NetApp Sues Sun Over File System Patents

Published: September 6, 2007

by Timothy Prickett Morgan

Network storage vendor Network Appliance this week filed a lawsuit against Sun Microsystems, contending that Sun's Zettabyte File System infringes on a number of patents held by NetApp. Apparently, Sun and NetApp have been having increasingly aggressive talks about the matter, and there were even some issues that came up between StorageTek, now part of Sun, dating back to 2004, before Sun paid $4.1 billion to acquire STK.

According to the NetApp lawsuit, which was filed in the U.S. District Court for the Eastern District of Texas, STK contacted NetApp saying that the network storage company's products violated STK's patents. After Sun finalized the acquisition of STK in August 2005, Sun's lawyers took over the discussion, saying that NetApp violated patents now controlled by Sun. NetApp continued throughout this saying that it did no such thing, and then started looking at Sun's products, including the now open source Zettabyte File System that is part of the open source OpenSolaris and commercial-grade Solaris 10 Unix server. NetApp explained to Sun that ZFS violates its patents, racheting up the war of words between the two companies, and making some extra bucks for some lawyers.

NetApp filed its suit, which you can download here, because ZFS is open source and Sun is trying to encourage ZFS to be adopted by other operating systems. If ZFS is indeed infringing on NetApps's patents, then Sun is encouraging others to infringe.

ZFS is already is part of the FreeBSD BSD Unix distribution, and Google is paying to add it to the NetBSD Unix distro. ZFS is possibly going to be part of Apple Computer's future "Leopard" version of MacOS X Server, which has ZFS support inside of its beta versions. (Mac OS X is a variant of BSD Unix with an Apple interface grafted on top.) ZFS is available as a Linux add-on, and is being used by Cluster File Systems to be the underpinnings of the open source Lustre clustered file system for supercomputing workloads. (Lustre runs on Linux, but is being ported to Solaris now; it will remain available on Linux as well.)

NetApp's complaint also says that the company is filing the suit to stop Sun from claiming that NetApp is violating Sun's patents. Specifically, NetApp wants a ruling that Sun is violating three of its patents and that NetApp does not infringe on seven of Sun's patents. NetApp wants a trial by jury and is seeking a permanent injunction to stop Sun from using or distributing code that allegedly infringes its patents and to have the courts assess any monetary damages the infringement has caused--tripled because of Sun's supposedly willful infringement.

"We firmly believe that everyone is best served by fair and responsible treatment of intellectual property," said Dave Hitz, one of NetApp's founders and now executive vice president at the company. Hitz is also the inventor of five of the patents at issue in the complaint. "What concerns us is that through its distribution of ZFS under its own terms and conditions, Sun is unfairly encouraging others to adopt and distribute the infringing technology without informing them of our applicable patents."

Sun was hosting its Analyst Day in New York while the suit was being filed in Texas, with Sun president and chief executive officer, Jonathan Schwartz, and chief financial officer, Mike Lehman, tied up in meetings. So the company issued the following statement:

"NetApp's legal attack against Sun's open source ZFS solution which is freely available in the marketplace is a clear indication that NetApp considers Sun technology a threat, and is a direct attack on the open source community. ZFS is the fastest growing storage virtualization technology in the marketplace, and NetApp's attempt to use patent litigation to inhibit the meteoric rise of open source technologies like ZFS is tantamount to being unhappy with gravity. As Sun knows well, and NetApps' customers obviously recognize, innovation works better than litigation. Many of the claims raised in the lawsuit are factually untrue. For example, it was NetApp who first approached Sun seeking to acquire the Sun patents NetApp is now attempting to invalidate. It is unfortunate that NetApp has now resorted to resolving its business issues in a legal jurisdiction (East Texas) long favored by "patent trolls.' Bottom line, Sun indemnifies its customers, and stands behind the innovations we deliver to the marketplace."

If technology companies and lawyers can't agree on the validity of sophisticated storage array and file system patents, imagine the lucky members of the jury in Texas who might get to listen to the back and forth by lawyers who probably do not understand them any better than the judge will. It will be amazing if this comes to trial, because all parties know this. It is a fairly safe prediction that Sun and NetApp will rattle their sabers and then cross license the offending patents. This is surely cheaper than housing a bunch of expensive lawyers in East Texas. But before that happens, you can count on Sun spending a little local lawyer time to countersue NetApp for violating Sun's patents.

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