'Important' Oracle patent rejected in Google Android case

The US patent office has rejected one of Oracle's patents and upheld another

Oracle has suffered a setback in its lawsuit accusing Google of patent infringement and copyright violation in its Android operating system: The U.S. Patent and Trademark Office has rejected one of Oracle's Java-related patents -- although it did uphold another.

The PTO's latest determinations, reported in a joint court filing Wednesday, are a mixed bag for both sides. However, at least one legal expert has said the Oracle patent that was rejected could be its most significant in the case.

The filing, in the U.S. District Court for the Northern District of California, also shows Oracle continuing to push for a jury trial early next year, while Google argues that trying the case before July would not be practical.

Oracle sued Google last year, arguing that its Android software violates Java-related patents that Oracle acquired when it bought Sun Microsystems. Oracle initially sought damages of up to US$6.1 billion, although the court has told it to revise that estimate.

Early on in the case, Google asked the patent office to reexamine all the patents at issue, and Wednesday's filing gives an update on that process. Oracle asserts several claims for each patent.

"The reexaminations of five of the six patents-in-suit remain ongoing, with roughly two-thirds of the currently asserted claims having been rejected," Google said in the filing. "Eighty percent of the asserted claims as to which the PTO has issued an office action currently stand rejected."

Some of the rejections are preliminary, however. And if a jury finds that Google violated even one of the claims in a patent, it could still be enough to see Oracle awarded damages or an injunction, noted Scott Daniels, author of the Reexamination Alert patents blog.

In the latest developments, the PTO on Nov. 9 upheld the claims in Oracle's patent number 6,061,520, and on Nov. 18 it rejected the claims in patent number 7,426,720, the filing shows. Both relate to improving the performance of Java.

Florian Mueller, author of the FOSS Patents blog, asserted in July that the so-called '720 patent is "strategically very important" and "may very well be" the most important patent in the case. That's because it is the "youngest" of the patents at issue; it doesn't expire until 2025, while the other patents all expire in 2018 or earlier.

That means if Google were found to have infringed that patent, any related injunction would have remained in force until 2025, Mueller wrote. And if Oracle were awarded damages, the damages might have been higher based on the longer remaining life of the patent.

Daniels agreed, although he noted that the significance of an injunction would also have depended on the scope of the claims in the patent. If they are relatively narrow, Google might have been able to engineer around them, but if they are significant that might have been harder to do.

"Sometimes the claims are like a two-foot fence and you can walk around them; other times they're like the Great Wall of China," he said.

In any case, the patent is out of the case, at least for now. The PTO's determination was a "final action" rather than a preliminary one, which is "a major defeat for the patentee," Daniels said. Oracle is still allowed to contest it, however, and must do so by Dec. 19.

Through a spokeswoman, Oracle declined to comment.

James Niccolai covers data centers and general technology news for IDG News Service. Follow James on Twitter at @jniccolai. James's e-mail address is james_niccolai@idg.com

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