Oracle Owes Google $1M For Java Copyright, Patent Suit Costs

September 5, 2012, by Mandour & Associates, APC

San Diego — A California federal judge ordered Oracle Corp. on Tuesday to pay Google Inc. $1 million to compensate it for costs relating to Oracle’s failed infringement suit against Google over Oracle’s copyrights and patents for the Java programming language.

Oracle sued Google over the copyrights and patents in 2010, initially seeking six billion dollars in damages and injunctive relief, but after nearly two years of litigation and six weeks of trial it recovered nothing

Oracle initially alleged infringement of seven patents and 132 claims but each claim ultimately was either dismissed with prejudice or found not to be infringed by the jury. Oracle also lost on its primary copyright claim for Java’s application programming interface. While Oracle prevailed on two minor, peripheral copyright claims, those successes did not have a major impact on the final judgment.

Following the final judgment, Google asked the court for $4 million in compensation for its costs, which were largely related to expert fees for court-appointed expert Dr. James Kearl, and fees for electronic document discovery by a third-party vendor, according to the court.

Google is the prevailing party for the purposes of taxing costs, and Oracle has failed to overcome the presumption of awarding costs, Judge William Alsup said.

The media attention following the case accumulated in large part because Oracle crafted broad, and ultimately overreaching, claims of copyright infringement, the judge said. Oracle did not place great importance on its copyright claims until after its asserted patents started disappearing upon PTO reexamination, according to the judge. In fact, Oracle’s first damages report barely mentioned copyright claims, he noted.

Oracle did not bring its API copyright claim for the benefit of addressing a landmark issue of national importance, but instead “fell back on an overreaching (albeit somewhat novel) theory of copyright infringement for its own financial interests late in litigation,” Judge Alsup said.

While the court’s prior rulings clearly implied that the prevailing party could recover the expert fees, Google’s claims for $3 million in e-discovery costs fail to pass muster because many of its line-item descriptions were of non-taxable intellectual efforts, according to the judge.

Judge Alsup noted in a separate Tuesday order that he intended to take no further action regarding the subject of Oracle’s and Google’s payments to commentators and journalists reporting on the case, seeking to reassure both sides that “no commentary has in any way influenced the court’s orders and ruling herein save and except for any treatise or article expressly cited in an order or ruling.”

The judge had previously demanded that the two companies disclose the identity of any writers, reporters or bloggers it had paid, and scolded them for failing to comply with his orders to that effect.

The $1 million blow to Oracle came a day after reports on Monday that the company planned to appeal a roughly $300 million copyright judgment against it in favor of SAP AG.

“SAP is disappointed that Oracle continues to prolong the case,” a SAP representative said. “We agreed to reasonable terms in this case, as we believe it’s gone on long enough. We remain determined to work through the legal process to bring this case to resolution.”

Representatives for Oracle did not respond to emails seeking comment.