When Oracle sued Google for patent and copyright infringement in August 2010, it accused the maker of Android of violating seven patents covering Java technology.

Five of the seven patents were dropped from the case, as one by one they were rejected upon reexamination by the US Patent and Trademark Office (USPTO). Now, one of those five rejected patents has gained new life—on Sunday, Oracle informed the court that the USPTO has granted Oracle's request to reverse the invalidation of patent #5,966,702.

Nine of the 23 claims made in the patent (representing all of the claims Oracle was asserting against Google) were confirmed by the USPTO as patentable technology. It may, however, be too late as Oracle already agreed to drop the patent from the case in order to allow the trial to proceed. The revived patent covers a method and apparatus for pre-processing and packaging Java class files in a way that improves handling of memory.

The number of patents Oracle can assert against Google had nearly been reduced to one, as one of the two patents remaining in the case (#RE38,104) had been preliminarily rejected by the USPTO upon a re-examination requested by Google. Oracle has asked the USPTO to examine this patent once more, and is asserting the patent against Google in the meantime.

The USPTO's decision to give the '702 patent new life is also preliminary, but weighted in Oracle's favor. The USPTO office last Thursday issued a "notice of intent" to confirm the patentability of the asserted claims. Oracle provided the notice to the court handling the Android case yesterday, but does not say whether it provides any legal basis for asserting the patent again.

UPDATE: We received a statement from Google stating that "The USPTO ruling is on the prior art that was submitted at that time, not on the inherent validity of the patent itself. It is important to note that Judge [William] Alsup ordered the '702 patent dropped with prejudice from this case." The USPTO decision does note that the Oracle patent's claims "are confirmed over prior art presented in this reexamination." But Google can still argue at trial that patents are invalid and should not have been issued, even if claims made in the patents are confirmed as "patentable."

In order to get the trial moving, Oracle last month agreed to drop the '702 patent and other rejected claims if they were to "remain rejected at the time of trial." Despite the USPTO's reversal, that decision would make it hard for Oracle to assert the patent in this trial.

Copyright questions

The trial got underway last week in San Francisco, and hasn't gotten to the patent issues yet. The first phase is dealing with Oracle's copyright claims. On Sunday, Oracle and Google submitted written answers to questions asked by US District Court Judge William Alsup regarding Java APIs (application programming interfaces).

Oracle is claiming Google needed a license to use Java APIs, and violated Oracle's copyrights by not obtaining one. Google argues that the Java programming language and related APIs are not subject to copyright.

The trial continues this week. Each side has submitted a list of upcoming witnesses, with some overlap. Witnesses named by both sides include Android creator Andy Rubin; Google Executive Chairman Eric Schmidt; Dan Bornstein, author of Google's Dalvik software that is used in Android; and Bob Lee, a former Google engineer and current CTO of Square.

Google will call Oracle CEO Larry Ellison as a witness, and he will appear via video. Ellison already appeared last week as a witness for Oracle, saying "If people could copy our software—create cheap knockoffs of our products—we wouldn't be able to pay for our engineering." Google will also call several other Google and Oracle employees.

Oracle's list of upcoming witnesses includes Rich Miner, who will appear via video and was a cofounder of Android, Inc., and now works for Google's venture capital arm. Oracle's upcoming witnesses also include intellectual property experts the company has retained—one named Marc Visnick was retained to compare Java and Android source code, and another named John Mitchell has filed several reports on patent and copyright issues on Oracle's behalf. Google has repeatedly requested that portions of Mitchell's reports be removed from the official court record.

The trial is expected to last eight weeks. Oracle is looking to obtain tens of millions of dollars in damages plus a percentage of Google's future Android revenue.

Listing image by Photograph by Ismael Olea