News

The day begins with the juror who got sick yesterday being dismissed from the jury, after she called in sick. You only need six, and the reason the judge started with 12 is precisely to be able to smoothly handle such events. But I'm sure both sides are wondering if they just lost a supporter or two.

A reader left a comment yesterday, with contact information, on possible prior art. Even though it's too late for this trial, it's never too late to bring prior art to the attention of the USPTO, and who knows what will happen in this case and in Oracle's moves thereafter. Plus the '104 patent has been found preliminarily invalid, but there are further steps to go, so it might be useful. And while Google isn't relying on prior art in this trial on the '104 patent or the '520, instead saying it doesn't use the technology described in the patent, what if Oracle has plans, if the jury brings in a verdict for Oracle on the patents, to go after others? Also, if the '104 patent is finally found invalid by the USPTO, any damages linked to that patent will be wiped out. So I wanted to highlight the comment, just in case it's useful.

Responsive briefs are almost always more interesting than the initial briefs because you gain some insight into the weakness or strength of a party's arguments by the ability of the opposing party to poke holes in that argument. That is certainly the case with respect to the responsive briefs filed by the parties in this case on the subject of the JMOL motions.

You have to love it when a quote from "Through the Looking Glass" shows up in a brief. In this instance it is Google's sole response to Oracle's suggestion that "[a] reasonable jury could only find that Google did not infinge the asserted claims of the 104 patent" by quoting:

Not surprisingly, the Court has kicked out Google's JMOL on ownership and registration of the copyrights by Oracle. (1165 [PDF; Text]) This was always a bit of a stretch, more because of timing than the actual issues raised. Had Google challenged the registration much earlier in the proceedings or challenged the actual registration with the U.S. Copyright Office, they may have had a chance here, but this motion came far too late.

Both parties have filed their briefs in support of their JMOL's on patent infringement. The Google brief (1166 [PDF; Text]) focuses on their primary arguments for non-infringement. Much of their non-infringement defense on the '104 patent hinges on the definition of "symbolic reference." The definition adopted by the Court clearly favors Google. The non-infringement defense on the'520 patent focuses on the dx tool and Google's assertion that it does not simulate execution.

The jury continues to deliberate in the patent phase of the Oracle v. Google trial. They just sent in a question, basically asking if they are allowed to consider an aspect of Dr. Terence Parr's testimony as evidence that Android does not do what the '520 patent describes, which of course they are, as Google points out. That was the point of his testimony, and it's in evidence so it's fair game to consider it.

The judge asks both sides if they want a five-minute-each opportunity to argue the point before the jury, and Oracle says no. So he just tells the jury that he can't give them guidance on fact issues other than what he's already given them. That's their job. He tells the lawyers if he says yes, because of the exact wording of their question, they'll think he's telling them to find for Google. Judges do have to be very careful not to tilt the field. Surely, however, there's a way to answer the question with a yes, without tilting things. They are for sure allowed to consider that testimony and drawing whatever conclusions they think would be proper.

I can't imagine what the jury is thinking now, but I surely do see all the appeals issues mounting and mounting. And it's very clear that once again this is a jury that is divided and struggling to reach a unanimous conclusion. Our reporter in the courtroom provides us with the details.

The parties have just submitted a proposed stipulation on copyright damages, and Judge Alsup has already accepted it. The ordered stipulation:

The jury is out on the issue of patent infringement, and the instructions issued to the jury (1153 [PDF; Text])are more favorable to Google than originally drafted. Gone are the references to "blind willfulness" and included are the definitions more favorable to Google than to Oracle. The Special Verdict Form (Text) is shortened as well given that the parties stipulated to indirect infringement on a finding of direct infringement.

The parties have also teed up their list of witnesses for the damages phase, assuming there is one. Oracle, as expected, is going to drag in Larry Page and Eric Schmidt, and what would we do without hearing from Tim Lindholm one more time. (1154 [PDF; Text]) Google's list is far shorter (1155 [PDF; Text]), and Google indicates they will only call Prof. Astrachan if Oracle calls Prof. Mitchell.

Start: May 17 2012 2:00 pm End: May 17 2012 4:00 pm Timezone: America/Phoenix Start: May 17 2012 2:00 pm End: May 17 2012 4:00 pm Timezone: America/Phoenix

Arizona Telecommunications and Information Council

Advanced Technologies & Visions for the Future
ATIC Public Meeting
Thursday, May 17, 2012
2:00-4:00 PM

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Our first report from the courtroom is here, and it seems real life has thrown a little tack in the road. One of the jurors had car trouble, so after the judge and the lawyers finished their early morning discussions and called for the jury, no jury. So, they waited. When the difficulty couldn't be resolved to get her to the court, she was removed from the jury by the judge. This is juror #2, according to the tweeting journalists. And then the closing statements began.

The discussion before all that is a bit disturbing. Google apparently complained about Oracle's ambush tactics, and the judge laughed it off. It isn't so funny if you are Google. And not all judges find such tactics amusing, either. If you recall, SCO, represented by Boies Schiller, who now represent Oracle, were sanctioned by the court for trying to use ambush tactics in SCO v. IBM. Actually, they were sanctioned twice. They kept changing what their case was about, presenting new allegations at the last minute.

