Oracle America, Inc. v. Google Inc.

Filing 135

Statement on the #128 Court's Tentative Claim Construction Order by Google Inc.. (Sabnis, Cheryl) (Filed on 5/6/2011) Modified on 5/9/2011 (wsn, COURT STAFF).

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

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

SCOTT T. WEINGAERTNER (Pro Hac Vice)
[e-mail]
ROBERT F. PERRY
[e-mail]
BRUCE W. BABER (Pro Hac Vice)
[e-mail]
KING & SPALDING LLP
1185 Avenue of the Americas
New York, NY 10036-4003
Telephone: [phone]
Facsimile: [phone]
Attorneys for Defendant
GOOGLE INC.
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,
v.
GOOGLE INC.
Defendant.

Case No. 3:10-cv-03561-WHA
Honorable Judge William Alsup
DEFENDANT GOOGLE INC.’S
STATEMENT ON THE COURT’S
TENTATIVE CLAIM CONSTRUCTION
ORDER

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Pursuant to the Court’s Tentative Claim-Construction Order and Request for Critique

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(Dkt. 128) (“Order”), Defendant Google Inc. (“Google”) hereby submits this Statement on the

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Court’s Tentative Claim Construction Order. At the outset, Google wishes to make clear that it
agrees with much of this Court’s reasoning and considers many of the claim constructions to be

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favorable. To the extent that this Court’s claim constructions differ from Google’s, Google

2 continues to believe that its proposed claim constructions were correct and that this Court should
3 adopt them for reasons previously stated. Pursuant to the Court’s invitation, Google hereby
4 submits the following limited critique of the Court’s tentative constructions:
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I.

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The Court’s construction that a “reduced class file” is “what remains after one or more

Reduced Class File

8 duplicated elements have been removed from a class file” is consistent with the idea behind
9 Google’s proffered construction – i.e., the structure of the original “class file” that is not affected
10 by the “reduction” is preserved in the resulting “reduced class file.” Referring to the class file
11 depicted in Figure 3 of the patent (see Tentative Order at 9), Google understands that under the
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Court’s construction, any non-reduced structures of the depicted class file will remain intact or

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unmodified in the resulting “reduced class file.”

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With respect to what it means to be “reduced” in this context, Google agrees with the

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Court’s analysis “that reduced class files are obtained by removing one or more duplicated

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elements from a plurality of class files that contain the same element or elements.” (Tentative

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Order at 11.)

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II.

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Google has no critique of the Court’s construction, recognizing the Court’s power under

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The Play Executing Step

Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003), to correct claims
even when they may be perceived as sloppily drafted. However, Google reserves its objection to
the validity of these claims as presently construed. Should either of the two affected claims

23 persist through trial, Google reserves the right to challenge these claims under 35 U.S.C. § 101,
24 § 112, ¶ 1, and § 112, ¶ 4. Briefly, claims 3 and 4 (which are dependent on claim 1) embody a
contradiction by calling for the performance (or execution) of actions required by the byte code,
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while claim 1 explicitly recites that the byte code is not executed. Accordingly, these claims not
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only are indefinite, but also lack utility under 35 U.S.C. § 101 because they are inoperable. In
27 addition, the limitations in claims 3 and 4 do not further limit claim 1 – since carrying out steps
28 of execution does not limit the antecedent requirement that the method be “without execution” –
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DEFENDANT GOOGLE INC.’S STATEMENT ON THE COURT’S TENTATIVE CLAIM CONSTRUCTION ORDER
CIVIL ACTION NO. CV 10-03561-WHA

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in violation of 35 U.S.C. § 112, ¶ 4. Finally, a method that requires performance of execution

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steps, while at the same time also forbidding them, does not find support in the specification of

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the ‘520 patent under 35 U.S.C. § 112, ¶ 1.
III.

Intermediate Form Object Code

Google has no critique of the Court’s tentative construction, separate from the reasons

6 urging the Court to adopt its proposed construction.
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Contrary to Oracle’s assertions, the tentative construction does not dispense with
Google’s prior art references. Moreover, Google reserves its objections on the issue of whether
an “intermediate representation” is or can be executable.

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IV.

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Google has no critique of the Court’s tentative construction of “symbolic reference.” We

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Symbolic [data / field] Reference

also note that the Court’s understanding of the term “numeric reference” is consistent with
Google’s understanding and supports Google’s non-infringement position relating to certain
claims of the ‘104 patent. Google expects that this additional guidance by the Court may aid the

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process of reducing the number of claims asserted at trial.

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V.

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Google has no critique of the Court’s tentative construction. The tentative construction

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Resolve / Resolving

clarifies that the “resolving” steps of the ‘104 patent claims are not novel. As counsel for Oracle
admitted during the Markman hearing, this “resolving” – i.e., “at least determining a numerical

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memory-location reference that corresponds to the symbolic reference” – reads on the prior art.

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See April 20, 2011 Transcript at 69:11-15 (“THE COURT: But you still agree that the red,

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highlighted language there -- that was in the prior art? MR. JACOBS: Resolving symbolic

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references in instructions by determining numerical references? THE COURT: Yes. MR.

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JACOBS: On a stand-alone, basis? Yes.”).
VI.

Computer Readable Medium (and Related Terms)

Although Google respectfully submits, and believes that Oracle agrees, that these terms

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by their nature transcend the subject matter of the individual patents and are susceptible to a

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consistent construction, Google appreciates the Court’s view that the parties’ agreement to

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construe all of these terms as one term may not be appropriate in light of the differing technology
and filing dates of the respective patents. These claim terms were originally identified for
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DEFENDANT GOOGLE INC.’S STATEMENT ON THE COURT’S TENTATIVE CLAIM CONSTRUCTION ORDER
CIVIL ACTION NO. CV 10-03561-WHA

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construction by Oracle, in order to avoid subject matter invalidity. However, at least for the

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patents where the term “computer readable medium” is expressly defined, no construction should

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be necessary. To the extent any such “computer readable medium” claims remain in the case
after the asserted claims are dropped according to a process the Court may order, Google would

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seek the Court’s leave, at an appropriate time, to move for summary judgment of invalidity of the
“computer readable medium” claims under 35 U.S.C. § 101.

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DEFENDANT GOOGLE INC.’S STATEMENT ON THE COURT’S TENTATIVE CLAIM CONSTRUCTION ORDER
CIVIL ACTION NO. CV 10-03561-WHA

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DATED: May 6, 2010

KING & SPALDING LLP
By: /s/ Scott T. Weingaertner
SCOTT T. WEINGAERTNER (Pro Hac Vice)
[e-mail]
ROBERT F. PERRY
[e-mail]
BRUCE W. BABER (Pro Hac Vice)
[e-mail]
1185 Avenue of the Americas
New York, NY 10036-4003
Telephone: [phone]
Facsimile: [phone]
DONALD F. ZIMMER, JR. (SBN 112279)
[e-mail]
CHERYL A. SABNIS (SBN 224323)
[e-mail]
KING & SPALDING LLP
101 Second Street – Suite 2300
San Francisco, CA 94105
Telephone: [phone]
Facsimile: [phone]

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

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ATTORNEYS FOR DEFENDANT
GOOGLE INC.

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DEFENDANT GOOGLE INC.’S STATEMENT ON THE COURT’S TENTATIVE CLAIM CONSTRUCTION ORDER
CIVIL ACTION NO. CV 10-03561-WHA