Tuesday, July 5, 2011

Google says at least one of Oracle's patents-in-suit is not even used in Java

Today Google filed its reply to Oracle's opposition to its Daubert motion (a request by Google to exclude Oracle's damages expert Prof. Cockburn and his damages report).

The disagreement over damages calculation methodologies goes on. Google still insists that Oracle's damages report claims damages between 1.4 and 6.1 billion dollars, while Oracle itself says the amount is 2.6 billion dollars. The court has meanwhile initiated the process for selecting court-appointed experts in accordance with Federal Rule of Evidence No. 706:

"Due to the large damages at issue, the Court tentatively plans to use the selected expert to testify before the jury at trial under FRE 706 and not as a confidential advisor to the judge."

But the most interesting part of today's pleading is not the damages part per se. It's Google's much-emphasized claim that the asserted intellectual property rights don't correspond to Java, at least not to Java as a whole or even to Java ME (Micro Edition, basically the Java version for mobile devices) as a whole. For instance, Google says this:

"Cockburn's most fundamental error, which Oracle's brief repeats, is conflating the seven narrow patents and the copyrights at issue in this case with 'Java' -- a nebulous concept that includes, among other things, a trademarked marketing brand, an open-source programming language, and an operating platform for desktop computers, servers, and mobile devices. But the Oracle intellectual property at issue is not 'Java'."

In this context, Google describes different scopes of the term Java as "a series of concentric circles":

"The outermost circle is the entire Java platform, including all its various forks - e.g., JavaSE, JavaEE, JavaME, and JavaCard. The second circle, contained within the first one, is the fork of Java at issue here--JavaME, which runs on mobile devices like smartphones. The third circle, contained within JavaME, is the particular application of the Java Virtual Machine that runs on JavaME. But the relevant level for purposes of this case (and Cockburn's analysis) is a fourth circle, containing only those aspects of JVM covered by the patents and copyrights at issue. This intellectual property is vastly smaller in scope than 'Java'."

And in connection with the role those patents play for Java, Google claims the following:

"Recent deposition testimony establishes that Oracle fails to practice at least one of those patents [...] and that Oracle has admitted in its discovery responses that it does not mark its products with the patents, casting doubt on whether it practices any of them."

A patent is enforceable even if one doesn't practice it. If this were an ITC investigation, the question of whether the invention is actually practiced would be more important (though an alternative way to satisfy the ITC's domestic industry requirement is to demonstrate a licensing business meeting certain criteria, such as litigation expenses). In federal court, the question of whether a patent is practiced by its owner could play a role in connection with an injunction (though it's not impossible even for non-practicing entities to obtain injunctions as I explained last year). But here we're talking about a federal court case and the specific context of damages. In that respect, whether or not an invention is practiced is only of indirect relevance: Google wants to underscore that it's not infringing "Java". But Google's averment that there's at least one patent that Oracle is asserting against Google without even practicing it itself is an interesting anecdote for all observers of this process.

The patent at issue in this regard is U.S. Patent No. 6,910,205. I have not yet seen a first Office action (related to reexamination) on that one, though there have already been first Office actions concerning five other patents-in-suit.

Based on what Google has filed with the court, I'm not 100% convinced that Google's claim of this patent not being practiced is right. For example, Google filed excerpts of a transcript of a deposition, but the witness wasn't 100% affirmative in his replies, and Google has not filed the questions by Oracle's counsel Michael Jacobs and the witness's answers to those.

The witness is Robert Griesemerm, a former Sun employee and co-inventor of that '205 patent who appears to be working for Google now. According to Wikipedia, he started the design of the Go programming language at Google in 2007. (I don't mean to say that this makes him unreliable as a witness.)

These are the two final questions Google's lawyer asked him, and Robert Griesemer's answers:

Q Okay.
To the best of your knowledge, Mr. Griesemer, during the time you were at Sun, did any virtual machine offered by Sun or commercialized by Sun in any way to any third party include use of the snippet technique that is described in your '205 patent?

A Again, I don't know when exactly it was removed, but to the best of my knowledge, no.

Q Okay.
Well, whenever the removal was, if the removal did occur at Sun, since the time it was removed, to the best of your knowledge, did any commercial product of Sun include the snippet technique?

A I do believe no.

In the further process we may hear again about the patent and whether or not it was ever practiced by Oracle/Sun in a commercial product. It's certainly interesting, but again, Oracle can enforce a patent even without practicing it.

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