Sun Microsystems March 26 filed a third lawsuit in federal court that extends the patent infringement charges to the storage management technology NetApp acquired from Onaro in January.
Other than a few candid comments in blogs and interviews by company executives on both sides, the new lawsuit was the first official public move by either company in the case since December.
The March 26 filing alleges patent infringement related to Onaro’s SANscreen software that NetApp acquired in January, Sun spokesperson Dana Lengkeek told eWEEK.
SANscreen, which was deployed in 32 percent of Fortune 50 companies at the time of the acquisition, allows enterprises to manage large amounts of storage with a minimum of downtime.
NetApp CEO Dan Warmenhoven told eWEEK several days ago that the case was deep “in the discovery process” and that he didn’t know when court dates for hearings would actually be set.
The latest Sun filing is part of the response to the lawsuit NetApp originally filed against Sun on Sept. 5, 2007 to forestall competition from the free ZFS (Zettabyte File System) technology, which Sun released to the open-source community in 2005.
NetApp claims Sun’s ZFS, a speedy, industrial-strength storage file system included in Sun’s Unix-derived OpenSolaris operating system, is patterned directly after its own WAFL (Write Anywhere File Layout) file system.
Sun, which claims to have created ZFS long before it released the code to the open-source community, filed counterclaims on Oct. 25 against the entire NetApp product line, seeking both injunctions and monetary damages.
The legal affidavit was filed in an East Texas court, as was the original NetApp action. Both companies have since agreed to move the court case to California, since all the principal players and inventors of the IP are in that state.
“ZFS is an extraordinary innovation, so threatening to NetApp’s business model, they are seeking to remove it from the marketplace,” Sun lawyers wrote Oct. 25 in a statement posted on the company Web site.
NetApp unable to comment
Sun’s latest lawsuit claims that SANscreen-which was developed by Onaro long before the company was bought by NetApp-now infringes upon its intellectual property, ostensibly because the Onaro storage management suite has since been upgraded with NetApp IP that is currently under fire from Sun.
The filing also identified Onaro NAS Insight-network storage monitoring software-as a second product that infringes upon Sun patents.
A NetApp representative told eWEEK the company wasn’t able to comment on the March 26 action “at this time.”
“NetApp initiated this attack against Sun’s ZFS file sharing system, and now as NetApp attempts to extend its product line, it also expands its exposure to Sun patents,” Lengkeek said. “Sun is committed to protecting its innovations and the open source community against the lawsuit that NetApp questionably initiated against ZFS.”
Additionally, Lengkeek said, the U.S. Patent Office has granted Sun’s “re-examination request with respect to NetApp’s [5,819,292] patent [for WAFL].”
A re-examination is granted when the patent office determines that a substantial new question about the patentability of innovation exists, Lengkeek said.
In light of prior art submitted by Sun-and with considerable support from the open-source community-the patent office determined there was a substantial question raised regarding the validity of this patent and it will re-examine the NetApp WAFL patent.
Sun also has several other re-examination requests pending, calling into question the validity of other NetApp patents in this lawsuit, Lengkeek said.
“Sun is confident in our patents and claims against NetApp and pleased with the direction of this case,” Lengkeek said.
The case is expected to be heard in the California court sometime this summer.