In January 1998 Lucent completed its acquisition of Gigabit Ethernet vendor Prominet Corp. In August of that year, two months after Lucent sued Cisco for patent infringement, Prominet joined as a co-plaintiff in the case.
Cisco partisans say the Prominet suit shows how Lucent turns innocent, mild-mannered start-ups into lawsuit-happy firms. But Lucent partisans say the Prominet suit was simply a response to Cisco's charges that Prominet had infringed on Cisco patents.
Who's right? A trail of paper and e-mail correspondence obtained by Network World from court documents shows a budding relationship between Cisco and Prominet that went sour as Prominet headed into the enemy's camp - with patent and licensing issues at the core of the problem. The correspondence also reveals for the first time that Cisco considered purchasing Prominet before Lucent did.
In November 1996, Mary Gaffney, Cisco's business development manager for enterprise products, began asking Prominet Vice President Doug Ruby to license Cisco's Inter-Switch Link (ISL) technology, a key in developing virtual LANs. On Nov. 20, Ruby replied by e-mail to Gaffney: "It was a delight to hear from you today. I look forward to Prominet participating in the ISL licensing program with Cisco."
But no agreement had been signed by the time Prominet announced its initial products in April 1997, and Ruby began asserting that the ISL technology was in the public domain. On May 30, 1997, Gaffney wrote Ruby informing him that the U.S. Patent Office had granted preliminary patent approval to Cisco's ISL technology. As a result, Prominet's usage of ISL would be "a violation of U.S. patent law," she wrote.
Gaffney later declared in the Lucent/Cisco lawsuit that all her communications with Ruby were "amicable and nonthreatening." Lucent lawyers disagreed, saying that Gaffney was threatening to sue Prominet. As a result, the lawyers felt that Prominet had to join as a plaintiff to ask the court for a "declaratory judgment" against Cisco's ISL claim - a kind of pre-emptive strike. Cisco's ISL patent is now one of 24 at issue in the giant Lucent/Cisco lawsuit.
"It's very clear we could have resolved this with Prominet without resorting to litigation," says Daniel Scheinman, Cisco's vice president for legal and governmental affairs. Several analysts told Network World they expect Lucent to scour its other acquisitions - including ATM switching and IP remote-access giant Ascend Communications - for more possible intellectual property claims.
