patent 101

[Disclaimer: I'm not saying this on behalf of my employer, I have no exposure to MPEG-LA's licensing agreements, and I'm not making a broader claim about the h264/ogg debate; I just want to clarify one specific point of law.]

“If some patent troll decides H.264 violates a patent, they must go to court with MPEG LA, not individual licensees.” — John Gruber, Daring Fireball

Let this be a friendly public service announcement: patent law says that anyone who uses a patent, not just the manufacturer or licensor of the patent-infringing good, can potentially be dragged into court on a charge of patent infringement. (This is not the first installment of this reminder.) This misunderstanding of how patent law functions gives people a false sense of security- they think they are safe because they are ‘just’ using, when in fact patent trolls are known to go around to small individual consumers of ‘infringing’ software and extort settlements from them in order to build their war chests for later, larger suits. Or in other, more specific words: there is certainly nothing in patent law that says that an H264 patent troll ‘must’ go after MPEG-LA and can’t go after individual licensees.

Of course, going after users is rare. Furthermore, it is certainly possible that MPEG-LA might (for political reasons) try to enter into a court fight on the side of someone being attacked by an H264-related troll; it is even possible that the licensing agreement requires such entry if the defendant is an MPEG-LA licensee. (If the latter is what Gruber was getting at, that would be interesting to know.) Even entry by MPEG-LA on your sideis not likely to completely protect you; even if they were to promise to cover all costs and settlements, the engineers and businessfolks who made the decision would still likely be hauled into court to testify as to whether the infringement was done on purpose, how it was done, etc.

Bottom line: there may be contractual obligations at play here, and if so, I’d love to hear clarification, but as far as statute goes, what Gruber says about who can sue whom is mistaken.