The NetApp/Sun patent infringement lawsuit that started roughly 10 years ago (or so it seems) continues on, first with this latest dispatch from Sun’s general counsel, Mike Dillon, who was gleeful over the results of a Markman hearing in the case of Sun vs. NetApp.
A Markman hearing is designed to settle on agreed-upon definitions of technical terms in a patent-infringement lawsuit. Sun and NetApp each submitted their interpretation of the meaning of various terms under dispute, like “RAID” and “domain name.” These interpretations are called constructions.
According to Dillon,
In dispute were fourteen phrases in seven patents (four asserted by Sun and three by NetApp) that required the court to determine the meaning of terms like “Domain Name”, “Non-volatile Storage Means” and “Root Inode,” among others. Given the complexity, we were impressed when only two weeks later, the judge issued her order.
And, we were very pleased.
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.
While this is obviously more in Sun’s favor than NetApp’s, a Markman hearing is a pre-trial procedure. Agreeing with Sun on the terms doesn’t mean there was a decision in Sun’s favor. However, the court did make one ruling dismissing one of the outstanding patent claims from NetApp, US No. 7,200,715, or ‘715 for short, which referred to RAID.
According to Dillon:
…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. 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.
While it’s good for Sun, the original defendant, to have this claim dismissed, both companies are seeking injunctions against one another’s products as well as treble damages, and, I would imagine, a contrite apology. A dismissal is good for Sun, but not a finding that NetApp violated its patents. This dismissal amounts to a finding that nobody can really patent something as ubiquitous as RAID.
Dillon also published updated results from the Patent and Trade Office’s (PTO) reexamination of the patents under dispute in this case. The PTO already found in Sun’s favor on one patent, ‘001, back in June. Sun requested that this patent be taken off the table in the dispute, and the Markman court documents don’t show any reference to it.
Now, according to Dillon, the trial court has agreed to remove ‘001 from consideration. Meanwhile, the PTO has also rejected NetApp’s claims on two more patents, ‘211 and ‘292. ‘292 being the one that refers to WAFL. Uh oh.
…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”.)
Some may recall that the ‘292 (“WAFL” technology) patent was what NetApp’s founder, David Hitz, originally highlighted on his blog as being innovative and infringed by ZFS.
While not a decisive victory for Sun (the claims still have to be addressed in court, and a dismissal of the patent again does not amount to “winning” the countersuit alleging NetApp infringes Sun), it’s certainly nothing that could be called a victory for NetApp.
NetApp’s only comment to me about this so far is, “We’re very happy with the way these matters are progressing and we continue to read Mr. Dillon’s blog with great bemusement.”