by Dennis Crouch

In the Oracle v. Google litigation, the jury found that Google had copied the Oracle’s protected Java software. However, the jury was hung on whether or not Google’s actions were excused by the fair use doctrine found in Section 107 of the Copyright Act. 17 U.S.C. 107.   While the judge considers whether to declare a mistrial (or else to rule on fair use as a matter of law), the second phase of the trial will focus on patent infringement.

The quote of the day came from Oracle’s lawyer Michael Jacobs who indicated to the court “I think you’ll be pleased to know that fair use is not an issue in the patent case.”  Jacobs is right –  unlike copyright, US patent law does not (yet or currently?) contain a fair use exception beyond the extremely narrow experimental use and de minimis defenses to patent infringement.


 

77 thoughts on “

  1. Because it’s the law

    Wrong. Your version of the law has not been around for centuries. It isn’t even real law. You ASSume too much.

    They happen to agree with me

    They don’t. And even if they did, you would still be wrong.

    Funny that patent lawyers are only now

    I take it that you are not a patent lawyer. Well that’s at least one good thing to come out of this exchange.

  2. Why on earth would you settle for anything less?

    Because it’s the law, and it has been for centuries. Funny that patent lawyers are only now hearing about it.

    It isn’t up to you to decide “what he deserves.”

    No, it’s up to the Supreme Court. They happen to agree with me.

  3. why on earth should he get an injunction?

    You are forgetting (on purpose again) the cardinal rule of remedy is to make the transgressed whole and granting an injunction clearly and unequivocally is the easiest, fairest, fastest and most complete way of making the transgressed whole.

    Why on earth would you settle for anything less?

    You selectively dive from right to remedy when it suits you and you conveniently ignore the truth of why remedy is called for in the first place.

    He’ll get what the court considers” We don’t need the nanny state becoming involved in what it thinks is a “proper negotiation.”

    The court should do its job, make the transgressed whole and get teh F out of the way.

    It isn’t up to you to decide “what he deserves.”

    Business 101 includes the right to walk away and say No Deal. Anything less is anti-American and anti-patent. It’s not needed and it certainly is not wanted. Don’t like it? Invent something yourself to take its place.

    But then again, this is IANAE, whose pro-infringer rights are documented well.

    You don’t even know what you got wrong, do you?

    The perverse thing is you know exactly what you got wrong and yet you continue to pretend that there is nothing wrong with what you got wrong, knowingly full well and all along that your view on just what a patent is is corrupted because of your philosophical view on property in particular and capitalism in general.

  4. Infringer says, “but I still wanna do it!” And that is not wilfull infringement???

    Sure it’s willful. I agreed with Ned on that point, just yesterday. If the courts aren’t awarding future royalties on that basis, they should.

    You don’t even know what you got wrong, do you?

  5. Infringer put up every defense he could think up: invalidity, non-infringement, some sort of license and was found to be a loser on all of that by a court where the patentee had to spend gazillions of dollars to get that judgment.

    Infringer says, “but I still wanna do it!” And that is not wilfull infringement???

  6. and you are getting hosed on the rent.

    You misspelled “fair market value” there. And it doesn’t apply to realty, so I’ll just wait till you guys get tired of trolling about “houses”.

    A continuing willful infringer must pay treble the damages found at trial plus whatever attorneys fees are required to get him to pay it.

    That’s very much not the law of willful infringement.

  7. Because the injunction is indispensable to getting the price. If I get to move into your house and you can’t get me evicted and must accept whatever in rent I can convince the Court to set it at, you do not have property and you are getting hosed on the rent.

    I have thought that since eBay has made compulsory licenses available that they should be considered what they are: willful infringement. A continuing willful infringer must pay treble the damages found at trial plus whatever attorneys fees are required to get him to pay it. That would certainly help the situation.

  8. One of the problems with granting an injunction is that it skews the royalty negotiation.

    Remember NTP v. RIM? Turns out they weren’t as keen on “excluding” as they made out.

