[author: Matthew Hohn]
In a move that evidences an emerging pattern, Rothschild Patent Imaging LLC, a non-practicing entity (“NPE”), has filed a complaint asserting patent infringement against the open source software organization, the GNOME Foundation. The GNOME Foundation is the non-profit organization that coordinates the development and operation of the popular open source desktop environment with which it shares a name. The GNOME desktop environment supports many free and open source software applications. Rothschild alleges in the only count of the complaint filed in the U.S. District Court for the Northern District of California, that the GNOME image management software “Shotwell” infringes their U.S. Patent 9,936,086, directed to “a wireless image distribution system and method.” Rothschild Patent Imaging did not just single out GNOME Foundation, but cast a nationwide net in asserting the ‘086 patent – since July 2019 it has filed five other cases against various defendants (Magix Computer, Cyberlink, Zoner, QNAP, and Monument Labs) in Nevada, Delaware, Illinois and California.
Although seemingly unexpected since this is the GNOME Foundation’s first experience as a party to a patent case, the GNOME Foundation is taking quick action to contest this allegation. “We have retained legal counsel and intend to vigorously defend against this baseless suit,” says GNOME Foundation Executive Director, Neil McGovern. However, on the other side, there is plenty of experience with infringement lawsuits; within only the last four years, Rothschild Patent Imaging is responsible for at least 48 patent infringement cases against defendants such as Ricoh Imaging Corp.; Tumblr, Inc.; and Netgear Inc. When including related Rothschild entities, the Rothschild NPE collective has filed more than 270 infringement suits over the last five years.
While NPEs like Rothschild have amassed attention for lawsuits against well-known industry leaders, companies dealing with open source products have not completely flown under the radar in the eyes of NPEs seeking to allege infringement. As we have reported in past articles, the trend of targeting open source software has become more common as NPEs increasingly adopt this strategy. However, this new suit against the GNOME Foundation stands out, unusually so, since previous infringement actions have typically targeted end users of the open source software as defendants where in this case, Rothschild alleges direct infringement against a foundation that is merely the facilitator of open source software solutions. This may be a play by Rothschild to attempt a favorable infringement decision or settlement that will later be asserted against many others, including end users. Potentially, this could heighten vulnerabilities to an infringement action for anyone who uses the Shotwell software. With many recent changes in the patent law intended to curb NPEs, such as more limited availability of injunctive relief or venue choice, it is reasonable to conclude that NPEs have adapted to these changes, not only in their tactics, but also in whom they consider susceptible targets.
Companies that operate in the technology sector should have increased awareness, and anticipate, infringement claims by NPEs, not only against themselves, but also on the basis of any product they employ from their providers—including open source software. Companies that were not traditionally targets may find themselves significantly disadvantaged in the event of an infringement complaint, especially in light of limited patent litigation experience. Situations like this highlight an urgent need to increase and enhance collaborative deterrence against aggressive NPEs who often assert the same patent or a group of similar patents separately against a large number of companies. Organizations that pool efforts and resources such as the Open Invention Network and particularly Unified Patents, which has successfully challenged many patents on behalf of its members, offer possible avenues for invalidating the patents asserted by NPEs to propagate their disruptive practices. Despite the emergence and success of these unified defenses, at least one thing is certain, that open source software is vulnerable and will continue to be attacked by NPEs.