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The Blackboard Patent Pledge - Novell II?
Friday, February 02 2007 @ 12:18 PM EST

You probably noticed the press release about Blackboard's nonassertion patent pledge I just posted in News Picks. The press release announces a patent nonassertion pledge with respects to "Open Source Software" -- sorta:
In summary, the Blackboard Patent Pledge is a promise by the company to never assert its issued or pending course management system software patents against open source software or home-grown course management systems. The Blackboard Pledge is legally binding, irrevocable and worldwide in scope....

As part of the Pledge, Blackboard promises never to pursue patent actions against anyone using such systems including professors contributing to open source projects, open source initiatives, commercially developed open source add-on applications to proprietary products and vendors hosting and supporting open source applications. Blackboard is also extending its pledge to many specifically identified open source initiatives within the course management system space whether or not they may include proprietary elements within their applications, such as Sakai, Moodle, ATutor, Elgg and Bodington.

That seems to me to indicate that "proprietary elements within" Open Source applications and "commercially developed open source add-on applications to proprietary products" are covered by the pledge. But let's look at the pledge itself and see if it matches:

Blackboard hereby commits not to assert any of the U.S. patents listed below, as well as all counterparts of these patents issued in other countries, against the development, use or distribution of Open Source Software or Home-Grown Systems to the extent that such Open Source Software and Home-Grown Systems are not Bundled with proprietary software.

When have you crossed the line from permitted "proprietary elements" into verboten "bundled with proprietary software" territory? I find the language confusing.

Not to be a cynic, but the pledge shows up right after the Software Freedom Law Center successfully petitioned the USPTO to review all of Blackboard's patents.

There's an Open Letter to the Community from Blackboard too, addressing "the open source and home-grown course management community" and it says this:

This pledge symbolizes our continued commitment to that [leadership] role by agreeing not to assert U.S. Patent No. 6,988,138 and many other pending patent applications as well as their international counterparts against the development, use or distribution of open source software or home-grown course management systems anywhere in the world, to the extent that such systems are not bundled with proprietary software. This pledge also extends to the commercial support, hosting, customization and maintenance of such applications.

So those using home-grown or open source systems, professors and teachers contributing to open source projects, open source initiatives, commercially developed open source add-on applications to proprietary products and vendors hosting and supporting open source applications all are covered by this pledge. In addition, we have extended the pledge to many specifically named open source initiatives within the course and learning management system space whether or not they may include proprietary elements within their applications, including Sakai, Moodle, ATutor, Bodington and Elgg.

What is the definition of "add-on applications to proprietary products"? Where is the line where it becomes bundled with proprietary software? We have to get the language to agree, or at least Blackboard does, because it says this in the Open letter:

The text of the Pledge which incorporates by reference a list of frequently asked questions, as well as the announcement press release may be found on our website at www.blackboard.com/patent.

Here's Blackboard's FAQ, that explains what isn't covered by the pledge and what bundled means to Blackboard:

What does "Bundled" mean?
For purposes of this pledge, Open Source Software will be considered to be Bundled with proprietary software if any of the following are true:
1. the Open Source Software and proprietary software are licensed or provided via a single agreement;
2. the Open Source Software and proprietary software are sold together;
3. the Open Source Software and proprietary software are provided together via a media (e.g., on the same CD(s));
4. the proprietary software cannot operate without the Open Source Software; or
5. the Open Source Software and proprietary software can both be downloaded from the same location.

Can you give me a few examples of Bundled software?
If you license a product for a fee incorporating the Moodle Course Management System and other proprietary software, the Moodle application would be considered to be Bundled with the proprietary software.

If you sell proprietary software that will not operate without the Sakai Course Management System, the Sakai application would be considered to be Bundled with the proprietary software.

If you sell a CD to a user that has both proprietary software and an Open Source Software Course Management System on it, the Open Source Software Course Management System would be considered to be Bundled with the proprietary software.

How do you reconcile that language? Exactly what can you do? I honestly don't know, but by my reading, not much. But I'm not a programmer, so maybe someone can explain it.

There's another issue some are raising: Moodle is licensed under the GPL. Blackboard, then, appears to be attempting to place restrictions on GPL'd code by means of its nonassertion pledge, particularly as explained in the FAQ, which is incorporated by reference.

Wait a sec. Is there a pattern here?