    If the patentee cannot say “Yes, I am willing to grant you a royalty for x% and not an iota less.” and make it stick, then he winds up getting something less than x%.

    He’ll get what the court considers to be a fair market royalty rate. Which, if you like legal fictions, is all he deserves.

    If he’s willing to license and all they disagree on is the price, why on earth should he get an injunction?

  9. One of the problems with denying an injunction is that it skews the royalty negotiation. If the patentee cannot say “Yes, I am willing to grant you a royalty for x% and not an iota less.” and make it stick, then he winds up getting something less than x%.

    That is, if the licensee wannabe knows that the Courts will not back up the patentee when he says that, the licensee can easily say, “Thank you, sir, the price of the license is .1x % and if you don’t like it, sue me. The worst that can happen to me is that I wind up having to pay your x%. I may as well take a flyer on negotiating you down.”

  10. there is a difference between evicting squatters and collecting rent from them.

    Of course there is. That’s why when you own land you get an injunction.

    absolute right to exclusive use

    The patentee very much has the exclusive use of his patent. He alone can sue infringers, no matter what anybody else does.

    The right to practice the invention, if such even exists, is not a right associated with the patent. The closest thing the patentee has is the right to complain to the courts when someone else practices the invention, and for that he is compensated according to his loss. Including an injunction, if he can establish his entitlement to that remedy.

  11. IANAE, we can go around this block endlessly, but there is a difference between evicting squatters and collecting rent from them.  How much rent can you collect if, in the end, you cannot evict? 
     
    Moreover, the right to share is not what one calls property.  If everyone has a right to share something, who in fact owns it?  No one.  Look to Haiti to see just what society looks like without any clear understanding of property rights.
     
    Long ago, thousands of years probably, the concept of property was developed, and governments were established among men to protect property.   The current trend to disallowing an absolute right to exclusive use is undermining one of the bedrock principles of civilization.   

  12. There is no difference between what you would call “title” in the right to exclude.

    1. An exclusive licensee could have the right to exclude.

    2. Having the right to exclude is not the same thing as being entitled to an injunction. In patents or in any other area of law, with the notable exception of realty.

    A patentee who can’t get an injunction still has the right to exclude, which is why he is compensated (in money) for infringing acts.

    And any patentee who really needs an injunction will still get it. I haven’t seen the sky falling for any actual practicing entity who has asked for an injunction since eBay. You’d think someone would have noticed.

  13. Your point is wrong.

    But then again, I’m pretty sure that not only do you know that, you don’t care.

  14. he is guilty of theft and is a criminal.

    My point isn’t that he’s a criminal, my point is that he’s not civil.

  15. But suppose you own a shop. There’s this one customer you’d rather not sell to, and you’ve told him so,:”

    If you have a right to not sell to him, then it does not matter if he leaves the correct change or not, he is guilty of theft and is a criminal.

    Of course, the King of the Infringers’s Rights sees nothing wrong with forced compulsory licensing or just plain theft of a right he does not care about.

  16. Patent infringement is nothing to do with property rights

    And the credibility needle does the deep dive.

  17. we there are not dealing solely with property rights.

    Patent infringement is nothing to do with property rights. The act of infringement has exactly zero effect on the patentee’s title to the patent. The patentee asserts no title in the infringing article.

    It’s simply one person doing something that is actionable because another person has the right to not have it done. For which he is typically fully compensated in money. He’ll even get an injunction if it’s of any real use to him. He just can’t get it unless damages are insufficient, which is the exact same equitable principle that has been applied to injunctions in every other area of law (many of which involve property) since time immemorial.

  18. Leo, may I politely suggest that we fought a revolutionary war once upon a time to establish the principal that a man's home is his castle.  See e.g., the third amendment to the United States Constitution.

    These notions are not anachronisms.  Nollan establishes that violation of this essential property right by the government is it taking.

    Now the government has a right as a sovereign to take, but they must provide due process and compensation.  Nowhere in the Constitution do I see a similar right given to private parties.

