Free and Open Source Software & the Mystery of Software Patent Licenses
| Author | Author Anna Haapanen |
| Position | Visiting Senior Scholar at Stanford University School of Law, California |
| Pages | 19-28 |
Free and Open Source Software & the Mystery of Software Patent Licenses Under the GPL 19
Free and Open Source Software & the Mystery
of Software Patent Licenses
Author Anna Haapanen,a
(a) Visiting Senior Scholar at
Stanford University School of Law,
California
DOI: 10.5033/ifosslr.v7i1.107
Abstract
Despite the fact that the first FOSS licenses were drafted nearly
three decades ago, there still exists great confusion even among
the experienced technology lawyers and IT professionals as to
what are the actual (express or implied) patent license grants – if
any – conferred under the most common FOSS licenses, such as
the GPLv2, the BSD license and the MIT license. This article
discusses the possible outcomes in the light of a recent FOSS case
litigated in California.
Keywords
Law; information technology; Free and Open Source Software;
implied patent license
After three decades of open source license construction – Still no clarity
on the scope of the license grants
Use of free and open source software (FOSS) is wide spread – in fact, FOSS may be found
almost everywhere: in operating systems, in business applications, and in many (if not most)
consumer devices. The well-known advantages of FOSS include the low acquisition costs,
innovative development model through collaboration, and maturity of the software due to
reuse.
Despite the fact that the first FOSS licenses were drafted nearly three decades ago, there
exists uncertainty even among some experienced technology lawyers and IT professionals as
to what are the actual (express or implied) patent license grants – if any – conferred under
some of the most common FOSS licenses: the GPLv2, the BSD and the MIT licenses. The
reason for this is that there have been so fe w litigated cases and thus so few judicial decisions
to provide needed clarity.
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20 Free and Open Source Software & the Mystery of Software Patent Licenses Under the GPL
For a software program to be correctly characteriz ed as "open source", it must meet the Open
Source Initiative's Open Source Definition, which requires the free use, copying, modification
and distribution of the software.1 However, the specific license grants under the GPLv2, the
BSD and the MIT licenses were drafted using concepts derived mainly from copyright law
and not patent law.2 By way of example, the express license grants under the GPLv2 concern
only the exclusive rights of a copyright holder, namely copying, modification and distribution
of the code.3 The exclusive rights of a patent holder as enumerated in 35 U.S.C. Sec. 271(a),
i.e. the rights to make, use, sell, offer for sale and import, are not mentioned within the license
grants of the GPLv2. On the other hand, the GPLv2 includes the so called Liberty or Death
clause, which prohibits (also) patent holders from distributing code under the GPLv2 and
simultaneously claiming patent royalties from the licensees. 4 Under the BSD license, in turn,
redistribution and use of the software with or without modification is permitted subject to
certain conditions. The BSD license therefore mentions only one of the five enumerated
exclusive patent rights: "use." The MIT license recites both "using" and "selling" the software,
and therefore mentions at least two of the five enumerated exclusive rights of a patent holder.
The existence and scope of any patent license grants in popular open
source licenses is, to date, unresolved
Due to the ambiguity in the license grants of the most common FOSS licenses, questions have
been posed as to what is the actual scope of patent license rights granted under these FOSS
licenses, either expressly or implicitly. Specifically, the long debated topic has been whether
licensing of software subject to the term s and conditions of the most common FOSS licenses
triggers either a n express lic ense (based on the use of patent exclusive right verbs like “use”
or “sell”) or at least an implied patent license under the patents held by the copyright holder(s)
and/or the subsequent redistributor(s). To date, these questions remain unresolved, as there
has been no definitive federal or state court decisions in the United States (or for that matter,
1See the Open Source Definition by the Open Source Initiative at http://opensource.org/osd.
(Last visited April 14, 2015).
2Interestingly, in the 1970s, there was substantial doubt about whether U.S. federal patent,
copyright or any other federal protection would extend to computer software; accordingly,
most licensing of computer software was accomplished under state trade secret and state
confidentiality law protections. In the 1980s, with the passage of the Computer Software
Copyright Act Amendments of 1980 (following the CONTU Commission studies in the 1970s),
it was made clear that computer software was automatically protected upon creation by the
Federal Copyright Act, but the patentability of software remained unclear. It was only with a
number of decisions by the Federal Circuit in the 1990s that computer software patent
protection was put beyond doubt. Some twenty years later, following the U.S. Supreme Court’s
decision in Alice v. CLS, 134 U.S. 2347 (2014), there remains no doubt that copyright
protection extends to computer software, but the extent to which patent protection is available
in the face of subject matter objections under 35 U.S.C. Section 101 has reopened the debate.