First Novell's patent peace agreement, and now this, both touted with public fanfare as a wonderful thing for Open Source. And both impact on GPL code and restrict what you can safely do without threat of patent litigation, with the flip side of the coin fairly obviously floating in the air. I did mention that Microsoft partners with Blackboard, didn't I? And here comes Blackboard, talking about "home grown code" (which brought to my mind Microsoft's hobbyist language in its patent promise) and restricting what GPL code can do in the marketplace, under a threat of getting sued if it sets one foot outside the reservation. You can still write GPL'd code for fun, but you can't fully compete against proprietary software companies in the marketplace, unless you are willing to risk a lawsuit. And who benefits? Not the community.

Reactions have been at best mixed:

Greg Gay, project manager and originator of the ATutor project.... point outs that the pledge's bundling restrictions are contrary to the GNU General Public License (GPL). Section 4 of the GPL prohibits any sub-licensing that restricts its terms, while Section 6 specifically states, "You may not impose any further restrictions on the recipients' exercise of the rights granted herein." In other words, compliance with both the GPL and Blackboard's definition of bundling looks to be impossible....

Richard Fontana, a counsel at the SFLC, condemned the pledge has having "little legal meaning or substance." He suggests that "Blackboard could have acted responsibly by making a clear and unqualified commitment not to assert its patents against open source software. Instead, Blackboard has produced a convoluted document." In particular, Fontana dismissed the description of bundling given in the FAQ for the pledge as "an ill-defined concept that could potentially cover most circumstances in which open source e-learning software is used....We maintain that Blackboard's patent is invalid and that Blackboard has no right to obtain it," Fontana says, and all of those contacted by NewsForge echoed his comment, even though the patent is only indirectly related to the pledge they were discussing.

Blackboard already sued Desire2Learn, which tells us this about its position on open standards:

Desire2Learn is leading the industry in support of significant open specifications, standards and support for accessibility. We believe teaching and learning should be the priority, and technology should be invisible to the end user. To accomplish this goal, we strive to continually improve support for open standards and ensure the Desire2Learn platform is accessible to all.

Contrast that with the goals Blackboard and Microsoft announced when they first entered into a partnership in 2001, which I've shown you before in a different context:

In what the two companies call a "preferred relationship," Microsoft will promote Blackboard to its education customers and Blackboard will suggest that its clients use the Microsoft Windows operating system to run Blackboard on their servers to take advantage of special features available only to Microsoft users....

Despite its emphasis on Microsoft products, Blackboard will still write versions for Unix and Linux, says Matthew S. Pittinsky, chairman of Blackboard. All versions will have the same set of basic features, although Blackboard for Microsoft will eventually have more features than Blackboard for Unix or Linux, he says. "It will be more feature-rich to run Blackboard out of the box on Microsoft" than on other platforms, Mr. Pittinsky says. System administrators will have more options for configuring the Microsoft version of Blackboard than the non-Microsoft versions. End users will notice a difference between systems run on Microsoft and those run on other platforms, he says. It will be easier for users to incorporate documents from any Microsoft applications in Blackboard's online courses. They will have just one log-on for all Blackboard and Microsoft software through Microsoft's Passport technology.

Blackboard will also work more seamlessly with .NET, Microsoft's new technology for making all of its products interact using XML, or extensible markup language, a more powerful and flexible successor to HTML, the ubiquitous Web-coding language....

Microsoft and Blackboard formally agreed to cooperate last April. The decision was "almost a no-brainer" because Microsoft has financed and worked closely with Blackboard since Blackboard's creation in 1995, says Mr. Pittinsky, the company's chairman. The companies agreed that Blackboard will write all future versions of its software to operate best on servers running Microsoft's Windows operating system. Microsoft has given Blackboard $10-million in venture capital and has stationed Microsoft employees within Blackboard to help with product development...."Learning could take over from e-commerce as the number-one use of the Internet," says Mr. East, of Microsoft. That is enticing to Microsoft, says Mr. DeGroot of Directions on Microsoft. "What Microsoft wants is to own the educational-software market," he says.

Well. XML. Own the educational market. Hmm.

I think I get it: Microsoft customers get to ride in first class, and the rest of us can squeeze into coach, if we don't wish to use Microsoft products. All enforced by software patents. Oh, and commercial players in this field are being discouraged from using GPL software.

