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<div class="moz-cite-prefix">On 3/4/2025 9:02 AM, Barksdale, Marvin
wrote:<br>
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cite="mid:BY5PR04MB6550FDD50E31B3725BD44F71CEC82@BY5PR04MB6550.namprd04.prod.outlook.com">
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<p class="MsoNormal">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:<o:p></o:p></p>
<p class="MsoNormal"><o:p> </o:p></p>
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<p class="MsoListParagraph"
style="text-indent:-.25in;mso-list:l0 level1 lfo1"><!--[if !supportLists]--><span
style="mso-list:Ignore">3.<span
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</span></span><!--[endif]-->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<o:p></o:p></p>
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<!--[if !supportLists]--><span style="mso-list:Ignore">a.<span
style="font:7.0pt "Times New Roman"">
</span></span><!--[endif]-->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. <o:p></o:p></p>
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<p>I must say, although you say that this is your aim, the use of
"embodied" over "infringed" doesn't do that.</p>
<p>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). <a
class="moz-txt-link-freetext"
href="https://casetext.com/case/helferich-patent-licensing-llc-v-ny-times-co">https://casetext.com/case/helferich-patent-licensing-llc-v-ny-times-co</a></p>
<p>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.<br>
</p>
<p>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.<br>
</p>
<p>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.</p>
<p>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.<br>
</p>
<p><br>
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