Google, Oracle and Java: from a patent spat to a copyright conundrum

For almost 10 years, Google and Oracle have been fighting over a set of Android APIs, and for almost that long, conventional wisdom has been that the tech industry is on Google’s side. But as the case moves to the Supreme Court for the second time, Oracle is taking aim at that idea — and calling out Google’s allies one by one.

After filing a Supreme Court statement last week, Oracle VP Ken Glueck posted a statement over the weekend assailing the motives of Microsoft, IBM, and the CCIA industry group, all of which have publicly supported Google. 

The Supreme Court has declined to hear Oracle v. Google, sending the long-running case back to a lower court where Google will have to argue that it made fair use of Oracle's copyrighted APIs. This has been a closely watched case, as the final decision could have a major impact on software development; a ruling in favor of Oracle, the Electronic Frontier Foundation says, could give certain tech firms "unprecedented and dangerous power" over developers by making it substantially more difficult for upstarts to create new software. That'll be the case unless fair use laws turn out to protect the use of APIs.

The case centers on the code behind Android. Google built Android on top of a modified version of Java, the programming language developed by Sun Microsystems (now owned by Oracle) in the ‘90s. To help spur the development of apps for its new platform, Google used Java's pre-existing APIs (Application Programming Interfaces), which many programmers were already comfortable using.

Today, a federal court overturned an earlier ruling that allowed Google rights to build Oracle's Java API into Android, setting a broad precedent that already has many legal scholars crying foul. If the ruling stands, it will give software companies copyright over their APIs, the interfaces that programs use to communicate with each other. The new standard is good news for Oracle, which holds the rights to Java and its widely used API, but potentially disastrous for software developers that want to build software based on existing APIs. The result could force new services may be forced to start from scratch.

APIs are one of the most important tools in modern programming, allowing third-party services to pull information automatically from central services like Google, Facebook and Twitter. (Apps like Tweetdeck, for instance, get your tweets by calling on Twitter's API.) In this case, Google the Android OS on top of a modified version of Java, but kept Java's API to make it easier for programmers to write for Android. Since many coders were already familiar with the quirks of Java's API, the decision gave them a head start in writing programs for Android — but from the beginning, Oracle saw that privilege as belonging to them . In May of 2012, a district court ruled that copyrighting the calls would simply tie up "a utilitarian and functional set of symbols," and gave Google free rein on the API. Oracle appealed the ruling, and two years later, a federal court has overturned. The next step is the Supreme Court, but it could be years before the issue is finally settled.

Oracle has been ordered to pay Google $1,130,350 in legal costs following the broad failure of its long-running patent and copyright infringement lawsuit over Android. Google had originally asked for more than $4 million to cover the total costs of the quixotic suit, including significant fees for a third-party e-discovery service paid to surface and copy relevant documents. While the payment was cut back by Judge William Alsup, he was unequivocal in declaring Google the "prevailing party" in the case, and used the ruling to criticize Oracle's lawyers for "craft[ing] broad, and ultimately overreaching, claims of copyright infringement."

Judge Alsup also put an end to his controversial investigation into the use of paid bloggers, noting that the court "will take no further action regarding the subject of payments by the litigants to commentators and journalists and reassures both sides that no commentary has in any way influenced the Court’s orders and ruling herein." When the court originally asked the parties to disclose any payments, Oracle revealed a long-suspected relationship with the patent blogger Florian Mueller, while Google flatly denied any similar arrangements. Google later admitted to retaining Stanford professor and commentator Mark Lemley as outside counsel on "unrelated cases."

Google has followed up with a judge's order to disclose anyone it might have paid to influence coverage of its trial against Oracle, and the list includes a well-known Stanford professor who is often quoted without mentioning his relationship to Google. Google had initially told the court it hadn't paid anyone to comment on the case, but the judge ruled Google had "failed to comply" with his request and ordered the company to provide a more detailed list.

Google opens the new filing by continuing to insist that "neither it nor its counsel has paid an author, journalist, commentator or blogger to report or comment on any issues in this case." That said, the company goes on to list a number of people who have commented on the case in two categories: current and former Google employees, and people who work at organizations who receive donations from Google. Most of the disclosures are fairly trivial — Google's current copyright lawyer, former interns, the Electronic Frontier Foundation — but the most interesting is Mark Lemley, a well-known professor at Stanford who Google says "serves as outside counsel" on "unrelated cases." That's a pretty fine distinction: regardless of whether Google retained Lemley for the Oracle case or not, he's still Google's lawyer, and he's almost always quoted as a Stanford professor, not "Google outside counsel."

