Earlier this month, I wrote about the first part of the of the trial between Oracle and Google. I predicted that the Court would eventually rule that the elements of Java that were copied were functional, and thus not infringed. There’s been no ruling on that point, but the show went on, with a trial on patents that Oracle alleged Google had infringed. Once again, I thank the folks at Groklaw for the great coverage of the case.
Yesterday, the jury ruled that there was no patent infringement of the two patents asserted. I must say that this surprised me – a lot. A finding of non-infringement of a couple narrow patents is not all that surprising. What surprised me was that these were all the patents asserted. I believed that – if Google was really trying to mimic the functionality of Java – surely there was an infringed claim of at least one patent in the portfolio.
I guess not.
How did the parties get here? I would say that it was a combination of a great aggressive strategy by Google and some strategic decisions by Oracle. First, many of the patents were re-examined at the Patent and Trademark Office. Re-exam is a method whereby the PTO gets another try to determine whether a patent is invalid, usually with more historical data (prior art) than was available the first time around. Note also that the PTO and courts have become more hostile to software patents over the years. Just this week, the Supreme Court granted cert, vacated, and remanded a software patent case back to the Federal Circuit.
The PTO had issued “final” rulings on most of the patents invalidating all the relevant claims, though Oracle could have kept fighting or appealed the rulings. Instead Oracle made the strategic decision to proceed on fewer patents (only two). It must have been pretty confident, but it lost the jury at some point, and these two patents were not infringed. I was also surprised at how short the trial was, but I guess a lot of background came out in the copyright portion.
I think we can generalize a few things from this outcome, some of which (surprise) support the conclusion in my article “Patent Troll Myths.” First, it’s not all about trolls; we should look at the patents rather than the person asserting them to decide whether there is merit to the case. Â Second, no matter how big your portfolio is, you are at risk of losing your key patents. It makes sense, then, to time actions after reexamination, and to attempt to bulletproof the patent before filing suit. Maybe Oracle couldn’t wait here. Third, this was a victory for the system without knocking out software patents wholesale. There were some valid claims, and they were not infringed, and others were found invalid. I believe this is a better outcome than removing the patent incentive altogether. Sure, this was an expensive trial, but it only lasted a few days in front of the jury. My former firm tried cases of this number of patents for a lot less than this one cost. Thus, the final point is that perhaps more cases should be tried by smaller firms for les money- something I doubt big companies are willing to do.