[License-discuss] The ambiguous scope of the Apache License 2.0 patent grant

[Nicholas Matthew Neft Weinstock]

Here's how I think about it.

Let's say a patent claim has 5 elements.  That means you need all 5 things to "infringe" the patent.

Situation A: The project already has all 5 elements of the claim.  I make a contribution to a different area of the project, unrelated to the functionality of those elements.
Situation B: The project has 4 elements of the claim.  I make a contribution that adds the last element of the claim.
Situation C: The project has 3 elements of the claim.  I make a contribution that adds the 4th element of the claim.  3 months later, someone else makes a contribution adding the last element of the claim.

GPL 3.0 has the defined term "Contributor Version" that includes all the functionality when the Contributor has added their Contribution, but no subsequent Contributions (applies to A and B, not C).

EPL 2.0's wording "This patent license shall apply to the combination of the Contribution and the Program if, at the time the Contribution is added by the Contributor, such addition of the Contribution causes such combination to be covered by the Licensed Patents" only applies when the contribution adds the last element (applies only to B, not A or C).

It is not entirely clear what the Apache 2.0 language is intended to cover.  I have heard arguments for B only, A and B, or all three.

-Nick

> -----Original Message-----
> From: License-discuss <license-discuss-bounces at lists.opensource.org> On
> Behalf Of Kevin P. Fleming
> Sent: Saturday, February 18, 2023 2:46 PM
> To: license-discuss at lists.opensource.org
> Subject: Re: [License-discuss] The ambiguous scope of the Apache License
> 2.0 patent grant
> 
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> 
> On Thu, Feb 9, 2023, at 16:10, ygrex908 via License-discuss wrote:
> > "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"
> >
> > "Combination" could mean either "the act of combining" (that would put
> > it in the "narrow" group) or "something formed by combining" (that
> > would imply the "wide" scope).
> 
> With the usual caveats (IANAL, just a moderately-well-informed layperson):
> 
> I don't see how 'combination' in this context could mean anything other than
> 'something formed by combining', because it seems nearly impossible for
> any patents involved to have claims which are infringed by the *act* of
> making the combined work. If a person produces such a combined work and
> never does anything with it (including 'using' it), any patents whose claims
> read on the content of the combined work haven't been infringed by that
> action.
> 
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