A recent decision at the US patent office may well give patent trolls cause to steer clear of open source projects – even more than the fierce resistance the community impressively funded and mounted in the GNOME case.

The patent troll who attacked them also lost the patent it was using for the assault, following the persistent efforts of McCoy Smith, an open source community legal specialist.

Here’s how it started. In 2019, Rothschild Patent Imaging (RPI) brought one of the first (and probably not the last) predatory patent lawsuits against an open source project. RPI claimed that the GNOME Project’s “Shotwell” software infringed Patent No. 9,936,086 (called the “Rothschild ‘086 Patent.”)

That prompted over 4,000 Free and Open Source Software (FOSS) community members to rally in defense of the GNOME Foundation, raising over $150,000 to defend against the bogus claim. Ultimately, the GNOME Foundation settled with RPI and secured a comprehensive and free-of-charge license to the patents for all open source software, ending GNOME’s challenge to the validity of the patent.

But that’s not the end of this story.

Of the many methods developed over the past 20 years to eliminate patent threats against FOSS, none is as powerful as challenging the nefarious patents directly. That’s what McCoy Smith, founder of OSI sponsor LexPan Law, did.

“I’ve been a patent lawyer for over 30 years, and am a former U.S. Patent Office patent examiner and patent bar review instructor, so I am a firm believer in the patent system,” Smith told OSI over email. “As someone who has also worked as an open source lawyer for over 20 years, I am also a strong proponent of a robust public domain. When I first found out about the lawsuit against GNOME, I read the patent-in-suit, and like many others, concluded that that patent was invalid, and never should have been granted. So I went about having the subject matter of that patent placed back in the public domain, where it always belonged.”

In October 2020, Smith’s firm LexPan Law filed a re-examination proceeding against the Rothschild ‘086 patent. Unwilling to let companies such as this—trolls who exploit patents without significant businesses other than collecting patent royalties or litigation settlements—continue to threaten the open source community, Smith pointed out in a re-examination request to the U.S. Patent & Trademark Office that the patent was not for any new invention. They agreed. As a result, all of these “claims” in the Rothschild ‘086 Patent – the part of a patent describing what the patent rights cover – have consequently been canceled. The Rothschild ‘086 patent can no longer be used against any victim, including open source projects.

Of course, that’s little comfort to the 20+ victims attacked after GNOME with the now-proven-worthless Rothschild ‘086 patent, or the 50+ companies targeted with related patents that haven’t yet been re-examined.

Perhaps it's time for the law to adjust to the point where the stakes for the troll are high enough to make it less appealing as a business?

Still, it’s good to know there are open source champions of all sizes defending the development of open software.

“The patent reexamination I filed, the proceedings of which are open to the public for all to see (Application Number 90014590), is my way of showing the open source community that there is a different, and in my opinion better, way to address patent threats when they arise,” Smith said.

Thank you for going the extra mile for the open source community!