[License-review] 2nd resubmission of the new “MGB 1.0” license
McCoy Smith
mccoy at lexpan.law
Mon Mar 3 20:10:36 UTC 2025
i did a libre office compare of the feb 2025 version vs the march 2025
version (which is the current, I believe) see attached.
On 3/3/2025 10:31 AM, Simon Phipps wrote:
> Hi Marvin,
>
> I for one would ve very grateful if you would concisely highlight what
> you have changed here please.
>
> Thanks
>
> Simon
> (in a personal capacity)
>
> On Mon, Mar 3, 2025 at 6:28 PM Barksdale, Marvin <mbarksdale at mgb.org>
> wrote:
>
> /I Marvin Barksdale JD, the license steward and license submitter,
> attests that this 2^nd resubmission of the new “MGB 1.0” license
> complies with the Open Source Definition, including:/
>
> /OSD 3 – The license must allow modifications and derived works
> and must allow them to be distributed under the same terms as the
> license of the original software./
>
> /OSD 5 – The license must not discriminate against any person or
> group of persons./
>
> /OSD 6 – The license must not restrict anyone from making use of
> the program in a specific field of endeavor. /
>
> /and OSD 9 – The license must not place restrictions on other
> software that is distributed along with the licensed software. For
> example, the license must not insist that all other programs
> distributed on the same medium must be open source software./
>
> _License Rationale_
>
> The MGB Open-Source License 1.0 (“MGB 1.0”) is a permissive
> open-source software license that was drafted to catalyze
> open-source distribution and open science among the health care
> innovator and research community, particularly those employed at
> Academic Medical Centers (AMCs) receiving federal grant funding,
> such as Mass General Brigham Incorporated (MGB). AMCs are
> hospitals, laboratories, and medical schools frequently
> collectively organized as systems, with a federally regulated
> mission to provide patient care, train healthcare professionals,
> and conduct innovative research. As self-contained businesses,
> these complex organizations have evolved to perform several
> ancillary commercial functions including patent administration,
> licensing, co-development, all of which to support their central
> mission of the advancement of medicine. Aligned with this central
> mission is the proliferation of open science innovation at AMCs.
> While AMCs have evolved their proprietary IP strategies, many of
> their research and clinical employees have shifted to open science
> collaborative approaches where research data, methodologies,
> source code and findings are licensed to be shared at no cost to
> catalyze innovation. Despite both approaches purporting to be
> operating in the benefit of AMC system goals, there has been a
> historical lack of alignment between open and proprietary
> licensing activity. At Mass General Brigham, for example,
> despite receiving over $77M in NIH funding over the past 10 years
> for 200+ software research projects that should have yielded
> open-science results and commercial innovation, there is a large
> clandestine community of researchers, clinicians, developers, and
> other health care employees, who operate in the grey areas of open
> source, NIH, Open Access Journal, and AMC compliance. The goal of
> MGB 1.0 is to bring open-source licensing into AMC licensing
> compliance, which mandates employees out-license AMC assets under
> express risk mitigation terms spanning several federal mandates
> and best practices including: HIPAA laws not to share “Protected
> Health Information” and other personal info, federal 501 c-3
> anti-endorsement laws, and licensing software on an “As-Is” basis
> without implied warranties, representations, and damages. These
> terms are not explicitly outlined in similarly permissive licenses
> such as MIT and BSD, but all can align with fundamental principles
> of openness.
>
> Beyond bringing NIH funded researchers and health care innovators
> into an AMC compliant open-source licensing scheme, MGB 1.0 seeks
> to balance the modern AMCs mission driven commercialization
> activities with its scientific mission to break down barriers to
> knowledge access and collaboration within healthcare. Although
> MGB 1.0 uses a similar pro-commercialization, pro-modification,
> highly compatible licensing scheme as Apache 2.0, MGB 1.0 aims to
> limit to its express patent license to the software itself eg.
> claims embodied by the work, as well as to address the guidelines
> of the work’s inclusion of patient personal information.
>
> _Legal Analysis_
>
> __
>
> Patent law’s broad definition of infringement and the courts broad
> interpretation of the Doctrine of Equivalence (DoE) sits at the
> center of MGB 1.0 patent grant approach. 35 USC 271 states that
> “for a licensee to successfully assert that their contribution or
> derivative work is infringing on a patent, the licensee must show
> that they are making, using, selling, etc. some thing or process
> that is covered by the patent.” Thus, via 35 USC 271, showing
> infringement requires performing a comparison between “a patented
> invention’s claim” and “whatever it is that the defendant makes,
> uses, offers to sell, or sells.” According to the court in Bai v.
