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`Case 1:23-cv-01237-GBW Document 11-2 Filed 12/11/23 Page 1 of 20 PagelD #: 1920
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`EXHIBIT B
`EXHIBIT B
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`Case 1:23-cv-01237-GBW Document 11-2 Filed 12/11/23 Page 2 of 20 PageID #: 1921
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`International Electrotechnical Commission
`
`International Organization for Standardization
`
`International Telecommunication Union
`
`IEC
`ISO
`ITU
`
`Guidelines for Implementation
`of the Common Patent Policy
`for ITU-T/ITU-R/ISO/IEC
`
`(16/12/2022)
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`Case 1:23-cv-01237-GBW Document 11-2 Filed 12/11/23 Page 3 of 20 PageID #: 1922
`
`
`Guidelines for Implementation of the Common Patent Policy for
`ITU-T/ITU-R/ISO/IEC
`
`
`
`
`
`Summary
`
`The Guidelines for Implementation of the Common Patent Policy for ITU-T/ITU-R/ISO/IEC are
`intended to clarify and facilitate implementation of the Patent Policy, a copy of which can be found in
`Annex 1 and also on the web site of each Organization.
`
`The Patent Policy encourages the early disclosure and identification of Patents that may relate to
`Recommendations | Deliverables under development. In doing so, greater efficiency in standards
`development is possible and potential patent rights problems can be avoided.
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`History
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`Edition
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`1.0
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`2.0
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`3.0
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`4.0
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`5.0
`
`Published initial version
`
`Published first revision
`
`Published second revision
`
`Published third revision
`
`Published fourth revision
`
`
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`1 March 2007
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`23 April 2012
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`26 June 2015
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`2 November 2018
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`16 December 2022
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`i
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`

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`Case 1:23-cv-01237-GBW Document 11-2 Filed 12/11/23 Page 4 of 20 PageID #: 1923
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`Part I – Common guidelines.............................................................................................................. 1
`
`CONTENTS
`
`Purpose .................................................................................................................................. 1
`
`Explanation of terms .............................................................................................................. 1
`
`Patent disclosure .................................................................................................................... 2
`
`Patent Statement and Licensing Declaration Form ............................................................... 3
`
`4.1
`
`4.2
`
`The purpose of the Declaration Form ...................................................................... 3
`
`Contact information ................................................................................................. 4
`
`Conduct of meetings .............................................................................................................. 4
`
`Patent Information database .................................................................................................. 4
`
`Assignment or Transfer of Patent Rights............................................................................... 5
`
`1
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`2
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`3
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`4
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`5
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`6
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`7
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`
`
`Part II – Organization-specific provisions ........................................................................................ 6
`
`II.1
`
`Specific provisions for ITU ................................................................................................... 6
`
`II.2
`
`Specific provisions for ISO and IEC ..................................................................................... 7
`
`
`
`ANNEX 1: COMMON PATENT POLICY FOR ITU-T/ITU-R/ISO/IEC ...................................... 9
`
`ANNEX 2: PATENT STATEMENT AND LICENSING DECLARATION FORM FOR
`ITU-T OR ITU-R RECOMMENDATION | ISO OR IEC DELIVERABLE ....................... 11
`
`ANNEX 3: GENERAL PATENT STATEMENT AND LICENSING DECLARATION
`FORM FOR ITU- T OR ITU-R RECOMMENDATION ..................................................... 15
`
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`iii
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`

