Kodak wins Java lawsuit, It returns to court next week to seek $1.06 billion in damages from Sun

Rochester [NY] Democrat and Chronicle ^ | Oct 2, 2004 | Ben Rand

[Mike Fieschko]

Eastman Kodak Co. will return to U.S. District Court next week to seek $1 billion in damages from Sun Microsystems Inc. now that a federal jury has ruled in its favor in a dispute over the Java computer language.

The jury decided in Rochester on Friday that Sun infringed on technology belonging to Kodak when it developed and introduced Java more than a decade ago. The computer language is now used heavily by software developers, on the Internet and in computer schools.

Kodak praised the verdict and said it was part of an aggressive push to convert innovations — both homegrown and purchased — into real money. The company over the past several years has been issuing licenses, filing lawsuits, forming spinoff companies and finding other uses for its technologies.

"Kodak has and continues to make substantial technology investments to ensure high-quality products," said Kodak. "We are pleased that the court has validated Kodak's intellectual property rights protecting these valuable innovations."

Rochester's largest employer claimed during a three-week trial that portions of Java infringed on patents Kodak purchased from Wang Laboratories Inc. in late 1997.

The patents describe a method by which a program can "ask for help" from another application to carry out certain computer-oriented functions. That's generally similar to the way Java operates, according to Kodak and other experts.

Ironically, the verdict came a day after Sun introduced a new version of Java. The company and some analysts hailed it as one of the most significant upgrades since Java's introduction a decade ago.

Sun denied Kodak's patent infringement claims. The company argued in court that Java did not infringe on the Kodak patents, and even if it did, the patents were invalid.

The Silicon Valley giant on Friday said it would "put on a vigorous defense" in the next phase of the trial, in which the jury will hear testimony to help it determine how much Kodak should be paid. That phase begins sometime next week.

Kodak in pre-trial documents indicated it would ask for $1.06 billion in lump-sum royalties – a figure that represents half of Sun's operating profit from the sales of computer servers and storage equipment between January 1998 and June 2001. The argument: Java provides the engine for such computer equipment. Sun executives have publicly estimated that Java is a "key factor in 90 percent of Sun's sales," Kodak said.

The damages phase will likely be sharply litigated, according to a local patent lawyer. "Kodak will (probably) be urging for a broad royalty base and a reasonable royalty, and I'm sure Sun will argue that the use was small and the royalty base should be lower," said Thomas Fitzgerald, a patent lawyer for the past three decades.

He noted that the case is "a big deal" because patents covering software are a relatively recent phenomenon.

"In general, software patents are just coming into vogue," Fitzgerald said.

He said an appeal was likely.

The potential of a sizable verdict doesn't change Kodak's strategic challenges, a local investment professional said. Kodak must continue making progress on its plan to offset declining film sales with new businesses built around digital imaging.

"The money doesn't make you a better company," said Christopher Hayes, chief investment officer of Hayes-Fischer Capital Management Co. in Rochester. "You just hope that it doesn't make them think, 'OK, we can take a rest.' They still have their work cut out for them."

Still, Hayes said, the verdict helps extend an upbeat period for the company. Kodak has boosted profits in each of the last three quarters, is moving faster than expected in integrating acquired companies and has seen its stock price surge about 60 percent in the last 12 months.

"It's finally nice to see the ball rolling after everyone went through a sea of negatives," Hayes said.

[JustAnAmerican]

The phrase "You reap what you sow", comes to mind. Couldn't happen to a more deserving POS company.

[trek]

"You reap what you sow!"

Trial Lawyer version: You rape who you sue.

[Glenn]

This is so bogus. I'd like to know who the jurists were.

[js1138]

Kodak makes real products in addition to lawsuits. I have a generally dim view of software patents. I have seen so many ad hoc methods developed to solve specific problems that I doubt if any company really invents a completely new way of doing anything.

[Abcdefg]

Isn't .NET derivative of Java in concept? Could MS be in Kodak's sights, too?

[Smartaleck]

Liberals get it in the .........

Serves em right.

[Southack]

It's bogus. Patent law states that if you *improve* upon an older patent, that you have grounds for a new patent and that you aren't infringing on the old one. This is how new engines avoid the patents on older engines.

