Sun Patent Team Demanded $36 Million From NetApp

Part of Jonathan’s response to our lawsuit stunned me. He simply denied our account: “First, Sun did not approach NetApps about licensing any of Sun's patents and never filed complaints against NetApps or demanded anything.” (Our name is actually NetApp, without the ‘s’, but I didn’t want to edit his quote.) 

He says Sun never “demanded anything”, but here is an e-mail from Sun’s lawyers doing exactly that. Legal language can be tricky to understand, but the translation of Sun’s letter is “You infringe our patents, so pay us $36 million.”

The part about “mapping claims onto NetApp products” is the legal way of saying “you infringe our patents”. The statement that NetApp apparently believes “the best defense is a good offense” indicates that we had something to defend against. Indeed. The phrase, “over a year and a half ago,” shows that the attack had been going on for a long time, both from StorageTek prior to the acquisition, and continuing at Sun long after the acquisition. 

It’s true that Sun lowered its price as the implications of our WAFL patents began to sink in, but it amazes me that Jonathan would simply deny that Sun ever demanded anything, and would imply (in the name of his URL) that NetApp is somehow the patent troll here.

[Note: Sun has now countersued. See Jonathan’s blog post announcing that, and my response.]

Comments

[max]

In a previous post you mentioned that one of your patents describes the "copy on write" technique (COW)which is used both by WAFL and ZFS. I had a look at the patent and apparently the "copy on write" technique is cited as Prior Art i.e. as something known prior to your patent and something which shouldn't be an exclusive of either NetApp or SUN. Have I understood well?

I believe that most implementations of COW are better described as Copy Out (as in out of the FS or LUN) on Write. (Think how VxFS does snaps) From my perspective, what makes ZFS a WAFL clone is it essentially uses the *exact* same method as WAFL. Essentially, there wasn't a whole lot of original thought put into it...

Sun is basically doing what everyone accuses Microsoft of in the "innovation" department.

[Marin Debelic]

"I believe that most implementations of COW are better described as Copy Out (as in out of the FS or LUN) on Write. (Think how VxFS does snaps) From my perspective, what makes ZFS a WAFL clone is it essentially uses the *exact* same method as WAFL. Essentially, there wasn't a whole lot of original thought put into it..."

Whether ZFS and WAFL have some similarities, may be irrelevant in terms of the patent suite. What really counts is what is covered by the claims of the patents i.e. what kind of exclusive right has been granted to a patentee by the Patent Office. Normally claims are a combination of process steps or elements and the potential infringer's product needs to map fully onto a claimed combination. If they don't, they might not infringe.

There may be many lots of other features in the file system which were 1) already known at the time of the invention, 2) were obvious derivates thereof or 3) which belong to someone else (neither SUN nor NetApp).

M.

[Mike Eisler]

OK, try as I might, I could not shut up when I read this (Dave can fire me if he wants. :-):

> lets see, Sun gave the world NFS, XDR(the catalyst for NDMP), Java, etc....not to mention simply the best hardware and OS( not to mention the most secure) in the world.

> What has Netapp contributed?

NetApp contributes people to write standards specs, people to write open source code, and cash to allow non-NetApp pople to write open source.

Some examples.

NFS: Two of the co-authors for RFC3530, NFSv4.0 were NetApp employees. The co-chair of the NFSv4 working group is NetApp's CTO, Brian Pawlowski. Brian, BTW sits on the board of the Linux Foundation. Speaking of Linux, Trond Myklebust , the official Linux NFS client maintainer, is a full time employee of NetApp. In terms of current work items of the NFSv4 working group, 2 of 3 editors of the NFSv4.1 spec are NetApp employees. Major pieces of NFSv4.1 such as sessions, pNFS, directory delegations, etc. were derived from documents written by (or co-authored) NetApp employees. All the NFS/RDMA specifications were co-authored by Tom Talpey of NetApp.
Tom also made sure there was a reference implementation of NFS/RDMA for the Linux client and server and along with other NetApp folks, wrote a lot of the code. Speaking of the Linux client and server, NetApp is active in the development of a pNFS client and server for Linux.