To date, most post-Alice Section 101 subject matter defence motions have succeeded in
invalidating over 80% of the software patents challenged, on Rule 12(b)(6) motions to dismiss..
It may be too early to tell if this is just the result of early challenges being against “bad”
software patents improperly allowed by the PTO under historical norms, or whether a larger
trend toward invalidating most software patents is occurring.
3Sections 1 and 2 of the GPLv2.
4Section 7 of the GPLv2.
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Free and Open Source Software & the Mystery of Software Patent Licenses Under the GPL 21
so far anywhere in the world) directly addressing the scope of any patent rights granted, under
or in connection with, FOSS licenses.
The drafters of the GPLv2 were aware of the patent license issue; indeed, to rem ove the
ambiguity regarding the scope of the patent license rights granted under the GPL v2, an
explicit patent license was added into the GPLv3 in 2007. However, tens of millions of lines
of code may be still governed by the GPLv2; in addition, vast amounts of code are subject to
the permissive BSD and MIT licenses, which also do not address patent rights directly.
Therefore, even around three decades after drafting of the first of these licenses, a lack of
clarity still remains. As one FOSS lawyer put it: "The topic of what patent rights are licensed
under GPLv2 is a subject of controversy—or better said, mystery."5
What then should the FOSS community do to better understand the patent rights granted
under, or in connection with, these licenses? Most FOSS compliance policies and procedures
only address effectively the copyright issues, whereas the patent issues are often based upon
educated guesses as to the exposure to one's own patent portfolio when contributing and/or
distributing code under the GPLv2, the BSD and the MIT, or for that matter, what patent
rights may have been received from third party patent holders under, or in connection with,
these licenses.
The questions regarding any potential exposure to third party patents or to licensing one's own
patents may not be of concern to many FOSS users and licensors, since it has not prevented
the massive expansion of FOSS during the past three decades, by both independent software
development projects as well as corporate users.6 Ne vertheless, due to potential patent
exposure – particularly corporate users with large patent portfolios and financial exposure to
the patent portfolios of others -- may be less willing to use, or may require more strict review
and clearance processes when using, FOSS.
Recent FOSS litigations at a glance
In order to provide some clarity to the unclear patent license grants in some of the commonly-
used FOSS licenses, a few attempts have been made in the United States to analyze these
licenses in light of patent case law of implied patent licensing and estoppel theories in
5Meeker, Heath er, J.: Open Source and the Age of Enforcement. Hastings Science and
Technology Law Journal. (Vol. 4.2 Summer 2012) at 281.
6According to Black Duck, more than 50 % of all corporations are expected to use open source.
See Bla ck D uck: 2014 Fut ure o f Op en So urce Sur vey R esult s. Avai lable at
http://www.slideshare./net/blackducksoftware/2014-future-of-open-source-survey-results?
related=1 (Last visited April 9, 2015).
International Free and Open Source Software Law Review Vol. 7, Issue 1
22 Free and Open Source Software & the Mystery of Software Patent Licenses Under the GPL
general.7 Analysis of this topic in light of European law is even scarcer. 8 Most often the
question regarding potential implied patent licenses (under estoppel or other theories), and
also pate nt exhaustion, in the context of FOSS licensing has been stated to be "beyond the
scope of this article." While awaiting a definitive court decision on the specific questions
regarding the scope of patent licenses under the most common FOSS licenses, guidance for
the patent exposure analysis may only be found in court cases concerning implied patent
licenses and estoppel in general, supplemented with analysis of the very few FOSS-related
court decisions given so far.
