Oracle America, Inc. v. Google Inc.

Filing 144

RESPONSE to re #143 Order Joint Memorandum Regarding the Court's Tentative Case Plan by Oracle America, Inc.. (Jacobs, Michael) (Filed on 5/18/2011)

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[Counsel Signatures Appear at the End]

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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.

Case No. 3:10-cv-03561-WHA

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Plaintiff,

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v.
GOOGLE INC.

Honorable Judge William Alsup
JOINT MEMORANDUM REGARDING
THE COURT’S TENTATIVE CASE PLAN

Defendant.

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JOINT MEMORANDUM REGARDING THE COURT’S TENTATIVE CASE PLAN
CIVIL ACTION NO. CV 10-03561-WHA
sf-2996224

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Plaintiff Oracle America, Inc. (“Oracle”) and Defendant Google Inc. (“Google”) present

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their views on the Court’s May 11, 2011 Notice re Tentative Case Plan. As directed, the parties

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engaged in a meet and confer, during which the parties reached agreement on some points and

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remain in disagreement on others. This memorandum summarizes these points of agreement and

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outstanding disputes.

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I.

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1. The current fact discovery cut-off remains in effect, and the parties shall conduct

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discovery and file motions with the assigned Magistrate-Judge accordingly.

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Agreed Points

2. By June 1, 2011, Oracle shall narrow its patent infringement case to no more than 50
asserted claims.
3. By June 15, 2011, Google shall narrow its invalidity case to no more than six grounds

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of invalidity per asserted claim. A reference or set of references setting forth an

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anticipation or obviousness theory shall be counted by "chart" pursuant to Patent

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L.R. 3-3(c) (i.e., anticipation by a reference shall be counted as one ground for

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purposes of this paragraph; references setting forth an obviousness combination shall

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be counted as another ground). Other grounds shall be counted by stated legal theory,

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e.g., "enablement," "lack of written description," "improper broadening."

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4. The Court will entertain a summary judgment motion by Google on the copyright

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issue, and Oracle may seek the Court's leave to file a summary judgment motion on

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copyright issues as well. Briefing on copyright issues will adhere to the following

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schedule:

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a. Opening brief(s) on August 1, 2011;

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b. Opposition brief(s) on August 19, 2011; and

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c. Reply briefs on August 29, 2011.

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5. Other summary judgment motions will be entertained only upon obtaining leave
pursuant to the Court's previous order to that effect.
6. The trial remains set to begin on October 31. The trial, addressing all issues, will last
for three weeks.
JOINT MEMORANDUM REGARDING THE COURT’S TENTATIVE CASE PLAN
CIVIL ACTION NO. CV 10-03561-WHA
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II.

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The parties could not reach agreement on the following issues:

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Disputed Issues

A.
7a.

Final Number of Claims and Defenses for Trial

Oracle’s proposal: By September 1, 2011, or no later than 15 days after a ruling

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on any pending patent-related summary judgment motions allowed pursuant to

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paragraph 5 above, whichever is later, Oracle shall narrow its patent infringement

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case to no more than 21 asserted claims. By no later than 15 days after Oracle’s

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narrowing of claims pursuant to this paragraph, Google shall narrow its invalidity

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case to no more than four grounds of invalidity per claim. In the alternative,

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Oracle proposes that any narrowing of claims to be asserted at trial be addressed

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by the parties in papers submitted in connection with the final pre-trial

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conference. Oracle opposes any other approach to narrowing its asserted claim on

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the grounds set forth in its response to the Court’s May 4, 2011 Order.

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7b.

Google’s proposal: Google believes that the Court's initial plan for narrowing the

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claims makes the case more manageable for the Court and the jury, and is the best

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use of judicial resources. Google proposed a compromise of 10 to 14 claims to be

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asserted by Oracle (upon which the parties could not reach agreement) and

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believes the Court has the authority to limit the number of claims asserted to one

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claim per patent without depriving Oracle of due process in asserting its claims.

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See In re Katz Interactive Call Processing Patent Lit., Case No. 2009-1450 et al.,

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97 U.S.P.Q.2d 1737, 1744-45, 2011 WL 607381, *4, (Fed. Cir. Feb. 18, 2011)

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(rejecting plaintiff’s argument that district court’s narrowing of claims for trial

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violated due process). Google otherwise agrees that no later than 15 days after

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Oracle’s narrowing of claims pursuant to this paragraph, Google shall narrow its

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invalidity case to no more than four grounds of invalidity per claim.

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JOINT MEMORANDUM REGARDING THE COURT’S TENTATIVE CASE PLAN
CIVIL ACTION NO. CV 10-03561-WHA
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B.
8a.

Stay Pending Resolution of Reexamination Proceedings

Oracle’s proposal: Pursuant to the Court’s May 11, 2011 Notice re Tentative

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Case Plan, no stay will be granted pending reexamination. Oracle will bear the

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risk of subsequent adverse events in reexamination pursuant to applicable law.

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8b.

Google’s proposal: To the extent that Oracle intends to assert a large number of

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claims at trial, resulting in a complicated and extremely burdensome trial, Google

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defers to the Court's discretion to grant a stay pending reexamination. In the

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event that there is no stay, Oracle will take the risk that claims selected for trial

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will be cancelled or modified during re-examination

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JOINT MEMORANDUM REGARDING THE COURT’S TENTATIVE CASE PLAN
CIVIL ACTION NO. CV 10-03561-WHA
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FILER’S ATTESTATION
I, Michael A. Jacobs, am the ECF user whose identification and password are being used

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to file this JOINT MEMORANDUM REGARDING THE COURT’S TENTATIVE CASE

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PLAN. In compliance with General Order 45.X.B, I hereby attest that Scott T. Weingaertner

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concurs in this filing.

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JOINT MEMORANDUM REGARDING THE COURT’S TENTATIVE CASE PLAN
CIVIL ACTION NO. CV 10-03561-WHA
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DATED: May 18, 2011

MORRISON & FOERSTER LLP
By: /s/ Michael A. Jacobs
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]
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]
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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JOINT MEMORANDUM REGARDING THE COURT’S TENTATIVE CASE PLAN
CIVIL ACTION NO. CV 10-03561-WHA
sf-2996224

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KING & SPALDING LLP

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By: /s/ Scott T. Weingaertner

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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]

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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]
Attorneys for Defendant
GOOGLE INC.

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JOINT MEMORANDUM REGARDING THE COURT’S TENTATIVE CASE PLAN
CIVIL ACTION NO. CV 10-03561-WHA
sf-2996224

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