Oracle America, Inc. v. Google Inc.

Filing 133

RESPONSE to re #131 Order Re Schedule for Narrowing Issues for Trial by Oracle America, Inc.. (Jacobs, Michael) (Filed on 5/6/2011)

1
2
3
4
5

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]

6
7
8
9
10
11

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]

12
13
14
15
16
17
18

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.

19
20

UNITED STATES DISTRICT COURT

21

NORTHERN DISTRICT OF CALIFORNIA

22

SAN FRANCISCO DIVISION

23

ORACLE AMERICA, INC.

24

Plaintiff,

25

v.

26

GOOGLE INC.

27

Case No. CV 10-03561 WHA
ORACLE’S RESPONSE TO ORDER
RE SCHEDULE FOR NARROWING
ISSUES FOR TRIAL
Dept.: Courtroom 9, 19th Floor
Judge: Honorable William H. Alsup

Defendant.

28
ORACLE’S RESPONSE TO ORDER RE SCHEDULE FOR NARROWING ISSUES FOR TRIAL
CASE NO. CV 10-03561 WHA
pa-1462513

1

Pursuant to the Court’s May 3, 2011 Order Re Schedule for Narrowing Issues for Trial,

2

Oracle responds to (1) the Court’s tentative schedule, and (2) the Court’s questions regarding

3

reexamination.

4

I.

5

THE COURT’S TENTATIVE SCHEDULE FOR REDUCING THE
NUMBER OF PATENT CLAIMS AND PRIOR ART REFERENCES WILL
SEVERELY PREJUDICE ORACLE

6

Oracle acknowledges the Court’s experience with complex patent trials and its desire to

7

present a triable case to the jury. Both sides’ submissions offered proposals to accomplish that

8

objective, but, as the Order notes, neither side proposed a specific number of claims or references

9

to be tried.

10

The Court’s proposal to limit Oracle to only three asserted claims, however, will prejudice

11

Oracle in the upcoming trial. That prejudice will be seen in both Oracle’s damages and liability

12

case. Moreover, the Court’s requirement that Oracle surrender untried claims will deny Oracle

13

due process and its right to a jury trial. The Court’s proposal, moreover, will place additional

14

pressure on motions for summary judgment. Oracle recommends that the Court decide the

15

number of claims to be tried closer to trial.

16
17
18

A.

Limiting Oracle to Three Claims at Trial Will Prejudice Oracle’s
Damages Case

As will be clear from its opening expert report on damages, due on May 20, Oracle is

19

seeking very substantial damages from Google in this action. The intellectual property that

20

Google has infringed is technically and economically core to Android; Android is a multi-billion

21

dollar proposition of core strategic significance to Google; and Android fundamentally

22

undermines Oracle’s Java technology.

23

Google has already signaled (at the Markman tutorial) one line of attack on Oracle’s

24

claims: that Oracle’s patent claims do not read on a significant enough portion of Android to

25

warrant a substantial recovery. The patent damages evidence at trial accordingly will likely

26

include testimony relating to the substantiality of the infringement. The parties will undoubtedly

27

debate the benefits Android derives from Google’s incorporation of the patented inventions, both

28

alone and in combination. If allowed, Oracle intends to prove to the jury that Google infringes
ORACLE’S RESPONSE TO ORDER RE SCHEDULE FOR NARROWING ISSUES FOR TRIAL
CASE NO. CV 10-03561 WHA
pa-1462513

1

1

not just one, two, or three patent claims, but claims from each of the seven patents-in-suit, and

2

that the infringement – viewed both on a patent-by-patent basis and in combination – is

3

indispensable to Android’s viability as a platform for mobile devices. This will serve as the

4

technical predicate for the economic analysis that Oracle’s damages expert will offer: given

5

Android’s enormous present and future contribution of revenues to Google (through advertising

6

and other commercial benefits attributable to Android), Oracle is entitled to a substantial

7

recovery.

