Oracle Corp.’s much-hyped copyright and patent case against Google Inc. threatened to become the biggest litigation flop to emerge from the smartphone wars. Now, thanks to an appellate turnaround by Orrick, Herrington & Sutcliffe and Kirkland & Ellis, Oracle has managed to vindicate its intellectual property and put Google back on the defensive.
On Friday, the U.S. Court of Appeals for the Federal Circuit revived Oracle’s claims that Google infringed its copyrights when it incorporated parts of the Java programming language into the Android mobile operating system. In a ruling sure to reverberate through Silicon Valley and beyond, the court determined that the Java elements at issue—known as application programming interfaces, or APIs—deserve copyright protection.
The decision comes almost exactly two years after U.S. District Judge William Alsup in San Francisco reached the opposite conclusion, finding that the 37 Java APIs at issue were not copyrightable. That ruling came in the wake of a star-studded six-week trial in which Oracle pegged its hopes on David Boies of Boies, Schiller & Flexner and Michael Jacobs of Morrison & Foerster. The jury found that Google had infringed the Java APIs, but it deadlocked on the critical question of whether the copying was protected as fair use. Jurors rejected Oracle’s patent claims outright, siding with lead Google counsel Robert Van Nest of Keker & Van Nest.
Friday’s ruling—authored by Federal Circuit Judge Kathleen O’Malley—sets the stage for a potential retrial on the fair use question, which is key to Oracle collecting any damages in the case. Alsup may also decide the issue himself based on additional briefing.
Oracle first sued Google in August 2010, initially demanding as much as $6 billion in damages on its patent and copyright claims. By the time the case went to trial in April 2012, Oracle was seeking about $1 billion. Instead, Alsup and the jury sent the company packing with nothing but legal bills.
For the appeal, which mainly targeted Alsup’s ruling on copyrightability, Oracle tapped Orrick’s E. Joshua Rosenkranz and a Kirkland team led by Dale Cendali. In their opening brief, they urged the Federal Circuit to imagine a hypothetical novelist (“Ann Droid”) who ripped off J.K. Rowling’s Harry Potter bestsellers by copying Rowling’s chapter titles and topic sentences and paraphrasing the rest. They argued that Google’s copying of the Java APIs followed a similar model, and that it’s absurd to conclude that the APIs aren’t copyrightable just because Google was able to make use of them without replicating them wholesale.
That line of argument appeared to gain traction with the Federal Circuit panel, which, among other things, faulted Alsup for focusing on individual lines of code in Oracle’s APIs. The panel even came up with its own analogy in Friday’s decision: “The opening of Charles Dickens’ ‘A Tale of Two Cities’ is nothing but a string of short phrases,” O’Malley wrote. “Yet no one could contend that this portion of Dickens’ work is unworthy of copyright protection because it can be broken into those shorter constituent components.”
Orrick’s Rosenkranz argued the appeal for Oracle in December. Understandably, he had only good things to say about Friday’s ruling. “The tech industry and everyone else who cares about innovation should cheer the Federal Circuit’s decision,” he said. Rosenkranz added that the ruling “puts not just a thumb but an arm on the scale in Oracle’s favor on fair use.”
“The Java platform code took years and many millions of dollars to develop,” Rosenkranz said. “Who in their right mind would make a similar investment if someone else can steal that work and use it to compete against the original developer?”
Keker’s Van Nest, who argued for Google, wasn’t immediately available to comment. Google is also represented by lawyers at King & Spalding and Greenberg Traurig. A gaggle of tech industry amici also made appearances in the case.