Oracle v. Google

By Mark Rawls

Oracle, which recently acquired Sun Microsystems, initiated a lawsuit against Google in August 2010. The suit has attracted a lot of attention due to the prominence of Android, and has angered a number of people in the software community (see here). Oracle asserts (1) the claim that Google’s implementation of the Android operating system infringes on several of their patents, and (2) a copyright infringement claim. The trial, which is scheduled for the end of October, is likely to be delayed due to unrelated issues on the court’s docket (see here).

If you haven’t been paying attention, Android is big business.  Multiple cell phone providers offer Android-based phones.  Numerous developers create Android-based applications. Even the government is interested in the system for certain military applications, in part because of its openness. (Full disclosure: I worked for several years for a company where part of my responsibilities included developing software to run on the Android platform.)

For those unaware, Sun developed the Java programming language and virtual machine (see also here and here), which are popular, widely-used tools in the software community. In turn, Google, through the Open Handset Alliance, developed the Android operating system, which includes the Dalvik virtual machine. Dalvik can be used to run code compiled from a dialect of Java. In light of a copyright claim, Dalvik was supposedly developed as a “clean room” version of Java. For more details on what Dalvik is, see Mark Murphy’s summary.

Oracle claims infringement of seven of its patents related to its virtual machine technology. Originally there were 132 claims from the seven patents, but Oracle was ordered to reduce the number of claims down to three over a three-stage process, though it has fought that order. It currently is pressing 15 claims — or 26, due to disagreement with Google on how to count what Oracle calls “mirrored” claims. Of these claims, several have been subject to reexamination by the USPTO at Google’s insistence.

Three of the claims have been confirmed in a first action.  Three have yet to be heard.  Nine have been rejected in a first action. Google asserts that the number of claims pressed by Oracle is still too much to explain to a jury in the allotted time for trial. Google has also limited its defenses to a minimum of three per claim, as required by an earlier order of the court.

Oracle’s original damage claims ran in excess of $6 billion. Google, objecting to the report which was compiled by Professor Cockburn of Boston University, filed a motion for a Daubert hearing. Google claimed that Cockburn’s estimate on damages ignored prior negotiations between Sun and Google and other licensing transactions where Sun licensed the patents for a fraction of Cockburn’s estimate, and was improperly based on worldwide sales of Android instead of limited to the infringement which takes place in the U.S. The trial judge has agreed, at least in part, with Google, inviting Oracle to correct and resubmit its damages report (see here).

Of particular note with respect to damages, Oracle is claiming that Google’s actions have been “willful, deliberate, and in reckless disregard” of Oracle’s patent rights, which, if true, could entitle Oracle to treble damages (provided that the patent claims hold up in court). In proof of this supposed willful and deliberate behavior, Oracle has stumbled upon what is being called the Lindholm e-mail. This was an e-mail prepared by a senior engineer at Google, and sent to Google’s in-house counsel; its contents show that Google thought it needed to negotiate a license with Sun.

According to Oracle, the email is evidence of Google’s willful, deliberate, and reckless disregard of Oracle’s patent rights. Google claims that the e-mail is privileged attorney-client communication or work product and should not be admissible. The details are a little complicated, but it appears that the e-mail was inappropriately made public by Oracle (see here). Google has so far lost its fight on this issue (though Google plans to use one of its in limine motions with respect to the email), but one of Oracle’s arguments is worth pointing out because of its seemingly far-reaching consequences.

It is generally held that if a party is claiming something should be kept confidential, any public disclosure by that party destroys the confidentiality; the twist here is that Oracle published the letter online, which was later indexed by Google’s search engine and appeared in its cache. Oracle claims that Google waived its privilege by this action. If this theory of Oracle’s were to hold, it may have serious implications for other search engines. Although the court has so far sided with Oracle on the admissibility of the Lindholm email, it did not mention this argument in its opinion.

In response to Oracle’s patent claims, Google denies that the patent claims are legitimate.  Google claims that the patents are invalid, Oracle’s claims are barred by either the doctrines of laches, equitable estoppel, and/or waiver, and by the doctrine of “unclean hands.” Google claims the patents are “invalid under 35 U.S.C. § 101 because one or more claims are directed to abstract ideas or other non-statutory subject matter.” Google also claims that none of the patents “can be properly construed to cover any of Google’s products.” As noted above, Google has requested the USPTO to reexamine some of Oracle’s claims.

There is disagreement between the parties on almost every point. As noted above, they can’t even agree on how to count the number of claims that Oracle is pressing. With the trial fast approaching, the parties have also complained to the judge about the opposing party’s forthrightness in discovery requests. One particular incident concerns Oracle: sometime after Oracle acquired Sun and after the initiation of the lawsuit, Oracle revamped the Sun website. Google wants access to the original website, which included a number of documents relevant to some of Google’s defenses.

Oracle turned over a corrupted version of the old site, which neither party could access. As one commenter notes, “If this were Sears or Victoria’s Secret or some other company that isn’t in the primary business of selling technology, one might understand challenges in reproducing an old website…. But Oracle is in the technology business. They know how to do technical tasks like this, one presumes. If not, why would you buy any technical products from them?” (see here).

The case is getting ready to head for trial, which is currently scheduled for October 31, although it will likely be delayed. To see the different claims being pressed and the defenses presented, or to follow the case in more detail, Groklaw has court filings (available as text or pdf) and commentary available.

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1 Comment

  1. jtkamien

     /  October 14, 2011

    Really interesting post. I wonder what else you could trick Google into “disclosing” by simply posting on the Internet.

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