It looks like we will see three, not two, Java patents at the Oracle v. Google trial. The trial is currently in the copyright phase, and phase 2 will deal with patents. Just in time, the patent office reconsidered its "final" rejection of a patent. That patent is now set to come back with a vengeance since patents surviving reexamination are particularly powerful. Before I go into more detail, let me provide a list of links to my previous week 1 posts (in reversely chronological order):
Oracle agreed with the court to assert at trial only those patents that don't stand rejected by the USPTO (except if such rejection is only preliminary), and that's why there are currently two patents-in-suit. But late on Sunday, Oracle's counsel informed the court of a new development concerning U.S. Patent No. 5,966,702 on a "method and apparatus for pre-processing and packaging class files". As per a letter dated April 19, 2012 (last Thursday), the United States Patent and Trademark Office gave Oracle notice of its intent to issue an ex parte reexamination certificate that will confirm the validity of claims 1, 5-7, 11-13, 15 and 16 of the '702 patent. Among the confirmed claims, there are all of the claims Oracle is asserting in this action (1, 6-7, 12-13, 15 and 16).
Here's the header of the notice, and I'll comment further below (click on the image to enlarge):
The asserted claims were held invalid both in a first Office action dated June 6, 2011, and a "final" Office action on February 7, 2012. But Oracle filed a request for reconsideration, and in response to that request, the USPTO has now upheld the relevant claims of this patent.
This shows that "final" isn't "final-final". Not only can "final" rejections be appealed to the Board of Patent Appeals and Interferences (BPAI) and on to the Federal Circuit or even the Supreme Court but it's also possible that the Central Reexamination Unit changes mind even after issuing a final" rejection.
Patent claims that are confirmed after reexamination enjoy an enhanced presumption of validity.
Oracle's filing simply notifies Judge Alsup of this development without explicitly stating any particular implication for the trial. The patent part of the trial has not yet begun (I believe we've just finished the first third of the copyright phase), and the court and the parties know the '702 patent inside-out. I think there's no reason why there can't still be a three-patent trial. It wouldn't make sense to exclude a patent that legally enjoys an enhanced presumption of validity. The logistical effort to include evidence relating to the '702 patent is limited. Also, there would still be plenty of time to take the '702 patent into consideration for the third trial phase, the damages phase.
I expect Google to oppose the assertion of this patent, but the interests of justice weigh clearly in Oracle's favor, especially if you consider the difference between a scenario in which Oracle would have to drop a patent with prejudice versus one in which Oracle gets to assert a patent that enjoys an enhanced presumption of validity.
UPDATE: Google claims judge dismissed patent 'with prejudice', but merely referenced Oracle promise to do so for trial
As I expected (see the above paragraph), Google claims the '702 patent cannot be asserted anymore. CNET quotes Google as saying that "Judge Alsup ordered the '702 patent dropped with prejudice from this case". A dismissal with prejudice precludes assertion, but contrary to Google's statement, Judge Alsup never entered an order that declared the patent dismissed. The closest thing to this -- but still far short of an order to dismiss -- was the first sentence of a March 13 order setting the trial date:
"In reliance on Oracle’s withdrawal with prejudice of the '720, '205, and '702 patents, given the final rejections by the PTO examiner, and having twice admonished counsel to reserve mid-April to mid-June 2012 for the trial of this case, this order now sets April 16 as the first day of trial, which will be devoted to jury selection and opening statements."
A judge saying that he orders something "[i]n reliance on" a party's promise means that the party will be held to that promise, not that the judge orders something definitively. A promise for the future is a different thing than a decision of immediate effect. So we have to look at what Oracle actually promised. The March 13 order refers to what Oracle offered in a filing made four days earlier. Here all of the references to a possible future withdrawal of certain patents:
"Oracle America, Inc. hereby provides (1) a summary [...], (2) Oracle's proposal for withdrawing the '720, '205, and '702 patents should those patents continue to stand rejected at the time of a spring trial, [...]"
"II. ORACLE WILL WITHDRAW THE '720, '205, AND '702 PATENTS IF THEY REMAIN REJECTED AT THE TIME OF A SPRING TRIAL"
"The Court has asked Oracle to address whether it would be best to postpone trial until after final decisions by the PTO on administrative appeal, or alternatively whether Oracle will withdraw with prejudice the '720, '205, and '702 patents in light of the 'final' office actions rejecting the asserted claims of those patents."
"Accordingly, if the case goes to trial this spring, Oracle will withdraw from the litigation with prejudice each claim of the '720, '205, and '702 patents asserted against Google that remains rejected at the time of trial [...]"
"Notwithstanding its proposal to withdraw the claims of the '720, '205 and '702 patents that remain rejected as of the time of a spring trial, Oracle notes that the reexaminations of these patents have not yet reached final resolution at the examiner level. Oracle has filed a request for reconsideration of the '720 patent rejections and is awaiting further action by the examiner. Oracle expects to file requests for examiner reconsideration of the '205 and ’702 patent rejections, which are due on March 16 and April 7, respectively. Oracle has substantial arguments supporting reconsideration, raising a credible prospect that one or more of the rejections will be reversed by the examiners."
"Nevertheless, to achieve Oracle's goal of bringing this case to trial in the Court's suggested timeframe (mid-April to mid-June, 2012), Oracle will agree to withdraw with prejudice any of the '720, '205, and '702 patent claims asserted against Google in this litigation that remain rejected at that time."
All these quotes show a consistent pattern: they all relate to the future ("will") and don't specify a particular day such as "by the first day of trial". Instead, they refer to the trial as a "spring trial", and the only reference to the time of the trial is a period ("mid-April to mid-June, 2012").
It was Judge Alsup's decision to trifurcate the trial (break it up into three parts), with the first part being dedicated exclusively to copyright. What is taking place these days is a copyright trial, and the patent trial has not yet begun. I haven't seen any filing in which Oracle affirmatively withdrew, with prejudice and immediate effect, the '702 patent.
Yesterday the judge indicated that the jury would likely get to decide on the copyright part next week. So there's still enough time to create all of the necessary documents that the jury can evaluate the '702 patent as well. As I said further above, the court and the parties are no strangers to this patent. Plenty of material exists. For a reasonable interpretation of the promise Oracle made, one key consideration will be the question of prejudice to the parties. There is no prejudice to Google because none of the arguments it made, facts it presented or questions it asked during the copyright phase of the trial would have been any different if the patent office had reversed the rejection of the '702 patent just before the copyright trial. Therefore, I can't see a reason for which the patent would have had to be withdrawn on or before April 16. It has not been affirmatively withdrawn yet, nor has it been dismissed by the judge so far.
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