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.

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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, 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

Date:

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