Did Microsoft Really Just “Open Source All Its Patents”??

Always read the fine print…

This week, Microsoft announced its decision to join the Open Invention Network (‘OIN’) open-source patent consortium. Given Microsoft’s occasionally hostile relationship with open source, this announcement came as a surprise to many. Headlines and tweets proclaimed that Microsoft had “open sourced all its patents.”

Microsoft’s patent portfolio is one of the world’s largest and most valuable (reportedly, over 60,000 patents). Are all these patents now “open source?”

Below is a brief outline of what Microsoft’s participation in OIN does — and doesn’t — mean with respect to their patents (disclaimer**).

What is ‘OIN’?

OIN launched in 2005 as a company committed to protecting free development around Linux. This is accomplished via two primary components:

1. A portfolio of ~750 of its own patents covering a range of technologies (data processing, telecommunications, blockchain, IoT, etc.).
2. A ‘cross-licensing’ program it administers among OIN participants (“licensees”) (now over 2,600).

Any company can join OIN for free. When a company joins OIN:

1. The company receives an unrestricted license to OIN’s (750) patents.

This means an OIN participant can make, use, or distribute products that include technologies covered by OIN’s patents without risk that OIN may assert their patents (e.g., via litigation).

2a. The company receives a license to patents owned by any other OIN participant with respect to use or distribution of ‘Linux System’ technologies.

This means the company can use or distribute ‘Linux System’ technologies without risk that another OIN participant may assert their patents against such ‘Linux System’ technologies.

2b. The company grants a license of its patents to all other OIN participants for the use or distribution of ‘Linux System’ technologies.

This means the company agrees not to use its patents to interfere with the use or distribution of ‘Linux System’ technologies by other OIN members.

Other than OIN’s own patents (which are licensed without restriction), the OIN cross-license is limited to (a) ‘Linux System’ technologies and (b) OIN members.

OIN’s Cross-License is limited to ‘Linux System’ technologies

The OIN website maintains a comprehensive definition of ‘Linux System,’ down to listing specific software libraries and packages. Initially, OIN’s definition of ‘Linux System’ included libraries/packages that make up the Linux kernel. Over time, OIN has expanded its definition of ‘Linux System’ to include core packages from Android, Apache, Kubernetes, ChromeOS, and other Linux-based technologies.

A committee of OIN ‘members’ (including Google, IBM, Red Hat, and Toyota) dictates what packages fall under the ‘Linux System’ definition.

Participants in OIN commit not to use their patents against other OIN participants with respect to the use or distribution of ‘Linux System’ packages. For example, if one OIN participant holds a patent covering a ‘Linux System’ package, the patent holder cannot assert the patent against other OIN participants for their use or distribution of the covered ‘Linux System’ package.

However, OIN’s cross-license does not apply to technologies outside the ‘Linux System’ definition. For non-‘Linux System’ technologies, OIN participants are free to assert their relevant patents — even against other OIN participants.

OIN’s Cross License is limited to other OIN participants

In addition to being limited to ‘Linux System’ technologies, OIN participants only commit not to use their patents against the ‘Linux System’-related activities of other OIN participants.

For example, an OIN participant holding a patent on a ‘Linux System’ package cannot assert the patent against other OIN participants for their use or distribution of the covered ‘Linux System’ package. However, since the OIN cross-license does not apply to non-OIN participants, the patent holder may assert the same patent against non-OIN participants — even for use or distribution of a ‘Linux System’ package.

What does Microsoft’s decision mean?

1. By joining OIN, Microsoft agrees not to use any of its 60,000 patents against other OIN participants for their use or distribution of ‘Linux System’ technologies.
2. Microsoft’s participation in OIN does not limit Microsoft’s ability to assert its patents against technologies outside the ‘Linux System’ definition.
3. Microsoft’s participation in OIN also does not limit Microsoft’s ability to assert its patents against non-OIN participants — even for use or distribution of a ‘Linux System’ package.

Conclusion

Adding Microsoft as a participant is a major achievement for OIN and should make OIN participation even more attractive to other companies. Adding Microsoft’s patent portfolio to OIN’s cross-license provides substantial addition protection to OIN participants who use or distribute ‘Linux System’ technologies. However, these protections only extend to ‘Linux System’-related activities of other OIN participants.

Microsoft’s participation in OIN does not affect the potential applicability of Microsoft’s patents with respect to non-OIN participants and non-‘Linux System’ activities of OIN participants.

**Disclaimer: I am a patent attorney and have previously represented Microsoft in patent matters. I do not currently represent Microsoft. My comments (which are only food for thought — not legal advice :) )are based solely on the content of OIN’s license and are unrelated to my representation of Microsoft.

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