Oracle America, Inc. v. Google Inc.

Filing 101

Declaration of Marc David Peters in Support of #100 Claim Construction Statement (Oracle's Responsive Claim Construction Brief) filed byOracle America, Inc.. (Attachments: #1 Exhibit 9, #2 Exhibit 10, #3 Exhibit 11 - manual filing notice)(Related document(s) #100 ) (Peters, Marc) (Filed on 3/31/2011)

Oracle America, Inc. v. Google Inc.

Doc. 101

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

MORRISON & FOERSTER LLP MICHAEL A. JACOBS (Bar No. 111664) [e-mail] MARC DAVID PETERS (Bar No. 211725) [e-mail] 755 Page Mill Road Palo Alto, CA 94304-1018 Telephone: [phone] / Facsimile: [phone] BOIES, SCHILLER & FLEXNER LLP DAVID BOIES (Admitted Pro Hac Vice) [e-mail] 333 Main Street Armonk, NY 10504 Telephone: [phone] / Facsimile: [phone] STEVEN C. HOLTZMAN (Bar No. 144177) [e-mail] 1999 Harrison St., Suite 900 Oakland, CA 94612 Telephone: [phone] / Facsimile: [phone] ORACLE CORPORATION DORIAN DALEY (Bar No. 129049) [e-mail] DEBORAH K. MILLER (Bar No. 95527) [e-mail] MATTHEW M. SARBORARIA (Bar No. 211600) [e-mail] 500 Oracle Parkway Redwood City, CA 94065 Telephone: [phone] / Facsimile: [phone] Attorneys for Plaintiff ORACLE AMERICA, INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION ORACLE AMERICA, INC. Plaintiff, v. GOOGLE INC. Defendant. Case No. CV 10-03561 WHA SUPPLEMENTAL DECLARATION OF MARC DAVID PETERS IN SUPPORT OF ORACLE'S RESPONSIVE CLAIM CONSTRUCTION BRIEF Dept.: Courtroom 9, 19th Floor Judge: Honorable William H. Alsup Tutorial: April 6, 2011, 1:30 p.m. Hearing: April 20, 2011, 1:30 p.m.

PETERS SUPPLEMENTAL DECLARATION IN SUPPORT OF ORACLE'S RESPONDING CLAIM CONSTRUCTION BRIEF CASE NO. CV 10-03561 WHA pa-1454670
Dockets.Justia.com

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

I, Marc David Peters, declare as follows: I am a partner at Morrison & Foerster LLP and am counsel of record to Plaintiff Oracle America, Inc. I have personal knowledge of the matters set forth herein and, if called to testify, could and would testify competently to the following. 1. On March 24, 2011, I performed searches of issued patents in the U.S. Patent and

Trademark Office online database. See U.S. Patent Full-Text Database Manual Search, available at http://patft.uspto.gov/netahtml/PTO/search-adv.htm. My search criteria were: · · · · · ((aclm/"computer-readable medium") andnot ("carrier wave" or "carrier waves")) (aclm/"computer-readable medium" and ("carrier wave" or "carrier waves")) (an/"sun microsystems") (an/"sun microsystems" and aclm/"computer-readable medium") ((an/"sun microsystems" and aclm/"computer-readable medium") andnot ("carrier wave" or "carrier waves")) · ((an/"sun microsystems" and aclm/"computer-readable medium") and ("carrier wave" or "carrier waves")) 2. 3. Here are the results of my searches: There are 23,840 issued patents having "computer-readable medium" in the

claims, but do not have "carrier wave" anywhere in the specification. In contrast, there are 3,804 issued patents having "computer-readable medium" in the claims, which do have "carrier wave" somewhere in the specification. 4. There are 7,615 patents issued to Sun Microsystems, of which 546 have

"computer-readable medium" in the claims. 5. There are 333 patents issued to Sun Microsystems having "computer-readable

medium" in the claims, but do not have "carrier wave" anywhere in the specification. In contrast, there are 213 patents issued to Sun Microsystems having "computer-readable medium" in the claims, which do have "carrier wave" somewhere in the specification. 6. Reading through the earliest-issued patents in the search results, I did not find a

patent application filed in 1996 that had both "computer-readable medium" in the claims and
PETERS SUPPLEMENTAL DECLARATION IN SUPPORT OF ORACLE'S RESPONDING CLAIM CONSTRUCTION BRIEF CASE NO. CV 10-03561 WHA pa-1454670

