Google Asks Patent Office for Second Opinion on Oracle's Android Claims

 
 
By Darryl K. Taft  |  Posted 2011-02-17
 
 
 

Google has asked the U.S. Patent and Trademark Office to re-examine four of the patents that Oracle sued the search giant for infringing with Android.

According to a post on the Westerman Hattori Daniels & Adrian (WHDA) law firm's blog, Google requested ex parte re-examination of four Oracle America patents-U.S. Patent Nos. 5,966,702, 6,061,520, 6,125,447 and RE 38,104-related to the "Java platform."

In August 2010, Oracle sued Google for infringing seven of its Java patents and a series of copyrights. Although Google only requested re-examination of the four patents listed, the company could later request re-examination of the remaining three.

Under the re-examination process, a party can have a patent re-examined by a patent examiner to verify that the subject matter it claims is patentable. To have a patent re-examined, an interested party must submit prior art that raises a substantial new question of patentability.

Scott Daniels, a partner with the WHDA intellectual property law firm and author of the firm's post, said, "Google might also request that the trial judge, Judge William H. Alsup, to stay the case pending completion of the re-examination proceedings, but such a stay might not be granted since Google and Oracle America are direct competitors and since re-examination could not resolve the copyright allegations."

Oracle asserts that Android, including the Dalvik virtual machine and the Android software development kit (SDK), infringes Oracle's Java patents. And Google is hoping the USPTO can give the company some wiggle room in the lawsuit.

Yet, Florian Mueller, an intellectual property activist and free and open-source software supporter, said he believes Google is by itself too weak to protect Android from lawsuits.

In a blog post titled "Google is patently too weak to protect Android," Mueller cites the number of patents held by the major IT companies and indicates that with only 576 patents (at the time of his post), Google is not in a position of strength against competitors.

"While Google has ramped up its patenting activity in recent years, the gap in portfolio strength between the Android developer and its mobile operating system competitors actually appears to be widening," Mueller said in the post.

In 2010, IBM continued its streak of claiming the top spot with the most patents awarded to any company by the USPTO. IBM was first with 5,896 patents, Samsung came in second with 4,551 patents, and Microsoft was third with 3,094 patents. Also in the top 10, Intel was eighth with 1,653 patents and HP was 10th with 1,480 patents. Meanwhile, Mueller called Apple a "rising star," as it gained 563 new patents in 2010 and ranked 46th. And Oracle America, formerly Sun Microsystems, ranked 43rd with 646 patents.

In the mobile space, "The operating system that is the target of more infringement action than any other is Google's Android," Mueller said. And worse yet, Mueller says Google cannot solve Android's problems through cross-licensing.

Expanding on that point, Mueller said:

"Cross-licenses are the way most patent disputes between large companies are resolved. If there is parity in terms of how much each party needs the other company's patents, the deal may be done without money changing hands. In most cases, however, one company will have the upper hand and make a payment to compensate for the difference in portfolio value. Still, such payments tend to be much lower than the cost incurred by a 'have-not' who needs a license from a powerhouse. In a price-sensitive, highly competitive market such as smartphones, the cost of patent licensing is eminently important."

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