Microsoft-Novell Deal Raises Implications for Patent Licenses Based on Open Source Applications

March 2007

This article is based on a written interview provided by Antoinette M. Tease for the online publication IT Business Edge. That article can be viewed here.

The Boston Globe reported on February 27, 2007, that Microsoft and Novell had entered into an agreement pursuant to which Novell agreed to pay Microsoft $40 million to avoid patent infringement claims brought by Microsoft against Novell based on Novell's SUSE Linux. Like all other versions of Linux, Novell's SUSE Linux is comprised of open source code governed by the GNU General Public License (GPL). The agreement between Microsoft and Novell was criticized by open source advocates as an acknowledgement on the part of Novell that Microsoft may have one or more patent claims that cover all or part of the functionality provided by the Linux code.

Unlike prior versions of the GPL, which did not address patent rights, the current draft of the GPL version 3 (GPLv3) has several provisions that address patent rights. Section 2 states that the license to use the open source code "terminates... if you bring suit against anyone for patent infringement of any of your essential patent claims" based on any version of the open source program. An "essential patent claim" is a patent claim that would give someone permission to make, use or sell the program. In other words, the GPLv3 takes the position that open source software should be free not only from copyright claims but also from patent claims. This policy statement is summarized in Section 11 of the GPLv3, which states: "You receive the Program with a covenant from each author and conveyor of the Program... that the covenanting party will not assert... any of the party's essential patent claims in the material that the party conveyed, against you, arising from your exercise of rights under this License." This means, for example, that if Novell distributes Linux to its customers, it cannot turn around and sue those customers for infringement of Novell patents based on functionality that is incorporated in Linux.

Furthermore, the GPLv3 imposes on those who "convey" (former versions of the GPL used the term "distribute") open source code to others the obligation to "shield downstream users" against patent infringement claims brought by a party with which the conveying party has entered into a non-sublicensable patent license agreement (this is presumably a reference to the Microsoft-Novell agreement) that purportedly covers functionality incorporated in the distributed open source program, or, in the alternative, to ensure that the source code to the licensed program is publicly available. This particular section of the GPLv3 is convoluted and may not fully address the problem that the Free Software Foundation (FSF)-the organization responsible for authoring the GPLv3-is intending to address. By "shield," the FSF may mean indemnify, or it may mean that the licensee is required to extract a promise from the licensor that it will not sue anyone else for infringement of the same patent based on the use or distribution of a GPL-governed software program. This language needs to be clarified. The alternative-that the conveying party (which is also the patent licensee in this scenario) ensure that the source code for the covered work is publicly available-does not protect users of that code from patent infringement lawsuits brought by the patent holder. It addresses the issue of access to the code, but it does not address the issue of shielding those parties from liability for patent infringement.

The GPLv3 is not an agreement between two specific parties; instead, it is an agreement between a community of software developers, on the one hand, and one or more users of the software, on the other hand. The agreement between Microsoft and Novell, which was an agreement between two parties, included a covenant not to sue based on the cross-licenses granted in the agreement. Similarly, Section 11 of the GPLv3 includes a covenant that no conveyor of a covered program will sue a user of that program for patent infringement. Section 2 of the GPLv3 states that the license to use the open source code terminates upon breach of this covenant not to sue. Those provisions should be as enforceable as any other provision of the GPLv3.

It is only fair that someone who benefits from the collaborative efforts of the open source community should not be able to assert a proprietary interest in the fruit of those efforts. What the GPLv3 does not address, however, is the flip side of that equation: should the open source community be exempt from patent liability based on inventions that are developed independently of the open source community?

The open source community should be as accountable in terms of patent infringement as any other party. In that respect, if Microsoft or any other company has developed and patented software that was not derived in any manner from open source code (in other words, Microsoft did not rely on the fruits of the collective labors of the open source community but rather developed the patented software entirely on its own), then the distributors of that software should be as accountable as anyone else for patent infringement.

The practical problem with this approach, however, is that it is rare for any commercial software today to be entirely devoid of open source code or any benefit derived from the use of open source code. That's where the equitable questions arise - who should have the burden of proving that a software invention was developed independently of any benefit derived from the efforts of the open source community? What standard of proof should apply? What happens if the company that developed the patented software used open source build tools but did not incorporate any open source code into its code base? In other words, where do we draw the line between saying that a patent holder has benefited from the collective efforts of the open source community (and therefore should forego its patent rights) and creating a special exception to patent infringement for a separate category of players (i.e., the open source community)? There are many in the open source community who believe that software should not be patented at all. But as long as this country maintains the position that software is patentable, we will have to resolve the conflict between the "free software" ideology of the open source community and the proprietary nature of software patents.


Amicable photo of Toni

Antoinette M. Tease, P.L.L.C.