Download INSIDER Network World GooGle/oracle

S P E C I A L R E P O R T : : M AY 2 0 1 2
NetworkWorld
THE CONNECTED ENTERPRISE
INSIDER
l Intellectual property
Google/oracle
battle in court
In what was a daily turn of he said, he said
INSIDE
2 Google liable for copyright
infringement, jury finds
2 Google files for new trial on
copyright claims in Android
suit
3 Oracle v. Google copyright
case: The road ahead
6 Andy Rubin spars with Oracle
attorney over old emails
7 Schmidt testifies Android did
not use Sun’s IP
9 Ellison knocks Oracle’s Linux
strategy
1 www.networkworld.com
NetworkWorld INSIDER
S P E C I A L R E P O R T : : J U LY 2 0 1 1
Google liable for copyright
infringement, jury finds
THE CONNECTED ENTERPRISE
By James Niccolai, IDG News Service
A
jury has found Google liable for copyright
infringement in its use of Java in Android,
but has not managed to decide whether
that infringement was protected by rules
governing “fair use.”
The verdict, delivered Monday after a week of deliberations by the jury, is a partial victory for Oracle in its
lawsuit against Google, but Oracle will have to wait longer
-- possibly for a retrial -- to see whether Google will escape
liability by claiming fair use.
Google’s attorney, Robert Van Nest, immediately told
the judge that Google would file for a mistrial. Google’s
argument will be that the same jury must decide both the
copyright infringement and fair use issues.
The jury also decided that Sun’s public statements
about Java might have suggested to Google that it did not
need a license for Java.
But in another setback for Google, it decided there was
insufficient evidence to show that Google relied on that
information.
That means the jury wasn’t swayed by a much-discussed blog post from then-Sun CEO Jonathan Schwartz
in which he congratulated Google on its release of
Android, and said that it would be good for Java.
Google did prevail on some other issues in the case,
including the finding that Google did not violate the copyright for Oracle’s Java API documentation. n
Google files for new trial on copyright claims in Android suit
G
oogle is seeking a new trial on copyright claims in
Oracle’s intellectual-property lawsuit against it over
the Android mobile OS, according to a filing made late
Tuesday in U.S. District Court for the Northern District of
California.
Oracle sued Google in August 2010, claiming Android
violated patents and copyrights that Oracle holds on the Java
programming language, which it gained control of through
the Sun Microsystems acquisition. Google has argued that
Android is a “clean room” implementation of the open-source
language, and doesn’t violate Oracle’s rights.
This week, a jury delivered a partial verdict on the copyright claims in the case, finding that Google had infringed the
2 www.networkworld.com • THE CONNECTED ENTERPRISE
“overall structure, sequence and organization” of the code
in 37 Java APIs. However, it did not answer the question of
whether Google’s infringement was protected under “fair use”
of copyrighted works.
Google’s move for a new trial was not unexpected, having
been foreshadowed in court after the verdict by its attorney,
Robert Van Nest.
“Under settled Supreme Court and Ninth Circuit law, the
jury’s failure to reach a verdict concerning both halves of
this indivisible question requires a new trial concerning both
questions,” Google said in a brief accompanying its motion on
Tuesday.
The court should declare a mistrial on both the copyright
NetworkWorld INSIDER
S P E C I A L R E P O R T : : J U LY 2 0 1 1
infringement and fair use questions, since doing so only
regarding fair
T Huse
E Cwould
O N N“violate
E C T E DtheE Seventh
N T E R PAmendmentRISE
-both by threatening Google with a non-unanimous verdict
on liability, and by having determination of the same factual
question, or indivisible factual questions, made by two different juries,” Google added.
Another layer of complexity lies in the fact that Judge
William Alsup, who is overseeing the case, has yet to rule on
whether APIs can be copyrighted at all under U.S. law.
Oracle had not yet directly responded to Google’s motion on
Wednesday, but in another filing late Tuesday, lawyers for the
company addressed the fair use issue.
The lack of a verdict on fair use “means that, without some
action by the Court and/or the parties, the trial cannot proceed
to a final verdict with this jury,” Oracle said. “Presenting the
case to a second jury would be expensive, time-consuming and
duplicative, and may impose a substantial additional delay.”
Oracle made a number of proposals in the filing, including
that both it and Google stipulate that the court decide the
issue of fair use regarding Google’s infringement of the APIs.
Should Google agree to this, Oracle would drop its claim
for infringer’s profits in connection with rangeCheck, a small
amount of Java code that the jury found Google had copied,
Oracle said. The court could then set statutory damages for
rangeCheck, it added.
As an alternative, the parties could wait until the court rules
on Oracle’s pending motion for a judgment as a matter of law
on the fair use matter, the filing added.
The patent phase of the case began this week. Should the
trial proceed as originally planned, that segment will be followed by a third phase to determine damages.
— Chris Kanaracus, IDG News Service
Oracle v. Google copyright case:
The road ahead
By John P. Mello Jr., PC World
T
he partial verdict reached in
the “tech trial of the decade”
between Oracle and Google
was just the end of round one in
a three-round bout between the
industry behemoths.