Software and patents need to get a divorce. And is anyone out there still thinking XML standards don't matter?

Update: A reader contributes another piece, from the Desire2Learn litigation: Desire2Learn's Response to Blackboard's Motion to Dismiss Desire2Learn's Counterclaim of Inequitable Conduct and to Strike Desire2Learn's Second Affirmative Defense [PDF].

Checking Pacer, I note that Desire2Learn asked for and was denied a stay until the patent reexamination could finish. Then Blackboard filed a motion to dismiss. Blackboard's Motion to Dismiss was denied. Here's the Order. And here's a snip from it:

Inequitable conduct occurs when a patentee breaches his or her duty to the U.S. Patent and Trademark Office (“PTO”) of candor, good faith, and honesty. See Bruno Independent Living Aids, Inc. v. Acorn Mobility Servs., Ltd, 394 F.3d 1348, 1351 (Fed. Cir. 2005). Inequitable conduct requires misrepresentation or omission of a material fact, together with an intent to deceive the PTO. Id. “[I]n the absence of a credible explanation, intent to deceive is generally inferred from the facts and circumstances surrounding a knowing failure to disclose material information.” Id. at 1354. At trial, both of these distinct elements must be shown by clear and convincing evidence, “and then weighed to determine whether the equities warrant a conclusion that inequitable conduct occurred.” Id. at 1351. (citations and quotations omitted).

Here, both parties agree that Rule 9(b) applies to D2L’s allegation of inequitable conduct. Blackboard argues that D2L failed to properly plead the “who” and “what” of its inequitable conduct claim. D2L states that it properly pled the individuals who owed a duty on behalf of Blackboard to disclose information to the PTO, and alleged the material prior art that was not disclosed.

D2L devotes 30 paragraphs and 5 pages to describing the defense of inequitable conduct. D2L alleges that Blackboard had a continuing duty to disclose all material prior art that Blackboard was aware of and that was not before the PTO. D2L specifically lists the names of the inventors (Robert Alcorn, Daniel Cane, Michael Chasen, Timothy Chi, Stephen Gilfus, Scott Perian, and Matthew Pittinsky), the prosecuting attorneys (Wayne Kennard, Wilmer Cutler Pickering, Marc Kaufman, and Anthony Barkume), and three other individuals (Matthew Small, Lisa Sotir, and Deborah Everhard) who allegedly owed this duty of disclosure to the PTO on behalf of Blackboard. D2L claims that Blackboard, including each of these individuals,2 breached this duty by failing to disclose material prior art to the PTO.

D2L has also alleged specific facts which, if true, support an inference of intent to deceive by Blackboard and its employees. D2L cites a letter by Chasen, a co-inventor and President and CEO of Blackboard, a speech given by Small, the General Counsel for Blackboard, and publications involving Chasen, Pittinsky, a co-inventor and Chairman of the Board of Blackboard, and Alcorn, a co-inventor, as evidence that Blackboard knew of the alleged material prior art during the prosecution of the ` 138 patent and failed to disclose it. Viewing the pleading in the light most favorable to D2L, the court concludes that D2L properly pled who breached the duty of candor to the PTO and alleged specific facts to support its claim for intentional misconduct.

Additionally, D2L describes two types of material prior art that allegedly were not disclosed to the PTO: (1) Prior Art of Acquired Entities, and (2) Prior Art relating to the Instructional Management System Project within the National Learning Infrastructure Initiative (the “IMS project”). Blackboard does not challenge the sufficiency of D2L’s pleading relating to the IMS project.

In regard to the failure to disclose prior art of acquired entities, D2L lists the alleged acquired entities involved, and states that the e-learning products developed, marketed and sold by these companies were material prior art that was not disclosed. At this stage, the court must accept these allegations as true. Given that D2L specifically lists the companies, describes the type of products developed, and argues that all of the e-learning products were material, the court finds the pleading meets the requirements of Rule 9(b). Blackboard will be able to challenge the merits of D2L’s inequitable conduct claim at a later stage in the proceedings. 3

IT IS THEREFORE ORDERED that Plaintiff’s Motion to Dismiss Desire2Learn’s Inequitable Conduct Counterclaim and to Strike Desire2Learn’s Second Affirmative Defense is DENIED.


2 In its response, D2L states that each of the alleged individuals were employed, or were2 retained, by Blackboard at the time of the prosecution of the ` 183 patent. Blackboard did not dispute this claim in its reply.