The further we go into the this trial the heavier the paperwork has become with no fewer than 26 documents on today's list. Because of that volume we will not be able to address all of them in detail or provide them in text, at least initially, but here are the highlights:

Motions for Judgment as a Matter of Law - Patent Phase

Both parties have filed a motion for judgment as a matter of law with respect to the patent phase of the trial. For its part, Google argues (1151 [PDF]):

The judge has ruled on the weird Oracle motion [PDF] to delay the damages phase of the trial to get a new jury. It's a no from Judge William Alsup, also calling their position on the 9 lines of code and the test files and damages "super extreme". They'll have to present it to *this* jury. There's no way the law should allow a disgorgement theory over millions or billions of dollars for nine lines of code, the judge tells them, our man in the courtroom tells us. The 37 APIs will not be part of phase three, "because liability has not been proven on that". So that's that. Google's motion for summary judgment on copyright damages [PDF] is also denied. It's on to the damages phase after closing statements by tomorrow, with this jury. Meanwhile, Google expert Dr. David August, who testified on Friday, is back on the witness stand.

We've all seen the fur flying on the issue of copyright infringement damages with respect to rangeCheck and the decompiled files. It's worth stepping back and putting this into perspective, and it's also worth considering the arguments advanced.

First, the perspective. The jury found rangeCheck infringed. The jury also found the decompiled files not infringed, but Judge Alsup, on Oracle's motion for judgment as a matter of law, has overruled the jury on that one. So both rangeCheck and the decompiled files are infringing. For our purposes, let's set aside everything else (e.g., the SSO) as being unresolved, either because the jury was unable to reach a determination (the jury WAS in agreement that the SSO was infringed but not in agreement on Google's fair use defense) or because the Court has yet to rule on an issue of law (e.g., whether an implementation of a specification constitutes a derivative work of that specification). Those unresolved copyright infringement issues are more important than the issues that have been resolved.

PJ has separately covered the more important filings from the weekend, namely Google's motion for summary judgment on the damages issue with respect to rangeCheck and the decompiled files and Oracle's motion to delay phase 3 of the trial until the copyright liability issues are settled, there were a few other filings. One of those was the Court's ruling in favor of Oracle (and overturning the jury) on the issue of infringement of the decompiled files. (1123 [PDF; Text]) The Court has also issued another draft of the proposed jury instructions for the patent infringement liability phase of the trial. (1120 [PDF; Text]) These revisions incorporate some of the suggestions from the parties with respect to the first draft.

Google has filed a motion for Summary Judgment on copyright damages, arguing that Oracle has no evidence that Google gained anything financially that can be linked to rangeCheck or the test files: Oracle has no evidence, and cannot possibly prove, that Google earned any revenue causally linked to either the nine lines of rangeCheck or the eight superfluous test files. That is, of course, obviously true. The judge said he was going to tell the jury that, in fact. How can Oracle win infringer's profits if there aren't any?

So Oracle has now filed a motion asking for a postponement of phase three of the trial, the damages phase. It would like a new jury, too. It wants to wait to calculate damages until after the judge decides whether APIs are copyrightable, so it can add the 37 API files into the mix for damages, if they are. Maybe then it would have a prayer of getting some money.

In short, Oracle woke up and realized it's in a pickle of its own making. It was too clever by half, and now reality has struck. It clearly is worried that if they go to the damages phase now, it will gain a big fat zero in damages. It should have thought of that before it asked for infringer's profits, but there you are.

Today's reporter for Groklaw at the Oracle v. Google trial has filed his reports, three of them so far, and they are voluminous. You will enjoy his thorough account of the day's events.

I saw the tweeting journalists saying, Oh no, more code. But that's exactly what you want. The journalists zone out, but what I see in the notes is that the judge is paying very, very close attention, enough to ask meaningful questions. So, enjoy. I'll keep adding to the reports, but I have the first one done. [They're all done now.] Witnesses today were Andrew McFadden, Terence Parr, and David August, all Google's witnesses, providing expert testimony that Google didn't use Oracle's patented technology.

One bad news bit for Google: the judge has granted Oracle's motion for judgment as a matter of law on the directly copied test files, in question 3b of the jury's instructions, that they had decided Google didn't infringe, overruling their opposite finding. And here's the order [PDF]. The judge seems to be going to great lengths to ensure any appeal will not require a new trial.

I thought you'd like to see the Oracle motion that the Hon. William Alsup denied Wednesday, after a couple of hours of oral argument. I see at least one person tweeting that the judge has ruled that APIs are not copyrightable. He hasn't ruled on that yet. This was something else. You can read about the judge's ruling here.

What he did rule on were two motions for judgment as a matter of law. If a party feels at any point that after hearing all the evidence, its case can be decided by the judge without a jury because no jury could reasonably find for the other party, it can file a motion asking for judgment as a matter of law. It's common to see that near or at the end of the presentation of evidence in a trial. That kind of motion is called a Rule 50(A) motion. Here, Oracle's motion, dated May 1st, was asking the judge to rule, among other things, that Oracle is entitled to judgment as a matter of law on Google's fair use defense. It's that motion that was denied. Google's JMOL was also denied. The bigger question, whether APIs are even copyrightable, is still pending.

