Judge Alsup rejects Oracle patent reinstatement

Oracle 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 informed the dueling parties on Wednesday evening that he rejected Oracle's request on the basis that "Oracle offered to dismiss with prejudice all patents that had been rejected in a final office action subject to reinstatement in the event the PTO reversed itself prior to the start of trial." The trial started on April 16, but Oracle tried to argue otherwise.

A few days later, the PTO did reverse itself as to the '702 patent but the reversal came a few days too late, for the trial had already started and the dismissals with prejudice had already become effective. Oracle's argument that the patent "trial" has not yet started is wrong. The was and is one trial with three phases. The trial started on April 16. This is not only the plain meaning of the term but any other interpretation would inject great prejudice given that the parties have relied on the issues to be tried and that reliance should not be turned on its head in mid-trial. Oracle will be required to stand by its word and live with the dismissal with prejudice.