That first phase dealt with copyrights. The
second phase, which begins Tuesday, focuses
on alleged patent infringements by Google.
Following that will be phase three, which will
determine damages in the case.
While the jury submitted a verdict to the
court on the first phase of the trial, most of the
substantive issues from the phase persist.
For example, the jury decided that Google
infringed on Oracle’s intellectual property
when the search giant lifted a number of
application program interfaces from Java,
which Oracle acquired when it bought Sun
Microsystems in 2010, for its mobile operating system, Android.
However, Google’s defense of its action -that use of the APIs constituted a “fair use” of
the code -- was not decided by the jury. Since
the case began, both Google and Oracle have
argued that Judge William Alsup should
decide the fair use issue.
Alsup, though, seems intent on having the
3 The partial verdict
reached in the “tech
trial of the decade”
between Oracle and Google
was just the end of round
one in a three-round bout.
jury settle the matter. He assigned the question to them during the first phase of the trial
and has suggested that the question be resubmitted to the jury after the patent phase is
finished.
The jury’s failure to decide the fair use
issue in its verdict in phase one has prompted
Google to file for a mistrial in the case. Alsup is
expected to rule on that motion soon.
What’s more, whether those APIs can be
copyrighted in the first place also remains
in question. Historically, APIs have not been
subject to copyright. And recently, the European Union affirmed that notion.
“To accept that the functionality of a computer program can be protected by copyright would amount to making it possible to
monopolize ideas, to the detriment of technological progress and industrial development,”
the Court of Justice of the European Union
ruled in a case involving the SAS Institute and
www.networkworld.com • THE CONNECTED ENTERPRISE
World Programming.
Oracle claims, however, that the Java APIs
are sufficiently complex to deserve copyright
protection.
That question is on Alsup’s plate, too. He
has set a May 14 deadline for Google and Oracle to submit their arguments on the question
to him.
The question is an important one for the
entire high-tech sector, but especially for
“cloud” providers, many of them users of APIs
cloned from Amazon Web Services. If Alsup
rules that companies can copyright their
APIs, those cloud providers would suddenly
become the target of lawsuits.
The second phase of the trial is less complicated than the first. It involves two patents
and is expected to last about two weeks.
Damages will be considered in the last
phase of the case. Oracle originally asked for
a billion dollars in damages and a permanent
injunction against Google from using infringing code. Most of that would come from the
alleged copyright violations, as experts
peg the maximum damages for the patent
infringements to be $150,000.
Oracle also wants a cut of any profits
Google may have earned by using the infringing code, a demand that Alsup reportedly
said “bordered on the ridiculous.” n
NetworkWorld INSIDER
S P E C I A L R E P O R T : : J U LY 2 0 1 1
Oracle wants judge to bar exSun CEO Schwartz’s testimony
THE CONNECTED ENTERPRISE
The move comes as jurors deliberate over whether Google violated Java copyrights
By Chris Kanaracus, IDG News Service
O
racle has asked a judge to bar
Google from using some testimony
given by former Sun Microsystems
CEO Jonathan Schwartz in the companies’ intellectual-property suit
over the Android mobile OS, saying it has “no
legal and factual predicate.”
Schwartz has provided some of the strongest
testimony for Google in the case so far. Appearing
on the stand last week, Schwartz was asked by a
Google attorney whether, as CEO of Sun, he had
made a decision not to sue Google over its use of
Java in Android.
“Yes,” Schwartz replied. “We didn’t feel we had
any grounds.”
Oracle acquired Sun early in 2010, gaining control of the Java programming language. It sued
Google later that year, claiming Android violated
patents and copyrights it holds on Java. Google has
denied wrongdoing, saying Android is a “clean
room” Java implementation that doesn’t violate
Oracle’s rights. The trial’s first phase, which covers copyright liability, began in April and went to
the jury this week.
Oracle asked the court to bar Google from referencing Schwartz’s testimony during the trial’s
second and third phases, which will cover Oracle’s patent claims and
damages, respectively.
“Google’s question called for a yes or no answer, but Mr. Schwartz
in response volunteered an opinion as to what ‘we’ ‘felt’ about the
grounds for pursuing litigation against Google over Android,” its
motion states.
“The question appeared to ask only whether Mr. Schwartz had made
a decision not to pursue litigation,” Oracle added. “But Mr. Schwartz’s
answer -- and Google’s subsequent use of that answer -- implicates
Sun’s (now Oracle’s) privileged discussions by suggesting that there
was an unidentified group of people (“we”), who had made some final
decision as to whether to pursue litigation and the strength of those
claims.”
“What legal grounds Sun’s management felt they had or what decisions they were considering is clearly privileged,” Oracle said. “Moreover, Mr. Schwartz had no right nor any basis to make such a statement
which subjects Oracle to privilege waivers that Mr. Schwartz has no
authority to invoke.”
Also, “the suggestion that Oracle had decided not [to] sue is clearly
against the weight of the evidence presented in this case,” Oracle said.
4 www.networkworld.com • THE CONNECTED ENTERPRISE
Evidence presented in the trial
showed that Sun and Google had
discussions following the announcement of Android in 2007, that those
talks went on after Oracle bought
Sun, and that Google officials considered buying “all the rights to Java”
from Sun in order to ward off lawsuits, according to the filing.
