In this session you will learn effective and practical strategies to reap the benefits of software patents in an open source software environment. As open source software compliance litigation grows, patent holders have increasingly turned to open source software licensing strategies for their patented technologies

1. STRATEGIES TO REAP THE BENEFITS OF
SOFTWARE PATENTS IN AN OPEN
SOURCE SOFTWARE ENVIRONMENT
November 8, 2017
Mary Lou Wakimura
Giovanna Fessenden

2. 2
The opinions expressed herein are solely those of Mary Lou
Wakimura and Giovanna H. Fessenden, do not necessarily
represent those of Hamilton Brook Smith Reynolds, or any client or
organization, and are not to be considered legal advice.
STRATEGIES TO REAP THE BENEFITS OF
SOFTWARE PATENTS IN AN OPEN SOURCE
SOFTWARE ENVIRONMENT

3. 2
Offices
Boston
Seaport Innovation District
Concord
Route 128 Technology Corridor
By the Numbers
1980
Year Founded
22
Technology Specialties
Bioinformatics
Biotechnology & Life Sciences
Biologics & Immunotherapeutics
Chemical Engineering
Pharmaceuticals
Chemistry
Material Sciences
Clean Technology
Medical Devices
Medical Imaging
Mechanical Engineering
Electrical Engineering
Semiconductors
Optics
Robotics
Mobile
Internet of Things
Network Infrastructure
Telecommunications
Computer Hardware
Computer Software
Business Methods
38
Attorneys,
Patents Agents,
Technology Specialists
20
Firm accolades since
2010, including:
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4. 4
Mary Lou
Wakimura
Principal
 Background in computer-
related technologies
 30 years of IP law
experience
 Technical expertise in
imaging, video
applications, medical
systems, business or
transactional methods,
bio/chemical analysis,
alternative energy, social
networks, and electro-
mechanical devices
Recent Publications and Speaking
Engagements
 "Innovating Outside the Patent: Copyrights,
Trademarks and Software" Association of University
Technology Managers’ (AUTM) Eastern Region
Meeting, Boston, MA, October 3, 2017
 “Smart Cyber Security, Patent and Trade Secret
Protection for Startups,” MIT Enterprise Forum of
Cambridge/Hamilton Brook Smith Reynolds Lecture,
Cambridge, MA, November 17, 2016
 Open Source Software Solutions (Part 3): Educating
your Employees about Open Source Software Issues,
Hamilton Brook Smith Reynolds, 2016
 Open Source Software Solutions (Part 2):
Understanding Open Source Software License Trigger
Points and Resulting Obligations, Hamilton Brook
Smith Reynolds, 2016
 Open Source Software Solutions (Part 1): Getting to
Know the Open Source Software in Your Products,
Hamilton Brook Smith Reynolds, 2016
 “Strategies for Commercial Software Developers
Using Open Source Code in Proprietary Software,”
Hamilton Brook Smith Reynolds Webcast, 2016

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Giovanna
Fessenden
Of Counsel
Focus Areas
 block chain technology
 search engines / ad serving systems
 video compression / codecs
 trusted computing and encryption
 cryptocurrency wallet
 analytics
 video on demand (VOD) systems
 VoIP and video conferencing systems
 social media software
 database and storage systems
 recommendation systems
 integrated development
environments (IDEs), compilers and
interpreters
 iPhone™, Android™ and tablet
applications
 CT imaging technologies
 wearable computing technologies
 semi-conductor manufacturing
systems
Recent Publications and Speaking
Engagements
 “Law for ICOs and Blockchain,” Meetup at Alley,
Cambridge, October 2017
 Open Source Software Solutions (Part 3): Educating
your Employees about Open Source Software
Issues, Hamilton Brook Smith Reynolds, 2016
 Open Source Software Solutions (Part 2):
Understanding Open Source Software License
Trigger Points and Resulting Obligations, Hamilton
Brook Smith Reynolds, 2016
 Open Source Software Solutions (Part 1): Getting to
Know the Open Source Software in Your Products,
Hamilton Brook Smith Reynolds, 2016
 “Strategies for Commercial Software Developers
Using Open Source Code in Proprietary Software,”
Hamilton Brook Smith Reynolds Webcast, 2016
 “Block Chain Revolution,” TEDx Berkshires,
Stockbridge, MA, 2016
 "Block Chain Innovations are Changing the Digital
World," Hamilton Brook Smith Reynolds Webcast,
2016
 TEDx Berkshires, Stockbridge, MA, November 2015
 “Strategies for Maximizing Value of Intellectual
Property,” 1Berkshire Entrepreneurial Meetup,
Stockbridge, MA, 2015
 "Strategies for Managing Open Source Software,"
Hamilton Brook Smith Reynolds Lecture,
Cambridge, MA, 2015

6. Key Goals of Commercial Software
Vendors Who Use OSS
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G
 Maintain ability to deliver
 Protect IP from devaluation
 Mitigate security vulnerabilities
 Control contributions to OSS community
 Avoid exposure to Copyright Trolls
 Use OSS to increase market share and
interoperability through dual licensing

7. Trends In American Innovations
Agriculture
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Medicine

8. Trends In American Innovations
Transportation
8
Electronics and Communications

9. Patents 25%
Trademarks
25%
Trade
Secrets,
25%
Copyrights
25%
Business Models – Portfolio Trends
9
Patents
Trademarks
Trade
Secrets
Copyrights
Patents
Trademarks
Copyrights
Proprietary
Licensing
OSS
Licensing
Trade
Secrets
Traditional New
Licensing

