Open Source -- The Last Patent Defense?

Feb 11

Written by: Guestblogger
2/11/2014 12:51 PM  RssIcon

Contributed by guest blogger Heather Meeker.

When Richard Stallman wrote in GPL2 “any free program is threatened constantly by software patents” he crystallized the ideological battle between open source software and the software patent business.  In 1991 when GPL2 was released, that battle was in nascent stages.  Today each of open source licensing and software patenting has come to its fullest flower, though their growth generally proceeds on orthogonal axes; most open source software is never accused of patent infringement and most software patent infringement suits don’t accuse open source software. In fact, they so seldom interact directly that the lawyers who practice in these areas do not overlap much.  This means those defending patent infringement suits may not be thinking about the tactics open source patent licensing offers to patent defendants.

In patent litigation defense, every little bit helps.  Today, patent defendants should be paying attention to open source licensing and its possible effect on patent infringement claims.  When you are sued for patent infringement, by anyone other than a pure non-practicing entity, one of your first lines of internal investigation should be the open source position of the plaintiff, and, if you considering retaliatory patent claims, your own open source position as well.

Patent lawyers may be surprised to know that while today, most companies today use open source software, most of them struggle greatly with implementing the internal controls to coordinate their use of open source software with their patent portfolio management.  This means it is quite possible that a company is seeking patent protection, or seeking to enforce patents, that read on open source software the company is using or developing -- a combination of activities that would often not be considered economically rational.

There have been at least two cases where defendants have successfully used open source license enforcement as a defensive tactic in a patent lawsuit.  The first case is the one most often cited to support the enforceability of open source licenses; most people forget that the case started as a patent claim.  In Jacobsen v. Katzer, both parties developed and distributed software for controlling model railroads -- Jacobsen making his JMRI software available under an open source license free of charge, and Katzer (via his company Kamind Associates) selling commercial products under proprietary licenses. Jacobsen received a letter inviting him to license patents owned by Kamind, suggesting the patents were infringed by the JMRI software.  Jacobsen filed a declaratory judgment action asking the court to rule that the patent was invalid due to prior art (or failure to disclose prior art including that of Jacobsen himself) or not infringed. As the patent case progressed, however, Jacobsen discovered that Katzer had copied some of Jacobsen’s open source software and used it in Katzer’s proprietary product, without the proper attributions and license notices.  Jacobsen v. Katzer was finally settled in 2010, but only after becoming the seminal US case on open source licensing -- not patent infringement -- and resulting in a settlement payment by Katzer for violation of the open source license.

In Twin Peaks Software Inc. v. Red Hat, Inc., Twin Peaks Software (TPS), which made proprietary network backup software, sued Red Hat and Red Hat’s recently-acquired subsidiary Gluster. TPS claimed that the GlusterFS software  -- a network file system that aggregated multiple storage shares into a single volume -- violated TPS’s patent covering TPS’s "Mirror File System" (MFS). Red Hat initially responded to the patent infringement suit denying the infringement and asserting that the patent was invalid, but later brought a counterclaim alleging the TPS products incorporated open source software from Red Hat’s product, without complying with GPL.  Red Hat sought an injunction against the TPS products . The case ended soon in a settlement, suggesting that TPS thought better of pursuing its patent claims in light of the facts. 

In both these cases, the patent plaintiff was using open source software of the defendant, and the patent defendant discovered a violation of the applicable open source license that it used to turn the tables on the plaintiff.  In this way, open source license enforcement can be a substitute for a more traditional retaliatory patent claim.  In each case, the plaintiff and defendant were in similar product markets -- a very common context for patent litigation -- which made the use of the defendant’s open source code by the plaintiff likely.  The moral of this story, for a patent plaintiff, is that one should have a robust open source compliance program in place before asserting a patent in a related space.

