Z-Wave Alliance, Inc.
INTELLECTUAL PROPERTY RIGHTS POLICY
As adopted on August 13, 2020
Amended January 6, 2021; Amended June 16, 2022
1. IPR Generally
1.1 Purpose
Z-Wave Alliance Inc. (the “Alliance”) has adopted this Intellectual Property Rights Policy (the “Policy”) and related rules of procedure (the “Rules of Procedure”) in order to minimize the possibility of inadvertent infringement of the IPR of Members and third parties using or implementing any Alliance Specifications.
1.2 Applicability
All Members, all Member Representatives, and all third parties, if any, attending any technical process meeting are subject to this Policy and the Rules of Procedure.
1.3 Software Scope
In addition to text documents, this IPR Policy applies to any (a) Software developed by a Working Group for inclusion in a Draft Specification or Specification, and (b) any Software reference implementation of all or part of a Draft Specification or Specification. To the extent that any Working Group develops any other Software (e.g., tools) submission and licensing terms relating to such Software shall be determined at the time that the Working Group is created and reflected in its Charter.
2. Definitions
Alliance Software License
The form of license attached to this Policy as Appendix C.
Certified Product
A product certified to comply with all Required Elements of a Specification within device type. For the avoidance of doubt, an Implementer may, but is not required, to display an appropriate Alliance certification mark in relation to a Certified Product, subject to execution of such certification mark license agreement, and payment of such fee, if any, as the Alliance may from time to time require.
Charter
A Document specifying the technical purpose and parameters of a Working Group.
Defensive Revocation
A Member or Participant (“Licensor”) is entitled to revoke any License granted to a licensee under the Policy if such licensee asserts a Necessary Claim under the same Specification Owned by it against any Implementer (including the Licensor), where infringement of such Necessary Claim results solely from the implementation of the Specification.
Draft Specification
A technical specification, or revision of a Specification, or other material that is produced by a Working Group that has not yet been approved as a formally adopted Specification.
Implementers
Those Members in good standing who use or implement a Specification or are in the process of implementing a Specification.
Initial Z-Wave Specification
Version .7 of the Z-Wave Specification as originally created by Silicon Laboratories and transferred to Z-Wave Alliance, Inc.
IPR
An abbreviation of “Intellectual Property Rights.” As used in this Policy, IPR means claims in patents and patent applications and copyrights, but excludes trademarks and trade secrets.
License
An agreement to license Necessary Claim(s) to any Implementer with respect to a Certified Product, on an irrevocable (except as provided for as a Defensive Revocation) perpetual, non-exclusive and worldwide basis, with such license permitting the licensee to make, have made, use, reproduce, market, import, export for combination abroad, offer to sell and sell, and to otherwise distribute products that implement such Necessary Claim(s) without charge and, with respect to any Software, upon terms compatible with the Alliance Specification License.
Member
An Alliance member of any class.
Necessarily Infringed
Infringement by an implementation of a Required Element of a Specification, there being no reasonable alternative way to implement that element of the Specification without resulting in such infringement.
Necessary Claims
Those claims under patents and/or patent applications anywhere in the world that would be Necessarily Infringed by the implementation of the Required Elements of a Specification. Necessary Claims do not include claims covering reference implementations or implementation examples.
Non-discriminatory
Available to an Implementer under terms that are substantially identical to the terms made available to other Implementers of the same Specification under similar circumstances.
Other Work Product
Any Working Group deliverable that is not a Draft Specification or Specification. Unless the context otherwise requires, any reference to the adoption of Other Work Product shall also be deemed to apply to the adoption of an amendment to that Other Work Product as well. For the avoidance of doubt, only Sections 2 and 4 of this Policy apply to Other Work Product.
Owned
With respect to any Necessary Claim(s), the word “Owned” includes any Necessary Claim(s) that are (a) owned by a Member or any of its Related Parties, or (b) controlled but not Owned by the Member or any of its Related Parties in question, provided that the entity in question is (i) entitled to sublicense such Necessary Claim(s), and (ii) would not incur an obligation to pay any royalty or other compensation to the true owner of such Necessary Claim(s) in connection with a sublicense.
