Oracle America, Inc. v. Google Inc.

Filing 1151

MOTION for Judgment as a Matter of Law on Counts V and VII of Oracle's Amended Complaint filed by Google Inc.. Responses due by 5/17/2012. (Baber, Bruce) (Filed on 5/14/2012)

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KEKER & VAN NEST LLP
ROBERT A. VAN NEST - # 84065
[e-mail]
CHRISTA M. ANDERSON - # 184325
[e-mail]
DANIEL PURCELL - # 191424
[e-mail]
633 Battery Street
San Francisco, CA 94111-1809
Telephone:
415 391 5400
Facsimile:
415 397 7188

KING & SPALDING LLP
DONALD F. ZIMMER, JR. - #112279
[e-mail]
CHERYL A. SABNIS - #224323
[e-mail]
101 Second Street, Suite 2300
San Francisco, CA 94105
Telephone: [phone]
Facsimile:
415 318 1300

KING & SPALDING LLP
SCOTT T. WEINGAERTNER (Pro Hac Vice)
[e-mail]
ROBERT F. PERRY
[e-mail]
BRUCE W. BABER (Pro Hac Vice)
1185 Avenue of the Americas
New York, NY 10036
Telephone: [phone]
Facsimile:
212 556 2222

GREENBERG TRAURIG, LLP
IAN C. BALLON - #141819
[e-mail]
HEATHER MEEKER - #172148
[e-mail]
1900 University Avenue
East Palo Alto, CA 94303
Telephone: [phone]
Facsimile:
650 328 8508

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Attorneys for Defendant
GOOGLE INC.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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ORACLE AMERICA, INC.,

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Plaintiff,

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v.

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Case No. 3:10-cv-03561 WHA
GOOGLE’S MOTION FOR JUDGMENT AS
A MATTER OF LAW ON COUNTS V AND
VII OF ORACLE’S AMENDED
COMPLAINT

GOOGLE INC.,

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Defendant.

Dept.:
Judge:

Courtroom 8, 19th Floor
Hon. William Alsup

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GOOGLE’S MOTION FOR JUDGMENT AS A MATTER OF LAW (PATENT)
Case No. 3:10-CV-03561 WHA

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INTRODUCTION
In accordance with Rule 50 of the Federal Rules of Civil Procedure, and as previously set

forth in open court (RT 3707-3709), Google hereby moves for judgment as a matter of law on
Counts V and VII of Oracle’s Amended Complaint. Google will file its brief in support of this
motion in accordance with the schedule set by the Court on May 14, 2012, namely, by 5:00 PM
on May 16, 2012.

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II.
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ARGUMENT
First, as to Count V, Google is entitled to judgment as a matter of law that it has not

infringed U.S. Patent No. RE 38,104 (“the ’104 Patent”), in that Oracle has:
(i)

failed to present proof adequate to support a conclusion by the jury

of infringing acts performed by Google, or that the accused software is sold, as
required for infringement; 35 U.S.C. § 271(a); see also PharmaStem
Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342, 1359 (Fed. Cir. 2007);
(ii)

failed to present any evidence of literal infringement, but instead

presented fact and expert testimony directed, at most, to infringement under the
doctrine of equivalents, a theory of infringement that was not disclosed by Oracle
in its patent infringement contentions under Rule 3-1 of the Patent Local Rules of
the United States District Court for the Northern District of California (“Patent
Local Rules”); and
(iii)

presented expert testimony that offers an opinion of infringement

based on an improper claim construction that is in conflict with the construction
of that term provided by the Court, see ECF No. 137 at 20-22, as well as in
conflict with what was urged by Oracle in its claim construction briefing (ECF
No. 94) (“references in the ’104 patent are either by location (a numeric
reference) or by name (a symbolic reference)”).
Second, as to Count VII, Google is entitled to judgment as a matter of law that it has not
infringed U.S. Patent No. 6,061,520 (“the ’520 Patent”), in that Oracle has:

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GOOGLE’S MOTION FOR JUDGMENT AS A MATTER OF LAW (PATENT)
Case No. 3:10-cv-03561 WHA

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(i)

failed to present proof adequate to support a jury verdict of

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infringing acts performed by Google, or that the accused software is sold, as

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required for infringement; 35 U.S.C. § 271(a); see also PharmaStem, 491 F.3d at

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1359;

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(ii)

failed to present any evidence of literal infringement, but instead

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presented fact and expert testimony addressed, at most, to infringement under the

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doctrine of equivalents, a theory of infringement that was not disclosed by Oracle

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in its patent infringement contentions under Rule 3-1 of the Patent Local Rules;

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and

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(iii)

presented expert testimony that offers an opinion of infringement

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based on an improper construction of the claims of the ’520 Patent, a new

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construction presented for the first time at trial.

