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Rimini Street and its owner urged the Ninth Circuit on Wednesday to vacate an injunction blocking it from copying Oracle's software in their 14-year battle over Rimini's software patches. They argued that the lower court erroneously dismissed certain infringement defenses and made other errors.

Mark Andrew Perry of Weil Gotshal & Manges LLP, representing Rimini Street Inc. and its owner Seth Ravin, told a three-judge panel that the lower court made two significant legal errors at the pleading stage early in the litigation. These errors barred Rimini from asserting certain IP defenses, which Perry argued should have been considered throughout the case. He urged the appellate court to review these rulings "de novo," or without deference to the lower court's decision.

Perry argued that the trial court erred by barring Rimini from arguing that its software patches were not derivative works, emphasizing that derivative works must incorporate protected expression from another copyrighted work, whereas Rimini's software is entirely new code. He also contended that the district court wrongly struck Rimini's statutory defense under the Copyright Act, which allows lawful copying of a computer program as "an essential step in the utilization of the computer program" or for "archival purposes."

Perry maintained that the trial judge wrongly held that Oracle's licensees are not "owners" of a copy of a computer program, thereby precluding Rimini from invoking the Section 117(a) defense to Oracle's infringement claims.

"This should have been in the case all along," Perry said. "It should have made all the difference. Ten years of litigation and hundreds of millions of dollars in legal fees would have been avoided had the district court applied the statute Congress wrote for this particular circumstance."

The dispute dates back to 2010 when Oracle sued Rimini, seeking to stop its competitor from copying its software, which Rimini argued it needed to serve clients. Despite Rimini changing its practices in 2014, the claims went to trial in 2015, and a jury found Rimini's former practices infringed Oracle's copyright. The trial judge barred Rimini from continuing to infringe Oracle's software in 2018, and after subsequent appeals, the Ninth Circuit mostly affirmed the judge's conclusion.

During Wednesday's hearing, Perry argued that the foundational legal errors made by the trial court require the reversal of the infringement findings and the vacatur of the injunction. He cited the Second Circuit's 2019 decision in Universal Instruments Corp. v. Micro Systems Engineering to support his Section 117(a) defense arguments.

Oracle's counsel, Raechel Kummer of Morgan Lewis & Bockius LLP, argued that Rimini is a "recidivist contemptuous infringer" and that the company has continued infringing Oracle's derivative works despite the court's injunction and past appellate court losses. She emphasized that Oracle has never granted Rimini a license to use its software and that the licenses Oracle grants to customers are non-transferable and prohibit sharing with third parties or accessing the software outside of facilities.

However, U.S. Circuit Judge Jay Bybee questioned Oracle's arguments, calling Oracle's position regarding its licensing restrictions "entirely circular."

"I don't understand what they get to do here … I don't understand how they can possibly update anything in [the software] without it being infringing under your definition," Judge Bybee said.

The panel agreed to let Oracle supplement the record after the hearing and took the arguments under submission.

In November, Oracle asked the trial judge to award it nearly $12.2 million in legal fees and other costs for enforcing the injunction, which Rimini opposed, arguing that each side should pay its own legal costs. As of Wednesday, the trial judge had not yet ruled on Oracle's fee request.

Rimini and Oracle Copyright Battle

The long-running dispute reached the U.S. Supreme Court in 2018, resulting in a 2019 unanimous opinion that limited recoverable litigation costs to those specified in the general litigation cost statute.

U.S. Circuit Judges Jay Bybee and Patrick Bumatay and U.S. District Judge Richard D. Bennett, sitting by designation, heard the case.

Oracle is represented by Raechel Kummer of Morgan Lewis & Bockius LLP.

Rimini and Ravin are represented by Mark Andrew Perry of Weil Gotshal & Manges LLP.

The case is Oracle International Corp. et al. v. Rimini Street Inc. et al., case number 23-16038, in the U.S. Court of Appeals for the Ninth Circuit.