Robert A. Van Nest

More than a decade ago, Van Nest took on the major challenge of defending a copyright and patent infringement lawsuit filed by Oracle Corp. against his client, Google Inc, for infringing parts of the Java programming language.

Earlier this month, the U.S. Supreme Court ruled 6-2 that Google's actions were protected under the fair use doctrine of the Copyright Act.

The complaint sought millions of dollars in damages for infringing Java's application programming interface (API) packages, which Google adapted for smartphones in its Android operating system.

Van Nest won two trials for Google, now known as Alphabet Inc, but the U.S. Court of Appeals reversed those decisions both times.

He didn't argue Google's U.S. Supreme Court appeal last year, which was handled by Thomas C. Goldstein, a partner with Goldstein Russell PC. Google LLC v. Oracle America Inc., 2021 DJDAR 3095 (S. Ct, filed Jan. 25, 2019).

But Goldstein's fair use case was the same as the one Van Nest made to both San Francisco juries.

In a statement, Van Nest praised the high court ruling and the attorneys and staff who assisted him.

"It's a thrilling win, not only for Google, but for the tech industry overall, establishing that reimplementing APIs is fair use," he wrote.

Last month, Van Nest helped secure a long-fought victory for his client, Qualcomm Inc., when the U.S. Federal Trade Commission decided not to seek Supreme Court review of a 9th U.S. Circuit Court of Appeals ruling clearing the company's patent licensing practices.

The FTC decided against petitioning the high court for review of the August circuit court ruling that vacated U.S. District Judge Lucy H. Koh of San Jose's permanent injunction. FTC v. Qualcomm Inc., 19-16122 (9th Cir., filed Aug. 11, 2020).

Qualcomm's appellate attorneys, working from Van Nest's trial record, persuaded the panel the company's business practices did not violate the Sherman Act.

The 9th Circuit vacated Koh's injunction that had prohibited Qualcomm from declining to sell chips to manufacturers that refused to compensate the company for its standard-essential patents.

The resolution of the FTC case will likely be good news for Van Nest's effort to reverse Koh's decision to certify a class of 250 million cellphone users in a lawsuit, which he argued before a 9th Circuit panel in December 2019, against the company.

In a phone interview, Van Nest said "what Qualcomm was doing was innovative and enhancing competition." Stromberg et al. v. Qualcomm Inc., 19-15159 (9th Cir., filed Jan. 23, 2019).

Van Nest is ready to get back into the courtroom after many cases were postponed during the past year due to the COVID-19 virus, with two trials scheduled later this year and at least four more in 2022.

"I am anxious to get back into trial," he said.

-- Craig Anderson