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Reclaiming the Public Domain: Patent Edition

The potential negative impact of patents against free and open source software (FOSS) has been an expressed concern since at least the release of the GNU General Public License, version 2 (GPLv2) in 1991. The preamble of GPLv2 stated quite clearly the concern: “any free program is threatened constantly by software patents.” The potential threat of patents, particularly the use of software to hinder or stop the development or distribution of FOSS has long been the subject of vigorous discussion and debate.

Although at various times patent threats against FOSS have been promoted as imminent and dangerous, actual patent assertions against FOSS have been – in the 30 years since GPLv2 – exceedingly rare.

This historical background is the reason why the patent lawsuit filed against the GNOME Foundation in late 2019 was of significant discussion. That lawsuit seemed to be the first real manifestation of the long-raised concerns that patent holders would hold up FOSS software distribution and development by demanding royalties or other monetary compensation in return to access to their patents.

Although substantial funds were collected to mount a strong challenge to the patent asserted against the GNOME Foundation, in the end the patent challenge was resolved, resulting in a license to the patent-in-suit as well as others generated by the inventor of that patent, not only for GNOME, but for other FOSS as well. Many hailed this result as a “win” for FOSS.

Those believing the resolution of the GNOME litigation resulted in a win for FOSS, or for software in general, may not have considered at least two factors: first, the track record of various assertions of patents by the same inventor of the patent asserted against GNOME, and second, the underlying legal criteria for establishing that that patent is valid and enforceable.

On the first measure, the patent asserted against GNOME was generated by an individual, acting through a variety of different patent-holding entities, with some track record of making patent assertions found to sufficiently unfounded as to merit awarding penalties, or engaging in other litigation conduct determined to be legally sanctionable. On the second measure, the patent claims that were asserted against GNOME Foundation were arguably part of the public domain before the suit against the GNOME Foundation was ever filed. These two factors are not mere theoretical quibbles with a patent now available to all – the patent asserted against the GNOME Foundation was asserted in patent infringement lawsuits against at least 15 other entities after the assertion against GNOME, and to date, at least 3 of those suits are still pending.

There was another approach available – a direct challenge to the patent-in-suit. On behalf of its client Defease Patents, Lex Pan Law filed a challenge to that patent using the reexamination procedures available in the U.S. Patent & Trademark Office, in October, 2020. In January, in response to that filing, reexamination was ordered, and in March, 2020, all claims of that patent were rejected as unpatentable. The rejections made were notable in that they found identity of the claim asserted against the GNOME Foundation in the lawsuit with a patent uncovered and revealed to the U.S. Patent & Trademark Office by Lex Pan Law, which patent had lapsed into the public domain before that suit was ever filed. For those familiar with patent practice, all claims of the patent challenged were rejected for lack of novelty – a particularly difficult rejection to overcome without altering the patent claims, and thus triggering potential intervening rights to those who have made products before such amendments.

The reexamination process has not ended, but there should be more information in May about the status of that challenge. In the end, if the U.S. Patent & Trademark Office continues its current stance on the merit of Defease Patents’ challenge, the patent that has, and continues to be, asserted against so many will also make its way into the public domain. In the end, that result will be a victory for a more robust public domain and the freedom of all to use the features that had been previously been held exclusively for the benefit of one.

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