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To read comments to this article, go here
Oracle v. Google - Section 271(f) and Why It Is Important
Monday, September 12 2011 @ 11:00 AM EDT

As we relayed in an earlier story, Google was granted the right to move forward with a motion for summary judgment on the application of 35 U.S.C. § 271(f). From that earlier story:

§ 271(f) is the section of the Patent Act dealing with the export of components of an infringing product. In an important ruling for software companies several years ago the Supreme Court held in Microsoft v. AT&T that, where infringement requires the operation of the software on a computer and that software is loaded onto the computer outside the U.S. from a golden master disk shipped from the U.S., § 271(f) does not apply. Essentially, a ruling in favor of Google on this issue would exclude all non-U.S. sales from the reach of Oracle's patent infringement allegations. If Google is ultimately successful on its motion for summary judgment on this issue, they will substantially limit any exposure they may have for damages.


If you would like to understand more about Sec. 271(f) and the decision in Microsoft v. AT&T, we covered that here.

Google now presents the motion and its brief in support of the motion 409 [PDF] along with a supporting declaration from Patrick Brady. 409-1 [PDF]

To be clear, in this motion Google is not asserting that it is not liable for patent infringement "within the United States," only that the loading of Android onto devices outside the United States and any subsequent use of those devices outside the United States is excluded from the patent infringement claims. Some folks covering this case don't seem to understand that distinction. (See, From Courthouse News: Google Claims Copied Code Means No Infringement) Success on this motion does not do away with all the patent infringement claims, only claims directed to the "making, using, selling, offer for selling, or importing (into the United States)" outside of the United States. Any foreign-manufactured Android devices that are subsequently imported into the United States would still factor into the damage claims as would any U.S.-manufactured Android devices that are later exported from the United States.

Oracle has yet to file its response to this motion, and it will be interesting to see if and how they challenge it. Will they draw a distinction between what Microsoft did (export a single gold master disk of the software to the foreign manufacturer from which copies were made) with what Google is doing (making the software available to the manufacturers from a download site on the Internet)? Will Oracle dispute Google's assertion that no infringement occurs until the software is loaded onto a device (the "activating medium")? In any case, if Google is successful on this motion, the damages (using restaurant guide terminology) likely goes from

$$$$$

to

$$


******************

Documents

409

KEKER & VAN NEST LLP
ROBERT A. VAN NEST - #84065
[email]
CHRISTA M. ANDERSON - #184325
[email]
[address, phone, fax]

KING & SPALDING LLP
SCOTT T. WEINGAERTNER (Pro Hac Vice)
[email]
ROBERT F. PERRY
[email]
BRUCE W. BABER (Pro Hac Vice)
[address, phone, fax]

KING & SPALDING LLP
DONALD F. ZIMMER, JR. - #112279
[email]
CHERYL A. SABNIS - #224323
[email]
[address, phone, fax]

IAN C. BALLON - #141819
[email]
HEATHER MEEKER - #172148
GREENBERG TRAURIG, LLP

Attorneys for Defendant
GOOGLE INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

_________________

ORACLE AMERICA, INC.,

Plaintiff,

v.

GOOGLE INC.,

Defendant.

___________________

Case No. 3:10-cv-03561-WHA

MOTION FOR PARTIAL SUMMARY
JUDGMENT AND/OR SUMMARY
ADJUDICATION RE: GOOGLE'S NON-
LIABILITY UNDER 35 U.S.C. § 271(f)

Hearing Date: October 13, 2011
Time of Hearing: 8 a.m.
Judge: Hon. William Alsup

Date Comp. Filed: October 27, 2010
Trial Date: October 31, 2011

NOTICE OF MOTION AND MOTION. Notice is hereby given to plaintiff Oracle America, Inc. (“Oracle”) and to its attorneys of record that on October 13, 2011 at 8 a.m., or as soon thereafter as counsel may be heard by the above-entitled Court, defendant Google Inc. (“Google”) will and hereby does move the Court for partial summary judgment and/or summary adjudication on the ground that Google is entitled as a matter of law to a judgment that Google is not liable to Oracle under 35 U.S.C. § 271(f) with respect to any patent-infringement claim asserted in this action. The hearing will take place in Courtroom 9 on the Nineteenth Floor of the Courthouse at 450 Golden Gate Avenue, San Francisco, California. This motion is based upon this Notice of Motion and Motion, the accompanying Memorandum of Points and Authorities, the Declaration of Patrick Brady, all pleadings and papers on file in this action, and upon such other matters as may be presented to the Court at the time of the hearing.

STATEMENT OF RELIEF SOUGHT. Google seeks an order granting partial summary judgment and/or adjudication that Google is not liable to Oracle under 35 U.S.C. § 271(f) with respect to any patent-infringement claim asserted in this action.