Court decisions regarding construction of FOSS licenses are quite ra re both in the United
States and Europe, and at best give merely guidance on the very basic questions regarding
FOSS licenses, such as enforceability, availability of injunctions for breach of license and the
license condition versus contractual covenant debate. The first court decisions regarding
enforcement of FOSS licenses were given in Europe. The primary issues resolved in early
FOSS case law are that GPL is an enforceable license, and that injunctions are available for
breach of GPL both in Europe9 as well as in the United States.10 Breach of FOSS license
terms may also be considered as breach of license c onditions as opposed to breach of
contractual covenants, and accordingly, breach of license conditions may result in a finding of
copyright infringement – thus making available the most powerful remedies, such as
injunctions and statutory damages. The various benefits conferred by the FOSS licensing
model may also constitute consideration – the third element required for enforceable contract
in the United States in addition to the elements of offer and acceptance.11
From FOSS enforcement for compliance to enforcement for
commercial ends
The first wave of GPL enforcement actions were initiated in Europe by Harald Welte through
his gpl-violations.org-project, and in the United States by Software Freedom Law Center
(SFLC). These lawsuits have been characterized as "enforcement for compliance." Both Welte
and SFLC were successful in requiring the counter parties to obey all the terms and conditions
of the GPLv2. By way of example, all of the complaints filed by SFLC with the United States
District Court for the Southern District of New York (SDNY) during its first round of GPL
violation lawsuits were rapidly settled, and the defendants agreed to appoint Open Source
7See for example the very often cited writing by Pugh, Adam and Majerus, Laura A.: Potential
Defenses of Implied Patent License Under the GPL (October 31, 2006) available at
http://www.fenwick.com/docstore/Publications/IP/potential_defenses.pdf (Last visited April
14, 2015). See also Haapanen, Anna: P atent Exhaustion and Implied Patent License in
Connection with Free and Open Source Software. Research for the LL.M. Degree at Columbia
Law School supervised by Professor Eben Moglen. (May 2009) and Nadan, Christian, H.:
Closing the Loophole: Open Source Licensing & the Implied Patent License. The Computer &
Internet Law (Volume 26. August 2009).
8See Suchomski, Bernd: Proprietäres Patent Recht beim Einsatz von Open Source S oftware.
Eine rechtiliche Analyse aus unternehmerischer sicht. (Medien, Internet und Recht 2011).
9Welte v. Sitecom Deutschland GmbH, No. 21 O 6123/04 (District Court of Munich I) and
Welte v. D-Link Deutschland GmbH, No. 2-6 0 224/06 (District Court of Frankfurt am Main).
10 Software Freedom Conservancy, Inc. v. Best Buy Co., Inc., No. 09 CV-10155 (S.D.N.Y. Jul 27,
2010).
11 Jacobsen v. Katzer, 535 F.3d 1373, (Fed. Cir. 2008).
International Free and Open Source Software Law Review Vol. 7, Issue 1
Free and Open Source Software & the Mystery of Software Patent Licenses Under the GPL 23
Compliance Officers and publish the source code for the GPL-licensed programs they were
distributing.12 The second round of GPL enforcement complaints followed shortly thereafter
in New York, at SDNY, resulting again in quick settlement of the complaints, and
undertakings by the defendants to adhere to the obligations of the GPL.13 In addition to the
GPLv2, the Artistic License has been tested in United States courts. The Court of Appeals for
the Federal Circuit held that the terms of the permissive-type Artistic License are enforceable
copyright conditions, the breach of which constitutes copyright infringement. 14
While there is enough case law to establish that FOSS licenses are enforceable, the existing
FOSS case law does not yet give much guidance on the scope of license rights actually
conferred under the most common FOSS lice nses. However, the FOSS community is facing a
shift in enforcement actions – from enforcement for c ompliance to enforcement for
commercial ends. By way of example, XimpleWare Corporation sued Versata and Ameriprise
– as well as certain other defendants – for copyright and patent infringement based on use of
GPL-licensed software. These litigations were clearly initiated for commercial ends, not
(merely) for FOSS license compliance.
High hopes of the XimpleWare litigation to bring greater clarity
FOSS lawyers on the alert for a resolution of the patent issues in the GPLv2 have been
waiting for a court decision in the XimpleWare litigation, anticipating that any decision could
shed some light on the existence and scope of an implied patent license in the GPLv2. The
XimpleWare litigation was mentioned as the number one of the top FOSS legal developments
in year 2014, with anticipation that a court might finally interpret the scope of the license
grants in the GPLv2.15 Businesses dependent on GPLv2-licensed software were advised to
"watch this case carefully."16 Unfortunately, no guidance regarding interpretation of the
GPLv2 license rights materialized in the form of a very detailed court opinion, since the
XimpleWare litigation se ttled only a few weeks after being identified as a top 10 important
case. However, it is still worth revisiting the case – both the Complaints and the various
Motions to Dismiss submitted in the litigation – because they provide an interesting window
into the arguments that might be ma de in the future for both rejecting and finding a patent
license in the GPLv2.