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`Case 1:23-cv-01237-GBW Document 11-2 Filed 12/11/23 Page 5 of 20 PageID #: 1924
`
`
`
`Guidelines for Implementation of the Common Patent Policy for
`ITU-T/ITU-R/ISO/IEC
`
`
`
`Revision 4, effective 16 December 2022
`
`
`
`Part I – Common guidelines
`
`1
`
`Purpose
`
`ITU, in its Telecommunication Standardization Sector (ITU-T) and its Radiocommunication Sector
`(ITU-R), ISO and IEC have had patent policies for many years, the purpose being to provide in
`simple words practical guidance to the participants in their Technical Bodies in case patent rights
`matters arise.
`
`Considering that the technical experts are normally not familiar with the complex issue of patent
`law, the Common Patent Policy for ITU-T/ITU-R/ISO/IEC (hereafter referred to as the "Patent
`Policy") was drafted in its operative part as a checklist, covering the three different cases which may
`arise if a Recommendation | Deliverable requires licences for Patents to be practiced or
`implemented, fully or partly.
`
`The Guidelines for Implementation of the Common Patent Policy for ITU-T/ITU-R/ISO/IEC
`(hereafter referred to as the "Guidelines") are intended to clarify and facilitate implementation of
`the Patent Policy, a copy of which can be found in Annex 1 and also on the web site of each
`Organization.
`
`The Patent Policy encourages the early disclosure and identification of Patents that may relate to
`Recommendations | Deliverables under development. In doing so, greater efficiency in standards
`development is possible and potential patent rights problems can be avoided.
`
`The Organizations should not be involved in evaluating patent relevance or essentiality with regards
`to Recommendations | Deliverables, interfere with licensing negotiations, or engage in settling
`disputes on Patents; this should be left - as in the past - to the parties concerned.
`
`Organization-specific provisions are contained in Part II of this document. However, it is understood
`that those Organization-specific provisions shall contradict neither the Patent Policy nor the
`Guidelines.
`
`2
`
`Explanation of terms
`
`Contribution: Any document submitted for consideration by a Technical Body.
`
`Free of Charge: The words "Free of Charge" do not mean that the Patent Holder is waiving all of
`its rights with respect to the Patent. Rather, "Free of Charge" refers to the issue of monetary
`compensation; i.e., that the Patent Holder will not seek any monetary compensation as part of the
`licensing arrangement (whether such compensation is called a royalty, a one-time licensing fee,
`
`1
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`

`

`Case 1:23-cv-01237-GBW Document 11-2 Filed 12/11/23 Page 6 of 20 PageID #: 1925
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`etc.). However, while the Patent Holder in this situation is committing to not charging any monetary
`amount, the Patent Holder is still entitled to require that the implementer of the relevant
`Recommendation | Deliverable sign a license agreement that contains other reasonable terms and
`conditions such as those relating to governing law, field of use, warranties, etc.
`
`WD 1
`
`Organizations: ITU, ISO and IEC.
`
`Patent: The word "Patent" means those claims contained in and identified by patents, utility models
`and other similar statutory rights based on inventions (including applications for any of these) solely
`to the extent that any such claims are essential to the implementation of a Recommendation |
`Deliverable. Essential patents are patents that would be required to implement a specific
`Recommendation | Deliverable.
`
`Patent Holder: Person or entity that owns, controls and/or has the ability to license Patents.
`
`Reciprocity: The word "Reciprocity" means that the Patent Holder shall only be required to license
`any prospective licensee if such prospective licensee will commit to license its Patent(s) for
`implementation of the same relevant Recommendation | Deliverable Free of Charge or under
`reasonable terms and conditions.
`
`Recommendations | Deliverables: ITU-T and ITU-R Recommendations are referred to as
`"Recommendations", ISO deliverables and IEC deliverables are referred to as "Deliverables". The
`various types of Recommendation(s) | Deliverable(s) are referred to as "Document types" in the
`Patent Statement and Licensing Declaration Form (hereafter referred to as "Declaration Form")
`attached as Annex 2.
`
`Technical Bodies: Study Groups, any subordinate groups and other groups of ITU-T and ITU-R
`and technical committees, subcommittees and working groups in ISO and IEC.
`
`3
`
`Patent disclosure
`
`As mandated by the Patent Policy in its paragraph 1, any party participating1 in the work of the
`Organizations should, from the outset, draw their attention to any known Patent or to any known
`pending Patent application, either its own or that of other organizations.
`
`In this context, the words "from the outset" imply that such information should be disclosed as early
`as possible during the development of the Recommendation | Deliverable. This might not be
`possible when the first draft text appears since at this time, the text might be still too vague or subject
`to subsequent major modifications. Moreover, that information should be provided in good faith
`and on a best effort basis, but there is no requirement for patent searches.
`
`In addition to the above, any party not participating in Technical Bodies may draw the attention of
`the Organizations to any known Patent, either their own and/or of any third-party.
`
`When disclosing their own Patents, Patent Holders have to use the Patent Statement and Licensing
`Declaration Form (referred to as the "Declaration Form") as stated in Section 4 of these Guidelines.
`
`____________________
`
`1 In the case of ISO and IEC, this includes any recipient of a draft standard at any stage in the standards
`development process.
`
`2
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`
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`