There are other more subtle tactics as well.  Open source licenses -- particularly those written in the last 10-15 years -- contain two kinds of provisions that bear upon patent litigation strategy.  The first, and more straightforward, is the patent license.  See for instance the license in Apache 2.0, which says: 

 3. Grant of Patent License. Subject to the terms and conditions of this License, each Contributor hereby grants to You a perpetual, worldwide, non-exclusive, no-charge, royalty-free, irrevocable (except as stated in this section) patent license to make, have made, use, offer to sell, sell, import, and otherwise transfer the Work, where such license applies only to those patent claims licensable by such Contributor that are necessarily infringed by their Contribution(s) alone or by combination of their Contribution(s) with the Work to which such Contribution(s) was submitted.

This license only applies to contributors, so a mere re-user or re-distributor of the software does not grant any rights.  However, if a company has contributed to the software, under an open source license or under a similar contribution license, that company may have granted a license that can be used a defense to an infringement claim. 

For example, suppose company P (patent plaintiff) sues company D (defendant) for patent infringement.  However, Company P has contributed software embodying the claims of the asserted patent to a project covered by this license   The Apache 2.0 license is a permissive license, so it may be easy for D to claim it is using software under this license.  Raising this as a license defense can avoid liability -- or at least, create an unexpected defense that will add significant cost to prosecuting the suit.

Now consider the defensive termination provision of Apache 2.0:

If You institute patent litigation against any entity (including a cross-claim or counterclaim in a lawsuit) alleging that the Work or a Contribution incorporated within the Work constitutes direct or contributory patent infringement, then any patent licenses granted to You under this License for that Work shall terminate as of the date such litigation is filed.

This means that by filing the lawsuit, P may have given up any patent licenses it has received from any contributors to the software -- which may include D  or third parties who may be aligned with D.   This provision applies to all licensees, not just contributors.  Even if D is not a contributor with patent claims to bring, bringing the claim exposes P to potential liability.  Pointing this out may shift the balance in favor of the defense.

It’s important to understand that patent defensive termination provisions in different open source licenses have different terms.  Some, like Apache 2.0, are triggered by defensive claims, but some some are not.  Some, like MPL, (or the corresponding “liberty or death” provision in GPL3) also trigger a termination of the copyright license, making them an even more powerful defense tool. 

So, the next time you are sued for patent infringement, you have not done your homework until you know:

--Is the plaintiff using any open source software of yours (related to the patent or not) in violation of the license?

--Does the asserted claim read on any open source software you are using?  If so, would the complaint trigger a defensive termination provision that might apply to the plaintiff?

--Did the plaintiff contribute to any open source project any code under terms that would include a patent license?  If so, do you have a defense under  that license?  

Investigating the last question can be an informational challenge, but it may not be as difficult as you think.  Records regarding contributions may be available publicly, or open source projects may be willing to cooperate if it helps them defeat patent claims accusing their code. 

The drafters of open source licenses intended to use the terms of those licenses to win a war against software patents, and whether they can do that remains to be seen, but in the meantime, don’t pass up the opportunity to use the principles of open source licensing to win your battles as well.

Heather J. Meeker focuses her practice on intellectual property transactions for technology clients. Heather's clients cover a range of industries including software, communications, educational testing, computer equipment and medical devices. She has wide-ranging experience in open source licensing strategies and in intellectual property matters related to mergers and acquisitions.


39 comment(s) so far...


Re: Open Source -- The Last Patent Defense?

It has been over twenty years since I argued with Richard Stallman over the patentability of software inventions. Part of his argument was that there was no "prior art patents" in the software field, and the published prior art was not organized enough to search.

That argument ran hollow then, and it is hollow now. The problem with software patents is that they typically claim methods, which can be broad and lead to unexpected results as the technologies move forward. I think the solution is to properly organize all of the expired software patents to provide a credible defense of public domain, not simply open source.

And what pray tell is a "pure non-practicing entity?" Like, a university?

By Richard Peterson on   2/12/2014 9:25 PM

Re: Open Source -- The Last Patent Defense?

