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NetApp faces Sun lawsuit loss

Patents weakened - more could fall

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Sun is crowing that a judicial ruling in the NetApp_Sun IP lawsuit has effectively invalidated another NetApp patent. The US Patent Office also appears to be rejecting NetApp's key patents in the law suit. NetApp's position looks like it's crumbling.

The dispute began with NetApp claiming that Sun's free distribution of its ZFS technology infringes NetApp's six patents for its WAFL (Write Anywhere File Layout) technology. WAFL is a core component of NetApp's SAN and filer products.

NetApp co-founder Dave Hitz said (pdf):

Sun's ZFS technology appears to be a conscious reimplementation of NetApp's innovative WAFL filesystem, as admitted by the creators of ZFS:

"The file system that has come closest to our design principles, other than ZFS itself, is WAFL ... the first commercial file system to use the copy-on-write tree of blocks approach to file system consistency ... Sun has open-sourced ZFS and thereby given away for free NetApp's patented technology to anyone that wants to download a copy"

NetApp sued Sun last year and Sun counter-sued, saying NetApp infringed 22 of its patents. The Sun strategy is to invalidate the six NetApp patents by identifying prior use of the technologies involved (prior art), meaning that NetApp did not itself invent the technology.

There have been two strands to this. One has been to ask the US Patent and Trademark Office (PTO) to re-examine the six NetApp patents and test their validity. In June it granted re-examinations on five of the six and invalidated one of them, leaving one down and five to go.

The pre-trial hearings form the second strand. They "establish the meaning of key terms in disputed patents", Sun's general counsel, Mike Dillon, says.

The judge carrying out pre-trial hearings has effectively invalidated a second NetApp patent, Dillon said in his blog. Judge Laporte, who is hearing the case in the Federal Court for the Northern District of California, has issued her rulings on some of the terms.

Here's Dillon's kicker: "The Court found each of the asserted claims in NetApp's 7,200,715 patent relating to RAID technology to be 'indefinite' - meaning that someone with experience in this area of technology could not understand the limits of the claimed invention. With regard to NetApp's '715 patent, the court agreed with Sun's position that the claims of the patent are flatly inconsistent with and impossible under the teaching of the patent specification. In effect, unless NetApp appeals and this finding is reversed, the '715 patent is effectively invalidated in this case and against others in the future." Two down and four to go. Way to go Sun.

However, this RAID patent does not relate to the WAFL-ZFS technology at the heart of the dispute. Hitz has stated to the court that he is "a named inventor on United States Patent Nos. 5,819,292 ('the '292 patent'), 6,857,001 ('the '001 patent'), and 6,892,211 ('the '211 patent'), which are directed to NetApp's core WAFL lI technology."

The PTO has come to Dillon's aid here with him citing the re-examination status of the three core WAFL patents in the case:

NetApp Patent No. 6,857,001 - The PTO rejected all 63 claims of the patent based on 10 prior art references provided by Sun. In addition, the trial court has agreed to remove that patent from the litigation for now pending the final reexamination by the PTO.

NetApp Patent No. 6,892,211 - The PTO rejected all 24 claims of the patent based on 12 prior art references provided by Sun. There is currently a request pending before the trial judge to stay this patent from the litigation as well.

NetApp Patent No. 5,819,292 - late last week, we were informed that the PTO has rejected all of the asserted claims of this patent relying on at least two separate prior art references out of the many provided by Sun. (The examiner felt that to consider the other references would be "redundant".)

This begins to look bleak for NetApp. If these PTO decisions result in three more NetApp patents going down the tubes then that leaves just one NetApp patent in play, and not a core one at that.

It is NetApp policy not to comment on the Sun lawsuit. Sun's win - if it is a win - and the PTO decisions potentially turn NetApp's WAFL IP into, well, IP waffle. Sun gets a welcome PR boost to its ZFS and open source credentials, leaving NetApp with a bloody nose and a 22-patent IT infringement case to deal with. Oh, and the economy is going down the tubes too. It isn't so sunny in Sunnyvale right now. ®

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