SAN FRANCISCO (CN) – Google lead attorney Robert Van Nest made good on his promise to move for a mistrial in its copyright infringement battle with Oracle Tuesday afternoon, even while the same jury that delivered a partial verdict listened to testimony in the patent infringement phase.
Though the jury found that Google had infringed Oracle’s copyright of code in 37 Java application programming interfaces (APIs) in its Android operating system May 7, the group deadlocked on the other half of the question: whether Google had proven that its use of the APIs constituted fair use. In U.S. District Judge William Alsup’s jury instructions, the two halves of the question are indivisible.
“Under settled Supreme Court and Ninth Circuit law, the jury’s failure to reach a verdict concerning both halves of this indivisible question requires a new trial concerning both questions. To accept the infringement verdict as binding on the parties and retry only fair use would violate both the unanimity requirement and the Reexamination Clause of the Seventh Amendment,” Van Nest writes in his motion.
Van Nest argues that under the Seventh Amendment, a court cannot hold a partial retrial unless the issue to be retried is sufficiently “distinct and separable” from the issues decided by the first jury, citing Gasoline Products Co. v. Champlin Refining Co. He says that the same amendment requires that jury verdicts in federal court be unanimous, heading off an option offered by Oracle attorney Michael Jacobs last week to accept a majority verdict.
“Declaring a mistrial only as to the fair use question would violate the Seventh Amendment-both by threatening Google with a non-unanimous verdict on liability, and by having determination of the same factual question, or indivisible factual questions, made by two different juries,” Van Nest states.
Van Nest says that the Ninth Circuit Court of Appeals has held twice in recent years that a defendant has a right to a unanimous verdict on liability.
“Where liability depends on both acceptance of all elements of a plaintiff’s claim and rejection of a defendant’s affirmative defense, the jury must decide unanimously both that plaintiff has proven all claim elements and that defendant has failed to make out its affirmative defense. In other words, a hung jury on an affirmative defense is necessarily a hung jury on that entire liability claim because if the claim elements are submitted to a different jury than the affirmative defense, no jury has unanimously decided liability,” Van Nest writes. [Emphasis in Google’s motion.]
Google’s offered affirmative defense acknowledges its use of Java code for Android but claims it was fair use. The company says the Java code it used was taken from open-source Apache Harmony. But Van Nest repeatedly rammed home that Google’s use of Java APIs is also transformative and allowed under the fair use clause of copyright law, saying Android “strapped a set of rockets onto Java” in his Phase I closing arguments.
“To allow a jury split on an affirmative defense to impose liability ‘defeats the intent and rationale underlying the mandate that jury verdicts by unanimous, because liability might attach even though the jury had not unanimously agreed that a basis for liability exists,'” Van Nest argues, citing Jazzabi v. Allstate Insurance Co.
Accepting a partial verdict on infringement alone violates the Constitution, Van Nest says, because “the issues of infringement and fair use are sufficiently factually intertwined that a retrial of fair use cannot be had without also retrying infringement.”
An answer from Oracle’s Michael Jacobs is due Wednesday evening. Judge Alsup has not indicated when he will rule on Google’s motion.