January 29, 2008

Software patent case defendant seeks support of FOSS community

Author: Bruce Byfield

Barracuda Networks is actively seeking the support of the free and open source software (FOSS) community in its battle against a patent suit brought against it by Trend Micro. The suit revolves around Barracuda's distribution of Clam Antivirus (ClamAV), the well-known FOSS security software, with its firewall and Web filter hardware appliances.

The case is the second piece of software patent litigation to directly involve FOSS. The first was a case brought against Red Hat and Novell by IP Innovation for the inclusion of virtual workspaces in their Linux distributions.

Although the ClamAV project is not directly involved, the issues in the Barracuda case have already enlisted the support of such figures in the community as Eben Moglen of the Software Freedom Law Center (SFLC) and Richard Stallman, founder of the Free Software Foundation (see sidebar). Trend Micro, though, insists that the case is a narrowly focused one, and that the concerns of the FOSS community are premature and unfounded.

History of the case

The patent allegedly violated is patent 5,623,600, which is for anti-virus detection on an SMTP or FTP gateway. Applied for in 1995 and granted in April 1997, the patent shortly afterwards became the means of forcing out-of-court settlements from both Symantec and McAfee, two of the leading proprietary manufacturers of anti-virus software. While information on the settlements is not publicly available, the fact that Symantec and McAfee have subsequently cooperated with Trend Micro suggests that the companies pay minimal license fees to Trend Micro. "I don't see anything in the publicly accessible information that suggests to me that people who have paid thought that [the patent] was dangerous," Moglen says. "I've seen some indication in the publicly accessible information that people who paid for it thought it was a nuisance."

In 2005, a third alleged violation, this time by Fortinet, was also settled, after a judgment against Fortinet was brought by the US International Trade Commission (ITC).

Although Trend Micro's stated position is that it is simply enforcing its rights, the case against Barracuda seems more punitive. Given Barracuda's reluctance to settle -- "it's a lot of money," Drako comments -- Moglen suggests that it might be an attempt to use patent law to drive a competitor out of business. If so, this use is more than a little ironic, considering that patents were originally intended to encourage innovation for the sake of a free economy, and, in this case, one is being used as a kind of unofficial government intervention.

In late 2006, Trend Micro began sending a series of increasingly insistent letters to Barracuda, demanding that the company either remove ClamAV from its products or pay a licensing fee. Drako tried to arrange a meeting -- and continues to do so to this day -- but without success. "I've never got an official refusal," he says. "But somehow the meeting never seems to happen with someone who actually has authority. I've been trying to get a meeting with the CEO, the CFO, and various other people to have a serious talk about his, but their lawyers won't allow it."

Increasingly concerned by the letters, Barracuda instructed its legal representives, Wilson Sonsini Goodrich & Rosati to file for a declaratory judgment in Northern California federal court. Trend Micro responded with an accusation of patent violation.

However, before the application could be heard, Trend Micro filed a second suit with the ITC in November 2007 against Barracuda, as well as Panda Software and Panda Distribution. At Barracuda's request, the federal case was stayed until the ITC case was heard -- a standard procedure in such circumstances.

Drako suggests that this maneuver was designed to switch jurisdiction from Northern California, a federal district that is generally considered a relatively fair jurisdiction for software patent cases (perhaps because of the high likelihood of knowledgeable jury members from Silicon Valley), to one that is much more difficult for the defendant. "The ITC is an extremely onerous court for (the) defending party," he says. "Because it has unlimited amounts of discovery, you have seven to ten days to respond to a discovery request, you have an unlimited number of depositions, and the ITC effectively guarantees you a one-year resolution."

Presumably in order to have the case fall under ITC jurisdiction, Trend Micro's filing alleges that, because ClamAV is developed by FOSS developers from around the world, it is imported software -- despite the fact that it is readily downloadable from its site on SourceForge.net, a U.S.-based Web site (owned by the same company that owns Linux.com). According to Barracuda and its publicists, the filing also claims that Barracuda is importing unique motherboards and power supplies for its products. In fact, Drako claims, "They're standard, off-the-shelf components that you could buy anywhere."

