Orrick Wins Appellate Reversal for Oracle in Federal Circuit IP Case

May.12.2014

In a case that has been called the “World Series of IP cases,” a team of Orrick appellate and intellectual property (IP) lawyers scored a stunning appellate reversal for client Oracle against Google. The Federal Circuit overturned a ruling that the thousands of lines of Oracle software that Google copied into its Android operating system had no copyright protection.

Orrick argued that the district court’s copyright decision should be reversed and provided a clear legal roadmap for doing so. In an opinion that quotes repeatedly from Orrick’s briefs and oral presentation, the Federal Circuit unanimously reversed the district court’s copyright opinion. The court’s detailed opinion concludes that Oracle’s Java platform is protected under fundamental principles of copyright law.

This is a tremendous victory for Oracle and a landmark opinion explaining how copyright law applies to computer programs.

New York Appellate & Supreme Court partner Josh Rosenkranz led Orrick’s team which also included San Francisco IP partner Annette Hurst, D.C. Appellate & Supreme Court partner Mark Davies, and Silicon Valley IP partner Gabe Ramsey.

Select media coverage (may require subscription):

• Reuters: Oracle Wins Copyright Ruling against Google over Android (May 9, 2014)

• Bloomberg: Oracle Can Pursue Claim That Google Copied Java, Court Says (May 9, 2014)

• The Litigation Daily: Federal Circuit Revives Oracle Copyrights in Google IP Brawl (May 9, 2014)

• Law360: Google, Oracle Ruling Sets Up Software Fair Use Fight (May 9, 2014)

• Law360: Fed. Circ. Revives Oracle's $1B Java Suit Against Google (May 9, 2014)

• InfoWorld: Oracle's Surprise Win in Java API Case Could Make it Harder for Developers (May 9, 2014)

• Foss Patents: Oracle Wins Android-Java Copyright Appeal: API Code Copyrightable, New Trial on Fair Use (May 9, 2014)

• The Wall Street Journal: Oracle Wins Ruling in Case Against Google Over Java (May 11, 2014)

Related Lawyers

E. Joshua Rosenkranz Partner, Supreme Court & Appellate, Intellectual Property

New York

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D:+1 212 506 5380
E: [email protected]

Practice:

Finance Sector
Supreme Court & Appellate
Intellectual Property
Complex Litigation & Dispute Resolution
White Collar, Investigations, Securities Litigation & Compliance
Antitrust & Competition
International Arbitration & Dispute Resolution

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E. Joshua Rosenkranz Partner

New York

Josh has been named American Lawyer's “Litigator of the Year” twice in addition to being a finalist for 2022. In 2012, the magazine dubbed him “the Defibrillator” based on his streak of appellate wins for companies that “appeared to be at death’s door,” and in 2017 it declared, he “still deserves the moniker we once gave him.”

In 2014, The Financial Times named Josh one of the 10 most innovative lawyers in the North American legal sector for his work “demystify[ing] the technical issues” and securing a victory in the blockbuster Federal Circuit appeal, Oracle v. Google. Chambers USA has reported, “He wins accolades for his ‘brilliant analysis and judgment.’ Clients appreciate how he ‘rethinks every case from the ground up,’ and add: ‘He can take the most complicated legal or technological issue and present it in a way that seems like common sense.’” Another edition of Chambers USA added: “‘His briefs are quite simply beautiful,’” and “clients describe his courtroom presence as ‘both commanding and accessible at the same time.’ He has the ‘perfect combination of persuasiveness, intelligence, wit, and deference.’”

Josh's practice covers a wide range of subjects, including intellectual property, financial services, securities, privacy, antitrust, federal preemption, insurance law, corporate governance, criminal law, and constitutional litigation. Among his recent clients are Cisco, Credit Suisse, Cox Communications, DISH Network, Genentech, Gilead, Johnson & Johnson, JPMorgan Chase, Microsoft, Mozilla, Oracle, Sonos, and Royal Bank of Scotland.

Clients turn to Josh to win the highest stakes appeals, including appeals in cases that threaten the very survival of a business. For example:

He represented Microsoft in an international cause célèbre in the U.S. Supreme Court challenging the U.S. Government’s claim that it can serve warrants for emails stored overseas.
He represented DISH Network in one of the most high-profile patent appeals in the country, successfully overturning an injunction that threatened the company's life.
He has been lead counsel in multiple cases either defending or challenging verdicts over $1 billion.
He represented Facebook in the high-profile battle waged by the founder's Harvard classmates, the Winklevoss twins, who laid claim to the idea for Facebook, winning a ruling from the Ninth Circuit to end the lawsuit.
He won a landmark victory in a Supreme Court case that rescued the estimated $60 billion U.S. market of copyrighted goods manufactured abroad.
He represented 36 law schools in a high-profile Supreme Court case against the Department of Defense.

Josh was the founding president and CEO of the Brennan Center for Justice at New York University School of Law, one of the country’s foremost public interest firms. Over the course of eight years, he was the Brennan Center’s chief strategist on litigation and public policy advocacy. Before that, Josh founded the Office of the Appellate Defender, a public defender office specializing in criminal appeals.

