The storage supplier’s suit alleges that Sun’s ZFS file system, which is available as open source code, infringes seven NetApp patents. The suit seeks damages and a court injunction that would force Sun to take ZFS off the market – or much more likely, make some sort of settlement with NetApp.
NetApp executive vice president and founder Dave Hitz told Computer Business Review: We’re not in the zone of seeking out some small patent infringement and making money from it. What we’re doing here is defending our intellectual property. That’s what’s important to us.
In a blog article posted yesterday, Hitz accused Sun of using its patent portfolio as a profit center. Sun fired back with an email statement alleging that NetApp’s action will not succeed, and is a direct attack on the open source community, and an attempt to inhibit the meteoric rise of open source technologies.
While NetApp stressed that it would not be chasing down non-commercial use of ZFS users, it said during a teleconference yesterday that it has not decided its answer to the complex and subtle question of whether to extend its legal action to third-party ZFS licensees that might be competing with NetApp.
The storage supplier said it is aware that ZFS is already part of some commercial products, and said that it has put in a courtesy call to Apple, which is beta testing an operating system, Leopard, that includes ZFS.
The two sides of the dispute have different versions of how it began. According to NetApp’s lawsuit, it began in 2004 with claims that StorageTek began pressing against NetApp. When Sun bought StorageTek in 2005, Sun continued the claims. That chimes in with Hitz’ allegation about Sun’s efforts to convert patents directly into cash.
But NetApp CEO Dan Warmenhoven claimed that Sun’s claims never had any merit, and he sounded a shade triumphant when he explained that Sun appeared to back down after NetApp made counter-claims that Sun was infringing on NetApp patents.
Sun shifted from an aggressive position to not answering [phone] calls, and leaving important questions un-answered, said Warmenhoven. To remove any doubts, we’ve turned to the courts, he said.
The final communication on the topic occurred several months ago, probably in April. If such a long time has passed with Sun not responding to calls, then surely there was no longer any threat that Sun would take the issue any further, let alone launch a lawsuit?
They had not fully withdrawn their complaints against us, Hitz said. I don’t want to overstate their non-responsiveness. There was some chit-chat, and I can’t comment on the likelihood of Sun launching a law suit, he said.
Did NetApp give Sun one more warning that it wanted to resolve the issue before launching its lawsuit? We weren’t explicit that we were going to do so, but Sun knew we were concerned about the issue, Hitz said.
Sun said that despite NetApp’s claim, NetApp was in fact the first to make a move, when it approached Sun asking for a license to use its patents.
Only three months ago Hitz blogged an article on NetApp’s website that was very critical of the way that patents are used in the IT industry, and of a patent system that lets companies with more intellectual property impose a tax on companies with less, and does not encourage innovation very well.
But Hitz told Computer Business Review yesterday that that those statements referred to the actions of larger companies against small businesses, and not large companies against large companies.
According to Hitz, NetApp is unusual in that it does not operate a patent department. He also claimed that the company has only ever launched one other patent-infringement action. That must have been the action that NetApp took against NAS start-up BlueArc, and lost last year.
The patents that NetApp says have been infringed refer to techniques used to provide file integrity checking, snapshotting and other data management functions found in many file systems. But Hitz said that NetApp’s is not likely to take aim at file systems other than ZFS. NetApp says that it is because it can examine ZFS source code that it can allege that Sun has used specific techniques covered by NetApp patents.
Ironically, Sun has in the past referred directly to NetApp’s WAFL file system as an inspiration for ZFS, NetApp said.
Although it is based in California, NetApp has filed its action against Sun in the US Court for the Eastern District of Texas — a jurisdiction that Sun said has long been favored by patent trolls.
Computer Business Review spoke to a lawyer working for a large law firm in Texas that specializes intellectual property, and has very large IT suppliers as clients.
East Texas is a district that has a reputation for being patent-friendly. The cases often get to jury, and the jury is often slightly in favor of the patent holder, the lawyer said on condition of anonymity. East Texas also imposes broad rules of evidence discovery on defendants, which raises their costs and puts them under more pressure to settle out-of-court.
It’s one of the most sensible places to bring a case, the lawyer said.