Starting from the facts, XimpleWare had released an XML parser named VTD-XML under
the GPLv2. XimpleWare wa s also granted three United States patents, and the VTD-XML
software licensed under the GPLv2 was asserted by XimpleWare to practice each of the
12 The first round of complaints were filed by SFLC with the Southern District of New York in
Fall of 2007 against Monsoon Multimedia Inc., Xterasys Corporation, High Gain Antennas,
LLC and Verizon Communications Inc.
13 The second round of complaints were filed by SFLC with the Southern District of New York in
summer 2008 against Bell Microproducts, Inc., Super Micro Computer, Inc. and Extreme
Networks, Inc.
14 Jacobsen v. Katzer, 535 F.3d 1373 (Fed. Cir. 2008).
15 Radcliffe, Mark: Top 10 FOSS Legal Developments in 2014. (January 12, 2015) Available at:
http://opensource.com/law/15/1/top-foss-legal-developments-2014 (Last visited April 13,
2014).
16 Williamson, Aaron: Software Litigation Opens Pandora's Box of Key Open Source Issues.
(January/February 2015. Landslide. Vol 7. No. 3.)
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24 Free and Open Source Software & the Mystery of Software Patent Licenses Under the GPL
independent claims of those patents. XimpleWare sued, among others, Versata and its
customer Ameriprise, for both copyright and patent infringement based on use of the GPLv2-
licensed VTD-XML software.17 Versata allegedly incorporated the VTD-XML software into
its proprietary Distribution Channel Management (DCM) product in violation of the GPLv2
license requirements for source code disclosure and licensing of derivatives only under the
GPLv2. Since the VTD-XML software was embedded in the DCM product, XimpleWare
claimed that also Versata's products necessarily practiced the independent claims of the
XimpleWare patents.
Versata licensed its DCM product to Ameriprise under a proprietary ink-signed (and
presumably directly negotiated) Master Licensing Agreement. Ameriprise, in turn, provided
the DCM product, including the GPL-licensed VTD-XML software included with it, further
to thousands of its franchise-based financial advisors – again allegedly without adhering to the
terms and conditions of the GPLv2. XimpleWare also made the VTD-XML software available
under commercial license term s, but neither Versata nor Ameriprise had bought a commercial
license from XimpleWare. According to XimpleWare, Versata's exploitation of VTD-XML in
breach of the GPLv2 constituted wilful infringement of XimpleWare's intellectual property
rights due to the unauthorized use, making and selling of the DCM product without abiding
by the terms of the GPLv2 license.
Accordingly, XimpleWare brought a suit against Versata and some of its customers, including
among others, Ameriprise, United Healthcare Services and MetLife, for copyright and patent
infringement. Ximpleware also accused Versata of induced and contributory p atent
infringement. Further, XimpleWare sought preliminary and permanent injunctive relief
against Versata and its customers, seeking to enjoin the manufacture, production and sale of
products practicing XimpleWare's patents, as well as an award of treble damages based on
wilful infringement of XimpeWare's patents.18
As the Court commentary was on early motions and without any trial or evidentiary hearing,
the analysis below is based on the pleading stage only. Therefore, it may not be taken to be
definitive as to w hat a Federal Court (or ultimately the U.S. Supreme Court) would decide in
the evaluation of any dual licensing approach where FOSS licensing under the GPLv2 is
undertaken concurrently with proprietary licensing.
Arguments against and in favor of express or implied patent license
grants in the GPLv2
XimpleWare's complaints, as amended, resulted in a few rounds of motions to dismiss by
various defendants. The briefs in support of those motions provide an interesting preview for
FOSS lawyers of how the issue of patent licenses in the GPLv2 might be argued. In its
Second Amended Complaint against Versata, Ameriprise and other defendants, XimpleWare
17 For more detailed background of the case, see Ibid.
18 Complaint, Ximple WareCorp. v.Versata Software, Inc. (No. 3:13-cv-05160-SI) (N.D. Cal. Nov
5, 2013) (Copyright Complaint) and Complaint, XimpleWare Corp. v. Versata Software, Inc.
