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Oracle v. Google Headed Back to District Court for a Third Time

Posted Thursday, March 29, 2018 by Kyle Straughan

In 2010, Oracle, having just acquired Sun Microsystems and their portfolio of intellectual property, sued Google for copyright and patent infringement for copying Java APIs(1). Oracle argued that Google had chosen to copy the APIs rather than pursue a license for Oracle’s Java software platform. The lawsuit went to trial for the first time in 2012, where Oracle initially lost. On appeal, Oracle prevailed on its claims that Google had copied the APIs in Java, which the appeals court held were eligible for copyright. The Federal Circuit sent the case back for jury trial to determine of Google’s use of the APIs was fair use.

In 2016 the jury in the second trial determined that Google’s use of the APIs was fair use, and Oracle appealed once again. Despite the jury verdict, Oracle asked for judgment as a matter of law that the use was not fair, and to thus begin a new trial to determine damages. The judge declined to do so.

Oracle once again appealed to the Federal Circuit, and on March 27, 2018 the Federal Circuit held that Google’s use of the API packages was not fair use as a matter of law, and has remanded the case to the lower court for trial on damages. What makes this unique is that the Federal Circuit, who originally had jurisdiction due to the patent claims in Oracle’s original complaint, is a court with significantly more experience in patent law, but is applying Ninth Circuit law to the case because of where the infringement took place. This case creates a unique situation because, as commentators have noted, it is incredibly rare for a jury verdict of fair use to be overturned. In this situation, not only has the Federal Circuit interpreted Ninth Circuit law in its decision, but its decision is not precedent in the Ninth Circuit.

(1) API is abbreviation for “Application Programing Interface,” which are subroutines, protocols and tools used to build software. Essentially they are modular, pre-assembled pieces that can be utilized in the creation of larger pieces of software.

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