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Oracle Files Motion to Strike Google's Answer, Some Counterclaims
Wednesday, October 27 2010 @ 12:50 PM EDT

When I first started to read the title of the motion, I thought with joy that Oracle was dismissing its complaint. But of course, no. That's in my perfect alternate universe, where Oracle comes to its senses and the parties work it all out, in the FOSS community way.

Instead, it is asking the court to dismiss parts of Google's Answer -- some of its counterclaims, particularly the ones claiming that Oracle's patents are invalid -- some of Google's affirmative defenses -- which Oracle calls improbable and too vaguely pleaded -- and believe it or not it would like to censor some of the factual background material in Google's Answer. It says paragraphs 7 through 22 of Google's Answer are merely "a long list of self-congratulatory remarks and polemics that have nothing to do with Google’s counterclaims for non-infringement and invalidity." Oracle says they are immaterial and impertinent. It is to laugh, as they say. Silly stuff already, and we're just clearing the runway.

Actually, it's worse than silly. It's asking to remove all the materials about how beneficial open source is compared to closed. Polemics? Shame on you, Oracle. You used to know better, as shown in the very material information that you now would like removed from Google's filing -- the part about how Oracle, then on the Executive Committee of the JCP, used to vote in favor of open sourcing the Java platform. After buying Java, Google wrote, Oracle reversed course overnight. That's not immaterial. If the court removes all those paragraphs, it would also remove the part in paragraph 17 that tells the court that Google doesn't receive any payment, fee, or royalty for Android. That matters very much in any litigation.

So while Oracle says it's all immaterial and impertinent, I don't think that is why it wants it out. It would like to knee-cap Google by removing the parts that would help Google defend itself from Oracle's patent aggression.

Here's the filing:

10/26/2010 - 35 - MOTION to Dismiss invalidity counterclaims, MOTION to Strike 32 Answer to Complaint, Counterclaim (motion to strike certain affirmative defenses and impertinent matter) filed by Oracle America, Inc.. Motion Hearing set for 12/2/2010 08:00 AM in Courtroom 9, 19th Floor, San Francisco. (Attachments: # 1 Proposed Order)(Peters, Marc) (Filed on 10/26/2010) (Entered: 10/26/2010)

Here's the complex relief Oracle is asking for:
Plaintiff Oracle America, Inc. will and hereby does move to dismiss Defendant Google’s counterclaims for declaratory judgment of invalidity (Counts 2, 4, 6, 8, 10, 12, and 14 of Google’s counterclaims) pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure on the grounds that each of Google’s invalidity counterclaims fails to state a claim upon which relief can be granted. Oracle America further moves to strike Google’s Second, Third, Fourth, Fifth, Seventh, Ninth, Eleventh, Twelfth, and Thirteenth affirmative defenses pursuant to Rule 12(f) on the grounds that each is insufficiently pleaded. Oracle America moves to strike paragraphs through 22 of the Factual Background section of Google’s Counterclaims pursuant to Rule 12(f) on the grounds that they are immaterial and impertinent to any claim, counterclaim, or affirmative defense. This motion is based on this Notice of Motion and Motion, the following Memorandum of Points and Authorities, the pleadings and papers on file in this action, any matters of which the Court may take judicial notice, any evidence or argument presented at the hearing on the motion, and any other matters the Court deems proper.
Here's Oracle's argument on the invalidity issue: they are by statute presumed to be valid, and others have already acknowledged them and respect them. With money. I don't see that as a strong argument, personally, because the whole world knows that patent law got so crazy lots of defendants will pay rather than get sued. But the judge will probably give this argument more weight than I do.

Here's another argument Oracle makes:

Google’s general invalidity claims are particularly implausible in this case given that the doctrine of assignor estoppel bars Google from challenging the validity of any patent assigned by an inventor with whom Google is in privity.1 Google’s invalidity counterclaims fail to provide fair notice of its claims for relief as required by the federal pleading rules and should be dismissed.


1 Several of the named inventors of Oracle America’s patents subsequently joined Google and have developed software for Google. For example, Frank Yellin, co-inventor of the ’520 patent, and Lars Bak and Robert Griesemer, co-inventors of the ’205 patent, are believed to be presently employed by Google.

