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U.S. Patent Reform Bill: An Interview with Mark Webbink

by Richard Koman

Open source software businesses and projects--like all software companies--have been living with a sword over their heads: the sword of patents. A year ago, the Open Source Risk Management (OSRM) firm reported the existence of 283 patents that the Linux source code may potentially infringe upon. (This is not to say Linux does infringe on all 283.)

While OSRM found that a third of those patents were held by Linux-friendly corporations like Cisco, HP, IBM, Intel, Novell, Oracle, Red Hat, and Sony, there were also at least 27 patents held by Microsoft, which has proven its willingness to patent other companies' work and pursue license fees in the recent squabble over the iPod interface.

Defending a patent claim costs about $2 million per side, per claim. That may be, as eBay deputy general Jay Monahan puts it, "an unfortunate cost of doing business," but that's not a cost most open source projects can afford. Granted, patent trolls will go after companies with deep pockets, but companies that compete with open source may see a strategy in using patent claims to simply shut down a small company.

Open source developers (and well-known companies like IBM and Novell that are involved in open source) have recently become quite worried that some troll or another will find an open source project or company infringing on a patent. It is time--commercial Linux developer Red Hat and Open Source Development Labs (OSDL), an industry consortium, have decided--to take corrective action.

At August's LinuxWorld '05, the organizations announced their own versions of patent commons--safe havens where patents could be dedicated to open source projects. OSDL's Patent Commons will be a place where companies and individuals can outright donate their patents to the community. Red Hat has agreed to fund the cost of registration for patents that will be donated to its Fedora Foundation. Those patents could then be used in projects using most open source licenses.

All of this is set against the background of a major patent reform bill that will be taken up by Congress this session.

I spoke with Mark Webbink, deputy general counsel for intellectual property at Red Hat, about the state of patents, the patents commons idea, and the legislation working its way through Congress.

Richard Koman: How does the current patent regime threaten the health of Linux and open source?

Mark Webbink: I'm not sure that it threatens Linux or open source any more specifically than it threatens all software. From my perspective, the whole situation has gotten far beyond what anybody would have reasonably expected 20 years ago. What we have now is companies filing patent after patent on minute improvements to relatively innocuous features to software, simply to bulk up their patent portfolio and lay more nails in the road for their competitors.

I'm going to use Microsoft as an example--not to pick on them, but they do pursue this as a strategy. They have 14 patents on the positioning and movement of a cursor and two more pending applications. One of the humorous ones of late is their claimed innovation to be able to add and delete white space from a document. They didn't file one patent on that; they filed one to add the white space and one to remove the white space.

Koman: It requires some special technical breakthroughs to be able to do that, I guess.

Webbink: I suppose it does.

Koman: Speaking of Microsoft, what's your take on this issue of Microsoft's patent on the iPod interface?

Webbink: That one's going to be interesting, especially in light of the proposed legislation to reform the patent system by moving from a first-to-invent to a first-to-file system. If we already had that legislation in effect, Microsoft would win hands down. In that case, I suspect there will be a long, drawn-out battle over who was the first to invent.

[Author's note: A few days after this interview, Creative Labs publicized the existence of a patent for its MP3 player's software interface, which, unlike Microsoft's claim, was certainly invented before the iPod came to market.]

Patent Reform Legislation

Koman: So, can you give us a big picture of the legislation--what would it do and who's interested in seeing it pass?

Webbink: It's House Resolution 2795. It was advanced by Lamar Smith, the chair of the House Subcommittee on Intellectual Property, with support from both sides of the aisle. The original legislation, as introduced, incorporated a lot of the proposed changes that were recommended by reports from both the Federal Trade Commission and the National Academies of Science. They then started getting feedback on this from a lot of different industries. Chairman Smith set up an industry panel to see if the industries could reconcile their differences. They picked a representative from the pharmaceutical industry, one from biotech, one from tech transfer (basically academic institutions), and for software they picked the Business Software Alliance.

