Oracle America, Inc. v. Google Inc.

Filing 129

RESPONSE to re #124 Order Oracle's memorandum describing its plan for streamlining the case for trial by Oracle America, Inc.. (Jacobs, Michael) (Filed on 4/29/2011)

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MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[e-mail]
MARC DAVID PETERS (Bar No. 211725)
[e-mail]
DANIEL P. MUINO (Bar No. 209624)
[e-mail]
755 Page Mill Road
Palo Alto, CA 94304-1018
Telephone: [phone] / Facsimile: [phone]

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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]

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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.

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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. CV 10-03561 WHA
ORACLE’S MEMORANDUM
DESCRIBING ITS PLAN FOR
STREAMLINING THE CASE FOR
TRIAL

GOOGLE INC.

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Defendant.

Dept.: Courtroom 9, 19th Floor
Judge: Honorable William H. Alsup

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ORACLE’S MEMORANDUM DESCRIBING ITS PLAN FOR STREAMLINING THE CASE FOR TRIAL
CASE NO. CV 10-03561 WHA
pa-1461589

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Pursuant to the Court’s April 25, 2011 Order Requesting Memoranda, Oracle America

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(“Oracle”) hereby sets forth its plan for reducing the number of claims to a triable number by the

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trial date and how to account for the PTO reexaminations currently in progress.

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I.

SCHEDULE FOR REDUCING THE NUMBER OF PATENT CLAIMS AND
PRIOR ART REFERENCES

Oracle presently asserts that Google infringes 132 different patent claims in seven patents.
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The smallest number of patent claims asserted from one patent is five, from the ’205 patent; the
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largest is thirty-one, from the ’104 patent.
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At the same time, Google presently asserts that thirty-one references anticipate and
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twenty-one combinations of references render obvious the asserted claims of seven patents-in10
suit, based on the charts that it provided with its invalidity contentions. Google also served a 2411
page list of more than 500 prior art references that, in some unexplained manner, Google alleged
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could be combined to render obvious the patents-in-suit. Google has also asserted many other
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grounds of invalidity against the patent claims, such as definiteness, written description,
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enablement, and double patenting. Many of Google’s invalidity contentions are inconsistent and
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presented in the alternative: Google contends that many patent claims are not enabled but also
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contends that the same claims are enabled by the prior art.
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So how shall the parties streamline the case? It is important that it be done in a way that
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respects due process and does not prejudice the parties, yet at the same time promotes sound
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judicial administration. See In re Katz Interactive Call Processing Patent Litig., No. 09-1450, —
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F.3d —, 2011 WL 607381, at *2, *3, *4 (Fed. Cir. Feb. 18, 2011) (finding that district court’s
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multi-stage claim selection procedure applied to asserted patents sharing a common genealogy
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did not violate due process). For the reasons discussed in Section II, the reexaminations will not
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be helpful in this regard, mainly because this case will conclude long before any of the
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reexaminations do.
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Oracle is amenable to a process for limiting the number of asserted patent claims that also
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limits the number of asserted grounds of invalidity. The process should be tied to key events in
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the case and ensure the parties will fairly benefit from fact and expert discovery that test their
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ORACLE’S MEMORANDUM DESCRIBING ITS PLAN FOR STREAMLINING THE CASE FOR TRIAL
CASE NO. CV 10-03561 WHA
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theories of the case. It makes sense to have an initial reduction of claims and references in

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advance of expert reports. Another reduction can be made after the expert reports but before

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dispositive motions are filed. The last and final reduction should be connected to the pretrial

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conference, when the Court and the parties determine how the trial is to proceed.

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Oracle proposes the following schedule:

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Date

Event

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June 30, 2011

Oracle narrows the number of its asserted claims to 75

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July 8, 2011

Google narrows its asserted prior art references or combinations of

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references to 4 per patent
September 2, 2011

Oracle narrows the number of its asserted claims to 35

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Google narrows its invalidity contentions to 3 asserted grounds of

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invalidity per patent

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October 17, 2011

Oracle identifies a triable number of asserted patent claims

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Final pretrial conference

Google identifies a triable number of invalidity grounds

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To compare to the current scheduling order, initial expert reports are due on July 29 and

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the deadline for dispositive motions is September 8. For purposes of counting, one of Google’s

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invalidity charts can be counted as one ground, reference, or combination.

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This proposal takes advantage of the momentum that the Court’s schedule has established.

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The parties have exchanged hundreds of pages of infringement and invalidity contentions.

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Discovery is proceeding quickly, with depositions, document productions, and interrogatory

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responses well under way. The parties selected their most significant terms for construction (four

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selected by Google and two selected by Oracle), the Court has issued a tentative claim

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construction order, and this phase of the claim construction process is nearly finished.

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Oracle’s proposal also draws upon the approach taken by Judge Whyte in Software Rights

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Archive LLC v. Google Inc., No. 08-cv-3172-RMW-PVT, slip op. at 3 (N.D. Cal. Oct. 15, 2010).

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ORACLE’S MEMORANDUM DESCRIBING ITS PLAN FOR STREAMLINING THE CASE FOR TRIAL
CASE NO. CV 10-03561 WHA
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That case involves three closely related patents involved in concurrent reexaminations and no

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claim construction hearing had yet occurred. Judge Whyte’s approach was to have the patent

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owner promptly reduce the number of asserted claims from 64 to 20, the defendants promptly

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narrow their invalidity contentions from more than a hundred references to 3 anticipatory

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references and 3 obviousness combinations per claim, and the patent owner to again reduce the

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number of claims after the claim construction order issues (the briefing had not yet begun).

