Last Monday, after about a week of deliberation, the jury reached a partial verdict pertaining to the copyright phase of the long Oracle v. Google trial. While the jury found Google guilty of infringing the structure, sequence, and organization (SSO) of thirty-seven of the Java application programming interface (API) packages, the jury did not decide if Google’s infringement was a fair use and therefore protected from liability. The jury also found copyright infringement for several lines of source code copied into the Android platform from Java. While the lawyers have been arguing over how the remaining copyright issues should be decided, including whether the API is actually copyrightable, the rest of the week was dedicated to witness testimony and evidence pertaining to patent infringement. As I went on vacation on Wednesday, I will recap the phase two material as best as I can.
In order to prove infringement, the plaintiff must prove that the patent claim is valid and that all the limitations of the patent claim are present in the defendant’s method or apparatus. For the purposes of the trial, Google concedes that the two patents being discussed are valid. Google instead contests that the methods in Android contain all of the limitations mentioned in the claims. Alsup mentioned how it was a very handy roadmap.
In Google’s opening statement, Mr. Van Nest laid out three key points of evidence. First, Google made fundamentally different design choices for Android. Second, Google independently developed Android not knowing of Sun’s patents. Third, Android does not use Sun technology. I should note that the second and third points are not actually relevant to a determination of infringement. An inventor can independently create a method or product without knowledge that a second inventor created the same product or method and still be guilty of infringement because the second person or entity invented it first. At least that’s what I was taught; the passage of the Leahy-Smith America Invents Act means that second inventor only needs to have filed for the patent first. I think Van Nest mentioned independent development because it allays the amount of damages Oracle can collect from Google’s alleged patent infringement, but I am not a lawyer (IANAL).
The first patent infringement depends on the presence of a symbolic reference in the executable code of the virtual machine (VM). The Google presentation gave the jury the definition of a symbolic reference as defined in claim construction. Van Nest also gave an example; “The White House” is a symbolic reference, while “1600 Pennsylvania Ave” is a numeric reference, but both adequately define the residence of the President of the United States of America. According to the ‘104 patent, the symbolic references must be in the VM’s instructions to begin with. Google argues that the Dalvik VM in Android may call a string or object, but, in contrast to the Java VM, the Dalvik instructions rely on the index of an item rather than the item itself.
Two items are of note outside of presentation to jury regarding the ‘104 patent. First, the patent is from 1999 and is a reissue. A patent owner may request a reissue if the claims to fix a deficiency in an issued patent relative to what the inventor was actually allowed to claim. Oracle is not supposed to tell the jury that the patent has survived review so many times that the jury should give more weight to the patent claims than a standard patent. Furthermore, neither side is allowed to mention the reexamination proceedings surrounding the two patents. When Oracle sued Google, Google requested a reexamination of the seven patents Oracle was leveraging against Google in the suit. The two patents in this trial survived reexamination long enough that the two parties agreed to hold the trial on the patents’ alleged infringement. The ‘104 patent currently has a rejection against it, meaning Oracle needs to amend the claims to overcome the rejection or argue the rejection on the merits. Oracle wanted to add a third patent to the trial proceedings after the patent office returned a favorable decision, but Judge Alsup ruled against inclusion because the trial had already started, even if patents had not been discussed yet.
Google also argues that the Dalvik VM does not infringe on the ‘520 patent with reference to arrays. The Java VM deals with simulating execution of the byte code, while Dalvik uses pattern matching to achieve a similar noninfringing result. Oracle believes it can prove infringement because, as Oracle’s witnesses testified, the Dalvik VM executed code much less effectively in benchmarking tests after sections assumed to be the infringing parts of Davlik were removed from Dalvik. Google argued in the opening statement and in cross-examination of Oracle witnesses responsible for the benchmarking that the benchmarking tests were run incorrectly as they removed Dalvik code irrelevant to alleged infringement and actually tested nothing practical.
Oracle started its patent by calling Tim Lindholm, an engineer who worked on Java ME at Sun before moving to Google and working as an Android project advisor. Apparently Lindholm told Andy Rubin that Lindholm could provide value as a J2ME routine generalist and interpreter of the engineering/business/legal ecosystem. Oracle pressed Lindholm, and later Rubin, about various communications concerning Android and its relation to Java. Oracle also called in the witnesses who oversaw the benchmarking tests to talk about the benchmarking in more detail.
Before calling Rubin for questioning, Oracle was showing the jury depositions from other company representatives talking about their use of Android. Judge Alsup asked each side to explain the significance of bringing up testimony like this. Oracle argued that Google was inducing infringement by putting out Android code for other companies to use in their commercial products. While Google answered that Google did not look at the other companies’ source code as long as the company products passed Google’s performance tests, Oracle countered that testimony indicated the other companies did not change source code relevant to the infringement. Oracle seems really committed to the jury considering as many commercial Android products as possible. As I already mentioned, it probably relates to the damage phase of the trial.
The most important part of Day 18 related to Oracle’s attempt to rebut Google’s assertion that Sun had no legal claim against Google. After repeated discussions in which Google reserved the right to mention Jonathan Schwartz’s testimony, Oracle called Brian Sutphin, the Sun executive vice president of corporate development and alliances before Oracle acquired Sun. Sutphin was a member of Sun’s executive leadership team, and, as former Sun CEO Scott McNealy testified, alleged that Sun executives did not express concern that Sun could not sue Google over Android and that Schwartz’s blog was not an official Sun statement. Google did not appreciate Sutphin’s appearance, but Google retaliated by getting the judge to admit a Sun 10k filing into evidence. The 2008 filing, required by the US Securities and Exchanges Commission, suggests that the CEO blog was part of official Sun business communication. The rest of the day concerned Professor Mitchell’s expert testimony about patent infringement, which was part of the Mitchell’s report as mentioned in the copyright phase.
As I come back to San Francisco, I hope to catch Oracle and Google’s closing statements to better understand the arguments for and against patent infringement. From what I understand, Google’s case against patent infringement should end tomorrow morning. Before I go, I should mention two matters at law important to the remainder of the trial. First, Alsup overruled part of the jury verdict; question 3 in the special verdict form should now read yes for all of the directly copied files. More importantly, Oracle is electing to decide damages by jury instead of by statute. While Oracle was originally asking for a billion in damages, the partial jury verdict by law allowed for a few hundred thousand. Hopefully this will be the only trial held for the conflict between Oracle and Google.