Earlier this month Judge William Alsup ordered Oracle and Google to disclose any journalists or bloggers either has paid that could have commented on the Oracle v. Google case. Both parties responded last week — but Judge Alsup didn't think Google was completely forthright, and has asked the company to try again by the end of the week.

In a order filed today, Alsup flatly states that "Google has failed to comply" with his original request. Google had said in its initial response that the company hadn't "paid an author, journalist, commentator or blogger to report or comment on any issues in this case" — a definition that Alsup clearly felt was much too narrow. In his order, he writes that "the order was designed to bring to light authors whose statements about the issues in the case might have been influenced by the receipt of money from Google or Oracle," pointing out that an individual doing consulting work for one of the companies might then be influenced to comment on the Oracle v. Google trial in a particular light.

Last month Oracle declined to receive any statutory damages after the disappointing results in its infringement lawsuit against Google, but the search giant let it be known it wanted Oracle to cover its legal costs. This week Google counsel Robert Van Nest made good on the promise, filing an official request that Oracle reimburse the company for over $4 million in costs that it incurred over the course of the trial. The number covers transcripts, expert witness compensation, and more than $2.9 million just for collecting and copying documents. Given the nature of the expenses, it's an imposing figure — made even more so by the fact that Oracle has gained no monetary compensation whatsoever for its efforts thus far.

According to the filing, Google collected over 97 million documents as evidence for the case, and produced over 20 million pages of written documents itself. That said, it's important to remember that this is simply an ask at this point — Judge William Alsup has yet to rule on Google's request — and unless he completely agrees with Google's status as the overall "prevailing party" and the reasonableness of the outlined costs Google may have a hard time recovering the full $4,030,669 it is requesting.

Today Oracle's legal team decided to forego any statutory damages in connection with its infringement case against Google. Last month Judge William Alsup ruled that the structure, sequence, and organization or the 37 Java APIs in the case — the cornerstone of Oracle's hopes for a big payday — weren't copyrightable. It left Oracle with two minor infringement counts in hand, related to Google's copying of Java code for Android, with a total possible payout of just $300,000. Computerworld reports that during a hearing today Oracle's attorneys informed Alsup that both companies had agreed Oracle would accept no payment whatsoever at this time.

However, Oracle is not simply throwing in the towel. The company has already expressed that it will be appealing the judge's copyrightability ruling, and under an agreement both companies came to in May Oracle will be able to seek compensation for the code copying if and when the SSO infringement is retried. Of course, Google's not standing still either; the search giant's attorneys told the court that it would be seeking compensation for its legal expenses in the lengthy trial, a move that Oracle not-so-surprisingly said it would fight against.

Things weren't looking good for Oracle after the jury found that Google hadn't infringed upon the company's patents in the second phase of the trial between the two behemoths, but the issue of infringement of the structure, sequence, and organization of 37 Java APIs was still up in the air. Judge William Alsup ended the discussion today, ruling that the SSO of the APIs is not covered under current copyright law — and dismissing Oracle's related infringement claims outright. The judge had asked the jury to assume the SSO was in fact copyrightable when he sent them into deliberations; under those circumstances, the jurors found that Google had infringed, but was deadlocked on the question of whether Google was protected under fair use.

While Alsup's ruling had been anticipated as one that might set sweeping precedents for the copyrightability of software in general, Alsup instead focused very narrowly on the specific factors involved in this case. Noting that 97 percent of the lines of code used in the 37 APIs came from Google, rather than Sun or Oracle, Alsup writes that Oracle's only recourse to claim infringement had been to cite the structure of the APIs. Accepting such an argument, however, would be tantamount to letting a single company or programmer prevent others from creating any other software that replicated similar functionality:

Over a week after it began deliberations, the jury has returned a verdict in the patent infringement case between Oracle and Google, finding that the search giant did not infringe upon Oracle's patents with Android. In play were infringement counts on eight different claims across two separate patents: RE38,104 and 6,061,520. Given the decision, there will be no need for a damages phase in connection with the patent claims, and with the recent agreement by Google and Oracle to postpone any damages hearings related to copyright infringement, the jury has now been dismissed from the proceedings altogether. Judge William Alsup thanked the jurors for their hard work before they left the courtroom, noting that "this is the longest trial, civil trial, I've ever been in."

It's the final victory in several trial coups for Google. While the jury did find that Android infringed Oracle copyrights by its use of the the structure, sequence, and organization of 37 Java APIs, the jury was unable to reach a unanimous verdict on whether it was covered under fair use, rendering the verdict moot for the moment. The jury found that Google had infringed on only one other copyright count — the use of nine lines of rangeCheck code — though Judge Alsup later ruled that Google had also infringed by its use of eight Java test files in Android, adding a second minor infringement count to Google's plate.