(No. 5:13-cv-05160-SI-PSG) (N.D. Cal. Nov 5, 2013) (Patent Complaint). The Complaint(s)
were amended on December 17, 2013 (Amended Complaint) and again on May 31, 2014
(Second Amended Complaint).
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Free and Open Source Software & the Mystery of Software Patent Licenses Under the GPL 25
claimed that the GPLv2 does not include a patent license, and the Preamble of the GPLv2, 19
where it refers to patents, is not an operative part of the license. According to XimpleWare,
only Sections 720 and 821 of the GPLv2 mention patents, but they do not grant a patent license.
Accordingly, XimpleWare claimed that infringement of XimpleWare patents resulted from the
use of Versata products without Versata or its customers entering a commercial license with
XimpleWare.22
In its Motion to Dismiss the Second Amended Complaint, Versata and United Healthcare
Services (UHS) noted that under Section 0 of the GPLv2,"the act of running a Program is not
restricted." Therefore, any use of VTD-XML to perform the patented method was explicitly
licensed under the GPL.23 U HS also referred to the Court's earlier Order dismissing claims
against UHS on this ground. The Court held that “Because an express license is a defense to
patent infringement, XimpleWare’s direc t infringement claims against Versata’s customers
turn on whether the customers’ distribution is licensed under the GPL.” Thus, the Court found
19 The preamble of GPLv2 references patents as follows:
[A]ny free program is threatened constantly by software patents. We wish to avoid the
danger that redistributors of a free program will individually obtain patent licenses, in
effect making the program proprietary. To prevent this, we have made it clear that any
patent must be licensed for everyone's free use or not licensed at all.
20 Section 7 of the GPLv2 states that:
If, as a consequence of a court judgment or allegation of patent infringement or for any
other reason (not limited to patent issues), conditions are imposed on you (whether by
court order, agreement or otherwise) that contradict the conditions of this License, t hey
do not excuse you from the conditions of this License. If you cannot distribute so as to
satisfy simultaneously your obligations under this License and any other pertinent
obligations, then as a consequence you may not distribute the Program at all. For
example, if a patent license would not permit royalty-free redistribution of the Program
by all those who receive copies directly or indirectly through you, then the only way you
could satisfy both it and this License would be to refrain entirely from distribution of the
Program. If any portion of this section is held invalid or unenforceable under any
particular circumstance, the balance of the section is intended to apply and the section as
a whole is intended to apply in other circumstances. It is not the purpose of this section to
induce you to infringe any patents or other property right claims or to contest validity of
any such claims; this section has the sole purpose of protecting the integrity of the free
software distribution system, which is implemented by public license practices. Many
people have made generous contributions to the wide range of software distributed
through that system in reliance on consistent application of that system; it is up to the
author/donor to decide if he or she is willing to distribute software through any other
system and a licensee cannot impose that choice. This section is intended to make
thoroughly clear what is believed to be a consequence of the rest of this License.
21 Under Section 8 of the GPLv2:
If the distribution and/or use of the Program is restricted in certain countries either by
patents or by copyrighted interfaces, the original copyright holder who places the
Program under t his License may add an explicit geographical distribution limitation
excluding those countries, so that distribution is permitted only in or among countries not
thus excluded. In such case, this License incorporates the limitation as if written in the
body of this License.
22 Second Amended Complaint, at 8, 10 and 20.
23 Versata Software, Inc., F/K/A Trilogy Software, Inc., Trilogy Development Group, Inc. and
Aurea Sotware, Inc. A/K/A Aurea, Inc.'s Notice of Motion and Motion to Dismiss the Second
Amended Compliant, No. 5:13-cv-05161-SI-PSG (N.D. Cal. June 13, 2014.) at 6.