Just because Oracle wants us not to read them, here, as text, are the paragraphs it is asking the court to censor from Google's Counterclaims section of its Answer:
7. Sun came under significant criticism from members of the open source community, including Oracle Corp., for its refusal to fully open source Java. For example, in August of 2006, the Apache Software Foundation (“ASF”), a not-for-profit corporation that provides organizational, legal, and financial support for open source software projects, attempted to obtain a TCK from Sun to verify Apache Harmony’s compatibility with Java. Although Sun eventually offered to open source the TCK for Java SE, Sun included field of use (“FOU”) restrictions that limited the circumstances under which Apache Harmony users could use the software that the ASF created, such as preventing the TCK from being executed on mobile devices. In April of 2007, the ASF wrote an open letter to Sun asking for either a TCK license without FOU restrictions, or an explanation as to why Sun was “protect[ing] portions of Sun’s commercial Java business at the expense of ASF’s open software” and violating “Sun’s public promise that any Sun-led specification [such as Java] would be fully implementable and distributable as open source/free software.” However, Sun continued to refuse the ASF’s requests.

8. Oracle Corp., as a member of the Executive Committee (“EC”) of the Java Community Process (“JCP”), the organization tasked with managing Java standards, voiced the same concerns regarding Sun’s refusal to fully open source the Java platform. Later that year, in December of 2007, during a JCP EC meeting, Oracle Corp. proposed that the JCP should provide “a new, simplified IPR [intellectual property rights] Policy that permits the broadest number of implementations.” At that same meeting, BEA Systems – which at the time was in negotiations that resulted in Oracle Corp. purchasing BEA – proposed a resolution that TCK licenses would be “offered without field of use restrictions . . . enabling the TCK to be used by organizations including Apache.” Oracle Corp. voted in favor of the resolution.

9. Just over a year later, in February of 2009, Oracle Corp. reiterated its position on the open-source community’s expectation of a fully open Java platform when it supported a motion that “TCK licenses must not be used to discriminate against or restrict compatible implementations of Java specifications by including field of use restrictions on the tested implementations or otherwise. Licenses containing such limitations do not meet the requirements of the JSPA, the agreement under which the JCP operates, and violate the expectations of the Java community that JCP specs can be openly implemented.”

10. Only a couple of months later, in April of 2009, Oracle Corp. announced that it would be acquiring Sun (renamed Oracle America after the acquisition was completed in January of 2010). Since that time, and directly contrary to Oracle Corp.’s public actions and statements, as well as its own proposals as an executive member of the JCP, Oracle Corp. and Sun (now Oracle America) have ignored the open source community’s requests to fully open-source the Java platform.

B. The Open Handset Alliance and Development of the Android Platform

11. The Android Platform (“Android”) is a freely-distributed, open-source software stack for mobile devices that includes an operating system, middleware and key mobile applications. Android was released in 2007 by a group of seventy-eight technology and mobile companies known as the Open Handset Alliance (“OHA”) who have come together to accelerate innovation in mobile devices and offer consumers a richer, less expensive, and better mobile experience. The members of the OHA, which include Google, mobile operators, handset manufacturers, semiconductor companies, software companies and commercialization companies, are each strongly committed to greater openness in the mobile ecosystem.

12. The OHA believes that an open platform – a platform that provides equal access to any who would choose to develop software for the platform – is essential to allow wireless carriers, handset manufacturers, software developers and others to more rapidly bring innovative ideas to the marketplace and to better respond to consumers’ demands. An open platform also ensures that there is no threat of a central point of failure, so that no single industry player can restrict or control the innovations of any other. The objective of Android is an open and shared product that each contributor can freely tailor and customize. The members of the OHA, including Google, have invested heavily in Android by contributing significant intellectual property as well as economic and engineering resources to the development and maintenance of Android.

13. The Android platform includes, among other things, the Android Software Development Kit (“SDK”) and the Dalvik Virtual Machine (“VM”). The Dalvik VM relies on a version of the Linux kernel for core system services such as security, memory management, process management, network stack, and driver model, and as an abstraction layer between the hardware and the rest of the software stack. The core class libraries of the Dalvik VM incorporate a subset of Apache Harmony, a clean room, open source implementation of Java from the Apache Software Foundation. Other than the Harmony libraries, the Android platform, including, without limitation, the Dalvik VM, was independently developed by the OHA.

14. The Android Open Source Project (“AOSP”) is tasked with the maintenance and further development of Android, including incorporating code and submissions from the community of developers who contribute to Android and the tens of thousands of developers who create applications for Android. The goal of the Android Open Source Project (AOSP) is to ensure that the open-source Android software is implemented as widely and consistently as possible, to the benefit of the developer and user communities, and others involved in Android. Google, along with several corporate partners and volunteer technology enthusiasts, contributes resources, including engineers and financial support, to the AOSP.