If Oracle had decided to rebut
Schwartz’s testimony at the time he
made it, that would have placed the
company “in the quandary of having
to decide whether to waive privilege
on the spot,” Oracle added. “If Google
is allowed to rely on this testimony,
and the jury is allowed to believe
that it matters, the trial will divert
into an irrelevant sideshow over Mr.
Schwartz’s subjective state of mind,
instead of Sun’s affirmative acts.
Lawyers for the two sides discussed the matter in court Friday
morning. Google’s attorney, Robert
Van Nest, indicated that Sun wanted
to bring Schwartz back to the stand
to testify in the patents phase of the
trial. In his deposition testimony,
Schwartz made a similar comment that Sun did not see a reason to sue
Google on patent grounds, Van Nest said.
Google declined to comment today.
Meanwhile, Oracle has said it plans to bring back to the stand Tim
Lindholm, a Google engineer who wrote an email that was seen as a
key piece of evidence in the copyright infringement part of the trial.
Oracle says Lindholm can give testimony relevant to the patents part
of the case.
Van Nest told the court that if Oracle can bring Lindholm back and
“parade him around” before the court, then Google should be able to
bring Schwartz back.
The judge didn’t seem keen to have either witness back. Both seem
“peripheral” to the dispute over patents, he said Monday, and he asked
the lawyers to try “make a deal” that neither witness be brought in to
testify again.
The matter is likely to be discussed again at a future hearing.
A verdict in the copyright phase of the case could come as soon as
Friday, but a question from a juror to the judge on Thursday raised
the possibility that the jury could be deadlocked on the copyright
claims. n
NetworkWorld INSIDER
S P E C I A L R E P O R T : : J U LY 2 0 1 1
Ex-Sun boss McNealy sides
with Oracle in Google dispute
THE CONNECTED ENTERPRISE
McNealy backed Oracle’s arguments in court
By James Niccolai, IDG News Service
F
ormer Sun boss Scott McNealy
sided with Oracle on Thursday
in its dispute with Google over
Android, testifying in court that
companies needed a license to
use Sun’s Java programming interfaces.
McNealy’s testimony contrasted with that
of Jonathan Schwartz, who became Sun’s
CEO after McNealy and was also on the stand
Thursday. Schwartz emphasized Java’s openness and testified that Sun never felt it had
grounds to bring a lawsuit against Google.
The two were testifying in the second week
of Oracle’s lawsuit against Google, in which
it accuses the company of infringing Oracle’s
Java patents and copyrights in the Android
OS. Oracle acquired the rights to Java when it
bought Sun in early 2010.
McNealy co-founded Sun in 1982 and was
its chairman and CEO until 2006, when
I cashed out. I think
the money had
already been made.
scott mcnealy
he handed the CEO title to Schwartz. He
remained chairman until Oracle bought Sun.
The former Sun chiefs disagreed with each
other on several issues, and the jurors will
have to choose who to believe.
For example, Schwartz suggested his blog
at Sun reflected the company’s corporate policy and that his blog posts were “the equivalent of holding a press conference.” A 2007
post from Schwartz congratulating Google
on Android’s release has become an important piece of evidence at trial.
However, McNealy said twice he had never
read Schwartz’s blog, and that Sun’s policy on
blogs was that they were “not corporate but
rather personal things.”
They also disagreed on whether companies needed a license to use Sun’s application
programming interfaces for Java, a central
5 issue in the case. McNealy said Sun licensed
its APIs and compared them to “architectural
drawings” -- similar to Oracle’s characterization of the APIs as “blueprints.”
Schwartz testified that companies could
use Java without a license so long as they
didn’t claim to be “Java compatible” and use
the Java logo.
Attorneys for each side tried to undermine
the jury’s confidence in both men’s testimony.
Robert Van Nest, an attorney for Google, suggested to McNealy that he was a “close personal friend” of Oracle CEO Larry Ellison
and that he had made “a great deal of money”
when Oracle bought Sun.
www.networkworld.com • THE CONNECTED ENTERPRISE
“I cashed out,” McNealy said. “I think the
money had already been made.”
Van Nest also noted that McNealy referred
to Ellison in a speech last year as “a national
economic hero” and suggested renaming a
local airport after him.
“Anyone who pays that much taxes is a
national economic hero,” McNealy said
Thursday.
Michael Jacobs, an attorney for Oracle,
asked Schwartz at the end of his testimony
if he had not been “fired on day one” when
Oracle took over Sun.
“I believe I resigned,” Schwartz said. “They
already had a CEO.” n
NetworkWorld INSIDER
S P E C I A L R E P O R T : : J U LY 2 0 1 1
Andy Rubin spars with Oracle
attorney over old emails
THE CONNECTED ENTERPRISE
Oracle says the emails to and from Rubin show that Google knew it needed a license
for Java to build Android
By James Niccolai, IDG News Service
A
ndy Rubin, the head of Google’s
Android development team, took
the witness stand for the first
time Monday in Oracle’s lawsuit
accusing Google of patent and
copyright infringement in its Android OS.
