This document discusses patents and open source software. It begins with introductions of the presenters and provides an overview of how patents can both conflict and align with open source licenses. The rest of the document covers what a patent is, including specifications, figures, claims, and different types of claims. It then discusses how contributing code to open source under a license can grant patent rights and the various implications for different open source licenses. The document concludes by outlining some patent strategies for open source projects, such as defensive portfolios, protecting differentiators, incentivizing standardization, and licensing programs.

1. © 2017 Wolf, Greenfield & Sacks, P.C., CC-BY-SA
Protecting Freedom:
Patents & Open Source
Strategy
November 8, 2017
Justin C. Colannino jcolannino@wolfgreenfield.com
Ed Russavage erussavage@wolfgreenfield.com

2. © 2017 Wolf, Greenfield & Sacks, P.C., CC-BY-SA
Presenters
Justin Colannino
Associate,
Litigation; Electrical & Computer Technologies
jcolannino@wolfgreenfield.com
BA, Computer Science, McGill University
ScM, Computer Science, McGill University
JD, Columbia Law School
2
Ed Russavage
Shareholder,
Electrical & Computer Technologies
erussavage@wolfgreenfield.com
BS, Electrical Engineering, University of Pittsburgh
MS, Computer Science, Rensselaer Polytechnic Institute
MS, Electrical Engineering, Rensselaer Polytechnic Institute
JD, Suffolk University Law School

3. © 2017 Wolf, Greenfield & Sacks, P.C., CC-BY-SA
Patents & FOSS
Patents
• Impose royalty on invention
• May seek injunction against
chosen infringers
• Can divide license based on
fields of use
• License may be specific to
a product
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Open Source Definition
• Free redistribution
• No discrimination against
persons or groups
• No discrimination against
fields of endeavor
• License must not be
specific to a product

4. © 2017 Wolf, Greenfield & Sacks, P.C., CC-BY-SA
Patents & FOSS – Together at Last?
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5. © 2017 Wolf, Greenfield & Sacks, P.C., CC-BY-SA
Agenda
• What is a patent? (Patents 101).
• Patents and FOSS contributions.
• Patent & FOSS Strategy.
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6. © 2017 Wolf, Greenfield & Sacks, P.C., CC-BY-SA
What Is A Patent?
• Patents vs. Copyrights
• A copyright protects the expression of a particular piece
of code.
• A patent covers the way the code operates.
• A patent needs to be new and non-obvious.
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7. © 2017 Wolf, Greenfield & Sacks, P.C., CC-BY-SA
What Is A Patent?
• A Patent Has Three Parts
• Specification – “a written description of the invention, in
such … terms as to enable any person skilled in the art
… to make and use the [invention]” 35 U.S.C. § 112(a).
• Figures – “The applicant shall furnish a drawing where
necessary for the understanding of the subject matter
sought to be patented.” 35 U.S.C. § 113.
• Claims – “The specification shall conclude with one or
more claims … distinctly claiming the subject matter
which the inventor … regards as the invention.” 35
U.S.C. § 112(b).
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8. © 2017 Wolf, Greenfield & Sacks, P.C., CC-BY-SA
Independent & Dependent Claims
1. A sitting device comprising:
• a seat; and
• a plurality of legs supporting
the seat.
2. The sitting device of claim 1,
further comprising:
• a back attached to the seat.
3. The sitting device of claim 1,
wherein the plurality of legs
comprise at least four legs.

9. © 2017 Wolf, Greenfield & Sacks, P.C., CC-BY-SA
Dependent Claims – Avoiding Prior Art
1. A sitting device comprising:
• a seat; and
• a plurality of legs supporting
the seat.
2. The sitting device of claim 1,
further comprising:
• a back attached to the seat.
3. The sitting device of claim 1,
wherein the plurality of legs
comprise at least four legs.
Claim 1 falls, but claims 2-3 survive!
Our
Invent
ion
Prior
Art