10. Trends In IP Enforcement
10
1960's-1980's 1990's-2000's 2010 +
Patents
Copyrights
OSS Licensing

11. Example OSS Licenses
More
Restrictive
(Copyleft)
More
Permissive
(Copyright)
GNU
GPL
Mozilla Apache
MIT
variant

12. Copyleft Software Distributed Outside
the Company Must be Compliant
 Comply with all applicable licenses and obligations
 Provide OSS education and training
 Conduct due diligence to identify, track, and manage
Copyleft code
 Check that each seller in your supply chain ensures
compliance of its entire supply chain
 Make clearing an integral part of the software
development process
 Utilize your in-house clearing resources
 Consider scanning software code for Copyleft code

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OSS/Proprietary Licensing
and Patent Rights
Open Source Software (OSS) License:
 Licensing mechanism in which an owner surrenders
some IP rights, e.g. right to access, use, and modify
distributed “source code” without obtaining explicit
permission from the owner.
Proprietary License:
 Retains intellectual property rights—usually copyright
of the source code, and patent rights.
Patent Rights:
 A patent gives its owner right to exclude others from
making, using, and selling the claimed invention.

14. OSS Dual Licensing
 Dual licensing enables distribution of software to
licensees under a proprietary model as well as an
open source model, allowing the licensor to
simultaneously leverage the advantages of both types
of licenses.
 One well known example of dual licensing is Oracle’s
MySQL database management system.
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15. OSS Dual Licensing Example
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Linux/OSS Community
End Users
OEM/Customer
Integrated
Circuit
Firmware
Software
OSS
Proprietary
Patent
Application

16. Proprietary/OSS Dual Licensing
Artifex v. Hancom Case Study
 Artifex is owner of “Ghostscript”, which is dual
GPLv2/Proprietary licensed
 Artifex sued Hancom alleging:
 Hancom incorporated GPLv2 version of Ghostscript into
Hancom’s commercial software, and was not GPLv2
compliant
 GPLv2 requires Hancom to distribute the source of (i)
Ghostscript and (ii) Hancom's commercial product;
 Hancom’s failure to distribute this source code breached
Hancom’s GPLv2 license, triggering a termination of the
license.
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Patents and OSS
 Copyleft OSS not a bar to patent protection
 If distributed source code implements a patented
invention, then the “recipient” of distributed source
code may automatically receive a limited license to
the patented invention
 Patent conveyances via distributed OSS are severely
curtailed
Patent Rights and
Open Source Licensing

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Patent Grants: Breadth Cont. Examples
 Broad Grant - GPLv3 requires distributors of modified
versions to grant an explicit patent license for the
whole program.
 Narrower Grant - Apache License 2.0 requires a
patent license for the changes made by a distributor.
If distributed source code implements a patented
invention, then the “recipient” of distributed source
code may automatically receive a limited license to
the patented invention.
Evaluating Patent Clauses
in OSS Licenses

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 Apache 2.0:
“… 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.”
 GPLv3 states:
“... When you distribute a covered work, you grant a patent license to the
recipient, and to anyone that receives any version of the work, permitting,
for any and all versions of the covered work…This patent license…covers all
patent claims you control or have the right to sublicense, at the time you
distribute the covered work or in the future, that would be infringed or
violated by the covered work or any reasonably contemplated use of the
covered work….”
Example
OSS Patent Grants

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Retaliation clauses retract the granted rights from anyone who initiates litigation.
This allows the distributor to use their patents to defend against aggression.
 Example GPLv3 Retaliation Clause:
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.
 Example Apache 2.0 Retaliation Clause:
…you may not impose a license fee, royalty, or other charge for exercise of
rights granted under this License, and you may not initiate litigation
(including a cross-claim or counterclaim in a lawsuit) alleging that any patent
claim is infringed by making, using, selling, offering for sale, or importing the
Program or any portion of it.
Evaluating Patent Clauses
in OSS Licenses

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Permission to use/redistribute the software arguably
implies copyright/patent grants
 GPLv2 arguably includes a patent grant in stating
that patent rights can be necessary for
use/distribution and that distributors must pass on
permission to use/modify/redistribute, thus
forming an implicit patent grant that is quite clear
 BSD arguably contains implicit patent grant:
Redistribution and use in source and binary forms,
with or without modification, are permitted (...)
OSS Implied Patent Grants

22. Examples of Patenting OSS Technologies
Blockchain Patent Applications
 At least 390 applications related to
blockchain technology filed in 2017
OSS Blockchains
 Ethereum - OSS
 Hyperledger – Apache 2.0 (patent grant)
 Bitcoin – MIT/OSS
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 Potential Reasons to Patent:
 Secure competitive edge
 License the patent to others to produce a revenue
stream
 Assert patent rights against redistributors who are
non-compliant with copyleft terms
 Enforce patent rights as an offensive or defensive
Dual license (proprietary and copyleft)
 Position your company for acquisition
Why Patent An Invention That Is Going
To Be Distributed Under An OSS License?

24. Essential Guidance for
Releasing Software
Before distributing your software product:
 Inventory your code/software in the product
for clearance purposes
 Protect IP
 Devise licensing strategy
 Modify code to conform to licensing strategy
 Contact IP counsel to assist
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25. Questions
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Mary Lou Wakimura
MaryLou.Wakimura@hbsr.com
978.341.0036 X3214
Giovanna Fessenden
Giovanna.Fessenden@hbsr.com
978.341.0036 X3466