Yesterday, Oracle and Google filed a joint update regarding the ongoing reexaminations of certain patents-in-suit. The patent part of Oracle's case is in greater trouble than ever. In fact, there isn't much left of it except that U.S. patent litigation still creates opportunities even for the holders of patents of doubtful validity.
What comes as little surprise is that the USPTO confirmed, on a "final" basis (final as far as reexamination is concerned, but it can still be appealed to the Board of Patent Appeals and Interferences, and even up to the Court of Appeals for the Federal Circuit), the rejection of all of the asserted claims of the '702 and '205 patents. So far, all preliminary rejections of patent claims were ultimately confirmed by the USPTO in its "final" actions.
But what I didn't necessarily expect is that the USPTO believes, on a non-final basis, that all of the asserted claims of U.S. Patent No. RE38,104 on a "method and apparatus for resolving data references in generated code" -- an invention claimed by Java creator James Gosling -- are also invalid.
Out of the seven patents Oracle originally asserted, it has withdrawn two, and of the remaining five, only one (the '520 patent) survived reexamimation at least to the extent that Oracle could still assert some of its claims, though infringement is not a given.
The Gosling patent was the last one of the seven on which the USPTO issued a first Office action. This took very long, and for a long time I was thinking that Oracle might be able to get a lot of mileage just out of the Gosling patent. It appeared pretty fundamental to me. But this patent appears to be bound for invalidation, given that Oracle has so far not been able to dissuade the USPTO from turning any non-final rejection into a "final" one.
Two days ago I reported on Oracle's withdrawal of a second patent (of which it was only asserting one claim at this stage) and said that "[a] certain degree of streamlining ahead of trial is nothing unusual in such multi-patent cases". Note that I said "certain degree". With the latest bad news for Oracle, especially concerning the Gosling patent, I believe a tipping point has finally been reached for the patent part of Oracle's case. Now there's serious doubt that even one of Oracle's originally-asserted claims is both valid and infringed by Android's Dalvik virtual machine. Last month, Oracle already proposed to focus on the copyright part of the case, and at the time, there was still a limited amount of hope for its patents. By now, the patent part of the case is pretty much lost except that a jury might nevertheless determine that there isn't clear and convincing evidence for the invalidity of some patent claims. But that is increasingly unlikely to happen. A jury will likely see that Oracle's patents-in-suit have a serious validity problem.
As I pointed out in my previous blog post on this subject, it's another question whether Oracle might be able to prevail with other patents. Sun filed for many patents related to Java, not just the seven that Oracle elected to assert in the summer of 2010.
The devastating outcome of those reexaminations is a major success for Google and its legal team. But it can't really be blamed on Oracle's internal and external lawyers. If there was prior art because of which those patents should never have been granted in the first place, then the problem is that Sun wasn't as technologically cutting-edge as it often claimed. Theoretically, Oracle could have run a search for prior art against its own patents prior to asserting them in August 2010, but plaintiffs usually don't make as much of a related effort as high-profile defendants like Google do. Most companies overrate the value and validity of their patents until the rubber hits the road in the form of litigation.
Oracle now finds itself in a situation in which common sense clearly shows that Google didn't want to respect its intellectual property (as the Lindholm email demonstrates), but in order for Oracle to prevail in court, it must prove that Google infringes on valid intellectual property rights belonging to Oracle. The patent part of the case appears pretty much lost for Oracle in the near term. Maybe the USPTO Board of Appeals for Patent Appeals and Interferences or the Court of Appeals for the Federal Circuit will overrule the USPTO's central reexamination division on some counts, but that will take rather long. On the copyright side, Oracle must overcome Google's claim that its API-related source files aren't copyrightable. The copyrightability of API-related materials is a controversial issue. Oracle may or may not win on this count. Judge Alsup wanted the copyright trial to start in mid-April if possible, so we may find out soon.
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