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Keker & Van Nest Awarded Top Defense Verdict of 2012

Daily Journal

Last year's first epic Silicon Valley court battle dealt a crushing blow to Redwood Shores-based Oracle Corp. while bolstering the practices of its adversary, Google Inc., in using the elements of the Java programming language to create the Android operating system.

It was also a triumph for Google's attorneys at Keker & Van Nest LLP, whose clever litigation strategy steered them through a trial that had major obstacles at the outset.

Oracle, which acquired Java in its purchase of Sun Microsystems Inc., was a formidable foe at trial, with a legal team that included Morrison & Foerster LLP partner Michael A. Jacobs , as well as David Boies of Boies, Schiller & Flexner LLP. Oracle America Inc. v. Google Inc., CV10-03561 (N.D. Cal., filed Aug. 12, 2010).

San Francisco-based Keker partner Christa M. Anderson, who helped lead Google's team with Robert A. Van Nest , said that a lot of the defense's challenges stemmed from the volume and complexity of Oracle's claims.

"The case was so multifaceted," Anderson said in an email, adding that Oracle's lawyers claimed Google had infringed more than 100 claims held in seven different patents as well as multiple copyrights. That gave them ammunition to support "a very large damages demand," she said.

Keker & Van Nest lawyers, along with their co-counsel at King & Spalding LLP and Greenberg Traurig LLP, had to narrow the arguments against them and prepare defenses on all fronts.

Google got an initial boost from the U.S. Patent & Trademark Office, where administrators began systematically re-examining Oracle's patent claims and issuing preliminary rejections. While such office actions are not necessarily permanent, they pressure plaintiffs to narrow their claims. As more re-examination results came in, U.S. District Judge William Alsup gave Oracle's attorneys the choice of dropping most of their patent claims or postponing the trial. The plaintiff's attorneys chose the former, and ultimately lost its remaining patent claims at trial.

The focus, instead, was on Oracle's copyright infringement claims.

"Oracle had a pretty simple narrative of, 'We created this, and they took it,'" said Edward J. Naughton, a Boston-based partner at Brown Rudnick LLP who closely followed the case.

To win, Google's lawyers had to show that the alleged infringement did not matter, because the structure, sequence and organization of Java application programming interface packages, called APIs, could not be copyrighted.

But initially, Alsup took away that argument too, by asking the jury to rule on infringement first, and allowing him to consider the copyrightability question later. That forced Van Nest and his legal team to adopt a second argument and try to persuade the jury that Google had used Java APIs under "fair use" provisions of copyright law.

"Which, as a trial lawyer, is a really tough spot to be in," Naughton said. "The judge has just told the jury to assume that one of your key arguments is wrong - they had a tough row to hoe."

The jury sided with Oracle on infringement, but split on the fair use defense, leaving a deadlock. The Google lawyers ultimately convinced Alsup that the sequence, structure and organization of Java APIs cannot be copyrighted.

In his opinion, Alsup ruled that Oracle could not stake a claim on the Java APIs in question because Google had written its own source code to mimic their functionality.

Oracle has appealed Alsup's ruling, and the U.S. Court of Appeals for the Federal Circuit will get a chance to review it. But many legal observers say the thoroughness of Alsup's reasoning, combined with Keker & Van Nest's well-crafted defense arguments, has created an uphill battle for Oracle.

"His opinion ... demonstrates a depth of knowledge of computer programming that is so strong that I think most judges would be hesitant to challenge his conclusions," said Santa Clara University School of Law professor Tyler T. Ochoa, who highly doubts Alsup's decision will be overturned.