
A Roadmap for Eliminating Patents in Open Source - pabs3
https://blog.hansenpartnership.com/a-roadmap-for-eliminating-patents-in-open-source/
======
rayiner
The most important issue is buried in the middle. Patent exhaustion applies to
_one specific instance_ of a patented item. The idea is that, when you sell a
physical product, it should flow through the stream of commerce unencumbered
by any patent rights held by the seller of the item. (Hence the landmark case
_Lexmark v. Impression Products_ , which held that contractual arrangements
between the seller and buyer could not limit the scope of the exhaustion as to
downstream purchasers of that item.)

When applied to software, the question is what is the "item" to which
exhaustion applies? In the closely related context of first-sale doctrine for
digital files, the Second Circuit has held that the first sale doctrine does
not apply to digital copies:
[https://en.wikipedia.org/wiki/Capitol_Records,_LLC_v._ReDigi...](https://en.wikipedia.org/wiki/Capitol_Records,_LLC_v._ReDigi_Inc).
By analogy, patent rights might be exhausted as to a copy of the software
downloaded from the patent holder. But it wouldn't apply to copies of that
copy, or to derivative works. (And that makes sense--the point of exhaustion
law is to give you unfettered right to use and resell the thing you bought;
not recreate it distribute it to more people.)

Open source licenses add an interesting wrinkle to that: what if making copies
and derivative works is authorized by the copyright license? Does the
exhaustion follow those copies? The article makes a case for "yes," and I'll
make the case for "no." A copyright license is a _contract._ _Lexmark v.
Impression Products_ tells you that the contractual arrangement between the
patent holder and first buyer does not affect the scope of exhaustion. That's
a double-edged sword. You can't limit the scope of exhaustion through license
restrictions. ( _E.g._ "you can only use this software for personal use" may
be enforceable as a matter of contract, but exhaustion probably applies to the
first buyer even if they use that copy for commercial use.) But on the flip
side, you can't broaden the scope of exhaustion--making it "viral"\--through
the copyright license either.

~~~
GoblinSlayer
A contract obviously can't contradict the law, but can grant rights that don't
contradict the law. If the contract grants rights to copy, modify and
distribute, then they are granted (usually irrevocably), the grant of rights
doesn't contradict law.

~~~
rayiner
Of course, as a matter of contract law, you can grant a license to use your
patents to anyone who uses your open source product under the terms of your
chosen license. The question here is whether, by making your software
available as open source, your patent rights are exhausted in any copies of
that software, even _in the absence of such a patent license._

What _Impression Products_ says is that the contractual arrangement between
buyer and seller _doesn 't matter._ Exhaustion is something that arises _by
virtue of patent law_ when a specific item is sold into the stream of
commerce. In theory, that should work both ways. You can't use the software
license to narrow the scope of patent exhaustion, and by the same token, just
because the license gives you a broad right to copy the software, that
shouldn't have any bearing on the scope of exhaustion.

(* This is all assuming that exhaustion even applies to software. _Impression
Products_ has an interesting line, where it distinguishes patent licenses,
where you can impose restrictions on the scope of the license, from sales of
patented products, where you cannot: "Because the patentee is exchanging
rights, not goods, it is free to relinquish only a portion of its bundle of
patent protections." Patent exhaustion is really bound up in this ancient idea
of the law disfavoring "restraints on alienation." That is to say, you can't
sell someone a piece of land, but only on the condition that the land can't be
resold. Software, however, is generally licensed and not sold, and that
includes software under open source licenses. The GPL v.2, for example,
states:

> However, nothing else grants you permission to modify or distribute the
> Program or its derivative works. These actions are prohibited by law if you
> do not accept this License. Therefore, by modifying or distributing the
> Program (or any work based on the Program), you indicate your acceptance of
> this License to do so, and all its terms and conditions for copying,
> distributing or modifying the Program or works based on it.

If receiving a copy of GPL'ed software as considered a "sale" the above
wouldn't be true. Under the first sale doctrine, you are entirely free to
modify a purchased copy of a copyrighted work free of any further restrictions
from the copyright owner. _E.g._ cases have upheld the right of buyers of art
to create a derivative work by cutting it up and mounting the pieces on tiles.
And, in theory, you should be able to resell your modified copy of the work
too.

 _Impression Products_ strongly suggests that, where you're talking about
receiving licenses to use, copy, and create derivative works of software,
rather than sale of a physical good including software, there is no patent
exhaustion.)

~~~
GoblinSlayer
Exhaustion has too narrow scope anyway, you can safely assume that patent
rights are not exhausted for the purpose of open source. But in addition to
rights you have obligations per the contract, and if the contract grants
rights to the consumer, those rights are guaranteed.

------
HeWhoLurksLate
> _The precedent for Open Source is quite clear: Patents cannot be used to
> impose onward conditions that the copyright licence doesn’t._

Does this mean that MongoDB and others who have changed their licenses to be
"everyone but cloud providers can do this for free" is not able to do that
because the work has been _presumably_ licensed?

I'm currently working on an externally modular keyboard with standardized
modules. It relies on the _open source_ Arduino IDE, Visual Studio Code (Open
Source), and the electrical designing was entirely done in KiCAD, but the
mechanical bits themselves were designed in Solidworks and Inventor. Is
_patenting_ my work okay? What parts? The individual parts themselves are
nothing new (RS-485, microcontrollers, Cherry switches [patent expired],
NeoPixels, and a _ton_ of adapted example code). I like the idea of Open
Source, but at the same time I don't want to get stuck _maintaining_ the code
forever without profiting from it (I would _love_ to do it for free, but like
the analogy of paid-for LiveCD's, I still need a truck to move the sand around
in, and lunch would be nice. What do I do?

~~~
jononor
Sell the hardware for profit, give away the design files under an open source
license. Assembled ready-to-run hardware is a serious value add on top of an
open-source hardware design. A strongly built brand should also be valuable in
such a niche. So I'd look mostly towards trademarking of the brand as IP
protection mechanism for such a project.

~~~
gmueckl
In hardware, the design alone may be worth next to nothing. The ability to
produce something at volume with a constant quality often depends on
knowledge, experience, tooling or other resources that are not present in any
design documentation. Sometimes, it is not even possible to replicate these
things.

~~~
jononor
You are right that manufacturing is tricky. Supply chain management and
Quality Assurance are complex topics that alone can be full-time jobs to stay
on top of, and can take a lot of work to replicate for potential competitors.
It is an area that is vastly underestimated by most Kickstarters.

At least those that don't operate in a very similar space, and have already
invested this time. But even then parts are often designed for a particular
manufacturing process or supplier (though it is said that best practice is to
always have multiple suppliers for any given part).

However for the PCB part of electronics, this has become a lot simpler the
last 5 years. There are now many excellent and very affordable manufacturers
that will do between 10-1000 boards (assembled & tested), available by just
registering an account online.

But manufacturing of enclosures, cables/interconnects, final assembly is still
a tedious, hands-on process for the buyer.

~~~
gmueckl
PCBs and CNC milled or 3d printed parts are a bit of an exception in that the
processes and services are stadardized enough that replication is not that
hard unless something really crazy is going.

But everything that relies on more traditional mass production methods
(injection molding, casting, ...) is much more dependent on the actual
execution of the manufacturing process and the part designs will generally
accomodate that, for example by avoiding certain geometries or incorporating
ways to account for manufacturing tolerances during assembly.

I am not an engineer myself, but I had to work with mechanical engineers
occasionally and I learned that the amount of work that goes into making some
seemingly simple parts manufacturable at scale and at cost can be surprising.

