A federal judge on Thursday said he plans to separate a new trial in the ongoing patent suit between Oracle and Google into two phases.
In the latest chapter of a five-year legal saga over claims that Google copied and used Oracle's Java code in its Android operating system, both sides debated the issue of willful infringement at a hearing on Sept. 17.
Google filed a motion on Aug. 6 to preclude the jury from considering willfulness when assessing statutory damages.
Oracle argues the law prohibits willful infringers from deducting overhead costs, including income taxes, from the amount of an award for damages.
In May 2012, a jury decided that Google infringed Oracle's patents but reached an impasse on whether the code in question was considered "fair use."
Because fair use and damages are the only factors left for a jury to decide, Google argues the willfulness issue is irrelevant.
Google attorney Christa Anderson accused Oracle of trying to "shoehorn" the issue into the jury's deliberations, even though willfulness is irrelevant to a claim for actual damages.
Oracle seeks to recover actual damages, which carry higher price tag than statutory damages, but the company also claims it still has the right to seek statutory damages up until a judgment is rendered in the case.
"Willfulness is relevant to statutory damages," said Oracle attorney Annette Hurst. "They want to avoid a finding of willful infringement by a jury because that has a wide-ranging effect across the case, about whether Oracle is entitled to injunctive relief."
Hurst argued that a recent Ninth Circuit decision in Oracle v. SAP held the issue of willfulness could be considered in assessing damages in a second trial.
However, in reading the decision U.S. District Judge William Alsup said he did not see how one could infer the Ninth Circuit was leaning one way or another on the issue.
"It's conceivable that someday the court of appeals will indeed rule your way and say overhead will be disallowed for willful infringement, but I don't see how you can wring any inference out of that - that the Ninth Circuit is giving us a signal," Alsup said.
Alsup called Oracle's request that he apply a number of district court decisions on the willfulness issue to the case ironic, given their insistence on stringently following the letter of the law in all other aspects of the case.
"I think you're trying to manipulate and play games with this statutory thing," he said. "Everyone knows you're not going to go for statutory damages."
Alsup said he plans to grant Google's request to separate the trial into two phases - determining liability, actual damages and disgorgement of profits in one phase and considering Oracle's election of statutory damages in a second phase.
"I'm going to bifurcate because you're putting a huge burden on the jury," said Alsup. "You're making a monumental Frankenstein monster out of the damages in this case."
Alsup said he will not set a trial date until an issue regarding his order for Dr. James Kearl to produce reports and expert testimony he provided for a separate case, Apple v. Samsung, is settled.
Apple and Samsung agreed only to provide a redacted version of reports, which Oracle objected to, saying "that made it very difficult to understand the nature of Dr. Kearl's analysis from the other case."
Hurst is with Orrick, Herrington & Sutcliffe of San Francisco.
Anderson is with Keker & Van Nest of San Francisco.
This is Alsup's second time hearing the Oracle-Google case, after overturning the jury's verdict and determining that Oracle's Java programming interfaces could not be copyrighted. A federal appeals court reversed Alsup's finding in 2014 and sent the case back to his courtroom for retrial.