2011 09:55:45 +0200 Subject: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld@zv.fraunhofer.decs In-Reply-To: References: <400B1E0D509AB14C95FFDC1DE303B9A881E1169E02@EXCLU2K7.hi.inet> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF728@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF7BF@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF843@DEWDFECCR03.wdf.sap.corp> Message-ID: <7ED7B27AF3542948BAB7BCD179A7677C10CCDFFE36@DEWDFECCR03.wdf.sap.corp> Dear Jonas, dear all, I understand your concerns, we had similar concerns and therefore this section was included: For further sake of clarity, Parties including those Parties that assisted in generating the FI-WARE Generic Enabler Specifications may, but are not obliged to, develop implementations or reference implementations of FI-WARE Generic Enabler Specifications and request licensing terms other than open and royalty free for such, e.g. under FRAND (Fair, Reasonable and Non-Discriminatory) terms subject to the provisions of Article 4.2.3 and 4.2.4 below. The Parties may release their implementations or reference implementations as open source or closed source, at their sole discretion. Then, the Generic Enabler Specification is only a description about technical requirements and the like. Do you see that a patent could be included there? Taking all these things into account, do you think we need further clarification here and if so, can you please propose some wording? Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Dienstag, 2. August 2011 18:42 An: Schweppe, Kathrin; fabian.perpeet at zv.fraunhofer.de Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; MELZI, RAFFAELLA (RAFFAELLA); mathilde.dubesset at technicolor.com; STAMM, Markus (Markus); Wuenstel, Klaus (Klaus); nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: RE: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I'm opening a new thread lest we lose ourselves in the multitude of exchanges on various subjects. My concern relates to the 2nd paragpagh of Section 4.1: Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Would people be against adding a clarification that this generous covenant does not imply royalty free licensing of Background and Sideground patents, should any read on such implementations? Or does everybody rely on their Background and Sideground exclusions? Regards Jonas Dr. Jonas Heitto, LL.M. ALCATEL-LUCENT Corporate IP Counsel INTELLECTUAL PROPERTY & STANDARDS * Tel +49 711 821 44561 * Fax +49 711 821 44587 jonas.heitto at alcatel-lucent.com This e-mail message and any attachment is confidential and is intended for use only by the named addressees above. This message may contain information that is confidential, privileged, attorney work product, or exempt from disclosure under applicable law. If you are not an intended recipient, then you are prohibited from reading or copying any part of this message or opening, reading or copying any attachment. If you have received this message in error, or are not a named recipient, please immediately notify the sender by reply mail and delete this e-mail from your computer. Thank you for your cooperation. ________________________________ -------------- next part -------------- An HTML attachment was scrubbed... URL: From lgg at tid.es Wed Aug 3 10:02:06 2011 From: lgg at tid.es (LUIS GARCIA GARCIA) Date: Wed, 03 Aug 2011 10:02:06 +0200 Subject: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld@zv.fraunhofer.decs In-Reply-To: <7ED7B27AF3542948BAB7BCD179A7677C10CCDFFE36@DEWDFECCR03.wdf.sap.corp> References: <400B1E0D509AB14C95FFDC1DE303B9A881E1169E02@EXCLU2K7.hi.inet> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF728@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF7BF@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF843@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFFE36@DEWDFECCR03.wdf.sap.corp> Message-ID: <400B1E0D509AB14C95FFDC1DE303B9A881E1169E83@EXCLU2K7.hi.inet> Dear Jonas and all, Nothing to add to Kathrin explanation. Further, this clause was widely discussed and finally agreed long time ago. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) [cid:image001.png at 01CC51C4.66649750] De: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] En nombre de Schweppe, Kathrin Enviado el: mi?rcoles, 03 de agosto de 2011 9:56 Para: Heitto, Jonas (Jonas); fabian.perpeet at zv.fraunhofer.de CC: fiware-legal at lists.fi-ware.eu Asunto: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Dear Jonas, dear all, I understand your concerns, we had similar concerns and therefore this section was included: For further sake of clarity, Parties including those Parties that assisted in generating the FI-WARE Generic Enabler Specifications may, but are not obliged to, develop implementations or reference implementations of FI-WARE Generic Enabler Specifications and request licensing terms other than open and royalty free for such, e.g. under FRAND (Fair, Reasonable and Non-Discriminatory) terms subject to the provisions of Article 4.2.3 and 4.2.4 below. The Parties may release their implementations or reference implementations as open source or closed source, at their sole discretion. Then, the Generic Enabler Specification is only a description about technical requirements and the like. Do you see that a patent could be included there? Taking all these things into account, do you think we need further clarification here and if so, can you please propose some wording? Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Dienstag, 2. August 2011 18:42 An: Schweppe, Kathrin; fabian.perpeet at zv.fraunhofer.de Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; MELZI, RAFFAELLA (RAFFAELLA); mathilde.dubesset at technicolor.com; STAMM, Markus (Markus); Wuenstel, Klaus (Klaus); nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: RE: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I'm opening a new thread lest we lose ourselves in the multitude of exchanges on various subjects. My concern relates to the 2nd paragpagh of Section 4.1: Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Would people be against adding a clarification that this generous covenant does not imply royalty free licensing of Background and Sideground patents, should any read on such implementations? Or does everybody rely on their Background and Sideground exclusions? Regards Jonas Dr. Jonas Heitto, LL.M. ALCATEL-LUCENT Corporate IP Counsel INTELLECTUAL PROPERTY & STANDARDS * Tel +49 711 821 44561 * Fax +49 711 821 44587 jonas.heitto at alcatel-lucent.com This e-mail message and any attachment is confidential and is intended for use only by the named addressees above. This message may contain information that is confidential, privileged, attorney work product, or exempt from disclosure under applicable law. If you are not an intended recipient, then you are prohibited from reading or copying any part of this message or opening, reading or copying any attachment. If you have received this message in error, or are not a named recipient, please immediately notify the sender by reply mail and delete this e-mail from your computer. Thank you for your cooperation. ________________________________ ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. 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Name: image001.png Type: image/png Size: 16885 bytes Desc: image001.png URL: From lgg at tid.es Wed Aug 3 14:27:32 2011 From: lgg at tid.es (LUIS GARCIA GARCIA) Date: Wed, 03 Aug 2011 14:27:32 +0200 Subject: [Fiware-legal] RV: Consortium Agreement Fiware Message-ID: <400B1E0D509AB14C95FFDC1DE303B9A881E1169ED5@EXCLU2K7.hi.inet> Dear Fabian, dear all, I?ve been discussing with our management/technical people your proposal and have several concerns: 1?.- What happens if Fraunhofer FOKUS use/introduce SG developed by another institute in Fraunhofer and it becomes Needed for Execution of Use? 2?.- How should other partners be able to detect IP which is from Fraunhofer Fokus, and distinguish it from IP from other Fraunhofer institutes, when Fraunhofer Fokus and any other Fraunhoufer institute are not a legal entity on their own? 3?.- We are not in favour to include any particular exemption in a general rule applicable to all the Partners (other partners may wish to include their own exemptions). These exemptions must be included in Annex 3 and we have included in this annex the text you sent us. 4?.- Using Kathrin?s words "Does this statement only refers to Sideground that is Software or does it refer to all Sideground? Do we have then Access Rights to all Fraunhofer Sidground which is not Software? It?s not clear 5?.- As SG is voluntarily used/introduced by the relevant partners in the Project, nothing hinders FOKUS to include - if it decides to do so- exclusively its own SG (then this clause will only be applicable, as you wish, to FOKUS?s SG) Also, nobody can force FhG to introduce in the project any of its SG. 6?.- FhG has accepted IPCA EICTA original wording in this clause in others FP7 projects, even within FUTURE INTENET initiative. It?s our willingness, to consider Fraunhofer's needs as a research organisation with scientifically independent institutes and, as you know, this clause has been widely discussed during our calls, but it seems we are in a closed road and a decision must be taken. We must finalize this CA (some partners do not sign their Form A until the CA is closed) to avoid any risk for the FI-WARE project. I attach it again the proposal we sent yesterday: "All Access Rights to Software that is Sideground shall be in the form of Limited Source Code Access for the execution of the Project, save that no Party shall be obliged to grant for Use any Access Rights to Source Code that is Sideground and that is not listed in Annex 5 of this CA. Access Rights to Software that is Sideground for Use shall be in the form of Object Code Access and/or API unless otherwise agreed between the Parties concerned. However, access to the API shall be granted if such access is Needed and may be subject to any condition that the owning Party considers as legitimate to protect the Sideground but, however, without limiting the Access Rights granted under this CA." For the above mentioned reasons, I?ve received instructions to send this proposal as final and send during next week the pdf. File with the signature instructions. As IBM has finally accepted the current wording in clause 4.3.1.2, once this question is solved and clause 4.2.7.1 is agreed, the CA will be definitively completed. For the sake of compromise, I kindly invite you again to accept the wording we proposed you yesterday for the last paragraph of 4.2.7.1. Looking forward to hearing from you. Best regards Luis. De: fabian.perpeet at zv.fraunhofer.de [mailto:fabian.perpeet at zv.fraunhofer.de] Enviado el: martes, 02 de agosto de 2011 16:39 Para: kathrin.schweppe at sap.com CC: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; JOSE JIMENEZ DELGADO; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; JAVIER DE PEDRO SANCHEZ; jean-dominique.meunier at technicolor.com; JUAN JOSE HIERRO SUREDA; Raffaella.Melzi at alcatel-lucent.it; mathilde.dubesset at technicolor.com; markus.stamm at alcatel-lucent.com; jonas.heitto at alcatel-lucent.com; Klaus.Wuenstel at alcatel-lucent.com; nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; PILAR PLASENCIA MAESO; robert.sarrazin at orange-ftgroup.com; JOSE LUIS PE?A SEDANO; thomas.michael.bohnert at sap.com; werner.mohr at nsn.com; wolfgang.gerteis at sap.com; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; LUIS GARCIA GARCIA Asunto: AW: Consortium Agreement Fiware Dear Ms Schweppe, as the other partners have continously rejected any proposal by Fraunhofer to restrict the definition of Sideground and due to our experiences from the negotiations concerning this CA that some partners obviously try to extend the legal claims to Sideground in a most extended way ("We should have the possibility to choose which architecture we would like to have") we want to make sure that this section in question refers only to Siderground generated by Fraunhofer FOKUS. Regards Fabian Perpeet ________________________________ Von: Schweppe, Kathrin [mailto:kathrin.schweppe at sap.com] Gesendet: Dienstag, 2. August 2011 16:25 An: Fabian Perpeet Cc: Claudia Manderfeld, Ass.; Klarissa Martha Maria Al-Shorachi; Jens Fiedler, Dipl.-Inf.; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; Raffaella.Melzi at alcatel-lucent.it; mathilde.dubesset at technicolor.com; markus.stamm at alcatel-lucent.com; jonas.heitto at alcatel-lucent.com; Klaus.Wuenstel at alcatel-lucent.com; nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: AW: Consortium Agreement Fiware Dear Mr. Perpeet, I disagree, because I do not understand, why Fraunhofer has to state in this special clause that Sideground is from Fraunhofer Fokus. Does this statement only refers to Sideground that is Software or does it refer to all Sideground? Do we have then Access Rights to all Fraunhofer Sidground which is not Software? The statement there is confusing whilst it would be very clear within Annex 3. What are your problems to include that Statement into Annex 3? It would cover your needs and would probably end all these discussions. Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: fabian.perpeet at zv.fraunhofer.de [mailto:fabian.perpeet at zv.fraunhofer.de] Gesendet: Dienstag, 2. August 2011 16:17 An: Schweppe, Kathrin Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; Raffaella.Melzi at alcatel-lucent.it; mathilde.dubesset at technicolor.com; markus.stamm at alcatel-lucent.com; jonas.heitto at alcatel-lucent.com; Klaus.Wuenstel at alcatel-lucent.com; nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: AW: Consortium Agreement Fiware Dear Ms Schweppe, if the "problem" is how to differentiate between back-/sideground developed or not developed by employees of a certain department of a party then it makes no difference if this distinction is made in Annex 3 or the CA itself. Annex 3 is part of the CA. Regards Fabian Perpeet ________________________________ Von: Schweppe, Kathrin [mailto:kathrin.schweppe at sap.com] Gesendet: Dienstag, 2. August 2011 15:54 An: Fabian Perpeet; lgg at tid.es Cc: Claudia Manderfeld, Ass.; Klarissa Martha Maria Al-Shorachi; Jens Fiedler, Dipl.-Inf.; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; Raffaella.Melzi at alcatel-lucent.it; mathilde.dubesset at technicolor.com; markus.stamm at alcatel-lucent.com; jonas.heitto at alcatel-lucent.com; Klaus.Wuenstel at alcatel-lucent.com; nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net Betreff: AW: Consortium Agreement Fiware Dear Fabian, dear all, the difference is, that NEC and others are making this distinction within the Background and Sideground Exclusion list. I find your inclusion in the discussed clause very confusing because it is not clear, if Sidground which is Software should be only from Fraunhofer Fokus or if that should apply to all Fraunhofer Sideground. Maybe you can include that limitation into Annex 3? Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: fabian.perpeet at zv.fraunhofer.de [mailto:fabian.perpeet at zv.fraunhofer.de] Gesendet: Dienstag, 2. August 2011 15:32 An: lgg at tid.es Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Schweppe, Kathrin; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; Raffaella.Melzi at alcatel-lucent.it; mathilde.dubesset at technicolor.com; markus.stamm at alcatel-lucent.com; jonas.heitto at alcatel-lucent.com; Klaus.Wuenstel at alcatel-lucent.com; nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net Betreff: AW: Consortium Agreement Fiware Dear Luis, may we draw your attention to the fact that quite a few partners (including NEC) use the approach of making differences with regard to the Back- or Sideground generated by certain employees of certain departments which are obviously no legal entities in their own right, see excerpt from Annex 3 below. Fraunhofer has made several compromises with regard to the Sideground issue and expect the same willingness from the other partners considering Fraunhofer's needs as a research organisation with scientifically independent institutes. The only change could be to add the last half-sentence proposed by SAP so that the section reads as follows: "All Access Rights to Software that is Sideground (in case of Fraunhofer: Sideground developed by Fraunhofer FOKUS) shall be in the form of Limited Source Code Access for the execution of the Project, save that no Party shall be obliged to grant for Use any Access Rights to Source Code that is Sideground and that is not listed in Annex 5 of this CA. Access Rights to Software that is Sideground for Use shall be in the form of Object Code Access and/or API unless otherwise agreed between the Parties concerned. However, access to the API shall be granted if such access is Needed and may be subject to any condition that the owning Party considers as legitimate to protect the Sideground, but however, without limiting the Access Rights granted under this CA." Please note that this is the last compromise we are willing to take. Best regards Fabian Perpeet IBM Israel Science and Technology Ltd. hereby excludes from its obligation to grant Access Rights to any and all Background and Sideground other than the Background and Sideground generated by the people at the Haifa Research laboratory who participate in the performance of work under this Project. IBM RESEARCH GMBH Hereby excludes from its obligation to grant Access Rights to any and all Background and Sideground other than the Background and Sideground generated by the people at the Zurich Research laboratory who participate in the performance of work under this Project. NEC Europe Ltd. NEC Europe Ltd. (NEC) hereby exclude all Background and Sideground generated by NEC Europe Ltd. other than that generated by NEC Laboratories of NEC Europe Ltd. Further, NEC excludes all Background that NEC is not free to grant access to due to obligations towards third parties. Technicolor R&D France (hereinafter TRDF) expressly excludes from its obligation to grant Access Rights: i. Technologies related to video compression / decompression, content indexation and searching, 3D video, any software pr hardware that have been developed for its customers (related (but not limited to) Set Top Boxes, gateways, modems and wireless technologies) and any Background/Sideground related to the movie industry such as (but not limited to) film mastering, special effects etc... ii. Any and all Background and Sideground not generated by the people at the TRDF's laboratory who participate in the performance of work under the Project iii. Any and all Background and Sideground TRDF is not free to provide iv. Any and all Background and Sideground not Needed for the execution of the Project v. Any and all background and Sideground TRDF has not itself introduced into the Project at its sole discretion for use in execution of the Project ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx -------------- next part -------------- An HTML attachment was scrubbed... URL: From fabian.perpeet at zv.fraunhofer.de Wed Aug 3 14:37:25 2011 From: fabian.perpeet at zv.fraunhofer.de (fabian.perpeet at zv.fraunhofer.de) Date: Wed, 3 Aug 2011 14:37:25 +0200 Subject: [Fiware-legal] Consortium Agreement Fiware In-Reply-To: <400B1E0D509AB14C95FFDC1DE303B9A881E1169ED5@EXCLU2K7.hi.inet> References: <400B1E0D509AB14C95FFDC1DE303B9A881E1169ED5@EXCLU2K7.hi.inet> Message-ID: Luis, just a first question in reply: How shall the Partners be able to detect Background/Sideground by Haifa Research laboratory (IBM) or by the people at the Zurich Research laboratory (IBM) or by NEC Laboratories (NEC) or by the people at the TDRF's laboratory (Technicolor) ? Regards Fabian Perpeet Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von LUIS GARCIA GARCIA Gesendet: Mittwoch, 3. August 2011 14:28 An: fiware-legal at lists.fi-ware.eu Cc: JOSE JIMENEZ DELGADO Betreff: [Fiware-legal] RV: Consortium Agreement Fiware Dear Fabian, dear all, I?ve been discussing with our management/technical people your proposal and have several concerns: 1?.- What happens if Fraunhofer FOKUS use/introduce SG developed by another institute in Fraunhofer and it becomes Needed for Execution of Use? 2?.- How should other partners be able to detect IP which is from Fraunhofer Fokus, and distinguish it from IP from other Fraunhofer institutes, when Fraunhofer Fokus and any other Fraunhoufer institute are not a legal entity on their own? 3?.- We are not in favour to include any particular exemption in a general rule applicable to all the Partners (other partners may wish to include their own exemptions). These exemptions must be included in Annex 3 and we have included in this annex the text you sent us. 4?.- Using Kathrin?s words "Does this statement only refers to Sideground that is Software or does it refer to all Sideground? Do we have then Access Rights to all Fraunhofer Sidground which is not Software? It?s not clear 5?.- As SG is voluntarily used/introduced by the relevant partners in the Project, nothing hinders FOKUS to include - if it decides to do so- exclusively its own SG (then this clause will only be applicable, as you wish, to FOKUS?s SG) Also, nobody can force FhG to introduce in the project any of its SG. 6?.- FhG has accepted IPCA EICTA original wording in this clause in others FP7 projects, even within FUTURE INTENET initiative. It?s our willingness, to consider Fraunhofer's needs as a research organisation with scientifically independent institutes and, as you know, this clause has been widely discussed during our calls, but it seems we are in a closed road and a decision must be taken. We must finalize this CA (some partners do not sign their Form A until the CA is closed) to avoid any risk for the FI-WARE project. I attach it again the proposal we sent yesterday: "All Access Rights to Software that is Sideground shall be in the form of Limited Source Code Access for the execution of the Project, save that no Party shall be obliged to grant for Use any Access Rights to Source Code that is Sideground and that is not listed in Annex 5 of this CA. Access Rights to Software that is Sideground for Use shall be in the form of Object Code Access and/or API unless otherwise agreed between the Parties concerned. However, access to the API shall be granted if such access is Needed and may be subject to any condition that the owning Party considers as legitimate to protect the Sideground but, however, without limiting the Access Rights granted under this CA." For the above mentioned reasons, I?ve received instructions to send this proposal as final and send during next week the pdf. File with the signature instructions. As IBM has finally accepted the current wording in clause 4.3.1.2, once this question is solved and clause 4.2.7.1 is agreed, the CA will be definitively completed. For the sake of compromise, I kindly invite you again to accept the wording we proposed you yesterday for the last paragraph of 4.2.7.1. Looking forward to hearing from you. Best regards Luis. De: fabian.perpeet at zv.fraunhofer.de [mailto:fabian.perpeet at zv.fraunhofer.de] Enviado el: martes, 02 de agosto de 2011 16:39 Para: kathrin.schweppe at sap.com CC: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; JOSE JIMENEZ DELGADO; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; JAVIER DE PEDRO SANCHEZ; jean-dominique.meunier at technicolor.com; JUAN JOSE HIERRO SUREDA; Raffaella.Melzi at alcatel-lucent.it; mathilde.dubesset at technicolor.com; markus.stamm at alcatel-lucent.com; jonas.heitto at alcatel-lucent.com; Klaus.Wuenstel at alcatel-lucent.com; nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; PILAR PLASENCIA MAESO; robert.sarrazin at orange-ftgroup.com; JOSE LUIS PE?A SEDANO; thomas.michael.bohnert at sap.com; werner.mohr at nsn.com; wolfgang.gerteis at sap.com; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; LUIS GARCIA GARCIA Asunto: AW: Consortium Agreement Fiware Dear Ms Schweppe, as the other partners have continously rejected any proposal by Fraunhofer to restrict the definition of Sideground and due to our experiences from the negotiations concerning this CA that some partners obviously try to extend the legal claims to Sideground in a most extended way ("We should have the possibility to choose which architecture we would like to have") we want to make sure that this section in question refers only to Siderground generated by Fraunhofer FOKUS. Regards Fabian Perpeet ________________________________ Von: Schweppe, Kathrin [mailto:kathrin.schweppe at sap.com] Gesendet: Dienstag, 2. August 2011 16:25 An: Fabian Perpeet Cc: Claudia Manderfeld, Ass.; Klarissa Martha Maria Al-Shorachi; Jens Fiedler, Dipl.-Inf.; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; Raffaella.Melzi at alcatel-lucent.it; mathilde.dubesset at technicolor.com; markus.stamm at alcatel-lucent.com; jonas.heitto at alcatel-lucent.com; Klaus.Wuenstel at alcatel-lucent.com; nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: AW: Consortium Agreement Fiware Dear Mr. Perpeet, I disagree, because I do not understand, why Fraunhofer has to state in this special clause that Sideground is from Fraunhofer Fokus. Does this statement only refers to Sideground that is Software or does it refer to all Sideground? Do we have then Access Rights to all Fraunhofer Sidground which is not Software? The statement there is confusing whilst it would be very clear within Annex 3. What are your problems to include that Statement into Annex 3? It would cover your needs and would probably end all these discussions. Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: fabian.perpeet at zv.fraunhofer.de [mailto:fabian.perpeet at zv.fraunhofer.de] Gesendet: Dienstag, 2. August 2011 16:17 An: Schweppe, Kathrin Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; Raffaella.Melzi at alcatel-lucent.it; mathilde.dubesset at technicolor.com; markus.stamm at alcatel-lucent.com; jonas.heitto at alcatel-lucent.com; Klaus.Wuenstel at alcatel-lucent.com; nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: AW: Consortium Agreement Fiware Dear Ms Schweppe, if the "problem" is how to differentiate between back-/sideground developed or not developed by employees of a certain department of a party then it makes no difference if this distinction is made in Annex 3 or the CA itself. Annex 3 is part of the CA. Regards Fabian Perpeet ________________________________ Von: Schweppe, Kathrin [mailto:kathrin.schweppe at sap.com] Gesendet: Dienstag, 2. August 2011 15:54 An: Fabian Perpeet; lgg at tid.es Cc: Claudia Manderfeld, Ass.; Klarissa Martha Maria Al-Shorachi; Jens Fiedler, Dipl.-Inf.; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; Raffaella.Melzi at alcatel-lucent.it; mathilde.dubesset at technicolor.com; markus.stamm at alcatel-lucent.com; jonas.heitto at alcatel-lucent.com; Klaus.Wuenstel at alcatel-lucent.com; nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net Betreff: AW: Consortium Agreement Fiware Dear Fabian, dear all, the difference is, that NEC and others are making this distinction within the Background and Sideground Exclusion list. I find your inclusion in the discussed clause very confusing because it is not clear, if Sidground which is Software should be only from Fraunhofer Fokus or if that should apply to all Fraunhofer Sideground. Maybe you can include that limitation into Annex 3? Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: fabian.perpeet at zv.fraunhofer.de [mailto:fabian.perpeet at zv.fraunhofer.de] Gesendet: Dienstag, 2. August 2011 15:32 An: lgg at tid.es Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Schweppe, Kathrin; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; Raffaella.Melzi at alcatel-lucent.it; mathilde.dubesset at technicolor.com; markus.stamm at alcatel-lucent.com; jonas.heitto at alcatel-lucent.com; Klaus.Wuenstel at alcatel-lucent.com; nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net Betreff: AW: Consortium Agreement Fiware Dear Luis, may we draw your attention to the fact that quite a few partners (including NEC) use the approach of making differences with regard to the Back- or Sideground generated by certain employees of certain departments which are obviously no legal entities in their own right, see excerpt from Annex 3 below. Fraunhofer has made several compromises with regard to the Sideground issue and expect the same willingness from the other partners considering Fraunhofer's needs as a research organisation with scientifically independent institutes. The only change could be to add the last half-sentence proposed by SAP so that the section reads as follows: "All Access Rights to Software that is Sideground (in case of Fraunhofer: Sideground developed by Fraunhofer FOKUS) shall be in the form of Limited Source Code Access for the execution of the Project, save that no Party shall be obliged to grant for Use any Access Rights to Source Code that is Sideground and that is not listed in Annex 5 of this CA. Access Rights to Software that is Sideground for Use shall be in the form of Object Code Access and/or API unless otherwise agreed between the Parties concerned. However, access to the API shall be granted if such access is Needed and may be subject to any condition that the owning Party considers as legitimate to protect the Sideground, but however, without limiting the Access Rights granted under this CA." Please note that this is the last compromise we are willing to take. Best regards Fabian Perpeet IBM Israel Science and Technology Ltd. hereby excludes from its obligation to grant Access Rights to any and all Background and Sideground other than the Background and Sideground generated by the people at the Haifa Research laboratory who participate in the performance of work under this Project. IBM RESEARCH GMBH Hereby excludes from its obligation to grant Access Rights to any and all Background and Sideground other than the Background and Sideground generated by the people at the Zurich Research laboratory who participate in the performance of work under this Project. NEC Europe Ltd. NEC Europe Ltd. (NEC) hereby exclude all Background and Sideground generated by NEC Europe Ltd. other than that generated by NEC Laboratories of NEC Europe Ltd. Further, NEC excludes all Background that NEC is not free to grant access to due to obligations towards third parties. Technicolor R&D France (hereinafter TRDF) expressly excludes from its obligation to grant Access Rights: i. Technologies related to video compression / decompression, content indexation and searching, 3D video, any software pr hardware that have been developed for its customers (related (but not limited to) Set Top Boxes, gateways, modems and wireless technologies) and any Background/Sideground related to the movie industry such as (but not limited to) film mastering, special effects etc... ii. Any and all Background and Sideground not generated by the people at the TRDF's laboratory who participate in the performance of work under the Project iii. Any and all Background and Sideground TRDF is not free to provide iv. Any and all Background and Sideground not Needed for the execution of the Project v. Any and all background and Sideground TRDF has not itself introduced into the Project at its sole discretion for use in execution of the Project ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx -------------- next part -------------- An HTML attachment was scrubbed... URL: From SUZANNE at il.ibm.com Wed Aug 3 15:10:01 2011 From: SUZANNE at il.ibm.com (Suzanne Erez) Date: Wed, 3 Aug 2011 16:10:01 +0300 Subject: [Fiware-legal] Consortium Agreement Fiware In-Reply-To: References: <400B1E0D509AB14C95FFDC1DE303B9A881E1169ED5@EXCLU2K7.hi.inet> Message-ID: Fabian, The way I see it, the most probable source of Sideground is improvement to Background. As an example, IBM is bringing an IBM asset from the IBM SWG division. We hope that any improvements to this IBM asset will also be able to be used by the FI-Ware project. Since this asset was not developed by Haifa people, chances are that while some improvements will come out of work done by the project, some improvements will be done by the project owning the asset. As such, to limit the Sideground to only those people involved in the project is unnecessarily limiting and actually counter productive. Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel:? 972-4-829-6069? Fax:? 972-4-829-6521 Never insult an alligator until after you've crossed the river. Oriental Proverb PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: fabian.perpeet at zv.fraunhofer.de To: lgg at tid.es Cc: jens.fiedler at fokus.fraunhofer.de, fiware-legal at lists.fi-ware.eu Date: 08/03/11 03:38 PM Subject: Re: [Fiware-legal] Consortium Agreement Fiware Sent by: fiware-legal-bounces at lists.fi-ware.eu Luis, just a first question in reply: How shall the Partners be able to detect Background/Sideground by Haifa Research laboratory (IBM) or by the people at the Zurich Research laboratory (IBM) or by NEC Laboratories (NEC) or by the people at the TDRF?s laboratory (Technicolor) ? Regards Fabian Perpeet Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von LUIS GARCIA GARCIA Gesendet: Mittwoch, 3. August 2011 14:28 An: fiware-legal at lists.fi-ware.eu Cc: JOSE JIMENEZ DELGADO Betreff: [Fiware-legal] RV: Consortium Agreement Fiware Dear Fabian, dear all, I?ve been discussing with our management/technical people your proposal and have several concerns: 1?.- What happens if Fraunhofer FOKUS use/introduce SG developed by another institute in Fraunhofer and it becomes Needed for Execution of Use? 2?.- How should other partners be able to detect IP which is from Fraunhofer Fokus, and distinguish it from IP from other Fraunhofer institutes, when Fraunhofer Fokus and any other Fraunhoufer institute are not a legal entity on their own? 3?.- We are not in favour to include any particular exemption in a general rule applicable to all the Partners (other partners may wish to include their own exemptions). These exemptions must be included in Annex 3 and we have included in this annex the text you sent us. 4?.- Using Kathrin?s words ?Does this statement only refers to Sideground that is Software or does it refer to all Sideground? Do we have then Access Rights to all Fraunhofer Sidground which is not Software? It?s not clear 5?.- As SG is voluntarily used/introduced by the relevant partners in the Project, nothing hinders FOKUS to include ? if it decides to do so- exclusively its own SG (then this clause will only be applicable, as you wish, to FOKUS?s SG) Also, nobody can force FhG to introduce in the project any of its SG. 6?.- FhG has accepted IPCA EICTA original wording in this clause in others FP7 projects, even within FUTURE INTENET initiative. It?s our willingness, to consider Fraunhofer?s needs as a research organisation with scientifically independent institutes and, as you know, this clause has been widely discussed during our calls, but it seems we are in a closed road and a decision must be taken. We must finalize this CA (some partners do not sign their Form A until the CA is closed) to avoid any risk for the FI-WARE project. I attach it again the proposal we sent yesterday: ?All Access Rights to Software that is Sideground shall be in the form of Limited Source Code Access for the execution of the Project, save that no Party shall be obliged to grant for Use any Access Rights to Source Code that is Sideground and that is not listed in Annex 5 of this CA. Access Rights to Software that is Sideground for Use shall be in the form of Object Code Access and/or API unless otherwise agreed between the Parties concerned. However, access to the API shall be granted if such access is Needed and may be subject to any condition that the owning Party considers as legitimate to protect the Sideground but, however, without limiting the Access Rights granted under this CA.? For the above mentioned reasons, I?ve received instructions to send this proposal as final and send during next week the pdf. File with the signature instructions. As IBM has finally accepted the current wording in clause 4.3.1.2, once this question is solved and clause 4.2.7.1 is agreed, the CA will be definitively completed. For the sake of compromise, I kindly invite you again to accept the wording we proposed you yesterday for the last paragraph of 4.2.7.1. Looking forward to hearing from you. Best regards Luis. De: fabian.perpeet at zv.fraunhofer.de [mailto:fabian.perpeet at zv.fraunhofer.de ] Enviado el: martes, 02 de agosto de 2011 16:39 Para: kathrin.schweppe at sap.com CC: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; JOSE JIMENEZ DELGADO; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; JAVIER DE PEDRO SANCHEZ; jean-dominique.meunier at technicolor.com; JUAN JOSE HIERRO SUREDA; Raffaella.Melzi at alcatel-lucent.it; mathilde.dubesset at technicolor.com; markus.stamm at alcatel-lucent.com; jonas.heitto at alcatel-lucent.com; Klaus.Wuenstel at alcatel-lucent.com; nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; PILAR PLASENCIA MAESO; robert.sarrazin at orange-ftgroup.com; JOSE LUIS PE?A SEDANO; thomas.michael.bohnert at sap.com; werner.mohr at nsn.com; wolfgang.gerteis at sap.com; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; LUIS GARCIA GARCIA Asunto: AW: Consortium Agreement Fiware Dear Ms Schweppe, as the other partners have continously rejected any proposal by Fraunhofer to restrict the definition of Sideground and due to our experiences from the negotiations concerning this CA that some partners obviously try to extend the legal claims to Sideground in a most extended way (?We should have the possibility to choose which architecture we would like to have?) we want to make sure that this section in question refers only to Siderground generated by Fraunhofer FOKUS. Regards Fabian Perpeet Von: Schweppe, Kathrin [mailto:kathrin.schweppe at sap.com] Gesendet: Dienstag, 2. August 2011 16:25 An: Fabian Perpeet Cc: Claudia Manderfeld, Ass.; Klarissa Martha Maria Al-Shorachi; Jens Fiedler, Dipl.-Inf.; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; Raffaella.Melzi at alcatel-lucent.it; mathilde.dubesset at technicolor.com; markus.stamm at alcatel-lucent.com; jonas.heitto at alcatel-lucent.com; Klaus.Wuenstel at alcatel-lucent.com; nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: AW: Consortium Agreement Fiware Dear Mr. Perpeet, I disagree, because I do not understand, why Fraunhofer has to state in this special clause that Sideground is from Fraunhofer Fokus. Does this statement only refers to Sideground that is Software or does it refer to all Sideground? Do we have then Access Rights to all Fraunhofer Sidground which is not Software? The statement there is confusing whilst it would be very clear within Annex 3. What are your problems to include that Statement into Annex 3? It would cover your needs and would probably end all these discussions. Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: fabian.perpeet at zv.fraunhofer.de [ mailto:fabian.perpeet at zv.fraunhofer.de] Gesendet: Dienstag, 2. August 2011 16:17 An: Schweppe, Kathrin Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; Raffaella.Melzi at alcatel-lucent.it; mathilde.dubesset at technicolor.com; markus.stamm at alcatel-lucent.com; jonas.heitto at alcatel-lucent.com; Klaus.Wuenstel at alcatel-lucent.com; nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: AW: Consortium Agreement Fiware Dear Ms Schweppe, if the ?problem? is how to differentiate between back-/sideground developed or not developed by employees of a certain department of a party then it makes no difference if this distinction is made in Annex 3 or the CA itself. Annex 3 is part of the CA. Regards Fabian Perpeet Von: Schweppe, Kathrin [mailto:kathrin.schweppe at sap.com] Gesendet: Dienstag, 2. August 2011 15:54 An: Fabian Perpeet; lgg at tid.es Cc: Claudia Manderfeld, Ass.; Klarissa Martha Maria Al-Shorachi; Jens Fiedler, Dipl.-Inf.; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; Raffaella.Melzi at alcatel-lucent.it; mathilde.dubesset at technicolor.com; markus.stamm at alcatel-lucent.com; jonas.heitto at alcatel-lucent.com; Klaus.Wuenstel at alcatel-lucent.com; nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net Betreff: AW: Consortium Agreement Fiware Dear Fabian, dear all, the difference is, that NEC and others are making this distinction within the Background and Sideground Exclusion list. I find your inclusion in the discussed clause very confusing because it is not clear, if Sidground which is Software should be only from Fraunhofer Fokus or if that should apply to all Fraunhofer Sideground. Maybe you can include that limitation into Annex 3? Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: fabian.perpeet at zv.fraunhofer.de [ mailto:fabian.perpeet at zv.fraunhofer.de] Gesendet: Dienstag, 2. August 2011 15:32 An: lgg at tid.es Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Schweppe, Kathrin; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; Raffaella.Melzi at alcatel-lucent.it; mathilde.dubesset at technicolor.com; markus.stamm at alcatel-lucent.com; jonas.heitto at alcatel-lucent.com; Klaus.Wuenstel at alcatel-lucent.com; nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net Betreff: AW: Consortium Agreement Fiware Dear Luis, may we draw your attention to the fact that quite a few partners (including NEC) use the approach of making differences with regard to the Back- or Sideground generated by certain employees of certain departments which are obviously no legal entities in their own right, see excerpt from Annex 3 below. Fraunhofer has made several compromises with regard to the Sideground issue and expect the same willingness from the other partners considering Fraunhofer?s needs as a research organisation with scientifically independent institutes. The only change could be to add the last half-sentence proposed by SAP so that the section reads as follows: ?All Access Rights to Software that is Sideground (in case of Fraunhofer: Sideground developed by Fraunhofer FOKUS) shall be in the form of Limited Source Code Access for the execution of the Project, save that no Party shall be obliged to grant for Use any Access Rights to Source Code that is Sideground and that is not listed in Annex 5 of this CA. Access Rights to Software that is Sideground for Use shall be in the form of Object Code Access and/or API unless otherwise agreed between the Parties concerned. However, access to the API shall be granted if such access is Needed and may be subject to any condition that the owning Party considers as legitimate to protect the Sideground, but however, without limiting the Access Rights granted under this CA.? Please note that this is the last compromise we are willing to take. Best regards Fabian Perpeet IBM Israel Science and Technology Ltd. hereby excludes from its obligation to grant Access Rights to any and all Background and Sideground other than the Background and Sideground generated by the people at the Haifa Research laboratory who participate in the performance of work under this Project. IBM RESEARCH GMBH Hereby excludes from its obligation to grant Access Rights to any and all Background and Sideground other than the Background and Sideground generated by the people at the Zurich Research laboratory who participate in the performance of work under this Project. NEC Europe Ltd. NEC Europe Ltd. (NEC) hereby exclude all Background and Sideground generated by NEC Europe Ltd. other than that generated by NEC Laboratories of NEC Europe Ltd. Further, NEC excludes all Background that NEC is not free to grant access to due to obligations towards third parties. Technicolor R&D France (hereinafter TRDF) expressly excludes from its obligation to grant Access Rights: i. Technologies related to video compression / decompression, content indexation and searching, 3D video, any software pr hardware that have been developed for its customers (related (but not limited to) Set Top Boxes, gateways, modems and wireless technologies) and any Background/Sideground related to the movie industry such as (but not limited to) film mastering, special effects etc? ii. Any and all Background and Sideground not generated by the people at the TRDF?s laboratory who participate in the performance of work under the Project iii. Any and all Background and Sideground TRDF is not free to provide iv. Any and all Background and Sideground not Needed for the execution of the Project v. Any and all background and Sideground TRDF has not itself introduced into the Project at its sole discretion for use in execution of the Project Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal From SUZANNE at il.ibm.com Wed Aug 3 15:31:23 2011 From: SUZANNE at il.ibm.com (Suzanne Erez) Date: Wed, 3 Aug 2011 16:31:23 +0300 Subject: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld@zv.fraunhofer.decs In-Reply-To: <400B1E0D509AB14C95FFDC1DE303B9A881E1169E83@EXCLU2K7.hi.inet> References: <400B1E0D509AB14C95FFDC1DE303B9A881E1169E02@EXCLU2K7.hi.inet> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF728@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF7BF@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF843@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFFE36@DEWDFECCR03.wdf.sap.corp> <400B1E0D509AB14C95FFDC1DE303B9A881E1169E83@EXCLU2K7.hi.inet> Message-ID: Luis, If I may make a comment to Jonas. Jonas - you asked a very very good question, that made me pause, and double check with our technical people that I was on the right path. We at IBM agree with Kathrin. We do not see having patent applications being created or covering the Generic Enabler SPECIFICATIONS. We do have Background and will have Sideground, patents on the Generic Enablers THEMSELVES, but not on the SPECIFICAIONS. We do not foresee the Specifications being so detailed as to being patentable - they will simply list requirements. So, as Kathrin said, since each Party has reserved the rights to license the Generic Enablers themselves, and since you so rightly pointed out the Exclusion List, we feel that we are in good shape. wow, good comment. Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel:? 972-4-829-6069? Fax:? 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Schweppe, Kathrin" , "Heitto, Jonas (Jonas)" Cc: "fiware-legal at lists.fi-ware.eu" Date: 08/03/11 11:06 AM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Jonas and all, Nothing to add to Kathrin explanation. Further, this clause was widely discussed and finally agreed long time ago. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) De: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] En nombre de Schweppe, Kathrin Enviado el: mi?rcoles, 03 de agosto de 2011 9:56 Para: Heitto, Jonas (Jonas); fabian.perpeet at zv.fraunhofer.de CC: fiware-legal at lists.fi-ware.eu Asunto: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Dear Jonas, dear all, I understand your concerns, we had similar concerns and therefore this section was included: For further sake of clarity, Parties including those Parties that assisted in generating the FI-WARE Generic Enabler Specifications may, but are not obliged to, develop implementations or reference implementations of FI-WARE Generic Enabler Specifications and request licensing terms other than open and royalty free for such, e.g. under FRAND (Fair, Reasonable and Non-Discriminatory) terms subject to the provisions of Article 4.2.3 and 4.2.4 below. The Parties may release their implementations or reference implementations as open source or closed source, at their sole discretion. Then, the Generic Enabler Specification is only a description about technical requirements and the like. Do you see that a patent could be included there? Taking all these things into account, do you think we need further clarification here and if so, can you please propose some wording? Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Dienstag, 2. August 2011 18:42 An: Schweppe, Kathrin; fabian.perpeet at zv.fraunhofer.de Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; MELZI, RAFFAELLA (RAFFAELLA); mathilde.dubesset at technicolor.com; STAMM, Markus (Markus); Wuenstel, Klaus (Klaus); nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: RE: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I?m opening a new thread lest we lose ourselves in the multitude of exchanges on various subjects. My concern relates to the 2nd paragpagh of Section 4.1: Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Would people be against adding a clarification that this generous covenant does not imply royalty free licensing of Background and Sideground patents, should any read on such implementations? Or does everybody rely on their Background and Sideground exclusions? Regards Jonas Dr. Jonas Heitto, LL.M. ALCATEL-LUCENT Corporate IP Counsel INTELLECTUAL PROPERTY & STANDARDS ( Tel +49 711 821 44561 2 Fax +49 711 821 44587 jonas.heitto at alcatel-lucent.com This e-mail message and any attachment is confidential and is intended for use only by the named addressees above. This message may contain information that is confidential, privileged, attorney work product, or exempt from disclosure under applicable law. If you are not an intended recipient, then you are prohibited from reading or copying any part of this message or opening, reading or copying any attachment. If you have received this message in error, or are not a named recipient, please immediately notify the sender by reply mail and delete this e-mail from your computer. Thank you for your cooperation. Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal -------------- next part -------------- A non-text attachment was scrubbed... Name: image001.png Type: image/png Size: 16885 bytes Desc: not available URL: From jonas.heitto at alcatel-lucent.com Wed Aug 3 17:59:37 2011 From: jonas.heitto at alcatel-lucent.com (Heitto, Jonas (Jonas)) Date: Wed, 3 Aug 2011 17:59:37 +0200 Subject: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld@zv.fraunhofer.decs In-Reply-To: References: <400B1E0D509AB14C95FFDC1DE303B9A881E1169E02@EXCLU2K7.hi.inet> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF728@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF7BF@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF843@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFFE36@DEWDFECCR03.wdf.sap.corp> <400B1E0D509AB14C95FFDC1DE303B9A881E1169E83@EXCLU2K7.hi.inet> Message-ID: Susanne, all, Even if the specs themselves are not patentable, which is likely, the provision says that ...other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. The 2nd paragraph merely states that a Party may develop implementations and require royalties for their use. But the other Parties are still not paying for their own implementations. Which we don't know yet. Which could read on BG patents of the licensing party. I still think that some clarification may be in order, or possibly updates to the Background exclusion lists. Please let me know what you think. Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Mittwoch, 3. August 2011 15:31 To: LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Heitto, Jonas (Jonas); Schweppe, Kathrin Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Luis, If I may make a comment to Jonas. Jonas - you asked a very very good question, that made me pause, and double check with our technical people that I was on the right path. We at IBM agree with Kathrin. We do not see having patent applications being created or covering the Generic Enabler SPECIFICATIONS. We do have Background and will have Sideground, patents on the Generic Enablers THEMSELVES, but not on the SPECIFICAIONS. We do not foresee the Specifications being so detailed as to being patentable - they will simply list requirements. So, as Kathrin said, since each Party has reserved the rights to license the Generic Enablers themselves, and since you so rightly pointed out the Exclusion List, we feel that we are in good shape. wow, good comment. Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Schweppe, Kathrin" , "Heitto, Jonas (Jonas)" Cc: "fiware-legal at lists.fi-ware.eu" Date: 08/03/11 11:06 AM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Jonas and all, Nothing to add to Kathrin explanation. Further, this clause was widely discussed and finally agreed long time ago. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) De: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] En nombre de Schweppe, Kathrin Enviado el: mi?rcoles, 03 de agosto de 2011 9:56 Para: Heitto, Jonas (Jonas); fabian.perpeet at zv.fraunhofer.de CC: fiware-legal at lists.fi-ware.eu Asunto: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Dear Jonas, dear all, I understand your concerns, we had similar concerns and therefore this section was included: For further sake of clarity, Parties including those Parties that assisted in generating the FI-WARE Generic Enabler Specifications may, but are not obliged to, develop implementations or reference implementations of FI-WARE Generic Enabler Specifications and request licensing terms other than open and royalty free for such, e.g. under FRAND (Fair, Reasonable and Non-Discriminatory) terms subject to the provisions of Article 4.2.3 and 4.2.4 below. The Parties may release their implementations or reference implementations as open source or closed source, at their sole discretion. Then, the Generic Enabler Specification is only a description about technical requirements and the like. Do you see that a patent could be included there? Taking all these things into account, do you think we need further clarification here and if so, can you please propose some wording? Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Dienstag, 2. August 2011 18:42 An: Schweppe, Kathrin; fabian.perpeet at zv.fraunhofer.de Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; MELZI, RAFFAELLA (RAFFAELLA); mathilde.dubesset at technicolor.com; STAMM, Markus (Markus); Wuenstel, Klaus (Klaus); nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: RE: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I'm opening a new thread lest we lose ourselves in the multitude of exchanges on various subjects. My concern relates to the 2nd paragpagh of Section 4.1: Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Would people be against adding a clarification that this generous covenant does not imply royalty free licensing of Background and Sideground patents, should any read on such implementations? Or does everybody rely on their Background and Sideground exclusions? Regards Jonas Dr. Jonas Heitto, LL.M. ALCATEL-LUCENT Corporate IP Counsel INTELLECTUAL PROPERTY & STANDARDS ( Tel +49 711 821 44561 2 Fax +49 711 821 44587 jonas.heitto at alcatel-lucent.com This e-mail message and any attachment is confidential and is intended for use only by the named addressees above. This message may contain information that is confidential, privileged, attorney work product, or exempt from disclosure under applicable law. If you are not an intended recipient, then you are prohibited from reading or copying any part of this message or opening, reading or copying any attachment. If you have received this message in error, or are not a named recipient, please immediately notify the sender by reply mail and delete this e-mail from your computer. Thank you for your cooperation. Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal -------------- next part -------------- An HTML attachment was scrubbed... URL: From kathrin.schweppe at sap.com Wed Aug 3 18:13:12 2011 From: kathrin.schweppe at sap.com (Schweppe, Kathrin) Date: Wed, 3 Aug 2011 18:13:12 +0200 Subject: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs In-Reply-To: References: <400B1E0D509AB14C95FFDC1DE303B9A881E1169E02@EXCLU2K7.hi.inet> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF728@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF7BF@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF843@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFFE36@DEWDFECCR03.wdf.sap.corp> <400B1E0D509AB14C95FFDC1DE303B9A881E1169E83@EXCLU2K7.hi.inet> Message-ID: <7ED7B27AF3542948BAB7BCD179A7677C10CCE89DFE@DEWDFECCR03.wdf.sap.corp> Dear Jonas, as far as I understood it, and please someone should correct me, if I am wrong, it was a mandatory prerequisite from the European Commission that the Generic Enabler Specification have to be published upon royalty-free conditions. I think, I do not understand fully your comment. If SAP implements SAP GE Specs, why should we pay ourselves? It would only make sense, if SAP pays IBM for implementation of IBM's specs. And exactly that is what the EC would like to see with regard to the specifications. We have further protection with regard to patents, that you can check via the publication process if there are patents enclosed upon which you do not would like to see free implementations. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Mittwoch, 3. August 2011 18:00 An: Suzanne Erez; LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Schweppe, Kathrin Betreff: RE: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Susanne, all, Even if the specs themselves are not patentable, which is likely, the provision says that ...other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. The 2nd paragraph merely states that a Party may develop implementations and require royalties for their use. But the other Parties are still not paying for their own implementations. Which we don't know yet. Which could read on BG patents of the licensing party. I still think that some clarification may be in order, or possibly updates to the Background exclusion lists. Please let me know what you think. Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Mittwoch, 3. August 2011 15:31 To: LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Heitto, Jonas (Jonas); Schweppe, Kathrin Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Luis, If I may make a comment to Jonas. Jonas - you asked a very very good question, that made me pause, and double check with our technical people that I was on the right path. We at IBM agree with Kathrin. We do not see having patent applications being created or covering the Generic Enabler SPECIFICATIONS. We do have Background and will have Sideground, patents on the Generic Enablers THEMSELVES, but not on the SPECIFICAIONS. We do not foresee the Specifications being so detailed as to being patentable - they will simply list requirements. So, as Kathrin said, since each Party has reserved the rights to license the Generic Enablers themselves, and since you so rightly pointed out the Exclusion List, we feel that we are in good shape. wow, good comment. Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Schweppe, Kathrin" , "Heitto, Jonas (Jonas)" Cc: "fiware-legal at lists.fi-ware.eu" Date: 08/03/11 11:06 AM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Jonas and all, Nothing to add to Kathrin explanation. Further, this clause was widely discussed and finally agreed long time ago. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) De: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] En nombre de Schweppe, Kathrin Enviado el: mi?rcoles, 03 de agosto de 2011 9:56 Para: Heitto, Jonas (Jonas); fabian.perpeet at zv.fraunhofer.de CC: fiware-legal at lists.fi-ware.eu Asunto: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Dear Jonas, dear all, I understand your concerns, we had similar concerns and therefore this section was included: For further sake of clarity, Parties including those Parties that assisted in generating the FI-WARE Generic Enabler Specifications may, but are not obliged to, develop implementations or reference implementations of FI-WARE Generic Enabler Specifications and request licensing terms other than open and royalty free for such, e.g. under FRAND (Fair, Reasonable and Non-Discriminatory) terms subject to the provisions of Article 4.2.3 and 4.2.4 below. The Parties may release their implementations or reference implementations as open source or closed source, at their sole discretion. Then, the Generic Enabler Specification is only a description about technical requirements and the like. Do you see that a patent could be included there? Taking all these things into account, do you think we need further clarification here and if so, can you please propose some wording? Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Dienstag, 2. August 2011 18:42 An: Schweppe, Kathrin; fabian.perpeet at zv.fraunhofer.de Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; MELZI, RAFFAELLA (RAFFAELLA); mathilde.dubesset at technicolor.com; STAMM, Markus (Markus); Wuenstel, Klaus (Klaus); nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: RE: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I'm opening a new thread lest we lose ourselves in the multitude of exchanges on various subjects. My concern relates to the 2nd paragpagh of Section 4.1: Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Would people be against adding a clarification that this generous covenant does not imply royalty free licensing of Background and Sideground patents, should any read on such implementations? Or does everybody rely on their Background and Sideground exclusions? Regards Jonas Dr. Jonas Heitto, LL.M. ALCATEL-LUCENT Corporate IP Counsel INTELLECTUAL PROPERTY & STANDARDS ( Tel +49 711 821 44561 2 Fax +49 711 821 44587 jonas.heitto at alcatel-lucent.com This e-mail message and any attachment is confidential and is intended for use only by the named addressees above. This message may contain information that is confidential, privileged, attorney work product, or exempt from disclosure under applicable law. If you are not an intended recipient, then you are prohibited from reading or copying any part of this message or opening, reading or copying any attachment. If you have received this message in error, or are not a named recipient, please immediately notify the sender by reply mail and delete this e-mail from your computer. Thank you for your cooperation. Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal -------------- next part -------------- An HTML attachment was scrubbed... URL: From jonas.heitto at alcatel-lucent.com Wed Aug 3 22:34:22 2011 From: jonas.heitto at alcatel-lucent.com (Heitto, Jonas (Jonas)) Date: Wed, 3 Aug 2011 22:34:22 +0200 Subject: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs In-Reply-To: <7ED7B27AF3542948BAB7BCD179A7677C10CCE89DFE@DEWDFECCR03.wdf.sap.corp> References: <400B1E0D509AB14C95FFDC1DE303B9A881E1169E02@EXCLU2K7.hi.inet> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF728@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF7BF@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF843@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFFE36@DEWDFECCR03.wdf.sap.corp> <400B1E0D509AB14C95FFDC1DE303B9A881E1169E83@EXCLU2K7.hi.inet> <7ED7B27AF3542948BAB7BCD179A7677C10CCE89DFE@DEWDFECCR03.wdf.sap.corp> Message-ID: Dear Kathrin, thanks for taking the time to dwell on this and it's comforting to know that several parties were interested in the same issues as we are. In my former comment, I attempted to describe a situation where A defines a spec and B proceeds to implement. The way I understood the quoted clauses, B can ask for a royalty for his implementation but A can't request to be compensated even if B's implementation read on A's patents. Do you have the same reading? Finally, can you help me find the document in which the Commission requests RF licensing of the GE Specs? Thanks & regards Jonas ________________________________ From: Schweppe, Kathrin [mailto:kathrin.schweppe at sap.com] Sent: Mittwoch, 3. August 2011 18:13 To: Heitto, Jonas (Jonas); Suzanne Erez; LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear Jonas, as far as I understood it, and please someone should correct me, if I am wrong, it was a mandatory prerequisite from the European Commission that the Generic Enabler Specification have to be published upon royalty-free conditions. I think, I do not understand fully your comment. If SAP implements SAP GE Specs, why should we pay ourselves? It would only make sense, if SAP pays IBM for implementation of IBM's specs. And exactly that is what the EC would like to see with regard to the specifications. We have further protection with regard to patents, that you can check via the publication process if there are patents enclosed upon which you do not would like to see free implementations. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Mittwoch, 3. August 2011 18:00 An: Suzanne Erez; LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Schweppe, Kathrin Betreff: RE: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Susanne, all, Even if the specs themselves are not patentable, which is likely, the provision says that ...other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. The 2nd paragraph merely states that a Party may develop implementations and require royalties for their use. But the other Parties are still not paying for their own implementations. Which we don't know yet. Which could read on BG patents of the licensing party. I still think that some clarification may be in order, or possibly updates to the Background exclusion lists. Please let me know what you think. Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Mittwoch, 3. August 2011 15:31 To: LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Heitto, Jonas (Jonas); Schweppe, Kathrin Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Luis, If I may make a comment to Jonas. Jonas - you asked a very very good question, that made me pause, and double check with our technical people that I was on the right path. We at IBM agree with Kathrin. We do not see having patent applications being created or covering the Generic Enabler SPECIFICATIONS. We do have Background and will have Sideground, patents on the Generic Enablers THEMSELVES, but not on the SPECIFICAIONS. We do not foresee the Specifications being so detailed as to being patentable - they will simply list requirements. So, as Kathrin said, since each Party has reserved the rights to license the Generic Enablers themselves, and since you so rightly pointed out the Exclusion List, we feel that we are in good shape. wow, good comment. Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Schweppe, Kathrin" , "Heitto, Jonas (Jonas)" Cc: "fiware-legal at lists.fi-ware.eu" Date: 08/03/11 11:06 AM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Jonas and all, Nothing to add to Kathrin explanation. Further, this clause was widely discussed and finally agreed long time ago. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) De: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] En nombre de Schweppe, Kathrin Enviado el: mi?rcoles, 03 de agosto de 2011 9:56 Para: Heitto, Jonas (Jonas); fabian.perpeet at zv.fraunhofer.de CC: fiware-legal at lists.fi-ware.eu Asunto: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Dear Jonas, dear all, I understand your concerns, we had similar concerns and therefore this section was included: For further sake of clarity, Parties including those Parties that assisted in generating the FI-WARE Generic Enabler Specifications may, but are not obliged to, develop implementations or reference implementations of FI-WARE Generic Enabler Specifications and request licensing terms other than open and royalty free for such, e.g. under FRAND (Fair, Reasonable and Non-Discriminatory) terms subject to the provisions of Article 4.2.3 and 4.2.4 below. The Parties may release their implementations or reference implementations as open source or closed source, at their sole discretion. Then, the Generic Enabler Specification is only a description about technical requirements and the like. Do you see that a patent could be included there? Taking all these things into account, do you think we need further clarification here and if so, can you please propose some wording? Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Dienstag, 2. August 2011 18:42 An: Schweppe, Kathrin; fabian.perpeet at zv.fraunhofer.de Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; MELZI, RAFFAELLA (RAFFAELLA); mathilde.dubesset at technicolor.com; STAMM, Markus (Markus); Wuenstel, Klaus (Klaus); nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: RE: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I'm opening a new thread lest we lose ourselves in the multitude of exchanges on various subjects. My concern relates to the 2nd paragpagh of Section 4.1: Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Would people be against adding a clarification that this generous covenant does not imply royalty free licensing of Background and Sideground patents, should any read on such implementations? Or does everybody rely on their Background and Sideground exclusions? Regards Jonas Dr. Jonas Heitto, LL.M. ALCATEL-LUCENT Corporate IP Counsel INTELLECTUAL PROPERTY & STANDARDS ( Tel +49 711 821 44561 2 Fax +49 711 821 44587 jonas.heitto at alcatel-lucent.com This e-mail message and any attachment is confidential and is intended for use only by the named addressees above. This message may contain information that is confidential, privileged, attorney work product, or exempt from disclosure under applicable law. If you are not an intended recipient, then you are prohibited from reading or copying any part of this message or opening, reading or copying any attachment. If you have received this message in error, or are not a named recipient, please immediately notify the sender by reply mail and delete this e-mail from your computer. Thank you for your cooperation. Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal -------------- next part -------------- An HTML attachment was scrubbed... URL: From SUZANNE at il.ibm.com Thu Aug 4 06:56:34 2011 From: SUZANNE at il.ibm.com (Suzanne Erez) Date: Thu, 4 Aug 2011 07:56:34 +0300 Subject: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs In-Reply-To: <7ED7B27AF3542948BAB7BCD179A7677C10CCE89DFE@DEWDFECCR03.wdf.sap.corp> References: <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF728@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF7BF@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF843@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFFE36@DEWDFECCR03.wdf.sap.corp> <400B1E0D509AB14C95FFDC1DE303B9A881E1169E83@EXCLU2K7.hi.inet> <7ED7B27AF3542948BAB7BCD179A7677C10CCE89DFE@DEWDFECCR03.wdf.sap.corp> Message-ID: Jonas, Ah ha, I think I understand. You are saying that while the specs themselves may not cover patentable material, the implementation once created - may have material IN ADDITION to the specification, and that may cover Background patents. So I as the implementer does not need to pay for implementing the bare specification, but if my implementation covers MORE than just the specification, and this MORE is covered by Background patents, for that we should pay. Another way to say it is that - there are many many ways to implement the specification. The specification is only the bare minimum (e.g. must have black walls). If my implementation has only black walls, there is no royalty. But if the walls are black with white stripes, and white stripes are patented, the party owning that patent should be able tor request payment. I know for IBM - we have a specific implementation of the Generic Enabler Specification. There will be many many ways to implement the specification. If someone creates their own implementation that covers the specs, and does it in a different way - more power to them. But if someone creates an implementation that copies what IBM does, and that is NOT in the spec, I should be able to ask for royalties, or request that this someone not infringe my patents. IS THIS WHAT YOU MEAN? Luis - our intention was that parties should contribute the specification royalty free, but I do not think it was our intention that if the implementation covers OTHER material that is patentable, that too must be royalty free. Below in caps is my suggestion. Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES THAT CONTRIBUTE TO THE SPECIFICATION ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY NOT COVERED BY THE FIWARE GENERIC ENABLER SPECIFICATION. (anyone know a better way to say this?) What do you all think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel:? 972-4-829-6069? Fax:? 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL, LUIS GARCIA GARCIA Cc: "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" Date: 08/03/11 07:13 PM Subject: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear Jonas, as far as I understood it, and please someone should correct me, if I am wrong, it was a mandatory prerequisite from the European Commission that the Generic Enabler Specification have to be published upon royalty-free conditions. I think, I do not understand fully your comment. If SAP implements SAP GE Specs, why should we pay ourselves? It would only make sense, if SAP pays IBM for implementation of IBM?s specs. And exactly that is what the EC would like to see with regard to the specifications. We have further protection with regard to patents, that you can check via the publication process if there are patents enclosed upon which you do not would like to see free implementations. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Mittwoch, 3. August 2011 18:00 An: Suzanne Erez; LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Schweppe, Kathrin Betreff: RE: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Susanne, all, Even if the specs themselves are not patentable, which is likely, the provision says that ?other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. The 2nd paragraph merely states that a Party may develop implementations and require royalties for their use. But the other Parties are still not paying for their own implementations. Which we don't know yet. Which could read on BG patents of the licensing party. I still think that some clarification may be in order, or possibly updates to the Background exclusion lists. Please let me know what you think. Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Mittwoch, 3. August 2011 15:31 To: LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Heitto, Jonas (Jonas); Schweppe, Kathrin Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Luis, If I may make a comment to Jonas. Jonas - you asked a very very good question, that made me pause, and double check with our technical people that I was on the right path. We at IBM agree with Kathrin. We do not see having patent applications being created or covering the Generic Enabler SPECIFICATIONS. We do have Background and will have Sideground, patents on the Generic Enablers THEMSELVES, but not on the SPECIFICAIONS. We do not foresee the Specifications being so detailed as to being patentable - they will simply list requirements. So, as Kathrin said, since each Party has reserved the rights to license the Generic Enablers themselves, and since you so rightly pointed out the Exclusion List, we feel that we are in good shape. wow, good comment. Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Schweppe, Kathrin" , "Heitto, Jonas (Jonas)" Cc: "fiware-legal at lists.fi-ware.eu" Date: 08/03/11 11:06 AM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Jonas and all, Nothing to add to Kathrin explanation. Further, this clause was widely discussed and finally agreed long time ago. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) De: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] En nombre de Schweppe, Kathrin Enviado el: mi?rcoles, 03 de agosto de 2011 9:56 Para: Heitto, Jonas (Jonas); fabian.perpeet at zv.fraunhofer.de CC: fiware-legal at lists.fi-ware.eu Asunto: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Dear Jonas, dear all, I understand your concerns, we had similar concerns and therefore this section was included: For further sake of clarity, Parties including those Parties that assisted in generating the FI-WARE Generic Enabler Specifications may, but are not obliged to, develop implementations or reference implementations of FI-WARE Generic Enabler Specifications and request licensing terms other than open and royalty free for such, e.g. under FRAND (Fair, Reasonable and Non-Discriminatory) terms subject to the provisions of Article 4.2.3 and 4.2.4 below. The Parties may release their implementations or reference implementations as open source or closed source, at their sole discretion. Then, the Generic Enabler Specification is only a description about technical requirements and the like. Do you see that a patent could be included there? Taking all these things into account, do you think we need further clarification here and if so, can you please propose some wording? Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Dienstag, 2. August 2011 18:42 An: Schweppe, Kathrin; fabian.perpeet at zv.fraunhofer.de Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; MELZI, RAFFAELLA (RAFFAELLA); mathilde.dubesset at technicolor.com; STAMM, Markus (Markus); Wuenstel, Klaus (Klaus); nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: RE: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I?m opening a new thread lest we lose ourselves in the multitude of exchanges on various subjects. My concern relates to the 2nd paragpagh of Section 4.1: Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Would people be against adding a clarification that this generous covenant does not imply royalty free licensing of Background and Sideground patents, should any read on such implementations? Or does everybody rely on their Background and Sideground exclusions? Regards Jonas Dr. Jonas Heitto, LL.M. ALCATEL-LUCENT Corporate IP Counsel INTELLECTUAL PROPERTY & STANDARDS ( Tel +49 711 821 44561 2 Fax +49 711 821 44587 jonas.heitto at alcatel-lucent.com This e-mail message and any attachment is confidential and is intended for use only by the named addressees above. This message may contain information that is confidential, privileged, attorney work product, or exempt from disclosure under applicable law. If you are not an intended recipient, then you are prohibited from reading or copying any part of this message or opening, reading or copying any attachment. If you have received this message in error, or are not a named recipient, please immediately notify the sender by reply mail and delete this e-mail from your computer. Thank you for your cooperation. Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal From Barbara.Gromer at neclab.eu Thu Aug 4 09:45:07 2011 From: Barbara.Gromer at neclab.eu (Barbara Gromer) Date: Thu, 4 Aug 2011 07:45:07 +0000 Subject: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs In-Reply-To: References: <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF728@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF7BF@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF843@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFFE36@DEWDFECCR03.wdf.sap.corp> <400B1E0D509AB14C95FFDC1DE303B9A881E1169E83@EXCLU2K7.hi.inet> <7ED7B27AF3542948BAB7BCD179A7677C10CCE89DFE@DEWDFECCR03.wdf.sap.corp> Message-ID: <792E9553498020448922DADDFA5AD2A31CD7DB42@DAPHNIS.office.hd> Dear Jonas, Kathrin, Suzanne, Thanks for looking into this issue and the way Suzanne put it in words covers NEC's understanding and intention of the clause about the Generic Enabler Specs. Approval from NEC side on the content of Suzanne's proposal. BR/Barbara Barbara Gromer NEC Laboratories Europe Tel. +49 6221 43 42 161 Barbara.Gromer at neclab.eu Kurfuersten-Anlage 36 D-69115 Heidelberg GERMANY Registered Office: NEC House, 1 Victoria Road, London W3 6BL , registered in England 2832014 -----Original Message----- From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of Suzanne Erez Sent: Donnerstag, 4. August 2011 06:57 To: Heitto, Jonas (Jonas) Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Jonas, Ah ha, I think I understand. You are saying that while the specs themselves may not cover patentable material, the implementation once created - may have material IN ADDITION to the specification, and that may cover Background patents. So I as the implementer does not need to pay for implementing the bare specification, but if my implementation covers MORE than just the specification, and this MORE is covered by Background patents, for that we should pay. Another way to say it is that - there are many many ways to implement the specification. The specification is only the bare minimum (e.g. must have black walls). If my implementation has only black walls, there is no royalty. But if the walls are black with white stripes, and white stripes are patented, the party owning that patent should be able tor request payment. I know for IBM - we have a specific implementation of the Generic Enabler Specification. There will be many many ways to implement the specification. If someone creates their own implementation that covers the specs, and does it in a different way - more power to them. But if someone creates an implementation that copies what IBM does, and that is NOT in the spec, I should be able to ask for royalties, or request that this someone not infringe my patents. IS THIS WHAT YOU MEAN? Luis - our intention was that parties should contribute the specification royalty free, but I do not think it was our intention that if the implementation covers OTHER material that is patentable, that too must be royalty free. Below in caps is my suggestion. Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES THAT CONTRIBUTE TO THE SPECIFICATION ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY NOT COVERED BY THE FIWARE GENERIC ENABLER SPECIFICATION. (anyone know a better way to say this?) What do you all think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel:? 972-4-829-6069? Fax:? 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL, LUIS GARCIA GARCIA Cc: "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" Date: 08/03/11 07:13 PM Subject: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear Jonas, as far as I understood it, and please someone should correct me, if I am wrong, it was a mandatory prerequisite from the European Commission that the Generic Enabler Specification have to be published upon royalty-free conditions. I think, I do not understand fully your comment. If SAP implements SAP GE Specs, why should we pay ourselves? It would only make sense, if SAP pays IBM for implementation of IBM?s specs. And exactly that is what the EC would like to see with regard to the specifications. We have further protection with regard to patents, that you can check via the publication process if there are patents enclosed upon which you do not would like to see free implementations. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Mittwoch, 3. August 2011 18:00 An: Suzanne Erez; LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Schweppe, Kathrin Betreff: RE: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Susanne, all, Even if the specs themselves are not patentable, which is likely, the provision says that ?other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. The 2nd paragraph merely states that a Party may develop implementations and require royalties for their use. But the other Parties are still not paying for their own implementations. Which we don't know yet. Which could read on BG patents of the licensing party. I still think that some clarification may be in order, or possibly updates to the Background exclusion lists. Please let me know what you think. Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Mittwoch, 3. August 2011 15:31 To: LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Heitto, Jonas (Jonas); Schweppe, Kathrin Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Luis, If I may make a comment to Jonas. Jonas - you asked a very very good question, that made me pause, and double check with our technical people that I was on the right path. We at IBM agree with Kathrin. We do not see having patent applications being created or covering the Generic Enabler SPECIFICATIONS. We do have Background and will have Sideground, patents on the Generic Enablers THEMSELVES, but not on the SPECIFICAIONS. We do not foresee the Specifications being so detailed as to being patentable - they will simply list requirements. So, as Kathrin said, since each Party has reserved the rights to license the Generic Enablers themselves, and since you so rightly pointed out the Exclusion List, we feel that we are in good shape. wow, good comment. Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Schweppe, Kathrin" , "Heitto, Jonas (Jonas)" Cc: "fiware-legal at lists.fi-ware.eu" Date: 08/03/11 11:06 AM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Jonas and all, Nothing to add to Kathrin explanation. Further, this clause was widely discussed and finally agreed long time ago. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) De: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] En nombre de Schweppe, Kathrin Enviado el: mi?rcoles, 03 de agosto de 2011 9:56 Para: Heitto, Jonas (Jonas); fabian.perpeet at zv.fraunhofer.de CC: fiware-legal at lists.fi-ware.eu Asunto: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Dear Jonas, dear all, I understand your concerns, we had similar concerns and therefore this section was included: For further sake of clarity, Parties including those Parties that assisted in generating the FI-WARE Generic Enabler Specifications may, but are not obliged to, develop implementations or reference implementations of FI-WARE Generic Enabler Specifications and request licensing terms other than open and royalty free for such, e.g. under FRAND (Fair, Reasonable and Non-Discriminatory) terms subject to the provisions of Article 4.2.3 and 4.2.4 below. The Parties may release their implementations or reference implementations as open source or closed source, at their sole discretion. Then, the Generic Enabler Specification is only a description about technical requirements and the like. Do you see that a patent could be included there? Taking all these things into account, do you think we need further clarification here and if so, can you please propose some wording? Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Dienstag, 2. August 2011 18:42 An: Schweppe, Kathrin; fabian.perpeet at zv.fraunhofer.de Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; MELZI, RAFFAELLA (RAFFAELLA); mathilde.dubesset at technicolor.com; STAMM, Markus (Markus); Wuenstel, Klaus (Klaus); nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: RE: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I?m opening a new thread lest we lose ourselves in the multitude of exchanges on various subjects. My concern relates to the 2nd paragpagh of Section 4.1: Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Would people be against adding a clarification that this generous covenant does not imply royalty free licensing of Background and Sideground patents, should any read on such implementations? Or does everybody rely on their Background and Sideground exclusions? Regards Jonas Dr. Jonas Heitto, LL.M. ALCATEL-LUCENT Corporate IP Counsel INTELLECTUAL PROPERTY & STANDARDS ( Tel +49 711 821 44561 2 Fax +49 711 821 44587 jonas.heitto at alcatel-lucent.com This e-mail message and any attachment is confidential and is intended for use only by the named addressees above. This message may contain information that is confidential, privileged, attorney work product, or exempt from disclosure under applicable law. If you are not an intended recipient, then you are prohibited from reading or copying any part of this message or opening, reading or copying any attachment. If you have received this message in error, or are not a named recipient, please immediately notify the sender by reply mail and delete this e-mail from your computer. Thank you for your cooperation. Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal From irene.glueck-otte at siemens.com Thu Aug 4 10:06:04 2011 From: irene.glueck-otte at siemens.com (Glueck-Otte, Irene) Date: Thu, 4 Aug 2011 10:06:04 +0200 Subject: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs In-Reply-To: <792E9553498020448922DADDFA5AD2A31CD7DB42@DAPHNIS.office.hd> References: <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF728@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF7BF@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF843@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFFE36@DEWDFECCR03.wdf.sap.corp> <400B1E0D509AB14C95FFDC1DE303B9A881E1169E83@EXCLU2K7.hi.inet> <7ED7B27AF3542948BAB7BCD179A7677C10CCE89DFE@DEWDFECCR03.wdf.sap.corp> <792E9553498020448922DADDFA5AD2A31CD7DB42@DAPHNIS.office.hd> Message-ID: <29312CB016E934488C4DB0BA722E848D0510AF4E90@DEMCHP99E34MSX.ww902.siemens.net> Dear all, like NEC Siemens endorses the position of IBM in this issue Mit freundlichen Gr??en Irene Gl?ck-Otte Siemens AG Corporate Legal and Compliance CL CS CU CT&IP Otto-Hahn-Ring 6 81739 M?nchen, Deutschland Tel.: +49 (89) 636-33276 Fax: +49 (89) 636-50441 Mobil: +49 (1522) 2797796 mailto:irene.glueck-otte at siemens.com Siemens Aktiengesellschaft: Vorsitzender des Aufsichtsrats: Gerhard Cromme; Vorstand: Peter L?scher, Vorsitzender; Roland Busch, Brigitte Ederer, Klaus Helmrich, Joe Kaeser, Barbara Kux, Hermann Requardt, Siegfried Russwurm, Peter Y. Solmssen, Michael S??; Sitz der Gesellschaft: Berlin und M?nchen, Deutschland; Registergericht: Berlin Charlottenburg, HRB 12300, M?nchen, HRB 6684; WEEE-Reg.-Nr. DE 23691322 -----Original Message----- From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of Barbara Gromer Sent: Thursday, August 04, 2011 9:45 AM To: Suzanne Erez; Heitto, Jonas (Jonas) Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear Jonas, Kathrin, Suzanne, Thanks for looking into this issue and the way Suzanne put it in words covers NEC's understanding and intention of the clause about the Generic Enabler Specs. Approval from NEC side on the content of Suzanne's proposal. BR/Barbara Barbara Gromer NEC Laboratories Europe Tel. +49 6221 43 42 161 Barbara.Gromer at neclab.eu Kurfuersten-Anlage 36 D-69115 Heidelberg GERMANY Registered Office: NEC House, 1 Victoria Road, London W3 6BL , registered in England 2832014 -----Original Message----- From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of Suzanne Erez Sent: Donnerstag, 4. August 2011 06:57 To: Heitto, Jonas (Jonas) Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Jonas, Ah ha, I think I understand. You are saying that while the specs themselves may not cover patentable material, the implementation once created - may have material IN ADDITION to the specification, and that may cover Background patents. So I as the implementer does not need to pay for implementing the bare specification, but if my implementation covers MORE than just the specification, and this MORE is covered by Background patents, for that we should pay. Another way to say it is that - there are many many ways to implement the specification. The specification is only the bare minimum (e.g. must have black walls). If my implementation has only black walls, there is no royalty. But if the walls are black with white stripes, and white stripes are patented, the party owning that patent should be able tor request payment. I know for IBM - we have a specific implementation of the Generic Enabler Specification. There will be many many ways to implement the specification. If someone creates their own implementation that covers the specs, and does it in a different way - more power to them. But if someone creates an implementation that copies what IBM does, and that is NOT in the spec, I should be able to ask for royalties, or request that this someone not infringe my patents. IS THIS WHAT YOU MEAN? Luis - our intention was that parties should contribute the specification royalty free, but I do not think it was our intention that if the implementation covers OTHER material that is patentable, that too must be royalty free. Below in caps is my suggestion. Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES THAT CONTRIBUTE TO THE SPECIFICATION ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY NOT COVERED BY THE FIWARE GENERIC ENABLER SPECIFICATION. (anyone know a better way to say this?) What do you all think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL, LUIS GARCIA GARCIA Cc: "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" Date: 08/03/11 07:13 PM Subject: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear Jonas, as far as I understood it, and please someone should correct me, if I am wrong, it was a mandatory prerequisite from the European Commission that the Generic Enabler Specification have to be published upon royalty-free conditions. I think, I do not understand fully your comment. If SAP implements SAP GE Specs, why should we pay ourselves? It would only make sense, if SAP pays IBM for implementation of IBM's specs. And exactly that is what the EC would like to see with regard to the specifications. We have further protection with regard to patents, that you can check via the publication process if there are patents enclosed upon which you do not would like to see free implementations. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Mittwoch, 3. August 2011 18:00 An: Suzanne Erez; LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Schweppe, Kathrin Betreff: RE: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Susanne, all, Even if the specs themselves are not patentable, which is likely, the provision says that ...other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. The 2nd paragraph merely states that a Party may develop implementations and require royalties for their use. But the other Parties are still not paying for their own implementations. Which we don't know yet. Which could read on BG patents of the licensing party. I still think that some clarification may be in order, or possibly updates to the Background exclusion lists. Please let me know what you think. Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Mittwoch, 3. August 2011 15:31 To: LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Heitto, Jonas (Jonas); Schweppe, Kathrin Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Luis, If I may make a comment to Jonas. Jonas - you asked a very very good question, that made me pause, and double check with our technical people that I was on the right path. We at IBM agree with Kathrin. We do not see having patent applications being created or covering the Generic Enabler SPECIFICATIONS. We do have Background and will have Sideground, patents on the Generic Enablers THEMSELVES, but not on the SPECIFICAIONS. We do not foresee the Specifications being so detailed as to being patentable - they will simply list requirements. So, as Kathrin said, since each Party has reserved the rights to license the Generic Enablers themselves, and since you so rightly pointed out the Exclusion List, we feel that we are in good shape. wow, good comment. Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Schweppe, Kathrin" , "Heitto, Jonas (Jonas)" Cc: "fiware-legal at lists.fi-ware.eu" Date: 08/03/11 11:06 AM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Jonas and all, Nothing to add to Kathrin explanation. Further, this clause was widely discussed and finally agreed long time ago. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) De: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] En nombre de Schweppe, Kathrin Enviado el: mi?rcoles, 03 de agosto de 2011 9:56 Para: Heitto, Jonas (Jonas); fabian.perpeet at zv.fraunhofer.de CC: fiware-legal at lists.fi-ware.eu Asunto: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Dear Jonas, dear all, I understand your concerns, we had similar concerns and therefore this section was included: For further sake of clarity, Parties including those Parties that assisted in generating the FI-WARE Generic Enabler Specifications may, but are not obliged to, develop implementations or reference implementations of FI-WARE Generic Enabler Specifications and request licensing terms other than open and royalty free for such, e.g. under FRAND (Fair, Reasonable and Non-Discriminatory) terms subject to the provisions of Article 4.2.3 and 4.2.4 below. The Parties may release their implementations or reference implementations as open source or closed source, at their sole discretion. Then, the Generic Enabler Specification is only a description about technical requirements and the like. Do you see that a patent could be included there? Taking all these things into account, do you think we need further clarification here and if so, can you please propose some wording? Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Dienstag, 2. August 2011 18:42 An: Schweppe, Kathrin; fabian.perpeet at zv.fraunhofer.de Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; MELZI, RAFFAELLA (RAFFAELLA); mathilde.dubesset at technicolor.com; STAMM, Markus (Markus); Wuenstel, Klaus (Klaus); nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: RE: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I'm opening a new thread lest we lose ourselves in the multitude of exchanges on various subjects. My concern relates to the 2nd paragpagh of Section 4.1: Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Would people be against adding a clarification that this generous covenant does not imply royalty free licensing of Background and Sideground patents, should any read on such implementations? Or does everybody rely on their Background and Sideground exclusions? Regards Jonas Dr. Jonas Heitto, LL.M. ALCATEL-LUCENT Corporate IP Counsel INTELLECTUAL PROPERTY & STANDARDS ( Tel +49 711 821 44561 2 Fax +49 711 821 44587 jonas.heitto at alcatel-lucent.com This e-mail message and any attachment is confidential and is intended for use only by the named addressees above. This message may contain information that is confidential, privileged, attorney work product, or exempt from disclosure under applicable law. If you are not an intended recipient, then you are prohibited from reading or copying any part of this message or opening, reading or copying any attachment. If you have received this message in error, or are not a named recipient, please immediately notify the sender by reply mail and delete this e-mail from your computer. Thank you for your cooperation. Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal From jonas.heitto at alcatel-lucent.com Thu Aug 4 10:55:41 2011 From: jonas.heitto at alcatel-lucent.com (Heitto, Jonas (Jonas)) Date: Thu, 4 Aug 2011 10:55:41 +0200 Subject: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs In-Reply-To: References: <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF728@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF7BF@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF843@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFFE36@DEWDFECCR03.wdf.sap.corp> <400B1E0D509AB14C95FFDC1DE303B9A881E1169E83@EXCLU2K7.hi.inet> <7ED7B27AF3542948BAB7BCD179A7677C10CCE89DFE@DEWDFECCR03.wdf.sap.corp> Message-ID: Susanne, While I would prefer to re-write the entire section, I understand the complications this would cause. Therefore I think your suggestion of a disclaimer is a good solution. I would just slightly reword as follows, added words underlined. I think the expression "covered" was not helping since all implementations would be covered by the spec. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY (INCLUDING PATENTABLE INVENTIONS) NOT DISCLOSED BY THE FIWARE GENERIC ENABLER SPECIFICATION. I hope that the parties seconding Suzanne's original disclaimer can also find this here satisfacory. I am still looking for the Commission's RF licensing requirement. GA Annex 1 mentioned GE Specs twice (p. 30 and p. 240) but no mention of royalty free, only "Open Specifications". Regards Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Donnerstag, 4. August 2011 06:57 To: Heitto, Jonas (Jonas) Cc: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Jonas, Ah ha, I think I understand. You are saying that while the specs themselves may not cover patentable material, the implementation once created - may have material IN ADDITION to the specification, and that may cover Background patents. So I as the implementer does not need to pay for implementing the bare specification, but if my implementation covers MORE than just the specification, and this MORE is covered by Background patents, for that we should pay. Another way to say it is that - there are many many ways to implement the specification. The specification is only the bare minimum (e.g. must have black walls). If my implementation has only black walls, there is no royalty. But if the walls are black with white stripes, and white stripes are patented, the party owning that patent should be able tor request payment. I know for IBM - we have a specific implementation of the Generic Enabler Specification. There will be many many ways to implement the specification. If someone creates their own implementation that covers the specs, and does it in a different way - more power to them. But if someone creates an implementation that copies what IBM does, and that is NOT in the spec, I should be able to ask for royalties, or request that this someone not infringe my patents. IS THIS WHAT YOU MEAN? Luis - our intention was that parties should contribute the specification royalty free, but I do not think it was our intention that if the implementation covers OTHER material that is patentable, that too must be royalty free. Below in caps is my suggestion. Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES THAT CONTRIBUTE TO THE SPECIFICATION ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY NOT COVERED BY THE FIWARE GENERIC ENABLER SPECIFICATION. (anyone know a better way to say this?) What do you all think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL, LUIS GARCIA GARCIA Cc: "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" Date: 08/03/11 07:13 PM Subject: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear Jonas, as far as I understood it, and please someone should correct me, if I am wrong, it was a mandatory prerequisite from the European Commission that the Generic Enabler Specification have to be published upon royalty-free conditions. I think, I do not understand fully your comment. If SAP implements SAP GE Specs, why should we pay ourselves? It would only make sense, if SAP pays IBM for implementation of IBM's specs. And exactly that is what the EC would like to see with regard to the specifications. We have further protection with regard to patents, that you can check via the publication process if there are patents enclosed upon which you do not would like to see free implementations. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Mittwoch, 3. August 2011 18:00 An: Suzanne Erez; LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Schweppe, Kathrin Betreff: RE: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Susanne, all, Even if the specs themselves are not patentable, which is likely, the provision says that ...other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. The 2nd paragraph merely states that a Party may develop implementations and require royalties for their use. But the other Parties are still not paying for their own implementations. Which we don't know yet. Which could read on BG patents of the licensing party. I still think that some clarification may be in order, or possibly updates to the Background exclusion lists. Please let me know what you think. Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Mittwoch, 3. August 2011 15:31 To: LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Heitto, Jonas (Jonas); Schweppe, Kathrin Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Luis, If I may make a comment to Jonas. Jonas - you asked a very very good question, that made me pause, and double check with our technical people that I was on the right path. We at IBM agree with Kathrin. We do not see having patent applications being created or covering the Generic Enabler SPECIFICATIONS. We do have Background and will have Sideground, patents on the Generic Enablers THEMSELVES, but not on the SPECIFICAIONS. We do not foresee the Specifications being so detailed as to being patentable - they will simply list requirements. So, as Kathrin said, since each Party has reserved the rights to license the Generic Enablers themselves, and since you so rightly pointed out the Exclusion List, we feel that we are in good shape. wow, good comment. Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Schweppe, Kathrin" , "Heitto, Jonas (Jonas)" Cc: "fiware-legal at lists.fi-ware.eu" Date: 08/03/11 11:06 AM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Jonas and all, Nothing to add to Kathrin explanation. Further, this clause was widely discussed and finally agreed long time ago. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) De: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] En nombre de Schweppe, Kathrin Enviado el: mi?rcoles, 03 de agosto de 2011 9:56 Para: Heitto, Jonas (Jonas); fabian.perpeet at zv.fraunhofer.de CC: fiware-legal at lists.fi-ware.eu Asunto: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Dear Jonas, dear all, I understand your concerns, we had similar concerns and therefore this section was included: For further sake of clarity, Parties including those Parties that assisted in generating the FI-WARE Generic Enabler Specifications may, but are not obliged to, develop implementations or reference implementations of FI-WARE Generic Enabler Specifications and request licensing terms other than open and royalty free for such, e.g. under FRAND (Fair, Reasonable and Non-Discriminatory) terms subject to the provisions of Article 4.2.3 and 4.2.4 below. The Parties may release their implementations or reference implementations as open source or closed source, at their sole discretion. Then, the Generic Enabler Specification is only a description about technical requirements and the like. Do you see that a patent could be included there? Taking all these things into account, do you think we need further clarification here and if so, can you please propose some wording? Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Dienstag, 2. August 2011 18:42 An: Schweppe, Kathrin; fabian.perpeet at zv.fraunhofer.de Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; MELZI, RAFFAELLA (RAFFAELLA); mathilde.dubesset at technicolor.com; STAMM, Markus (Markus); Wuenstel, Klaus (Klaus); nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: RE: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I'm opening a new thread lest we lose ourselves in the multitude of exchanges on various subjects. My concern relates to the 2nd paragpagh of Section 4.1: Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Would people be against adding a clarification that this generous covenant does not imply royalty free licensing of Background and Sideground patents, should any read on such implementations? Or does everybody rely on their Background and Sideground exclusions? Regards Jonas Dr. Jonas Heitto, LL.M. ALCATEL-LUCENT Corporate IP Counsel INTELLECTUAL PROPERTY & STANDARDS ( Tel +49 711 821 44561 2 Fax +49 711 821 44587 jonas.heitto at alcatel-lucent.com This e-mail message and any attachment is confidential and is intended for use only by the named addressees above. This message may contain information that is confidential, privileged, attorney work product, or exempt from disclosure under applicable law. If you are not an intended recipient, then you are prohibited from reading or copying any part of this message or opening, reading or copying any attachment. If you have received this message in error, or are not a named recipient, please immediately notify the sender by reply mail and delete this e-mail from your computer. Thank you for your cooperation. Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal -------------- next part -------------- An HTML attachment was scrubbed... URL: From kathrin.schweppe at sap.com Thu Aug 4 11:04:06 2011 From: kathrin.schweppe at sap.com (Schweppe, Kathrin) Date: Thu, 4 Aug 2011 11:04:06 +0200 Subject: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs In-Reply-To: References: <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF728@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF7BF@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF843@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFFE36@DEWDFECCR03.wdf.sap.corp> <400B1E0D509AB14C95FFDC1DE303B9A881E1169E83@EXCLU2K7.hi.inet> <7ED7B27AF3542948BAB7BCD179A7677C10CCE89DFE@DEWDFECCR03.wdf.sap.corp> Message-ID: <7ED7B27AF3542948BAB7BCD179A7677C10CCE8A4E6@DEWDFECCR03.wdf.sap.corp> Dear Jonas, thank you very much. I like your changes and a can agree to them as well. Best regards, Kathrin Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Donnerstag, 4. August 2011 10:56 An: Suzanne Erez Cc: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Betreff: RE: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Susanne, While I would prefer to re-write the entire section, I understand the complications this would cause. Therefore I think your suggestion of a disclaimer is a good solution. I would just slightly reword as follows, added words underlined. I think the expression "covered" was not helping since all implementations would be covered by the spec. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY (INCLUDING PATENTABLE INVENTIONS) NOT DISCLOSED BY THE FIWARE GENERIC ENABLER SPECIFICATION. I hope that the parties seconding Suzanne's original disclaimer can also find this here satisfacory. I am still looking for the Commission's RF licensing requirement. GA Annex 1 mentioned GE Specs twice (p. 30 and p. 240) but no mention of royalty free, only "Open Specifications". Regards Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Donnerstag, 4. August 2011 06:57 To: Heitto, Jonas (Jonas) Cc: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Jonas, Ah ha, I think I understand. You are saying that while the specs themselves may not cover patentable material, the implementation once created - may have material IN ADDITION to the specification, and that may cover Background patents. So I as the implementer does not need to pay for implementing the bare specification, but if my implementation covers MORE than just the specification, and this MORE is covered by Background patents, for that we should pay. Another way to say it is that - there are many many ways to implement the specification. The specification is only the bare minimum (e.g. must have black walls). If my implementation has only black walls, there is no royalty. But if the walls are black with white stripes, and white stripes are patented, the party owning that patent should be able tor request payment. I know for IBM - we have a specific implementation of the Generic Enabler Specification. There will be many many ways to implement the specification. If someone creates their own implementation that covers the specs, and does it in a different way - more power to them. But if someone creates an implementation that copies what IBM does, and that is NOT in the spec, I should be able to ask for royalties, or request that this someone not infringe my patents. IS THIS WHAT YOU MEAN? Luis - our intention was that parties should contribute the specification royalty free, but I do not think it was our intention that if the implementation covers OTHER material that is patentable, that too must be royalty free. Below in caps is my suggestion. Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES THAT CONTRIBUTE TO THE SPECIFICATION ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY NOT COVERED BY THE FIWARE GENERIC ENABLER SPECIFICATION. (anyone know a better way to say this?) What do you all think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL, LUIS GARCIA GARCIA Cc: "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" Date: 08/03/11 07:13 PM Subject: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear Jonas, as far as I understood it, and please someone should correct me, if I am wrong, it was a mandatory prerequisite from the European Commission that the Generic Enabler Specification have to be published upon royalty-free conditions. I think, I do not understand fully your comment. If SAP implements SAP GE Specs, why should we pay ourselves? It would only make sense, if SAP pays IBM for implementation of IBM's specs. And exactly that is what the EC would like to see with regard to the specifications. We have further protection with regard to patents, that you can check via the publication process if there are patents enclosed upon which you do not would like to see free implementations. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Mittwoch, 3. August 2011 18:00 An: Suzanne Erez; LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Schweppe, Kathrin Betreff: RE: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Susanne, all, Even if the specs themselves are not patentable, which is likely, the provision says that ...other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. The 2nd paragraph merely states that a Party may develop implementations and require royalties for their use. But the other Parties are still not paying for their own implementations. Which we don't know yet. Which could read on BG patents of the licensing party. I still think that some clarification may be in order, or possibly updates to the Background exclusion lists. Please let me know what you think. Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Mittwoch, 3. August 2011 15:31 To: LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Heitto, Jonas (Jonas); Schweppe, Kathrin Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Luis, If I may make a comment to Jonas. Jonas - you asked a very very good question, that made me pause, and double check with our technical people that I was on the right path. We at IBM agree with Kathrin. We do not see having patent applications being created or covering the Generic Enabler SPECIFICATIONS. We do have Background and will have Sideground, patents on the Generic Enablers THEMSELVES, but not on the SPECIFICAIONS. We do not foresee the Specifications being so detailed as to being patentable - they will simply list requirements. So, as Kathrin said, since each Party has reserved the rights to license the Generic Enablers themselves, and since you so rightly pointed out the Exclusion List, we feel that we are in good shape. wow, good comment. Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Schweppe, Kathrin" , "Heitto, Jonas (Jonas)" Cc: "fiware-legal at lists.fi-ware.eu" Date: 08/03/11 11:06 AM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Jonas and all, Nothing to add to Kathrin explanation. Further, this clause was widely discussed and finally agreed long time ago. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) De: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] En nombre de Schweppe, Kathrin Enviado el: mi?rcoles, 03 de agosto de 2011 9:56 Para: Heitto, Jonas (Jonas); fabian.perpeet at zv.fraunhofer.de CC: fiware-legal at lists.fi-ware.eu Asunto: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Dear Jonas, dear all, I understand your concerns, we had similar concerns and therefore this section was included: For further sake of clarity, Parties including those Parties that assisted in generating the FI-WARE Generic Enabler Specifications may, but are not obliged to, develop implementations or reference implementations of FI-WARE Generic Enabler Specifications and request licensing terms other than open and royalty free for such, e.g. under FRAND (Fair, Reasonable and Non-Discriminatory) terms subject to the provisions of Article 4.2.3 and 4.2.4 below. The Parties may release their implementations or reference implementations as open source or closed source, at their sole discretion. Then, the Generic Enabler Specification is only a description about technical requirements and the like. Do you see that a patent could be included there? Taking all these things into account, do you think we need further clarification here and if so, can you please propose some wording? Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Dienstag, 2. August 2011 18:42 An: Schweppe, Kathrin; fabian.perpeet at zv.fraunhofer.de Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; MELZI, RAFFAELLA (RAFFAELLA); mathilde.dubesset at technicolor.com; STAMM, Markus (Markus); Wuenstel, Klaus (Klaus); nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: RE: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I'm opening a new thread lest we lose ourselves in the multitude of exchanges on various subjects. My concern relates to the 2nd paragpagh of Section 4.1: Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Would people be against adding a clarification that this generous covenant does not imply royalty free licensing of Background and Sideground patents, should any read on such implementations? Or does everybody rely on their Background and Sideground exclusions? Regards Jonas Dr. Jonas Heitto, LL.M. ALCATEL-LUCENT Corporate IP Counsel INTELLECTUAL PROPERTY & STANDARDS ( Tel +49 711 821 44561 2 Fax +49 711 821 44587 jonas.heitto at alcatel-lucent.com This e-mail message and any attachment is confidential and is intended for use only by the named addressees above. This message may contain information that is confidential, privileged, attorney work product, or exempt from disclosure under applicable law. If you are not an intended recipient, then you are prohibited from reading or copying any part of this message or opening, reading or copying any attachment. If you have received this message in error, or are not a named recipient, please immediately notify the sender by reply mail and delete this e-mail from your computer. Thank you for your cooperation. Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal -------------- next part -------------- An HTML attachment was scrubbed... URL: From Barbara.Gromer at neclab.eu Thu Aug 4 11:11:34 2011 From: Barbara.Gromer at neclab.eu (Barbara Gromer) Date: Thu, 4 Aug 2011 09:11:34 +0000 Subject: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs In-Reply-To: <7ED7B27AF3542948BAB7BCD179A7677C10CCE8A4E6@DEWDFECCR03.wdf.sap.corp> References: <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF728@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF7BF@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF843@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFFE36@DEWDFECCR03.wdf.sap.corp> <400B1E0D509AB14C95FFDC1DE303B9A881E1169E83@EXCLU2K7.hi.inet> <7ED7B27AF3542948BAB7BCD179A7677C10CCE89DFE@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCE8A4E6@DEWDFECCR03.wdf.sap.corp> Message-ID: <792E9553498020448922DADDFA5AD2A31CD7DC7D@DAPHNIS.office.hd> NEC endorses the wording proposed by Jonas/ALU. BR/Barbara Barbara Gromer NEC Laboratories Europe Tel. +49 6221 43 42 161 Barbara.Gromer at neclab.eu Kurfuersten-Anlage 36 D-69115 Heidelberg GERMANY Registered Office: NEC House, 1 Victoria Road, London W3 6BL , registered in England 2832014 From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of Schweppe, Kathrin Sent: Donnerstag, 4. August 2011 11:04 To: Heitto, Jonas (Jonas); Suzanne Erez Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear Jonas, thank you very much. I like your changes and a can agree to them as well. Best regards, Kathrin Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Donnerstag, 4. August 2011 10:56 An: Suzanne Erez Cc: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Betreff: RE: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Susanne, While I would prefer to re-write the entire section, I understand the complications this would cause. Therefore I think your suggestion of a disclaimer is a good solution. I would just slightly reword as follows, added words underlined. I think the expression "covered" was not helping since all implementations would be covered by the spec. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY (INCLUDING PATENTABLE INVENTIONS) NOT DISCLOSED BY THE FIWARE GENERIC ENABLER SPECIFICATION. I hope that the parties seconding Suzanne's original disclaimer can also find this here satisfacory. I am still looking for the Commission's RF licensing requirement. GA Annex 1 mentioned GE Specs twice (p. 30 and p. 240) but no mention of royalty free, only "Open Specifications". Regards Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Donnerstag, 4. August 2011 06:57 To: Heitto, Jonas (Jonas) Cc: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Jonas, Ah ha, I think I understand. You are saying that while the specs themselves may not cover patentable material, the implementation once created - may have material IN ADDITION to the specification, and that may cover Background patents. So I as the implementer does not need to pay for implementing the bare specification, but if my implementation covers MORE than just the specification, and this MORE is covered by Background patents, for that we should pay. Another way to say it is that - there are many many ways to implement the specification. The specification is only the bare minimum (e.g. must have black walls). If my implementation has only black walls, there is no royalty. But if the walls are black with white stripes, and white stripes are patented, the party owning that patent should be able tor request payment. I know for IBM - we have a specific implementation of the Generic Enabler Specification. There will be many many ways to implement the specification. If someone creates their own implementation that covers the specs, and does it in a different way - more power to them. But if someone creates an implementation that copies what IBM does, and that is NOT in the spec, I should be able to ask for royalties, or request that this someone not infringe my patents. IS THIS WHAT YOU MEAN? Luis - our intention was that parties should contribute the specification royalty free, but I do not think it was our intention that if the implementation covers OTHER material that is patentable, that too must be royalty free. Below in caps is my suggestion. Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES THAT CONTRIBUTE TO THE SPECIFICATION ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY NOT COVERED BY THE FIWARE GENERIC ENABLER SPECIFICATION. (anyone know a better way to say this?) What do you all think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" > To: "Heitto, Jonas (Jonas)" >, Suzanne Erez/Haifa/IBM at IBMIL, LUIS GARCIA GARCIA > Cc: "fiware-legal at lists.fi-ware.eu" >, "fiware-legal-bounces at lists.fi-ware.eu" > Date: 08/03/11 07:13 PM Subject: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear Jonas, as far as I understood it, and please someone should correct me, if I am wrong, it was a mandatory prerequisite from the European Commission that the Generic Enabler Specification have to be published upon royalty-free conditions. I think, I do not understand fully your comment. If SAP implements SAP GE Specs, why should we pay ourselves? It would only make sense, if SAP pays IBM for implementation of IBM's specs. And exactly that is what the EC would like to see with regard to the specifications. We have further protection with regard to patents, that you can check via the publication process if there are patents enclosed upon which you do not would like to see free implementations. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Mittwoch, 3. August 2011 18:00 An: Suzanne Erez; LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Schweppe, Kathrin Betreff: RE: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Susanne, all, Even if the specs themselves are not patentable, which is likely, the provision says that ...other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. The 2nd paragraph merely states that a Party may develop implementations and require royalties for their use. But the other Parties are still not paying for their own implementations. Which we don't know yet. Which could read on BG patents of the licensing party. I still think that some clarification may be in order, or possibly updates to the Background exclusion lists. Please let me know what you think. Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Mittwoch, 3. August 2011 15:31 To: LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Heitto, Jonas (Jonas); Schweppe, Kathrin Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Luis, If I may make a comment to Jonas. Jonas - you asked a very very good question, that made me pause, and double check with our technical people that I was on the right path. We at IBM agree with Kathrin. We do not see having patent applications being created or covering the Generic Enabler SPECIFICATIONS. We do have Background and will have Sideground, patents on the Generic Enablers THEMSELVES, but not on the SPECIFICAIONS. We do not foresee the Specifications being so detailed as to being patentable - they will simply list requirements. So, as Kathrin said, since each Party has reserved the rights to license the Generic Enablers themselves, and since you so rightly pointed out the Exclusion List, we feel that we are in good shape. wow, good comment. Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA > To: "Schweppe, Kathrin" >, "Heitto, Jonas (Jonas)" > Cc: "fiware-legal at lists.fi-ware.eu" > Date: 08/03/11 11:06 AM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Jonas and all, Nothing to add to Kathrin explanation. Further, this clause was widely discussed and finally agreed long time ago. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) De: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] En nombre de Schweppe, Kathrin Enviado el: mi?rcoles, 03 de agosto de 2011 9:56 Para: Heitto, Jonas (Jonas); fabian.perpeet at zv.fraunhofer.de CC: fiware-legal at lists.fi-ware.eu Asunto: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Dear Jonas, dear all, I understand your concerns, we had similar concerns and therefore this section was included: For further sake of clarity, Parties including those Parties that assisted in generating the FI-WARE Generic Enabler Specifications may, but are not obliged to, develop implementations or reference implementations of FI-WARE Generic Enabler Specifications and request licensing terms other than open and royalty free for such, e.g. under FRAND (Fair, Reasonable and Non-Discriminatory) terms subject to the provisions of Article 4.2.3 and 4.2.4 below. The Parties may release their implementations or reference implementations as open source or closed source, at their sole discretion. Then, the Generic Enabler Specification is only a description about technical requirements and the like. Do you see that a patent could be included there? Taking all these things into account, do you think we need further clarification here and if so, can you please propose some wording? Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Dienstag, 2. August 2011 18:42 An: Schweppe, Kathrin; fabian.perpeet at zv.fraunhofer.de Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; MELZI, RAFFAELLA (RAFFAELLA); mathilde.dubesset at technicolor.com; STAMM, Markus (Markus); Wuenstel, Klaus (Klaus); nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: RE: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I'm opening a new thread lest we lose ourselves in the multitude of exchanges on various subjects. My concern relates to the 2nd paragpagh of Section 4.1: Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Would people be against adding a clarification that this generous covenant does not imply royalty free licensing of Background and Sideground patents, should any read on such implementations? Or does everybody rely on their Background and Sideground exclusions? Regards Jonas Dr. Jonas Heitto, LL.M. ALCATEL-LUCENT Corporate IP Counsel INTELLECTUAL PROPERTY & STANDARDS ( Tel +49 711 821 44561 2 Fax +49 711 821 44587 jonas.heitto at alcatel-lucent.com This e-mail message and any attachment is confidential and is intended for use only by the named addressees above. This message may contain information that is confidential, privileged, attorney work product, or exempt from disclosure under applicable law. If you are not an intended recipient, then you are prohibited from reading or copying any part of this message or opening, reading or copying any attachment. If you have received this message in error, or are not a named recipient, please immediately notify the sender by reply mail and delete this e-mail from your computer. Thank you for your cooperation. Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal -------------- next part -------------- An HTML attachment was scrubbed... URL: From SUZANNE at il.ibm.com Thu Aug 4 11:23:54 2011 From: SUZANNE at il.ibm.com (Suzanne Erez) Date: Thu, 4 Aug 2011 12:23:54 +0300 Subject: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs In-Reply-To: <792E9553498020448922DADDFA5AD2A31CD7DC7D@DAPHNIS.office.hd> References: <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF7BF@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF843@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFFE36@DEWDFECCR03.wdf.sap.corp> <400B1E0D509AB14C95FFDC1DE303B9A881E1169E83@EXCLU2K7.hi.inet> <7ED7B27AF3542948BAB7BCD179A7677C10CCE89DFE@DEWDFECCR03.wdf.sap.corp> <792E9553498020448922DADDFA5AD2A31CD7DC7D@DAPHNIS.office.hd> Message-ID: Jonas, THANK YOU. "Disclosed" is so much better than "covered". You are right. IBM agrees too. But I am adding "but not limited to" (so it say (INCLUDING but not limited to PATENTABLE INVENTIONS)) HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY (INCLUDING but not limited to PATENTABLE INVENTIONS) NOT DISCLOSED BY THE FIWARE GENERIC ENABLER SPECIFICATION. THANK YOU. Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel:? 972-4-829-6069? Fax:? 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: Barbara Gromer To: "Schweppe, Kathrin" , "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL Cc: "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" Date: 08/04/11 12:12 PM Subject: RE: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs NEC endorses the wording proposed by Jonas/ALU. BR/Barbara Barbara Gromer NEC Laboratories Europe Tel. +49 6221 43 42 161 Barbara.Gromer at neclab.eu Kurfuersten-Anlage 36 D-69115 Heidelberg GERMANY Registered Office: NEC House, 1 Victoria Road, London W3 6BL , registered in England 2832014 From: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of Schweppe, Kathrin Sent: Donnerstag, 4. August 2011 11:04 To: Heitto, Jonas (Jonas); Suzanne Erez Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear Jonas, thank you very much. I like your changes and a can agree to them as well. Best regards, Kathrin Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Donnerstag, 4. August 2011 10:56 An: Suzanne Erez Cc: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Betreff: RE: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Susanne, While I would prefer to re-write the entire section, I understand the complications this would cause. Therefore I think your suggestion of a disclaimer is a good solution. I would just slightly reword as follows, added words underlined. I think the expression "covered" was not helping since all implementations would be covered by the spec. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY (INCLUDING PATENTABLE INVENTIONS) NOT DISCLOSED BY THE FIWARE GENERIC ENABLER SPECIFICATION. I hope that the parties seconding Suzanne's original disclaimer can also find this here satisfacory. I am still looking for the Commission's RF licensing requirement. GA Annex 1 mentioned GE Specs twice (p. 30 and p. 240) but no mention of royalty free, only "Open Specifications". Regards Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Donnerstag, 4. August 2011 06:57 To: Heitto, Jonas (Jonas) Cc: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Jonas, Ah ha, I think I understand. You are saying that while the specs themselves may not cover patentable material, the implementation once created - may have material IN ADDITION to the specification, and that may cover Background patents. So I as the implementer does not need to pay for implementing the bare specification, but if my implementation covers MORE than just the specification, and this MORE is covered by Background patents, for that we should pay. Another way to say it is that - there are many many ways to implement the specification. The specification is only the bare minimum (e.g. must have black walls). If my implementation has only black walls, there is no royalty. But if the walls are black with white stripes, and white stripes are patented, the party owning that patent should be able tor request payment. I know for IBM - we have a specific implementation of the Generic Enabler Specification. There will be many many ways to implement the specification. If someone creates their own implementation that covers the specs, and does it in a different way - more power to them. But if someone creates an implementation that copies what IBM does, and that is NOT in the spec, I should be able to ask for royalties, or request that this someone not infringe my patents. IS THIS WHAT YOU MEAN? Luis - our intention was that parties should contribute the specification royalty free, but I do not think it was our intention that if the implementation covers OTHER material that is patentable, that too must be royalty free. Below in caps is my suggestion. Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES THAT CONTRIBUTE TO THE SPECIFICATION ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY NOT COVERED BY THE FIWARE GENERIC ENABLER SPECIFICATION. (anyone know a better way to say this?) What do you all think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL, LUIS GARCIA GARCIA Cc: "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" Date: 08/03/11 07:13 PM Subject: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear Jonas, as far as I understood it, and please someone should correct me, if I am wrong, it was a mandatory prerequisite from the European Commission that the Generic Enabler Specification have to be published upon royalty-free conditions. I think, I do not understand fully your comment. If SAP implements SAP GE Specs, why should we pay ourselves? It would only make sense, if SAP pays IBM for implementation of IBM?s specs. And exactly that is what the EC would like to see with regard to the specifications. We have further protection with regard to patents, that you can check via the publication process if there are patents enclosed upon which you do not would like to see free implementations. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Mittwoch, 3. August 2011 18:00 An: Suzanne Erez; LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Schweppe, Kathrin Betreff: RE: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Susanne, all, Even if the specs themselves are not patentable, which is likely, the provision says that ?other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. The 2nd paragraph merely states that a Party may develop implementations and require royalties for their use. But the other Parties are still not paying for their own implementations. Which we don't know yet. Which could read on BG patents of the licensing party. I still think that some clarification may be in order, or possibly updates to the Background exclusion lists. Please let me know what you think. Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Mittwoch, 3. August 2011 15:31 To: LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Heitto, Jonas (Jonas); Schweppe, Kathrin Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Luis, If I may make a comment to Jonas. Jonas - you asked a very very good question, that made me pause, and double check with our technical people that I was on the right path. We at IBM agree with Kathrin. We do not see having patent applications being created or covering the Generic Enabler SPECIFICATIONS. We do have Background and will have Sideground, patents on the Generic Enablers THEMSELVES, but not on the SPECIFICAIONS. We do not foresee the Specifications being so detailed as to being patentable - they will simply list requirements. So, as Kathrin said, since each Party has reserved the rights to license the Generic Enablers themselves, and since you so rightly pointed out the Exclusion List, we feel that we are in good shape. wow, good comment. Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Schweppe, Kathrin" , "Heitto, Jonas (Jonas)" Cc: "fiware-legal at lists.fi-ware.eu" Date: 08/03/11 11:06 AM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Jonas and all, Nothing to add to Kathrin explanation. Further, this clause was widely discussed and finally agreed long time ago. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) De: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] En nombre de Schweppe, Kathrin Enviado el: mi?rcoles, 03 de agosto de 2011 9:56 Para: Heitto, Jonas (Jonas); fabian.perpeet at zv.fraunhofer.de CC: fiware-legal at lists.fi-ware.eu Asunto: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Dear Jonas, dear all, I understand your concerns, we had similar concerns and therefore this section was included: For further sake of clarity, Parties including those Parties that assisted in generating the FI-WARE Generic Enabler Specifications may, but are not obliged to, develop implementations or reference implementations of FI-WARE Generic Enabler Specifications and request licensing terms other than open and royalty free for such, e.g. under FRAND (Fair, Reasonable and Non-Discriminatory) terms subject to the provisions of Article 4.2.3 and 4.2.4 below. The Parties may release their implementations or reference implementations as open source or closed source, at their sole discretion. Then, the Generic Enabler Specification is only a description about technical requirements and the like. Do you see that a patent could be included there? Taking all these things into account, do you think we need further clarification here and if so, can you please propose some wording? Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Dienstag, 2. August 2011 18:42 An: Schweppe, Kathrin; fabian.perpeet at zv.fraunhofer.de Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; MELZI, RAFFAELLA (RAFFAELLA); mathilde.dubesset at technicolor.com; STAMM, Markus (Markus); Wuenstel, Klaus (Klaus); nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: RE: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I?m opening a new thread lest we lose ourselves in the multitude of exchanges on various subjects. My concern relates to the 2nd paragpagh of Section 4.1: Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Would people be against adding a clarification that this generous covenant does not imply royalty free licensing of Background and Sideground patents, should any read on such implementations? Or does everybody rely on their Background and Sideground exclusions? Regards Jonas Dr. Jonas Heitto, LL.M. ALCATEL-LUCENT Corporate IP Counsel INTELLECTUAL PROPERTY & STANDARDS ( Tel +49 711 821 44561 2 Fax +49 711 821 44587 jonas.heitto at alcatel-lucent.com This e-mail message and any attachment is confidential and is intended for use only by the named addressees above. This message may contain information that is confidential, privileged, attorney work product, or exempt from disclosure under applicable law. If you are not an intended recipient, then you are prohibited from reading or copying any part of this message or opening, reading or copying any attachment. If you have received this message in error, or are not a named recipient, please immediately notify the sender by reply mail and delete this e-mail from your computer. Thank you for your cooperation. Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal From lgg at tid.es Thu Aug 4 12:06:44 2011 From: lgg at tid.es (LUIS GARCIA GARCIA) Date: Thu, 04 Aug 2011 12:06:44 +0200 Subject: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs In-Reply-To: References: <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF728@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF7BF@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF843@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFFE36@DEWDFECCR03.wdf.sap.corp> <400B1E0D509AB14C95FFDC1DE303B9A881E1169E83@EXCLU2K7.hi.inet> <7ED7B27AF3542948BAB7BCD179A7677C10CCE89DFE@DEWDFECCR03.wdf.sap.corp> Message-ID: <400B1E0D509AB14C95FFDC1DE303B9A881E1169F2B@EXCLU2K7.hi.inet> Dear all, Although I understand your concerns, I think that the clarification is not necessary. Obviously if someone implements a GES using other?s proprietary BG; the owner of that BG may request royalties. What I mean is that, from our perspective, the question is out of the scope of this agreement. Remember that you?re talking about licenses that are not "needed" (if they would become "needed" the CA establishes the applicable terms) so, if they are not needed, they will be granted only if both parties mutually and freely agree in the applicable terms. Nobody can freely use other?s partners proprietary technology (patentable or not) without that partner?s prior consent. This is obvious. Apart from this argument, don't forget the following: a) This clause was widely negotiated and discussed in a huge number of mails (I have 1100 mails in my FIWARE folder, a good number of them referred to this clause) and conversations. It was not discussed during the last week?s audios as it was considered as agreed. b) We must be consequent. From our perspective it is not a deal-breaker point as it refers to an obvious situation. If we open again the CA to new discussions regarding clauses that are already agreed and closed, this CA will never reach an end. c) Further, I?ve received clear, firm and irrevocable instructions, to avoid any new modification that it?s not a typo. It?s time to start with the signature process; we just cannot afford the time for further discussions . Sorry if my words sound too strong . It?s not my intention to upset anybody. All of you know that we?ve tried to get, as far as possible, a balanced agreement and I think that we get a very very good agreement, but we cannot turn it into the "neverending" agreement. We kindly invite you to accept the clause as it is now and to move forward in the project. I also kindly ask the partners that still have not sent their contact/signing details to send them to me ASAP. During next week, we?ll send the clean version with the signature details. Best regards Luis De: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Enviado el: jueves, 04 de agosto de 2011 10:56 Para: Suzanne Erez CC: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Asunto: RE: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Susanne, While I would prefer to re-write the entire section, I understand the complications this would cause. Therefore I think your suggestion of a disclaimer is a good solution. I would just slightly reword as follows, added words underlined. I think the expression "covered" was not helping since all implementations would be covered by the spec. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY (INCLUDING PATENTABLE INVENTIONS) NOT DISCLOSED BY THE FIWARE GENERIC ENABLER SPECIFICATION. I hope that the parties seconding Suzanne's original disclaimer can also find this here satisfacory. I am still looking for the Commission's RF licensing requirement. GA Annex 1 mentioned GE Specs twice (p. 30 and p. 240) but no mention of royalty free, only "Open Specifications". Regards Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Donnerstag, 4. August 2011 06:57 To: Heitto, Jonas (Jonas) Cc: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Jonas, Ah ha, I think I understand. You are saying that while the specs themselves may not cover patentable material, the implementation once created - may have material IN ADDITION to the specification, and that may cover Background patents. So I as the implementer does not need to pay for implementing the bare specification, but if my implementation covers MORE than just the specification, and this MORE is covered by Background patents, for that we should pay. Another way to say it is that - there are many many ways to implement the specification. The specification is only the bare minimum (e.g. must have black walls). If my implementation has only black walls, there is no royalty. But if the walls are black with white stripes, and white stripes are patented, the party owning that patent should be able tor request payment. I know for IBM - we have a specific implementation of the Generic Enabler Specification. There will be many many ways to implement the specification. If someone creates their own implementation that covers the specs, and does it in a different way - more power to them. But if someone creates an implementation that copies what IBM does, and that is NOT in the spec, I should be able to ask for royalties, or request that this someone not infringe my patents. IS THIS WHAT YOU MEAN? Luis - our intention was that parties should contribute the specification royalty free, but I do not think it was our intention that if the implementation covers OTHER material that is patentable, that too must be royalty free. Below in caps is my suggestion. Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES THAT CONTRIBUTE TO THE SPECIFICATION ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY NOT COVERED BY THE FIWARE GENERIC ENABLER SPECIFICATION. (anyone know a better way to say this?) What do you all think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL, LUIS GARCIA GARCIA Cc: "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" Date: 08/03/11 07:13 PM Subject: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear Jonas, as far as I understood it, and please someone should correct me, if I am wrong, it was a mandatory prerequisite from the European Commission that the Generic Enabler Specification have to be published upon royalty-free conditions. I think, I do not understand fully your comment. If SAP implements SAP GE Specs, why should we pay ourselves? It would only make sense, if SAP pays IBM for implementation of IBM's specs. And exactly that is what the EC would like to see with regard to the specifications. We have further protection with regard to patents, that you can check via the publication process if there are patents enclosed upon which you do not would like to see free implementations. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Mittwoch, 3. August 2011 18:00 An: Suzanne Erez; LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Schweppe, Kathrin Betreff: RE: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Susanne, all, Even if the specs themselves are not patentable, which is likely, the provision says that ...other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. The 2nd paragraph merely states that a Party may develop implementations and require royalties for their use. But the other Parties are still not paying for their own implementations. Which we don't know yet. Which could read on BG patents of the licensing party. I still think that some clarification may be in order, or possibly updates to the Background exclusion lists. Please let me know what you think. Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Mittwoch, 3. August 2011 15:31 To: LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Heitto, Jonas (Jonas); Schweppe, Kathrin Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Luis, If I may make a comment to Jonas. Jonas - you asked a very very good question, that made me pause, and double check with our technical people that I was on the right path. We at IBM agree with Kathrin. We do not see having patent applications being created or covering the Generic Enabler SPECIFICATIONS. We do have Background and will have Sideground, patents on the Generic Enablers THEMSELVES, but not on the SPECIFICAIONS. We do not foresee the Specifications being so detailed as to being patentable - they will simply list requirements. So, as Kathrin said, since each Party has reserved the rights to license the Generic Enablers themselves, and since you so rightly pointed out the Exclusion List, we feel that we are in good shape. wow, good comment. Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Schweppe, Kathrin" , "Heitto, Jonas (Jonas)" Cc: "fiware-legal at lists.fi-ware.eu" Date: 08/03/11 11:06 AM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Jonas and all, Nothing to add to Kathrin explanation. Further, this clause was widely discussed and finally agreed long time ago. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) De: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] En nombre de Schweppe, Kathrin Enviado el: mi?rcoles, 03 de agosto de 2011 9:56 Para: Heitto, Jonas (Jonas); fabian.perpeet at zv.fraunhofer.de CC: fiware-legal at lists.fi-ware.eu Asunto: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Dear Jonas, dear all, I understand your concerns, we had similar concerns and therefore this section was included: For further sake of clarity, Parties including those Parties that assisted in generating the FI-WARE Generic Enabler Specifications may, but are not obliged to, develop implementations or reference implementations of FI-WARE Generic Enabler Specifications and request licensing terms other than open and royalty free for such, e.g. under FRAND (Fair, Reasonable and Non-Discriminatory) terms subject to the provisions of Article 4.2.3 and 4.2.4 below. The Parties may release their implementations or reference implementations as open source or closed source, at their sole discretion. Then, the Generic Enabler Specification is only a description about technical requirements and the like. Do you see that a patent could be included there? Taking all these things into account, do you think we need further clarification here and if so, can you please propose some wording? Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Dienstag, 2. August 2011 18:42 An: Schweppe, Kathrin; fabian.perpeet at zv.fraunhofer.de Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; MELZI, RAFFAELLA (RAFFAELLA); mathilde.dubesset at technicolor.com; STAMM, Markus (Markus); Wuenstel, Klaus (Klaus); nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: RE: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I'm opening a new thread lest we lose ourselves in the multitude of exchanges on various subjects. My concern relates to the 2nd paragpagh of Section 4.1: Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Would people be against adding a clarification that this generous covenant does not imply royalty free licensing of Background and Sideground patents, should any read on such implementations? Or does everybody rely on their Background and Sideground exclusions? Regards Jonas Dr. Jonas Heitto, LL.M. ALCATEL-LUCENT Corporate IP Counsel INTELLECTUAL PROPERTY & STANDARDS ( Tel +49 711 821 44561 2 Fax +49 711 821 44587 jonas.heitto at alcatel-lucent.com This e-mail message and any attachment is confidential and is intended for use only by the named addressees above. This message may contain information that is confidential, privileged, attorney work product, or exempt from disclosure under applicable law. If you are not an intended recipient, then you are prohibited from reading or copying any part of this message or opening, reading or copying any attachment. If you have received this message in error, or are not a named recipient, please immediately notify the sender by reply mail and delete this e-mail from your computer. Thank you for your cooperation. Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx -------------- next part -------------- An HTML attachment was scrubbed... URL: From SUZANNE at il.ibm.com Thu Aug 4 12:29:08 2011 From: SUZANNE at il.ibm.com (Suzanne Erez) Date: Thu, 4 Aug 2011 13:29:08 +0300 Subject: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs In-Reply-To: <400B1E0D509AB14C95FFDC1DE303B9A881E1169F2B@EXCLU2K7.hi.inet> References: <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF7BF@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF843@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFFE36@DEWDFECCR03.wdf.sap.corp> <400B1E0D509AB14C95FFDC1DE303B9A881E1169E83@EXCLU2K7.hi.inet> <7ED7B27AF3542948BAB7BCD179A7677C10CCE89DFE@DEWDFECCR03.wdf.sap.corp> <400B1E0D509AB14C95FFDC1DE303B9A881E1169F2B@EXCLU2K7.hi.inet> Message-ID: Luis, At times we too make mistakes, even if they are over 1100 e-mails. I think we made a mistake. Question - (knowing that this has NOTHING to do with Access Rights - since it doesn't even mention Access Rights) when you read this - If a Party creates an implementation of the specification - and this implementation does MORE than the specification - is IBM allowed to request Royalties for that implementation? Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Can I sue someone for using my patents. They are not BACKGROUND since I never brought them into the project. This is another Party creating an implementation that uses my patents. And this implementation is not even for the project. What do you think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel:? 972-4-829-6069? Fax:? 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL Cc: "Schweppe, Kathrin" , "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" , PILAR PLASENCIA MAESO , JUAN JOSE HIERRO SUREDA , JOSE JIMENEZ DELGADO Date: 08/04/11 01:06 PM Subject: RE: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, Although I understand your concerns, I think that the clarification is not necessary. Obviously if someone implements a GES using other?s proprietary BG; the owner of that BG may request royalties. What I mean is that, from our perspective, the question is out of the scope of this agreement. Remember that you?re talking about licenses that are not ?needed? (if they would become ?needed? the CA establishes the applicable terms) so, if they are not needed, they will be granted only if both parties mutually and freely agree in the applicable terms. Nobody can freely use other?s partners proprietary technology (patentable or not) without that partner?s prior consent. This is obvious. Apart from this argument, don?t forget the following: a) This clause was widely negotiated and discussed in a huge number of mails (I have 1100 mails in my FIWARE folder, a good number of them referred to this clause) and conversations. It was not discussed during the last week?s audios as it was considered as agreed. b) We must be consequent. From our perspective it is not a deal-breaker point as it refers to an obvious situation. If we open again the CA to new discussions regarding clauses that are already agreed and closed, this CA will never reach an end. c) Further, I?ve received clear, firm and irrevocable instructions, to avoid any new modification that it?s not a typo. It? s time to start with the signature process; we just cannot afford the time for further discussions . Sorry if my words sound too strong . It?s not my intention to upset anybody. All of you know that we?ve tried to get, as far as possible, a balanced agreement and I think that we get a very very good agreement, but we cannot turn it into the ?neverending? agreement. We kindly invite you to accept the clause as it is now and to move forward in the project. I also kindly ask the partners that still have not sent their contact/signing details to send them to me ASAP. During next week, we?ll send the clean version with the signature details. Best regards Luis De: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Enviado el: jueves, 04 de agosto de 2011 10:56 Para: Suzanne Erez CC: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Asunto: RE: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Susanne, While I would prefer to re-write the entire section, I understand the complications this would cause. Therefore I think your suggestion of a disclaimer is a good solution. I would just slightly reword as follows, added words underlined. I think the expression "covered" was not helping since all implementations would be covered by the spec. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY (INCLUDING PATENTABLE INVENTIONS) NOT DISCLOSED BY THE FIWARE GENERIC ENABLER SPECIFICATION. I hope that the parties seconding Suzanne's original disclaimer can also find this here satisfacory. I am still looking for the Commission's RF licensing requirement. GA Annex 1 mentioned GE Specs twice (p. 30 and p. 240) but no mention of royalty free, only "Open Specifications". Regards Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Donnerstag, 4. August 2011 06:57 To: Heitto, Jonas (Jonas) Cc: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Jonas, Ah ha, I think I understand. You are saying that while the specs themselves may not cover patentable material, the implementation once created - may have material IN ADDITION to the specification, and that may cover Background patents. So I as the implementer does not need to pay for implementing the bare specification, but if my implementation covers MORE than just the specification, and this MORE is covered by Background patents, for that we should pay. Another way to say it is that - there are many many ways to implement the specification. The specification is only the bare minimum (e.g. must have black walls). If my implementation has only black walls, there is no royalty. But if the walls are black with white stripes, and white stripes are patented, the party owning that patent should be able tor request payment. I know for IBM - we have a specific implementation of the Generic Enabler Specification. There will be many many ways to implement the specification. If someone creates their own implementation that covers the specs, and does it in a different way - more power to them. But if someone creates an implementation that copies what IBM does, and that is NOT in the spec, I should be able to ask for royalties, or request that this someone not infringe my patents. IS THIS WHAT YOU MEAN? Luis - our intention was that parties should contribute the specification royalty free, but I do not think it was our intention that if the implementation covers OTHER material that is patentable, that too must be royalty free. Below in caps is my suggestion. Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES THAT CONTRIBUTE TO THE SPECIFICATION ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY NOT COVERED BY THE FIWARE GENERIC ENABLER SPECIFICATION. (anyone know a better way to say this?) What do you all think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL, LUIS GARCIA GARCIA Cc: "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" Date: 08/03/11 07:13 PM Subject: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear Jonas, as far as I understood it, and please someone should correct me, if I am wrong, it was a mandatory prerequisite from the European Commission that the Generic Enabler Specification have to be published upon royalty-free conditions. I think, I do not understand fully your comment. If SAP implements SAP GE Specs, why should we pay ourselves? It would only make sense, if SAP pays IBM for implementation of IBM?s specs. And exactly that is what the EC would like to see with regard to the specifications. We have further protection with regard to patents, that you can check via the publication process if there are patents enclosed upon which you do not would like to see free implementations. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Mittwoch, 3. August 2011 18:00 An: Suzanne Erez; LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Schweppe, Kathrin Betreff: RE: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Susanne, all, Even if the specs themselves are not patentable, which is likely, the provision says that ?other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. The 2nd paragraph merely states that a Party may develop implementations and require royalties for their use. But the other Parties are still not paying for their own implementations. Which we don't know yet. Which could read on BG patents of the licensing party. I still think that some clarification may be in order, or possibly updates to the Background exclusion lists. Please let me know what you think. Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Mittwoch, 3. August 2011 15:31 To: LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Heitto, Jonas (Jonas); Schweppe, Kathrin Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Luis, If I may make a comment to Jonas. Jonas - you asked a very very good question, that made me pause, and double check with our technical people that I was on the right path. We at IBM agree with Kathrin. We do not see having patent applications being created or covering the Generic Enabler SPECIFICATIONS. We do have Background and will have Sideground, patents on the Generic Enablers THEMSELVES, but not on the SPECIFICAIONS. We do not foresee the Specifications being so detailed as to being patentable - they will simply list requirements. So, as Kathrin said, since each Party has reserved the rights to license the Generic Enablers themselves, and since you so rightly pointed out the Exclusion List, we feel that we are in good shape. wow, good comment. Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Schweppe, Kathrin" , "Heitto, Jonas (Jonas)" Cc: "fiware-legal at lists.fi-ware.eu" Date: 08/03/11 11:06 AM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Jonas and all, Nothing to add to Kathrin explanation. Further, this clause was widely discussed and finally agreed long time ago. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) De: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] En nombre de Schweppe, Kathrin Enviado el: mi?rcoles, 03 de agosto de 2011 9:56 Para: Heitto, Jonas (Jonas); fabian.perpeet at zv.fraunhofer.de CC: fiware-legal at lists.fi-ware.eu Asunto: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Dear Jonas, dear all, I understand your concerns, we had similar concerns and therefore this section was included: For further sake of clarity, Parties including those Parties that assisted in generating the FI-WARE Generic Enabler Specifications may, but are not obliged to, develop implementations or reference implementations of FI-WARE Generic Enabler Specifications and request licensing terms other than open and royalty free for such, e.g. under FRAND (Fair, Reasonable and Non-Discriminatory) terms subject to the provisions of Article 4.2.3 and 4.2.4 below. The Parties may release their implementations or reference implementations as open source or closed source, at their sole discretion. Then, the Generic Enabler Specification is only a description about technical requirements and the like. Do you see that a patent could be included there? Taking all these things into account, do you think we need further clarification here and if so, can you please propose some wording? Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Dienstag, 2. August 2011 18:42 An: Schweppe, Kathrin; fabian.perpeet at zv.fraunhofer.de Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; MELZI, RAFFAELLA (RAFFAELLA); mathilde.dubesset at technicolor.com; STAMM, Markus (Markus); Wuenstel, Klaus (Klaus); nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: RE: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I?m opening a new thread lest we lose ourselves in the multitude of exchanges on various subjects. My concern relates to the 2nd paragpagh of Section 4.1: Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Would people be against adding a clarification that this generous covenant does not imply royalty free licensing of Background and Sideground patents, should any read on such implementations? Or does everybody rely on their Background and Sideground exclusions? Regards Jonas Dr. Jonas Heitto, LL.M. ALCATEL-LUCENT Corporate IP Counsel INTELLECTUAL PROPERTY & STANDARDS ( Tel +49 711 821 44561 2 Fax +49 711 821 44587 jonas.heitto at alcatel-lucent.com This e-mail message and any attachment is confidential and is intended for use only by the named addressees above. This message may contain information that is confidential, privileged, attorney work product, or exempt from disclosure under applicable law. If you are not an intended recipient, then you are prohibited from reading or copying any part of this message or opening, reading or copying any attachment. If you have received this message in error, or are not a named recipient, please immediately notify the sender by reply mail and delete this e-mail from your computer. Thank you for your cooperation. Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx From lgg at tid.es Thu Aug 4 12:39:45 2011 From: lgg at tid.es (LUIS GARCIA GARCIA) Date: Thu, 04 Aug 2011 12:39:45 +0200 Subject: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs In-Reply-To: References: <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF7BF@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF843@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFFE36@DEWDFECCR03.wdf.sap.corp> <400B1E0D509AB14C95FFDC1DE303B9A881E1169E83@EXCLU2K7.hi.inet> <7ED7B27AF3542948BAB7BCD179A7677C10CCE89DFE@DEWDFECCR03.wdf.sap.corp> <400B1E0D509AB14C95FFDC1DE303B9A881E1169F2B@EXCLU2K7.hi.inet> Message-ID: <400B1E0D509AB14C95FFDC1DE303B9A881E1169F37@EXCLU2K7.hi.inet> Dear Suzanne, Of course you can? This is obvious? Can anybody use IBM?s patents freely? Of course they can?t, neither for implementation of a GES nor for any other purpose. they must get the prior approval from IBM; otherwise they?d be subject to the corresponding liability. Take into account that what partners can use are the GES (nothing else " other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations" ) if they use additional protected materials, they will need the corresponding authorization of the owner. Perhaps I?m wrong but I see it crystal clear. Best regards Luis -----Mensaje original----- De: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Enviado el: jueves, 04 de agosto de 2011 12:29 Para: LUIS GARCIA GARCIA CC: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; JUAN JOSE HIERRO SUREDA; JOSE JIMENEZ DELGADO; Heitto, Jonas (Jonas); Schweppe, Kathrin; PILAR PLASENCIA MAESO Asunto: RE: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Luis, At times we too make mistakes, even if they are over 1100 e-mails. I think we made a mistake. Question - (knowing that this has NOTHING to do with Access Rights - since it doesn't even mention Access Rights) when you read this - If a Party creates an implementation of the specification - and this implementation does MORE than the specification - is IBM allowed to request Royalties for that implementation? Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Can I sue someone for using my patents. They are not BACKGROUND since I never brought them into the project. This is another Party creating an implementation that uses my patents. And this implementation is not even for the project. What do you think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL Cc: "Schweppe, Kathrin" , "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" , PILAR PLASENCIA MAESO , JUAN JOSE HIERRO SUREDA , JOSE JIMENEZ DELGADO Date: 08/04/11 01:06 PM Subject: RE: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, Although I understand your concerns, I think that the clarification is not necessary. Obviously if someone implements a GES using other?s proprietary BG; the owner of that BG may request royalties. What I mean is that, from our perspective, the question is out of the scope of this agreement. Remember that you?re talking about licenses that are not ?needed? (if they would become ?needed? the CA establishes the applicable terms) so, if they are not needed, they will be granted only if both parties mutually and freely agree in the applicable terms. Nobody can freely use other?s partners proprietary technology (patentable or not) without that partner?s prior consent. This is obvious. Apart from this argument, don?t forget the following: a) This clause was widely negotiated and discussed in a huge number of mails (I have 1100 mails in my FIWARE folder, a good number of them referred to this clause) and conversations. It was not discussed during the last week?s audios as it was considered as agreed. b) We must be consequent. From our perspective it is not a deal-breaker point as it refers to an obvious situation. If we open again the CA to new discussions regarding clauses that are already agreed and closed, this CA will never reach an end. c) Further, I?ve received clear, firm and irrevocable instructions, to avoid any new modification that it?s not a typo. It? s time to start with the signature process; we just cannot afford the time for further discussions . Sorry if my words sound too strong . It?s not my intention to upset anybody. All of you know that we?ve tried to get, as far as possible, a balanced agreement and I think that we get a very very good agreement, but we cannot turn it into the ?neverending? agreement. We kindly invite you to accept the clause as it is now and to move forward in the project. I also kindly ask the partners that still have not sent their contact/signing details to send them to me ASAP. During next week, we?ll send the clean version with the signature details. Best regards Luis De: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Enviado el: jueves, 04 de agosto de 2011 10:56 Para: Suzanne Erez CC: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Asunto: RE: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Susanne, While I would prefer to re-write the entire section, I understand the complications this would cause. Therefore I think your suggestion of a disclaimer is a good solution. I would just slightly reword as follows, added words underlined. I think the expression "covered" was not helping since all implementations would be covered by the spec. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY (INCLUDING PATENTABLE INVENTIONS) NOT DISCLOSED BY THE FIWARE GENERIC ENABLER SPECIFICATION. I hope that the parties seconding Suzanne's original disclaimer can also find this here satisfacory. I am still looking for the Commission's RF licensing requirement. GA Annex 1 mentioned GE Specs twice (p. 30 and p. 240) but no mention of royalty free, only "Open Specifications". Regards Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Donnerstag, 4. August 2011 06:57 To: Heitto, Jonas (Jonas) Cc: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Jonas, Ah ha, I think I understand. You are saying that while the specs themselves may not cover patentable material, the implementation once created - may have material IN ADDITION to the specification, and that may cover Background patents. So I as the implementer does not need to pay for implementing the bare specification, but if my implementation covers MORE than just the specification, and this MORE is covered by Background patents, for that we should pay. Another way to say it is that - there are many many ways to implement the specification. The specification is only the bare minimum (e.g. must have black walls). If my implementation has only black walls, there is no royalty. But if the walls are black with white stripes, and white stripes are patented, the party owning that patent should be able tor request payment. I know for IBM - we have a specific implementation of the Generic Enabler Specification. There will be many many ways to implement the specification. If someone creates their own implementation that covers the specs, and does it in a different way - more power to them. But if someone creates an implementation that copies what IBM does, and that is NOT in the spec, I should be able to ask for royalties, or request that this someone not infringe my patents. IS THIS WHAT YOU MEAN? Luis - our intention was that parties should contribute the specification royalty free, but I do not think it was our intention that if the implementation covers OTHER material that is patentable, that too must be royalty free. Below in caps is my suggestion. Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES THAT CONTRIBUTE TO THE SPECIFICATION ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY NOT COVERED BY THE FIWARE GENERIC ENABLER SPECIFICATION. (anyone know a better way to say this?) What do you all think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL, LUIS GARCIA GARCIA Cc: "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" Date: 08/03/11 07:13 PM Subject: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear Jonas, as far as I understood it, and please someone should correct me, if I am wrong, it was a mandatory prerequisite from the European Commission that the Generic Enabler Specification have to be published upon royalty-free conditions. I think, I do not understand fully your comment. If SAP implements SAP GE Specs, why should we pay ourselves? It would only make sense, if SAP pays IBM for implementation of IBM?s specs. And exactly that is what the EC would like to see with regard to the specifications. We have further protection with regard to patents, that you can check via the publication process if there are patents enclosed upon which you do not would like to see free implementations. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Mittwoch, 3. August 2011 18:00 An: Suzanne Erez; LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Schweppe, Kathrin Betreff: RE: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Susanne, all, Even if the specs themselves are not patentable, which is likely, the provision says that ?other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. The 2nd paragraph merely states that a Party may develop implementations and require royalties for their use. But the other Parties are still not paying for their own implementations. Which we don't know yet. Which could read on BG patents of the licensing party. I still think that some clarification may be in order, or possibly updates to the Background exclusion lists. Please let me know what you think. Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Mittwoch, 3. August 2011 15:31 To: LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Heitto, Jonas (Jonas); Schweppe, Kathrin Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Luis, If I may make a comment to Jonas. Jonas - you asked a very very good question, that made me pause, and double check with our technical people that I was on the right path. We at IBM agree with Kathrin. We do not see having patent applications being created or covering the Generic Enabler SPECIFICATIONS. We do have Background and will have Sideground, patents on the Generic Enablers THEMSELVES, but not on the SPECIFICAIONS. We do not foresee the Specifications being so detailed as to being patentable - they will simply list requirements. So, as Kathrin said, since each Party has reserved the rights to license the Generic Enablers themselves, and since you so rightly pointed out the Exclusion List, we feel that we are in good shape. wow, good comment. Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Schweppe, Kathrin" , "Heitto, Jonas (Jonas)" Cc: "fiware-legal at lists.fi-ware.eu" Date: 08/03/11 11:06 AM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Jonas and all, Nothing to add to Kathrin explanation. Further, this clause was widely discussed and finally agreed long time ago. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) De: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] En nombre de Schweppe, Kathrin Enviado el: mi?rcoles, 03 de agosto de 2011 9:56 Para: Heitto, Jonas (Jonas); fabian.perpeet at zv.fraunhofer.de CC: fiware-legal at lists.fi-ware.eu Asunto: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Dear Jonas, dear all, I understand your concerns, we had similar concerns and therefore this section was included: For further sake of clarity, Parties including those Parties that assisted in generating the FI-WARE Generic Enabler Specifications may, but are not obliged to, develop implementations or reference implementations of FI-WARE Generic Enabler Specifications and request licensing terms other than open and royalty free for such, e.g. under FRAND (Fair, Reasonable and Non-Discriminatory) terms subject to the provisions of Article 4.2.3 and 4.2.4 below. The Parties may release their implementations or reference implementations as open source or closed source, at their sole discretion. Then, the Generic Enabler Specification is only a description about technical requirements and the like. Do you see that a patent could be included there? Taking all these things into account, do you think we need further clarification here and if so, can you please propose some wording? Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Dienstag, 2. August 2011 18:42 An: Schweppe, Kathrin; fabian.perpeet at zv.fraunhofer.de Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; MELZI, RAFFAELLA (RAFFAELLA); mathilde.dubesset at technicolor.com; STAMM, Markus (Markus); Wuenstel, Klaus (Klaus); nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: RE: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I?m opening a new thread lest we lose ourselves in the multitude of exchanges on various subjects. My concern relates to the 2nd paragpagh of Section 4.1: Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Would people be against adding a clarification that this generous covenant does not imply royalty free licensing of Background and Sideground patents, should any read on such implementations? Or does everybody rely on their Background and Sideground exclusions? Regards Jonas Dr. Jonas Heitto, LL.M. ALCATEL-LUCENT Corporate IP Counsel INTELLECTUAL PROPERTY & STANDARDS ( Tel +49 711 821 44561 2 Fax +49 711 821 44587 jonas.heitto at alcatel-lucent.com This e-mail message and any attachment is confidential and is intended for use only by the named addressees above. This message may contain information that is confidential, privileged, attorney work product, or exempt from disclosure under applicable law. If you are not an intended recipient, then you are prohibited from reading or copying any part of this message or opening, reading or copying any attachment. If you have received this message in error, or are not a named recipient, please immediately notify the sender by reply mail and delete this e-mail from your computer. Thank you for your cooperation. Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx -------------- next part -------------- An HTML attachment was scrubbed... URL: From SUZANNE at il.ibm.com Thu Aug 4 12:40:53 2011 From: SUZANNE at il.ibm.com (Suzanne Erez) Date: Thu, 4 Aug 2011 13:40:53 +0300 Subject: [Fiware-legal] Fw: Consortium Agreement FI-WARE / Generic Enabler Specs Message-ID: Luis, What if we do a minor amendment of only 2 words? And add the words DISCLOSED BY? Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations DISCLOSED BY the FI-WARE Generic Enabler Specifications on a royalty-free basis. So if it is not disclosed in the spec, it is not Royalty Free. Does that work Luis? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel:? 972-4-829-6069? Fax:? 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. ----- Forwarded by Suzanne Erez/Haifa/IBM on 08/04/11 01:30 PM ----- From: Suzanne Erez/Haifa/IBM at IBMIL To: LUIS GARCIA GARCIA Cc: JOSE JIMENEZ DELGADO , "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" Date: 08/04/11 01:29 PM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Sent by: fiware-legal-bounces at lists.fi-ware.eu Luis, At times we too make mistakes, even if they are over 1100 e-mails. I think we made a mistake. Question - (knowing that this has NOTHING to do with Access Rights - since it doesn't even mention Access Rights) when you read this - If a Party creates an implementation of the specification - and this implementation does MORE than the specification - is IBM allowed to request Royalties for that implementation? Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Can I sue someone for using my patents. They are not BACKGROUND since I never brought them into the project. This is another Party creating an implementation that uses my patents. And this implementation is not even for the project. What do you think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel:? 972-4-829-6069? Fax:? 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL Cc: "Schweppe, Kathrin" , "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" , PILAR PLASENCIA MAESO , JUAN JOSE HIERRO SUREDA , JOSE JIMENEZ DELGADO Date: 08/04/11 01:06 PM Subject: RE: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, Although I understand your concerns, I think that the clarification is not necessary. Obviously if someone implements a GES using other?s proprietary BG; the owner of that BG may request royalties. What I mean is that, from our perspective, the question is out of the scope of this agreement. Remember that you?re talking about licenses that are not ?needed? (if they would become ?needed? the CA establishes the applicable terms) so, if they are not needed, they will be granted only if both parties mutually and freely agree in the applicable terms. Nobody can freely use other?s partners proprietary technology (patentable or not) without that partner?s prior consent. This is obvious. Apart from this argument, don?t forget the following: a) This clause was widely negotiated and discussed in a huge number of mails (I have 1100 mails in my FIWARE folder, a good number of them referred to this clause) and conversations. It was not discussed during the last week?s audios as it was considered as agreed. b) We must be consequent. From our perspective it is not a deal-breaker point as it refers to an obvious situation. If we open again the CA to new discussions regarding clauses that are already agreed and closed, this CA will never reach an end. c) Further, I?ve received clear, firm and irrevocable instructions, to avoid any new modification that it?s not a typo. It? s time to start with the signature process; we just cannot afford the time for further discussions . Sorry if my words sound too strong . It?s not my intention to upset anybody. All of you know that we?ve tried to get, as far as possible, a balanced agreement and I think that we get a very very good agreement, but we cannot turn it into the ?neverending? agreement. We kindly invite you to accept the clause as it is now and to move forward in the project. I also kindly ask the partners that still have not sent their contact/signing details to send them to me ASAP. During next week, we?ll send the clean version with the signature details. Best regards Luis De: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Enviado el: jueves, 04 de agosto de 2011 10:56 Para: Suzanne Erez CC: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Asunto: RE: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Susanne, While I would prefer to re-write the entire section, I understand the complications this would cause. Therefore I think your suggestion of a disclaimer is a good solution. I would just slightly reword as follows, added words underlined. I think the expression "covered" was not helping since all implementations would be covered by the spec. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY (INCLUDING PATENTABLE INVENTIONS) NOT DISCLOSED BY THE FIWARE GENERIC ENABLER SPECIFICATION. I hope that the parties seconding Suzanne's original disclaimer can also find this here satisfacory. I am still looking for the Commission's RF licensing requirement. GA Annex 1 mentioned GE Specs twice (p. 30 and p. 240) but no mention of royalty free, only "Open Specifications". Regards Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Donnerstag, 4. August 2011 06:57 To: Heitto, Jonas (Jonas) Cc: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Jonas, Ah ha, I think I understand. You are saying that while the specs themselves may not cover patentable material, the implementation once created - may have material IN ADDITION to the specification, and that may cover Background patents. So I as the implementer does not need to pay for implementing the bare specification, but if my implementation covers MORE than just the specification, and this MORE is covered by Background patents, for that we should pay. Another way to say it is that - there are many many ways to implement the specification. The specification is only the bare minimum (e.g. must have black walls). If my implementation has only black walls, there is no royalty. But if the walls are black with white stripes, and white stripes are patented, the party owning that patent should be able tor request payment. I know for IBM - we have a specific implementation of the Generic Enabler Specification. There will be many many ways to implement the specification. If someone creates their own implementation that covers the specs, and does it in a different way - more power to them. But if someone creates an implementation that copies what IBM does, and that is NOT in the spec, I should be able to ask for royalties, or request that this someone not infringe my patents. IS THIS WHAT YOU MEAN? Luis - our intention was that parties should contribute the specification royalty free, but I do not think it was our intention that if the implementation covers OTHER material that is patentable, that too must be royalty free. Below in caps is my suggestion. Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES THAT CONTRIBUTE TO THE SPECIFICATION ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY NOT COVERED BY THE FIWARE GENERIC ENABLER SPECIFICATION. (anyone know a better way to say this?) What do you all think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL, LUIS GARCIA GARCIA Cc: "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" Date: 08/03/11 07:13 PM Subject: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear Jonas, as far as I understood it, and please someone should correct me, if I am wrong, it was a mandatory prerequisite from the European Commission that the Generic Enabler Specification have to be published upon royalty-free conditions. I think, I do not understand fully your comment. If SAP implements SAP GE Specs, why should we pay ourselves? It would only make sense, if SAP pays IBM for implementation of IBM?s specs. And exactly that is what the EC would like to see with regard to the specifications. We have further protection with regard to patents, that you can check via the publication process if there are patents enclosed upon which you do not would like to see free implementations. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Mittwoch, 3. August 2011 18:00 An: Suzanne Erez; LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Schweppe, Kathrin Betreff: RE: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Susanne, all, Even if the specs themselves are not patentable, which is likely, the provision says that ?other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. The 2nd paragraph merely states that a Party may develop implementations and require royalties for their use. But the other Parties are still not paying for their own implementations. Which we don't know yet. Which could read on BG patents of the licensing party. I still think that some clarification may be in order, or possibly updates to the Background exclusion lists. Please let me know what you think. Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Mittwoch, 3. August 2011 15:31 To: LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Heitto, Jonas (Jonas); Schweppe, Kathrin Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Luis, If I may make a comment to Jonas. Jonas - you asked a very very good question, that made me pause, and double check with our technical people that I was on the right path. We at IBM agree with Kathrin. We do not see having patent applications being created or covering the Generic Enabler SPECIFICATIONS. We do have Background and will have Sideground, patents on the Generic Enablers THEMSELVES, but not on the SPECIFICAIONS. We do not foresee the Specifications being so detailed as to being patentable - they will simply list requirements. So, as Kathrin said, since each Party has reserved the rights to license the Generic Enablers themselves, and since you so rightly pointed out the Exclusion List, we feel that we are in good shape. wow, good comment. Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Schweppe, Kathrin" , "Heitto, Jonas (Jonas)" Cc: "fiware-legal at lists.fi-ware.eu" Date: 08/03/11 11:06 AM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Jonas and all, Nothing to add to Kathrin explanation. Further, this clause was widely discussed and finally agreed long time ago. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) De: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] En nombre de Schweppe, Kathrin Enviado el: mi?rcoles, 03 de agosto de 2011 9:56 Para: Heitto, Jonas (Jonas); fabian.perpeet at zv.fraunhofer.de CC: fiware-legal at lists.fi-ware.eu Asunto: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Dear Jonas, dear all, I understand your concerns, we had similar concerns and therefore this section was included: For further sake of clarity, Parties including those Parties that assisted in generating the FI-WARE Generic Enabler Specifications may, but are not obliged to, develop implementations or reference implementations of FI-WARE Generic Enabler Specifications and request licensing terms other than open and royalty free for such, e.g. under FRAND (Fair, Reasonable and Non-Discriminatory) terms subject to the provisions of Article 4.2.3 and 4.2.4 below. The Parties may release their implementations or reference implementations as open source or closed source, at their sole discretion. Then, the Generic Enabler Specification is only a description about technical requirements and the like. Do you see that a patent could be included there? Taking all these things into account, do you think we need further clarification here and if so, can you please propose some wording? Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com ] Gesendet: Dienstag, 2. August 2011 18:42 An: Schweppe, Kathrin; fabian.perpeet at zv.fraunhofer.de Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; MELZI, RAFFAELLA (RAFFAELLA); mathilde.dubesset at technicolor.com; STAMM, Markus (Markus); Wuenstel, Klaus (Klaus); nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: RE: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I?m opening a new thread lest we lose ourselves in the multitude of exchanges on various subjects. My concern relates to the 2nd paragpagh of Section 4.1: Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Would people be against adding a clarification that this generous covenant does not imply royalty free licensing of Background and Sideground patents, should any read on such implementations? Or does everybody rely on their Background and Sideground exclusions? Regards Jonas Dr. Jonas Heitto, LL.M. ALCATEL-LUCENT Corporate IP Counsel INTELLECTUAL PROPERTY & STANDARDS ( Tel +49 711 821 44561 2 Fax +49 711 821 44587 jonas.heitto at alcatel-lucent.com This e-mail message and any attachment is confidential and is intended for use only by the named addressees above. This message may contain information that is confidential, privileged, attorney work product, or exempt from disclosure under applicable law. If you are not an intended recipient, then you are prohibited from reading or copying any part of this message or opening, reading or copying any attachment. If you have received this message in error, or are not a named recipient, please immediately notify the sender by reply mail and delete this e-mail from your computer. Thank you for your cooperation. Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal From SUZANNE at il.ibm.com Thu Aug 4 13:24:38 2011 From: SUZANNE at il.ibm.com (Suzanne Erez) Date: Thu, 4 Aug 2011 14:24:38 +0300 Subject: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs In-Reply-To: <400B1E0D509AB14C95FFDC1DE303B9A881E1169F37@EXCLU2K7.hi.inet> References: <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF7BF@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFF843@DEWDFECCR03.wdf.sap.corp> <7ED7B27AF3542948BAB7BCD179A7677C10CCDFFE36@DEWDFECCR03.wdf.sap.corp> <400B1E0D509AB14C95FFDC1DE303B9A881E1169E83@EXCLU2K7.hi.inet> <7ED7B27AF3542948BAB7BCD179A7677C10CCE89DFE@DEWDFECCR03.wdf.sap.corp> <400B1E0D509AB14C95FFDC1DE303B9A881E1169F2B@EXCLU2K7.hi.inet> Message-ID: Luis, That is just the question - if the CA says "For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis." It is simply unclear to me that we are speaking about the implementation of ONLY the Specification. And if it is able to be read two ways, it is not written clearly. So as I wrote in another e-mail, can we just add two words? Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations DISCLOSED BY the FI-WARE Generic Enabler Specifications on a royalty-free basis. Or can we just add one word? "ONLY" Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of ONLY the FI-WARE Generic Enabler Specifications on a royalty-free basis. Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel:? 972-4-829-6069? Fax:? 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: Suzanne Erez/Haifa/IBM at IBMIL Cc: "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" , JUAN JOSE HIERRO SUREDA , JOSE JIMENEZ DELGADO , "Heitto, Jonas (Jonas)" , "Schweppe, Kathrin" , PILAR PLASENCIA MAESO Date: 08/04/11 01:39 PM Subject: RE: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear Suzanne, Of course you can? This is obvious? Can anybody use IBM?s patents freely? Of course they can?t, neither for implementation of a GES nor for any other purpose. they must get the prior approval from IBM; otherwise they?d be subject to the corresponding liability. Take into account that what partners can use are the GES (nothing else " other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations" ) if they use additional protected materials, they will need the corresponding authorization of the owner. Perhaps I?m wrong but I see it crystal clear. Best regards Luis -----Mensaje original----- De: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Enviado el: jueves, 04 de agosto de 2011 12:29 Para: LUIS GARCIA GARCIA CC: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; JUAN JOSE HIERRO SUREDA; JOSE JIMENEZ DELGADO; Heitto, Jonas (Jonas); Schweppe, Kathrin; PILAR PLASENCIA MAESO Asunto: RE: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Luis, At times we too make mistakes, even if they are over 1100 e-mails. I think we made a mistake. Question - (knowing that this has NOTHING to do with Access Rights - since it doesn't even mention Access Rights) when you read this - If a Party creates an implementation of the specification - and this implementation does MORE than the specification - is IBM allowed to request Royalties for that implementation? Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Can I sue someone for using my patents. They are not BACKGROUND since I never brought them into the project. This is another Party creating an implementation that uses my patents. And this implementation is not even for the project. What do you think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL Cc: "Schweppe, Kathrin" , "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" , PILAR PLASENCIA MAESO , JUAN JOSE HIERRO SUREDA , JOSE JIMENEZ DELGADO Date: 08/04/11 01:06 PM Subject: RE: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, Although I understand your concerns, I think that the clarification is not necessary. Obviously if someone implements a GES using other?s proprietary BG; the owner of that BG may request royalties. What I mean is that, from our perspective, the question is out of the scope of this agreement. Remember that you?re talking about licenses that are not ?needed? (if they would become ?needed? the CA establishes the applicable terms) so, if they are not needed, they will be granted only if both parties mutually and freely agree in the applicable terms. Nobody can freely use other?s partners proprietary technology (patentable or not) without that partner?s prior consent. This is obvious. Apart from this argument, don?t forget the following: a) This clause was widely negotiated and discussed in a huge number of mails (I have 1100 mails in my FIWARE folder, a good number of them referred to this clause) and conversations. It was not discussed during the last week?s audios as it was considered as agreed. b) We must be consequent. From our perspective it is not a deal-breaker point as it refers to an obvious situation. If we open again the CA to new discussions regarding clauses that are already agreed and closed, this CA will never reach an end. c) Further, I?ve received clear, firm and irrevocable instructions, to avoid any new modification that it?s not a typo. It? s time to start with the signature process; we just cannot afford the time for further discussions . Sorry if my words sound too strong . It?s not my intention to upset anybody. All of you know that we?ve tried to get, as far as possible, a balanced agreement and I think that we get a very very good agreement, but we cannot turn it into the ?neverending? agreement. We kindly invite you to accept the clause as it is now and to move forward in the project. I also kindly ask the partners that still have not sent their contact/signing details to send them to me ASAP. During next week, we?ll send the clean version with the signature details. Best regards Luis De: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Enviado el: jueves, 04 de agosto de 2011 10:56 Para: Suzanne Erez CC: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Asunto: RE: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Susanne, While I would prefer to re-write the entire section, I understand the complications this would cause. Therefore I think your suggestion of a disclaimer is a good solution. I would just slightly reword as follows, added words underlined. I think the expression "covered" was not helping since all implementations would be covered by the spec. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY (INCLUDING PATENTABLE INVENTIONS) NOT DISCLOSED BY THE FIWARE GENERIC ENABLER SPECIFICATION. I hope that the parties seconding Suzanne's original disclaimer can also find this here satisfacory. I am still looking for the Commission's RF licensing requirement. GA Annex 1 mentioned GE Specs twice (p. 30 and p. 240) but no mention of royalty free, only "Open Specifications". Regards Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Donnerstag, 4. August 2011 06:57 To: Heitto, Jonas (Jonas) Cc: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Jonas, Ah ha, I think I understand. You are saying that while the specs themselves may not cover patentable material, the implementation once created - may have material IN ADDITION to the specification, and that may cover Background patents. So I as the implementer does not need to pay for implementing the bare specification, but if my implementation covers MORE than just the specification, and this MORE is covered by Background patents, for that we should pay. Another way to say it is that - there are many many ways to implement the specification. The specification is only the bare minimum (e.g. must have black walls). If my implementation has only black walls, there is no royalty. But if the walls are black with white stripes, and white stripes are patented, the party owning that patent should be able tor request payment. I know for IBM - we have a specific implementation of the Generic Enabler Specification. There will be many many ways to implement the specification. If someone creates their own implementation that covers the specs, and does it in a different way - more power to them. But if someone creates an implementation that copies what IBM does, and that is NOT in the spec, I should be able to ask for royalties, or request that this someone not infringe my patents. IS THIS WHAT YOU MEAN? Luis - our intention was that parties should contribute the specification royalty free, but I do not think it was our intention that if the implementation covers OTHER material that is patentable, that too must be royalty free. Below in caps is my suggestion. Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES THAT CONTRIBUTE TO THE SPECIFICATION ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY NOT COVERED BY THE FIWARE GENERIC ENABLER SPECIFICATION. (anyone know a better way to say this?) What do you all think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL, LUIS GARCIA GARCIA Cc: "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" Date: 08/03/11 07:13 PM Subject: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear Jonas, as far as I understood it, and please someone should correct me, if I am wrong, it was a mandatory prerequisite from the European Commission that the Generic Enabler Specification have to be published upon royalty-free conditions. I think, I do not understand fully your comment. If SAP implements SAP GE Specs, why should we pay ourselves? It would only make sense, if SAP pays IBM for implementation of IBM?s specs. And exactly that is what the EC would like to see with regard to the specifications. We have further protection with regard to patents, that you can check via the publication process if there are patents enclosed upon which you do not would like to see free implementations. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Mittwoch, 3. August 2011 18:00 An: Suzanne Erez; LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Schweppe, Kathrin Betreff: RE: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Susanne, all, Even if the specs themselves are not patentable, which is likely, the provision says that ?other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. The 2nd paragraph merely states that a Party may develop implementations and require royalties for their use. But the other Parties are still not paying for their own implementations. Which we don't know yet. Which could read on BG patents of the licensing party. I still think that some clarification may be in order, or possibly updates to the Background exclusion lists. Please let me know what you think. Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Mittwoch, 3. August 2011 15:31 To: LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Heitto, Jonas (Jonas); Schweppe, Kathrin Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Luis, If I may make a comment to Jonas. Jonas - you asked a very very good question, that made me pause, and double check with our technical people that I was on the right path. We at IBM agree with Kathrin. We do not see having patent applications being created or covering the Generic Enabler SPECIFICATIONS. We do have Background and will have Sideground, patents on the Generic Enablers THEMSELVES, but not on the SPECIFICAIONS. We do not foresee the Specifications being so detailed as to being patentable - they will simply list requirements. So, as Kathrin said, since each Party has reserved the rights to license the Generic Enablers themselves, and since you so rightly pointed out the Exclusion List, we feel that we are in good shape. wow, good comment. Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Schweppe, Kathrin" , "Heitto, Jonas (Jonas)" Cc: "fiware-legal at lists.fi-ware.eu" Date: 08/03/11 11:06 AM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Jonas and all, Nothing to add to Kathrin explanation. Further, this clause was widely discussed and finally agreed long time ago. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) De: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] En nombre de Schweppe, Kathrin Enviado el: mi?rcoles, 03 de agosto de 2011 9:56 Para: Heitto, Jonas (Jonas); fabian.perpeet at zv.fraunhofer.de CC: fiware-legal at lists.fi-ware.eu Asunto: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Dear Jonas, dear all, I understand your concerns, we had similar concerns and therefore this section was included: For further sake of clarity, Parties including those Parties that assisted in generating the FI-WARE Generic Enabler Specifications may, but are not obliged to, develop implementations or reference implementations of FI-WARE Generic Enabler Specifications and request licensing terms other than open and royalty free for such, e.g. under FRAND (Fair, Reasonable and Non-Discriminatory) terms subject to the provisions of Article 4.2.3 and 4.2.4 below. The Parties may release their implementations or reference implementations as open source or closed source, at their sole discretion. Then, the Generic Enabler Specification is only a description about technical requirements and the like. Do you see that a patent could be included there? Taking all these things into account, do you think we need further clarification here and if so, can you please propose some wording? Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Dienstag, 2. August 2011 18:42 An: Schweppe, Kathrin; fabian.perpeet at zv.fraunhofer.de Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; MELZI, RAFFAELLA (RAFFAELLA); mathilde.dubesset at technicolor.com; STAMM, Markus (Markus); Wuenstel, Klaus (Klaus); nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: RE: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I?m opening a new thread lest we lose ourselves in the multitude of exchanges on various subjects. My concern relates to the 2nd paragpagh of Section 4.1: Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Would people be against adding a clarification that this generous covenant does not imply royalty free licensing of Background and Sideground patents, should any read on such implementations? Or does everybody rely on their Background and Sideground exclusions? Regards Jonas Dr. Jonas Heitto, LL.M. ALCATEL-LUCENT Corporate IP Counsel INTELLECTUAL PROPERTY & STANDARDS ( Tel +49 711 821 44561 2 Fax +49 711 821 44587 jonas.heitto at alcatel-lucent.com This e-mail message and any attachment is confidential and is intended for use only by the named addressees above. This message may contain information that is confidential, privileged, attorney work product, or exempt from disclosure under applicable law. If you are not an intended recipient, then you are prohibited from reading or copying any part of this message or opening, reading or copying any attachment. If you have received this message in error, or are not a named recipient, please immediately notify the sender by reply mail and delete this e-mail from your computer. Thank you for your cooperation. Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx From kathrin.schweppe at sap.com Thu Aug 4 13:29:45 2011 From: kathrin.schweppe at sap.com (Schweppe, Kathrin) Date: Thu, 4 Aug 2011 13:29:45 +0200 Subject: [Fiware-legal] Fw: Consortium Agreement FI-WARE / Generic Enabler Specs In-Reply-To: References: Message-ID: <7ED7B27AF3542948BAB7BCD179A7677C10CCE8A762@DEWDFECCR03.wdf.sap.corp> Dear all, I agree with Suzanne. We should fix this mistake. I think Suzannes proposal works and can easily be included. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. -----Urspr?ngliche Nachricht----- Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von Suzanne Erez Gesendet: Donnerstag, 4. August 2011 12:41 An: LUIS GARCIA GARCIA; JOSE JIMENEZ DELGADO; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Betreff: [Fiware-legal] Fw: Consortium Agreement FI-WARE / Generic Enabler Specs Luis, What if we do a minor amendment of only 2 words? And add the words DISCLOSED BY? Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations DISCLOSED BY the FI-WARE Generic Enabler Specifications on a royalty-free basis. So if it is not disclosed in the spec, it is not Royalty Free. Does that work Luis? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. ----- Forwarded by Suzanne Erez/Haifa/IBM on 08/04/11 01:30 PM ----- From: Suzanne Erez/Haifa/IBM at IBMIL To: LUIS GARCIA GARCIA Cc: JOSE JIMENEZ DELGADO , "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" Date: 08/04/11 01:29 PM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Sent by: fiware-legal-bounces at lists.fi-ware.eu Luis, At times we too make mistakes, even if they are over 1100 e-mails. I think we made a mistake. Question - (knowing that this has NOTHING to do with Access Rights - since it doesn't even mention Access Rights) when you read this - If a Party creates an implementation of the specification - and this implementation does MORE than the specification - is IBM allowed to request Royalties for that implementation? Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Can I sue someone for using my patents. They are not BACKGROUND since I never brought them into the project. This is another Party creating an implementation that uses my patents. And this implementation is not even for the project. What do you think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL Cc: "Schweppe, Kathrin" , "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" , PILAR PLASENCIA MAESO , JUAN JOSE HIERRO SUREDA , JOSE JIMENEZ DELGADO Date: 08/04/11 01:06 PM Subject: RE: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, Although I understand your concerns, I think that the clarification is not necessary. Obviously if someone implements a GES using other?s proprietary BG; the owner of that BG may request royalties. What I mean is that, from our perspective, the question is out of the scope of this agreement. Remember that you?re talking about licenses that are not ?needed? (if they would become ?needed? the CA establishes the applicable terms) so, if they are not needed, they will be granted only if both parties mutually and freely agree in the applicable terms. Nobody can freely use other?s partners proprietary technology (patentable or not) without that partner?s prior consent. This is obvious. Apart from this argument, don?t forget the following: a) This clause was widely negotiated and discussed in a huge number of mails (I have 1100 mails in my FIWARE folder, a good number of them referred to this clause) and conversations. It was not discussed during the last week?s audios as it was considered as agreed. b) We must be consequent. From our perspective it is not a deal-breaker point as it refers to an obvious situation. If we open again the CA to new discussions regarding clauses that are already agreed and closed, this CA will never reach an end. c) Further, I?ve received clear, firm and irrevocable instructions, to avoid any new modification that it?s not a typo. It? s time to start with the signature process; we just cannot afford the time for further discussions . Sorry if my words sound too strong . It?s not my intention to upset anybody. All of you know that we?ve tried to get, as far as possible, a balanced agreement and I think that we get a very very good agreement, but we cannot turn it into the ?neverending? agreement. We kindly invite you to accept the clause as it is now and to move forward in the project. I also kindly ask the partners that still have not sent their contact/signing details to send them to me ASAP. During next week, we?ll send the clean version with the signature details. Best regards Luis De: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Enviado el: jueves, 04 de agosto de 2011 10:56 Para: Suzanne Erez CC: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Asunto: RE: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Susanne, While I would prefer to re-write the entire section, I understand the complications this would cause. Therefore I think your suggestion of a disclaimer is a good solution. I would just slightly reword as follows, added words underlined. I think the expression "covered" was not helping since all implementations would be covered by the spec. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY (INCLUDING PATENTABLE INVENTIONS) NOT DISCLOSED BY THE FIWARE GENERIC ENABLER SPECIFICATION. I hope that the parties seconding Suzanne's original disclaimer can also find this here satisfacory. I am still looking for the Commission's RF licensing requirement. GA Annex 1 mentioned GE Specs twice (p. 30 and p. 240) but no mention of royalty free, only "Open Specifications". Regards Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Donnerstag, 4. August 2011 06:57 To: Heitto, Jonas (Jonas) Cc: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Jonas, Ah ha, I think I understand. You are saying that while the specs themselves may not cover patentable material, the implementation once created - may have material IN ADDITION to the specification, and that may cover Background patents. So I as the implementer does not need to pay for implementing the bare specification, but if my implementation covers MORE than just the specification, and this MORE is covered by Background patents, for that we should pay. Another way to say it is that - there are many many ways to implement the specification. The specification is only the bare minimum (e.g. must have black walls). If my implementation has only black walls, there is no royalty. But if the walls are black with white stripes, and white stripes are patented, the party owning that patent should be able tor request payment. I know for IBM - we have a specific implementation of the Generic Enabler Specification. There will be many many ways to implement the specification. If someone creates their own implementation that covers the specs, and does it in a different way - more power to them. But if someone creates an implementation that copies what IBM does, and that is NOT in the spec, I should be able to ask for royalties, or request that this someone not infringe my patents. IS THIS WHAT YOU MEAN? Luis - our intention was that parties should contribute the specification royalty free, but I do not think it was our intention that if the implementation covers OTHER material that is patentable, that too must be royalty free. Below in caps is my suggestion. Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES THAT CONTRIBUTE TO THE SPECIFICATION ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY NOT COVERED BY THE FIWARE GENERIC ENABLER SPECIFICATION. (anyone know a better way to say this?) What do you all think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL, LUIS GARCIA GARCIA Cc: "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" Date: 08/03/11 07:13 PM Subject: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear Jonas, as far as I understood it, and please someone should correct me, if I am wrong, it was a mandatory prerequisite from the European Commission that the Generic Enabler Specification have to be published upon royalty-free conditions. I think, I do not understand fully your comment. If SAP implements SAP GE Specs, why should we pay ourselves? It would only make sense, if SAP pays IBM for implementation of IBM?s specs. And exactly that is what the EC would like to see with regard to the specifications. We have further protection with regard to patents, that you can check via the publication process if there are patents enclosed upon which you do not would like to see free implementations. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Mittwoch, 3. August 2011 18:00 An: Suzanne Erez; LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Schweppe, Kathrin Betreff: RE: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Susanne, all, Even if the specs themselves are not patentable, which is likely, the provision says that ?other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. The 2nd paragraph merely states that a Party may develop implementations and require royalties for their use. But the other Parties are still not paying for their own implementations. Which we don't know yet. Which could read on BG patents of the licensing party. I still think that some clarification may be in order, or possibly updates to the Background exclusion lists. Please let me know what you think. Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Mittwoch, 3. August 2011 15:31 To: LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Heitto, Jonas (Jonas); Schweppe, Kathrin Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Luis, If I may make a comment to Jonas. Jonas - you asked a very very good question, that made me pause, and double check with our technical people that I was on the right path. We at IBM agree with Kathrin. We do not see having patent applications being created or covering the Generic Enabler SPECIFICATIONS. We do have Background and will have Sideground, patents on the Generic Enablers THEMSELVES, but not on the SPECIFICAIONS. We do not foresee the Specifications being so detailed as to being patentable - they will simply list requirements. So, as Kathrin said, since each Party has reserved the rights to license the Generic Enablers themselves, and since you so rightly pointed out the Exclusion List, we feel that we are in good shape. wow, good comment. Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Schweppe, Kathrin" , "Heitto, Jonas (Jonas)" Cc: "fiware-legal at lists.fi-ware.eu" Date: 08/03/11 11:06 AM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Jonas and all, Nothing to add to Kathrin explanation. Further, this clause was widely discussed and finally agreed long time ago. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) De: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] En nombre de Schweppe, Kathrin Enviado el: mi?rcoles, 03 de agosto de 2011 9:56 Para: Heitto, Jonas (Jonas); fabian.perpeet at zv.fraunhofer.de CC: fiware-legal at lists.fi-ware.eu Asunto: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Dear Jonas, dear all, I understand your concerns, we had similar concerns and therefore this section was included: For further sake of clarity, Parties including those Parties that assisted in generating the FI-WARE Generic Enabler Specifications may, but are not obliged to, develop implementations or reference implementations of FI-WARE Generic Enabler Specifications and request licensing terms other than open and royalty free for such, e.g. under FRAND (Fair, Reasonable and Non-Discriminatory) terms subject to the provisions of Article 4.2.3 and 4.2.4 below. The Parties may release their implementations or reference implementations as open source or closed source, at their sole discretion. Then, the Generic Enabler Specification is only a description about technical requirements and the like. Do you see that a patent could be included there? Taking all these things into account, do you think we need further clarification here and if so, can you please propose some wording? Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com ] Gesendet: Dienstag, 2. August 2011 18:42 An: Schweppe, Kathrin; fabian.perpeet at zv.fraunhofer.de Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; MELZI, RAFFAELLA (RAFFAELLA); mathilde.dubesset at technicolor.com; STAMM, Markus (Markus); Wuenstel, Klaus (Klaus); nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: RE: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I?m opening a new thread lest we lose ourselves in the multitude of exchanges on various subjects. My concern relates to the 2nd paragpagh of Section 4.1: Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Would people be against adding a clarification that this generous covenant does not imply royalty free licensing of Background and Sideground patents, should any read on such implementations? Or does everybody rely on their Background and Sideground exclusions? Regards Jonas Dr. Jonas Heitto, LL.M. ALCATEL-LUCENT Corporate IP Counsel INTELLECTUAL PROPERTY & STANDARDS ( Tel +49 711 821 44561 2 Fax +49 711 821 44587 jonas.heitto at alcatel-lucent.com This e-mail message and any attachment is confidential and is intended for use only by the named addressees above. This message may contain information that is confidential, privileged, attorney work product, or exempt from disclosure under applicable law. If you are not an intended recipient, then you are prohibited from reading or copying any part of this message or opening, reading or copying any attachment. If you have received this message in error, or are not a named recipient, please immediately notify the sender by reply mail and delete this e-mail from your computer. Thank you for your cooperation. Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal From Barbara.Gromer at neclab.eu Thu Aug 11 13:33:20 2011 From: Barbara.Gromer at neclab.eu (Barbara Gromer) Date: Thu, 11 Aug 2011 11:33:20 +0000 Subject: [Fiware-legal] Fw: Consortium Agreement FI-WARE / Generic Enabler Specs In-Reply-To: <7ED7B27AF3542948BAB7BCD179A7677C10CCE8A762@DEWDFECCR03.wdf.sap.corp> References: <7ED7B27AF3542948BAB7BCD179A7677C10CCE8A762@DEWDFECCR03.wdf.sap.corp> Message-ID: <792E9553498020448922DADDFA5AD2A31CD803C0@DAPHNIS.office.hd> Dear all, NEC also agrees with IBM and SAP. I would be happy to see Suzanne's wording "[...] DISCLOSED BY the FI-WARE Generic Enabler Specifications on a royalty-free basis." included in the text (see Suzanne's proposal below). The reason is that it only clarifies everybody's understanding and intention and would make things clear and bullet-proof in any legal proceedings (which hopefully may never come). Kind regards, Barbara Barbara Gromer NEC Laboratories Europe Tel. +49 6221 43 42 161 Barbara.Gromer at neclab.eu Kurfuersten-Anlage 36 D-69115 Heidelberg GERMANY Registered Office: NEC House, 1 Victoria Road, London W3 6BL , registered in England 2832014 -----Original Message----- From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of Schweppe, Kathrin Sent: Donnerstag, 4. August 2011 13:30 To: Suzanne Erez; LUIS GARCIA GARCIA; JOSE JIMENEZ DELGADO; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: [Fiware-legal] Fw: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I agree with Suzanne. We should fix this mistake. I think Suzannes proposal works and can easily be included. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. -----Urspr?ngliche Nachricht----- Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von Suzanne Erez Gesendet: Donnerstag, 4. August 2011 12:41 An: LUIS GARCIA GARCIA; JOSE JIMENEZ DELGADO; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Betreff: [Fiware-legal] Fw: Consortium Agreement FI-WARE / Generic Enabler Specs Luis, What if we do a minor amendment of only 2 words? And add the words DISCLOSED BY? Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations DISCLOSED BY the FI-WARE Generic Enabler Specifications on a royalty-free basis. So if it is not disclosed in the spec, it is not Royalty Free. Does that work Luis? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. ----- Forwarded by Suzanne Erez/Haifa/IBM on 08/04/11 01:30 PM ----- From: Suzanne Erez/Haifa/IBM at IBMIL To: LUIS GARCIA GARCIA Cc: JOSE JIMENEZ DELGADO , "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" Date: 08/04/11 01:29 PM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Sent by: fiware-legal-bounces at lists.fi-ware.eu Luis, At times we too make mistakes, even if they are over 1100 e-mails. I think we made a mistake. Question - (knowing that this has NOTHING to do with Access Rights - since it doesn't even mention Access Rights) when you read this - If a Party creates an implementation of the specification - and this implementation does MORE than the specification - is IBM allowed to request Royalties for that implementation? Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Can I sue someone for using my patents. They are not BACKGROUND since I never brought them into the project. This is another Party creating an implementation that uses my patents. And this implementation is not even for the project. What do you think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL Cc: "Schweppe, Kathrin" , "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" , PILAR PLASENCIA MAESO , JUAN JOSE HIERRO SUREDA , JOSE JIMENEZ DELGADO Date: 08/04/11 01:06 PM Subject: RE: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, Although I understand your concerns, I think that the clarification is not necessary. Obviously if someone implements a GES using other?s proprietary BG; the owner of that BG may request royalties. What I mean is that, from our perspective, the question is out of the scope of this agreement. Remember that you?re talking about licenses that are not ?needed? (if they would become ?needed? the CA establishes the applicable terms) so, if they are not needed, they will be granted only if both parties mutually and freely agree in the applicable terms. Nobody can freely use other?s partners proprietary technology (patentable or not) without that partner?s prior consent. This is obvious. Apart from this argument, don?t forget the following: a) This clause was widely negotiated and discussed in a huge number of mails (I have 1100 mails in my FIWARE folder, a good number of them referred to this clause) and conversations. It was not discussed during the last week?s audios as it was considered as agreed. b) We must be consequent. From our perspective it is not a deal-breaker point as it refers to an obvious situation. If we open again the CA to new discussions regarding clauses that are already agreed and closed, this CA will never reach an end. c) Further, I?ve received clear, firm and irrevocable instructions, to avoid any new modification that it?s not a typo. It? s time to start with the signature process; we just cannot afford the time for further discussions . Sorry if my words sound too strong . It?s not my intention to upset anybody. All of you know that we?ve tried to get, as far as possible, a balanced agreement and I think that we get a very very good agreement, but we cannot turn it into the ?neverending? agreement. We kindly invite you to accept the clause as it is now and to move forward in the project. I also kindly ask the partners that still have not sent their contact/signing details to send them to me ASAP. During next week, we?ll send the clean version with the signature details. Best regards Luis De: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Enviado el: jueves, 04 de agosto de 2011 10:56 Para: Suzanne Erez CC: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Asunto: RE: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Susanne, While I would prefer to re-write the entire section, I understand the complications this would cause. Therefore I think your suggestion of a disclaimer is a good solution. I would just slightly reword as follows, added words underlined. I think the expression "covered" was not helping since all implementations would be covered by the spec. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY (INCLUDING PATENTABLE INVENTIONS) NOT DISCLOSED BY THE FIWARE GENERIC ENABLER SPECIFICATION. I hope that the parties seconding Suzanne's original disclaimer can also find this here satisfacory. I am still looking for the Commission's RF licensing requirement. GA Annex 1 mentioned GE Specs twice (p. 30 and p. 240) but no mention of royalty free, only "Open Specifications". Regards Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Donnerstag, 4. August 2011 06:57 To: Heitto, Jonas (Jonas) Cc: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Jonas, Ah ha, I think I understand. You are saying that while the specs themselves may not cover patentable material, the implementation once created - may have material IN ADDITION to the specification, and that may cover Background patents. So I as the implementer does not need to pay for implementing the bare specification, but if my implementation covers MORE than just the specification, and this MORE is covered by Background patents, for that we should pay. Another way to say it is that - there are many many ways to implement the specification. The specification is only the bare minimum (e.g. must have black walls). If my implementation has only black walls, there is no royalty. But if the walls are black with white stripes, and white stripes are patented, the party owning that patent should be able tor request payment. I know for IBM - we have a specific implementation of the Generic Enabler Specification. There will be many many ways to implement the specification. If someone creates their own implementation that covers the specs, and does it in a different way - more power to them. But if someone creates an implementation that copies what IBM does, and that is NOT in the spec, I should be able to ask for royalties, or request that this someone not infringe my patents. IS THIS WHAT YOU MEAN? Luis - our intention was that parties should contribute the specification royalty free, but I do not think it was our intention that if the implementation covers OTHER material that is patentable, that too must be royalty free. Below in caps is my suggestion. Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES THAT CONTRIBUTE TO THE SPECIFICATION ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY NOT COVERED BY THE FIWARE GENERIC ENABLER SPECIFICATION. (anyone know a better way to say this?) What do you all think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL, LUIS GARCIA GARCIA Cc: "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" Date: 08/03/11 07:13 PM Subject: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear Jonas, as far as I understood it, and please someone should correct me, if I am wrong, it was a mandatory prerequisite from the European Commission that the Generic Enabler Specification have to be published upon royalty-free conditions. I think, I do not understand fully your comment. If SAP implements SAP GE Specs, why should we pay ourselves? It would only make sense, if SAP pays IBM for implementation of IBM?s specs. And exactly that is what the EC would like to see with regard to the specifications. We have further protection with regard to patents, that you can check via the publication process if there are patents enclosed upon which you do not would like to see free implementations. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Mittwoch, 3. August 2011 18:00 An: Suzanne Erez; LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Schweppe, Kathrin Betreff: RE: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Susanne, all, Even if the specs themselves are not patentable, which is likely, the provision says that ?other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. The 2nd paragraph merely states that a Party may develop implementations and require royalties for their use. But the other Parties are still not paying for their own implementations. Which we don't know yet. Which could read on BG patents of the licensing party. I still think that some clarification may be in order, or possibly updates to the Background exclusion lists. Please let me know what you think. Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Mittwoch, 3. August 2011 15:31 To: LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Heitto, Jonas (Jonas); Schweppe, Kathrin Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Luis, If I may make a comment to Jonas. Jonas - you asked a very very good question, that made me pause, and double check with our technical people that I was on the right path. We at IBM agree with Kathrin. We do not see having patent applications being created or covering the Generic Enabler SPECIFICATIONS. We do have Background and will have Sideground, patents on the Generic Enablers THEMSELVES, but not on the SPECIFICAIONS. We do not foresee the Specifications being so detailed as to being patentable - they will simply list requirements. So, as Kathrin said, since each Party has reserved the rights to license the Generic Enablers themselves, and since you so rightly pointed out the Exclusion List, we feel that we are in good shape. wow, good comment. Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Schweppe, Kathrin" , "Heitto, Jonas (Jonas)" Cc: "fiware-legal at lists.fi-ware.eu" Date: 08/03/11 11:06 AM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Jonas and all, Nothing to add to Kathrin explanation. Further, this clause was widely discussed and finally agreed long time ago. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) De: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] En nombre de Schweppe, Kathrin Enviado el: mi?rcoles, 03 de agosto de 2011 9:56 Para: Heitto, Jonas (Jonas); fabian.perpeet at zv.fraunhofer.de CC: fiware-legal at lists.fi-ware.eu Asunto: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Dear Jonas, dear all, I understand your concerns, we had similar concerns and therefore this section was included: For further sake of clarity, Parties including those Parties that assisted in generating the FI-WARE Generic Enabler Specifications may, but are not obliged to, develop implementations or reference implementations of FI-WARE Generic Enabler Specifications and request licensing terms other than open and royalty free for such, e.g. under FRAND (Fair, Reasonable and Non-Discriminatory) terms subject to the provisions of Article 4.2.3 and 4.2.4 below. The Parties may release their implementations or reference implementations as open source or closed source, at their sole discretion. Then, the Generic Enabler Specification is only a description about technical requirements and the like. Do you see that a patent could be included there? Taking all these things into account, do you think we need further clarification here and if so, can you please propose some wording? Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com ] Gesendet: Dienstag, 2. August 2011 18:42 An: Schweppe, Kathrin; fabian.perpeet at zv.fraunhofer.de Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; MELZI, RAFFAELLA (RAFFAELLA); mathilde.dubesset at technicolor.com; STAMM, Markus (Markus); Wuenstel, Klaus (Klaus); nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: RE: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I?m opening a new thread lest we lose ourselves in the multitude of exchanges on various subjects. My concern relates to the 2nd paragpagh of Section 4.1: Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Would people be against adding a clarification that this generous covenant does not imply royalty free licensing of Background and Sideground patents, should any read on such implementations? Or does everybody rely on their Background and Sideground exclusions? Regards Jonas Dr. Jonas Heitto, LL.M. ALCATEL-LUCENT Corporate IP Counsel INTELLECTUAL PROPERTY & STANDARDS ( Tel +49 711 821 44561 2 Fax +49 711 821 44587 jonas.heitto at alcatel-lucent.com This e-mail message and any attachment is confidential and is intended for use only by the named addressees above. This message may contain information that is confidential, privileged, attorney work product, or exempt from disclosure under applicable law. If you are not an intended recipient, then you are prohibited from reading or copying any part of this message or opening, reading or copying any attachment. If you have received this message in error, or are not a named recipient, please immediately notify the sender by reply mail and delete this e-mail from your computer. Thank you for your cooperation. Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal From benedicte.pascal at intel.com Thu Aug 11 14:31:56 2011 From: benedicte.pascal at intel.com (Pascal, Benedicte) Date: Thu, 11 Aug 2011 12:31:56 +0000 Subject: [Fiware-legal] Fw: Consortium Agreement FI-WARE / Generic Enabler Specs In-Reply-To: <792E9553498020448922DADDFA5AD2A31CD803C0@DAPHNIS.office.hd> References: <7ED7B27AF3542948BAB7BCD179A7677C10CCE8A762@DEWDFECCR03.wdf.sap.corp> <792E9553498020448922DADDFA5AD2A31CD803C0@DAPHNIS.office.hd> Message-ID: Luis and all, Intel also supports this approach and would like to see the below wording added to the consortium agreement. Best regards, B?n?dicte Pascal EMEA Legal Dept. -----Original Message----- From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of Barbara Gromer Sent: Thursday, August 11, 2011 12:33 PM To: Schweppe, Kathrin; Suzanne Erez; LUIS GARCIA GARCIA; JOSE JIMENEZ DELGADO; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: [Fiware-legal] Fw: Consortium Agreement FI-WARE / Generic Enabler Specs Importance: High Dear all, NEC also agrees with IBM and SAP. I would be happy to see Suzanne's wording "[...] DISCLOSED BY the FI-WARE Generic Enabler Specifications on a royalty-free basis." included in the text (see Suzanne's proposal below). The reason is that it only clarifies everybody's understanding and intention and would make things clear and bullet-proof in any legal proceedings (which hopefully may never come). Kind regards, Barbara Barbara Gromer NEC Laboratories Europe Tel. +49 6221 43 42 161 Barbara.Gromer at neclab.eu Kurfuersten-Anlage 36 D-69115 Heidelberg GERMANY Registered Office: NEC House, 1 Victoria Road, London W3 6BL , registered in England 2832014 -----Original Message----- From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of Schweppe, Kathrin Sent: Donnerstag, 4. August 2011 13:30 To: Suzanne Erez; LUIS GARCIA GARCIA; JOSE JIMENEZ DELGADO; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: [Fiware-legal] Fw: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I agree with Suzanne. We should fix this mistake. I think Suzannes proposal works and can easily be included. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. -----Urspr?ngliche Nachricht----- Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von Suzanne Erez Gesendet: Donnerstag, 4. August 2011 12:41 An: LUIS GARCIA GARCIA; JOSE JIMENEZ DELGADO; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Betreff: [Fiware-legal] Fw: Consortium Agreement FI-WARE / Generic Enabler Specs Luis, What if we do a minor amendment of only 2 words? And add the words DISCLOSED BY? Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations DISCLOSED BY the FI-WARE Generic Enabler Specifications on a royalty-free basis. So if it is not disclosed in the spec, it is not Royalty Free. Does that work Luis? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. ----- Forwarded by Suzanne Erez/Haifa/IBM on 08/04/11 01:30 PM ----- From: Suzanne Erez/Haifa/IBM at IBMIL To: LUIS GARCIA GARCIA Cc: JOSE JIMENEZ DELGADO , "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" Date: 08/04/11 01:29 PM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Sent by: fiware-legal-bounces at lists.fi-ware.eu Luis, At times we too make mistakes, even if they are over 1100 e-mails. I think we made a mistake. Question - (knowing that this has NOTHING to do with Access Rights - since it doesn't even mention Access Rights) when you read this - If a Party creates an implementation of the specification - and this implementation does MORE than the specification - is IBM allowed to request Royalties for that implementation? Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Can I sue someone for using my patents. They are not BACKGROUND since I never brought them into the project. This is another Party creating an implementation that uses my patents. And this implementation is not even for the project. What do you think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL Cc: "Schweppe, Kathrin" , "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" , PILAR PLASENCIA MAESO , JUAN JOSE HIERRO SUREDA , JOSE JIMENEZ DELGADO Date: 08/04/11 01:06 PM Subject: RE: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, Although I understand your concerns, I think that the clarification is not necessary. Obviously if someone implements a GES using other?s proprietary BG; the owner of that BG may request royalties. What I mean is that, from our perspective, the question is out of the scope of this agreement. Remember that you?re talking about licenses that are not ?needed? (if they would become ?needed? the CA establishes the applicable terms) so, if they are not needed, they will be granted only if both parties mutually and freely agree in the applicable terms. Nobody can freely use other?s partners proprietary technology (patentable or not) without that partner?s prior consent. This is obvious. Apart from this argument, don?t forget the following: a) This clause was widely negotiated and discussed in a huge number of mails (I have 1100 mails in my FIWARE folder, a good number of them referred to this clause) and conversations. It was not discussed during the last week?s audios as it was considered as agreed. b) We must be consequent. From our perspective it is not a deal-breaker point as it refers to an obvious situation. If we open again the CA to new discussions regarding clauses that are already agreed and closed, this CA will never reach an end. c) Further, I?ve received clear, firm and irrevocable instructions, to avoid any new modification that it?s not a typo. It? s time to start with the signature process; we just cannot afford the time for further discussions . Sorry if my words sound too strong . It?s not my intention to upset anybody. All of you know that we?ve tried to get, as far as possible, a balanced agreement and I think that we get a very very good agreement, but we cannot turn it into the ?neverending? agreement. We kindly invite you to accept the clause as it is now and to move forward in the project. I also kindly ask the partners that still have not sent their contact/signing details to send them to me ASAP. During next week, we?ll send the clean version with the signature details. Best regards Luis De: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Enviado el: jueves, 04 de agosto de 2011 10:56 Para: Suzanne Erez CC: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Asunto: RE: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Susanne, While I would prefer to re-write the entire section, I understand the complications this would cause. Therefore I think your suggestion of a disclaimer is a good solution. I would just slightly reword as follows, added words underlined. I think the expression "covered" was not helping since all implementations would be covered by the spec. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY (INCLUDING PATENTABLE INVENTIONS) NOT DISCLOSED BY THE FIWARE GENERIC ENABLER SPECIFICATION. I hope that the parties seconding Suzanne's original disclaimer can also find this here satisfacory. I am still looking for the Commission's RF licensing requirement. GA Annex 1 mentioned GE Specs twice (p. 30 and p. 240) but no mention of royalty free, only "Open Specifications". Regards Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Donnerstag, 4. August 2011 06:57 To: Heitto, Jonas (Jonas) Cc: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Jonas, Ah ha, I think I understand. You are saying that while the specs themselves may not cover patentable material, the implementation once created - may have material IN ADDITION to the specification, and that may cover Background patents. So I as the implementer does not need to pay for implementing the bare specification, but if my implementation covers MORE than just the specification, and this MORE is covered by Background patents, for that we should pay. Another way to say it is that - there are many many ways to implement the specification. The specification is only the bare minimum (e.g. must have black walls). If my implementation has only black walls, there is no royalty. But if the walls are black with white stripes, and white stripes are patented, the party owning that patent should be able tor request payment. I know for IBM - we have a specific implementation of the Generic Enabler Specification. There will be many many ways to implement the specification. If someone creates their own implementation that covers the specs, and does it in a different way - more power to them. But if someone creates an implementation that copies what IBM does, and that is NOT in the spec, I should be able to ask for royalties, or request that this someone not infringe my patents. IS THIS WHAT YOU MEAN? Luis - our intention was that parties should contribute the specification royalty free, but I do not think it was our intention that if the implementation covers OTHER material that is patentable, that too must be royalty free. Below in caps is my suggestion. Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES THAT CONTRIBUTE TO THE SPECIFICATION ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY NOT COVERED BY THE FIWARE GENERIC ENABLER SPECIFICATION. (anyone know a better way to say this?) What do you all think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL, LUIS GARCIA GARCIA Cc: "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" Date: 08/03/11 07:13 PM Subject: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear Jonas, as far as I understood it, and please someone should correct me, if I am wrong, it was a mandatory prerequisite from the European Commission that the Generic Enabler Specification have to be published upon royalty-free conditions. I think, I do not understand fully your comment. If SAP implements SAP GE Specs, why should we pay ourselves? It would only make sense, if SAP pays IBM for implementation of IBM?s specs. And exactly that is what the EC would like to see with regard to the specifications. We have further protection with regard to patents, that you can check via the publication process if there are patents enclosed upon which you do not would like to see free implementations. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Mittwoch, 3. August 2011 18:00 An: Suzanne Erez; LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Schweppe, Kathrin Betreff: RE: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Susanne, all, Even if the specs themselves are not patentable, which is likely, the provision says that ?other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. The 2nd paragraph merely states that a Party may develop implementations and require royalties for their use. But the other Parties are still not paying for their own implementations. Which we don't know yet. Which could read on BG patents of the licensing party. I still think that some clarification may be in order, or possibly updates to the Background exclusion lists. Please let me know what you think. Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Mittwoch, 3. August 2011 15:31 To: LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Heitto, Jonas (Jonas); Schweppe, Kathrin Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Luis, If I may make a comment to Jonas. Jonas - you asked a very very good question, that made me pause, and double check with our technical people that I was on the right path. We at IBM agree with Kathrin. We do not see having patent applications being created or covering the Generic Enabler SPECIFICATIONS. We do have Background and will have Sideground, patents on the Generic Enablers THEMSELVES, but not on the SPECIFICAIONS. We do not foresee the Specifications being so detailed as to being patentable - they will simply list requirements. So, as Kathrin said, since each Party has reserved the rights to license the Generic Enablers themselves, and since you so rightly pointed out the Exclusion List, we feel that we are in good shape. wow, good comment. Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Schweppe, Kathrin" , "Heitto, Jonas (Jonas)" Cc: "fiware-legal at lists.fi-ware.eu" Date: 08/03/11 11:06 AM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Jonas and all, Nothing to add to Kathrin explanation. Further, this clause was widely discussed and finally agreed long time ago. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) De: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] En nombre de Schweppe, Kathrin Enviado el: mi?rcoles, 03 de agosto de 2011 9:56 Para: Heitto, Jonas (Jonas); fabian.perpeet at zv.fraunhofer.de CC: fiware-legal at lists.fi-ware.eu Asunto: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Dear Jonas, dear all, I understand your concerns, we had similar concerns and therefore this section was included: For further sake of clarity, Parties including those Parties that assisted in generating the FI-WARE Generic Enabler Specifications may, but are not obliged to, develop implementations or reference implementations of FI-WARE Generic Enabler Specifications and request licensing terms other than open and royalty free for such, e.g. under FRAND (Fair, Reasonable and Non-Discriminatory) terms subject to the provisions of Article 4.2.3 and 4.2.4 below. The Parties may release their implementations or reference implementations as open source or closed source, at their sole discretion. Then, the Generic Enabler Specification is only a description about technical requirements and the like. Do you see that a patent could be included there? Taking all these things into account, do you think we need further clarification here and if so, can you please propose some wording? Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com ] Gesendet: Dienstag, 2. August 2011 18:42 An: Schweppe, Kathrin; fabian.perpeet at zv.fraunhofer.de Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; MELZI, RAFFAELLA (RAFFAELLA); mathilde.dubesset at technicolor.com; STAMM, Markus (Markus); Wuenstel, Klaus (Klaus); nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: RE: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I?m opening a new thread lest we lose ourselves in the multitude of exchanges on various subjects. My concern relates to the 2nd paragpagh of Section 4.1: Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Would people be against adding a clarification that this generous covenant does not imply royalty free licensing of Background and Sideground patents, should any read on such implementations? Or does everybody rely on their Background and Sideground exclusions? Regards Jonas Dr. Jonas Heitto, LL.M. ALCATEL-LUCENT Corporate IP Counsel INTELLECTUAL PROPERTY & STANDARDS ( Tel +49 711 821 44561 2 Fax +49 711 821 44587 jonas.heitto at alcatel-lucent.com This e-mail message and any attachment is confidential and is intended for use only by the named addressees above. This message may contain information that is confidential, privileged, attorney work product, or exempt from disclosure under applicable law. If you are not an intended recipient, then you are prohibited from reading or copying any part of this message or opening, reading or copying any attachment. If you have received this message in error, or are not a named recipient, please immediately notify the sender by reply mail and delete this e-mail from your computer. Thank you for your cooperation. Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. 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We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal --------------------------------------------------------------------- Intel Corporation (UK) Limited Registered No. 1134945 (England) Registered Office: Pipers Way, Swindon SN3 1RJ VAT No: 860 2173 47 This e-mail and any attachments may contain confidential material for the sole use of the intended recipient(s). Any review or distribution by others is strictly prohibited. If you are not the intended recipient, please contact the sender and delete all copies. From beatriz.aznar at atos.net Thu Aug 11 14:43:03 2011 From: beatriz.aznar at atos.net (Beatriz Aznar Gimeno) Date: Thu, 11 Aug 2011 14:43:03 +0200 Subject: [Fiware-legal] Fw: Consortium Agreement FI-WARE / Generic EnablerSpecs In-Reply-To: References: <7ED7B27AF3542948BAB7BCD179A7677C10CCE8A762@DEWDFECCR03.wdf.sap.corp> <792E9553498020448922DADDFA5AD2A31CD803C0@DAPHNIS.office.hd> Message-ID: Dear all, As far as ATOS is concerned, my understanding of this paragraph was exactly the one explained by Luis some days ago. However, ATOS will not impede moving to a clearer wording. So, in case the modification is implemented I can agree with any of the two options proposed by Suzanne on August 4th, (that is, adding "[....]DISCLOSING by the FI-WARE Generic Enabler Specifications on a royalty-free basis." or adding "[...] of ONLY the FI-WARE Generic Enabler Specifications on a royalty-free basis."). Personally I would prefer the "ONLY" option, but I can live with the "DISCLOSING BY" option too. Best regards, Beatriz Aznar ATOS Legal and Compliance Department IBERIA Responsible of Compliance ATOS ORIGIN SAE +34.618.77.55.06 NEW email account: beatriz.aznar at atos.net -----Original Message----- From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of Pascal, Benedicte Sent: jueves, 11 de agosto de 2011 14:32 To: Barbara Gromer; Schweppe, Kathrin; Suzanne Erez; LUIS GARCIA GARCIA; JOSE JIMENEZ DELGADO; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: [Fiware-legal] Fw: Consortium Agreement FI-WARE / Generic EnablerSpecs Luis and all, Intel also supports this approach and would like to see the below wording added to the consortium agreement. Best regards, B?n?dicte Pascal EMEA Legal Dept. -----Original Message----- From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of Barbara Gromer Sent: Thursday, August 11, 2011 12:33 PM To: Schweppe, Kathrin; Suzanne Erez; LUIS GARCIA GARCIA; JOSE JIMENEZ DELGADO; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: [Fiware-legal] Fw: Consortium Agreement FI-WARE / Generic Enabler Specs Importance: High Dear all, NEC also agrees with IBM and SAP. I would be happy to see Suzanne's wording "[...] DISCLOSED BY the FI-WARE Generic Enabler Specifications on a royalty-free basis." included in the text (see Suzanne's proposal below). The reason is that it only clarifies everybody's understanding and intention and would make things clear and bullet-proof in any legal proceedings (which hopefully may never come). Kind regards, Barbara Barbara Gromer NEC Laboratories Europe Tel. +49 6221 43 42 161 Barbara.Gromer at neclab.eu Kurfuersten-Anlage 36 D-69115 Heidelberg GERMANY Registered Office: NEC House, 1 Victoria Road, London W3 6BL , registered in England 2832014 -----Original Message----- From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of Schweppe, Kathrin Sent: Donnerstag, 4. August 2011 13:30 To: Suzanne Erez; LUIS GARCIA GARCIA; JOSE JIMENEZ DELGADO; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: [Fiware-legal] Fw: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I agree with Suzanne. We should fix this mistake. I think Suzannes proposal works and can easily be included. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. -----Urspr?ngliche Nachricht----- Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von Suzanne Erez Gesendet: Donnerstag, 4. August 2011 12:41 An: LUIS GARCIA GARCIA; JOSE JIMENEZ DELGADO; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Betreff: [Fiware-legal] Fw: Consortium Agreement FI-WARE / Generic Enabler Specs Luis, What if we do a minor amendment of only 2 words? And add the words DISCLOSED BY? Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations DISCLOSED BY the FI-WARE Generic Enabler Specifications on a royalty-free basis. So if it is not disclosed in the spec, it is not Royalty Free. Does that work Luis? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. ----- Forwarded by Suzanne Erez/Haifa/IBM on 08/04/11 01:30 PM ----- From: Suzanne Erez/Haifa/IBM at IBMIL To: LUIS GARCIA GARCIA Cc: JOSE JIMENEZ DELGADO , "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" Date: 08/04/11 01:29 PM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Sent by: fiware-legal-bounces at lists.fi-ware.eu Luis, At times we too make mistakes, even if they are over 1100 e-mails. I think we made a mistake. Question - (knowing that this has NOTHING to do with Access Rights - since it doesn't even mention Access Rights) when you read this - If a Party creates an implementation of the specification - and this implementation does MORE than the specification - is IBM allowed to request Royalties for that implementation? Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Can I sue someone for using my patents. They are not BACKGROUND since I never brought them into the project. This is another Party creating an implementation that uses my patents. And this implementation is not even for the project. What do you think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL Cc: "Schweppe, Kathrin" , "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" , PILAR PLASENCIA MAESO , JUAN JOSE HIERRO SUREDA , JOSE JIMENEZ DELGADO Date: 08/04/11 01:06 PM Subject: RE: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, Although I understand your concerns, I think that the clarification is not necessary. Obviously if someone implements a GES using other?s proprietary BG; the owner of that BG may request royalties. What I mean is that, from our perspective, the question is out of the scope of this agreement. Remember that you?re talking about licenses that are not ?needed? (if they would become ?needed? the CA establishes the applicable terms) so, if they are not needed, they will be granted only if both parties mutually and freely agree in the applicable terms. Nobody can freely use other?s partners proprietary technology (patentable or not) without that partner?s prior consent. This is obvious. Apart from this argument, don?t forget the following: a) This clause was widely negotiated and discussed in a huge number of mails (I have 1100 mails in my FIWARE folder, a good number of them referred to this clause) and conversations. It was not discussed during the last week?s audios as it was considered as agreed. b) We must be consequent. From our perspective it is not a deal-breaker point as it refers to an obvious situation. If we open again the CA to new discussions regarding clauses that are already agreed and closed, this CA will never reach an end. c) Further, I?ve received clear, firm and irrevocable instructions, to avoid any new modification that it?s not a typo. It? s time to start with the signature process; we just cannot afford the time for further discussions . Sorry if my words sound too strong . It?s not my intention to upset anybody. All of you know that we?ve tried to get, as far as possible, a balanced agreement and I think that we get a very very good agreement, but we cannot turn it into the ?neverending? agreement. We kindly invite you to accept the clause as it is now and to move forward in the project. I also kindly ask the partners that still have not sent their contact/signing details to send them to me ASAP. During next week, we?ll send the clean version with the signature details. Best regards Luis De: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Enviado el: jueves, 04 de agosto de 2011 10:56 Para: Suzanne Erez CC: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Asunto: RE: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Susanne, While I would prefer to re-write the entire section, I understand the complications this would cause. Therefore I think your suggestion of a disclaimer is a good solution. I would just slightly reword as follows, added words underlined. I think the expression "covered" was not helping since all implementations would be covered by the spec. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY (INCLUDING PATENTABLE INVENTIONS) NOT DISCLOSED BY THE FIWARE GENERIC ENABLER SPECIFICATION. I hope that the parties seconding Suzanne's original disclaimer can also find this here satisfacory. I am still looking for the Commission's RF licensing requirement. GA Annex 1 mentioned GE Specs twice (p. 30 and p. 240) but no mention of royalty free, only "Open Specifications". Regards Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Donnerstag, 4. August 2011 06:57 To: Heitto, Jonas (Jonas) Cc: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Jonas, Ah ha, I think I understand. You are saying that while the specs themselves may not cover patentable material, the implementation once created - may have material IN ADDITION to the specification, and that may cover Background patents. So I as the implementer does not need to pay for implementing the bare specification, but if my implementation covers MORE than just the specification, and this MORE is covered by Background patents, for that we should pay. Another way to say it is that - there are many many ways to implement the specification. The specification is only the bare minimum (e.g. must have black walls). If my implementation has only black walls, there is no royalty. But if the walls are black with white stripes, and white stripes are patented, the party owning that patent should be able tor request payment. I know for IBM - we have a specific implementation of the Generic Enabler Specification. There will be many many ways to implement the specification. If someone creates their own implementation that covers the specs, and does it in a different way - more power to them. But if someone creates an implementation that copies what IBM does, and that is NOT in the spec, I should be able to ask for royalties, or request that this someone not infringe my patents. IS THIS WHAT YOU MEAN? Luis - our intention was that parties should contribute the specification royalty free, but I do not think it was our intention that if the implementation covers OTHER material that is patentable, that too must be royalty free. Below in caps is my suggestion. Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES THAT CONTRIBUTE TO THE SPECIFICATION ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY NOT COVERED BY THE FIWARE GENERIC ENABLER SPECIFICATION. (anyone know a better way to say this?) What do you all think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL, LUIS GARCIA GARCIA Cc: "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" Date: 08/03/11 07:13 PM Subject: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear Jonas, as far as I understood it, and please someone should correct me, if I am wrong, it was a mandatory prerequisite from the European Commission that the Generic Enabler Specification have to be published upon royalty-free conditions. I think, I do not understand fully your comment. If SAP implements SAP GE Specs, why should we pay ourselves? It would only make sense, if SAP pays IBM for implementation of IBM?s specs. And exactly that is what the EC would like to see with regard to the specifications. We have further protection with regard to patents, that you can check via the publication process if there are patents enclosed upon which you do not would like to see free implementations. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Mittwoch, 3. August 2011 18:00 An: Suzanne Erez; LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Schweppe, Kathrin Betreff: RE: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Susanne, all, Even if the specs themselves are not patentable, which is likely, the provision says that ?other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. The 2nd paragraph merely states that a Party may develop implementations and require royalties for their use. But the other Parties are still not paying for their own implementations. Which we don't know yet. Which could read on BG patents of the licensing party. I still think that some clarification may be in order, or possibly updates to the Background exclusion lists. Please let me know what you think. Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Mittwoch, 3. August 2011 15:31 To: LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Heitto, Jonas (Jonas); Schweppe, Kathrin Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Luis, If I may make a comment to Jonas. Jonas - you asked a very very good question, that made me pause, and double check with our technical people that I was on the right path. We at IBM agree with Kathrin. We do not see having patent applications being created or covering the Generic Enabler SPECIFICATIONS. We do have Background and will have Sideground, patents on the Generic Enablers THEMSELVES, but not on the SPECIFICAIONS. We do not foresee the Specifications being so detailed as to being patentable - they will simply list requirements. So, as Kathrin said, since each Party has reserved the rights to license the Generic Enablers themselves, and since you so rightly pointed out the Exclusion List, we feel that we are in good shape. wow, good comment. Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Schweppe, Kathrin" , "Heitto, Jonas (Jonas)" Cc: "fiware-legal at lists.fi-ware.eu" Date: 08/03/11 11:06 AM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Jonas and all, Nothing to add to Kathrin explanation. Further, this clause was widely discussed and finally agreed long time ago. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) De: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] En nombre de Schweppe, Kathrin Enviado el: mi?rcoles, 03 de agosto de 2011 9:56 Para: Heitto, Jonas (Jonas); fabian.perpeet at zv.fraunhofer.de CC: fiware-legal at lists.fi-ware.eu Asunto: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Dear Jonas, dear all, I understand your concerns, we had similar concerns and therefore this section was included: For further sake of clarity, Parties including those Parties that assisted in generating the FI-WARE Generic Enabler Specifications may, but are not obliged to, develop implementations or reference implementations of FI-WARE Generic Enabler Specifications and request licensing terms other than open and royalty free for such, e.g. under FRAND (Fair, Reasonable and Non-Discriminatory) terms subject to the provisions of Article 4.2.3 and 4.2.4 below. The Parties may release their implementations or reference implementations as open source or closed source, at their sole discretion. Then, the Generic Enabler Specification is only a description about technical requirements and the like. Do you see that a patent could be included there? Taking all these things into account, do you think we need further clarification here and if so, can you please propose some wording? Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com ] Gesendet: Dienstag, 2. August 2011 18:42 An: Schweppe, Kathrin; fabian.perpeet at zv.fraunhofer.de Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; MELZI, RAFFAELLA (RAFFAELLA); mathilde.dubesset at technicolor.com; STAMM, Markus (Markus); Wuenstel, Klaus (Klaus); nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: RE: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I?m opening a new thread lest we lose ourselves in the multitude of exchanges on various subjects. My concern relates to the 2nd paragpagh of Section 4.1: Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Would people be against adding a clarification that this generous covenant does not imply royalty free licensing of Background and Sideground patents, should any read on such implementations? Or does everybody rely on their Background and Sideground exclusions? Regards Jonas Dr. Jonas Heitto, LL.M. 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Aunque se esfuerza al maximo por mantener su red libre de virus, el emisor no puede garantizar nada al respecto y no sera responsable de cualesquiera danos que puedan resultar de una transmision de virus. ------------------------------------------------------------------ From irene.glueck-otte at siemens.com Thu Aug 11 13:46:04 2011 From: irene.glueck-otte at siemens.com (Glueck-Otte, Irene) Date: Thu, 11 Aug 2011 13:46:04 +0200 Subject: [Fiware-legal] Fw: Consortium Agreement FI-WARE / Generic Enabler Specs In-Reply-To: <792E9553498020448922DADDFA5AD2A31CD803C0@DAPHNIS.office.hd> References: <7ED7B27AF3542948BAB7BCD179A7677C10CCE8A762@DEWDFECCR03.wdf.sap.corp> <792E9553498020448922DADDFA5AD2A31CD803C0@DAPHNIS.office.hd> Message-ID: <29312CB016E934488C4DB0BA722E848D0510AF581B@DEMCHP99E34MSX.ww902.siemens.net> Dear all, please note that Siemens is of the opinion that we should not change anything in the text of the CA due to the issue Generic Enabler. For us it would not be a disadvantage to get (and to give) more than the specification of the Generic Enablers royalty-free. We support the coordinator in this issue. Mit freundlichen Gr??en Irene Gl?ck-Otte Siemens AG Corporate Legal and Compliance CL CS CU CT&IP Otto-Hahn-Ring 6 81739 M?nchen, Deutschland Tel.: +49 (89) 636-33276 Fax: +49 (89) 636-50441 Mobil: +49 (1522) 2797796 mailto:irene.glueck-otte at siemens.com Siemens Aktiengesellschaft: Vorsitzender des Aufsichtsrats: Gerhard Cromme; Vorstand: Peter L?scher, Vorsitzender; Roland Busch, Brigitte Ederer, Klaus Helmrich, Joe Kaeser, Barbara Kux, Hermann Requardt, Siegfried Russwurm, Peter Y. Solmssen, Michael S??; Sitz der Gesellschaft: Berlin und M?nchen, Deutschland; Registergericht: Berlin Charlottenburg, HRB 12300, M?nchen, HRB 6684; WEEE-Reg.-Nr. DE 23691322 -----Original Message----- From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of Barbara Gromer Sent: Thursday, August 11, 2011 1:33 PM To: Schweppe, Kathrin; Suzanne Erez; LUIS GARCIA GARCIA; JOSE JIMENEZ DELGADO; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: [Fiware-legal] Fw: Consortium Agreement FI-WARE / Generic Enabler Specs Importance: High Dear all, NEC also agrees with IBM and SAP. I would be happy to see Suzanne's wording "[...] DISCLOSED BY the FI-WARE Generic Enabler Specifications on a royalty-free basis." included in the text (see Suzanne's proposal below). The reason is that it only clarifies everybody's understanding and intention and would make things clear and bullet-proof in any legal proceedings (which hopefully may never come). Kind regards, Barbara Barbara Gromer NEC Laboratories Europe Tel. +49 6221 43 42 161 Barbara.Gromer at neclab.eu Kurfuersten-Anlage 36 D-69115 Heidelberg GERMANY Registered Office: NEC House, 1 Victoria Road, London W3 6BL , registered in England 2832014 -----Original Message----- From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of Schweppe, Kathrin Sent: Donnerstag, 4. August 2011 13:30 To: Suzanne Erez; LUIS GARCIA GARCIA; JOSE JIMENEZ DELGADO; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: [Fiware-legal] Fw: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I agree with Suzanne. We should fix this mistake. I think Suzannes proposal works and can easily be included. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. -----Urspr?ngliche Nachricht----- Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von Suzanne Erez Gesendet: Donnerstag, 4. August 2011 12:41 An: LUIS GARCIA GARCIA; JOSE JIMENEZ DELGADO; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Betreff: [Fiware-legal] Fw: Consortium Agreement FI-WARE / Generic Enabler Specs Luis, What if we do a minor amendment of only 2 words? And add the words DISCLOSED BY? Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations DISCLOSED BY the FI-WARE Generic Enabler Specifications on a royalty-free basis. So if it is not disclosed in the spec, it is not Royalty Free. Does that work Luis? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. ----- Forwarded by Suzanne Erez/Haifa/IBM on 08/04/11 01:30 PM ----- From: Suzanne Erez/Haifa/IBM at IBMIL To: LUIS GARCIA GARCIA Cc: JOSE JIMENEZ DELGADO , "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" Date: 08/04/11 01:29 PM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Sent by: fiware-legal-bounces at lists.fi-ware.eu Luis, At times we too make mistakes, even if they are over 1100 e-mails. I think we made a mistake. Question - (knowing that this has NOTHING to do with Access Rights - since it doesn't even mention Access Rights) when you read this - If a Party creates an implementation of the specification - and this implementation does MORE than the specification - is IBM allowed to request Royalties for that implementation? Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Can I sue someone for using my patents. They are not BACKGROUND since I never brought them into the project. This is another Party creating an implementation that uses my patents. And this implementation is not even for the project. What do you think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL Cc: "Schweppe, Kathrin" , "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" , PILAR PLASENCIA MAESO , JUAN JOSE HIERRO SUREDA , JOSE JIMENEZ DELGADO Date: 08/04/11 01:06 PM Subject: RE: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, Although I understand your concerns, I think that the clarification is not necessary. Obviously if someone implements a GES using other?s proprietary BG; the owner of that BG may request royalties. What I mean is that, from our perspective, the question is out of the scope of this agreement. Remember that you?re talking about licenses that are not "needed" (if they would become "needed" the CA establishes the applicable terms) so, if they are not needed, they will be granted only if both parties mutually and freely agree in the applicable terms. Nobody can freely use other?s partners proprietary technology (patentable or not) without that partner?s prior consent. This is obvious. Apart from this argument, don't forget the following: a) This clause was widely negotiated and discussed in a huge number of mails (I have 1100 mails in my FIWARE folder, a good number of them referred to this clause) and conversations. It was not discussed during the last week?s audios as it was considered as agreed. b) We must be consequent. From our perspective it is not a deal-breaker point as it refers to an obvious situation. If we open again the CA to new discussions regarding clauses that are already agreed and closed, this CA will never reach an end. c) Further, I?ve received clear, firm and irrevocable instructions, to avoid any new modification that it?s not a typo. It? s time to start with the signature process; we just cannot afford the time for further discussions . Sorry if my words sound too strong . It?s not my intention to upset anybody. All of you know that we?ve tried to get, as far as possible, a balanced agreement and I think that we get a very very good agreement, but we cannot turn it into the "neverending" agreement. We kindly invite you to accept the clause as it is now and to move forward in the project. I also kindly ask the partners that still have not sent their contact/signing details to send them to me ASAP. During next week, we?ll send the clean version with the signature details. Best regards Luis De: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Enviado el: jueves, 04 de agosto de 2011 10:56 Para: Suzanne Erez CC: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Asunto: RE: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Susanne, While I would prefer to re-write the entire section, I understand the complications this would cause. Therefore I think your suggestion of a disclaimer is a good solution. I would just slightly reword as follows, added words underlined. I think the expression "covered" was not helping since all implementations would be covered by the spec. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY (INCLUDING PATENTABLE INVENTIONS) NOT DISCLOSED BY THE FIWARE GENERIC ENABLER SPECIFICATION. I hope that the parties seconding Suzanne's original disclaimer can also find this here satisfacory. I am still looking for the Commission's RF licensing requirement. GA Annex 1 mentioned GE Specs twice (p. 30 and p. 240) but no mention of royalty free, only "Open Specifications". Regards Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Donnerstag, 4. August 2011 06:57 To: Heitto, Jonas (Jonas) Cc: Schweppe, Kathrin; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Subject: Re: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Jonas, Ah ha, I think I understand. You are saying that while the specs themselves may not cover patentable material, the implementation once created - may have material IN ADDITION to the specification, and that may cover Background patents. So I as the implementer does not need to pay for implementing the bare specification, but if my implementation covers MORE than just the specification, and this MORE is covered by Background patents, for that we should pay. Another way to say it is that - there are many many ways to implement the specification. The specification is only the bare minimum (e.g. must have black walls). If my implementation has only black walls, there is no royalty. But if the walls are black with white stripes, and white stripes are patented, the party owning that patent should be able tor request payment. I know for IBM - we have a specific implementation of the Generic Enabler Specification. There will be many many ways to implement the specification. If someone creates their own implementation that covers the specs, and does it in a different way - more power to them. But if someone creates an implementation that copies what IBM does, and that is NOT in the spec, I should be able to ask for royalties, or request that this someone not infringe my patents. IS THIS WHAT YOU MEAN? Luis - our intention was that parties should contribute the specification royalty free, but I do not think it was our intention that if the implementation covers OTHER material that is patentable, that too must be royalty free. Below in caps is my suggestion. Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. HOWEVER, NOT WITHSTANDING THE ABOVE, PARTIES THAT CONTRIBUTE TO THE SPECIFICATION ARE NOT BARRED FROM REQUESTING ROYALTIES, OR PROTECTING THEIR RIGHTS, FOR USE OF TECHNOLOGY NOT COVERED BY THE FIWARE GENERIC ENABLER SPECIFICATION. (anyone know a better way to say this?) What do you all think? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "Heitto, Jonas (Jonas)" , Suzanne Erez/Haifa/IBM at IBMIL, LUIS GARCIA GARCIA Cc: "fiware-legal at lists.fi-ware.eu" , "fiware-legal-bounces at lists.fi-ware.eu" Date: 08/03/11 07:13 PM Subject: AW: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Specs Dear Jonas, as far as I understood it, and please someone should correct me, if I am wrong, it was a mandatory prerequisite from the European Commission that the Generic Enabler Specification have to be published upon royalty-free conditions. I think, I do not understand fully your comment. If SAP implements SAP GE Specs, why should we pay ourselves? It would only make sense, if SAP pays IBM for implementation of IBM's specs. And exactly that is what the EC would like to see with regard to the specifications. We have further protection with regard to patents, that you can check via the publication process if there are patents enclosed upon which you do not would like to see free implementations. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com] Gesendet: Mittwoch, 3. August 2011 18:00 An: Suzanne Erez; LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Schweppe, Kathrin Betreff: RE: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Susanne, all, Even if the specs themselves are not patentable, which is likely, the provision says that ...other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. The 2nd paragraph merely states that a Party may develop implementations and require royalties for their use. But the other Parties are still not paying for their own implementations. Which we don't know yet. Which could read on BG patents of the licensing party. I still think that some clarification may be in order, or possibly updates to the Background exclusion lists. Please let me know what you think. Jonas -----Original Message----- From: Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Mittwoch, 3. August 2011 15:31 To: LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; Heitto, Jonas (Jonas); Schweppe, Kathrin Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Luis, If I may make a comment to Jonas. Jonas - you asked a very very good question, that made me pause, and double check with our technical people that I was on the right path. We at IBM agree with Kathrin. We do not see having patent applications being created or covering the Generic Enabler SPECIFICATIONS. We do have Background and will have Sideground, patents on the Generic Enablers THEMSELVES, but not on the SPECIFICAIONS. We do not foresee the Specifications being so detailed as to being patentable - they will simply list requirements. So, as Kathrin said, since each Party has reserved the rights to license the Generic Enablers themselves, and since you so rightly pointed out the Exclusion List, we feel that we are in good shape. wow, good comment. Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: LUIS GARCIA GARCIA To: "Schweppe, Kathrin" , "Heitto, Jonas (Jonas)" Cc: "fiware-legal at lists.fi-ware.eu" Date: 08/03/11 11:06 AM Subject: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Jonas and all, Nothing to add to Kathrin explanation. Further, this clause was widely discussed and finally agreed long time ago. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) De: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] En nombre de Schweppe, Kathrin Enviado el: mi?rcoles, 03 de agosto de 2011 9:56 Para: Heitto, Jonas (Jonas); fabian.perpeet at zv.fraunhofer.de CC: fiware-legal at lists.fi-ware.eu Asunto: Re: [Fiware-legal] Consortium Agreement FI-WARE / Generic Enabler Speclaudia.manderfeld at zv.fraunhofer.decs Dear Jonas, dear all, I understand your concerns, we had similar concerns and therefore this section was included: For further sake of clarity, Parties including those Parties that assisted in generating the FI-WARE Generic Enabler Specifications may, but are not obliged to, develop implementations or reference implementations of FI-WARE Generic Enabler Specifications and request licensing terms other than open and royalty free for such, e.g. under FRAND (Fair, Reasonable and Non-Discriminatory) terms subject to the provisions of Article 4.2.3 and 4.2.4 below. The Parties may release their implementations or reference implementations as open source or closed source, at their sole discretion. Then, the Generic Enabler Specification is only a description about technical requirements and the like. Do you see that a patent could be included there? Taking all these things into account, do you think we need further clarification here and if so, can you please propose some wording? Thank you and best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: Heitto, Jonas (Jonas) [mailto:jonas.heitto at alcatel-lucent.com ] Gesendet: Dienstag, 2. August 2011 18:42 An: Schweppe, Kathrin; fabian.perpeet at zv.fraunhofer.de Cc: claudia.manderfeld at zv.fraunhofer.de; klarissa.al-shorachi at izb.fraunhofer.de; jens.fiedler at fokus.fraunhofer.de; Barbara.Gromer at neclab.eu; jimenez at tid.es; anne.tissier at thalesgroup.com; susanne.weikl at nsn.com; SUZANNE at il.ibm.com; benedicte.pascal at intel.com; Bettina.Lehmann at telekom.de; GALITL at il.ibm.com; giampaoletti at dis.uniroma1.it; Hans.Einsiedler at telekom.de; henk.heijnen at technicolor.com; irene.glueck-otte at siemens.com; jdps at tid.es; jean-dominique.meunier at technicolor.com; jhierro at tid.es; MELZI, RAFFAELLA (RAFFAELLA); mathilde.dubesset at technicolor.com; STAMM, Markus (Markus); Wuenstel, Klaus (Klaus); nils-ivar.tjernberg at ericsson.com; Patricia.BEDOUI at fr.thalesgroup.com; philippe.schaeffer at inria.fr; pmaeso at tid.es; robert.sarrazin at orange-ftgroup.com; sedano at tid.es; Bohnert, Thomas Michael; werner.mohr at nsn.com; Gerteis, Wolfgang; WOLFSTAL at il.ibm.com; Yves-Marie.LePannerer at technicolor.com; Corinne.SIEUX at fr.thalesgroup.com; pascal.bisson at thalesgroup.com; Sylvie.RAYNAUD at fr.thalesgroup.com; laila.gide at thalesgroup.com; Beatriz.aznar at atos.net; lgg at tid.es Betreff: RE: Consortium Agreement FI-WARE / Generic Enabler Specs Dear all, I'm opening a new thread lest we lose ourselves in the multitude of exchanges on various subjects. My concern relates to the 2nd paragpagh of Section 4.1: Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, other Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. Would people be against adding a clarification that this generous covenant does not imply royalty free licensing of Background and Sideground patents, should any read on such implementations? Or does everybody rely on their Background and Sideground exclusions? Regards Jonas Dr. Jonas Heitto, LL.M. ALCATEL-LUCENT Corporate IP Counsel INTELLECTUAL PROPERTY & STANDARDS ( Tel +49 711 821 44561 2 Fax +49 711 821 44587 jonas.heitto at alcatel-lucent.com This e-mail message and any attachment is confidential and is intended for use only by the named addressees above. This message may contain information that is confidential, privileged, attorney work product, or exempt from disclosure under applicable law. If you are not an intended recipient, then you are prohibited from reading or copying any part of this message or opening, reading or copying any attachment. If you have received this message in error, or are not a named recipient, please immediately notify the sender by reply mail and delete this e-mail from your computer. Thank you for your cooperation. Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal From lgg at tid.es Fri Aug 12 10:23:09 2011 From: lgg at tid.es (LUIS GARCIA GARCIA) Date: Fri, 12 Aug 2011 10:23:09 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT Message-ID: <400B1E0D509AB14C95FFDC1DE303B9A881E116A17A@EXCLU2K7.hi.inet> Dear all, Find enclosed the final version of the FI-WARE CA. As per request of several partners, we?ve done some modifications in clause 4.1. in order to protect parties?s technology when used by other partner- or a third party- in an implementation of the FI-WARE Generic Enabler Specifications. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects we must take into account and that cannot be subject to "protection or royalties": 1.- If it is something "inherent" to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Further, we?ve seen that there may be a misinterpretation in the first paragraph, and we?ve modified "other parties" for "Parties signing this CA as well as any other third party" that perfectly reflects the intention of the paragraph. I?ve changed only the yellow marked part So, the wording we propose would be: "Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, parties signing this CA as well as any other third party may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. However, notwithstanding the above, parties are not barred from requesting royalties, or protecting their rights, for use of technology (e.g. but not limited to patents) in implementations of the FI-WARE Generic Enablers Specifications, provided such technology is not disclosed by the FI-WARE Generic Enabler Specifications or is not inherent to, or cannot trivially be derived as valid implementations of part of the FI-WARE Generic Enabler Specifications. " The rest of the clause remains as it was. -**************************************** Except for any typo, we consider this version as final as there?s no room for further negotiations. We?ve received the 2nd august the signed contract from the Commission, so we have a 45 days, from that date, to complete the signature of Form A; however, we?ve only received 9 of 26 Form A signed. If we do not received the Form A we?re putting the project in a serious risk. Please send us ASAP this pending signed documentation. We?ve included the contact and signature information we?ve received. However, there are still partners that have not sent us their information. Please, do it ASAP. Next week I?ll send the pdf signature version with the information we have up to this moment. If any of your signing representative is going to leave on holidays, I kindly ask you to request them the signature before they go. Also these organizations which have not yet signed and sent the Collaboration Agreement to our address should complete this also ASAP. We want transfer our most sincere thanks for your flexibility and your cooperation during this long negotiation. Please, let us know if you?d need any further information. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) [cid:image001.png at 01CC58CE.0A755270] ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx -------------- next part -------------- An HTML attachment was scrubbed... URL: -------------- next part -------------- A non-text attachment was scrubbed... Name: image001.png Type: image/png Size: 16885 bytes Desc: image001.png URL: -------------- next part -------------- A non-text attachment was scrubbed... Name: IPCA_FI-WARE version 11th august.doc Type: application/msword Size: 421888 bytes Desc: IPCA_FI-WARE version 11th august.doc URL: From yves-marie.le-pannerer at technicolor.com Fri Aug 12 13:46:10 2011 From: yves-marie.le-pannerer at technicolor.com (Le Pannerer Yves-Marie) Date: Fri, 12 Aug 2011 13:46:10 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT In-Reply-To: <400B1E0D509AB14C95FFDC1DE303B9A881E116A17A@EXCLU2K7.hi.inet> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A17A@EXCLU2K7.hi.inet> Message-ID: <189C15C1ADF61544BD5A11DCE7D5C500014513A7B7@MOPESMBX01.eu.thmulti.com> Dear Colleagues, Thank you for the hard work performed so far in reaching agreement. In the absence of our legal counsel I can just stress that, to my opinion, an item has still not been addressed : Page 7 : Interim payment in two tranches: ....Second tranche: Remaining 50% of the funding accepted and paid by European Commission, will be distributed by the Project Coordinator twenty three (23) months from the beginning of the Project.... This provision contradicts article II.2.3. a) of the Grant Agreement : a) .....the coordinator shall ensure that all the appropriate payments are made to the other beneficiaries without unjustified delay; 1. A delay of several months cannot be justified for payments "accepted" by the Commission (it is what the interim payment is supposed to pay...) 2. Should a partner does not meet its commitments (deliverables etc), this should appear during the annual review, where the reviewers consider, evaluate and approve the deliverables...The Commission has all the possibilities to reject the costs of a beneficiary who would not have performed its work . This is clearly detailed in article II.5 and specifically II.5.4 : "The Commission may proceed with an interim payment in part if some reports or deliverables are not submitted as required, or only partially or conditionally approved. The reports and deliverables due for one reporting period which are submitted late will be evaluated together with the reports and deliverables of the next reporting period" 3. Consequently, when costs are "accepted "by the Commission (this is done beneficiary per beneficiary), this means that the relevant work has been performed and approved by the Commission. Then I do not see any possibility to freeze accepted payments made by the commission under the argument that some deliverables (already approved by the Commission) are still due. As the GA has the highest rank in the hierarchy of contracts and that the draft CA contradicts the GA, I suggest to delete the section addressing "Interim payments". Mathilde du Besset and Jean-Dominique Meunier expressed already Technicolor's position on this point in emails dated 26 and 29 June. Best regards, Y.-M.L.P. From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of LUIS GARCIA GARCIA Sent: vendredi 12 ao?t 2011 10:23 To: fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT Dear all, Find enclosed the final version of the FI-WARE CA. As per request of several partners, we?ve done some modifications in clause 4.1. in order to protect parties?s technology when used by other partner- or a third party- in an implementation of the FI-WARE Generic Enabler Specifications. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects we must take into account and that cannot be subject to "protection or royalties": 1.- If it is something "inherent" to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Further, we?ve seen that there may be a misinterpretation in the first paragraph, and we?ve modified "other parties" for "Parties signing this CA as well as any other third party" that perfectly reflects the intention of the paragraph. I?ve changed only the yellow marked part So, the wording we propose would be: "Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, parties signing this CA as well as any other third party may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. However, notwithstanding the above, parties are not barred from requesting royalties, or protecting their rights, for use of technology (e.g. but not limited to patents) in implementations of the FI-WARE Generic Enablers Specifications, provided such technology is not disclosed by the FI-WARE Generic Enabler Specifications or is not inherent to, or cannot trivially be derived as valid implementations of part of the FI-WARE Generic Enabler Specifications. " The rest of the clause remains as it was. -**************************************** Except for any typo, we consider this version as final as there?s no room for further negotiations. We?ve received the 2nd august the signed contract from the Commission, so we have a 45 days, from that date, to complete the signature of Form A; however, we?ve only received 9 of 26 Form A signed. If we do not received the Form A we?re putting the project in a serious risk. Please send us ASAP this pending signed documentation. We?ve included the contact and signature information we?ve received. However, there are still partners that have not sent us their information. Please, do it ASAP. Next week I?ll send the pdf signature version with the information we have up to this moment. If any of your signing representative is going to leave on holidays, I kindly ask you to request them the signature before they go. Also these organizations which have not yet signed and sent the Collaboration Agreement to our address should complete this also ASAP. We want transfer our most sincere thanks for your flexibility and your cooperation during this long negotiation. Please, let us know if you?d need any further information. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) [cid:image001.png at 01CC58F0.8825B670] ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx -------------- next part -------------- An HTML attachment was scrubbed... URL: -------------- next part -------------- A non-text attachment was scrubbed... Name: image001.png Type: image/png Size: 16885 bytes Desc: image001.png URL: From fabian.perpeet at zv.fraunhofer.de Fri Aug 12 15:34:52 2011 From: fabian.perpeet at zv.fraunhofer.de (fabian.perpeet at zv.fraunhofer.de) Date: Fri, 12 Aug 2011 15:34:52 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT In-Reply-To: <400B1E0D509AB14C95FFDC1DE303B9A881E116A17A@EXCLU2K7.hi.inet> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A17A@EXCLU2K7.hi.inet> Message-ID: Luis, 4.1 has to be modified as marked in the attachment - it is not justified to grant rights to "any third party" and to overrule the Back- and Sideground exclusions ("Notwithstanding...). We have added the contact information for Fraunhofer. Regards Fabian Perpeet ________________________________ Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von LUIS GARCIA GARCIA Gesendet: Freitag, 12. August 2011 10:23 An: fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica Betreff: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT Dear all, Find enclosed the final version of the FI-WARE CA. As per request of several partners, we?ve done some modifications in clause 4.1. in order to protect parties?s technology when used by other partner- or a third party- in an implementation of the FI-WARE Generic Enabler Specifications. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects we must take into account and that cannot be subject to "protection or royalties": 1.- If it is something "inherent" to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Further, we?ve seen that there may be a misinterpretation in the first paragraph, and we?ve modified "other parties" for "Parties signing this CA as well as any other third party" that perfectly reflects the intention of the paragraph. I?ve changed only the yellow marked part So, the wording we propose would be: "Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, parties signing this CA as well as any other third party may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. However, notwithstanding the above, parties are not barred from requesting royalties, or protecting their rights, for use of technology (e.g. but not limited to patents) in implementations of the FI-WARE Generic Enablers Specifications, provided such technology is not disclosed by the FI-WARE Generic Enabler Specifications or is not inherent to, or cannot trivially be derived as valid implementations of part of the FI-WARE Generic Enabler Specifications. " The rest of the clause remains as it was. -**************************************** Except for any typo, we consider this version as final as there?s no room for further negotiations. We?ve received the 2nd august the signed contract from the Commission, so we have a 45 days, from that date, to complete the signature of Form A; however, we?ve only received 9 of 26 Form A signed. If we do not received the Form A we?re putting the project in a serious risk. Please send us ASAP this pending signed documentation. We?ve included the contact and signature information we?ve received. However, there are still partners that have not sent us their information. Please, do it ASAP. Next week I?ll send the pdf signature version with the information we have up to this moment. If any of your signing representative is going to leave on holidays, I kindly ask you to request them the signature before they go. Also these organizations which have not yet signed and sent the Collaboration Agreement to our address should complete this also ASAP. We want transfer our most sincere thanks for your flexibility and your cooperation during this long negotiation. Please, let us know if you?d need any further information. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) [cid:image001.gif at 01CC5905.610F1A30] ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx -------------- next part -------------- An HTML attachment was scrubbed... URL: -------------- next part -------------- A non-text attachment was scrubbed... Name: image001.gif Type: image/gif Size: 4369 bytes Desc: image001.gif URL: -------------- next part -------------- A non-text attachment was scrubbed... Name: FI-WARE 12-08-11.doc Type: application/msword Size: 473600 bytes Desc: FI-WARE 12-08-11.doc URL: From kathrin.schweppe at sap.com Mon Aug 15 17:32:34 2011 From: kathrin.schweppe at sap.com (Schweppe, Kathrin) Date: Mon, 15 Aug 2011 17:32:34 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT In-Reply-To: <400B1E0D509AB14C95FFDC1DE303B9A881E116A17A@EXCLU2K7.hi.inet> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A17A@EXCLU2K7.hi.inet> Message-ID: <7ED7B27AF3542948BAB7BCD179A7677C10CD18DED4@DEWDFECCR03.wdf.sap.corp> Dear Luis, thank you very much for your efforts. The version is fine for SAP. Best regards, Kathrin Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von LUIS GARCIA GARCIA Gesendet: Freitag, 12. August 2011 10:23 An: fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica Betreff: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT Dear all, Find enclosed the final version of the FI-WARE CA. As per request of several partners, we?ve done some modifications in clause 4.1. in order to protect parties?s technology when used by other partner- or a third party- in an implementation of the FI-WARE Generic Enabler Specifications. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects we must take into account and that cannot be subject to "protection or royalties": 1.- If it is something "inherent" to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Further, we?ve seen that there may be a misinterpretation in the first paragraph, and we?ve modified "other parties" for "Parties signing this CA as well as any other third party" that perfectly reflects the intention of the paragraph. I?ve changed only the yellow marked part So, the wording we propose would be: "Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, parties signing this CA as well as any other third party may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. However, notwithstanding the above, parties are not barred from requesting royalties, or protecting their rights, for use of technology (e.g. but not limited to patents) in implementations of the FI-WARE Generic Enablers Specifications, provided such technology is not disclosed by the FI-WARE Generic Enabler Specifications or is not inherent to, or cannot trivially be derived as valid implementations of part of the FI-WARE Generic Enabler Specifications. " The rest of the clause remains as it was. -**************************************** Except for any typo, we consider this version as final as there?s no room for further negotiations. We?ve received the 2nd august the signed contract from the Commission, so we have a 45 days, from that date, to complete the signature of Form A; however, we?ve only received 9 of 26 Form A signed. If we do not received the Form A we?re putting the project in a serious risk. Please send us ASAP this pending signed documentation. We?ve included the contact and signature information we?ve received. However, there are still partners that have not sent us their information. Please, do it ASAP. Next week I?ll send the pdf signature version with the information we have up to this moment. If any of your signing representative is going to leave on holidays, I kindly ask you to request them the signature before they go. Also these organizations which have not yet signed and sent the Collaboration Agreement to our address should complete this also ASAP. We want transfer our most sincere thanks for your flexibility and your cooperation during this long negotiation. Please, let us know if you?d need any further information. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) [cid:image001.png at 01CC5B71.51BEE9C0] ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx -------------- next part -------------- An HTML attachment was scrubbed... URL: -------------- next part -------------- A non-text attachment was scrubbed... Name: image001.png Type: image/png Size: 16885 bytes Desc: image001.png URL: From susanne.weikl at nsn.com Tue Aug 16 18:10:39 2011 From: susanne.weikl at nsn.com (Weikl, Susanne (NSN - DE/Munich)) Date: Tue, 16 Aug 2011 18:10:39 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT In-Reply-To: <400B1E0D509AB14C95FFDC1DE303B9A881E116A17A@EXCLU2K7.hi.inet> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A17A@EXCLU2K7.hi.inet> Message-ID: <2B9915A85B6D8D47A5051C368C56E7D40202FB1A@DEMUEXC005.nsn-intra.net> Hello Luis (and representatives of INRIA and Technicolor - see 4. below), Please find attached some suggestions and additions for the new clause. It also takes up Fraunhofer's concern on overruling the exclusion list which is a valid point. 1. Essentially, the changes cover two points: from the mere language, it sounded as if the license covered the copying, modification and distribution of the Generic Enabler Specifications when making the implementation, but not the implementation as such. If this is the purpose, then "Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications" must be changed to "Parties may develop and release implementations of the FI-WARE Generic Enabler Specifications". 2. Secondly we suggest some more clarifying language on the exclusion of IPRs - the concepts should be familiar from standardization. 3. I am not sure, whether "which are not inherent to, or cannot trivially be derived as valid implementation" is the same as the intended target described as "nobody would implement it in a different way. / aspect of the implantation that everybody ... would obviously do. " But we can accept the language. 4. Last, regarding the exclusion list: INRIA's exclusions are unclear in the following regard: (i) all its Sideground; and (iv) any and all Background and Sideground that INRIA is not free to grant access to due to obligations towards third parties; (v) any and all Background and Sideground INRIA has not itself introduced into the Project at its sole discretion for use in execution of the Project." Is all Sideground excluded or only the Sideground which is introduced for use or which INRIA is free to grant Access Rights? Technicolor: "Any and all Background and Sideground not Needed for the execution of the Project" must either be deleted or amended by "or not Needed for Use of Foreground" in order to be in line with the text of the main agreement. Otherwise, the text is ok for Nokia Siemens Networks Best regards, Susanne Weikl Senior Legal Counsel St.-Martin-Stra?e 76 41.4017 D-80240 Munich Tel: +49 89 5159 36940 Mob: +49 160 9062 7495 Fax: +49 89 5159 44 36940 susanne.weikl at nsn.com http://www.nokiasiemensnetworks.com/global/ Think before you print Nokia Siemens Networks GmbH & Co. KG Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRA 88537 WEEE-Reg.-Nr.: DE 52984304 Pers?nlich haftende Gesellschafterin / General Partner: Nokia Siemens Networks Management GmbH Gesch?ftsleitung / Board of Directors: Olaf Horsthemke, Dr. Hermann Rodler Vorsitzender des Aufsichtsrats / Chairman of supervisory board: Herbert Merz Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRB 163416 _________________________________________________________________________________ Important Note: This e-mail and any attachment are confidential and may contain trade secrets and may also be legally privileged or otherwise protected from disclosure. If you have received it in error, you are on notice of its status. Please notify us immediately by reply e-mail and then delete this e-mail and any attachment from your system. If you are not the intended recipient please understand that you must not copy this e-mail or any attachment or disclose the contents to any other person. Thank you for your cooperation. From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of ext LUIS GARCIA GARCIA Sent: Friday, August 12, 2011 10:23 AM To: fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT Dear all, Find enclosed the final version of the FI-WARE CA. As per request of several partners, we?ve done some modifications in clause 4.1. in order to protect parties?s technology when used by other partner- or a third party- in an implementation of the FI-WARE Generic Enabler Specifications. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects we must take into account and that cannot be subject to "protection or royalties": 1.- If it is something "inherent" to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Further, we?ve seen that there may be a misinterpretation in the first paragraph, and we?ve modified "other parties" for "Parties signing this CA as well as any other third party" that perfectly reflects the intention of the paragraph. I?ve changed only the yellow marked part So, the wording we propose would be: "Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, parties signing this CA as well as any other third party may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. However, notwithstanding the above, parties are not barred from requesting royalties, or protecting their rights, for use of technology (e.g. but not limited to patents) in implementations of the FI-WARE Generic Enablers Specifications, provided such technology is not disclosed by the FI-WARE Generic Enabler Specifications or is not inherent to, or cannot trivially be derived as valid implementations of part of the FI-WARE Generic Enabler Specifications. " The rest of the clause remains as it was. -**************************************** Except for any typo, we consider this version as final as there?s no room for further negotiations. We?ve received the 2nd august the signed contract from the Commission, so we have a 45 days, from that date, to complete the signature of Form A; however, we?ve only received 9 of 26 Form A signed. If we do not received the Form A we?re putting the project in a serious risk. Please send us ASAP this pending signed documentation. We?ve included the contact and signature information we?ve received. However, there are still partners that have not sent us their information. Please, do it ASAP. Next week I?ll send the pdf signature version with the information we have up to this moment. If any of your signing representative is going to leave on holidays, I kindly ask you to request them the signature before they go. Also these organizations which have not yet signed and sent the Collaboration Agreement to our address should complete this also ASAP. We want transfer our most sincere thanks for your flexibility and your cooperation during this long negotiation. Please, let us know if you?d need any further information. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx -------------- next part -------------- An HTML attachment was scrubbed... URL: -------------- next part -------------- A non-text attachment was scrubbed... Name: image001.png Type: image/png Size: 16885 bytes Desc: image001.png URL: -------------- next part -------------- A non-text attachment was scrubbed... Name: Dok2.docx Type: application/octet-stream Size: 15041 bytes Desc: Dok2.docx URL: From robert.sarrazin at orange-ftgroup.com Tue Aug 16 18:10:48 2011 From: robert.sarrazin at orange-ftgroup.com (robert.sarrazin at orange-ftgroup.com) Date: Tue, 16 Aug 2011 18:10:48 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT In-Reply-To: <400B1E0D509AB14C95FFDC1DE303B9A881E116A17A@EXCLU2K7.hi.inet> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A17A@EXCLU2K7.hi.inet> Message-ID: <843DA8228A1BA74CA31FB4E111A5C46201DA480C@ftrdmel0.rd.francetelecom.fr> Dear all, I apologize not to make a response earlier ( but I was out of my office until today ) I have not too much objection about clause 4.1 but I would prefer - at first sight - if such clause only states the following : Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, parties signing this CA as well as any other third party may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. However, notwithstanding the above, parties are not barred from requesting royalties, or protecting their rights, for use of technology (e.g. but not limited to patents) in implementations of the FI-WARE Generic Enablers Specifications, provided such technology is not disclosed by the FI-WARE Generic Enabler Specifications. The above wording seems more clear because it seems not obvious to determine what is " inherent " or not or cannot trivially be derived as valid implementations and thus give too room for interpretation ? Sorry but I am a bit lost sometimes .. Regards ________________________________ De : fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] De la part de LUIS GARCIA GARCIA Envoy? : vendredi 12 ao?t 2011 10:23 ? : fiware-legal at lists.fi-ware.eu Cc : Asesor?a Jur?dica Objet : [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT Dear all, Find enclosed the final version of the FI-WARE CA. As per request of several partners, we?ve done some modifications in clause 4.1. in order to protect parties?s technology when used by other partner- or a third party- in an implementation of the FI-WARE Generic Enabler Specifications. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects we must take into account and that cannot be subject to "protection or royalties": 1.- If it is something "inherent" to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Further, we?ve seen that there may be a misinterpretation in the first paragraph, and we?ve modified "other parties" for "Parties signing this CA as well as any other third party" that perfectly reflects the intention of the paragraph. I?ve changed only the yellow marked part So, the wording we propose would be: "Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, parties signing this CA as well as any other third party may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. However, notwithstanding the above, parties are not barred from requesting royalties, or protecting their rights, for use of technology (e.g. but not limited to patents) in implementations of the FI-WARE Generic Enablers Specifications, provided such technology is not disclosed by the FI-WARE Generic Enabler Specifications or is not inherent to, or cannot trivially be derived as valid implementations of part of the FI-WARE Generic Enabler Specifications. " The rest of the clause remains as it was. -**************************************** Except for any typo, we consider this version as final as there?s no room for further negotiations. We?ve received the 2nd august the signed contract from the Commission, so we have a 45 days, from that date, to complete the signature of Form A; however, we?ve only received 9 of 26 Form A signed. If we do not received the Form A we?re putting the project in a serious risk. Please send us ASAP this pending signed documentation. We?ve included the contact and signature information we?ve received. However, there are still partners that have not sent us their information. Please, do it ASAP. Next week I?ll send the pdf signature version with the information we have up to this moment. If any of your signing representative is going to leave on holidays, I kindly ask you to request them the signature before they go. Also these organizations which have not yet signed and sent the Collaboration Agreement to our address should complete this also ASAP. We want transfer our most sincere thanks for your flexibility and your cooperation during this long negotiation. Please, let us know if you?d need any further information. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx -------------- next part -------------- An HTML attachment was scrubbed... URL: -------------- next part -------------- A non-text attachment was scrubbed... Name: image001.png Type: image/png Size: 16885 bytes Desc: image001.png URL: From Bettina.Lehmann at telekom.de Wed Aug 17 13:51:36 2011 From: Bettina.Lehmann at telekom.de (Bettina.Lehmann at telekom.de) Date: Wed, 17 Aug 2011 13:51:36 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT In-Reply-To: <400B1E0D509AB14C95FFDC1DE303B9A881E116A17A@EXCLU2K7.hi.inet> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A17A@EXCLU2K7.hi.inet> Message-ID: Dear Luis, Thank you very much for your efforts. The version is fine for DTAG. Best regards Bettina Deutsche Telekom AG T-Labs (Research & Development) Bettina Lehmann Winterfeldtstra?e 21, 10781 Berlin +49 30 8353-58579 (Tel.) +49 391 5347-7443 (Fax) +49 170 7831-227 (Mobil) E-Mail: bettina.lehmann at telekom.de www.telekom.com Erleben, was verbindet. Deutsche Telekom AG Aufsichtsrat: Prof. Dr. Ulrich Lehner (Vorsitzender) Vorstand: Ren? Obermann (Vorsitzender), Dr. Manfred Balz, Reinhard Clemens, Niek Jan van Damme, Timotheus H?ttges, Edward R. Kozel, Thomas Sattelberger Handelsregister: Amtsgericht Bonn HRB 6794 Sitz der Gesellschaft Bonn Gro?e Ver?nderungen fangen klein an - Ressourcen schonen und nicht jede E-Mail drucken. ________________________________ From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of LUIS GARCIA GARCIA Sent: Freitag, 12. August 2011 10:23 To: fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT Dear all, Find enclosed the final version of the FI-WARE CA. As per request of several partners, we?ve done some modifications in clause 4.1. in order to protect parties?s technology when used by other partner- or a third party- in an implementation of the FI-WARE Generic Enabler Specifications. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects we must take into account and that cannot be subject to "protection or royalties": 1.- If it is something "inherent" to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Further, we?ve seen that there may be a misinterpretation in the first paragraph, and we?ve modified "other parties" for "Parties signing this CA as well as any other third party" that perfectly reflects the intention of the paragraph. I?ve changed only the yellow marked part So, the wording we propose would be: "Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, parties signing this CA as well as any other third party may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. However, notwithstanding the above, parties are not barred from requesting royalties, or protecting their rights, for use of technology (e.g. but not limited to patents) in implementations of the FI-WARE Generic Enablers Specifications, provided such technology is not disclosed by the FI-WARE Generic Enabler Specifications or is not inherent to, or cannot trivially be derived as valid implementations of part of the FI-WARE Generic Enabler Specifications. " The rest of the clause remains as it was. -**************************************** Except for any typo, we consider this version as final as there?s no room for further negotiations. We?ve received the 2nd august the signed contract from the Commission, so we have a 45 days, from that date, to complete the signature of Form A; however, we?ve only received 9 of 26 Form A signed. If we do not received the Form A we?re putting the project in a serious risk. Please send us ASAP this pending signed documentation. We?ve included the contact and signature information we?ve received. However, there are still partners that have not sent us their information. Please, do it ASAP. Next week I?ll send the pdf signature version with the information we have up to this moment. If any of your signing representative is going to leave on holidays, I kindly ask you to request them the signature before they go. Also these organizations which have not yet signed and sent the Collaboration Agreement to our address should complete this also ASAP. We want transfer our most sincere thanks for your flexibility and your cooperation during this long negotiation. Please, let us know if you?d need any further information. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) [cid:image002.gif at 01CC5CE4.C8274F20] ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx -------------- next part -------------- An HTML attachment was scrubbed... URL: -------------- next part -------------- A non-text attachment was scrubbed... Name: image002.gif Type: image/gif Size: 4369 bytes Desc: image002.gif URL: From Catherine.Lucquiaud at inria.fr Wed Aug 17 14:35:56 2011 From: Catherine.Lucquiaud at inria.fr (Catherine Lucquiaud) Date: Wed, 17 Aug 2011 14:35:56 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT In-Reply-To: <1822703349.276027.1313511265717.JavaMail.root@zmbs2.inria.fr> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A17A@EXCLU2K7.hi.inet> <1822703349.276027.1313511265717.JavaMail.root@zmbs2.inria.fr> Message-ID: <4E4BB5AC.1090405@inria.fr> Dear Susanne, dear all As mentionned in the first clause, INRIA wishes to exclude all its Sideground from its obligation to grant Access Rights. Best regards, *Catherine Lucquiaud* /PhD/// /Charg?e des Partenariats et des Projets d'Innovation/ /Partnerships//& Innovation Projects / Bureau/Office : C201 (Tranche C, Espace Transfert) T?l/Phone : +33 3 83 59 30 59 Fax : +33 3 83 27 56 52 * Centre de Recherche INRIA Nancy Grand Est* 615 rue du Jardin Botanique - CS 20101 54603 Villers-l?s-Nancy Cedex France Le 16/08/11 18:14, Weikl, Susanne (NSN - DE/Munich) a ?crit : > > Hello Luis (and representatives of INRIA and Technicolor -- see 4. below), > > Please find attached some suggestions and additions for the new > clause. It also takes up Fraunhofer's concern on overruling the > exclusion list which is a valid point. > > 1.Essentially, the changes cover two points: from the mere language, > it sounded as if the license covered the copying, modification and > distribution of the Generic Enabler Specifications when making the > implementation, but not the implementation as such. If this is the > purpose, then "Parties may use _such FI-WARE Generic Enabler > Specifications_ to develop and release implementations of the FI-WARE > Generic Enabler Specifications" must be changed to"Parties _may > __develop and release implementations_of the FI-WARE Generic Enabler > Specifications". > > 2.Secondly we suggest some more clarifying language on the exclusion > of IPRs -- the concepts should be familiar from standardization. > > 3.I am not sure, whether "which are not inherent to, or cannot > trivially be derived as valid implementation" is the same as the > intended target described as "nobody would implement it in a different > way. / aspect of the implantation that everybody ... would obviously > do. " > > But we can accept the language. > > 4.Last, regarding the exclusion list: > > *INRIA's*exclusions are unclear in the following regard: > > (i) all its Sideground; > > and > > (iv) any and all Background and Sideground that INRIA is not free to > grant access to due to obligations towards third parties; > > (v) any and all Background and Sideground INRIA has not itself > introduced into the Project at its sole discretion for use in > execution of the Project." > > Is all Sideground excluded or only the Sideground which is introduced > for use or which INRIA is free to grant Access Rights? > > *Technicolor*: > > "Any and all Background and Sideground not Needed for the execution of > the Project" must either be deleted or amended by"or not Needed for > Use of Foreground" in order to be in line with the text of the main > agreement. > > Otherwise, the text is ok for Nokia Siemens Networks > > Best regards, > > Susanne Weikl > > Senior Legal Counsel > St.-Martin-Stra?e 76 > 41.4017 > D-80240 Munich > Tel: +49 89 5159 36940* > *Mob: +49 160 9062 7495 > Fax: +49 89 5159 44 36940 > susanne.weikl at nsn.com > http://www.nokiasiemensnetworks.com/global/ > Think before you print > > Nokia Siemens Networks GmbH & Co.KG > Sitz der Gesellschaft: M?nchen / Registered office: Munich > Registergericht: M?nchen / Commercial registry: Munich, HRA 88537 > WEEE-Reg.-Nr.: DE 52984304 > > Pers?nlich haftende Gesellschafterin / General Partner: Nokia Siemens > Networks Management GmbH > Gesch?ftsleitung / Board of Directors: Olaf Horsthemke, Dr. Hermann Rodler > Vorsitzender des Aufsichtsrats / Chairman of supervisory board: > Herbert Merz > Sitz der Gesellschaft: M?nchen / Registered office: Munich > Registergericht: M?nchen / Commercial registry: Munich, HRB 163416 > _________________________________________________________________________________ > Important Note: This e-mail and any attachment are confidential and > may contain trade secrets and may also be legally privileged or > otherwise protected from disclosure.If you have received it in error, > you are on notice of its status. Please notify us immediately by reply > e-mail and then delete this e-mail and any attachment from your > system. If you are not the intended recipient please understand that > you must not copy this e-mail or any attachment or disclose the > contents to any other person. Thank you for your cooperation. > > *From:*fiware-legal-bounces at lists.fi-ware.eu > [mailto:fiware-legal-bounces at lists.fi-ware.eu] *On Behalf Of *ext LUIS > GARCIA GARCIA > *Sent:* Friday, August 12, 2011 10:23 AM > *To:* fiware-legal at lists.fi-ware.eu > *Cc:* Asesor?a Jur?dica > *Subject:* [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT > > Dear all, > > Find enclosed the final version of the FI-WARE CA. > > As per request of several partners, we?ve done some modifications in > *clause 4.1*. in order to protect parties?s technology when used by > other partner- or a third party- in an implementation of the FI-WARE > Generic Enabler Specifications. This modification does not modify the > initial content and sense of this crucial clause, but gives a better > protection of partner?s technology when used in an implementation. > However, we must take into account that there are two aspects we > must take into account and that cannot be subject to "protection or > royalties": > > 1.- If it is something "inherent" to the specifications, that is to > say that nobody would implement it in a different way. > > 2.- If it is one aspect of the implantation that everybody, that > implement the specifications, would obviously do. > > Both points are not necessary redundant. > > Further, we?ve seen that there may be a misinterpretation in the first > paragraph, and we?ve modified "other parties" for "Parties signing > this CA as well as any other third party" that perfectly reflects the > intention of the paragraph. I?ve changed only the yellow marked part > > So, the wording we propose would be: > > "/Notwithstanding any conflicting terms in this CA, the FI-WARE > Generic Enabler Specifications will be made publically available (upon > publication in accordance with clause 4.4.1) on royalty free terms. > For the sake of clarity, parties signing this CA as well as any other > third party may use such FI-WARE Generic Enabler Specifications to > develop and release implementations of the FI-WARE Generic Enabler > Specifications on a royalty-free basis./ > > // > > /However, notwithstanding the above, parties are not barred from > requesting royalties, or protecting their rights, for use of > technology (e.g. but not limited to patents) in implementations of the > FI-WARE Generic Enablers Specifications, provided such technology is > not disclosed by the FI-WARE Generic Enabler Specifications or is not > inherent to, or cannot trivially be derived as valid implementations > of part of the FI-WARE Generic Enabler Specification/s. " > > The rest of the clause remains as it was. > > -**************************************** > > Except for any typo, we consider this version as final as there?s no > room for further negotiations. We?ve received the 2^nd august the > signed contract from the Commission, so we have a 45 days, from that > date, to complete the signature of Form A; however, we?ve only > received 9 of 26 Form A signed. If we do not received the Form A we?re > putting the project in a serious risk. Please send us ASAP this > pending signed documentation. > > We?ve included the contact and signature information we?ve received. > However, there are still partners that have not sent us their > information. Please, do it *ASAP*. Next week I?ll send the pdf > signature version with the information we have up to this moment. If > any of your signing representative is going to leave on holidays, I > kindly ask you to request them the signature before they go. > > Also these organizations which have not yet signed and sent the > Collaboration Agreement to our address should complete this also ASAP. > > We want transfer our most sincere thanks for your flexibility and your > cooperation during this long negotiation. > > Please, let us know if you?d need any further information. > > Best regards > > Luis Garc?a Garc?a > > Asesoria Jur?dica // Legal Department > > Tfnos: +34 914832614 // +34913129666 > > Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal > > DISTRITO C- Edificio Oeste 1, 5? planta > > Ronda de la Comunicaci?n s/n > > 28050-Madrid (Espa?a) > > cid:image001.png at 01CBC9F9.AC146AD0 > > ------------------------------------------------------------------------ > > Este mensaje se dirige exclusivamente a su destinatario. Puede > consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico > en el enlace situado m?s abajo. > This message is intended exclusively for its addressee. We only send > and receive email on the basis of the terms set out at. > http://www.tid.es/ES/PAGINAS/disclaimer.aspx > > > > _______________________________________________ > Fiware-legal mailing list > Fiware-legal at lists.fi-ware.eu > http://lists.fi-ware.eu/listinfo/fiware-legal -------------- next part -------------- An HTML attachment was scrubbed... URL: -------------- next part -------------- A non-text attachment was scrubbed... Name: not available Type: image/png Size: 16885 bytes Desc: not available URL: From susanne.weikl at nsn.com Wed Aug 17 15:03:35 2011 From: susanne.weikl at nsn.com (Weikl, Susanne (NSN - DE/Munich)) Date: Wed, 17 Aug 2011 15:03:35 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT In-Reply-To: <4E4BB5AC.1090405@inria.fr> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A17A@EXCLU2K7.hi.inet> <1822703349.276027.1313511265717.JavaMail.root@zmbs2.inria.fr> <4E4BB5AC.1090405@inria.fr> Message-ID: <2B9915A85B6D8D47A5051C368C56E7D40202FE83@DEMUEXC005.nsn-intra.net> Hello Catherine, so the conclusion is to modify as follows? (i) all its Sideground; and (iv) any and all Background that INRIA is not free to grant access to due to obligations towards third parties; (v) any and all Background INRIA has not itself introduced into the Project at its sole discretion for use in execution of the Project." BR Susanne From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of ext Catherine Lucquiaud Sent: Wednesday, August 17, 2011 2:36 PM To: fiware-legal at lists.fi-ware.eu Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT Dear Susanne, dear all As mentionned in the first clause, INRIA wishes to exclude all its Sideground from its obligation to grant Access Rights. Best regards, Catherine Lucquiaud PhD Charg?e des Partenariats et des Projets d'Innovation Partnerships & Innovation Projects Bureau/Office : C201 (Tranche C, Espace Transfert) T?l/Phone : +33 3 83 59 30 59 Fax : +33 3 83 27 56 52 Centre de Recherche INRIA Nancy Grand Est 615 rue du Jardin Botanique - CS 20101 54603 Villers-l?s-Nancy Cedex France Le 16/08/11 18:14, Weikl, Susanne (NSN - DE/Munich) a ?crit : Hello Luis (and representatives of INRIA and Technicolor - see 4. below), Please find attached some suggestions and additions for the new clause. It also takes up Fraunhofer's concern on overruling the exclusion list which is a valid point. 1. Essentially, the changes cover two points: from the mere language, it sounded as if the license covered the copying, modification and distribution of the Generic Enabler Specifications when making the implementation, but not the implementation as such. If this is the purpose, then "Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications" must be changed to "Parties may develop and release implementations of the FI-WARE Generic Enabler Specifications". 2. Secondly we suggest some more clarifying language on the exclusion of IPRs - the concepts should be familiar from standardization. 3. I am not sure, whether "which are not inherent to, or cannot trivially be derived as valid implementation" is the same as the intended target described as "nobody would implement it in a different way. / aspect of the implantation that everybody ... would obviously do. " But we can accept the language. 4. Last, regarding the exclusion list: INRIA's exclusions are unclear in the following regard: (i) all its Sideground; and (iv) any and all Background and Sideground that INRIA is not free to grant access to due to obligations towards third parties; (v) any and all Background and Sideground INRIA has not itself introduced into the Project at its sole discretion for use in execution of the Project." Is all Sideground excluded or only the Sideground which is introduced for use or which INRIA is free to grant Access Rights? Technicolor: "Any and all Background and Sideground not Needed for the execution of the Project" must either be deleted or amended by "or not Needed for Use of Foreground" in order to be in line with the text of the main agreement. Otherwise, the text is ok for Nokia Siemens Networks Best regards, Susanne Weikl Senior Legal Counsel St.-Martin-Stra?e 76 41.4017 D-80240 Munich Tel: +49 89 5159 36940 Mob: +49 160 9062 7495 Fax: +49 89 5159 44 36940 susanne.weikl at nsn.com http://www.nokiasiemensnetworks.com/global/ Think before you print Nokia Siemens Networks GmbH & Co. KG Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRA 88537 WEEE-Reg.-Nr.: DE 52984304 Pers?nlich haftende Gesellschafterin / General Partner: Nokia Siemens Networks Management GmbH Gesch?ftsleitung / Board of Directors: Olaf Horsthemke, Dr. Hermann Rodler Vorsitzender des Aufsichtsrats / Chairman of supervisory board: Herbert Merz Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRB 163416 _________________________________________________________________________________ Important Note: This e-mail and any attachment are confidential and may contain trade secrets and may also be legally privileged or otherwise protected from disclosure. If you have received it in error, you are on notice of its status. Please notify us immediately by reply e-mail and then delete this e-mail and any attachment from your system. If you are not the intended recipient please understand that you must not copy this e-mail or any attachment or disclose the contents to any other person. Thank you for your cooperation. From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of ext LUIS GARCIA GARCIA Sent: Friday, August 12, 2011 10:23 AM To: fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT Dear all, Find enclosed the final version of the FI-WARE CA. As per request of several partners, we?ve done some modifications in clause 4.1. in order to protect parties?s technology when used by other partner- or a third party- in an implementation of the FI-WARE Generic Enabler Specifications. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects we must take into account and that cannot be subject to "protection or royalties": 1.- If it is something "inherent" to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Further, we?ve seen that there may be a misinterpretation in the first paragraph, and we?ve modified "other parties" for "Parties signing this CA as well as any other third party" that perfectly reflects the intention of the paragraph. I?ve changed only the yellow marked part So, the wording we propose would be: "Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, parties signing this CA as well as any other third party may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. However, notwithstanding the above, parties are not barred from requesting royalties, or protecting their rights, for use of technology (e.g. but not limited to patents) in implementations of the FI-WARE Generic Enablers Specifications, provided such technology is not disclosed by the FI-WARE Generic Enabler Specifications or is not inherent to, or cannot trivially be derived as valid implementations of part of the FI-WARE Generic Enabler Specifications. " The rest of the clause remains as it was. -**************************************** Except for any typo, we consider this version as final as there?s no room for further negotiations. We?ve received the 2nd august the signed contract from the Commission, so we have a 45 days, from that date, to complete the signature of Form A; however, we?ve only received 9 of 26 Form A signed. If we do not received the Form A we?re putting the project in a serious risk. Please send us ASAP this pending signed documentation. We?ve included the contact and signature information we?ve received. However, there are still partners that have not sent us their information. Please, do it ASAP. Next week I?ll send the pdf signature version with the information we have up to this moment. If any of your signing representative is going to leave on holidays, I kindly ask you to request them the signature before they go. Also these organizations which have not yet signed and sent the Collaboration Agreement to our address should complete this also ASAP. We want transfer our most sincere thanks for your flexibility and your cooperation during this long negotiation. Please, let us know if you?d need any further information. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal -------------- next part -------------- An HTML attachment was scrubbed... URL: -------------- next part -------------- A non-text attachment was scrubbed... Name: image001.png Type: image/png Size: 16885 bytes Desc: image001.png URL: From Karl.Schattauer at alcatel-lucent.com Wed Aug 17 15:17:27 2011 From: Karl.Schattauer at alcatel-lucent.com (SCHATTAUER, Karl) Date: Wed, 17 Aug 2011 15:17:27 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT In-Reply-To: <2B9915A85B6D8D47A5051C368C56E7D40202FB1A@DEMUEXC005.nsn-intra.net> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A17A@EXCLU2K7.hi.inet> <2B9915A85B6D8D47A5051C368C56E7D40202FB1A@DEMUEXC005.nsn-intra.net> Message-ID: <175D251D5B968549BDBBAA2BAC721C97016ABDB8@SLFSNX.rcs.alcatel-research.de> Dear all, below please find a comment from our legal department. Best regards, K. Schattauer Dear Luis, dear all, Alcatel Lucent can agree to the proposal of Nokia Siemens with the modifications (highlighted in yellow) made in the attachment. The modifications have been made to accommodate our main concern, which is the following: We agree to grant royalty-free rights on copyrights in the specifications to any third party, so no objection to the publication of the specification on royalty-free terms. However, we think it is not appropriate to undertake to grant royalty free rights to any third party on our patents (not limited to background, sideground or foreground patents), any third party here could also include a party, which even is not a participant of an FP7 project. There is no obligation of such third party to grant reciprocal rights which may result in a situation where Alcatel Lucent or any of the other partners are granting royalty free rights to a third party and such third party in return requests royalties for the use of its patents. Further the way we understand the terms of the collaboration agreement on the future internet, such collaboration agreement does also not include the obligation to agree to an undertaking to license any of the patents to any third party on royalty-free terms. Further please insert in Annex 3 the following text: Alcatel Lucent Deutschland AG and Alcatel Lucent Italia exclude all Background and Sideground not owned by them as well as any Background and sideground which it has not itself introduced into the Project at its sole discretion for use in execution of the Project. Eva Bender Senior IP Corporate Counsel Intellectual Property & Standards phone: +49 711 821 45300 mobile:+49 170 6376510 eva.bender at alcatel-lucent.com Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von Weikl, Susanne (NSN - DE/Munich) Gesendet: Dienstag, 16. August 2011 18:11 An: ext LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT Hello Luis (and representatives of INRIA and Technicolor - see 4. below), Please find attached some suggestions and additions for the new clause. It also takes up Fraunhofer's concern on overruling the exclusion list which is a valid point. 1. Essentially, the changes cover two points: from the mere language, it sounded as if the license covered the copying, modification and distribution of the Generic Enabler Specifications when making the implementation, but not the implementation as such. If this is the purpose, then "Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications" must be changed to "Parties may develop and release implementations of the FI-WARE Generic Enabler Specifications". 2. Secondly we suggest some more clarifying language on the exclusion of IPRs - the concepts should be familiar from standardization. 3. I am not sure, whether "which are not inherent to, or cannot trivially be derived as valid implementation" is the same as the intended target described as "nobody would implement it in a different way. / aspect of the implantation that everybody ... would obviously do. " But we can accept the language. 4. Last, regarding the exclusion list: INRIA's exclusions are unclear in the following regard: (i) all its Sideground; and (iv) any and all Background and Sideground that INRIA is not free to grant access to due to obligations towards third parties; (v) any and all Background and Sideground INRIA has not itself introduced into the Project at its sole discretion for use in execution of the Project." Is all Sideground excluded or only the Sideground which is introduced for use or which INRIA is free to grant Access Rights? Technicolor: "Any and all Background and Sideground not Needed for the execution of the Project" must either be deleted or amended by "or not Needed for Use of Foreground" in order to be in line with the text of the main agreement. Otherwise, the text is ok for Nokia Siemens Networks Best regards, Susanne Weikl Senior Legal Counsel St.-Martin-Stra?e 76 41.4017 D-80240 Munich Tel: +49 89 5159 36940 Mob: +49 160 9062 7495 Fax: +49 89 5159 44 36940 susanne.weikl at nsn.com http://www.nokiasiemensnetworks.com/global/ Think before you print Nokia Siemens Networks GmbH & Co. KG Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRA 88537 WEEE-Reg.-Nr.: DE 52984304 Pers?nlich haftende Gesellschafterin / General Partner: Nokia Siemens Networks Management GmbH Gesch?ftsleitung / Board of Directors: Olaf Horsthemke, Dr. Hermann Rodler Vorsitzender des Aufsichtsrats / Chairman of supervisory board: Herbert Merz Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRB 163416 _________________________________________________________________________________ Important Note: This e-mail and any attachment are confidential and may contain trade secrets and may also be legally privileged or otherwise protected from disclosure. If you have received it in error, you are on notice of its status. Please notify us immediately by reply e-mail and then delete this e-mail and any attachment from your system. If you are not the intended recipient please understand that you must not copy this e-mail or any attachment or disclose the contents to any other person. Thank you for your cooperation. From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of ext LUIS GARCIA GARCIA Sent: Friday, August 12, 2011 10:23 AM To: fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT Dear all, Find enclosed the final version of the FI-WARE CA. As per request of several partners, we?ve done some modifications in clause 4.1. in order to protect parties?s technology when used by other partner- or a third party- in an implementation of the FI-WARE Generic Enabler Specifications. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects we must take into account and that cannot be subject to "protection or royalties": 1.- If it is something "inherent" to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Further, we?ve seen that there may be a misinterpretation in the first paragraph, and we?ve modified "other parties" for "Parties signing this CA as well as any other third party" that perfectly reflects the intention of the paragraph. I?ve changed only the yellow marked part So, the wording we propose would be: "Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, parties signing this CA as well as any other third party may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. However, notwithstanding the above, parties are not barred from requesting royalties, or protecting their rights, for use of technology (e.g. but not limited to patents) in implementations of the FI-WARE Generic Enablers Specifications, provided such technology is not disclosed by the FI-WARE Generic Enabler Specifications or is not inherent to, or cannot trivially be derived as valid implementations of part of the FI-WARE Generic Enabler Specifications. " The rest of the clause remains as it was. -**************************************** Except for any typo, we consider this version as final as there?s no room for further negotiations. We?ve received the 2nd august the signed contract from the Commission, so we have a 45 days, from that date, to complete the signature of Form A; however, we?ve only received 9 of 26 Form A signed. If we do not received the Form A we?re putting the project in a serious risk. Please send us ASAP this pending signed documentation. We?ve included the contact and signature information we?ve received. However, there are still partners that have not sent us their information. Please, do it ASAP. Next week I?ll send the pdf signature version with the information we have up to this moment. If any of your signing representative is going to leave on holidays, I kindly ask you to request them the signature before they go. Also these organizations which have not yet signed and sent the Collaboration Agreement to our address should complete this also ASAP. We want transfer our most sincere thanks for your flexibility and your cooperation during this long negotiation. Please, let us know if you?d need any further information. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx -------------- next part -------------- An HTML attachment was scrubbed... URL: -------------- next part -------------- A non-text attachment was scrubbed... Name: image001.png Type: image/png Size: 16885 bytes Desc: image001.png URL: -------------- next part -------------- A non-text attachment was scrubbed... Name: FI Ware_Dok2_ALU.docx Type: application/octet-stream Size: 15728 bytes Desc: FI Ware_Dok2_ALU.docx URL: From irene.glueck-otte at siemens.com Wed Aug 17 15:46:44 2011 From: irene.glueck-otte at siemens.com (Glueck-Otte, Irene) Date: Wed, 17 Aug 2011 15:46:44 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT In-Reply-To: <4E4BB5AC.1090405@inria.fr> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A17A@EXCLU2K7.hi.inet> <1822703349.276027.1313511265717.JavaMail.root@zmbs2.inria.fr> <4E4BB5AC.1090405@inria.fr> Message-ID: <29312CB016E934488C4DB0BA722E848D0510C04D29@DEMCHP99E34MSX.ww902.siemens.net> Dear Catherine, I regard it as inappropriate to try to change the rules we all have agreed upon via the exclusion list. In our view it is not necessary to write Sideground in the exclusion list, because - if the Sideground remains outside of the project, it will be excluded anyway by definition - if the Sideground will be introduced into the Project and has there a effect on other Parties' Foreground it must be available, either directly via the definition or - if you think you want to write Sideground into the list - indirectly via Section 3.4.3.3. If Sideground is in the list or not, the result is always the same. Mit freundlichen Gr??en Irene Gl?ck-Otte Siemens AG Corporate Legal and Compliance CL CS CU CT&IP Otto-Hahn-Ring 6 81739 M?nchen, Deutschland Tel.: +49 (89) 636-33276 Fax: +49 (89) 636-50441 Mobil: +49 (1522) 2797796 mailto:irene.glueck-otte at siemens.com Siemens Aktiengesellschaft: Vorsitzender des Aufsichtsrats: Gerhard Cromme; Vorstand: Peter L?scher, Vorsitzender; Roland Busch, Brigitte Ederer, Klaus Helmrich, Joe Kaeser, Barbara Kux, Hermann Requardt, Siegfried Russwurm, Peter Y. Solmssen, Michael S??; Sitz der Gesellschaft: Berlin und M?nchen, Deutschland; Registergericht: Berlin Charlottenburg, HRB 12300, M?nchen, HRB 6684; WEEE-Reg.-Nr. DE 23691322 ________________________________ From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of Catherine Lucquiaud Sent: Wednesday, August 17, 2011 2:36 PM To: fiware-legal at lists.fi-ware.eu Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT Dear Susanne, dear all As mentionned in the first clause, INRIA wishes to exclude all its Sideground from its obligation to grant Access Rights. Best regards, Catherine Lucquiaud PhD Charg?e des Partenariats et des Projets d'Innovation Partnerships & Innovation Projects Bureau/Office : C201 (Tranche C, Espace Transfert) T?l/Phone : +33 3 83 59 30 59 Fax : +33 3 83 27 56 52 Centre de Recherche INRIA Nancy Grand Est 615 rue du Jardin Botanique - CS 20101 54603 Villers-l?s-Nancy Cedex France Le 16/08/11 18:14, Weikl, Susanne (NSN - DE/Munich) a ?crit : Hello Luis (and representatives of INRIA and Technicolor - see 4. below), Please find attached some suggestions and additions for the new clause. It also takes up Fraunhofer's concern on overruling the exclusion list which is a valid point. 1. Essentially, the changes cover two points: from the mere language, it sounded as if the license covered the copying, modification and distribution of the Generic Enabler Specifications when making the implementation, but not the implementation as such. If this is the purpose, then "Parties may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications" must be changed to "Parties may develop and release implementations of the FI-WARE Generic Enabler Specifications". 2. Secondly we suggest some more clarifying language on the exclusion of IPRs - the concepts should be familiar from standardization. 3. I am not sure, whether "which are not inherent to, or cannot trivially be derived as valid implementation" is the same as the intended target described as "nobody would implement it in a different way. / aspect of the implantation that everybody ... would obviously do. " But we can accept the language. 4. Last, regarding the exclusion list: INRIA's exclusions are unclear in the following regard: (i) all its Sideground; and (iv) any and all Background and Sideground that INRIA is not free to grant access to due to obligations towards third parties; (v) any and all Background and Sideground INRIA has not itself introduced into the Project at its sole discretion for use in execution of the Project." Is all Sideground excluded or only the Sideground which is introduced for use or which INRIA is free to grant Access Rights? Technicolor: "Any and all Background and Sideground not Needed for the execution of the Project" must either be deleted or amended by "or not Needed for Use of Foreground" in order to be in line with the text of the main agreement. Otherwise, the text is ok for Nokia Siemens Networks Best regards, Susanne Weikl Senior Legal Counsel St.-Martin-Stra?e 76 41.4017 D-80240 Munich Tel: +49 89 5159 36940 Mob: +49 160 9062 7495 Fax: +49 89 5159 44 36940 susanne.weikl at nsn.com http://www.nokiasiemensnetworks.com/global/ Think before you print Nokia Siemens Networks GmbH & Co. KG Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRA 88537 WEEE-Reg.-Nr.: DE 52984304 Pers?nlich haftende Gesellschafterin / General Partner: Nokia Siemens Networks Management GmbH Gesch?ftsleitung / Board of Directors: Olaf Horsthemke, Dr. Hermann Rodler Vorsitzender des Aufsichtsrats / Chairman of supervisory board: Herbert Merz Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRB 163416 _________________________________________________________________________________ Important Note: This e-mail and any attachment are confidential and may contain trade secrets and may also be legally privileged or otherwise protected from disclosure. If you have received it in error, you are on notice of its status. Please notify us immediately by reply e-mail and then delete this e-mail and any attachment from your system. If you are not the intended recipient please understand that you must not copy this e-mail or any attachment or disclose the contents to any other person. Thank you for your cooperation. From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of ext LUIS GARCIA GARCIA Sent: Friday, August 12, 2011 10:23 AM To: fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT Dear all, Find enclosed the final version of the FI-WARE CA. As per request of several partners, we?ve done some modifications in clause 4.1. in order to protect parties?s technology when used by other partner- or a third party- in an implementation of the FI-WARE Generic Enabler Specifications. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects we must take into account and that cannot be subject to "protection or royalties": 1.- If it is something "inherent" to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Further, we?ve seen that there may be a misinterpretation in the first paragraph, and we?ve modified "other parties" for "Parties signing this CA as well as any other third party" that perfectly reflects the intention of the paragraph. I?ve changed only the yellow marked part So, the wording we propose would be: "Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, parties signing this CA as well as any other third party may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. However, notwithstanding the above, parties are not barred from requesting royalties, or protecting their rights, for use of technology (e.g. but not limited to patents) in implementations of the FI-WARE Generic Enablers Specifications, provided such technology is not disclosed by the FI-WARE Generic Enabler Specifications or is not inherent to, or cannot trivially be derived as valid implementations of part of the FI-WARE Generic Enabler Specifications. " The rest of the clause remains as it was. -**************************************** Except for any typo, we consider this version as final as there?s no room for further negotiations. We?ve received the 2nd august the signed contract from the Commission, so we have a 45 days, from that date, to complete the signature of Form A; however, we?ve only received 9 of 26 Form A signed. If we do not received the Form A we?re putting the project in a serious risk. Please send us ASAP this pending signed documentation. We?ve included the contact and signature information we?ve received. However, there are still partners that have not sent us their information. Please, do it ASAP. Next week I?ll send the pdf signature version with the information we have up to this moment. If any of your signing representative is going to leave on holidays, I kindly ask you to request them the signature before they go. Also these organizations which have not yet signed and sent the Collaboration Agreement to our address should complete this also ASAP. We want transfer our most sincere thanks for your flexibility and your cooperation during this long negotiation. Please, let us know if you?d need any further information. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) [cid:548164013 at 17082011-0672] ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal -------------- next part -------------- An HTML attachment was scrubbed... URL: -------------- next part -------------- A non-text attachment was scrubbed... Name: ATT00001.png Type: image/png Size: 16885 bytes Desc: ATT00001.png URL: From GALITL at il.ibm.com Thu Aug 18 09:36:48 2011 From: GALITL at il.ibm.com (Galit Leider) Date: Thu, 18 Aug 2011 10:36:48 +0300 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT In-Reply-To: <400B1E0D509AB14C95FFDC1DE303B9A881E116A17A@EXCLU2K7.hi.inet> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A17A@EXCLU2K7.hi.inet> Message-ID: Luis, Thank you very much for your efforts and dedication! This version is acceptable to IBM. Just a small typo in section 3 part 1, in IBM Research GMBH, the "(e.g.)" should be deleted before the email address. Best regards, Galit Leider (LL.B ,MBA) Senior Contracts Professional Business and Government Relations IBM Haifa Research Lab Tel: +972-4-8281300, mobile: +972-54-6976300 email: galitl at il.ibm.com From: LUIS GARCIA GARCIA To: "fiware-legal at lists.fi-ware.eu" Cc: Asesor?a Jur?dica Date: 12/08/2011 11:43 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear all, Find enclosed the final version of the FI-WARE CA. As per request of several partners, we?ve done some modifications in clause 4.1. in order to protect parties?s technology when used by other partner- or a third party- in an implementation of the FI-WARE Generic Enabler Specifications. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects we must take into account and that cannot be subject to ?protection or royalties?: 1.- If it is something ?inherent? to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Further, we?ve seen that there may be a misinterpretation in the first paragraph, and we?ve modified ?other parties? for ?Parties signing this CA as well as any other third party? that perfectly reflects the intention of the paragraph. I?ve changed only the yellow marked part So, the wording we propose would be: ?Notwithstanding any conflicting terms in this CA, the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, parties signing this CA as well as any other third party may use such FI-WARE Generic Enabler Specifications to develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. However, notwithstanding the above, parties are not barred from requesting royalties, or protecting their rights, for use of technology (e.g. but not limited to patents) in implementations of the FI-WARE Generic Enablers Specifications, provided such technology is not disclosed by the FI-WARE Generic Enabler Specifications or is not inherent to, or cannot trivially be derived as valid implementations of part of the FI-WARE Generic Enabler Specifications. ? The rest of the clause remains as it was. -**************************************** Except for any typo, we consider this version as final as there?s no room for further negotiations. We?ve received the 2nd august the signed contract from the Commission, so we have a 45 days, from that date, to complete the signature of Form A; however, we?ve only received 9 of 26 Form A signed. If we do not received the Form A we?re putting the project in a serious risk. Please send us ASAP this pending signed documentation. We?ve included the contact and signature information we?ve received. However, there are still partners that have not sent us their information. Please, do it ASAP. Next week I?ll send the pdf signature version with the information we have up to this moment. If any of your signing representative is going to leave on holidays, I kindly ask you to request them the signature before they go. Also these organizations which have not yet signed and sent the Collaboration Agreement to our address should complete this also ASAP. We want transfer our most sincere thanks for your flexibility and your cooperation during this long negotiation. Please, let us know if you?d need any further information. Best regards Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) cid:image001.png at 01CBC9F9.AC146AD0 Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: IPCA_FI-WARE version 11th august.doc) _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal -------------- next part -------------- A non-text attachment was scrubbed... Name: IPCA_FI-WARE version 11th august.doc Type: application/msword Size: 421888 bytes Desc: not available URL: From lgg at tid.es Mon Aug 22 10:40:35 2011 From: lgg at tid.es (LUIS GARCIA GARCIA) Date: Mon, 22 Aug 2011 10:40:35 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Message-ID: <400B1E0D509AB14C95FFDC1DE303B9A881E116A38A@EXCLU2K7.hi.inet> Dear all, Although clause 4.1 was agreed and closed during our calls and e-mails discussions, some partners pointed out that it was necessary to modify it in order to enable the partners to protect and/or request royalties regarding the IPRs included in the implementations of the FI-WARE GES. We proposed a wording that, from our point of view, regulate this situations and, in parallel, didn?t affect the essence of the project at this point ( accordingly with the DoW). In this FINAL VERSION of the CA, we?ve included the comments sent by NSN in this clause in the two first paragraphs, but not the new third paragraph as, from our perspective, goes beyond the modification requested and will give rise to another round of discussions and literally we have no more time to afford it. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects that cannot be subject to "protection or royalties": 1.- If it is something "inherent" to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Regarding Technnicolor concerns about the payment clause (agreed during one of the Conference calls held during the negotiation process), we?ve maintained the clause wording under our reasoning in mails of 22nd July 27th July sent to Technicolor. We have also included a last minute minor change in the publications clause. Our technical people strongly requested us to include a shorter term for the publications clause to enable the parties to duly fulfill with a "normal" technical development of the project. It is to make shorter the term for the publications of the Public Deliverables (10 working days) and to enable the Board to decide an even shorter term in case of publications in the project website www.fi-ware.eu ( maximum 5 working days) They say that a 20 days period is not practical at all, at least for these publications, specially to attend the needs of Use Cases projects and the expected content of the mentioned web site. I?ve modified clause 4.4.1. including a new point c) and also (accordingly) clauses 3.3.1 and 3.3.2.5 (functions and decisions of the Board) Last, accordingly with Article 1.4 of the Grant Agreement, the Commission is expecting with the signed Grant Agreement that the consortium has established and signed a Consortium Agreement. We must take into account that the 45 days period to deliver the signed Form A to the Commission expire (except I?m wrong) next 16th Sept and some partners subject their signature to the conclusion of this agreement. Consequently, I have received definitive instructions to close the Consortium Agreement and start the signature process. Please find attached the final Consortium Agreement for FI-WARE for signature (pdf-document). In addition, I prepared the signature pages per FI-WARE partner (word-document) based on the information received. I would like to receive the pending information to complete the signature with the name(s) and title(s) of the organization that still have not sent their details. As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Please print 26 signature pages of your signature page and send them signed to the address mentioned bellow by courier mail latest by 9th September. Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal To the att of Mr. Javier de Pedro DISTRITO C- Edificio Oeste 1, 4? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) We will confirm the reception of your signature and will send back one original together with the copies of the other signatures. In addition, please send a scanned version of your signature page latest by 9th September: The parties that have already sent the signed Collaboration Agreement to AALTO (or to the Coordinators of others FUTURE INTERNET projects) please send us a scanned copy of your signature page to the following e-mail address jdps at tid.es; the rest of participants that have still not signed the Collaboration Agreement, please send us also three copies of the signature page ( Annex 1) to the address mentioned above. Find enclosed the final version of the Collaboration Agreement. If you have any further doubts regarding the signature process, please let us know. Thanks and regards. Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) [cid:image001.png at 01CC60B6.9E87DC40] ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx -------------- next part -------------- An HTML attachment was scrubbed... URL: -------------- next part -------------- A non-text attachment was scrubbed... Name: image001.png Type: image/png Size: 16885 bytes Desc: image001.png URL: -------------- next part -------------- A non-text attachment was scrubbed... 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Name: FI PPP Collaboration Agreement Final.pdf Type: application/pdf Size: 1328895 bytes Desc: FI PPP Collaboration Agreement Final.pdf URL: From Karl.Schattauer at alcatel-lucent.com Tue Aug 23 13:54:16 2011 From: Karl.Schattauer at alcatel-lucent.com (SCHATTAUER, Karl) Date: Tue, 23 Aug 2011 13:54:16 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) In-Reply-To: <400B1E0D509AB14C95FFDC1DE303B9A881E116A38A@EXCLU2K7.hi.inet> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A38A@EXCLU2K7.hi.inet> Message-ID: <175D251D5B968549BDBBAA2BAC721C97016ABEFF@SLFSNX.rcs.alcatel-research.de> Dear Luis, all, below please find some comments from our legal department. Best Regards, Karl Dear Luis, Per email dated August 17, Alcatel-Lucent proposed some modifications to section 4.1 of the CA. One of the main concerns we tried to address was to incorporate an obligation on any third party joining the CA or underlying agreements to grant the same rights on its patents on the same terms and conditions on which such third party receives rights from the Consortium Partners under the CA or other associated agreements. The final version sent to us does not address this concern. Instead it has been proposed by SAP AG to cover the reciprocity under adequate licenses attached to the GE Specifications. This approach bears the following risks: ? It would be at the option and discretion of a third party to agree to grant reciprocity ? Under some national laws, based on the current wording of section 4.1 a, any third party could be considered as a third party beneficiary to the CA and be eligible to request the grant of royalty free patent licenses to the GE Specs ( which would include the Parties Background, Sideground and Foreground). Consequently there is a risk that we may not have the right to request a royalty free grant back license from such third party. For these valid reasons, the obligation on third parties to grant reciprocity should be stated in the CA. We believe that this is a very balanced approach. Therefore we propose to reword the second sentence of the second paragraph of section 4.1 as follows (modification indicated in bold letters): "For the sake of clarity, Parties signing this CA as well as any other third party, subject to reciprocity, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis." We look forward to your response. All the best, Oezlem Schmitt OEZLEM SCHMITT IP CORPORATE COUNSEL ALCATEL-LUCENT INTELLECTUAL PROPERTY & STANDARDS P: +49 711 821 44562 F: +49 711 821 44587 Oezlem.Schmitt at alcatel-lucent.com Alcatel-Lucent Deutschland AG Lorenzstra?e 10 70435 Stuttgart Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von LUIS GARCIA GARCIA Gesendet: Montag, 22. August 2011 10:41 An: fiware-legal at lists.fi-ware.eu Cc: JOSE JIMENEZ DELGADO; Asesor?a Jur?dica; LUIS LOPEZ DE AYALA HIDALGO Betreff: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear all, Although clause 4.1 was agreed and closed during our calls and e-mails discussions, some partners pointed out that it was necessary to modify it in order to enable the partners to protect and/or request royalties regarding the IPRs included in the implementations of the FI-WARE GES. We proposed a wording that, from our point of view, regulate this situations and, in parallel, didn?t affect the essence of the project at this point ( accordingly with the DoW). In this FINAL VERSION of the CA, we?ve included the comments sent by NSN in this clause in the two first paragraphs, but not the new third paragraph as, from our perspective, goes beyond the modification requested and will give rise to another round of discussions and literally we have no more time to afford it. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects that cannot be subject to "protection or royalties": 1.- If it is something "inherent" to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Regarding Technnicolor concerns about the payment clause (agreed during one of the Conference calls held during the negotiation process), we?ve maintained the clause wording under our reasoning in mails of 22nd July 27th July sent to Technicolor. We have also included a last minute minor change in the publications clause. Our technical people strongly requested us to include a shorter term for the publications clause to enable the parties to duly fulfill with a "normal" technical development of the project. It is to make shorter the term for the publications of the Public Deliverables (10 working days) and to enable the Board to decide an even shorter term in case of publications in the project website www.fi-ware.eu ( maximum 5 working days) They say that a 20 days period is not practical at all, at least for these publications, specially to attend the needs of Use Cases projects and the expected content of the mentioned web site. I?ve modified clause 4.4.1. including a new point c) and also (accordingly) clauses 3.3.1 and 3.3.2.5 (functions and decisions of the Board) Last, accordingly with Article 1.4 of the Grant Agreement, the Commission is expecting with the signed Grant Agreement that the consortium has established and signed a Consortium Agreement. We must take into account that the 45 days period to deliver the signed Form A to the Commission expire (except I?m wrong) next 16th Sept and some partners subject their signature to the conclusion of this agreement. Consequently, I have received definitive instructions to close the Consortium Agreement and start the signature process. Please find attached the final Consortium Agreement for FI-WARE for signature (pdf-document). In addition, I prepared the signature pages per FI-WARE partner (word-document) based on the information received. I would like to receive the pending information to complete the signature with the name(s) and title(s) of the organization that still have not sent their details. As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Please print 26 signature pages of your signature page and send them signed to the address mentioned bellow by courier mail latest by 9th September. Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal To the att of Mr. Javier de Pedro DISTRITO C- Edificio Oeste 1, 4? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) We will confirm the reception of your signature and will send back one original together with the copies of the other signatures. In addition, please send a scanned version of your signature page latest by 9th September: The parties that have already sent the signed Collaboration Agreement to AALTO (or to the Coordinators of others FUTURE INTERNET projects) please send us a scanned copy of your signature page to the following e-mail address jdps at tid.es; the rest of participants that have still not signed the Collaboration Agreement, please send us also three copies of the signature page ( Annex 1) to the address mentioned above. Find enclosed the final version of the Collaboration Agreement. If you have any further doubts regarding the signature process, please let us know. Thanks and regards. Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx -------------- next part -------------- An HTML attachment was scrubbed... URL: -------------- next part -------------- A non-text attachment was scrubbed... Name: image001.png Type: image/png Size: 16885 bytes Desc: image001.png URL: From susanne.weikl at nsn.com Tue Aug 23 14:26:51 2011 From: susanne.weikl at nsn.com (Weikl, Susanne (NSN - DE/Munich)) Date: Tue, 23 Aug 2011 14:26:51 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) In-Reply-To: A<175D251D5B968549BDBBAA2BAC721C97016ABEFF@SLFSNX.rcs.alcatel-research.de> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A38A@EXCLU2K7.hi.inet> A<175D251D5B968549BDBBAA2BAC721C97016ABEFF@SLFSNX.rcs.alcatel-research.de> Message-ID: <2B9915A85B6D8D47A5051C368C56E7D40206D34C@DEMUEXC005.nsn-intra.net> Hello Luis and all, NSN strongly supports the suggested change. We indeed run the risk of a party claiming that this provision is a third party beneficiary clause and therefore we are not requested to ask for reciprocity. It is a very small change, which is perfectly legitimate and in the interest of and to the benefit of all Parties. Best Regards Susanne From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of ext SCHATTAUER, Karl Sent: Tuesday, August 23, 2011 1:54 PM To: LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica; JOSE JIMENEZ DELGADO; LUIS LOPEZ DE AYALA HIDALGO Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear Luis, all, below please find some comments from our legal department. Best Regards, Karl Dear Luis, Per email dated August 17, Alcatel-Lucent proposed some modifications to section 4.1 of the CA. One of the main concerns we tried to address was to incorporate an obligation on any third party joining the CA or underlying agreements to grant the same rights on its patents on the same terms and conditions on which such third party receives rights from the Consortium Partners under the CA or other associated agreements. The final version sent to us does not address this concern. Instead it has been proposed by SAP AG to cover the reciprocity under adequate licenses attached to the GE Specifications. This approach bears the following risks: ? It would be at the option and discretion of a third party to agree to grant reciprocity ? Under some national laws, based on the current wording of section 4.1 a, any third party could be considered as a third party beneficiary to the CA and be eligible to request the grant of royalty free patent licenses to the GE Specs ( which would include the Parties Background, Sideground and Foreground). Consequently there is a risk that we may not have the right to request a royalty free grant back license from such third party. For these valid reasons, the obligation on third parties to grant reciprocity should be stated in the CA. We believe that this is a very balanced approach. Therefore we propose to reword the second sentence of the second paragraph of section 4.1 as follows (modification indicated in bold letters): "For the sake of clarity, Parties signing this CA as well as any other third party, subject to reciprocity, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis." We look forward to your response. All the best, Oezlem Schmitt OEZLEM SCHMITT IP CORPORATE COUNSEL ALCATEL-LUCENT INTELLECTUAL PROPERTY & STANDARDS P: +49 711 821 44562 F: +49 711 821 44587 Oezlem.Schmitt at alcatel-lucent.com Alcatel-Lucent Deutschland AG Lorenzstra?e 10 70435 Stuttgart Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von LUIS GARCIA GARCIA Gesendet: Montag, 22. August 2011 10:41 An: fiware-legal at lists.fi-ware.eu Cc: JOSE JIMENEZ DELGADO; Asesor?a Jur?dica; LUIS LOPEZ DE AYALA HIDALGO Betreff: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear all, Although clause 4.1 was agreed and closed during our calls and e-mails discussions, some partners pointed out that it was necessary to modify it in order to enable the partners to protect and/or request royalties regarding the IPRs included in the implementations of the FI-WARE GES. We proposed a wording that, from our point of view, regulate this situations and, in parallel, didn?t affect the essence of the project at this point ( accordingly with the DoW). In this FINAL VERSION of the CA, we?ve included the comments sent by NSN in this clause in the two first paragraphs, but not the new third paragraph as, from our perspective, goes beyond the modification requested and will give rise to another round of discussions and literally we have no more time to afford it. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects that cannot be subject to "protection or royalties": 1.- If it is something "inherent" to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Regarding Technnicolor concerns about the payment clause (agreed during one of the Conference calls held during the negotiation process), we?ve maintained the clause wording under our reasoning in mails of 22nd July 27th July sent to Technicolor. We have also included a last minute minor change in the publications clause. Our technical people strongly requested us to include a shorter term for the publications clause to enable the parties to duly fulfill with a "normal" technical development of the project. It is to make shorter the term for the publications of the Public Deliverables (10 working days) and to enable the Board to decide an even shorter term in case of publications in the project website www.fi-ware.eu ( maximum 5 working days) They say that a 20 days period is not practical at all, at least for these publications, specially to attend the needs of Use Cases projects and the expected content of the mentioned web site. I?ve modified clause 4.4.1. including a new point c) and also (accordingly) clauses 3.3.1 and 3.3.2.5 (functions and decisions of the Board) Last, accordingly with Article 1.4 of the Grant Agreement, the Commission is expecting with the signed Grant Agreement that the consortium has established and signed a Consortium Agreement. We must take into account that the 45 days period to deliver the signed Form A to the Commission expire (except I?m wrong) next 16th Sept and some partners subject their signature to the conclusion of this agreement. Consequently, I have received definitive instructions to close the Consortium Agreement and start the signature process. Please find attached the final Consortium Agreement for FI-WARE for signature (pdf-document). In addition, I prepared the signature pages per FI-WARE partner (word-document) based on the information received. I would like to receive the pending information to complete the signature with the name(s) and title(s) of the organization that still have not sent their details. As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Please print 26 signature pages of your signature page and send them signed to the address mentioned bellow by courier mail latest by 9th September. Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal To the att of Mr. Javier de Pedro DISTRITO C- Edificio Oeste 1, 4? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) We will confirm the reception of your signature and will send back one original together with the copies of the other signatures. In addition, please send a scanned version of your signature page latest by 9th September: The parties that have already sent the signed Collaboration Agreement to AALTO (or to the Coordinators of others FUTURE INTERNET projects) please send us a scanned copy of your signature page to the following e-mail address jdps at tid.es; the rest of participants that have still not signed the Collaboration Agreement, please send us also three copies of the signature page ( Annex 1) to the address mentioned above. Find enclosed the final version of the Collaboration Agreement. If you have any further doubts regarding the signature process, please let us know. Thanks and regards. Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx -------------- next part -------------- An HTML attachment was scrubbed... URL: -------------- next part -------------- A non-text attachment was scrubbed... Name: image001.png Type: image/png Size: 16885 bytes Desc: image001.png URL: From kathrin.schweppe at sap.com Tue Aug 23 15:12:18 2011 From: kathrin.schweppe at sap.com (Schweppe, Kathrin) Date: Tue, 23 Aug 2011 15:12:18 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) In-Reply-To: <175D251D5B968549BDBBAA2BAC721C97016ABEFF@SLFSNX.rcs.alcatel-research.de> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A38A@EXCLU2K7.hi.inet> <175D251D5B968549BDBBAA2BAC721C97016ABEFF@SLFSNX.rcs.alcatel-research.de> Message-ID: <7ED7B27AF3542948BAB7BCD179A7677C10CD40CEB5@DEWDFECCR03.wdf.sap.corp> Dear Karl, dear Susanne first, SAP cannot agree to any changes to CA now, because we have already send the CA for signature. The only way to change the CA for SAP now would be an amendment. Secondly, I disagree with your legal advisor. Reciprocity is not upon any third party discretion because the party or parties creating the Generic Enabler Specifications are free to decide upon Terms of Use they would like to attach to the Generic Enabler Specifications. It is not upon third parties to decide about the conditions for the usage of the Generic Enabler Specifications. Thirdly, what happens if a party does not agree upon reciprocity for specific Generic Enabler Specification? I assume it should be free to all Fi-Ware partners to decide most freely upon the terms and conditions upon which the Generic Enabler Specification should be published. I do not see a connection between royalties (= money to be paid) or a reciprocal license. Another point with regard to third party beneficiaries, the DOW states this: "Task 2.3: Consolidation of Generic Enabler Specifications In order to fulfil the FI-WARE promise all Generic Enablers will be accompanied by Open Specifications that will facilitate usage and integration in any FI-WARE Instance as well as the development of compliant implementations of GEs by third parties. While GE Specifications themselves will be done inside WP3-WP10, overall coordination and consolidation of these specifications is the objective and responsibility of this Task. " I assume, if the third party beneficiary does not claim the usage license without reciprocity from the CA, they can claim it from the DOW. I understand it in that way, that we have to make available the Specification under such conditions, that a third party can develop freely an implementation of it. And to be honest, the word Open might give the impression to have even broader rights than just no royalties. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von SCHATTAUER, Karl Gesendet: Dienstag, 23. August 2011 13:54 An: LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica; JOSE JIMENEZ DELGADO; LUIS LOPEZ DE AYALA HIDALGO Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear Luis, all, below please find some comments from our legal department. Best Regards, Karl Dear Luis, Per email dated August 17, Alcatel-Lucent proposed some modifications to section 4.1 of the CA. One of the main concerns we tried to address was to incorporate an obligation on any third party joining the CA or underlying agreements to grant the same rights on its patents on the same terms and conditions on which such third party receives rights from the Consortium Partners under the CA or other associated agreements. The final version sent to us does not address this concern. Instead it has been proposed by SAP AG to cover the reciprocity under adequate licenses attached to the GE Specifications. This approach bears the following risks: ? It would be at the option and discretion of a third party to agree to grant reciprocity ? Under some national laws, based on the current wording of section 4.1 a, any third party could be considered as a third party beneficiary to the CA and be eligible to request the grant of royalty free patent licenses to the GE Specs ( which would include the Parties Background, Sideground and Foreground). Consequently there is a risk that we may not have the right to request a royalty free grant back license from such third party. For these valid reasons, the obligation on third parties to grant reciprocity should be stated in the CA. We believe that this is a very balanced approach. Therefore we propose to reword the second sentence of the second paragraph of section 4.1 as follows (modification indicated in bold letters): "For the sake of clarity, Parties signing this CA as well as any other third party, subject to reciprocity, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis." We look forward to your response. All the best, Oezlem Schmitt OEZLEM SCHMITT IP CORPORATE COUNSEL ALCATEL-LUCENT INTELLECTUAL PROPERTY & STANDARDS P: +49 711 821 44562 F: +49 711 821 44587 Oezlem.Schmitt at alcatel-lucent.com Alcatel-Lucent Deutschland AG Lorenzstra?e 10 70435 Stuttgart Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von LUIS GARCIA GARCIA Gesendet: Montag, 22. August 2011 10:41 An: fiware-legal at lists.fi-ware.eu Cc: JOSE JIMENEZ DELGADO; Asesor?a Jur?dica; LUIS LOPEZ DE AYALA HIDALGO Betreff: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear all, Although clause 4.1 was agreed and closed during our calls and e-mails discussions, some partners pointed out that it was necessary to modify it in order to enable the partners to protect and/or request royalties regarding the IPRs included in the implementations of the FI-WARE GES. We proposed a wording that, from our point of view, regulate this situations and, in parallel, didn?t affect the essence of the project at this point ( accordingly with the DoW). In this FINAL VERSION of the CA, we?ve included the comments sent by NSN in this clause in the two first paragraphs, but not the new third paragraph as, from our perspective, goes beyond the modification requested and will give rise to another round of discussions and literally we have no more time to afford it. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects that cannot be subject to "protection or royalties": 1.- If it is something "inherent" to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Regarding Technnicolor concerns about the payment clause (agreed during one of the Conference calls held during the negotiation process), we?ve maintained the clause wording under our reasoning in mails of 22nd July 27th July sent to Technicolor. We have also included a last minute minor change in the publications clause. Our technical people strongly requested us to include a shorter term for the publications clause to enable the parties to duly fulfill with a "normal" technical development of the project. It is to make shorter the term for the publications of the Public Deliverables (10 working days) and to enable the Board to decide an even shorter term in case of publications in the project website www.fi-ware.eu ( maximum 5 working days) They say that a 20 days period is not practical at all, at least for these publications, specially to attend the needs of Use Cases projects and the expected content of the mentioned web site. I?ve modified clause 4.4.1. including a new point c) and also (accordingly) clauses 3.3.1 and 3.3.2.5 (functions and decisions of the Board) Last, accordingly with Article 1.4 of the Grant Agreement, the Commission is expecting with the signed Grant Agreement that the consortium has established and signed a Consortium Agreement. We must take into account that the 45 days period to deliver the signed Form A to the Commission expire (except I?m wrong) next 16th Sept and some partners subject their signature to the conclusion of this agreement. Consequently, I have received definitive instructions to close the Consortium Agreement and start the signature process. Please find attached the final Consortium Agreement for FI-WARE for signature (pdf-document). In addition, I prepared the signature pages per FI-WARE partner (word-document) based on the information received. I would like to receive the pending information to complete the signature with the name(s) and title(s) of the organization that still have not sent their details. As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Please print 26 signature pages of your signature page and send them signed to the address mentioned bellow by courier mail latest by 9th September. Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal To the att of Mr. Javier de Pedro DISTRITO C- Edificio Oeste 1, 4? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) We will confirm the reception of your signature and will send back one original together with the copies of the other signatures. In addition, please send a scanned version of your signature page latest by 9th September: The parties that have already sent the signed Collaboration Agreement to AALTO (or to the Coordinators of others FUTURE INTERNET projects) please send us a scanned copy of your signature page to the following e-mail address jdps at tid.es; the rest of participants that have still not signed the Collaboration Agreement, please send us also three copies of the signature page ( Annex 1) to the address mentioned above. Find enclosed the final version of the Collaboration Agreement. If you have any further doubts regarding the signature process, please let us know. Thanks and regards. Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) [cid:image001.png at 01CC619E.87BB5530] ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx -------------- next part -------------- An HTML attachment was scrubbed... URL: -------------- next part -------------- A non-text attachment was scrubbed... Name: image001.png Type: image/png Size: 16885 bytes Desc: image001.png URL: From SUZANNE at il.ibm.com Tue Aug 23 15:40:47 2011 From: SUZANNE at il.ibm.com (Suzanne Erez) Date: Tue, 23 Aug 2011 16:40:47 +0300 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) In-Reply-To: <7ED7B27AF3542948BAB7BCD179A7677C10CD40CEB5@DEWDFECCR03.wdf.sap.corp> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A38A@EXCLU2K7.hi.inet> <175D251D5B968549BDBBAA2BAC721C97016ABEFF@SLFSNX.rcs.alcatel-research.de> <7ED7B27AF3542948BAB7BCD179A7677C10CD40CEB5@DEWDFECCR03.wdf.sap.corp> Message-ID: Susanne, Kathrin, et al., Kathrin has some points in her argument, and so does Susanne and Karl. But are legal arguments really the question? Or is the question what did we agree to in November 2010 when this whole CA negotiation started? From the beginning, our understanding was that the Commission requires that the GES be royalty free. This was conveyed to us by Juanjo. Now there is a new request that goes like - we will make the GES royalty free, but only on the condition that the "public" will promise reciprocity. There is nothing wrong business wise in this approach, and I for one am always happy to get other companies patents royalty free. In fact, I would like to get RAND for the GES. But that was not our agreement with the Commission, and we are working according to the Commission's request. We agreed to this condition 10 months ago. I think it is now 10 months too late to start changing the terms. Being an engineer, I remember an old saying "there comes a time to shoot the engineers and ship the product." I think we can adopt that and say "there comes a time to shoot the attorneys and start the project". I think that time is now. good luck to us all, and happy working on the project! Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel:? 972-4-829-6069? Fax:? 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "SCHATTAUER, Karl" , LUIS GARCIA GARCIA , "fiware-legal at lists.fi-ware.eu" Cc: Asesor?a Jur?dica , JOSE JIMENEZ DELGADO , LUIS LOPEZ DE AYALA HIDALGO Date: 08/23/11 04:16 PM Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Karl, dear Susanne first, SAP cannot agree to any changes to CA now, because we have already send the CA for signature. The only way to change the CA for SAP now would be an amendment. Secondly, I disagree with your legal advisor. Reciprocity is not upon any third party discretion because the party or parties creating the Generic Enabler Specifications are free to decide upon Terms of Use they would like to attach to the Generic Enabler Specifications. It is not upon third parties to decide about the conditions for the usage of the Generic Enabler Specifications. Thirdly, what happens if a party does not agree upon reciprocity for specific Generic Enabler Specification? I assume it should be free to all Fi-Ware partners to decide most freely upon the terms and conditions upon which the Generic Enabler Specification should be published. I do not see a connection between royalties (= money to be paid) or a reciprocal license. Another point with regard to third party beneficiaries, the DOW states this: ?Task 2.3: Consolidation of Generic Enabler Specifications In order to fulfil the FI-WARE promise all Generic Enablers will be accompanied by Open Specifications that will facilitate usage and integration in any FI-WARE Instance as well as the development of compliant implementations of GEs by third parties. While GE Specifications themselves will be done inside WP3-WP10, overall coordination and consolidation of these specifications is the objective and responsibility of this Task. ? I assume, if the third party beneficiary does not claim the usage license without reciprocity from the CA, they can claim it from the DOW. I understand it in that way, that we have to make available the Specification under such conditions, that a third party can develop freely an implementation of it. And to be honest, the word Open might give the impression to have even broader rights than just no royalties. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von SCHATTAUER, Karl Gesendet: Dienstag, 23. August 2011 13:54 An: LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica; JOSE JIMENEZ DELGADO; LUIS LOPEZ DE AYALA HIDALGO Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear Luis, all, below please find some comments from our legal department. Best Regards, Karl Dear Luis, Per email dated August 17, Alcatel-Lucent proposed some modifications to section 4.1 of the CA. One of the main concerns we tried to address was to incorporate an obligation on any third party joining the CA or underlying agreements to grant the same rights on its patents on the same terms and conditions on which such third party receives rights from the Consortium Partners under the CA or other associated agreements. The final version sent to us does not address this concern. Instead it has been proposed by SAP AG to cover the reciprocity under adequate licenses attached to the GE Specifications. This approach bears the following risks: ? It would be at the option and discretion of a third party to agree to grant reciprocity ? Under some national laws, based on the current wording of section 4.1 a, any third party could be considered as a third party beneficiary to the CA and be eligible to request the grant of royalty free patent licenses to the GE Specs ( which would include the Parties Background, Sideground and Foreground). Consequently there is a risk that we may not have the right to request a royalty free grant back license from such third party. For these valid reasons, the obligation on third parties to grant reciprocity should be stated in the CA. We believe that this is a very balanced approach. Therefore we propose to reword the second sentence of the second paragraph of section 4.1 as follows (modification indicated in bold letters): ?For the sake of clarity, Parties signing this CA as well as any other third party, subject to reciprocity, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? We look forward to your response. All the best, Oezlem Schmitt OEZLEM SCHMITT IP CORPORATE COUNSEL ALCATEL-LUCENT INTELLECTUAL PROPERTY & STANDARDS P: +49 711 821 44562 F: +49 711 821 44587 Oezlem.Schmitt at alcatel-lucent.com Alcatel-Lucent Deutschland AG Lorenzstra?e 10 70435 Stuttgart Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von LUIS GARCIA GARCIA Gesendet: Montag, 22. August 2011 10:41 An: fiware-legal at lists.fi-ware.eu Cc: JOSE JIMENEZ DELGADO; Asesor?a Jur?dica; LUIS LOPEZ DE AYALA HIDALGO Betreff: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear all, Although clause 4.1 was agreed and closed during our calls and e-mails discussions, some partners pointed out that it was necessary to modify it in order to enable the partners to protect and/or request royalties regarding the IPRs included in the implementations of the FI-WARE GES. We proposed a wording that, from our point of view, regulate this situations and, in parallel, didn?t affect the essence of the project at this point ( accordingly with the DoW). In this FINAL VERSION of the CA, we?ve included the comments sent by NSN in this clause in the two first paragraphs, but not the new third paragraph as, from our perspective, goes beyond the modification requested and will give rise to another round of discussions and literally we have no more time to afford it. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects that cannot be subject to ?protection or royalties?: 1.- If it is something ?inherent? to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Regarding Technnicolor concerns about the payment clause (agreed during one of the Conference calls held during the negotiation process), we?ve maintained the clause wording under our reasoning in mails of 22nd July 27 th July sent to Technicolor. We have also included a last minute minor change in the publications clause . Our technical people strongly requested us to include a shorter term for the publications clause to enable the parties to duly fulfill with a ?normal? technical development of the project. It is to make shorter the term for the publications of the Public Deliverables (10 working days) and to enable the Board to decide an even shorter term in case of publications in the project website www.fi-ware.eu ( maximum 5 working days) They say that a 20 days period is not practical at all, at least for these publications, specially to attend the needs of Use Cases projects and the expected content of the mentioned web site. I?ve modified clause 4.4.1. including a new point c) and also (accordingly) clauses 3.3.1 and 3.3.2.5 (functions and decisions of the Board) Last, accordingly with Article 1.4 of the Grant Agreement, the Commission is expecting with the signed Grant Agreement that the consortium has established and signed a Consortium Agreement. We must take into account that the 45 days period to deliver the signed Form A to the Commission expire (except I?m wrong) next 16th Sept and some partners subject their signature to the conclusion of this agreement. Consequently, I have received definitive instructions to close the Consortium Agreement and start the signature process. Please find attached the final Consortium Agreement for FI-WARE for signature (pdf-document). In addition, I prepared the signature pages per FI-WARE partner (word-document) based on the information received. I would like to receive the pending information to complete the signature with the name(s) and title(s) of the organization that still have not sent their details. As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Please print 26 signature pages of your signature page and send them signed to the address mentioned bellow by courier mail latest by 9th September. Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal To the att of Mr. Javier de Pedro DISTRITO C- Edificio Oeste 1, 4? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) We will confirm the reception of your signature and will send back one original together with the copies of the other signatures. In addition, please send a scanned version of your signature page latest by 9th September: The parties that have already sent the signed Collaboration Agreement to AALTO (or to the Coordinators of others FUTURE INTERNET projects) please send us a scanned copy of your signature page to the following e-mail address jdps at tid.es; the rest of participants that have still not signed the Collaboration Agreement, please send us also three copies of the signature page ( Annex 1) to the address mentioned above. Find enclosed the final version of the Collaboration Agreement. If you have any further doubts regarding the signature process, please let us know. Thanks and regards. Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal -------------- next part -------------- A non-text attachment was scrubbed... Name: image001.png Type: image/png Size: 16885 bytes Desc: not available URL: From susanne.weikl at nsn.com Tue Aug 23 15:50:59 2011 From: susanne.weikl at nsn.com (Weikl, Susanne (NSN - DE/Munich)) Date: Tue, 23 Aug 2011 15:50:59 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) In-Reply-To: A<7ED7B27AF3542948BAB7BCD179A7677C10CD40CEB5@DEWDFECCR03.wdf.sap.corp> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A38A@EXCLU2K7.hi.inet> <175D251D5B968549BDBBAA2BAC721C97016ABEFF@SLFSNX.rcs.alcatel-research.de> A<7ED7B27AF3542948BAB7BCD179A7677C10CD40CEB5@DEWDFECCR03.wdf.sap.corp> Message-ID: <2B9915A85B6D8D47A5051C368C56E7D40206D3F6@DEMUEXC005.nsn-intra.net> Hello Kathrin and all, If the SAP signed CA is already on the way, it can easily be returned or deleted. In fact, the Annex 3 is not complete yet anyway. If we agree that the statement in the CA does not prevent a Party to ask for conditions which are not around a royalty fee, why don't we also include this expressly in the CA in order to avoid ambiguity. I agree that no one has to ask for reciprocity, where it does not consider it necessary. So why not rephrasing it as "For the sake of clarity, Parties signing this CA as well as any other third party, subject to additional conditions or agreement, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis." Last: we don't think that the text in the DoW is contracting. The obligation to provide an open specification does not mean that it has be royalty free and without any conditions. The free of charge implementation rights in the agreement including the free of charge provisioning of Background is a very broad interpretation of this requirement and e.g. goes far beyond the special clause 41, which must also serve as a guideline of what the commission expects from us. It would be equally possible to argue that making the specification publically available on FRAND conditions for the implementation equally fulfils the requirement. This is also sufficent under EU anti trust regulations. We would truly appreciate, if at least this clarification is added. Best Regards Susanne From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of ext Schweppe, Kathrin Sent: Tuesday, August 23, 2011 3:12 PM To: SCHATTAUER, Karl; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica; JOSE JIMENEZ DELGADO; LUIS LOPEZ DE AYALA HIDALGO Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear Karl, dear Susanne first, SAP cannot agree to any changes to CA now, because we have already send the CA for signature. The only way to change the CA for SAP now would be an amendment. Secondly, I disagree with your legal advisor. Reciprocity is not upon any third party discretion because the party or parties creating the Generic Enabler Specifications are free to decide upon Terms of Use they would like to attach to the Generic Enabler Specifications. It is not upon third parties to decide about the conditions for the usage of the Generic Enabler Specifications. Thirdly, what happens if a party does not agree upon reciprocity for specific Generic Enabler Specification? I assume it should be free to all Fi-Ware partners to decide most freely upon the terms and conditions upon which the Generic Enabler Specification should be published. I do not see a connection between royalties (= money to be paid) or a reciprocal license. Another point with regard to third party beneficiaries, the DOW states this: "Task 2.3: Consolidation of Generic Enabler Specifications In order to fulfil the FI-WARE promise all Generic Enablers will be accompanied by Open Specifications that will facilitate usage and integration in any FI-WARE Instance as well as the development of compliant implementations of GEs by third parties. While GE Specifications themselves will be done inside WP3-WP10, overall coordination and consolidation of these specifications is the objective and responsibility of this Task. " I assume, if the third party beneficiary does not claim the usage license without reciprocity from the CA, they can claim it from the DOW. I understand it in that way, that we have to make available the Specification under such conditions, that a third party can develop freely an implementation of it. And to be honest, the word Open might give the impression to have even broader rights than just no royalties. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von SCHATTAUER, Karl Gesendet: Dienstag, 23. August 2011 13:54 An: LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica; JOSE JIMENEZ DELGADO; LUIS LOPEZ DE AYALA HIDALGO Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear Luis, all, below please find some comments from our legal department. Best Regards, Karl Dear Luis, Per email dated August 17, Alcatel-Lucent proposed some modifications to section 4.1 of the CA. One of the main concerns we tried to address was to incorporate an obligation on any third party joining the CA or underlying agreements to grant the same rights on its patents on the same terms and conditions on which such third party receives rights from the Consortium Partners under the CA or other associated agreements. The final version sent to us does not address this concern. Instead it has been proposed by SAP AG to cover the reciprocity under adequate licenses attached to the GE Specifications. This approach bears the following risks: ? It would be at the option and discretion of a third party to agree to grant reciprocity ? Under some national laws, based on the current wording of section 4.1 a, any third party could be considered as a third party beneficiary to the CA and be eligible to request the grant of royalty free patent licenses to the GE Specs ( which would include the Parties Background, Sideground and Foreground). Consequently there is a risk that we may not have the right to request a royalty free grant back license from such third party. For these valid reasons, the obligation on third parties to grant reciprocity should be stated in the CA. We believe that this is a very balanced approach. Therefore we propose to reword the second sentence of the second paragraph of section 4.1 as follows (modification indicated in bold letters): "For the sake of clarity, Parties signing this CA as well as any other third party, subject to reciprocity, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis." We look forward to your response. All the best, Oezlem Schmitt OEZLEM SCHMITT IP CORPORATE COUNSEL ALCATEL-LUCENT INTELLECTUAL PROPERTY & STANDARDS P: +49 711 821 44562 F: +49 711 821 44587 Oezlem.Schmitt at alcatel-lucent.com Alcatel-Lucent Deutschland AG Lorenzstra?e 10 70435 Stuttgart Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von LUIS GARCIA GARCIA Gesendet: Montag, 22. August 2011 10:41 An: fiware-legal at lists.fi-ware.eu Cc: JOSE JIMENEZ DELGADO; Asesor?a Jur?dica; LUIS LOPEZ DE AYALA HIDALGO Betreff: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear all, Although clause 4.1 was agreed and closed during our calls and e-mails discussions, some partners pointed out that it was necessary to modify it in order to enable the partners to protect and/or request royalties regarding the IPRs included in the implementations of the FI-WARE GES. We proposed a wording that, from our point of view, regulate this situations and, in parallel, didn?t affect the essence of the project at this point ( accordingly with the DoW). In this FINAL VERSION of the CA, we?ve included the comments sent by NSN in this clause in the two first paragraphs, but not the new third paragraph as, from our perspective, goes beyond the modification requested and will give rise to another round of discussions and literally we have no more time to afford it. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects that cannot be subject to "protection or royalties": 1.- If it is something "inherent" to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Regarding Technnicolor concerns about the payment clause (agreed during one of the Conference calls held during the negotiation process), we?ve maintained the clause wording under our reasoning in mails of 22nd July 27th July sent to Technicolor. We have also included a last minute minor change in the publications clause. Our technical people strongly requested us to include a shorter term for the publications clause to enable the parties to duly fulfill with a "normal" technical development of the project. It is to make shorter the term for the publications of the Public Deliverables (10 working days) and to enable the Board to decide an even shorter term in case of publications in the project website www.fi-ware.eu ( maximum 5 working days) They say that a 20 days period is not practical at all, at least for these publications, specially to attend the needs of Use Cases projects and the expected content of the mentioned web site. I?ve modified clause 4.4.1. including a new point c) and also (accordingly) clauses 3.3.1 and 3.3.2.5 (functions and decisions of the Board) Last, accordingly with Article 1.4 of the Grant Agreement, the Commission is expecting with the signed Grant Agreement that the consortium has established and signed a Consortium Agreement. We must take into account that the 45 days period to deliver the signed Form A to the Commission expire (except I?m wrong) next 16th Sept and some partners subject their signature to the conclusion of this agreement. Consequently, I have received definitive instructions to close the Consortium Agreement and start the signature process. Please find attached the final Consortium Agreement for FI-WARE for signature (pdf-document). In addition, I prepared the signature pages per FI-WARE partner (word-document) based on the information received. I would like to receive the pending information to complete the signature with the name(s) and title(s) of the organization that still have not sent their details. As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Please print 26 signature pages of your signature page and send them signed to the address mentioned bellow by courier mail latest by 9th September. Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal To the att of Mr. Javier de Pedro DISTRITO C- Edificio Oeste 1, 4? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) We will confirm the reception of your signature and will send back one original together with the copies of the other signatures. In addition, please send a scanned version of your signature page latest by 9th September: The parties that have already sent the signed Collaboration Agreement to AALTO (or to the Coordinators of others FUTURE INTERNET projects) please send us a scanned copy of your signature page to the following e-mail address jdps at tid.es; the rest of participants that have still not signed the Collaboration Agreement, please send us also three copies of the signature page ( Annex 1) to the address mentioned above. Find enclosed the final version of the Collaboration Agreement. If you have any further doubts regarding the signature process, please let us know. Thanks and regards. Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx -------------- next part -------------- An HTML attachment was scrubbed... URL: -------------- next part -------------- A non-text attachment was scrubbed... Name: image001.png Type: image/png Size: 16885 bytes Desc: image001.png URL: From Karl.Schattauer at alcatel-lucent.com Tue Aug 23 16:47:12 2011 From: Karl.Schattauer at alcatel-lucent.com (SCHATTAUER, Karl) Date: Tue, 23 Aug 2011 16:47:12 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) In-Reply-To: <2B9915A85B6D8D47A5051C368C56E7D40206D3F6@DEMUEXC005.nsn-intra.net> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A38A@EXCLU2K7.hi.inet> <175D251D5B968549BDBBAA2BAC721C97016ABEFF@SLFSNX.rcs.alcatel-research.de> A<7ED7B27AF3542948BAB7BCD179A7677C10CD40CEB5@DEWDFECCR03.wdf.sap.corp> <2B9915A85B6D8D47A5051C368C56E7D40206D3F6@DEMUEXC005.nsn-intra.net> Message-ID: <175D251D5B968549BDBBAA2BAC721C97016ABF1E@SLFSNX.rcs.alcatel-research.de> Forwarded on behalf of Oezlem Schmitt, as she is not member of the Fi-Ware legal distribution list. Best regards, K. Schattauer Hello Susanne and all, Alcatel-Lucent fully supports NSN's latest proposal to close the issue on reciprocity. Thanks for your cooperation. All the best, OEZLEM SCHMITT IP CORPORATE COUNSEL ALCATEL-LUCENT INTELLECTUAL PROPERTY & STANDARDS P: +49 711 821 44562 F: +49 711 821 44587 Oezlem.Schmitt at alcatel-lucent.com Alcatel-Lucent Deutschland AG Lorenzstra?e 10 70435 Stuttgart Von: Weikl, Susanne (NSN - DE/Munich) [mailto:susanne.weikl at nsn.com] Gesendet: Dienstag, 23. August 2011 15:51 An: ext Schweppe, Kathrin; SCHATTAUER, Karl; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica; JOSE JIMENEZ DELGADO; LUIS LOPEZ DE AYALA HIDALGO Betreff: RE: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hello Kathrin and all, If the SAP signed CA is already on the way, it can easily be returned or deleted. In fact, the Annex 3 is not complete yet anyway. If we agree that the statement in the CA does not prevent a Party to ask for conditions which are not around a royalty fee, why don't we also include this expressly in the CA in order to avoid ambiguity. I agree that no one has to ask for reciprocity, where it does not consider it necessary. So why not rephrasing it as "For the sake of clarity, Parties signing this CA as well as any other third party, subject to additional conditions or agreement, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis." Last: we don't think that the text in the DoW is contracting. The obligation to provide an open specification does not mean that it has be royalty free and without any conditions. The free of charge implementation rights in the agreement including the free of charge provisioning of Background is a very broad interpretation of this requirement and e.g. goes far beyond the special clause 41, which must also serve as a guideline of what the commission expects from us. It would be equally possible to argue that making the specification publically available on FRAND conditions for the implementation equally fulfils the requirement. This is also sufficent under EU anti trust regulations. We would truly appreciate, if at least this clarification is added. Best Regards Susanne From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of ext Schweppe, Kathrin Sent: Tuesday, August 23, 2011 3:12 PM To: SCHATTAUER, Karl; LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica; JOSE JIMENEZ DELGADO; LUIS LOPEZ DE AYALA HIDALGO Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear Karl, dear Susanne first, SAP cannot agree to any changes to CA now, because we have already send the CA for signature. The only way to change the CA for SAP now would be an amendment. Secondly, I disagree with your legal advisor. Reciprocity is not upon any third party discretion because the party or parties creating the Generic Enabler Specifications are free to decide upon Terms of Use they would like to attach to the Generic Enabler Specifications. It is not upon third parties to decide about the conditions for the usage of the Generic Enabler Specifications. Thirdly, what happens if a party does not agree upon reciprocity for specific Generic Enabler Specification? I assume it should be free to all Fi-Ware partners to decide most freely upon the terms and conditions upon which the Generic Enabler Specification should be published. I do not see a connection between royalties (= money to be paid) or a reciprocal license. Another point with regard to third party beneficiaries, the DOW states this: "Task 2.3: Consolidation of Generic Enabler Specifications In order to fulfil the FI-WARE promise all Generic Enablers will be accompanied by Open Specifications that will facilitate usage and integration in any FI-WARE Instance as well as the development of compliant implementations of GEs by third parties. While GE Specifications themselves will be done inside WP3-WP10, overall coordination and consolidation of these specifications is the objective and responsibility of this Task. " I assume, if the third party beneficiary does not claim the usage license without reciprocity from the CA, they can claim it from the DOW. I understand it in that way, that we have to make available the Specification under such conditions, that a third party can develop freely an implementation of it. And to be honest, the word Open might give the impression to have even broader rights than just no royalties. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von SCHATTAUER, Karl Gesendet: Dienstag, 23. August 2011 13:54 An: LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica; JOSE JIMENEZ DELGADO; LUIS LOPEZ DE AYALA HIDALGO Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear Luis, all, below please find some comments from our legal department. Best Regards, Karl Dear Luis, Per email dated August 17, Alcatel-Lucent proposed some modifications to section 4.1 of the CA. One of the main concerns we tried to address was to incorporate an obligation on any third party joining the CA or underlying agreements to grant the same rights on its patents on the same terms and conditions on which such third party receives rights from the Consortium Partners under the CA or other associated agreements. The final version sent to us does not address this concern. Instead it has been proposed by SAP AG to cover the reciprocity under adequate licenses attached to the GE Specifications. This approach bears the following risks: ? It would be at the option and discretion of a third party to agree to grant reciprocity ? Under some national laws, based on the current wording of section 4.1 a, any third party could be considered as a third party beneficiary to the CA and be eligible to request the grant of royalty free patent licenses to the GE Specs ( which would include the Parties Background, Sideground and Foreground). Consequently there is a risk that we may not have the right to request a royalty free grant back license from such third party. For these valid reasons, the obligation on third parties to grant reciprocity should be stated in the CA. We believe that this is a very balanced approach. Therefore we propose to reword the second sentence of the second paragraph of section 4.1 as follows (modification indicated in bold letters): "For the sake of clarity, Parties signing this CA as well as any other third party, subject to reciprocity, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis." We look forward to your response. All the best, Oezlem Schmitt OEZLEM SCHMITT IP CORPORATE COUNSEL ALCATEL-LUCENT INTELLECTUAL PROPERTY & STANDARDS P: +49 711 821 44562 F: +49 711 821 44587 Oezlem.Schmitt at alcatel-lucent.com Alcatel-Lucent Deutschland AG Lorenzstra?e 10 70435 Stuttgart Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von LUIS GARCIA GARCIA Gesendet: Montag, 22. August 2011 10:41 An: fiware-legal at lists.fi-ware.eu Cc: JOSE JIMENEZ DELGADO; Asesor?a Jur?dica; LUIS LOPEZ DE AYALA HIDALGO Betreff: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear all, Although clause 4.1 was agreed and closed during our calls and e-mails discussions, some partners pointed out that it was necessary to modify it in order to enable the partners to protect and/or request royalties regarding the IPRs included in the implementations of the FI-WARE GES. We proposed a wording that, from our point of view, regulate this situations and, in parallel, didn?t affect the essence of the project at this point ( accordingly with the DoW). In this FINAL VERSION of the CA, we?ve included the comments sent by NSN in this clause in the two first paragraphs, but not the new third paragraph as, from our perspective, goes beyond the modification requested and will give rise to another round of discussions and literally we have no more time to afford it. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects that cannot be subject to "protection or royalties": 1.- If it is something "inherent" to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Regarding Technnicolor concerns about the payment clause (agreed during one of the Conference calls held during the negotiation process), we?ve maintained the clause wording under our reasoning in mails of 22nd July 27th July sent to Technicolor. We have also included a last minute minor change in the publications clause. Our technical people strongly requested us to include a shorter term for the publications clause to enable the parties to duly fulfill with a "normal" technical development of the project. It is to make shorter the term for the publications of the Public Deliverables (10 working days) and to enable the Board to decide an even shorter term in case of publications in the project website www.fi-ware.eu ( maximum 5 working days) They say that a 20 days period is not practical at all, at least for these publications, specially to attend the needs of Use Cases projects and the expected content of the mentioned web site. I?ve modified clause 4.4.1. including a new point c) and also (accordingly) clauses 3.3.1 and 3.3.2.5 (functions and decisions of the Board) Last, accordingly with Article 1.4 of the Grant Agreement, the Commission is expecting with the signed Grant Agreement that the consortium has established and signed a Consortium Agreement. We must take into account that the 45 days period to deliver the signed Form A to the Commission expire (except I?m wrong) next 16th Sept and some partners subject their signature to the conclusion of this agreement. Consequently, I have received definitive instructions to close the Consortium Agreement and start the signature process. Please find attached the final Consortium Agreement for FI-WARE for signature (pdf-document). In addition, I prepared the signature pages per FI-WARE partner (word-document) based on the information received. I would like to receive the pending information to complete the signature with the name(s) and title(s) of the organization that still have not sent their details. As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Please print 26 signature pages of your signature page and send them signed to the address mentioned bellow by courier mail latest by 9th September. Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal To the att of Mr. Javier de Pedro DISTRITO C- Edificio Oeste 1, 4? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) We will confirm the reception of your signature and will send back one original together with the copies of the other signatures. In addition, please send a scanned version of your signature page latest by 9th September: The parties that have already sent the signed Collaboration Agreement to AALTO (or to the Coordinators of others FUTURE INTERNET projects) please send us a scanned copy of your signature page to the following e-mail address jdps at tid.es; the rest of participants that have still not signed the Collaboration Agreement, please send us also three copies of the signature page ( Annex 1) to the address mentioned above. Find enclosed the final version of the Collaboration Agreement. If you have any further doubts regarding the signature process, please let us know. Thanks and regards. Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx -------------- next part -------------- An HTML attachment was scrubbed... URL: -------------- next part -------------- A non-text attachment was scrubbed... Name: image001.png Type: image/png Size: 16885 bytes Desc: image001.png URL: From jhierro at tid.es Thu Aug 25 19:19:31 2011 From: jhierro at tid.es (Juanjo Hierro) Date: Thu, 25 Aug 2011 19:19:31 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) In-Reply-To: References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A38A@EXCLU2K7.hi.inet> <175D251D5B968549BDBBAA2BAC721C97016ABEFF@SLFSNX.rcs.alcatel-research.de> <7ED7B27AF3542948BAB7BCD179A7677C10CD40CEB5@DEWDFECCR03.wdf.sap.corp> Message-ID: <4E568423.8090409@tid.es> Hi all, This discussion is sincerely ... "non-sense". I hope I will be able to explain myself. What is public and royalty-free are the FI-WARE GE Specifications. And as pointed out in previous mails from other partners (despite it was with the omission of the term "specification" which is quite relevant in this discussion) the public and royalty-free nature of FI-WARE GE Specifications is something that was there since proposal time and rather a cornerstone reason why our project passed the evaluation and was accepted by the EC. Given said this, an specification is here a PIECE OF PAPER, that is, documentation. What sort of reciprocity are we looking for here ? Are you asking that third parties make specifications of other products they may have public and royalty-free ? It simply has no-sense. It is like saying that Apple has to make public and royalty-free the specs of one of its products just because it has develop the Safari browser based on the public and royalty-free specs of HTML as published by the W3C (BTW, which product specification would you ask them to make public and royalty-free ? The iPhone specifications ?) Come on. NO-SENSE at all. As repeated many times. Specifications are different than implementations. We are not making our implementations of the FI-WARE GE Specifications public and royalty-free. Nor of course can claim that third parties should give us their implementations for free either. Unless I'm missing something rather important, this discussion is completely non-sense to me. Therefore, no changes in the CA will be incorporated in this respect. As already announced by Luis: As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Best regards, -- Juanjo On 23/08/11 15:40, Suzanne Erez wrote: Susanne, Kathrin, et al., Kathrin has some points in her argument, and so does Susanne and Karl. But are legal arguments really the question? Or is the question what did we agree to in November 2010 when this whole CA negotiation started? >From the beginning, our understanding was that the Commission requires that the GES be royalty free. This was conveyed to us by Juanjo. Now there is a new request that goes like - we will make the GES royalty free, but only on the condition that the "public" will promise reciprocity. There is nothing wrong business wise in this approach, and I for one am always happy to get other companies patents royalty free. In fact, I would like to get RAND for the GES. But that was not our agreement with the Commission, and we are working according to the Commission's request. We agreed to this condition 10 months ago. I think it is now 10 months too late to start changing the terms. Being an engineer, I remember an old saying "there comes a time to shoot the engineers and ship the product." I think we can adopt that and say "there comes a time to shoot the attorneys and start the project". I think that time is now. good luck to us all, and happy working on the project! Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "SCHATTAUER, Karl" , LUIS GARCIA GARCIA , "fiware-legal at lists.fi-ware.eu" Cc: Asesor?a Jur?dica , JOSE JIMENEZ DELGADO , LUIS LOPEZ DE AYALA HIDALGO Date: 08/23/11 04:16 PM Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Karl, dear Susanne first, SAP cannot agree to any changes to CA now, because we have already send the CA for signature. The only way to change the CA for SAP now would be an amendment. Secondly, I disagree with your legal advisor. Reciprocity is not upon any third party discretion because the party or parties creating the Generic Enabler Specifications are free to decide upon Terms of Use they would like to attach to the Generic Enabler Specifications. It is not upon third parties to decide about the conditions for the usage of the Generic Enabler Specifications. Thirdly, what happens if a party does not agree upon reciprocity for specific Generic Enabler Specification? I assume it should be free to all Fi-Ware partners to decide most freely upon the terms and conditions upon which the Generic Enabler Specification should be published. I do not see a connection between royalties (= money to be paid) or a reciprocal license. Another point with regard to third party beneficiaries, the DOW states this: ?Task 2.3: Consolidation of Generic Enabler Specifications In order to fulfil the FI-WARE promise all Generic Enablers will be accompanied by Open Specifications that will facilitate usage and integration in any FI-WARE Instance as well as the development of compliant implementations of GEs by third parties. While GE Specifications themselves will be done inside WP3-WP10, overall coordination and consolidation of these specifications is the objective and responsibility of this Task. ? I assume, if the third party beneficiary does not claim the usage license without reciprocity from the CA, they can claim it from the DOW. I understand it in that way, that we have to make available the Specification under such conditions, that a third party can develop freely an implementation of it. And to be honest, the word Open might give the impression to have even broader rights than just no royalties. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von SCHATTAUER, Karl Gesendet: Dienstag, 23. August 2011 13:54 An: LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica; JOSE JIMENEZ DELGADO; LUIS LOPEZ DE AYALA HIDALGO Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear Luis, all, below please find some comments from our legal department. Best Regards, Karl Dear Luis, Per email dated August 17, Alcatel-Lucent proposed some modifications to section 4.1 of the CA. One of the main concerns we tried to address was to incorporate an obligation on any third party joining the CA or underlying agreements to grant the same rights on its patents on the same terms and conditions on which such third party receives rights from the Consortium Partners under the CA or other associated agreements. The final version sent to us does not address this concern. Instead it has been proposed by SAP AG to cover the reciprocity under adequate licenses attached to the GE Specifications. This approach bears the following risks: ? It would be at the option and discretion of a third party to agree to grant reciprocity ? Under some national laws, based on the current wording of section 4.1 a, any third party could be considered as a third party beneficiary to the CA and be eligible to request the grant of royalty free patent licenses to the GE Specs ( which would include the Parties Background, Sideground and Foreground). Consequently there is a risk that we may not have the right to request a royalty free grant back license from such third party. For these valid reasons, the obligation on third parties to grant reciprocity should be stated in the CA. We believe that this is a very balanced approach. Therefore we propose to reword the second sentence of the second paragraph of section 4.1 as follows (modification indicated in bold letters): ?For the sake of clarity, Parties signing this CA as well as any other third party, subject to reciprocity, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? We look forward to your response. All the best, Oezlem Schmitt OEZLEM SCHMITT IP CORPORATE COUNSEL ALCATEL-LUCENT INTELLECTUAL PROPERTY & STANDARDS P: +49 711 821 44562 F: +49 711 821 44587 Oezlem.Schmitt at alcatel-lucent.com Alcatel-Lucent Deutschland AG Lorenzstra?e 10 70435 Stuttgart Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von LUIS GARCIA GARCIA Gesendet: Montag, 22. August 2011 10:41 An: fiware-legal at lists.fi-ware.eu Cc: JOSE JIMENEZ DELGADO; Asesor?a Jur?dica; LUIS LOPEZ DE AYALA HIDALGO Betreff: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear all, Although clause 4.1 was agreed and closed during our calls and e-mails discussions, some partners pointed out that it was necessary to modify it in order to enable the partners to protect and/or request royalties regarding the IPRs included in the implementations of the FI-WARE GES. We proposed a wording that, from our point of view, regulate this situations and, in parallel, didn?t affect the essence of the project at this point ( accordingly with the DoW). In this FINAL VERSION of the CA, we?ve included the comments sent by NSN in this clause in the two first paragraphs, but not the new third paragraph as, from our perspective, goes beyond the modification requested and will give rise to another round of discussions and literally we have no more time to afford it. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects that cannot be subject to ?protection or royalties?: 1.- If it is something ?inherent? to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Regarding Technnicolor concerns about the payment clause (agreed during one of the Conference calls held during the negotiation process), we?ve maintained the clause wording under our reasoning in mails of 22nd July 27 th July sent to Technicolor. We have also included a last minute minor change in the publications clause . Our technical people strongly requested us to include a shorter term for the publications clause to enable the parties to duly fulfill with a ?normal? technical development of the project. It is to make shorter the term for the publications of the Public Deliverables (10 working days) and to enable the Board to decide an even shorter term in case of publications in the project website www.fi-ware.eu ( maximum 5 working days) They say that a 20 days period is not practical at all, at least for these publications, specially to attend the needs of Use Cases projects and the expected content of the mentioned web site. I?ve modified clause 4.4.1. including a new point c) and also (accordingly) clauses 3.3.1 and 3.3.2.5 (functions and decisions of the Board) Last, accordingly with Article 1.4 of the Grant Agreement, the Commission is expecting with the signed Grant Agreement that the consortium has established and signed a Consortium Agreement. We must take into account that the 45 days period to deliver the signed Form A to the Commission expire (except I?m wrong) next 16th Sept and some partners subject their signature to the conclusion of this agreement. Consequently, I have received definitive instructions to close the Consortium Agreement and start the signature process. Please find attached the final Consortium Agreement for FI-WARE for signature (pdf-document). In addition, I prepared the signature pages per FI-WARE partner (word-document) based on the information received. I would like to receive the pending information to complete the signature with the name(s) and title(s) of the organization that still have not sent their details. As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Please print 26 signature pages of your signature page and send them signed to the address mentioned bellow by courier mail latest by 9th September. Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal To the att of Mr. Javier de Pedro DISTRITO C- Edificio Oeste 1, 4? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) We will confirm the reception of your signature and will send back one original together with the copies of the other signatures. In addition, please send a scanned version of your signature page latest by 9th September: The parties that have already sent the signed Collaboration Agreement to AALTO (or to the Coordinators of others FUTURE INTERNET projects) please send us a scanned copy of your signature page to the following e-mail address jdps at tid.es; the rest of participants that have still not signed the Collaboration Agreement, please send us also three copies of the signature page ( Annex 1) to the address mentioned above. Find enclosed the final version of the Collaboration Agreement. If you have any further doubts regarding the signature process, please let us know. Thanks and regards. Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx -------------- next part -------------- An HTML attachment was scrubbed... URL: -------------- next part -------------- A non-text attachment was scrubbed... Name: jhierro.vcf Type: text/x-vcard Size: 429 bytes Desc: not available URL: From susanne.weikl at nsn.com Fri Aug 26 09:28:53 2011 From: susanne.weikl at nsn.com (Weikl, Susanne (NSN - DE/Munich)) Date: Fri, 26 Aug 2011 09:28:53 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) In-Reply-To: <4E568423.8090409@tid.es> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A38A@EXCLU2K7.hi.inet> <175D251D5B968549BDBBAA2BAC721C97016ABEFF@SLFSNX.rcs.alcatel-research.de> <7ED7B27AF3542948BAB7BCD179A7677C10CD40CEB5@DEWDFECCR03.wdf.sap.corp> <4E568423.8090409@tid.es> Message-ID: <2B9915A85B6D8D47A5051C368C56E7D4020B044B@DEMUEXC005.nsn-intra.net> Hello Juanjo and all, good that we clarify this again: There is 3 levels: 1) The Specification as such, i.e. ?the piece of paper? ? not controversial at all ? can be circulated royalty free. 2) A Party?s implementation of such Specification - ? not controversial at all ? is up to the Party, whether it is royalty bearing or not. 3) The problematic level is the following: do we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification? So far the agreement states ?yes?, provided that it is a ?normal implementation?. This is e.g. going beyond what is normally requested in standardization, where the obligation to avail IPR is either on FRAND conditions or at least limited to ?essential IPR?, not ?normal IPR?. It also goes far beyond what is requested in normal EU projects, where Background only has to be made available under FRAND terms. In this context ?reciprocity? is meant as follows: the third parties has to make available its IPRs which would be used in such a ?normal implementation? of a Specification. It does not extent to any other product or IPR of such third party. What is avoided thereby is that a Party can use all the specification free of charge and block all the rest of the world from using the specifications, should it have a patent which it essentially needed for the implementation of the Specification. Therefore a clarification as in ?For the sake of clarity, Parties signing this CA as well as any other third party, subject to additional conditions or agreement, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? is not nonsense, but protects all of us and fully serves the purpose, we want to achieve: an open specification. Best Regards Susanne From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of ext Juanjo Hierro Sent: Thursday, August 25, 2011 7:20 PM To: fiware-legal at lists.fi-ware.eu Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hi all, This discussion is sincerely ... "non-sense". I hope I will be able to explain myself. What is public and royalty-free are the FI-WARE GE Specifications. And as pointed out in previous mails from other partners (despite it was with the omission of the term "specification" which is quite relevant in this discussion) the public and royalty-free nature of FI-WARE GE Specifications is something that was there since proposal time and rather a cornerstone reason why our project passed the evaluation and was accepted by the EC. Given said this, an specification is here a PIECE OF PAPER, that is, documentation. What sort of reciprocity are we looking for here ? Are you asking that third parties make specifications of other products they may have public and royalty-free ? It simply has no-sense. It is like saying that Apple has to make public and royalty-free the specs of one of its products just because it has develop the Safari browser based on the public and royalty-free specs of HTML as published by the W3C (BTW, which product specification would you ask them to make public and royalty-free ? The iPhone specifications ?) Come on. NO-SENSE at all. As repeated many times. Specifications are different than implementations. We are not making our implementations of the FI-WARE GE Specifications public and royalty-free. Nor of course can claim that third parties should give us their implementations for free either. Unless I'm missing something rather important, this discussion is completely non-sense to me. Therefore, no changes in the CA will be incorporated in this respect. As already announced by Luis: As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Best regards, -- Juanjo On 23/08/11 15:40, Suzanne Erez wrote: Susanne, Kathrin, et al., Kathrin has some points in her argument, and so does Susanne and Karl. But are legal arguments really the question? Or is the question what did we agree to in November 2010 when this whole CA negotiation started? From the beginning, our understanding was that the Commission requires that the GES be royalty free. This was conveyed to us by Juanjo. Now there is a new request that goes like - we will make the GES royalty free, but only on the condition that the "public" will promise reciprocity. There is nothing wrong business wise in this approach, and I for one am always happy to get other companies patents royalty free. In fact, I would like to get RAND for the GES. But that was not our agreement with the Commission, and we are working according to the Commission's request. We agreed to this condition 10 months ago. I think it is now 10 months too late to start changing the terms. Being an engineer, I remember an old saying "there comes a time to shoot the engineers and ship the product." I think we can adopt that and say "there comes a time to shoot the attorneys and start the project". I think that time is now. good luck to us all, and happy working on the project! Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "SCHATTAUER, Karl" , LUIS GARCIA GARCIA , "fiware-legal at lists.fi-ware.eu" Cc: Asesor?a Jur?dica , JOSE JIMENEZ DELGADO , LUIS LOPEZ DE AYALA HIDALGO Date: 08/23/11 04:16 PM Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Karl, dear Susanne first, SAP cannot agree to any changes to CA now, because we have already send the CA for signature. The only way to change the CA for SAP now would be an amendment. Secondly, I disagree with your legal advisor. Reciprocity is not upon any third party discretion because the party or parties creating the Generic Enabler Specifications are free to decide upon Terms of Use they would like to attach to the Generic Enabler Specifications. It is not upon third parties to decide about the conditions for the usage of the Generic Enabler Specifications. Thirdly, what happens if a party does not agree upon reciprocity for specific Generic Enabler Specification? I assume it should be free to all Fi-Ware partners to decide most freely upon the terms and conditions upon which the Generic Enabler Specification should be published. I do not see a connection between royalties (= money to be paid) or a reciprocal license. Another point with regard to third party beneficiaries, the DOW states this: ?Task 2.3: Consolidation of Generic Enabler Specifications In order to fulfil the FI-WARE promise all Generic Enablers will be accompanied by Open Specifications that will facilitate usage and integration in any FI-WARE Instance as well as the development of compliant implementations of GEs by third parties. While GE Specifications themselves will be done inside WP3-WP10, overall coordination and consolidation of these specifications is the objective and responsibility of this Task. ? I assume, if the third party beneficiary does not claim the usage license without reciprocity from the CA, they can claim it from the DOW. I understand it in that way, that we have to make available the Specification under such conditions, that a third party can develop freely an implementation of it. And to be honest, the word Open might give the impression to have even broader rights than just no royalties. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von SCHATTAUER, Karl Gesendet: Dienstag, 23. August 2011 13:54 An: LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica; JOSE JIMENEZ DELGADO; LUIS LOPEZ DE AYALA HIDALGO Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear Luis, all, below please find some comments from our legal department. Best Regards, Karl Dear Luis, Per email dated August 17, Alcatel-Lucent proposed some modifications to section 4.1 of the CA. One of the main concerns we tried to address was to incorporate an obligation on any third party joining the CA or underlying agreements to grant the same rights on its patents on the same terms and conditions on which such third party receives rights from the Consortium Partners under the CA or other associated agreements. The final version sent to us does not address this concern. Instead it has been proposed by SAP AG to cover the reciprocity under adequate licenses attached to the GE Specifications. This approach bears the following risks: ? It would be at the option and discretion of a third party to agree to grant reciprocity ? Under some national laws, based on the current wording of section 4.1 a, any third party could be considered as a third party beneficiary to the CA and be eligible to request the grant of royalty free patent licenses to the GE Specs ( which would include the Parties Background, Sideground and Foreground). Consequently there is a risk that we may not have the right to request a royalty free grant back license from such third party. For these valid reasons, the obligation on third parties to grant reciprocity should be stated in the CA. We believe that this is a very balanced approach. Therefore we propose to reword the second sentence of the second paragraph of section 4.1 as follows (modification indicated in bold letters): ?For the sake of clarity, Parties signing this CA as well as any other third party, subject to reciprocity, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? We look forward to your response. All the best, Oezlem Schmitt OEZLEM SCHMITT IP CORPORATE COUNSEL ALCATEL-LUCENT INTELLECTUAL PROPERTY & STANDARDS P: +49 711 821 44562 F: +49 711 821 44587 Oezlem.Schmitt at alcatel-lucent.com Alcatel-Lucent Deutschland AG Lorenzstra?e 10 70435 Stuttgart Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von LUIS GARCIA GARCIA Gesendet: Montag, 22. August 2011 10:41 An: fiware-legal at lists.fi-ware.eu Cc: JOSE JIMENEZ DELGADO; Asesor?a Jur?dica; LUIS LOPEZ DE AYALA HIDALGO Betreff: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear all, Although clause 4.1 was agreed and closed during our calls and e-mails discussions, some partners pointed out that it was necessary to modify it in order to enable the partners to protect and/or request royalties regarding the IPRs included in the implementations of the FI-WARE GES. We proposed a wording that, from our point of view, regulate this situations and, in parallel, didn?t affect the essence of the project at this point ( accordingly with the DoW). In this FINAL VERSION of the CA, we?ve included the comments sent by NSN in this clause in the two first paragraphs, but not the new third paragraph as, from our perspective, goes beyond the modification requested and will give rise to another round of discussions and literally we have no more time to afford it. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects that cannot be subject to ?protection or royalties?: 1.- If it is something ?inherent? to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Regarding Technnicolor concerns about the payment clause (agreed during one of the Conference calls held during the negotiation process), we?ve maintained the clause wording under our reasoning in mails of 22nd July 27 th July sent to Technicolor. We have also included a last minute minor change in the publications clause . Our technical people strongly requested us to include a shorter term for the publications clause to enable the parties to duly fulfill with a ?normal? technical development of the project. It is to make shorter the term for the publications of the Public Deliverables (10 working days) and to enable the Board to decide an even shorter term in case of publications in the project website www.fi-ware.eu ( maximum 5 working days) They say that a 20 days period is not practical at all, at least for these publications, specially to attend the needs of Use Cases projects and the expected content of the mentioned web site. I?ve modified clause 4.4.1. including a new point c) and also (accordingly) clauses 3.3.1 and 3.3.2.5 (functions and decisions of the Board) Last, accordingly with Article 1.4 of the Grant Agreement, the Commission is expecting with the signed Grant Agreement that the consortium has established and signed a Consortium Agreement. We must take into account that the 45 days period to deliver the signed Form A to the Commission expire (except I?m wrong) next 16th Sept and some partners subject their signature to the conclusion of this agreement. Consequently, I have received definitive instructions to close the Consortium Agreement and start the signature process. Please find attached the final Consortium Agreement for FI-WARE for signature (pdf-document). In addition, I prepared the signature pages per FI-WARE partner (word-document) based on the information received. I would like to receive the pending information to complete the signature with the name(s) and title(s) of the organization that still have not sent their details. As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Please print 26 signature pages of your signature page and send them signed to the address mentioned bellow by courier mail latest by 9th September. Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal To the att of Mr. Javier de Pedro DISTRITO C- Edificio Oeste 1, 4? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) We will confirm the reception of your signature and will send back one original together with the copies of the other signatures. In addition, please send a scanned version of your signature page latest by 9th September: The parties that have already sent the signed Collaboration Agreement to AALTO (or to the Coordinators of others FUTURE INTERNET projects) please send us a scanned copy of your signature page to the following e-mail address jdps at tid.es; the rest of participants that have still not signed the Collaboration Agreement, please send us also three copies of the signature page ( Annex 1) to the address mentioned above. Find enclosed the final version of the Collaboration Agreement. If you have any further doubts regarding the signature process, please let us know. Thanks and regards. Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. 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URL: From Karl.Schattauer at alcatel-lucent.com Fri Aug 26 14:43:46 2011 From: Karl.Schattauer at alcatel-lucent.com (SCHATTAUER, Karl) Date: Fri, 26 Aug 2011 14:43:46 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) In-Reply-To: <2B9915A85B6D8D47A5051C368C56E7D4020B044B@DEMUEXC005.nsn-intra.net> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A38A@EXCLU2K7.hi.inet> <175D251D5B968549BDBBAA2BAC721C97016ABEFF@SLFSNX.rcs.alcatel-research.de> <7ED7B27AF3542948BAB7BCD179A7677C10CD40CEB5@DEWDFECCR03.wdf.sap.corp> <4E568423.8090409@tid.es> <2B9915A85B6D8D47A5051C368C56E7D4020B044B@DEMUEXC005.nsn-intra.net> Message-ID: <175D251D5B968549BDBBAA2BAC721C97016AC00E@SLFSNX.rcs.alcatel-research.de> All, below please find a statement of our legal representative. Best regards, Karl Hello Susanne, Juanjo and all, Susanne, thank you very much for your precise legal analysis of the specifications terms as set forth in section 4.1 of the CA. Indeed if we do not add the clarification as proposed by NSN ?subject to additional conditions or agreement?, there will be no obligation on any third party which did NOT make any contributions whatsoever to the creation of the specifications to grant royalty free IPR licenses to the consortium partners. This may result in a situation where the consortium partners are granting royalty free rights to such third party but such party in return charges the consortium partners for such third party?s IPRs that are infringed by the implementation of the specifications through the consortium partners. Why should we accept to grant broader rights to third parties as opposed to the consortium partners that make valuable contributions to the generation of the specifications? If the objective of this project is to create an open platform without ?restrictions? to access and use of the platform, then EVERYONE which uses the platform and implements the underlying specifications must grant IPR licenses under the same terms and conditions as the originators of the platform are obliged to grant to such party. Thank you for your consideration and cooperation. All the best, Oezlem Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von Weikl, Susanne (NSN - DE/Munich) Gesendet: Freitag, 26. August 2011 09:29 An: ext Juanjo Hierro; fiware-legal at lists.fi-ware.eu Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hello Juanjo and all, good that we clarify this again: There is 3 levels: 1) The Specification as such, i.e. ?the piece of paper? ? not controversial at all ? can be circulated royalty free. 2) A Party?s implementation of such Specification - ? not controversial at all ? is up to the Party, whether it is royalty bearing or not. 3) The problematic level is the following: do we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification? So far the agreement states ?yes?, provided that it is a ?normal implementation?. This is e.g. going beyond what is normally requested in standardization, where the obligation to avail IPR is either on FRAND conditions or at least limited to ?essential IPR?, not ?normal IPR?. It also goes far beyond what is requested in normal EU projects, where Background only has to be made available under FRAND terms. In this context ?reciprocity? is meant as follows: the third parties has to make available its IPRs which would be used in such a ?normal implementation? of a Specification. It does not extent to any other product or IPR of such third party. What is avoided thereby is that a Party can use all the specification free of charge and block all the rest of the world from using the specifications, should it have a patent which it essentially needed for the implementation of the Specification. Therefore a clarification as in ?For the sake of clarity, Parties signing this CA as well as any other third party, subject to additional conditions or agreement, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? is not nonsense, but protects all of us and fully serves the purpose, we want to achieve: an open specification. Best Regards Susanne From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of ext Juanjo Hierro Sent: Thursday, August 25, 2011 7:20 PM To: fiware-legal at lists.fi-ware.eu Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hi all, This discussion is sincerely ... "non-sense". I hope I will be able to explain myself. What is public and royalty-free are the FI-WARE GE Specifications. And as pointed out in previous mails from other partners (despite it was with the omission of the term "specification" which is quite relevant in this discussion) the public and royalty-free nature of FI-WARE GE Specifications is something that was there since proposal time and rather a cornerstone reason why our project passed the evaluation and was accepted by the EC. Given said this, an specification is here a PIECE OF PAPER, that is, documentation. What sort of reciprocity are we looking for here ? Are you asking that third parties make specifications of other products they may have public and royalty-free ? It simply has no-sense. It is like saying that Apple has to make public and royalty-free the specs of one of its products just because it has develop the Safari browser based on the public and royalty-free specs of HTML as published by the W3C (BTW, which product specification would you ask them to make public and royalty-free ? The iPhone specifications ?) Come on. NO-SENSE at all. As repeated many times. Specifications are different than implementations. We are not making our implementations of the FI-WARE GE Specifications public and royalty-free. Nor of course can claim that third parties should give us their implementations for free either. Unless I'm missing something rather important, this discussion is completely non-sense to me. Therefore, no changes in the CA will be incorporated in this respect. As already announced by Luis: As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Best regards, -- Juanjo On 23/08/11 15:40, Suzanne Erez wrote: Susanne, Kathrin, et al., Kathrin has some points in her argument, and so does Susanne and Karl. But are legal arguments really the question? Or is the question what did we agree to in November 2010 when this whole CA negotiation started? From the beginning, our understanding was that the Commission requires that the GES be royalty free. This was conveyed to us by Juanjo. Now there is a new request that goes like - we will make the GES royalty free, but only on the condition that the "public" will promise reciprocity. There is nothing wrong business wise in this approach, and I for one am always happy to get other companies patents royalty free. In fact, I would like to get RAND for the GES. But that was not our agreement with the Commission, and we are working according to the Commission's request. We agreed to this condition 10 months ago. I think it is now 10 months too late to start changing the terms. Being an engineer, I remember an old saying "there comes a time to shoot the engineers and ship the product." I think we can adopt that and say "there comes a time to shoot the attorneys and start the project". I think that time is now. good luck to us all, and happy working on the project! Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "SCHATTAUER, Karl" , LUIS GARCIA GARCIA , "fiware-legal at lists.fi-ware.eu" Cc: Asesor?a Jur?dica , JOSE JIMENEZ DELGADO , LUIS LOPEZ DE AYALA HIDALGO Date: 08/23/11 04:16 PM Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Karl, dear Susanne first, SAP cannot agree to any changes to CA now, because we have already send the CA for signature. The only way to change the CA for SAP now would be an amendment. Secondly, I disagree with your legal advisor. Reciprocity is not upon any third party discretion because the party or parties creating the Generic Enabler Specifications are free to decide upon Terms of Use they would like to attach to the Generic Enabler Specifications. It is not upon third parties to decide about the conditions for the usage of the Generic Enabler Specifications. Thirdly, what happens if a party does not agree upon reciprocity for specific Generic Enabler Specification? I assume it should be free to all Fi-Ware partners to decide most freely upon the terms and conditions upon which the Generic Enabler Specification should be published. I do not see a connection between royalties (= money to be paid) or a reciprocal license. Another point with regard to third party beneficiaries, the DOW states this: ?Task 2.3: Consolidation of Generic Enabler Specifications In order to fulfil the FI-WARE promise all Generic Enablers will be accompanied by Open Specifications that will facilitate usage and integration in any FI-WARE Instance as well as the development of compliant implementations of GEs by third parties. While GE Specifications themselves will be done inside WP3-WP10, overall coordination and consolidation of these specifications is the objective and responsibility of this Task. ? I assume, if the third party beneficiary does not claim the usage license without reciprocity from the CA, they can claim it from the DOW. I understand it in that way, that we have to make available the Specification under such conditions, that a third party can develop freely an implementation of it. And to be honest, the word Open might give the impression to have even broader rights than just no royalties. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von SCHATTAUER, Karl Gesendet: Dienstag, 23. August 2011 13:54 An: LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica; JOSE JIMENEZ DELGADO; LUIS LOPEZ DE AYALA HIDALGO Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear Luis, all, below please find some comments from our legal department. Best Regards, Karl Dear Luis, Per email dated August 17, Alcatel-Lucent proposed some modifications to section 4.1 of the CA. One of the main concerns we tried to address was to incorporate an obligation on any third party joining the CA or underlying agreements to grant the same rights on its patents on the same terms and conditions on which such third party receives rights from the Consortium Partners under the CA or other associated agreements. The final version sent to us does not address this concern. Instead it has been proposed by SAP AG to cover the reciprocity under adequate licenses attached to the GE Specifications. This approach bears the following risks: ? It would be at the option and discretion of a third party to agree to grant reciprocity ? Under some national laws, based on the current wording of section 4.1 a, any third party could be considered as a third party beneficiary to the CA and be eligible to request the grant of royalty free patent licenses to the GE Specs ( which would include the Parties Background, Sideground and Foreground). Consequently there is a risk that we may not have the right to request a royalty free grant back license from such third party. For these valid reasons, the obligation on third parties to grant reciprocity should be stated in the CA. We believe that this is a very balanced approach. Therefore we propose to reword the second sentence of the second paragraph of section 4.1 as follows (modification indicated in bold letters): ?For the sake of clarity, Parties signing this CA as well as any other third party, subject to reciprocity, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? We look forward to your response. All the best, Oezlem Schmitt OEZLEM SCHMITT IP CORPORATE COUNSEL ALCATEL-LUCENT INTELLECTUAL PROPERTY & STANDARDS P: +49 711 821 44562 F: +49 711 821 44587 Oezlem.Schmitt at alcatel-lucent.com Alcatel-Lucent Deutschland AG Lorenzstra?e 10 70435 Stuttgart Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von LUIS GARCIA GARCIA Gesendet: Montag, 22. August 2011 10:41 An: fiware-legal at lists.fi-ware.eu Cc: JOSE JIMENEZ DELGADO; Asesor?a Jur?dica; LUIS LOPEZ DE AYALA HIDALGO Betreff: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear all, Although clause 4.1 was agreed and closed during our calls and e-mails discussions, some partners pointed out that it was necessary to modify it in order to enable the partners to protect and/or request royalties regarding the IPRs included in the implementations of the FI-WARE GES. We proposed a wording that, from our point of view, regulate this situations and, in parallel, didn?t affect the essence of the project at this point ( accordingly with the DoW). In this FINAL VERSION of the CA, we?ve included the comments sent by NSN in this clause in the two first paragraphs, but not the new third paragraph as, from our perspective, goes beyond the modification requested and will give rise to another round of discussions and literally we have no more time to afford it. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects that cannot be subject to ?protection or royalties?: 1.- If it is something ?inherent? to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Regarding Technnicolor concerns about the payment clause (agreed during one of the Conference calls held during the negotiation process), we?ve maintained the clause wording under our reasoning in mails of 22nd July 27 th July sent to Technicolor. We have also included a last minute minor change in the publications clause . Our technical people strongly requested us to include a shorter term for the publications clause to enable the parties to duly fulfill with a ?normal? technical development of the project. It is to make shorter the term for the publications of the Public Deliverables (10 working days) and to enable the Board to decide an even shorter term in case of publications in the project website www.fi-ware.eu ( maximum 5 working days) They say that a 20 days period is not practical at all, at least for these publications, specially to attend the needs of Use Cases projects and the expected content of the mentioned web site. I?ve modified clause 4.4.1. including a new point c) and also (accordingly) clauses 3.3.1 and 3.3.2.5 (functions and decisions of the Board) Last, accordingly with Article 1.4 of the Grant Agreement, the Commission is expecting with the signed Grant Agreement that the consortium has established and signed a Consortium Agreement. We must take into account that the 45 days period to deliver the signed Form A to the Commission expire (except I?m wrong) next 16th Sept and some partners subject their signature to the conclusion of this agreement. Consequently, I have received definitive instructions to close the Consortium Agreement and start the signature process. Please find attached the final Consortium Agreement for FI-WARE for signature (pdf-document). In addition, I prepared the signature pages per FI-WARE partner (word-document) based on the information received. I would like to receive the pending information to complete the signature with the name(s) and title(s) of the organization that still have not sent their details. As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Please print 26 signature pages of your signature page and send them signed to the address mentioned bellow by courier mail latest by 9th September. Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal To the att of Mr. Javier de Pedro DISTRITO C- Edificio Oeste 1, 4? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) We will confirm the reception of your signature and will send back one original together with the copies of the other signatures. In addition, please send a scanned version of your signature page latest by 9th September: The parties that have already sent the signed Collaboration Agreement to AALTO (or to the Coordinators of others FUTURE INTERNET projects) please send us a scanned copy of your signature page to the following e-mail address jdps at tid.es; the rest of participants that have still not signed the Collaboration Agreement, please send us also three copies of the signature page ( Annex 1) to the address mentioned above. Find enclosed the final version of the Collaboration Agreement. If you have any further doubts regarding the signature process, please let us know. Thanks and regards. Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. 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URL: From jhierro at tid.es Fri Aug 26 15:38:22 2011 From: jhierro at tid.es (Juanjo Hierro) Date: Fri, 26 Aug 2011 15:38:22 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) In-Reply-To: <175D251D5B968549BDBBAA2BAC721C97016AC00E@SLFSNX.rcs.alcatel-research.de> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A38A@EXCLU2K7.hi.inet> <175D251D5B968549BDBBAA2BAC721C97016ABEFF@SLFSNX.rcs.alcatel-research.de> <7ED7B27AF3542948BAB7BCD179A7677C10CD40CEB5@DEWDFECCR03.wdf.sap.corp> <4E568423.8090409@tid.es> <2B9915A85B6D8D47A5051C368C56E7D4020B044B@DEMUEXC005.nsn-intra.net> <175D251D5B968549BDBBAA2BAC721C97016AC00E@SLFSNX.rcs.alcatel-research.de> Message-ID: <4E57A1CE.6010200@tid.es> On 26/08/11 14:43, SCHATTAUER, Karl wrote: All, below please find a statement of our legal representative. Best regards, Karl Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von Weikl, Susanne (NSN - DE/Munich) Gesendet: Freitag, 26. August 2011 09:29 An: ext Juanjo Hierro; fiware-legal at lists.fi-ware.eu Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hello Juanjo and all, good that we clarify this again: There is 3 levels: 1) The Specification as such, i.e. ?the piece of paper? ? not controversial at all ? can be circulated royalty free. 2) A Party?s implementation of such Specification - ? not controversial at all ? is up to the Party, whether it is royalty bearing or not. 3) The problematic level is the following: do we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification? So far the agreement states ?yes?, provided that it is a ?normal implementation?. Can you explain why are you deriving this ? What do you mean by "normal implementation" ? I have search for the term "normal implementation" and is nowhere in the CA. Even "normal" is not used at all regarding IPRs ... Why do you say that "we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification" ? We say just the opposite in the CA: Parties are not barred from requesting royalties for, or protecting their rights with respect to IPRs (e.g. but not limited to patents) in any such implementations of the FI-WARE Generic Enablers Specifications, which are not directly disclosed by the FI-WARE Generic Enabler Specifications or which are not inherent to, or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications Of course, we will not charge for IPRs that are inherent to or cannot trivially derived as valid implementation of part of a FI-WARE GE specification (read my comment below, further on this matter). But you would be able to charge for IPRs on aspects that are linked to those aspects that may be differential in your product, therefore not inherent nor trivially derived from just reading the spec. This is e.g. going beyond what is normally requested in standardization, where the obligation to avail IPR is either on FRAND conditions or at least limited to ?essential IPR?, not ?normal IPR?. It also goes far beyond what is requested in normal EU projects, where Background only has to be made available under FRAND terms. In this context ?reciprocity? is meant as follows: the third parties has to make available its IPRs which would be used in such a ?normal implementation? of a Specification. It does not extent to any other product or IPR of such third party. What is avoided thereby is that a Party can use all the specification free of charge and block all the rest of the world from using the specifications, should it have a patent which it essentially needed for the implementation of the Specification. Again, don't know what you mean by "normal implementation". But, anyway, let's make one point clear. When a number of companies sit together and try to define something which can become an open standard (and that's what we aim to do in FI-WARE) what they do is that they generate public specifications and try to publicly state (typically in a legal note accompanying the specs) that any party feels should feel confident that it will be able to generate a competitive product, compliant to the specs. And that they will not be suddenly surprised because one day they discover that one of the companies who authored the specs kept (secretly) a patent on something that is "inherent" in the spec or could be trivially derived in the spec. That's regular business in open software standards. The existing clauses in the CA try to make sure that we are on the same page on this. If there is a third party (that is, someone who is not a FI-WARE partner) that has a patent on something that existed previous to our spec, I don't know how you are going to be able to prevent that they sue us when they discover it. It's simply impossible. We will have to battle to it or fix the specs (same thing a standard body would do). If it is something they generated as a result of implementing our spec and it happens to be something "inherent to the spec" or "trivially derived from the spec", I don't understand why they would be able to sue us. We just need to accompany our GE specs with some legal note making a statement like (well, in the right legal terms, I'm not a lawyer) "No party implementing these specifications will be able to charge royalties or claim patents on any element that is directly disclosed by this specification or which is inherent to, or can trivially derived as valid implementation of, part of this specification". That would be the kind of reciprocity you are looking for, I guess. But the right thing to do will be to add the proper legal note in whatever spec we produce. Not to introduce anything in the CA (which is not public). Changing the CA doesn't solve anything. Frankly speaking, what you ask for (the change in the CA) still doesn't make any sense to me. Legal notes we will have to enclose to produced GEs are another story. There, my comment above would apply. Time is over. It's time to sign the current GA. Best regards, -- Juanjo Therefore a clarification as in ?For the sake of clarity, Parties signing this CA as well as any other third party, subject to additional conditions or agreement, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? is not nonsense, but protects all of us and fully serves the purpose, we want to achieve: an open specification. Best Regards Susanne From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of ext Juanjo Hierro Sent: Thursday, August 25, 2011 7:20 PM To: fiware-legal at lists.fi-ware.eu Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hi all, This discussion is sincerely ... "non-sense". I hope I will be able to explain myself. What is public and royalty-free are the FI-WARE GE Specifications. And as pointed out in previous mails from other partners (despite it was with the omission of the term "specification" which is quite relevant in this discussion) the public and royalty-free nature of FI-WARE GE Specifications is something that was there since proposal time and rather a cornerstone reason why our project passed the evaluation and was accepted by the EC. Given said this, an specification is here a PIECE OF PAPER, that is, documentation. What sort of reciprocity are we looking for here ? Are you asking that third parties make specifications of other products they may have public and royalty-free ? It simply has no-sense. It is like saying that Apple has to make public and royalty-free the specs of one of its products just because it has develop the Safari browser based on the public and royalty-free specs of HTML as published by the W3C (BTW, which product specification would you ask them to make public and royalty-free ? The iPhone specifications ?) Come on. NO-SENSE at all. As repeated many times. Specifications are different than implementations. We are not making our implementations of the FI-WARE GE Specifications public and royalty-free. Nor of course can claim that third parties should give us their implementations for free either. Unless I'm missing something rather important, this discussion is completely non-sense to me. Therefore, no changes in the CA will be incorporated in this respect. As already announced by Luis: As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Best regards, -- Juanjo On 23/08/11 15:40, Suzanne Erez wrote: Susanne, Kathrin, et al., Kathrin has some points in her argument, and so does Susanne and Karl. But are legal arguments really the question? Or is the question what did we agree to in November 2010 when this whole CA negotiation started? >From the beginning, our understanding was that the Commission requires that the GES be royalty free. This was conveyed to us by Juanjo. Now there is a new request that goes like - we will make the GES royalty free, but only on the condition that the "public" will promise reciprocity. There is nothing wrong business wise in this approach, and I for one am always happy to get other companies patents royalty free. In fact, I would like to get RAND for the GES. But that was not our agreement with the Commission, and we are working according to the Commission's request. We agreed to this condition 10 months ago. I think it is now 10 months too late to start changing the terms. Being an engineer, I remember an old saying "there comes a time to shoot the engineers and ship the product." I think we can adopt that and say "there comes a time to shoot the attorneys and start the project". I think that time is now. good luck to us all, and happy working on the project! Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "SCHATTAUER, Karl" , LUIS GARCIA GARCIA , "fiware-legal at lists.fi-ware.eu" Cc: Asesor?a Jur?dica , JOSE JIMENEZ DELGADO , LUIS LOPEZ DE AYALA HIDALGO Date: 08/23/11 04:16 PM Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Karl, dear Susanne first, SAP cannot agree to any changes to CA now, because we have already send the CA for signature. The only way to change the CA for SAP now would be an amendment. Secondly, I disagree with your legal advisor. Reciprocity is not upon any third party discretion because the party or parties creating the Generic Enabler Specifications are free to decide upon Terms of Use they would like to attach to the Generic Enabler Specifications. It is not upon third parties to decide about the conditions for the usage of the Generic Enabler Specifications. Thirdly, what happens if a party does not agree upon reciprocity for specific Generic Enabler Specification? I assume it should be free to all Fi-Ware partners to decide most freely upon the terms and conditions upon which the Generic Enabler Specification should be published. I do not see a connection between royalties (= money to be paid) or a reciprocal license. Another point with regard to third party beneficiaries, the DOW states this: ?Task 2.3: Consolidation of Generic Enabler Specifications In order to fulfil the FI-WARE promise all Generic Enablers will be accompanied by Open Specifications that will facilitate usage and integration in any FI-WARE Instance as well as the development of compliant implementations of GEs by third parties. While GE Specifications themselves will be done inside WP3-WP10, overall coordination and consolidation of these specifications is the objective and responsibility of this Task. ? I assume, if the third party beneficiary does not claim the usage license without reciprocity from the CA, they can claim it from the DOW. I understand it in that way, that we have to make available the Specification under such conditions, that a third party can develop freely an implementation of it. And to be honest, the word Open might give the impression to have even broader rights than just no royalties. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von SCHATTAUER, Karl Gesendet: Dienstag, 23. August 2011 13:54 An: LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica; JOSE JIMENEZ DELGADO; LUIS LOPEZ DE AYALA HIDALGO Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear Luis, all, below please find some comments from our legal department. Best Regards, Karl Dear Luis, Per email dated August 17, Alcatel-Lucent proposed some modifications to section 4.1 of the CA. One of the main concerns we tried to address was to incorporate an obligation on any third party joining the CA or underlying agreements to grant the same rights on its patents on the same terms and conditions on which such third party receives rights from the Consortium Partners under the CA or other associated agreements. The final version sent to us does not address this concern. Instead it has been proposed by SAP AG to cover the reciprocity under adequate licenses attached to the GE Specifications. This approach bears the following risks: ? It would be at the option and discretion of a third party to agree to grant reciprocity ? Under some national laws, based on the current wording of section 4.1 a, any third party could be considered as a third party beneficiary to the CA and be eligible to request the grant of royalty free patent licenses to the GE Specs ( which would include the Parties Background, Sideground and Foreground). Consequently there is a risk that we may not have the right to request a royalty free grant back license from such third party. For these valid reasons, the obligation on third parties to grant reciprocity should be stated in the CA. We believe that this is a very balanced approach. Therefore we propose to reword the second sentence of the second paragraph of section 4.1 as follows (modification indicated in bold letters): ?For the sake of clarity, Parties signing this CA as well as any other third party, subject to reciprocity, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? We look forward to your response. All the best, Oezlem Schmitt OEZLEM SCHMITT IP CORPORATE COUNSEL ALCATEL-LUCENT INTELLECTUAL PROPERTY & STANDARDS P: +49 711 821 44562 F: +49 711 821 44587 Oezlem.Schmitt at alcatel-lucent.com Alcatel-Lucent Deutschland AG Lorenzstra?e 10 70435 Stuttgart Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von LUIS GARCIA GARCIA Gesendet: Montag, 22. August 2011 10:41 An: fiware-legal at lists.fi-ware.eu Cc: JOSE JIMENEZ DELGADO; Asesor?a Jur?dica; LUIS LOPEZ DE AYALA HIDALGO Betreff: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear all, Although clause 4.1 was agreed and closed during our calls and e-mails discussions, some partners pointed out that it was necessary to modify it in order to enable the partners to protect and/or request royalties regarding the IPRs included in the implementations of the FI-WARE GES. We proposed a wording that, from our point of view, regulate this situations and, in parallel, didn?t affect the essence of the project at this point ( accordingly with the DoW). In this FINAL VERSION of the CA, we?ve included the comments sent by NSN in this clause in the two first paragraphs, but not the new third paragraph as, from our perspective, goes beyond the modification requested and will give rise to another round of discussions and literally we have no more time to afford it. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects that cannot be subject to ?protection or royalties?: 1.- If it is something ?inherent? to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Regarding Technnicolor concerns about the payment clause (agreed during one of the Conference calls held during the negotiation process), we?ve maintained the clause wording under our reasoning in mails of 22nd July 27 th July sent to Technicolor. We have also included a last minute minor change in the publications clause . Our technical people strongly requested us to include a shorter term for the publications clause to enable the parties to duly fulfill with a ?normal? technical development of the project. It is to make shorter the term for the publications of the Public Deliverables (10 working days) and to enable the Board to decide an even shorter term in case of publications in the project website www.fi-ware.eu ( maximum 5 working days) They say that a 20 days period is not practical at all, at least for these publications, specially to attend the needs of Use Cases projects and the expected content of the mentioned web site. I?ve modified clause 4.4.1. including a new point c) and also (accordingly) clauses 3.3.1 and 3.3.2.5 (functions and decisions of the Board) Last, accordingly with Article 1.4 of the Grant Agreement, the Commission is expecting with the signed Grant Agreement that the consortium has established and signed a Consortium Agreement. We must take into account that the 45 days period to deliver the signed Form A to the Commission expire (except I?m wrong) next 16th Sept and some partners subject their signature to the conclusion of this agreement. Consequently, I have received definitive instructions to close the Consortium Agreement and start the signature process. Please find attached the final Consortium Agreement for FI-WARE for signature (pdf-document). In addition, I prepared the signature pages per FI-WARE partner (word-document) based on the information received. I would like to receive the pending information to complete the signature with the name(s) and title(s) of the organization that still have not sent their details. As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Please print 26 signature pages of your signature page and send them signed to the address mentioned bellow by courier mail latest by 9th September. Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal To the att of Mr. Javier de Pedro DISTRITO C- Edificio Oeste 1, 4? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) We will confirm the reception of your signature and will send back one original together with the copies of the other signatures. In addition, please send a scanned version of your signature page latest by 9th September: The parties that have already sent the signed Collaboration Agreement to AALTO (or to the Coordinators of others FUTURE INTERNET projects) please send us a scanned copy of your signature page to the following e-mail address jdps at tid.es; the rest of participants that have still not signed the Collaboration Agreement, please send us also three copies of the signature page ( Annex 1) to the address mentioned above. Find enclosed the final version of the Collaboration Agreement. If you have any further doubts regarding the signature process, please let us know. Thanks and regards. Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx -------------- next part -------------- An HTML attachment was scrubbed... URL: -------------- next part -------------- A non-text attachment was scrubbed... Name: jhierro.vcf Type: text/x-vcard Size: 429 bytes Desc: not available URL: From susanne.weikl at nsn.com Fri Aug 26 16:59:38 2011 From: susanne.weikl at nsn.com (Weikl, Susanne (NSN - DE/Munich)) Date: Fri, 26 Aug 2011 16:59:38 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) In-Reply-To: <4E57A1CE.6010200@tid.es> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A38A@EXCLU2K7.hi.inet> <175D251D5B968549BDBBAA2BAC721C97016ABEFF@SLFSNX.rcs.alcatel-research.de> <7ED7B27AF3542948BAB7BCD179A7677C10CD40CEB5@DEWDFECCR03.wdf.sap.corp> <4E568423.8090409@tid.es> <2B9915A85B6D8D47A5051C368C56E7D4020B044B@DEMUEXC005.nsn-intra.net> <175D251D5B968549BDBBAA2BAC721C97016AC00E@SLFSNX.rcs.alcatel-research.de> <4E57A1CE.6010200@tid.es> Message-ID: <2B9915A85B6D8D47A5051C368C56E7D4020B07F8@DEMUEXC005.nsn-intra.net> Hello Juanjo, Luis and all, 1. ?normal implementation? is the short form of Luis? explanations ? If it is something ?inherent? to the specifications, that is to say that nobody would implement it in a different way.? and ?If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do.?; his explanation for ?directly disclosed by the FI-WARE Generic Enabler Specifications or which are not inherent to, or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications? 2. So what basically remains for requesting royalties is small and very open to interpretation. 3. If there is a third party (that is, someone who is not a FI-WARE partner) that has a patent on something that existed previous to our spec, it is for example possible to fight that party by putting it into the situation, where it has to chose, whether it rather uses the spec free of charge or use the patent against all and loses it rights to the spec. This is reciprocity - very effective means. 4. If we all agree that we will use terms with the spec ? why do we not simply add this by the suggested 6 word? I would like to remind that we have no clause in the agreement which regulates that there is no third party beneficiaries. Most of us are not experts on Belgium Law with respect to third party beneficiary clauses. I am not sure, whether it really can be excluded that a third party simply comes up and claims ?I don?t care about your term, I have already been granted the rights by force of the CA.?. And NSN does not want to take the risk. Yes, it is time to sign the agreement. But I have not heard anybody yet how has content wise an issue with this last change. Best regards, Susanne Weikl Senior Legal Counsel St.-Martin-Stra?e 76 41.4017 D-80240 Munich Tel: +49 89 5159 36940 Mob: +49 160 9062 7495 Fax: +49 89 5159 44 36940 susanne.weikl at nsn.com http://www.nokiasiemensnetworks.com/global/ Think before you print Nokia Siemens Networks GmbH & Co. KG Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRA 88537 WEEE-Reg.-Nr.: DE 52984304 Pers?nlich haftende Gesellschafterin / General Partner: Nokia Siemens Networks Management GmbH Gesch?ftsleitung / Board of Directors: Olaf Horsthemke, Dr. Hermann Rodler Vorsitzender des Aufsichtsrats / Chairman of supervisory board: Herbert Merz Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRB 163416 _________________________________________________________________________________ Important Note: This e-mail and any attachment are confidential and may contain trade secrets and may also be legally privileged or otherwise protected from disclosure. If you have received it in error, you are on notice of its status. Please notify us immediately by reply e-mail and then delete this e-mail and any attachment from your system. If you are not the intended recipient please understand that you must not copy this e-mail or any attachment or disclose the contents to any other person. Thank you for your cooperation. From: ext Juanjo Hierro [mailto:jhierro at tid.es] Sent: Friday, August 26, 2011 3:38 PM To: SCHATTAUER, Karl Cc: Weikl, Susanne (NSN - DE/Munich); fiware-legal at lists.fi-ware.eu Subject: Re: AW: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von Weikl, Susanne (NSN - DE/Munich) Gesendet: Freitag, 26. August 2011 09:29 An: ext Juanjo Hierro; fiware-legal at lists.fi-ware.eu Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hello Juanjo and all, good that we clarify this again: There is 3 levels: 1) The Specification as such, i.e. ?the piece of paper? ? not controversial at all ? can be circulated royalty free. 2) A Party?s implementation of such Specification - ? not controversial at all ? is up to the Party, whether it is royalty bearing or not. The problematic level is the following: do we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification? So far the agreement states ?yes?, provided that it is a ?normal implementation?. Can you explain why are you deriving this ? What do you mean by "normal implementation" ? I have search for the term "normal implementation" and is nowhere in the CA. Even "normal" is not used at all regarding IPRs ... Why do you say that "we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification" ? We say just the opposite in the CA: Parties are not barred from requesting royalties for, or protecting their rights with respect to IPRs (e.g. but not limited to patents) in any such implementations of the FI-WARE Generic Enablers Specifications, which are not directly disclosed by the FI-WARE Generic Enabler Specifications or which are not inherent to, or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications Of course, we will not charge for IPRs that are inherent to or cannot trivially derived as valid implementation of part of a FI-WARE GE specification (read my comment below, further on this matter). But you would be able to charge for IPRs on aspects that are linked to those aspects that may be differential in your product, therefore not inherent nor trivially derived from just reading the spec. This is e.g. going beyond what is normally requested in standardization, where the obligation to avail IPR is either on FRAND conditions or at least limited to ?essential IPR?, not ?normal IPR?. It also goes far beyond what is requested in normal EU projects, where Background only has to be made available under FRAND terms. In this context ?reciprocity? is meant as follows: the third parties has to make available its IPRs which would be used in such a ?normal implementation? of a Specification. It does not extent to any other product or IPR of such third party. What is avoided thereby is that a Party can use all the specification free of charge and block all the rest of the world from using the specifications, should it have a patent which it essentially needed for the implementation of the Specification. Again, don't know what you mean by "normal implementation". But, anyway, let's make one point clear. When a number of companies sit together and try to define something which can become an open standard (and that's what we aim to do in FI-WARE) what they do is that they generate public specifications and try to publicly state (typically in a legal note accompanying the specs) that any party feels should feel confident that it will be able to generate a competitive product, compliant to the specs. And that they will not be suddenly surprised because one day they discover that one of the companies who authored the specs kept (secretly) a patent on something that is "inherent" in the spec or could be trivially derived in the spec. That's regular business in open software standards. The existing clauses in the CA try to make sure that we are on the same page on this. If there is a third party (that is, someone who is not a FI-WARE partner) that has a patent on something that existed previous to our spec, I don't know how you are going to be able to prevent that they sue us when they discover it. It's simply impossible. We will have to battle to it or fix the specs (same thing a standard body would do). If it is something they generated as a result of implementing our spec and it happens to be something "inherent to the spec" or "trivially derived from the spec", I don't understand why they would be able to sue us. We just need to accompany our GE specs with some legal note making a statement like (well, in the right legal terms, I'm not a lawyer) "No party implementing these specifications will be able to charge royalties or claim patents on any element that is directly disclosed by this specification or which is inherent to, or can trivially derived as valid implementation of, part of this specification". That would be the kind of reciprocity you are looking for, I guess. But the right thing to do will be to add the proper legal note in whatever spec we produce. Not to introduce anything in the CA (which is not public). Changing the CA doesn't solve anything. Frankly speaking, what you ask for (the change in the CA) still doesn't make any sense to me. Legal notes we will have to enclose to produced GEs are another story. There, my comment above would apply. Time is over. It's time to sign the current GA. Best regards, -- Juanjo Therefore a clarification as in ?For the sake of clarity, Parties signing this CA as well as any other third party, subject to additional conditions or agreement, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? is not nonsense, but protects all of us and fully serves the purpose, we want to achieve: an open specification. Best Regards Susanne From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of ext Juanjo Hierro Sent: Thursday, August 25, 2011 7:20 PM To: fiware-legal at lists.fi-ware.eu Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hi all, This discussion is sincerely ... "non-sense". I hope I will be able to explain myself. What is public and royalty-free are the FI-WARE GE Specifications. And as pointed out in previous mails from other partners (despite it was with the omission of the term "specification" which is quite relevant in this discussion) the public and royalty-free nature of FI-WARE GE Specifications is something that was there since proposal time and rather a cornerstone reason why our project passed the evaluation and was accepted by the EC. Given said this, an specification is here a PIECE OF PAPER, that is, documentation. What sort of reciprocity are we looking for here ? Are you asking that third parties make specifications of other products they may have public and royalty-free ? It simply has no-sense. It is like saying that Apple has to make public and royalty-free the specs of one of its products just because it has develop the Safari browser based on the public and royalty-free specs of HTML as published by the W3C (BTW, which product specification would you ask them to make public and royalty-free ? The iPhone specifications ?) Come on. NO-SENSE at all. As repeated many times. Specifications are different than implementations. We are not making our implementations of the FI-WARE GE Specifications public and royalty-free. Nor of course can claim that third parties should give us their implementations for free either. Unless I'm missing something rather important, this discussion is completely non-sense to me. Therefore, no changes in the CA will be incorporated in this respect. As already announced by Luis: As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Best regards, -- Juanjo On 23/08/11 15:40, Suzanne Erez wrote: Susanne, Kathrin, et al., Kathrin has some points in her argument, and so does Susanne and Karl. But are legal arguments really the question? Or is the question what did we agree to in November 2010 when this whole CA negotiation started? From the beginning, our understanding was that the Commission requires that the GES be royalty free. This was conveyed to us by Juanjo. Now there is a new request that goes like - we will make the GES royalty free, but only on the condition that the "public" will promise reciprocity. There is nothing wrong business wise in this approach, and I for one am always happy to get other companies patents royalty free. In fact, I would like to get RAND for the GES. But that was not our agreement with the Commission, and we are working according to the Commission's request. We agreed to this condition 10 months ago. I think it is now 10 months too late to start changing the terms. Being an engineer, I remember an old saying "there comes a time to shoot the engineers and ship the product." I think we can adopt that and say "there comes a time to shoot the attorneys and start the project". I think that time is now. good luck to us all, and happy working on the project! Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "SCHATTAUER, Karl" , LUIS GARCIA GARCIA , "fiware-legal at lists.fi-ware.eu" Cc: Asesor?a Jur?dica , JOSE JIMENEZ DELGADO , LUIS LOPEZ DE AYALA HIDALGO Date: 08/23/11 04:16 PM Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Karl, dear Susanne first, SAP cannot agree to any changes to CA now, because we have already send the CA for signature. The only way to change the CA for SAP now would be an amendment. Secondly, I disagree with your legal advisor. Reciprocity is not upon any third party discretion because the party or parties creating the Generic Enabler Specifications are free to decide upon Terms of Use they would like to attach to the Generic Enabler Specifications. It is not upon third parties to decide about the conditions for the usage of the Generic Enabler Specifications. Thirdly, what happens if a party does not agree upon reciprocity for specific Generic Enabler Specification? I assume it should be free to all Fi-Ware partners to decide most freely upon the terms and conditions upon which the Generic Enabler Specification should be published. I do not see a connection between royalties (= money to be paid) or a reciprocal license. Another point with regard to third party beneficiaries, the DOW states this: ?Task 2.3: Consolidation of Generic Enabler Specifications In order to fulfil the FI-WARE promise all Generic Enablers will be accompanied by Open Specifications that will facilitate usage and integration in any FI-WARE Instance as well as the development of compliant implementations of GEs by third parties. While GE Specifications themselves will be done inside WP3-WP10, overall coordination and consolidation of these specifications is the objective and responsibility of this Task. ? I assume, if the third party beneficiary does not claim the usage license without reciprocity from the CA, they can claim it from the DOW. I understand it in that way, that we have to make available the Specification under such conditions, that a third party can develop freely an implementation of it. And to be honest, the word Open might give the impression to have even broader rights than just no royalties. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von SCHATTAUER, Karl Gesendet: Dienstag, 23. August 2011 13:54 An: LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica; JOSE JIMENEZ DELGADO; LUIS LOPEZ DE AYALA HIDALGO Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear Luis, all, below please find some comments from our legal department. Best Regards, Karl Dear Luis, Per email dated August 17, Alcatel-Lucent proposed some modifications to section 4.1 of the CA. One of the main concerns we tried to address was to incorporate an obligation on any third party joining the CA or underlying agreements to grant the same rights on its patents on the same terms and conditions on which such third party receives rights from the Consortium Partners under the CA or other associated agreements. The final version sent to us does not address this concern. Instead it has been proposed by SAP AG to cover the reciprocity under adequate licenses attached to the GE Specifications. This approach bears the following risks: ? It would be at the option and discretion of a third party to agree to grant reciprocity ? Under some national laws, based on the current wording of section 4.1 a, any third party could be considered as a third party beneficiary to the CA and be eligible to request the grant of royalty free patent licenses to the GE Specs ( which would include the Parties Background, Sideground and Foreground). Consequently there is a risk that we may not have the right to request a royalty free grant back license from such third party. For these valid reasons, the obligation on third parties to grant reciprocity should be stated in the CA. We believe that this is a very balanced approach. Therefore we propose to reword the second sentence of the second paragraph of section 4.1 as follows (modification indicated in bold letters): ?For the sake of clarity, Parties signing this CA as well as any other third party, subject to reciprocity, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? We look forward to your response. All the best, Oezlem Schmitt OEZLEM SCHMITT IP CORPORATE COUNSEL ALCATEL-LUCENT INTELLECTUAL PROPERTY & STANDARDS P: +49 711 821 44562 F: +49 711 821 44587 Oezlem.Schmitt at alcatel-lucent.com Alcatel-Lucent Deutschland AG Lorenzstra?e 10 70435 Stuttgart Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von LUIS GARCIA GARCIA Gesendet: Montag, 22. August 2011 10:41 An: fiware-legal at lists.fi-ware.eu Cc: JOSE JIMENEZ DELGADO; Asesor?a Jur?dica; LUIS LOPEZ DE AYALA HIDALGO Betreff: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear all, Although clause 4.1 was agreed and closed during our calls and e-mails discussions, some partners pointed out that it was necessary to modify it in order to enable the partners to protect and/or request royalties regarding the IPRs included in the implementations of the FI-WARE GES. We proposed a wording that, from our point of view, regulate this situations and, in parallel, didn?t affect the essence of the project at this point ( accordingly with the DoW). In this FINAL VERSION of the CA, we?ve included the comments sent by NSN in this clause in the two first paragraphs, but not the new third paragraph as, from our perspective, goes beyond the modification requested and will give rise to another round of discussions and literally we have no more time to afford it. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects that cannot be subject to ?protection or royalties?: 1.- If it is something ?inherent? to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Regarding Technnicolor concerns about the payment clause (agreed during one of the Conference calls held during the negotiation process), we?ve maintained the clause wording under our reasoning in mails of 22nd July 27 th July sent to Technicolor. We have also included a last minute minor change in the publications clause . Our technical people strongly requested us to include a shorter term for the publications clause to enable the parties to duly fulfill with a ?normal? technical development of the project. It is to make shorter the term for the publications of the Public Deliverables (10 working days) and to enable the Board to decide an even shorter term in case of publications in the project website www.fi-ware.eu ( maximum 5 working days) They say that a 20 days period is not practical at all, at least for these publications, specially to attend the needs of Use Cases projects and the expected content of the mentioned web site. I?ve modified clause 4.4.1. including a new point c) and also (accordingly) clauses 3.3.1 and 3.3.2.5 (functions and decisions of the Board) Last, accordingly with Article 1.4 of the Grant Agreement, the Commission is expecting with the signed Grant Agreement that the consortium has established and signed a Consortium Agreement. We must take into account that the 45 days period to deliver the signed Form A to the Commission expire (except I?m wrong) next 16th Sept and some partners subject their signature to the conclusion of this agreement. Consequently, I have received definitive instructions to close the Consortium Agreement and start the signature process. Please find attached the final Consortium Agreement for FI-WARE for signature (pdf-document). In addition, I prepared the signature pages per FI-WARE partner (word-document) based on the information received. I would like to receive the pending information to complete the signature with the name(s) and title(s) of the organization that still have not sent their details. As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Please print 26 signature pages of your signature page and send them signed to the address mentioned bellow by courier mail latest by 9th September. Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal To the att of Mr. Javier de Pedro DISTRITO C- Edificio Oeste 1, 4? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) We will confirm the reception of your signature and will send back one original together with the copies of the other signatures. In addition, please send a scanned version of your signature page latest by 9th September: The parties that have already sent the signed Collaboration Agreement to AALTO (or to the Coordinators of others FUTURE INTERNET projects) please send us a scanned copy of your signature page to the following e-mail address jdps at tid.es; the rest of participants that have still not signed the Collaboration Agreement, please send us also three copies of the signature page ( Annex 1) to the address mentioned above. Find enclosed the final version of the Collaboration Agreement. If you have any further doubts regarding the signature process, please let us know. Thanks and regards. Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx -------------- next part -------------- An HTML attachment was scrubbed... URL: From SUZANNE at il.ibm.com Mon Aug 29 09:08:51 2011 From: SUZANNE at il.ibm.com (Suzanne Erez) Date: Mon, 29 Aug 2011 10:08:51 +0300 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) In-Reply-To: <2B9915A85B6D8D47A5051C368C56E7D4020B07F8@DEMUEXC005.nsn-intra.net> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A38A@EXCLU2K7.hi.inet> <175D251D5B968549BDBBAA2BAC721C97016ABEFF@SLFSNX.rcs.alcatel-research.de> <7ED7B27AF3542948BAB7BCD179A7677C10CD40CEB5@DEWDFECCR03.wdf.sap.corp> <4E568423.8090409@tid.es> <2B9915A85B6D8D47A5051C368C56E7D4020B044B@DEMUEXC005.nsn-intra.net> <175D251D5B968549BDBBAA2BAC721C97016AC00E@SLFSNX.rcs.alcatel-research.de> <4E57A1CE.6010200@tid.es> <2B9915A85B6D8D47A5051C368C56E7D4020B07F8@DEMUEXC005.nsn-intra.net> Message-ID: All, Perhaps my interpretation of the new language is different from Susanne's. As I read it, Royalties may be asked for 1) ?not directly disclosed by the FI-WARE Generic Enabler Specifications OR 2) or which are not inherent to, OR 3) or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications? From my understanding this leaves 3 possibilities to ask for Royalties; not one long possibility, but 3 separate possibilities. Therefore, the language as currently written allows the Parties to request royalties for all implementations " not directly disclosed by the FI-WARE Generic Enabler Specifications". As written in full - "....Parties are not barred from requesting royalties for.... any such implementations of the FI-WARE Generic Enablers Specifications, which are not directly disclosed by the FI-WARE Generic Enabler Specifications..... " Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel:? 972-4-829-6069? Fax:? 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Weikl, Susanne (NSN - DE/Munich)" To: ext Juanjo Hierro , "SCHATTAUER, Karl" , ext LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu Date: 08/26/11 06:03 PM Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Sent by: fiware-legal-bounces at lists.fi-ware.eu Hello Juanjo, Luis and all, 1. ?normal implementation? is the short form of Luis? explanations ? If it is something ?inherent? to the specifications, that is to say that nobody would implement it in a different way.? and ??If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do.?; his explanation for ?directly disclosed by the FI-WARE Generic Enabler Specifications or which are not inherent to, or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications? 2. So what basically remains for requesting royalties is small and very open to interpretation. 3. If there is a third party (that is, someone who is not a FI-WARE partner) that has a patent on something that existed previous to our spec, it is for example possible to fight that party by putting it into the situation, where it has to chose, whether it rather uses the spec free of charge or use the patent against all and loses it rights to the spec. This is reciprocity - very effective means. 4. If we all agree that we will use terms with the spec ? why do we not simply add this by the suggested 6 word? I would like to remind that we have no clause in the agreement which regulates that there is no third party beneficiaries. Most of us are not experts on Belgium Law with respect to third party beneficiary clauses. I am not sure, whether it really can be excluded that a third party simply comes up and claims ?I don?t care about your term, I have already been granted the rights by force of the CA.?. And NSN does not want to take the risk. Yes, it is time to sign the agreement. But I have not heard anybody yet how has content wise an issue with this last change. Best regards, Susanne Weikl Senior Legal Counsel St.-Martin-Stra?e 76 41.4017 D-80240 Munich Tel: +49 89 5159 36940 Mob: +49 160 9062 7495 Fax: +49 89 5159 44 36940 susanne.weikl at nsn.com http://www.nokiasiemensnetworks.com/global/ Think before you print Nokia Siemens Networks GmbH & Co. KG Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRA 88537 WEEE-Reg.-Nr.: DE 52984304 Pers?nlich haftende Gesellschafterin / General Partner: Nokia Siemens Networks Management GmbH Gesch?ftsleitung / Board of Directors: Olaf Horsthemke, Dr. Hermann Rodler Vorsitzender des Aufsichtsrats / Chairman of supervisory board: Herbert Merz Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRB 163416 _________________________________________________________________________________ Important Note: This e-mail and any attachment are confidential and may contain trade secrets and may also be legally privileged or otherwise protected from disclosure. If you have received it in error, you are on notice of its status. Please notify us immediately by reply e-mail and then delete this e-mail and any attachment from your system. If you are not the intended recipient please understand that you must not copy this e-mail or any attachment or disclose the contents to any other person. Thank you for your cooperation. From: ext Juanjo Hierro [mailto:jhierro at tid.es] Sent: Friday, August 26, 2011 3:38 PM To: SCHATTAUER, Karl Cc: Weikl, Susanne (NSN - DE/Munich); fiware-legal at lists.fi-ware.eu Subject: Re: AW: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von Weikl, Susanne (NSN - DE/Munich) Gesendet: Freitag, 26. August 2011 09:29 An: ext Juanjo Hierro; fiware-legal at lists.fi-ware.eu Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hello Juanjo and all, good that we clarify this again: There is 3 levels: 1) The Specification as such, i.e. ?the piece of paper? ? not controversial at all ? can be circulated royalty free. 2) A Party?s implementation of such Specification - ? not controversial at all ? is up to the Party, whether it is royalty bearing or not. The problematic level is the following: do we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification? So far the agreement states ?yes?, provided that it is a ?normal implementation?. Can you explain why are you deriving this ? What do you mean by "normal implementation" ? I have search for the term "normal implementation" and is nowhere in the CA. Even "normal" is not used at all regarding IPRs ... Why do you say that "we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification" ? We say just the opposite in the CA: Parties are not barred from requesting royalties for, or protecting their rights with respect to IPRs (e.g. but not limited to patents) in any such implementations of the FI-WARE Generic Enablers Specifications, which are not directly disclosed by the FI-WARE Generic Enabler Specifications or which are not inherent to, or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications Of course, we will not charge for IPRs that are inherent to or cannot trivially derived as valid implementation of part of a FI-WARE GE specification (read my comment below, further on this matter). But you would be able to charge for IPRs on aspects that are linked to those aspects that may be differential in your product, therefore not inherent nor trivially derived from just reading the spec. This is e.g. going beyond what is normally requested in standardization, where the obligation to avail IPR is either on FRAND conditions or at least limited to ?essential IPR?, not ?normal IPR?. It also goes far beyond what is requested in normal EU projects, where Background only has to be made available under FRAND terms. In this context ?reciprocity? is meant as follows: the third parties has to make available its IPRs which would be used in such a ?normal implementation? of a Specification. It does not extent to any other product or IPR of such third party. What is avoided thereby is that a Party can use all the specification free of charge and block all the rest of the world from using the specifications, should it have a patent which it essentially needed for the implementation of the Specification. Again, don't know what you mean by "normal implementation". But, anyway, let's make one point clear. When a number of companies sit together and try to define something which can become an open standard (and that's what we aim to do in FI-WARE) what they do is that they generate public specifications and try to publicly state (typically in a legal note accompanying the specs) that any party feels should feel confident that it will be able to generate a competitive product, compliant to the specs. And that they will not be suddenly surprised because one day they discover that one of the companies who authored the specs kept (secretly) a patent on something that is "inherent" in the spec or could be trivially derived in the spec. That's regular business in open software standards. The existing clauses in the CA try to make sure that we are on the same page on this. If there is a third party (that is, someone who is not a FI-WARE partner) that has a patent on something that existed previous to our spec, I don't know how you are going to be able to prevent that they sue us when they discover it. It's simply impossible. We will have to battle to it or fix the specs (same thing a standard body would do). If it is something they generated as a result of implementing our spec and it happens to be something "inherent to the spec" or "trivially derived from the spec", I don't understand why they would be able to sue us. We just need to accompany our GE specs with some legal note making a statement like (well, in the right legal terms, I'm not a lawyer) "No party implementing these specifications will be able to charge royalties or claim patents on any element that is directly disclosed by this specification or which is inherent to, or can trivially derived as valid implementation of, part of this specification". That would be the kind of reciprocity you are looking for, I guess. But the right thing to do will be to add the proper legal note in whatever spec we produce. Not to introduce anything in the CA (which is not public). Changing the CA doesn't solve anything. Frankly speaking, what you ask for (the change in the CA) still doesn't make any sense to me. Legal notes we will have to enclose to produced GEs are another story. There, my comment above would apply. Time is over. It's time to sign the current GA. Best regards, -- Juanjo Therefore a clarification as in ?For the sake of clarity, Parties signing this CA as well as any other third party, subject to additional conditions or agreement, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? is not nonsense, but protects all of us and fully serves the purpose, we want to achieve: an open specification. Best Regards Susanne From: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of ext Juanjo Hierro Sent: Thursday, August 25, 2011 7:20 PM To: fiware-legal at lists.fi-ware.eu Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hi all, This discussion is sincerely ... "non-sense". I hope I will be able to explain myself. What is public and royalty-free are the FI-WARE GE Specifications. And as pointed out in previous mails from other partners (despite it was with the omission of the term "specification" which is quite relevant in this discussion) the public and royalty-free nature of FI-WARE GE Specifications is something that was there since proposal time and rather a cornerstone reason why our project passed the evaluation and was accepted by the EC. Given said this, an specification is here a PIECE OF PAPER, that is, documentation. What sort of reciprocity are we looking for here ? Are you asking that third parties make specifications of other products they may have public and royalty-free ? It simply has no-sense. It is like saying that Apple has to make public and royalty-free the specs of one of its products just because it has develop the Safari browser based on the public and royalty-free specs of HTML as published by the W3C (BTW, which product specification would you ask them to make public and royalty-free ? The iPhone specifications ?) Come on. NO-SENSE at all. As repeated many times. Specifications are different than implementations. We are not making our implementations of the FI-WARE GE Specifications public and royalty-free. Nor of course can claim that third parties should give us their implementations for free either. Unless I'm missing something rather important, this discussion is completely non-sense to me. Therefore, no changes in the CA will be incorporated in this respect. As already announced by Luis: As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Best regards, -- Juanjo On 23/08/11 15:40, Suzanne Erez wrote: Susanne, Kathrin, et al., Kathrin has some points in her argument, and so does Susanne and Karl. But are legal arguments really the question? Or is the question what did we agree to in November 2010 when this whole CA negotiation started? From the beginning, our understanding was that the Commission requires that the GES be royalty free. This was conveyed to us by Juanjo. Now there is a new request that goes like - we will make the GES royalty free, but only on the condition that the "public" will promise reciprocity. There is nothing wrong business wise in this approach, and I for one am always happy to get other companies patents royalty free. In fact, I would like to get RAND for the GES. But that was not our agreement with the Commission, and we are working according to the Commission's request. We agreed to this condition 10 months ago. I think it is now 10 months too late to start changing the terms. Being an engineer, I remember an old saying "there comes a time to shoot the engineers and ship the product." I think we can adopt that and say "there comes a time to shoot the attorneys and start the project". I think that time is now. good luck to us all, and happy working on the project! Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "SCHATTAUER, Karl" , LUIS GARCIA GARCIA , "fiware-legal at lists.fi-ware.eu" Cc: Asesor?a Jur?dica , JOSE JIMENEZ DELGADO , LUIS LOPEZ DE AYALA HIDALGO Date: 08/23/11 04:16 PM Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Karl, dear Susanne first, SAP cannot agree to any changes to CA now, because we have already send the CA for signature. The only way to change the CA for SAP now would be an amendment. Secondly, I disagree with your legal advisor. Reciprocity is not upon any third party discretion because the party or parties creating the Generic Enabler Specifications are free to decide upon Terms of Use they would like to attach to the Generic Enabler Specifications. It is not upon third parties to decide about the conditions for the usage of the Generic Enabler Specifications. Thirdly, what happens if a party does not agree upon reciprocity for specific Generic Enabler Specification? I assume it should be free to all Fi-Ware partners to decide most freely upon the terms and conditions upon which the Generic Enabler Specification should be published. I do not see a connection between royalties (= money to be paid) or a reciprocal license. Another point with regard to third party beneficiaries, the DOW states this: ?Task 2.3: Consolidation of Generic Enabler Specifications In order to fulfil the FI-WARE promise all Generic Enablers will be accompanied by Open Specifications that will facilitate usage and integration in any FI-WARE Instance as well as the development of compliant implementations of GEs by third parties. While GE Specifications themselves will be done inside WP3-WP10, overall coordination and consolidation of these specifications is the objective and responsibility of this Task. ? I assume, if the third party beneficiary does not claim the usage license without reciprocity from the CA, they can claim it from the DOW. I understand it in that way, that we have to make available the Specification under such conditions, that a third party can develop freely an implementation of it. And to be honest, the word Open might give the impression to have even broader rights than just no royalties. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von SCHATTAUER, Karl Gesendet: Dienstag, 23. August 2011 13:54 An: LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica; JOSE JIMENEZ DELGADO; LUIS LOPEZ DE AYALA HIDALGO Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear Luis, all, below please find some comments from our legal department. Best Regards, Karl Dear Luis, Per email dated August 17, Alcatel-Lucent proposed some modifications to section 4.1 of the CA. One of the main concerns we tried to address was to incorporate an obligation on any third party joining the CA or underlying agreements to grant the same rights on its patents on the same terms and conditions on which such third party receives rights from the Consortium Partners under the CA or other associated agreements. The final version sent to us does not address this concern. Instead it has been proposed by SAP AG to cover the reciprocity under adequate licenses attached to the GE Specifications. This approach bears the following risks: ? It would be at the option and discretion of a third party to agree to grant reciprocity ? Under some national laws, based on the current wording of section 4.1 a, any third party could be considered as a third party beneficiary to the CA and be eligible to request the grant of royalty free patent licenses to the GE Specs ( which would include the Parties Background, Sideground and Foreground). Consequently there is a risk that we may not have the right to request a royalty free grant back license from such third party. For these valid reasons, the obligation on third parties to grant reciprocity should be stated in the CA. We believe that this is a very balanced approach. Therefore we propose to reword the second sentence of the second paragraph of section 4.1 as follows (modification indicated in bold letters): ?For the sake of clarity, Parties signing this CA as well as any other third party, subject to reciprocity, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? We look forward to your response. All the best, Oezlem Schmitt OEZLEM SCHMITT IP CORPORATE COUNSEL ALCATEL-LUCENT INTELLECTUAL PROPERTY & STANDARDS P: +49 711 821 44562 F: +49 711 821 44587 Oezlem.Schmitt at alcatel-lucent.com Alcatel-Lucent Deutschland AG Lorenzstra?e 10 70435 Stuttgart Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von LUIS GARCIA GARCIA Gesendet: Montag, 22. August 2011 10:41 An: fiware-legal at lists.fi-ware.eu Cc: JOSE JIMENEZ DELGADO; Asesor?a Jur?dica; LUIS LOPEZ DE AYALA HIDALGO Betreff: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear all, Although clause 4.1 was agreed and closed during our calls and e-mails discussions, some partners pointed out that it was necessary to modify it in order to enable the partners to protect and/or request royalties regarding the IPRs included in the implementations of the FI-WARE GES. We proposed a wording that, from our point of view, regulate this situations and, in parallel, didn?t affect the essence of the project at this point ( accordingly with the DoW). In this FINAL VERSION of the CA, we?ve included the comments sent by NSN in this clause in the two first paragraphs, but not the new third paragraph as, from our perspective, goes beyond the modification requested and will give rise to another round of discussions and literally we have no more time to afford it. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects that cannot be subject to ?protection or royalties?: 1.- If it is something ?inherent? to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Regarding Technnicolor concerns about the payment clause (agreed during one of the Conference calls held during the negotiation process), we?ve maintained the clause wording under our reasoning in mails of 22nd July 27 th July sent to Technicolor. We have also included a last minute minor change in the publications clause . Our technical people strongly requested us to include a shorter term for the publications clause to enable the parties to duly fulfill with a ?normal? technical development of the project. It is to make shorter the term for the publications of the Public Deliverables (10 working days) and to enable the Board to decide an even shorter term in case of publications in the project website www.fi-ware.eu ( maximum 5 working days) They say that a 20 days period is not practical at all, at least for these publications, specially to attend the needs of Use Cases projects and the expected content of the mentioned web site. I?ve modified clause 4.4.1. including a new point c) and also (accordingly) clauses 3.3.1 and 3.3.2.5 (functions and decisions of the Board) Last, accordingly with Article 1.4 of the Grant Agreement, the Commission is expecting with the signed Grant Agreement that the consortium has established and signed a Consortium Agreement. We must take into account that the 45 days period to deliver the signed Form A to the Commission expire (except I?m wrong) next 16th Sept and some partners subject their signature to the conclusion of this agreement. Consequently, I have received definitive instructions to close the Consortium Agreement and start the signature process. Please find attached the final Consortium Agreement for FI-WARE for signature (pdf-document). In addition, I prepared the signature pages per FI-WARE partner (word-document) based on the information received. I would like to receive the pending information to complete the signature with the name(s) and title(s) of the organization that still have not sent their details. As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Please print 26 signature pages of your signature page and send them signed to the address mentioned bellow by courier mail latest by 9th September. Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal To the att of Mr. Javier de Pedro DISTRITO C- Edificio Oeste 1, 4? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) We will confirm the reception of your signature and will send back one original together with the copies of the other signatures. In addition, please send a scanned version of your signature page latest by 9th September: The parties that have already sent the signed Collaboration Agreement to AALTO (or to the Coordinators of others FUTURE INTERNET projects) please send us a scanned copy of your signature page to the following e-mail address jdps at tid.es; the rest of participants that have still not signed the Collaboration Agreement, please send us also three copies of the signature page ( Annex 1) to the address mentioned above. Find enclosed the final version of the Collaboration Agreement. If you have any further doubts regarding the signature process, please let us know. Thanks and regards. Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal From susanne.weikl at nsn.com Tue Aug 30 16:45:47 2011 From: susanne.weikl at nsn.com (Weikl, Susanne (NSN - DE/Munich)) Date: Tue, 30 Aug 2011 16:45:47 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) In-Reply-To: References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A38A@EXCLU2K7.hi.inet> <175D251D5B968549BDBBAA2BAC721C97016ABEFF@SLFSNX.rcs.alcatel-research.de> <7ED7B27AF3542948BAB7BCD179A7677C10CD40CEB5@DEWDFECCR03.wdf.sap.corp> <4E568423.8090409@tid.es> <2B9915A85B6D8D47A5051C368C56E7D4020B044B@DEMUEXC005.nsn-intra.net> <175D251D5B968549BDBBAA2BAC721C97016AC00E@SLFSNX.rcs.alcatel-research.de> <4E57A1CE.6010200@tid.es> <2B9915A85B6D8D47A5051C368C56E7D4020B07F8@DEMUEXC005.nsn-intra.net> Message-ID: <2B9915A85B6D8D47A5051C368C56E7D4020EB056@DEMUEXC005.nsn-intra.net> Suzanne, would IBM have an issue with the last suggested change? ?For the sake of clarity, Parties signing this CA as well as any other third party, ____subject to additional conditions or agreement____, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? Best Regards Susanne -----Original Message----- From: ext Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Monday, August 29, 2011 9:09 AM To: Weikl, Susanne (NSN - DE/Munich); fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; ext Juanjo Hierro; SCHATTAUER, Karl; ext LUIS GARCIA GARCIA Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) All, Perhaps my interpretation of the new language is different from Susanne's. As I read it, Royalties may be asked for 1) ?not directly disclosed by the FI-WARE Generic Enabler Specifications OR 2) or which are not inherent to, OR 3) or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications? From my understanding this leaves 3 possibilities to ask for Royalties; not one long possibility, but 3 separate possibilities. Therefore, the language as currently written allows the Parties to request royalties for all implementations " not directly disclosed by the FI-WARE Generic Enabler Specifications". As written in full - "....Parties are not barred from requesting royalties for.... any such implementations of the FI-WARE Generic Enablers Specifications, which are not directly disclosed by the FI-WARE Generic Enabler Specifications..... " Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel:? 972-4-829-6069? Fax:? 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Weikl, Susanne (NSN - DE/Munich)" To: ext Juanjo Hierro , "SCHATTAUER, Karl" , ext LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu Date: 08/26/11 06:03 PM Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Sent by: fiware-legal-bounces at lists.fi-ware.eu Hello Juanjo, Luis and all, 1. ?normal implementation? is the short form of Luis? explanations ? If it is something ?inherent? to the specifications, that is to say that nobody would implement it in a different way.? and ??If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do.?; his explanation for ?directly disclosed by the FI-WARE Generic Enabler Specifications or which are not inherent to, or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications? 2. So what basically remains for requesting royalties is small and very open to interpretation. 3. If there is a third party (that is, someone who is not a FI-WARE partner) that has a patent on something that existed previous to our spec, it is for example possible to fight that party by putting it into the situation, where it has to chose, whether it rather uses the spec free of charge or use the patent against all and loses it rights to the spec. This is reciprocity - very effective means. 4. If we all agree that we will use terms with the spec ? why do we not simply add this by the suggested 6 word? I would like to remind that we have no clause in the agreement which regulates that there is no third party beneficiaries. Most of us are not experts on Belgium Law with respect to third party beneficiary clauses. I am not sure, whether it really can be excluded that a third party simply comes up and claims ?I don?t care about your term, I have already been granted the rights by force of the CA.?. And NSN does not want to take the risk. Yes, it is time to sign the agreement. But I have not heard anybody yet how has content wise an issue with this last change. Best regards, Susanne Weikl Senior Legal Counsel St.-Martin-Stra?e 76 41.4017 D-80240 Munich Tel: +49 89 5159 36940 Mob: +49 160 9062 7495 Fax: +49 89 5159 44 36940 susanne.weikl at nsn.com http://www.nokiasiemensnetworks.com/global/ Think before you print Nokia Siemens Networks GmbH & Co. KG Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRA 88537 WEEE-Reg.-Nr.: DE 52984304 Pers?nlich haftende Gesellschafterin / General Partner: Nokia Siemens Networks Management GmbH Gesch?ftsleitung / Board of Directors: Olaf Horsthemke, Dr. Hermann Rodler Vorsitzender des Aufsichtsrats / Chairman of supervisory board: Herbert Merz Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRB 163416 _________________________________________________________________________________ Important Note: This e-mail and any attachment are confidential and may contain trade secrets and may also be legally privileged or otherwise protected from disclosure. If you have received it in error, you are on notice of its status. Please notify us immediately by reply e-mail and then delete this e-mail and any attachment from your system. If you are not the intended recipient please understand that you must not copy this e-mail or any attachment or disclose the contents to any other person. Thank you for your cooperation. From: ext Juanjo Hierro [mailto:jhierro at tid.es] Sent: Friday, August 26, 2011 3:38 PM To: SCHATTAUER, Karl Cc: Weikl, Susanne (NSN - DE/Munich); fiware-legal at lists.fi-ware.eu Subject: Re: AW: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von Weikl, Susanne (NSN - DE/Munich) Gesendet: Freitag, 26. August 2011 09:29 An: ext Juanjo Hierro; fiware-legal at lists.fi-ware.eu Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hello Juanjo and all, good that we clarify this again: There is 3 levels: 1) The Specification as such, i.e. ?the piece of paper? ? not controversial at all ? can be circulated royalty free. 2) A Party?s implementation of such Specification - ? not controversial at all ? is up to the Party, whether it is royalty bearing or not. The problematic level is the following: do we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification? So far the agreement states ?yes?, provided that it is a ?normal implementation?. Can you explain why are you deriving this ? What do you mean by "normal implementation" ? I have search for the term "normal implementation" and is nowhere in the CA. Even "normal" is not used at all regarding IPRs ... Why do you say that "we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification" ? We say just the opposite in the CA: Parties are not barred from requesting royalties for, or protecting their rights with respect to IPRs (e.g. but not limited to patents) in any such implementations of the FI-WARE Generic Enablers Specifications, which are not directly disclosed by the FI-WARE Generic Enabler Specifications or which are not inherent to, or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications Of course, we will not charge for IPRs that are inherent to or cannot trivially derived as valid implementation of part of a FI-WARE GE specification (read my comment below, further on this matter). But you would be able to charge for IPRs on aspects that are linked to those aspects that may be differential in your product, therefore not inherent nor trivially derived from just reading the spec. This is e.g. going beyond what is normally requested in standardization, where the obligation to avail IPR is either on FRAND conditions or at least limited to ?essential IPR?, not ?normal IPR?. It also goes far beyond what is requested in normal EU projects, where Background only has to be made available under FRAND terms. In this context ?reciprocity? is meant as follows: the third parties has to make available its IPRs which would be used in such a ?normal implementation? of a Specification. It does not extent to any other product or IPR of such third party. What is avoided thereby is that a Party can use all the specification free of charge and block all the rest of the world from using the specifications, should it have a patent which it essentially needed for the implementation of the Specification. Again, don't know what you mean by "normal implementation". But, anyway, let's make one point clear. When a number of companies sit together and try to define something which can become an open standard (and that's what we aim to do in FI-WARE) what they do is that they generate public specifications and try to publicly state (typically in a legal note accompanying the specs) that any party feels should feel confident that it will be able to generate a competitive product, compliant to the specs. And that they will not be suddenly surprised because one day they discover that one of the companies who authored the specs kept (secretly) a patent on something that is "inherent" in the spec or could be trivially derived in the spec. That's regular business in open software standards. The existing clauses in the CA try to make sure that we are on the same page on this. If there is a third party (that is, someone who is not a FI-WARE partner) that has a patent on something that existed previous to our spec, I don't know how you are going to be able to prevent that they sue us when they discover it. It's simply impossible. We will have to battle to it or fix the specs (same thing a standard body would do). If it is something they generated as a result of implementing our spec and it happens to be something "inherent to the spec" or "trivially derived from the spec", I don't understand why they would be able to sue us. We just need to accompany our GE specs with some legal note making a statement like (well, in the right legal terms, I'm not a lawyer) "No party implementing these specifications will be able to charge royalties or claim patents on any element that is directly disclosed by this specification or which is inherent to, or can trivially derived as valid implementation of, part of this specification". That would be the kind of reciprocity you are looking for, I guess. But the right thing to do will be to add the proper legal note in whatever spec we produce. Not to introduce anything in the CA (which is not public). Changing the CA doesn't solve anything. Frankly speaking, what you ask for (the change in the CA) still doesn't make any sense to me. Legal notes we will have to enclose to produced GEs are another story. There, my comment above would apply. Time is over. It's time to sign the current GA. Best regards, -- Juanjo Therefore a clarification as in ?For the sake of clarity, Parties signing this CA as well as any other third party, subject to additional conditions or agreement, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? is not nonsense, but protects all of us and fully serves the purpose, we want to achieve: an open specification. Best Regards Susanne From: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of ext Juanjo Hierro Sent: Thursday, August 25, 2011 7:20 PM To: fiware-legal at lists.fi-ware.eu Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hi all, This discussion is sincerely ... "non-sense". I hope I will be able to explain myself. What is public and royalty-free are the FI-WARE GE Specifications. And as pointed out in previous mails from other partners (despite it was with the omission of the term "specification" which is quite relevant in this discussion) the public and royalty-free nature of FI-WARE GE Specifications is something that was there since proposal time and rather a cornerstone reason why our project passed the evaluation and was accepted by the EC. Given said this, an specification is here a PIECE OF PAPER, that is, documentation. What sort of reciprocity are we looking for here ? Are you asking that third parties make specifications of other products they may have public and royalty-free ? It simply has no-sense. It is like saying that Apple has to make public and royalty-free the specs of one of its products just because it has develop the Safari browser based on the public and royalty-free specs of HTML as published by the W3C (BTW, which product specification would you ask them to make public and royalty-free ? The iPhone specifications ?) Come on. NO-SENSE at all. As repeated many times. Specifications are different than implementations. We are not making our implementations of the FI-WARE GE Specifications public and royalty-free. Nor of course can claim that third parties should give us their implementations for free either. Unless I'm missing something rather important, this discussion is completely non-sense to me. Therefore, no changes in the CA will be incorporated in this respect. As already announced by Luis: As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Best regards, -- Juanjo On 23/08/11 15:40, Suzanne Erez wrote: Susanne, Kathrin, et al., Kathrin has some points in her argument, and so does Susanne and Karl. But are legal arguments really the question? Or is the question what did we agree to in November 2010 when this whole CA negotiation started? From the beginning, our understanding was that the Commission requires that the GES be royalty free. This was conveyed to us by Juanjo. Now there is a new request that goes like - we will make the GES royalty free, but only on the condition that the "public" will promise reciprocity. There is nothing wrong business wise in this approach, and I for one am always happy to get other companies patents royalty free. In fact, I would like to get RAND for the GES. But that was not our agreement with the Commission, and we are working according to the Commission's request. We agreed to this condition 10 months ago. I think it is now 10 months too late to start changing the terms. Being an engineer, I remember an old saying "there comes a time to shoot the engineers and ship the product." I think we can adopt that and say "there comes a time to shoot the attorneys and start the project". I think that time is now. good luck to us all, and happy working on the project! Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "SCHATTAUER, Karl" , LUIS GARCIA GARCIA , "fiware-legal at lists.fi-ware.eu" Cc: Asesor?a Jur?dica , JOSE JIMENEZ DELGADO , LUIS LOPEZ DE AYALA HIDALGO Date: 08/23/11 04:16 PM Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Karl, dear Susanne first, SAP cannot agree to any changes to CA now, because we have already send the CA for signature. The only way to change the CA for SAP now would be an amendment. Secondly, I disagree with your legal advisor. Reciprocity is not upon any third party discretion because the party or parties creating the Generic Enabler Specifications are free to decide upon Terms of Use they would like to attach to the Generic Enabler Specifications. It is not upon third parties to decide about the conditions for the usage of the Generic Enabler Specifications. Thirdly, what happens if a party does not agree upon reciprocity for specific Generic Enabler Specification? I assume it should be free to all Fi-Ware partners to decide most freely upon the terms and conditions upon which the Generic Enabler Specification should be published. I do not see a connection between royalties (= money to be paid) or a reciprocal license. Another point with regard to third party beneficiaries, the DOW states this: ?Task 2.3: Consolidation of Generic Enabler Specifications In order to fulfil the FI-WARE promise all Generic Enablers will be accompanied by Open Specifications that will facilitate usage and integration in any FI-WARE Instance as well as the development of compliant implementations of GEs by third parties. While GE Specifications themselves will be done inside WP3-WP10, overall coordination and consolidation of these specifications is the objective and responsibility of this Task. ? I assume, if the third party beneficiary does not claim the usage license without reciprocity from the CA, they can claim it from the DOW. I understand it in that way, that we have to make available the Specification under such conditions, that a third party can develop freely an implementation of it. And to be honest, the word Open might give the impression to have even broader rights than just no royalties. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von SCHATTAUER, Karl Gesendet: Dienstag, 23. August 2011 13:54 An: LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica; JOSE JIMENEZ DELGADO; LUIS LOPEZ DE AYALA HIDALGO Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear Luis, all, below please find some comments from our legal department. Best Regards, Karl Dear Luis, Per email dated August 17, Alcatel-Lucent proposed some modifications to section 4.1 of the CA. One of the main concerns we tried to address was to incorporate an obligation on any third party joining the CA or underlying agreements to grant the same rights on its patents on the same terms and conditions on which such third party receives rights from the Consortium Partners under the CA or other associated agreements. The final version sent to us does not address this concern. Instead it has been proposed by SAP AG to cover the reciprocity under adequate licenses attached to the GE Specifications. This approach bears the following risks: ? It would be at the option and discretion of a third party to agree to grant reciprocity ? Under some national laws, based on the current wording of section 4.1 a, any third party could be considered as a third party beneficiary to the CA and be eligible to request the grant of royalty free patent licenses to the GE Specs ( which would include the Parties Background, Sideground and Foreground). Consequently there is a risk that we may not have the right to request a royalty free grant back license from such third party. For these valid reasons, the obligation on third parties to grant reciprocity should be stated in the CA. We believe that this is a very balanced approach. Therefore we propose to reword the second sentence of the second paragraph of section 4.1 as follows (modification indicated in bold letters): ?For the sake of clarity, Parties signing this CA as well as any other third party, subject to reciprocity, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? We look forward to your response. All the best, Oezlem Schmitt OEZLEM SCHMITT IP CORPORATE COUNSEL ALCATEL-LUCENT INTELLECTUAL PROPERTY & STANDARDS P: +49 711 821 44562 F: +49 711 821 44587 Oezlem.Schmitt at alcatel-lucent.com Alcatel-Lucent Deutschland AG Lorenzstra?e 10 70435 Stuttgart Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von LUIS GARCIA GARCIA Gesendet: Montag, 22. August 2011 10:41 An: fiware-legal at lists.fi-ware.eu Cc: JOSE JIMENEZ DELGADO; Asesor?a Jur?dica; LUIS LOPEZ DE AYALA HIDALGO Betreff: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear all, Although clause 4.1 was agreed and closed during our calls and e-mails discussions, some partners pointed out that it was necessary to modify it in order to enable the partners to protect and/or request royalties regarding the IPRs included in the implementations of the FI-WARE GES. We proposed a wording that, from our point of view, regulate this situations and, in parallel, didn?t affect the essence of the project at this point ( accordingly with the DoW). In this FINAL VERSION of the CA, we?ve included the comments sent by NSN in this clause in the two first paragraphs, but not the new third paragraph as, from our perspective, goes beyond the modification requested and will give rise to another round of discussions and literally we have no more time to afford it. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects that cannot be subject to ?protection or royalties?: 1.- If it is something ?inherent? to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Regarding Technnicolor concerns about the payment clause (agreed during one of the Conference calls held during the negotiation process), we?ve maintained the clause wording under our reasoning in mails of 22nd July 27 th July sent to Technicolor. We have also included a last minute minor change in the publications clause . Our technical people strongly requested us to include a shorter term for the publications clause to enable the parties to duly fulfill with a ?normal? technical development of the project. It is to make shorter the term for the publications of the Public Deliverables (10 working days) and to enable the Board to decide an even shorter term in case of publications in the project website www.fi-ware.eu ( maximum 5 working days) They say that a 20 days period is not practical at all, at least for these publications, specially to attend the needs of Use Cases projects and the expected content of the mentioned web site. I?ve modified clause 4.4.1. including a new point c) and also (accordingly) clauses 3.3.1 and 3.3.2.5 (functions and decisions of the Board) Last, accordingly with Article 1.4 of the Grant Agreement, the Commission is expecting with the signed Grant Agreement that the consortium has established and signed a Consortium Agreement. We must take into account that the 45 days period to deliver the signed Form A to the Commission expire (except I?m wrong) next 16th Sept and some partners subject their signature to the conclusion of this agreement. Consequently, I have received definitive instructions to close the Consortium Agreement and start the signature process. Please find attached the final Consortium Agreement for FI-WARE for signature (pdf-document). In addition, I prepared the signature pages per FI-WARE partner (word-document) based on the information received. I would like to receive the pending information to complete the signature with the name(s) and title(s) of the organization that still have not sent their details. As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Please print 26 signature pages of your signature page and send them signed to the address mentioned bellow by courier mail latest by 9th September. Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal To the att of Mr. Javier de Pedro DISTRITO C- Edificio Oeste 1, 4? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) We will confirm the reception of your signature and will send back one original together with the copies of the other signatures. In addition, please send a scanned version of your signature page latest by 9th September: The parties that have already sent the signed Collaboration Agreement to AALTO (or to the Coordinators of others FUTURE INTERNET projects) please send us a scanned copy of your signature page to the following e-mail address jdps at tid.es; the rest of participants that have still not signed the Collaboration Agreement, please send us also three copies of the signature page ( Annex 1) to the address mentioned above. Find enclosed the final version of the Collaboration Agreement. If you have any further doubts regarding the signature process, please let us know. Thanks and regards. Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal From sedano at tid.es Wed Aug 31 10:03:54 2011 From: sedano at tid.es (=?ISO-8859-1?Q?Jose_Luis_Pe=F1a_Sedano?=) Date: Wed, 31 Aug 2011 10:03:54 +0200 Subject: [Fiware-legal] signed Form A: FI-WARE Project Number: 285248.; reminder Message-ID: <4E5DEAEA.4070407@tid.es> Dear all, this is a kind reminder for the Form A signature. If your Form A is missing, please provide us a tentative date for your signature (by email to subsidies at tid.es). And do not forget to send us 3 original paper versions of the signed Form-A of your company signed by your legal representative, stamped and dated. (Note: Please use a blue writing pen in order to avoid that it looks like a copy) Please send a scanned copy back by email to (subsidies at tid.es), and send as soon as possible the three originals by express courier to: Attn: Mr. Javier de Pedro Sanchez TELEF?NICA I+D Distrito C Edificio Oeste 1, 4? planta Ronda de la Comunicaci?n s/n 28050-Madrid SPAIN HARD DEADLINE is 45 days after the signature of the GA by the Commission (Aug the 2nd) Thanks a lot to THALES COMMUNICATIONS TELECOM ITALIA S.p.A. FRANCE TELECOM SA DEUTSCHE TELEKOM AG TECHNICOLOR R&D FRANDE SNC ERICSSON AB ATOS ORIGIN FRAUHHOFER-GESELLSCHAFT INSTITUT NATIONAL DE RECHERSE EN INFORMATIQUE ET EN AUTOMATIQUE UNIVERSITY OF SURREY NEC SAPIENZA UNIVERSIT? DI ROMA UPM UDE who have already sent their Form A. This is email has been sen to fiware-legal at lists.fi-ware.eu and fiware-administrative at lists.fi-ware.eu apologizes if you receive several copies. regards jose -- Jos? Luis Pe?a Sedano Gesti?n de Subvenciones Direcci?n de Finanzas y Control de Gesti?n Telef?nica I+D Edificio Oeste 1 - planta 4 Ronda de la Comunicaci?n s/n 28050 Madrid 91 483 26 45 690 867 567 ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx -------------- next part -------------- An HTML attachment was scrubbed... URL: From SUZANNE at il.ibm.com Wed Aug 31 13:03:03 2011 From: SUZANNE at il.ibm.com (Suzanne Erez) Date: Wed, 31 Aug 2011 14:03:03 +0300 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) In-Reply-To: <2B9915A85B6D8D47A5051C368C56E7D4020EB056@DEMUEXC005.nsn-intra.net> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A38A@EXCLU2K7.hi.inet> <175D251D5B968549BDBBAA2BAC721C97016ABEFF@SLFSNX.rcs.alcatel-research.de> <7ED7B27AF3542948BAB7BCD179A7677C10CD40CEB5@DEWDFECCR03.wdf.sap.corp> <4E568423.8090409@tid.es> <2B9915A85B6D8D47A5051C368C56E7D4020B044B@DEMUEXC005.nsn-intra.net> <175D251D5B968549BDBBAA2BAC721C97016AC00E@SLFSNX.rcs.alcatel-research.de> <4E57A1CE.6010200@tid.es> <2B9915A85B6D8D47A5051C368C56E7D4020B07F8@DEMUEXC005.nsn-intra.net> <2B9915A85B6D8D47A5051C368C56E7D4020EB056@DEMUEXC005.nsn-intra.net> Message-ID: Susanne, oh my. At this point I don't think the question is "would IBM agree.... ?", but "is it too late to make changes?". From what I understand, many parties have already signed the version as is. This would unfortunately result in have Parties sign on two different versions. Luis? Juanjo? Is there still time to make changes? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel:? 972-4-829-6069? Fax:? 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Weikl, Susanne (NSN - DE/Munich)" To: Suzanne Erez/Haifa/IBM at IBMIL, , , "ext Juanjo Hierro" , "SCHATTAUER, Karl" , "ext LUIS GARCIA GARCIA" Date: 08/30/11 05:46 PM Subject: RE: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Suzanne, would IBM have an issue with the last suggested change? ?For the sake of clarity, Parties signing this CA as well as any other third party, ____subject to additional conditions or agreement____, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? Best Regards Susanne -----Original Message----- From: ext Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Monday, August 29, 2011 9:09 AM To: Weikl, Susanne (NSN - DE/Munich); fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; ext Juanjo Hierro; SCHATTAUER, Karl; ext LUIS GARCIA GARCIA Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) All, Perhaps my interpretation of the new language is different from Susanne's. As I read it, Royalties may be asked for 1) ?not directly disclosed by the FI-WARE Generic Enabler Specifications OR 2) or which are not inherent to, OR 3) or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications? From my understanding this leaves 3 possibilities to ask for Royalties; not one long possibility, but 3 separate possibilities. Therefore, the language as currently written allows the Parties to request royalties for all implementations " not directly disclosed by the FI-WARE Generic Enabler Specifications". As written in full - "....Parties are not barred from requesting royalties for.... any such implementations of the FI-WARE Generic Enablers Specifications, which are not directly disclosed by the FI-WARE Generic Enabler Specifications..... " Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel:? 972-4-829-6069? Fax:? 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Weikl, Susanne (NSN - DE/Munich)" To: ext Juanjo Hierro , "SCHATTAUER, Karl" , ext LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu Date: 08/26/11 06:03 PM Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Sent by: fiware-legal-bounces at lists.fi-ware.eu Hello Juanjo, Luis and all, 1. ?normal implementation? is the short form of Luis? explanations ? If it is something ?inherent? to the specifications, that is to say that nobody would implement it in a different way.? and ??If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do.?; his explanation for ?directly disclosed by the FI-WARE Generic Enabler Specifications or which are not inherent to, or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications? 2. So what basically remains for requesting royalties is small and very open to interpretation. 3. If there is a third party (that is, someone who is not a FI-WARE partner) that has a patent on something that existed previous to our spec, it is for example possible to fight that party by putting it into the situation, where it has to chose, whether it rather uses the spec free of charge or use the patent against all and loses it rights to the spec. This is reciprocity - very effective means. 4. If we all agree that we will use terms with the spec ? why do we not simply add this by the suggested 6 word? I would like to remind that we have no clause in the agreement which regulates that there is no third party beneficiaries. Most of us are not experts on Belgium Law with respect to third party beneficiary clauses. I am not sure, whether it really can be excluded that a third party simply comes up and claims ?I don?t care about your term, I have already been granted the rights by force of the CA.?. And NSN does not want to take the risk. Yes, it is time to sign the agreement. But I have not heard anybody yet how has content wise an issue with this last change. Best regards, Susanne Weikl Senior Legal Counsel St.-Martin-Stra?e 76 41.4017 D-80240 Munich Tel: +49 89 5159 36940 Mob: +49 160 9062 7495 Fax: +49 89 5159 44 36940 susanne.weikl at nsn.com http://www.nokiasiemensnetworks.com/global/ Think before you print Nokia Siemens Networks GmbH & Co. KG Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRA 88537 WEEE-Reg.-Nr.: DE 52984304 Pers?nlich haftende Gesellschafterin / General Partner: Nokia Siemens Networks Management GmbH Gesch?ftsleitung / Board of Directors: Olaf Horsthemke, Dr. Hermann Rodler Vorsitzender des Aufsichtsrats / Chairman of supervisory board: Herbert Merz Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRB 163416 _________________________________________________________________________________ Important Note: This e-mail and any attachment are confidential and may contain trade secrets and may also be legally privileged or otherwise protected from disclosure. If you have received it in error, you are on notice of its status. Please notify us immediately by reply e-mail and then delete this e-mail and any attachment from your system. If you are not the intended recipient please understand that you must not copy this e-mail or any attachment or disclose the contents to any other person. Thank you for your cooperation. From: ext Juanjo Hierro [mailto:jhierro at tid.es] Sent: Friday, August 26, 2011 3:38 PM To: SCHATTAUER, Karl Cc: Weikl, Susanne (NSN - DE/Munich); fiware-legal at lists.fi-ware.eu Subject: Re: AW: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von Weikl, Susanne (NSN - DE/Munich) Gesendet: Freitag, 26. August 2011 09:29 An: ext Juanjo Hierro; fiware-legal at lists.fi-ware.eu Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hello Juanjo and all, good that we clarify this again: There is 3 levels: 1) The Specification as such, i.e. ?the piece of paper? ? not controversial at all ? can be circulated royalty free. 2) A Party?s implementation of such Specification - ? not controversial at all ? is up to the Party, whether it is royalty bearing or not. The problematic level is the following: do we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification? So far the agreement states ?yes?, provided that it is a ?normal implementation?. Can you explain why are you deriving this ? What do you mean by "normal implementation" ? I have search for the term "normal implementation" and is nowhere in the CA. Even "normal" is not used at all regarding IPRs ... Why do you say that "we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification" ? We say just the opposite in the CA: Parties are not barred from requesting royalties for, or protecting their rights with respect to IPRs (e.g. but not limited to patents) in any such implementations of the FI-WARE Generic Enablers Specifications, which are not directly disclosed by the FI-WARE Generic Enabler Specifications or which are not inherent to, or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications Of course, we will not charge for IPRs that are inherent to or cannot trivially derived as valid implementation of part of a FI-WARE GE specification (read my comment below, further on this matter). But you would be able to charge for IPRs on aspects that are linked to those aspects that may be differential in your product, therefore not inherent nor trivially derived from just reading the spec. This is e.g. going beyond what is normally requested in standardization, where the obligation to avail IPR is either on FRAND conditions or at least limited to ?essential IPR?, not ?normal IPR?. It also goes far beyond what is requested in normal EU projects, where Background only has to be made available under FRAND terms. In this context ?reciprocity? is meant as follows: the third parties has to make available its IPRs which would be used in such a ?normal implementation? of a Specification. It does not extent to any other product or IPR of such third party. What is avoided thereby is that a Party can use all the specification free of charge and block all the rest of the world from using the specifications, should it have a patent which it essentially needed for the implementation of the Specification. Again, don't know what you mean by "normal implementation". But, anyway, let's make one point clear. When a number of companies sit together and try to define something which can become an open standard (and that's what we aim to do in FI-WARE) what they do is that they generate public specifications and try to publicly state (typically in a legal note accompanying the specs) that any party feels should feel confident that it will be able to generate a competitive product, compliant to the specs. And that they will not be suddenly surprised because one day they discover that one of the companies who authored the specs kept (secretly) a patent on something that is "inherent" in the spec or could be trivially derived in the spec. That's regular business in open software standards. The existing clauses in the CA try to make sure that we are on the same page on this. If there is a third party (that is, someone who is not a FI-WARE partner) that has a patent on something that existed previous to our spec, I don't know how you are going to be able to prevent that they sue us when they discover it. It's simply impossible. We will have to battle to it or fix the specs (same thing a standard body would do). If it is something they generated as a result of implementing our spec and it happens to be something "inherent to the spec" or "trivially derived from the spec", I don't understand why they would be able to sue us. We just need to accompany our GE specs with some legal note making a statement like (well, in the right legal terms, I'm not a lawyer) "No party implementing these specifications will be able to charge royalties or claim patents on any element that is directly disclosed by this specification or which is inherent to, or can trivially derived as valid implementation of, part of this specification". That would be the kind of reciprocity you are looking for, I guess. But the right thing to do will be to add the proper legal note in whatever spec we produce. Not to introduce anything in the CA (which is not public). Changing the CA doesn't solve anything. Frankly speaking, what you ask for (the change in the CA) still doesn't make any sense to me. Legal notes we will have to enclose to produced GEs are another story. There, my comment above would apply. Time is over. It's time to sign the current GA. Best regards, -- Juanjo Therefore a clarification as in ?For the sake of clarity, Parties signing this CA as well as any other third party, subject to additional conditions or agreement, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? is not nonsense, but protects all of us and fully serves the purpose, we want to achieve: an open specification. Best Regards Susanne From: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of ext Juanjo Hierro Sent: Thursday, August 25, 2011 7:20 PM To: fiware-legal at lists.fi-ware.eu Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hi all, This discussion is sincerely ... "non-sense". I hope I will be able to explain myself. What is public and royalty-free are the FI-WARE GE Specifications. And as pointed out in previous mails from other partners (despite it was with the omission of the term "specification" which is quite relevant in this discussion) the public and royalty-free nature of FI-WARE GE Specifications is something that was there since proposal time and rather a cornerstone reason why our project passed the evaluation and was accepted by the EC. Given said this, an specification is here a PIECE OF PAPER, that is, documentation. What sort of reciprocity are we looking for here ? Are you asking that third parties make specifications of other products they may have public and royalty-free ? It simply has no-sense. It is like saying that Apple has to make public and royalty-free the specs of one of its products just because it has develop the Safari browser based on the public and royalty-free specs of HTML as published by the W3C (BTW, which product specification would you ask them to make public and royalty-free ? The iPhone specifications ?) Come on. NO-SENSE at all. As repeated many times. Specifications are different than implementations. We are not making our implementations of the FI-WARE GE Specifications public and royalty-free. Nor of course can claim that third parties should give us their implementations for free either. Unless I'm missing something rather important, this discussion is completely non-sense to me. Therefore, no changes in the CA will be incorporated in this respect. As already announced by Luis: As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Best regards, -- Juanjo On 23/08/11 15:40, Suzanne Erez wrote: Susanne, Kathrin, et al., Kathrin has some points in her argument, and so does Susanne and Karl. But are legal arguments really the question? Or is the question what did we agree to in November 2010 when this whole CA negotiation started? From the beginning, our understanding was that the Commission requires that the GES be royalty free. This was conveyed to us by Juanjo. Now there is a new request that goes like - we will make the GES royalty free, but only on the condition that the "public" will promise reciprocity. There is nothing wrong business wise in this approach, and I for one am always happy to get other companies patents royalty free. In fact, I would like to get RAND for the GES. But that was not our agreement with the Commission, and we are working according to the Commission's request. We agreed to this condition 10 months ago. I think it is now 10 months too late to start changing the terms. Being an engineer, I remember an old saying "there comes a time to shoot the engineers and ship the product." I think we can adopt that and say "there comes a time to shoot the attorneys and start the project". I think that time is now. good luck to us all, and happy working on the project! Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "SCHATTAUER, Karl" , LUIS GARCIA GARCIA , "fiware-legal at lists.fi-ware.eu" Cc: Asesor?a Jur?dica , JOSE JIMENEZ DELGADO , LUIS LOPEZ DE AYALA HIDALGO Date: 08/23/11 04:16 PM Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Karl, dear Susanne first, SAP cannot agree to any changes to CA now, because we have already send the CA for signature. The only way to change the CA for SAP now would be an amendment. Secondly, I disagree with your legal advisor. Reciprocity is not upon any third party discretion because the party or parties creating the Generic Enabler Specifications are free to decide upon Terms of Use they would like to attach to the Generic Enabler Specifications. It is not upon third parties to decide about the conditions for the usage of the Generic Enabler Specifications. Thirdly, what happens if a party does not agree upon reciprocity for specific Generic Enabler Specification? I assume it should be free to all Fi-Ware partners to decide most freely upon the terms and conditions upon which the Generic Enabler Specification should be published. I do not see a connection between royalties (= money to be paid) or a reciprocal license. Another point with regard to third party beneficiaries, the DOW states this: ?Task 2.3: Consolidation of Generic Enabler Specifications In order to fulfil the FI-WARE promise all Generic Enablers will be accompanied by Open Specifications that will facilitate usage and integration in any FI-WARE Instance as well as the development of compliant implementations of GEs by third parties. While GE Specifications themselves will be done inside WP3-WP10, overall coordination and consolidation of these specifications is the objective and responsibility of this Task. ? I assume, if the third party beneficiary does not claim the usage license without reciprocity from the CA, they can claim it from the DOW. I understand it in that way, that we have to make available the Specification under such conditions, that a third party can develop freely an implementation of it. And to be honest, the word Open might give the impression to have even broader rights than just no royalties. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von SCHATTAUER, Karl Gesendet: Dienstag, 23. August 2011 13:54 An: LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica; JOSE JIMENEZ DELGADO; LUIS LOPEZ DE AYALA HIDALGO Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear Luis, all, below please find some comments from our legal department. Best Regards, Karl Dear Luis, Per email dated August 17, Alcatel-Lucent proposed some modifications to section 4.1 of the CA. One of the main concerns we tried to address was to incorporate an obligation on any third party joining the CA or underlying agreements to grant the same rights on its patents on the same terms and conditions on which such third party receives rights from the Consortium Partners under the CA or other associated agreements. The final version sent to us does not address this concern. Instead it has been proposed by SAP AG to cover the reciprocity under adequate licenses attached to the GE Specifications. This approach bears the following risks: ? It would be at the option and discretion of a third party to agree to grant reciprocity ? Under some national laws, based on the current wording of section 4.1 a, any third party could be considered as a third party beneficiary to the CA and be eligible to request the grant of royalty free patent licenses to the GE Specs ( which would include the Parties Background, Sideground and Foreground). Consequently there is a risk that we may not have the right to request a royalty free grant back license from such third party. For these valid reasons, the obligation on third parties to grant reciprocity should be stated in the CA. We believe that this is a very balanced approach. Therefore we propose to reword the second sentence of the second paragraph of section 4.1 as follows (modification indicated in bold letters): ?For the sake of clarity, Parties signing this CA as well as any other third party, subject to reciprocity, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? We look forward to your response. All the best, Oezlem Schmitt OEZLEM SCHMITT IP CORPORATE COUNSEL ALCATEL-LUCENT INTELLECTUAL PROPERTY & STANDARDS P: +49 711 821 44562 F: +49 711 821 44587 Oezlem.Schmitt at alcatel-lucent.com Alcatel-Lucent Deutschland AG Lorenzstra?e 10 70435 Stuttgart Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von LUIS GARCIA GARCIA Gesendet: Montag, 22. August 2011 10:41 An: fiware-legal at lists.fi-ware.eu Cc: JOSE JIMENEZ DELGADO; Asesor?a Jur?dica; LUIS LOPEZ DE AYALA HIDALGO Betreff: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear all, Although clause 4.1 was agreed and closed during our calls and e-mails discussions, some partners pointed out that it was necessary to modify it in order to enable the partners to protect and/or request royalties regarding the IPRs included in the implementations of the FI-WARE GES. We proposed a wording that, from our point of view, regulate this situations and, in parallel, didn?t affect the essence of the project at this point ( accordingly with the DoW). In this FINAL VERSION of the CA, we?ve included the comments sent by NSN in this clause in the two first paragraphs, but not the new third paragraph as, from our perspective, goes beyond the modification requested and will give rise to another round of discussions and literally we have no more time to afford it. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects that cannot be subject to ?protection or royalties?: 1.- If it is something ?inherent? to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Regarding Technnicolor concerns about the payment clause (agreed during one of the Conference calls held during the negotiation process), we?ve maintained the clause wording under our reasoning in mails of 22nd July 27 th July sent to Technicolor. We have also included a last minute minor change in the publications clause . Our technical people strongly requested us to include a shorter term for the publications clause to enable the parties to duly fulfill with a ?normal? technical development of the project. It is to make shorter the term for the publications of the Public Deliverables (10 working days) and to enable the Board to decide an even shorter term in case of publications in the project website www.fi-ware.eu ( maximum 5 working days) They say that a 20 days period is not practical at all, at least for these publications, specially to attend the needs of Use Cases projects and the expected content of the mentioned web site. I?ve modified clause 4.4.1. including a new point c) and also (accordingly) clauses 3.3.1 and 3.3.2.5 (functions and decisions of the Board) Last, accordingly with Article 1.4 of the Grant Agreement, the Commission is expecting with the signed Grant Agreement that the consortium has established and signed a Consortium Agreement. We must take into account that the 45 days period to deliver the signed Form A to the Commission expire (except I?m wrong) next 16th Sept and some partners subject their signature to the conclusion of this agreement. Consequently, I have received definitive instructions to close the Consortium Agreement and start the signature process. Please find attached the final Consortium Agreement for FI-WARE for signature (pdf-document). In addition, I prepared the signature pages per FI-WARE partner (word-document) based on the information received. I would like to receive the pending information to complete the signature with the name(s) and title(s) of the organization that still have not sent their details. As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Please print 26 signature pages of your signature page and send them signed to the address mentioned bellow by courier mail latest by 9th September. Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal To the att of Mr. Javier de Pedro DISTRITO C- Edificio Oeste 1, 4? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) We will confirm the reception of your signature and will send back one original together with the copies of the other signatures. In addition, please send a scanned version of your signature page latest by 9th September: The parties that have already sent the signed Collaboration Agreement to AALTO (or to the Coordinators of others FUTURE INTERNET projects) please send us a scanned copy of your signature page to the following e-mail address jdps at tid.es; the rest of participants that have still not signed the Collaboration Agreement, please send us also three copies of the signature page ( Annex 1) to the address mentioned above. Find enclosed the final version of the Collaboration Agreement. If you have any further doubts regarding the signature process, please let us know. Thanks and regards. Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal From susanne.weikl at nsn.com Wed Aug 31 13:31:57 2011 From: susanne.weikl at nsn.com (Weikl, Susanne (NSN - DE/Munich)) Date: Wed, 31 Aug 2011 13:31:57 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) In-Reply-To: References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A38A@EXCLU2K7.hi.inet> <175D251D5B968549BDBBAA2BAC721C97016ABEFF@SLFSNX.rcs.alcatel-research.de> <7ED7B27AF3542948BAB7BCD179A7677C10CD40CEB5@DEWDFECCR03.wdf.sap.corp> <4E568423.8090409@tid.es> <2B9915A85B6D8D47A5051C368C56E7D4020B044B@DEMUEXC005.nsn-intra.net> <175D251D5B968549BDBBAA2BAC721C97016AC00E@SLFSNX.rcs.alcatel-research.de> <4E57A1CE.6010200@tid.es> <2B9915A85B6D8D47A5051C368C56E7D4020B07F8@DEMUEXC005.nsn-intra.net> <2B9915A85B6D8D47A5051C368C56E7D4020EB056@DEMUEXC005.nsn-intra.net> Message-ID: <2B9915A85B6D8D47A5051C368C56E7D4020EB42E@DEMUEXC005.nsn-intra.net> We really do not want to delay. Luis communicated on august 22nd that "if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible." We have promptly and continuously since 2 weeks asked for this change (and not a single one as so far commented that they disagree in substance). Also the exclusion lists have not been finalized yet. So we cannot be too late... -----Original Message----- From: ext Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Wednesday, August 31, 2011 1:03 PM To: Weikl, Susanne (NSN - DE/Munich) Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; ext Juanjo Hierro; SCHATTAUER, Karl; ext LUIS GARCIA GARCIA Subject: RE: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Susanne, oh my. At this point I don't think the question is "would IBM agree.... ?", but "is it too late to make changes?". From what I understand, many parties have already signed the version as is. This would unfortunately result in have Parties sign on two different versions. Luis? Juanjo? Is there still time to make changes? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel:? 972-4-829-6069? Fax:? 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Weikl, Susanne (NSN - DE/Munich)" To: Suzanne Erez/Haifa/IBM at IBMIL, , , "ext Juanjo Hierro" , "SCHATTAUER, Karl" , "ext LUIS GARCIA GARCIA" Date: 08/30/11 05:46 PM Subject: RE: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Suzanne, would IBM have an issue with the last suggested change? ?For the sake of clarity, Parties signing this CA as well as any other third party, ____subject to additional conditions or agreement____, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? Best Regards Susanne -----Original Message----- From: ext Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Monday, August 29, 2011 9:09 AM To: Weikl, Susanne (NSN - DE/Munich); fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; ext Juanjo Hierro; SCHATTAUER, Karl; ext LUIS GARCIA GARCIA Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) All, Perhaps my interpretation of the new language is different from Susanne's. As I read it, Royalties may be asked for 1) ?not directly disclosed by the FI-WARE Generic Enabler Specifications OR 2) or which are not inherent to, OR 3) or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications? From my understanding this leaves 3 possibilities to ask for Royalties; not one long possibility, but 3 separate possibilities. Therefore, the language as currently written allows the Parties to request royalties for all implementations " not directly disclosed by the FI-WARE Generic Enabler Specifications". As written in full - "....Parties are not barred from requesting royalties for.... any such implementations of the FI-WARE Generic Enablers Specifications, which are not directly disclosed by the FI-WARE Generic Enabler Specifications..... " Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel:? 972-4-829-6069? Fax:? 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Weikl, Susanne (NSN - DE/Munich)" To: ext Juanjo Hierro , "SCHATTAUER, Karl" , ext LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu Date: 08/26/11 06:03 PM Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Sent by: fiware-legal-bounces at lists.fi-ware.eu Hello Juanjo, Luis and all, 1. ?normal implementation? is the short form of Luis? explanations ? If it is something ?inherent? to the specifications, that is to say that nobody would implement it in a different way.? and ??If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do.?; his explanation for ?directly disclosed by the FI-WARE Generic Enabler Specifications or which are not inherent to, or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications? 2. So what basically remains for requesting royalties is small and very open to interpretation. 3. If there is a third party (that is, someone who is not a FI-WARE partner) that has a patent on something that existed previous to our spec, it is for example possible to fight that party by putting it into the situation, where it has to chose, whether it rather uses the spec free of charge or use the patent against all and loses it rights to the spec. This is reciprocity - very effective means. 4. If we all agree that we will use terms with the spec ? why do we not simply add this by the suggested 6 word? I would like to remind that we have no clause in the agreement which regulates that there is no third party beneficiaries. Most of us are not experts on Belgium Law with respect to third party beneficiary clauses. I am not sure, whether it really can be excluded that a third party simply comes up and claims ?I don?t care about your term, I have already been granted the rights by force of the CA.?. And NSN does not want to take the risk. Yes, it is time to sign the agreement. But I have not heard anybody yet how has content wise an issue with this last change. Best regards, Susanne Weikl Senior Legal Counsel St.-Martin-Stra?e 76 41.4017 D-80240 Munich Tel: +49 89 5159 36940 Mob: +49 160 9062 7495 Fax: +49 89 5159 44 36940 susanne.weikl at nsn.com http://www.nokiasiemensnetworks.com/global/ Think before you print Nokia Siemens Networks GmbH & Co. KG Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRA 88537 WEEE-Reg.-Nr.: DE 52984304 Pers?nlich haftende Gesellschafterin / General Partner: Nokia Siemens Networks Management GmbH Gesch?ftsleitung / Board of Directors: Olaf Horsthemke, Dr. Hermann Rodler Vorsitzender des Aufsichtsrats / Chairman of supervisory board: Herbert Merz Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRB 163416 _________________________________________________________________________________ Important Note: This e-mail and any attachment are confidential and may contain trade secrets and may also be legally privileged or otherwise protected from disclosure. If you have received it in error, you are on notice of its status. Please notify us immediately by reply e-mail and then delete this e-mail and any attachment from your system. If you are not the intended recipient please understand that you must not copy this e-mail or any attachment or disclose the contents to any other person. Thank you for your cooperation. From: ext Juanjo Hierro [mailto:jhierro at tid.es] Sent: Friday, August 26, 2011 3:38 PM To: SCHATTAUER, Karl Cc: Weikl, Susanne (NSN - DE/Munich); fiware-legal at lists.fi-ware.eu Subject: Re: AW: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von Weikl, Susanne (NSN - DE/Munich) Gesendet: Freitag, 26. August 2011 09:29 An: ext Juanjo Hierro; fiware-legal at lists.fi-ware.eu Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hello Juanjo and all, good that we clarify this again: There is 3 levels: 1) The Specification as such, i.e. ?the piece of paper? ? not controversial at all ? can be circulated royalty free. 2) A Party?s implementation of such Specification - ? not controversial at all ? is up to the Party, whether it is royalty bearing or not. The problematic level is the following: do we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification? So far the agreement states ?yes?, provided that it is a ?normal implementation?. Can you explain why are you deriving this ? What do you mean by "normal implementation" ? I have search for the term "normal implementation" and is nowhere in the CA. Even "normal" is not used at all regarding IPRs ... Why do you say that "we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification" ? We say just the opposite in the CA: Parties are not barred from requesting royalties for, or protecting their rights with respect to IPRs (e.g. but not limited to patents) in any such implementations of the FI-WARE Generic Enablers Specifications, which are not directly disclosed by the FI-WARE Generic Enabler Specifications or which are not inherent to, or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications Of course, we will not charge for IPRs that are inherent to or cannot trivially derived as valid implementation of part of a FI-WARE GE specification (read my comment below, further on this matter). But you would be able to charge for IPRs on aspects that are linked to those aspects that may be differential in your product, therefore not inherent nor trivially derived from just reading the spec. This is e.g. going beyond what is normally requested in standardization, where the obligation to avail IPR is either on FRAND conditions or at least limited to ?essential IPR?, not ?normal IPR?. It also goes far beyond what is requested in normal EU projects, where Background only has to be made available under FRAND terms. In this context ?reciprocity? is meant as follows: the third parties has to make available its IPRs which would be used in such a ?normal implementation? of a Specification. It does not extent to any other product or IPR of such third party. What is avoided thereby is that a Party can use all the specification free of charge and block all the rest of the world from using the specifications, should it have a patent which it essentially needed for the implementation of the Specification. Again, don't know what you mean by "normal implementation". But, anyway, let's make one point clear. When a number of companies sit together and try to define something which can become an open standard (and that's what we aim to do in FI-WARE) what they do is that they generate public specifications and try to publicly state (typically in a legal note accompanying the specs) that any party feels should feel confident that it will be able to generate a competitive product, compliant to the specs. And that they will not be suddenly surprised because one day they discover that one of the companies who authored the specs kept (secretly) a patent on something that is "inherent" in the spec or could be trivially derived in the spec. That's regular business in open software standards. The existing clauses in the CA try to make sure that we are on the same page on this. If there is a third party (that is, someone who is not a FI-WARE partner) that has a patent on something that existed previous to our spec, I don't know how you are going to be able to prevent that they sue us when they discover it. It's simply impossible. We will have to battle to it or fix the specs (same thing a standard body would do). If it is something they generated as a result of implementing our spec and it happens to be something "inherent to the spec" or "trivially derived from the spec", I don't understand why they would be able to sue us. We just need to accompany our GE specs with some legal note making a statement like (well, in the right legal terms, I'm not a lawyer) "No party implementing these specifications will be able to charge royalties or claim patents on any element that is directly disclosed by this specification or which is inherent to, or can trivially derived as valid implementation of, part of this specification". That would be the kind of reciprocity you are looking for, I guess. But the right thing to do will be to add the proper legal note in whatever spec we produce. Not to introduce anything in the CA (which is not public). Changing the CA doesn't solve anything. Frankly speaking, what you ask for (the change in the CA) still doesn't make any sense to me. Legal notes we will have to enclose to produced GEs are another story. There, my comment above would apply. Time is over. It's time to sign the current GA. Best regards, -- Juanjo Therefore a clarification as in ?For the sake of clarity, Parties signing this CA as well as any other third party, subject to additional conditions or agreement, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? is not nonsense, but protects all of us and fully serves the purpose, we want to achieve: an open specification. Best Regards Susanne From: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of ext Juanjo Hierro Sent: Thursday, August 25, 2011 7:20 PM To: fiware-legal at lists.fi-ware.eu Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hi all, This discussion is sincerely ... "non-sense". I hope I will be able to explain myself. What is public and royalty-free are the FI-WARE GE Specifications. And as pointed out in previous mails from other partners (despite it was with the omission of the term "specification" which is quite relevant in this discussion) the public and royalty-free nature of FI-WARE GE Specifications is something that was there since proposal time and rather a cornerstone reason why our project passed the evaluation and was accepted by the EC. Given said this, an specification is here a PIECE OF PAPER, that is, documentation. What sort of reciprocity are we looking for here ? Are you asking that third parties make specifications of other products they may have public and royalty-free ? It simply has no-sense. It is like saying that Apple has to make public and royalty-free the specs of one of its products just because it has develop the Safari browser based on the public and royalty-free specs of HTML as published by the W3C (BTW, which product specification would you ask them to make public and royalty-free ? The iPhone specifications ?) Come on. NO-SENSE at all. As repeated many times. Specifications are different than implementations. We are not making our implementations of the FI-WARE GE Specifications public and royalty-free. Nor of course can claim that third parties should give us their implementations for free either. Unless I'm missing something rather important, this discussion is completely non-sense to me. Therefore, no changes in the CA will be incorporated in this respect. As already announced by Luis: As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Best regards, -- Juanjo On 23/08/11 15:40, Suzanne Erez wrote: Susanne, Kathrin, et al., Kathrin has some points in her argument, and so does Susanne and Karl. But are legal arguments really the question? Or is the question what did we agree to in November 2010 when this whole CA negotiation started? From the beginning, our understanding was that the Commission requires that the GES be royalty free. This was conveyed to us by Juanjo. Now there is a new request that goes like - we will make the GES royalty free, but only on the condition that the "public" will promise reciprocity. There is nothing wrong business wise in this approach, and I for one am always happy to get other companies patents royalty free. In fact, I would like to get RAND for the GES. But that was not our agreement with the Commission, and we are working according to the Commission's request. We agreed to this condition 10 months ago. I think it is now 10 months too late to start changing the terms. Being an engineer, I remember an old saying "there comes a time to shoot the engineers and ship the product." I think we can adopt that and say "there comes a time to shoot the attorneys and start the project". I think that time is now. good luck to us all, and happy working on the project! Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "SCHATTAUER, Karl" , LUIS GARCIA GARCIA , "fiware-legal at lists.fi-ware.eu" Cc: Asesor?a Jur?dica , JOSE JIMENEZ DELGADO , LUIS LOPEZ DE AYALA HIDALGO Date: 08/23/11 04:16 PM Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Karl, dear Susanne first, SAP cannot agree to any changes to CA now, because we have already send the CA for signature. The only way to change the CA for SAP now would be an amendment. Secondly, I disagree with your legal advisor. Reciprocity is not upon any third party discretion because the party or parties creating the Generic Enabler Specifications are free to decide upon Terms of Use they would like to attach to the Generic Enabler Specifications. It is not upon third parties to decide about the conditions for the usage of the Generic Enabler Specifications. Thirdly, what happens if a party does not agree upon reciprocity for specific Generic Enabler Specification? I assume it should be free to all Fi-Ware partners to decide most freely upon the terms and conditions upon which the Generic Enabler Specification should be published. I do not see a connection between royalties (= money to be paid) or a reciprocal license. Another point with regard to third party beneficiaries, the DOW states this: ?Task 2.3: Consolidation of Generic Enabler Specifications In order to fulfil the FI-WARE promise all Generic Enablers will be accompanied by Open Specifications that will facilitate usage and integration in any FI-WARE Instance as well as the development of compliant implementations of GEs by third parties. While GE Specifications themselves will be done inside WP3-WP10, overall coordination and consolidation of these specifications is the objective and responsibility of this Task. ? I assume, if the third party beneficiary does not claim the usage license without reciprocity from the CA, they can claim it from the DOW. I understand it in that way, that we have to make available the Specification under such conditions, that a third party can develop freely an implementation of it. And to be honest, the word Open might give the impression to have even broader rights than just no royalties. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von SCHATTAUER, Karl Gesendet: Dienstag, 23. August 2011 13:54 An: LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica; JOSE JIMENEZ DELGADO; LUIS LOPEZ DE AYALA HIDALGO Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear Luis, all, below please find some comments from our legal department. Best Regards, Karl Dear Luis, Per email dated August 17, Alcatel-Lucent proposed some modifications to section 4.1 of the CA. One of the main concerns we tried to address was to incorporate an obligation on any third party joining the CA or underlying agreements to grant the same rights on its patents on the same terms and conditions on which such third party receives rights from the Consortium Partners under the CA or other associated agreements. The final version sent to us does not address this concern. Instead it has been proposed by SAP AG to cover the reciprocity under adequate licenses attached to the GE Specifications. This approach bears the following risks: ? It would be at the option and discretion of a third party to agree to grant reciprocity ? Under some national laws, based on the current wording of section 4.1 a, any third party could be considered as a third party beneficiary to the CA and be eligible to request the grant of royalty free patent licenses to the GE Specs ( which would include the Parties Background, Sideground and Foreground). Consequently there is a risk that we may not have the right to request a royalty free grant back license from such third party. For these valid reasons, the obligation on third parties to grant reciprocity should be stated in the CA. We believe that this is a very balanced approach. Therefore we propose to reword the second sentence of the second paragraph of section 4.1 as follows (modification indicated in bold letters): ?For the sake of clarity, Parties signing this CA as well as any other third party, subject to reciprocity, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? We look forward to your response. All the best, Oezlem Schmitt OEZLEM SCHMITT IP CORPORATE COUNSEL ALCATEL-LUCENT INTELLECTUAL PROPERTY & STANDARDS P: +49 711 821 44562 F: +49 711 821 44587 Oezlem.Schmitt at alcatel-lucent.com Alcatel-Lucent Deutschland AG Lorenzstra?e 10 70435 Stuttgart Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von LUIS GARCIA GARCIA Gesendet: Montag, 22. August 2011 10:41 An: fiware-legal at lists.fi-ware.eu Cc: JOSE JIMENEZ DELGADO; Asesor?a Jur?dica; LUIS LOPEZ DE AYALA HIDALGO Betreff: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear all, Although clause 4.1 was agreed and closed during our calls and e-mails discussions, some partners pointed out that it was necessary to modify it in order to enable the partners to protect and/or request royalties regarding the IPRs included in the implementations of the FI-WARE GES. We proposed a wording that, from our point of view, regulate this situations and, in parallel, didn?t affect the essence of the project at this point ( accordingly with the DoW). In this FINAL VERSION of the CA, we?ve included the comments sent by NSN in this clause in the two first paragraphs, but not the new third paragraph as, from our perspective, goes beyond the modification requested and will give rise to another round of discussions and literally we have no more time to afford it. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects that cannot be subject to ?protection or royalties?: 1.- If it is something ?inherent? to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Regarding Technnicolor concerns about the payment clause (agreed during one of the Conference calls held during the negotiation process), we?ve maintained the clause wording under our reasoning in mails of 22nd July 27 th July sent to Technicolor. We have also included a last minute minor change in the publications clause . Our technical people strongly requested us to include a shorter term for the publications clause to enable the parties to duly fulfill with a ?normal? technical development of the project. It is to make shorter the term for the publications of the Public Deliverables (10 working days) and to enable the Board to decide an even shorter term in case of publications in the project website www.fi-ware.eu ( maximum 5 working days) They say that a 20 days period is not practical at all, at least for these publications, specially to attend the needs of Use Cases projects and the expected content of the mentioned web site. I?ve modified clause 4.4.1. including a new point c) and also (accordingly) clauses 3.3.1 and 3.3.2.5 (functions and decisions of the Board) Last, accordingly with Article 1.4 of the Grant Agreement, the Commission is expecting with the signed Grant Agreement that the consortium has established and signed a Consortium Agreement. We must take into account that the 45 days period to deliver the signed Form A to the Commission expire (except I?m wrong) next 16th Sept and some partners subject their signature to the conclusion of this agreement. Consequently, I have received definitive instructions to close the Consortium Agreement and start the signature process. Please find attached the final Consortium Agreement for FI-WARE for signature (pdf-document). In addition, I prepared the signature pages per FI-WARE partner (word-document) based on the information received. I would like to receive the pending information to complete the signature with the name(s) and title(s) of the organization that still have not sent their details. As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Please print 26 signature pages of your signature page and send them signed to the address mentioned bellow by courier mail latest by 9th September. Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal To the att of Mr. Javier de Pedro DISTRITO C- Edificio Oeste 1, 4? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) We will confirm the reception of your signature and will send back one original together with the copies of the other signatures. In addition, please send a scanned version of your signature page latest by 9th September: The parties that have already sent the signed Collaboration Agreement to AALTO (or to the Coordinators of others FUTURE INTERNET projects) please send us a scanned copy of your signature page to the following e-mail address jdps at tid.es; the rest of participants that have still not signed the Collaboration Agreement, please send us also three copies of the signature page ( Annex 1) to the address mentioned above. Find enclosed the final version of the Collaboration Agreement. If you have any further doubts regarding the signature process, please let us know. Thanks and regards. Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal From kathrin.schweppe at sap.com Wed Aug 31 13:58:25 2011 From: kathrin.schweppe at sap.com (Schweppe, Kathrin) Date: Wed, 31 Aug 2011 13:58:25 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) In-Reply-To: <2B9915A85B6D8D47A5051C368C56E7D4020EB42E@DEMUEXC005.nsn-intra.net> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A38A@EXCLU2K7.hi.inet> <175D251D5B968549BDBBAA2BAC721C97016ABEFF@SLFSNX.rcs.alcatel-research.de> <7ED7B27AF3542948BAB7BCD179A7677C10CD40CEB5@DEWDFECCR03.wdf.sap.corp> <4E568423.8090409@tid.es> <2B9915A85B6D8D47A5051C368C56E7D4020B044B@DEMUEXC005.nsn-intra.net> <175D251D5B968549BDBBAA2BAC721C97016AC00E@SLFSNX.rcs.alcatel-research.de> <4E57A1CE.6010200@tid.es> <2B9915A85B6D8D47A5051C368C56E7D4020B07F8@DEMUEXC005.nsn-intra.net> <2B9915A85B6D8D47A5051C368C56E7D4020EB056@DEMUEXC005.nsn-intra.net> <2B9915A85B6D8D47A5051C368C56E7D4020EB42E@DEMUEXC005.nsn-intra.net> Message-ID: <7ED7B27AF3542948BAB7BCD179A7677C10CD66892F@DEWDFECCR03.wdf.sap.corp> Dear all, From my understanding, and considering that we have discussed this point for weeks now, I agree with Suzanne. Luis and Juanjo assume that the wording provided in the CA is already covering your points. Especially Juanjo stated his understanding last week in several emails, that he does not see the necessity for the changes because they are already covered. From my understanding, it is now too late for the proposed changes. Further, from SAP's point of view, any changes to the CA need now an Amendment because we have already started the signature process. I must admit, that I have my doubts with respect to the latest proposal from Susanne, because it forces every party to apply additional conditions upon the implementations they provide royalty free. The original wording is broader. The word 'may' indicates that it is upon the discretion of the party owning the implementation to choose the conditions under which the implementation is being offered. This is not even a wording that could give a third party beneficiary a right to receive implementation upon royalty free conditions. What is the problem with this freedom? Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. -----Urspr?ngliche Nachricht----- Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von Weikl, Susanne (NSN - DE/Munich) Gesendet: Mittwoch, 31. August 2011 13:32 An: ext Suzanne Erez; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; ext Juanjo Hierro; SCHATTAUER, Karl; ext LUIS GARCIA GARCIA Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) We really do not want to delay. Luis communicated on august 22nd that "if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible." We have promptly and continuously since 2 weeks asked for this change (and not a single one as so far commented that they disagree in substance). Also the exclusion lists have not been finalized yet. So we cannot be too late... -----Original Message----- From: ext Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Wednesday, August 31, 2011 1:03 PM To: Weikl, Susanne (NSN - DE/Munich) Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; ext Juanjo Hierro; SCHATTAUER, Karl; ext LUIS GARCIA GARCIA Subject: RE: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Susanne, oh my. At this point I don't think the question is "would IBM agree.... ?", but "is it too late to make changes?". From what I understand, many parties have already signed the version as is. This would unfortunately result in have Parties sign on two different versions. Luis? Juanjo? Is there still time to make changes? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Weikl, Susanne (NSN - DE/Munich)" To: Suzanne Erez/Haifa/IBM at IBMIL, , , "ext Juanjo Hierro" , "SCHATTAUER, Karl" , "ext LUIS GARCIA GARCIA" Date: 08/30/11 05:46 PM Subject: RE: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Suzanne, would IBM have an issue with the last suggested change? ?For the sake of clarity, Parties signing this CA as well as any other third party, ____subject to additional conditions or agreement____, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? Best Regards Susanne -----Original Message----- From: ext Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Monday, August 29, 2011 9:09 AM To: Weikl, Susanne (NSN - DE/Munich); fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; ext Juanjo Hierro; SCHATTAUER, Karl; ext LUIS GARCIA GARCIA Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) All, Perhaps my interpretation of the new language is different from Susanne's. As I read it, Royalties may be asked for 1) ?not directly disclosed by the FI-WARE Generic Enabler Specifications OR 2) or which are not inherent to, OR 3) or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications? From my understanding this leaves 3 possibilities to ask for Royalties; not one long possibility, but 3 separate possibilities. Therefore, the language as currently written allows the Parties to request royalties for all implementations " not directly disclosed by the FI-WARE Generic Enabler Specifications". As written in full - "....Parties are not barred from requesting royalties for.... any such implementations of the FI-WARE Generic Enablers Specifications, which are not directly disclosed by the FI-WARE Generic Enabler Specifications..... " Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Weikl, Susanne (NSN - DE/Munich)" To: ext Juanjo Hierro , "SCHATTAUER, Karl" , ext LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu Date: 08/26/11 06:03 PM Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Sent by: fiware-legal-bounces at lists.fi-ware.eu Hello Juanjo, Luis and all, 1. ?normal implementation? is the short form of Luis? explanations ? If it is something ?inherent? to the specifications, that is to say that nobody would implement it in a different way.? and ?If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do.?; his explanation for ?directly disclosed by the FI-WARE Generic Enabler Specifications or which are not inherent to, or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications? 2. So what basically remains for requesting royalties is small and very open to interpretation. 3. If there is a third party (that is, someone who is not a FI-WARE partner) that has a patent on something that existed previous to our spec, it is for example possible to fight that party by putting it into the situation, where it has to chose, whether it rather uses the spec free of charge or use the patent against all and loses it rights to the spec. This is reciprocity - very effective means. 4. If we all agree that we will use terms with the spec ? why do we not simply add this by the suggested 6 word? I would like to remind that we have no clause in the agreement which regulates that there is no third party beneficiaries. Most of us are not experts on Belgium Law with respect to third party beneficiary clauses. I am not sure, whether it really can be excluded that a third party simply comes up and claims ?I don?t care about your term, I have already been granted the rights by force of the CA.?. And NSN does not want to take the risk. Yes, it is time to sign the agreement. But I have not heard anybody yet how has content wise an issue with this last change. Best regards, Susanne Weikl Senior Legal Counsel St.-Martin-Stra?e 76 41.4017 D-80240 Munich Tel: +49 89 5159 36940 Mob: +49 160 9062 7495 Fax: +49 89 5159 44 36940 susanne.weikl at nsn.com http://www.nokiasiemensnetworks.com/global/ Think before you print Nokia Siemens Networks GmbH & Co. KG Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRA 88537 WEEE-Reg.-Nr.: DE 52984304 Pers?nlich haftende Gesellschafterin / General Partner: Nokia Siemens Networks Management GmbH Gesch?ftsleitung / Board of Directors: Olaf Horsthemke, Dr. Hermann Rodler Vorsitzender des Aufsichtsrats / Chairman of supervisory board: Herbert Merz Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRB 163416 _________________________________________________________________________________ Important Note: This e-mail and any attachment are confidential and may contain trade secrets and may also be legally privileged or otherwise protected from disclosure. If you have received it in error, you are on notice of its status. Please notify us immediately by reply e-mail and then delete this e-mail and any attachment from your system. If you are not the intended recipient please understand that you must not copy this e-mail or any attachment or disclose the contents to any other person. Thank you for your cooperation. From: ext Juanjo Hierro [mailto:jhierro at tid.es] Sent: Friday, August 26, 2011 3:38 PM To: SCHATTAUER, Karl Cc: Weikl, Susanne (NSN - DE/Munich); fiware-legal at lists.fi-ware.eu Subject: Re: AW: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von Weikl, Susanne (NSN - DE/Munich) Gesendet: Freitag, 26. August 2011 09:29 An: ext Juanjo Hierro; fiware-legal at lists.fi-ware.eu Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hello Juanjo and all, good that we clarify this again: There is 3 levels: 1) The Specification as such, i.e. ?the piece of paper? ? not controversial at all ? can be circulated royalty free. 2) A Party?s implementation of such Specification - ? not controversial at all ? is up to the Party, whether it is royalty bearing or not. The problematic level is the following: do we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification? So far the agreement states ?yes?, provided that it is a ?normal implementation?. Can you explain why are you deriving this ? What do you mean by "normal implementation" ? I have search for the term "normal implementation" and is nowhere in the CA. Even "normal" is not used at all regarding IPRs ... Why do you say that "we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification" ? We say just the opposite in the CA: Parties are not barred from requesting royalties for, or protecting their rights with respect to IPRs (e.g. but not limited to patents) in any such implementations of the FI-WARE Generic Enablers Specifications, which are not directly disclosed by the FI-WARE Generic Enabler Specifications or which are not inherent to, or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications Of course, we will not charge for IPRs that are inherent to or cannot trivially derived as valid implementation of part of a FI-WARE GE specification (read my comment below, further on this matter). But you would be able to charge for IPRs on aspects that are linked to those aspects that may be differential in your product, therefore not inherent nor trivially derived from just reading the spec. This is e.g. going beyond what is normally requested in standardization, where the obligation to avail IPR is either on FRAND conditions or at least limited to ?essential IPR?, not ?normal IPR?. It also goes far beyond what is requested in normal EU projects, where Background only has to be made available under FRAND terms. In this context ?reciprocity? is meant as follows: the third parties has to make available its IPRs which would be used in such a ?normal implementation? of a Specification. It does not extent to any other product or IPR of such third party. What is avoided thereby is that a Party can use all the specification free of charge and block all the rest of the world from using the specifications, should it have a patent which it essentially needed for the implementation of the Specification. Again, don't know what you mean by "normal implementation". But, anyway, let's make one point clear. When a number of companies sit together and try to define something which can become an open standard (and that's what we aim to do in FI-WARE) what they do is that they generate public specifications and try to publicly state (typically in a legal note accompanying the specs) that any party feels should feel confident that it will be able to generate a competitive product, compliant to the specs. And that they will not be suddenly surprised because one day they discover that one of the companies who authored the specs kept (secretly) a patent on something that is "inherent" in the spec or could be trivially derived in the spec. That's regular business in open software standards. The existing clauses in the CA try to make sure that we are on the same page on this. If there is a third party (that is, someone who is not a FI-WARE partner) that has a patent on something that existed previous to our spec, I don't know how you are going to be able to prevent that they sue us when they discover it. It's simply impossible. We will have to battle to it or fix the specs (same thing a standard body would do). If it is something they generated as a result of implementing our spec and it happens to be something "inherent to the spec" or "trivially derived from the spec", I don't understand why they would be able to sue us. We just need to accompany our GE specs with some legal note making a statement like (well, in the right legal terms, I'm not a lawyer) "No party implementing these specifications will be able to charge royalties or claim patents on any element that is directly disclosed by this specification or which is inherent to, or can trivially derived as valid implementation of, part of this specification". That would be the kind of reciprocity you are looking for, I guess. But the right thing to do will be to add the proper legal note in whatever spec we produce. Not to introduce anything in the CA (which is not public). Changing the CA doesn't solve anything. Frankly speaking, what you ask for (the change in the CA) still doesn't make any sense to me. Legal notes we will have to enclose to produced GEs are another story. There, my comment above would apply. Time is over. It's time to sign the current GA. Best regards, -- Juanjo Therefore a clarification as in ?For the sake of clarity, Parties signing this CA as well as any other third party, subject to additional conditions or agreement, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? is not nonsense, but protects all of us and fully serves the purpose, we want to achieve: an open specification. Best Regards Susanne From: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of ext Juanjo Hierro Sent: Thursday, August 25, 2011 7:20 PM To: fiware-legal at lists.fi-ware.eu Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hi all, This discussion is sincerely ... "non-sense". I hope I will be able to explain myself. What is public and royalty-free are the FI-WARE GE Specifications. And as pointed out in previous mails from other partners (despite it was with the omission of the term "specification" which is quite relevant in this discussion) the public and royalty-free nature of FI-WARE GE Specifications is something that was there since proposal time and rather a cornerstone reason why our project passed the evaluation and was accepted by the EC. Given said this, an specification is here a PIECE OF PAPER, that is, documentation. What sort of reciprocity are we looking for here ? Are you asking that third parties make specifications of other products they may have public and royalty-free ? It simply has no-sense. It is like saying that Apple has to make public and royalty-free the specs of one of its products just because it has develop the Safari browser based on the public and royalty-free specs of HTML as published by the W3C (BTW, which product specification would you ask them to make public and royalty-free ? The iPhone specifications ?) Come on. NO-SENSE at all. As repeated many times. Specifications are different than implementations. We are not making our implementations of the FI-WARE GE Specifications public and royalty-free. Nor of course can claim that third parties should give us their implementations for free either. Unless I'm missing something rather important, this discussion is completely non-sense to me. Therefore, no changes in the CA will be incorporated in this respect. As already announced by Luis: As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Best regards, -- Juanjo On 23/08/11 15:40, Suzanne Erez wrote: Susanne, Kathrin, et al., Kathrin has some points in her argument, and so does Susanne and Karl. But are legal arguments really the question? Or is the question what did we agree to in November 2010 when this whole CA negotiation started? From the beginning, our understanding was that the Commission requires that the GES be royalty free. This was conveyed to us by Juanjo. Now there is a new request that goes like - we will make the GES royalty free, but only on the condition that the "public" will promise reciprocity. There is nothing wrong business wise in this approach, and I for one am always happy to get other companies patents royalty free. In fact, I would like to get RAND for the GES. But that was not our agreement with the Commission, and we are working according to the Commission's request. We agreed to this condition 10 months ago. I think it is now 10 months too late to start changing the terms. Being an engineer, I remember an old saying "there comes a time to shoot the engineers and ship the product." I think we can adopt that and say "there comes a time to shoot the attorneys and start the project". I think that time is now. good luck to us all, and happy working on the project! Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "SCHATTAUER, Karl" , LUIS GARCIA GARCIA , "fiware-legal at lists.fi-ware.eu" Cc: Asesor?a Jur?dica , JOSE JIMENEZ DELGADO , LUIS LOPEZ DE AYALA HIDALGO Date: 08/23/11 04:16 PM Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Karl, dear Susanne first, SAP cannot agree to any changes to CA now, because we have already send the CA for signature. The only way to change the CA for SAP now would be an amendment. Secondly, I disagree with your legal advisor. Reciprocity is not upon any third party discretion because the party or parties creating the Generic Enabler Specifications are free to decide upon Terms of Use they would like to attach to the Generic Enabler Specifications. It is not upon third parties to decide about the conditions for the usage of the Generic Enabler Specifications. Thirdly, what happens if a party does not agree upon reciprocity for specific Generic Enabler Specification? I assume it should be free to all Fi-Ware partners to decide most freely upon the terms and conditions upon which the Generic Enabler Specification should be published. I do not see a connection between royalties (= money to be paid) or a reciprocal license. Another point with regard to third party beneficiaries, the DOW states this: ?Task 2.3: Consolidation of Generic Enabler Specifications In order to fulfil the FI-WARE promise all Generic Enablers will be accompanied by Open Specifications that will facilitate usage and integration in any FI-WARE Instance as well as the development of compliant implementations of GEs by third parties. While GE Specifications themselves will be done inside WP3-WP10, overall coordination and consolidation of these specifications is the objective and responsibility of this Task. ? I assume, if the third party beneficiary does not claim the usage license without reciprocity from the CA, they can claim it from the DOW. I understand it in that way, that we have to make available the Specification under such conditions, that a third party can develop freely an implementation of it. And to be honest, the word Open might give the impression to have even broader rights than just no royalties. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von SCHATTAUER, Karl Gesendet: Dienstag, 23. August 2011 13:54 An: LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica; JOSE JIMENEZ DELGADO; LUIS LOPEZ DE AYALA HIDALGO Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear Luis, all, below please find some comments from our legal department. Best Regards, Karl Dear Luis, Per email dated August 17, Alcatel-Lucent proposed some modifications to section 4.1 of the CA. One of the main concerns we tried to address was to incorporate an obligation on any third party joining the CA or underlying agreements to grant the same rights on its patents on the same terms and conditions on which such third party receives rights from the Consortium Partners under the CA or other associated agreements. The final version sent to us does not address this concern. Instead it has been proposed by SAP AG to cover the reciprocity under adequate licenses attached to the GE Specifications. This approach bears the following risks: ? It would be at the option and discretion of a third party to agree to grant reciprocity ? Under some national laws, based on the current wording of section 4.1 a, any third party could be considered as a third party beneficiary to the CA and be eligible to request the grant of royalty free patent licenses to the GE Specs ( which would include the Parties Background, Sideground and Foreground). Consequently there is a risk that we may not have the right to request a royalty free grant back license from such third party. For these valid reasons, the obligation on third parties to grant reciprocity should be stated in the CA. We believe that this is a very balanced approach. Therefore we propose to reword the second sentence of the second paragraph of section 4.1 as follows (modification indicated in bold letters): ?For the sake of clarity, Parties signing this CA as well as any other third party, subject to reciprocity, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? We look forward to your response. All the best, Oezlem Schmitt OEZLEM SCHMITT IP CORPORATE COUNSEL ALCATEL-LUCENT INTELLECTUAL PROPERTY & STANDARDS P: +49 711 821 44562 F: +49 711 821 44587 Oezlem.Schmitt at alcatel-lucent.com Alcatel-Lucent Deutschland AG Lorenzstra?e 10 70435 Stuttgart Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von LUIS GARCIA GARCIA Gesendet: Montag, 22. August 2011 10:41 An: fiware-legal at lists.fi-ware.eu Cc: JOSE JIMENEZ DELGADO; Asesor?a Jur?dica; LUIS LOPEZ DE AYALA HIDALGO Betreff: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear all, Although clause 4.1 was agreed and closed during our calls and e-mails discussions, some partners pointed out that it was necessary to modify it in order to enable the partners to protect and/or request royalties regarding the IPRs included in the implementations of the FI-WARE GES. We proposed a wording that, from our point of view, regulate this situations and, in parallel, didn?t affect the essence of the project at this point ( accordingly with the DoW). In this FINAL VERSION of the CA, we?ve included the comments sent by NSN in this clause in the two first paragraphs, but not the new third paragraph as, from our perspective, goes beyond the modification requested and will give rise to another round of discussions and literally we have no more time to afford it. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects that cannot be subject to ?protection or royalties?: 1.- If it is something ?inherent? to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Regarding Technnicolor concerns about the payment clause (agreed during one of the Conference calls held during the negotiation process), we?ve maintained the clause wording under our reasoning in mails of 22nd July 27 th July sent to Technicolor. We have also included a last minute minor change in the publications clause . Our technical people strongly requested us to include a shorter term for the publications clause to enable the parties to duly fulfill with a ?normal? technical development of the project. It is to make shorter the term for the publications of the Public Deliverables (10 working days) and to enable the Board to decide an even shorter term in case of publications in the project website www.fi-ware.eu ( maximum 5 working days) They say that a 20 days period is not practical at all, at least for these publications, specially to attend the needs of Use Cases projects and the expected content of the mentioned web site. I?ve modified clause 4.4.1. including a new point c) and also (accordingly) clauses 3.3.1 and 3.3.2.5 (functions and decisions of the Board) Last, accordingly with Article 1.4 of the Grant Agreement, the Commission is expecting with the signed Grant Agreement that the consortium has established and signed a Consortium Agreement. We must take into account that the 45 days period to deliver the signed Form A to the Commission expire (except I?m wrong) next 16th Sept and some partners subject their signature to the conclusion of this agreement. Consequently, I have received definitive instructions to close the Consortium Agreement and start the signature process. Please find attached the final Consortium Agreement for FI-WARE for signature (pdf-document). In addition, I prepared the signature pages per FI-WARE partner (word-document) based on the information received. I would like to receive the pending information to complete the signature with the name(s) and title(s) of the organization that still have not sent their details. As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Please print 26 signature pages of your signature page and send them signed to the address mentioned bellow by courier mail latest by 9th September. Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal To the att of Mr. Javier de Pedro DISTRITO C- Edificio Oeste 1, 4? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) We will confirm the reception of your signature and will send back one original together with the copies of the other signatures. In addition, please send a scanned version of your signature page latest by 9th September: The parties that have already sent the signed Collaboration Agreement to AALTO (or to the Coordinators of others FUTURE INTERNET projects) please send us a scanned copy of your signature page to the following e-mail address jdps at tid.es; the rest of participants that have still not signed the Collaboration Agreement, please send us also three copies of the signature page ( Annex 1) to the address mentioned above. Find enclosed the final version of the Collaboration Agreement. If you have any further doubts regarding the signature process, please let us know. Thanks and regards. Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal From SUZANNE at il.ibm.com Wed Aug 31 14:10:06 2011 From: SUZANNE at il.ibm.com (Suzanne Erez) Date: Wed, 31 Aug 2011 15:10:06 +0300 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) In-Reply-To: <2B9915A85B6D8D47A5051C368C56E7D4020EB42E@DEMUEXC005.nsn-intra.net> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A38A@EXCLU2K7.hi.inet> <7ED7B27AF3542948BAB7BCD179A7677C10CD40CEB5@DEWDFECCR03.wdf.sap.corp> <4E568423.8090409@tid.es> <2B9915A85B6D8D47A5051C368C56E7D4020B044B@DEMUEXC005.nsn-intra.net> <175D251D5B968549BDBBAA2BAC721C97016AC00E@SLFSNX.rcs.alcatel-research.de> <4E57A1CE.6010200@tid.es> <2B9915A85B6D8D47A5051C368C56E7D4020B07F8@DEMUEXC005.nsn-intra.net> <2B9915A85B6D8D47A5051C368C56E7D4020EB056@DEMUEXC005.nsn-intra.net> <2B9915A85B6D8D47A5051C368C56E7D4020EB42E@DEMUEXC005.nsn-intra.net> Message-ID: Susanne, Yes, IBM could agree. Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel:? 972-4-829-6069? Fax:? 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Weikl, Susanne (NSN - DE/Munich)" To: Suzanne Erez/Haifa/IBM at IBMIL, , , "ext Juanjo Hierro" , "SCHATTAUER, Karl" , "ext LUIS GARCIA GARCIA" Date: 08/31/11 02:32 PM Subject: RE: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) We really do not want to delay. Luis communicated on august 22nd that "if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible." We have promptly and continuously since 2 weeks asked for this change (and not a single one as so far commented that they disagree in substance). Also the exclusion lists have not been finalized yet. So we cannot be too late... -----Original Message----- From: ext Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Wednesday, August 31, 2011 1:03 PM To: Weikl, Susanne (NSN - DE/Munich) Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; ext Juanjo Hierro; SCHATTAUER, Karl; ext LUIS GARCIA GARCIA Subject: RE: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Susanne, oh my. At this point I don't think the question is "would IBM agree.... ?", but "is it too late to make changes?". From what I understand, many parties have already signed the version as is. This would unfortunately result in have Parties sign on two different versions. Luis? Juanjo? Is there still time to make changes? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel:? 972-4-829-6069? Fax:? 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Weikl, Susanne (NSN - DE/Munich)" To: Suzanne Erez/Haifa/IBM at IBMIL, , , "ext Juanjo Hierro" , "SCHATTAUER, Karl" , "ext LUIS GARCIA GARCIA" Date: 08/30/11 05:46 PM Subject: RE: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Suzanne, would IBM have an issue with the last suggested change? ?For the sake of clarity, Parties signing this CA as well as any other third party, ____subject to additional conditions or agreement____, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? Best Regards Susanne -----Original Message----- From: ext Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Monday, August 29, 2011 9:09 AM To: Weikl, Susanne (NSN - DE/Munich); fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; ext Juanjo Hierro; SCHATTAUER, Karl; ext LUIS GARCIA GARCIA Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) All, Perhaps my interpretation of the new language is different from Susanne's. As I read it, Royalties may be asked for 1) ?not directly disclosed by the FI-WARE Generic Enabler Specifications OR 2) or which are not inherent to, OR 3) or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications? From my understanding this leaves 3 possibilities to ask for Royalties; not one long possibility, but 3 separate possibilities. Therefore, the language as currently written allows the Parties to request royalties for all implementations " not directly disclosed by the FI-WARE Generic Enabler Specifications". As written in full - "....Parties are not barred from requesting royalties for.... any such implementations of the FI-WARE Generic Enablers Specifications, which are not directly disclosed by the FI-WARE Generic Enabler Specifications..... " Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel:? 972-4-829-6069? Fax:? 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Weikl, Susanne (NSN - DE/Munich)" To: ext Juanjo Hierro , "SCHATTAUER, Karl" , ext LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu Date: 08/26/11 06:03 PM Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Sent by: fiware-legal-bounces at lists.fi-ware.eu Hello Juanjo, Luis and all, 1. ?normal implementation? is the short form of Luis? explanations ? If it is something ?inherent? to the specifications, that is to say that nobody would implement it in a different way.? and ??If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do.?; his explanation for ?directly disclosed by the FI-WARE Generic Enabler Specifications or which are not inherent to, or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications? 2. So what basically remains for requesting royalties is small and very open to interpretation. 3. If there is a third party (that is, someone who is not a FI-WARE partner) that has a patent on something that existed previous to our spec, it is for example possible to fight that party by putting it into the situation, where it has to chose, whether it rather uses the spec free of charge or use the patent against all and loses it rights to the spec. This is reciprocity - very effective means. 4. If we all agree that we will use terms with the spec ? why do we not simply add this by the suggested 6 word? I would like to remind that we have no clause in the agreement which regulates that there is no third party beneficiaries. Most of us are not experts on Belgium Law with respect to third party beneficiary clauses. I am not sure, whether it really can be excluded that a third party simply comes up and claims ?I don?t care about your term, I have already been granted the rights by force of the CA.?. And NSN does not want to take the risk. Yes, it is time to sign the agreement. But I have not heard anybody yet how has content wise an issue with this last change. Best regards, Susanne Weikl Senior Legal Counsel St.-Martin-Stra?e 76 41.4017 D-80240 Munich Tel: +49 89 5159 36940 Mob: +49 160 9062 7495 Fax: +49 89 5159 44 36940 susanne.weikl at nsn.com http://www.nokiasiemensnetworks.com/global/ Think before you print Nokia Siemens Networks GmbH & Co. KG Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRA 88537 WEEE-Reg.-Nr.: DE 52984304 Pers?nlich haftende Gesellschafterin / General Partner: Nokia Siemens Networks Management GmbH Gesch?ftsleitung / Board of Directors: Olaf Horsthemke, Dr. Hermann Rodler Vorsitzender des Aufsichtsrats / Chairman of supervisory board: Herbert Merz Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRB 163416 _________________________________________________________________________________ Important Note: This e-mail and any attachment are confidential and may contain trade secrets and may also be legally privileged or otherwise protected from disclosure. If you have received it in error, you are on notice of its status. Please notify us immediately by reply e-mail and then delete this e-mail and any attachment from your system. If you are not the intended recipient please understand that you must not copy this e-mail or any attachment or disclose the contents to any other person. Thank you for your cooperation. From: ext Juanjo Hierro [mailto:jhierro at tid.es] Sent: Friday, August 26, 2011 3:38 PM To: SCHATTAUER, Karl Cc: Weikl, Susanne (NSN - DE/Munich); fiware-legal at lists.fi-ware.eu Subject: Re: AW: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von Weikl, Susanne (NSN - DE/Munich) Gesendet: Freitag, 26. August 2011 09:29 An: ext Juanjo Hierro; fiware-legal at lists.fi-ware.eu Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hello Juanjo and all, good that we clarify this again: There is 3 levels: 1) The Specification as such, i.e. ?the piece of paper? ? not controversial at all ? can be circulated royalty free. 2) A Party?s implementation of such Specification - ? not controversial at all ? is up to the Party, whether it is royalty bearing or not. The problematic level is the following: do we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification? So far the agreement states ?yes?, provided that it is a ?normal implementation?. Can you explain why are you deriving this ? What do you mean by "normal implementation" ? I have search for the term "normal implementation" and is nowhere in the CA. Even "normal" is not used at all regarding IPRs ... Why do you say that "we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification" ? We say just the opposite in the CA: Parties are not barred from requesting royalties for, or protecting their rights with respect to IPRs (e.g. but not limited to patents) in any such implementations of the FI-WARE Generic Enablers Specifications, which are not directly disclosed by the FI-WARE Generic Enabler Specifications or which are not inherent to, or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications Of course, we will not charge for IPRs that are inherent to or cannot trivially derived as valid implementation of part of a FI-WARE GE specification (read my comment below, further on this matter). But you would be able to charge for IPRs on aspects that are linked to those aspects that may be differential in your product, therefore not inherent nor trivially derived from just reading the spec. This is e.g. going beyond what is normally requested in standardization, where the obligation to avail IPR is either on FRAND conditions or at least limited to ?essential IPR?, not ?normal IPR?. It also goes far beyond what is requested in normal EU projects, where Background only has to be made available under FRAND terms. In this context ?reciprocity? is meant as follows: the third parties has to make available its IPRs which would be used in such a ?normal implementation? of a Specification. It does not extent to any other product or IPR of such third party. What is avoided thereby is that a Party can use all the specification free of charge and block all the rest of the world from using the specifications, should it have a patent which it essentially needed for the implementation of the Specification. Again, don't know what you mean by "normal implementation". But, anyway, let's make one point clear. When a number of companies sit together and try to define something which can become an open standard (and that's what we aim to do in FI-WARE) what they do is that they generate public specifications and try to publicly state (typically in a legal note accompanying the specs) that any party feels should feel confident that it will be able to generate a competitive product, compliant to the specs. And that they will not be suddenly surprised because one day they discover that one of the companies who authored the specs kept (secretly) a patent on something that is "inherent" in the spec or could be trivially derived in the spec. That's regular business in open software standards. The existing clauses in the CA try to make sure that we are on the same page on this. If there is a third party (that is, someone who is not a FI-WARE partner) that has a patent on something that existed previous to our spec, I don't know how you are going to be able to prevent that they sue us when they discover it. It's simply impossible. We will have to battle to it or fix the specs (same thing a standard body would do). If it is something they generated as a result of implementing our spec and it happens to be something "inherent to the spec" or "trivially derived from the spec", I don't understand why they would be able to sue us. We just need to accompany our GE specs with some legal note making a statement like (well, in the right legal terms, I'm not a lawyer) "No party implementing these specifications will be able to charge royalties or claim patents on any element that is directly disclosed by this specification or which is inherent to, or can trivially derived as valid implementation of, part of this specification". That would be the kind of reciprocity you are looking for, I guess. But the right thing to do will be to add the proper legal note in whatever spec we produce. Not to introduce anything in the CA (which is not public). Changing the CA doesn't solve anything. Frankly speaking, what you ask for (the change in the CA) still doesn't make any sense to me. Legal notes we will have to enclose to produced GEs are another story. There, my comment above would apply. Time is over. It's time to sign the current GA. Best regards, -- Juanjo Therefore a clarification as in ?For the sake of clarity, Parties signing this CA as well as any other third party, subject to additional conditions or agreement, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? is not nonsense, but protects all of us and fully serves the purpose, we want to achieve: an open specification. Best Regards Susanne From: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of ext Juanjo Hierro Sent: Thursday, August 25, 2011 7:20 PM To: fiware-legal at lists.fi-ware.eu Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hi all, This discussion is sincerely ... "non-sense". I hope I will be able to explain myself. What is public and royalty-free are the FI-WARE GE Specifications. And as pointed out in previous mails from other partners (despite it was with the omission of the term "specification" which is quite relevant in this discussion) the public and royalty-free nature of FI-WARE GE Specifications is something that was there since proposal time and rather a cornerstone reason why our project passed the evaluation and was accepted by the EC. Given said this, an specification is here a PIECE OF PAPER, that is, documentation. What sort of reciprocity are we looking for here ? Are you asking that third parties make specifications of other products they may have public and royalty-free ? It simply has no-sense. It is like saying that Apple has to make public and royalty-free the specs of one of its products just because it has develop the Safari browser based on the public and royalty-free specs of HTML as published by the W3C (BTW, which product specification would you ask them to make public and royalty-free ? The iPhone specifications ?) Come on. NO-SENSE at all. As repeated many times. Specifications are different than implementations. We are not making our implementations of the FI-WARE GE Specifications public and royalty-free. Nor of course can claim that third parties should give us their implementations for free either. Unless I'm missing something rather important, this discussion is completely non-sense to me. Therefore, no changes in the CA will be incorporated in this respect. As already announced by Luis: As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Best regards, -- Juanjo On 23/08/11 15:40, Suzanne Erez wrote: Susanne, Kathrin, et al., Kathrin has some points in her argument, and so does Susanne and Karl. But are legal arguments really the question? Or is the question what did we agree to in November 2010 when this whole CA negotiation started? From the beginning, our understanding was that the Commission requires that the GES be royalty free. This was conveyed to us by Juanjo. Now there is a new request that goes like - we will make the GES royalty free, but only on the condition that the "public" will promise reciprocity. There is nothing wrong business wise in this approach, and I for one am always happy to get other companies patents royalty free. In fact, I would like to get RAND for the GES. But that was not our agreement with the Commission, and we are working according to the Commission's request. We agreed to this condition 10 months ago. I think it is now 10 months too late to start changing the terms. Being an engineer, I remember an old saying "there comes a time to shoot the engineers and ship the product." I think we can adopt that and say "there comes a time to shoot the attorneys and start the project". I think that time is now. good luck to us all, and happy working on the project! Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "SCHATTAUER, Karl" , LUIS GARCIA GARCIA , "fiware-legal at lists.fi-ware.eu" Cc: Asesor?a Jur?dica , JOSE JIMENEZ DELGADO , LUIS LOPEZ DE AYALA HIDALGO Date: 08/23/11 04:16 PM Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Karl, dear Susanne first, SAP cannot agree to any changes to CA now, because we have already send the CA for signature. The only way to change the CA for SAP now would be an amendment. Secondly, I disagree with your legal advisor. Reciprocity is not upon any third party discretion because the party or parties creating the Generic Enabler Specifications are free to decide upon Terms of Use they would like to attach to the Generic Enabler Specifications. It is not upon third parties to decide about the conditions for the usage of the Generic Enabler Specifications. Thirdly, what happens if a party does not agree upon reciprocity for specific Generic Enabler Specification? I assume it should be free to all Fi-Ware partners to decide most freely upon the terms and conditions upon which the Generic Enabler Specification should be published. I do not see a connection between royalties (= money to be paid) or a reciprocal license. Another point with regard to third party beneficiaries, the DOW states this: ?Task 2.3: Consolidation of Generic Enabler Specifications In order to fulfil the FI-WARE promise all Generic Enablers will be accompanied by Open Specifications that will facilitate usage and integration in any FI-WARE Instance as well as the development of compliant implementations of GEs by third parties. While GE Specifications themselves will be done inside WP3-WP10, overall coordination and consolidation of these specifications is the objective and responsibility of this Task. ? I assume, if the third party beneficiary does not claim the usage license without reciprocity from the CA, they can claim it from the DOW. I understand it in that way, that we have to make available the Specification under such conditions, that a third party can develop freely an implementation of it. And to be honest, the word Open might give the impression to have even broader rights than just no royalties. