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Oracle v. Google - Google Knocks Another (Minor) Chip Out of Oracle
Monday, September 05 2011 @ 08:00 AM EDT

Two weeks ago Google won the right to file a motion for summary judgment on Oracle's affirmative defense of assignor estoppel. As we explained at that time, Oracle was arguing that, since Google now employs some of the named inventors in the patents Oracle is asserting against Google, Google should be precluded from challenging the validity of those patents.

Oracle has now decided to throw in the towel on that defense by agreeing to stipulate to its dismissal with prejudice, i.e., they cannot reassert this defense again in this case. 387 [PDF] This is not that big a deal. There was almost no chance that Oracle was going to be successful with the assignor estoppel defense (their attempt to apply it in this case went far beyond anything any court has allowed). Nevertheless, it knocks one more issue off the table. Note that the dismissal with prejudice on this defense is not final until the judge enters the order, but given the parties have agreed to the stipulation, that is a mere formality.

Editorial Comment: With this stipulation essentially in place, I would like to make a few observations about this whole concept of former employees, assignor estoppel, and willful infringement. Despite what some are speculating, whether the employer/infringer is Google, Apple, Oracle, Microsoft, or whoever, the simple fact that someone worked in an area of technology with their old employer (the plaintiff) is simply not a sufficient nexus to support either an assignor estoppel defense or a finding of willful infringement. You need far more than that, and far more than that has yet to be established in the instant case (Oracle v. Google). It would be nice, for a change, if the prophets of doom for Android would focus on what has been proven (or not proven) instead of speculating on hypothetical outcomes.

***********

Docket

387 - Filed & Entered: 09/02/2011
Stipulation
Docket Text: STIPULATION and [Proposed] Order Regarding Oracle America, Inc.'s First Affirmative Defense-Assignor Estoppel by Google Inc.. (Kamber, Matthias) (Filed on 9/2/2011)
**************

Document

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

ORACLE AMERICA, INC.
Plaintiff,
v.
GOOGLE INC.
Defendant.

CASE NO. CV 10-03561 WHA (DMR)

STIPULATION AND [PROPOSED] ORDER REGARDING ORACLE AMERICA, INC.’S
FIRST AFFIRMATIVE DEFENSE – ASSIGNOR ESTOPPEL

Judge: Honorable William H. Alsup

STIPULATION

WHEREAS, Oracle in its Amended Complaint alleged that “Android (including without limitation the Dalvik VM and the Android software development kit) and devices that operate Android infringe one or more claims of each of United States Patents Nos. 6,125,447; 6,192,476; 5,966,702; 7,426,720; RE38,104; 6,910,205” (Dkt. No. 36);

WHEREAS, Google in its Answer to Oracle’s Amended Complaint and Amended Counterclaims alleged the invalidity of the seven patents-in-suit (Dkt. No. 51);

WHEREAS, Oracle in its Answer to Google’s Amended Counterclaims alleged that the doctrine of assignor estoppel barred Google’s assertion of invalidity based on Google’s employment of and being in privity with some of the inventors of the seven patents-in-suit (Dkt. No. 60);

WHEREAS, Google filed a précis letter seeking leave of the Court to file a motion for partial summary judgment on Oracle America, Inc.’s First Affirmative Defense of assignor estoppel (Dkt. No. 309);

WHEREAS, evidence obtained in discovery taken to date shows that Google employs or has employed James Gosling, named inventor of U.S. Reissue Patent No. RE38,104; Frank Yellin, a named inventor of U.S. Patent No. 6,061,520; and Lars Bak and Robert Greisemer, named inventors of U.S. Patent No. 6,910,205;

WHEREAS, based on evidence obtained in discovery taken to date, it appears that none of James Gosling, Frank Yellin, Lars Bak, and Robert Greisemer are an executive, officer, or substantial shareholder of Google and that none provided substantial “knowledge and assistance to develop any aspects of the accused Dalvik Virtual Machine or of the Android SDK that allegedly infringe the patents that those inventors assigned to Sun,” as Google wrote in its précis letter;

WHEREAS, Google argued in its précis letter that “[a]ssignor estoppel would be appropriate only if Google’s alleged infringement depended upon the engineers’ knowledge and assistance;”

WHEREAS, the Court granted Google leave to file a motion for partial summary judgment on plaintiff’s affirmative defense of assignor estoppel, but also noted that “Plaintiff’s counsel remain free to negotiate a stipulated resolution of this issue.” (Dkt. No. 325.)

