Second, about Bowman v. Monsanto. The logic of Bowman is a pretty serious challenge to what I presented above. It might invalidate certain parts of my argument. Specifically, the question is whether it is even theoretically possible to exhaust the exclusive right to "make" a patented item.
I haven't yet been able to go back and do further research. But what I would be looking for is a case where someone sold an item - like a software application - with a license that says, "make as many copies as you want for internal use." If the buyer then transferred the software, would the new buyer get the right to make copies? I'm not sure. But if so, that would be evidence that a sale could exhaust the right to make.
Third, I thought this was a fun rabbit hole - and, as I said in my talk, a "surprising" result. The surprising bit is important. It is entirely possible - and even likely - that a court could agree with all the precedents I cited, and "distinguish" them to come to a contrary, non-surprising result.
In short, I think exhaustion is more important than people may be considering, but don't take this analysis to the bank.
(Which, I may add, is very disappointing since <> was expressly designed as delimiters to safely contain a link in emails and other plain-text formats, and has always been well-supported as such by other systems.)
I have a hard time seeing how Intel v ULSI applies here. The decision in Intel v ULSI rests quite heavily on the idea that the nexus of the violation of the patent happens during the manufacturing process and not the design process. That is, the court looked at the contract to find that HP was selling the potentially-violating chips.
That fact is hard to extend to GitHub: GitHub is very arguably a mere distributor of software, not providing the "sale" that would exhaust patent rights. The sort of tortured logic you would have to get to to reach this fact is the kind of logic that tends to lose at court, and furthermore is unlikely to find many supporters in open source software legal teams (it would render most of the GPL null and void, for example).
GPL did not handle any patents until version 3. As for version 3, it has a patent grant clause.
Even distributing BSD licensed code by a licensee exhausts patents embodied in it.
(As an interesting case, this might mean patents related to code published as ISO examples voids MP3 patents on specific algorithms used in that code. The question then is if the standard body is a licensee.)
I had the opportunity to hear Van give a talk of his at OSCON last year. His talks are very interesting (he is a former sofware developer, now a patent attorney) and if anyone sees him on a conference schedule, I really encourage them to go have a listen.
The talk seems to conflate distribution of source code and software licensing. Sometimes code is published for inspection but a license must still be purchased. It would be helpful if the discussion isolated rights that are passed on by possession of the source code vs possession of license rights.
Code published for inspection needs a specialized license where it disallows any sublicensing or redistribution to close patent exhaustion. Albeit the interesting part is that it could be contrived as a business relationship still in some cases, causing patent exhaustion for the specific bodies allowed to inspect it. That would be for the court to decide though.
Allowing redistribution or sublicense right pretty clearly invokes software patent exhaustion.
The talk is about FOSS, so it's implied that you are distributing source code with a free software license. To me, it seems like some of the content of the talk wouldn't apply with non-free software licenses since there may not be an initial patent license, and therefore the patent wouldn't become exhausted.
I think the idea is that any code you distribute as a company falls under that patent exhaustion clause. Microsoft distributes the code that someone uploaded to GitHub to all users of GitHub. Thus they all get patent licenses for any patents involving that code. That's at least the idea. Whether courts will go with it, I doubt, because it would mean that any company that allows people to upload anything, including comment sections, is under the risk that their patents get exhausted.
Not exactly get licenses, but the licensing requirement is voided for code distributed in such a way.
That is, suppose Startup Inc. published code related to software patent on GitHub owned by GitHub Inc., to which it has granted license. This means anyone who downloads the code from there, no matter the license, has no licensing requirement (not the same as grant or getting a license).
If the code is published under a license that does not specifically exclude a patent grant, it is also patent exhausted. (Of course, if the license prohibits redistribution, GitHub cannot host it for the public.)
This would only apply to MS patents used by github right?
That is, if MS had a patent on, say, making a bird whistle, just uploading a program to GitHub wouldn't give you a license to it. While if MS had a patent on, say, putting line numbers when displaying source code, anybody who uploaded a program to GH that did so would be able to use the technique in the patent?
If you acquire MS-patented software by cloning a github repository, since MS owns github and makes the software available to you anonymously and free of charge, perhaps the patent is exhausted.
Would this almost certainly apply to all users (commercial and non-commercial) of AES-OCB in OpenSSL, seeing as OpenSSL already has a license from Phillip Rogaway?
Hi, I'm the author of this talk. A couple quick notes:
First, the source materials I relied on are available at <https://github.com/google/opencasebook/blob/master/patents.m.... If you are interested, please read them.
Second, about Bowman v. Monsanto. The logic of Bowman is a pretty serious challenge to what I presented above. It might invalidate certain parts of my argument. Specifically, the question is whether it is even theoretically possible to exhaust the exclusive right to "make" a patented item.
