Forgive the punny title, there is simply no way an IP columnist could write a column this week on anything other than Google’s already controversial decision against Oracle SCOTUS. (For a great recap of the majority opinion penned by Justice Breyer, I recommend the SCOTUSBlog opinion analysis penned by Ronald Mann, available here.) As everyone knows, the dispute between Google and Oracle stems from the copying of Google, which is now SCOTUS is kept as kosher Fair Use – of over 10,000 lines of code from the Java programming language from Sun Microsystem (acquired from Oracle). Google used Java as the basis for Android, the multi-billion dollar mobile operating system with which most smartphones from other manufacturers than Apple are operated. In my understanding of non-software programming, Google had the option of building Android on an entirely new programming language, but decided to use at least some Java basics to prevent third-party Android developers from writing from scratch need to start programs for Android.
Again, I’m not a software person, but I do recognize the passions that the ongoing saga between Oracle and Google has kindled. On the one hand, there are those who viewed Oracle’s attempt to get Android royalties from Google as an obvious cash robbery made even more egregious by the fact that Java was initially freely available. On the other hand, dissatisfaction appears to be growing with Google’s penchant for evading liability for violations, no matter how outrageous the company is toward non-Google intellectual property creators. All in all, it is no surprise that, even after the decision by SCOTUS, a consensus was quickly formed that this is a case that will be discussed for some time in the future.
As I pondered what this SCOTUS decision teaches us, I returned to a 2018 post I wrote for our Markman Advisors blog, shortly after the Federal Circuit won Google’s triumph over fair use in front of a California jury had discarded. Immediately after this decision by SCOTUS, which has now been reversed, I decided to ask three questions. First I asked if “Jury judgments mean nothing?” in relation to mixed factual law issues such as fair use in copyright cases or obviousness in patent litigation. Second, I asked if Oracle’s “Forum Shopping?” Can be accused. in its decision to refer the case of the 9th to the Federal Circuit by incorporating a patent plea in law. Third, I asked if Google “Free to Infringe?” Also when the Federal Circuit rejected Google’s argument that using Java code was not commercial because Android was free. Let’s see what the answers to these questions look like now that SCOTUS has spoken.
As for whether jury judgments on mixed questions of factual law are inherently prone to reverse on appeal before the Federal Circuit, I think the answer remains a resounding yes. Additionally, I agree with the conclusion of many, including Mann, that the jury’s judgment on fair use in this case was fundamentally “irrelevant”. Sure, the Federal Circuit and SCOTUS disagreed on the final fair use finding. The jury’s lack of respect, however, spoke volumes on both forums, confirming that both SCOTUS and the Federal Circuit are content with the fact that judges, not juries, make the decision as to which position to occupy merit. In my view, patent eligibility is now linked by fair use as an issue that district court judges will tempt early on as a matter in certain cases. Whether or not copyright owners share the same fate as most software patent owners who file infringement proceedings is an open question. However, I assume that the defendants will continue to do their utmost to clarify such questions early on – by the judge and not by a jury.
What about the forum shopping question? Regardless of whether you support Oracle’s decision to refer the case to the Federal Circuit, SCOTUS’s decision after the SCOTUS decision will certainly point to the story where SCOTUS overturned the Federal Circuit’s decisions as the reason for this why Oracle’s strategy was questionable. At the same time, it’s not hard to imagine that Oracle’s best shot was on a no fair use result at the Federal Circuit, which washed things up and confirmed that the entire forum shopping discussion is a sideshow at best. So we won’t talk about it anymore.
After all, this SCOTUS decision does little to reassure those who believe that Google is leading an adorable life as an efficient violator of the extra class, the IP equivalent of Marvel’s Sorcerer Supreme. However, in 2018 I found that Google was actually paying Microsoft significant royalties for a patent license for Android, which I think amplifies at least two things. First, even Google pays when faced with an IP owner of comparable resources, especially when those resources contain a mammoth patent portfolio. Second, the old adage about overlaying your IP because you never know which IP address will prove to be valuable in the future will definitely be relevant to software companies in the future. Oracle learned that lesson the hard way in this case, despite trying its best to combine patent and copyright claims in a two-pronged initial attack. But Google is a formidable IP opponent, as it has proven time and again. Including that sunny and fair spring morning in DC when SCOTUS announced Google’s latest IP win.
Please send me comments or questions at [email protected] or via Twitter: @gkroub. Suggestions or thoughts on topics are very welcome.
Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading patent consultancy to the investment community. Gaston’s practice focuses on intellectual property litigation and related advice, with an emphasis on patent issues. You can reach him at [email protected] or follow him on Twitter: @gkroub.