15. The information and source code for the Android Platform is openly and freely available for developers, manufacturers, or any member of the general public to download at and The majority of the Android software is made available under the permissive open source license terms of the Apache Software License, 2.0 (“Apache 2.0”). Certain aspects of Android, for example, the Linux kernel patches, are made available under the GPLv2 license.

16. Developers are free to modify the source code of the Android platform to fit their particular purpose. Android’s permissive open-source license allows a developer to adopt the Android platform and freely build software and enhancements on top of the platform, while maintaining the flexibility to release the software and enhancements to the public under either an open source license, or alternatively under a commercial license, which would protect the developer’s proprietary investment in Android.

17. Google does not receive any payment, fee, royalty, or other remuneration for its contributions to the Android Platform.

C. Android and the Java Programming Language

18. Developers for Android can create software applications for Android-based mobile devices using various programming languages, including the Java programming language. For use on the Android platform, these software applications are converted into a set of intermediate instructions – i.e., Dalvik “bytecode,” typically stored in files in the Dalvik Executable (.dex) format – with the “dx” tool included with the Android platform. These .dex files can be executed on any mobile device with a Dalvik VM. The Dalvik VM implements a register-based architecture (distinct from a stack-oriented architecture), where data and parameters are loaded directly into virtual machine registers. The Dalvik VM and .dex format are optimized for battery-powered mobile devices that are more limited in terms of computing and memory resources than desktop computers.

19. Although software applications for the Android platform may be written in the Java programming language, the Dalvik bytecode is distinct and different from Java bytecode. The Dalvik VM is not a Java VM.

20. The Android Platform has been a success in the mobile handset industry. Although Android was a latecomer to the smartphone market – first becoming generally available in late 2008 – there are currently approximately ninety different Android-based mobile devices made by over twenty different manufacturers available for purchase in dozens of countries. Indeed, approximately 200,000 Android-based handsets are activated every day on over fifty different wireless carriers. Android Market – a store where developers can sell applications (“apps”) that they create for Android-based devices – has over 80,000 apps available for download.

21. Android’s popularity has proven to be a catalyst for the Java open source community and the increased use of the Java programming language. Indeed, when Android was first released in November of 2007, Sun CEO Jonathan Schwartz confirmed this fact, congratulating Android and stating that “needless to say, Google and the Open Handset Alliance just strapped another set of rockets to the community’s momentum – and to the vision defining opportunity across our (and other) planets.”

22. The success of the Android platform is due in large part to its open nature, which benefits the entire open source community of consumers, developers, manufacturers, and mobile operators. Android’s permissive open source license allows developers and manufacturers to innovate rapidly under their own terms while simultaneously protecting their proprietary intellectual property, if so desired. Because Android provides open and comprehensive access to handset capabilities and developer tools, developers experience increased productivity and are better able to optimize their Android applications. Mobile operators and handset manufacturers benefit from the innovation, and have great flexibility to customize Android to differentiate their product lines. Handset manufacturers also benefit from lower software costs and faster time-to-market for handsets. Finally, and consistent with the mission of the Open Handset Alliance, all of the benefits to developers, manufacturers, and mobile operators are passed on to consumers who receive more innovative and cost-effective mobile devices and services, and a rich portfolio of applications, that more rapidly respond to their needs and demands.

As a friend, let me just mention something Oracle will otherwise find out the hard way. This filing smells like Boies Schiller to me, their style. Oracle is now at a crossroads. And judging from this filing, my advice is this: You'll mess up plenty if you listen to Boies Schiller, when it comes to the hole you are digging with the FOSS community. They totally don't get open source, judging by the SCO litigation, where they never did grok the GPL and actively fought hard to kill it. What kind of resume is that?

You've got your toes in FOSS waters, presumably because you want to be there, but you need a different swimming coach to guide you in that part of all this. Stop digging. Please.

There. I've said it.

If I hated Oracle or thought it was hopeless, I wouldn't warn them. I have always admired Larry Ellison's genuine courage in standing up to Microsoft. When other companies were too scared of the big bully to even stand up to be counted, Ellison stood up and made a difference. I honor that courage. But this filing is like throwing lit firecrackers into the community. Even the litigation itself is. It's not going to make Oracle any friends. Even if it wins, it loses.

