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<p>i did a libre office compare of the feb 2025 version vs the march
2025 version (which is the current, I believe) see attached.<br>
</p>
<div class="moz-cite-prefix">On 3/3/2025 10:31 AM, Simon Phipps
wrote:<br>
</div>
<blockquote type="cite"
cite="mid:CAA4ffp-jwjgU=u-HSNnnkA12Sa2uKDqL8DOZ7M_kM1foRnwTbw@mail.gmail.com">
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<div dir="ltr">Hi Marvin,
<div><br>
</div>
<div>I for one would ve very grateful if you would concisely
highlight what you have changed here please.</div>
<div><br>
</div>
<div>Thanks</div>
<div><br>
</div>
<div>Simon</div>
<div>(in a personal capacity)</div>
</div>
<br>
<div class="gmail_quote gmail_quote_container">
<div dir="ltr" class="gmail_attr">On Mon, Mar 3, 2025 at 6:28 PM
Barksdale, Marvin <<a href="mailto:mbarksdale@mgb.org"
moz-do-not-send="true" class="moz-txt-link-freetext">mbarksdale@mgb.org</a>>
wrote:<br>
</div>
<blockquote class="gmail_quote"
style="margin:0px 0px 0px 0.8ex;border-left:1px solid rgb(204,204,204);padding-left:1ex">
<div class="msg8913569016311582614">
<div lang="EN-US" style="overflow-wrap: break-word;">
<div class="m_7304349581277884727WordSection1">
<p class="MsoNormal"><i>I Marvin Barksdale JD, the
license steward and license submitter, attests that
this 2<sup>nd</sup> resubmission of the new “MGB
1.0” license complies with the Open Source
Definition, including:</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.</i></p>
<p class="MsoNormal"><i>OSD 5 – The license must not
discriminate against any person or group of persons.</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.
</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.</i></p>
<p class="MsoNormal"> </p>
<p class="MsoNormal"><u>License Rationale</u></p>
<p class="MsoNormal">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.
</p>
<p class="MsoNormal"> </p>
<p class="MsoNormal">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. </p>
<p class="MsoNormal"> </p>
<p class="MsoNormal"><u>Legal Analysis</u></p>
<p class="MsoNormal"><u><span
style="text-decoration:none"> </span></u></p>
<p class="MsoNormal">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." </p>
<p class="MsoNormal"> </p>
<p class="MsoNormal">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. </p>
<p class="MsoNormal">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.
</p>
<p class="MsoNormal"> </p>
<p class="MsoNormal">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. </p>
<p class="MsoNormal"> </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
for system use by Mass General Brigham’s Office of
General Counsel’s IP Group.
</p>
<p class="MsoNormal"><br>
<u>Summary</u></p>
<p class="MsoNormal"> </p>
<p class="MsoNormal">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.
</p>
<p class="MsoNormal"> </p>
<p class="MsoNormal"><b><span
style="font-family:"Calibri Light",sans-serif;color:rgb(0,156,166)">__________________</span></b><span></span></p>
<p class="MsoNormal"><span
style="font-size:16pt;font-family:"Calibri Light",sans-serif;color:black">Marvin
Barksdale</span><span
style="font-family:Calibri,sans-serif"></span></p>
<p class="MsoNormal"> </p>
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<div style="color:rgb(34,34,34)"><b>Simon Phipps</b> </div>
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