BRIEF IN SUPPORT OF MOTION

I. INTRODUCTION AND ISSUE TO BE DECIDED

The United States Supreme Court held in Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007), that extraterritorial patent-infringement liability does not arise under 35 U.S.C. § 271(f) where allegedly infringing software, supplied from the United States to foreign device manufacturers, must be copied by those manufacturers before it can be loaded onto their manufactured devices. It is undisputed that Google furnishes Android software to foreign device makers by one method only: by making it available for download from the Internet. Downloading the software necessarily requires the foreign manufacturer to copy it. Thus, the copy that is loaded into the foreign-made device is not supplied from the United States by Google, and, as a matter of law, Google cannot be held liable for infringing Oracle’s patents under § 271(f).

Accordingly, the Court should grant partial summary judgment and/or adjudication that Google is not liable to Oracle under 35 U.S.C. § 271(f) with respect to any patent-infringement

1

claim asserted in this action.

II. STATEMENT OF UNDISPUTED, MATERIAL FACTS

The undisputed facts supporting this motion are contained in the accompanying Declaration of Patrick Brady. Mr. Brady is the Director of Google’s Android Partner Engineering Team (the “Partner Team”).1 Mr. Brady declares that the following facts are true:
  • The Partner Team is responsible for Android partnerships with mobile handset and tablet- computer manufacturers, silicon vendors, and mobile network operators.2

  • In 2007, the Partner Team developed a process for sharing Android source code — developed and open-sourced by Google and the Open Handset Alliance — with third parties, including device manufacturers. Under this process, Google uploads and makes available Android source code to foreign device manufacturers over the Internet via source-code servers. This is the only process that Google has used to make Android source code available to foreign device manufacturers.3 Google has not made Android source code available to foreign device manufacturers on any physical medium.4

  • Also in 2007, the Partner Team developed a process for sharing Android binary code with third parties, including device manufacturers. Under this process, Google uploads Android binary code to servers and makes the binary code available to foreign device manufacturers over the Internet. This is the only process that Google has used to make Android binary code available to foreign device manufacturers.5 Google has not made Android binary code available to foreign device manufacturers on any

    2

    physical medium.6
  • Foreign device manufacturers obtain Android by downloading the code from the previously described servers. Downloading the code necessarily involves copying it— otherwise the code would disappear from the website after the first download. Thus, foreign device manufacturers have to copy Android code before loading it onto their devices.7
  • Android code does not become functional until it is loaded onto a physical device.8

III. ARGUMENT

A. Under the rule in Microsoft Corp. v. AT&T, Google cannot be held liable under 35
U.S.C. § 271(f), because foreign device manufacturers must copy Android software
before they can load it on their devices.

“It is a longstanding principle of American law that legislation of Congress, unless a contrary intent appears, is meant to apply only within the territorial jurisdiction of the United States.” Morrison v. Nat’l Australia Bank Ltd., 130 S. Ct. 2869, 2877 (2010) (citations and internal quotation marks omitted). “When a statute gives no clear indication of an extraterritorial application, it has none”9 — and, conversely, “when a statute provides for some extraterritorial application, the presumption against extraterritoriality operates to limit that provision to its terms.” Id. at 2883. This is the essence of the Supreme Court’s decision in Microsoft, which applied the presumption against extraterritoriality to 35 U.S.C. § 271(f). Under the rule in Microsoft, there can be no section 271(f) liability in the present case.

In Microsoft, the Supreme Court began its analysis by observing that “[i]t is the general rule under United States patent law that no infringement occurs when a patented product is made and sold in another country.” Microsoft, 550 U.S. at 441. There is an “exception” however, in section 271(f), which provides that infringement does occur “when one ‘supplies . . . from the United States,’ for ‘combination’ abroad, a patented invention’s ‘components.’” Id. (quoting 35

3

U.S.C. § 271(f)(1)).10 “Recognizing that § 271(f) is an exception to the general rule that our patent law does not apply extraterritorially,” the Supreme Court has “resist[ed] giving the language in which Congress cast § 271(f) an expansive interpretation.” Microsoft, 550 U.S. at 442.

Adhering to its narrow reading of the section 271(f) exception, the Supreme Court held in Microsoft that a party does not infringe section 271(f) by supplying from the United States software that must be copied abroad by a foreign manufacturer before it can be loaded onto that manufacturer’s hardware. See Microsoft, 550 U.S. at 449-54. The Supreme Court reasoned that, “[b]ecause Microsoft does not export from the United States the copies actually installed, it does not ‘suppl[y] . . . . from the United States’ ‘components’ of the relevant computers, and therefore is not liable under § 271(f) as currently written.” Id. at 442.

