Sun Sues NetApp Right Back Over Patents

Published: November 1, 2007

by Timothy Prickett Morgan

A cynic would say that the only real reason that patents are filed for in an increasingly open source IT world is to keep lawyers in their expensive houses and fast cars. Maybe a bunch of nerds would say much the same, too. As you might have guessed it would, Sun Microsystems has filed a countersuit against the patent infringement suit that Network Appliance filed against Sun back in September concerning intellectual property that NetApp alleges has been released in Sun's now open source Zettabyte File System (ZFS).

In a posting in his blog last week, Sun's president and chief executive officer, Jonathan Schwartz, basically said that Sun didn't have a choice but to counter sue NetApp, saying that its products violate patents held by Sun and its StorageTek acquisition.

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 original NetApp lawsuit, which was filed in the U.S. District Court for the Eastern District of Texas, which is famously where patent trollers do their lawsuits, STK had contacted NetApp back in 2004, claiming that the network storage company's products violated STK's patents. Sun, of course, bought STK in August 2005 for $4.1 billion, and then Sun's lawyers took over the discussion, saying that NetApp violated patents now controlled by Sun. NetApp went back and forth with Sun, and in the meantime Sun took its Zettabyte File System open source. NetApp's original complaint claims that NetApp filed its lawsuit back in September to stop Sun from claiming that NetApp is violating Sun's patents, and is asking for a ruling from the court that says 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.

According to two suits filed by Sun, one a response to the NetApp complaint in the Texas court and another complaint in the two companies' home state of California, the argument between NetApp and STK started in early 2002, not early 2004, when NetApp approached STK patents--specifically the ones that NetApp says it is not violating in its lawsuit. STK said no dice to a licensing deal, according to Sun's complaints, and while Sun and NetApp continued talking after the STK acquisition, Sun claims that it never once threatened to sue NetApp, which NetApp contends Sun did. Sun basically denies everything NetApp claims in the Texas court filing, which you can read here. Sun is asking for the court to clarify that it does not violate NetApp's patents and that NetApp does violates its patents, with the usual jury trial and damages.

In the California complaint, which you can read here, Sun is asking the U.S. District Court for the Northern District of California to host a jury trial to consider NetApp's violations of its storage-related patents as well as for unfair competition under the Federal Lanham Act and California's unfair business practices law. In that suit, Sun is basically reiterating its claims that NetApp is violating its patents and is asking for a trial by jury in the San Jose court to assert this, to enjoin NetApp from distributing products that have Sun's patented technology, and to assess economic damages for the infringements.

In his blog posting, Schwartz contended that the initial lawsuit was driven by NetApp's fear about how ZFS was changing the storage market and about taking ZFS back from an open source distribution model and putting it back in the closed source genie bottle. "To be clear, once again, we have no interest whatever in suing NetApps--we didn't before this case, and we don't now," Schwartz said in his blog. "But given the impracticality of what they're seeking as resolution, to take back an innovation that helps their customers as much as ours, we have no choice but to respond in court."

While NetApp may desire the ZFS genie be crammed back into the closed source bottle, since ZFS is in fact a potential threat to any network file system or storage area network, whether it is made by NetApp or anyone else, it is a stretch to say that NetApp is suing because of the ZFS threat. Companies sue each other because they think their patents have been violated and because they want a settlement that gives them access to even more patents through cross-licensing agreements, which in turn better insulates them from potential intellectual property lawsuits in the future. You do one lawsuit to make the probability of future lawsuits lower.

Sun is asking for the case in Texas and the case in California to be consolidated back in California, where both Sun's and NetApp's executives are located. Of course, while this is logical, the California court is not known to be as beneficial to for those suing over patents as the Texas court. So it is hard to imagine that NetApp will agree with this assessment. But stranger things have happened. This thing could--and should--settle before it ever gets to trial. Neither Sun nor NetApp can afford the lawyers or the distractions.

One last thing, Sun. It's "NetApp." And you know it every time you type something else.

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