Back in October 2019, the GNOME project announced they had been hit by what they called a patent troll with Rothschild Patent Imaging. Now it seems it has been resolved and it's a bin win for open source.

The problem was with the Shotwell image management application, as Rothschild claimed it infringed on their patents. Yesterday, GNOME announced a "walk-away settlement" that not only drops the case against GNOME but both Rothschild Patent Imaging and Leigh Rothschild in the case will now grant a "release and covenant" to any software released under an OSI (Open Source Initiative) approved license which covers the entire Rothschild portfolio of patents. That's a nice win for FOSS developers.

The GNOME Foundation has settled a US lawsuit brought against it by Rothschild Patent Imaging, complete with an undertaking by the patent assertion entity that it will not sue GNOME for IP infringment again.

In a so-called "walk away" settlement, Rothschild Patent Imaging (RPI) and the open-source body are discontinuing a case that began in October last year. RPI sued for alleged IP infringement of one of its patents in GNOME photo-organising tool Shotwell, marking the first time a free software project had been targeted in that way.

The patent suit filed against the GNOME Foundation last September has now been resolved. "In this walk-away settlement, GNOME receives a release and covenant not to be sued for any patent held by Rothschild Patent Imaging. Further, both Rothschild Patent Imaging and Leigh Rothschild are granting a release and covenant to any software that is released under an existing Open Source Initiative approved license (and subsequent versions thereof), including for the entire Rothschild portfolio of patents, to the extent such software forms a material part of the infringement allegation." There is no mention of what the foundation had to give — if anything — for this settlement,

In 2019, the GNOME Foundation was sued by Rothschild Patent Imaging (RPI) for violating its "wireless image distribution system and method patent" (US Patent No. 9,936,086)." Rothschild, a Non-Practicing Entity (aka a patent troll), had filed 714 lawsuits over the past six years.

Now, in a surprise move, GNOME, makers of the popular Linux desktop of the same name, won not only a release and covenant not to be sued for any Rothschild patent but a release and covenant to any software that is released under an existing Open Source Initiative (OSI) approved license.

The Gnome Foundation settled the dispute with Rothschild Patent Imaging (RPIL), RPIL agrees not to sue Gnome further for any intellectual property infringement. RPIL also signed to an undertaking to that effect.

In the last week of September 2019, Rothschild Patent Imaging (RPIL) filed a lawsuit against the Gnome Foundation. The case was filed under Title 35 of the United States Code for the infringement of the patent and violation of the intellectual property rights of the RPIL. They claimed that Gnome's Shotwell Photo manager, infringed the patent titled “Wireless Image Distribution System and Method,” being number 086.

Last year, Patent Progress reported on a troll targeting the GNOME Foundation, a major open source coordinating entity. Despite Director Iancu’s public statement claiming that trolls are a myth, this troll was very real. In fact, it was one of the Rothschild NPEs, one of a plethora of companies Leigh Rothschild has used in nearly 900 separate NPE patent lawsuits to date.

Fortunately, however, GNOME was able to retain quality pro bono counsel. And after 10 months, they achieved not just a walk-away settlement where GNOME owes nothing, but actually went further. Neither the Rothschild subsidiary in this litigation, Rothschild Patent Imaging, nor any other Rothschild entity—or any entity purchasing a Rothschild-owned patent—can bring a lawsuit where the lawsuit alleges infringement by any software that is released under an open source license recognized by the Open Source Initiative.

Free-software nonprofit the GNOME Foundation and alleged "patent troll" Rothschild Patent Imaging LLC have reached a deal to end infringement litigation in California federal court, with RPI making a broad promise not to sue over open source software.

RPI released GNOME from infringement allegations and signed a covenant not to sue the organization over any patent in its portfolio, the nonprofit said Wednesday. Additionally, RPI granted a release and covenant to anyone releasing software under a license approved by the Open Source Initiative, at least if that software "forms a material part of the infringement allegation," GNOME said.

The open source GNOME Foundation has won the right to freely use a patent it was being sued over by notorious patent troll, Rothschild Patent Imaging (RPIL) — one of 30+ subsidiaries created by Leigh Rothschild.

The tiny foundation, which supports an open source, Linux-based desktop environment, was hit in September 2019 with a court case by RPIL — which the EFF describes as a “poster child for patent litigation abuse” .

RPIL had claimed that GNOME’s “Shotwell” system was in breach of US Patent No. 9,936,086, which essentially claims the patent rights a smartphone that can receive images that a user can filter.

(The EFF blames the US’s Patent Office for issuing “more stupid software patents to fuel patent trolling” — many companies, if not all, settle with Rothschild for circa $50,000; cheaper than fighting in courts).

“Firstly, Congratulations Neil and very well done. This is probably the best possible result Gnome could have had right?

“I believe so, yes. We have managed to secure a more certain future for all of open source software and sent a very strong message to other patent holders that attempts to bring suit against us will be at best, futile.”

The Open Source Community response to Rothschild, I am resisting calling them a troll, was probably a bit of a shock to Rothschild. Can you tell us a bit about it and the amount raised from so many people and organisations?

“This has happened before, when Groupon tried to register GNOME as a trademark, despite us already holding it. This time. we managed to raise over $150,000 from over 4,000 individual donors. One of the strengths of the community is how passionately we care about what we do, and how we rally around each other when there’s trouble.”

You must be really proud to have achieved this result?

“Absolutely! Although the patent hasn’t been invalidated, we have secured a bigger prize – the protection of open source software from a large non-practicing entity.”

Sherman and Sterling are a huge global law firm and acted as Gnome’s
pro bono legal counsel? How did that come about?
“It came a little out of the blue! I was flying back from GUADEC (our annual conference) when this all kicked off, and when I landed, I had an email from Matt Berkowitz offering pro-bono representation. They had been monitoring patent filings and saw this one, so reached out to us.

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.

The Open Source Initiative would like to congratulate the GNOME Foundation on its recent settlement of the patent lawsuit alleging that the Shotwell software infringed patents owned by Rothschild Patent Imaging. The settlement was a huge achievement -- not only did GNOME pay nothing, but Rothschild Patent Imaging and its owner, Leigh M. Rothschild, have agreed that, for all of their patents and future patents, they will not sue any user or developer of software under an Open Source Initiative-approved license (and their updated versions) where the software forms a material part of the infringement allegation. That is freedom from suit for the open source software world for over 100 patents.

This is a remarkable accomplishment that could only happen with the overwhelming support of the entire open source community. U.S.-based patent infringement lawsuits are notoriously expensive, so a business model has developed to sue those who appear to lack the financial means to mount a defense. The plaintiff is successful when the defendant pays a substantial sum simply because it is less than the cost to defend the lawsuit. However, with community support GNOME was able to raise over $150,000 from more than 4,000 donors, allowing it to not only stand strong against the threat but also ultimately procure a huge benefit for the open source community at large. This suit demonstrates to the world once again that the open source community and our values of mutual support, collaboration, cooperation, and transparency can accomplish greater ends than any one person standing alone.

We are so, so excited to share the settlement in the legal case levied by Rothschild Patent Imaging against the GNOME Foundation. Ten months after Rothschild Patent Imagining first alleged that GNOME was in violation of one of their patents. In the settlement, Rothschild dropped all charges. Additionally, their patent portfolio is now available for any project using an Open Source Initiative approved license.

You can read an interview between Executive Director Neil McGovern and OpenUK’s Amanda Brock about the case.