NOW THEREFORE THE PARTIES HEREBY STIPULATE AND AGREE that:

1. Oracle’s First Affirmative Defense (Assignor Estoppel) as against Google Inc. shall be dismissed with prejudice.

ORDER

The foregoing stipulation is approved, and IT IS SO ORDERED.

Date:

Honorable William H. Alsup
Judge of the United States District Court


  


Oracle v. Google - Google Knocks Another (Minor) Chip Out of Oracle | 85 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Corrections
Authored by: Kilz on Monday, September 05 2011 @ 08:04 AM EDT
Please point out the issue in the title of you post.

[ Reply to This | # ]

Off Topic
Authored by: Kilz on Monday, September 05 2011 @ 08:05 AM EDT
For all posts that are not on topic.

[ Reply to This | # ]

Newspicks
Authored by: Kilz on Monday, September 05 2011 @ 08:06 AM EDT
Please mention the name of the news story in the title of
your post.

[ Reply to This | # ]

COMES
Authored by: stegu on Monday, September 05 2011 @ 08:33 AM EDT
Please keep them coming. We're getting there.
(If you wonder what this thread is about,
please have a look at the COMES link to
the far left on the main page.)

[ Reply to This | # ]

If you work in tech, this would have been scary precedent
Authored by: Anonymous on Monday, September 05 2011 @ 09:00 AM EDT
As a technology worker, I'm very gratified to see this knocked out, mostly
because of the absolute chaos it would create for tech hiring (and my future
prospects) if this had been recognized by the court as a valid legal theory.

If this theory was accepted, I can't imagine any tech company hiring a new
employee without first asking for all the patents they've been a named inventor
on. Then the company would have to run every patent by legal and ask "is
there any way we'd ever have a need to challenge this in court?" and get a
decision before agreeing to hire. And since so many patents are so broad, the
answer might well be "sorry--we can't agree to never challenge that."
Thank you for your interest.

I have a hard time seeing anyone who's a named inventor on pretty much anything
having an easy career transition again.

Though I suppose, as a way to discourage software patents, having developers
shout back "hell, no!" when the company lawyer suggests they patent
their invention would be an interesting way to accomplish it...

[ Reply to This | # ]

We all wish...
Authored by: stegu on Monday, September 05 2011 @ 09:15 AM EDT
> It would be nice, for a change, if the prophets of doom
> for Android would focus on what has been proven (or not
> proven) instead of speculating on hypothetical outcomes.

If they did that, they would not find any doomsday
angles for their reports. I think we need to realize
that there are many people out there who have absolutely
no intention to report in an accurate, balanced manner
about this.

[ Reply to This | # ]

Oracle v. Google - Google Knocks Another (Minor) Chip Out of Oracle
Authored by: Anonymous on Monday, September 05 2011 @ 10:06 AM EDT
Oracle's request seems truly bizarre to me. Whether a patent is valid or invalid
most certainly depends on the contents of the patents, not on who is currently
employing the named inventor. There _might_ be an argument that if I have a
patent to my name, I sell it to you, and then turn around and try to invalidate
it,
then I might have done something not entirely honest somewhere along the
way.
But that wouldn't affect whether the patent is valid or invalid.

[ Reply to This | # ]

The named inventor
Authored by: cricketjeff on Monday, September 05 2011 @ 11:33 AM EDT
Probably has a much more powerful weapon in a patent case than the courts ...

Dear Patent Office
I (Ian Ventor ex employee of T.R.Olls) would like my name removed from the
patent, I only agreed to agreed to submit the patent in its current form under
threat of losing employment, I do not believe, not did I ever believe there is
any original thought behind it ...

Now you could be sued by your ex-employer for slander, for fraud (possibly) and
by the patent office for perjury, but they are all pretty unlikely and in any
case it would be bloody tricky for the patent office to ignore such a statement!

---
There is nothing in life that doesn't look better after a good cup of tea.

[ Reply to This | # ]

Dismissed with prejudice...
Authored by: Anonymous on Monday, September 05 2011 @ 01:11 PM EDT
...what exactly does that mean in this context? Does it mean
Google gets to ask for court costs for defending itself from
this little ruse?

Gringo

[ Reply to This | # ]

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