8

If the Court adopts its tentative limits on the number of claims to be tried, however,

9

Google may contend that Android could have been equally successful without any one, or two, or

10

even three of the claimed inventions and hence that Oracle is entitled only to very limited patent

11

damages. The Court’s tentative restriction of three claims at trial (unless Oracle prevails on

12

motions for summary judgment of infringement, discussed below) thus would unfairly affect

13

Oracle’s damages claim.

14

Oracle’s case is not based on multiple patent claims without meaningful differences

15

between them; rather, each patent embodies significant inventive contributions and distinct

16

innovations. Although in principle Oracle believes that any one patent claim could technically

17

and economically justify a substantial award, under the Court’s proposed limits it will likely be

18

more difficult to persuade a jury that a substantial portion of Android’s value and the harm to

19

Oracle is due to infringement. This prejudice alone warrants reconsideration of the proposed

20

limits.

21
22
23

B.

Limiting Oracle to Three Claims at Trial Will Prejudice Oracle’s
Liability Case

The seven patents that Oracle has asserted each claim materially different inventions.

24

Except for the '447 and '476 patents, the patents have different specifications, filing dates, claims

25

to priority, and inventors. Even the '447 and '476 patents, which share specifications, claim

26

substantially different inventions: the '447 is directed to establishing protection domains and

27

establishing associations between the protection domains and classes, whereas the '476 is directed

28
ORACLE’S RESPONSE TO ORDER RE SCHEDULE FOR NARROWING ISSUES FOR TRIAL
CASE NO. CV 10-03561 WHA
pa-1462513

2

1

to determining whether a requested action is authorized based on permissions associated with

2

routines in a calling hierarchy.

3

The proposed restrictions would undermine Oracle’s ability to have a full and fair trial

4

regarding Google’s extensive infringement of Oracle’s valuable intellectual property rights. As

5

discussed above, each asserted patent embodies distinct innovations. See In re Katz Interactive

6

Call Processing Patent Litig., No. 09-1450, -- F.3d --, 2011 WL 607381, at *5 (Fed. Cir. Feb. 18,

7

2011) (reciting “statutory presumption that each claim is independently presumed valid” and

8

“rebuttable presumption that different claims are of different scope”). Each patent also presents,

9

therefore, distinct validity and infringement issues. To limit Oracle to presentation of only three

10

claims (again, leaving aside the possibility of offensive summary judgment victories) is, in effect,

11

to wrest these valuable intellectual property rights from Oracle to the benefit of Google, the

12

accused infringer, providing Google with a greater likelihood of prevailing on liability.

13
14
15

C.

Limiting Oracle to Three Claims at Trial Will Deny Oracle Due
Process

The Court’s order would require Oracle to surrender permanently the “deselected” claims

16

against current versions of Android. In Katz, 2011 WL 607381, at *2-4, the Federal Circuit

17

endorsed a trial court’s imposition of limitations on the number of asserted patent claims at trial

18

and denial of the plaintiff’s motion to sever untried claims for later trial. (Out of 1,975 originally

19

asserted claims, the trial court limited the plaintiff to 16 claims per “defendant group,”

20

comprising four claims for each of four groups of patents sharing a common specification.) The

21

Federal Circuit did so, however, only on careful consideration of the trial judge’s procedure for

22

imposing trial limits on asserted claims. Notably, the trial judge allowed the plaintiff to add

23

claims if the plaintiff showed that the claims “raise[d] issues of infringement/validity that [were]

24

not duplicative of previously selected claims.” Id., at *2 (quotations omitted). Because the

25

plaintiff had identified no errors in the district court’s initial assessment, which revealed that the

26

patents contained many duplicative claims, the trial court’s process was judged fair and

27

appropriate. Id., at *4.