Annette Hurst Partner, Intellectual Property, Trademark, Copyright & Media

San Francisco

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D:+1 415 773 4585
E: [email protected]

Practice:

Technology & Innovation Sector
Intellectual Property
Trademark, Copyright & Media
Artificial Intelligence & Machine Learning

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Annette Hurst Partner

San Francisco

Annette is an experienced trial lawyer who has tried copyright, trade secret, trademark, patent and business tort claims. As a risk analyst and problem solver with deep proficiency in the software industry, Annette is a go-to counselor and speaker regarding the legal issues surrounding access and use of datasets in the development of machine learning algorithms. She was named “Litigator of the Week” by The American Lawyer for her work as co-lead counsel on the Mattel/MGA case. Chambers USA ranks her in Band 1 for Trademark, Copyright & Trade Secrets, with clients reporting that she is “smart, creative and terrific at oral argument” and “a very well-known authority in copyright law, a great advocate and a great trial lawyer.” Chambers reports: “Clients agree that Annette Hurst is ‘a very powerful and experienced trial lawyer for copyright cases, and a good team leader who is reliable before judges,” and “Peers consider Annette Hurst a ‘remarkably intuitive’ lawyer who ‘brings unique perspectives to soft IP cases.” Since 2018, The Legal 500 has recognized Annette as a “Leading Lawyer” in copyright law, and she was named “Female Litigator of the Year West” by Benchmark Litigation in 2013. Annette has been repeatedly named one of the top 75 IP litigators in California by The Daily Journal.

Annette’s community and professional activities include past service on the Northern District of California Patent Local Rules Committee, President of the Lafayette Elementary School PTA, and past membership on the Board of Directors of the Volunteer Legal Services Program and Board of Directors of the Bar Association of San Francisco for which she was chair of the Finance and Investments Committee. She also is a past member of the Board of Directors of the Legal Aid Society of San Francisco and the Board of Governors of the Association of Business Trial Lawyers, Northern California Chapter, as well as a past president of the Barristers Club.

Mark Davies Partner, Supreme Court & Appellate, Intellectual Property

Washington, D.C.

See my bio

D:+1 202 339 8631
E: [email protected]

Practice:

Supreme Court & Appellate
Intellectual Property

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Mark Davies Partner

Washington, D.C.

Mark is a highly successful appellate lawyer who has argued and briefed many cases, both in private practice and government. Mark has argued 50 appellate cases, including multiple arguments for one of the world’s leading high-technology companies. He has handled many appeals for Asian and European companies in U.S. courts, including challenges to International Trade Commission actions. He has represented, often repeatedly, companies such as Bosch, Cisco, EMC, Emerson, Ericsson, Fujitsu, Harmon, Honda, Intel, MediaTek, Microsoft, Nintendo, Nvidia, Oracle, Solar City, Sonos, Tesla, TSMC, VeriFone, Vizio, and others. And, he regularly helps defeat non-practicing entities such as Intellectual Ventures, IP Bridge, and Uniloc Corporation.

Legal 500 reports, “prominent in the high-tech field, Mark Davies…is praised for his ‘unparalleled Federal Circuit experience.’” An interviewee noted that he “‘is an outstanding leader of their appellate teams, as well as a skilled and subtle advocate. He really knows the Federal Circuit. Mark also has the crucial ability to see both the big-picture forest and the technically-detailed trees at the same time, and to weave them all together into a compelling story on appeal.’”

Mark is ranked in Chambers USA for Nationwide Appellate Law and Nationwide Intellectual Property: Appellate. Chambers USA 2023 quotes an interviewee that said: "He knows the Court's history, what the best arguments would be, how to present them and how to frame the issues to maximize the chances of the Supreme Court accepting cert." Another interviewee said: "He is very responsive and thoughtful. He has a great presence, a strong command of the cases he's arguing and good rapport with judges."

Mark’s practice focuses on cutting-edge legal issues of particular importance to high-technology clients, including novel issues such as patent damages, standard setting, and artificial intelligence.

He is the author of the “user manual” for Federal Circuit appeals, Patent Appeals: The Elements of Effective Advocacy in the Federal Circuit (November 2017). His cases have involved virtually every area of patent law, as well as copyright, trade secret, and trademark law.

Mark is also the author of a legal treatise Artificial Intelligence: Law & Litigation (LexisNexis/Matthew Bender June 2023).

Mark appears frequently in federal district courts, serving as legal strategist in complex intellectual property cases. In high-stakes trials, he often leads ‘appellate eyes’ teams to set the stage for the inevitable appellate proceedings.

He also plays an active role in the development of U.S. technology policy and has represented clients at the Department of Justice, the Commerce Department, the Federal Trade Commission, the Patent and Trademark Office, and other government agencies. His amicus briefs on behalf of various technology clients are often cited in judicial opinions.

Mark also has a strong pro bono appellate practice, representing clients in the D.C. Court of Appeals, as well as the U.S. immigration and criminal systems. He is a member of the District of Columbia Court of Appeals Criminal Justice Act Panel.

Before joining Orrick, Mark served as a member of the Appellate Staff of the Civil Division at the U.S. Department of Justice (1999-2006), where he represented the U.S. Patent and Trademark Office, the Copyright Office, the International Trade Commission and other federal agencies before the Federal Circuit, other U.S. Courts of Appeals, and the U.S. Supreme Court. Mark also practiced with another major law firm appellate practice in Washington D.C.