  19. And you won’t go far as anything if you think your pedantic and anti-patent musings have any meaning in the real world.

    ability/right – either way, make him whole.

    Why do you fight this with such passion? Why do you resent patents so much?

  20. Give him back his abillity to exclude.

    He never had an ability to exclude. He had an exclusive right, which is not the same thing at all.

    You won’t go far as a patent agent if you can’t tell the difference between two words that happen to have a few letters in common.

  21. If it’s more than he needs to compensate his loss

    His loss is the ability to exclude.

    Why the Big Fn Deal? Give him back his abillity to exclude. Why is this even a question as to the right thing to do to make the patentee whole?

  22. Nollan v. California Coastal Comm’n, 483 US 825 – Supreme Court 1987
    ” We have repeatedly held that, as to property reserved by its owner for private use, “the right to exclude [others is] `one of the most essential sticks in the bundle of rights that are commonly characterized as property.’ “

    Indeed. In fact, as regards a patent “the right to exclude others” is the only stick in the bundle of rights. Isn’t it therefore meaningless to say that a patent (right to exclude) is “reserved by its owner for private use”? As opposed to what – sharing the right to exclude with the public? In any case, it doesn’t necessarily follow that there can be no derogation of that “most essential stick” under any circumstances.

    If one may be denied an injunction, then one really does not “own” the property.

    Says who, i.e., where did you get your criteria for “ownership”? You can still sell it, you can still license it to others, and you get to charge the intended target of your injunction triple rent for any further use of the patented invention (Ok, you have to do a little work to get that, but still.). What’s more, if his continued use is or becomes truly unfair, you can go back and get an injunction. All that sounds like at least a pretty close cousin to “owning” the patent. It sounds like you want the government to give you some kind of “moral right” in addition to that “right to exclude subject to the principles of equity” that you now get. I think you’re on the wrong continent for that. Maybe even the wrong planet.

  23. Compulsory licensing is Anti-American.

  24. “for future infringement”

    Straight from the Infringers’ Rights Handbook.

    Don’t mind me as I move into your house….

  25. what you are saying is equivalent to saying that a landowner cannot obtain an injunction against an illegal occupier if he, the owner, is not himself using the land.

    It’s a bit more fact-specific than that. And it doesn’t apply to land, as we’ve discussed at length in the past.

    But suppose you own a shop. There’s this one customer you’d rather not sell to, and you’ve told him so, but every day he walks into your shop, grabs an item that you own off the shelf, leaves exact change by the cash register, and walks out with the item.

    What are your actual damages? Think you’d get an injunction?

  26. Anyone holding any type of conversation with IANAE needs to understand that he believes in Infringers’ Rights.

    He does not believe in what a patent actually is. He is the epitome of anti-patent academics.

    Back to the tower with him.

  27. IANAE, what you are saying is equivalent to saying that a landowner cannot obtain an injunction against an illegal occupier if he, the owner, is not himself using the land.  His remedy, in your view, should be limited to collecting rent.

    And thus are favelas born.

  28. Leo, the point is that exclusive use of one's property is the most important right one has.  If one may be denied an injunction, then one really does not "own" the property.

    Nollan v. California Coastal Comm'n, 483 US 825 – Supreme Court 1987
    " We have repeatedly held that, as to property reserved by its owner for private use, "the right to exclude [others is] `one of the most essential sticks in the bundle of rights that are commonly characterized as property.' "

    http://scholar.google.com/scholar_case?case=10841693014473793601&q=scalia,+right+to+exclude,+eminent+domain&hl=en&as_sdt=2,5

  29. It is the inventor, the patentee that have been granted “exclusive” rights.

    And when his rights are infringed, he is compensated for his loss. With money, if that will make him whole. Just like every other right. Sue someone in conversion, and you’ll get a forced sale. No injunction. A clear affront to the exclusive right of ownership. But that’s fine, because the right sum of money makes the plaintiff whole.

    The fact that he would rather have an injunction is just as irrelevant as the fact that he would rather have a billion dollars. If it’s more than he needs to compensate his loss, he can’t and shouldn’t get it in court.

