October 12, 2004

Picture-perfect: Sun plays it safe and rolls over for Kodak

Author: Chris Preimesberger

Well now, it turns out Sun was done after all.

On first take, this looked way preposterous: Eastman Kodak Co., which knows little or nothing about enterprise software and is falling quickly behind the competition in its own market, sues Sun Microsystems for patent infringement involving Java -- Sun's supposedly homegrown, bread-and-butter IP and front-line enterprise software product. Then, bam, Kodak wins a legal judgment last week in a federal court, with the jury populated by Rochester, N.Y. citizens. And the camera guys do this in a mere three weeks in a case that was first filed in February 2002.

Kodak, flushed with success, then announces it will seek $1.06 billion in back royalties. Four days later, on Oct. 8 -- when you'd think Sun would be getting up off the canvas to strategize an appeal -- the company throws in a towel from its corner and settles. Terms: $92 million in cash to Kodak and a new license to Sun to use this particular patented, object-oriented component in its own platform.

Sun decides not to defend its own IP

Confused? You're not the only one. Big, powerful Sun, declining to defend its own IP. Amazing.

The message from the court: Sun didn't create the original goods in that part of Java after all. Looks like the Java team borrowed where it shouldn't have been a-borrowing.

So where else in Java did Sun "borrow" code or a methodology? The door's now open for others to peek inside.

"These patent claims target one specific feature that is used in just a few of the packages in the Java software," Sun spokeswoman May Petry told NewsForge. "At the highest level, the Kodak infringement charges are directed against both the Java 2 Platform, Standard Edition, and Java 2 Platform, Enterprise Edition. At the next level down, they accuse Java RMI, Java IDL and EJB software. At the next and more precise level down, they accuse the activation features within Java RMI, Java IDL and EJB software."

Critics say the patent should never have been issued, since it describes an essential, and widespread, function of modern computing. Opponents of software patents claim that this verdict demonstrates that software patents can cause unforeseen problems and will lead to a chilling effect on technology innovation.

An activation feature is the ability of the system to "wake up" or "bring from disk into memory" a Java technology object or EJB on a remote machine, as needed. For the record, the patents in question are these: U.S. Patent No. 5,206,951, No. 5,421,012, and No. 5,226,161. Go here for an analysis of the case by M-CAM Doors, a patent risk management system that determines commercial uniqueness of patents issued throughout the world.

Schwartz: Thinking of the communities first

Sun President and COO Jonathan Schwartz steered attention away from the IP-protection argument and explained that in caving in to Kodak, the company was simply putting the Java and OpenOffice.org communities first.

"'Sun's Java Communities represent the future of the Internet," he said. "The communities' vitality, along with the safety of every other open community in which Sun participates, from OpenOffice.org to the upcoming open Solaris OS community, are of paramount concern to us."

On Sept. 30, just a few days before the Rochester decision, Schwartz wrote in his blog exactly how he stands on all of this: "I believe in intellectual property. In my view, it's the foundation of world economies, and certainly the foundation upon which Sun Microsystems was built. Copyright, trademark, patent -- I believe in them all. I also believe in innovation and competition -- and that these beliefs are not mutually exclusive."

It's really not clear how much it would have affected those communities directly had the case been appealed to a higher court. Perhaps not at all. Dollars-wise, it is true that had Sun gone to higher court and lost, it might have been saddled with a much larger financial penalty, which, in turn, might have affected its overall stewardship of the franchise. As it is, $92 million was only about one-tenth of what Kodak was considering.

"I was hoping they would appeal, but no doubt they are thinking of the bottom line, not the big picture, and that is exactly the problem with patents on software," wrote Groklaw's Pam Jones, a vocal anti-software-patent legal analyst. "No one can afford to lose a patent lawsuit, so everything is slowly shutting down."

Hopefully, Sun learned a lesson

IP attorney Dan Ravicher had a cogent comment on this case: "It is perhaps beneficial for Sun to see firsthand how harmful the patent system can be to innovation and technology, since they are generally pro-software patent," he wrote in an email to ITMJ.

The bottom lines:

  • Sun has lost credibility -- not only for its own IP, but for the way it will be viewed as not willing to stand up completely for itself.
  • IT shops of all shapes and sizes had better revisit and reevaluate every bit of the code they own, so that Kodak -- or some other powerful entity with plenty of eagle-eyed code-checkers and lawyers -- doesn't come knocking with a legal briefcase in hand.

Category:

  • Legal
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