And what Wang did for its word processors in the 1980's is assuredly not in the technological ballpark for what Sun did with Java in 2000.

But what this does show is that we as a nation desperately need tort reform. Right now the situation is so bad that crooked attorneys can pick up 12 union goons for jurors in a rust belt state to give billion dollar jackpot justice awards regardless of what the law says.

We certainly don't need to be placing two attorneys into the White House, especially a trial lawyer like Edwards and a flip-flopper like Kerry.

The AWB Has Expired - Gun Owners Have Won Again For All Americans!

[Joe_October]

What's the deal with this? What is Kodak's patent that they claim is being infringed?

[Mitchell]

This is ridiculous. Look at the patents. As far as I can tell, Kodak claims to have a patent on object-oriented programming. The patents they own are from 1993; Smalltalk in 1980 is prior art.

Beyond that, the whole concept that one could patent a general abstract concept such as object-orientation is outrageous. One should be able to maintain the rights to your specific implementation of something (as under, for example, copyright law), but owning the rights to all possible implementations of a very general idea makes no sense and is bad public policy.

[axes_of_weezles]

Looks like Kodak is taking the SCO route to profitability.

" On May 23, 1995, John Gage, director of the Science Office for Sun Microsystems, and Marc Andreessen, cofounder and executive vice president at Netscape, stepped onto a stage and announced to the SunWorldTM audience that JavaTM technology was real, it was official, and it was going to be incorporated into Netscape NavigatorTM, the world's portal to the Internet. At that time, the entire Java technology team, not yet a division, numbered less than 30 people. It was the original members of this small group who created and nurtured a technology that would change the computing world. "

Google Java History.

http://java.sun.com/features/1998/05/birthday.html

http://java.sun.com/features/1998/05/birthday.html

I wonder if Kodak is supporting the trial lawyer team of 2 Johns.

[snowsislander]

Apparently, it is over three patents, 5,206,951, 5,421,012, and 5,226,161, all of which were originally from Wang Laboratories.

Here is the abstract for 5,206,951:

Integration of data between typed objects by mutual, direct invocation between object managers corresponding to object types

Abstract

An object based data processing system including an extensible set of object types and a corresponding set of "object managers" wherein each object manager is a program for operating with the data stored in a corresponding type of object. The object managers in general support at least a standard set of operations. Any program can effect performance of these standard operations on objects of any type by making an "invocation" request. In response to an invocation request, object management services (which are available to all object managers) identifies and invokes an object manager that is suitable for performing the requested operation on the specified type of data. A mechanism is provided for linking data from one object into another object. An object catalog includes both information about objects and about links between objects. Data interchange services are provided for communicating data between objects of different types, using a set of standard data interchange formats. A matchmaker facility permits two processes that are to cooperate in a data interchange operation identify each other and to identify data formats they have in common. A facility is provided for managing shared data "resources". Customized versions of resources can be created and co-exist with standard resources. A resource retrieval function determines whether a customized or a standard resource is to be returned in response to each request for a resource.

Here is the abstract for 5,421,012:

Multitasking computer system for integrating the operation of different application programs which manipulate data objects of different types

Abstract

An object based data processing system including an extensible set of object types and a corresponding set of "object managers" wherein each object manager is a program for operating with the data stored in a corresponding type of object. The object managers in general support at least a standard set of operations. Any program can effect performance of these standard operations on objects of any type by making an "invocation" request. In response to an invocation request, object management services (which are available to all object managers) identifies and invokes an object manager that is suitable for performing the requested operation on the specified type of data. A mechanism is provided for linking data from one object into another object. A object catalog includes both information about objects and about links between objects. Data interchange services are provided for communicating data between objects of different types, using a set of standard data interchange formats. A matchmaker facility permits two processes that are to cooperate in a data interchange operation identify each other and to identify data formats they have in common. A facility is provided for managing shared data "resources". Customized versions of resources can be created and co-exist with standard resources. A resource retrieval function determines whether a customized or a standard resource is to be returned in response to each request for a resource.

