When Eastman Kodak Co. won the initial round of its Java lawsuit against Sun Microsystems Inc., it sent shock waves through not just Sun and the Java community, but in the legal community as well.
On Oct. 1, the U.S. District Court of Rochester, N.Y., found that Sun infringed on three of Kodaks patents when it created Java. While Sun is expected to appeal, for now the companies are arguing over what penalty should be imposed on Sun. Kodak is seeking more than $1 billion in damages.
Robert Krebs, co-chair of IP (intellectual property) & trade regulation group and partner in the San Jose, Calif., office of Thelen Reid & Priest LLP, isnt sure the case will get that far.
“The damage phase of this trial may present an opportunity for reaching a settlement. In fact, even if Sun appeals on issues of infringement and validity of the Kodak software patents, a business resolution of this controversy might still be reached subject to the contingencies of the outcomes of the appeals,” said Krebs.
Other IP lawyers look beyond the specifics of the case and see it as another example of a patent system getting in the way of the software business.
Lawrence Rosen, a partner in the law firm Rosenlaw & Einschlag and author of “Open Source Licensing: Software Freedom and Intellectual Property Law,” described the result as “yet another patent train wreck. To mix metaphors, the industry simply cant tolerate more of these $1 billion tollbooths on the information technology highway,” he said.
“I cant speak to the particulars of this patent infringement lawsuit, but it seems to me that too much open-source technology is based upon Java to allow a patent on a method by which a program can “ask for help” from another application to carry out certain computer-oriented functions. Well need to examine this one in detail to determine if there is prior art or other good reason to invalidate this patent,” said Rosen.
According to Glenn Peterson, IP attorney and shareholder in the Sacramento, Calif.-based law firm McDonough Holland & Allen PC, Rosen is not alone in his belief that theres a need for patent law reform.
“I expect that this verdict, no matter what the damages are determined to be, will reignite debate over software patents,” Peterson said. “Software has been the fastest-growing patent category for the past several years, but with considerable controversy.
“Many believe that patents—which originated from a uniquely nuts and bolts world—transcended the time-honored boundaries with software and inappropriately trespassed into the realm of thought and abstraction,” he said.
“Many traditionalists harken back to Thomas Jefferson to remind us that ideas are not patentable. One may patent the tangible fruits of an idea, but not the abstraction, i.e., the idea itself,” Peterson said.
The Kodak and Sun patent fight is, of course, far from the first case that has made lawyers look askance at U.S. patent law and software.
The “one-click” patent litigation between Amazon.com and Barnes & Noble brought the debate over software patents to new heights, according to Peterson.
“Amazon received an injunction against Barnes & Noble that forced Barnes & Noble to add a meaningless mouse click to its Web site checkout feature called Express Lane. The one-click injunction capped a burst of skirmishing in 1999,” he said.
The situation with patent law and software development hasnt gotten any less complex since then. Microsoft Corp.s Sender ID proposal was recently rejected by the IETF in part because of patent concerns. And, in an unrelated situation, Microsofts FAT (File Allocation Table) patents have recently been rejected by the U.S. Patent and Trademark Office thanks to the efforts of the PUBPAT (Public Patent Foundation).
Despite such setbacks, Peterson sees corporate America investing more in software patents.
“I expect that the Kodak case will become anecdotal in corporate board rooms, and pointed out as a really good reason to pursue software patent applications, and even licenses, with renewed gusto and increased funding,” he said.
What concerns Peterson, however, is the “chilling effect” this could have on software-related development and innovation. “The closer we get to patenting abstractions, the closer we come to taking ideas and innovations out of circulation—the very thing our system of patent laws was designed to promote,” he said.
Beyond the Kodak/Sun case, Peterson expects “software patentability issues to be the subject of intense litigation over the next few years, both in the trial courts and in the federal courts of appeal.”
“I would not be surprised at all to see the issue reviewed in the U.S. Supreme Court,” he said. “It is hard to overstate the commercial impact of a patent office that continues to proliferate software patents, especially with such minimal scrutiny as would explain issuance of the one-click patent and some of its just as ridiculous siblings.”