In the best scenario imaginable for Oracle, it gets a little license money from Google and keeps Java under its control. But do you really, really think that will block the community or Google from leaving Java behind in the dust if necessary? If you think that, you don't understand FOSS at all. And with the short-term license money, Oracle will have earned the eternal disgust of the FOSS community. It's a high price to pay, as SCO found out. It didn't care either, in the beginning. Remember SCO's then-CEO Darl McBride saying his duty was to shareholders, not to stand around the campfire sing Kumbaya with Linux world? How'd that work out for SCO shareholders, would you say, even with SCO hiring David Boies? Short-term thinking doesn't always pay, even with great lawyers helping you, and underestimating the FOSS community, which Darl's dismissive and offensive comment reflects, doesn't either. The company should have instead made its Linux offerings appealing to the Linux world. Caldera kind of invented open core, if you think about it, and it offended pretty much everyone, with Richard Stallman calling the company a parasite. How'd that work out, Caldera?

And just so you understand why this filing is so offensive: The community is about ethical values, where it's expected that one acts with dignity and a certain sense of fair play. The competition is for the best code, the best product, not from mean or dirty plays. We leave that to Microsoft types. Oracle, stop digging, my friend, please, before it's too late. Because if you go forward, we'll understand that you don't care about the community at all, only about short-term money. FOSS is going to win the money race too in the end, it appears, in any case. It's just a matter of time. So think longer term please. Good will is money too, you know. And the ways Oracle is used to fighting won't work here. It'll just dig and dig and dig a deeper and deeper hole, so deep even NASA's technology won't be able to get you out of the underground cave you'll end up in.

So, I'm sorry to say that sadly, the case is going forward, whether it makes sense or not, whether it's getting ugly or not. We have a Timeline for this case, and I'll keep you up-to-date on new events.


Oracle Files Motion to Strike Google's Answer, Some Counterclaims | 219 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Corrections Thread
Authored by: artp on Wednesday, October 27 2010 @ 12:55 PM EDT
"Eror" -> "Error"

Userfriendly on WGA server outage:
When you're chained to an oar you don't think you should go down when the galley
sinks ?

[ Reply to This | # ]

Off Topic Thread
Authored by: artp on Wednesday, October 27 2010 @ 12:56 PM EDT
Please change the Title Block.

Userfriendly on WGA server outage:
When you're chained to an oar you don't think you should go down when the galley
sinks ?

[ Reply to This | # ]

News Picks Thread
Authored by: artp on Wednesday, October 27 2010 @ 12:58 PM EDT
Please mention the title. URLs are appreciated. It makes it easier when they
scroll off the sidebar.

Userfriendly on WGA server outage:
When you're chained to an oar you don't think you should go down when the galley
sinks ?

[ Reply to This | # ]

Comes Goes Here
Authored by: artp on Wednesday, October 27 2010 @ 12:59 PM EDT
Transcripts from the MS v Comes trial.

Userfriendly on WGA server outage:
When you're chained to an oar you don't think you should go down when the galley
sinks ?

[ Reply to This | # ]

Authored by: Steve Martin on Wednesday, October 27 2010 @ 01:18 PM EDT

[PJ:] It says paragraphs 7 through 22 of Google's Answer are merely "a long list of self-congratulatory remarks and polemics that have nothing to do with Google’s counterclaims for non-infringement and invalidity." Oracle says they are immaterial and impertinent.

I can't for the life of me understand how paragraphs 7 through 9 can be construed as "self-congratulatory" "polemics". It seems more to my IANAL-type eyes that they are a sound basis for a defense of estoppel. These paragraphs describe how Oracle once supported the open-source use of the Java technologies that it now claims is infringement. If that isn't estoppel, I don't know what is. (Of course, IANAL, so it's entirely possible that I in fact don't know what it is...)

"When I say something, I put my name next to it." -- Isaac Jaffe, "Sports Night"

[ Reply to This | # ]

Control wings away from SCO
Authored by: Anonymous on Wednesday, October 27 2010 @ 01:31 PM EDT
Google and Oracle fighting in SCO bankruptcy, not to mention our favorite silent

Gross, Cahn and Company now have to invite the bulls into the china shop.

Hello Novell! And IBM is coming up the walk.

Do you think the Honorable Judge Gross will be able to emcee all these
high-powered sharks, once the blood starts to billow?

[ Reply to This | # ]

the doctrine of assignor estoppel?
Authored by: rsteinmetz70112 on Wednesday, October 27 2010 @ 01:32 PM EDT
I really really need someone to explain to me how Google can be estopped from
challenging the validity of patents granted to people who used to work for
Oracle (or more likely Sun) and who now work for Google.

Rsteinmetz - IANAL therefore my opinions are illegal.

"I could be wrong now, but I don't think so."
Randy Newman - The Title Theme from Monk

[ Reply to This | # ]

Our newest patent troll
Authored by: wvhillbilly on Wednesday, October 27 2010 @ 02:27 PM EDT
All together now, let's welcome our newest patent troll to the wonderful world
of IP abuse...