It took the Oracle vs. Google jury a week to reach its partial verdict on the copyright claims in the case, and the patent phase isn't moving any faster as the jury began its second week of deliberations today, with no sign of a verdict in sight. The last few days have seen the jurors submit a number of questions to the court — they had five yesterday alone — addressing the technical nuances of the alleged infringement of the '104 and '520 patent claims. Not only has the jury requested that trial testimony be read to it several times, it's even asked for re-reads of the answers to questions it previously asked during deliberations. The jury has most recently taken the step of asking multiple versions of what essentially amounts to the same question, to the increasing frustration of Judge William Alsup.

While it appeared last week that the jury had moved on from the claims in patent '104 to the '520 patent, signaling an imminent decision, things quickly veered in the opposite direction this past Friday. The issue of symbolic references in Android was raised again by the jurors — Google has made the difference between symbolic and numeric references a integral part of its defense — followed by a question that openly asked why a unanimous verdict was required in the first place. While no mention of a deadlocked jury was made, it certainly wasn't a promising sign, particularly given the jury's previous troubles in this case. The inquiries came from a jury of just 10 individuals, with one of the members dismissed from the trial due to illness.

Yesterday Oracle counsel David Boies made a spur-of-the-moment suggestion that would prevent the jury from handling damages for Google's copyright infringement in Android, and keep Oracle's hopes for a substantive payout alive in the process. This morning both parties — and Judge William Alsup — agreed to the proposition. Under the agreement, any and all damages related to the two copyright infringement counts the search giant faces — at the moment, just for nine lines of rangeCheck code and eight decompiled Java files — will be delayed until Judge Alsup rules on the vital question of whether the structure, sequence, and organization (SSO) of 37 Java APIs are covered under current copyright law. Operating under the assumption that they were, the jury found Google had infringed with its use of the APIs, though the jury hung on whether it was covered under fair use.

What happens then? There are two different paths. If Alsup finds that the SSO is copyrightable, the two minor infringement counts will be bundled along with the SSO charge to be handled in any new trial or appeal. If he rules against Oracle on this point, however, Alsup will simply award Oracle statutory damages — a maximum of $150,000 for each of the two counts. That doesn't leave Oracle out in the cold, though; Alsup's ruling on SSO copyrightability will no doubt be appealed, and should it be overturned and the case sent down to be tried again, Oracle will have the opportunity to re-open the two minor copyright counts to go after larger damages.

If there's one thing the Oracle vs. Google trial hasn't been short of, it's plot twists and turns. The trend continued today courtesy of Oracle counsel David Boies, who made a principled plea to Judge Alsup over what he felt Oracle was entitled to seek for Android's copyright infringement of Java — before proposing an alternate solution that could have the third phase of the trial postponed for weeks, if it happens at all.

The situation stems from the jury's partial verdict in connection with Google's infringement of 37 Java APIs. "Nobody thought the jury was going to hang on fair use," Boies told Alsup, referring to the jury's partial verdict last week. It's left the company with only two infringement victories to its name, neither of which are very substantive. The contributions of nine lines of rangeCheck code and eight test files are so small, in fact, that Judge Alsup has been leaning heavily on Oracle's legal team to accept statutory damages, calling the pursuit of hundreds of millions of dollars "the height of ridiculousness" last week.

Oracle and Google's attorneys wrapped up their closing arguments today, sending the jury on to determine whether Google had infringed two Oracle patents — but not before one of the jurors was removed from the trial altogether. The day started off at 7:30AM per the court's normal schedule, but things ground to a halt when word came that one of the 12 jurors had not yet arrived due to car problems. When it became clear the transportation issues were not going to be resolved, three options faced the court: send a US Marshal to bring the juror back, postpone proceedings for a day, or dismiss the juror outright. Judge Alsup, in agreement with both Google and Oracle, went with the third option. As there are no alternates in this particular case, the trial will be moving forward with just 11 jurors.

Oracle counsel Michael Jacobs made the company's closing argument, putting particular emphasis on the nature of Google's case; essentially, that the company was making "a word argument" in lieu of any substantive defense. The infringement of both the '104 and '520 patents has boiled down to just a handful of essential, but opposing, viewpoints: what constitues a symbolic reference vs. a numeric reference, whether runtime operation is necessary for object linking to be considered dynamic, and what the precise definition of "simulation" is in a functional context.