Participant
Any Member or, if permitted, non-Member, that enrolls to take part in a Working Group that has not withdrawn from such Working Group within 60 days of the date upon which that Working Group was chartered.
Reasonable
License terms relating to Necessary Claims that are not more onerous than could be obtained by the Owner of such claims in the open market absent their inclusion in a Specification.
Related Party
Any entity that is directly or indirectly controlled by the subject party. For this purpose, “control” means beneficial ownership or the right to exercise more than 50% of the voting power for the entity.
Representative
Any individual that acts on behalf of a Member in connection with a Working Group, or in the completion of any form to be delivered to the Alliance pursuant to the Policy or the Rules of Procedure.
Required Element
Any element of a Draft Specification or Specification, including without limitation any element that has been designated as “optional,” “alternate” or otherwise. For the avoidance of doubt, when a Draft Specification or Specification requires an Implementer to implement one of two or more alternative elements, then all such elements shall be deemed to be “Required Elements.”
Software
Any combination of: text listing commands to be interpreted or to be compiled, translated, or assembled into an executable computer program; text listings that describe data structures; text listing that specifies an Application Programming Interface (API) used to interact with some executable computer service (including access from an executable computer program, library, or remotely via a telecommunications interface); binary data files; executable, object, or other intermediate executable code files; and text listings that describe the behavior of modeled devices or objects (e.g., XML, YANG, etc.).
Specification
A document produced by a Working Group and approved by the Board of Directors that outlines Required Elements a product must have to be a Certified Product, including any Software reference implementation. Unless the context otherwise requires, any reference to the adoption of a Specification shall also be deemed to apply to the adoption of an amendment to a Specification as well.
Submission
An affirmative and knowing contribution of material with the intention that such material be considered for inclusion in a Specification, Reference Implementation, or Other Work Product that is (a) accompanied by a Submission of Technology form in the form attached to the IPR Policy as Appendix A, or (b) made by a Participant at any time during a Working Group meeting, where such contribution has been recorded in the minutes of such meeting, and where the maker of the contribution has not objected to such text after the minutes have been posted for review by all Working Group Participants. Submissions of Software or software for inclusion in a Reference Implementation must additionally be accompanied by a completed Software Submission form in the form attached to this IPR Policy as Appendix E.
Submitter
Both a Member as well as any representative(s) of a Member, and any other person or entity making a Submission.
Working Group
A group of four or more Members with a Charter to produce a Specification or Other Work Product
3. Patents
3.1 License Obligations Regarding Initial Z-Wave Specification
Every Member, by joining the Alliance, is deemed to have agreed to provide a License to all Implementers to all patent claims at any time Owned by it that are Necessary Claims in the Initial Z-Wave Specification or that become Necessary Claims by reason of any revision of such Specification developed while it is a Member. The provisions of Sections 3.2 and 3.3 shall apply to any other Draft Specification developed and Specification approved by the Alliance.
3.2 Elections by Submitters at Time of Submission
Any Submitter making a Submission must agree that if the Draft Specification in connection with which the Submission is made is finally approved by the Alliance, the Submitter and each of its Related Parties will provide a License to all IPR Owned by it or any of its Related Parties and included in its Submission that become Necessary Claim(s), without compensation and otherwise on a RAND basis, to all Implementers. All Submissions must be accompanied by a written declaration in the form of Appendix A to this Policy.
