Barracuda launches reluctant legal offensive against Trend Micro

The already vicious lawsuit involving Barracuda Networks and Trend Micro that is currently in discovery in front of the American International Trade Commission (ITC) just turned nastier. Barracuda has filed its own patent infringement claim against Trend Micro, based upon three recently acquired patents. The suit is in response to Trend Micro’s allegation that its patent is being infringed by Barracuda shipping Clam Antivirus (ClamAV), the popular free software application, and appears designed to pressure Trend Micro to reach a negotiated settlement.

“It’s unfortunate that we have to spend time and energy and money doing this BS legal stuff when we could be spending that time and money and energy making the Internet a safer place,” says Dean Drako, Barracuda’s president and CEO. “It makes you sad.”

Ask for a reply, Trend Micro representative Michael Sweeny responded, “We have not seen nor studied this most recent suit filed against us by Barracuda, and have no comment on it” and emphasized that the first action in the dispute was Barracuda’s request for a declaratory judgment in March 2007.

The three patents involved in Barracuda’s law suit are U.S. Patent 7093287, which involves creating firewall rules based on downloaded content; 7093294 , which concerns the detection of Trojans and backdoors; and 7103913, which covers virus scanning.

All of these patents are at least as broad as 5623600, the US patent on gateway virus-scanning that is at the heart of Trend Micro’s case against Barracuda. The absurdity of replying to one overly broad claim with three others is not lost on Drako, who laughed and replied, “Really? I am all too familiar” when Linux.com pointed out the similarity.

“But we have no choice,” he added, becoming instantly more serious.

Drako is reluctant to discuss details, but the patents were purchased from IBM some time in the last six months — in other words, after Trend Micro filed against Barracuda. “I approached IBM asking for help in defense of the open source community, and they directed me to the individual who sells their patents,” Drako says.

Although he would not elaborate, the implication is apparently that IBM sold the patents to Barracuda as a way to help the community. However, Drako would not elaborate on what price or restrictions accompanied the sale, if any.

The three patents are not among the 500 that IBM pledged in 2005 not to enforce against the free and open source software (FOSS) community.

Defensive patents, pledges and portfolios

However, whether because of the terms of sale or his own inclinations, Drako states, “Our intent is to use our patent portfolio for defensive purposes. I’m pretty aligned with other folks in the industry who believe that patents should only be used for defensive purposes. I believe that Red Hat and Sun are in that camp as well. I didn’t want to do this, okay? But I have no choice because otherwise I’ve got a real problem with Trend Micro’s suit against me.”

Drako says that all revenue generated from Barracuda’s patents will be donated to the community — although not how or when.

In addition, Drako says that he is “considering” ways of reassuring the FOSS community that the patents will not be used against its project. Earlier in the case, he approached the Open Invention Network (OIN), an organization dedicated to creating a public portfolio patent. “Unfortunately,the OIN was unwilling to expand the breadth of its reach to include ClamAV, because it did not consider ClamAV part of Linux,” he says.

Instead, Drako is debating whether Barracuda should create its own public portfolio for FOSS or donate its patents to some already existing public portfolio designed for the same purpose. “I haven’t had time to go and investigate that, but we will be investigating that,” he promises.

The new case and larger strategy

Barracuda’s new claim comes as a surprise, given that a recent deposition before the ITC by Swedish developer and entrepreneur Goran Fransson included prior art that seemingly would invalidate Trend Micro’s patent. And, in fact, Drako says that “the case is proceeding pretty well from Barracuda’s point of view,” although at this point he says he is “not ready to talk about it yet.”

However, as a partial explanation of Barracuda’s strategies, Drako did point out that the process is slow and time-consuming. “It’s basically been discovery and discovery and discovery, going back and forth. The judge hasn’t even been involved yet,” he says.

Drako goes on to explain, “We’re doing this to defend the open source community and to defend ClamAV, but the patent system and the way it works in the United States is very expensive for the defense, and you have to have an offence if you’re going to have any hope of coming to a reasonable conclusion.”

Although Drako would not elaborate on how the countersuit fits into Barracuda’s legal strategy, he did make the general comment that “obviously, if we have a lawsuit against them and they have a lawsuit against us, it would be wise of both parties to come to the negotiating table and settle their dispute.”

“I’m thinking of a football analogy,” he concludes. “You can have the best defensive team on the field ever, but if you don’t have an offense, you’re not going to win the game. So we have to have an offense on the field. We’ve been forced to do this, even though we don’t really want to be in an offensive mode.”