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26 Free and Open Source Software & the Mystery of Software Patent Licenses Under the GPL
that mere use of XimpleWare’s patented source code was explicitly permitted under the
GPLv2, while unlicensed distribution of the source code is not allowed. 24 According to UHS,
whether the provision in Section 0 of GPLv2 is termed a disclaimer, a waiver, or a statement
estopping the licensor from later claiming a restriction against using the program, "GPL’s
language could not be clearer: running the software is categorically unrestricted." 25
Other defendants argued that any and all use of the software is permitted by the GPLv2, and
thus the patent infringement claims should fail. 26 MetLife and other defendants stated – with
reference to the Court's earlier order – that the fact that a patent license is included in the
GPLv2 was already decided by the Court. According to those defendants, "The law of the
case here is unmistakable. The GPL includes a patent license." 27
Ameriprise stated – in its first motion to dismiss XimpleWare's First Am ended Complaint –
that the entire point of open source software is that the software will be free to use.
Accordingly, Ameriprise argued that the GPLv2 places no restrictions on any other use of the
software, since activities other than c opying, distribution and modification are not covered by
the license – they are outside its scope, and because the act of running the program is not
restricted. Further, according to Ameriprise, it became a licensed user of XimpleWare
software when it received the software from Versata and thus retained its rights under the
GPL, regardless of whether Versata lost its rights. As making use of the software was not
contingent on compliance, and since Ameriprise did not modify the software or distribute
copies of it, it had the right to use the GPL-licensed software without any restriction.28
UHS further argued that XimpleWare simply gave up its right to se ek compensation for the
mere use of that software, including compensation for any patent royalties, regardless of
whether that use was authorized under a license, a waiver or an estoppel:29
Plaintiff chose to distribute its software to the public under the GPL for
its own commercial reasons. In so doing, Plaintiff represented to the
consuming public that mere use of its software was “not restricted.”
Plaintiff cannot wish that representation away now that it inconveniences
its litigation strategy. Plaintiff ’s arguments amount to a “bait and
switch,” seeking to recover payment for mere use that Plaintiff, through
its adoption of the GPL, told the world would be unrestricted.
24 Order Granting-in-Part Defendants' Motions to Dismiss, No. 5:13-cv-05161-SI-PSG (N.D. Cal.
May 16, 2014) at. 9.
25 United Health Care Solutions' Notice of Motion and Motion to Dismiss the Second Amended
Compliant, No. 5:13-cv-05161-SI-PSG (N.D. Cal. June 12, 2014.) at 9 and 10. See also Order
Granting-in-Part Defendants' Motions to Dismiss, No. 5:13-cv-05161-SI-PSG (N.D. Cal May
16, 2014).
26 Waddel & Reed Financial Inc.'s Notice of Motion and Motion to Dismiss the Second Amended
Compliant, No. 5:13-cv-05161-SI-PSG (N.D. Cal. June 13, 2014.) at 4.
27 Pacific Life Inc. Co., Metropolitan Life Inc. Co., the Prudential Inc. Co of America, Wellmark,
Inc. and Aviva USA Corp.'s Notice of Motion and Motion to Dismiss the Second Amended
Compliant, No. 5:13-cv-05161-SI-PSG (N.D. Cal. June 13, 2014) at 11.
28 Ameriprise Inc. and Ameriprise Financial Inc.'s Notice of Motion and Motion to Dismiss the
Amended Compliant, No. 5:13-cv-05161-SI-PSG (N.D. Cal. Dec. 31, 2013).
29 United HealthCare Services, Inc.'s Reply in Support of its Motion to Dismiss Second Amended
Complaint. No. 5:13-cv-05161-SI-PSG (N.D. Cal. July 3, 2013).
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Free and Open Source Software & the Mystery of Software Patent Licenses Under the GPL 27
Decisions from the case
The Court in the XimpleWare litigation confirmed again in November 2014 that use of
software is unrestricted under the GPLv2 – but that distribution is not. According to the Court,
the GPL permits distribution only if the distributing party satisfies several specific conditions,
such as including a copy of the GPL along with the distributed program.30 The Court
dismissed XimpleWare's direct and wilful patent infringement claims against Versata's
customers (except Ameriprise) and indirect patent infringement claims against Versata.
However, the direct and wilful patent infringement claims against Versata and Ameriprise
remained in the case. The Court gave XimpleWare the chance to amend its Complaint for the
third time. Before there was any chance to further brief or consider to what extent direct and
wilful patent infringement occurred as the result of Versata and Ameriprise's distributions of
the GPLv2 licensed software without complying with those licenses, the case was settled.
