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.
Filed & Entered: 09/02/2011
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)
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
ORACLE AMERICA, INC.
CASE NO. CV 10-03561 WHA (DMR)
STIPULATION AND [PROPOSED]
ORDER REGARDING ORACLE
AFFIRMATIVE DEFENSE –
Judge: Honorable William H. Alsup
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.
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.
The foregoing stipulation is approved, and IT IS SO ORDERED.
Honorable William H. Alsup
Judge of the United States District Court