A Roadmap for Eliminating Patents in Open Source
The most important issue is buried in the middle. Patent exhaustion applies to <i>one specific instance</i> of a patented item. The idea is that, when you sell a physical product, it should flow through the stream of commerce unencumbered by any patent rights held by the seller of the item. (Hence the landmark case <i>Lexmark v. Impression Products</i>, which held that contractual arrangements between the seller and buyer could not limit the scope of the exhaustion as to downstream purchasers of that item.)<p>When applied to software, the question is what is the &quot;item&quot; to which exhaustion applies? In the closely related context of first-sale doctrine for digital files, the Second Circuit has held that the first sale doctrine does not apply to digital copies: <a href="https:&#x2F;&#x2F;en.wikipedia.org&#x2F;wiki&#x2F;Capitol_Records,_LLC_v._ReDigi_Inc" rel="nofollow">https:&#x2F;&#x2F;en.wikipedia.org&#x2F;wiki&#x2F;Capitol_Records,_LLC_v._ReDigi...</a>. By analogy, patent rights might be exhausted as to a copy of the software downloaded from the patent holder. But it wouldn&#x27;t apply to copies of that copy, or to derivative works.  (And that makes sense--the point of exhaustion law is to give you unfettered right to use and resell the thing you bought; not recreate it distribute it to more people.)<p>Open source licenses add an interesting wrinkle to that: what if making copies and derivative works is authorized by the copyright license? Does the exhaustion follow those copies? The article makes a case for &quot;yes,&quot; and I&#x27;ll make the case for &quot;no.&quot; A copyright license is a <i>contract.</i> <i>Lexmark v. Impression Products</i> tells you that the contractual arrangement between the patent holder and first buyer does not affect the scope of exhaustion. That&#x27;s a double-edged sword. You can&#x27;t limit the scope of exhaustion through license restrictions. (<i>E.g.</i> &quot;you can only use this software for personal use&quot; may be enforceable as a matter of contract, but exhaustion probably applies to the first buyer even if they use that copy for commercial use.) But on the flip side, you can&#x27;t broaden the scope of exhaustion--making it &quot;viral&quot;--through the copyright license either.