PTHB-B-B-B-B-B-B-T ! ! !

(Otherwise known as the raspberry!)


"It is written." always trumps, "Um, ah, well, I thought..."

[ Reply to This | # ]

Oracle Files Motion to Strike Google's Answer, Some Counterclaims
Authored by: Anonymous on Wednesday, October 27 2010 @ 02:39 PM EDT
Paragraphs 7 to 22 (at least parts of them) are definitely material to this

After all, had Sun removed the provision about the TCK (or given the necessary
materials to the apache harmony project), this wouldn't be going on. Likewise,
Oracle, who at that time was for Sun doing the right thing, should be doing the
same right thing that they were for prior.

It's material because when the "right thing" referenced in these
paragraphs favors Oracle (along with others), they are for it. When it favors
someone else, but not Oracle, they're against it.

With this, I will say that I don't share your opinion about Oracle (at least not
totally). I don't care if they come out tomorrow and say "We were wrong,
and in fact, we want to help Android to be as much of a success as
possible.", I won't use Oracle's products or services if I have a choice.

Which I have to say sucks--because I actually enjoyed coding in Java (the little
that I've done for my classes).

Have a great day:)

[ Reply to This | # ]

Authored by: jacks4u on Wednesday, October 27 2010 @ 02:45 PM EDT
Oracle uses the same arguments and authorities to claim Google's claims should be dismissed, As Google uses to claim Oracle's claims should be dismissed!

If neither is stating sufficient claims for relief, can the judge "Throw out the whole thing" Or, is it all power play, to fight for an upper hand in this case?

[ Reply to This | # ]

Admired Ellison? Really???
Authored by: sgtrock on Wednesday, October 27 2010 @ 02:46 PM EDT
<blockquote>If I hated Oracle or thought it was hopeless, I wouldn't warn
them. I have always admired Larry Ellison's genuine courage in standing up to
Microsoft. When other companies were too scared of the big bully to even stand
up to be counted, Ellison stood up and made a difference. I honor that courage.
But this filing is like throwing lit firecrackers into the community. Even the
litigation itself is. It's not going to make Oracle any friends. Even if it
wins, it loses. </blockquote>

I don't think you ever grokked Ellison at all. After all, the man runs a
company that historically has used some of the shadiest tactics on the planet to
manipulate the database market. Just one example off the top of my head:
they've been fined numerous times by the SEC for mis-stating earnings. Larry
doesn't care. He just pays the chump change fine and moves on.

Also, he didn't stand up to Microsoft. He regarded them then and regards them
still them as immaterial. The only MS product of any consequence that competes
with him is MS SQL, an also ran database engine that's OK for all the small
stuff Larry can't be bothered with.

When I heard that Oracle had bought MySQL, I figured they did it for one of two
reasons: to finally have an answer to MS SQL or to kill a promising competitor
that had the capability to scale up to the kinds of workloads that Oracle DB can
handle. After watching what's happened, I think we know which way that
particular story is unfolding.

Same thing here. Larry thinks he can go buy himself another mega-yacht out of
the proceeds of this lawsuit. He doesn't care what the FOSS world thinks
because he thinks we're immaterial to his version of world domination. His
competitor(s) these days is IBM's DB2 and postgresql. The latter really isn't
in the same ballpark as DB2 and Oracle. Yet. :)

[ Reply to This | # ]

Privity and Assignor Estoppel
Authored by: jbb on Wednesday, October 27 2010 @ 03:20 PM EDT
Here are a couple of Wikipedia links about privity. I am still rather baffled by what it exactly is and how Oracle is trying to use it. I certainly don't understand what kind of "fair notice" Oracle is talking about when they say:
Google’s general invalidity claims are particularly implausible in this case given that the doctrine of assignor estoppel bars Google from challenging the validity of any patent assigned by an inventor with whom Google is in privity.1 Google’s invalidity counterclaims fail to provide fair notice of its claims for relief as required by the federal pleading rules and should be dismissed.
The footnote talks about named inventors on the patents that Google subsequently hired. Is it possible that I'm barred from claiming a patent is invalid merely by hiring one of the named inventors? If that is true then the amount of due diligence required before hiring someone increases by orders of magnitude.

Oracle mentions assignor estoppel:

This doctrine extends to those in "privity" with the assignor. If Tom becomes another company's largest shareholder, and that company is sued by Jerry over patent infringement, that company could very likely be barred from raising patent validity as a defense even if Tom was not personally involved in the infringing process.
ISTM there is a HUGE difference between being the largest shareholder and merely being an employee. The largest shareholder part makes sense to me but it seems ridiculous to extend the same liabilities to the previous patents of all employees. While the inventors materially gained by being employed by Sun/Oracle, how on earth did Google materially gain such that they should now be estopped from claiming those patents are invalid? It's not like Google sold the patents to Sun/Oracle.

