Thursday, November 29, 2012

Oracle's appeal of ruling in Google/Java case focuses entirely on copyright, drops patents

On October 3, Oracle gave formal notice of its previously-announced appeal of Judge Alsup's non-final final ruling on the Android/Java copyright and patent case. On that occasion I explained how Oracle's appeal might succeed. It's not going to be easy, but it's far from impossible or unrealistic. Five weeks ago I discovered that Oracle had enlisted several high-profile lawyers with a strong background in copyright issues and in appellate proceedings.

For the first time since the notice of appeal (which Google also gave, just a day later, with respect to the parts of the ruling that didn't go in its favor), some information on Oracle's strategy just entered the public record. After agreeing with Google that both parties should get an extra 55 days for their opening briefs in light of the sheer size and complexity of this case, Oracle brought a motion for such an extension of time. If the motion is granted, Oracle will have until February 11, 2013 (instead of December 18, 2012) for its opening brief; Google will have until May 23, 2013 for its first brief (which will be a response to Oracle's opening brief as well as Google's opening brief on the issues it decided to raise); Oracle would reply to Google's brief on July 3, 2013; and Google would make another filing on July 14, 2013 in order to reply to Oracle's response to Google's appeal.

The most interesting piece of information is that "[t]his is a copyright infringement case" only: Oracle's motion mentions that it "also asserted patent infringement", but only to clarify immediately that "patent issues are not raised on appeal".

I believe there are three reasons for Oracle's decision to drop the patent infringement part of the case at the stage of the appeal:

  1. The copyright issues, especially the crucial part concerning API copyrightability, are complex and fundamental. They require undivided attention.

  2. The "Gosling patent" (U.S. Patent No. RE38,104) is about to expire. Even if Oracle prevailed on its claims, justice delayed would be justice denied as it wouldn't be enforceable through an injunction (it would all just come down to past damages).

  3. The other patent-in-suit, U.S. Patent No. 6,061,520 (the "static initialization patent"), won't expire for another five years, but even Oracle's own expert considered it the least valuable one (from a commercial point of view).

These three reasons are unrelated to the merits of the patent infringement issues that were put before the jury. These reasons would apply even if Oracle was almost 100% sure to prevail. I don't think the appeal of the related parts of the jury verdict would have been a slam dunk, but it's a fact that Google's non-infringement arguments directly contradicted some of the comments in the Android source code.

Regardless of tactics and merits, I'm glad that the focus will be entirely on the copyright part of the case. Both parties have brilliant legal teams and will present excellent arguments for and against API copyrightability (and with respect to fair use). And presumably there will be some highly interesting amicus curiae briefs as well, from industry players and non-governmental organizations.

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