VSI recasts patent policy to lure IP titans

During its two-and-a half year history, the alliance has been hobbled due to lack of participation by the companies with the largest silicon IP portfolios. That's because until now, VSI's "opt-out" policy has demanded that companies specifically declare the IP for which they would not assert patent rights.

Following consultations with Silicon Integration Initiative (SI2) ASIC Council members, VSI is adopting an "opt-in" policy that's based on the IEEE approach. Under it, companies need only call out IP they wish to contribute. Further, a "reciprocal I P protection agreement," which was a promise to not make certain legal claims related to IP, is no longer mandatory for participation in VSI's Development Working Groups (DWGs).

One of the largest owners of silicon IP, IBM Microelectronics, is taking a fresh look at VSI as a result. "We're very excited," said Bruce Beers, director of ASIC products for IBM. "VSI still has a very good premise, and has now removed the flaws and shackles to the point where maybe now it can really take off as something that can happen."

Though VSI made enough changes to its patent policy in 1997 so that ASIC Council members joined, those companies have mostly shied away from the DWGs, which is where the real work is done. As these players join the DWGs, VSI will gain more credibility — but it's also possible that existing work will be reassessed or delayed as the new companies add their input. The SI2 ASIC Council includes IBM, LSI Logic, Lucent, Motorola, NEC, Texas Instruments and VLSI Technology.

Andy Graham, SI2 president, said VSI's new policy "takes the burden away from any DWG participant to protect any IP they may own." As such, he said, it clears the way for ASIC Council members to make a "proactive" choice to contribute IP to the standards process.

Both Beers and Graham said that Howard Sachs, who took over as VSI president last year, responded very quickly to ASIC Council member concerns on the patent issue. Beers said that VSI's policy change followed a "very frank face-to-face" SI2 meeting in November, and came much more quickly than he expected.

Gary Smith, EDA analyst at Dataquest Inc. (San Jose, Calif.), said the policy change will help, but that VSI still has a lot of work ahead of it. "They've run into a lot of problems getting things out, and they're going to have to rethink the whole organization," Smith said. The basic problem, he noted, is that it takes so long to get standards out that they're usually obsolete by the time it happens.

Opting in and out
Sachs, who also serves as vice president of LSI technologies at Fujitsu Microelectronics, noted that VSI's opt-out patent policy started with noble intentions. "The idea was to have people band together, provide these specs and agree not to sue one another," he said. "The problem is that there are some companies who have a lot of IP. Just the logistics of going through their patent portfolios was a very serious problem."

The opt-out policy, combined with the reciprocal IP protection agreement, made it impossible for IBM to join DWGs, Beers said. "It was basically an up-front commitment to open large parts, if not all, of your IP portfolio with no protection or royalty provisions."

As a result, Beers noted, DWGs like the on-chip bus working group have been putting together standards "without the participation of guys who could really bring some interesting stuff to it, like IBM and TI."

Sachs described the new opt-in policy as a major shift. "If you're working on a DWG and you wan t to contribute IP, then you give some sort of licensing terms — it's a letter of assurance that you're granting a non-discriminatory license." And it's easy to accept, he said, because it's based on the IEEE patent policy that large electronics companies — and their lawyers — are familiar with.

Sachs said DWG members can still optionally sign the reciprocal IP protection agreement, and that members who have joined under the old opt-out scheme will remain members under that policy. But any new DWG members will join under the opt-in policy.

While the reciprocal IP protection agreement was a "show stopper" earlier, it becomes a "moot point" with the policy shift, Graham noted.

No ASIC Council member has publicly committed to joining any specific DWG, although Beers said IBM is very interested in groups that are addressing the on-chip bus, test and system-level design.

"It will take some time to get participation in the DWGs geared up," said Graham. "It would be better to check back in two to three months."

VSI currently includes more than 200 member companies and has released four published specifications, with eight more planned for 1999.