Oracle tells court about patent victory
Rubin tussled with noted trial lawyer
David Boies, acting for Oracle in the case, over
emails that Rubin sent or received in 2005
and 2006, when Google was first starting its
Android development.
Oracle has accused Google of infringing
its Java patents and copyrights in Android.
Google denies any wrongdoing, saying it
built a “clean room” version of Java that does
not contain any of Oracle’s protected intellectual property.
Oracle says the emails are evidence that
Google knew it needed a license for Java to
build Android, but that it forged ahead without one because it failed to negotiate a Java
license with Sun. Oracle acquired the rights
to Java when it bought Sun two years ago.
In one of the emails, Rubin wrote: “I think
a clean room implementation is unlikely
because of the team[‘]s prior knowledge, and
it would be uncharacteristically aggressive of
us to position ourselves against the industry.”
“So you’re saying that team had too much
prior knowledge to operate in a clean room
environment, correct, sir?” Boies asked Rubin.
“I think that’s reading a lot into that small
sentence,” Rubin answered. “I wouldn’t go
that far.”
In another email, Rubin wrote that the Java.
lang API (application programming interface) was covered by copyright.
“You meant copyrighted by Sun, yes?” Boies
asked.
“I didn’t say that,” replied Rubin.
“But you meant Sun, yes?” asked Boies.
Rubin: “Yes, in the context of this I think
that I meant the APIs were copyrighted.”
“By Sun?” Boies pressed.
6 “Yes,” replied Rubin.
The Android chief was questioned for only
25 minutes, since he was called to the stand
shortly before the trial ended for the day.
Oracle will resume his questioning Tuesday,
when Eric Schmidt, Google’s executive chairman, is also expected to testify.
Earlier Monday, Oracle
called Bob Lee, a former
Google engineer who is now
the CTO of mobile payments
company Square, and John
Mitchell, a computer science
professor at Stanford University who Oracle hired as
an expert witness in the case.
The trial is being held
in three phases. This first,
which could wrap up by
Friday, is to determine the
copyright accusations. The
second is for the patent accusations, and the third will
decide what damages Oracle
will be awarded if it prevails on either of the
first two.
That was the original plan anyway,
although the judge in the case, William Alsup,
indicated Monday that he might ask the jury
to decide any copyright damages at the end of
this first phase. That’s because any damages
will depend partly on whether Google’s copyright infringement was wilful, and the judge
has said Rubin’s emails might be evidence of
wilful infringement.
He thinks it might be better, therefore, for
the jurors to decide damages while the emails
are fresh in their minds. He didn’t make a
decision on that Monday but asked the lawyers for both sides to think about it.
A bigger question in the case is whether
most of the code that Google is accused of
copying can be protected by copyright at all.
That’s something the judge will rule on himself, based on the evidence in the case and his
interpretation of the law.
The most serious copyright claim against
www.networkworld.com • THE CONNECTED ENTERPRISE
Google involves 37 Java APIs, or application
programming interfaces, that Google is said
to have copied from Java for use in Android.
Google argues the APIs are a fundamental
requirement for using the Java programming
language, and that because the language is
free for anyone to use without a license, the
APIs also cannot require a
license. Google also characterizes the APIs as just
“names” and “short phrases”
that programmers use to
invoke other parts of the
platform.
Oracle disagrees. It
argues that the “structure,
sequence and organization”
of the APIs took years for
Sun’s engineers to develop
and are therefore subject
to copyright. Mitchell, the
expert witness for Oracle,
backed up its claim Monday.
“API design is a really creative process,” he testified.
Mitchell said the Android APIs at issue in
the case are “essentially identical” to those
created by Sun. “I don’t think there’s any way
a separate team could have come up with so
many things that are identical except by copying the original APIs,” Mitchell said.
On cross-examination, however, Google’s
lawyer got Mitchell to confirm that some of
the Java APIs at issue in the case, such as java.
io, are a requirement for the most basic functions in Java a program, such as networking
to another computer.
Google’s lawyer also got Mitchell to
acknowledge that some of the APIs at issue
are described in the book “The Java Language
Specification,” suggesting they’re parts of the
language and not something that need to be
licensed separately from it.
Oracle may finish presenting its evidence
in the copyright phase of the trial Tuesday,
meaning Google will get to call its own witnesses and begin its defense. n
NetworkWorld INSIDER
S P E C I A L R E P O R T : : J U LY 2 0 1 1
Schmidt testifies Android did
not use Sun’s IP
THE CONNECTED ENTERPRISE
Google built a ‘clean room’ version of Java and did not use Sun’s intellectual property
By James Niccolai, IDG News Service
G
oogle developed its Android
smartphone software without using Sun’s intellectual
property and its use of Java in
Android was “legally correct,”
Google’s executive chairman, Eric Schmidt,
testified in court Tuesday.
Schmidt was on the stand for day seven
of the jury trial between Oracle and Google.
Oracle wrapped up the copyright portion of
its arguments Tuesday, allowing Google to
begin its defense.
Oracle accuses Google of infringing its Java
patents and copyrights in Google’s Android
software. Google says it did nothing wrong,
and used only the parts of Java that Sun made
freely available to anyone.