3.3 Member Elections at Time of Final Committee Vote
(a) Every Member (whether or not a Participant) must, at the time that a Draft Specification is posted for final Participant comments, elect one of the following:
i. Royalty Free RAND License. Agree that if the Draft Specification is finally approved by the Alliance, the Member and each of its Related Parties will provide a License to all Necessary Claim(s) Owned by it, without compensation and otherwise on a RAND basis, to all Implementers; or
ii. Withholding of License as to Identified Necessary Claims. Identify those Necessary Claims owned by it and/or its Related Parties under the Draft Specification, in its then-current form, and the portion of the Draft Specification that would result in such infringement, and indicate that no guarantee of License rights is being made (or that such rights will in fact be denied in some or all cases) as to such Necessary Claims by it and its Related Parties. In the case of Necessary Claims under non-public patent applications, the disclosure of such claims need not be in such detail as would disclose any trade secrets;
provided, however, that an election form returned pursuant to this Section 3.3 by a Submitter shall only apply to those portions of a Draft Specification that are not based on its own Submission(s). The Submitter’s original undertakings under Section 3.2 above shall continue to be binding as to the portions of the Draft Specification that are based on its Submission(s).
Note: A Member may elect different options above with respect to different Necessary Claims, but its elections, taken together, must apply to all Necessary Claims Owned by it and its Related Parties.
(b) No elections under this Section 3.2 may be required to be made in less than 60 days from the date that a Draft Specification has been posted for final comments, and electronic notification of such posting has been sent to each Member. All elections by Members shall be made pursuant to a written election in the form of Appendix B to this Policy.
3.4 Patent Searches
In no event shall the Alliance, nor any Representative, Member or Related Party, be obligated to conduct any patent searches regarding any Necessary Claims that may be infringed by any implementation of a Draft Specification or Specification.
3.5 Transfers of Necessary Claims
(a) Each Member and Participant agrees that it will not transfer, or cause any of its Related Parties to transfer, and has not transferred, any patents or patent applications having Necessary Claims under any Draft Specification or Specification solely for the purpose of circumventing such entity’s obligations under this IPR Policy.
(b) No party bound by this Policy shall transfer any patent or patent application having Necessary Claims, except to a successor that agrees in writing to (i) be bound by all commitments previously made by the direct or indirect transferor(s) under this Policy with respect to such patent or patent application, and (ii) include the obligations set forth in this Section 3.5 in any document of transfer relating to such patent or application in the event that it later transfers the same.
3.6 Patent Claims Revealed After Publication
In the event that a Necessary Claim is first revealed by a third party following adoption and publication of a Specification, the Specification in question shall be referred back to the relevant technical committee for such Specification for consideration and possible action.
3.7 Document Notations
All electronic and tangible copies of Draft Specifications that are subject to public comment, and all Specifications, shall include the relevant legend specified on Appendix D.
3.8 Consequences of Failure to Respond or to Knowingly Withhold Information
(a) In the event that a Member:
(i) fails to timely return a signed and completed election form as required by Section 3.3(a) above; or
(ii) does return a signed and completed election form, but later asserts a Necessary Claim(s) against an Implementer of the Standard in question that was not included in the election form;
then Member shall be deemed to have elected to provide a RAND Royalty Free License to all of its Necessary Claims under the Standard in question (in the case of (i) above), or the Necessary Claim(s) in question (in the case of (ii) above). In the event that such Member shall later bring an infringement action against any Implementer with respect to such a Necessary Claim(s), the Consortium shall have no obligation to intervene, but such Implementer shall be entitled to claim protection, and to assert a complete defense against such action, under this Section 3.5 as a third party beneficiary.
4. Copyrights
4.1 Copyright in Specifications
Subject to Section 4.3 below with respect to Software, the copyright for all Draft Specifications, Specifications, and Other Work Product shall belong to the Alliance.
4.2 Contributions of Copyrighted Materials
Subject to Section 4.3 below with respect to Software, each Submitter who contributes copyrighted materials to the Alliance shall retain copyright ownership of its original work, while at the same time granting the Alliance a non-exclusive, irrevocable, worldwide, perpetual, royalty-free license under the Submitter’s copyrights in its Submission to reproduce, distribute, publish, display, perform, and create derivative works of the Submission based on that original work for the purpose of developing a Draft Specification, Specification or Other Work Product under the Alliance’s own copyright.
