US patent authorities weigh against Oracle claims in Android suit

The US Patent and Trademark Office is reexamining a number of Oracle patents

An ongoing series of reviews by U.S. patent authorities has led to a new series of adverse rulings against Oracle's Java patent and a copyright lawsuit against Google over the Android mobile OS, according to a filing late Wednesday in U.S. District Court for the Northern District of California.

Oracle and Google filed a joint update on the progress of a number of patent reexaminations, which had been requested by Google after Oracle filed suit in August 2010.

On Feb. 7, the U.S. Patent and Trademark Office "issued a final office action rejecting all of the claims of U.S. Patent No. 5,966,702 asserted by Oracle in this case," according to the filing. Oracle has until April 7 to respond.

In addition, on Feb. 16 the USPTO issued an "Action Closing Prosecution" that rejected the claims of U.S. Patent 6,910,205. Oracle must respond to this action by April 16, the filing states.

Also on Feb. 16, the USPTO submitted a "non-final rejection of all the claims of U.S. Patent No. RE 38,104 asserted by Oracle in this case," the filing adds. Oracle can appeal this move until April 16.

The revelations in the joint filing come shortly after Oracle's decision to drop a claim related to US Patent 6,192,476. The USPTO had already rejected it after a reexamination, but Oracle apparently decided against appealing that decision.

However, the USPTO's rulings described in Wednesday's filing should be viewed in varying contexts with important distinctions, according to Scott Daniels, a partner with the Washington, D.C., firm Westerman, Hattori, Daniels and Adrian, who pens the Reexamination Alert blog.

"A non-final rejection in an Office Action is an initial rejection, and the patentee or applicant is free to amend its claims, submit arguments, expert declarations, etc," Daniels said via email on Thursday.

"A final rejection in an Office Action occurs once the examiner thinks that the patentee or applicant has had a fair chance to reply the non-final rejection," Daniels added. "It means that the opportunity to submit arguments or declarations or to amend claims is severely limited -- at the largesse of the examiner, though some argument traversing the rejection is still possible. When a final rejection issues, the patentee or applicant may appeal."

Meanwhile, an "action closing prosecution" happens only in inter partes reexaminations, Daniels said. "It is like a final rejection (in initial prosecution or ex parte reexamination) regarding the limitations on the patentee or applicant's reply. But it does not trigger the right to appeal to the Board -- the latter arises when the examiner issues a Right of Appeal Notice."

Oracle sued Google in August 2010, claiming that Android violated intellectual property it holds on Java. Google has denied wrongdoing, saying that Android constitutes a "clean room" implementation of Java that doesn't infringe on Oracle's rights.

Chris Kanaracus covers enterprise software and general technology breaking news for The IDG News Service. Chris's e-mail address is Chris_Kanaracus@idg.com

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Chris Kanaracus

IDG News Service
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