Barracuda turns to open source users for patent research

Barracuda Networks CEO Dean Drako says his company won't license a virus scanning patent from Trend Micro, and he's going to users to help build Barracuda's case file of prior art—previous software products and documentation that could help invalidate the patent in court.

Barracuda is launching a new section of its web site, "Legal Defense of Free and Open Source Software", to document the patent case and the company's prior art research.

Barracuda's Spam Firewall filtering appliances contain the GPL-licensed ClamAV software, which placed second, after Kasperksy Anti-Virus, in a head-to-head "Fightclub" test against proprietary antivirus tools at 2007's LinuxWorld Conference and Expo. Trend Micro's products were not included in the test.

Trend's patent covers the use of a virus scanner to check files that pass through a network proxy. "There's a ton of prior art," Drako said in a phone interview. Barracuda lists 142 references, going back to an 1991 article from IBM entitled "Employment of Virus Detection Procedures at Domain Boundaries." Barracuda's legal documents also cite Norman Data Defense Systems, which offered a product called Norman Firewall. Norman Firewall, which Drako says Norman demonstrated at a 1995 trade show, offered virus scanning functionality similar to that described in Trend Micro's patent.

Attorney Mark Davis of McDermott, Will, and Emery, representing Trend Micro, first wrote to Drako in September 2006 to offer to license Trend's U.S. Patent 5,623,600, which has a filing date of September 26, 1995.

Although network security vendor Fortinet settled a patent infringement suit from Trend Micro in January 2006, Barracuda chose to fight the patent, filing a request for declaratory judgment with the U.S. District Court for the Northern District of California in March 2007.

"In the district court case, Barracuda itself has already indentified substantial prior art," says Barracuda attorney James Yoon, of Wilson Sonsini Goodrich and Rosati. However, Yoon says, "That case is stayed now." Trend Micro brought an action against Barracuda and another accused infringer, Panda Software International, before the US International Trade Commission (ITC) on November 20, 2007. "When someone is sued in an ITC case, the defendant or respondent to the patent has the right to have the district court case stayed subject to the ITC case," Yoon says.

Trend and Barracuda are in the discovery phase of the ITC case, but, Yoon says, "a scheduling order is not in place," leaving time for Barracuda to introduce additional prior art. Drako says he believes the ITC filing is an abuse of the US legal system, since, although ClamAV has non-US contributors, the free antivirus software is maintained by Maryland-based Sourcefire, Inc., and Barracuda downloads and compiles ClamAV in the USA. Other imported parts that Trend cites in its complaints are standard PC hardware, "staple" components not specific to virus filtering, Drako says.

Eben Moglen, professor of law and legal history at Columbia Law School and chairman of the Software Freedom Law Center, says that his organization and other concerned users can act as a "Business Improvement District rent-a-cop" to help protect companies that work with free and open source software from so-called "patent trolls."