Software doesn't infringe any patents. Creating a product that includes the software may infringe the patent, and may infringe that patent because the software is included, but the software itself doesn't. Software on its own doesn't have any effect that could be patented, only as part of some machine. On the other hand, if you want to distribute software that is under the GPL v3. With your grand plan that you write software and then let the end users do the patent infringement, that will backfire in two ways: First, you'd be likely sued for contributory patent infringment, because it is you who enables the patent infringemnt.
Second, you can be sued for copyright infringement because you have no license that allows you distribution of the software, depending on the Open Source license used. Sign up to join this community.
The best answers are voted up and rise to the top. Stack Overflow for Teams — Collaborate and share knowledge with a private group. Create a free Team What is Teams? Learn more. What happens if open source software infringes existing patent? Ask Question. Asked 6 years ago. Active 6 years ago. Viewed 3k times. In this case, the inventive part of the patent is not the fact that memory and buses are combined with a microprocessor or chipset; rather, it is included in the design of the Intel Products themselves and the way these products access the memory or bus.
Exhaustion is triggered only by a sale authorized by the patent holder. LGE argues that there was no authorized sale here because the License Agreement does not permit Intel to sell its products for use in combination with non-Intel products to practice the LGE Patents. It cites General Talking Pictures Corp. Western Elec. LGE argues that the same principle applies here: Intel could not convey to Quanta what both knew it was not authorized to sell, i.
To be sure, LGE did require Intel to give notice to its customers, including Quanta, that LGE had not licensed those customers to practice its patents. But neither party contends that Intel breached the agreement in that respect. In any event, the provision requiring notice to Quanta appeared only in the Master Agreement, and LGE does not suggest that a breach of that agreement would constitute a breach of the License Agreement.
LGE points out that the License Agreement specifically disclaimed any license to third parties to practice the patents by combining licensed products with other components. But the question whether third parties received implied licenses is irrelevant because Quanta asserts its right to practice the patents based not on implied license but on exhaustion. But this is simply a rephrasing of its argument that combining the Intel Products with other components adds more than standard finishing to complete a patented article.
As explained above, making a product that substantially embodies a patent is, for exhaustion purposes, no different from making the patented article itself. Because Intel was authorized to sell its products to Quanta, the doctrine of patent exhaustion prevents LGE from further asserting its patent rights with respect to the patents substantially embodied by those products.
Here, LGE licensed Intel to practice any of its patents and to sell products practicing those patents. Accordingly, the judgment of the Court of Appeals is reversed. Dick Company. Marshall J. Brief for Respondent 21—22, n. Whether outside the country or functioning as replacement parts, the Intel Products would still be practicing the patent, even if not infringing it.
And since the features partially practicing the patent are what must have an alternative use, suggesting that they be disabled is no solution. The disabled features would have no real use.
See Keeler v. Standard Folding Bed Co. And second, whether a patentee exhausts its patent rights by selling its product outside the United States, where American patent laws do not apply.
The underlying dispute in this case is about laser printers-or, more specifically, the cartridges that contain the powdery substance, known as toner, that laser printers use to make an image appear on paper. Respondent Lexmark International, Inc. It owns a number of patents that cover components of those cartridges and the manner in which they are used. When toner cartridges run out of toner they can be refilled and used again.
This creates an opportunity for other companies-known as remanufacturers-to acquire empty Lexmark cartridges from purchasers in the United States and abroad, refill them with toner, and then resell them at a lower price than the new ones Lexmark puts on the shelves.
Not blind to this business problem, Lexmark structures its sales in a way that encourages customers to return spent cartridges. It gives purchasers two options: One is to buy a toner cartridge at full price, with no strings attached.
Many kept acquiring empty Return Program cartridges and developed methods to counteract the effect of the microchips. With that technological obstacle out of the way, there was little to prevent the re-manufacturers from using the Return Program cartridges in their resale business. Lexmark, however, was not so ready to concede that its plan had been foiled.
In , it sued a number of remanufacturers, including petitioner Impression Products, Inc. Lexmark argued that, because it expressly prohibited reuse and resale of these cartridges, the remanufacturers infringed the Lexmark patents when they refurbished and resold them.
The other group consists of all toner cartridges that Lexmark sold abroad and that remanufacturers imported into the country. Lexmark claimed that it never gave anyone authority to import these cartridges, so the remanufacturers ran afoul of its patent rights by doing just that. Impression Products filed separate motions to dismiss with respect to both groups of cartridges. The District Court granted the motion as to the domestic Return Program cartridges, but denied the motion as to the cartridges Lexmark sold abroad.