Well said. With the enhancement in technology, the generation requires lot of changes in the softwares which were already patented. This restricts other from modifying it. There should be some agreement in which the one who owns software patent should discuss their ideas or inventions with the experts who are willing to bring change into that, under suitable conditions .This agreement will satisfy both the companies and the consumers.

By JoannSmith on   3/8/2014 6:37 AM


This is a really good read for me, I will keep visiting this blog very often. keep blogging! :)

By marla on   3/14/2014 4:53 AM

oakley holbrook sunglasses

I am obviously SO excited to check this one out!
# oakley holbrook sunglasses

By TrackBack on   3/24/2014 5:21 AM

cheap beats by dre studio

This site is no good !!
# cheap beats by dre studio

By TrackBack on   3/26/2014 7:40 PM

babyliss hair curler Ireland

U should be able to actually play puzzles on ur website, but thats just my suggestion. ur website is kindda boring!
# babyliss hair curler Ireland

By TrackBack on   3/26/2014 7:42 PM

Discount Babyliss UK

Very informative. Hope to see more of like this.
# Discount Babyliss UK

By TrackBack on   3/26/2014 7:44 PM

oakley outlet Singapore

This is a great web site because I love to solve puzzles.
# oakley outlet Singapore

By TrackBack on   3/26/2014 7:46 PM

chanel handbags saks

This site is no good !!
# chanel handbags saks

By TrackBack on   3/26/2014 7:51 PM

louboutin outlet online

Keep up the Attention Grabbing Headlines!
# louboutin outlet online

By TrackBack on   3/26/2014 7:53 PM

babyliss hair curler

Did somebody say puzzles! Well I did when I said puzzles are fun!!!
# babyliss hair curler

By TrackBack on   3/26/2014 7:55 PM

replica Nike Shox

This site is no good !!
# replica Nike Shox

By TrackBack on   3/26/2014 8:00 PM

chanel outlet uk

Very informative. Hope to see more of like this.
# chanel outlet uk

By TrackBack on   3/26/2014 8:04 PM

Cheap Air Max NoMo Singapore sale

Very informative. Hope to see more of like this.
# Cheap Air Max NoMo Singapore sale

By TrackBack on   3/26/2014 8:11 PM

ที่ม้วนผม babyliss

yes.i like it!
# ที่ม้วนผม babyliss

By TrackBack on   3/26/2014 8:31 PM

boucleur babyliss pas cher

thanks for the pic of spinout. I am looking for the classic model.
# boucleur babyliss pas cher

By TrackBack on   3/26/2014 8:33 PM

babyliss pro miracurl italia

Your website is wonderful and I think is one of the best in the Web about puzzles!!!!
# babyliss pro miracurl italia

By TrackBack on   3/26/2014 8:35 PM

oakley outlet Ireland

I look forward to your follow up article.
# oakley outlet Ireland

By TrackBack on   3/26/2014 8:40 PM

christian louboutin clearance

This is a great web site because I love to solve puzzles.
# christian louboutin clearance

By TrackBack on   3/26/2014 8:47 PM

discount chanel handbags

yes.i like it!
# discount chanel handbags

By TrackBack on   3/26/2014 9:09 PM

wholesale Nike Air Max LeBron uk

Rainbow cube. Can you say EASY?!!!
# wholesale Nike Air Max LeBron uk

By TrackBack on   3/26/2014 9:14 PM

chaussures louboutin femme

Rainbow cube. Can you say EASY?!!!
# chaussures louboutin femme

By TrackBack on   3/26/2014 9:16 PM

mulberry outlet york

Thank you! I have been working on this for 2 years now and have come close, but never able to finish it. It now looks beautiful, at least until my son wakes up and starts playing with it.
# mulberry outlet york

By TrackBack on   3/26/2014 9:26 PM

used chanel handbags

Very informative. Hope to see more of like this.
# used chanel handbags

By TrackBack on   3/26/2014 9:53 PM

wholesale chanel handbags

Your website is wonderful and I think is one of the best in the Web about puzzles!!!!
# wholesale chanel handbags

