Earlier this month, San Francisco U.S. district court judge William Alsup proposed radical surgery on Oracle’s patent infringement megasuit against Google. The case, which claims Google violated Oracle’s IP rights by including Java source code in its Android operating system, has the potential to cripple businesses that rely on Android. It’s also, in the view of Judge Alsup, way too vast and complicated for a jury to comprehend.
“Currently there are 132 claims from seven patents asserted in this action, and there are hundreds of prior art references in play for invalidity defenses,” the judge wrote in his May 3 order. “This is too much.” The judge proposed narrowing both Oracle’s claims and Google’s defenses through a three-step process that would take place alongside discovery. At the end of the process, Oracle would select only three claims to assert, abandoning its other 129. Google would be permitted to cite eight prior art references. “All others,” Judge Alsup wrote, “shall be forsaken.”
As you can imagine, that order didn’t sit very well with Oracle or its lawyers at Morrison & Foerster and Boies, Schiller & Flexner, who argued the order gave Google an unfair advantage. In a May 6 response to Judge Alsup’s proposal, Oracle contended that it couldn’t prove the magnitude of Google’s infringement or the entire value of the allegedly misappropriated IP under the proposed rules. Moreover, Oracle asserted, the judge’s insistence that Oracle surrender rights to any of the 129 claims it didn’t pick to assert amounted to a violation of Oracle’s due process rights.
“We understand the court’s desire to limit each side to a manageable number of claims andprior art references,” the Oracle brief says. “Oracle believes, however, that the number should be larger--three claims per patent [for a total of 21 claims]. Just as important, the ultimate decision on the number of claims should be made closer to trial--after summary judgment and after the court has heard from the parties on the distinctions among the remaining claims for trial.”
In a pretty good sign that Oracle had a legitimate point about the imbalance of Judge Alsup’s proposal, Google could hardly wait to adopt it. “Google agrees with the court’s three-step process in its entirety,” wrote Google’s King & Spalding lawyers in their May 6 brief.
After hearing from both sides, Judge Alsup has rethought his original proposal. In a May 23 order that pays some heed to Oracle’s objections, the judge agreed to wait until the last pretrial conference to hear Oracle’s plan for a “triable” case that it could present to a jury in a three-week trial. The judge remained skeptical that Oracle could come up with a realistic proposal to put on all of its claims, but said he would wait to decide.
The judge warned both sides not to count on summary judgment rulings to narrow the case. He also said that if Oracle can’t figure out how to streamline its claims, he’d consider staying the litigation until the U.S. Patent and Trademark Office has completed a re-examination of Oracle’s patents.
Google counsel Scott Weingaertner of King & Spalding didn’t return a phone call requesting comment. Oracle lawyer Michael Jacobs of MoFo didn’t respond to an e-mail.
(Reporting by Alison Frankel)