Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. It's been almost nine years since Oracle sued Google for copyright infringement. By next fall, the U.S. Supreme Court will have a second chance to decide whether to weigh in. Oracle has now spelled out the reasons it thinks that shouldn't happen, and I've got a look at them below. Remember, if Oracle prevails, that means there will be a third trial, and 'round about 2023 the court ought to get one more chance for review. As always you can email me your thoughts and follow me on Twitter.  

Oracle Jabs at Google and 'Usual List of Amici'

Round 2 in Oracle and Google's titanic copyright battle over Java APIs is now fully joined at the Supreme Court. Google asked the court in January to review two Federal Circuit decisions that it said threw “a devastating one-two punch at the software industry.” The company argues that copyright protection should not extend to “software interfaces,” and that lower courts “are badly in need of guidance on how to apply the fair-use doctrine in the context of computer code.”

Oracle fired back Wednesday, accusing Google of rehashing the same copyrightability arguments the court has already rejected, and of lining up “the usual list of amici” in an effort to muddle the state of fair use law.

“Nothing has changed” since the justices followed the solicitor general's recommendation to deny cert on copyrightability four years ago, Oracle states in a brief signed by Orrick Herrington & Sutcliffe partner Josh Rosenkranz. “Nor has software development suffered the devastating impact Google predicted; the industry is doing better than ever.”.

Google argues that the Java APIs shouldn't be copyrightable because they merely provide a shorthand for accessing preexisting libraries of code. Google wrote its own implementing code, and copied only the Java declarations so that programmers could use the language to create Android applications. The Federal Circuit ruled in 2014 that the APIs—11,500 lines of code organized into 37 packages—are copyrightable. On retrial, a San Francisco jury found Google's copying a fair use, but the Federal Circuit then ruled the use was not fair as a matter of law.

Google has drawn amicus support at the Supreme Court from some 75 IP scholars and from nonprofit advocacy groups such as the Electronic Frontier Foundation, Public Knowledge, Engine Advocacy and the Computer and Communications Industry Association. Microsoft, which previously supported Oracle on copyrightability, is backing Google on fair use.

Oracle says in Wednesday's filing that there's no circuit split on fair use to resolve, and no reason to excuse Google's “egregious” copying of an entire software platform. “Neither Google nor its amici cites a single case—in any court—that has ever found it permissible to copy this much code (or this much structure and organization)” and use it for the same purpose, Rosenkranz writes.

The idea that the Federal Circuit upset the law of fair use is “vacuous, no matter how many amici Google could recruit to sign briefs attesting to their unwarranted contrary expectation,” Rosenkranz adds.

“Google's theory is that, having invested all those resources to create a program popular with platform developers and app programmers alike, Oracle should be required to let a competitor copy its code so that it can coopt the fan base to create its own best-selling sequel,” he concludes. “That argument would never fly with any other copyrighted work.”

Also signing onto Oracle's brief in opposition are Orrick partner Annette Hurst, Kirkland & Ellis partner Dale Cendali, and Oracle general counsel Dorian Daley, and associate GCs Deborah Miller and Matthew Sarboraria. Google's team includes counsel of record Kannon Shanmugam of Paul, Weiss, Rifkind, Wharton & Garrison and attorneys from Goldstein & Russell; Keker, Van Nest & Peters; King & Spalding; and Kwun Bhansali Lazarus.

Method-of-Treatment Patents Looking More Automatic

Last week I wrote about the Section 101 fight at the Supreme Court between Hikma Pharmaceuticals International and Vanda Pharmaceuticals. One of the sub-arguments is whether, if Vanda remains the law of the Federal Circuit , every method-of-treatment patent will “automatically” be patent eligible.

I'm gonna have to say that Hikma, the generic pharma trying to invalidate a patent on a schizophrenia treatment, is winning that part of the argument so far. (But see this cogent contrary argument by Maynard Cooper's Sasha Rao and Erin Gaddes.) Twice in the last two weeks the Federal Circuit has found method-of-treatment patents eligible, citing Vanda.

The latest decision came Thursday in Endo Pharmaceuticals v. Teva Pharmaceuticals USA. At issue is a method of treating pain in patients with kidney impairment. The inventors of U.S. Patent 8,808,737 found that such patients process oxymorphone more slowly than others, and therefore can be treated at lower dosages in accordance with their creatinine clearance rates.

U.S. Magistrate Judge Mary Pat Thynge and U.S. District Judge Richard Andrewshad both found the patent simply claimed a law of nature under the Supreme Court's Mayo decision. Endo's arguments otherwise were “thoroughly unconvincing,” Andrews wrote.

The Federal Circuit disagreed. “The claims at issue here are legally indistinguishable from the representative claim in Vanda,” Judge Kara Stoll wrote, in that both lay out a specific dosage regimen based on test results. “Like the claims in Vanda, the claims here 'are directed to a specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific outcome,'” she wrote. Judges Raymond Clevenger and Evan Wallach concurred.

The Supreme Court last week requested the solicitor general's views on Vanda, though the office isn't expected to weigh in until the fall.

In the meantime, Sens. Thom Tillis and Chris Coons are promising to produce a “skeletal outline of legislation” to amend Section 101 at an April 17 meeting with industry and trade group representatives, according to Bloomberg Law. Tillis and Coons, the chair and ranking member of Senate Judiciary's IP subcommittee, have circulated four principles for the legislation in advance of the meeting.

As reported by Bloomberg, one principle sounds extremely broad—conferring eligibility on any invention that meets the statutory requirements of novelty, obviousness, sufficient disclosure, written description and definiteness. Another principle sounds more like a carve-out for diagnostic and life science patents—an idea Coons seemed to hint during a recent subcommittee hearing.

U.S. District Judge Leonard Stark

No Fee Award for Bloomberg in Patent Case

Speaking of Bloomberg, the financial news provider has lost a bid for “exceptional case” attorneys fees in a patent infringement lawsuit brought by Quest Licensing.

U.S. District Judge Gregory Sleet granted summary judgment to Bloomberg, Charles Schwab and Interactive Data in 2017. He'd said Quest's claim of infringement on an apparatus for providing changing finance information “flies in the face of the court's claim construction.” The three companies moved for fees.

Sleet has since retired. U.S. District Judge Leonard Stark ruled Wednesday that, while “there are certainly grounds here on which a reasonable judge might deem this case to be exceptional,” Quest's conduct did not reach that level, my ALM colleague Tom McParland reports.

Stark found Quest's claim construction position “not unreasonable,” and noted that Sleet had said Quest made “a fine argument” at the summary judgment hearing.

“While Judge Sleet rejected plaintiff's position, this court does not feel that plaintiff should have foreseen that to be the only realistic outcome,” Stark concluded.

Quest was represented by Brown Rudnick and Bayard. Bloomberg and Charles Schwab were represented by Wilson Sonsini Goodrich & Rosati and Morris, Nichols, Arsht & Tunnell.

Another SEP-Based Injunction in England

IP licensing firm TQ Delta LLC has won an injunction from the High Court of Justice in England over a patent essential to practicing DSL technology.

An attorney with Gowling WLG, which represented TQ Delta, told World Intellectual Property Review that it was the first such judgment at the High Court since the Court of Appeal affirmed a similar ruling last fall in Unwired Planet v Huawei.

According to TQ Delta, the High Court ruled that ZyXEL Communications UK Ltd. and its Danish parent ZyXEL Communications A/S had been “holding out” from taking a license on TQ's portfolio. It enjoined ZyXEL from further infringement and ordered an interim payment of more than 1 million pounds.

That's all from Skilled in the Art this week. I'll see you all again on Tuesday.