Before joining Google, Schmidt was CTO
of Sun Microsystems when it invented Java
in the 1990s. Oracle bought Sun about two
years ago, giving it the patents and copyrights
to the Java platform.
Schmidt gave the jury a brief history of Java,
describing its release as “an almost religious
moment.”
He told the jury that Google had once hoped
to partner with Sun to develop Android using
Java, but that negotiations broke off because
Google wanted Android to be open source,
and Sun was unwilling to give up that much
control over Java.
Instead, Schmidt said, Google created a
“clean room” version of Java that didn’t use
Sun’s protected code. Its engineers invented
“a completely different approach” to the way
Java worked internally, Schmidt testified.
“It did not use Sun’s intellectual property, as
I was told,” he said.
“I was very comfortable that what we were
doing was legally correct,” he testified later.
One of Google’s arguments in the case
is that Sun knew Google was using Java in
Android but never complained or asked it to
sign a license. That gave Google an “implied
license” for Java, if it needed one at all, according to Google’s lawyers.
7 Schmidt said he used to “meet and chat”
with former Sun CEO Jonathan Schwartz
every six months, and that Schwartz never
raised an issue with Google’s Java use.
Under cross-examination from David Boies,
an attorney for Oracle, Schmidt said one of his
meetings with Schwartz was in the cafeteria at
Sun’s offices in Menlo Park, California.
“When did this recollection of a Menlo Park
meeting come to you?” Boies wanted to know.
“I’m not sure,” said Schmidt.
Boies read from deposition testimony
Schmidt gave before the trial began. In it,
Schmidt says he doesn’t remember the specifics of his conversations with Schwartz, but
that he thought they took place in Schwartz’s
office and over the phone.
On the stand, Schmidt said he stood by his
earlier testimony.
A key question in the case is whether the
APIs in Java can be copyrighted. Google
argues they can’t because they are an essential
www.networkworld.com • THE CONNECTED ENTERPRISE
part of the Java programming language, which both sides agree is
freely available for use.
“The Java language is not useful
without the ability to make something happen, and what the API
does is allow you to make something happen,” Schmidt told the
jury.
Oracle says the APIs are complex creative works, like the blueprints for a house.
“Did anyone at Sun call the APIs
‘blueprints?’” Google’s lawyer
asked Schmidt.
Schmidt said they did not.
Earlier in the day, Oracle finished its questioning of Andy
Rubin, the head of Google’s
Android division. Boies wanted
Rubin to admit that Google knew
Sun was concerned about the fragmentation of Java.
The answer could affect any
damages awarded to Oracle, and
Rubin seemed determined not
to give Boies the answer he wanted. He said
several times that he didn’t know how Sun
defined “fragmentation.”
The normally calm and measured Boies
grew exasperated, at one point raising his
voice.
“Did you ever ask what people meant when
they talked about fragmentation?” Boies asked.
“No,” said Rubin.
“The reason you didn’t ask is because you
knew perfectly well what fragmentation
meant, didn’t you sir?” Boies said pointedly.
The trial is divided into three phases, to
address copyrights, patents and damages.
Oracle is seeking about US$1 billion in damages, as well as an injunction that could force
Google to change the way it built Android.
The trial, at the U.S. District Court in
San Francisco, is expect to last about eight
weeks. It has already seen Oracle CEO Larry
Ellison and Google CEO Larry Page give
testimony. n
NetworkWorld INSIDER
S P E C I A L R E P O R T : : J U LY 2 0 1 1
Oracle loses bid to assert third
patent in Google trial
THE CONNECTED ENTERPRISE
By James Niccolai, IDG News Service
O
racle has lost its bid to assert a
third patent in its trial against
Google, with a favorable decision
from the U.S. Patent & Trademark Office coming “a few days
too late,” a judge ruled on Wednesday.
Oracle’s original lawsuit accused Google
of infringing seven Java-related patents in its
Android OS, as well as Java copyrights. Google
asked the patent office to reexamine all seven
of the patents, and it managed to get five of
them invalidated before the trial started.
The U.S. patent office sometimes grants
patents that should not have been awarded,
because the inventions were too obvious or
not original enough, for example. Parties in
legal disputes often ask for patents to be reexamined in the hope of getting them overturned.
Oracle appealed the patent office decisions
that went against it, but to keep the case moving along it agreed to drop any patents from
its suit that were not decided upon before
the trial started on April 16. The patent office
ruled in Oracle’s favor on its patent, number
5,966,702, a few days later.
The trial is being held in three parts, to
determine the copyright claims, the patent
claims and any damages that Oracle will be
awarded. Oracle argued that since the patent
phase of the trial has not yet started, it should
be able to include the ‘702 patent at trial.
Judge William Alsup, who is hearing the
case, disagreed.
“Oracle’s argument that the patent ‘trial’
has not yet started is wrong. There was and is
one trial with three phases. The trial started
on April 16,” Alsup wrote in his ruling.
Oracle agreed to dismiss the patent “with
prejudice,” which means it can’t assert it
against Google at a later date, even in a new
trial.