`

`Case 1:23-cv-01237-GBW Document 11-2 Filed 12/11/23 Page 7 of 20 PageID #: 1926
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`
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`Any communication drawing the attention to any third-party Patent should be addressed to the
`concerned Organization(s) in writing. The potential Patent Holder will then be requested by the
`Director/CEO of the relevant Organization(s) to submit a Declaration Form, if applicable.
`
`The Patent Policy and these Guidelines also apply to any Patent disclosed or drawn to the attention
`of the Organizations subsequent to the approval of a Recommendation | Deliverable.
`
`Whether the identification of the Patent took place before or after the approval of the
`Recommendation | Deliverable, if the Patent Holder is unwilling to license under paragraph 2.1 or
`2.2 of the Patent Policy, the Organizations will promptly advise the Technical Bodies responsible
`for the affected Recommendation | Deliverable so that appropriate action can be taken. Such action
`will include, but may not be limited to, a review of the Recommendation | Deliverable or its draft in
`order to remove the potential conflict or to further examine and clarify the technical considerations
`causing the conflict.
`
`4
`
`Patent Statement and Licensing Declaration Form
`
`4.1
`
`The purpose of the Declaration Form
`
`To provide clear information in the Patent Information databases of each Organization, Patent
`Holders have to use the Declaration Form, which is available on the web site of each Organization
`(the Declaration Form is included in Annex 2 for information purposes). They must be sent to the
`Organizations for the attention, for ITU, of the Directors of the TSB or the BR or, for ISO or IEC,
`of the CEOs. The purpose of the Declaration Form is to ensure a standardized submission to the
`respective Organizations of the declarations being made by Patent Holders.
`
`The Declaration Form gives Patent Holders the means of making a licensing declaration relative to
`rights in Patents required for implementation of a specific Recommendation | Deliverable.
`Specifically, by submitting this Declaration Form the submitting party declares its willingness to
`license (by selecting option 1 or 2 on the Form) /or its unwillingness to license (by selecting option 3
`on the Form), according to the Patent Policy, Patents held by it and whose licence would be required
`to practice or implement part(s) or all of a specific Recommendation | Deliverable.
`
`If a Patent Holder has selected the licensing option 3 on the Declaration Form, then, for the
`referenced relevant ITU Recommendation and ISO or IEC Deliverable, the ITU, ISO and IEC require
`the Patent Holder to provide certain additional information permitting patent identification.
`
`Multiple Declaration Forms are appropriate if the Patent Holder wishes to identify several Patents
`and classifies them in different options of the Declaration Form for the same Recommendation |
`Deliverable or if the Patent Holder classifies different claims of a complex patent in different options
`of the Declaration Form.
`
`Information contained in a Declaration Form may be corrected in case of obvious errors, such as a
`typographical mistake in a standard or patent reference number. The licensing declaration contained
`in the Declaration Form remains in force unless it is superseded by another Declaration Form
`containing more favourable licensing terms and conditions from a licensee's perspective reflecting
`(a) a change in commitment from option 3 to either option 1 or option 2, (b) a change in commitment
`from option 2 to option 1 or (c) un-checking one or more sub-options contained within option 1 or 2.
`
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`3
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`