1

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

"carrier wave" somewhere in the specification. U.S. Patent No. 5,953,522, which was filed in July 1996, does not have "carrier wave" in the specification. 7. On March 29, 2011, I reviewed the file history for U.S. Patent No. 5,953,522. I

observed that the phrase "carrier wave" did not appear in the specification and claims as they were originally filed on July 1, 1996. The phrase "carrier wave" did not appear in the prosecution of the '522 patent until it was added to the claims by an amendment in 1998. The amendment was filed by a different attorney, at a different law firm, than the one who filed the specification two years earlier. Attached hereto as Exhibit 9 is a true and correct copy of the original 1996 claims of the '522 patent and of the 1998 amendment to the claims. 8. Attached hereto as Exhibit 10 is a true and correct copy of Section 2106 from the

MANUAL OF PATENT EXAMINING PROCEDURE, 8th Edition, dated August 2001. The relevant portion on page 2100-14 is indicated. 9. Attached hereto as Exhibit 11 is a CDROM containing certified copies of the

patents-in suit and their file histories, including parent patents and their file histories. Present on the disk are: · True and correct certified copies of U.S. Patent No. RE38,104 and its parents 5,367,685 and RE36,204, and their respective file histories. These were produced to Google with the Bates numbers OAGOOGLE0000052131-52143, OAGOOGLE0000052194-52209, OAGOOGLE0000052235-52253, OAGOOGLE0000113509-113600, OAGOOGLE0000113789-114304, and OAGOOGLE0000102583-105959. · A true and correct certified copy of U.S. Patent No. 5,966,702 and its file history. These were produced to Google with the Bates numbers OAGOOGLE000005202352059 and OAGOOGLE0000113601-113788. · A true and correct certified copy of U.S. Patent No. 6,061,520 and its file history. These were produced to Google with the Bates numbers OAGOOGLE000005209752109 and OAGOOGLE0000112640-113099.

PETERS SUPPLEMENTAL DECLARATION IN SUPPORT OF ORACLE'S RESPONDING CLAIM CONSTRUCTION BRIEF CASE NO. CV 10-03561 WHA pa-1454670

2

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

·

A true and correct certified copy of U.S. Patent No. 6,125,447 and its file history. These were produced to Google with the Bates numbers OAGOOGLE000005206052077 and OAGOOGLE0000111937-112639.

·

A true and correct certified copy of U.S. Patent No. 6,192,476 and its file history. These were produced to Google with the Bates numbers OAGOOGLE000005207852096 and OAGOOGLE0000111357-111936.

·

True and correct certified copies of U.S. Patent No. 6,910,205 and its parent 6,513,156, and their respective file histories. These were produced to Google with the Bates numbers OAGOOGLE0000052144-52169, OAGOOGLE0000052210-52234, OAGOOGLE0000113100-113508, and OAGOOGLE0000052602-52859.

·

A true and correct certified copy of U.S. Patent No. 7,426,720 and its file history. These were produced to Google with the Bates numbers OAGOOGLE000005211052130 and OAGOOGLE0000052270-52424.

10.

For the Court's convenience, the chambers copy of Exhibit 11 is being provided in

both disk and paper form. The disk contains the complete patents and file histories listed above. To conserve space and paper, certain prior art references that were submitted to the patent office (notably, a few complete textbooks totaling thousands of pages) were omitted from the paper copy.

I declare under penalty of perjury under the laws of the United States that to the best of my knowledge the foregoing is true and correct. Executed on March 31, 2011, in Palo Alto, California. /s/ Marc David Peters Marc David Peters

PETERS SUPPLEMENTAL DECLARATION IN SUPPORT OF ORACLE'S RESPONDING CLAIM CONSTRUCTION BRIEF CASE NO. CV 10-03561 WHA pa-1454670

3