BTW, the only reason XDR is now a full standard is because of NetApp; the editor of the final XDR RFC (me) was a NetApp employee.

Work on the federation namespace for NFSv4 is being driven by NetApp and other companies.

Finally, ONTAP 7G and ONATP GX use BSD technology (the latter for more than the former). So far in 2007, NetApp has donated more cash to the FreeBSD foundation than any other donor. http://www.freebsdfoundation.org/donate/sponsors.shtml

[Steve]

Don't forget all of the work on NDMP. I'm pretty sure Dave himself has more to say about this work. What about DAFS? NetApp has done plenty, but is still entitled to patent and make money from some things.

[Steven Birch]

Its amazing how many people can comment on here and are either a) not directly in the know about any of this, b) are obviously far from being patent lawyers, and c) are doing nothing but share their opinion on a subject they know little or nothing about.

This is one of the reasons I think the Internet has gone downhill over the years. It gives a voice to anyone and everyone, including ones that really should just shut up.

I have been much more impressed with Netapp's products then I have ever been of Sun's products, and I have no plans to stop using or stop purchasing Netapp storage systems because of some usual business as usual in the US tactics going on between two competitors.

[Marin Debelic]

I wouldn't dismiss patent suites as something which can't affect the users in any way. In the case of an infringement, various kinds of remedies may (or may not) be ordered. If things get nasty, an injuction, including the withdrawal of the infringing product from the market, may be ordered (by a court).

[Mike]

--------------------------------------------
I’m sorry you feel that way.

If you'd like to chat, either anonymously by e-mail, or in person, you know how to reach me.

-- Dave Hitz

Re: the above?

why, so he/she can find himself having a one sided conversation with Netapp legal and HR?

I hate to break it to you Dave, but Netapp ain't Oz anymore, hasn't been for looong time and has quite a well earned reputation for its often mean and petty treatment of employees, internal politics, and classic legacy player treatment of customers.
-----------------------------------------

As a "real" NetApp employee, I'm proud to say our culture is not at all the way you have presented it. We have exceptional, highly skilled engineers and developers that have designed and continue to develop new technologies which have made our customers lives so much easier. That kind of talent doesn't hang around at companies like the one you described.

If you don't believe me, check out the Fortune Magazine's 100 Best Companies to Work For 2007.

http://money.cnn.com/magazines/fortune/bestcompanies/2007/full_list/

[Bill Todd]

Wow - what a zoo. I tend to agree with Steven Birch: many of the comments here seem to stem from open-source zealotry (I appreciate open-source, but don't worship it) or from anti-software-patent fervor (which I happen to agree with, but I don't fault either Sun or NetApp for playing by the existing rules), rather than from any real understanding of the issues.

In point of fact, ZFS is far less innovative than WAFL was by virtue of the fact that ZFS conceptually borrows heavily from WAFL (though whether to a degree that's legally relevant I have no idea). And regardless of whether NetApp approached Sun about licensing some of the StorageTek patents (for whatever reason), Sun undoubtedly appears to have fired the first actual shot in this exchange by demanding money from NetApp on the basis of whatever patents it felt were applicable and without any offer to negotiate, so should not have been surprised by NetApp's reaction.

I don't have any personal knowledge of how NetApp behaves, but I do have a great deal of respect for its technology (and for several of the contributors to it, including you). Sun's technology is no slouch either, though characterizing Solaris as the best and most secure OS in the world demonstrates laughable ignorance of the industry.

So I hope that sanity prevails and you settle this amicably to the benefit of all, despite Sun's mis-step and your justifiable even if somewhat heavy-handed response to it. And I thank you for the relatively even-handed commentary you have provided here: it's nice to see a corporate blog that's not *totally* marketing-driven (not that you don't occasionally stray a bit into that area in other discussions).

