Oracle v. Google Is More Evidence That The Federal Circuit Has No Business Deciding Copyright Cases

It seems inevitable that copyright holders could try to add on patent claims simply to ensure Federal Circuit review.

This week, the Court of Appeals for the Federal Circuit overturned the verdict in Oracle v. Google, a case in which the jury at the district court level found Google’s replications of elements of Java’s application programming interface (API) in its Android was fair use. The decision, if it stands, could have significant impacts for software interoperability and will likely result in forum shopping by copyright holders. It also raises questions about the Federal Circuit itself.

The Federal Circuit is, of course, the appeals court that hears all patent cases, under the theory that patent law requires specialized knowledge (the Federal Circuit also hears other cases based on subject matter, such as disputes arising from the International Trade Commission or veterans claims) and that a uniform body of patent law is preferable to circuit splits. The decisions of the Federal Circuit are binding precedent throughout the United States, rather than being restricted to a particular geographic jurisdiction. As a result, Federal Circuit opinions carry enormous weight and, unless the Supreme Court agrees to review a particular case, it is the final word on patents.

Many rightholders love to defend the Federal Circuit, probably because the court usually takes a much more expansive views on intellectual property rights. Of course, specialized knowledge can do more harm than good, with judges spending more time in the technical weeds than looking at the broader legal and policy implications.

Remember, this is the court that wanted to allow the patenting of human genes, which is clearly not an invention of any kind and does not meet the patentability criteria of being novel and non-obvious. In Association for Molecular Pathology v. Myriad Genetics, the Federal Circuit ruled (twice — once on rehearing after SCOTUS remanded the case) that the BRCA 1/2 gene, a gene associated with the risk for breast cancer, was eligible for patent protection. Never mind the fact that products of nature and mere discoveries do not meet the criteria for patentability. Fortunately, the Supreme Court agreed to hear the case and in a 9-0 decision, reversed the Federal Circuit, ruling instead that DNA is not patentable. The Supreme Court has unanimously reversed the Federal Circuit’s patent decisions in many other high-profile cases both before and after, including Mayo v. Prometheus (claims directed to a method of giving a drug to a patient involved natural reaction which is not patentable) and Limelight Networks v. Akami Technologies (a defendant is not liable for inducing infringement unless he has directly infringed all the steps covered by the patent), just to name a couple.

Take a look at the record of Federal Court patent cases before the Supreme Court. Between the 2013 and 2015 terms, the Supreme Court heard 10 patent cases, overturning the lower court eight times, with most of those reversals decided unanimously. Last term when the Supreme Court issued its final patent decision of the year in June, John Duffy reported on SCOTUSblog, “Yesterday, the Supreme Court vacated in part and reversed in part the U.S. Court of Appeals for the Federal Circuit’s decision in the consolidated patent cases Sandoz v. Amgen and Amgen v. Sandoz, completing the specialized circuit’s dismal 0-for-6 record in patent cases at the court this year.”

I should probably get off my soapbox about the Federal Circuit’s bias in favor of strong intellectual property rights at this point and turn back to the actual case that got me started on my Federal Circuit rant. But first, a reminder of why the Federal Circuit got to hear this copyright case in the first place is in order.

No matter what side you come down on whether it makes sense to have all patent cases go before a single appellate court, you must question why the Federal Circuit has jurisdiction over what ended up being purely a copyright issue. The answer lies in the America Invents Act of 2011, where Congress dictated that the Federal Circuit must hear all appeals where the original action or counterclaim arose under patent laws. Thus, even when all the patent issues have been disposed of, the Federal Circuit still gets jurisdiction. Unlike on patent issues where many judges have a technical background, here the court doesn’t have specialized knowledge in copyright — in fact, judges in other circuits are likely to have much more experience in copyright law, such as in the Second or Ninth Circuits. The fact that at some point there may have been a patent claim or some sort of patent involved shouldn’t result in automatic jurisdiction by the Federal Circuit, yet that’s the very result of the America Invents Act.

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Back to Oracle v. Google. Overturning a jury verdict is a pretty big deal and a total waste of time and resources in this case, considering that the Federal Circuit remanded the fair use question back to the Northern District of California in 2014 to be heard by a jury. There are already plenty of great posts already going through how the Federal Circuit got its analysis completely wrong, so I won’t rehash that all here. In reading the case in light of the procedural history, though, it’s clear that the Federal Circuit predetermined what it wanted the outcome of the case to be and expected the jury to find against Google. When the jury instead came back with a verdict of fair use, the Federal Circuit decided that fair use isn’t actually a question of mixed fact and law and gave zero deference to the lower court. In fact, the court seems to ignore what it said in the same case four years ago.

Twitter user @CAIRolyn has a fantastic comparison chart of the Federal Circuit’s decision in 2014 and its 2018 opinion in Oracle v. Google, highlighting the fact that the Federal Circuit isn’t even consistent with its own precedent for the same case. For example, in 2014, the Federal Circuit said, “On balance, we find that due respect for the limit of our appellate function requires that we remand the fair use question for a new trial.” In 2018, after the jury found in favor of fair use, the Federal Circuit reversed course and said, “All jury findings relating to fair use . . . must, under governing Supreme Court and Ninth Circuit case law, be viewed as advisory only.”

On the issue of whether the copying of portions of the code was necessary, in 2014 the Federal Circuit said that the “core packages . . . may be necessary for anyone to copy if they are to write programs in the Java language. And, it may be that others of the packages were similarly essential components of any Java language-based program.” Compare that with this week’s opinion that, “Even assuming the jury accepted Google’s argument that it copied only a small portion of Java, no reasonable jury could conclude that what was copied was qualitatively insignificant, particularly when the material copied was important to the creation of the Android platform.”   Check out the comparison chart for more.

With the Federal Circuit clearly going against fair use jurisprudence from other circuits in this case, it seems inevitable that copyright holders could try to add on patent claims — even spurious ones — simply to create jurisdiction and ensure Federal Circuit review. Ultimately, the decision will threaten innovation by casting software interoperability caselaw in doubt and allowing copyright trolls a more friendly venue for litigation. I highly doubt this is the result that Congress intended.


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Krista L. Cox is a policy attorney who has spent her career working for non-profit organizations and associations. She has expertise in copyright, patent, and intellectual property enforcement law, as well as international trade. She currently works for a non-profit member association advocating for balanced copyright. You can reach her at kristay@gmail.com.