Last week we began a tracking table on the various reexaminations filed on the patents that Oracle has asserted against Google in their dispute over JAVA-like code included in the Android operating system. Another office action [PDF] has been issued by the USPTO, this one on the '520 patent, and in this instance Oracle fared a little better. Out of 22 claims subject to reexamination, only eight were rejected.
Updating our table, below,
| Patent No. | Claims | Claims Not Subject to Reexam | Claims Subject to Reexam | Claims Rejected | Claims Surviving |
|---|
| RE38104 | 41 | 10 | 31 | 0 | 41 |
| 5966702 | 23 | 14 | 9 | 9 | 14 |
| 6061520 | 23 | 1 | 22 | 8 | 15 |
| 6125447 | 24 | 0 | 24 | 0 | 24 |
| 6192476 | 21 | 0 | 21 | 17 | 4 |
| 6910205 | 14 | 9 | 5 | 0 | 14 |
| 7426720 | 22 | 2 | 20 | 20 | 2 |
| Totals | 168 | 36 | 132 | 54 | 114 |
We are still awaiting first office actions in three of the cases. In the four cases where an office action has issued the stats are 89 claims, 17 claims not subject to reexam, 72 claims subject to reexam, 54 claims rejected, and 35 claims surviving. Because of the more favorable treatment of the Oracle claims in the most recent office action, the percentage of claims subject to reexamination that have been rejected has now dropped to 75%. If that stat holds for the remaining three patents, Oracle will have about 72 claims out of 168 that survive.
This is a good time to address a question that a number of you have posed with respect to surviving dependent claims, since most of what appears to be claimed in a dependent claim appears to be of limited scope. If a dependent claim survives, you need to read it in its entirety, incorporating the language from the independent claim to which it refers. For example:
You have an independent claim and a dependent claim, as follows (these claims are taken from Oracle's '520 patent):
6. A method in a data processing system, comprising the steps of: receiving code to be run on a processing component to perform an operation;
play executing the code without running the code on the processing component to identify the operation if the code were run by the processing component; and creating an instruction for the processing component to perform the operation.
. . .
8. The method of claim 6 wherein the operation statically initializes an array and wherein the play executing step includes the step of: play executing the code to identify the static initialization of the array.
Claim 6, an independent claim, was rejected in the first office action, but Claim 8, has survived. If the examiner's determination were to stand, how should one read Claim 8? It should be read as follows:
8. A method in a data processing system, comprising the steps of: receiving code to be run on a processing component to perform an operation;
play executing the code without running the code on the processing component to identify the operation if the code were run by the processing component; and creating an instruction for the processing component to perform the operation, wherein the operation statically initializes an array and wherein the play executing step includes the step of: play executing the code to identify the static initialization of the array.
Well, that seems like the patentee has retained Claim 6 despite the fact that Claim 6 was rejected. But, remember, in order to be infringed each and every element of the claim must be found in the allegedly infringing method. By combining Claims 6 and 8 the limitations of Claim 8 are imposed on Claim 6, significantly narrowing the scope of Claim 6 to just those cases that incorporate the limitations of former Claim 8.
This is part of the significant effect of a reexamination. Patent applicants almost always parse the elements of their claimed inventions to claim as broadly as possible in the independent claims, only reflecting the narrowing of those claims in subsequent dependent claims. Frequently, upon reexamination, the examiner will find that the more broadly claimed invention was either not novel or obvious, but that the more limited form (imposing the limitation of the dependent claim on the independent claim) provides a more limited inventive step that is, at least in the eyes of the law and the USPTO, patentable.
So don't expect Oracle (or Interval Licensing or Lodsys) to lose all of the claims that are rejected in a first office action, but watch to see how the independent claims in those patents are narrowed in scope.
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