3 Because the court finds that D2L’s pleading is sufficient under Rule 9(b), the court doesnot reach the issue of whether Blackboard’s motion was timely filed.

Here's the scheduling order [PDF].


  


The Blackboard Patent Pledge - Novell II? | 144 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Corrections Here
Authored by: feldegast on Friday, February 02 2007 @ 12:26 PM EST
So PJ can fix them

---
IANAL
My posts are ©2004-2007 and released under the Creative Commons License
Attribution-Noncommercial 2.0
P.J. has permission for commercial use.

[ Reply to This | # ]

Off Topic Thread
Authored by: MathFox on Friday, February 02 2007 @ 12:31 PM EST
Pledges Open Source or patently legal issues only.

---
If an axiomatic system can be proven to be consistent and complete from within
itself, then it is inconsistent.

[ Reply to This | # ]

The Blackboard Patent Pledge - Novell II?
Authored by: wvhillbilly on Friday, February 02 2007 @ 12:44 PM EST
In view of M$ and Blackboard being in bed with each other, this looks like
another Microsoft attempt to cripple open source.

I smell a very big rat in this "patent pledge" woodpile.

---
What goes around comes around, and the longer it goes the bigger it grows.

[ Reply to This | # ]

The Blackboard Patent Pledge - Novell II?
Authored by: tknarr on Friday, February 02 2007 @ 12:51 PM EST

To my mind there's one big difference between Novell and Blackboard: Blackboard doesn't use, distribute or otherwise benefit from the GPL'd software it purports to put conditions on via it's patent pledge. To me that's the one thing that keeps their actions on the merely sleazy side of the line. Blackboard can't violate the GPL because they aren't bound by the GPL as regards their patents in GPL'd code. They still need smacked on other points, but not that one.

Of course, as noted elsewhere, there's a big question of whether they actually have any enforceable patents, something which is being addressed. With luck, the USPTO will rule against them and their pledge will be worth the paper it's printed on.

[ Reply to This | # ]

The Blackboard Patent Pledge - Novell II?
Authored by: Anonymous on Friday, February 02 2007 @ 01:05 PM EST
you whacky socialists.

[ Reply to This | # ]

Timing: late or coincidence
Authored by: iabervon on Friday, February 02 2007 @ 01:07 PM EST
It seems to me that, if Blackboard wanted to use this pledge to try to hold onto
their suspect patent, they'd have made the pledge sometime before the PTO agreed
to review the patent. Or do you think this pledge is a last attempt to get some
benefit out of the patent, since it's unlikely they'd be able to shake anybody
down with it before it implodes messily on them?

It seems more likely that this is a general attempt to improve their reputation
without any particular consequences, and it just happens to have come out at the
same time that the PTO started looking not-too-favorably at Blackboard.

On the subject of interactions between the GPL and other obligations, under your
reading of the GPL, is it a violation of the GPL to redistribute 802.11g drivers
you received under the GPL if you know that there are modifications which could
be made to the drivers which would cause them to make the device violate RF
emissions regulations? If not, how do you square this with the position that it
is a violation of the GPL to redistribute software if you know there are
modifications which could be made to it which would cause it to not qualify for
a third-party patent grant?

I'm not seeing how a copyright license could distinguish between a situation in
which an intermediary colludes with a third party to limit modifications and a
situation in which a third party with a legitimate interest and jurisdiction
limits modifications regardless of the intermediary's desires.

[ Reply to This | # ]

The Blackboard Patent Pledge - Novell II?
Authored by: skyisland on Friday, February 02 2007 @ 01:22 PM EST
It seems clear to me that they are simply trying to get open source advocates
off their case. They are not concerned about competition from open source. They
simply want to use their bogus patent to kill off commercial competitors.
They're hoping that the open souce community will say, "Okay, you can have
your patents as long as you don't bother us."

Software patents are not just about open source.