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von SCHATTAUER, Karl Gesendet: Dienstag, 23. August 2011 13:54 An: LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica; JOSE JIMENEZ DELGADO; LUIS LOPEZ DE AYALA HIDALGO Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear Luis, all, below please find some comments from our legal department. Best Regards, Karl Dear Luis, Per email dated August 17, Alcatel-Lucent proposed some modifications to section 4.1 of the CA. One of the main concerns we tried to address was to incorporate an obligation on any third party joining the CA or underlying agreements to grant the same rights on its patents on the same terms and conditions on which such third party receives rights from the Consortium Partners under the CA or other associated agreements. The final version sent to us does not address this concern. Instead it has been proposed by SAP AG to cover the reciprocity under adequate licenses attached to the GE Specifications. This approach bears the following risks: ? It would be at the option and discretion of a third party to agree to grant reciprocity ? Under some national laws, based on the current wording of section 4.1 a, any third party could be considered as a third party beneficiary to the CA and be eligible to request the grant of royalty free patent licenses to the GE Specs ( which would include the Parties Background, Sideground and Foreground). Consequently there is a risk that we may not have the right to request a royalty free grant back license from such third party. For these valid reasons, the obligation on third parties to grant reciprocity should be stated in the CA. We believe that this is a very balanced approach. Therefore we propose to reword the second sentence of the second paragraph of section 4.1 as follows (modification indicated in bold letters): ?For the sake of clarity, Parties signing this CA as well as any other third party, subject to reciprocity, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? We look forward to your response. All the best, Oezlem Schmitt OEZLEM SCHMITT IP CORPORATE COUNSEL ALCATEL-LUCENT INTELLECTUAL PROPERTY & STANDARDS P: +49 711 821 44562 F: +49 711 821 44587 Oezlem.Schmitt at alcatel-lucent.com Alcatel-Lucent Deutschland AG Lorenzstra?e 10 70435 Stuttgart Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von LUIS GARCIA GARCIA Gesendet: Montag, 22. August 2011 10:41 An: fiware-legal at lists.fi-ware.eu Cc: JOSE JIMENEZ DELGADO; Asesor?a Jur?dica; LUIS LOPEZ DE AYALA HIDALGO Betreff: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear all, Although clause 4.1 was agreed and closed during our calls and e-mails discussions, some partners pointed out that it was necessary to modify it in order to enable the partners to protect and/or request royalties regarding the IPRs included in the implementations of the FI-WARE GES. We proposed a wording that, from our point of view, regulate this situations and, in parallel, didn?t affect the essence of the project at this point ( accordingly with the DoW). In this FINAL VERSION of the CA, we?ve included the comments sent by NSN in this clause in the two first paragraphs, but not the new third paragraph as, from our perspective, goes beyond the modification requested and will give rise to another round of discussions and literally we have no more time to afford it. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects that cannot be subject to ?protection or royalties?: 1.- If it is something ?inherent? to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Regarding Technnicolor concerns about the payment clause (agreed during one of the Conference calls held during the negotiation process), we?ve maintained the clause wording under our reasoning in mails of 22nd July 27 th July sent to Technicolor. We have also included a last minute minor change in the publications clause . Our technical people strongly requested us to include a shorter term for the publications clause to enable the parties to duly fulfill with a ?normal? technical development of the project. It is to make shorter the term for the publications of the Public Deliverables (10 working days) and to enable the Board to decide an even shorter term in case of publications in the project website www.fi-ware.eu ( maximum 5 working days) They say that a 20 days period is not practical at all, at least for these publications, specially to attend the needs of Use Cases projects and the expected content of the mentioned web site. I?ve modified clause 4.4.1. including a new point c) and also (accordingly) clauses 3.3.1 and 3.3.2.5 (functions and decisions of the Board) Last, accordingly with Article 1.4 of the Grant Agreement, the Commission is expecting with the signed Grant Agreement that the consortium has established and signed a Consortium Agreement. We must take into account that the 45 days period to deliver the signed Form A to the Commission expire (except I?m wrong) next 16th Sept and some partners subject their signature to the conclusion of this agreement. Consequently, I have received definitive instructions to close the Consortium Agreement and start the signature process. Please find attached the final Consortium Agreement for FI-WARE for signature (pdf-document). In addition, I prepared the signature pages per FI-WARE partner (word-document) based on the information received. I would like to receive the pending information to complete the signature with the name(s) and title(s) of the organization that still have not sent their details. As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Please print 26 signature pages of your signature page and send them signed to the address mentioned bellow by courier mail latest by 9th September. Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal To the att of Mr. Javier de Pedro DISTRITO C- Edificio Oeste 1, 4? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) We will confirm the reception of your signature and will send back one original together with the copies of the other signatures. In addition, please send a scanned version of your signature page latest by 9th September: The parties that have already sent the signed Collaboration Agreement to AALTO (or to the Coordinators of others FUTURE INTERNET projects) please send us a scanned copy of your signature page to the following e-mail address jdps at tid.es; the rest of participants that have still not signed the Collaboration Agreement, please send us also three copies of the signature page ( Annex 1) to the address mentioned above. Find enclosed the final version of the Collaboration Agreement. If you have any further doubts regarding the signature process, please let us know. Thanks and regards. Luis Garc?a Garc?a Asesoria Jur?dica // Legal DepartmentTfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal From susanne.weikl at nsn.com Wed Aug 31 14:27:24 2011 From: susanne.weikl at nsn.com (Weikl, Susanne (NSN - DE/Munich)) Date: Wed, 31 Aug 2011 14:27:24 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) In-Reply-To: <7ED7B27AF3542948BAB7BCD179A7677C10CD66892F@DEWDFECCR03.wdf.sap.corp> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A38A@EXCLU2K7.hi.inet> <175D251D5B968549BDBBAA2BAC721C97016ABEFF@SLFSNX.rcs.alcatel-research.de> <7ED7B27AF3542948BAB7BCD179A7677C10CD40CEB5@DEWDFECCR03.wdf.sap.corp> <4E568423.8090409@tid.es> <2B9915A85B6D8D47A5051C368C56E7D4020B044B@DEMUEXC005.nsn-intra.net> <175D251D5B968549BDBBAA2BAC721C97016AC00E@SLFSNX.rcs.alcatel-research.de> <4E57A1CE.6010200@tid.es> <2B9915A85B6D8D47A5051C368C56E7D4020B07F8@DEMUEXC005.nsn-intra.net> <2B9915A85B6D8D47A5051C368C56E7D4020EB056@DEMUEXC005.nsn-intra.net> <2B9915A85B6D8D47A5051C368C56E7D4020EB42E@DEMUEXC005.nsn-intra.net> <7ED7B27AF3542948BAB7BCD179A7677C10CD66892F@DEWDFECCR03.wdf.sap.corp> Message-ID: <2B9915A85B6D8D47A5051C368C56E7D4020EB4BB@DEMUEXC005.nsn-intra.net> Dear all, NSN fundamentally disagrees: 1) the question of reciprocity has not been discussed once in the recent weeks. This is in particular due to the fact that the express implementation rights have only been introduced in the second last version of the consortium agreement. 2) With all due respect, Juanjo is not lawyer / not qualified to comment on questions of Belgian law and third party beneficiary clauses thereunder. 3) there seems to be a misunderstanding on SAP's side: the proposed amendment does not regulate whether a Party may apply additional conditions upon its implementations which it provides royalty free. The addition is for the Specification and the usage right of this Specification by a third party. 4) If this is a concern of SAP that the clause might be misunderstood in the sense that a party has to use condition, if can easily be fixed by stating: ?For the sake of clarity, Parties signing this CA as well as any other third party, subject to additional conditions or agreement ____where requested by a Party____, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? We would accept this of course. Best Regards Susanne -----Original Message----- From: ext Schweppe, Kathrin [mailto:kathrin.schweppe at sap.com] Sent: Wednesday, August 31, 2011 1:58 PM To: Weikl, Susanne (NSN - DE/Munich); ext Suzanne Erez; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; ext Juanjo Hierro; SCHATTAUER, Karl; ext LUIS GARCIA GARCIA Subject: AW: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear all, From my understanding, and considering that we have discussed this point for weeks now, I agree with Suzanne. Luis and Juanjo assume that the wording provided in the CA is already covering your points. Especially Juanjo stated his understanding last week in several emails, that he does not see the necessity for the changes because they are already covered. From my understanding, it is now too late for the proposed changes. Further, from SAP's point of view, any changes to the CA need now an Amendment because we have already started the signature process. I must admit, that I have my doubts with respect to the latest proposal from Susanne, because it forces every party to apply additional conditions upon the implementations they provide royalty free. The original wording is broader. The word 'may' indicates that it is upon the discretion of the party owning the implementation to choose the conditions under which the implementation is being offered. This is not even a wording that could give a third party beneficiary a right to receive implementation upon royalty free conditions. What is the problem with this freedom? Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. -----Urspr?ngliche Nachricht----- Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von Weikl, Susanne (NSN - DE/Munich) Gesendet: Mittwoch, 31. August 2011 13:32 An: ext Suzanne Erez; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; ext Juanjo Hierro; SCHATTAUER, Karl; ext LUIS GARCIA GARCIA Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) We really do not want to delay. Luis communicated on august 22nd that "if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible." We have promptly and continuously since 2 weeks asked for this change (and not a single one as so far commented that they disagree in substance). Also the exclusion lists have not been finalized yet. So we cannot be too late... -----Original Message----- From: ext Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Wednesday, August 31, 2011 1:03 PM To: Weikl, Susanne (NSN - DE/Munich) Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; ext Juanjo Hierro; SCHATTAUER, Karl; ext LUIS GARCIA GARCIA Subject: RE: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Susanne, oh my. At this point I don't think the question is "would IBM agree.... ?", but "is it too late to make changes?". From what I understand, many parties have already signed the version as is. This would unfortunately result in have Parties sign on two different versions. Luis? Juanjo? Is there still time to make changes? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Weikl, Susanne (NSN - DE/Munich)" To: Suzanne Erez/Haifa/IBM at IBMIL, , , "ext Juanjo Hierro" , "SCHATTAUER, Karl" , "ext LUIS GARCIA GARCIA" Date: 08/30/11 05:46 PM Subject: RE: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Suzanne, would IBM have an issue with the last suggested change? ?For the sake of clarity, Parties signing this CA as well as any other third party, ____subject to additional conditions or agreement____, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? Best Regards Susanne -----Original Message----- From: ext Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Monday, August 29, 2011 9:09 AM To: Weikl, Susanne (NSN - DE/Munich); fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; ext Juanjo Hierro; SCHATTAUER, Karl; ext LUIS GARCIA GARCIA Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) All, Perhaps my interpretation of the new language is different from Susanne's. As I read it, Royalties may be asked for 1) ?not directly disclosed by the FI-WARE Generic Enabler Specifications OR 2) or which are not inherent to, OR 3) or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications? From my understanding this leaves 3 possibilities to ask for Royalties; not one long possibility, but 3 separate possibilities. Therefore, the language as currently written allows the Parties to request royalties for all implementations " not directly disclosed by the FI-WARE Generic Enabler Specifications". As written in full - "....Parties are not barred from requesting royalties for.... any such implementations of the FI-WARE Generic Enablers Specifications, which are not directly disclosed by the FI-WARE Generic Enabler Specifications..... " Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Weikl, Susanne (NSN - DE/Munich)" To: ext Juanjo Hierro , "SCHATTAUER, Karl" , ext LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu Date: 08/26/11 06:03 PM Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Sent by: fiware-legal-bounces at lists.fi-ware.eu Hello Juanjo, Luis and all, 1. ?normal implementation? is the short form of Luis? explanations ? If it is something ?inherent? to the specifications, that is to say that nobody would implement it in a different way.? and ?If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do.?; his explanation for ?directly disclosed by the FI-WARE Generic Enabler Specifications or which are not inherent to, or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications? 2. So what basically remains for requesting royalties is small and very open to interpretation. 3. If there is a third party (that is, someone who is not a FI-WARE partner) that has a patent on something that existed previous to our spec, it is for example possible to fight that party by putting it into the situation, where it has to chose, whether it rather uses the spec free of charge or use the patent against all and loses it rights to the spec. This is reciprocity - very effective means. 4. If we all agree that we will use terms with the spec ? why do we not simply add this by the suggested 6 word? I would like to remind that we have no clause in the agreement which regulates that there is no third party beneficiaries. Most of us are not experts on Belgium Law with respect to third party beneficiary clauses. I am not sure, whether it really can be excluded that a third party simply comes up and claims ?I don?t care about your term, I have already been granted the rights by force of the CA.?. And NSN does not want to take the risk. Yes, it is time to sign the agreement. But I have not heard anybody yet how has content wise an issue with this last change. Best regards, Susanne Weikl Senior Legal Counsel St.-Martin-Stra?e 76 41.4017 D-80240 Munich Tel: +49 89 5159 36940 Mob: +49 160 9062 7495 Fax: +49 89 5159 44 36940 susanne.weikl at nsn.com http://www.nokiasiemensnetworks.com/global/ Think before you print Nokia Siemens Networks GmbH & Co. KG Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRA 88537 WEEE-Reg.-Nr.: DE 52984304 Pers?nlich haftende Gesellschafterin / General Partner: Nokia Siemens Networks Management GmbH Gesch?ftsleitung / Board of Directors: Olaf Horsthemke, Dr. Hermann Rodler Vorsitzender des Aufsichtsrats / Chairman of supervisory board: Herbert Merz Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRB 163416 _________________________________________________________________________________ Important Note: This e-mail and any attachment are confidential and may contain trade secrets and may also be legally privileged or otherwise protected from disclosure. If you have received it in error, you are on notice of its status. Please notify us immediately by reply e-mail and then delete this e-mail and any attachment from your system. If you are not the intended recipient please understand that you must not copy this e-mail or any attachment or disclose the contents to any other person. Thank you for your cooperation. From: ext Juanjo Hierro [mailto:jhierro at tid.es] Sent: Friday, August 26, 2011 3:38 PM To: SCHATTAUER, Karl Cc: Weikl, Susanne (NSN - DE/Munich); fiware-legal at lists.fi-ware.eu Subject: Re: AW: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von Weikl, Susanne (NSN - DE/Munich) Gesendet: Freitag, 26. August 2011 09:29 An: ext Juanjo Hierro; fiware-legal at lists.fi-ware.eu Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hello Juanjo and all, good that we clarify this again: There is 3 levels: 1) The Specification as such, i.e. ?the piece of paper? ? not controversial at all ? can be circulated royalty free. 2) A Party?s implementation of such Specification - ? not controversial at all ? is up to the Party, whether it is royalty bearing or not. The problematic level is the following: do we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification? So far the agreement states ?yes?, provided that it is a ?normal implementation?. Can you explain why are you deriving this ? What do you mean by "normal implementation" ? I have search for the term "normal implementation" and is nowhere in the CA. Even "normal" is not used at all regarding IPRs ... Why do you say that "we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification" ? We say just the opposite in the CA: Parties are not barred from requesting royalties for, or protecting their rights with respect to IPRs (e.g. but not limited to patents) in any such implementations of the FI-WARE Generic Enablers Specifications, which are not directly disclosed by the FI-WARE Generic Enabler Specifications or which are not inherent to, or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications Of course, we will not charge for IPRs that are inherent to or cannot trivially derived as valid implementation of part of a FI-WARE GE specification (read my comment below, further on this matter). But you would be able to charge for IPRs on aspects that are linked to those aspects that may be differential in your product, therefore not inherent nor trivially derived from just reading the spec. This is e.g. going beyond what is normally requested in standardization, where the obligation to avail IPR is either on FRAND conditions or at least limited to ?essential IPR?, not ?normal IPR?. It also goes far beyond what is requested in normal EU projects, where Background only has to be made available under FRAND terms. In this context ?reciprocity? is meant as follows: the third parties has to make available its IPRs which would be used in such a ?normal implementation? of a Specification. It does not extent to any other product or IPR of such third party. What is avoided thereby is that a Party can use all the specification free of charge and block all the rest of the world from using the specifications, should it have a patent which it essentially needed for the implementation of the Specification. Again, don't know what you mean by "normal implementation". But, anyway, let's make one point clear. When a number of companies sit together and try to define something which can become an open standard (and that's what we aim to do in FI-WARE) what they do is that they generate public specifications and try to publicly state (typically in a legal note accompanying the specs) that any party feels should feel confident that it will be able to generate a competitive product, compliant to the specs. And that they will not be suddenly surprised because one day they discover that one of the companies who authored the specs kept (secretly) a patent on something that is "inherent" in the spec or could be trivially derived in the spec. That's regular business in open software standards. The existing clauses in the CA try to make sure that we are on the same page on this. If there is a third party (that is, someone who is not a FI-WARE partner) that has a patent on something that existed previous to our spec, I don't know how you are going to be able to prevent that they sue us when they discover it. It's simply impossible. We will have to battle to it or fix the specs (same thing a standard body would do). If it is something they generated as a result of implementing our spec and it happens to be something "inherent to the spec" or "trivially derived from the spec", I don't understand why they would be able to sue us. We just need to accompany our GE specs with some legal note making a statement like (well, in the right legal terms, I'm not a lawyer) "No party implementing these specifications will be able to charge royalties or claim patents on any element that is directly disclosed by this specification or which is inherent to, or can trivially derived as valid implementation of, part of this specification". That would be the kind of reciprocity you are looking for, I guess. But the right thing to do will be to add the proper legal note in whatever spec we produce. Not to introduce anything in the CA (which is not public). Changing the CA doesn't solve anything. Frankly speaking, what you ask for (the change in the CA) still doesn't make any sense to me. Legal notes we will have to enclose to produced GEs are another story. There, my comment above would apply. Time is over. It's time to sign the current GA. Best regards, -- Juanjo Therefore a clarification as in ?For the sake of clarity, Parties signing this CA as well as any other third party, subject to additional conditions or agreement, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? is not nonsense, but protects all of us and fully serves the purpose, we want to achieve: an open specification. Best Regards Susanne From: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of ext Juanjo Hierro Sent: Thursday, August 25, 2011 7:20 PM To: fiware-legal at lists.fi-ware.eu Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hi all, This discussion is sincerely ... "non-sense". I hope I will be able to explain myself. What is public and royalty-free are the FI-WARE GE Specifications. And as pointed out in previous mails from other partners (despite it was with the omission of the term "specification" which is quite relevant in this discussion) the public and royalty-free nature of FI-WARE GE Specifications is something that was there since proposal time and rather a cornerstone reason why our project passed the evaluation and was accepted by the EC. Given said this, an specification is here a PIECE OF PAPER, that is, documentation. What sort of reciprocity are we looking for here ? Are you asking that third parties make specifications of other products they may have public and royalty-free ? It simply has no-sense. It is like saying that Apple has to make public and royalty-free the specs of one of its products just because it has develop the Safari browser based on the public and royalty-free specs of HTML as published by the W3C (BTW, which product specification would you ask them to make public and royalty-free ? The iPhone specifications ?) Come on. NO-SENSE at all. As repeated many times. Specifications are different than implementations. We are not making our implementations of the FI-WARE GE Specifications public and royalty-free. Nor of course can claim that third parties should give us their implementations for free either. Unless I'm missing something rather important, this discussion is completely non-sense to me. Therefore, no changes in the CA will be incorporated in this respect. As already announced by Luis: As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Best regards, -- Juanjo On 23/08/11 15:40, Suzanne Erez wrote: Susanne, Kathrin, et al., Kathrin has some points in her argument, and so does Susanne and Karl. But are legal arguments really the question? Or is the question what did we agree to in November 2010 when this whole CA negotiation started? From the beginning, our understanding was that the Commission requires that the GES be royalty free. This was conveyed to us by Juanjo. Now there is a new request that goes like - we will make the GES royalty free, but only on the condition that the "public" will promise reciprocity. There is nothing wrong business wise in this approach, and I for one am always happy to get other companies patents royalty free. In fact, I would like to get RAND for the GES. But that was not our agreement with the Commission, and we are working according to the Commission's request. We agreed to this condition 10 months ago. I think it is now 10 months too late to start changing the terms. Being an engineer, I remember an old saying "there comes a time to shoot the engineers and ship the product." I think we can adopt that and say "there comes a time to shoot the attorneys and start the project". I think that time is now. good luck to us all, and happy working on the project! Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "SCHATTAUER, Karl" , LUIS GARCIA GARCIA , "fiware-legal at lists.fi-ware.eu" Cc: Asesor?a Jur?dica , JOSE JIMENEZ DELGADO , LUIS LOPEZ DE AYALA HIDALGO Date: 08/23/11 04:16 PM Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Karl, dear Susanne first, SAP cannot agree to any changes to CA now, because we have already send the CA for signature. The only way to change the CA for SAP now would be an amendment. Secondly, I disagree with your legal advisor. Reciprocity is not upon any third party discretion because the party or parties creating the Generic Enabler Specifications are free to decide upon Terms of Use they would like to attach to the Generic Enabler Specifications. It is not upon third parties to decide about the conditions for the usage of the Generic Enabler Specifications. Thirdly, what happens if a party does not agree upon reciprocity for specific Generic Enabler Specification? I assume it should be free to all Fi-Ware partners to decide most freely upon the terms and conditions upon which the Generic Enabler Specification should be published. I do not see a connection between royalties (= money to be paid) or a reciprocal license. Another point with regard to third party beneficiaries, the DOW states this: ?Task 2.3: Consolidation of Generic Enabler Specifications In order to fulfil the FI-WARE promise all Generic Enablers will be accompanied by Open Specifications that will facilitate usage and integration in any FI-WARE Instance as well as the development of compliant implementations of GEs by third parties. While GE Specifications themselves will be done inside WP3-WP10, overall coordination and consolidation of these specifications is the objective and responsibility of this Task. ? I assume, if the third party beneficiary does not claim the usage license without reciprocity from the CA, they can claim it from the DOW. I understand it in that way, that we have to make available the Specification under such conditions, that a third party can develop freely an implementation of it. And to be honest, the word Open might give the impression to have even broader rights than just no royalties. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von SCHATTAUER, Karl Gesendet: Dienstag, 23. August 2011 13:54 An: LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica; JOSE JIMENEZ DELGADO; LUIS LOPEZ DE AYALA HIDALGO Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear Luis, all, below please find some comments from our legal department. Best Regards, Karl Dear Luis, Per email dated August 17, Alcatel-Lucent proposed some modifications to section 4.1 of the CA. One of the main concerns we tried to address was to incorporate an obligation on any third party joining the CA or underlying agreements to grant the same rights on its patents on the same terms and conditions on which such third party receives rights from the Consortium Partners under the CA or other associated agreements. The final version sent to us does not address this concern. Instead it has been proposed by SAP AG to cover the reciprocity under adequate licenses attached to the GE Specifications. This approach bears the following risks: ? It would be at the option and discretion of a third party to agree to grant reciprocity ? Under some national laws, based on the current wording of section 4.1 a, any third party could be considered as a third party beneficiary to the CA and be eligible to request the grant of royalty free patent licenses to the GE Specs ( which would include the Parties Background, Sideground and Foreground). Consequently there is a risk that we may not have the right to request a royalty free grant back license from such third party. For these valid reasons, the obligation on third parties to grant reciprocity should be stated in the CA. We believe that this is a very balanced approach. Therefore we propose to reword the second sentence of the second paragraph of section 4.1 as follows (modification indicated in bold letters): ?For the sake of clarity, Parties signing this CA as well as any other third party, subject to reciprocity, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.? We look forward to your response. All the best, Oezlem Schmitt OEZLEM SCHMITT IP CORPORATE COUNSEL ALCATEL-LUCENT INTELLECTUAL PROPERTY & STANDARDS P: +49 711 821 44562 F: +49 711 821 44587 Oezlem.Schmitt at alcatel-lucent.com Alcatel-Lucent Deutschland AG Lorenzstra?e 10 70435 Stuttgart Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von LUIS GARCIA GARCIA Gesendet: Montag, 22. August 2011 10:41 An: fiware-legal at lists.fi-ware.eu Cc: JOSE JIMENEZ DELGADO; Asesor?a Jur?dica; LUIS LOPEZ DE AYALA HIDALGO Betreff: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear all, Although clause 4.1 was agreed and closed during our calls and e-mails discussions, some partners pointed out that it was necessary to modify it in order to enable the partners to protect and/or request royalties regarding the IPRs included in the implementations of the FI-WARE GES. We proposed a wording that, from our point of view, regulate this situations and, in parallel, didn?t affect the essence of the project at this point ( accordingly with the DoW). In this FINAL VERSION of the CA, we?ve included the comments sent by NSN in this clause in the two first paragraphs, but not the new third paragraph as, from our perspective, goes beyond the modification requested and will give rise to another round of discussions and literally we have no more time to afford it. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects that cannot be subject to ?protection or royalties?: 1.- If it is something ?inherent? to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Regarding Technnicolor concerns about the payment clause (agreed during one of the Conference calls held during the negotiation process), we?ve maintained the clause wording under our reasoning in mails of 22nd July 27 th July sent to Technicolor. We have also included a last minute minor change in the publications clause . Our technical people strongly requested us to include a shorter term for the publications clause to enable the parties to duly fulfill with a ?normal? technical development of the project. It is to make shorter the term for the publications of the Public Deliverables (10 working days) and to enable the Board to decide an even shorter term in case of publications in the project website www.fi-ware.eu ( maximum 5 working days) They say that a 20 days period is not practical at all, at least for these publications, specially to attend the needs of Use Cases projects and the expected content of the mentioned web site. I?ve modified clause 4.4.1. including a new point c) and also (accordingly) clauses 3.3.1 and 3.3.2.5 (functions and decisions of the Board) Last, accordingly with Article 1.4 of the Grant Agreement, the Commission is expecting with the signed Grant Agreement that the consortium has established and signed a Consortium Agreement. We must take into account that the 45 days period to deliver the signed Form A to the Commission expire (except I?m wrong) next 16th Sept and some partners subject their signature to the conclusion of this agreement. Consequently, I have received definitive instructions to close the Consortium Agreement and start the signature process. Please find attached the final Consortium Agreement for FI-WARE for signature (pdf-document). In addition, I prepared the signature pages per FI-WARE partner (word-document) based on the information received. I would like to receive the pending information to complete the signature with the name(s) and title(s) of the organization that still have not sent their details. As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Please print 26 signature pages of your signature page and send them signed to the address mentioned bellow by courier mail latest by 9th September. Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal To the att of Mr. Javier de Pedro DISTRITO C- Edificio Oeste 1, 4? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) We will confirm the reception of your signature and will send back one original together with the copies of the other signatures. In addition, please send a scanned version of your signature page latest by 9th September: The parties that have already sent the signed Collaboration Agreement to AALTO (or to the Coordinators of others FUTURE INTERNET projects) please send us a scanned copy of your signature page to the following e-mail address jdps at tid.es; the rest of participants that have still not signed the Collaboration Agreement, please send us also three copies of the signature page ( Annex 1) to the address mentioned above. Find enclosed the final version of the Collaboration Agreement. If you have any further doubts regarding the signature process, please let us know. Thanks and regards. Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal From fabian.perpeet at zv.fraunhofer.de Wed Aug 31 14:56:24 2011 From: fabian.perpeet at zv.fraunhofer.de (fabian.perpeet at zv.fraunhofer.de) Date: Wed, 31 Aug 2011 14:56:24 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) In-Reply-To: References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A38A@EXCLU2K7.hi.inet> <175D251D5B968549BDBBAA2BAC721C97016ABEFF@SLFSNX.rcs.alcatel-research.de> <7ED7B27AF3542948BAB7BCD179A7677C10CD40CEB5@DEWDFECCR03.wdf.sap.corp> <4E568423.8090409@tid.es> <2B9915A85B6D8D47A5051C368C56E7D4020B044B@DEMUEXC005.nsn-intra.net> <175D251D5B968549BDBBAA2BAC721C97016AC00E@SLFSNX.rcs.alcatel-research.de> <4E57A1CE.6010200@tid.es> <2B9915A85B6D8D47A5051C368C56E7D4020B07F8@DEMUEXC005.nsn-intra.net> <2B9915A85B6D8D47A5051C368C56E7D4020EB056@DEMUEXC005.nsn-intra.net> Message-ID: Just for your information: As the discussion ist still under way, Fraunhofer does not regard the CA as agreed and will accordingly not start the signature process until mutual agreement is reached. Regards Fabian Perpeet -----Urspr?ngliche Nachricht----- Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von Suzanne Erez Gesendet: Mittwoch, 31. August 2011 13:03 An: Weikl, Susanne (NSN - DE/Munich) Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Susanne, oh my. At this point I don't think the question is "would IBM agree.... ?", but "is it too late to make changes?". From what I understand, many parties have already signed the version as is. This would unfortunately result in have Parties sign on two different versions. Luis? Juanjo? Is there still time to make changes? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Weikl, Susanne (NSN - DE/Munich)" To: Suzanne Erez/Haifa/IBM at IBMIL, , , "ext Juanjo Hierro" , "SCHATTAUER, Karl" , "ext LUIS GARCIA GARCIA" Date: 08/30/11 05:46 PM Subject: RE: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Suzanne, would IBM have an issue with the last suggested change? "For the sake of clarity, Parties signing this CA as well as any other third party, ____subject to additional conditions or agreement____, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis." Best Regards Susanne -----Original Message----- From: ext Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Monday, August 29, 2011 9:09 AM To: Weikl, Susanne (NSN - DE/Munich); fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; ext Juanjo Hierro; SCHATTAUER, Karl; ext LUIS GARCIA GARCIA Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) All, Perhaps my interpretation of the new language is different from Susanne's. As I read it, Royalties may be asked for 1) "not directly disclosed by the FI-WARE Generic Enabler Specifications OR 2) or which are not inherent to, OR 3) or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications" >From my understanding this leaves 3 possibilities to ask for Royalties; not one long possibility, but 3 separate possibilities. Therefore, the language as currently written allows the Parties to request royalties for all implementations " not directly disclosed by the FI-WARE Generic Enabler Specifications". As written in full - "....Parties are not barred from requesting royalties for.... any such implementations of the FI-WARE Generic Enablers Specifications, which are not directly disclosed by the FI-WARE Generic Enabler Specifications..... " Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Weikl, Susanne (NSN - DE/Munich)" To: ext Juanjo Hierro , "SCHATTAUER, Karl" , ext LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu Date: 08/26/11 06:03 PM Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Sent by: fiware-legal-bounces at lists.fi-ware.eu Hello Juanjo, Luis and all, 1. "normal implementation" is the short form of Luis' explanations " If it is something "inherent" to the specifications, that is to say that nobody would implement it in a different way." and "If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do."; his explanation for "directly disclosed by the FI-WARE Generic Enabler Specifications or which are not inherent to, or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications" 2. So what basically remains for requesting royalties is small and very open to interpretation. 3. If there is a third party (that is, someone who is not a FI-WARE partner) that has a patent on something that existed previous to our spec, it is for example possible to fight that party by putting it into the situation, where it has to chose, whether it rather uses the spec free of charge or use the patent against all and loses it rights to the spec. This is reciprocity - very effective means. 4. If we all agree that we will use terms with the spec - why do we not simply add this by the suggested 6 word? I would like to remind that we have no clause in the agreement which regulates that there is no third party beneficiaries. Most of us are not experts on Belgium Law with respect to third party beneficiary clauses. I am not sure, whether it really can be excluded that a third party simply comes up and claims "I don't care about your term, I have already been granted the rights by force of the CA.". And NSN does not want to take the risk. Yes, it is time to sign the agreement. But I have not heard anybody yet how has content wise an issue with this last change. Best regards, Susanne Weikl Senior Legal Counsel St.-Martin-Stra?e 76 41.4017 D-80240 Munich Tel: +49 89 5159 36940 Mob: +49 160 9062 7495 Fax: +49 89 5159 44 36940 susanne.weikl at nsn.com http://www.nokiasiemensnetworks.com/global/ Think before you print Nokia Siemens Networks GmbH & Co. KG Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRA 88537 WEEE-Reg.-Nr.: DE 52984304 Pers?nlich haftende Gesellschafterin / General Partner: Nokia Siemens Networks Management GmbH Gesch?ftsleitung / Board of Directors: Olaf Horsthemke, Dr. Hermann Rodler Vorsitzender des Aufsichtsrats / Chairman of supervisory board: Herbert Merz Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRB 163416 _________________________________________________________________________________ Important Note: This e-mail and any attachment are confidential and may contain trade secrets and may also be legally privileged or otherwise protected from disclosure. If you have received it in error, you are on notice of its status. Please notify us immediately by reply e-mail and then delete this e-mail and any attachment from your system. If you are not the intended recipient please understand that you must not copy this e-mail or any attachment or disclose the contents to any other person. Thank you for your cooperation. From: ext Juanjo Hierro [mailto:jhierro at tid.es] Sent: Friday, August 26, 2011 3:38 PM To: SCHATTAUER, Karl Cc: Weikl, Susanne (NSN - DE/Munich); fiware-legal at lists.fi-ware.eu Subject: Re: AW: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von Weikl, Susanne (NSN - DE/Munich) Gesendet: Freitag, 26. August 2011 09:29 An: ext Juanjo Hierro; fiware-legal at lists.fi-ware.eu Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hello Juanjo and all, good that we clarify this again: There is 3 levels: 1) The Specification as such, i.e. "the piece of paper" - not controversial at all - can be circulated royalty free. 2) A Party's implementation of such Specification - - not controversial at all - is up to the Party, whether it is royalty bearing or not. The problematic level is the following: do we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification? So far the agreement states "yes", provided that it is a "normal implementation". Can you explain why are you deriving this ? What do you mean by "normal implementation" ? I have search for the term "normal implementation" and is nowhere in the CA. Even "normal" is not used at all regarding IPRs ... Why do you say that "we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification" ? We say just the opposite in the CA: Parties are not barred from requesting royalties for, or protecting their rights with respect to IPRs (e.g. but not limited to patents) in any such implementations of the FI-WARE Generic Enablers Specifications, which are not directly disclosed by the FI-WARE Generic Enabler Specifications or which are not inherent to, or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications Of course, we will not charge for IPRs that are inherent to or cannot trivially derived as valid implementation of part of a FI-WARE GE specification (read my comment below, further on this matter). But you would be able to charge for IPRs on aspects that are linked to those aspects that may be differential in your product, therefore not inherent nor trivially derived from just reading the spec. This is e.g. going beyond what is normally requested in standardization, where the obligation to avail IPR is either on FRAND conditions or at least limited to "essential IPR", not "normal IPR". It also goes far beyond what is requested in normal EU projects, where Background only has to be made available under FRAND terms. In this context "reciprocity" is meant as follows: the third parties has to make available its IPRs which would be used in such a "normal implementation" of a Specification. It does not extent to any other product or IPR of such third party. What is avoided thereby is that a Party can use all the specification free of charge and block all the rest of the world from using the specifications, should it have a patent which it essentially needed for the implementation of the Specification. Again, don't know what you mean by "normal implementation". But, anyway, let's make one point clear. When a number of companies sit together and try to define something which can become an open standard (and that's what we aim to do in FI-WARE) what they do is that they generate public specifications and try to publicly state (typically in a legal note accompanying the specs) that any party feels should feel confident that it will be able to generate a competitive product, compliant to the specs. And that they will not be suddenly surprised because one day they discover that one of the companies who authored the specs kept (secretly) a patent on something that is "inherent" in the spec or could be trivially derived in the spec. That's regular business in open software standards. The existing clauses in the CA try to make sure that we are on the same page on this. If there is a third party (that is, someone who is not a FI-WARE partner) that has a patent on something that existed previous to our spec, I don't know how you are going to be able to prevent that they sue us when they discover it. It's simply impossible. We will have to battle to it or fix the specs (same thing a standard body would do). If it is something they generated as a result of implementing our spec and it happens to be something "inherent to the spec" or "trivially derived from the spec", I don't understand why they would be able to sue us. We just need to accompany our GE specs with some legal note making a statement like (well, in the right legal terms, I'm not a lawyer) "No party implementing these specifications will be able to charge royalties or claim patents on any element that is directly disclosed by this specification or which is inherent to, or can trivially derived as valid implementation of, part of this specification". That would be the kind of reciprocity you are looking for, I guess. But the right thing to do will be to add the proper legal note in whatever spec we produce. Not to introduce anything in the CA (which is not public). Changing the CA doesn't solve anything. Frankly speaking, what you ask for (the change in the CA) still doesn't make any sense to me. Legal notes we will have to enclose to produced GEs are another story. There, my comment above would apply. Time is over. It's time to sign the current GA. Best regards, -- Juanjo Therefore a clarification as in "For the sake of clarity, Parties signing this CA as well as any other third party, subject to additional conditions or agreement, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis." is not nonsense, but protects all of us and fully serves the purpose, we want to achieve: an open specification. Best Regards Susanne From: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of ext Juanjo Hierro Sent: Thursday, August 25, 2011 7:20 PM To: fiware-legal at lists.fi-ware.eu Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hi all, This discussion is sincerely ... "non-sense". I hope I will be able to explain myself. What is public and royalty-free are the FI-WARE GE Specifications. And as pointed out in previous mails from other partners (despite it was with the omission of the term "specification" which is quite relevant in this discussion) the public and royalty-free nature of FI-WARE GE Specifications is something that was there since proposal time and rather a cornerstone reason why our project passed the evaluation and was accepted by the EC. Given said this, an specification is here a PIECE OF PAPER, that is, documentation. What sort of reciprocity are we looking for here ? Are you asking that third parties make specifications of other products they may have public and royalty-free ? It simply has no-sense. It is like saying that Apple has to make public and royalty-free the specs of one of its products just because it has develop the Safari browser based on the public and royalty-free specs of HTML as published by the W3C (BTW, which product specification would you ask them to make public and royalty-free ? The iPhone specifications ?) Come on. NO-SENSE at all. As repeated many times. Specifications are different than implementations. We are not making our implementations of the FI-WARE GE Specifications public and royalty-free. Nor of course can claim that third parties should give us their implementations for free either. Unless I'm missing something rather important, this discussion is completely non-sense to me. Therefore, no changes in the CA will be incorporated in this respect. As already announced by Luis: As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Best regards, -- Juanjo On 23/08/11 15:40, Suzanne Erez wrote: Susanne, Kathrin, et al., Kathrin has some points in her argument, and so does Susanne and Karl. But are legal arguments really the question? Or is the question what did we agree to in November 2010 when this whole CA negotiation started? >From the beginning, our understanding was that the Commission requires that the GES be royalty free. This was conveyed to us by Juanjo. Now there is a new request that goes like - we will make the GES royalty free, but only on the condition that the "public" will promise reciprocity. There is nothing wrong business wise in this approach, and I for one am always happy to get other companies patents royalty free. In fact, I would like to get RAND for the GES. But that was not our agreement with the Commission, and we are working according to the Commission's request. We agreed to this condition 10 months ago. I think it is now 10 months too late to start changing the terms. Being an engineer, I remember an old saying "there comes a time to shoot the engineers and ship the product." I think we can adopt that and say "there comes a time to shoot the attorneys and start the project". I think that time is now. good luck to us all, and happy working on the project! Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "SCHATTAUER, Karl" , LUIS GARCIA GARCIA , "fiware-legal at lists.fi-ware.eu" Cc: Asesor?a Jur?dica , JOSE JIMENEZ DELGADO , LUIS LOPEZ DE AYALA HIDALGO Date: 08/23/11 04:16 PM Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Karl, dear Susanne first, SAP cannot agree to any changes to CA now, because we have already send the CA for signature. The only way to change the CA for SAP now would be an amendment. Secondly, I disagree with your legal advisor. Reciprocity is not upon any third party discretion because the party or parties creating the Generic Enabler Specifications are free to decide upon Terms of Use they would like to attach to the Generic Enabler Specifications. It is not upon third parties to decide about the conditions for the usage of the Generic Enabler Specifications. Thirdly, what happens if a party does not agree upon reciprocity for specific Generic Enabler Specification? I assume it should be free to all Fi-Ware partners to decide most freely upon the terms and conditions upon which the Generic Enabler Specification should be published. I do not see a connection between royalties (= money to be paid) or a reciprocal license. Another point with regard to third party beneficiaries, the DOW states this: "Task 2.3: Consolidation of Generic Enabler Specifications In order to fulfil the FI-WARE promise all Generic Enablers will be accompanied by Open Specifications that will facilitate usage and integration in any FI-WARE Instance as well as the development of compliant implementations of GEs by third parties. While GE Specifications themselves will be done inside WP3-WP10, overall coordination and consolidation of these specifications is the objective and responsibility of this Task. " I assume, if the third party beneficiary does not claim the usage license without reciprocity from the CA, they can claim it from the DOW. I understand it in that way, that we have to make available the Specification under such conditions, that a third party can develop freely an implementation of it. And to be honest, the word Open might give the impression to have even broader rights than just no royalties. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von SCHATTAUER, Karl Gesendet: Dienstag, 23. August 2011 13:54 An: LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica; JOSE JIMENEZ DELGADO; LUIS LOPEZ DE AYALA HIDALGO Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear Luis, all, below please find some comments from our legal department. Best Regards, Karl Dear Luis, Per email dated August 17, Alcatel-Lucent proposed some modifications to section 4.1 of the CA. One of the main concerns we tried to address was to incorporate an obligation on any third party joining the CA or underlying agreements to grant the same rights on its patents on the same terms and conditions on which such third party receives rights from the Consortium Partners under the CA or other associated agreements. The final version sent to us does not address this concern. Instead it has been proposed by SAP AG to cover the reciprocity under adequate licenses attached to the GE Specifications. This approach bears the following risks: ? It would be at the option and discretion of a third party to agree to grant reciprocity ? Under some national laws, based on the current wording of section 4.1 a, any third party could be considered as a third party beneficiary to the CA and be eligible to request the grant of royalty free patent licenses to the GE Specs ( which would include the Parties Background, Sideground and Foreground). Consequently there is a risk that we may not have the right to request a royalty free grant back license from such third party. For these valid reasons, the obligation on third parties to grant reciprocity should be stated in the CA. We believe that this is a very balanced approach. Therefore we propose to reword the second sentence of the second paragraph of section 4.1 as follows (modification indicated in bold letters): "For the sake of clarity, Parties signing this CA as well as any other third party, subject to reciprocity, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis." We look forward to your response. All the best, Oezlem Schmitt OEZLEM SCHMITT IP CORPORATE COUNSEL ALCATEL-LUCENT INTELLECTUAL PROPERTY & STANDARDS P: +49 711 821 44562 F: +49 711 821 44587 Oezlem.Schmitt at alcatel-lucent.com Alcatel-Lucent Deutschland AG Lorenzstra?e 10 70435 Stuttgart Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von LUIS GARCIA GARCIA Gesendet: Montag, 22. August 2011 10:41 An: fiware-legal at lists.fi-ware.eu Cc: JOSE JIMENEZ DELGADO; Asesor?a Jur?dica; LUIS LOPEZ DE AYALA HIDALGO Betreff: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear all, Although clause 4.1 was agreed and closed during our calls and e-mails discussions, some partners pointed out that it was necessary to modify it in order to enable the partners to protect and/or request royalties regarding the IPRs included in the implementations of the FI-WARE GES. We proposed a wording that, from our point of view, regulate this situations and, in parallel, didn?t affect the essence of the project at this point ( accordingly with the DoW). In this FINAL VERSION of the CA, we?ve included the comments sent by NSN in this clause in the two first paragraphs, but not the new third paragraph as, from our perspective, goes beyond the modification requested and will give rise to another round of discussions and literally we have no more time to afford it. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects that cannot be subject to "protection or royalties": 1.- If it is something "inherent" to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Regarding Technnicolor concerns about the payment clause (agreed during one of the Conference calls held during the negotiation process), we?ve maintained the clause wording under our reasoning in mails of 22nd July 27 th July sent to Technicolor. We have also included a last minute minor change in the publications clause . Our technical people strongly requested us to include a shorter term for the publications clause to enable the parties to duly fulfill with a "normal" technical development of the project. It is to make shorter the term for the publications of the Public Deliverables (10 working days) and to enable the Board to decide an even shorter term in case of publications in the project website www.fi-ware.eu ( maximum 5 working days) They say that a 20 days period is not practical at all, at least for these publications, specially to attend the needs of Use Cases projects and the expected content of the mentioned web site. I?ve modified clause 4.4.1. including a new point c) and also (accordingly) clauses 3.3.1 and 3.3.2.5 (functions and decisions of the Board) Last, accordingly with Article 1.4 of the Grant Agreement, the Commission is expecting with the signed Grant Agreement that the consortium has established and signed a Consortium Agreement. We must take into account that the 45 days period to deliver the signed Form A to the Commission expire (except I?m wrong) next 16th Sept and some partners subject their signature to the conclusion of this agreement. Consequently, I have received definitive instructions to close the Consortium Agreement and start the signature process. Please find attached the final Consortium Agreement for FI-WARE for signature (pdf-document). In addition, I prepared the signature pages per FI-WARE partner (word-document) based on the information received. I would like to receive the pending information to complete the signature with the name(s) and title(s) of the organization that still have not sent their details. As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Please print 26 signature pages of your signature page and send them signed to the address mentioned bellow by courier mail latest by 9th September. Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal To the att of Mr. Javier de Pedro DISTRITO C- Edificio Oeste 1, 4? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) We will confirm the reception of your signature and will send back one original together with the copies of the other signatures. In addition, please send a scanned version of your signature page latest by 9th September: The parties that have already sent the signed Collaboration Agreement to AALTO (or to the Coordinators of others FUTURE INTERNET projects) please send us a scanned copy of your signature page to the following e-mail address jdps at tid.es; the rest of participants that have still not signed the Collaboration Agreement, please send us also three copies of the signature page ( Annex 1) to the address mentioned above. Find enclosed the final version of the Collaboration Agreement. If you have any further doubts regarding the signature process, please let us know. Thanks and regards. Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal _______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal From jonas.heitto at alcatel-lucent.com Wed Aug 31 15:06:23 2011 From: jonas.heitto at alcatel-lucent.com (Heitto, Jonas (Jonas)) Date: Wed, 31 Aug 2011 15:06:23 +0200 Subject: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) In-Reply-To: <2B9915A85B6D8D47A5051C368C56E7D4020EB4BB@DEMUEXC005.nsn-intra.net> References: <400B1E0D509AB14C95FFDC1DE303B9A881E116A38A@EXCLU2K7.hi.inet> <175D251D5B968549BDBBAA2BAC721C97016ABEFF@SLFSNX.rcs.alcatel-research.de> <7ED7B27AF3542948BAB7BCD179A7677C10CD40CEB5@DEWDFECCR03.wdf.sap.corp> <4E568423.8090409@tid.es> <2B9915A85B6D8D47A5051C368C56E7D4020B044B@DEMUEXC005.nsn-intra.net> <175D251D5B968549BDBBAA2BAC721C97016AC00E@SLFSNX.rcs.alcatel-research.de> <4E57A1CE.6010200@tid.es> <2B9915A85B6D8D47A5051C368C56E7D4020B07F8@DEMUEXC005.nsn-intra.net> <2B9915A85B6D8D47A5051C368C56E7D4020EB056@DEMUEXC005.nsn-intra.net> <2B9915A85B6D8D47A5051C368C56E7D4020EB42E@DEMUEXC005.nsn-intra.net> <7ED7B27AF3542948BAB7BCD179A7677C10CD66892F@DEWDFECCR03.wdf.sap.corp> <2B9915A85B6D8D47A5051C368C56E7D4020EB4BB@DEMUEXC005.nsn-intra.net> Message-ID: Dear colleagues, As indicated by Susanne, the issue of reciprocity was only entailed by the recent changes. As it's needed to avoid creating unilateral privileges to unknown third parties to the detriment of the participants, and there appears to be no one opposing, wouldn't it be kind of normal to permit a corresponding change? Best regards, Dr. Jonas Heitto, LL.M. ALCATEL-LUCENT Corporate IP Counsel INTELLECTUAL PROPERTY & STANDARDS ** Tel +49 711 821 44561 ** Fax +49 711 821 44587 jonas.heitto at alcatel-lucent.com This e-mail message and any attachment is confidential and is intended for use only by the named addressees above. This message may contain information that is confidential, privileged, attorney work product, or exempt from disclosure under applicable law. If you are not an intended recipient, then you are prohibited from reading or copying any part of this message or opening, reading or copying any attachment. If you have received this message in error, or are not a named recipient, please immediately notify the sender by reply mail and delete this e-mail from your computer. Thank you for your cooperation. -----Original Message----- From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of Weikl, Susanne (NSN - DE/Munich) Sent: Mittwoch, 31. August 2011 14:27 To: ext Schweppe, Kathrin; ext Suzanne Erez; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; ext Juanjo Hierro; Schattauer, Karl (Karl); ext LUIS GARCIA GARCIA Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear all, NSN fundamentally disagrees: 1) the question of reciprocity has not been discussed once in the recent weeks. This is in particular due to the fact that the express implementation rights have only been introduced in the second last version of the consortium agreement. 2) With all due respect, Juanjo is not lawyer / not qualified to comment on questions of Belgian law and third party beneficiary clauses thereunder. 3) there seems to be a misunderstanding on SAP's side: the proposed amendment does not regulate whether a Party may apply additional conditions upon its implementations which it provides royalty free. The addition is for the Specification and the usage right of this Specification by a third party. 4) If this is a concern of SAP that the clause might be misunderstood in the sense that a party has to use condition, if can easily be fixed by stating: "For the sake of clarity, Parties signing this CA as well as any other third party, subject to additional conditions or agreement ____where requested by a Party____, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis." We would accept this of course. Best Regards Susanne -----Original Message----- From: ext Schweppe, Kathrin [mailto:kathrin.schweppe at sap.com] Sent: Wednesday, August 31, 2011 1:58 PM To: Weikl, Susanne (NSN - DE/Munich); ext Suzanne Erez; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; ext Juanjo Hierro; SCHATTAUER, Karl; ext LUIS GARCIA GARCIA Subject: AW: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear all, >From my understanding, and considering that we have discussed this point for weeks now, I agree with Suzanne. Luis and Juanjo assume that the wording provided in the CA is already covering your points. Especially Juanjo stated his understanding last week in several emails, that he does not see the necessity for the changes because they are already covered. From my understanding, it is now too late for the proposed changes. Further, from SAP's point of view, any changes to the CA need now an Amendment because we have already started the signature process. I must admit, that I have my doubts with respect to the latest proposal from Susanne, because it forces every party to apply additional conditions upon the implementations they provide royalty free. The original wording is broader. The word 'may' indicates that it is upon the discretion of the party owning the implementation to choose the conditions under which the implementation is being offered. This is not even a wording that could give a third party beneficiary a right to receive implementation upon royalty free conditions. What is the problem with this freedom? Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. -----Urspr?ngliche Nachricht----- Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von Weikl, Susanne (NSN - DE/Munich) Gesendet: Mittwoch, 31. August 2011 13:32 An: ext Suzanne Erez; fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; ext Juanjo Hierro; SCHATTAUER, Karl; ext LUIS GARCIA GARCIA Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) We really do not want to delay. Luis communicated on august 22nd that "if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible." We have promptly and continuously since 2 weeks asked for this change (and not a single one as so far commented that they disagree in substance). Also the exclusion lists have not been finalized yet. So we cannot be too late... -----Original Message----- From: ext Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Wednesday, August 31, 2011 1:03 PM To: Weikl, Susanne (NSN - DE/Munich) Cc: fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; ext Juanjo Hierro; SCHATTAUER, Karl; ext LUIS GARCIA GARCIA Subject: RE: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Susanne, oh my. At this point I don't think the question is "would IBM agree.... ?", but "is it too late to make changes?". From what I understand, many parties have already signed the version as is. This would unfortunately result in have Parties sign on two different versions. Luis? Juanjo? Is there still time to make changes? Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Weikl, Susanne (NSN - DE/Munich)" To: Suzanne Erez/Haifa/IBM at IBMIL, , , "ext Juanjo Hierro" , "SCHATTAUER, Karl" , "ext LUIS GARCIA GARCIA" Date: 08/30/11 05:46 PM Subject: RE: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Suzanne, would IBM have an issue with the last suggested change? "For the sake of clarity, Parties signing this CA as well as any other third party, ____subject to additional conditions or agreement____, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis." Best Regards Susanne -----Original Message----- From: ext Suzanne Erez [mailto:SUZANNE at il.ibm.com] Sent: Monday, August 29, 2011 9:09 AM To: Weikl, Susanne (NSN - DE/Munich); fiware-legal at lists.fi-ware.eu; fiware-legal-bounces at lists.fi-ware.eu; ext Juanjo Hierro; SCHATTAUER, Karl; ext LUIS GARCIA GARCIA Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) All, Perhaps my interpretation of the new language is different from Susanne's. As I read it, Royalties may be asked for 1) "not directly disclosed by the FI-WARE Generic Enabler Specifications OR 2) or which are not inherent to, OR 3) or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications" >From my understanding this leaves 3 possibilities to ask for Royalties; not one long possibility, but 3 separate possibilities. Therefore, the language as currently written allows the Parties to request royalties for all implementations " not directly disclosed by the FI-WARE Generic Enabler Specifications". As written in full - "....Parties are not barred from requesting royalties for.... any such implementations of the FI-WARE Generic Enablers Specifications, which are not directly disclosed by the FI-WARE Generic Enabler Specifications..... " Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Weikl, Susanne (NSN - DE/Munich)" To: ext Juanjo Hierro , "SCHATTAUER, Karl" , ext LUIS GARCIA GARCIA Cc: fiware-legal at lists.fi-ware.eu Date: 08/26/11 06:03 PM Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Sent by: fiware-legal-bounces at lists.fi-ware.eu Hello Juanjo, Luis and all, 1. "normal implementation" is the short form of Luis' explanations " If it is something "inherent" to the specifications, that is to say that nobody would implement it in a different way." and "If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do."; his explanation for "directly disclosed by the FI-WARE Generic Enabler Specifications or which are not inherent to, or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications" 2. So what basically remains for requesting royalties is small and very open to interpretation. 3. If there is a third party (that is, someone who is not a FI-WARE partner) that has a patent on something that existed previous to our spec, it is for example possible to fight that party by putting it into the situation, where it has to chose, whether it rather uses the spec free of charge or use the patent against all and loses it rights to the spec. This is reciprocity - very effective means. 4. If we all agree that we will use terms with the spec - why do we not simply add this by the suggested 6 word? I would like to remind that we have no clause in the agreement which regulates that there is no third party beneficiaries. Most of us are not experts on Belgium Law with respect to third party beneficiary clauses. I am not sure, whether it really can be excluded that a third party simply comes up and claims "I don't care about your term, I have already been granted the rights by force of the CA.". And NSN does not want to take the risk. Yes, it is time to sign the agreement. But I have not heard anybody yet how has content wise an issue with this last change. Best regards, Susanne Weikl Senior Legal Counsel St.-Martin-Stra?e 76 41.4017 D-80240 Munich Tel: +49 89 5159 36940 Mob: +49 160 9062 7495 Fax: +49 89 5159 44 36940 susanne.weikl at nsn.com http://www.nokiasiemensnetworks.com/global/ Think before you print Nokia Siemens Networks GmbH & Co. KG Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRA 88537 WEEE-Reg.-Nr.: DE 52984304 Pers?nlich haftende Gesellschafterin / General Partner: Nokia Siemens Networks Management GmbH Gesch?ftsleitung / Board of Directors: Olaf Horsthemke, Dr. Hermann Rodler Vorsitzender des Aufsichtsrats / Chairman of supervisory board: Herbert Merz Sitz der Gesellschaft: M?nchen / Registered office: Munich Registergericht: M?nchen / Commercial registry: Munich, HRB 163416 _________________________________________________________________________________ Important Note: This e-mail and any attachment are confidential and may contain trade secrets and may also be legally privileged or otherwise protected from disclosure. If you have received it in error, you are on notice of its status. Please notify us immediately by reply e-mail and then delete this e-mail and any attachment from your system. If you are not the intended recipient please understand that you must not copy this e-mail or any attachment or disclose the contents to any other person. Thank you for your cooperation. From: ext Juanjo Hierro [mailto:jhierro at tid.es] Sent: Friday, August 26, 2011 3:38 PM To: SCHATTAUER, Karl Cc: Weikl, Susanne (NSN - DE/Munich); fiware-legal at lists.fi-ware.eu Subject: Re: AW: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von Weikl, Susanne (NSN - DE/Munich) Gesendet: Freitag, 26. August 2011 09:29 An: ext Juanjo Hierro; fiware-legal at lists.fi-ware.eu Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hello Juanjo and all, good that we clarify this again: There is 3 levels: 1) The Specification as such, i.e. "the piece of paper" - not controversial at all - can be circulated royalty free. 2) A Party's implementation of such Specification - - not controversial at all - is up to the Party, whether it is royalty bearing or not. The problematic level is the following: do we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification? So far the agreement states "yes", provided that it is a "normal implementation". Can you explain why are you deriving this ? What do you mean by "normal implementation" ? I have search for the term "normal implementation" and is nowhere in the CA. Even "normal" is not used at all regarding IPRs ... Why do you say that "we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification" ? We say just the opposite in the CA: Parties are not barred from requesting royalties for, or protecting their rights with respect to IPRs (e.g. but not limited to patents) in any such implementations of the FI-WARE Generic Enablers Specifications, which are not directly disclosed by the FI-WARE Generic Enabler Specifications or which are not inherent to, or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications Of course, we will not charge for IPRs that are inherent to or cannot trivially derived as valid implementation of part of a FI-WARE GE specification (read my comment below, further on this matter). But you would be able to charge for IPRs on aspects that are linked to those aspects that may be differential in your product, therefore not inherent nor trivially derived from just reading the spec. This is e.g. going beyond what is normally requested in standardization, where the obligation to avail IPR is either on FRAND conditions or at least limited to "essential IPR", not "normal IPR". It also goes far beyond what is requested in normal EU projects, where Background only has to be made available under FRAND terms. In this context "reciprocity" is meant as follows: the third parties has to make available its IPRs which would be used in such a "normal implementation" of a Specification. It does not extent to any other product or IPR of such third party. What is avoided thereby is that a Party can use all the specification free of charge and block all the rest of the world from using the specifications, should it have a patent which it essentially needed for the implementation of the Specification. Again, don't know what you mean by "normal implementation". But, anyway, let's make one point clear. When a number of companies sit together and try to define something which can become an open standard (and that's what we aim to do in FI-WARE) what they do is that they generate public specifications and try to publicly state (typically in a legal note accompanying the specs) that any party feels should feel confident that it will be able to generate a competitive product, compliant to the specs. And that they will not be suddenly surprised because one day they discover that one of the companies who authored the specs kept (secretly) a patent on something that is "inherent" in the spec or could be trivially derived in the spec. That's regular business in open software standards. The existing clauses in the CA try to make sure that we are on the same page on this. If there is a third party (that is, someone who is not a FI-WARE partner) that has a patent on something that existed previous to our spec, I don't know how you are going to be able to prevent that they sue us when they discover it. It's simply impossible. We will have to battle to it or fix the specs (same thing a standard body would do). If it is something they generated as a result of implementing our spec and it happens to be something "inherent to the spec" or "trivially derived from the spec", I don't understand why they would be able to sue us. We just need to accompany our GE specs with some legal note making a statement like (well, in the right legal terms, I'm not a lawyer) "No party implementing these specifications will be able to charge royalties or claim patents on any element that is directly disclosed by this specification or which is inherent to, or can trivially derived as valid implementation of, part of this specification". That would be the kind of reciprocity you are looking for, I guess. But the right thing to do will be to add the proper legal note in whatever spec we produce. Not to introduce anything in the CA (which is not public). Changing the CA doesn't solve anything. Frankly speaking, what you ask for (the change in the CA) still doesn't make any sense to me. Legal notes we will have to enclose to produced GEs are another story. There, my comment above would apply. Time is over. It's time to sign the current GA. Best regards, -- Juanjo Therefore a clarification as in "For the sake of clarity, Parties signing this CA as well as any other third party, subject to additional conditions or agreement, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis." is not nonsense, but protects all of us and fully serves the purpose, we want to achieve: an open specification. Best Regards Susanne From: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of ext Juanjo Hierro Sent: Thursday, August 25, 2011 7:20 PM To: fiware-legal at lists.fi-ware.eu Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Hi all, This discussion is sincerely ... "non-sense". I hope I will be able to explain myself. What is public and royalty-free are the FI-WARE GE Specifications. And as pointed out in previous mails from other partners (despite it was with the omission of the term "specification" which is quite relevant in this discussion) the public and royalty-free nature of FI-WARE GE Specifications is something that was there since proposal time and rather a cornerstone reason why our project passed the evaluation and was accepted by the EC. Given said this, an specification is here a PIECE OF PAPER, that is, documentation. What sort of reciprocity are we looking for here ? Are you asking that third parties make specifications of other products they may have public and royalty-free ? It simply has no-sense. It is like saying that Apple has to make public and royalty-free the specs of one of its products just because it has develop the Safari browser based on the public and royalty-free specs of HTML as published by the W3C (BTW, which product specification would you ask them to make public and royalty-free ? The iPhone specifications ?) Come on. NO-SENSE at all. As repeated many times. Specifications are different than implementations. We are not making our implementations of the FI-WARE GE Specifications public and royalty-free. Nor of course can claim that third parties should give us their implementations for free either. Unless I'm missing something rather important, this discussion is completely non-sense to me. Therefore, no changes in the CA will be incorporated in this respect. As already announced by Luis: As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Best regards, -- Juanjo On 23/08/11 15:40, Suzanne Erez wrote: Susanne, Kathrin, et al., Kathrin has some points in her argument, and so does Susanne and Karl. But are legal arguments really the question? Or is the question what did we agree to in November 2010 when this whole CA negotiation started? >From the beginning, our understanding was that the Commission requires that the GES be royalty free. This was conveyed to us by Juanjo. Now there is a new request that goes like - we will make the GES royalty free, but only on the condition that the "public" will promise reciprocity. There is nothing wrong business wise in this approach, and I for one am always happy to get other companies patents royalty free. In fact, I would like to get RAND for the GES. But that was not our agreement with the Commission, and we are working according to the Commission's request. We agreed to this condition 10 months ago. I think it is now 10 months too late to start changing the terms. Being an engineer, I remember an old saying "there comes a time to shoot the engineers and ship the product." I think we can adopt that and say "there comes a time to shoot the attorneys and start the project". I think that time is now. good luck to us all, and happy working on the project! Suzanne Suzanne Erez Counsel, IPLaw, Israel Associate PPM, PPM 160 IBM Haifa, Israel suzanne at il.ibm.com Tel: 972-4-829-6069 Fax: 972-4-829-6521 Any sufficiently advanced technology is indistinguishable from magic. - Clark's Third Law PREPARED BY IBM ATTORNEY / PRIVILEGE REVIEW REQUIRED This e-mail and its attachments, if any, may contain information that is private, confidential, or protected by attorney-client, solicitor-client or other privilege. If you received this e-mail in error, please delete it from your system without copying it and notify me of the misdirection by reply e-mail. From: "Schweppe, Kathrin" To: "SCHATTAUER, Karl" , LUIS GARCIA GARCIA , "fiware-legal at lists.fi-ware.eu" Cc: Asesor?a Jur?dica , JOSE JIMENEZ DELGADO , LUIS LOPEZ DE AYALA HIDALGO Date: 08/23/11 04:16 PM Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Sent by: fiware-legal-bounces at lists.fi-ware.eu Dear Karl, dear Susanne first, SAP cannot agree to any changes to CA now, because we have already send the CA for signature. The only way to change the CA for SAP now would be an amendment. Secondly, I disagree with your legal advisor. Reciprocity is not upon any third party discretion because the party or parties creating the Generic Enabler Specifications are free to decide upon Terms of Use they would like to attach to the Generic Enabler Specifications. It is not upon third parties to decide about the conditions for the usage of the Generic Enabler Specifications. Thirdly, what happens if a party does not agree upon reciprocity for specific Generic Enabler Specification? I assume it should be free to all Fi-Ware partners to decide most freely upon the terms and conditions upon which the Generic Enabler Specification should be published. I do not see a connection between royalties (= money to be paid) or a reciprocal license. Another point with regard to third party beneficiaries, the DOW states this: "Task 2.3: Consolidation of Generic Enabler Specifications In order to fulfil the FI-WARE promise all Generic Enablers will be accompanied by Open Specifications that will facilitate usage and integration in any FI-WARE Instance as well as the development of compliant implementations of GEs by third parties. While GE Specifications themselves will be done inside WP3-WP10, overall coordination and consolidation of these specifications is the objective and responsibility of this Task. " I assume, if the third party beneficiary does not claim the usage license without reciprocity from the CA, they can claim it from the DOW. I understand it in that way, that we have to make available the Specification under such conditions, that a third party can develop freely an implementation of it. And to be honest, the word Open might give the impression to have even broader rights than just no royalties. Best regards, Kathrin Kathrin Schweppe, LL.M. Contract Specialist Global Legal SAP AG Dietmar-Hopp-Allee 16 69190 Walldorf, Germany T +49 6227 7-64369 F +49 6227 78-54177 E kathrin.schweppe at sap.com http://www.sap.com Sitz der Gesellschaft/Registered Office: Walldorf, Germany Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner Registergericht/Commercial Register Mannheim No HRB 350269 Diese e-mail kann Betriebs- oder Gesch?ftsgeheimnisse, dem Anwaltsgeheimnis unterliegende oder sonstige vertrauliche Informationen enthalten. Sollten Sie diese e-mail irrt?mlich erhalten haben, ist Ihnen eine Kenntnisnahme des Inhalts, eine Vervielf?ltigung oder Weitergabe der e-mail ausdr?cklich untersagt. Bitte benachrichtigen Sie uns und vernichten Sie die empfangene e-mail. Vielen Dank. Prepared by a member of SAP Global Legal. This message and any attachments may contain information that is confidential, private or protected by the attorney-client or other privilege. If you have received this email in error, please delete this message without further copying or distribution and promptly notify me. Thank you for your cooperation. Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von SCHATTAUER, Karl Gesendet: Dienstag, 23. August 2011 13:54 An: LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu Cc: Asesor?a Jur?dica; JOSE JIMENEZ DELGADO; LUIS LOPEZ DE AYALA HIDALGO Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear Luis, all, below please find some comments from our legal department. Best Regards, Karl Dear Luis, Per email dated August 17, Alcatel-Lucent proposed some modifications to section 4.1 of the CA. One of the main concerns we tried to address was to incorporate an obligation on any third party joining the CA or underlying agreements to grant the same rights on its patents on the same terms and conditions on which such third party receives rights from the Consortium Partners under the CA or other associated agreements. The final version sent to us does not address this concern. Instead it has been proposed by SAP AG to cover the reciprocity under adequate licenses attached to the GE Specifications. This approach bears the following risks: ? It would be at the option and discretion of a third party to agree to grant reciprocity ? Under some national laws, based on the current wording of section 4.1 a, any third party could be considered as a third party beneficiary to the CA and be eligible to request the grant of royalty free patent licenses to the GE Specs ( which would include the Parties Background, Sideground and Foreground). Consequently there is a risk that we may not have the right to request a royalty free grant back license from such third party. For these valid reasons, the obligation on third parties to grant reciprocity should be stated in the CA. We believe that this is a very balanced approach. Therefore we propose to reword the second sentence of the second paragraph of section 4.1 as follows (modification indicated in bold letters): "For the sake of clarity, Parties signing this CA as well as any other third party, subject to reciprocity, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis." We look forward to your response. All the best, Oezlem Schmitt OEZLEM SCHMITT IP CORPORATE COUNSEL ALCATEL-LUCENT INTELLECTUAL PROPERTY & STANDARDS P: +49 711 821 44562 F: +49 711 821 44587 Oezlem.Schmitt at alcatel-lucent.com Alcatel-Lucent Deutschland AG Lorenzstra?e 10 70435 Stuttgart Von: fiware-legal-bounces at lists.fi-ware.eu [ mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von LUIS GARCIA GARCIA Gesendet: Montag, 22. August 2011 10:41 An: fiware-legal at lists.fi-ware.eu Cc: JOSE JIMENEZ DELGADO; Asesor?a Jur?dica; LUIS LOPEZ DE AYALA HIDALGO Betreff: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION) Dear all, Although clause 4.1 was agreed and closed during our calls and e-mails discussions, some partners pointed out that it was necessary to modify it in order to enable the partners to protect and/or request royalties regarding the IPRs included in the implementations of the FI-WARE GES. We proposed a wording that, from our point of view, regulate this situations and, in parallel, didn?t affect the essence of the project at this point ( accordingly with the DoW). In this FINAL VERSION of the CA, we?ve included the comments sent by NSN in this clause in the two first paragraphs, but not the new third paragraph as, from our perspective, goes beyond the modification requested and will give rise to another round of discussions and literally we have no more time to afford it. This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner?s technology when used in an implementation. However, we must take into account that there are two aspects that cannot be subject to "protection or royalties": 1.- If it is something "inherent" to the specifications, that is to say that nobody would implement it in a different way. 2.- If it is one aspect of the implantation that everybody, that implement the specifications, would obviously do. Both points are not necessary redundant. Regarding Technnicolor concerns about the payment clause (agreed during one of the Conference calls held during the negotiation process), we?ve maintained the clause wording under our reasoning in mails of 22nd July 27 th July sent to Technicolor. We have also included a last minute minor change in the publications clause . Our technical people strongly requested us to include a shorter term for the publications clause to enable the parties to duly fulfill with a "normal" technical development of the project. It is to make shorter the term for the publications of the Public Deliverables (10 working days) and to enable the Board to decide an even shorter term in case of publications in the project website www.fi-ware.eu ( maximum 5 working days) They say that a 20 days period is not practical at all, at least for these publications, specially to attend the needs of Use Cases projects and the expected content of the mentioned web site. I?ve modified clause 4.4.1. including a new point c) and also (accordingly) clauses 3.3.1 and 3.3.2.5 (functions and decisions of the Board) Last, accordingly with Article 1.4 of the Grant Agreement, the Commission is expecting with the signed Grant Agreement that the consortium has established and signed a Consortium Agreement. We must take into account that the 45 days period to deliver the signed Form A to the Commission expire (except I?m wrong) next 16th Sept and some partners subject their signature to the conclusion of this agreement. Consequently, I have received definitive instructions to close the Consortium Agreement and start the signature process. Please find attached the final Consortium Agreement for FI-WARE for signature (pdf-document). In addition, I prepared the signature pages per FI-WARE partner (word-document) based on the information received. I would like to receive the pending information to complete the signature with the name(s) and title(s) of the organization that still have not sent their details. As you know, we all have made a big effort to get a balanced agreement (we think we?ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible. Please print 26 signature pages of your signature page and send them signed to the address mentioned bellow by courier mail latest by 9th September. Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal To the att of Mr. Javier de Pedro DISTRITO C- Edificio Oeste 1, 4? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) We will confirm the reception of your signature and will send back one original together with the copies of the other signatures. In addition, please send a scanned version of your signature page latest by 9th September: The parties that have already sent the signed Collaboration Agreement to AALTO (or to the Coordinators of others FUTURE INTERNET projects) please send us a scanned copy of your signature page to the following e-mail address jdps at tid.es; the rest of participants that have still not signed the Collaboration Agreement, please send us also three copies of the signature page ( Annex 1) to the address mentioned above. Find enclosed the final version of the Collaboration Agreement. If you have any further doubts regarding the signature process, please let us know. Thanks and regards. Luis Garc?a Garc?a Asesoria Jur?dica // Legal Department Tfnos: +34 914832614 // +34913129666 Telef?nica Investigaci?n y Desarrollo, S.A.Unipersonal DISTRITO C- Edificio Oeste 1, 5? planta Ronda de la Comunicaci?n s/n 28050-Madrid (Espa?a) Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at. http://www.tid.es/ES/PAGINAS/disclaimer.aspx(See attached file: image001.png)_______________________________________________ Fiware-legal mailing list Fiware-legal at lists.fi-ware.eu http://lists.fi-ware.eu/listinfo/fiware-legal Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra pol?tica de env?o y recepci?n de correo electr?nico en el enlace situado m?s abajo. This message is intended exclusively for its addressee. 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