GNOME gets big open-source patent win

GNOME, the popular Linux desktop, didn't just avoid paying a patent troll, it won the right for any product under an Open Source Initiative license to use code covered by the company's patents.
Written by Steven Vaughan-Nichols, Senior Contributing Editor

In 2019, the GNOME Foundation was sued by Rothschild Patent Imaging (RPI) for violating its "wireless image distribution system and method patent" (US Patent No. 9,936,086)." Rothschild, a Non-Practicing Entity (aka a patent troll), had filed 714 lawsuits over the past six years. 

Now, in a surprise move, GNOME, makers of the popular Linux desktop of the same name, won not only a release and covenant not to be sued for any Rothschild patent but a release and covenant to any software that is released under an existing Open Source Initiative (OSI) approved license.

According to the RPI's complaint, GNOME's Shotwell open-source image organizer had infringed the 2008 patent because it used an image capturing device to import and filter photographic images from cameras and then allows users to organize the photos and share them on social media. Rothschild patent is thought to be both overly broad and invalid because it patented existing prior art technology. 

Fortunately, GNOME had friends. The Open Invention Network (OIN), a pro-Linux patent non-aggression consortium, and the law firm Sherman & Sterling came to GNOME's aid. GNOME was represented pro-bono by Shearman & Sterling's Matt Berkowitz, Kieran Kieckhefer, Joy Wang, and Larry Crouch.

Keith Bergelt, OIN's CEO, had announced that OIN would seek prior art that can be used to show that RPI's patent should be ruled invalid. Bergelt said: 

Rothschild is a bad company. This is an entity that's antithetical to the goals of innovation. It will sue foundations. It will sue not for profits. It will sue individuals. It will sue corporations. Their playbook is to establish a pattern of wins through relatively modest settlements, which can get other businesses to pay up without a fight.

Faced with this opposition, and the possibility of losing their patents, RPI backed off. Making the best of it, Leigh Rothschild. Managing Member of Rothschild Trust Holdings, said "I'm pleased that we have managed to settle this issue amicably. I have always supported the innovation of open-source software and its developers and encourage its innovation and adoption."

How did RPI ever get such a patent in the first place? Alex Moss, a staff attorney on the Electronic Frontier Foundation's (EFF)  intellectual property team, explained, "The Patent Office simply failed to apply the Supreme Court's Alice decision. The Alice decision makes clear that using generic computers to automate established human tasks cannot qualify as an 'invention' worthy of patent protection."

For now, RPI gets to hold onto their patent. But, no company or group creating open-source software needs to worry about seeing any RPI litigators at their door.

Neil McGovern, the GNOME Foundation's Executive Director, said,  "I'm exceptionally pleased that we have concluded this case. This will allow us to refocus our attention on creating a free software desktop, and will ensure certainty for all free and open-source software in the future."

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