[ Reply to This | # ]

My oft repeated theory
Authored by: Anonymous on Friday, February 02 2007 @ 01:32 PM EST
I think Blackboard is trying to get the SFLC off its tail in the Desire2learn case. If Blackboard promises not to sue FOSS, then the SFLC may lose its motivation to intervene. SFLC

Desi re2learn has claimed inequitable conduct on the part of Blackboard. Blackboard filed a motion to dismiss that claim and that motion was denied.
Or der denying Blackboard's motion to dismiss Desire2learn's inequitable conduct counterclaim

Blackboard seems to have filed a bunch more patents. (I lost the link)

[ Reply to This | # ]

A false dichotomy
Authored by: stites on Friday, February 02 2007 @ 01:39 PM EST

I think that the logic behind Blackboard's patent nonassertion pledge runs something like this:

Blackboard wants to use its patents extract licensing fees from its competition. Of course the competition will fight back and the bigger the fight the more expensive it will be for Blackboard to win. To keep the patent fight from escalating beyond what Blackboard can afford they have decided to limit the number of opponents that they have to fight simultaneously. From their viewpoint it is wasted effort to fight opponents who are not making money from selling software which competes with Blackboard. So Blackboard is trying to make peace with people and organizations which create "home-grown" software, college professors who write code for academic reasons, Open Source software which is not commercially viable, etc. In the case of Open Source software Blackboard has issued a patent nonassertion pledge with respects to "Open Source Software". Then Blackboard adds qualifications to the pledge to try to make the pledge not apply to any open source software which is commercially viable.

The problem with Blackboard's logic is that Open Source does not operate as being divided into commercial and non-commercial groups. All of Open Source will defend against the Blackboard patent attack. We are not going to listen to Blackboard's explanation of their patent nonassertion pledge and then those of us who are not commercial quit fighting and leave the commercial Open Source companies to fight Blackboard by themselves. Similarly, we are not going to divide into those of us directly affected by Blackboard's patent assertions and the majority of us who are unaffected. Blackboard will have to fight a united Open Source movement.

--------------------
Steve Stites

[ Reply to This | # ]

The Blackboard Patent Pledge - Novell II?
Authored by: gbl on Friday, February 02 2007 @ 02:13 PM EST
To me, any company that wishes to restrict how pupils can learn in order to make a profit should be exposed for public critisism.

No patents should be allowed in any area of student tutition.

---
If you love some code, set it free.

[ Reply to This | # ]

Universal nonassertion patent pledge
Authored by: stites on Friday, February 02 2007 @ 02:22 PM EST

Both Microsoft and Blackboard have attempted to create a software patent nonassertion pledge for Open Source software. We strongly reject both attempts and are actively fighting against them.

However I think that the idea of a commercial company pledging not to use software patents against Open Source has merit. I suggest that the Software Freedom Law Center create a software patent nonassertion pledge for Open Source software which is completely acceptable to Open Source members. Then we can counter offer the SFLC software patent nonassertion pledge to Blackboard, Microsoft, and Novell as a way to settle our software patent disputes with these companies.

Obviously, if the software patent nonassertion pledge can be made palatable to our antagonists then it would also be palatable to our friends. I think that we could also ask members of the Open Source movement to sign the software patent nonassertion pledge.

One of Richard Stallman's objectives in creating GPL3 is to incorporate something similar to a software patent nonassertion pledge into GPL3. While this would apply to companies who distribute Open Source software, such as Novell, it would not apply to companies which do not distribute Open Source software, such as Blackboard and Microsoft. So we would need a separate software patent nonassertion pledge that non-members of Open Source could sign. The software patent nonassertion pledge and GPL3 would have to be very compatible or else we could get companies playing games where they are violating the terms of one of the documents but not the other thus leading to much more convoluted versions of the Microsoft-Novell agreement.

One of the possible uses of a universal software patent nonassertion pledge is to solve the problems created by the Microsoft-Novell agreement. If we could get Microsoft and Novell to sign a software patent nonassertion pledge writen by SFLC then the software patent problems in the Microsoft-Novell agreement would become moot.

-----------------------
Steve Stites

[ Reply to This | # ]

Flaw in PJ's analysis - meaning of "proprietary"
Authored by: Anonymous on Friday, February 02 2007 @ 02:47 PM EST
The word "proprietary" means "protected by law". In the
context of software, it usually means "protected by copyright law".
(See also explanations in Groklaw article "The Open Source Legal
Landscape" by Brendan Scott.) So it includes all copyrighted software,
including programs which were released under GPL and BSD licenses.

