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Fortinet Picks Up the Baton From Barracuda - Pick Your Brain (Another Call for Prior Art)

By Pamela Jones et al.

Do you remember a couple of years ago Barracuda Networks asked us to help find prior art to help deal with a Trend Micro patent on, believe it or not, blocking viruses at the gateway, of all obvious things?

You did find some, the ITC then said the patent, #5,623,600, was invalid, and you'd think that would be the end of that.

But no, software patents live in their own illogical alternate universe, and because Trend Micro and Barracuda settled instead of getting a court ruling of invalidity, Trend Micro was free to threaten others and to continue to take in royalties on that patent.

Some of you were asking the other day what would happen if a patent was ruled invalid, whether a prior licensee could stop paying. That's exactly what this Fortinet story is about. So we will find out, because Fortinet had earlier signed a license with Trend Micro, and when it noticed the ITC ruling and all the prior art Barracuda had presented, which it says hadn't been disclosed to it or the USPTO by Trend Micro, it didn't want to keep paying money for a license for nothing. It stopped paying, and there is ongoing litigation. In addition, Fortinet wants to finally invalidate this patent in court and at the USPTO, for the benefit of us all, and it would like your help.

First step is to read the 300-page petition for re-examination [PDF] Fortinet just filed with the USPTO on the '600 patent. I'll highlight some things in it, but there's a list of prior art they have already. And here's a Fortinet statement, along with many details on this latest development. A snip from the petition:

Reexamination is requested in view of the substantial new questions of patentability presented herein. Requestor reserves all rights and defenses available including, without limitation, defenses as to invalidity and unenforceability. By filing this Request in compliance with the Patent Rules, Requester does not represent, agree or concur that the '600 patent is enforceable, and by asserting the substantial new questions of patentability herein, Requester specifically asserts that claims 1-22 (all claims) of the '600 patent are in fact not patentable and as such the United States Patent and Trademark Office (USPTO) should reexamine and find claims 1-22 unpatentable and cancel such claims of the '600 patent, rendering the '600 patent null, void and otherwise unenforceable.

I'll bring you up to date, and then I'll tell you how you can help.

Full post as published by Groklaw on June 03, 2010 (boomark / email).