Let me try that answer again.

Last month, I was invited to speak to the USF Law School Intellectual Property and Cyberlaw Association. A nice group of students all with a shared interest in intellectual property law. I’m not a big fan of presentations, so I spent a few minutes talking about Sun and then opened it up for questions. And, there were many ranging from “how do you monetize products that you give away” to “what is the Peer to Patent project” to “what’s your job like”? It was a very fun session.

But as I drove back to the office, I reflected on one particular question and wished that I had handled it differently. It was asked by a 3L (third year law student graduating this year) who wanted to know whether I thought the current macro-economic conditions were going to impact employment opportunities for this year’s graduates. My response was that I’ve seen several of these downturns in my career and that they are cyclical. I also pointed out that the current economic conditions will likely impact every industry – except perhaps the energy sector. All in all, not a very comforting response on my part.

Here’s what I should have added.

Despite the present economic environment, I can’t think of a better area for future legal career opportunities than intellectual property law. Consider for a moment a few of the recent and more interesting IP cases like Viacom v. Google, Eros v. John Doe, Fair Housing Council of San Fernando Valley v. Roomates.com and A.V. v. iParadigms. Then realize that the technologies and business models underlying each dispute haven’t existed much longer than you have been in law school. The pace of innovation around us is accelerating – not declining. Each year the universities of the world graduate even more engineering and computer science students with the facility to manipulate 1s and 0s in inventive ways. Every day there are new businesses emerging based on the digital economy that will touch every aspect of our lives whether it be in health care, entertainment, politics or consumerism.

And, there’s something else to consider. What I have described here are U.S. examples. Current estimates are that only about 20% of the world’s population is connected to the internet. Without doubt, when the rest of the world is fully able to participate in the digital community, even more innovation will result.

So, Mr. 3L. Take a deep breath. Spend the next few months preparing for finals and the Bar Exam. And, take comfort in the fact that even during this short period the intellectual property landscape will have changed – creating opportunities that you haven’t imagined.

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For your use

Last fall, we released a revised version of the Sun Contributor Agreement. It’s part of our work to take a fresh look at all of our agreements. The feedback from the open source community has been very positive. So, now we’ve made it available under a Creative Commons attribution-share alike license for others to use with their open source projects

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The “C” word

I really dislike the word “compliance”. That may sound a bit odd given that compliance is a large part of my role as a General Counsel. But, to me it’s an oppressive word. Who wants to be told that they have to behave in a certain way? And, having to constantly remind employees of their obligations and of the importance of compliance – well, let’s just say it’s one of those incredibly important, but thankless jobs. So, you can imagine my excitement, when after a particularly exhausting week, I noticed that the last meeting on my Friday calendar was the filming of a Sun corporate compliance video. As I walked to the location, I thought of the 100 other things that I would prefer to be doing at that moment including my tax returns, giving my fidgety son a haircut and commuting in rush hour traffic.

When I arrived at the conference room, no one seemed to have any idea of what we were to talk about as the director of the video intended for it to be completely unstructured – his attempt at corporate “reality TV”. Just a few Sun executives discussing compliance while hand-held video cameras captured the conversation. For the next ten minutes, my fellow participants and I struggled to identify the points we thought we should cover. But, none of us were particularly excited. Finally, Jonathan asked a single question: “why is compliance important to Sun?”

It was the only question asked. And, well over an hour later, we finally stopped talking.

Our conversation was wide ranging and passionate with personal examples of why compliance is so significant to each of us. Despite my initial lack of enthusiasm, I came away from the session feeling energized by the fact that we all viewed compliance the same way. Not as something you do to avoid negative consequences (loss of employment, criminal penalties and fines). But, instead, because you want to behave in a way that reflects the values of your community. In our case it’s a global community of more than 30,000 people wearing one of these.

Anyway, below is the link for the final video. I had hoped to include just the uncut version and have you listen to the entire conversation. But being that it was more than an hour in length, I didn’t kid myself into thinking that I could hold your attention that long — you can thank me later. The people in the conference room with me are Jonathan, Cheryl Fackler Hug, our Chief Compliance (there’s that word) Officer and Bill MacGowan EVP of People and Places (the gentleman who sounds like Tom Waits). It also incorporates additional segments with other Sun executives and board members.

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Do any other GCs have this issue?

In the category of “things they don’t teach you in law school”.

This morning, our CEO stops by with an urgent request for legal support. Major litigation? Large strategic acquisition? Not quite. Instead, he asks me to review a blog he wants to post as an April Fool’s Day joke.

