Oracle America, Inc. v. Google Inc.

Filing 132

RESPONSE to re #128 Order Oracle's response to Court's Tentative Claim Construction Order and Request for Critique by Oracle America, Inc.. (Peters, Marc) (Filed on 5/6/2011)

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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 RESPONSE TO
TENTATIVE CLAIM
CONSTRUCTION ORDER AND
REQUEST FOR CRITIQUE

GOOGLE INC.

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Defendant.

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

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ORACLE’S RESPONSE TO TENTATIVE CLAIM CONSTRUCTION ORDER AND REQUEST FOR CRITIQUE
CASE NO. CV 10-03561 WHA
pa-1462663

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Pursuant to the Court’s April 28, 2011 Tentative Claim Construction Order and Request
for Critique, Oracle responds to the Court’s tentative claim constructions.
I.

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INTRINSIC EVIDENCE SUPPORTS THE COURT’S TENTATIVE
CONSTRUCTIONS FOR MOST TERMS

Oracle submits that the intrinsic evidence supports the Court’s tentative claim
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constructions for:
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“reduced class file”: e.g., '702, Claim 1 (“removing said duplicated elements from said
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plurality of class files to obtain a plurality of reduced class files”);
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“the play executing step”: e.g., '520, 2:66 (“simulates executing (‘play executes’)”);
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“intermediate form code” and “intermediate form object code”: e.g., '104, 2:27-29
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(“A method and apparatus for generating executable code and resolving data
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references in the generated code is disclosed.”); and
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“resolve” and “resolving”: '104, 2:44-47 (“resolves a symbolic reference and rewrites
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the symbolic reference into a numeric reference”).
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Oracle agrees that “computer readable media” and variants of the phrase require
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individualized attention to the intrinsic evidence and prosecution history of each patent from
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which they hail. See Tentative Claim-Construction Order at 24 (Dkt. 128).
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II.

“DYNAMIC RESOLUTION” IS NOT INHERENT IN “SYMBOLIC
REFERENCE”

The Court’s tentative construction of “symbolic reference” is “a reference that identifies

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data by a name other than the numeric memory location of the data, and that is resolved

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dynamically rather than statically.” The first portion follows directly from the intrinsic evidence.

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The Court identified the portion of the '104 specification that distinguished between symbolic

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(name-based) references and numeric (location-based) references: “Instead, a symbolic reference

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identified data by a ‘symbolic name’ (col. 1:64-67).” Tentative Claim-Construction Order at 21

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(Dkt. 128.)

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Oracle submits that the requirement that a “symbolic reference” also be “resolved

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dynamically rather than statically” is not supported by the intrinsic evidence. Symbolic

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references need not be resolved dynamically. The '104 patent discloses that in a compiled
ORACLE’S RESPONSE TO TENTATIVE CLAIM CONSTRUCTION ORDER AND REQUEST FOR CRITIQUE
CASE NO. CV 10-03561 WHA
pa-1462663

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programming language, “[r]eferences to data in the generated code are resolved prior to execution

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based on the layout of the data objects that the program deals with, thereby, allowing the

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executable code to reference data by their locations.” '104, 1:29-32. Disclosed examples of data

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references are x, y, and name, which the compiler resolves to location-based references. '104,

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1:37-40 (“Thus, an instruction that accesses or fetches y, such as the Load instruction 14

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illustrated in FIG. 1, is resolved to reference the variable y by the assigned slot 2 . . . .”), 1:51-54

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(“[I]f the point data object had a new field added at the beginning called name, which contains the

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name of the point, then the variables x and y could be reassigned to slots 2 and 3.”). The only

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constraint the '104 claims and specification impose on “symbolic reference” (beyond the ordinary

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meaning of the term in the art) is that it be resolved into a numeric reference. See '104 Abstract;

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2:38-51; 5:10-17 & Fig. 7; 5:32-41 & Fig. 8; 5:59-6:14; 6:31-62; Claims 11-41.

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The '104 specification thus discloses that it is not inherent in “symbolic reference” that a

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symbolic reference is resolved dynamically rather than statically. The addition of “resolved

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dynamically rather than statically” to the construction serves to import a word that is used to

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describe an exemplary routine that performs the resolution of symbolic references (the “dynamic

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field reference routine”) but is not itself part of the meaning of “symbolic reference.” See, e.g.,

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'104, Claim 24 (“when it is determined that the bytecode of the program contains a symbolic data

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reference, invoking a dynamic field reference routine to resolve the symbolic data reference”).

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Oracle remains concerned that the meaning of “dynamic” in the context of the '104 patent

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has not been fleshed out and may lead to a “construction of the construction” problem. As

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Google’s dictionary indicates, “dynamic” is a word with many nuanced meanings that depend on

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its use in context. See Supplemental Declaration of Truman Fenton, Ex. P (Dkt. 103).

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Oracle further suggests that deciding upon any particular gloss on “symbolic reference” is

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better done in the context of the infringement or validity issues, rather than in the abstract.

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Google’s programmers wrote that Android “converts symbolic references into pointers,” using

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the same language that the patent does. If Google aims to slip the noose of its own creation by

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arguing that its “symbolic reference” is not the patent’s “symbolic reference,” it is better for the

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Court to have an understanding of the impact that the inclusion of “resolved dynamically rather
ORACLE’S RESPONSE TO TENTATIVE CLAIM CONSTRUCTION ORDER AND REQUEST FOR CRITIQUE
CASE NO. CV 10-03561 WHA
pa-1462663

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than statically” may have on Google’s noninfringement arguments when the Court makes its

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claim construction decision.

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III.

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The Court should adopt its tentative claim constructions for “reduced class file”; “the play

CONCLUSION

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executing step”; “intermediate form code” and “intermediate form object code”; and “resolve”

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and “resolving.” Oracle requests that the Court remove “and that is resolved dynamically rather

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than statically” from its tentative construction of “symbolic reference.”

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Respectfully submitted,

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Dated: May 6, 2011

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

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By: /s/ Marc David Peters
Attorneys for Plaintiff
ORACLE AMERICA, INC.

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ORACLE’S RESPONSE TO TENTATIVE CLAIM CONSTRUCTION ORDER AND REQUEST FOR CRITIQUE
CASE NO. CV 10-03561 WHA
pa-1462663

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