Opinion

posted on 27 June 2008 12:27

Sun has had one of the patents cited by NetApp in its ZFS patent infringement case against it temporarily removed from the litigation. NetApp and Sun couldn't agree a settlement of the case though.

NetApp is sueing Sun for infringing six of its patents while making ZFS and open source piece of software. Sun is counter-sueing NetApp citing 22 patents covering hardware design and file system matters.
A Sun strategy in defending the NetApp suit is to invalidate the six NetApp patents by demonstrating prior art; significant IP relating to the patents that existed before the patents were granted to NetApp by the US Patent Office (PTO), thus renderig theinvalid. It has submitted prior art claims on all six and the PTO has granted re-examination claims on five with one pending. It has made an initial ruling on one of the five and invalidated it.

Based on this Sun asked the San Francisco court where the cases will come to trial to set aside a portion of the litigation. The court agreed. Then Sun and NetApp attended a settlement conference in front of a Judge Spero. It didn't result in an agreement and the case continues.

A Dave Hitz-written document about the case has been revealed by Sun.

Sun's general council, Mike Dillon, writes about this in his blog and says the root of the dispute is that Sun is in favour of open source software and NetApp is not. He writes: "It's really about the clash between two different business models, one proprietary, the other open. NetApp admits as much in a declaration of Dave Hitz (a document recently unsealed by the court). It is this difference that is the source of the litigation. And, as more of the world moves away from proprietary models, I expect to see other litigations arise between companies in this area."

So NetApp can't agree with Sun that its IP should be made free by Sun. That seems entirely reasonable. If Sun proves that NetApp doesn't own the IP in question then Sun is free to do what it wants. But if NetApp owns the IP then Sun is not.

Making someone else's IP free when they haven't consented to that is theft. My opinion here is that the clash is taking place not because there are two different business models but because NetApp thinks Sun has stolen its property. For Sun to claim a kind of moral open source high ground when it is counter-sueing NetApp for infringing 22 Sun patents makes the moral high ground tenancy dubious.

You can't expect NetApp to agree a settlement when it would have to give up rights to what it considers is its property. In effect Sun is holding a double-barrelled legal shotgun to NetApp's head. One barrel is loaded with 'we'll destroy your patents validity' buckshot and the other with 'we'll counter sue your ass' buckshot. You can't fault the legal tactic as a legal tactic but you might conclude that NetApp is acting more in concert with its principles concerning IP than Sun is acting in concert with its principles of IP.

That is because Sun is asserting a belief in open sourcing some of its IP while sueing NetApp for infringing a different portion of its IP. We might conclude Sun's moral open source case would be stronger if it was not counter-suing Sun.

^{[Chris Mellor.]}