Now look at the pledge wording again: "to the extent that such Open Source
Software and Home-Grown Systems are not Bundled with proprietary software".
This means that the pledge only applies to stand-alone Public Domain software,
even though it uses the general, broad term "Open Source Software". It
especially doesn't apply to software under GPL and BSD licenses. This means that
the pledge is nearly worthless and meaningless for all practical purposes. Any
more detailed analysis of the pledge could end at this crucial point.

And as PJ already pointed out correctly, the pledge would limit the GPL license
of the specifically mentioned project Moodle in ways which break the license, so
the pledge can't be applied to Moodle too...

To actually solve the issues, let's try to get all Blackboard patents
invalidated instead. Lots of prior art available, etc.

[ Reply to This | # ]

No, it's not as bad as Novell
Authored by: Anonymous on Friday, February 02 2007 @ 03:49 PM EST

I think you're being unfair here. A 100% free distro like Debian comes fully under the non-assertion pledge. Even when you modify it and re-distribute it. That's not true of the Microsoft/Novell ploy.

The only gray area which might not benefit from the pledge is a distribution of software which contains some free and some non-free software. If you think that all non-free software is a Bad Thing (as many in the free-software community do - it's one of the few things that Debian and the FSF agree about), then you don't care. The people who are mixing in non-free stuff deserve whatever problems they run into.

[ Reply to This | # ]

The Blackboard Patent Pledge - Novell II?
Authored by: sbungay on Friday, February 02 2007 @ 03:52 PM EST
I think Blackboard is looking for PubPat to 'call off their dogs' and let
Blackboard keep the patent without a fight, a fight that they know they will
ultimately loose.


---
Programmer: A red eyed mumbling mamal that converses with inanimate objects.

IANAL IAAP

[ Reply to This | # ]

Oh, snicker....
Authored by: Latesigner on Friday, February 02 2007 @ 04:24 PM EST
What to say when facing a patent review :

Your Honor we didn't really mean it !

---
The only way to have an "ownership" society is to make slaves of the rest of us.

[ Reply to This | # ]

The Blackboard Patent Pledge - Novell II?
Authored by: kberrien on Friday, February 02 2007 @ 04:36 PM EST
How about Blackboard, not appose the petition before the USPTO, or even offer
support in revoking its own patent(s), and accomplish the same effect as they
think their pledge makes, so everyone will be happy.

Somehow I doubt that will happen, thus their pledge is meaningless. How better
to stand behind their pledge...

[ Reply to This | # ]

No stone unturned
Authored by: Anonymous on Friday, February 02 2007 @ 09:31 PM EST

Living in Taiwan, I can't help but be sensitive to Microsoft's continued attempts at squeezing FOSS.
Let me explain: Taiwan has its own flag, currency, tax-collecting government, and elected president, yet is claimed by China as part of their territory.
Any attempt by Taiwan to participate in any international organ is immediately met with extreme pressure from China. Nothing is too petty to escape the Chinese's attention.
The normal method is that Taiwan is slated for participation in this forum or that event, and as soon as the Chinese gets wind of this, pressure is applied on the host state/organizartion to exclude Taiwan, or, barring this, to downgrade its status to that of a Chinese province. Hence Taiwan normally participates as Chinese, Taipei.
Why do the Taiwanese put up with this?
Because China has 800+ intercontinental missiles pointing at Taiwan and threatens to use them at the slightest provocation (i.e. Taiwan trying to assert their independence), and UN, the US, and the EU toe Beijing's line (that is, they take the side of the bully...!).
Seeing Microsoft's behavior vis-s-vis FOSS is uncannily similar to the Chinese attitude towards Taiwan, which should cause FOSS-stakeholders to be aware of every attempt by Microsoft to encroach on the freedoms users are still able to enjoy. Microsoft would like to see FOSS die, make no mistakes about that, and will direct as much as it can of its not insignificant market power to seeing that goal accomplished.

Beware!

[ Reply to This | # ]

  • Burn resources - Authored by: Anonymous on Saturday, February 03 2007 @ 05:53 PM EST
Comparing different patent offers
Authored by: Anonymous on Friday, February 02 2007 @ 10:42 PM EST
It might be interesting to look at some of the different patent offers that have been made to the software development and user communities within the last couple of years.

First, it might be useful to understand exactly what "patent rights" means. From the USPTO, we get this description:

"The grant confers "the right to exclude others from making, using, offering for sale or selling the invention throughout the United States or importing the invention into the United States" and its territories and possessions for which the term of the patent shall be 20 years from the date on which the application for the patent was filed in the United States or , if the application contains a specific reference to an earlier filed application under 35 U.S.C. 120, 121 or 365(c), from the date of the earliest such application was filed, and subject to the payment of maintenance fees as provided by law."

