2011 was chock-full of important IP headlines, what with the passage of the America Invents Act, record-breaking patent purchases by companies involved in the smartphone wars, Kodak’s attempts to sell its patents, and more. Now that it’s 2012, there are a few potentially important patent and trademark cases on the horizon. Let’s take a look at four of them.

Oracle America, Inc. v. Google Inc.

Oracle and Google have been embroiled in a patent lawsuit over Google's use of Java in its Android mobile operating system since August 2010, and the case has had some interesting twists and turns in the past year. In October 2011, there was the issue of allowing as evidence a damning but unsent email draft written by one of Google's software engineers who concluded that the hundred or so alternatives to using Java "all suck" (see our blog post, "e-Dirty Laundry"). The email was allowed as evidence.

Then, in late December 2011, Google scored a win when an ex parte patent reexamination it initiated resulted in the Patent Office rejecting 17 of the 21 claims in a patent Oracle accuses Google of infringing.

Although Judge William Alsup of the U.S. District Court for the Northern District of California had postponed the court date and indicated that it could be set as late as September of this year, he recently set the trial for on or after March 19, 2012.

Why it matters: Currently, the Android mobile operating system is distributed free of charge. If Google and Oracle are unable to settle the litigation out of court – which is possible, given the failure of mediation talks the two parties held in September 2011 – and it goes to trial, a jury would award damages based on an economist's estimate of Google's revenue from the use of Java in the Android operating system. Those expenses could then be passed on to manufacturers of Android devices and, ultimately, end users.

McKesson Technologies Inc. v. Epic Systems Corp. and Akamai Technologies Inc. et al. v. Limelight Networks Inc.

These two lawsuits raise the issue of whether it is necessary to perform all steps of a patented business method in order to be found liable for infringement of that patent. In both cases, the plaintiff was granted an en banc (full court) hearing by the Court of Appeals for the Federal Circuit (CAFC) after having the case dismissed because of the “joint infringement defense.” Under the “joint infringement defense,” the plaintiff must show that a single infringer performed all steps of the patented process.

The judges in the lower courts had found for the defendant. For Akamai, that meant that its $45.5 million verdict against Limelight was overturned.

The CAFC is expected to issue rulings on both cases in the first half of 2012.

Why it matters: These cases are important to patent litigators and patent prosecutors, as well as anyone who has anything to do with business method or software patents – which often involve more than one party performing the steps of the patented process. The CAFC will decide whether a party is liable for patent infringement if it performs only some of those steps.

Depending on the outcome of these cases, patent prosecutors may need to draft patent claims in such a way that they are performed by a single party if the patent is to be enforceable.

Rosetta Stone Ltd. v. Google Inc.

This lawsuit concerns trademarks, not patents, but this is a different sort of trademark lawsuit, and one that could have major implications for online advertising methods.

Rosetta Stone sued Google in 2009 for selling its trademarks to third-party advertisers and competitors for use as keyword triggers in sponsored advertising. A U.S. District Court in Virginia found that there was no trademark infringement because no reasonable juror would think Google was trying to confuse potential purchasers as to the source of the software or pass off Rosetta Stone’s products as its own.

Rosetta Stone appealed that ruling in the U.S. Court of Appeals for the Fourth Circuit, which is expected to rule on the case sometime this year.

There have been several other lawsuits filed against Google for trademark infringement or dilution based on keyword triggers, some of which failed and others of which are ongoing. Google had this to say about the litigation, according to CNET:

“It's completely normal for a supermarket to stock different brands of cereal on the same shelf or for a magazine to run Ford ads opposite of an article about Toyota, so it doesn't make sense to limit competition online by restricting the number of choices available to users. Just as it's reasonable to expect a range of brands on any shelf in a grocery store, providing users on Google with more than one option when they search for a brand name or other trademark helps them to find the best product at the lowest price.”

Why it matters: Despite Google having some success fighting these lawsuits, pay-per-click/keyword-driven advertising is still a gray area in IP law. The outcome of the case will help guide attorneys and judges on what sort of terms are appropriate or inappropriate to use as keywords in advertising.

Continued Fallout from the America Invents Act

Not all of the America Invents Act took effect at the time it was signed into law last September. A number of provisions will take effect on its first birthday, September 16, 2012. Among them: A system of supplemental examinations that allow a patent owner “to consider, reconsider, and correct information believed to be relevant to the patent;” a new post-grant review process to consider the validity of business method patents; and a provision that narrows the circumstances under which a post-grant inter partes review of a patent can be requested.

Those changes sound relatively minor, but the long-term outlook for the AIA remains grim. As a blogger for the Guardian (UK) newspaper recently predicted, “America's 2011 patent ‘reform’ law was nothing of the sort, and will only make things worse, as we'll see in a spate of bad patents and lawsuits that continue in 2012 and the years ahead.”

Of course, the battles of the tech titans will also continue in 2012, particularly in the areas of smartphone design, mobile operating systems and semiconductor chip sets. Stay tuned to our Wealth of Ideas blog and IP News – and the Wealth of Ideas newsletter – for developments in these cases and many more.

Kodak and Its Patents

There has been much speculation about the future of Kodak, including that the company may be forced to file for bankruptcy. Will Kodak be able to sell its patents, and use the cash to stave off bankruptcy? Or will Kodak’s patents be auctioned off (as the bankrupt Nortel Networks' patents were), with the proceeds possibly going to its creditors?

May You Live in Interesting Times

As much as 2011 was an interesting year, 2012 looks to be just as interesting – and intriguing. We tried to find the exact source for “May you live in interesting times,” but could not pin it down. So at least we know we are not infringing anyone’s trademark, service mark or copyright by using it.