Both parties appealed. The Federal Circuit considered the appeals en banc and ruled for Lexmark with respect to both groups of cartridges…. We conclude that Lexmark exhausted its patent rights in these cartridges the moment it sold them.
For over years, the doctrine of patent exhaustion has imposed a limit on that right to exclude. See Bloomer v. United States v. This well-established exhaustion rule marks the point where patent rights yield to the common law principle against restraints on alienation.
Keeler v. Congress enacted and has repeatedly revised the Patent Act against the backdrop of the hostility toward restraints on alienation. That enmity is reflected in the exhaustion doctrine. Victor Talking Machine Co.
But an illustration never hurts. Take a shop that restores and sells used cars. The business works because the shop can rest assured that, so long as those bringing in the cars own them, the shop is free to repair and resell those vehicles.
That smooth flow of commerce would sputter if companies that make the thousands of parts that go into a vehicle could keep their patent rights after the first sale.
Those companies might, for instance, restrict resale rights and sue the shop owner for patent infringement. And even if they refrained from imposing such restrictions, the very threat of patent liability would force the shop to invest in efforts to protect itself from hidden lawsuits.
Either way, extending the patent rights beyond the first sale would clog the channels of commerce, with little benefit from the extra control that the patentees retain. And advances in technology, along with increasingly complex supply chains, magnify the problem.
See Brief for Costco Wholesale Corp. This Court accordingly has long held that, even when a patentee sells an item under an express restriction, the patentee does not retain patent rights in that product.
In Boston Store of Chicago v. American Graphophone Co. Two decades later, we confronted a similar arrangement in United States v. There, a company that made eyeglass lenses authorized an agent to sell its products to wholesalers and retailers only if they promised to market the lenses at fixed prices.
The Government filed an antitrust lawsuit, and the company defended its arrangement on the ground that it was exercising authority under the Patent Act. It is true that Boston Store and Univis involved resale price restrictions that, at the time of those decisions, violated the antitrust laws. But in both cases it was the sale of the items, rather than the illegality of the restrictions, that prevented the patentees from enforcing those resale price agreements through patent infringement suits.
And if there were any lingering doubt that patent exhaustion applies even when a sale is subject to an express, otherwise lawful restriction, our recent decision in Quanta Computer, Inc. In that case, a technology company-with authorization from the patentee-sold microprocessors under contracts requiring purchasers to use those processors with other parts that the company manufactured. One buyer disregarded the restriction, and the patentee sued for infringement. Once sold, the Return Program cartridges passed outside of the patent monopoly, and whatever rights Lexmark retained are a matter of the contracts with its purchasers, not the patent law.
The Federal Circuit reached a different result largely because it got off on the wrong foot. General Elec. The right to use, sell, or import an item exists independently of the Patent Act. What a patent adds-and grants exclusively to the patentee-is a limited right to prevent others from engaging in those practices.
Exhaustion extinguishes that exclusionary power. See Bloomer , 14 How. As a result, the sale transfers the right to use, sell, or import because those are the rights that come along with ownership, and the buyer is free and clear of an infringement lawsuit because there is no exclusionary right left to enforce. The Federal Circuit also expressed concern that preventing patentees from reserving patent rights when they sell goods would create an artificial distinction between such sales and sales by licensees.
Patentees, the court explained, often license others to make and sell their products, and may place restrictions on those licenses. A computer developer could, for instance, license a manufacturer to make its patented devices and sell them only for non-commercial use by individuals. If a licensee breaches the license by selling a computer for commercial use, the patentee can sue the licensee for infringement. If patentees can employ licenses to impose post-sale restrictions on purchasers that are enforceable through infringement suits, the court concluded, it would make little sense to prevent patentees from doing so when they sell directly to consumers.
A patentee can impose restrictions on licensees because a license does not implicate the same concerns about restraints on alienation as a sale. Patent exhaustion reflects the principle that, when an item passes into commerce, it should not be shaded by a legal cloud on title as it moves through the marketplace. See General Elec. Because the patentee is exchanging rights, not goods, it is free to relinquish only a portion of its bundle of patent protections.
So long as a licensee complies with the license when selling an item, the patentee has, in effect, authorized the sale. See Hobbie v. Jennison , U. A license may require the licensee to impose a restriction on purchasers, like the license limiting the computer manufacturer to selling for non-commercial use by individuals.