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Third, as to Count V, Google is entitled to judgment as a matter of law that all claims of

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the ’104 Patent are invalid due to improper broadening of the claims by way of a continuation

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application filed March 3, 1999, more than two years after the issuance of the original patent,

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U.S. Patent No. 5,367,685, on November 22, 1994. The patent statute requires that broadening

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reissue applications be filed within two years of issuance of the original patent. 35 U.S.C. § 251.

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Although the U.S. Court of Appeals for the Federal Circuit has recently concluded that

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broadening claims filed more than two years after the issue date of the original patent may be

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permissible if the reissue matures out of a continuation of a timely-filed broadening application,

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In re Staats, 671 F.3d 1350, 1356 (Fed. Cir. 2012), the Court essentially invited a petition for

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rehearing en banc. Id. at 1356. Google believes that the case will be reheard and the decision

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will be reversed, requiring the invalidation of the claims of the ’104 Patent. Google therefore

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moves for judgment as a matter of law to preserve this issue for appeal. Google also notes that

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the claims of the ’104 Patent were broadened by eliminating the recitation of a generating

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executable code and compilation means, as well as narrowed by including in all claims of the

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reissue patent the limitation that symbolic references be contained in the instructions. Though

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narrower in this respect, the claims of the ’104 Patent have nevertheless been broadened for
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GOOGLE’S MOTION FOR JUDGMENT AS A MATTER OF LAW (PATENT)
Case No. 3:10-cv-03561 WHA

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purposes of 35 U.S.C. § 251.

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A claim of a reissue application is broader in scope than the original
claims if it contains within its scope any conceivable apparatus or process which
would not have infringed the original patent. A reissue claim that is broader in
any respect is considered to be broader than the original claims even though it
may be narrower in other respects.

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See Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2 (Fed. Cir. 1987) (emphasis

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added).

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Fourth, Google moves for judgment as a matter of law that it has not willfully

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infringed either the ‘104 Patent or the ‘520 Patent. The actual notice that is a prerequisite

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for willful infringement did not occur until July 20, 2010, only twenty-three days before

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this lawsuit was filed on August 12, 2010. (Dkt. 1). Three weeks of total pre-suit

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exposure to and awareness of each of the original seven patents-in-suit is per se

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insufficient to support a finding of objective recklessness as required under In re Seagate,

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497 F.3d 1360 (Fed. Cir. 2007). Objective recklessness cannot be established by actions

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taken in the three weeks following notice of seven complex patents. But even if it could,

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it would support a conclusion of willful infringement for at most that three week period.

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Google’s Rule 50 motion is based on this Motion, Google’s May 10, 2012 oral

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motion for judgment as a matter of law (RT 3707-3709), the brief in support and the

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evidence and authorities cited therein that Google will file in support of this Motion, the

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entire trial record, and such argument as the Court allows on this Motion.

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Dated: May 14, 2012

KEKER & VAN NEST LLP
By:

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/s/ Robert A. Van Nest
ROBERT A. VAN NEST
Attorneys for Defendant
GOOGLE INC.

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GOOGLE’S MOTION FOR JUDGMENT AS A MATTER OF LAW (PATENT)
Case No. 3:10-cv-03561 WHA

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ATTESTATION
I, Bruce W. Baber, am the ECF User whose ID and password are being used to file this

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GOOGLE’S MOTION FOR JUDGMENT AS A MATTER OF LAW ON COUNTS V AND VII

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OF ORACLE’S AMENDED COMPLAINT. In compliance with General Order 45, X.B., I

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hereby attest that Robert A. Van Nest has concurred in this filing.

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Date: May 14, 2012

/s/ Bruce W. Baber
BRUCE W. BABER

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GOOGLE’S MOTION FOR JUDGMENT AS A MATTER OF LAW (PATENT)
Case No. 3:10-cv-03561 WHA