[JJ]

I'm a customer of both companies, and run both systems together in our shop. Having read all the comments here as well as a lot of the different blogs and reference materiels, I think we may be overlooking what the end solution is. A couple of end-game scenarios to consider:

1) Sun wins this litigation, crushes Netapp and the world moves forward. Sun is victorious, keeps ZFS out in the wild and all is good. Except... they now have quenched another significatnt provider of Open Source technology, reputations are damaged across the board, and the result is negative across the board.

2) Netapp wins and defends successfully in these litigations. Sun pulls ZFS and all iterants of it from any further development. Except... now Sun is damaged significantly and thinks twice about releasing other open source info to the community at large, and the result is negative across the board.

3) (the solution I'd like to see). Sun pulls ZFS for 3-6 months, (no, you can't remove what's already there, but you can stop development on any further versions/changes, etc.) and re-writes the questionable areas that may infringe upon Netapp Patents, while retaining the end functionality that everyone expects. This drives a new period of innovation in FS design at Sun, and makes the marketplace as competitive as it has ever been. Netapp pays for the license to whatever technology it needs from Sun, but never wants to get into this fight again, so it re-designs around the patent and drives a new period of innovation in the department in question.

More importantly, I hope this resolves somewhat amicably. I sure as heck don't want to move over to HP and EMC/Hitatchi...

[Han Solo]

Frankly, as a sr level storage architect at a fortune 50....my response is that I am calling EMC back and making some different choices next when my filers are coming off lease.

[Jason]

I'm sad that Network Appliance and Sun are mad at each other. I just want my files to have a safe place to call home.

Please work this out so I can sleep at night without having to worry about finding funds to replace my storage gear. Some of us pay for our gear out of the taxpayer's pocket, and every time I see IP disputes in the news it makes signing over part of my own paycheck that much harder every year.

That doesn't mean you aren't within your rights to defend your investment in intellectual property, but is it really necessary to jump right into the court system? Why don't all you folks, including the ZFS team leads at Sun, sit down to a nice dinner and try to talk this out first? It might sound naive, but at least then you can say you tried to work it out the easy way. Every hour of litigation you spend instead makes me wonder if I'm paying my invoices to your attorney's auto brokers instead of your fine engineering team.

[Dave Armstrong]

In reading some of the posts here it's becoming more and more obvious how crippling software patents are. I've always maintained that patenting software is like patenting math.

Having said that, it strikes me as odd that someone could complain about a telnet vulnerability. Telnet is not and never has been considered a safe protocol. Anyone using telnet over ssh needs to reevaluate their reasons.

Secondly, Solaris is probably very secure, but it's got a long way to go in usability. Pressing control-backspace kills the X-Server. Sure, you can undo that setting with a single command but it's not documented. One asks oneself, how responsive can a company be which allows an obvious mistake like that release after release?

I hope Sun and ST mend their ways and I really hope congress and the EU, amoung others drop software patents altogether.

[Faisal Puthuparackat]

Software patents suck!

I was recently trying to solve a problem that bordered on string hashing mechanisms, in an attempt to write a n optimized clustering system. Unfortunately the road I took in my design led me to a software patent that implements the hashing mechanism I was attempting to develop. Now - even though I didn't go into the specifics of the patent (partly so I wouldn't wilfully infringe), it pisses me off because I have to now downgrade my design and use less efficient and more time-consuming techniques to do the clustering. *Any* company that actually initiates a patent litigation in my opinion is killing off innovation. period.

[quote] He says Sun never “demanded anything”, but here is an e-mail from Sun’s lawyers doing exactly that. Legal language can be tricky to understand, but the translation of Sun’s letter is “You infringe our patents, so pay us $36 million.” [/quote]

I think we'd all gain a little more perspective re - this email, if we were able to see the content of the Oct. 23/06 letter from NetApp to Sun, which is referred to in the 1st paragraph of the message.

Any chance of posting that?

(Not holding my breath.)

[WL]

Agreeing with JohnQ, the nameless post at "October 25, 2007 at 02:51 PM", etc... The letter posted here is clearly not the beginning of the story. If we're to form an opinion about who's morally in the right, it would help to know how this started.