I haven't yet been able to go back and do further research. But what I would be looking for is a case where someone sold an item - like a software application - with a license that says, "make as many copies as you want for internal use." If the buyer then transferred the software, would the new buyer get the right to make copies? I'm not sure. But if so, that would be evidence that a sale could exhaust the right to make.
Third, I thought this was a fun rabbit hole - and, as I said in my talk, a "surprising" result. The surprising bit is important. It is entirely possible - and even likely - that a court could agree with all the precedents I cited, and "distinguish" them to come to a contrary, non-surprising result.
In short, I think exhaustion is more important than people may be considering, but don't take this analysis to the bank.
Your link is broken due to the brackets you put around it.
Unbroken: https://github.com/google/opencasebook/blob/master/patents.m...
(Which, I may add, is very disappointing since <> was expressly designed as delimiters to safely contain a link in emails and other plain-text formats, and has always been well-supported as such by other systems.)
This is a really clever theory, and I like it... but I’m afraid it’s probably too clever.
Still, fun to think about.
I have a hard time seeing how Intel v ULSI applies here. The decision in Intel v ULSI rests quite heavily on the idea that the nexus of the violation of the patent happens during the manufacturing process and not the design process. That is, the court looked at the contract to find that HP was selling the potentially-violating chips.
That fact is hard to extend to GitHub: GitHub is very arguably a mere distributor of software, not providing the "sale" that would exhaust patent rights. The sort of tortured logic you would have to get to to reach this fact is the kind of logic that tends to lose at court, and furthermore is unlikely to find many supporters in open source software legal teams (it would render most of the GPL null and void, for example).
GPL did not handle any patents until version 3. As for version 3, it has a patent grant clause.
Even distributing BSD licensed code by a licensee exhausts patents embodied in it.
(As an interesting case, this might mean patents related to code published as ISO examples voids MP3 patents on specific algorithms used in that code. The question then is if the standard body is a licensee.)
> GPL did not handle any patents until version 3
ORLY? So if you open up the text of the GPLv2 and Ctrl+F for "patent" and all those hits show up—especially in and around section 7—that's what, then?
The _GPLv2 doesn't address patents, but GPLv3 does_ mantra is a too-common lie. GPLv2 does address patents, explicitly.
I had the opportunity to hear Van give a talk of his at OSCON last year. His talks are very interesting (he is a former sofware developer, now a patent attorney) and if anyone sees him on a conference schedule, I really encourage them to go have a listen.
The talk seems to conflate distribution of source code and software licensing. Sometimes code is published for inspection but a license must still be purchased. It would be helpful if the discussion isolated rights that are passed on by possession of the source code vs possession of license rights.
Code published for inspection needs a specialized license where it disallows any sublicensing or redistribution to close patent exhaustion. Albeit the interesting part is that it could be contrived as a business relationship still in some cases, causing patent exhaustion for the specific bodies allowed to inspect it. That would be for the court to decide though.
Allowing redistribution or sublicense right pretty clearly invokes software patent exhaustion.
The talk is about FOSS, so it's implied that you are distributing source code with a free software license. To me, it seems like some of the content of the talk wouldn't apply with non-free software licenses since there may not be an initial patent license, and therefore the patent wouldn't become exhausted.
I don’t understand the Microsoft/Github bit.
Is pushing your repo to github “distribution” that exhausts a patent? And what has Microsoft to do wit it?
I think the idea is that any code you distribute as a company falls under that patent exhaustion clause. Microsoft distributes the code that someone uploaded to GitHub to all users of GitHub. Thus they all get patent licenses for any patents involving that code. That's at least the idea. Whether courts will go with it, I doubt, because it would mean that any company that allows people to upload anything, including comment sections, is under the risk that their patents get exhausted.
Not exactly get licenses, but the licensing requirement is voided for code distributed in such a way.
That is, suppose Startup Inc. published code related to software patent on GitHub owned by GitHub Inc., to which it has granted license. This means anyone who downloads the code from there, no matter the license, has no licensing requirement (not the same as grant or getting a license).
If the code is published under a license that does not specifically exclude a patent grant, it is also patent exhausted. (Of course, if the license prohibits redistribution, GitHub cannot host it for the public.)
This would only apply to MS patents used by github right?
That is, if MS had a patent on, say, making a bird whistle, just uploading a program to GitHub wouldn't give you a license to it. While if MS had a patent on, say, putting line numbers when displaying source code, anybody who uploaded a program to GH that did so would be able to use the technique in the patent?
If you acquire MS-patented software by cloning a github repository, since MS owns github and makes the software available to you anonymously and free of charge, perhaps the patent is exhausted.
I think the idea is that by publishing your code on github you are effectively licensing Microsoft's entire patent portfolio ...
Would this almost certainly apply to all users (commercial and non-commercial) of AES-OCB in OpenSSL, seeing as OpenSSL already has a license from Phillip Rogaway?
https://en.wikipedia.org/wiki/OCB_mode#Patents