Re: Be careful - Sun Microsystems asks for prior art for '646

[Ernest Hua <[e-mail]>]

Hmm ... a good point (from Greg below) ... anyone care to comment?

Ern

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Date: Thu, 19 Sep 1996 15:50:04 -0400
From: [e-mail] (Gregory Aharonian)
To: [e-mail]
Subject: PATNEWS: Be careful - Sun Microsystems asks for prior art for '646

!19960919  Be careful - Sun Microsystems asks for prior art for '646

    A short while ago I sent out a news item reporting that some people
in the encryption community were accusing Sun of doing a Dell - that is, 
applying for patents on technology discussed/developed by a standards
committee.  Sun is denying that it did so, to the extent that they posted
the following message on some of the Internet discussion groups:

                              ====================

    There have been recent Internet discussions relating to U.S. Patent
    No. 5,548,646 (the '646 patent) assigned to Sun Microsystems, Inc.
    ("Sun").  In particular, there have been suggestions that there is 
    prior art that would bring into question the validity of the claims
    of the '646 patent.
    
    Sun strongly believes in obtaining and maintaining only those patent
    rights that are proper in light of any prior art that may exist.  
    Sun does not have any interest in enforcing any patent claims having
    a scope beyond that to which it is properly and legally entitled.
    
    In keeping with this approach, if anyone is aware of prior art relevant
    to the '646 patent, please send information about the prior art to Sun
    in care of:
    
    Sun Patent Department
    2550 Garcia Avenue, MS-UPAL01-521
    Mountain View, CA 94043-1100  
    
    If any prior art turns up that is more relevant than the art that was
    before the Patent Office during prosecution of the '646 patent, Sun will
    take the appropriate steps to bring that art before the Patent Office so
    that the Patent Office can reconsider the claims of the '646 patent in
    light of the new art.
    
    The Patent Office considered two patent documents during prosecution
    of the '646 patent: U.S. Patent No.  5,416,842 and U.S. Patent No.
    5,204,961. Sun suggests that those interested in this issue should
    first obtain and review both the '842 patent and the '961 patent before
    submitting additional art to Sun. 
    
    Sincerely,
    Sun Microsystems, Inc.

                              ====================

This is a nice publicity stunt by Sun, and I say stunt, because Sun is not
as serious about prior art as it states in this message, ".... in light of
any prior art that exists".  It is as serious as most others in the industry,
which is to say, not that serious.  Indeed the tone of the above request
reflects the typical attitude that prior art means patent prior art.

In my database of software patents, I pulled out about 25 software patents
awarded to Sun in the 1995/1996 time period.  On the average, each patent
cited on the front page 3 non-patent prior art items, half of which cited
0 or 1 non-patent prior art items (for example, 5,379,426 - "Method and
apparatus for object oriented interprocess message switching").  This record
doesn't reflect a real serious commitment by a company with a lot of money
to find much of the relevant prior art.  Maybe Sun doesn't know that Stanford
University has libraries.

Sun's request is also disingenous for another reason.  The Sun lawyers know
that no potential infringer trusts the current third party reexamination
system, where only the PTO examiner and Sun lawyers would be present to 
discuss the newly revealed prior art.  It is the same reason few heeded the
PTO's call to submit prior art for the Compton's patent - they wanted to 
save the good stuff for any future court action where they could participate.
So if in fact you have any good killer prior art, you might want to consider
saving it for any future court actions, where you control how it is used,
not Sun's lawyers.  Know that you have no say in the discussions between
the PTO and Sun during the reexamination - know that Sun's lawyers know this.

Greg Aharonian
Internet Patent News Service



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