Kodaks Java Case Underscores Patent System Woes

IP lawyers see Kodak's victory over Sun in its Java patent case as another sign of how badly the patent system works with software.

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.

/zimages/4/28571.gifWill this be a Kodak moment? Read what Peter Coffee has to say.

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.

Next page: Other notable patent debates.