10. © 2017 Wolf, Greenfield & Sacks, P.C., CC-BY-SA
Dependent Claims – Targeting Infringer
1. A sitting device comprising:
• a seat; and
• a plurality of legs supporting
the seat.
2. The sitting device of claim 1,
further comprising:
• a back attached to the seat.
3. The sitting device of claim 1,
wherein the plurality of legs
comprise at least four legs.
Claim 1 is not new, claim 2 not
infringed, but claim 3 wins!
Our
Invention
Prior Art
Infringing
Product

11. © 2017 Wolf, Greenfield & Sacks, P.C., CC-BY-SA
What Is A Patent – Three Typical Software Claims
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Method CRM System

12. © 2017 Wolf, Greenfield & Sacks, P.C., CC-BY-SA
Patents & FOSS Contributions
• Patents Rights Licensed By FOSS Contributions?
• Depends on the mechanism for contributing.
• Given under a standard FOSS license – look to that license.
• CLA / other agreement?
• Important to consider, not discussed here.
• (Conservative) rule of thumb:
• Distributing code under FOSS license → patent license to that
code’s functionality, but only for license compliant activity
including that code.
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13. © 2017 Wolf, Greenfield & Sacks, P.C., CC-BY-SA
FOSS-Related IP
FOSS Provider/Author
• License (copyright,
FOSS-provided
code)
• License (explicit or
implied – patent)
FOSS Distributor
• License (copyright
FOSS provided
code, any distributor
improvements)
• License (explicit or
implied – patent)
FOSS User
• Receives right to
use code, create
derivative works
• Explicit or implied
patent license(s)
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• License provides copyright, any explicit or
implicit patent grants with code/license
• With violation of license agreement, cause of
action from code provider for copyright,
patent and/or other license issue

14. © 2017 Wolf, Greenfield & Sacks, P.C., CC-BY-SA
Patents & FOSS Contributions
License Grant Notes
GPLv3 To all claims that would be infringed by
“making, using, or selling” the work you
distribute, not including claims only infringed
by a further modification of the work.
Is putting code in a
system a “further
modification”?
Apachev2 To all claims “necessarily infringed” by a
contribution alone or “by combination of their
Contribution(s) with the Work to which such
Contribution(s) was submitted.”
What does “necessarily
infringed” mean for a
software contribution?
Note FAQ: claims that
“read on” a contribution
MIT “Permission is hereby granted…to deal in
the Software without restriction,
including…the rights to use”
“use” is one of the
exclusive patent rights.
Downstream?
BSD “Redistribution and use … with or without
modification, are permitted”
“use” is one of the
exclusive patent rights.
Downstream?
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15. © 2017 Wolf, Greenfield & Sacks, P.C., CC-BY-SA
FOSS and Patent Strategy
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• Defensive portfolio to protect project community
against competitor patent aggression
• Typical cases
• FOSS project enters market behind established non-FOSS
project and begins capturing market.
• FOSS project and competitor enter emerging space,
competitor has relevant patents.
• Counterclaim patents = leverage, reduce FUD
• Community without relevant portfolios may lead to
non-adoption.
• Community patent resources might be pooled
against common aggressor(s).

16. © 2017 Wolf, Greenfield & Sacks, P.C., CC-BY-SA
FOSS and Patent Strategy
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• Portfolio to protect differentiators (“secret
sauce”) built on FOSS platforms
• Typical case:
• Multiple entities contribute to (or use) to the same “platform”
project, but compete using own “differentiators.”
• E.g., phone manufactures / Android user interfaces.
• Protects non-contributed functionality.

17. © 2017 Wolf, Greenfield & Sacks, P.C., CC-BY-SA
FOSS and Patent Strategy
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• Portfolio as an incentive for standardization
• Patent holder participation tends to create a “safe
space” around a given project.
• Investment in a robust portfolio can be an incentive for
other community members to invest in, use, and
contribute to a given project, because they will receive
a license to the patents.

18. © 2017 Wolf, Greenfield & Sacks, P.C., CC-BY-SA
FOSS and Patent Strategy
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• Licensing program for non-project use
• Patents last 20 years – hard to predict value.
• Change in circumstances, e.g., rise of a competing
product or project becoming defunct could lead to
heightened value for defensive or offensive purposes
at a later time.
• Patents have commercial value beyond the code.

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