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Oracle’s proposal here is proportional to Judge Whyte’s approach because this case involves six

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unrelated patents (only the ’447 and ’476 patents have similar specifications) whereas the

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Software Rights Archive case involved three patents having similar specifications.

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II.

THE REEXAMINATION PROCEEDINGS DO NOT PROVIDE ANY
ADVANTAGE TO EITHER PARTY OR THE COURT

From a case management perspective, the pending reexaminations will provide little if any
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benefit to the Court or the parties. Oracle does not see a way to depend on them without dramatic
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disruption to the schedule set by the Court. The circumstances here do not warrant a stay.
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Under the current schedule, the trial in this case will be finished well before the
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reexaminations conclude. According to current PTO statistics, the average number of months
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between a reexamination request and the issuance of a reexamination certificate is 31.8 months
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for ex parte reexamination and 37.9 months for an inter partes reexamination. One would thus
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predict Google’s reexaminations to end no sooner than late 2013. Employing a very aggressive
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estimate, in which the Patent Office acts near-instantaneously and every examiner decision is
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adverse to Oracle, the first opening appeal brief would be due at the Board of Patent Appeals and
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Interferences in January 2012. It is not at all clear that this Google-optimistic estimate could be
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realized in practice, particularly given the recent substantial reduction in the PTO’s budget and
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the cancellation of all examiner overtime. Add to this scenario the fact that Board has been
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resolving reexaminations in six months to a year, and that an appeal to the Board would be
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followed by an appeal to the Federal Circuit, 2013 for the earliest conclusion is quite optimistic.
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The Court should not assume that the reexaminations will be favorable to Google. Events
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in the reexaminations will occur on a patent-by-patent, claim-by-claim, reference-by-reference
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ORACLE’S MEMORANDUM DESCRIBING ITS PLAN FOR STREAMLINING THE CASE FOR TRIAL
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basis. As a matter of probability, some decisions will favor Oracle, some will favor Google. That

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has already happened. The PTO disagreed with Google about six of the eight grounds asserted

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against the ’205 patent and has limited the scope of that inter partes reexamination accordingly.

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The PTO agreed with Google with respect to arguments made against the ’720 patent and has

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issued rejections based on those arguments. The PTO disagreed with Google regarding three

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claims of the ’520 patent and declined to reexamine them. Two of those claims are asserted in

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this case, and so, at this moment, there are two asserted claims from the ’520 patent that are not

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part of any reexamination proceeding.

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With respect to the reexaminations, Google has taken different approaches in the different

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types of proceedings. In the two inter partes reexaminations (for the ’205 and ’720 patents),

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Google provided all of the charts from its invalidity contentions in this case, presumably because

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of the estoppel that attaches to inter partes reexamination proceedings. In the five ex parte

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reexaminations, however, Google withheld many of its prior art references from its reexamination

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requests, and instead chose to present only a selection to the Patent Office.

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The consequence of Google’s approach is that Google may file serial ex parte

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reexamination requests whenever the PTO makes a decision Google does not like. Google has

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already done this. Google responded to the PTO’s finding that Google failed to raise a substantial

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new question of patentability with respect to three claims of the ’520 patent by filing a second ex

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parte reexamination request, asserting a different combination of references. By reserving most

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of its art, Google is well-armed to repeat this process.

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The fact that the inter partes reexaminations will always trail this litigation means they are

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not relevant. Under the reexamination statute, they will be dismissed before they are concluded.

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For any patent claim for which Google fails to carry its burden of proving invalidity in court, 35

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U.S.C. § 317 provides that, after a final federal court decision on the merits, “an inter partes

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reexamination requested by that party or its privies on the basis of such issues may not thereafter

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be maintained by the Office.” 35 U.S.C. § 317; MANUAL OF PATENT EXAMINING PROCEDURE

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§ 2686.04. And if there were a patent claim for which Google succeeded in carrying its burden in

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court, the inter partes reexamination would be dismissed as well. See id. Google may crow about
ORACLE’S MEMORANDUM DESCRIBING ITS PLAN FOR STREAMLINING THE CASE FOR TRIAL
CASE NO. CV 10-03561 WHA
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the initial rejections in the ’720 inter partes reexamination, but it is the jury this October who will

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decide the fate of that patent, not the examiner.

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III.

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It makes sense for the parties to focus their infringement and validity cases in an

CONCLUSION

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organized manner. It does not make sense for the Court to surrender management of its docket to

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the Patent Office. The schedule of this case should not be tied to the unpredictable schedule of

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the reexaminations—the different proceedings run on their own individual tracks.

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Respectfully submitted,

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Dated: April 29, 2011

MICHAEL A. JACOBS
MARC DAVID PETERS
DANIEL P. MUINO
MORRISON & FOERSTER LLP

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By: /s/ Michael A. Jacobs
Attorneys for Plaintiff
ORACLE AMERICA, INC.

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ORACLE’S MEMORANDUM DESCRIBING ITS PLAN FOR STREAMLINING THE CASE FOR TRIAL
CASE NO. CV 10-03561 WHA
pa-1461589

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