Sun Successfully Defends Itself Against $100M Patent Suit

By Chris Preimesberger  |  Posted 2009-04-27 Print this article Print

A jury denies the claim for than $100 million in damages from Sun for alleged patent infringement, breach of contract, interference with an existing contract, trade secret misappropriation and unfair competition that had been filed by Versata, formerly called Trilogy Software. Versata claimed Sun stole its technology for a product configurator designed to model a software development project throughout the entire product cycle, from requirements to marketing and sales.

Sun Microsystems received some welcome news April 27 when a jury in Marshall, Texas, turned down a complicated 3-year-old patent infringement and trade secrets lawsuit brought by software development company Versata.

Versata, formerly called Trilogy Software, had sought more than $100 million in damages from Sun for alleged patent infringement, breach of contract, interference with an existing contract, trade secret misappropriation and unfair competition.

Versata claimed Sun stole its technology for the WC5 software configurator, which was designed to model a software development project throughout the entire product cycle-from requirements to marketing and sales.

But the jury, following a 10-day process in U.S. District Court for the Eastern District of Texas, didn't see it that way and gave Sun a clean-sweep victory on the 11 questions comprising the lawsuit.

"It was a very, very complicated case on multiple levels [facts, technology, intellectual property, employment histories of some the principals], and because it involved so many different kinds of charges," Sun's head defense attorney, Jeff Randall, told eWEEK. "The patent infringement part of the case could have taken a full week on its own. But Judge [T. John] Ward was very fair and allowed plenty of time, and the jury was attentive and fully understood all the facts in the case."

Randall, a partner with Skadden, Arps, Slate, Meagher & Flom and head of patent litigation in the firm's offices in Boston, Washington and Palo Alto, Calif., said the case was further complicated by employees from Versata moving to work at Sun during the years the companies worked together on the project.

Sun commissioned Versata in 1998 to begin work on the software configurator in conjunction with some of its own developers. The configurator was being designed to model every aspect of a software project, including the digital weight of each component, how it connects and interacts with other components-even how it was to be marketed and sold.

"A very simple example of this would be the Dell product Website," Randall said. Prospective customers can go online to and "custom design" a desktop or laptop computer to their liking, adding and subtracting features they do and do not want.

After about three years of pre-development, Sun management decided that the project was not meeting its business needs and transferred the contracts to Oracle to pick up where the first team had left off, Randall said.

"During the first three years, some employees moved from Versata to Sun," Randall said, and things began to get murky as to who was going to receive credit for individual contributions to the project.

Versata brought the case against Sun in September 2006, Randall said. Versata declined to say April 27 if it is going to appeal the decision. 

Chris Preimesberger Chris Preimesberger was named Editor-in-Chief of Features & Analysis at eWEEK in November 2011. Previously he served eWEEK as Senior Writer, covering a range of IT sectors that include data center systems, cloud computing, storage, virtualization, green IT, e-discovery and IT governance. His blog, Storage Station, is considered a go-to information source. Chris won a national Folio Award for magazine writing in November 2011 for a cover story on and CEO-founder Marc Benioff, and he has served as a judge for the SIIA Codie Awards since 2005. In previous IT journalism, Chris was a founding editor of both IT Manager's Journal and and was managing editor of Software Development magazine. His diverse resume also includes: sportswriter for the Los Angeles Daily News, covering NCAA and NBA basketball, television critic for the Palo Alto Times Tribune, and Sports Information Director at Stanford University. He has served as a correspondent for The Associated Press, covering Stanford and NCAA tournament basketball, since 1983. He has covered a number of major events, including the 1984 Democratic National Convention, a Presidential press conference at the White House in 1993, the Emmy Awards (three times), two Rose Bowls, the Fiesta Bowl, several NCAA men's and women's basketball tournaments, a Formula One Grand Prix auto race, a heavyweight boxing championship bout (Ali vs. Spinks, 1978), and the 1985 Super Bowl. A 1975 graduate of Pepperdine University in Malibu, Calif., Chris has won more than a dozen regional and national awards for his work. He and his wife, Rebecca, have four children and reside in Redwood City, Calif.Follow on Twitter: editingwhiz

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