The patent describes a “method and
apparatus for pre-processing and packaging class files.” n
Oracle tells court about patent victory
By Mikael Ricknaus, IDG News
Service
O
racle scored a victory in its
battle with Google, as the US
Patent and Trademark Office
decided to uphold a Java patent it had previously rejected,
according to a court filing.
On April 19, the USPTO sent a notice of
intent to issue a so-called Ex Parte Reexamination Certificate confirming all the asserted
claims of the 5,966,702 patent, according to a
filing made on Sunday by Oracle to the U.S.
District Court in San Francisco, where the
8 trial between Oracle and Google got under
way last week.
Oracle has done its utmost to prove the
validity of the patent, which specifies a
method for pre-processing and packaging
class files in order to improve Java performance. The patent had already been rejected
twice, but Oracle didn’t give up and finally got
the office to confirm its validity.
The court filing doesn’t include any information on what Oracle plans to do following this
victory, only informing the court that it had
happened. However, there’s no reason why
the patent couldn’t be added to the two that are
already part of the trial, according to Florian
www.networkworld.com • THE CONNECTED ENTERPRISE
Mueller, author of the FOSS Patents blog.
In March, Oracle said it would withdraw
litigation related to the patent if it remained
rejected at the time of trial in an effort to get
it under way during the spring, according to
a court filing.
In the March filing, Oracle also reiterated
its objection to allowing information about
the reexamination of 5,966,702 and two others to be presented to the jury at trial. But the
company acknowledged the court’s ruling to
permit the jury to learn of rejections made by
the examiner until that point.
Oracle didn’t immediately reply to questions about Sunday’s latest filing. n
NetworkWorld INSIDER
S P E C I A L R E P O R T : : J U LY 2 0 1 1
Page doesn’t recall
details of Java
negotations
THE CONNECTED ENTERPRISE
By James Niccolai, IDG News Service
G
oogle CEO Larry Page told a
jury on Wednesday that he
remembers little about Google’s
attempts to negotiate a Java
license from Sun, during 40
minutes of tense questioning in Oracle’s
lawsuit against Google over Android.
“I don’t remember the details of when we
were or were not negotiating with Sun, it
seemed to go on for a long time,” Page told the
jury at the U.S. District Court in San Francisco.
Page also testified that he didn’t remember
asking Google engineer Tim Lindholm to
investigate possible alternatives to Java for
use in Android. An email from Lindholm
that concludes Google needed to negotiate a
license for Java is seen as an important piece
of evidence in the case.
Page told the court that he didn’t remember
receiving the email.
The Google executive was on the stand
for day three of the trial in Oracle’s lawsuit
against Google, which accuses it of infringing Oracle’s Java patents and copyrights in
Google’s Android OS. Oracle acquired Java
when it bought Sun in 2010.
Google says it built Android using parts of
Java that don’t require it to have a license and
denies any wrongdoing.
Page seemed unwilling to give direct
answers to some of the questions from David
Boies, a well-known trial lawyer representing
Oracle in the case.
“It is important you try to answer most questions ‘yes’ or ‘no,’ Judge William Alsup told
Page at one point.
Boies asked Page if he knew that Sun
wanted to avoid Java being fragmented into
incompatible versions.
“You knew Sun wanted to avoid
Ellison knocks Oracle’s Linux strategy
T
he Oracle v. Google trial is kind of hard to miss this week, and it’s dragging
out all kinds of nuggets of information. One of the best this week? Oracle’s
CEO unintentionally taking a jab at his own company’s enterprise Linux
strategy.
Talking about copyrights, Ellison defended the attack on Google and says that
copyrights are necessary for protecting Oracle’s R&D efforts. According to Mercury News [1], Ellison said “If people could copy our software and create cheap
knockoffs of our products, we wouldn’t get paid for our engineering and wouldn’t
be able to invest what we invest.”
The funny thing is, copyrights haven’t kept Oracle from copying Red Hat
Enterprise Linux (RHEL), adding a few tweaks, and rebranding it as “Unbreakable
Linux.” It doesn’t seem to keep Ellison up at night that Oracle’s strategy could
hamper Red Hat’s efforts and prevent it from investing in the R&D that produces
RHEL.
Clearly, Oracle is unwilling to participate fully in the system that they’re benefiting from, though. Red Hat, faced with Oracle and others copying RHEL, has
“obfuscated” its kernel code [2] and generally doesn’t go out of its way to make
the copying easy. What they haven’t done, though, is to try to use the courts to
prevent competition.
If Ellison has a problem with “cheap knockoffs,” maybe he ought to re-think
Unbreakable Linux.
— Joe Brockmeier
9 www.networkworld.com • THE CONNECTED ENTERPRISE
fragmentation?” Boies asked.
“It’s hard for me to speculate ... it wouldn’t
surprise me,” Page said.
“Is it your testimony that you would have to
speculate to say if Sun wanted to avoid fragmentation of Java?” Boise asked.
“There are many parts of Java,” said Page.
The judge told Page again he had to answer
yes or no, and Page eventually said he knew
that Sun wanted to avoid fragmentation.
Page also testified that Android was important to Google in 2005, but not “critical.” And
he acknowledged that Google does not have
a policy in place that prohibits its engineers
copying other companies’ code.
