1 Patent Rights & Open Source Software Roger G. Brooks April 29,

2 Patent Issues for Software/Product Developers  Will I or my customer be subject to patent infringement attack based on open source code I have included in my product? From whom?  Is there any realistic way to quantify the patent-related risk to my open source product?  Am I indemnifying customers for patent risk relating to open source code? Do I mean to be?  How can I get my arms around patent risk created by open source code in connection with M&A transactions, product line acquisitions, etc.

3 Open Source Issues for Patent Owners  What code exactly am I licensing?  Am I granting “implied licenses” of uncertain scope?  What interactions with open source code result in patent license grants?  Am I undercutting my proprietary licensing program by granting zero-royalty licenses to open source implementations?  (How) can I narrow the uncertain risks to my revenue-producing patent licensing program or the defensive power of my portfolio?

4 Open Source Licenses: Independent Variables Affecting Patent Rights  “Do I have to use this license?”: “Copyleft” vs. “Academic” licenses  Basis of the grant: Is the patent license grant express, implied, or nonexistent?  Scope of the grant: What exactly am I licensing? –Broad: Bounded by the distribution (GPL) –Narrow: Bounded by the contribution (Apache, EPL) –Who knows? (BSD)

5 GPLv2 “Copyleft”/Broad ProjectsDownstream ObligationPatent Provisions By far the most widely used OS license, accounting for approximately half of all OS projects. Conventional wisdom is that GPLv2 covers code licensed under the GPLv2 and all “derivative works”, as defined by the applicable copyright laws. None, but it is widely asserted that distribution gives rise to an implied royalty free patent license under any of the distributor’s patents to use, sell, modify, etc. the distributed software.

6 GPLv3 “Copyleft”/Broad ProjectsDownstream Obligation Patent Provisions Currently accounts for less than 10% of all OS projects, although it is growing in popularity. Same as GPLv2.Express patent provision: -Triggered by “authorizing use” of code under GPLv3. -Patent license extends to “the contents of” the distributed derivative work. -By its terms, does not apply if distributor just distributes, unmodified, someone else’s code. -Patent license does “not include claims that would be infringed only as a consequence of further modification” by downstream recipients.

7 ProjectsDownstream ObligationPatent Provisions Used by Android and increasing number of OS projects. Contributions to the original work are subject to the terms and conditions of the license, such as royalty-free copyright licenses, but “[t]he Apache license does not require modified versions of the licensed software to be licensed under an open source license”. - “The Apache license... includes a no-charge, royalty-free patent license... [that] applies only to the contributor’s modifications.” - Contributions to official Apache projects such as Android must be subject to Apache 2.0. However, a developer can license any Apache derivative work code to downstream customers under any terms it wants. Apache 2.0 “Academic”/Narrow

8 “Academic”/Uncertain ProjectsDownstream ObligationPatent Provisions Version 2.0 used in approximately 5% of OS projects. Permits redistribution and use “in source and binary forms, with or without modification”, subject to notice and disclaimer requirements. “Imposes no requirement that modifications to covered software be licensed under an open- source license or that licensees distribute the source code for the modified license”. None. Berkeley Software Distribution (“BSD”)