Reforming Patent Reform

There's still a chance that the patent reform bill can be made somewhat useful. Webbink said that Red Hat has made some recommendations that would help software without offending the pharmaceutical industry:

  • Denying injunctive relief to patent trolls ("nonproducing entities," to put it nicely). "If you're not really producing anything and you're out licensing your patents then you're primarily interested in a monetary remedy," Webbink explained. "Why should you be granted injunctive relief, which for the company that is producing is like the death penalty? All of a sudden, you can't ship your product anymore."

  • Fund the Patents and Trademarks Office to create a patent prior art repository.

  • Exempt gold masters from the rule that copies produced outside the U.S. are subject to the infringing claim. "In the Eolas v. Microsoft case, Microsoft claimed that because they shipped a gold master to their foreign replicator and then all the foreign copies were produced outside the U.S., the foreign copies should not be subject to the infringement claim, and the court held against them. That's not a problem just for Microsoft, that's a problem for any software company that ships gold masters outside the U.S. to produce copies. We're basically asking for gold masters to be exempted from that rule so the only thing you would be faced with in an infringement ruling would be copies actually produced in the U.S., whether consumed in the U.S. or shipped abroad."

Those four groups got together and after days of arguing basically got nowhere. Given the amount of money that Big Pharma pours into Congress, when they said they wouldn't accept certain things, those things were taken out. The bill has been revised: it has removed many of the features that would have favored not just open source software but software in general. Especially the so-called second opposition period.

The original bill provided two post-grant opposition periods; one to commence immediately upon grant and the second to commence immediately upon an assertion of infringement. They removed that second one. That effectively takes away from all the small and medium businesses the chance to challenge a patent at the time that it's asserted, but left in the provision of big businesses to sit there and oppose any patent that any single inventor advances. The big guys are the only ones who can afford to monitor what's being issued. And they took out some additional provisions around injunctive relief.

Basically, the bill is a shell of what it originally was. And it still includes this first-to-file provision.

Koman: OK. So this bill, which is essentially written by Big Pharma, is it still a good thing, from the perspective of Microsoft and Oracle?

Webbink: I think if you were to ask [Microsoft general counsel (GC)] Brad Smith and [Oracle GC] Dan Cooperman, they would say, "At best, it's an OK bill now, it's not a great bill. It doesn't help the software industry very much at all."

Koman: So there's not really a division between Big Software and open source software on this bill?

Webbink: No, no. It's a division between Big Pharma and the software industry. The software industry is just less well-organized and does less in the way of political contributions.

Towards a Patents Commons

Koman: Let me switch over to the proposals you made at LinuxWorld regarding a repository of patents, and Red Hat funding the legal work for patents that would be given to the Fedora Foundation.

Webbink: Right, I mentioned the repository; this was something Stuart Cohen at OSDL had proposed. Having a central index of patents that are available for open source. What Red Hat has advanced as part of the Fedora Foundation, which we're in the process of forming, was that to the extent that developers have patentable inventions that they would like to contribute to open source, if they will assign those to the foundation, the foundation will pay to get the patent. And then we'll promise to make sure those patents are available to the open source community.

Here at Red Hat I've had people send me one-inch-thick write-ups of their inventions, and, you know, I don't want to look at that because I don't know what to do with it. They were willing to assign it to Red Hat, but I just don't feel right about that--we're a commercial company. If someone's willing to do that, let's make sure it's put in a place where it's free of the control of commercial companies.

That's quite frankly why you have competing proposals out there from Red Hat as far as the Fedora Foundation and OSDL, which is largely controlled by three or four very large OEMs.

Koman: Are you planning to work with OSDL? Are you in competition with them?

Webbink: We have always worked with OSDL; we'll continue to cooperate with them. I think there's room here for multiple players such that the Apache Foundation could pursue a strategy like this as well. Eclipse could. Mozilla could. And then we all become networked together. So we're not only protecting ourselves but protecting each other.

