Google overcame Oracle’s patent claims but jury was hung on copyright infringement
Several lessons on APIs and copyright, and the Android system emerges stronger
In August 2010, Oracle filed suit against Google for patent and copyright infringement in the US District Court for the Northern District of California, in the first major attack against the Android operating system. The case was so complex it demanded a six-week jury trial with separate phases for the patent and copyright claims.
In the copyright leg of the suit, the jury found that Google infringed "the overall structure, sequence and organization" of 37 of Oracle's copyrighted Application Programming Interface (API) packages, which are used by software programs to communicate with each other. But the San Francisco jury could not decide whether Google's use of those works constituted fair use under US law. It also found that Google's use of the documentation for those 37 packages did not infringe.
Other uses were found to infringe, but the jury also said that Oracle engaged in conduct that could have led Google to believe it did not need a licence to use the structure, sequence and organisation of the 37 APIs. Still, the jurors said that Google had failed to prove it relied on that conduct in deciding to use the APIs, so the verdict had criticisms for both sides.
In a separate verdict on the patent claims, another jury found Oracle had failed to prove whether Google infringed patents RE38,104 and 6,061,520 by a preponderance of the evidence, and whether Google willfully infringed the patents by clear and convincing evidence.
Both aspects of the case are now on appeal to the Federal Circuit, but there were some clear lessons to be drawn from Judge William Alsup's opinion on the copyrightability of the Java APIs.
First, Alsup deemed the code for the Java API packages functional because Oracle requires identical method specifications to carry out the same function. "When there is only one way to write something, the merger doctrine bars anyone from claiming exclusive copyright ownership of that expression," wrote the judge. To get around this, Michael Lasky of Burr & Forman told Managing IP that Oracle (then Sun Microsystems) could have made it possible to provide other ways to link APIs with each other. "The lesson is: don't take it all. Leave some on the table," he said.
Secondly, Lasky said that registering entire works under one registration often leaves them open to so-called de minimis arguments, meaning the infringed part is so small as to be insignificant. Of the 37 API packages Oracle asserted, the jury found nine lines (or 3%) of code infringed. Oracle could have registered its most critical lines of code separately early in product development.
Lastly, while Alsup did not dispute that Oracle's methods were creative, he made a distinction between patents and copyrights. "Such inventions – the concept and functionality level – are protectable only under the Patent Act," he said. Oracle might have done better if it had filed more patent applications instead of relying largely on copyright.
Oracle v Google
Copyrights: 37 packages in the Java API
Patents: Seven Java-related patents
Offices: USPTO; US Copyright Office
Patent numbers: 6,125,447; 6,192,476; 5,966,702; 7,426,720; RE38,104; 6,910,205; and 6,061,520
Patent/copyright holder: Oracle
Other party: Google
Court: US District Court for the Northern District of California (on appeal to Federal Circuit)
Case number: 3:10-CV-03561
For Oracle: Boies Schiller & Flexner, Morrison & Foerster
For Google: King & Spalding, Keker & Van Nest, Greenberg Traurig
This case was selected as one of Managing IP’s Cases of the Year for 2012.
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