Oracle America, Inc. v. Google Inc., 3-10-cv-03561 (CAND May 31, 2012, Order) (Alsup, J.).
Monday, June 4, 2012
Congratulatory Statements do not Create Implied License
Following a jury verdict of noninfringement, the court found that defendant's implied license defense was not supported by the evidence. "An implied license requires a finding of an affirmative grant of consent or permission. Though rare, consent can be inferred from a course of conduct between parties. . . . [Defendant's] equitable defenses rest primarily on a . . . blog post by [plaintiff's] CEO congratulating [defendant] on the release of Android, as well as similar positive statements by [plaintiff's] executives thereafter. Congratulatory statements do not fall under the narrow circumstances proscribed by our court of appeals. Even if [defendant] understood [plaintiffs'] conduct to condone use of the [patented technology] packages, the 'course of conduct' must be assessed for an affirmative grant of such consent. None is apparent from the evidence [defendant] presented here. . . . Furthermore, from the present record it would be impossible to determine the scope of any implied license. Under [defendant's] theory, infringement is excused as to any aspect of Android because the whole of the platform was generally applauded by [plaintiff]. Such a finding is not supported by precedent. The parties negotiated for a real license but the talks collapsed and no license was given. It would be most bizarre to somehow find an implied license in this scenario."