"The exact nature of the right conferred must be carefully distinguished, and the key is in the words "right to exclude" in the phrase just quoted. The patent does not grant the right to make, use, offer for sale or sell or import the invention but only grants the exclusive nature of the right. Any person is ordinarily free to make, use, offer for sale or sell or import anything he/she pleases, and a grant from the Government is not necessary. The patent only grants the right to exclude others from making, using, offering for sale or selling or importing the invention."

So we learn that patent holders have the right to exclude others from "making, using, offering for sale or selling" an invention they hold patent rights on. Notice that this is a right to exclude, not an automatic prohibition against making, using, or selling the invention by anyone else. The right may or may not be exercised by the patent holder at their discretion. A patent license can then be viewed as simply an agreement by the patent holder not to invoke exclusion against a licensee under the terms of the license.

A patent license typically has many legally significant sections. Among the more important ones defined here are:

Definitions.

Devote some time to the definitions. They make it easier to write the rest of the agreement in a form that's easier to understand. Generally, you'll want to identify the licensed patents, licensed products, territory covered, and such terms as Net Sales, Improvements, etc.

Grant of License.

Is the license to be exclusive or non-exclusive? May the Licensee grant sublicenses? What rights do you reserve solely to yourself? Make sure these are clearly stated.

Term.

How long is the license to last? Generally it's to expiration of the patent (or the last expiring patent), except as provided under Termination.

With that background, let's look at some patent-related promises that have been published recently.

  1. Open Patent License for RTLinux
  2. IBM patent pledge
  3. Computer Associates International, Inc.'s Statement of Non-Assertion of Named Patents Against OSS
  4. Sun's COMMON DEVELOPMENT AND DISTRIBUTION LICENSE
  5. Microsoft’ s Patent Pledge for Individual Contributors to openSUSE.org and Microsoft’s Patent Pledge for Non-Compensated Developers
  6. Blackboard Patent Pledge

In what ways do these differ? One area to consider is that of patent definition, specifically what patents are included by the various promises. The RTLinux, IBM, CA, and Blackboard offers all identify a specific patent or set of patents that are covered, while the Sun license and Microsoft pledges appear to cover all patents held by them.

The biggest differences are in the scope of the grants being made. The RTLinux license grants royalty-free use under the simple conditions stated as:

The Patented Process may be used, without any payment of a royalty, with two (2) types of software. The first type is software that operates under the terms of a GPL (as defined below). The second type is software operating under an Open RTLinux Execution Environment (as defined below). As long as the Licensee complies with the terms and conditions of this License and, where applicable, with the terms of the GPL, the Licensee may continue to use the Patented Process without paying a royalty for its use.

The IBM patent pledge states (CA's pledge is very similar):

Subject to the exception provided below, and with the intent that developers, users and distributors of Open Source Software rely on our promise, IBM hereby commits not to assert any of the 500 U.S. patents listed above, as well as all counterparts of these patents issued in other countries against the development, use or distribution of Open Source Software.

In order to foster innovation and avoid the possibility that a party will take advantage of this pledge and then assert patents or other intellectual property rights of its own against Open Source Software, thereby limiting the freedom of IBM or any other Open Source Software developer to create innovative software programs, or the freedom of others to distribute and use Open Source Software, the commitment not to assert any of these 500 U.S. patents and all counterparts of these patents issued in other countries is irrevocable except that IBM reserves the right to terminate this patent pledge and commitment only with regard to any party who files a lawsuit asserting patents or other intellectual property rights against Open Source Software.

Microsoft's pledges concerning individual developers read:

Microsoft hereby covenants not to assert Microsoft Patents against each Non-Compensated Individual Hobbyist Developer (also referred to as “You”) for Your personal creation of an originally authored work (“Original Work”) and personal use of Your Original Work. This pledge is personal to You and does not apply to the use of Your Original Work by others or to the distribution of Your Original Work by You or others.

