Thursday, June 30, 2011

USPTO invalidates an entire Oracle Java patent-in-suit on a preliminary basis

At Google's request, the USPTO is reexamining all seven Java-related patents asserted against Android's Dalvik virtual machine. On Monday I reported on first Office actions that had been issued with respect to four of the seven patents. I stressed the fact that those are non-final Office actions (a fact that another blog covering this matter had misled many reporters about), and I gave examples of high-profile patents that took a similar beating at the same stage but were ultimately upheld.

My favorite blog on patent reexaminations, Scott Daniels' WHDA Reexamination Alert, just reported that the USPTO issued a first Office action concerning a fifth Oracle patent, rejecting on a preliminary basis all 24 claims of that patent (U.S. Patent No. 6,125,447 on "protection domains to provide security in a computer system").

This is the first patent-in-suit that has been rejected (on the aforementioned preliminary basis) in its entirety. But it's already the third event in which all claims of a given patent actually asserted by Oracle have been rejected. Oracle did not assert all 168 claims of the seven patents. Oracle made infringement contentions concerning 132 of them. In my analysis of the four first Office actions prior to this one, I explained which claims Oracle asserted and which ones of those were rejected (on a preliminary basis).

Oracle wanted to assert all 24 claims of the patent that has been rejected (on a preliminary basis) in the latest action. And Oracle now has to convince the examiner not to reject them (or at least not all of them) in a final Office action.

As Scott Daniels explains in the final paragraph of his post on the latest Office action, a stay of this case becomes more likely if the judge feels that the validity of those patents should be determined by the USPTO before a jury trial.

There are now two more Oracle patents-in-suit concerning which the USPTO hasn't issued first Office actions yet. At least one of those Office actions is likely to be issued soon. I will continue to follow these developments.

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