18 February 2011

Oracle vs Google II – the Android Strikes Back!

Currently, the list in the sidebar to the right shows that the most-viewed article ever posted on this blog is our analysis of the background to Oracle's IP infringement lawsuit against Google (Why Has Oracle Sued Google? 18 August 2010).

Now, according to a Reexamination Alert from the firm of Westerman Hattori Daniels & Adrian LLP, Google has fired the next salvo in the ongoing dispute by asking the USPTO to reexamine four of the patents asserted by Oracle – US Patent nos. 5,966,702, 6,061,520, 6,125,447 & RE 38,104.

In principle, full details of reexamination proceedings, including documents filed by the parties, are available via the USPTO's Public Patent Application Information Retrieval (Public PAIR) system.  In practice, finding the documents can be less than straightforward, but for those readers who may wish to follow the process we provide further information and instructions at the end of this article.

So far, it appears that the documents filed by Google are only available in three of the cases, although we expect that the other will follow shortly.

BASIS FOR REEXAMINATION OF US 5,966,702

Google's reexamination request against US Patent No. 5,966,702 makes the following allegations:
  1. that claims 1, 5-7, 11-13, 15 and 16 are unpatentable due to anticipation by US Patent No. 5,815,718; and
  2. that claims 1, 5-7, 11-13 and 15 are unpatentable due to anticipation by US Patent No. 5,613,120.

BASIS FOR REEXAMINATION OF US 6,061,520

The reexamination request against US Patent No. 6,061,520 is based upon three prior art documents:
  1. Lewis et al, Clarity MCode: A Retargetable Intermediate Representation of Compilation, ACM, IR'95, 1/95, San Francisco, CA, USA (1995);
  2. Cierniak et al, Briki: an Optimizing Java Compiler, IEEE Compcom '97 Proceedings (February 1997); and
  3. Dyer, Java Decompilers Compared, JavaWorld.com (1 July 1997).
Google alleges that:
  1. claims 1-4, 6-13, 15, 16 and 18-32 are upatentable due to anticipation by Lewis;
  2. claims 1-4 and 6-23 are upatentable due to anticipation by Cierniak; and
  3. claims 1-4 and 6-23 are also upatentable over Cierniak in view of Dyer (i.e. a combination of the information in both documents).

BASIS FOR REEXAMINATION OF US 6,125,447

The reexamination request against US Patent No. 6,125,447 is based upon three prior art documents:
  1. US Patent No. 5,412,717, in the name of Fischer;
  2. Goldstein, The Gateway Security Model in the Java Electronic Commerce Framework (published 29 November 1996); and
  3. Shah, Java APIs: Playing Monopoly with Java via the JECF (published 1 December 1996).
Google is alleging that:
  1. claims 1-24 are unpatentable due to anticipation by Fischer; and
  2. claims 1-24 are unpatentable over Goldstein in view of Shah.

BASIS FOR REEXAMINATION OF RE38,104

Details are not yet available in the USPTO PAIR system for RE38,104, but we will check back in a few days and report further.

TRACKING REEXAMINATION PROGRESS VIA THE USPTO

The USPTO's PAIR system provides access to documents associated with all patents, and all published applications.

You might therefore think that finding reexamination documents would be a simple matter of searching for the relevant patent number.  But you would be incorrect.

When a reexamination request is lodged, the PTO opens a new file, and allocates a reexamination application number (currently commencing with the sequence number 90).  To find the reexamination case associated with a patent, it is necessary first to open the patent case, then visit the 'continuity data' tab to find associated applications.  If a reexamination application number is listed, this can then be opened to view the associated events and documents.

The reexamination application numbers associated with each of the Oracle patents are:
  1. US 5,966,702 is being reexamined under application no. 90/011,492;
  2. US 6,061,520 is being reexamined under application no. 90/011,489;
  3. US 6,125,447 is being reexamined under application no. 90/011,491; and
  4. RE38,104 is being reexamined under application no. 90/011,490.
Google is represented in the rexamination matters by the firm of King & Spalding LLP.

3 comments:

Copyguy said...

The problem Google has is that they have lost the copyright portion of the trial, and it is in Oracles right to get an injunction and have all of the droid devices that ar ein consumer hands destroyed. The only way Google can save themselves is to right a very big check on the order of 20 – 30B

Now enter the patent case. Every statement that Oracle will make during trial will be about how Google stole this, or how Google stole that. Google could have easily purchased a licenses, but instead they stole oracle copyrighted code etc. etc.

Granted the trial is on facts, but add the above into a jury trial, and Google will lose. When the issues are balanced, then you can go either way, but add the fact that Google will have lost the copyright case in summary judgment.

My view - Google writes very big check $20-30B and settles out of court with a licenses fee paid to Oracle.

Patentology (Mark Summerfield) said...

Hi Copyguy .

As far as I am aware, Google has not yet 'lost' any part of the law suit. Last October, Google asked the court to dismiss Oracle's copyright claims, but in February this year the judge declined to do so.

This does not mean that Google will ultimately lose the copyright case. It simply means that the judge did not consider Oracle's case to be so obviously lacking in merit that he could dismiss it without a full trial in which all the evidence and arguments from both sides can be considered.

We are a long way, I think, from anyone writing big cheques, and there will be more skirmishes along the way, I am sure. Motions to dismiss and re-examination requests are all par for the course in intellectual property suits!

Mark Summerfield said...

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