So what does this ruling mean? That the issue of Google's fair use defense, at a minimum, remains alive and it has to go to a jury, a new one, unless the judge in his pending ruling decides that APIs aren't copyrightable.

Here's the Oracle motion [PDF], and I've done it as text for you. It's not the ruling we are waiting for, but it's a pretty significant decision anyhow, because it slams the door on Oracle's attempt to get a $1 billion payday from its copyright claims.

On Thursday Judge Alsup rejected a number of items requested by Oracle and Google in their respective motions for judgment as a matter of law. (1119 [PDF; Text]) Judge Alsup denied Google's motion regarding rangeCheck, rejecting the notion that it was de minimis copying. On the other side of the equation, Judge Alsup denied Oracle's motion with respect to fair use (leaving Google's fair use defense intact for now), copying of API documentation (the specifications), and comment-copied files. There are a number of items remaining on the table for each party on which the judge has yet to rule.

That takes us to the issue of the copyright damages on rangeCheck. You will recall that Tuesday, in its response to the Court's questions, Oracle reversed field from what it had previously agreed and told the Court it deserved the right to obtain both statutory damages and infringer's profits with respect to rangeCheck. (1106 [PDF; Text]) Not surprisingly, Google has now fired back. (1114 [PDF; Text])

The patent phase of the trial has now moved far enough along that the Court has presented its first draft of the charge to the jury (1108 [PDF; Text]) and special verdict form. (Special Verdict Form [PDF; Text]) The special verdict form, itself, is far more straightforward than the one for the copyright phase, i.e., each claim of each patent is to be assessed only as to whether it is infringed.

On the other hand, the instructions to the jury, while clear, do not anticipate the difficulty this jury (or any jury in a patent infringement case, for that matter) will have in determining whether every requirement of a claim has been satisfied by the allegedly infringing product or process. These "requirements" (or claim elements) are highly technical and will often turn on a subtle distinction in a definition of a term within a claim or description of the components of the allegedly infringing product. That is why any patent infringement trial is a roll of the dice for both parties.

Despite the fact that the trial has shifted to the patent phase, there is plenty still going on outside the courtroom in the various filings being made by the parties. A lot of attention has been given to Google's request for a new trial on the copyright liability issues (1105 [PDF; Text]) Although a relevant motion, this is probably not the most important filing made in the last two days. Basically, Google is preserving its right to request (insist on) a new trial IF the Court finds in favor of Oracle on the issues of law still pending. Obviously, if the Court sides with Google on those issues of law, the motion becomes moot (who cares about the jury's finding of infringement if the Court rules the matter not subject to copyright protection). So we will wait to see what the Court has to say on those issues of law.

One of the more humorous filings is Oracle's motion to preclude Google from disputing the ownership of the copyrights in Java on which it is basing its infringement claims. (1098 [PDF; Text]) Oracle protests that Google is raising this issue to late in the trial, that Google has stipulated to Oracle's ownership of the copyrights, and that Google has known all along that the registered works included some third-party works.

Google has filed a motion [PDF] for a new trial on both question 1a and 1b, arguing that they are indivisible and that Google has rights under the Seventh Amendment for a new trial on both sides of that same coin: Under settled Supreme Court and Ninth Circuit law, the jury's failure to reach a verdict concerning both halves of this indivisible question requires a new trial concerning both questions. To accept the infringement verdict as binding on the parties and retry only fair use would violate both the unanimity requirement and the Reexamination Clause of the Seventh Amendment. We have Google's motion, as text. Incidentally, Professor Michael Risch, who yesterday wrote an article about the Oracle v. Google verdict today wrote a correction, after reading the expert reports for both parties. He now writes that it seems unusual that this question even went to trial, and this is what he predicts, based on Lotus v. Borland:Based on my reading of the reports (and I admit that I could be missing something - I wasn't in the courtroom), I think that the court will have no choice but to hold that the collection of API names is uncopyrightable - at least at this level of abstraction and claimed infringement.

To the extent that there are bits of non-functional code, I would say that's probably fair use as a matter of law to implement a compatible system. I made a very similar argument in an article I wrote 12 years ago - long before I went into academia. You may remember Professor Risch's paper that the US Supreme Court relied on in the famous Mayo v. Prometheus decision (see Update 2 here.)

Today was opening statements finishing up in the Oracle v. Google trial, day 2 of phase 2, the patent claims. Then came witnesses called by Oracle, beginning with Tim Lindholm. When this is over, he will have developed a full-blown allergy to litigation, methinks. Also to email retention. Following Lindholm, Oracle called Andy Rubin again, then Robert Vandette and Noel Poore, Oracle employees. We had a new reporter for Groklaw there today. She was using paper and pen, so we await her transcribed report, but in the meantime, Caleb Garling of Wired has a good run-down of the day's highlights.