RE: Apache License : grant of patent license and derivative works

[Jeffrey Thompson]

"William A. Rowe, Jr." <[EMAIL PROTECTED]> wrote on 03/30/2005 12:29:00 AM:
> I agree, but consider the following (real) scenario.  Patents don't
> apply, but easily could in a similar case.
>
> Apache HTTP Server uses a patent (not really) that describes a method
> to close a socket in a graceful manner, by waiting a certain number
> of seconds before performing a 'hard close' irrespective of if the
> client was waiting, or went away.  We (really) call the concept
> lingering close.
>
> Apache HTTP Server 2.0 is released, and does the same thing for http:
> sockets again as it did in it's 1.3 version.
>
> Someone comes along and writes an ftp: module for Apache.  It uses the
> lingering close feature.  Unfortunately, the grantor of this (non)patent
> never intended to give it to the ASF for any purpose other than http:
> and did not license that application of the method.
>
> So we can easily be tripped up.  That said, the case doesn't vary that
> much from the case where someone patented the lingering close method
> unbeknownst to the ASF, and serves us a C&D to quit doing it.  I would
> expect the grantor who willing offered us the lingering close method
> to come back and state 'hey, that was for http: - what have you done?
> Please quit it!'  And so, we would.
>
> Now, I think a better solution is for the CCLA/ICLA to force the
> individual to not only disclose the patent granted but it's scope
> of fair use, so there is no ambiguity, and document same in NOTICE
> for the particular project.

The problem you describe isn't really a problem.  I'll explain why I think so below.  Then we can either agree or disagree on that.  However, first, I think that your solution won't work.  The reason is that the folks submitting the code to Apache won't necessarily know which patents read on the code.  So, they won't be able to disclose the patents without ambiguity.  

>
> But now I'll let the real legal folks disagree with me :)

Now, for why the problem you describe isn't a problem, I'll have to start quoting from the license . . . sorry.

The patent grant in section 3 of the Apache 2.0 license reads as:   "Subject to the terms and conditions of this License, each Contributor hereby grants to You a perpetual, worldwide, non-exclusive, no-charge, royalty-free, irrevocable (except as stated in this section) patent license to make, have made, use, offer to sell, sell, import, and otherwise transfer the Work, where such license applies only to those patent claims licensable by such Contributor that are necessarily infringed by their Contribution(s) alone or by combination of their Contribution(s) with the Work to which such Contribution(s) was submitted."

The end of that sentence selects which patent claims are covered by the grant:  "where such license applies only to those patent claims licensable by such Contributor that are necessarily infringed by their Contribution(s) alone or by combination of their Contribution(s) with the Work to which such Contribution(s) was submitted."

Therefore, when you make a contribution to the http project, if the project combined with your contribution infringes one of your patent claims, it is a licensed patent claim.  So, in this case, if the http project infringes your lingering close patent, then that patent is licensed.  Now, the important question is what is the scope of the license.

The middle of the sentence identifies the scope of the license:  "to make, have made, use, offer to sell, sell, import, and otherwise transfer the Work".  This doesn't say "to make . . . transfer the Work to which the Contribution was submitted", it says "to make . . . transfer the Work".  Since "Work" is broadly defined, the ftp project is also a Work as long as it is distributed under the Apache 2.0 license.  So, I think that the ftp project is safe.

So, the state of the Work that existed when you made your Contribution determines what patent claims are licensed, but does not limit what Works the license applies to.  What someone can't do is take your code that you contributed to the http project, move it to the ftp project, then claim that since there is a patent claim infringed by the combination of your contribution with the ftp project that wasn't infringed by the combination of your contribution to the http project that the new patent claim is somehow licensed.

Make sense?

>
> Bill
>

Staff Counsel, IBM Corporation  (914)766-1757  (tie)8-826  (fax) -8160
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