Oracle America, Inc. v. Google Inc.

Filing 1203

FINDINGS OF FACT AND CONCLUSIONS OF LAW ON EQUITABLE DEFENSES re #1049 Proposed Findings of Fact filed by Oracle America, Inc., #1047 Proposed Findings of Fact filed by Google Inc.. Signed by Judge Alsup on May 31, 2012. (whalc1, COURT STAFF) (Filed on 5/31/2012)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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ORACLE AMERICA, INC.,

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For the Northern District of California

United States District Court

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Plaintiff,
v.

FINDINGS OF FACT AND
CONCLUSIONS OF LAW ON
EQUITABLE DEFENSES

GOOGLE INC.,

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Defendant.
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No. C 10-03561 WHA

This order addresses Google’s equitable defenses, (1) laches; (2) equitable estoppel; (3)

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implied license; and (4) waiver, for both copyright and patent infringement. In light of the

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Court’s accompanying ruling that the structure, sequence and organization of the Java API

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packages are not copyrightable, and the jury’s verdict of patent non-infringement, Google’s

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equitable defenses are moot, at least pending appeal. Nonetheless, even in the event of a remand

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on one or more other liability issues, it is so unlikely that the remand could affect the calculus of

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the defenses of implied license and waiver that this order will go ahead and clear those away,

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leaving open the defenses of laches and equitable estoppel.

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1.

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An implied license requires a finding of an affirmative grant of consent or permission.

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Though rare, consent can be inferred from a course of conduct between parties. Wang Labs.,

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Inc. v. Mitsubishi Elecs., 103 F.3d 1571, 1581–82 (Fed. Cir. 1997). As with the other equitable

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defenses, there must be a nexus between the alleged conduct giving rise to the implied license

IMPLIED LICENSE.

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and the infringing action. Ibid. In the context of both copyrights and patents, circumstances

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giving rise to an implied license are exceedingly narrow. See Id. at 1251–52; A&M Records,

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Inc. v. Napster, Inc., 239 F.3d 1004, 1026 (9th Cir. 2001).

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The requisite nexus between Oracle and/or Sun’s conduct and Google’s infringement has

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not been proved. Google agrees that Oracle and/or Sun did not specifically and affirmatively

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grant permission to Google to use the structure, sequence and arrangement of the 37 API

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packages (Dkt. No. 1079 ¶ 183). The same is true for the asserted patents. This leaves open

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only the “course of conduct” theory, which also fails.

equitable defenses rest primarily on a November 2007 blog post by Sun’s CEO congratulating

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For the Northern District of California

Google’s evidence of implied consent at most establishes Oracle’s inaction. Google’s

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United States District Court

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Google on the release of Android, as well as similar positive statements by Sun executives

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thereafter. Congratulatory statements do not fall under the narrow circumstances proscribed by

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our court of appeals. Even if Google understood Oracle and/or Sun’s conduct to condone use of

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the Java API packages, the “course of conduct” must be assessed for an affirmative grant of such

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consent. None is apparent from the evidence Google presented here. Google has supplied no

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relevant authority that would support a finding in its favor on these facts. Furthermore, from the

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present record it would be impossible to determine the scope of any implied license. Under

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Google’s theory, infringement is excused as to any aspect of Android because the whole of the

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platform was generally applauded by Sun. Such a finding is not supported by precedent. The

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parties negotiated for a real license but the talks collapsed and no license was given. It would be

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most bizarre to somehow find an implied license in this scenario.
WAIVER.

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2.

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To prevail on a waiver defense, Google must show by a preponderance of the evidence

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that Oracle and/or Sun, with full knowledge of the material facts, intentionally relinquished

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its rights to enforce the rights it now asserts. Waiver of a known right must be “manifested

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by some overt act indicating an intention to abandon that right.” Micro Star v. Formgen, Inc.,

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154 F.3d 1107, 1114 (9th Cir. 1998). The parties agree that inaction alone is insufficient to

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show waiver.
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This order finds Google has not met its burden of proving an overt act by Oracle and/or

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Sun indicating its intention to abandon all rights to the Java platform, or to the specific

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technology at issue here. Google’s best evidence on the issue of waiver is Jonathan Schwartz’s

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testimony that Sun made a decision to not sue Google following the release of Android. This

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decision, however, is not an overt act. So long as it did not induce reliance by Google, Sun was

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free to change its mind and assert its rights within the statute of limitations period. The several

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congratulatory communications do not, as discussed above, constitute a clear indication that

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Oracle and/or Sun intended to relinquish its rights as to the entirety of its platform. Google

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concedes Oracle continued and continues to assert its rights as to other aspects of the platform
such as the language specification and code (Dkt. No. 1079 ¶¶ 58–60). Save for a total

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For the Northern District of California

United States District Court

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relinquishment, Google has to prove an overt act by Oracle and/or Sun relaying its intent to

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abandon rights as to the specific elements asserted here. The evidence is devoid of any such

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showing.

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3.

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There remains a possibility that these two equitable defenses can be revived on remand.

EQUITABLE ESTOPPEL AND LACHES.

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Both these defenses are based, in part, on what intellectual property rights Sun and Oracle had in

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Java, and more specifically, rights to preventing others from using the structure, sequence and

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organization of the API packages. In the event of a remand, this could affect the calculus

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involving the defenses and the judge will reserve on deciding these defenses. If that occurs,

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those issues will likely be decided based on the existing trial record.

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CONCLUSION
For the reasons stated, Google’s defenses of implied license and waiver are rejected on
the merits and Google’s defenses of equitable estoppel and laches are denied as moot.

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IT IS SO ORDERED.

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Dated: May 31, 2012.

WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

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