Microsoft hereby covenants not to assert Microsoft Patents against each Individual Contributor (also referred to as “You”) for Your distribution of Your personally authored original work (“Original Work”) directly to openSUSE.org, but only if, and to the extent, (i) Your Original Work becomes part of SUSE Linux, SUSE Linux Enterprise Desktop or SUSE Linux Enterprise Server, and (ii) You ensure that as a result of Your contribution, openSUSE.org, and all further recipients of Your Original Work, do not receive any licenses, covenants or any other rights under any Microsoft intellectual property. This pledge is personal to You and does not apply to any use or distribution of Your Original Work by others.

The Blackboard pledge reads:

Blackboard hereby commits not to assert any of the U.S. patents listed below, as well as all counterparts of these patents issued in other countries, against the development, use or distribution of Open Source Software or Home-Grown Systems to the extent that such Open Source Software and Home-Grown Systems are not Bundled with proprietary software.

The commitment not to assert any of these named U.S. patents and all counterparts of these patents issued in other countries is irrevocable except that Blackboard reserves the right to terminate this patent pledge and commitment only with regard to any party who files a lawsuit asserting patents or other intellectual property rights against Blackboard or its parent or subsidiaries. This pledge is binding on Blackboard’s successors and assigns.

(to be continued)

--bystander1313

[ Reply to This | # ]

The Blackboard Patent Pledge - Novell II?
Authored by: iraskygazer on Saturday, February 03 2007 @ 12:02 AM EST
This whole issue should never have to appear on Groklaw.

The USPTO is not doing its job to ensure that any patent issued is there to
serve the public at large. Over the past 20 years or so the USPTO has been
issuing patents that have no reason for being patented other than to make money
for some entity with absolutely no concern for the general public. Each day that
I read about patents being issued for concepts that have been around for longer
than the US has been, I learn more about how the people are not being well
served by the USPTO. Only special interests are being served by the USPTO.

If anybody in the USPTO had any common sense and guts to stand up and be heard
we would begin to see far fewer ridiculous patents being issued. Common sense
would show any patent officer that the practice of teaching and educating
students has not changed much since the one room schoolhouse. Given this one
distinction then anybody would realize that there is no way a patent could be
issued for any type of on-line or web based education system since the process,
that has existed for more than 100 years, has simply changed the medium for
information exchange. But the overall process has still remained unchanged and
there isn't a single person on this earth that can change that fact. So, why did
the USPTO actually issue a patent to Blackboard, or for that fact any other
entity?

We all need to stand up for common sense and write our government
representatives and tell them to fix the USPTO or shut it down. I don't want my
tax dollars to be dumped into a hole that simply leads to another powerful
individuals wallet. It's time to stand up and stop the stupidity.

Just think, somebody was actually issued a patent for a story line because of
slick wording in the application. Copyrights were designed for entertainment,
such as books and music, and patents were designed to protect hard work in
research and development of useful and tangible products. Why has the system
gone so astray from such simple views of the world?

[ Reply to This | # ]

"Home Grown" and "Hobbyist"
Authored by: Anonymous on Saturday, February 03 2007 @ 12:29 PM EST
Interesting observation as to the similarity

I think this is an attempt to frame the debate in such a way as to cast software
licenced under the GPL as having minimal commercial or legal significance. In a
sense, it's an updated version the of the old "hippies and communists"
slander that Microsoft used to try and trivialise the open source movement.

If they (MS and Blackboard) are trying to frame a debate, I think we need to
wonder which debate, and for whose benefit.

The obvious context would be in a legal challenge, but I think any competent
lawyer would be capable of pointing out that the GPL is a legal agreement, and
that licence compliance is required regardless of the software's authors.

I wonder if they're not laying the groundwork for a lobbying campaign. Go to
the lawmakers and say "we gave these kids every concession they need to
enjoy their hobby, and still we're getting sued!"

Just some mildly paranoid musings.

[ Reply to This | # ]

The Blackboard Patent Pledge - Novell II?
Authored by: unixpgmr on Saturday, February 03 2007 @ 12:58 PM EST
I was under the impression that WebCT purchased Blackboard. If that is true,
then the pledge made by Blackboard is meaningless. Since WebCT would have
access to the Blackboard patents, wouldn't they be able to sue saying that
Blackboard didn't have the authority to make such a pledge?

[ Reply to This | # ]

  • Wrong - Authored by: Anonymous on Saturday, February 03 2007 @ 01:16 PM EST
    • Wrong - Authored by: Anonymous on Saturday, February 03 2007 @ 09:08 PM EST
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