Scott Daniels | July 21, 2011
Reexamination offers a number of benefits to those accused of infringement. The most important of those benefits may very well be the prospect of a stay of the infringement action pending completion of the reexamination proceeding. Where a stay is granted, the reexamination becomes the primary focus of the case, with potentially enormous advantage to the accused infringer. But where a stay is denied, the benefits are often limited by the extent to which the trial judge allows the results of the reexamination to be used at trial.
The stay issue is now center stage in Oracle’s patent infringement action in the Northern District of California against Google and its Android®, involving seven Java platform patents and a series of related copyrights. Although a three week trial is scheduled to begin at the end of October, Judge William Alsup is concerned about the feasibility of a trial involving the large number of patent claims asserted by Oracle. The judge has therefore strongly encouraged Oracle to reduce its claims at issue, and indicated that he might stay the case pending completion of a series of reexaminations initiated by Google against the Oracle patents.
Yesterday, in response to an order from Judge Alsup, the parties filed a “Joint Summary” informing the Judge of the status of those reexaminations. For four of the patents, non-final rejections have issued against the claims asserted by Oracle. The PTO has confirmed the validity of the claims of U.S. Patent No. 6,061,520 (90/011,489) asserted by Oracle against Google. And reexamination has been granted for the two other Oracle patents, but the PTO has not yet issued a substantive Action, either confirming or rejecting those claims.
The parties also informed Judge Alsup of their views on a possible stay of the case. Predictably, Oracle expressed its opposition, asserting that it would be prejudiced by the delay inherent in reexamination: “Every day that Google’s infringement continues, more damage is done to Oracle and the Java ecosystem as a whole.”
Google took the opposite position, encouraging Judge Alsup to grant a stay, but stopping short of actually moving for stay. Rather, Google advised Judge Alsup that if he does not stay the case, he should limit the trial to three Oracle patent claims: “… Google respectfully requests that the Court either stay this case, or proceed to trial in October only if Oracle now elects to reduce its claims to a number reasonably triable in the three week trial (such as three claims, with one selected from each patent groups).”
Google’s strategy puts Oracle in a difficult position. Oracle must select specific patent claims for trial, without knowing which claims, other than the confirmed ‘520 claims, will survive reexamination. Broad claims that Oracle might choose would be more likely to secure an infringement finding at trial, but they would also be more vulnerable in reexamination. Conversely, narrow claims that are more likely to be confirmed by the PTO, are also less likely to be found to be infringed at trial.
We expect that Judge Alsup, perhaps after further briefing from the parties, will stay the case for at least the six patents in reexamination. Although judges normally prefer to hear all claims in a single trial, Judge Alsup is clearly concerned Oracle’s currently asserted claims, plus Google’s corresponding defenses, are too much to be handled in a single trial, and he might prefer two trials.
Second, Oracle’s success in obtaining confirmation of the validity of most of the ‘520 claims may come back to haunt it. Although there is no formal estoppel against Google because the reexamination was ex parte rather than inter partes, Judge Alsup could rightly conclude that the PTO’s confirmation of those claims “enhances” the presumption of validity, thereby simplifying the issue of whether the ‘520 claims are valid over the prior art. The Judge might then conclude any determinations by the PTO in the other six reexaminations – whether confirmation, amendment, or cancelation of the claims – would also simplify the validity issues at trial.
Third, in recent months, the trial courts across the country appear to be more and more inclined to stay infringement actions in favor of reexamination. We expect that, unless Oracle limits its asserted claims, Judge Alsup will join in that trend and stay the case.