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

[McCoy Smith]

On 2/19/2025 12:36 PM, Barksdale, Marvin wrote:
> 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.

If you're trying to write a license to contract around DoE, you really 
should say that in the license, not to use language or concepts outside 
of that doctrine. So, disclaim a license to any equivalents to any 
claimed elements.

Nevertheless, doing so would, in my opinion, violate OSD 7, and possibly 
OSD 1. I also believe doing so would be ineffective under US law under 
the holding of the Supreme Court in Quanta/LGE (which precludes 
licensors from contracting around patent exhaustion, which I believe 
would include the subset of contracting around patent exhaustion of 
equivalents).

So you can always try to redraft the license to better articulate your 
aims, but given I think your aims are non-OSD conformant and ineffective 
under current law, you might want to reconsider that exercise.
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