Wednesday, April 25, 2012

Oracle Can't Reinstate the Reexamined Patentable '702 Patent In Trial

Today, Judge Alsup issued an order here rejecting Oracle's request to reinstate US Patent No. 5,966,702 (the '702 patent) in the trial.

To understand why Judge Alsup would not reinstate the patent, you have to consider the events leading up to the order. Before the trial was scheduled, the question arose whether to wait until the PTO had finished the reexaminations of certain Oracle patents. Google wanted to delay the trial until the PTO finished the reexaminations which could reduce the Oracle patents it would face at trial. Oracle wanted an early trial date so offered to dismiss with prejudice all patents that remained rejected "at the time of trial." An early trial must have been important to Oracle, because a dismissal with prejudice meant it could not sue Google for infringement of the '702 patent on the same technology in another lawsuit.

Judge Alsup's order stated in granting an early trial date he acted in reliance on Oracle's offer to dismiss the patents under a final office action if not reversed prior to trial.

Judge Alsup says Oracle is required to stand by its word, but what exactly was Oracle's word? In the order, Judge Alsup interprets Oracle's "at the time of trial" as beginning on April 16, but maybe it should be when the trial began with respect to patents. Oracle had argued the '702 patent is subject to reinstatement since the PTO reversed itself prior to the "patent trial." Only three days after the copyright phase of the trial started, on April 19, and well before the patent phase of the trial starting next week, the PTO mailed a notice of intent to issue an Ex parte reexamination certificate confirming the patentability of the asserted claims of the '702 patent.

Google argued it would be prejudiced if it had to prepare for a third patent, but aren't both parties intimately familiar with the '720 patent? Further, Judge Alsup has not balanced Google's prejudice against the prejudice to Oracle if it cannot assert the '702 patent against the Android. Is it a matter of balancing the parties respective interests or sticking someone with an interpretation that streamlines the trial?

Nonetheless, unless Oracle can successfully appeal or overturn this order, I don't see how Oracle can assert the '702 patent against Google for Android in the trial.

Copyright © 2012 Robert Moll. All rights reserved.