`

`Case 1:23-cv-01237-GBW Document 11-2 Filed 12/11/23 Page 8 of 20 PageID #: 1927
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`4.2
`
`Contact information
`
`WD 1
`
`In completing Declaration Forms, attention should be given to supplying contact information that
`will remain valid over time. Where possible, the "Name and Department" and e-mail address should
`be generic. Also it is preferable, where possible, that parties, particularly multinational organizations,
`indicate the same contact point on all Declaration Forms submitted.
`
`With a view to maintaining up-to-date information in the Patent Information database of each
`Organization, it is requested that the Organizations be informed of any change or corrections to the
`Declaration Form submitted in the past, especially with regard to the contact person.
`
`5
`
`Conduct of meetings
`
`Early disclosure of Patents contributes to the efficiency of the process by which Recommendations |
`Deliverables are established. Therefore, each Technical Body, in the course of the development of a
`proposed Recommendation | Deliverable, will request the disclosure of any known Patents essential
`to the proposed Recommendation | Deliverable.
`
`Chairmen of Technical Bodies will, if appropriate, ask, at an appropriate time in each meeting,
`whether anyone has knowledge of patents, the use of which may be required to practice or implement
`the Recommendation | Deliverable being considered. The fact that the question was asked shall be
`recorded in the meeting report, along with any affirmative responses.
`
`As long as the Organization concerned has received no indication of a Patent Holder selecting
`paragraph 2.3 of the Patent Policy, the Recommendation | Deliverable may be approved using the
`appropriate and respective rules of the Organization concerned. It is expected that discussions in
`Technical Bodies will include consideration of including patented material in a Recommendation |
`Deliverable, however the Technical Bodies may not take position regarding the essentiality, scope,
`validity or specific licensing terms of any claimed Patents.
`
`6
`
`Patent Information database
`
`In order to facilitate both the standards-making process and the application of Recommendations |
`Deliverables, each Organization makes available to the public a Patent Information database
`composed of information that was communicated to the Organizations by the means of Declaration
`Forms. The Patent Information database may contain information on specific patents, or may contain
`no such information but rather a statement about compliance with the Patent Policy for a particular
`Recommendation | Deliverable.
`
`The Patent Information databases are not certified to be either accurate or complete, but only reflect
`the information that has been communicated to the Organizations. As such, the Patent Information
`databases may be viewed as simply raising a flag to alert users that they may wish to contact the
`entities who have communicated Declaration Forms to the Organizations in order to determine if
`patent licenses must be obtained for use or implementation of a particular Recommendation |
`Deliverable.
`
`
`
`4
`
`
`
`

`

`Case 1:23-cv-01237-GBW Document 11-2 Filed 12/11/23 Page 9 of 20 PageID #: 1928
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`7
`
`Assignment or Transfer of Patent Rights
`
`
`
`The rules governing the assignment or transfer of Patent rights are contained in the patent statement
`and licensing declaration forms (see Annexes 2 and 3). By complying with these rules, the Patent
`Holder has discharged in full all of its obligations and liability with regards to the licensing
`commitments after the transfer or assignment. These rules are not intended to place any duty on the
`Patent Holder to compel compliance with the licensing commitment by the assignee or transferee
`after the transfer occurs.
`
`
`
`
`
`
`
`5
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`

`

`Case 1:23-cv-01237-GBW Document 11-2 Filed 12/11/23 Page 10 of 20 PageID #: 1929
`
`
`
`WD 1
`
`Part II – Organization-specific provisions
`
`II.1
`
`Specific provisions for ITU
`
`ITU-1 General Patent Statement and Licensing Declaration Form
`
`Anyone may submit a General Patent Statement and Licensing Declaration Form which is
`available on the web sites of ITU-T and ITU-R (the form in Annex 3 is included for
`information purposes). The purpose of this form is to give Patent Holders the voluntary
`option of making a general licensing declaration relative to material protected by Patents
`contained in any of their Contributions. Specifically, by submitting its form, the Patent
`Holder declares its willingness to license its Patents owned by it in case part(s) or all of any
`proposals contained in its Contributions submitted to the Organization are included in
`Recommendation(s) and the included part(s) contain items for which Patents have been filed
`and whose licence would be required to practice or implement Recommendation(s).
`
`The General Patent Statement and Licensing Declaration Form is not a replacement for the
`"individual" (see clause 4 of Part I) Declaration Form, which is made per Recommendation,
`but is expected to improve responsiveness and early disclosure of the Patent Holder's
`compliance with the Patent Policy. Therefore, in addition to its existing General Patent
`Statement and Licensing Declaration in respect of its Contributions, the Patent Holder
`should, when appropriate (e.g. if it becomes aware that it has a Patent for a specific
`Recommendation), also submit an "individual" Patent Statement and Licensing Declaration
`Form:
`
`–
`
`–
`
`for the Patents contained in any of its Contributions submitted to the Organization which
`are included in a Recommendation, any such "individual" Patent Statement and
`Licensing Declarations may contain either the same licensing terms and conditions as in
`the General Patent Statement and Licensing Declaration Form, or more favourable
`licensing terms and conditions from a licensee's perspective as defined in the "individual"
`(see clause 4.1 of Part I) Declaration Form; and
`
`for the Patents that the Patent Holder did not contribute to the Organization which are
`included in a Recommendation, any such "individual" Patent Statement and Licensing
`Declarations may contain any of the three options available on the Form (see clause 4.1
`of Part I), regardless of the commitment in its existing General Patent Statement and
`Licensing Declaration.
`
`The General Patent Statement and Licensing Declaration remains in force unless it is
`superseded by another General Patent Statement and Licensing Declaration form containing
`more favourable licensing terms and conditions from a licensee's perspective reflecting (a)
`a change in commitment from option 2 to option 1 or (b) un-checking one or more sub-
`options contained within option 1 or 2.
`
`The ITU Patent Information database also contains a record of General Patent Statement and
`Licensing Declarations.
`
`
`
`
`
`
`
`
`
`
`
`6
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`
`
`