In December, 2007, the ITC agreed to hear the case. More details about the scheduling in the case are expected by the end of February.

Meanwhile, Barracuda has decided to go public with the case. "This is not an easy decision emotionally," Drako says, "But, finally, we said, 'This is so wrong that we have to let everybody know. It's potentially precedent-setting in the open source community." Drako has also met with Richard Stallman and consulted the Software Freedom Law Center, which is considering possible ways of assisting in the case -- including applying for a patent re-examination, as it did with the Blackboard eLearning patent.

Trend Micro's position

Intially, Trend Micro refused to comment on the situation because it was in litigation. However, after receiving numerous requests from journalists, the company agreed to let Carolyn Bostick, vice president and general counsel, and John Chen, intellectual property counsel, talk with Linux.com.

The company's legal representatives take a narrow view of the case, refusing to consider any of the potential concerns of the FOSS community or any precedents that the case might set.

"Open source really isn't at the heart of the issue at all," Bostick says. "It's really about a company that's selling products for profit that infringe what we do with a time-tested patent." This patent, she stresses repeatedly, is not about anti-virus as such, so much as a specific implementation of anti-virus through an SMTP or FTP gateway. She notes that the other companies involved in the ITC case are strictly proprietary, adding, "We think it's a little off the mark to try and transform this lawsuit, which at heart is about intellectual property, into something about the open source community."

Reminded that others in the FOSS community are wondering if they are at risk, Chen replied, "I don't think you can just put a blanket statement like that."

Bostick agreed, saying, "The patent issue covers a specific implementation of anti-virus scanning. It's also a U.S. patent, which means that it's only going to cover intellectual property violations in the U.S. And frankly, as we sit here now, we're not aware of any other companies that are using ClamAV in the U.S. This is just not going to have a negative impact on open source." However, later, in responses to reworded questions about possible vulnerabilities, Bostick said, "That's always a possibility. I can only speak about this patent."

"It's really a difficult question to answer," Chen says, "Because that's never been our intention [to threaten FOSS]."

Asked if Trend Micro might take any steps to reduce concerns in the FOSS community, such as patent protection for FOSS or non-commercial use, Bostick returned to the basics of the present case, saying, "The example that we're looking at is not non-commercial use. It's not like our patent is an unknown quantity." Finally, after the question was presented in different forms once or twice, Chen said, "I don't think we're prepared to make a statement on that."

As for concerns about how the definition of importation might affect FOSS, or the possibility that the ITC might become the preferred venue for FOSS-related patent cases if the definition is upheld, Bostick says, "That wouldn't necessarily be the case. That's incredible. I think people are trying to draw conclusions that logically don't exist."

Chen said much the same, suggesting that "I think people are drawing too many conclusions about the potential significance of this case.."

"The facts should mitigate people's concerns," Bostick says. "Anyone should be very cautious about drawing any large conclusions. This is not about open source, and this is simply a bit of misdirection."

In other words, Trend Micro's legal representatives believe that Barracuda's appeal to the community is simply a means of confusing what to them is a very straightforward case.

Critiques of the case

To say the least, FOSS-oriented legal experts disagree strongly with Bostick and Chen. Although the case is just now being publicized, FOSS legal experts have been following it for some time. Like Trend Micro's representatives, they are understandably cautious about commenting on a case that is still being heard, but the two experts Linux.com consulted suggest that possible reasons exist for declaring the patent invalid despite its widespread use in the last decade.

According to Drako, Barracuda has located "hundreds of pieces that contribute to the prior art collection" that undermine the suitability of the patent. SFLC's Eben Moglen concurs, saying, "Despite the widespread licensing of this patent, it does seem clear that the patent office had some significant doubts before it was issued, and those doubts were probably well-founded. We have undertaken a good deal of research, and I think that more light shed on the condition in 1995 might be enough to demonstrate that this was a patent that ought not to have been issued."