“I’m not aware of any such policy; I think we
do a lot to protect intellectual property in our
business,” he said.
Under questioning from Google’s own
lawyer, Page said Google had wanted to use
Java because it would save “a lot of time and
trouble” in the development of Android.
“When we were unable to come to terms on
that business partnership, we went down our
own path,” Page said. “We took the free Java
language and implemented it in a clean room,”
meaning it developed the remaining Java
components without looking at Sun’s code.
Oracle said it plans to call Page back to
the witness stand later in the trial. It wants
to question him about certain other Google
documents, but the judge ruled Wednesday
that those documents hadn’t been properly
submitted yet as evidence. n
NetworkWorld INSIDER
S P E C I A L R E P O R T : : J U LY 2 0 1 1
Google says it had Sun’s full
support in building Android
THE CONNECTED ENTERPRISE
By James Niccolai, IDG News Service
G
oogle built Android using parts
of Java that didn’t require a
license and it had the full support of Sun Microsystems in
doing so, a lawyer for Google
said in court Tuesday.
“The source code in Android was written by
Google engineers or taken from open source
platforms that were available and open for
use,” attorney Robert Van Nest told the jury
in Google’s opening statement.
Sun’s own chief executive, Jonathan
Schwartz, congratulated Google when it
released Android, saying it strapped a “set
of rockets” to Java that would help ensure its
success, Van Nest said.
Van Nest delivered his opening statement
on day two of the trial in Oracle’s lawsuit
against Google. Oracle accuses the company
of infringing its Java patents and copyrights
in Android.
Sun’s support for Android proves that
Google didn’t violate Sun’s patents and copyrights, since Sun had ample opportunity to
view the Android source code that was posted
on Google’s website, Van Nest told the jury.
Oracle delivered its opening remarks Monday, arguing that Google’s decision to use Java
was taken at “the highest levels” and with the
knowledge that Google was infringing.
However, Oracle now wants to “share in
Google’s success with Android” even though
it had nothing to do with its development, Van
Nest said.
Van Nest spent some time explaining the
various components of Java to the jury, including the programming language, the Java APIs
(application programming interfaces) and the
Java virtual machine.
At one point, he hauled a filing cabinet into
the room to help illustrate how the different
components fit together -- the cabinet, drawers and manila folders each representing different parts.
Google argues that the Java programming
language and the APIs are essentially two
parts of the same thing, and that the APis
aren’t copyrightable because the language
isn’t copyrightable. Oracle argues that the
APis are distinct and that Google needed a
license to use them.
Oracle’s own statements suggest that
Google made fair use of Java, Van Nest argued.
He showed a video clip of Oracle CEO Larry
Ellison on stage at JavaOne, after Oracle had
announced its plans to buy Sun.
Sun did an excellent job of “opening Java up to
the world” and Oracle expects to be doing “more
of the same,” Ellison says in the video clip.
“I think we can see lots and lots of Java
devices, some coming from our friends at
Google, but I don’t see why some of those
devices shouldn’t come from Sun-Google,”
Ellison continues in the video.
One reason Oracle sued Google is because
Oracle hoped to build its own smartphone platform, but the effort failed, Van Nest said. n
Oracle says Google knowingly
‘broke the rules’ with Java
By James Niccolai, IDG News Service
O
racle and Google kicked off a
high-stakes jury trial in San
Francisco on Monday, with
Oracle arguing that Google ran
roughshod over its intellectual
property rights because the search giant
was scared of getting left behind in the
mobile advertising business.
“This case is about Google’s use, in Google’s
business, of somebody else’s property without permission,” said Michael Jacobs, an
attorney for Oracle, in his opening remarks
to the jury.
Oracle sued Google 18 months ago, arguing
that its Android operating system infringes
10 Java patents and copyrights that Oracle acquired
when it bought Sun Microsystems. Google
denies any wrongdoing and says it doesn’t need
a license for the parts of Java it used.
Judge William Alsup, who is hearing the
case, warned both sides on Monday that
they’ll need to show good cause for any evidence submitted at trial to be kept from the
public, and that unflattering details about
either side might emerge.
“Unless it’s the recipe for Coca-Cola, it’s
going to be public,” Alsup said. “If it reveals
something embarrassing about the way one of
these companies works, too bad. That’s going
to be out there for the public to see.”
Most of the opening day was taken up with
jury selection, but Jacobs had time to deliver
www.networkworld.com • THE CONNECTED ENTERPRISE
Oracle’s opening statement before the proceedings wrapped up. Google will give its
opening statement Tuesday morning.
Jacobs cited several emails to and from
Google executives that he said would show
that Google knew it needed a license for Java
and that, having failed to negotiate one, it
developed Android with Java anyway.
Google’s use of Oracle’s intellectual property wasn’t a mistake or the result of any confusion, Jacobs told the jury.
“The decision to use Oracle’s intellectual
property in Android was taken at the highest levels, with a lot of comprehension and
awareness about what was going on,” he said.