`

`Case 1:23-cv-01237-GBW Document 11-2 Filed 12/11/23 Page 11 of 20 PageID #: 1930
`
`ITU-2 Notification
`
`
`
`Text shall be added to the cover sheets of all new and revised ITU-T and ITU-R
`Recommendations, where appropriate, urging users to consult the ITU Patent Information
`database. The wording is:
`
`"ITU draws attention to the possibility that the practice or implementation of this
`Recommendation may involve the use of a claimed Intellectual Property Right.
`ITU takes no position concerning the evidence, validity or applicability of
`claimed Intellectual Property Rights, whether asserted by ITU members or others
`outside of the Recommendation development process.
`
`As of the date of approval of this Recommendation, ITU [had/had not] received
`notice of intellectual property, protected by patents, which may be required to
`implement this Recommendation. However, implementers are cautioned that this
`may not represent the latest information and are therefore strongly urged to consult
`the ITU Patent Information database."
`
`II.2
`
`Specific provisions for ISO and IEC
`
`
`
`ISO/IEC-1 Consultations on draft Deliverables
`
`All drafts submitted for comment shall include on the cover page the following text:
`
`"Recipients of this draft are invited to submit, with their comments, notification of any
`relevant patent rights of which they are aware and to provide supporting documentation."
`
`
`
`ISO/IEC-2 Notification
`
`A published document shall contain the following notice in the foreword:
`
`"[IEC/ISO] draws attention to the possibility that the implementation of this
`document may involve the use of (a) patent(s). [IEC/ISO] takes no position
`concerning the evidence, validity or applicability of any claimed patent rights in
`respect thereof.
`
`As of the date of publication of this document, [IEC/ISO] [had/had not] received
`notice of (a) patent(s), which may be required to implement this document.
`However, implementers are cautioned that this may not represent the latest
`information which may be obtained from the patent database available at
`www.iso.org/patents [and/or] https:patents.iec.ch.
`
`ISO [and/or] IEC shall not be held responsible for identifying any or all such
`patent rights."
`
`
`
`
`
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`
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`
`
`
`7
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`

`

`Case 1:23-cv-01237-GBW Document 11-2 Filed 12/11/23 Page 12 of 20 PageID #: 1931
`
`
`
`
`ISO/IEC-3 National Adoptions
`
`WD 1
`
`Patent Declarations in ISO, IEC and ISO/IEC Deliverables apply only to the ISO and/or IEC
`documents indicated in the Declaration Forms. Declarations do not apply to documents that
`are altered (such as through national or regional adoption). However, implementations that
`conform to identical national and regional adoptions and the respective ISO and/or IEC
`Deliverables, may rely on Declarations submitted to ISO and/or IEC for such Deliverables.
`
`
`
`8
`
`
`
`

