Scott Daniels | April 18, 2011
In February Google requested reexamination of seven “Java platform” patents – Oracle had sued Google for infringement of those patents by marketing its Android™ cell phones. On Friday afternoon, Google filed its second request for ex parte reexamination with respect to one of those seven patents, Oracle’s U.S. Patent No. 6,061,520.
Though the PTO had ordered reexamination of the ‘520 patent based on the Lewis reference, it also denied reexamination of claims 14 and 17 of that patent, finding that the prior art cited by Google failed to raise a “substantial new question of patentability” (SNQ) regarding those claims. Such a denial of reexamination by the PTO would enhance the statutory presumption that those claims are valid over the prior art. In Friday’s request, Google therefore again sought reexamination, this time focusing on claims 14 and 17. Google also described Lewis in a different light and combined Lewis with three new secondary prior art references.
The PTO has ordered reexamination of five of the other Oracle patents; the request for reexamination of the seventh Oracle patent is still pending and is likely to be acted on soon.
The District Court proceeding is now in the claim construction phase. A hearing before Judge William Alsup is scheduled for Wednesday. Google has not yet moved to stay that case pending completion of the reexaminations. Google has filed papers with the Court indicating that it wishes to move for summary judgment on copending copyright infringement allegations made by Oracle against Google. If such a motion were granted by Judge Alsup, thereby leaving only Oracle’s patent claims in dispute, Google would be in a better position to request a stay of the litigation.
Oracle America sued Google in August in the Northern District of California for infringing these patents, plus a series of copyrights “in code, documentation, specifications, libraries, and other [components] of the Java platform.” According to Oracle America, the patents cover “a bundle of related programs, specifications, reference implementations, and developer tools and resources that allow a user to deploy applications written in Java programming language on servers, desktops, mobile devices, and other devices.” Oracle America asserts that Google infringes the patents and copyrights by distributing “Android (including without limitation the Dalvik VM and the Android software development kit) and promotes its use by manufacturers of products and applications.”