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<div class="moz-cite-prefix">On 2/12/2025 8:58 PM, Barksdale, Marvin
wrote:<br>
</div>
<blockquote type="cite"
cite="mid:BY5PR04MB6550E25E40D3885DC06E9042CEFF2@BY5PR04MB6550.namprd04.prod.outlook.com">
<blockquote type="cite" style="color: #007cff;">
<pre class="moz-quote-pre" wrap="">Nevertheless, some of the things you say here just don't comport with the text of the >licenses you are analyzing. For example, "The Apache 2.0 license's patent grant, in >contrast, may be interpreted to enable patent rights to the car itself, as it grants >contributors "a license to claims infringed by the Contribution to Work."" Both Work >and Contribution are specifically defined in the Apache 2.0 license as works of >authorship which are either submitted (Contribution) or made available under the >license. Work of authorship is a specific term stemming from the copyright law (17 USC >102a). A car is not going to be a work of authorship, nor is a Contribution going to be >"intentionally submitted to Licensor for inclusion in" the car. It <b class="moz-txt-star"><span class="moz-txt-tag">*</span>would<span class="moz-txt-tag">*</span></b> encompass any >software used with the car which was licensed under Apache and which the person >making a Contribution submitted it to. So the idea that Apache 2.0 has a patent >overbreadth problem, at least in the example you have proposed, is really not >consistent with the terms of that license.
</pre>
</blockquote>
<pre class="moz-quote-pre" wrap="">We see the application of the facts differently:
In the example fact pattern, MGB controls a patent for an autonomous car invention, where Claim 1 covers steering the car (and includes software A for steering) and Claim 2 covers production of the of the car (including software B to manage construction & production). After MGB decides to release Software A under an Open Source License, a Licensee downloads the Work, the Steering Software, and then figures out a method to reverse engineer his own similar car but unsafe car. Later the Licensee submits a Contribution of new code (Software B+) that manages construction of this similar car.
The Apache 2.0 patent language grants Contributors a license to make, sell etc the Work (Software A), but applies this license to patent claims that are infringed by the combination of the Contribution and Work. In our example, if the license to the Work applies to the patent claims infringed by the combination of software A and software B+ (infringing on claim 1 and claim 2) then the licensed grant to the software A can be applied to patent rights obtained through the infringement on the car (the invention) eg. the contributor has obtained patent rights through their infringement on both claims of the patent through their contribution and the original work, when the intent is only to allow the free distribution and unhindered patent access to the Work, steering software A. We may disagree on interpretation here, but hopefully I've shed some light on the reasonableness of our forthcoming resubmission approach and the appropriateness of another open source license option for our use case. </pre>
</blockquote>
<p>Your interpretation of the Apache license is not one that others
share. The Apache patent clause is:</p>
<p>"[E]ach Contributor [patent owner] hereby grants to You [the
licensee] 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."</p>
<p>Distilling it down, the patent owner grants to the user a patent
license to their Contribution, but only to claims necessarily
infringed by their Contribution alone or in the combination of
their Contribution and the work as it existed at the time of the
combination. I don't see anything there that suggests what you say
is true, that somehow the Contributor has granted a license to
claims that weren't embodied in their Contribution or the
combination with the preexisting work at the time of the
Contribution. In your hypo, MGB has not contributed after the
Licensee made their changes, so MGB has not granted any patent
rights to any subsequent version of the software. <a
moz-do-not-send="true"
href="https://www.apache.org/foundation/license-faq.html#PatentScope">The
Apache Foundation also disagrees with your interpretation of
their license</a>:</p>
<p>
<blockquote type="cite">
<dl>
<dt>Q1:</dt>
<dd>If I own a patent and contribute to a Work, and, at the
time my
contribution is included in that Work, none of my patent's
claims are
subject to Apache's Grant of Patent License, is there a way
any of
those claims would later become subject to the Grant of
Patent License
solely due to subsequent contributions by other parties who
are not
licensees of that patent?</dd>
<dt>A1:</dt>
<dd>No.<br>
<br>
...<br>
<br>
The only patent claims that are licensed to the ASF are
those you own or have the right to license that read on your
contribution or on the combination of your contribution with
the specific Apache product to which you contributed as it
existed at the time of your contribution. No additional
patent claims become licensed as a result of subsequent
combinations of your contribution with any other software. <br>
</dd>
</dl>
</blockquote>
That said, you are free to style your own patent grant. However,
your patent grant language remains unacceptable for the reason I
gave before - it is not a grant of all rights needed. OSD 6 is
"The license must not restrict anyone from making use of the
program in a specific field of endeavor." Your grant language is
"This License includes licenses to Contributor’s patent claims ...
only to the extent such patent claims are necessary for a person
with ordinary skill in the art to recreate the Work or create
Derivative Works thereof." It is not a grant of the right to run
the software, apparently intentionally so, nor does it grant the
unrestricted right to make, use, sell, offer to sell or import the
software. For this reason the grant fails to meet OSD6 because it
fails to grant a license even to those who just want to run the
software.</p>
<p>Your approach seems misguided. The OSI will not approve a license
that attempts to describe which claims are licensed and which are
not by what type of rights the user is exercising - they must be
allowed to exercise them all. The OSI will accept a patent grant
that is limited to only the claims that are necessarily infringed
by the patentee's contribution (alone or in combination with the
preexisting software) and temporally limited to only what was
granted at the time of the contribution. That seems to be your
intention, so perhaps you can find a way to reword your grant in a
way that matches your intention.</p>
<p>Pam<br>
</p>
<p>Pamela S. Chestek (in my personal capacity)<br>
Chestek Legal<br>
PLEASE NOTE OUR NEW MAILING ADDRESS<br>
4641 Post St.<br>
Unit 4316<br>
El Dorado Hills, CA 95762<br>
+1 919-800-8033<br>
pamela@chesteklegal<br>
<a class="moz-txt-link-abbreviated" href="http://www.chesteklegal.com">www.chesteklegal.com</a></p>
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