> L L Wings, Inc., "determining whether a patent claim has been
> infringed involves two steps: (1) claim construction to determine
> the scope of the claims, followed by (2) determination whether the
> properly construed claim encompasses the accused structure. The
> first step, claim construction, is a matter of law. . . . The
> second step, determination of infringement, whether literal or
> under the doctrine of equivalents , is a question of fact."
>
> Thus, while OSD 9 demands that the licensee must be free to use
> the licensed software free of any potential claim for infringement
> under any infringement theory,” Apache 2.0’s patent grant to
> infringing claims extends beyond the use of the licensed software,
> to granting patents to claims that may contain other “equivalent”
> non-licensed software. This concept is consistent with, Winans v
> Denmead, where the courts found patent infringement reaching
> beyond literal infringement of patent claims either by way of a
> “insubstantial differences” test or a ‘‘function-way-result”
> test, both of which requiring a difficult factual assessment for
> the jury (or judge in a bench trial). Presenting even more
> uncertainty for potential infringers, courts have more recently
> found an additional way to prove equivalency by showing that the
> accused equivalent and the claimed patent feature were known “in
> the art” to be used interchangeably. Hilton Davis v
> Warner-Jenkinson. MGB 1.0 maintains the licensee’s ability to use
> the licensed software free of infringement under even a DoE
> infringement theory, but ensures the patent grant is narrowed to
> the software only; without putting burden on contributors to
> decipher difficult questions of fact to figure out the extent of
> the patent grant beyond literal infringement of the software.
>
> MGB 1.0’s approach in narrowing the scope of the grant to the
> software itself eg the use of “embodied” over “infringed”, is
> similar to the patent grant mechanism utilized by the osi approved
> AFL and the GNU v3 license, which narrows the claims granted only
> to “essential patent claims,” not including “claims that would be
> infringed only as a consequence of further modification of the
> contributor version.” Similarly these licenses intend to narrow
> their patent grants to claims that are essential to open source
> distribution of the licensed copyrighted IP, and not to claims
> that aren’t embodied by the copyrighted IP or that would be
> infringed only as a consequence of further modification of the
> contributor version.
>
> Accordingly, an example where the Apache 2.0 license can be
> utilized to obtain a patent license beyond what is embodied a
> claim, would be via MGB filing a patent with multiple claims;
> where open source code is embodied in one claim [A] , and closed
> source software is embodied in another [B]. Under Apache 2.0, this
> patent filing scheme creates an opportunity for contributors to
> intentionally infringe on claim [B] (which includes separate non
> open source code), by contributing code that infringes on [B]
> through DoE. Although this is accepted DoE infringement via us
> patent case law, infringing on other claims that include separate
> non open source code is beyond what is necessary for a licensee to
> freely use the open source licensed software itself. This intent
> to “contract around" infringement overreach (eg beyond the
> software itself), to narrowly confine open source license patent
> grants to the licensed software itself, is observable across
> several osi licenses including the aforementioned AFL and BNU v3.
>
> MGB 1.0 was co drafted by myself, Marvin Barksdale JD, and Preston
> Regehr Esq. of Tech Law Ventures PLLC, before being reviewed and
> approved for system use by Mass General Brigham’s Office of
> General Counsel’s IP Group.
>
>
> _Summary_
>
> MGB 1.0 provides express licensing risk provisions required by AMC
> Tech Transfer and General Counsel Offices while protecting AMC
> commercial activity as a patent portfolio holder and as an ongoing
> code contributor via AMC resources. To these ends MGB 1.0
> utilizes a more direct risk mitigation approach than the MIT or
> BSD licenses. Furthermore, although MGB 1.0 uses a similar
> approach to Apache 2.0, MGB 1.0 narrowly confines the express
> license grant to the software itself or patent claims owned or
> controlled by the Contributor that are embodied in the shared
> work. Beyond the patent grant, MGB 1.0 also adds HIPAA risk
> mitigation language that is imperative as osi has defined open
> source ai as including the shared data by which it was trained.
> This language is imperative for AMC’s and their open source ai
> innovators potentially sharing patient data with licensees
> unfamiliar with HIPAA obligations.
>
> *__________________*
>
> Marvin Barksdale
>
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> whom it is addressed. If you believe this e-mail was sent to you
> in error and the e-mail contains patient information, please
> contact the Mass General Brigham Compliance HelpLine at
> https://www.massgeneralbrigham.org/complianceline .
>
>
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>
>
> --
> *Simon Phipps*
> /Office:/ +1 (415) 683-7660 /or/ +44 (238) 098 7027
> /Signal/Telegram/Mobile/: +44 774 776 2816
>
>
> _______________________________________________
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