In-House Counsel

Firestar

By legalthing

There is an old proverb that we like around Sun that says that "a rising tide lifts all boats". In the IT industry the "rising tide" is the accelerated adoption of FOSS around the world. As open models begin to displace proprietary, opportunities increase for all members of the open source community - including Sun. So, it's in our interest to ensure that the market for FOSS continues to grow. We support this growth, in a variety of ways. Some are very visible and others less so. A recent example of the latter involves a patent litigation - not against Sun, but a competitor.

In 2006, Red Hat was sued by Firestar Software, Inc. in the Eastern District Federal Court in Texas. Firestar alleged that Red Hat's then recently acquired JBoss technology infringed one of it's patents. Most often these events are viewed (sometimes happily) as a competitor's issue to deal with. In this case, however, we considered Red Hat both a competitor and a brother-in-arms. And, given the breadth of the Firestar patent and the likelihood that it would be asserted against others in the community, we decided to invest the time and resources in a prior art search.

We also let our friends at Red Hat know early in the litigation of our activities, that we had filed a request with the PTO for reexamination of the patent, and shared copies of the prior art for Red Hat to possibly use it in its defense.

These things take time, but last week, we received a response from the PTO in the form of an office action rejecting all of the claims in the patent based on the prior art submitted by Sun. Obviously, we are delighted to get this validation from the PTO. Firestar has two months to overcome this rejection, but given what we presented to the PTO, we believe it will be a challenge for them.

Unfortunately, the PTO's response comes a little over two weeks after Red Hat entered into a settlement with Firestar. Although the recent U.S. Supreme Court decision in Quanta Computers v. LG Electronics protects downstream Red Hat licensees through the application of the doctrine of patent exhaustion it doesn't insulate others in the open source community from future actions by Firestar. It's our hope that the rejection of the patent through the reexamination process will become final in August eliminating this threat for all members of the open source world.

As I said, "a rising tide..."

Full post as published by The Legal Thing... on July 11, 2008 (boomark / email).