Koman: Sort of like the technology, take a decentralized approach.

Webbink: And that becomes the patents commons.

Koman: You don't necessarily see a need for one centralized go-to place.

Webbink: In fact, I would tend to think that one go-to place might not be such a good idea. The more you try to centralize these sorts of things, the harder it becomes to find a mechanism to make it work, because you get competing interests and people disagree. So better to have a variety of foundations each pursuing a similar strategy and agreeing to work together than trying to have them all pursuing a singular strategy.

Koman: Are there specific examples of a patent being claimed on some open source software that endangered the viability of the project or the company?

Webbink: No. To my knowledge, there have been no formal claims, but that's rarely how the game is played. One of the things you learn if you work in and around a technology company is you get these letters from patent attorneys saying, "My client has these three valuable patents on blahblahblah and we think these may be of interest to you. We're giving you an opportunity to license these patents early at a highly discounted rate." And what they're doing is trying to sucker enough people into taking that license that they can build up their war chest so they can go sue Microsoft or somebody who has deep pockets.

That's how it's typically played. So right now there are statements implying some kind of infringement but nothing specific. And among those laying out those kinds of comments is Microsoft. I have copies of letters they've sent along these lines. But they focused their attention not on the commercial companies but on customers. Which is part of the reason why I made the second challenge to them at LinuxWorld, which was, "Let's leave the customers out of this." If you have a beef, come to me, come to my counterpart at Novell, at IBM. But don't pursue this SCO strategy of threatening customers.

Koman: In the long-range view, what would you propose is the best solution to the patent morass?

Webbink: Well, you know, there's the world we live in and the world I'd like us to live in. The world I'd like to see us live in would never have allowed patents on software in the first place. You already had copyright protection. There's no other area of art that gets both copyright and patent protection. Software is the only one.

And if software is so doggone unique as to require the characteristics of both of those, perhaps software is unique enough that it deserves its own system of protection. I've been trying to raise a public discussion around this. If we had a whole new system, what would it look like? Would it protect things for the life of the author plus 70 years? Or maybe it would only protect things for 20 years? Or maybe it would only protect things for six or seven years--you know, double the life of the typical software package. Would it allow protection of minute, little, incremental changes, or it would only protect rather substantial and complete packages? To my way of thinking, what you want to do is protect the guy who's really been innovative, not the guy who's just tweaking things incrementally.

Dan Bricklin, when he came up with VisiCalc, you know, that was an innovation, Excel wasn't. And yet there are more patents filed around Excel and none filed on VisiCalc--which certainly helped Microsoft get started. Those are some of the things I've discussed. I published a paper ("A New Paradigm for Intellectual Property Rights in Software") through the Duke Law and Technology Review, where I talk about this a little bit.

That's the world the way I'd like to see it. The world we have is one of incremental reform. And what we have to do is find ways we can get the kind of reform we need, and it may be time to look at the patent system and say, one size doesn't fit all. Some of the ardent patent proponents will say, "Well, we can't be dividing up the patent system and treating pharmaceuticals differently than we treat software."

And I gotta say, why not? We already carve some things out and treat them differently. For example, a physician cannot be sued for patent infringement for practicing a method that someone may claim a patent on. That's for public policy reasons. There are other areas of patent law where it does differentiate to some extent. Why not make them more manifest? Give the pharma industry the 20 years of protection they need because it takes so long to get their drugs approved.

But look at software, and just say, well, six years, seven years, eight years, that ought to be plenty. And by keeping the term shorter you actually provide a better possibility of rapid innovation than by keeping a 20-year term.

Koman: Do you have any traction on this idea within the industry?

Webbink: (Laughs) Not yet. I mean, I keep raising it and there are some people with some of the major companies that have looked at it and said, "You know, you have a point there. Whether we'd ever get it changed that much is another question. But there is certainly some validity to the argument."