If this claims holds up then companies should be firing their inventors left and right hoping for them to be hired by their competitors and thus making it impossible for their competitors to even question the validity of the original company's patents, no matter how ridiculous they are.


[X] Ignore DRM Restrictions

[ Reply to This | # ]

claims of assignor estoppel must be proved
Authored by: Anonymous on Wednesday, October 27 2010 @ 03:28 PM EDT

It doesn't appear that Oracle can have some of Google's claims dismissed merely because some of the patents were assigned to them by current Google employees. Privity is a relative term, that depends on just how closely the interests of the parties are aligned. A case appealed to the Federal Circuit shows this.

Sha mrock Technologies, Inc. v. Medical Sterilizations, Inc.

Assignor estoppel is an equitable doctrine, id. at 1224, 6 USPQ2d at 2030, "that is mainly concerned with the balance of the equities between the parties." Id. at 1225, 6 USPQ2d at 2031. Those in privity with the assignor partake of that balance; hence, extension of the estoppel to those in privity is justified. See id. at 1224, 6 USPQ2d at 2030.

What constitutes "privity" varies, depending on the purpose for which privity is asserted. See American Mach. Co. v. Everedy Mach. Co., 35 F.2d 526, 528, 3 USPQ 196, 198 (E.D.Pa.1929) (distinguishing use of privity for estoppel from use of privity for imposition of personal liability); National Cash Register Co. v. Remington Arms Co., 283 Fed. 196, 201 (D.Del.1922), aff'd, 286 Fed. 367 (3d Cir.1923) (distinguishing subordinate in privity with principal from the reverse).

Privity, like the doctrine of assignor estoppel itself, is determined upon a balance of the equities. If an inventor assigns his invention to his employer company A and leaves to join company B, whether company B is in privity and thus bound by the doctrine will depend on the equities dictated by the relationship between the inventor and company B in light of the act of infringement. The closer that relationship, the more the equities will favor applying the doctrine to company B. See, e.g., Douglass v. United States Appliance Corp., 177 F.2d 98, 101, 83 USPQ 41, 42-43 (9th Cir.1949) (no privity between assignor and remote successors in interest); United States Appliance Corp. v. Beauty Shop Supply Co., 121 F.2d 149, 151, 50 USPQ 40, 42-43 (9th Cir.), cert. denied, 314 U.S. 680, 62 S.Ct. 180, 86 L.Ed. 544 (1941) (privity between assignor and co-developer of infringing device with company they formed to advance their interests in infringing device); Stubnitz-Greene Spring Corp. v. Fort Pitt Bedding Co., 110 F.2d 192, 195, 45 USPQ 52, 55 (6th Cir.1940) (privity between assignor and company of which he was principal stockholder, president, and general manager); Buckingham Prods. Co. v. McAleer Mfg. Co., 108 F.2d 192, 195, 44 USPQ 91, 95 (6th Cir.1939) (privity between assignor and corporation over which he had control of policy but lacked voting control); Frick Co. v. Lindsay, 27 F.2d 59, 61 (4th Cir.1928) (wife in privity with husband/partner in business infringing patent); Mellor v. Carroll, 141 F. 992, 993-94 (C.C.D.Mass.1905) (privity between assignor and others who availed themselves of assignor's knowledge and assistance to conduct infringement).

The district court correctly determined that, considering the balance of equities and the relationship of Luniewski and MSI, no genuine issue of material fact exists regarding privity in this case. The undisputed facts are: (1) in July 1983 Luniewski left Shamrock to join MSI as Vice-President in charge of Operations; (2) Luniewski owns 50,000 shares of MSI stock; (3) MSI was formed in 1982 to sterilize surgical instruments and manufacture other medical goods; yet as soon as Luniewski was hired in 1983, MSI built facilities for processing PTFE with radiation; (4) Luniewski oversaw the design and construction of those facilities; (5) Luniewski was hired in part to start up MSI's infringing operations; (6) the decision to begin processing PTFE with radiation was made jointly by Luniewski and the president of MSI; (7) MSI began manufacturing PTFE with radiation in 1985; and (8) Luniewski was in charge of MSI's PTFE operation.

