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U.S. Federal Law Authors: Jason Bloomberg, marlin xp, Maureen O'Gara

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Sun Sues NetApp - Twice - in What Promises To Be a Bitter Open Source Brawl

Dave Hitz was ignoring Sun's claim of treble damages and he was writing before Sun piled on a second suit Monday

Sun countersued NetApp last Thursday in an action that NetApp founder Dave Hitz describes on his blog as seeking a permanent injunction "to remove almost all of our products from the marketplace" and "make NetApp employees wonder 'Do I still have a job?' and customers wonder 'Is it safe to buy NetApp products.'"

And Hitz was ignoring Sun's claim of treble damages. And he was writing before Sun piled on a second suit Monday.

The overriding point of the second suit, according to Sun's general counsel Mike Dillon, is get the litigation out of the district court in Texas, where NetApp filed suit first, and sent to California.

Texas of course is considered partial to patent holders, and the move might give Sun the moral high ground with the folks who decry the very idea of software patents and patent trolls but it might also speak volumes about what Sun thinks its chances are with the most experienced patent court in the country.

See, Sun's suits - the first, filed in Texas, alleging 12 counts of willful patent infringement and the second, filed in California, alleging the infringement of an additional six patents - are in retaliation for NetApp's suit of two months ago charging Sun's prized Zettabyte File System (ZFS) with seven counts of patent infringement related to NetApp's Write Anywhere File Layout (WAFL) software. NetApp demands that Sun be enjoined from further distribution of ZFS - a somewhat quixotic appeal considering Sun went and open sourced the thing earlier this year.

And this means that NetApp - God help it - has managed to get open source hackles up - the mere mention of software patents let alone a lawsuit being enough to inflame the community.

Groklaw thinks, as it usually does, that it can discern Microsoft's fine hand behind the NetApp suit and open source's chief counsel Eben Moglen issued a statement Friday decrying NetApp's legal action as "an abuse of the public interest the law is supposed to serve."

The open source community is being urged to round up prior art to crush NetApp's patent claims. Sun, which says "NetApp is asking a court to order Sun to remove ZFS from open source," is accepting all suggestions. (See http://www.sun.com/lawsuit/zfs/contribute.jsp.)

Sun is particularly miffed because - according to its story - NetApp sandbagged it with its suit during patent licensing discussions that had been going on - on and off for five years - over some StorageTek patents that NetApp has consistently said are invalid and unenforceable by virtue of finagling the US Patent Office, a charge Sun returns in kind, claiming that NetApp - and one of its founders - misappropriated file storage IP for its patents from the Whipsaw Group back in '91-'92 and paid $4.4 million to settle the ensuing trade secret litigation.

NetApp claims the discussions would never have started if StorageTek and then Sun, its acquirer, hadn't maintained from the outset that NetApp was infringing three STK patents, technology NetApp claims it doesn't use, and Sun hadn't initially demanded payment of $36.55 million.

Sun tells a different story and says NetApp initiated the discussions through an unnamed third party seeking to buy the StorageTek patents, which STK refused to do but offered a licensing deal instead - the implication being that NetApp knew it was infringing.

Well, however they got to this point, Sun's countersuit sure outweighs NetApp's.

Sun's runs 64 pages to NetApp's 18, denies all of NetApp's charges, and says NetApp's complaint is a matter of sour grapes. That Sun and NetApp are direct competitors in file systems and that - na-na-na-na-na - NetApp doesn't have anything like ZFS.

Sun says that NetApp's Fabric Attached Storage (FAS) products, V-series products using its Data ONTAP software, NearStore products and its On the Web (NOW) service are compromised and that NetApp induced others into infringement - which is the same thing NetApp says about Sun open sourcing ZFS.

Hitz and Sun CEO Jonathan Schwartz have been arguing the bitter case outside the courtroom on their blogs.

Schwartz, the popular hero, has claimed the NetApp suit is a proprietary attack on open source.

Hitz faults Jonathan for wrapping himself in the open source flag when "The number one rule of open source is that you should only give away stuff that belongs to you. That is what this suit is about, and everything else is fluff."

Hitz, the clear underdog-cast-as-a-troll, complains that "Jonathan seems to be arguing that once something has been out into open source, it is beyond the law….It isn't a question of trying to unfree what's free…It's a question of whether corporations must obey the law. Jonathan's claim that 'you cannot unfree what is free' sets a very dangerous precedent. It says that you can steal anything as long as you open source it afterwards….I do understand that many open source proponents argue there should be no legal protection at all for information. 'Information wants to be free.' But even if Jonathan believes that, he ought to wait until the law changes before taking Sun down that path….If protected information does leak into open source, it will probably live forever in the web, but that isn't the issue. To me, the issue is that large corporations should stop making a profit on protected information that doesn't belong to them. That's what we're asking here."

