[License-review] Request for approval of new "MGB 1.0" license

Sat Feb 15 05:29:00 UTC 2025

On 2/12/2025 8:58 PM, Barksdale, Marvin wrote:
>> 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*would*  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.
> 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.

Your interpretation of the Apache license is not one that others share. 
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."

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. The Apache Foundation also 
disagrees with your interpretation of their license 
<https://www.apache.org/foundation/license-faq.html#PatentScope>:

> Q1:
>     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?
> A1:
>     No.
>
>     ...
>
>     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.
>
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.

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.

Pam

Pamela S. Chestek (in my personal capacity)
Chestek Legal
PLEASE NOTE OUR NEW MAILING ADDRESS
4641 Post St.
Unit 4316
El Dorado Hills, CA 95762
+1 919-800-8033
pamela at chesteklegal
www.chesteklegal.com

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