28
ORACLE’S RESPONSE TO ORDER RE SCHEDULE FOR NARROWING ISSUES FOR TRIAL
CASE NO. CV 10-03561 WHA
pa-1462513

3

1

The Court’s order includes no such procedure and makes no allowance for non-

2

duplicative claims. It imposes far sharper restrictions than the trial court imposed in Katz. The

3

order would thus deny Oracle due process. As the Federal Circuit noted in Katz, to make out a

4

due process claim, the patentee “must demonstrate that the district court’s claim selection

5

procedure risked erroneously depriving it of its rights and that the risk outweighed the added costs

6

associated with a substitute procedure. See Mathews v. Eldridge, 424 U.S. 319, 335 (1976).” Id.,

7

at *3. Here, the Court has proposed no substitute procedure, but rather requires Oracle to forego

8

claims permanently even if they are non-duplicative.

9

We understand the Court’s desire to limit each side to a manageable number of claims and

10

prior art references. Oracle believes, however, that the number should be larger – three claims

11

per patent. Just as important, the ultimate decision on the number of claims should be made

12

closer to trial – after summary judgment and after the Court has heard from the parties on the

13

distinctions among the remaining claims for trial, consistent with Katz. This added procedure

14

would not add significant cost or time and would reduce the risk of error in depriving Oracle of

15

its valuable rights.

16

The limitations should also be imposed after Google refines its invalidity defenses.

17

Although the order imposes limits on Google’s triable prior art references, it imposes no limits on

18

Google’s other invalidity defenses. This could result in considerable unfairness: Google can

19

maintain a highly elastic defense strategy and present multiple invalidity defenses against

20

Oracle’s excessively narrowed claim set target. Limits on Oracle’s triable claims should be

21

accompanied by limits on Google’s triable defenses in toto, not merely those based on prior art.

22
23
24

D.

Limiting Oracle to Three Claims at Trial Will Place Heavy Pressure
on Summary Judgment

The Court’s proposed limits on the number of claims Oracle may present at trial will place

25

considerable pressure on summary judgment. In view of those limits, Oracle will have little

26

choice but to present affirmative motions for summary judgment of infringement on each patent.

27

Only through that vehicle will Oracle have even a chance to protect its case on liability and

28
ORACLE’S RESPONSE TO ORDER RE SCHEDULE FOR NARROWING ISSUES FOR TRIAL
CASE NO. CV 10-03561 WHA
pa-1462513

4

1

damages for all seven patents. Presumably Google will face similar pressures to present its

2

invalidity defenses on summary judgment as well.

3

We raise this issue now to prevent surprising the Court regarding the scope of these

4

motions. These will be technical motions with technical evidence in the form of expert

5

declarations and deposition testimony. They will be as brief as the content allows. But they will

6

require time to resolve. We think it better for both the Court and the parties to balance summary

7

judgment and trial, and not to impose such severe limits on trial presentation that summary

8

judgment is artificially inflated.

9

II.

THE REEXAMINATION PROCEEDINGS

10

Responding (briefly) to the Court’s questions:

11

Only two patents are in inter partes reexamination, the '205 and '720 patents. The PTO

12

disagreed with Google about six of the eight grounds Google asserted against the '205 patent and

13

limited the scope of that reexamination accordingly. The PTO agreed with Google with respect

14

to arguments made against the '720 patent and has issued rejections based on those arguments, to

15

which Oracle will be responding shortly. The extent to which – several years from now – the

16

final results in the reexamination could moot the need for a trial here on those patents depends, of

17

course, on the outcome in reexamination.

18

The remaining patents are subject to ex parte reexamination. According to current PTO

19

statistics, the average number of months between an ex parte reexamination request and the

20

issuance of a reexamination certificate is 31.8 months.

21

Respectfully submitted,

22
23
24

Dated: May 6, 2011

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

25
26
27

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

28
ORACLE’S RESPONSE TO ORDER RE SCHEDULE FOR NARROWING ISSUES FOR TRIAL
CASE NO. CV 10-03561 WHA
pa-1462513

5