4.3 Software
(a) Prior to or at the time of making a Submission of Software to a Working Group for inclusion in a Draft Specification, the Submitter shall complete and submit a Submission Form (Appendix E to this Policy). A Member may submit a single Submission form with respect to all of its Submissions to the Alliance, or a separate Submission form with each Submission.
(b) Each Submitter who makes a Submission of Software to a Working Group for inclusion in a Draft Specification shall have the right to assign the copyright in such Submission to the Alliance, or, at its election, to retain copyright ownership of such Software, while at the same time granting the Alliance and all other Members a non-exclusive, irrevocable, worldwide, perpetual royalty-free license under the Submitter’s copyrights in such Software to redistribute and use the same in source and binary forms, with or without modification, for the sole purpose of developing the Specification.
(c) Once any Draft Specification including Software is declared ready for final comments, each Submitter who made a Submission of Software to that Draft Specification shall, in accordance with the election it made in its Submission Form, either:
(i) transfer its copyright ownership in such Software to the Alliance; or
(ii) grant to the Alliance and any Implementer an Alliance Software License to its copyright interest in such Software.
In the event that a Submitter has elected the first option above, the Alliance shall grant the following copyright grant-back license to the Submitter:
“the Alliance hereby grants to Submitter a non-exclusive, irrevocable, perpetual, worldwide, royalty-free, sublicenseable and transferable copyright license to use, copy, prepare derivative works of, modify, distribute directly or indirectly through multiple tiers, publicly perform and publicly display by all means now known or later discovered, and/or otherwise fully exploit its Software Submission(s) and any derivative works thereof or modifications created thereto for any purpose or use.”
(d) Necessary Claims covering any Software submitted to a Working Group for inclusion in a Draft Specification or Specification shall be subject to the patent licensing requirements of Section 3.1 and transfer requirements of Section 3.6 (above). Notwithstanding the preceding sentence, no other express or implied licenses to any party’s patent rights are granted by this Section 4.3.
(e) Unless otherwise approved by the Board, all Software included in any Draft Specification or specification shall be licensed by the Alliance under the Alliance Software License.
5. Trade Secrets
Except as may be otherwise provided in a Board approved Charter, Working Groups shall operate on a non-confidential basis, and Participants and other Members will not be expected to reveal trade secret information in the course of participation in any Alliance activity, nor will they be asked by the Alliance to sign non-disclosure agreements. The Alliance will not be held responsible for the disclosure of any Member’s or non-Member’s trade secrets, regardless of the circumstances.
6. Trademarks
6.1 Alliance Trademarks
Trademarks created by the Alliance, registered or otherwise, are the property of the Alliance. Use of the Alliance trademarks shall be governed by such policies, procedures and guidelines as may be established and approved by the Alliance from time to time, and applicable law.
6.2 Third Party Trademarks
the Alliance’s use of third-party trademarks, registered or otherwise, shall be governed by such policies, procedures and guidelines as may be established and approved by the owners of such trademarks, and applicable law.
7. Irrevocability and Binding Nature of Commitments
All commitments and Licenses made or granted under this Policy shall be irrevocable, except for those subject to a Defensive Revocation, which shall only become revocable to the extent of such Defensive Revocation.
8. Survival of Obligations
Any License obligations and other obligations that a Member or any of its Related
Parties incurs under this Policy, including with respect to Draft Specifications that become Specifications, shall continue in force after the Member ceases to be a Member for any reason. However, no Member shall become subject to any new License obligations or other Obligations under this Policy after it ceases to be a Member.
(b) the Alliance shall have the right to assign all of its rights under this Policy, and the right to enforce all obligations incurred by Members and Participants under this Policy, to any successor to the mission of the Alliance.
(c) All persons and entities that are intended third party beneficiaries of rights and obligations incurred under this Policy shall remain entitled to enforce the same, notwithstanding any termination, dissolution or winding up of the Alliance.
