Friday, October 08, 2004

Kodak and Sun settle patent dispute over Java

Sun will pay Kodak $92 million to settle a high profile lawsuit over Java, and Sun will receive a license to use technologies falling within the scope of claims of the Kodak/Wang patents. This settlement agreement avoids a trial on financial damages wherein Kodak intended to ask for $1.06 billion in royaltiesand Sun was planning to argue that a reasonable award should not exceed $25 million.

In the patent litigation, the relevance of the "ask for help" feature of the Kodak/Wang patents to Java had been at issue.

From the Rochester Democrat and Chronicle:

-->Researchers at Wang developed the technology in the early 1980s. Programmers were looking for ways to add functions to software without turning out programs that were impractically large and unwieldy.

The team's approach: Develop general communication tools that allow the software to identify and call for help from programs that reside on the computing system.

That, Kodak argued, is similar in a general way to Java's operating procedure. Java is language that allows programmers to write one set of code, but have their software run on any system, PC, Macintosh or others.<--

-->Software patents cover more than just formulas — they cover formulas that accomplish practical results, said Theodore Hagelin, a law professor at Syracuse University.

"What is surprising to many people is that they (programmers) got this wrong for so long. They confused these extremely complex, valuable formulas with abstract math," Hagelin said.<--

**The Wang patents involve continuations. US 5,226,161 (filed Aug 31, 1992) is a continuation of US 5,206,951 (filed April 3, 1991) and has but one claim, but the later filed US 5,421,012 (filed May 20, 1993), a continuation of US 5,226,161, has 51 claims.

Analysis of continuation patents has played a significant role in the patent grant rate controversy involving published work of Quillen/Webster on the one hand and Clarke on the other. This controversy has been discussed with proposals for patent reform, such as that of the National Academy of Sciences (NAS).

How continuation applications are "counted" is critical to this debate. Not all continuation applications arise from an antecedent abandonment, as is true of these particular Wang patents. Thus, subtracting continuing applications generally (and continuation applications specifically) as done by Quillen and Webster is not correct and leads to an artificially enhanced grant rate.

There have been some missteps in this debate. Mark Lemley and Kimberly Moore in footnote 22 of an article in the Boston University Law Review asserted that Clarke was guilty of "erroneously assuming that every continuation resulted in a patent and concluding that the grant rate was 75%." Because of this assertion, Lemley and Moore themselves concluded "The 85% number provided in the revised Quillen et al. study is based on actual data about the applications that issue based on continuations, and reflects the best estimate we have of how often applications mature into patents."

As we pointed out earlier (Patent Grant Rates at the United States Patent and Trademark Office, 4 CHI-K. J. INTELL. PROP. 108 (2004); available, Clarke made no assumption anywhere in his paper that "every continuation resulted in a patent" and, as such, the footnote is incorrect and not properly cite-checked.

Subsequently, it has been suggested that the footnote intended to state "erroneously assuming every allowed continuation resulted in a patent." This suggestion may be criticized on several grounds.

First, Clarke did not "assume" every allowed continuation resulted in a patent. To eliminate the effects of continuing application practice on the patent grant rate, he identified issued patents claiming priority to an earlier issued patent and he removed them from consideration. This removal included all continuing applications (continuations, divisionals, continuations-in-part).

Second, Clarke did not remove from consideration allowed continuations that did not claim priority to an issued patent and Clarke did not remove from consideration allowed continuations which did not give rise to a patent.

Third, in working with data on issued patents to identify the number of patents based on continuing applications, Clarke merely did a more thorough job of what was attempted in the QWII. As stated in footnote 29 of Lemley and Clarke: "The 85% number provided in the revised Quillen et al. study is based on actual data about the applications that ISSUE based on continuations," [emphasis added], QWII made their correction based on data on ISSUED applications, not on ALLOWED applications. If the use of data on ISSUED applications means an assumption that every allowed continuation resulted in a patent, then it is an assumption made by both Quillen/Webster and Clarke. Because it is assumed by both, this assumption is not a basis to select the results of Quillen/Webster over those of Clarke.

**Returning to the Kodak/Sun dispute-->
from Maureen O'Gara (

-->The anti-patent folks had hoped to use Corba and OLE to trump the Kodak patents, but Wang's work pre-dates either and Microsoft's license would have undercut the ploy.

Ironically, Sun has just announced the general availability of Java 2 Standard Edition 5.0, spun as the most significant Java upgrade in nearly a decade. J2SE is the foundation platform for delivering Java on the desktop, where it has not been brilliant.

The new rev is supposed to make development easier and the JVM and Java apps more manageable. There's a new GUI for Java apps and there are performance improvements.

Sun claims a half-million downloads of the betas of the J2SE 5.0 Java Runtime Environment (JRE) and SDK. It claims 150 million J2SE downloads since 1998. Acer, Apple, Dell, Gateway, HP, Fujitsu-Siemens, Samsung, Tsinghua Tongfang and Toshiba factory install the stuff.<--

UPDATE. from zdnetnews,39020645,39170222,00.htm

Hartmut Pilch, of FFII & Eurolinux Alliance, leapt to our defence in a long, careful statement: "Sun Corporate Communications" called the ZDNet article irresponsible on several accounts. Unfortunately the portrait is very accurate, at least as far as Sun's "stance on intellectual property" is concerned, as "Sun Corporate Communication" shows by its own words a few lines later: "Sun believes firmly in the need to provide strong intellectual property protections, such as software patents, in order to assure that both individuals and companies will be rewarded for creativity and invention.