`

`Case 1:23-cv-01237-GBW Document 11-2 Filed 12/11/23 Page 13 of 20 PageID #: 1932
`
`
`
`ANNEX 1
`
`COMMON PATENT POLICY FOR ITU-T/ITU-R/ISO/IEC
`
`The following is a "code of practice" regarding patents covering, in varying degrees, the subject
`matters of ITU-T Recommendations, ITU-R Recommendations, ISO deliverables and IEC
`deliverables (for the purpose of this document, ITU-T and ITU-R Recommendations are referred to
`as "Recommendations", ISO deliverables and IEC deliverables are referred to as "Deliverables").
`The rules of the "code of practice" are simple and straightforward. Recommendations | Deliverables
`are drawn up by technical and not patent experts; thus, they may not necessarily be very familiar
`with the complex international legal situation of intellectual property rights such as patents, etc.
`
`Recommendations | Deliverables are non-binding; their objective is to ensure compatibility of
`technologies and systems on a worldwide basis. To meet this objective, which is in the common
`interests of all those participating, it must be ensured that Recommendations | Deliverables, their
`applications, use, etc. are accessible to everybody.
`
`It follows, therefore, that a patent embodied fully or partly in a Recommendation | Deliverable must
`be accessible to everybody without undue constraints. To meet this requirement in general is the sole
`objective of the code of practice. The detailed arrangements arising from patents (licensing, royalties,
`etc.) are left to the parties concerned, as these arrangements might differ from case to case.
`
`This code of practice may be summarized as follows:
`
`1
`
`The ITU Telecommunication Standardization Bureau (TSB), the ITU Radio-communication
`Bureau (BR) and the offices of the CEOs of ISO and IEC are not in a position to give
`authoritative or comprehensive information about evidence, validity or scope of patents or
`similar rights, but it is desirable that the fullest available information should be disclosed.
`Therefore, any party participating in the work of ITU, ISO or IEC should, from the outset,
`draw the attention of the Director of ITU-TSB, the Director of ITU-BR, or the offices of the
`CEOs of ISO or IEC, respectively, to any known patent or to any known pending patent
`application, either their own or of other organizations, although ITU, ISO or IEC are unable
`to verify the validity of any such information.
`
`2
`
`If a Recommendation | Deliverable is developed and such information as referred to in
`paragraph 1 has been disclosed, three different situations may arise:
`
`2.1 The patent holder is willing to negotiate licences free of charge with other parties on a
`non-discriminatory basis on reasonable terms and conditions. Such negotiations are left
`to the parties concerned and are performed outside ITU-T/ITU-R/ISO/IEC.
`
`2.2 The patent holder is willing to negotiate licences with other parties on a non-
`discriminatory basis on reasonable terms and conditions. Such negotiations are left to
`the parties concerned and are performed outside ITU-T/ITU-R/ISO/IEC.
`
`2.3 The patent holder is not willing to comply with the provisions of either paragraph 2.1 or
`paragraph 2.2; in such case, the Recommendation | Deliverable shall not include
`provisions depending on the patent.
`
`
`
`
`
`
`
`9
`
`

`

`Case 1:23-cv-01237-GBW Document 11-2 Filed 12/11/23 Page 14 of 20 PageID #: 1933
`
`
`
`
`3
`
`Whatever case applies (2.1, 2.2 or 2.3), the patent holder has to provide a written statement
`to be filed at ITU-TSB, ITU-BR or the offices of the CEOs of ISO or IEC, respectively, using
`the appropriate "Patent Statement and Licensing Declaration" Form. This statement must not
`include additional provisions, conditions, or any other exclusion clauses in excess of what is
`provided for each case in the corresponding boxes of the form.
`
`10
`
`
`
`

`

`Case 1:23-cv-01237-GBW Document 11-2 Filed 12/11/23 Page 15 of 20 PageID #: 1934
`
`
`
`ANNEX 2
`
`PATENT STATEMENT AND LICENSING DECLARATION FORM FOR
`ITU-T OR ITU-R RECOMMENDATION | ISO OR IEC DELIVERABLE
`
`
`
`
`
`
`
`Patent Statement and Licensing Declaration
`for ITU-T or ITU-R Recommendation  ISO or IEC Deliverable
`
`This declaration does not represent an actual grant of a license
`
`Please return to the relevant organization(s) as instructed below per document type:
`
`Director
`Radiocommunication Bureau
`International Telecommunication
`Union
`Place des Nations
`CH-1211 Geneva 20,
`Switzerland
`Fax: +41 22 730 5785
`Email: brmail@itu.int
`
`Director
`Telecommunication
`Standardization Bureau
`International Telecommunication
`Union
`Place des Nations
`CH-1211 Geneva 20,
`Switzerland
`Fax: +41 22 730 5853
`Email: tsbdir@itu.int
`
`Patent Holder:
`
`Legal Name
`Contact for license application:
`Name &
`
`Department
`Address
`
`Tel.
`Fax
`E-mail
`URL (optional)
`
`
`
`
`
`
`
`
`Secretary-General
`International Organization for
`Standardization
`8 Chemin de Blandonnet
`CP 401
`1214 Vernier, Geneva
`Switzerland
`Fax: +41 22 733 3430
`Email:
`patent.statements@iso.org
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`General Secretary
`International Electrotechnical
`Commission
`3 rue de Varembé
`CH-1211 Geneva 20
`Switzerland
`Fax: +41 22 919 0300
`Email:
`inmail@iec.ch
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`Document type:
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`DECLARATION PAGE 1
`
`

