SFF-8027 Rev 1.0 SFF Committee documentation may be purchased. SFF specifications are available at ftp://ftp.seagate.com/sff SAMPLE INTELLECTUAL PROPERTY LETTERS A number of members have asked for examples of letters from companies which recognize their obligation to comply with the SFF patent policy. The retention policy of the SFF Committee is 'no retention', and patent letters received from members are included in the minutes of the mailing cycle in which they were received. There is more than one way to say the same thing and the following examples are not templates but are provided for the guidance of companies which have intellectual property associated with any SFF Specification. Letters can be specific to a specification or broad enough to cover all SFF specifications. If the terms of a license are generic and applicable to all parties, the terms may be defined in the letter. Sample IP Letters Page 1 SFF-8027 Rev 1.0 Extract from July 26, 2001 minutes: "Tyco/AMP submitted a letter in compliance with the SFF Patent Policy which is included in the mailing. This letter is specific to HSSDC-2/SFF- 8421." "The text was praised for being both concise and complete, and suitable to be a generic letter that can apply to all SFF specifications. It was recommended that members with intellectual property considerations consider submitting letters with similar text and a subject title of SFF Specifications. Such a letter would then serve to cover all current and future specifications in which a member has intellectual property considerations." ----------------- May 30, 2001 Re: Tyco Electronics Corporation HSSDC2 copper connector Licensing statement to SFF Committee SFF-8421 Specification Tyco Electronics Corporation POB 3608 Harrisburg PA 17105-3608 Contact person regarding patents and intellectual property matters: Driscoll A. Nina Director Intellectual Property The Whitaker Corporation 4550 New Linden Hill Rd, Suite 450 Wilmington DE 19808 +1-302-633-2793 +1-302-633-2776 d.nina@tycoelectronics.com Dear Mr. Allan, On behalf of the above company, and being authorized by the company to make such representations, we indicate the following: The Whitaker Corporation, a wholly owned Subsidiary of Tyco Electronics Corporation that owns, manages and maintains portions of Tyco Electronics Corporation's Intellectual Property interests, along with Tyco Electronics Corporation hereinafter collectively referred to as "Company", hereby grants a free, irrevocable license to the SFF Committee to incorporate text contained in any Company contributions and any modifications thereof in the creation of an SFF Committee Specification: to the contribution, and at the SFF Committee's sole discretion, to permit others to reproduce in whole or in part the resulting SFF Committee Specification. With respect to any essential patents held or controlled by the Company, pending or anticipated to be filed, necessary to implement the above Specification, a license will be made available to applicants under reasonable terms and conditions that are demonstrably free of any unfair discrimination. Sample IP Letters Page 2 SFF-8027 Rev 1.0 Very truly yours, Driscoll A. Nina Director Intellectual Property Sample IP Letters Page 3 SFF-8027 Rev 1.0 Extract from July 31, 2003 minutes: "Tyco provided a letter of compliance with the SFF Patent Policy, which has been included in the mailing." Note: This later letter was to cover any and all SFF specifications, with no reference to a particular specification as in the 2001 letter. ----------------- July 10, 2003 Re: Tyco Electronics Corporation: Licensing Statement for SFF Specifications Tyco Electronics Corporation POB 3608 Harrisburg PA 17105-3608 Contact person regarding patents and intellectual property matters: Driscoll A. Nina Director Intellectual Property Tyco Electronics AG Amperstrasse 3 9323 Steinach Switzerland +41-71-447-0980 +41-71-447-0495Fx d.nina@tycoelectronics.com Dear Mr. Allan, On behalf of the above-named company, and being authorized by the company to make such representations, we indicate the following: This letter sets forth Tyco Electronics Corporation's ("TEC") patent licensing policy regarding any SFF Specification, current or future. TEC is not willing to waive its rights in its relevant, essential patent and patent applications (collectively "IPR"). However, TEC is willing to negotiate licenses for its IPR on reasonable and non-discriminatory terms and conditions. In particular, TEC is willing to negotiate non-exclusive, worldwide licenses under its IPR to allow the manufacture, use, sale, offer for sale and importation of any portions of any product that implement and are compliant with all relevant portions of the Specification; provided that these licenses may not extend to any part or function of a product that is not required to implement or comply with the Specification. TEC's license grant may be conditioned upon the licensee's grant of a reciprocal license under the licensee's IPR and IPR owned by parties with which the license is affiliated. In assessing what terms are reasonable, TEC may refer to the royalty rates that a potential licensee has set for its own IPR and IPR of parties with which it may be affiliated. TEC also reserves the right to grant licenses to its IPR as a part of a cross- license with any other party. Sample IP Letters Page 4 SFF-8027 Rev 1.0 TEC has not performed a patent search of its patent portfolio for the purpose of determining whether TEC has any IPR to any existing or pending SFF Specification. With this letter, TEC submits there is no further obligation to search its patent portfolio for future specifications. Please contact me regarding any licensing matters. Very truly yours, Driscoll A. Nina Director Intellectual Property Sample IP Letters Page 5 SFF-8027 Rev 1.0 Extract from September 30, 2001 minutes: "Finisar submitted a letter in compliance with the SFF Patent Policy which is included in the mailing. This letter is specific to SFF-8472." ----------------- August 2, 2001 Mr. Dal Allan SFF Committee 14426 Black Walnut Ct. Saratoga, CA 95070 Dear Mr. Allan, Regarding the document, SFF-8472, "Digital Diagnostic Monitoring Interface for Optical Transceivers", Finisar believes that certain implementations of the proposed standard do not require any Finisar intellectual property. However, some implementations may, and Finisar intends to make available to all interested parties a license whose scope includes exclusively the monitoring and identification functions described in the proposed standard. The license will be made available in a manner consistent with the SFF patent policy - namely, "under reasonable terms and conditions that are demonstrably free of any unfair discrimination." Questions may be directed to me, Dan Kane. Sincerely, Dan Kane Finisar Corporation 1308 Moffett Park Dr Sunnyvale CA 94089 Sample IP Letters Page 6 SFF-8027 Rev 1.0 Extract from May 31, 2006 minutes: ----------------- April 26, 2006 Mr. Dal Allan SFF Committee 14426 Black Walnut Ct. Saratoga, CA 95070 Statement to the SFF Committee regarding draft SFF-8432 Rev 1.2 Specification for Improved Pluggable Form Factor. Dear Mr. Allan, Finisar believes that certain implementations of the draft SFF-8432 standard may require Finisar intellectual property disclosed and claimed in US patent application publication US 2005/0179095 A1. Finisar intends to make this technology available to interested parties on reasonable and non-discriminatory license terms consistent with the SFF patent policy. The scope of these licenses will include those patent claims that are required to implement the SFF-8432 standard. Patent claims covering technology not required to implement this standard shall remain proprietary to Finisar, although certain of such claims may be licensed on commercial terms to be negotiated by the individual licensing party. Parties interested in obtaining a license should contact Finisar's designated representative at the address indicated below. Gabe Kralik General Counsel Finisar Corporation 1389 Moffett Park Drive Sunnyvale, Ca. 94089-1133 Telephone: (408) 542-3853 Facsimile: (408) 542-3885 Email: gabe.kralik@finisar.com Regards, Lew Aronson Chief Scientist Finisar Corporation lew.aronson@finisar.com Sample IP Letters Page 7