February 13, 2008
A decade old patent award continues to raise cries of foul. The controversial patent filed by Trend Micro in September 1995 involved using the File Transfer Protocol (FTP), Simple Mail Transfer Protocol (SMTP), a computer and an antivirus scanner in order to scan email at the gateway. The protocols, the hardware and the software involved all pre-date the patent application, causing some to liken it to a patent for biscuits when bread was already being baked.
FTP was first developed in the 1960s and largely formalized in the early seventies. SMTP followed a decade or so later, in August 1982. Also in the 70s, the first antivirus program was developed (Reeper) for the then widely used Tenex OS. (The first PC-based antivirus is believed to be the Polish-based mks_vir followed by Dr. Solomon's Anti-Virus Toolkit). So the method of transferring files was already established; the method for transferring mail was already established; virus scanning was already established; and, of course, computers had long been in existence.
Nonetheless, the US Patent and Trademark Office awarded the patent to Trend Micro in April 1997. Freshly armed, in May 1997, Trend Micro sued Symantec and McAfee - two of several vendors with already existing products based on FTP, STMP, virus scanners, and computers. As a humorous aside, Trend's press release announcing the lawsuit also mentioned that Trend was awarded the PC Magazine's Editor Choice Award - but failed to mention that Japan's Softbank owned 35% of Trend Micro at the time and Softbank's other acquisitions included Ziff-Davis Publishing, parent to PC Magazine.
In July 1997, Trend waged a lawsuit against Integralis, makes of the MimeSweeper gateway scanning solution released a few months prior to Trend's original patent application. According to Trend Micro, "Our main goal is having the products be prevented from being sold...Any ongoing sales from this point forward are infringing and should be stopped."
That tactic proved successful. Lacking the deep pockets afforded Trend via the Softbank influx of cash, many smaller companies pulled their products from the market rather than face hefty legal fees or pay expensive royalties for technology they had independently developed.
Though Softbank divested their portfolio of Trend in 2000, the patent wars continued. Appliance vendor Fortinet was eventually caught in the crosshairs, temporarily losing their rights to sell in the U.S. and forced to make technology changes in their gateway appliance in order to continue.
Today, Trend Micro's target is Barracuda Networks, a gateway appliance vendor using the open source ClamAV scanner. To fight that battle, Barracuda is hoping to resurrect the Integralis MimeSweeper defense by obtaining a copy of Mimesweeper v1.0 or other pre-existing technologies in an effort to show prior art.
Demonstrating prior art is not as straightforward as it may seem. If it were, the patent would have been denied simply for failing the obviousness test. However, according to Walter J. Blenko, Jr. of TMS.org, "a prior patent or a printed publication anywhere in the world will bar an applicant for patent in the United States if it appeared before the date of the applicant's invention."
If that's the case, Barracuda would do well to extend their search to include TenFour, a US company which provided a gateway solution "between any/all MS/MAIL, WP-OFFICE, CC:MAIL, SMTP, UUCP, (and) MCI-MAIL" and which handled "uuencode and MIME attachments (configurable per address or domain wildcard) and international characters." The TenFour product included the ability to "also virus scan attachments on the way through the gateway." The archive date of that post? July 25, 1995 - an already established product with published information predating the Trend Micro patent application.
Meantime, while the current lawsuit plays out in courts, frustrated users are calling for a boycott of Trend Micro products.
