During this period another interesting incident occurred which relates to the story. As an engineer at Intel within the mobile group (we designed the processors and chipsets for notebook computers), I had many patents, and my illustrious leader, Stephen Nachtshem (the Intel VP/General Manager of the Mobile and Handheld group), asked me to attend an executive meeting on patents which he couldn’t make.
I went to a large conference room a bit early and sat down. A couple of minutes before it started in walked Gordon Moore and Andy Grove and sat down at the end of the table, pretty close to me. While I had been in past meetings with executives, I was always psyched at being in a meeting with Gordon Moore (he helped Robert Noyce invent the planar transistor/integrated circuit), and here I would be at a meeting with Gordon and Andy; Very cool.
The meeting covered the legal group’s process for filing patents. Evidently there were many more patents than Intel had lawyers, so they contracted out many of the patent applications to contract lawyers. I had been through this process many times, and was troubled about a patent I had been working on with a contract lawyer about 2-3 years ago which never got filed. In fact the lawyer just kind of disappeared off the face of the earth. About 2 years later I was presented with the partially finished patent application and asked if I wished to still file the patent. I indicated that yes, it was an important patent and what had happened? Turns out the lawyer had left the legal firm we were contracting with, and when her desk was given to another lawyer 2 years later, they had found the patent application in the desk drawer. Earlier I discovered that our competition was suing Intel on a technology my patent would have been prior art on.
So I raised my hand, and the lawyer giving the presentation stopped, recognized me, and I asked a question.
“Since you have all of these contract lawyers working on patent applications, do you have a database that tracks these patents?”.
The lawyer looked a little confused and asked me to elaborate. I explained that since these patent applications are going to external contract lawyers, shouldn’t we be recording what patents were being prepared, when and whom the applications have been sent to. This would allow Intel to track the status of patents, and discover if any were lost or behind schedule. The lawyer indicated that no they did not have such a database and continued.
Then something unnatural happened. Gordon Moore, one of the nicest, kindest people I have ever met, said “what do you mean you don’t have a database”. And it went downhill from there. Gordon started yelling at the lawyer in a very loud voice and started standing up. Andy Grove quickly stood up and put his hand on Gordon’s shoulder and said, it’s OK Gordon, I’ll take care of this.
Gordon sat down, and Andy started yelling at the lawyer. I was sitting there thinking, how cool is this, I’m in a meeting with Andy Grove and Gordon Moore; glad I’m not that lawyer! All of the sudden Andy Grove’s spittle landed on my notebook (there was a lot of screaming occurring, and I was close to Andy); I circled it and wrote “Andy Grove’s spittle”.
In anycase, I came to work the next day and as I was walking to my office Stephen Nachtsheim walked up to me and asked.
“Jim, what exactly happened at that meeting I sent you to yesterday.” I told Stephen about the lawyer going over the patent process, and my question, and how Gordon started asking questions, and got angry, and then how Andy was asking questions, and got angry. I showed Stephen Andy Grove’s spittle on my notebook. Stephen had a very puzzled look on his face and replied. “Don’t worry about any of this, I’ll take care of it.
In February of ’98, while the "name development" was taking place, the signing of the agreements between the different companies was to take place. We had been negotiating since December ‘97 with Ericsson, Nokia, IBM, Toshiba (and of course Intel), and I had an agreement with every company to sign the contracts except IBM.
The issue had to do with Intellectual Property agreement within the agreement. It basically said at a high level, that if you had any IP that would read on the technology, you agreed not to sue other members of the SIG; this was referred to as an “Open IP” agreement. It was very difficult for Ericsson and Nokia to sign this agreement, because in the telecommunications world you licenced technology using a “reasonable and non-discriminatory” license.
While non-discriminatory meant you could not choose who to license or not license to (a good thing), but the word “reasonable” was not very quantitative. What is reasonable to one company can be considered unreasonable to another company. Additionally running a SIG under this sort of agreement leads to technologies being presented because of IP positions (hoping to get a long-term royalty stream).
The open IP was different in that you would not get a royalty stream from the technology, and the engineers can pick technology based on merit versus their companies IP positions.
In this case IBM did not want to adopt an Open IP license for the technology, it was against their IP policies. Additionally the IBM IP was owned by the legal group within IBM, which had it’s own seperate profit and loss (P&L). So there was a rift in IBM where the legal group indicated IBM would never sign an open IP license, and the mobile group (who designed and manufactured IBM notebooks) wanted to help develop the Bluetooth technology. To further make things worse, my lawyer bet me that IBM would never sign that contract in a million years (Brian Epstein, same lawyer I used for the trademark search).
So we had a meeting scheduled at the Ericsson site in Raleigh North Carolina to sign the contracts, but I really wasn’t sure what to do as IBM indicated that they wouldn’t sign the contracts, but we needed to get the contracts signed to start the technical work.
I had the brilliant (yet dumb) idea that I would get the four companies to sign the agreement, and would continue to negotiate with IBM and bring them in as promoters later on. To this end, I modified the contracts and removed IBMs name from the contracts. As the official SIG name had not been selected yet, these contracts were penned under the name of the “Bluetooth SIG”.
Johann Weber, one of Stephen Nachtsheim’s European technical employees very close to the European communications busiesses, and I arrived at the Raleigh site and I passed out the contracts on the tables for everyone to review and sign. Johann was an employee based in Intel Munich, and had been helping Stephen, Simon and I to get all of the companies together to help for the SIG. Johann basically knew all of the executives personally and was a great guy to have helping you.
So Johann and I were standing around talking as everyone was settling in when the VP (Adalio Sanchez) and Lawyer from IBM stepped up.
“Hey Jim, I was just looking over the contracts, and they look pretty good, but I noticed that IBM was left off the contracts, there is no place to sign”.
Johann kind of glared at me. Wow, I probably should have told him earlier that I had removed the names. I explained that I had been negotiating in good faith with the IBM lawyers (the main negotiator was standing next to him) for 2-3 months, and they indicated they would never sign the contracts. As such I needed to start the technology work, and thought we would go ahead and sign the promoter agreements with the companies still willing to go forward, and would continue negotiating with IBM and bring them in the SIG as a promoter when we reached an agreement.
Adalio Sanchez thanked me for the explanation and indicated that he would like to talk to his lawyer in private. They then went into an empty conference room. I looked at Johann and he smiled at me and said “you are soo fired”. I thought “I am so fired”. Then there was some very loud screaming taking place in that conference room. Orjan (the Ericsson PM) walked up to enter the conference room (we were at an Ericsson facility), heard the screaming and said “I think I’ll come back later”.
The screaming continued for another five minutes or so. Johann and I just stood there in silence. All I could think was “I’m so fired”. Finally the screaming stopped and Adalio and his lawyer came out of the conference room. Adalio had a huge smile on his face, while the lawyer was beat red, tousled hair, and was in a bad mood. Adalio said: “Jim, I’m sorry about the confusion, can you go and add IBM’s name back to the contracts as we’ll be signing them today.”, and he walked away. The lawyer had remained behind and told me something to the effect: “You think you won this round, but when you go to approve the spec IBM will never sign it” and stormed off.
Johann said “Wow”, and I went to figure out how to update and print out the contracts. So while I was waiting for the contracts to print, I called my lawyer buddy Brian and told him “Guess what, IBM just told me they are signing the contracts”. He was in total disbelief, what wonderful news. Told him I had to run and grabbed the new “Bluetooth” contracts, distributed them, and got them signed.