Here is the abstract for 5,226,161

Integration of data between typed data structures by mutual direct invocation between data managers corresponding to data types

Abstract

An object based data processing system including an extensible set of object types and a corresponding set of "object managers" wherein each object manager is a program for operating with the data stored in a corresponding type of object. The object managers in general support at least a standard set of operations. Any program can effect performance of these standard operations on objects of any type by making an "invocation" request. In response to an invocation request, object management services (which are available to all object managers) identifies and invokes an object manager that is suitable for performing the requested operation on the specified type of data. A mechanism is provided for linking data from one object into another object. A object catalog includes both information about objects and about links between objects. Data interchange services are provided for communicating data between objects of different types, using a set of standard data interchange formats. A matchmaker facility permits two processes that are to cooperate in a data interchange operation identify each other and to identify data formats they have in common. A facility is provided for managing shared data "resources". Customized versions of resources can be created and co-exist with standard resources. A resource retrieval function determines whether a customized or a standard resource is to be returned in response to each request for a resource.

In my opinion, I believe that the people at Wang should never have filed these patents. Not only is this based on a lot of ideas that were already published at the time (i.e., prior art), none of what is described here can even be termed "intellectual property", in the same way that I don't believe that one can term the Pythagorean relation or e^pi + 1 = 0 to be "intellectual property" to be bought and sold.

[Mitchell]

In my opinion, I believe that the people at Wang should never have filed these patents.

It's not so much that Wang shouldn't have applied for these 1993 patents, but that the Patent Office shouldn't have awarded them. Even within the current context of bogus software patents, I think prior art existed (Smalltalk, from 1980), plus the "invention" was obvious in 1993 to those in the field.

In addition, the whole concept that a patent can cover all possible implementations of a general abstract content is ridiculous on its face and is bad public policy. But it's not Wang's fault.

Where are the politicians on the issue of software patents? It involves technical matters, but it threatens to become a major drag on the economy.

[Arkinsaw]

Software patents are ridiculous and dangerous. Pretty soon you won't be able to write a program without infringing on some patent.

But of course that is the intent, to drive out all of the non-corporate software and put down rogue programmers who can't afford multi-million dollar legal fees. To lock up the market for the guys with the lawyers.

[Arkinsaw]

but owning the rights to all possible implementations of a very general idea makes no sense and is bad public policy.

Not if the intent of public policy is to drive everyone out of the market except those that can afford multi-million dollar legal teams. This will end up just raising the barrier of entry to the market and protecting those companies that are already there from new competition.

[Mitchell]

So why don't the Republicans include abolition (or even just reform) of software patents in their tort reform proposals?

It may only have appeal to the technical side of the population, but that support could provide the margin of victory in a close election. And it's the right thing to do.

[ExtremeUnction]

He said an appeal was likely.

Correct me if I'm wrong, but my recollection is (based on a civil suit my company lost, then won on appeal) is that when you lose, if the case is appealed, the losing company must still set aside the $$ award in an escrow fund? In other words, they must set the damage award funds aside now, and then pay out from that fund if they lose their appeals?

[sourcery]

Smalltalk in 1980 is prior art.

Yes it is. But it's from 1976.

Smalltalk still uses a virtual machine. Unlike Java, it uses what's called an "image," which is very much like a complete operating system. The current state of the image can be saved to disk--in the same way that a laptop can save the state of the entire system, so that when you restart, all the same applications are running, the same windows are open, and the same processes and threads pick right from where they left off.

Cincom's VisualWorks provides an "image" that descends directly from the original 1976 Smalltalk image. In a sense, this image is a computational process that has been running for the past 28 years.

[Mike Fieschko]

if the case is appealed, the losing company must still set aside the $$ award in an escrow fund?

Depends on the State's rules. Each State has their own.

If there is such a requirement, the appellant can still move the appellate court to allow the appeal without escrowing the moneys.

[Mitchell]

No doubt this is true. But it will also be a major drag on software development even in large corporations. (Sun is hardly the "little guy", after all.)

I think in part the whole concept of software patents sounded like a good idea at first to some people who didn't realize where it would lead, but there were unintended consequences that are now coming home to roost.