Oracle's hard choice: Dismiss patent claims against Google?

Updated: To move copyright trial forward, Oracle will drop most Java patent claims

All but two of the remaining Java patent infringement claims brought against Google by Oracle will be dropped to get the rest of the trial underway, according to an Oracle motion filed today.

[Author's Note: This story has been updated to include the latest court filings.]

At issue for Oracle is the problem that nearly all of the patents they brought against Google in the patent and copyright infringement case have either been found to be invalid or are undergoing re-examination by the US Patent and Trademark Office (USPTO), a process that could take up to 18 months and offers no guarantee for Oracle that the reexamined patents will even be found to be valid.

On March 1, Judge William Alsup outlined the conundrum for Oracle rather succinctly:

"Oracle should state a clear answer to the following question: given that the examiners have issued final rejections on patents ’720, ’702, ’476, and ’205, and Oracle has only withdrawn the ’476 patent, but still wishes to go to trial on patents ’720, ’702, ’205, ’520, and ’104, and Oracle still wishes to have an instruction that those patents must be presumed valid and can only be found invalid by clear and convincing evidence, would it be better to postpone trial until after final decisions by the PTO on administrative appeal? Also please answer: to avoid this problem, will Oracle irrevocably withdraw with prejudice patents ’720, ’702, and ’205?"

Alsup gave Oracle until noon PST today (March 9) to specifically answer this question, which boils down to this: does Oracle want to wait for all of the patent issues to be resolved and move on the copyright and patent charges together a couple of years down the road? Or drop the patent part of the case altogether and move ahead with just the copyright part of the case?

And Oracle's reply was very much as expected, according to their reply motion to Alsup filed March 9:

"Accordingly, if the case goes to trial this spring, Oracle will withdraw from the litigation with prejudice each claim of the '720, '205, and '702 patents asserted against Google that remains rejected at the time of trial, and proceed with the copyright case, the '520 patent, and '104 patent, and any asserted claims of the other three patents that are confirmed by the PTO."

According to the same motion, the '520 patent claims have been confirmed patentable by the USPTO, and the '720, '205, and '702 patents claims rejected. Oracle was planning to appeal these rejections, but they are now willing to drop the appeals if that's what it takes. The '104 patent, it should be noted, as been preliminarily rejected, but it seems Oracle is hoping that the final decision on this patent will shift their way.

This might seem strange to legal novices (like me), but apparently Oracle has already tried to get the court to stay its patent claims for nine months back in January, so it could start the copyright claims part of its case first, then come in with the patent claims (hopefully) later. But, if that didn't work, Oracle was willing to have the patent claims dismissed without prejudice instead, to get things moving.

"…[I]f the Court will not sever and stay the patent claims, Oracle respectfully requests that the Court dismiss the patent claims without prejudice and set a date certain for the trial of copyright liability and copyright damages for spring 2012, followed by a hearing on Oracle's request for a copyright injunction if Oracle prevails on liability."

Note the "without prejudice"--a legal way of requesting a do-over should Oracle decide to ever level the patent claims against Google again.

Alsup appeared to be unwilling to give Oracle a way to put off the patent claims until a later date, either through a stay or dismissal without prejudice. Either Oracle is all in or all out with its patent case, and his use of the term "dismissal with prejudice" in his March 1 question to Oracle makes that clear.

What's the rush for Oracle? Apparently, it's money: for each passing day, they argue, Google's alleged use of their Java within Android is too much for Oracle to bear. Here's their rationale from the same Jan. 17 motion to request the stay or dismissal without prejudice. You can practically see the drool stains on the page:

"While this case awaits trial, more than 700,000 Android-based devices are activated every day, all fundamentally built around the copyrighted Java APIs and the enhanced performance enabled by Oracle’s patents. Each day’s worth of activations likely generates approximately $10 million in annual mobile advertising revenue for Google. Analysts have predicted that the number of new Android devices will reach 2.5 million per day within twelve months. Google’s misappropriation of Oracle’s intellectual property unjustly enriches Google at Oracle’s expense, but also inflicts irreparable harm on Oracle by diverting the Java developer ecosystem to the free, incompatible Android platform and fragmenting the Java platform. The longer trial is delayed, the greater that irreparable harm."

Yeah, Oracle clearly has their eyes on getting a piece of that pie. Just as a hypothetical figure, let's say Oracle wanted to get just 1 percent of that $10 million/day revenue--an 18-month delay would cost the Oracle $54.8 million alone. Again, that's a pie in the sky guess on damages, but it gives you an idea of the kind of real money that's floating around in this case.

Oracle's reply motion does indeed let us know just how much they want to get something out of this case, and how confident Oracle is in their own case.

Now that Oracle has essentially dropped their weaker patent claims with prejudice if the judge schedules the case, Google proponents will be crowing to the skies about the perceived victory. There's still the copyright claims to be settled, though, and the confirmed '520 patent and the iffy '104 patent, so the case wouldn't be over, yet.

But it would be well on its way to moving forward.

Read more of Brian Proffitt's Zettatag and Open for Discussion blogs and follow the latest IT news at ITworld. Drop Brian a line or follow Brian on Twitter at @TheTechScribe. For the latest IT news, analysis and how-tos, follow ITworld on Twitter and Facebook.

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