Shearman & Sterling partners Matt Berkowitz and Kieran Kieckhefer and associate Joy Wang (Photo: Courtesy Photo)

Our Litigators of the Week are a team from Shearman & Sterling led by litigation partners Matt Berkowitz and Kieran Kieckhefer and associate Joy Wang. Working pro bono for the non-profit GNOME Foundation, they won a victory for literally everyone in the world in a patent fight over free and open-source software.

They discussed the case with Lit Daily.

Lit Daily: Who is your client, and what was at stake?

Our client, the GNOME Foundation, is a nonprofit organization that oversees the GNOME Project, which aims to create a free computing platform for the public. The GNOME Project's software is developed and maintained by volunteer contributors and is available to download for free via the project's website.  

One of the software programs published and maintained by the GNOME Project is Shotwell, which is a personal photo manager that allows users to import, edit, organize and share digital photographs.  

This was the first time, that we are aware of, that an organization such as GNOME, which promotes free and open-source software (FOSS), was accused of patent infringement. Had the plaintiff prevailed in its suit, or even settled, it would have put other similar providers of FOSS at risk of similar suits and chilled development of such software for years to come.

 

As a somewhat technologically challenged person, can you give me a big-picture sense of the value in creating a computing platform composed of free software? What is it/who might it benefit?

The free software offered by GNOME and similar projects is software that anyone is freely licensed to use, copy, study and change, because its source code is openly shared. Thus, users who are unable to afford proprietary software can download and use the free software for their daily needs. Because the source code is available to the public, some users prefer it because of its transparency and customizability.  

Further, FOSS serves an educational function by allowing new and interested developers of any expertise level to participate in the learning, development and maintenance of such software.

 

What is RPI and what did they allege in their complaint? Who is their counsel?

Rothschild Patent Imaging LLC (RPI), is a member of a network of non-practicing entities (NPEs) linked to Leigh Rothschild. It was represented by Jay Johnson of Kizzia Johnson PLLC and Steven A. Nielsen of Nielsen Patents. 

In their August 2019 complaint, RPI accused GNOME of infringing its U.S. Patent No. 9,936,086 and specifically identified the Shotwell program. RPI sought an injunction—which, if granted, would have prevented the GNOME Project from making Shotwell available to the public—or, in the alternative, "a running royalty from the time of judgment going forward." RPI also sought additional damages and costs. 

 

How did your firm get involved in the case? Who were the key members of your team?

We saw this case get filed and immediately reached out to Neil McGovern, the executive director of the GNOME Foundation, offering to represent them pro bono. We have never previously represented a client pro bono in a patent case, but this was a unique situation, and we felt that GNOME, as a nonprofit and promoter of FOSS, was a very worthy organization and that its mission should not suffer as a result of having to pay substantial attorneys' fees.  

Matt led the case and was assisted throughout by Kieran and Joy to develop the litigation strategy and draft the papers filed in the matter. Matt was the primary negotiator with counsel for RPI and Leigh Rothschild to bring the case to resolution. We also had assistance from Ben Peterson on our IP Transactions team, and Larry Crouch, the co-head of our tax practice, each of whom reviewed and commented on the final settlement agreements.   

 

Tell us a bit about the underlying technology at issue. What is Shotwell photo manager software and why is it important?

Shotwell is a personal photo manager that, like some for-profit offerings, allows photo importation from cameras or a disk, and offers various organizational and photo editing tools, as well as options to create slideshows and upload to major web services like Flickr and YouTube.  

The importance of Shotwell lies primarily in the fact that it is FOSS. We are supporters of open source development and did not believe that GNOME should be facing patent infringement allegations for promotion of this product, particularly because we believe that the patent is invalid. It was great to see the open source community rally behind GNOME. We received offers of support from many angles.

 

Early on in the suit, RPI offered to settle with GNOME for a high tens of thousands of dollars figure. Why did you say no?

In short, we were never going to pay a dollar unless ordered to.  It was important to our client, and important to us, that we fight this on the merits as zealously as possible, and we felt like we had a strong case. Agreeing to a settlement on the terms RPI offered would have made other providers of free and open source software vulnerable to similar lawsuits in the future, so we wanted to set an example as best that we were able.

 

What was your overall strategic approach in litigating the case?

We had strong invalidity positions right from the start, and filed a motion to dismiss on the grounds that the patent was directed to an ineligible abstract idea (essentially, filtering photos, which could be done in a person's mind).  

Additionally, GNOME had released essentially the same Shotwell software—just an earlier version—before Mr. Rothschild applied for the asserted patent, meaning that the earlier versions were very strong evidence that the patent was invalid. We never got to that stage of the case, but we were prepared to aggressively pursue that angle as well.  

 

What measures/steps did you take to secure a global release for anyone in the world using any open source software?

This was a key part of our strategy. We wanted to set an example and deter future assertions of (in our view) weak patents against nonprofit entities promoting open source. To that end, we refused to simply settle on a walk-away.  

There were weeks of negotiations that ensued, but the end result exactly matched the client's objectives and hopefully was a welcome development in the open source community generally. 

 

What makes this case unique and unprecedented?

The nature of the settlement and the breadth of the release and covenant is unique and unprecedented. GNOME, despite being a defendant, was able to secure protection on more than 100 patents for all approved open source software. This is significant because open source software is everywhere and touches most aspects of our lives.  

 

What broad implications does this ruling have on the open source/software community?

We hope it serves as a deterrent against future lawsuits like this, and provides some assurance to the open source community that people in the legal community will defend open source where possible.