But if the licensee does so-by, perhaps, having each customer sign a contract promising not to use the computers in business-the sale nonetheless exhausts all patent rights in the item sold. See Motion Picture Patents Co. The purchasers might not comply with the restriction, but the only recourse for the licensee is through contract law, just as if the patentee itself sold the item with a restriction.
General Talking Pictures Corp. This does not mean that patentees can use licenses to impose post-sale restraints on purchasers.
In sum, patent exhaustion is uniform and automatic. Once a patentee decides to sell-whether on its own or through a licensee—that sale exhausts its patent rights, regardless of any post-sale restrictions the patentee purports to impose, either directly or through a license. Our conclusion that Lexmark exhausted its patent rights when it sold the domestic Return Program cartridges goes only halfway to resolving this case. Brief for Respondent The Federal Circuit agreed, but we do not.
An authorized sale outside the United States, just as one within the United States, exhausts all rights under the Patent Act. More is at stake when it comes to patents than simply the dealings between the parties, which can be addressed through contract law. Instead, exhaustion occurs because, in a sale, the patentee elects to give up title to an item in exchange for payment.
Allowing patent rights to stick remora-like to that item as it flows through the market would violate the principle against restraints on alienation. Exhaustion does not depend on whether the patentee receives a premium for selling in the United States, or the type of rights that buyers expect to receive. The judgment of the United States Court of Appeals for the Federal Circuit is reversed, and the case is remanded for further proceedings consistent with this opinion.
Usually, open source code is simply downloaded for free, either directly from the licensor or more frequently from a third party distributor or aggregator of open source code. The following two cases present situations analogous to many situations that occur when using open source code.
Excerpt from LifeScan Scot. Shasta Techs. We are therefore asked to decide, as a matter of first impression, whether patent exhaustion applies to a product distributed for free. We conclude that, in the case of an authorized and unconditional transfer of title, the absence of consideration is no barrier to the application of patent exhaustion principles.
Monsanto Co. The Court explained the rationale underlying the doctrine of patent exhaustion in Bloomer v. McQuewan , 55 U. See also Quanta , U.
McQuewan involved the effect of a patent term extension on patent licensees holding licenses to use the patented planing machine during the original patent term. The Court explained that. It passes outside of it, and is no longer under the protection of the act of Congress. See Univis , U. Millinger , 68 U. Boston Belting Co. Each of these formulations is broad enough to include a transfer of title that does not amount to a sale.
See 55 U. At bottom, a patentee has a choice as to how to secure its reward. Alternately, a patentee may choose to give that article away for free in the hope of obtaining a future benefit, as LifeScan did here. But a patentee cannot evade patent exhaustion principles by choosing to give the article away rather than charging a particular price for it.
Where a patentee unconditionally parts with ownership of an article, it cannot later complain that the approach that it chose results in an inadequate reward and that therefore ordinary principles of patent exhaustion should not apply.
In summary, we hold that patent exhaustion principles apply equally to all authorized transfers of title in property, regardless of whether the particular transfer at issue constituted a gift or a sale. Samsung Elecs. Ill, Patent exhaustion also applies to method patents. If the holder of a method patent authorizes another to practice the patented method, the patent holder cannot successfully sue for infringement those who acquire from the authorized user a product that substantially embodies the patented method.
Cascades contends that defendants manufacture and sell products that practice the method claimed in the patent. Samsung and HTC have moved for summary judgment. They contend that Cascades authorized Google to practice the patented method in its Android operating system and that their claimed infringement arises from their use of that same operating system, which they acquired from Google.
Ellis v. DHL Exp. In general terms, it describes a method for efficiently executing on one system architecture computer programming code that is intended for a different architecture. In , Cascades filed patent infringement suits against certain parties, including Samsung and HTC.
In exchange for a one-time fee, Cascades granted Google:. Thus the license agreement authorized Google, from that day forward, to convey the Android operating system—including the Dalvik JIT Compiler—without fear of a claim of infringement by Cascades. The settlement and license agreement between Cascades and Google also included a release and a covenant not to sue. The release provides that Cascades. Google provides the Android open source code to all sorts of device manufacturers, including Samsung and HTC.
Samsung and HTC make and sell devices that use the Android operating system. Samsung and HTC contend that by virtue of the license agreement between Cascades and Google, the doctrine of patent exhaustion bars Cascades from pursuing its patent infringement claims against them. Sturm, Foods, Inc. LG Elecs. Application of the doctrine of patent exhaustion does not depend on the existence of a sale for consideration. In LifeScan Scotland, Ltd. Thus the fact that Google gives away the Android operating system is no barrier to application of the doctrine of patent exhaustion.
