After Oracle's '702 patent was brought back to life by the United States Patent and Trademark Office, emerging stronger than ever from the ex-parte reexamination proceedings, the parties had a genuine dispute over whether Oracle could still assert it at the upcoming patent trial, i.e., Phase Two of the overall Oracle v. Google trial.
On Wednesday afternoon local time, Judge Alsup denied Oracle's motion to clarify that it may still assert this patent (though Oracle would have been willing to drop claims from other patents in order to make room for claims from the '702 patent). For the ongoing trial, that's a victory for Google, and the judge deems the patent dismissed with prejudice (i.e., Oracle couldn't assert it against the same accused Google technologies in a new lawsuit), but there are two reasons for which Google still needs a license to this patent, a fact that will affect the terms of any potential agreement between the parties:
Oracle could appeal this dismissal with prejudice. I have no idea whether they will do so, but this patent is valid until 2017, so even if it took a couple of years for an appeals court to decide that it wasn't actually dismissed or that the judge should have used his discretion to allow its assertion in the interests of justice, then there could be a remand or a new lawsuit over this one. If Google loses any part of the current trial and appeals, there's no reason why Oracle couldn't also appeal any decisions it considered unfavorable.
Even if the dismissal with prejudice with respect to Google was not challenged (or was affirmed), Google needs a license that benefits the Android ecosystem at large. If Google didn't take a license, Oracle would still have the right to assert this patent against Android device makers. I again have no idea whether Oracle would do so. In July 2011, a news agency reported that an analyst claimed Oracle had approached handset makers -- a story that was never confirmed or corroborated ever since, so the analyst might have been completely wrong. But whether or not that happened in the past, under the law there's no reason why it couldn't happen in the future, absent an agreement between Oracle and Google.
The potential impact of the '702 patent is huge: the way I understand the technical scope of the patent, all Android applications would have to be repackaged. If -- hypothetically speaking -- the patent was enforced against any device maker, that company's devices would need their own special versions of all apps. They couldn't run Android apps the way they are packaged at this stage. Therefore, the enforcement of this patent against any device maker would require Google to take a license or make a significant change to Android and ask all developers to repackage their apps.
This is still totally hypothetical: if the patent was asserted against a device maker, one of the affirmative defenses would probably be that the dismissal with prejudice against Google should somehow also benefit third parties. But there would be different products at issue: Google is being sued over Android, device makers would be sued over their handsets and tablets.
In the coming weeks, we probably won't hear about the '702 patent again. And if the parties strike an agreement, then we never will. But as long as this dispute isn't settled, Google can't simply forget about the '702 patent. That patent now enjoys, under applicable case law, a strengthened presumption of validity with respect to all of the prior art references that Google had presented in its ex parte reexamination request.
Android needs legal certainty, and it's Google's responsibility to address intellectual property issues surrounding its platform.
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