By TrackBack on   3/26/2014 10:01 PM

cheap babyliss hair dryer

thanks for the pic of spinout. I am looking for the classic model.
# cheap babyliss hair dryer

By TrackBack on   3/26/2014 10:04 PM

cheap oakley goggles uk

Rainbow cube. Can you say EASY?!!!
# cheap oakley goggles uk

By TrackBack on   3/26/2014 10:13 PM

oakley frogskin sunglasses

Your website is wonderful and I think is one of the best in the Web about puzzles!!!!
# oakley frogskin sunglasses

By TrackBack on   3/26/2014 10:15 PM

louis vuitton sac 2014

oh yes I saw her post earlier today!!!! YUMM-O!!!!!!! I can鈥檛 wait to try this! And the Sweet potato crust looks amazing!
# louis vuitton sac 2014

By TrackBack on   3/26/2014 10:47 PM

beats australia

This is a great web site because I love to solve puzzles.
# beats australia

By TrackBack on   3/26/2014 11:05 PM

cheap burberry bags

oh yes I saw her post earlier today!!!! YUMM-O!!!!!!! I can鈥檛 wait to try this! And the Sweet potato crust looks amazing!
# cheap burberry bags

By TrackBack on   3/26/2014 11:09 PM

babyliss pro uk

I was wondering if you could help me?
# babyliss pro uk

By TrackBack on   3/26/2014 11:22 PM

Nike shoes South Africa sale

Do you have a actual Rubiks clock that you can lend?
# Nike shoes South Africa sale

By TrackBack on   3/26/2014 11:45 PM

oakley outlet USA

I look forward to your follow up article.
# oakley outlet USA

By TrackBack on   3/26/2014 11:52 PM

cheap oakley sunglasses sale

yes.i like it!
# cheap oakley sunglasses sale

By TrackBack on   3/27/2014 12:08 AM

chanel bags store

thanks for the pic of spinout. I am looking for the classic model.
# chanel bags store

By TrackBack on   3/27/2014 12:33 AM

oakley outlet Netherlands

Did somebody say puzzles! Well I did when I said puzzles are fun!!!
# oakley outlet Netherlands

By TrackBack on   3/27/2014 1:17 AM

babyliss flat iron

Or they can remove the photos from the about us page.
# babyliss flat iron

By TrackBack on   3/27/2014 1:31 AM

ray ban sunglasses ebay aviator

at the outset of 2009, many of us created a super model tiffany livingston [1, 2] predicting the long run fees progression for a number of subcategories among potential buyer along with seller additionally indices significant items : gold, a bit crude gas, alloys, as well as. is not scaled like one popular facet of the difference between customer (brand) bargains pointing to your own qualities and all round user (the manufacturer) expense list. many discrepancies are probably seen as the presence of environmentally safe longer (Quasi ) Linear general trends.
# ray ban sunglasses ebay aviator

By TrackBack on   4/14/2014 12:03 PM

Your name:
Gravatar Preview
Your email:
(Optional) Email used only to show Gravatar.
Your website:
Security Code
Enter the code shown above in the box below
Add Comment   Cancel 

Blog Roll

Indent Example
Sam Ramji
Thoughts from the President of the Board of Directors
Indent Example
Paula Hunter
On the business of OSS and Non Profit Foundations
Indent Example
Stephen Walli
Guest Blogger
Indent Example
Phil Haack
Project leader: NuGet
Indent Example
Bradley Millington
News from the ASP.NET Gallery Manager
Indent Example
Bradley Bartz
WebsitePanel Project Leader
Indent Example
Guest Blogger
Posts from Guest contributors
Indent Example
Posts from DLSI Gallery Manager
Indent Example
Rob Mensching
WiX Project Leader
Indent Example
Eric Schultz
Developer Advocate
Indent Example
Bertrand Le Roy
Orchard project updates and news
Indent Example
Posts from Outercurve Staff