The GNOME Foundation reported on actions taken to protect against legal action brought forward by Rothschild Patent Imaging LLC, a patent troll company. Rothschild Patent Imaging LLC proposed withdrawing the lawsuit in exchange for the purchase of a license to use the patent at Shotwell. The license amount is expressed in a five-digit number. Despite the fact that buying a license would be the easiest way out, and litigation would require a lot of money and hassle, the GNOME Foundation decided not to agree to the deal and fight to the end.
Consent would jeopardize other open source projects that could potentially be victims of this patent troll. As long as the patent used for lawsuits, covering obvious and widely used methods of working with images, continues to be valid, it can be used as a weapon to carry out other attacks. A special fund called the GNOME Patent Troll Defense Fund has been set up to finance the protection of GNOME in court and to invalidate a patent (for example, by proving the facts of earlier use of the technologies described in the patent).
Shearman & Sterling was involved in the defense of the GNOME Foundation, which has already sent three documents to the court:
- Application for the complete dismissal of the case. The defense considers that the patent appearing in the case is insolvent, and the technologies described in it are not applicable for the protection of intellectual property in software;
- The answer to the lawsuit, which calls into question the fact that GNOME should be the defendant in such claims. The document made an attempt to prove that the patent specified in the lawsuit cannot be used to make claims against Shotwell and any other free software.
- A counterclaim that will prevent Rothschild Patent Imaging LLC from retreating and choosing a less obstinate victim to attack when it understands the seriousness of GNOME’s intention to fight for invalidating the patent.
The GNOME Foundation is charged with patent infringement 9,936,086 in the Shotwell photo manager. The patent is dated 2008 and describes a technique for wirelessly connecting an image capture device (telephone, web-camera) to an image-receiving device (computer) and then selectively transmitting images with filtering by date, location and other parameters. According to the plaintiff, for the infringement of the patent, it is sufficient to have the import function from the camera, the ability to group images according to certain criteria and send images to external sites (for example, a social network or photo service).