After being hit with a patent-infringement lawsuit last month, the GNOME Foundation has fired back with a counterclaim – and urged the courts to dismiss the case.
In a memo this week, the non-profit org said Rothschild Patent Imaging (RPI) – a patent assertion entity (PAE) it characterizes as a "patent troll" – had filed an infringement claim regarding the foundation's Shotwell image management application in a US district court in California.
"It’s the first time a free software project has been targeted in this way, but we worry it won’t be the last," the GNOME Foundation said.
"Rothschild Patent Imaging, LLC offered to let us settle for a high five figure amount, for which they would drop the case and give us a license to carry on developing Shotwell. This would have been simple to do so; it would have caused less work, cost less money, and provided the Foundation a lot less stress. But it also would be wrong."
Said offered settlement appears to be about 20 times less than the typical cost of dealing with a patent claim. The median cost of patent litigation, when the potential penalty falls in the range of $1m to $10m, came to $1.5m in 2019, according to the American Intellectual Property Law Association’s "2019 Report of the Economic Survey."
Companies facing such claims have a strong financial incentive to settle, knowing they risk significantly higher costs just to fight the case and perhaps much more if they lose.
The GNOME Foundation, which develops a widely used family of Linux desktop software, expressed concern that giving in to RPI would allow the patent licensing biz to use its "Wireless image distribution system and method" patent (US 9,936,086) against others. According to GNOME's motion to dismiss, RPI has asserted its '086 patent against five other organizations and, together with other PAEs named after inventor Leigh Rothschild, has been responsible for nearly 300 patent cases over the past five years.
"We will stand firm against this baseless attack, not just for GNOME and Shotwell, but for all free and open source software projects," the foundation said.
Fairytale for 2019: GNOME to battle a patent troll in courtREAD MORE
If GNOME succeeds in standing its ground against RPI, it won't be the first accused infringer to do so. Both networking kit maker Netgear (case 2:16-cv-01380-RWS) and home security biz Slomin's (case 2:17-cv-05915-BMC) have filed counterclaims against RPI lawsuits and managed to get their respective cases over the claims dismissed.
The GNOME Foundation's counter-attack includes a motion to dismiss [PDF] the case outright, because, the biz argues, the patent isn't valid. It also contends that Shotwell and other free software builders aren't affected by the patent. And the GNOME Foundation's counterclaim [PDF] asserts that RPI brought its claim knowing that its patent is invalid and argues that RPI should pay its legal fees.
"We want to send a message to all software patent trolls out there — we will fight your suit, we will win, and we will have your patent invalidated," the GNOME Foundation said in its post, and asked for financial support to fund its troll killing crusade.
The Register asked RPI's legal representative whether anyone at the company would comment on the case. We've not heard back. ®