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<p>Some comments below on the DoE issue.<br>
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<div class="moz-cite-prefix">On 2/21/2025 9:42 AM, Barksdale, Marvin
wrote:<br>
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<p class="MsoNormal"><o:p> </o:p></p>
<p class="MsoNormal"><b><u>MGB License 1.0 – OSI Formal Proposal
for RESUBMITTED New License Review<o:p></o:p></u></b></p>
<p class="MsoNormal"><b><u><o:p><span
style="text-decoration:none"> </span></o:p></u></b></p>
<p class="MsoNormal"><i>I Marvin Barksdale JD, the license
steward and license submitter, attests that this new
resubmitted MGB 1.0 license complies with the Open Source
Definition, including:<o:p></o:p></i></p>
<p class="MsoNormal"><i>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.<o:p></o:p></i></p>
<p class="MsoNormal"><i>OSD 5 – The license must not
discriminate against any person or group of persons.<o:p></o:p></i></p>
<p class="MsoNormal"><i>OSD 6 – The license must not restrict
anyone from making use of the program in a specific field of
endeavor.
<o:p></o:p></i></p>
<p class="MsoNormal"><i>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.<o:p></o:p></i></p>
<p class="MsoNormal"><i><o:p> </o:p></i></p>
<p class="MsoNormal"><u>License Rationale<o:p></o:p></u></p>
<p class="MsoNormal">The resubmitted 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) and integrated hospital systems receiving
federal grant funding, such as Mass General Brigham
Incorporated (MGB).
<o:p></o:p></p>
<p class="MsoNormal">The goal of MGB 1.0 is to bring open-source
licensing into AMC licensing compliance, which mandates that
employees out-license AMC assets under express risk mitigation
terms spanning several federal laws and hospital system best
practices including: HIPAA laws regarding “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.<o:p></o:p></p>
<p class="MsoNormal">Beyond bringing NIH funded researchers and
health care innovators into an AMC compliant open-source
licensing scheme, MGB 1.0 aims to balance the modern AMCs
mission driven IP 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 utilizes a
more narrow patent grant to those claims “embodied” by the
work, rather than Apache 2.0’s grant to those claims infringed
by the work. The Apache 2.0 license has long been prohibited
by Mass General Brigham and other AMCs it opens the door to a
license to all claims infringed by a contribution to the work,
even beyond those elements embodied literally by the claim.
AMC counsel has defended AMCs in the past from patent trolls
who have attempted to utilize “infringement” to gain
unintended patent rights, and in light of MGB’s $15Million
dollar per year patent registration spend, it, like other
AMCs, is committed to a conservative position on granting
possibly exploitive patent rights for the purpose of open
science distribution.
<o:p></o:p></p>
<p class="MsoNormal"><o:p> </o:p></p>
<p class="MsoNormal"><u>Legal Analysis<o:p></o:p></u></p>
<p class="MsoNormal">US Patent law’s broad standard of
infringement and the courts’ interpretation of the Doctrine of
Equivalence sits at the center of MGBs divergence in patent
grant approach from Apache 2.0. 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
(1) (a patented invention’s claim) and (2) (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 (“DoE”), is a question of fact."
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<p class="MsoNormal">For more than 150 years (dating back to the
1853 Supreme Court case Winans v Denmead), courts have found
patent infringement reaching beyond literal infringement of
patent claims through DoE either by way of an ‘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
around infringement, 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’s position is that open source
distribution should not rely on licensors, licensees, or
contributors to decipher matters of law to understand if they
have the patent rights promised through them through the open
source definition.
<o:p></o:p></p>
<p class="MsoNormal">Accordingly, an example where the Apache
2.0 license can be utilized for a patent license beyond what
is in embodied a claim would be via MGB filing a patent with
multiple claims; where open source code is embodied in one
claim, and closed source software is embodied in another.
