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From "Michael Chen Lee" <mchen...@yahoo-inc.com>
Subject RE: CCLA: "by combination" language
Date Fri, 11 May 2007 00:13:24 GMT
Hi William:

Thanks for your response, although I'm a little confused by it.  Let me
try to clarify the controversy, as I see it, by taking your example and
adding the following:

- I own patent claim 1 with element A, claim 2 with elements A and B,
and claim 3 with elements A and C
- I work on the HTTPD project only, and am not working on Tomcat
- I submit a contribution to the HTTPD project that contains A
- At the time of my submission, the HTTPD codebase contains B, and the
Tomcat codebase contains C
- My patent claim 1 (A) is licensed under the CLA
- My patent claim 2 (A+B) is licensed under the CLA through the
combination of my contribution (A) with HTTPD (B)
- Question:  Is my claim 3 (A+C) also licensed through the combination
of my contribution (A) with Tomcat (C)?

>From my reading of past postings, some have said "no" in answer to this
question, while others have said "yes."  I agree with those in the "no"
camp, and also believe that this extends to contributions to subprojects
as well (i.e., if I only contributed to a specific subproject, my patent
claims should not be licensed under the CLA if those claims were
triggered solely by the combination of my contribution with code from
the larger project in which the subproject resides).  

However, I've seen enough in the "yes" camp to be confused as to what is
the correct interpretation.  Any help?  Thanks.

Mike

________________________________
michael chen lee  |  tel:  408.349.2829
mchenlee@yahoo-inc.com


-----Original Message-----
From: William A. Rowe, Jr. [mailto:wrowe@rowe-clan.net] 
Sent: Wednesday, May 09, 2007 1:39 PM
To: Michael Chen Lee
Cc: legal-discuss@apache.org; Joseph Siino; Raymie Stata;
jason.kipnis@weil.com
Subject: Re: CCLA: "by combination" language

Michael Chen Lee wrote:
> Hi All: 
> 
> I'm new to the legal discussion group, and wanted to pick up on an old
> but important topic that still is in controversy - what Jeff Thompson
> describes in the below thread as the "horizontal" scope of a "Work" in
> relation to the Apache CLAs.  If one submits a contribution to an
Apache
> project or sub-project, is that contribution considered to be
submitted
> to *only* the specific project/subproject at hand or to *all* ASF
> projects/subprojects?  If the latter, are the patent claims licensed
> under the CLA those claims necessarily infringed by the combination of
> one's contribution with (a) *only* an intended project/subproject at
the
> time the contribution was made, or (b) *all* ASF projects/subprojects?

>   
> It seems to me that interpretation (a) is the only reasonable option,
as
> it gives contributors the clearest and most reasonable scope as to
which
> patent assets it may be licensing, when it intends for its
contribution
> to be used in a specific subproject by submitting its contribution to
> that subproject.  

The answer -is- (b), HOWEVER...

> Interpretation (b) could mean that all of one's patent claims
triggered
> by the combination of one's contribution with any and all Apache
> projects would be licensed, regardless of the specific subproject to
> which that contribution was explicitly submitted.  This result, to me,
> is unreasonable and could not have been what the original Apache CLA
> drafters had intended. 

ONLY the submitter who has the right to grant patent license can trigger
the clause.  So you are granting the ASF ONLY the necessary claims that
are triggered by -your- submission.  It's the CLAIM that matters, you
can't suddenly invent scope of use or additional license terms on that
claim that aren't spelled out by that claim.

Let's say you own the right to a patent that, among other things,
describes using an alpha numeric tag with an arbitrary value as the
method
of defining a parameter to an HTTP request.  That's what your claim
says,
and that's what your patch submission does.

You submit this to the HTTPD project.  You've granted the patent license
by the AL.  If the Tomcat project picks up the logic described by that
claim,
they will also pick up your grant to that specific patent claim, as you
had
*already* granted that license.

Now what this does -not- let either HTTPD or Tomcat do would be to pick
up
another claim of your patent that says certain parameters can be
persistent.
Your patches haven't implemented that claim, so now if the tomcat or
http
project implement that claim, they can't say your first patch had
necessarily
infringed the later claim.

Finally, this example suggests the claim implements this for HTTP
protocol.
If there is another claim that something similar is used to pass
parameters
for an SNMP mail protocol, again your submission hadn't triggered that
claim,
as you hadn't submitted a patch to an SNMP mail server.  So if a mail
server
project at the ASF used the same technology, but it wasn't part of your
necessarily infringed claims, and they don't have a license to -that-
claim.

This is how I understand things; IANAL.

> However, I know that others on this thread have taken the opposite
view
> - namely, that if the definition of "Work" is broad, the resulting
> patent license must also be broad.  For example, see Jennifer
O'Neill's
> 5/26/06 post ("...the intent of the working group was that once a
> Contribution was "intentionally submitted" to ASF for inclusion in the
> open source community, any of the ASF projects could be the "Work," so
> that the patent grant broadly covered the combination of the
> Contribution with any conceivably relevant ASF projects.").   
>   
> There seems to be a fundamental disagreement on this aspect of the
CLAs'
> patent license provision.  Does Apache have a formal position on this?
> Given the differing opinions on this so far, I think Apache
contributors
> and the community at large would benefit by having clarity on this key
> point.  Thanks in advance and look forward to your collective
thoughts.

I'll let Cliff and Jeff add further observations.


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