www-legal-discuss mailing list archives

Site index · List index
Message view « Date » · « Thread »
Top « Date » · « Thread »
From "Jim Barnett" <j...@bea.com>
Subject RE: CCLA: "by combination" language
Date Fri, 26 May 2006 17:10:28 GMT
I still think the contributor-side concerns on this issue are overblown.

It's not just any patent that the contributor holds that gets licensed,
but rather only patents covering contributions for which there is no
non-infringing alternative ("necessary patents").  If there is *any*
non-infringing way of accomplishing the functionality supplied by the
combination of patent-holder contribution plus later contrbutions, no
matter how inefficient, the patent license is NOT granted.

Up to the very moment of contribution, the patent-holding contributor
has total and absolute control over whether it wishes to subject itself
to the risk that subsequent third party contributions to the Work might,
when combined with its contribution, read on not just *any* patent held
by the Contributor, but on a necessary patent held by the contributor.
The would-be contributor can elect not to face the risk by not
contributing patented technology.

Taking a step back, most patent-holder/contributors are going to be
corporate donors rather than individual donors.  The fact that they have
elected to obtain a patent in the first place demonstrates that they
have the capacity and resources to evaluate the benefits versus the
costs of patent protection for a given technology.  They are equally
capable of deciding whether a particular patented technology provides
them with so much competitive advantage that they may in the future want
to wield the patent as a sword (not a shield, because the last sentence
of Section 3 reserves for them defensive use of the patent).
Accordingly, are they not also capable of deciding whether the benefit
of making a contribution outweighs the risk that it might lose offensive
use of the patent?  

Contributions covered by key, strategic, offensive-litigation-worthy
patents are probably not the type of contributions that the
patent-holder would or should want to make to the ASF under a CCLA, and
also are probably not the type of contributions the community and
downstream end users would want to receive.

On the other hand, in the absence of a temporally unbounded definition
of Work in the CCLA combination patent grant, what protection is there
for the community and downstream end users against the scenario where a
patent-holder contributes several related technologies, and through
rational engineering the project's developers supply the missing piece
so that the combination reads on a necessary patent held by the
contributor?  I think the Foundation and the community are in a lousy
position to evaluate and manage this risk, and the undesirable, but
logical result would be as Niclas says:  "...we should not entertain
such companies at all and decline the contribution."  Unfortunately, ASF
doesn't have any facile way of knowing at the time of contribution
whether a given contribution is even encumbered by a contributor's
necessary patent or worse yet may become encumbered by a contributor's
necessary patent after the date of contribution.

Were Work to mean "Work at the time of contribution and forever
thereafter", a patent holder/would-be contributor possessing what it
perceives to be (or to be likely to become via combination) a "necessary
patent", can avoid the risk of losing offensive use of the patent by not
making the contrbution.  I don't see this as a negative really since
what it means is that projects are less likely to get contributions that
are encumbered by patents that one day, through project evolution may
become "necessary" and are also viewed by their holder as having
offensive value.

Regards,

Jim            

-----Original Message-----
From: Niclas Hedhman [mailto:hedhman@gmail.com] On Behalf Of Niclas
Hedhman
Sent: Thursday, May 25, 2006 9:36 PM
To: legal-discuss@apache.org
Subject: Re: CCLA: "by combination" language

On Thursday 25 May 2006 11:09, Cliff Schmidt wrote:

> I wasn't making an argument related to patent exhaustion.  I just
> wanted to make sure Doug didn't think that Yahoo would be offering a
> broad RF license for all inventions that read on the particular patent
> claim(s) covered by their CCLA -- we're only talking about "products
> owned or managed by the Foundation".  How a typical software contract
> may or may not apply to the doctrine of first sale is a different
> topic.

I think Doug or the lawyers sees this scenario;

Yahoo contributes Work A to ASF, and license to ASF the patent B that
are 
covered in such contribution.
Company X wants access to Yahoo's patent C which is not part of Yahoo's
Work A 
that has been contributed. X is a committer at ASF project, and adds 
"whatever" which now violates patent C. In a dispute, ASF or its project

claims that Yahoo has licensed the patents with the contribution of Work
A.

Personally, I think that if companies keep a litigation attitude (i.e.
we want 
to be able to sue), we should not entertain such companies at all and
decline 
the contribution. 


Cheers
Niclas

---------------------------------------------------------------------
DISCLAIMER: Discussions on this list are informational and educational
only.  Statements made on this list are not privileged, do not
constitute legal advice, and do not necessarily reflect the opinions
and policies of the ASF.  See <http://www.apache.org/licenses/> for
official ASF policies and documents.
---------------------------------------------------------------------
To unsubscribe, e-mail: legal-discuss-unsubscribe@apache.org
For additional commands, e-mail: legal-discuss-help@apache.org

_______________________________________________________________________
Notice:  This email message, together with any attachments, may contain
information  of  BEA Systems,  Inc.,  its subsidiaries  and  affiliated
entities,  that may be confidential,  proprietary,  copyrighted  and/or
legally privileged, and is intended solely for the use of the individual
or entity named in this message. If you are not the intended recipient,
and have received this message in error, please immediately return this
by email and then delete it.

---------------------------------------------------------------------
DISCLAIMER: Discussions on this list are informational and educational
only.  Statements made on this list are not privileged, do not
constitute legal advice, and do not necessarily reflect the opinions
and policies of the ASF.  See <http://www.apache.org/licenses/> for
official ASF policies and documents.
---------------------------------------------------------------------
To unsubscribe, e-mail: legal-discuss-unsubscribe@apache.org
For additional commands, e-mail: legal-discuss-help@apache.org


Mime
View raw message