Patent exhaustion applies to patented methods just as it applies to patented devices. Quanta , U. As a result, Cascades could no longer assert patent rights with respect to those products. See Keurig , F.
The license authorized Google to convey the Android operating system to others, and thus the conveyance of the operating system to Samsung and HTC was an authorized sale. For these reasons, the Court concludes that Samsung and HTC have established that there was an authorized sale of the Android operating system and the Dalvik JIT Compiler to them; no reasonable fact-finder could determine otherwise.
The Court therefore proceeds to consider whether Samsung and HTC have met the remaining requirements for patent exhaustion. It is difficult to see how purported noninfringing uses that run this sort of a risk could be considered reasonable.
For these reasons, the Court concludes that defendants have established that the Cascades—Google license brings the doctrine of patent exhaustion into play; no reasonable fact finder could determine otherwise. Defendants are therefore entitled to summary judgment on infringement from the date of the Cascades—Google agreement forward. Excerpt from Intel Corp. Intel is the assignee of U. Patent Re. Palmer, et al. Intel has developed a line of math coprocessors covered by the patent, including the Intel , , and coprocessors.
On July 29, , Intel brought an action in the U. The law is well settled that an authorized sale of a patented product places that product beyond the reach of the patent.
This longstanding principle applies similarly to a sale of a patented product manufactured by a licensee acting within the scope of its license. See Unidisco, Inc. Schattner , F. That argument is incorrect. Interpretation of a contract is a question of law which we review de novo. See Interstate Gen. Stone , F.
That section recites prices for the chips and includes a delivery schedule for shipments of the chips to ULSI. Nor, as Intel contends, must the licensed seller of a patented product own intellectual property rights to the product in order for there to be a sale. Intel confuses the issue of design origin with the issue of sale.
Intel does not dispute that HP was authorized under the broad terms of the licensing agreement to sell the chips at issue. If it had not granted that license or if the license had been limited in some relevant way, that would be a different case from the one before us. Intel might thereby have retained its right to proceed against those who entered into foundry agreements such as the present one. While Intel may not in retrospect be pleased with the deal that it made permitting HP to make unrestricted sales, it nevertheless granted HP that right in , presumably for consideration it believed to be of value at that time.
It cannot now renege on that grant to avoid its consequences. Thus, HP did not grant a sublicense; it sold a product, albeit one designed by its purchaser. ULSI is immune from infringement, not because it was a sublicensee, which it was not, but because HP was a licensed and therefore legitimate source of the chips. As discussed above, open source has self-executing licenses: Anybody who receives a copy of the code automatically is licensed for the use of that code by the applicable upstream licensor.
In the context of patent exhaustion, is there a logical distinction between licenses received through a direct download from a licensor, and those that are received via a third party? This BSD License does not make any patent claims and as such, does not act as a patent grant.
The purpose of this section is for each contributor to define their intentions with respect to intellectual property. Each contributor to this source code is encouraged to state their patent claims and licensing mechanisms for any contributions made. At the end of this section contributors may each make their own statements.
There is no guarantee that this section is complete, up to date or accurate. It is up to the contributors to maintain their section in this file up to date and up to the user of the software to verify any claims herein. Do not remove this header notification. The contents of this section must be present in all distributions of the software. You may only modify your own intellectual property statements. Please provide contact information.
The Cascades court identified the code that should be evaluated as having a significant noninfringing use as being the exact code implementing the claimed function e. Given this analysis, how likely is it that any code that implicates a patent would be found to have a significant noninfringing use? Lexmark at , emphasis added. The Open Invention Network is a shared defensive patent pool with the mission to protect Linux. Launched in , OIN includes as of October participating licensees Based upon the number of patents publicly owned by participants in OIN, the patent pool includes more than , active patents cross-licensed on a royalty-free basis, making it the largest patent pool in any industry.
It also includes a number of standard packages that are included with most Linux distributions. Also see the the tables listing applicable standards 40 and current list of packages.
One of the unique aspects of the OIN patent pool is that it grows in scope over time. Periodically the trustees of the Open Invention Network will propose a new set of packages to be added to the Linux System. In addition to the foregoing and without limitation thereof, with respect only to the Linux System, the license granted herein includes the right to engage in activities that in the absence of this Agreement would constitute inducement to infringe or contributory infringement or infringement under any other analogous legal doctrine in the applicable jurisdiction.