[Matthew Flaschen]

What Jonathan Schwartz said is, "First, Sun did not approach NetApps about licensing any of Sun's patents and never filed complaints against NetApps or demanded anything." I agree that's somewhat misleading, but it also seems to be true.

NetApp first approached Sun/StorageTek seeking to buy the patents. Sun wasn't willing to sell, and suggested licensing instead. Suggesting licensing basically means saying /These are the patents you infringe, so pay us X./; that's what Sun did. Apparently (a lot is out of context), you didn't want to pay that much, so you claimed Sun infringed your own patents. They disagreed, and you filed suit.

I don't think software patents are legitimate, so I'm not enthused at the thought of Sun wanting license payments from you. But it remains the case that you brought it up, by trying to buy patents they weren't selling. At that point, their only choice was to say /You don't infringe those patents/ (weakening their portfolio) or request a license fee. I doubt they would have brought up the patents if you hadn't. The fact remains that you were first to file an infringement lawsuit, and that costs you most of the sympathy.

[Terry Dwyer]

The problem here seems to be that at no point in the exchange did either side offer to cross license patents.

If these companies want to spend money on law suits they would be better served to join forces and sue the USPTO for allowing patents in a field where they do harm rather than encouraging innovation as is the purpose of patents.

[Bill Todd]

Hi, Matthew -

Given your assertion that Jonathan's statement 'seems to be true', could you explain exactly how you figure that "These are the patents you infringe, so pay us X" does not constitute a 'demand'? I do agree with your paraphrase, by the way: Sun's .pdf that Dave links to seems superficially bland until you get to its use of the word 'defense', which rather clearly suggests that Sun is stating NetApp needs to defend against action by Sun rather than being just a friendly negotiation over licensing non-infringing patents.

Furthermore, you've conveniently glossed over the fact that the patents you referred to were patents that NetApp had indeed expressed an interest in buying but denied it was infringing (hence one might suspect that they wanted to own that IP for use in future development).

Terry -

The .pdf that Dave linked to seems to suggest that NetApp indeed proposed a cross-licensing agreement which Sun dismissed.

That being said, I'll add my own voice to those who think that seeing more of the relevant correspondence would help people make better-informed judgments on this matter.

- bill

[Anonymous]

What a joke.

Dave - your series of posts seem not only petty in tone/nature, but do appear to be spin merely by your filtering of what facts you present.

In addition, the word "require" or "demand" does not appear once in the letter you posted from Sun. I believe the word they "proposed" a cross-license and asked for a discussion of the proposal.

I have to say, as an outside observer, NetApps looks pretty foolish in this case. Your posts seem very self-centered and petty. If you're not going to 'argue' the case in public, I think you would have been better off staying silent on the issue.

[Bill Todd]

Ah - another bravely-anonymous incompetent: you don't even seem to have read (or at least understood) the post immediately preceding your own, where the implicit demand from Sun was made clear, specifically noting their use of 'defense' in characterizing NetApp's response to their earlier (and then repeated) statement that NetApp should pay them $36.5 million to license the patents that they alleged 'mapped onto' NetApp's products.

Far from supporting your suggestion (based on no evidence that I'm aware of) that *Sun* was proposing cross-licensing, that same email indicates that

1. Sun was reiterating its earlier claim that its patents 'mapped onto' NetApp's products and that NetApp should pay Sun $36.5 million to license them.

2. Sun was rejecting NetApp's denial that its products infringed Sun's patents.

3. Sun was rejecting NetApp's contention that ZFS infringed NetApp's patents.

4. Sun was therefore rejecting NetApp's suggestion that this alleged infringement by Sun 'significantly changed' the earlier circumstances under which Sun had first requested $36.5 million from NetApp (i.e., Sun was rejecting NetApp's proposal for a more even cross-licensing agreement).

Of course, if you actually have any new evidence to back up what appear to be your purely personal and completely unfounded opinions, I'm sure that many people here (including me) would be interested in seeing it.

- bill