Monday, March 12, 2012

Patent Reexamination Has Arrived - Oracle v. Google

Reexamination has nearly knocked out Oracle's patent case against Google. It crystallized on March 1 when Judge Alsup stated "Oracle should state a clear answer to the following question: given that the examiners have issued final rejections on patents ’720, ’702, ’476, and ’205, and Oracle has only withdrawn the ’476 patent, but still wishes to go to trial on patents ’720, ’702, ’205, ’520, and ’104, and Oracle still wishes to have an instruction that those patents must be presumed valid and can only be found invalid by clear and convincing evidence, would it be better to postpone trial until after final decisions by the PTO on administrative appeal? Also please answer: to avoid this problem, will Oracle irrevocably withdraw with prejudice patents ’720, ’702, and ’205?" In short, does Oracle want to delay the trial for the results of reexamination or nearly drop the entire patent case?

Oracle's reply?  If the case goes to trial this spring, Oracle will withdraw from the litigation with prejudice each claim of the '720, '205, and '702 patents asserted against Google that remains rejected at the time of trial, and proceed with the copyright case, the '520 patent, and '104 patent, and any asserted claims of the other three patents that are confirmed by the PTO.

It is no longer sufficient to hire the best trial lawyer and go from there. Oracle engaged David Boies, an amazing trial lawyer. After graduating Magna cum laude at Yale Law School, Mr. Boies became a partner at Cravath Swaine & Moore and later founded his own firm and successfully handled many notable cases. For example, Mr. Boies was the key attorney assisting the late Thomas Barr in his stunningly successful defense of IBM in the Department of Justice's 13-year antitrust case. The DoJ learned from this and hired Mr. Boies in the United States v. Microsoft case. Again, Mr. Boies won, and Bill Gates claimed during trial that Mr. Boies was "out to destroy Microsoft" after observing his devastating use of Microsoft emails to impeach Microsoft witnesses. When he defended CBS in a $120M libel suit by General Westmoreland, the general abandoned his case during the trial. Although Mr. Boies lost in representing Al Gore following the 2000 presidential elections in Bush v. Gore, his engagement on this high stakes matter and others reveal he was (and is) considered one of the premier trial lawyers in the country.

Oracle v. Google tells us the outcome of reexamination can be pivotal to the patent case. Despite Oracle's  wise decision to engage Mr. Boies, it did not halt the effects of reexamination. Oracle's patent case was greatly contracted and Mr. Boies has much less to work with at trial. Yes, patent reexamination has arrived.

Copyright © 2012 Robert Moll. All rights reserved.