MSI attempts to distinguish Diamond Scientific, citing National Cash Register Co. v. Remington Arms Co., 283 F. 196, 202 (D.Del.1922), aff'd, 286 F. 367 (3d Cir.1923), and Babcock & Wilcox Co. v. Toledo Boiler Works Co., 170 F. 81, 85 (6th Cir.1909), for the proposition that there is no privity between a corporation and a mere employee thereof. However, as above indicated, Luniewski was far more than a mere employee of MSI and the undisputed facts establish MSI's direct involvement of Luniewski in MSI's infringing operations. MSI clearly availed itself of Luniewski's "knowledge and assistance" to conduct infringement. Mellor, 141 F. at 994. The district court committed no error in finding MSI in privity.

Even before making any decision on assignor estoppel, the court must also determine whether privity exists in this case between Google and its employees who assigned patents to Oracle. These are decided on a "balance of the equities." Since these all involve findings of fact, rather than mere findings of law, any motions to dismiss based on these grounds seems premature.

Oracle may have a point about assignor estoppel for one or more of the patents in question, but they'll have to prove it to the court. From their motion, all they know for sure at this point is they believe the inventors work at Google. They've got to show much more than that to make the case for privity.


[ Reply to This | # ]

Assignor estoppel may preclude inventors from testifying on patent validity
Authored by: Anonymous on Wednesday, October 27 2010 @ 03:46 PM EDT

While Oracle may not get Google's claims of patent invalidity thrown out directly because of assignor estoppel, they may be able to prevent any inventors from offering testimony concerning those patents. Here's a case from the Federal Circuit Court of Appeals that shows why.


Inventor’s Testimony

Invoking the doctrine of assignor estoppel, the district court excluded Mr. Young’s testimony. “Assignor estoppel is an equitable doctrine that prevents one who has assigned the rights to a patent (or patent application) from later contending that what was assigned is a nullity.” Diamond Scientific Co. v. Ambico, Inc., 848 F.2d 1220, 1224 (Fed. Cir. 1988). Thus, an assignor and parties in privity with the assignor are estopped or barred from asserting invalidity defenses. Id. In this case, the district court invoked that doctrine to bar an assignor from testifying against the validity of its own patent.

Courts frequently mention four justifications for the doctrine of assignor estoppel: “(1) to prevent unfairness and injustice; (2) to prevent one [from] benefiting from his own wrong; (3) [to adopt the] analogy [of]. . . estoppel by deed in real estate; and (4) [to adopt the] analogy to a landlord-tenant relationship.” Id. (quoting Hal Cooper, Estoppel to Challenge Patent Validity: The Case of Private Good Faith vs. Public Policy, 18 Case W. Res. 1122, 1128 (1967)).

This case relies primarily on the “unfairness and injustice” justification. “[A]n assignor should not be permitted to sell something and later assert that what was sold is worthless, all to the detriment of the assignee.” Diamond, 848 F.2d at 1224. “The principle of fair dealing as between assignor and assignee of a patent whereby the assignor will not be allowed to say that what he has sold as a patent was not a patent has been part of the fabric of our law throughout the life of this nation.” Id. (quoting Scott Paper Co. v. Marcalus Mfg. Co., 326 U.S. 249, 260 (Frankfurter, J., dissenting)). Thus, assignor estoppel prevents an assignor from asserting that its own patent, for which it may have received value upon assignment, is invalid and worthless. The district court properly excluded Mr. Young’s testimony on this basis.


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Authored by: Anonymous on Wednesday, October 27 2010 @ 03:46 PM EDT

I'll have to agree with P.J. that this reeks of BSF's style. Whether it was BSF or just a style that's in use by other attorneys I can't say.

The patents are presumed to be valid by statute.
Just.... Wow! They effectively say:
    Please don't give a Jury an opportunity that the Public - represented by the Jury - rightfully has to invalidate a patent. Just accept that the USPTO stamped them as valid and never let that be questioned.
I guess they don't like the success rate the FLOSS community has had over the last couple years of getting both Courts and the USPTO to re-examine patents for invalidity. They might just as well have added:
    And if we win, don't allow an appeal to occur!
Now that I think of it, that's right up there with the recent comment by a Judge pertaining to the fact that:
...if I had magical powers as a judge on the federal circuit, I would arrange to have Federal Circuit patent decisions not reviewable anywhere else...
I guess that particular Judge doesn't agree with why checks and balances are built into the system so you have a couple chances to prove your case. Perhaps Oracle is hoping they have a Judge with a similar opinion on patents.

Note: the link is to the original article on Mr. Quinn's blog.


