Mueller’s critique against Google off base

Last month, Florian Mueller authored a provocative blog post, criticizing Google for its recent pledge not to assert ten of its patents against any open source project. Mueller has never been a fan of these kinds of pledges, so his comments aren’t surprising.

Mueller’s main criticism is that Google hasn’t gone far enough: compared to IBM, Sun, and Microsoft, who made similar pledges, the number of pledged patents is quite small. While he has a point about the number of patents being too small to do much good, I think he’s missed the real target of Google’s pledge, which is in the fine print.

In addition to pledging not to assert against open source projects, Google has pledged that it can’t sell these pledged patents to a third-party shadow entity that can then sue on them:

It is Google’s intent that the Pledge be legally binding, irrevocable (except as otherwise provided under “Defensive Termination” below) and enforceable against Google and entities controlled by Google, and their successors and assigns. Thus, Google will require any person or entity to whom it sells or transfers any of the Pledged Patents to agree, in writing, to abide by the Pledge and to place a similar requirement on any subsequent transferees to do the same.

That means that these patents are taken out of play permanently, except for defensive purposes. IBM didn’t do that with its pledge, and Microsoft didn’t either.

Google is making a very broad pledge here: once a patent is included in the Open Patent Non-Assertion Pledge (“OPN”), it stays in even if Google sells the patent. And while Google may not be doing much good against many patent trolls, I think they’re directly targeting a new class of patent assertion entities (PAEs): patent privateers.

Patent privateers are a growing problem in the software industry, as Patent Progress has written about before. Privateers are trolls sent out by technology companies to damage their competitors or monetize their patents without drawing fire themselves. Basically, the company transfers patents to a PAE, which then goes on the warpath against the company’s competitors.

But Google’s patents in the OPN can’t ever be used for privateering. That’s a big shift from previous non-aggression pledges. Will Microsoft and IBM step up and do the same with their own patent pledges?

Google has since submitted comments to the FTC and the DOJ (along with BlackBerry, EarthLink and Red Hat) calling for action on privateering. It seems the OPN was just the beginning, even if it was a subtle message; Google isn’t being so subtle now.

But I do agree with Mueller on one thing: Google should add more patents.

Matt Levy is a patent attorney at Cloudigy Law, PLLC.