Oracle America, Inc. v. Google Inc.

Filing 223

RESPONSE to re #209 Order Joint Summary of the Status of the PTO Reexaminations and Update on the Parties' Views Regarding Stay by Google Inc., Oracle America, Inc.. (Peters, Marc) (Filed on 7/20/2011)

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[counsel listed on signature page]

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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,

JOINT SUMMARY OF THE
STATUS OF THE PTO
REEXAMINATIONS AND UPDATE
ON THE PARTIES’ VIEWS
REGARDING STAY

Defendant.

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

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v.

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GOOGLE INC.

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JOINT SUMMARY REGARDING REEXAMINATIONS
CASE NO. CV 10-03561 WHA (DMR)
pa-1475047

Case No. CV 10-03561 WHA (DMR)

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Pursuant to the Court’s July 11, 2011 request, Oracle America, Inc. and Google Inc.

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hereby present their joint summary of the status of the PTO reexaminations and an update on their

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views as to whether this case should be stayed pending completion of the reexaminations.

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I.

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The reexaminations of six of the seven patents in suit are continuing. As of today, the

STATUS OF THE REEXAMINATIONS

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PTO has rejected the claims of four of the seven patents; the PTO has not yet issued office actions

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with respect to two of the patents; and the PTO has confirmed the patentability of the claims of

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the final patent over the cited art.

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The table below shows the current status of the reexaminations as to each of the seven
patents in suit:
Patent No.
(type of
reexam)

Reexam
Filed

Reexam
Ordered

Office
Action
Issued

Oracle
Response
Due /
Filed

Google
Response
Due

Asserted
Claims
Subject To
Reexam

Asserted
Claims
Currently
Rejected

6,125,447
(ex parte)

2/15

3/23

6/29

Due 8/29

n/a

All
(1, 2, 10,
11, 19, 20)

All
(1, 2, 10,
11, 19, 20)

6,192,476
(ex parte)

2/15

3/23

6/16

Due 8/16

n/a

All
(4, 5, 6, 13,
14, 15, 21)

All
(4, 5, 6, 13,
14, 15, 21)

5,966,702
(ex parte)

2/15

3/23

6/6

Due 9/6

n/a

All
(1, 6, 7, 12,
13, 15, 16)

All
(1, 6, 7, 12,
13, 15, 16)

8/4

All
(1, 4, 6, 10,
13, 15, 19,
21, 22)

All
(1, 4, 6, 10,
13, 15, 19,
21, 22)

7,426,720
(inter partes)

2/15

4/18

5/5

Filed 7/5

RE38,104
(ex parte)

3/1

3/28

pending

All
(11, 12, 15,
17, 22, 27,
29, 38, 39,
40, 41)

6,910,205
(inter partes)

2/17

4/14

pending

All
(1, 2, 3, 8)

6,061,520
(ex parte)

3/1

3/23

6/23

Asserted
Claims
Currently
Allowed

Due 8/23

n/a

All
(1, 4, 8,
12, 14, 20)

All
(1, 4, 8,
12, 14, 20)

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JOINT SUMMARY REGARDING REEXAMINATIONS
CASE NO. CV 10-03561 WHA (DMR)
pa-1475047

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II.

ORACLE’S VIEW: THE CASE SHOULD NOT BE STAYED FOR
REEXAMINATION

The pending reexaminations continue to provide little benefit in resolving this dispute.
There remains no way to defer to them and stay the action without dramatic disruption to the
schedule set by the Court. Recent PTO action (and inaction) confirms this. A stay is still
unwarranted and would be highly prejudicial to Oracle. Indeed, a stay would delay—potentially
for years—resolution of patent and copyright claims on which the pending reexaminations have
had and will have no bearing. The prejudicial impact of such a delay would be particularly acute
as Android continues to gain market share at a dramatic pace, growing at over 500,000 activations
per day (see http://twitter.com/#!/Arubin (last visited July 19, 2011)), and as knowledgeable
Oracle employees continue to be lost to turnover (many being hired away by Google).
As to three of the seven patents-in-suit, the PTO has endorsed the claims in dispute or not
taken any action. For the ’520 patent, the PTO has confirmed all of the asserted claims over all
prior art references Google asserted. This patent has been battle-tested and survived handily. In
view of this result, Google should not be rewarded by a stay of this case. For the ’104 and ’205
patents, the PTO has yet to issue any office action, which means that no claim has been subject to
even a preliminary rejection. Moreover, these two reexaminations are still at the very beginning
of the process and a stay will maximize disruption to the case schedule.
The ’205 and ’720 patents are undergoing inter partes reexaminations. The results of
these reexaminations are still quite preliminary. But even after the PTO (someday) issues a
reexamination certificate, either party can appeal to the Board of Patent Appeals and
Interferences, and then either party can appeal further to the Federal Circuit. Unless the Court
stays the case for a very long time, the “final” results in reexamination will likely trail this
litigation. Hence, the reexaminations are not actually relevant, as the PTO will be required to
dismiss them before they conclude. 35 U.S.C. § 317 provides that, after a final federal court
decision on the merits, “an inter partes reexamination requested by that party or its privies on the
basis of such issues may not thereafter be maintained by the Office.” 35 U.S.C. § 317; MANUAL
OF PATENT EXAMINING PROCEDURE

§ 2686.04.

