[License-review] 2nd resubmission of the new MGB 1.0 license

[McCoy Smith]

On 3/4/2025 9:02 AM, Barksdale, Marvin wrote:
>
> No problem Simon and thanks for the assist Mccoy.  I’ll briefly 
> summarize the significant changes to the License and Proposal in text, 
> as it was important for us to put forth a clean proposal representing 
> the most current version of the document for review:
>
> 3.Clarification that MGB 1.0’s patent 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.  
> Our chosen approach was akin to the AFL
>
> a.Note: The intent of MGB 1.0 is not “contracting around DoE to 
> reserve patent rights against the code released under an open source 
> license,” as patent rights as preserved against the code released 
> under the license vs  sperate code that was not.
>
I must say, although you say that this is your aim, the use of 
"embodied" over "infringed" doesn't do that.

There was an old case, Helferich Patent Licensing, that at the district 
court level interpreted a patent grant using the term "embodied" as 
somehow a mechanism to contract around patent exhaustion, but that 
decision was overturned by the Federal Circuit (under the rationale of 
Quanta/LGE, the case I've raised a couple of time in response to your 
patent grant analysis). 
https://casetext.com/case/helferich-patent-licensing-llc-v-ny-times-co

So, in law, at least in the US, these terms are coextensive in meaning 
as they relate to patent exhaustion. And given the Supreme Court 
decision in Quanta/LGE, it seems unlikely that there are, or will be 
found to be, contractual mechanisms one can use to try to get around 
patent exhaustion.

Now, you're free to use whatever terminology you like, so if you like 
Larry Rosen's use of "embody" versus Apache's "infringed," when the 
terms mean the same thing (under current, and likely any future, law) 
that's up to you as the drafter. I just don't think you should have any 
expectation that a court would interpret those terms as granting 
different rights under patents.

I also believe (as I think Pam has already pointed out) that your belief 
about how Apache's patent grant works is incorrect given that it is 
bounded by the copyright in 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" (where "Contribution" means "any work of authorship, 
including the original version of the Work and any modifications or 
additions to that Work or Derivative Works thereof, that is 
intentionally submitted to Licensor for inclusion in the Work by the 
copyright owner or by an individual or Legal Entity authorized to submit 
on behalf of the copyright owner."). Bounding the patent grant by the 
copyrightable "Contribution" ensures that independent works which 
contain no part of the copyrights under the license necessarily 
precludes the patent grant from extending to any such independent work. 
Which seems to be your current aim for using the "embodied" language, 
even though initially you described it as curtailing application of the 
Doctrine of Equivalents. Again, you're the drafter, you can decide you 
like your expression of the concept better. The only difference I can 
see in the scope of your current patent grant and Apache, is that you do 
not include the combination language of Apache (i.e., the Apache patent 
grant extends to both the Contribution alone or "by combination of [the] 
Contribution(s) with the Work to which such Contribution(s) was 
submitted."). This is a bit of a backport of the patent grant to ensure 
a Contributor is not submitting a contribution with the intent of 
causing the work to which the Contribution was submitted to infringe, 
but using a contribution that furnishes the final elements of a patent 
claim which the Work to which the Contribution otherwise would not 
infringe. Whether or not that is a meaningful distinction over Apache is 
an interesting interpretive issue, and may or may not make a difference 
under the state of the law of implied patent licensing and/or patent 
exhaustion (which alas are muddled in the United States, although I 
believe that at least under the rationale of Quanta/LGE would likely 
result in such patent claims to be exhausted). But I don't believe that 
a patent grant so bounded violates the OSD, and a least the OSL-3.0 
seems to formulate its patent grant along these lines so there is some 
precedent for that.

So, in summary: a lot of the rationale for the patent grant here doesn't 
seem to be well-founded, but I don't believe it violates OSD. Whether or 
not it is something that would be widely used beyond the author is 
another question, given that the author seems to have a goal -- which 
may not be an effective goal -- of carving out patent claims that a 
contributor might intentionally try to cause to be infringed but claim 
no grant to those claims was given, is a separate question.

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