Bruce Perens: Inside Open Source's Historic Victory

An open source developer was awarded $100,000 in a court case, Jacobsen v. Katzer, that involved critical issues related to open source in the marketplace. An expert witness in the case tells the story of the legal wrangling.


You Can't Detect What You Can't See: Illuminating the Entire Kill Chain

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Posted February 22, 2010

Bruce Perens

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About the Author: Bruce Perens, creator of the Open Source Definition, the manifesto of Open Source and the criterion for Open Source software licensing, was an expert witness in the Jacobsen v. Katzer court case. He tells the story of the legal wrangling that produced a historic victory for Open Source:

Jacobsen v. Katzer is closed, after five years. Open Source won, and big. A manufacturer who attempted to collect royalties from an Open Source developer has lost two patents. As terms of his settlement with the developer, the manufacturer is paying $100,000 to the Open Source developer, has agreed to place himself under a permanent injunction, and has signed a release of any liability to all members of the Open Source project. The case was not “sealed” like so many settled cases, so its documents are available to the public now.

The details are fascinating. Let's start with the Open Source developer: Bob Jacobsen is a high-energy physicist. He worked on the famous BaBar detector and the array of Linux computers that gathers its data, and he's now helping to build a new detector. His colleagues took the 2008 Nobel Prize for Physics, using BaBar to understand why the universe has so much more matter than anti-matter (or we wouldn't be here).

One of the things I enjoy so much about Open Source is the amazing people you meet, like Jacobsen. There were a few people that smart at Pixar when I worked there, but there seem to be tons of them in the Open Source world.

When he's not working to determine the whichness of the why, Jacobsen is a model train hobbyist. And his involvement in that is just as intense as his professional work. Back in the '90's, the digital control of model railroads was standardized. Jacobsen and his Open Source collaborators built JMRI, a set of Java tools for configuring and controlling the trains.

Now, Open Source software has lots of applications on Wall Street, it's used in air-traffic control, and so many cell phones contain it of late. So, of all the people who might be approached to pay patent royalties, you might expect that Bob the train nut would be low on the list. But most of the big patent holders, it seems, are smart enough not to bother an Open Source project.

Enter Matthew Katzer. Hobbies are big business, and Katzer's company manufactured software for controlling model trains. He had filed a patent on software that Jacobsen alleges was not his invention in 1998, and through a loophole of the patent process, kept adding “continuations” to his patent application through the 2000's. Jacobsen alleged that Katzer had patented features that he'd seen discussed on the JMRI project mailing list, but because Katzer's application was a continuation of an older patent, he was able to use the 1998 date of his original patent on the 2002 application, and claim priority. Katzer also registered a domain name with the name of Jacobsen's software, decoderpro.com, which Jacobsen later recovered through a WIPO hearing.

Katzer started sending demand letters to Jacobsen, asking for more than $200,000 in patent royalties. What probably made Jacobsen most angry was when Katzer's lawyer sent a Freedom of Information Act request to Jacobsen's employer, the U.S. Department of Energy and its Lawrence Berkeley Labs, accusing them of sponsoring the model train project, and asking for copies of all of Jacobsen's email and Skype communications, and a long list of other information which one could conclude was meant to embarrass Jacobsen in front of his employer.

The Department of Energy eventually denied the FOIA, but only after it had caused Jacobsen a lot of trouble. Because it was so unlikely that the laboratory would disclose what was obviously private correspondence, the only reason I can see for this FOIA would have been to harass Jacobsen through his employer and to put his job at risk.

At that point, Bob Jacobsen had enough. Rather than wait to be sued, he decided to sue Katzer first. But of course little folks like an Open Source developer working on a scientist's salary can't afford to spend much time in court. Katzer's company expected to win any case simply because Jacobsen would not be able to afford to defend himself.

Fortunately, Jacobsen was able to find help. Not through the Software Freedom Law Center, which was just being founded in 2005, but through attorney Victoria Hall, who was active in EFF.

Next Page: $100,000 judgement is handed down

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