Nor is the fact that the patent has been successfully defended necessarily relevant. Mark Lemley, a professor at Stanford Law School who teaches intellectual property and Internet law and is a counsel at Keker and Van Nest in San Francisco, suggests that "it doesn't set a blind precedent." Rather, he notes, the previous defenses might only come into play if the patent is upheld.

"They might establish a royalty basis for damage calculation," Lemley says. "But the fact that it's open source might mean that we treat [the Barracuda case] differently. It' s not clear that we should be paying the same damages, or even how one should calculate damages, because we normally calculate it as a percentage of the revenue" -- and, of course, FOSS projects have only limited funds at the best of times."

Another consideration in the case is the definition of importation in the ITC filing. To Moglen, the idea that international contributions to a FOSS project could constitute importation is bizarre. "There's no rhyme nor reason to it at all," he says. "That would tend to confirm my belief that what we have here is a software company prepared to do harm to the free [software] world solely for its own profit." Carried to its logical extreme, he suggests, a computer assembled in the US using imported screws would also be classified as an imported product.

Lemley is even more skeptical of the proposed definition. "I think there are numerous problems with that argument," he says. "First is the question of whether Barracuda did in fact import the software at all from abroad, as opposed to getting it from a US source. But even if that weren't true, even if they had imported it, they're making their software in the United States, so there's nothing for the ITC to enjoin. The most that the ITC could do is say you're not allowed to download further copies of the software from the website, but, of course, Barracuda doesn't need to. They've already got the software. I would think that the ITC claim, regardless of the merits of the actual patent claim, just doesn't make any sense."

In short, both Moglen and Lemley suggest that the successful application of the patent over the last decade is no guarantee of its success and that both the legal cases and the patent itself could be vulnerable. Moglen in particular refers to 5,623,600 as an "invalid patent." He suggests that it is ironic that proprietary software, having created a situation in which anti-virus is required, should now be attempting to outlaw an effort to correct the problem.

Larger implications

Beyond the particulars of the case, what concerns Lemley and Moglen most is that the Barracuda case might be the first of many patent cases brought against FOSS. "There are a heck of a lot of software patents out there," says Lemley, "So what we're seeing may be the first edge of the wedge. If that's true, if there's a lot more software patent cases coming in the open source world, then I think open source is going to have some difficulties, because the open source licenses are not set up to deal with those. Licenses like the GNU General Public License, he points out, have found an ingenious way around copyright, but don't "work for patents because, unlike copyright law, you can be sued for patent infringement even if you didn't copy anything from the patent owner, even if you you have no connection to the patent owner."

Or, as Eben Moglen puts it, "Patents attack the very idea of free software. Software, unlike physical devices, process, and equipment, may put in practice what in theory is tens of thousands of claims. The results of any application of the patent law to software is a profound problem of what theorists call anti-commons: rights that have been so severed up that, at least in theory, there could be thousands of holders of little statutory monopolies, and nobody would be able to do anything."

According to Moglen, the nearness of the anti-commons is why most major software developers have become more skeptical about the desirability of patents, often holding their own patents primarily as a defensive measure even as they release some rights to free software or into the public domain.

"Companies are beginning to act on the assumption that the protection given by software patents are too much protection even for their own inventions," Moglen says.

Moglen views software patents as "anti-progressive as well as anti-consumerist." Moglen explains: "The Internet is being widely and powerfully transformed by the availability of small, cheap routing devices. And this is entirely attributable to the embedding of free software. The free software world is now providing tangible advantages to millions of customers around the world," and these developments and conveniences are undermined by patent claims.

"Freedom depends on technology that people control," Moglen says. "If you can't control the technology of daily life around you, the technology of daily life controls you."

Given these views, Moglen applauds Barracuda's decision to publicize the case rather than to seek a private settlement, as others have done in the past. "Every time someone makes a separate, private peace with a patent holder," he says, "That subtracts from the community's ability to defend itself. A patent that has been licensed has a certain weight of gravitas that seems to attach to it."

"One of the things that I think is good here," Moglen concludes, "Is to have an opportunity by support to express our gratitude to companies like Barracuda -- that is, companies that make commercial use of free software who are willing to take a stand and deal with a problem that affects us generally."


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