[VanL]

Hi, I'm the author of this talk. A couple quick notes:

First, the source materials I relied on are available at <https://github.com/google/opencasebook/blob/master/patents.m.... If you are interested, please read them.

Second, about Bowman v. Monsanto. The logic of Bowman is a pretty serious challenge to what I presented above. It might invalidate certain parts of my argument. Specifically, the question is whether it is even theoretically possible to exhaust the exclusive right to "make" a patented item.

I haven't yet been able to go back and do further research. But what I would be looking for is a case where someone sold an item - like a software application - with a license that says, "make as many copies as you want for internal use." If the buyer then transferred the software, would the new buyer get the right to make copies? I'm not sure. But if so, that would be evidence that a sale could exhaust the right to make.

Third, I thought this was a fun rabbit hole - and, as I said in my talk, a "surprising" result. The surprising bit is important. It is entirely possible - and even likely - that a court could agree with all the precedents I cited, and "distinguish" them to come to a contrary, non-surprising result.

In short, I think exhaustion is more important than people may be considering, but don't take this analysis to the bank.

[codetrotter]

Your link is broken due to the brackets you put around it.

Unbroken: https://github.com/google/opencasebook/blob/master/patents.m...

[chrismorgan]

(Which, I may add, is very disappointing since <> was expressly designed as delimiters to safely contain a link in emails and other plain-text formats, and has always been well-supported as such by other systems.)

[monochromatic]

This is a really clever theory, and I like it... but I’m afraid it’s probably too clever.

Still, fun to think about.

[jcranmer]

I have a hard time seeing how Intel v ULSI applies here. The decision in Intel v ULSI rests quite heavily on the idea that the nexus of the violation of the patent happens during the manufacturing process and not the design process. That is, the court looked at the contract to find that HP was selling the potentially-violating chips.

That fact is hard to extend to GitHub: GitHub is very arguably a mere distributor of software, not providing the "sale" that would exhaust patent rights. The sort of tortured logic you would have to get to to reach this fact is the kind of logic that tends to lose at court, and furthermore is unlikely to find many supporters in open source software legal teams (it would render most of the GPL null and void, for example).

[AstralStorm]

GPL did not handle any patents until version 3. As for version 3, it has a patent grant clause.

Even distributing BSD licensed code by a licensee exhausts patents embodied in it.

(As an interesting case, this might mean patents related to code published as ISO examples voids MP3 patents on specific algorithms used in that code. The question then is if the standard body is a licensee.)