There's news from the NetApp-Sun patent litigation front, and I think you'll like it. Sun's general counsel, Mike Dillon, posts the news that the US Patent Office has now responded to all six of Sun's reexamination requests, which they filed based on prior art. We've been waiting for the order on the reexamination from the USPTO on the claims of '292. Dillon's the lawyer, not me, and he says the USPTO has now rejected all the '292 claims, but I'd describe it from the Order [PDF] from the USPTO more that it found that the prior art "raises substantial new questions of patentability" as to the claims. This isn't yet the end of the process, but it's still very good news for Sun, no matter how you describe it.
Last we looked, the USPTO had responded to five of the six reexamination requests. I knew you'd want to hear about this, because some of you did research last October on possible prior art on that particular patent. You might find it useful to look over the order in detail to see how the USPTO viewed prior art in the specifics, with the goal of equipping us to be more and more effective. There is also an Order [PDF] regarding the Markman hearing matters, which is also favorable to Sun, Dillon tells us. I've no doubt Sun is rejoicing, because their ZFS technology is very important to them.
I wonder how many times folks will sue Open Source projects before they realize that if there is one thing I believe you will never find it's anyone deliberately trying to misuse someone's IP?
Here, first, are the details from Dillon on the USPTO decision:
After NetApp filed its lawsuit to halt adoption of Sun's open source ZFS technology, we responded by filing reexamination requests with the PTO citing the extensive amount of highly relevant prior art that was not disclosed or considered when NetApp originally filed its patents. The patent office clearly agreed with the relevance of this prior art, as demonstrated by its rejection of the claims across all of the reexaminations. Of these patents, three have been described by NetApp as "core" (US Patent Nos. 6,857,001; 6,892,211; and 5,819,292). Here's the current status of each of them:
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 - And 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".)
And here's the info on the Markman Order:
In summary, the court agreed with Sun's interpretation on six of the disputed terms (two of which the court adopted with slight modification) and with NetApp on one. As to the remaining terms, the court either formulated its own interpretation or requested that the parties propose a further construction (i.e. definition). If you want to read the Order from the Markman hearing you can find it here.
Most significantly, 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.
In addition, the Court's findings on the terms "server identification data", "domain name", "portion of a communication" "element of a communication" and "completing a write operation within a local processing node" further strengthen our position that the processors, network interface and systems management software used across NetApp's product line infringe Sun's patents.
Meanwhile ZFS and OpenStorage continue to gain momentum.