In Microsoft, AT&T alleged that Microsoft’s Windows operating system, when installed on a computer, enabled that computer to digitally encode and compress human speech in the manner claimed by AT&T’s patent. Id. at 441-42. Microsoft supplied Windows to foreign manufacturers by sending each of them a “master version . . . , either on a disk or via encrypted electronic transmission.” Id. at 445. The foreign manufacturer then used the master version to

4

generate copies, and “[t]hose copies, not the master sent by Microsoft, [were] installed on the foreign manufacturer’s computers.” Id.

The Supreme Court parsed the statute, noting that it “applies to the supply abroad of the ‘components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components.’” Id. at 449 (emphases in original) (quoting 35 U.S.C. § 271(f)(1)). Congress’s use of the phrase “such components” showed that “the very components supplied from the United States, and not copies thereof, trigger § 271(f) liability when combined abroad to form the patented invention at issue.” Microsoft, 550 U.S. at 453 (emphases added).

Applying this interpretation to the facts before it, the Supreme Court observed that “Windows software—indeed any software detached from an activating medium—remains uncombinable” “[u]ntil it is expressed as a computer-readable ‘copy,’ e.g., on a CD-ROM.” Id. at 449. Prior to that time, “[i]t cannot be inserted into a CD-ROM drive or downloaded from the Internet; it cannot be installed or executed on a computer. Abstract software code is an idea without physical embodiment, and as such, it does not match § 271(f)’s categorization: ‘components’ amenable to ‘combination.’” Id. It is the “extra step” of “encod[ing] software’s instructions onto a medium that can be read by a computer” that “renders the software a usable, combinable part of a computer.” Id. at 451. “Here,” however, “the copies of Windows actually installed on the foreign computers were not themselves supplied from the United States. Indeed, those copies did not exist until they were generated by third parties outside the United States.” Id. at 453. “Without stretching § 271(f) beyond the text Congress composed, a copy made entirely abroad does not fit the description ‘supplie[d] . . . from the United States.’” Id. at 454 n.15 (quoting 35 U.S.C. § 271(f)(1)).11

Finally, the Supreme Court observed that “[a]ny doubt that Microsoft’s conduct falls outside § 271(f)’s compass would be resolved by the presumption against [the] extraterritoriality” of U.S. patent laws. Microsoft, 550 U.S. at 454. The Supreme Court’s

5

holding in Microsoft “sent a clear message that the territorial limits of patents should not be lightly breached.” Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 576 F.3d 1348, 1362 (Fed. Cir. 2009), cert. denied, 130 S. Ct. 1088 (2010).

Applying the teachings of Microsoft to this case yields the straightforward conclusion that Google cannot, as a matter of law, be held liable under § 271(f) for the conduct alleged by Oracle. Android software—like Microsoft Windows and “any [other] software detached from an activating medium”12—remains a mere “idea without physical embodiment”13 and not a combinable “component” until it is “expressed as a computer-readable ‘copy.’” Google has only one method of supplying Android software to foreign manufacturers of such devices: by making the software available for download from certain servers.14 And downloading software from a server necessarily copies it—otherwise it would disappear from the server after the first download. Thus, foreign device manufacturers are required to copy Android software before loading it onto the devices they manufacture.15

Accordingly, just as in Microsoft, “the copies of [Android] actually installed on” foreign-made devices are “not themselves supplied from the United States. Indeed, those copies did not exist until they were generated by third parties outside the United States.” Microsoft, 550 U.S. at 453. And “a copy made entirely abroad does not fit the description ‘supplie[d] . . . from the United States.’” Id. at 454 n.15 (quoting 35 U.S.C. § 271(f)(1)).

Because foreign manufacturers must copy Android software before loading it onto their devices, the copy that is “combined” with the foreign-made device is not supplied from the United States by Google. Accordingly, § 271(f)’s narrow exception to the presumption against extraterritoriality does not apply here, and Google cannot be held liable under that exception. Accordingly, the Court should grant Google’s motion for summary judgment.

6

IV. CONCLUSION

For all the reasons stated above, the Court should grant partial summary judgment or adjudication that Google is not liable to Oracle under 35 U.S.C. § 271(f) with respect to any patent-infringement claim asserted in this action.

Dated: September 8, 2011

Respectfully submitted,

KEKER & VAN NEST LLP

By: s/ Robert A. Van Nest
ROBERT A. VAN NEST
Attorneys for Defendant
GOOGLE INC.

______________________
1 Declaration of Patrick Brady in Support of Defendant Google Inc.’s Motion for Summary Judgment and/or Summary Adjudication Re: Google’s Non-Liability under 35 U.S.C. § 271(f) (“Brady Decl.”), ¶ 1. Mr. Brady also is Google’s Rule 30(b)(6) designee in this action on selected topics relating to Android, and was deposed in that capacity earlier this year. Id., ¶ 1.