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  • Wow! - Authored by: Anonymous on Thursday, October 28 2010 @ 09:23 AM EDT
Oracle Files Motion to Strike Google's Answer, Some Counterclaims
Authored by: Anonymous on Wednesday, October 27 2010 @ 04:11 PM EDT
I wonder if Oracle will sue any major company that distributes LibreOffice. It
would not suprise me. Who will Oracle sue next?

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Why is this silly?
Authored by: Anonymous on Wednesday, October 27 2010 @ 04:20 PM EDT

It's asking to remove all the materials about how beneficial open source is compared to closed.

That sounds perfectly reasonable to me, because although it may all be informative and true, it has nothing to do with the validity or applicability of the patents. So it has no bearing on this case.

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Maybe the goal is not to win...
Authored by: Anonymous on Wednesday, October 27 2010 @ 05:20 PM EDT
...but to simply drag this out as long as possible. And we all know just how
long that can be when the parties argue over every sentence in every motion.

Delay works to Oracle's advantage. There is value in merely keeping Android
under a cloud: every day the machine keeps spewing fog, Android's momentum drops
a bit, and pay to play looks better and better.

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Google: Idiots using java as Dalvik template
Authored by: Anonymous on Thursday, October 28 2010 @ 01:45 AM EDT

I always thought Google developer's were idiots for using Java as the path to Dalvik. They should have used GTK and Python. There are no patent uncertainties there. Performance is similar. Learning curve smaller. What's not to like?

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Who inside Oracle pushed for the lawsuit?
Authored by: SpaceLifeForm on Thursday, October 28 2010 @ 02:07 AM EDT
And what connections do they have to Microsoft?

Connect the dots.

Follow the moles, they leave trails.

Killing Java is what the darkside wants to replace with
some other junk that is tied to mono.


You are being MICROattacked, from various angles, in a SOFT manner.

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Shunning Oracle USA and their products
Authored by: Ian Al on Thursday, October 28 2010 @ 04:09 AM EDT
I can see why the community will drop java like a hot rock. Oracle USA have
generated their own FUD about their own products. I suspect the uncertainty will
also affect companies that Oracle USA have had no dispute with, yet.

Those software patents are not trivial like the Paul Allen patents. They are,
also, not specifically Java. They can be used to attack all sorts of software
and not just software using virtual machines.

We know that, when companies like Microsoft, SCO and Oracle destroy their
business with unwarranted legal or commercial attacks, they continue to damage
the whole IT business until they are truly dead and buried.

Oracle USA's keenness to use any underhand trick to avoid invalidating the
patents seems to me to signal an intent to attack other companies with these
patents and, perhaps, developers and users as well.

Ian Al
SCOG, what ever happened to them? Whatever, it was less than they deserve.

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A new arrow for non-practicing entities?
Authored by: jpvlsmv on Thursday, October 28 2010 @ 09:58 AM EDT
So if the doctrine of assignor estoppel applies like Oracle asserts that it
does, can you imagine how powerful this would be for patent trolls?

Imagine for example if i4i had been able to show that Microsoft was estopped
from asserting infringement of their patents. Or Bilski?

Business people move around a lot, almost as fast as innovative business
processes*, and if this is really such a big hammer (eliminating the defense of
invalidity) then I'd imagine we'll be seeing a lot more of it.

* Hmm, I wonder if there's a connection between business people moving around
and innovative business practices moving with them. Ya think?

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Google is wrong for subverting JAVA
Authored by: Anonymous on Thursday, October 28 2010 @ 10:19 AM EDT
Google is wrong for subverting JAVA.

JAVA was only open for the desktop.
JAVA is proprietary when it comes to mobile use.

Google tried to get around this by using JAVA but not calling it JAVA.

I'm siding with Oracle in this lawsuit.

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Oracle Files Motion to Strike Google's Answer, Some Counterclaims
Authored by: Anonymous on Thursday, October 28 2010 @ 11:50 AM EDT
Couldn't have said it better, myself. Larry doesn't have a clue. Buying Sun
didn't help and this pointless lawsuit won't help either.

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Oracle = irrational greed
Authored by: Anonymous on Saturday, October 30 2010 @ 11:23 AM EDT
Oracle must be irrationally greedy and stupid, which explains this action,
including their poor support of for their products e.g. They only offer better
(but inferior) authentication in JDBC (Java database) drivers, for the paid for
Oracle database version, not for the free XE version, whereas Microsoft SQL
Server has full support for security, even for the free versions. This example
is a significant problem because it makes it much harder to securely meet
PCI-DSS requirements for retail systems!

Oracle need to wake up and realise that too much greed will push people to their
competition e.g. Microsoft SQL Server and PostgreSQL (the later being OSS and
having a Oracle compatibility mode).

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