Rothschild Patent Imaging vs GNOME: a Particular Patent Dispute Resolved, But No Case Law Established
The GNOME Foundation settles a patent issue, and receives a release and covenant not to be sued. Further, a release and covenant is granted to any software that is published under an Open-Source-Initiative-approved free software licence. Contrary to the initial announcement, the GNOME Foundation didn't go to court to have this patent invalidated.
In October of 2019, the GNOME Foundation was attacked by a patent troll 1 and decided to fight back in court, to defend itself as well as the free software communities against abuses from the patent system. April had supported the Foundation in its endeavour by making a donation to the GNOME defence fund against patent trolls.
GNOME is a free, easy-to-use, user-friendly desktop environment whose goal is to make free operating systems accessible. As the Foundation explained, it was under attack by the Rothschild Patent Imaging (RPI) patent troll for infringing an image distribution patent concerning Shotwell, the GNOME's image and photo-organising application. The Foundation decided not to let this happen and to go to court, in order to “send a message to all software patent trolls.”
In its October 2019 announcement, the GNOME Foundation indeed announced a motion to dismiss the claim and have the patent invalidated: “We want to send a message to all software-patent trolls – we will fight, we will win, and we will get your patent invalidated.”
On May 20, 2020, the GNOME Foundation, Rothschild Patent Imaging and Leigh M. Rothschild announced that the dispute had been resolved: the Foundation has obtained a non-sue clause for any patent held by Rothschild Patent Imaging. In addition, the agreement provides that free software under an Open Source Initiative licence (see the licence list) cannot be sued by Rothschild Patent Imaging for infringing any of the nearly hundred licences involved.
This is probably a good deal for GNOME, as it neutralises about 100 patents for free software under an OSI-approved licence. But in the end the Foundation considers the software patent that RPI based its claim on – and incidentally all the others in its portfolio – as valid. This out-of-court settlement resolves a particular case – the threat of RPI's patents – whereas the counterattack announced by GNOME could have led to a case law extending beyond this single case, in a field where case law is rare. The patent trolls have a vested interest in maintaining this sort of legal uncertainty, which is a determining factor in their capacity to cause harm, by avoiding lawsuits.
- 1. Patent trolls are companies whose business model is based solely on licensing and patent litigation.