Google's decision this week to ask the U.S. Patent & Trademark Office to re-examine a number of the Oracle patents at issue in the companies' ongoing intellectual-property case could have a significant effect on how the dispute plays out.
Google's request that the USPTO take a second look at the validity of a number of the contested patents is not an unusual move: some 780 requests for ex parte re-examinations were filed last fiscal year, and more than 180 have been submitted so far this fiscal year, according to a Dec. 31 USPTO document. Nearly all, 92%, of the 11,211 filed since 1981 have been granted, the document shows.
In 23% of the cases, the patents were upheld as is, according to the document. Twelve percent were thrown out. But 65% have been subject to some type of change, it states.
It's not clear when the USPTO will complete its review of the Oracle patents, should one be granted, but it likely wouldn't be anytime soon.
While the USPTO document says patent re-examinations on average take about 26 months, "everyone doubts those statistics," said Scott Daniels of the Washington, D.C., law firm Westerman, Hattori, Daniels and Adrian. Daniels was the first to report Google's USPTO filings, in a blog post on Wednesday.
Re-examinations can actually take three or four years, and even longer, Daniels said in an interview Friday. "There have been re-exams in there for 10 years."
Meanwhile, the re-examination process could potentially cause a substantial delay to the actual trial, as Google could ask the judge to issue a stay while the USPTO does its work, according to Daniels.
But one may not be granted, since Oracle and Google are competitors, according to Daniels. While Oracle does not compete with Google in the Android market, there is overlap between the companies such as in productivity suites.
"If the patentee and the accused infringer are not direct competitors [and] the patent is found by the PTO to be valid and found by the court to be valid and infringed, the court can award damages to the patentee, and he is happy because the only damage done to the patentee can be quantified in money, e.g., lost royalties," he said.
"But if the patentee and the accused infringer are direct competitors, the damage done to the patentee by the infringement is more than just lost royalties -- it is lost market share, lost visibility in the market, et cetera," Daniels added. "These damages are hard to estimate. So the court cannot cure the damage done to the patentee. He is not made whole."
While Oracle has shown no indication it wants to settle before trial, the re-examination nonetheless "kind of gums up potential settlement talks," as Google can't withdraw its request to the USPTO, according to Daniels. "If Oracle settles the case, it still has to deal with re-examination."
Meanwhile, on Friday a judge denied a motion made this week by Google that asked for permission to file a request for summary judgment on Count VIII of Oracle's complaint, which relates to alleged Java copyright infringements by Android.
Google had argued that if any protected Oracle works are present in Android, they adhere to fair use standards.
Oracle filed a response in opposition to Google's motion on Friday, saying the copyright infringements it originally cited "represent only a snapshot of our case taken at the time they were submitted," and that discovery proceedings should reveal additional copyright violations.
U.S. District Court Judge William Alsup sided with Oracle in his ruling on Friday, but left it open for Google to renew its request "after a more complete evidentiary record has been developed through discovery."
Oracle and Google did not respond to requests for comment Friday.