The Open Source Initiative (OSI), which reviews licenses against open source criteria, announced the continuation of the history of the Gnome project accused of infringing patent 9.936.086. Who at the time, the Gnome project did not agree to pay royalties and launched a vigorous activity to collect facts that could indicate the insolvency of the patent.
To stop such activities, Rothschild Patent Imaging made a grant and in May 2020 that concluded in an agreement with Gnome that granted the project a free license for existing patents and a commitment not to sue any open source project. However, this did not stop other enthusiasts from continuing their attempts to challenge the patent.
The patent revocation work was done voluntarily by McCoy Smith, a 30-year patent reviewer formerly of the USPTO (United States Patent and Trademark Office) who now owns his own patent law firm, after reviewing the GNOME lawsuit, McCoy concluded that the patent was incorrect and that the patent office should not have filed it.
A recent decision at the US patent office may well give patent trolls a reason to stay away from open source projects, even more so than the fierce resistance the community funded and impressively mounted in the case. GNOME.
The patent troll who attacked them also lost the patent they were using for the attack, following the persistent efforts of McCoy Smith, a legal specialist in the open source community.
In October of 2020, McCoy filed a review application for patent 9.936.086 indicating that the technology described in the patent is not a new development. The US Patent and Trademark Office reviewed the patent, agreed with McCoy's opinion, and invalidated the patent. It is noteworthy that after the collision with GNOME, this patent was used to attack more than 20 other companies.
McCoy's actions they showed patent trolls that the open source community can fight back successfully from patent attacks. McCoy himself explained his actions with the desire to show the community that there are easier and more effective ways to repel patent assault than collecting evidence of prior patent use or litigation.
In the past, the community has already demonstrated its ability to protest against attacks on projects open source, with over $150 raised by enthusiasts to fund the defense of Gnome. In parallel, the Open Invention Network (OIN) launched an initiative to seek evidence of prior use of the technologies described in the patent (Prior Art) to invalidate the patent (after the claim was withdrawn, this initiative was not completed).
Rothschild Patent Imaging LLC is a classic patent trollor, living largely on lawsuits against small startups and companies that don't have the resources for lengthy litigation and are easier to pay settlements.
In recent years, this patent troll has filed about a thousand lawsuits. Rothschild Patent Imaging LLC only owns the intellectual property, but does not carry out development and production activities, ie. This company cannot be retaliated against for violating the terms of use of patents in any product. Only one can try to prove the invalidity of the patent.
The Gnome Foundation was charged with patent infringement 9.936.086 on the Shotwell photo manager. The patent is dated 2008 and describes a technique for wirelessly connecting an image capturing device (phone, webcam) to an image receiving device (computer) and then selectively transferring images filtered by date, location, and other parameters. .
The lawsuit argued that to infringe the patent it is enough to have the function of importing from the camera, the ability to group images according to certain criteria and send images to external sites (for example, to a social network or photo service).
Finally, if you are interested in being able to know more about it, you can consult the details in the following link.