So then Sun ups the ante and files a second suit in California.

Hitz has said nothing on his blog about this second suit and that's probably because it accuses him of "defamation, trade libel and product disparagement" as well as unfair competition for accusing ZFS of infringing NetApp patents and Sun of stealing NetApp technology. His alleged purpose according to Sun was to poison the well with users and potential users of ZFS.

Maybe the straw that broke the camel's back was Dave reproducing a demand letter for $36.55 million from Sun's lawyers after Jonathan denied that Sun had ever sought any compensation from NetApp.

The second suit also tries to make a federal case out of whether or not you're a member in good standing of the open source community.

In its characterization of NetApp, the suit says, "NetApp relies significantly on open source software provided by other (e.g., NFS and Linux), NetApp does not reciprocate by releasing NetApp software to the open source community. Instead…NetApp has sought to thwart open source software by suing in other litigation to stop ZFS."

And seeking to score points with the open source crowd - and taint NetApp as a troll - Dillon, the Sun lawyer, lays out Sun's immediate legal strategy on his blog.

"Although it may appear a separate case," he says, this second suit "is in reality part of the same litigation originally brought by NetApp in Eastern Texas to impede the adoption of ZFS. There are many theories as to why NetApp chose this particular venue, but because they sued in that location we were forced to respond there. And that is what we did last Thursday.

"The case we filed today is in the Northern District of California. While we dislike the fact that we are forced to litigate this matter at all, we believe California is a more appropriate forum for any dispute between Sun and NetApp. Why? For starters, our companies are headquartered less than 10 miles apart here in Silicon Valley. All of the key witnesses in this case are located here, as are our attorneys. The same for most of the documentary evidence. And, almost all of the technology in dispute was developed here as well.

"So to us, it makes more sense in terms of efficiency and economy, that this case be litigated here. With this in mind, we will be bringing a motion before the court in California asking that the case filed in Texas be consolidated with the case filed by Sun today for trial here in the Bay Area. Bottom line, this move would be in the best interest of all parties involved...especially our respective shareholders. We hope that NetApp agrees."

In its first suit Sun is charging NetApp as well as its snapshots and software RAID with infringing US patents Nos.:
· 5,403,639 ("File server having snapshot applications data groups");
· 5,410,667 ("Data record copy system for a disk drive array data storage subsystem");
· 5,459,857 ("Fault tolerant disk array data storage subsystem");
· 5,749,095 ("Multiprocessing system configured to perform efficient write operations");
· 5,761, 662 ("Personalized information retrieval using user-defined profile");
· 5,925,106 ("Method and apparatus for obtaining and displaying network server information");
· 5,941,954 ("Network message redirection");
· 6,356,984 ("Digital data processing system having a data bus and a control bus");
· 6,591,303 ("Method and apparatus for parallel trunking of interfaces to increase transfer bandwidth");
· 6,681,261 ("Programmable matrix switch");
· 6,873,630 ("Method and apparatus for multi-gigabit Ethernet architecture");
· 6,983,343 ("Portioning of storage channels using programmable switches").

In its second suit it accuses NetApp of infringing US patents Nos.:

· 5,124,987 ("Logical track write scheduling system for a parallel disk drive array data storage subsystem");
· 5,430,855 ("Disk drive array memory system using non-uniform disk drives");
· 6,049,528 ("Trunking Ethernet-compatible networks");
· 6,446,219 ("Highly available cluster message passing facility");
· 5,632,012 ("Disk scrubbing system");
· 5,721,937 ("Method and apparatus for reducing power consumption in a computer system by placing the CPU in a low power mode").

Like NetApp's original suit, Sun's second suit accuses NetApp of inducing and contributing to infringement by others and demands injunctions.

More Stories By Maureen O'Gara

Maureen O'Gara the most read technology reporter for the past 20 years, is the Cloud Computing and Virtualization News Desk editor of SYS-CON Media. She is the publisher of famous "Billygrams" and the editor-in-chief of "Client/Server News" for more than a decade. One of the most respected technology reporters in the business, Maureen can be reached by email at maureen(at)sys-con.com or paperboy(at)g2news.com, and by phone at 516 759-7025. Twitter: @MaureenOGara

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