Oracle vs Google Java API case: blurring the distinction between patents and copyrights

Java
Java

Pushing the limits of copyright law:  A recent copyright court case:  Oracle America, Inc. v. Google Inc. is showing that at times, the difference between patents and copyrights is not as distinct as you might think or like.  You can see the court decision here:

https://www.eff.org/files/2014/11/10/oracle_v_google_13-1021.opinion.5-7-2014.1.pdf

As I understand it, Google attempted to reverse engineer Java by using standard “clean room” (e.g. fresh and original code) techniques. However in the case of 37 Java API classes, Google copied some elements on the belief (based on prior case law such as a 1995 Lotus v Borland case) that because these API were functional, such functional elements were therefore not copyright protected.

Oracle, which obtained rights to Java when it acquired Sun Microsystems in 2010, did not agree.

In the May 9, 2014 decision, the Court sided with Oracle.  The Court rejected the Lotus finding, and about 20 years of legal precedent, that menu structures (being essential to operation), were therefore not copyrightable.  Instead, the Court held that elements that can perform a function indeed sometimes can be copyrightable.  Indeed, the Court argued that something that can be patented can potentially be copyrighted as well (page 43).

The Court argued that no deference should be given to findings of operation or function and that copyright should be determined by an “abstraction-filtration-comparison” inquiry.  Perhaps so, but neither this Court nor the previous Trial court actually attempted to perform this test!

In what looks to me to be an important part of the decision, the Court equated the Java language to the English language and concluded that making the API subject to copyright would not restrict Google from using Java any more than a copyrighted paragraph would hinder other authors from using the English language.  “However Google, like any author, cannot employ the precise phrasing or precise structure chosen by Oracle to flesh out the substance of its packages — the details and arrangement of the prose.” (See page 44).

To me, this reasoning appears to be problematic.  API are much more fundamental than standard copyrighted paragraphs.  API are more akin to the functional neural networks in the human brain that are used to understand various short and common English words and phrases.   I can express myself just fine in everyday life without quoting paragraphs from copyrighted novels.  However if, due to copyright restrictions, the underlying brain neural networks (or computer software structure) needed to understand many short and common English phrases are off-limits, then copyright turns standard English into a proprietary language.  In effect, the court is making large chunks of the Java language proprietary as well.

What is more dangerous:  patents go away unless filed within a year of first disclosure, then properly prosecuted, properly maintained, and have a maximum life of 20 years in any event. Trademarks go away unless filed, maintained every 10 years, and efforts are continually expended to protect against the trademark turning generic.  But copyrights automatically attach without effort, and are then good for 95 to 120 years without any need for renewal!

The Court remanded the case to the trial court, where other copyright principles such as “fair use” may then get Google out of hot water.  However in my opinion, the Court’s analysis missed some key points.  We don’t allow short and common English phrases to be subject to copyright because to do so would unduly constrain normal speech.  There appears to have been no consideration as to what extent forcing a rewrite of the 37 Java APIs at issue would constrain the universe of previously written Java code, and prevent use of many short and common phrases in the Java language.

Was the Court in essence telling Google that although standard Java is now off limits, they of course are welcome to create their own unique dialect of Java?   Put this way, then the decision looks off.

Impressions on the new (post AIA) Patent Trial and Appeal Board (PTAB) patent trial format

Gavel
Gavel

PTAB:  The 2011 America Invents Act (AIA) significantly changed many aspects of patent law. One change was to try to improve patent quality by allowing potentially invalid patents to be challenged in new types of post-grant opposition procedures.

The Europeans have had a patent opposition process for years, and having observed it in operation at first hand, I am unimpressed.  The European system lacks legal protections that Americans take for granted (e.g. rules of evidence, protections against unfair surprise).  It is also possible to game the European system by requesting that the opposition be done in a language that (conveniently) the original European examiner or other parties may not speak.   Another problem is that the European opposition review panels operate by making instant verbal “shoot from the hip” decisions, and only “justify” the decisions in writing months later.

The USPTO Patent Trial and Appeal Board (PTAB) has been working to implement an American version of the opposition process.  They have been hosting roundtables to show their progress to date and solicit feedback.  I attended their April 29, 2014 roundtable at Santa Clara University, and came away favorably impressed.

http://www.uspto.gov/ip/boards/bpai/ptab_aia_trial_roundtables_2014.jsp

In my opinion, the real challenge in doing decent post-grant opposition procedures is the delicate balance between trying to bring in more of the legal protections of common law/Federal law rules of evidence and civil procedure (thus improving on the European system), while minimizing the burdens of a conventional trial process.  Here, in addition to the obvious high costs and long times associated with conventional trials; there is also an issue of legal expertise.

Conventional patent trials are so complex that typically they are handled by expert litigation attorneys.  These litigation attorneys have a detailed knowledge of the trial process, but sometimes less knowledge of patent law and the underlying technology.  By contrast, patents are usually prosecuted by patent attorneys who may have very detailed knowledge of patent law and the underlying technology at issue, but often less trial process expertise.

PTAB appears to be attempting to devise a streamlined review system that retains a number of common law/Federal trial conventions and legal protections, without being overly burdensome.  In my opinion, their approach does improve on the due process of law deficiencies I noticed in European oppositions.  Relative to standard trials, the PTAB approach appears to be relatively simple, and you don’t need to be a litigation expert.

I am hopeful that with some review of the rules of evidence, civil procedure, and of course PTAB procedures, patent attorneys (often most knowledgeable about the patent and related technology) should be able to come up to speed with the new PTAB reviews fairly quickly.