It was the clearest indication yet of just exactly where this trial is headed. During the day's second recess, Google counsel Robert Van Nest huddled with Oracle attorneys David Boies and Michael Jacobs, all three talking in the middle of the courtroom. Brief snippets of conversation echoed; "that one's done," "he already said he was going to grant a JMOL," "look, how much is this going to cost?" After a day of dense testimony, heavy with phrases like current pool indices and byte offsets, it's apparent that both sides are trying to wind the Oracle vs. Google trial down as efficiently as possible.

The day started with a surprise: Judge Alsup granted Oracle's request for a judgement as a matter of law (JMOL), and ruled that Google had indeed infringed the company's copyrights by using source code from eight different Java files in Android. The decision went against the jury's own findings earlier this week, but Alsup stated that given the legal instructions in the case there was "only one possible answer." This additional count joins the nine lines of copied rangeCheck code, the only other instance of copyright infringement Google currently faces. However, Oracle then indicated it was not prepared to accept statutory damages — the company would be awarded a maximum of just $150,000 per count — and would instead be going after "infringer's profits": a share of Google's Android revenue.

Google will be filing a motion for the damages phase of its infringement battle with Oracle to be dropped altogether as Judge William Alsup pushes both sides to "streamline" the rest of the process. In a hearing this morning, the judge addressed the rangeCheck infringement — the only count Google currently faces — saying that it wouldn't be a good use of the jury's time to have them deliberate on the amount of statutory damages when the maximum figure Oracle can be awarded is just $150,000.

Oracle wanted time to consider, but Google was happy to agree. In fact, counsel Robert Van Nest went one step further, telling the court that his team would be filing a motion today requesting that damages for Google's patent infringement — if any infringement is found — go to the judge as well. There are a range of dollar amounts in play, but Van Nest stated that all three experts expected to appear in the trial have estimated the potential damages associated with the '520 patent at under $100,000, with infringement of the claims in the '104 patent possibly resulting in damages of up of $4 million.

While it may not have had the immediate implications of Judge Alsup rejecting Oracle's request for a fair use ruling, the patent portion of Oracle vs. Google wound on today. Andy Rubin made two appearances in the courtroom, once on the stand and another time via video playback — but the two Rubins didn't entirely agree with one another. As he did yesterday, Oracle counsel Michael Jacobs focused on a number of emails that contained references to Sun-owned patents. Rubin testified that despite the emails, he never asked anyone on the Android team to investigate Sun's patent portfolio to ensure no infringement was occurring. In fact, Rubin echoed earlier testimony, stating that the emails referred to the patent implications of a possible partnership between Sun and Google that never came to fruition.

The head of the Android team also testified that he had never been notified of any specific patent infringement until a legal meeting in July of 2010. When confronted with a 2007 email in which he had written that Google "negotiated 9 months with Sun and decided to walk away after they threatened to sue us over patent violations," Rubin said that the referenced action was in connection with Google's server and data center operations, and not related to Android at all. However, when asked about the email during his deposition last year, Rubin made no mention of Google's non-Android operations, instead stating that Sun had threatened the lawsuit "to bring the partnership back together." According to Rubin, the collaboration between the companies could not be reached because Google was unwilling to pay the $100 million per year — plus search revenue sharing — that was being asked for.

Following the jury's inability to decide on the issue of fair use in the Oracle vs. Google trial, Oracle asked the judge to rule on the issue as a matter of law (JMOL). Both sides engaged in oral arguments, but Judge William Alsup surprised the courtroom with an early decision, denying Oracle's request, saying that "it wouldn't be fair" given the evidence introduced in the trial.

While the jury found that Google had infringed upon Oracle's copyrights by using the sequence, structure, and organization (SSO) of the 37 Java APIs in question, it was deadlocked on whether Google was legally able to do so under fair use. Fair use is made up of four different components:

The first phase of the Oracle vs. Google trial came to an end yesterday, as unsatisfying and unresolved as it may have been. We've quickly moved on to phase two, which trades copyrights and APIs for patents and virtual machines. At issue are two Oracle patents: RE38,104 and 6,061,520 (we'll refer to them as ‘104 and ‘520 for convenience). Oracle is alleging that the Dalvik virtual machine — the very heart of Android itself — infringes on both. Let's take a look at what both parties will be arguing over the next few days.

In its opening statement yesterday, Oracle framed the applicable claim in the '104 patent as a way for computers to improve performance. It's essentially a method for a computer system to call upon data stored in memory not by calling out the specific memory location itself, but rather by using a different name — called a symbolic identifier — that then dynamically resolves to the correct location. Oracle wasted no time following the same strategy it's been pursuing throughout this case, calling out comments that reference symbolic identifiers in the Dalvik code, as well as citing former Google engineer Dan Bornstein's deposition testimony, where he refers to the technique as well.

