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Some Observations on Oracle v. Google, by Mark Webbink, Esq.
Wednesday, May 11 2011 @ 07:12 PM EDT

Some Observations on Oracle v. Google,
~ by Mark Webbink, Esq.

Before reviewing the status of the lawsuit and the claims interpretation, a quick word on how the parties got to the point of a lawsuit. This was not a shot that caught Google off guard. Oracle and Google had been in discussions for months prior to this lawsuit over a license that would have permitted Google to move forward. Word is that the companies had all but reached agreement, but when the Google negotiators sent the proposal up the ladder for final approval, it got nixed at the very highest levels within Google. The fact that the two companies would have gotten that far and then failed to close the deal should not be interpreted against either company. Oracle had its reasons for seeking a license arrangement; Google had its for rejecting the arrangement. But when Google rejected the arrangement, they had to have known the lawsuit was coming.

Back up for a second to Sun before Oracle. Sun's licensing arrangements around Java have always been complex. While licensees were well aware that Sun had patents related to Java, those patents were rarely, if ever, mentioned. There was no need to mention them. If you agreed to Sun's licensing structure that would permit you to create your own version of Java, that could pass the test suite, and you could call Java, then Sun threw the patents in for free. Various open versions for Java, including jBoss, have been subject to this arrangement. You can see some of this structure in paragraphs 10 and 11 of Oracle's Reply [PDF] to defendant Google Inc.'s Amended Counterclaims.

Google believed (and believes) it avoided this licensing structure by implementing a clean room version of the Java runtime. The problem with clean rooms is that, while they may help avoid copyright claims, they are not particularly helpful in avoiding patent claims -- the ol' two-edge sword of software. So if you are going to develop a new implementation of something like the Java run-time environment, you have to not only use a clean room in order to avoid copyright claims, you also have to work around any relevant patents (and this doesn't require a clean room). Suffice it to say that the approach Google has taken has some potential holes in it with respect to patents. Of course, Google believes the Oracle patents are either invalid or not infringed in this instance. [Editorial aside – none of this commentary is intended to imply that patents are a good thing for software; in the eyes of this writer they clearly are not.]

One other thing to mention with respect to the copyright claims Oracle has asserted, some technical interpretations imply that Google's Dalvik merely recompiles Java classes into the Dalvik format. If that is true, then such recompilations could be construed as a derivative work, but let's not go too far down that path at this point. The patent claims Oracle has asserted are far more important than the copyright claims.

So let's turn to the claims construction as it is moving through the court. First, the parties agreed on the interpretation of a number of key terms in the stipulation [PDF] they filed on February 22nd. Stipulated interpretations include:

function;

machine instruction;

native machine instruction/native instruction;

virtual machine instructions [these first five all relating solely to the '205 patent];

a processor, a memory a class preloader . . .;

and a processor, a memory means for executing . . . [these last two all relating solely to the '720 patent].

Definitions in dispute were/are:
resolve / resolving (‘104 patent);

computer-readable medium (‘104, ‘447, ‘476, and ‘520 patents) / computer usable medium (‘702 patent) / computer-readable storage medium (‘720 patent);

intermediate form code / intermediate form object code (‘104 patent);

the play executing step (‘520 patent);

reduced class file (‘702 patent);

and symbolic (data/field) reference (‘104 patent).

In his tentative claim construction order [PDF] dated April 28, Judge Alsup proposed definitions for each of these terms. Oracle and Google have now responded (Groklaw documents 132 [PDF] and 135 [PDF]). The parties seem to largely accept the court's definitions, with the exception of the last term “symbolic (date/field) reference,” to which Oracle objects on grounds that the court's interpretation is limited to dynamic referencing, while Oracle believes the definition should include both static and dynamic referencing. At the same time, Google seeks to preserve its assertion of invalidity with respect to claims relying on some of these definitions.

The final action to date is a proposed order [PDF] issued May 3rd by Judge Alsup seeking to streamline the case by concentrating on those claims of greatest import. Judge Alsup proposes this be done in a series of step-downs, starting with all 132 claims asserted by Oracle and all of Google's prior art references on which Google intends to rely. At the end of the step-downs, Oracle will be limited to asserting only three claims at trial (presumably those three it believes most greatly substantiate Google's infringement and most capable of surviving an invalidity challenge). At the same time, Google would be limited in the end to just eight prior art references with which to defeat those three claims. Not surprisingly, Google is thrilled with this approach (Groklaw document 134 [PDF]) while Oracle argues that it will be deprived of substantial due process and appropriate remedy by the approach (Groklaw document 133 [PDF]).

In addition to suggesting this streamlined approach to the trial (presently slated to commence October 31, 2011), Judge Alsup asked each party its opinion of waiting until all of the patents have cleared reexamination (two of the patents, '720 and '205 are in inter partes reexamination while all of the remainder are in ex parte reexamination). As both Google and Oracle point out in their responses, it is likely to be three years or more before the reexaminations are all complete. Oracle concedes that, depending on what happens in reexamination, the reexaminations may moot the issues at trial. Google is more emphatic. It points to the high probability (rising to the level of almost a virtual certainty) that all of the claims in all of the patents will be narrowed to some extent in reexamination and that waiting until the results of those reexaminations are known will in all likelihood moot the trial issues before the court.

It will certainly be interesting to see how Judge Alsup resolves these issues over the next days.


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