On June 26, 2006 Massachusetts-based software vendor Firestar Software, Inc. filed a patent infringement lawsuit against Linux and open source software distributor Red Hat, Inc. and open source middleware provider JBoss, Inc. The suit was brought in connection the Hibernate 3.0 software product, acquired by Red Hat through its recent acquisition of JBoss. In the lawsuit, Firestar alleges that JBoss and Red Hat are infringing U.S. patent number 6,101,502 issued on August 8, 2000 (the “‘502 patent”) through their activities relating to Hibernate. While software patent infringement lawsuits have become increasingly frequent in the world of proprietary software, this lawsuit is thought to be the first of its kind relating to a widely distributed open source software product.
What do we Know So Far? The short answer is, not much. This case is still in its very early stages and until the case progresses and Red Hat has had an opportunity to respond to Firestar’s complaint, little more will likely be known about the case beyond what is stated in Firestar’s complaint. The complaint was filed the U.S. District Court for the Eastern District of Texas and alleges that JBoss and Red Hat, through its recent acquisition of JBoss, are infringing and inducing or contributing to the infringement of the ‘502 patent through using, marketing, distributing and offering to provide support services in connection with Hibernate 3.0. The complaint seeks unspecified damages and, perhaps more significantly, a permanent injunction against future infringing activities by JBoss and Red Hat.
Hibernate is an object-relational mapping tool for Java and is one of several core components of the JBoss Enterprise Middleware System (JEMS). Like the other components of JEMS, Hibernate is open source software, distributed by JBoss under the GNU Lesser General Public License (LGPL). The ‘502 patent relates generally to interfacing object-oriented software applications to relational databases to facilitate access to the relational databases. The claims of the ‘502 patent cover a method for implementing an “[o]bject model mapping and runtime engine for employing relational database with object oriented software.” The Firestar complaint alleges that the object mapping functionality claimed by the ‘502 patent is infringed by JBoss in Hibernate.
Firestar filed its complaint on June 26, 2006, more than one year following the March 1, 2005 release of Hibernate 3.0, but less than one month following completion of Red Hat’s acquisition of JBoss on June 5, 2006. News of the then-pending acquisition was initially announced to the public on April 10, 2006. The complaint indicates that Firestar first contacted JBoss with letter regarding the alleged infringement shortly following the announcement of the acquisition on May 26, 2006. While Firestar almost certainly would have known of the acquisition at the time of the May 26th letter, the complaint further indicates that Firestar did not contact Red Hat with a letter regarding the alleged infringement until after the completion of the acquisition on June 7, 2006. The timing of these letters appears to have been calculated to coincide with Red Hat’s acquisition of JBoss and to pressure JBoss to settle the allegations prior to the closing of the acquisition. While we can assume based on the filing of the complaint on June 26, 2006 that JBoss did not reach an accord with Firestar, it remains to be seen what affect, if any, the lawsuit will have on the acquisition and, in particular, the performance-based portions of the acquisition price.
Just How Significant is this Case? To date there have been very few lawsuits of any kind involving open source software and none known to have involved allegations of patent infringement. On this basis alone, the Firestar case is significant. It is still too early to determine, however, whether the outcome of the case will also prove significant in terms of its affect on the parties involved, the commercial viability of open source software, or the increasingly controversial topic of software patents. Regardless of the outcome, this case should be viewed as an important and very real reminder that open source software companies can be sued for patent infringement based on the open source software that they use and distribute in exactly the same way that proprietary software vendors have become the targets of software patent infringement suits based on their proprietary software products. While this case represents the first time that a patent infringement lawsuit has been leveled against an open source software distributor, if the growing number of software patent infringement lawsuits brought against proprietary software vendors is any indication, it is not likely to be the last.
What Should You Do? In recent years, many distributors of open source software have begun offering their customers various forms of legal protection against claims of intellectual property infringement relating to the open source software that they distribute. These protections take many forms and range from actual indemnifications against infringement to various other commitments to provide some form of financial or legal assistance in the case of an infringement. Both Red Hat and JBoss are among the companies that currently offer their customers some form of legal protection against third party intellectual property infringement claims. The Firestar case only underscores the importance of the need to obtain intellectual property infringement protections relating to open source software. In the wake of the Firestar case, consider the following precautions: While Firestar has not yet moved to file suit against any Red Hat customers, it is possible that they may do so in the future. Given this possibility, if you are using Hibernate 3.0 (or any other open source software product offered by JBoss or RedHat), consult your agreement with JBoss or RedHat to confirm the coverage provided in the case of claims of intellectual property infringement.
Open source software is offered by an increasingly diverse group of vendors. If you are using open source software provided by another vendor other than Red Hat, confirm whether your agreement with that vendor provides indemnification coverage. If it does not, seek to have coverage included in any future agreement with the vendor. Open source software is also increasingly incorporated and distributed with otherwise proprietary software. Review your agreements with your proprietary software vendors to confirm the scope of the indemnification protections provided by those agreements, not just as to proprietary portions of the software, but also as to any open source software that may be incorporated or distributed with the proprietary software. Of course, if you are not aware whether and to what extent your organization is using open source software, there is no substitute for implementing an open source software management and compliance program.
It really remains to be seen whether the Firestar case is really just the “tip of the iceberg” in terms of the enforcement of software patents against open source software. But, my thought is that this is definitely not the last we have heard from this case. Stay tuned.