  30. "The court should set the royalty rate" while granting a compulsory license.

    Where in the world does the infringer obtain a right to infringe under our statutory scheme?  It is the inventor, the patentee that have been granted "exclusive" rights.

    A compulsory license should only be granted to government entities, or to those working for the government.  Anything else is way beyond the pale, IMHO.

  31. You’re wrong, it makes no sense to not make the patentee whole by restoring the right to exclude. The court should restore the transgressed in the simnplest and most complete manner possible.

    And then get the h_e11 out of the way.

  32. My wife is from Brazil. Her father once owned land that was taken over by red-flag-waving revolutionaries. He could not get the government to evict the squatters. Over time, his land became one more favela.

    Cool story, Ned. But your parade of horribles seems to be based on the assumption that an injunction is never available. I bet you can get an injunction if a bunch of red-flag-waving Brazilian revolutionaries squat on your patent.

  33. he could continue to infringe and force the patent owner to continually sue for infringement. This makes no sense whatsoever.

    You’re right, it makes no sense. The court should set the royalty rate for future infringement, and the infringer should simply pay it. No need to keep suing.

  34. IANAE, but if the infringer were willing to pay treble damages, the statutory limit, because his profits on infringing were so great, he could continue to infringe and force the patent owner to continually sue for infringement.  This makes no sense whatsoever.  While it does not totally allow the infringer to get away Scot free, it does allow the infringer to laugh at the law.
     

     

  35. What would you suggest, a bigger injunction?

    No need for that on its face. To make the person whole, just give the injunciton. Now if you want to penalize the (repeat) transgressor, sure fines might work (but they have to be at a level that stings).

  36. The problem as I see it that there seems to be absolutely no downside to willful infringement.

    Presumably the patentee would need to plead and prove willful infringement, in which case the law does provide for a downside. As it should.

    Incidentally, the downside is more money. What would you suggest, a bigger injunction?

  37. Should a willful infringer be entitled to a license at all?  Should they be entitled to the same royalty that people who respected the patent and took out a negotiated license pay?
     
    The problem as I see it that there seems to be absolutely no downside to willful infringement.  If the willful infringer has to pay the same royalty as everybody else, and there's little or no possibility of an injunction, there is every incentive to willfully infringe and/or to ignore patents.  And that is exactly what is happening in United States today.

    My wife is from Brazil.  Her father once owned land that was taken over by red-flag-waving revolutionaries.  He could not get the government to evict the squatters.  Over time, his land became one more favela.

    The failure to enforce property rights by injunctions has consequences.  They are not good for society.

     

     

  38. Making whole is restoring the patent right.

    We both know the easiest and most effective way of doing so.

  39. has suffered no damage

    Asked and answered – he has suffered the damage to his patent right. The one whose nature is exclusivity. The one whose remedy to make whole is the very (the most) equitable of injunction.

    I think you keep on getting confused by your bias to seek “damage: as purely a monetary damage. Damage may not just be monetary. In fact, the more damage is not monetary, the more likely, in equity, injunction is warranted.

    It is a critical, nay fatal position you keep taking that only monetary damages are under consideration. It is not.

    The facts of eBay do not say what you want them to say. The facts of eBay only say that you cannot take a shortcut through the analyis, NOT that the analysis is stinted to “give ‘em money.”

    Your bias overcomes any logic you might have.

    Your “inconvenience the defendant” is well-known to be grounded in Infringer’s Rights. Your stand is BS and is known far and wide.

  40. What he loses is his constitutional right of exclusivity.

    LOL, tell it to the Supreme Court.

    Also, little-known fact: the exclusivity is actually a statutory right. And the injunction is an equitable remedy. If this was a constitutional issue, I’m sure that would have come up in court by now.

    the basic reason for remedy in the first place; to make the transgressed whole.

    The transgressed who (under the current hypothetical) has suffered no damage, you mean? Or the transgressed who (on the facts of eBay) could be made whole with money instead of with an “equitable” remedy that would greatly inconvenience the defendant to serve no real purpose?

