Fortinet, Trend Micro security patent skirmish heats up

Fortinet has filed a petition with the U.S. Patent and Trademark Office to re-examine a security patent held by Trend Micro.

The Trend Micro patent in question, 5,623,600, covers virus detection and removal processes. The patent has led to a few skirmishes in the security industry, notably a battle between Trend Micro and Barracuda Networks. Fortinet says its petition identifies prior art that makes Trend Micro’s patent invalid.

Fortinet has tussled with Trend Micro before. Trend Micro sued Fortinet in 2004 and the two companies settled a patent dispute in 2006. The legal peace didn’t last long. Fortinet sued Trend Micro again—following a 2008 and 2009 duel—in January because Fortinet considered the patent it licensed in 2006 to be invalid. Fortinet also alleged that Trend Micro threatened its customers.

The current legal battle was set up when Barracuda won an International Trade Commission prebrief in 2008 opining that Trend Micro’s patent was invalid based on prior art. Barracuda and Trend Micro later settled a patent dispute.

Fortinet’s argument in its most recent court documents is that it shouldn’t have to pay on-going royalties to Trend Micro for a patent that is invalid. Fortinet also argued that Trend Micro threatened to sue and harm the company’s customers. In response to Fortinet’s January complaint Trend Micro asked that the judge dismiss (PDF):

Fortinet has failed to allege an actual legal threat to Fortinet, or an actual threat against Fortinet’s partners or customers that could plausibly result in a legal claim…

Now the two parties are arguing over everything from jurisdiction to the actual patent. And the back-and-forth banter is likely to get worse.

After all, Fortinet didn’t mince any words in a blog post:

The ‘600 patent is the basis for much of Trend Micro’s marketing hype claiming that innovation is at its core. Trend Micro has claimed that its patent is valid and reads on network antivirus functionality, which would include open source antivirus software.

But Trend Micro’s arguments vanish when held up to a mirror — as industry experts know, Trend Micro did not invent network antivirus functionality. In fact, in response to Barracuda’s calls for help, the open source community responded by, among other things, identifying a good deal of invalidating prior art — antivirus functionality invented well in advance of Trend Micro’s purported invention. Thanks to the help of the open source community, patent experts at the International Trade Commission (ITC) issued a pre-trial opinion that Trend Micro’s patent was invalid. Unfortunately, this ruling was only beneficial to Barracuda, who settled the case before it could benefit the wider security community. Trend Micro, faced with patent uncertainty after the ITC decision, quickly settled with Barracuda.

Fortinet is working to finish the job that the open source community and Barracuda started, which is to drive a wooden stake through the heart of Trend Micro’s invalid patent once and for all.