Conclusion
The XimpleWare FOSS patent litigation was settle d following Mediation on February 10,
2015 through the assistance of a retired federal judge, Hon. Jam es Ware (Ret.), who was
appointed as the Federal Mediator for the resolution of both the patent and the copyright
claims brought by XimpleWare.31 Absent settlement of both the patent and copyright
infringement proceedings, the litigation would have consumed two trials of substantial
duration in the Federal Courts. However, because of the settlement, no further clarification
was ever gained in this FOSS litigation regarding the question on the scope of any patent
license under the GPLv2, other than the ruling in defendant's earlier motions to dismiss that
the right to use is retained, as long as the license conditions of the distribution right are not
breached.32 Therefore, one view of the decisions in the XimpleWare litigation is that it should
be safe to assume that the GPLv2 does indeed include a right under the author's patents to at
least use the software, since by the terms of the GPLv2, the right to use the software is
explicitly unrestricted. Nevertheless, the other statutory patent rights – to make, to sell, to
offer to sell, or to import – remain unresolved.
Another view is that the matter will not be settled until one or more definitive appellate
rulings make clear whether the GPLv2 includes (or, based on the totality of the circumstances,
may trigger) a patent license grant of any type (and if so, what is its scope). In reaching such a
conclusion, the patent license grant would likely be analysed by implication – given that –
unlike the GPLv3 – the grant would probably be found to not be expressly present in the
GPLv2. However, in all cases, all licensing a ttorneys knowledgeable of the GPL should agree
that distribution of the GPL-licensed software is subject to compliance with the terms and
conditions of the license, and non-compliance may result in loss of all of the granted rights.
Still, many questions regarding the scope and extent of the patent remain until further, more
definitive rulings emerge from the courts.
30 Order Granting-In-Part Defendants' Motions to Dismiss. No. 5:13-cv-05161-SI-PSG (N.D. Cal.
Nov 25, 2014) at 11.
31 Notice of Settlement. No. 5:13-cv-05161-SI-PSG (N.D. Cal. Feb 10, 2015)
32 Order Granting-in-Part Defendants' Motions to Dismiss, No. 5:13-cv-05161-SI-PSG (N.D. Cal.
May 16, 2014) at 9.
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28 Free and Open Source Software & the Mystery of Software Patent Licenses Under the GPL
About the author
Anna Haapanen is attorney at Roschier, licensed to practice law in Finland and
New York. Currently Anna is on leave of absence as a Visiting Senior Scholar at
Stanford University School of Law (California). Anna specializes in Technology,
Media & Telecommunications (TMT), IP/IT transactions, outsourcing and
licensing with a focus on FOSS. She has previously worked at Software Freedom
Law Center (SFLC) in New York and Nokia Open Source Legal in Finland. Anna
holds an LL.M. from Columbia University, New York (with Stone Scholar
honours), an LL.M. from the University of Helsinki and an M.Sc. Econ. from the
Hanken Swedish School of Economics. Anna is recognized as a leading lawyer
within TMT and IT in international directories such as Chambers and Partners
and Who's Who Legal. Anna acts as Local Representative for Finland at the
International Technology Law Association (ITechLaw), and is Member of the
Board at the International Federation of Computer Law Associations (IFCLA).
Anna has also acted as Chairman of the Board at the Finnish IT Law Association
(2013&14) and Secretary to the Board at the Finnish IT Law Association
(2011&12)]
International Free and Open Source Software Law Review Vol. 7, Issue 1
Licence and Attribution
This paper was published in the International Free and Open Source Software Law Review, Volume 7, Issue
1 (December 2015). It originally appeared online at http://www.ifosslr.org.
This article should be cited as follows:
Haapanen, Anna (2015) 'Free and Open Source Software and the Mystery of Software Patent Licenses Under
the GPL', International Free and Open Source Software Law Review, 7(1), pp 19 – 28
DOI: 10.5033/ifosslr.v7i1.107
Copyright © 2015 Anne Haapanen.
This article is licensed under a Creative Commons 4.0 licence, share, adapt, attribution, CC-BY-4.0
available at
http://creativecommons.org/licenses/by/4.0/
As a special exception, the author expressly permits faithful translations of the entire document into any
language, provided that the resulting translation (which may include an attribution to the translator) is shared
alike. This paragraph is part of the paper, and must be included when copying or translating the paper.