Google made most of its money from desktop advertising, he said, and the popularity
NetworkWorld INSIDER
S P E C I A L R E P O R T : : J U LY 2 0 1 1
of smartphones made Google realize around
Oracle’s witness list includes its CEO, Larry
2005 that it needed a mobile software plat- Ellison, Google CEO Larry Page, Google ExecT H E C O N N E C T E D E N T E Rutive
P R IChairman
SE
form to stay competitive.
Eric Schmidt and former Sun
Google had to develop Android quickly, CEOs Scott McNealy and Jonathan Schwartz.
and it had to attract developers to be sucBefore jury selection took place Monday,
cessful, he said. “How did they meet those
Alsup had to settle some last-minute disputes
requirements? The answer is with compo- between the two sides.
nents of Java.”
Google thought it would be unfair if Oracle
Other companies such as eBay, Cisco Sys- were allowed to tell the jury it paid $7.4 billion
tems and General Electric bought licenses to
to buy Sun, because it might inflate the value
use Java, but Google “broke the basic set of
of Java in the minds of the jurors.
rules governing the Java community,” Jacobs
“They’ve been dying to throw that number
said.
around,” Robert Van Nest, an attorney for
Some big Silicon Valley names are
Google, told the judge.
expected to be called to testify in the trial.
Alsup ruled against him but nevertheless
cautioned Oracle to be careful how it used
such figures. “The idea that you can throw big
numbers around in front of the jury and somehow jack up the damages award if there is one ...
that’s not going to be allowed,” Alsup said.
The trial will be held in three phases: first
to hear the copyright claims, then the patent
claims, and then any damages Oracle might
be awarded. Oracle is seeking about $1 billion
in damages and an injunction to block Google
from shipping any infringing code.
The lawsuit is seen by many as a test case
for whether software APIs (application
programming interfaces) can be subject to
copyright. n
Oracle, Google fail to reach
settlement in Android lawsuit
By Nancy Gohring, IDG News Service
O
racle and Google have failed to
settle their intellectual property
dispute and appear headed to
court on April 16.
On Monday, the magistrate
judge overseeing talks between the companies said that the parties won’t meet again to
try to settle their issues in the runup to the
trial over whether Google infringed on Oracle
patents and copyright in the Android OS.
“Despite their diligent efforts and those of
their able counsel, the parties have reached an
irreconcilable impasse in their settlement discussions... No further conferences shall be convened. The parties should instead direct their
entire attention to the preparation of their trial
presentations. Good luck,” U.S. Magistrate
Judge Paul Grewal wrote in an order.
Grewal had ordered Oracle President Safra
Catz and the head of Google’s Android division, Andy Rubin, to attend settlement talks.
He had set April 9 as the final date for such
talks but appears to have decided that a continuation of the discussion would be futile.
The trial is set to start on April 16 and could
last for eight weeks.
Oracle sued Google in 2010, charging it
with infringing patents and copyright in the
Android operating system. The scope of the suit
has narrowed considerably but could still have
an impact on handset makers that use Android.
11 Grewal’s statement is unusually thoughtful
for a court order. While federal district courts
may resolve cases through default judgments,
summary judgments or by convening settlement conferences, sometimes a trial is necessary, he wrote. “Even though the overwhelming majority of cases are resolved by these and
other means, we are not referred to in passing
as judgment courts, or settlement courts. We
are referred to as trial courts because, in the
end, some cases just need to be tried,” he wrote.
Outcome could affect all developers
By James Niccolai, IDG News Service
Oracle and Google are due in court Monday for the start of an eight-week jury trial
that could have significant implications for
developers of Android applications, as well
as potentially for developers of other software.
The trial is to determine whether Google
violated Oracle’s patents and copyrights when
it decided to build Android using Java. Oracle
says Google needed a license for the technology, while Google contends it built Android in
a way that doesn’t require it to have one.
Oracle is seeking damages that could reach
hundreds of millions of dollars if it can prove
willful infringement. Perhaps more serious
for Google, Oracle wants an injunction that
could force the maker of Android into making changes to its code.
It’s unclear if Oracle’s case is strong enough
to win an injunction, however. It’s in a weaker
www.networkworld.com • THE CONNECTED ENTERPRISE
position than when it filed its lawsuit 18
months ago. Of the seven patents it originally
asserted, five have been invalidated by the
U.S. Patent and Trademark Office, and a sixth
expires at the end of the year.
Oracle also has copyright claims, and has
produced examples of where it says Google copied its code. The copyright claims are now the
strongest part of Oracle’s case, according to Florian Mueller, who writes the FOSS Patents blog.
The trial may be significant even for developers of other platforms besides Android,
because it could set a precedent as to whether
software APIs can be protected by copyright.
The trial will be in three phases, starting
with the copyright claims, followed by the
patent claims. If Oracle prevails at either of
those stages, a third phase will address what
damages it’s entitled to.
The trial will likely see high-profile executives called to the stand, including Andy
Rubin, the head of Google’s Android business. Some of the discussion will be highly
technical, and the judge has ordered both
sides to produce a video tutorial to help the
jury understand concepts such as APIs and
class libraries.
Both sides agree that the Java programming language is not covered by copyright
and that developers can use it freely without
a license. But one point they disagree on is
whether Google needed a license for the Java
APIs used to implement the language. n