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

[Barksdale, Marvin]

MGB License 1.0 - OSI Formal Proposal for RESUBMITTED New License Review

I Marvin Barksdale JD, the license steward and license submitter, attests that this new resubmitted MGB 1.0 license complies with the Open Source Definition, including:
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.
OSD 5 - The license must not discriminate against any person or group of persons.
OSD 6 - The license must not restrict anyone from making use of the program in a specific field of endeavor.
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.

License Rationale
The resubmitted 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)  and integrated hospital systems receiving federal grant funding, such as Mass General Brigham Incorporated (MGB).
The goal of MGB 1.0 is to bring open-source licensing into AMC licensing compliance, which mandates that employees out-license AMC assets under express risk mitigation terms spanning several federal laws and hospital system best practices including: HIPAA laws regarding "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.
Beyond bringing NIH funded researchers and health care innovators into an AMC compliant open-source licensing scheme, MGB 1.0 aims to balance the modern AMCs mission driven IP 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 utilizes a more narrow patent grant to those claims "embodied" by the work, rather than Apache 2.0's grant to those claims infringed by the work. The Apache 2.0 license has long been prohibited by Mass General Brigham and other AMCs it opens the door to a license to all claims infringed by a contribution to the work, even beyond those elements embodied literally by the claim.  AMC counsel has defended AMCs in the past from patent trolls who have attempted to utilize "infringement" to gain unintended patent rights, and in light of MGB's $15Million dollar per year patent registration spend, it, like other AMCs, is committed to a conservative position on granting possibly exploitive patent rights for the purpose of open science distribution.

Legal Analysis
US Patent law's broad standard of infringement and the courts' interpretation of the Doctrine of Equivalence sits at the center of MGBs divergence in patent grant approach from Apache 2.0.  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 (1) (a patented invention's claim) and (2) (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 ("DoE"), is a question of fact."
For more than 150 years (dating back to the 1853 Supreme Court case Winans v Denmead), courts have found patent infringement reaching beyond literal infringement of patent claims through DoE either by way of an  '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 around infringement, 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's position is that open source distribution should not rely on licensors, licensees, or contributors to decipher matters of law to understand if they have the patent rights promised through them through the open source definition.
Accordingly, an example where the Apache 2.0 license can be utilized for a patent license beyond what is in embodied a claim would be via MGB filing a patent with multiple claims; where open source code is embodied in one claim, and closed source software is embodied in another.  Under Apache 2.0, this patent filing scheme creates an opportunity for Contributors to intentionally infringe on the proprietary claim by contributing code that infringes on the claim where proprietary code is embodied through DoE.
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."
In the Apache 2.0 licensing scheme, because the patent grant to the work is extended to apply "to patent claims infringed by the combination of a contribution with the work," if the combination infringes on both claims through one of the tests of equivalence, the contributor may gain rights to the entire patent, including the proprietary claim. As these tests of equivalence are "difficult evaluations of law", MGB 1.0 removes this infringement analysis from its patent grant in favor of a grant to "patent claims embodied by the work" similar to the patent grant utilized in the Academic Free License 3.0.

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 by Mass General Brigham's Office of General Counsel's IP Group.

Summary
MGB 1.0 provides express open-source code 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 to the MIT or BSD licenses, and although it uses a similar compatibility and license modification approach to Apache 2.0, MGB 1.0 more narrowly confines the express license grant.   Despite this narrowed approach where MGB 1.0 does not grant contributors the rights to those patent claims that are not embodied by the software, MGB 1.0 bestows those patent rights necessary to fully utilize the open source work, without having to approach the authors to receive a separate patent license in accordance with 0SD 7.








__________________
Marvin Barksdale, JD
Associate Director, Business Development and Digital Health, Innovation

Mass General Brigham
399 Revolution Drive, Suite 955, Somerville, MA 02145
Cell  347.217.8247
Innovation.partners.org
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