Sun's statements make no sense at all. Copyright and other mechanisms already assure a sufficient reward for creativity, and patents contribute very little to economic growth in most technical fields, as anybody will know who cares to read up on the economic literature.

All software patents that I have seen are "junk patents". [TO Hartmut: where were you and all the experts when Amazon's double-click patent survived a validity challenge in court? Barnes & Noble's expert said double-click wasn't obvious to him.] The patent system tends to turn honorable non-trivial work into disgracefully broad patent claims, and the only practical solution to this that I know of is to change the caselaw that imposed these patents on the software industry (against its will, as the hearings of 1994 showed, where Sun was one of very few companies who, yes, betrayed the industry). [TO Hartmut: "software" patents existed long before the State Street case. It's the statute, not the caselaw.]

We do not need to abolish the entire patent system. We are just talking of pushing it out of the software field. If a system doesn't work, you don't release it. Fix the bugs first, then release the code. That's the sense of responsibility that I'd expect of a company like Sun. It's the basic ethics of this field. Unfortunately, Sun betrayed this basic ethic because they have a large hardware business and, based on that, a strong tradition of patenting."

Others felt we were way too harsh on Sun, and that Kodak should bear more responsibility.

One anonymous UK techie wrote: "Enough with the Sun Bashing please...Why don't you bash Kodak? They're the legal-process-abusing extortionists. Why don't you support Sun? They're the good guys and I can empathize with their situation. They were ruled against by a screwed-up jury that's clueless to technical facts and most probably biased towards, Kodak, the largest employer in their area, Rochester." [Merely fyi: the University of Rochester COX-2 patent was litigated in Rochester and the University of Rochester lost on summary judgment.]

Mike Schwager, a systems administrator in Chicago, also thinks Kodak - and American patent law - is the real villain, and writes: "Put the blame where it belongs: On bogus patents, on a bogus system. Given the rules of the game, a company must play or die. It's the game itself that's broken, not the player. Europe, you've been warned! Do not follow in the footsteps of your hapless friends across the Atlantic! Reject software patents!"

And so does Rob from Yorkshire: "KODAK has betrayed us all, not Sun. I'll never buy Kodak again, and I encourage everyone else to do the same - and email Kodak to tell them this!"

For Dave Hall, a UK IT consultant, Sun and Kodak are not alone. He writes: "Unfortunately, Sun's actions are indicative of the industry as a whole, and is not a single perpetrator in this matter.

What is clearly being lost in the translation here is fair use - it's about corporations lifting their leg and marking out their turf. It's not about a set of ideals; nor is it about anything other than greed.

I suppose those who bash Sun will say Kodak was correct to accept the settlement, just as those who blast Kodak will tell us Sun can do what they like with their money.

Licensing is becoming more expensive, but short-sightedness has contributed towards this. Sun's Java-PC is a prime example: pay for the hardware, then 'rent' the software out. All this is, pure and simple, is criminal."

Vaino Vaher, a consultant in Sweden, takes an even more jaundiced view. "Yet another competitive advantage for the rest of the world. We will surely work hard to keep your lawyers out of our courts. We will not allow our IT industry to be ruined by phoney patents. Oh. And I just came up with something that I will patent in the US: A gas mixture of approx 79% nitrogen and 21% oxygene. Purpose: vitalizing and enhancing performance in mammals. I think I will call it "Air". Pay up or die." <--

UPDATE from zdnet:

Sun Microsystems has called for reform of the US patent system, with its president and chief operating officer saying authorities are too free to issue patents, some of which were "spurious" and being used to stifle innovation.
Jonathan Schwartz told ZDNet Australia in an interview during a brief visit to Australia this week that while intellectual property constituted "the foundation of global economies", there was also a limit.

"My view on the patent system in the United States is that we are too free to issue patents, so someone can patent one-click shopping, which to me is ridiculous," he said. "That's like patenting scroll-bars".

Schwartz said companies' garnering of "spurious patents" and subsequent wielding of them against innovators threatened the future of smaller companies' abilities to invest in intellectual property. He stressed, however, that such assaults did not really impact on larger players like Sun. "There's nothing in the Kodak suit that is going to threaten our long-run R&D roadmap," he said.

Sun would, he said, continue to build a "good defensive software patent portfolio" to mitigate the threat posed by those with malicious intent. "We'll stop issuing software patents on the day that spurious litigators cease suing us," Schwartz said.

Sun has been in the news lately over patent applications, with Schwartz having filed applications for the company's per-employee software pricing plan and two in relation to the company's three-dimensional Looking Glass user interface. However, Schwartz this week stressed that Sun itself had never issued "offensive patent litigation".

"That's not what we do for a living," he said.

"We choose to use innovation as a competitive weapon, not litigation. And when will we use litigation? When the breach is so severe and so fundamental and so in all likelihood echoed by a government that we choose to step into the fray. So when a contract is breached, you bet we'll get involved in litigation. Thus, what happened with Java. When anticompetitive actions take place in the marketplace, you bet we will be a part of that discussion".

Schwartz said he did not believe that SCO's litigation against had had an impact on the evolution of the open source community: "To me, that's not the path we're going to use to grow a brighter future".


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