Google v. Oracle Amicus Certiorari Stage Brief: Vindicating IP’s Channeling Principle and Restoring Jurisdictional Balance to Software Copyright Protection

35 Pages Posted: 17 Mar 2019

See all articles by Peter S. Menell

Peter S. Menell

University of California, Berkeley - School of Law

David Nimmer

Irell & Manella LLP

Date Written: February 25, 2019


The Supreme Court should grant review of the Federal Circuit’s decisions in Oracle v. Google for two compelling sets of reasons. First, the Federal Circuit’s decisions conflict with this Court’s seminal decision in Baker v. Selden, 101 U.S. 99 (1879), misinterpret Congress’s codification of this Court’s fundamental channeling principle and related limiting doctrines, and upend nearly three decades of sound, well-settled, and critically important decisions of multiple regional circuits on the scope of copyright protection for computer software. By various measures — economic output and growth, employment, international competitiveness, strategic national defense — the computer software industry is among the most significant in the United States. As the digital revolution continues to unfold, the software industry’s importance will only grow. The balance of intellectual property protection for the software industry drives innovation and competition in this critical economic sector. The Federal Circuit’s decisions revive and exacerbate circuit splits that had largely been resolved through the evolution of well-reasoned regional circuit authority.

Second, the Federal Circuit’s handling of the Oracle v. Google cases flies in the face of Congress’s clear intent in creating a specialized national appellate patent tribunal. Unlike regional courts of appeals, the Federal Circuit does not have general authority to interpret non-patent intellectual property law. Rather, Congress mandated that the Federal Circuit must apply the copyright law of the regional circuit court in which resides the district court that heard a case involving a patent infringement claim. By failing to apply Ninth Circuit copyright law faithfully in the Oracle v. Google decisions, the Federal Circuit has established itself as the de facto national appellate software copyright tribunal in direct contravention of legislative directive and intent. By the readily available option of bringing software copyright and patent claims in the same complaint, any software company can secure exclusive Federal Circuit appellate jurisdiction over all issues and thereby circumvent regional copyright law and insulate its decisions from regional circuit copyright authority. As a result, it is essential that the Supreme Court grant review to address the clear circuit splits created by the decisions below and restore Congress’s division of appellate authority.

Keywords: Computer Software, Copyright, Intellectual Property, Patent, Federal Circuit, Appellate Jurisdiction, Functional

Suggested Citation

Menell, Peter S. and Nimmer, David, Google v. Oracle Amicus Certiorari Stage Brief: Vindicating IP’s Channeling Principle and Restoring Jurisdictional Balance to Software Copyright Protection (February 25, 2019). Available at SSRN: or

Peter S. Menell (Contact Author)

University of California, Berkeley - School of Law ( email )

215 Boalt Hall
Berkeley, CA 94720-7200
United States

David Nimmer

Irell & Manella LLP ( email )

1800 Avenue of the Stars, Suite 900
Los Angeles, CA 90067
United States
310-277-1010 or (310) 203-7079 (Phone)

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