    If zero dollars makes the plaintiff whole, that’s hardly irreparable harm, is it?

  41. The king of Remedy keeps on forgetting exactly what the patentee loses when his patent is violated. What he loses is his constitutional right of exclusivity. You cannot put a cost on that.

    The king of Remedy also forgets the basic reason for remedy in the first place; to make the transgressed whole. Injunction is the simplest and most complete way of dealing with this type of transgression and making this particular type of transgree whole.

    All else is political/philosophical BS.

  42. On filing of the lawsuit, a patentee may not be entitled to damages under the law and have no legal remedy. He may have no option but to request an injunction as his sole remedy.

    That’s a complete non sequitur. You’re talking about royalties for past damages, and an injunction for future damages. Nothing to do with one another.

    If he’s not entitled to past damages, he’s not entitled to past damages. That’s all there is to it. An injunction won’t fix that, even if granted. He’d still get a royalty on future infringement (assuming he doesn’t get an injunction), because presumably his defendant would have notice.

    If the court leaves the patent owner without a remedy,

    If the statute leaves the patent owner without a remedy, you mean. If that’s the case, why do you think he should get a remedy?

    can the infringer thereafter continue to infringe without being a willful infringer?

    Presumably not, since he would now have notice and a judicial finding that his product infringes. How is that relevant to anything?

    If the patent owner can never get an injunction, the infringer is infringing with impunity. This is the same thing as fair use.

    Sure, if by “with impunity” you mean “which he has to pay for”. And if by “the same thing as fair use” you mean “exemption from one specific remedy, on a very specific set of facts, and it inherently ends when you get sued”.

    Ned, I understand that you’re upset about eBay, but if you want to show that it’s fundamentally unjust you’ll have to do better than that.

  43. Source code’s copyrightable and not subject to Fair Use. But source code as such isn’t patentable.

    How boring. Happy to see the usual Steam of Conscience artists inhabiting this particular blogosphere so quickly get oh so clever.

    James Joyce: you watching?

  44. Everyone knows that INANAE is for Infringer’s Rights and that includes the ability to keep on infringing.

    See at Mar 08, 2012, 09:41 AM:

    link to patentlyo.com

    Never mind that the goal of a rememdy is to make the transgressed whole and nothing makes a patent holder whole like injunction.

  45. IANAE, the statute authorizes a RR as damages.  Damages requires actual notice (with exceptions).  On filing of the lawsuit, a patentee may not be entitled to damages under the law and have no legal remedy.  He may have no option but to request an injunction as his sole remedy.  What then?

    Are you suggesting that a court order the infringer to pay a RR on the application of the infringer?  Assuming such an order, who is the aggrieved party, the infringer or the patentee?

    If the court leaves the patent owner without a remedy, can the infringer thereafter continue to infringe without being a willful infringer?  What should we do with willful infringers?  Enshrine there VP IPs in the Intellectual Property Hall of Fame?

    If the patent owner can never get an injunction, the infringer is infringing with impunity.  This is the same thing as fair use.

     

  46. There are no damages, so the legal remedy not only is not adequate, it simply never existed.

    If there are no damages, then the absence of remedy is adequate. The law further provides for the payment of a reasonable royalty, so in your hypo the patentee is more than whole. If he wants to forgo that remedy, there’s no law against it.

    The patentee’s subjective desire for an injunction does not, without more, establish his entitlement to an injunction.

    If you want to discuss a hypothetical set of facts wherein the patentee is actually entitled to an injunction under eBay, which is not very difficult to imagine, then say so. It’ll be a very short conversation.

  47. IANAE, but under the hypo, there are no past damages for one reason or another, and the patentee never offered a license to the infringer under any terms.  There are no damages, so the legal remedy not only is not adequate, it simply never existed.

    So then what?

  48. But how could the court find that damages were adequate compensation?

    They would find that damages would have been adequate compensation, but if the plaintiff didn’t want the money then too bad.

    If the court was required to always give the plaintiff everything he asked for, we wouldn’t need trials.

