Oracle America, Inc. v. Google Inc.

Filing 183

Letter in Opposition to Google's Request for Leave to File a Motion to Supplement Its Invalidity Contentions. (Jacobs, Michael) (Filed on 6/21/2011)

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June 21, 2011

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The Honorable William Alsup
U.S. District Court, Northern District of California
450 Golden Gate Avenue
San Francisco, California 94102
Re:

Oracle America, Inc. v. Google, Inc., Case No. 3:10-cv-03561-WHA

Dear Judge Alsup:
Oracle opposes Google’s request for leave to file a motion to supplement its
Invalidity Contentions. Google is not proposing to add a “small and select group of new
invalidity theories,” as it suggests. To the contrary, more than half of Google’s selected
invalidity grounds are new, previously uncharted contentions. Moreover, most of these new
contentions are based on references that were already in Google’s possession. As such, they
could have been, but were not, timely charted under the Patent Local Rules.
“Amendment of . . . the Invalidity Contentions may be made only by order of the
Court upon a timely showing of good cause.” Patent L.R. 3-6. “‘[G]ood cause’ requires a
showing of diligence,” the movant’s burden to establish. O2 Micro Int’l Ltd. v. Monolithic
Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006) (applying Northern District of
California patent local rules).
There is no good cause for Google’s proposed supplementations. Almost all of
Google’s supplemental invalidity grounds are based on references that were already in
Google’s possession, but not charted, when Google served its Invalidity Contentions in
January 2011. For example, Google’s proposed '104 patent defenses rely on an article by
B. Ramakrishna Rau that was included in a 22-page list of uncharted references in its
Invalidity Contentions. Likewise, all of the supplemental '520 and '205 defenses, five out of
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The Honorable William Alsup
June 21, 2011
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the six supplemental '720 defenses, and three out of the four supplemental '447 defenses rely
on references that were on Google’s 22-page list of uncharted references, were included in a
chart for a different obviousness combination, or were produced by Google in January 2011.
If Google had been diligent, it would have included charts for these invalidity grounds in its
January 2011 contentions. See Brilliant Instruments, Inc. v. GuideTech, Inc., No. C 09-5517
CW, 2011 U.S. Dist. LEXIS 48865, at *4-6 (N.D. Cal. Apr. 29, 2011). In fact, Google has
demonstrated the opposite of diligence—Google possessed the references, stated in its
January 2011 contentions that they were “not the most pertinent” references and were
“unnecessarily duplicative,” and then changed its position after months had passed. Such
blatant sandbagging should not be permitted, especially since Oracle has already narrowed
its claims for trial and given the relatively late stage of the litigation.
A handful of Google’s proposed supplementations are based on references that
Google allegedly discovered after January 2011. These references include published papers
available in academic libraries and similar public sources. They are not obscure or hard to
find. Google became aware of the asserted patents at least by August 12, 2010, when Oracle
filed the complaint, and thus had sufficient time to search for and review these papers. The
Court should reject any supplementation where “there is no showing that the publication
prior art references were difficult to locate and no showing that any diligence was exercised
in discovering them.” Sunpower Corp. Sys. v. Sunlink Corp., No. C-08-2807 SBA (EMC),
2009 U.S. Dist. LEXIS 85425, at *9 (N.D. Cal. June 12, 2009).
Google offers several excuses for its tardy attempt to supplement its Invalidity
Contentions. First, Google incorrectly states that “Oracle has asked to supplement its
Infringement Contentions twice.” In fact, Google asked for those supplementations, which

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The Honorable William Alsup
June 21, 2011
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Oracle agreed to provide in exchange for supplemental non-infringement contentions from
Google. Such mutually-agreeable supplementation to clarify the parties’ respective positions
is quite different from Google’s present attempt to alter its contentions at this late stage.
Second, Google claims that it discovered new art while preparing reexamination
requests. If true, that art was found between January and March 1, 2011, when the requests
were filed. Google does not explain why the art could not have been found earlier and why
Google did not promptly request supplementation when it filed those requests months ago.
Third, Google alleges that it developed new invalidity theories in light of the Court’s
claim construction order and related briefing. But Google knew about Oracle’s proposed
constructions at least by March 2011, and the Court adopted most of those constructions
almost verbatim. Google should have prepared its Invalidity Contentions in light of both
Google’s and Oracle’s proposed constructions.
Google states that Oracle’s counsel conceded there would be no prejudice from
Google’s supplementation, but those discussions occurred before Google revealed that more
than half of its selected invalidity grounds were brand new. To make matters worse, some of
the new contentions are still not charted. Oracle has reduced the number of its asserted
claims partly in light of Google’s January 2011 Invalidity Contentions. Oracle would be
prejudiced should Google be permitted to change half of its invalidity case at this stage of the
litigation. For these reasons, Oracle respectfully asks that the Court deny Google’s request
for leave to file a motion to supplement its Invalidity Contentions.
Respectfully submitted,
/s/ Michael A. Jacobs
Michael A. Jacobs

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