Friday, February 24, 2012

Judge may postpone Oracle-Google trial in light of patent reexaminations

Yesterday I wrote that the patent part of Oracle's patent and copyright infringement case against Google appears to have reached a tipping point with the USPTO's preliminary rejection of all of the asserted claims of the "James Gosling patent". As long as the USPTO hadn't spoken out on the Gosling patent, I thought Oracle might still be able to win the patent part of this case. But that patent is now apparently going down the tubes. A preliminary rejection need not be ultimately confirmed, but so far Oracle hasn't been able to salvage even one asserted patent claim that was deemed invalid on a preliminary basis. The WHDA Reexamination Alert blog has also taken note of this fact.

Judge William Alsup has just entered an order that says the following:

"Based on the recently filed joint statement regarding reexaminations, the parties are requested to do the following. By NOON ON MARCH 9, the parties shall submit a candid discussion of the impact these rejections will have on the shape of trial. Please discuss whether in light of the track record of final rejections, it is best to delay the trial to allow the single remaining non-final reexamination to run its course."

Once again, there's a cloud of uncertainty over the trial date. Originally, the case was scheduled to go to trial on Halloween. It then turned out that it would slip into this year, and temporarily it looked like it might even slip into 2013. Then, most recently, the judge thought that, all going according to plan, trial might start in mid-April. As recently as Thursday, the judge reminded both parties' lawyers to keep themselves available for trial anytime between April 16 and late June.

At the time that the mid-April date was first presented as a possibility, Judge Alsup rejected a then-surprising proposal by Oracle to stay the patent part of the case, or dismiss it without prejudice (allowing Oracle to reassert those patent claims in a new litigation). The judge wanted this case to be resolved for good, rather than keep parts of it on the back burner or see parts of it resurface in a subsequent lawsuit.

There are various ways in which Oracle could respond to today's order. It could reiterate once more, as it did on several previous occasions including this one, that Google is basically hijacking Java with Android and that Oracle needs help from the court to "bring Android back into the Java fold". The judge does appear to understand this problem, but he's very concerned about managing the court's resources wisely. Alternatively, Oracle could withdraw all of its patent claims with prejudice, depriving itself of the opportunity to ever assert them again against Google in connection with Android.

As far as this particular case is concerned, I'm now convinced that the best decision Oracle could make would be to focus entirely on the copyright part of the case. If it wins on that basis, it may achieve all of its strategic objectives. If it doesn't, it can think about trying again with another set of patents, if some of Oracle's hundreds (or even thousands) of Java-related patents read on Android.

For Oracle, it must be very disappointing that the seven patents it selected in August 2010 haven't proven strong enough to enable it to solve the Android/Java problem. Since there is no such thing as a sui generis right protecting programming languages and virtual machine APIs, Oracle has the burden of proof that Google infringes valid intellectual property rights. Google's intention to take the risk of infringement of any such rights is well-documented, but the rule of law requires evidence of an actual infringement of valid rights, not just evidence of a reckless intent.

The way Google has hijacked Java with Android is the most pressing problem for Oracle's Java business, but if it can't successfully enforce its rights against Google, it will also have a hard time asserting its control over Java vis-à-vis any other companies in the industry. Obviously, Java implementations that are fully compatible may infringe on some intellectual property that Dalvik (Android's virtual machine) doesn't because it indirectly uses Java as an input programming language but has a rather different architecture. The problem for Oracle is that if the Android denomination of Java appears to be unprotected, those who don't want to take a license from Oracle will presumably use that one in the future.

This is the first high-profile case since Oracle's acquisition of Sun in which the question of who owns (key parts of) Java is on the agenda, and at least as far as those seven originally-asserted patents are concerned, it appears that patents don't give Oracle legal leverage to enforce its rights even against a totally intentionalinfringer. Again, Oracle may still be able to win everything on the basis of copyright law -- but the judge appears hesitant to let this case go to trial as long as the validity of the asserted patents is doubtful. He probably thinks that the USPTO should get some more time to make a final (though still appealable) decision on the Gosling patent.

I don't want to read too much into today's order, but this could be a message to Oracle that the only path to a speedy copyright trial is the dismissal, with prejudice, of its patent infringement claims.

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