Open source firms urged to go on legal offensive

Open source software companies are missing out on a relatively inexpensive way to fight concerns about patent liability, according to an attorney who spoke at an open source conference in San Francisco this week.

More open source companies should be asking the U.S. Patent & Trademark Office to re-examine patents that may pose a threat to them, as a cheaper, sometimes more suitable alternative to waging a patent lawsuit, said Van Lindberg, an attorney with Haynes and Boone LLP, who spoke at Infoworld's Open Source Business Conference in San Francisco.

Fears about patent litigation have plagued both open source companies and their customers, and stem from patent trolls as well as competitors. Microsoft, for example, has claimed that Linux may violate hundreds of its patents. It is currently suing GPS maker TomTom, partly over TomTom's use of the Linux kernel in its products.

Filing a re-examination request involves arguing to the USPTO that a patent should not have been granted in the first place, often because the technology was too obvious or because prior art, or previous examples of the technology, existed. Some open source groups are using this method already, such as the Electronic Frontier Foundation with its Patent Busting Project. But the strategy is underutilized by the open source community, Lindberg said.

"This is not a widely used technique among open source companies, but commercial (proprietary) companies have become very enamored of it," he said.

Enterprises that depend heavily on open source software might also benefit from requesting re-examination of patents that could impinge on it, Lindberg added.

The number of re-examination requests has jumped sharply since about 2004, he said, in large part because of a court decision, in KSR v. Teleflex, that lowered the bar for showing that a technology was too obvious to be patented. Many of the requests have been filed by proprietary software companies.

Going to court over a patent typically costs US$1 million to $4 million, Lindberg said, while filing this type of re-examination request costs $50,000 to $100,000, depending on the complexity of the claim. That's still a tidy sum for a small company, but one that could be divided among several concerned parties.

Filing for a re-examination may be the only option for some companies, since some open source licenses include a clause that revokes the license if the holder files a patent suit. A re-examination request can be filed anonymously in some cases, and it can be a handy bargaining chip for open source companies that don't have patents of their own.

A request can be used in patent negotiations even if it is only prepared and not filed. "You can say to a company, license me your technology on fair and reasonable terms or I'll submit your patent for re-examination," Lindberg said. It is also less likely to aggravate the open source community, which tends to frown on companies that litigate over patents.

Greg Olsen, who developed the open source program SendMail and founded the company of the same name, said Lindberg makes a good point.

"I was involved in some patent litigation [at Sendmail] and we were not aware of this option, and I wish we had been, because we ended up spending a ton of money. Everything turned out okay in the end, but it would have been nice to know about this," said Olsen, who is now a partner at Olliance Group, which provides consulting services to open source companies.

"The important thing is that this strategy costs a tenth as much as traditional patent litigation. One of the main appeals of open source is that it's less expensive, but that also means open source companies have less money to play patent games with," he said.

The process involves filing a request with the USPTO, which decides whether significant questions have been raised about the patent's validity. If it considers they have, the request goes to an internal board for review. Crafting an argument for overturning a patent requires a lengthy dissection of it, Lindberg said. Patent holders themselves sometimes ask the USPTO to look at their own patents for assurance they are valid, a process sometimes called "whitewashing." Those requests demand far less investigation, Lindberg noted.

There can be downsides to an open source company filing for re-examination, Lindberg noted. If the request is denied, for example, the patent is effectively strengthened because it has been "twice blessed" by the patent office.