Robert A. Van Nest

Van Nest scored big in 2020 with two major pandemic-year victories for Google Inc. over Oracle Corp. at the U.S. Supreme Court and for Qualcomm Inc. over the U.S. Federal Trade Commission at the 9th U.S. Circuit Court of Appeals.

To prevail for Google over Oracle’s bid for $8 billion in damages on claims that Google poached its Java programming language, Van Nest persuaded two federal juries to reject Oracle’s patent claims and to agree that Google’s use of Java in its Android operating system for smartphones was transformative, shielding it behind the fair use doctrine.

The U.S. Court of Appeals for the Federal Circuit disagreed, but the U.S. Supreme Court saw it Van Nest’s way, 6-2. Google LLC v. Oracle America Inc., 2021 DJDAR 3095 (S. Ct., April 6, 2021).

“We were grateful that Justice [Stephen G.] Breyer’s opinion relied very heavily on the evidence we presented at the trials,” Van Nest said. A decade ago, when Oracle launched its effort to penalize Google for alleged copyright and patent infringement, Van Nest said he realized right off that the fair use argument would be key to winning the case.

Google’s copying of the application programming interface packages invented by Sun Microsystems Inc., a company later acquired by Oracle, included some 11,000 lines of code. “So a non-infringement argument would be difficult,” Van Nest said. “But Sun and Oracle both tried and failed to make Java work in smart phones, and Google succeeded. That was transformative, the touchstone of the fair use defense. No other defense available to us was as simple and clear.”

Van Nest was also lead trial counsel to Qualcomm in successfully defending its so-called “no license, no chips” policy against Sherman Act claims by the Federal Trade Commission. His team’s advocacy persuaded a 9th Circuit panel to reverse U.S. District Judge Lucy H. Koh of San Jose to hand Qualcomm the win. FTC v. Qualcomm Inc., 19-16122 (9th Cir., Aug. 11, 2020).

“Similarly to the Google case, our trial record allowed the circuit to reverse Judge Koh on all issues, and the FTC has elected not to seek cert” at the Supreme Court, Van Nest said. He now awaits the outcome of his effort at the circuit to attain reversal of Koh’s class certification on the same issue.

“What Qualcomm was doing was innovative and it enhanced competition,” Van Nest said.

- John Roemer