Like I’ve said, my job’s really different…

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My mid-life crisis

I’m reaching an age that has created a lucrative livelihood for many psychologists. According to them, it’s when men start to act a bit oddly and is characterized by extravagant purchases of automotive horsepower. Well, I finally succumbed to the stereotype, but I went out and bought one of these. I found it used on craigslist of all places. It’s in great shape and needs only a bit of work. But that’s the beauty of it. It needs some work.

When you live in the center of Silicon Valley and work for an innovative company like Sun, there aren’t too many opportunities to roll up your sleeves – technology pretty much does everything for us. The pace of technology advances in consumer goods has outstripped the ability of most of us non-engineers. Ever try to replace the battery in your iPod? So, it’s a bit refreshing that I can adjust the carburetor and brakes myself. Don’t get me wrong, I do appreciate and embrace innovation, but there is something immensely satisfying about tuning an engine on your own – even if it’s one that sounds like a circa 1930’s Russian tractor.

Oh, and the first nice day this spring, my carpool partner is in for a big surprise.

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Life is different in-house

I recently had a cup of coffee with an attorney who just joined our organization after spending a few years with a local law firm. We had a great conversation and covered a number of topics, but we kept coming back to comparing the differences between what it takes to be a successful lawyer in a law firm versus as part of an in-house legal department. As you might guess, the differences are vast, but it got me thinking about my first blog in which I referenced “The Reebok Rules”. Written by that company’s then GC, Jack Douglass, these rules provided guidance on how to be successful as an in-house attorney. Although they are still instructive fifteen years later, I think the playing field has changed. So here are my thoughts on today’s version of the rules. I’m interested in hearing whether these resonate with other in-house attorneys.

1. You are a business person. Your business is providing legal services to your company. Constantly focus on how to deliver high quality legal services in the most efficient manner possible. Learn from your clients. Electronic automation, outsourcing, wikis and dynamic bidding events are all examples of business tools and practices that are increasingly being used in the legal environment.

2. Learn the style of communication most effective for your client. The smartest attorney is not always the most valuable. You can be a brilliant technical lawyer and fail spectacularly if you don’t have the ability to transfer your knowledge and to influence your clients and colleagues. When you are in a law firm, because they are paying for your time, the client is usually motivated to listen. But when you are in-house counsel, the direct billing relationship is absent. This can make it a challenge for your advice to be heard. If your client is the CTO of a Web 2.0 start-up who uses only a smart phone, rendering your legal opinion in the form of a multi-page legal memorandum is not likely to be effective.

3. To be effective in-house, you need to collaborate and work as part of a team. Individuals don’t scale because we are each limited by the hours in a day – but a team can accomplish amazing things. Among the biggest trends in the world today are the rise of social networking, wikis and other network-enabled communities. Why? Because the power of shared knowledge and work is very compelling.

4. Always be the calmest person in the room. Too often attorneys inflame a stressful business situation, rather than providing calm and dispassionate counsel. In this regard, a quote from former U.S. President, Woodrow Wilson is one of my favorites: “One cool judgment is worth a thousand hasty counsels. The thing to be supplied is light, not heat.”

5. Use humor and humility. Let’s face it, our profession still has a reputation for being dull and arrogant. This creates barriers when you work in-house because many of your clients will start with this frame of reference when they first meet you. The use of humor and humility as tools to remove these obstacles can be very productive in creating a strong attorney-client relationship. So, don’t be afraid to show a sense of humor and don’t act as if you know every answer – instead, ask questions. You will know that you have achieved success when your client says: “You don’t act like an attorney”.

6. Believe or leave. In every company’s history there are low points. During those difficult periods, it is easy to get disillusioned and cynical. This negativity infects everyone you work with and will ultimately damage your reputation. If you aren’t passionate about your company and what you do, you will never be successful. And, note that I am not saying “agree” or leave. Every company has areas that need improvement. It takes passion to identify them and drive positive change.

7. A manager’s job is to provide direction and training and remove obstacles – that’s it. Too many managers (especially new ones) make the mistake of trying to manage every detail of an employee’s work. This is frequently the case with attorneys because, unlike our business partners, we rarely have formal management training. Also, many of us who previously worked in law firms mistakenly equate “management” with the micro-scrutiny our work received from law firm partners. (One of the interesting things we found with OpenWorks was that managing remote employees actually creates stronger more effective managers.)

8. Identify the legal services that provide unique value to your department – outsource everything else. In our legal organization, the majority of employees are transactional attorneys preparing and negotiating thousands of diverse and complex agreements around the world. Most of the dynamic information in this area (processes, technologies and business models) derives from within our company making it more valuable to rely on in-house expertise. That’s why the largest portion of our organization practices this type of work. On the other hand, in other areas, for example, corporate reporting where most of the changing knowledge is external (e.g. new SEC regulations), we have a relatively small team that leverages outside counsel for support.

