There is an old proverb that we like around Sun that says that “a rising tide lifts all boats”. In the IT industry the “rising tide” is the accelerated adoption of FOSS around the world. As open models begin to displace proprietary, opportunities increase for all members of the open source community – including Sun. So, it’s in our interest to ensure that the market for FOSS continues to grow. We support this growth, in a variety of ways. Some are very visible and others less so. A recent example of the latter involves a patent litigation – not against Sun, but a competitor.

In 2006, Red Hat was sued by Firestar Software, Inc. in the Eastern District Federal Court in Texas. Firestar alleged that Red Hat’s then recently acquired JBoss technology infringed one of it’s patents. Most often these events are viewed (sometimes happily) as a competitor’s issue to deal with. In this case, however, we considered Red Hat both a competitor and a brother-in-arms. And, given the breadth of the Firestar patent and the likelihood that it would be asserted against others in the community, we decided to invest the time and resources in a prior art search.

We also let our friends at Red Hat know early in the litigation of our activities, that we had filed a request with the PTO for reexamination of the patent, and shared copies of the prior art for Red Hat to possibly use it in its defense.

These things take time, but last week, we received a response from the PTO in the form of an office action rejecting all of the claims in the patent based on the prior art submitted by Sun. Obviously, we are delighted to get this validation from the PTO. Firestar has two months to overcome this rejection, but given what we presented to the PTO, we believe it will be a challenge for them.

Unfortunately, the PTO’s response comes a little over two weeks after Red Hat entered into a settlement with Firestar. Although the recent U.S. Supreme Court decision in Quanta Computers v. LG Electronics protects downstream Red Hat licensees through the application of the doctrine of patent exhaustion it doesn’t insulate others in the open source community from future actions by Firestar. It’s our hope that the rejection of the patent through the reexamination process will become final in August eliminating this threat for all members of the open source world.

As I said, “a rising tide…”


Filed under Personal

9 responses to “Firestar

  1. Well done Sun !
    In the community we have to congratulate good actions more, than criticizing ill-received ones. Let me be the first to put this in practice here ๐Ÿ™‚

  2. Kevin Hutchinson

    I hope this gets slash-dotted. I do wish those GPL zealots would give Sun more credit for its ethical FOSS position in the world of computing. Congratulations on nailing the Firestar patent with prior art.

  3. Andreas Kremser

    Great News. Kill all the patent trolls and finally all patents for they do not have any useful effect on the market or research.
    Not just a rising tide but a rising sun! you rock!

  4. Wonderful job Mike and the legal team at Sun.
    P.S. If only had Red Hat waited a little longer, they could have benefited without settling.

  5. W. Wayne Liauh

    Congrats! You are really doing a great job, including, among many other things, being able to move the case from East Texas, which, as everyone knows, is notorious for not willing to grant any stay, to Northern California.
    BTW, any thoughts about the possibility of evangelizing for law offices? Lawyers would love to have the PDF/ODF hybrid format, which will be available in OOo 3 and StarOffice 9. Also–I am really being a bit carried away–the ZFS (default root file system for OpenSolaris) will also be a godsend for solos and small firms. ๐Ÿ™‚
    Thanks again for taking time to educate us about the new paradigm in tech law practice.

  6. Thierry AIME

    I don’t understand why you say that the RedHat’s settlement with FireStar don’t offer broad protection for the whole open source community under the patent exhaustion doctrine ? It’s what RedHat claims yet !

  7. As a former JBoss guy, thank you! The patent was ludicrous and is a demonstration of a patent system gone very wrong. Thanks for taking the time to make it right.
    Bob Bickel

  8. Denny

    Could you provide the document link for this reexam? Given the recently published PTO reexam statistics ( ), the first office action does not usually provide an accurate prediction for the reexam final result.

  9. Chris Mercer

    I was just wondering what happened with firestar patent rejection? Don’t know if people realize this or not, but firestar is still suing companies for their patent.

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