Friday, July 8, 2011

Oracle fights to keep its Java patent claims alive

Yesterday's big news concerning Oracle v. Google was this article, which cites Deutsche Bank analyst Jonathan Goldberg as the source for Oracle approaching Android device makers, demanding royalties between $15 and $20 per unit under an "early adopters program". So far Oracle is suing only Google. But I have previously written on more than one occasion that Oracle could also assert its rights against Android device makers. This would also enable Oracle to ask the ITC for import bans on allegedly infringing products. I don't know whether it's true that Oracle has approached device makers, but for the reasons I stated, it would make sense, and the amounts they demand don't surprise me, to be honest.

However, in order to prevail in court, Oracle needs to show that valid patent claims are infringed by Android. Google obviously tries to have those claims invalidated. The seven Java-related patents Oracle asserts are being reexamined by the U.S. Patent and Trademark Office at Google's request, and in five of those reexaminations, "first Office actions" have been issued. Those are relevant but preliminary, as I explained in my analysis of the first four Office actions. I also reported on the fifth such action, which rejected (just to be clear: on a preliminary basis) an entire patent.

Today a very interesting document showed up in the public record: earlier this week, Oracle filed its response to one of the first Office actions -- the one relating to U.S. Patent No. 7,426,720.

I have uploaded the relevant first Office action and Oracle's 42-page response to Scribd. Let there be no doubt: Oracle is fighting very hard to keep all of the asserted claims of that patents alive. It's a given that this will also occur with respect to the other patents that are under pressure due to reexamination.

Extraordinary importance of the '720 patent

The '720 patent is strategically very important. I can't say with certainty that it's the single most important one in the entire dispute, but it may very well be due to its remaining term of validity.

The '720 patent is by far the "youngest" one of the seven patents asserted by Oracle. It will be valid until 2025 while the other six patents will expire during or before 2018.

This is important whether or not Oracle is granted injunctive relief in this case. But the way in which it's relevant depends on whether there's an injunction:

  • If the court grants an injunction (which I believe will happen if Oracle proves an infringement of valid claims), the injunction will be in force until 2025 if it's based on the infringement of at least one valid claim of the '720 patent, but will be in force "only" until 2018 if the '720 patent isn't part of the reason. Since Oracle also asserts copyrights, the maximum term of the injunction could be even longer, but Google can most probably work around the copyright issues, while working around patents is much harder (due to their breadth).

  • If there is an infringement but the court finds that an injunction is too much hardship, the involvement of the '720 patent can make an important difference for the amount of damages awarded to Oracle. In this recent post on the dispute over damages, I quoted a passage from a Google filing that raised the issue of the different terms of maximum validity of the patents-in-suit.

Oracle claims the relevant invention was copied by Google

As an additional argument (though probably secondary in connection with this reexamination), Oracle tells the patent office that "The Claimed Invention Was Copied by Google" and provides a "copy chart" as well as several links to official Android-related documents that, in Oracle's opinion, "describe Android software that has the functionality of the '720 Patent, further evidencing copying of the claimed invention."

You can find that accusation on page 41 of Oracle's response to the USPTO.

Oracle's arguments in favor of patentability

For a variety of reasons, Oracle "requests reconsideration and withdrawal of the rejections in the Action and confirmation of the patentability of claims 1-8, 10-17 and 19-22 of the '720 Patent".

Oracle has to convince the examiner that his reasoning for those preliminary rejections was wrong. For most of the "rejected" claims, the examiner determined that they were anticipated by prior art or, alternatively, obvious in light of prior art. Naturally, Oracle now wants to show that the invention claimed in the '720 patent was more distinct from what others had previously done or anticipated than the examiner thought.

One argument patent attorneys almost always make in this context as well as in political debates over whether software patents are generally a good idea is that they tell those contesting the validity or criticizing the quality of a patent: "It's easy to consider something easy with the benefit of hindsight, but it was truly inventive and innovative at the time the patent application was filed." Indeed, Oracle's response to the USPTO also contains a number of references to "impermissible hindsight".

Oracle's response is, as I said above, 42 pages long. If you want to focus on the most important part, read pages 7 and 8. Here are a few quotes from those pages just to show you what Oracle's argument for its patent claims looks like:

"The art of the present reexamination does not compel a different conclusion [than patentability]. None of the cited references teaches or suggests the claimed combination of elements. First, the Office cited Dike and Steinberg as disclosing the claimed combination. [...] Dike and Steinberg, however, disclose the operation of Linux processes, including user mode Linux kernels, which have no relationship to, nor disclose in any way, [certain technical steps taken by the claimed invention].


Third, even if assuming an asserted combination in the [first Office action] meets all the recited elements, the combination is based on impermissible hindsight."

As you can see, those reexamination processes raise a number of difficult questions. Other patent claims asserted in high-profile lawsuits were also rejected on a preliminary basis but ultimately survived. Those processes take time.

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