9. Understand how you are adding value to your department – your department to your company – your company to the world. This requires an in-depth knowledge of your company’s business, competitors and markets. Sometimes this linkage is not as readily visible in the legal department as it may be in other company functions, but being able to articulate it is a great motivator and also useful in helping management understand your value proposition. Each year, I keep a informal list titled “Why you pay us”. It reflects the annual accomplishments of our organization. It’s a good device for helping me explain to others the value of the in-house legal team.

10. Sometimes, you do have to say “no”. Fifteen years ago, most successful in-house attorneys expressed that you never did so without providing an alternative. Today, however, lawyers are increasingly being held to a higher standard and viewed by the government as “corporate gatekeepers”. In this environment, there are occasions when there is only one response – “no”. Although your client may not be happy with the answer, if you have done your job effectively and established credibility, even this negative response will be valued and respected.

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The best offense…is a good defense.

I recently shared dinner with a few other GCs of local technology companies. It was a nice evening in which we were able to relax and share insights (and commiserate) about topics of common interest. During the course of our meal while we were discussing rising legal costs, one of my table mates made a statement that I found somewhat bothersome. He said that when faced with patent “troll” litigation, he knows he is going to pay something to get rid of the lawsuit and so he economizes on the use of defense counsel. After all, the thinking goes, if your intent is to settle a case, why spend money on a strong defense?

His view is completely contrary to how we think about this problem at Sun. It’s also symptomatic of the way many companies view this issue as a quarterly “cost of doing business” without considering the long term consequences of settlement both for individual companies and our industry.

Before going further, let me state that we respect the intellectual rights of third parties. When a third party claim has been clear and the terms reasonable, we have entered into licenses. However, those situations are easily distinguished from the cases that make up almost all of our present docket of patent litigation. These lawsuits have usually been filed with no advance notice, by plaintiffs that don’t commercialize their patents (i.e. create and sell products) and in venues considered favorable to them. It’s also almost always the case that these plaintiffs have done little or no investigation to ascertain whether our products infringe prior to filing their lawsuit.

Let me provide an example. Last year, I described a patent litigation brought against Sun by a company named Exponential Solutions LLC. I use the term “company” in the broadest sense as Exponential Solutions does not appear to make any products or offer any services. It is purely a patent holding company consisting of two individuals: Raymond Ratcliff (inventor) and Frank Benevento (investor and decision maker for Exponential).

Exponential filed its complaint against Sun in the Southern District of Florida. The case alleged that the Sun Grid service infringed two patents: 6,996,548 (“Method and apparatus for providing a reward for the use of a processor in a parallel processing environment”) and 7,127,437 (“Method and apparatus for receiving a reward for use of a processor in a parallel processing environment”). These patents describe the use of distributed computing and payment to people for use of their home computers connected to a network.

The first we were aware of this suit was after it had been filed. Several months later, we had our first real communication with Exponential when they proposed that Sun pay them an amount with many, many zeros or a large ongoing royalty on our products and services. We declined. While it would have been easy to make the safe decision and pay a license fee to avoid the cost of litigation, we chose to invest in defending ourselves. Invest not just in showing that we did not infringe – we were confident that we did not – but also in identifying prior art to demonstrate that these patents should be invalidated. Our investment yielded results.

Specifically, we found a great deal of prior art that appeared to anticipate Exponential’s patents including, a book co-edited by Exponential’s own technical expert. More interestingly, we found evidence that suggested another piece of prior art relating to the SETI@home project had been known by Exponential’s attorneys, but not produced to the U.S. Patent and Trademark Office when the application was made. In November 2007, the court allowed us to amend our complaint to include an inequitable conduct claim based on these facts.

We had further success when, in December 2007, the court entered a Markman ruling supporting Sun’s view that key claims in the patents should be construed narrowly. We were also successful in getting the Court to order Exponential’s expert to testify and produce documents that we believed would support our view that the patents were invalid. The court went even further and ordered that all communications between the expert and plaintiff’s attorneys be produced. Perhaps, it was the combination of these events that made Exponential begin to rethink the merits of its case.

As we headed for a February trial date, Exponential’s demands got smaller and smaller until, ultimately, they agreed to a dismissal with prejudice – meaning they can’t bring the case against Sun again,or against our customers, partners and vendors. And, Sun didn’t pay a dime in settlement. In fact, the biggest impediment to a final settlement was not our unwillingness to pay, but rather our demand that terms of the settlement NOT be confidential. Why? Because as much as companies would like to have our legislators solve this problem, we also need to consider what we can do. This includes not only investing in a defense when facing these types of plaintiffs, but also by openly sharing information about these cases.

I encourage other in-house legal departments to do the same.

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