Under Apache 2.0, this patent filing scheme creates an
opportunity for Contributors to intentionally infringe on the
proprietary claim by contributing code that infringes on the
claim where proprietary code is embodied through DoE. <o:p></o:p></p>
<p class="MsoNormal">The Apache patent clause is:"[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." <o:p></o:p></p>
<p class="MsoNormal">In the Apache 2.0 licensing scheme, because
the patent grant to the work is extended to apply “to patent
claims infringed by the combination of a contribution with the
work,” if the combination infringes on both claims through one
of the tests of equivalence, the contributor may gain rights
to the entire patent, including the proprietary claim. As
these tests of equivalence are “difficult evaluations of law”,
MGB 1.0 removes this infringement analysis from its patent
grant in favor of a grant to “patent claims embodied by the
work” similar to the patent grant utilized in the Academic
Free License 3.0.
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<p>As I believe I've said before, is there any case law or statutory
support for the idea that a license text scoped by "infringed by"
includes both literal infringement and DoE, whereas a license text
scoped by "embodied by" encompasses literal infringement but not
DoE? I've looked around and not found any.</p>
<p>I've also looked through Larry Rosen's book (in which he
describes in detail his rationale for the language he's used in
his licenses -- AFL & OSL -- and why and how they differ from
other licenses like Apache) and I see nothing about this language
having the intent of precluding a grant to DoE infringements. It
would be pretty surprising to me that that would have been Larry's
intent in writing the language to do that.</p>
<p>Given that I believe the intent and actual effect of the language
of AFL & OSL -- as well as the actual effect of the language
in MGB 1.0 under current law -- would be to encompass equivalents,
this submission raises an interesting question on license text vs
license intent and approval of licenses. The patent grant of AFL
& OSL has already been approved, and MGB 1.0 attempts to use
that same language in its own grant.* Specifically, can the parol
evidence of the intent of the licensor in drafting language in a
license be considered in both the decision to approve or
disapprove of a license, or for that matter in interpreting the
license itself later when it is used? I tend to think if a license
submitter submits a license with language that under prevailing
law does not violate the OSB (and which has been approved in the
past as complying with the OSB), but the licensor in submitting
the license says they intend for the license text to violate the
OSD, the intent should play into approval even if the text itself
doesn't effectuate the intent. Which in this case, as I've said
before, the intent to carve out DoE from the license in my opinion
violates OSD and makes this license non-approvable, even if the
language which purportedly accomplishes that intent has previously
been approved.</p>
<p>*MGB 1.0 actually has what would likely be construed as two
separate patent grants: the one in Section 2 (which uses 3 of the
5 patent verbs in 35 USC 271(a)) and the one in Section 3 (which
uses all 5 verbs); only the latter grant is bounded by the term
"embodied." I suspect a likely interpretation of these clauses
that the rights to use, sell and import under patents is not
bounded by the "embodied" limitation -- if it is a limitation --
and the rights to make and import are. This also seems
problematic.<br>
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<p class="MsoNormal"><o:p></o:p></p>
<p class="MsoNormal"><o:p> </o:p></p>
<p class="MsoNormal">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
<i>by Mass General Brigham’s Office of General Counsel’s IP
Group.<o:p></o:p></i></p>
<p class="MsoNormal"><u><o:p><span style="text-decoration:none"> </span></o:p></u></p>
<p class="MsoNormal"><u>Summary</u><o:p></o:p></p>
<p class="MsoNormal">MGB 1.0 provides express open-source code
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 to the MIT or
BSD licenses, and although it uses a similar compatibility and
license modification approach to Apache 2.0, MGB 1.0 more
narrowly confines the express license grant. Despite this
narrowed approach where MGB 1.0 does not grant contributors
the rights to those patent claims that are not embodied by the
software, MGB 1.0 bestows those patent rights necessary to
fully utilize the open source work, without having to approach
the authors to receive a separate patent license in accordance
with 0SD 7.
<o:p></o:p></p>
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