  49. But how could the court find that damages were adequate compensation?

    Assume there were no past damages due to lack of notice or absolute intervening rights, and the patentee has never offered a license under any terms to the infringer.  Just how could a court opine that damages are an adequate remedy?

  50. I wonder how a court would treat a patent case that only asked for an injunction?

    I wonder how they would treat a patent case that only asked for a sandwich.

    It’s not the court’s problem if you didn’t ask for the remedy you’re entitled to. That’s no reason to give you a remedy you’re not entitled to.

  51. I wonder how a court would treat a patent case that only asked for an injunction? Would the court decided there is liability but still not grant the injunction?

  52. APIs aren’t software; they’re a list of specifications software must meet, which can potentially be implemented in several different ways.

    The API itself may be copyrightable, but if so extending that copyright to cover all software implementing it is questionable, since it verges on copyrighting an idea. The EU supreme court has recently ruled that APIs aren’t copyrightable, on roughly these grounds.

    Judge Alsup reserved judgement on this issue until after the jury gave their verdict. His ruling is due next week, and may render the jury’s verdict on that question moot.

  53. Sergey: Don’t evil.
    Larry: Me no be evil.
    Sergey: Me no be evil neither.
    Larry: Let’s steal Oracle’s software, since that don’t be evil.
    Sergey: Da! Da! Da!

  54. Which is why the court could simply enjoin the thought process–then there is nothing in their mind which they can speak about. In other words, they have the First Amendment right to speak whatever is on their mind. So, by enjoining the thought process, there is never any relevant thought which they are prevented from speaking about.

    or something like that. :P

  55. I love the fact that there is no internal filtering mechanism at the copyright office. Anything and everything is an original work in a tangible medium of expression.

  56. The First Amendment protects speech, not thoughts.

    True. But Prometheus’ claims (if enforceable) also prevent practitioners of the prior art from speaking about certain patent-ineligible facts relating to the measured metabolite levels.

  57. The First Amendment protects speech, not thoughts.

    I started to say that thoughts have to precede speech, which means that any speech about the “newthought” would raise the First Amendment issue. But then I was reminded of the ongoing presidential campaign.

  58. The First Amendment protects speech, not thoughts. If the thinking process completes the infringement, you never get to the First Amendment issue. ;) Heck, according to a judge in a recent employment case, the First Amendment does not even protect one’s right to click…as in clicking on the “Like” button on facebook.

  59. have a very difficult time envisioning a First Amendment challenge to a patent.

    You might very well have seen such a challenge if the Supreme’s had held that claims in the form [oldstep]+[newthought] were both eligible and immune from attack under 102.

    But they wisely chose to find such claims ineligible. 9-0.

  60. Since when is the “experimental use exception” a “major defense to patent infringement”? Did I miss something? I think I can count on one hand the number of cases in the past 20 years where someone used it successfully–and I lost almost all of my fingers in a tragic incident with a meat grinder.

    As for the “Repair Doctrine,” not sure I understand how that is at all similar to fair use in copyright law.

  61. Quick observation. Fair Use is a court created doctrine to avoid “tension” between copyright law and the First Amendment.

    I have a very difficult time envisioning a First Amendment challenge to a patent.

  62. What is it then when a court refuses to grant an injunction?

    The court would probably call it something more like the patentee having already been fully compensated for the infringement. You know, with damages. The opposite of “impunity”.

  63. The difference, of course, is that fair use is a complete defense. While damages are still due even if a court refuses to issue an injunction to stop ongoing infringement.

  64. If one infringes with impunity, his use is authorized.

    There is a grey area between fair use and a compulsory license. Both deny the right holder an injunction.

  65. C’mon, Ned, you can do better than that. Copyright law also provides for injunctions and enhanced damages for willful infringement, as you know. Fair use is something else, isn’t it?

  66. Suffice it to say that the experimental use exception is a major defense to patent infringement and related to the Repair Doctrine, which is another doctrine analogous to the Fair Use doctrine.

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