The jury in the Oracle vs. Google trial found Google liable of infringing Oracle's Java-related copyrights today, although it remained deadlocked on the critical issue of whether Google made fair use of the Java APIs. The fair use question has been unresolved since Friday, when the jury told Judge William Alsup that it couldn't reach a unanimous decision on the matter. The judge had instructed the jurors at that point to think things through over the weekend in the hopes that they could avoid turning in just a partial verdict, but to no avail. Here's a full breakdown of the questions presented to the jury and the answers they returned:

We'd been hoping to hear a verdict from the jury in the Oracle vs. Google trial today, but something unexpected happened instead: one of the jurors was accused of discussing the case over the weekend with her husband. Deliberations were immediately stopped after the issue came to light, and the juror that had raised concerns was brought into the courtroom. He reported that a fellow juror had stated she had knowledge of patent law through her husband; the juror that flagged the issue thought the woman's husband was an attorney.

Judge William Alsup discussed the issue with the accused juror, who stated that her husband was not an attorney at all, but simply an individual who held several patents himself. He had provided her with information as to the length of time patents are valid — information that was in fact incorrect — but she stated that was the only topic they had discussed. In fact, the juror said she had already made up her mind in the case last week — long before the conversation with her husband happened.

Yesterday one of the jurors in the Oracle vs. Google trial signaled that the jury was having difficulty making a decision — to the point that they were concerned a consensus wouldn't be reached at all. Today the jury notified Judge William Alsup via a note that it had reached a unanimous decision on all but one question, but was otherwise at "an impasse." However, upon entering the courtroom, the foreperson stated to Judge Alsup that not all members of the jury thought sending the note today had been necessary, with some jurors thinking they could have reached a decision if given the weekend to think over the case further.

Judge Alsup then asked attorneys for both Google and Oracle if they were ready to receive the partial verdict, given the non-unanimous sentiment about the jury's deadlocked status. After conferring with both of their respective teams, Oracle counsel Michael Jacobs and Google counsel Robert Van Nest spoke privately with Judge Alsup. Van Nest in particular seemed to be making his point rather urgently; we know from yesterday's discussions that Van Nest does not feel that a partial verdict is acceptable. Afterwards, Alsup told the jurors that if there was still any possibility of a unanimous decision being reached on the full slate of questions, "we should take advantage of that hope and spend one more day deliberating."

Things just took an interesting turn in the courtroom for Oracle's copyright infringement case against Google: a juror has asked how the jury should proceed if a unanimous conclusion can't be reached and one individual won't change their stance. Judge Alsup was quick to point out that the note wasn't from the foreperson, and wasn't an official statement that the jury was tied up. In speaking with counsel from both Oracle and Google, Alsup floated the possibility that if the jury does indeed formally state it is deadlocked, the court could "take what we can get and move on to the patent phase"; essentially taking the findings the jury has already come up with, and leaving the unresolved issues on the table for the moment.

Alsup brought the rather exhausted-looking jury back into the courtroom for what essentially amounted to a pep talk, telling them that he appreciated their hard work, and that it was natural for jurors to feel unsettled when sorting through hundreds of exhibits. Judge Alsup did not press them on the status of the deliberations, however, instead excusing them for the day with a promise for things to continue tomorrow. The technical and legal issues in this case are far from simple, so in some ways it seems perfectly natural that a jury of twelve individuals — with different perspectives and technical competency levels — will disagree on the interpretation of important factual evidence and legal points. And it's always possible that strong personalities are in play as well.

The copyright phase of the Oracle vs. Google infringement trial has been winding on for two weeks, but we moved one step closer to resolution today with the attorneys for both sides presenting their closing arguments. Oracle attorney Michael Jacobs made his client's case, referring to the trial as being "mostly about Google's excuses." As evidence of Google's wrongdoing, Jacobs pointed to email exchanges that have surfaced throughout the trial, in which the likes of Eric Schmidt, Andy Rubin, and Tim Lindholm discuss how Google needed to acquire a license from Sun for the use of Java in Android.

Stating that the 37 APIs in question were the "crown jewels" of Java — ones which Google had used to ensure quick developer uptake for Android — Jacobs also attacked Mountain View's fair-use defense, stating that while Android may be given away for free, it is no doubt a commercial effort that generates revenue for the company (we got a peek at some of those numbers last week).