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

[McCoy Smith]

Some comments below on the DoE issue.

On 2/21/2025 9:42 AM, Barksdale, Marvin wrote:
>
> *_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.
>
As I believe I've said before, is there any case law or statutory 
support for the idea that a license text scoped by "infringed by" 
includes both literal infringement and DoE, whereas a license text 
scoped by "embodied by" encompasses literal infringement but not DoE? 
I've looked around and not found any.

I've also looked through Larry Rosen's book (in which he describes in 
detail his rationale for the language he's used in his licenses -- AFL & 
OSL -- and why and how they differ from other licenses like Apache) and 
I see nothing about this language having the intent of precluding a 
grant to DoE infringements. It would be pretty surprising to me that 
that would have been Larry's intent in writing the language to do that.

Given that I believe the intent and actual effect of the language of AFL 
& OSL -- as well as the actual effect of the language in MGB 1.0 under 
current law -- would be to encompass equivalents, this submission raises 
an interesting question on license text vs license intent and approval 
of licenses. The patent grant of AFL & OSL has already been approved, 
and MGB 1.0 attempts to use that same language in its own grant.* 
Specifically, can the parol evidence of the intent of the licensor in 
drafting language in a license be considered in both the decision to 
approve or disapprove of a license, or for that matter in interpreting 
the license itself later when it is used? I tend to think if a license 
submitter submits a license with language that under prevailing law does 
not violate the OSB (and which has been approved in the past as 
complying with the OSB), but the licensor in submitting the license says 
they intend for the license text to violate the OSD, the intent should 
play into approval even if the text itself doesn't effectuate the 
intent. Which in this case, as I've said before, the intent to carve out 
DoE from the license in my opinion violates OSD and makes this license 
non-approvable, even if the language which purportedly accomplishes that 
intent has previously been approved.

*MGB 1.0 actually has what would likely be construed as two separate 
patent grants: the one in Section 2 (which uses 3 of the 5 patent verbs 
in 35 USC 271(a)) and the one in Section 3 (which uses all 5 verbs); 
only the latter grant is bounded by the term "embodied." I suspect a 
likely interpretation of these clauses that the rights to use, sell and 
import under patents is not bounded by the "embodied" limitation -- if 
it is a limitation -- and the rights to make and import are. This also 
seems problematic.

> 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.
>
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