Koman: Microsoft has been advocating for patent reform for a while.

Webbink: Brad Smith has called for patent reform and what he called for was largely in line with the original Lamar Smith legislation. And probably 90 percent of what Brad Smith was asking for, I would have said, yeah, that's fine. Those are good things.

Koman: Is there more commonality or conflict between Big Software and open source software?

Webbink: At a certain fundamental level there is a commonality in terms of an interest in reform that benefits the industry broadly. Where we will part ways are on some of the extensions of that, in terms of [for example] this push that the U.S. government has been on through free trade agreements to impose our IP system on other countries. Before we get too carried away with that, we need to look at our own system and say, hey, have we really got this right yet?

Koman: Red Hat holds a number of patents, I believe.

Webbink: We hold a small handful of patents. We have more than 40 applications pending at this point. We make those available under our Patent Promise.

Koman: Describe the relationship regarding patents between Red Hat as a commercial company and the open source community.

Webbink: Whether an open source commercial vendor or an open source project, if others are going to threaten you with patent infringement, your strongest defense is going to be your own patent portfolio. Your patent portfolio may have nothing to do with the technology you're producing, because that only allows you to keep others from what you're doing. When Red Hat and others look at obtaining patents, I'm far more interested in what the other guy's doing. Because if he knows I have a patent that will disrupt his business, he's liable to leave me alone. A lot of the patents we've been filing are not on our own technologies, they're on technologies of other companies and extensions of those technologies. And it's not because we want to tax them, we just want them to leave us alone.

Koman: So the current regime creates this defensive filing system?

Webbink: Mutually assured destruction.

Koman: Under your promise, you promise not to pursue infringement claims on open source projects. Is that right?

Webbink: Right. We have limited that to those licenses that actually either have patent provisions in them or, like the GPL, will assure that the software is going to remain open. We did not extend it to the BSD license and some of the others where the technology that would read on those patents could be used in proprietary software. At the same time, to the extent that there are projects out there that use those non-approved licenses, we've communicated to them that we have no intention of ever pursuing a patent infringement claim against any open source project.

Koman: What's your take on IBM's and Novell's promises around protecting open source from patent claims?

Webbink: Well, IBM made 500 patents available, but that was more of a gesture than something meaningful. But they've done a number of other things that have had a good deal of substance to them. Making a public commitment not to assert their patent portfolio against open source and Linux more specifically. They have looked at making additional patents available and have undertaken some interesting thinking around the whole issue. I suspect Novell is doing somewhat the same thing, although I was a little disappointed in their statements about their current portfolio. They said, "We will use our current portfolio to protect ourselves." OK, what does that do for your customers, then? But Novell, unlike Red Hat, has its proprietary side and its open source side. And most of its patents are on the proprietary side. Most of its patents are on NetWare and the functionality of NetWare.

And now we've seen Nokia make the same kind of pledge that IBM did. And so this idea of building a framework around open source to protect it from patent threats is gaining traction.

Koman: Could that have enough heft to carry the day?

Webbink: In time we'll see that kind of framework and different variations of it. I don't think there's going to be any one solution, because solutions tend to be somewhat limited in their scope; they can't protect against all things, so you need a multiplicity of things to really build a sound framework to protect open source from most if not all of the threats.

Koman: What's happening in the rest of the world? You mentioned America exporting its intellectual property regimes.

Webbink: In Europe, having defeated the Computer Implemented Inventions Directive, now one of the directorate generals of the Commission has proposed a directive that would make willful infringement of patents a criminal offense, which everyone who has looked at that one has just said, "That's insane." I don't think that directorate will go anywhere, but it's sitting there and will have to be dealt with.

Richard Koman is a freelancer writer and editor based in Sonoma County, California. He works on SiliconValleyWatcher, ZDNet blogs, and is a regular contributor to the O'Reilly Network.

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