Notwithstanding anything in another Company Licensing Agreement to the contrary, You and your current and future Subsidiaries do not and shall not receive, and hereby disclaim and waive, any license from a Licensee and its current and future Affiliates pursuant to a Company Licensing Agreement for implementations of Linux Environment Components as specified in such Company Licensing Agreement to the extent that You and your current and future Affiliates are excepting any such implementations of Linux Environment Component from your license to a Licensee and its current and future Subsidiaries.
In each of the foregoing cases, such other Person shall be deemed to be an Affiliate only during the time such relationship as a Subsidiary or parent exists. How significant is the OIN patent pool? Many of the technologies used in the Linux System are more than twenty years old, and so are out of scope for any enforceable patents.
On the other hand, many new technologies are being developed in open source first, and only later commercialized. Which effect predominates? But as discussed above, open source licenses may imply or contain a broad but non-specific patent grant.
Can patent owner rights be exhausted through the actions of implicit licensees? The exact scope of what is patentable within a software program is subject to debate, and has changed over time. This discussion, however, assumes that there is some software, released under open source licenses, that is both patent-eligible and implicates one or more valid patent claims.
See the text of 35 U. See the examples of explicit patent grants and discussion infra. Free Redistribution : The license shall not restrict any party from selling or giving away the software as a component of an aggregate software distribution containing programs from several different sources.
The license shall not require a royalty or other fee for such sale. Distribution of License : The rights attached to the program must apply to all to whom the program is redistributed without the need for execution of an additional license by those parties. Academic Free License, Version 3. Apache License, Version 2. Eclipse Public License, Version 2.
Mozilla Public License, Version 2. Automatic Licensing of Downstream Recipients. Each time you convey a covered work, the recipient automatically receives a license from the original licensors, to run, modify and propagate that work, subject to this License. De Forest Radio Telephone Co. Free Public License, Version 1. Some footnotes and cites to the record have been omitted.
In re Spansion, Inc. A new making can occur in the context of extensive reconstruction or repair, or due to the result of self-replicating technology such as patented plants. Aro Mfg. Albany Perforated Wrapping Paper Co. Simmons , U. See also Bowman v. However, the right to make can be granted via license; see discussion, infra. Helferich Patent Licensing, Ltd. Times Co. Quanta Comput. Impression Prods. LifeScan Scot. Except as otherwise noted, the content of this page is licensed under the CC-BY Open Source Casebook.
United States Wang Laboratories, Inc. Mitsubishi Electonics America, Inc. And furthermore software patents often appear to be of such a fundamental nature that working around them is often simply not possible. Because of these reasons, patents are not exactly popular in the open source community. The supporters of the Free Software Foundation in particular pursue a very active lobby against software patents.
Because of the large number of potentially relevant patents and their putative triviality, many authors of open source software do not pay any attention to patents when writing their software.
The chance that a particular piece of open source software infringes on some patent is therefore quite real. A patent holder can make life very difficult for the author of an open source software package.
Of course this also holds for authors of commercial software, but an open source author usually does not have the means to take a license for all users of his software and does not have his own patent portfolio to improve his bargaining position. The free availability of the source code of course makes proving infringement very easy.
However, it does not happen very often that a patent holder approaches the author himself. Such distribution of infringing software usually at the very least counts as indirect infringement. A recent example is the Linux distributor Red Hat which has removed all MP3 software from its distribution because of potential conflicts with the MP3 licensing program of the Fraunhofer Institute and Thomson multimedia.
Users of infringing open source software of course can also be approached by the patent holder. This is mainly a risk if the open source software has been incorporated in an expensive product or service, for example as part of the operating system of a digital television or as part of the content management system for an online newspaper. The use of open source software can also introduce risks for patent holders themselves.
Some open source software licenses contain provisions aimed at reducing the risks of patents for authors and users of the software. If a patent holder distributes open source software under such a license, he may be forced to grant a royalty-free license or a non-assert declaration to all users of this software. For example, anyone who contributes to a project licensed under the Mozilla Public License is required to give an unlimited, royalty-free patent license on his contribution to the whole world.
Users of software under this license can only assert patents they have on this software against the author s or other users if they also pay a reasonable royalty for their past use of the software. If no agreement can be reached on what constitutes "reasonable", the license agreement terminates retroactively.
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