2 Brady Decl., ¶ 3.

3 Brady Decl., ¶ 4.

4 Brady Decl., ¶ 5.

5 Brady Decl., ¶ 6.

6 Brady Decl., ¶ 7.

7 Brady Decl., ¶ 8.

8 Brady Decl., ¶ 9.

9 Morrison, 130 S. Ct. at 2878.

10 Section 271 (f) states:

(1) Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

(2) Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

Emphases added.

11 The Court noted that its analysis, “while focusing on § 271(f)(1), is equally applicable to § 271(f)(2),” which “like [paragraph] (1), covers only a ‘component’ amenable to ‘combination.’” Microsoft, 550 U.S. at 454 n.16.

12 Microsoft, 550 U.S. at 449.

13 Id.

14 Brady Decl., ¶ 4.

15 Brady Decl., ¶ 8.

7




409-1

KEKER & VAN NEST LLP
ROBERT A. VAN NEST - #84065
. [email]
CHRISTA M. ANDERSON - #184325
[email]
[address, phone, fax]

KING & SPALDING LLP
SCOTT T. WEINGAERTNER (Pro Hac Vice)
[email]
ROBERT F. PERRY
[email]
BRUCE W. BABER (Pro Hac Vice)
[address, phone, fax]

KING & SPALDING LLP
DONALD F. ZIMMER, JR. - #112279
[email]
CHERYL A. SABNIS - #224323
[email]
[address, phone, fax]

IAN C. BALLON - #141819
[email]
HEATHER MEEKER - #172148
GREENBERG TRAURIG, LLP

Attorneys for Defendant
GOOGLE INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

_________________

ORACLE AMERICA, INC.,

Plaintiff,

v.

GOOGLE INC.,

Defendant.

___________________

Case No. 3:10-cv-03561-WHA

DECLARATION OF PATRICK BRADY
IN SUPPORT OF DEFENDANT GOOGLE
INC’S MOTION FOR SUMMARY
JUDGMENT AND/OR SUMMARY
ADJUDICATION RE: GOOGLE'S NON-
LIABILITY UNDER 35 U.S.C. § 271

HEARING DATE: October 13, 2001
Judge: Hon. William Alsup

Date Comp. Filed: October 27, 2010

Trial Date: October 31, 2011

I, Patrick Brady, state:

1. I have been employed since December 2005 by defendant Google Inc. ("Google"), where I am now Director of the Android Partner Engineering Team (the "Partner Team"). I also am Google's Rule 30(b)(6) designee in this action on selected topics relating to Android, and I was deposed in that capacity earlier this year. I submit this declaration in support of Google's Motion for Summary Judgment and/or Summary Adjudication Re: Google's Non-Liability under 35 U.S.C. § 271(f).

2. I have knowledge of the facts set forth herein, and if called to testify as a witness thereto could do so competently under oath.

3. I began supervising the Partner Team in late 2007 and was named its Director earlier this year. The Partner Team is responsible for Android partnerships with mobile handset and tablet-computer manufacturers, silicon vendors, and mobile network operators.

4. In 2007, the Partner Team developed a process for sharing Android source code—developed and open-sourced by Google and the Open Handset Alliance—with third parties, including device manufacturers. Under this process, Google uploads and makes available Android source code to foreign device manufacturers over the Internet via source- code servers. This is the only process that Google has used to make Android source code available to foreign device manufacturers. I know this because, as Director of the Partner Team, I am responsible for Android partnerships with foreign device manufacturers.

5. Google has not made Android source code available to foreign device manufacturers on any physical medium. I know this because, as Director of the Partner Team, I am responsible for Android partnerships with foreign device manufacturers.

6. Also in 2007, the Partner Team developed a process for sharing Android binary code with third parties, including device manufacturers. Under this process, Google uploads Android binary code to servers and makes the binary code available to foreign device manufacturers over the Internet. This is the only process

1

that Google has used to make Android binary code available to foreign device manufacturers. I know this because, as Director of the Partner Team, I am responsible for Android partnerships with foreign device manufacturers.

7. Google has not made Android binary code available to foreign device manufacturers on any physical medium. I know this because, as Director of the Partner Team, I am responsible for Android partnerships with foreign device manufacturers.

8. Foreign device manufacturers obtain Android by downloading the code from the previously described servers. Downloading the code necessarily involves copying it—otherwise the code would disappear from the website after the first download. Thus, foreign device manufacturers have to copy Android code before loading it onto their devices. I know this based on my role as Director of the Partner Team for Android, and based on my resulting knowledge of, and experience with, Android code.

9. Android code does not become functional until it is loaded onto a physical device. I know this based on my role as Director of the Partner Team for Android, and based on my resulting knowledge of, and experience with, Android code.

I declare under penalty of perjury that the foregoing is true and correct. Executed on September 8, 2011.

[signature]
PATRICK BRADY


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