`

`Case 1:23-cv-01237-GBW Document 11-2 Filed 12/11/23 Page 16 of 20 PageID #: 1935
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`
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`Licensing declaration:
`The Patent Holder believes that it holds granted and/or pending applications for Patents, the use of which would
`be required to implement the above document and hereby declares, in accordance with the Common Patent Policy
`for ITU-T/ITU-R/ISO/IEC, that (check one box only):
`
`
`
`The Patent Holder is prepared to grant a Free of Charge license to an unrestricted number of
`1.
`applicants on a worldwide, non-discriminatory basis and under other reasonable terms and conditions
`to make, use, and sell implementations of the above document.
`Negotiations are left to the parties concerned and are performed outside the ITU-T, ITU-R, ISO or
`IEC.
`Also mark here __ if the Patent Holder's willingness to license is conditioned on Reciprocity for the
`above document.
`Also mark here __ if the Patent Holder reserves the right to license on reasonable terms and
`conditions (but not Free of Charge) to applicants who are only willing to license their Patent,
`whose use would be required to implement the above document, on reasonable terms and
`conditions (but not Free of Charge).
`The Patent Holder is prepared to grant a license to an unrestricted number of applicants on a
`2.
`worldwide, non-discriminatory basis and on reasonable terms and conditions to make, use and sell
`implementations of the above document.
`Negotiations are left to the parties concerned and are performed outside the ITU-T, ITU-R, ISO, or
`IEC.
`Also mark here __ if the Patent Holder's willingness to license is conditioned on Reciprocity for the
`above document.
`3.
`The Patent Holder is unwilling to grant licenses in accordance with provisions of either 1 or 2
`above.
`In this case, the following information must be provided to ITU, ISO and/or IEC as part of this
`declaration:
`-
`granted patent number or patent application number (if pending);
`-
`an indication of which portions of the above document are affected;
`- a description of the Patents covering the above document.
`Free of Charge: The words "Free of Charge" do not mean that the Patent Holder is waiving all of its rights with
`respect to the Patent. Rather, "Free of Charge" refers to the issue of monetary compensation; i.e., that the Patent
`Holder will not seek any monetary compensation as part of the licensing arrangement (whether such
`compensation is called a royalty, a one-time licensing fee, etc.). However, while the Patent Holder in this
`situation is committing to not charging any monetary amount, the Patent Holder is still entitled to require that the
`implementer of the same above document sign a license agreement that contains other reasonable terms and
`conditions such as those relating to governing law, field of use, warranties, etc.
`
`
`
`
`
`Reciprocity: The word "Reciprocity" means that the Patent Holder shall only be required to license any
`prospective licensee if such prospective licensee will commit to license its Patent(s) for implementation of the
`same above document Free of Charge or under reasonable terms and conditions.
`
`Patent: The word "Patent" means those claims contained in and identified by patents, utility models and other
`similar statutory rights based on inventions (including applications for any of these) solely to the extent that any
`such claims are essential to the implementation of the same above document. Essential patents are patents that
`would be required to implement a specific Recommendation | Deliverable.
`
`Assignment/transfer of Patent rights: Licensing declarations made pursuant to Clause 2.1 or 2.2 of the Common
`Patent Policy for ITU-T/ITU-R/ISO/IEC shall be interpreted as encumbrances that bind all successors-in-interest
`as to the transferred Patents. Recognizing that this interpretation may not apply in all