[License-review] Request for approval of new "MGB 1.0" license (Pamela Chestek)

[Barksdale, Marvin]

A small note on our interpretation of the Apache license as we prepare to resubmit the MGB 1.0 according to the guidance to date:

> 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."	
.... 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. <


 Thank you for the notes and references. Respectfully several MGB attorneys share my interpretation of Apache 2.0's patent grant's use of "infringement" to enable rights that potentially extend pass the claims that were embodied by a Contribution, or the combination with the preexisting work. In fact earlier in this thread Mccoy, made the point that he had not seen case law that allows the Doctrine of Equivalents (DoE) to be contracted around, but never that DoE doesn't exist nor that it doesn't extend infringement past what's embodied in a claim.   In the Apache Foundation example, the fact pattern clearly states "...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." The issue  MGB 1.0 looks to address is that some of the licensor's or contributor's patent claims may be subject to the Apache grant at the time of the license or contribution due to the "infringement" standard, not that they later become subject to the grant due to later contributions.  The facts in the Apache Foundation example are different, as in the MGB presented fact pattern the initial license grants a patent to one claim of a patented invention where open source code is embodied  but not to another claim in the patent where a closed source software is embodied. Thus both at the time of license and at the time of contribution there are patent claims that are subject to Apache's grant.  As discussed in this thread,  our forthcoming resubmission will substitute the AFL 3.0 patent grant which replaces "infringement" with "embodied  by," offering a more confined grant, that we believe adheres to osd indications.
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