Clean room design

Phoenix Technologies sold its clean-room implementation of the IBM-compatible BIOS to various PC clone manufacturers.[1][2]

Several other PC clone companies, including Corona Data Systems, Eagle Computer, and Handwell Corporation, were successfully sued by IBM for copyright infringement in 1984, and were forced to re-implement their BIOS in a way which did not infringe IBM's copyrights.[3][4]

These three settlements happened before Phoenix announced in July of that year that they were licensing their own BIOS code, expressly emphasizing the clean-room process through which Phoenix's BIOS code had been written by a programmer who did not even have prior exposure to Intel microprocessors, himself having been a TMS9900 programmer beforehand.[5] As late as the early 1990s, IBM was winning millions of dollars from settling BIOS copyright infringement lawsuits against some other PC clone manufacturers like Matsushita/Panasonic (1987)[6] and Kyocera (1993–1994), although the latter suit was for infringements between 1985 and 1990.[7][8]

Another clean-room design example is VTech's successful clones of the Apple II ROMs for the Laser 128, the only computer model among dozens of Apple II compatibles which survived litigation brought by Apple Computer.

Other examples include ReactOS, an open source operating system made from clean-room reverse-engineered components of Windows, and Coherent operating system, a clean room re-implementation of version 7 Unix.[9] In the early years of its existence, Coherent's developer Mark Williams Company received a visit from an AT&T delegation looking to determine whether MWC was infringing on AT&T Unix property.[10] It has been released as open source.[9]

Clean room design is usually employed as best practice, but not strictly required by law. In NEC Corp. v Intel Corp. (1990), NEC sought declaratory judgment against Intel's charges that NEC's engineers simply copied the microcode of the 8086 processor in their NEC V20 clone. A US judge ruled that while the early, internal revisions of NEC's microcode were indeed a copyright violation, the later one, which actually went into NEC's product, although derived from the former, were sufficiently different from the Intel microcode it could be considered free of copyright violations. While NEC themselves did not follow a strict clean room approach in the development of their clone's microcode, during the trial, they hired an independent contractor who was only given access to specifications but ended up writing code that had certain similarities to both NEC's and Intel's code. From this evidence, the judge concluded that similarity in certain routines was a matter of functional constraints resulting from the compatibility requirements, and thus were likely free of a creative element.[11] Although the clean room approach had been used as preventative measure in view of possible litigation before (e.g. in the Phoenix BIOS case), the NEC v. Intel case was the first time that the clean room argument was accepted in a US court trial. A related aspect worth mentioning here is that NEC did have a license for Intel's patents governing the 8086 processor.[12]

Sony Computer Entertainment, Inc. v. Connectix Corporation was a 1999 lawsuit which established an important precedent in regard to reverse engineering.[13][14] Sony sought damages for copyright infringement over Connectix's Virtual Game Station emulator, alleging that its proprietary BIOS code had been copied into Connectix's product without permission. Sony won the initial judgment, but the ruling was overturned on appeal. Sony eventually purchased the rights to Virtual Game Station to prevent its further sale and development. This established a precedent addressing the legal implications of commercial reverse engineering efforts.

During production, Connectix unsuccessfully attempted a Chinese wall approach to reverse engineer the BIOS, so its engineers disassembled the object code directly. Connectix's successful appeal maintained that the direct disassembly and observation of proprietary code was necessary because there was no other way to determine its behavior. From the ruling:

Some works are closer to the core of intended copyright protection than others. Sony's BIOS lay at a distance from the core because it contains unprotected aspects that cannot be examined without copying. The court of appeal therefore accorded it a lower degree of protection than more traditional literary works.

• In the 2014 TV show Halt and Catch Fire a key plot point from the second episode of the first season is how the fictional Cardiff Electric computer company placed an engineer, and primary character, in a clean room to reverse engineer a BIOS for their PC clone, to provide cover and protection from IBM lawsuits for a previous probably-illegal hacking of the BIOS code others at the company had performed.

• Code morphing

• Rachel Parker (28 September 1987). "'Secured Facility' Solves Compatibility Conflicts". InfoWorld : The Newspaper for the Microcomputing Community. InfoWorld: 41. ISSN 0199-6649.
• Peter Groves (2011). A Dictionary of Intellectual Property Law. Edward Elgar Publishing. p. 53. ISBN 978-1-84980-778-4.
• Lee Burgunder (2010). Legal Aspects of Managing Technology (5th ed.). Cengage Learning. pp. 281–285. ISBN 978-1-4390-7981-2.
• Jonathan Band; Masanobu Katoh (2011). Interfaces on Trial 2.0. MIT Press. ISBN 978-0-262-29446-1.