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JOINT SUMMARY REGARDING REEXAMINATIONS
CASE NO. CV 10-03561 WHA (DMR)
pa-1475047

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For the ’702, ’447, and ’476 patents, which are undergoing ex parte reexamination, the

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facts still weigh against a stay. Although the asserted claims of these patents have been

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provisionally rejected by the PTO, the reexaminations will almost certainly not end for more than

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a year, including all appeals. In addition, Google is asserting in the lawsuit at least three grounds

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of invalidity against the claims of these patents that will not be considered by the PTO in the

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reexaminations. Because Google asserts independent counterclaims for invalidity of the patents

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yet will not drop invalidity grounds that will not or cannot be resolved by the reexaminations, a

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stay will leave a cloud of uncertainty over the patents. Google’s delay of at least six months in

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seeking reexamination should not frustrate the orderly resolution of this case.

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The Court should not surrender control of its docket to an overburdened administrative

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agency. The backlog at the BPAI has been increasing steadily, with over 20,000 appeals pending,

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1,100 more being filed every month, and only about 570 dispositions per month. The current

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average pendency of a BPAI appeal is 32 months. See FY 2011 Performance Measures, available

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at http://www.uspto.gov/ip/boards/bpai/stats/perform/FY_2011_Performance.jsp (last visited July

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19, 2011). Despite the BPAI’s focus on ex parte and inter partes reexamination appeals, it has

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struggled to keep up; though the backlog of ex parte reexamination appeals has been reduced this

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year, the backlog of inter partes reexamination appeals has grown by 50%. See

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http://www.uspto.gov/ip/boards/bpai/stats/process/fy2011_jun_b.jsp (last visited July 19, 2011).

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Oracle has also sued Google for copyright infringement. That Google copied Sun’s Java

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core library APIs is undisputed. The evidence also shows that the Android code base includes

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code that was directly copied from Sun source code or was decompiled from Sun binaries.

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Nothing in the reexaminations can have any impact whatsoever on these claims.

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As the Court noted in its recent order, there is also substantial evidence that Google’s

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infringement was intentional. Every day that Google’s infringement continues, more damage is

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done to Oracle and the Java ecosystem as a whole. Because of the large network effects in the

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developer community, the damages are irreparable. There is no good reason to stay this case and

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give Google another year or two (or more) to enjoy the benefits of its copying.

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JOINT SUMMARY REGARDING REEXAMINATIONS
CASE NO. CV 10-03561 WHA (DMR)
pa-1475047

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III.

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GOOGLE’S VIEW: THIS CASE SHOULD BE STAYED OR, IN THE
ALTERNATIVE, ORACLE SHOULD BE REQUIRED TO ELECT NOW
THE CLAIMS FOR TRIAL IN OCTOBER

To serve the interests of judicial efficiency and fairness, the Court and parties have

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discussed on several occasions the reexamination proceedings, the reduction of asserted claims,

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and their relationship to a potential stay pending reexamination. As the Court noted in its recent

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Order on these subjects, “the larger the number of patents and patent claims asserted [] the more

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practical it will then seem to simply stay this case and see which claims survive PTO

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reexamination.” Dkt. 147 (“Order”) at 1:21-23. The Court therefore left for the final pretrial

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conference “whether a workable trial plan can be devised, failing which the trial will either be put

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over until it is trial-ready and/or a trial stay pending re-examination will be entered.” Id. at 2:5-7.

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Circumstances have changed since entry of the Court’s Order on May 23. As reflected in

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the above chart, the PTO has rejected all of the asserted claims in four of the seven patents-in-

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suit.1 Notwithstanding those rejections, Oracle has again refused Google’s recently-renewed

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request that it narrow the claims and focus this case for trial. Instead, Oracle continues to assert

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50 claims in 7 patents, and has stepped-up its harassing and burdensome discovery tactics,

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leaving the case in a condition that is far from trial-ready. Google therefore respectfully submits

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that the case should be stayed pending the completion of all the reexaminations.

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A stay pending completion of all the reexamination proceedings will allow this case to

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proceed efficiently and with the benefit of the PTO’s decisions. These reexaminations—which

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have already resulted in rejection of a majority of the asserted claims—are highly likely to narrow

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significantly the number of patents involved in the case, as well as narrow the permissible scope

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of any damages. Indeed, should this case be narrowed to only a few claims modified in the

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course of the reexamination, any damages claim2 would be materially limited by, among other

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things, the doctrine of intervening rights. Such a narrowed case will also eliminate the need for

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In the two reexaminations without initial office actions, office actions are anticipated

shortly.
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Google notes that Oracle’s expert report on damages is fatally flawed for the reasons set
forth in its Daubert motion, set for hearing on July 21, 2011.

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JOINT SUMMARY REGARDING REEXAMINATIONS
CASE NO. CV 10-03561 WHA (DMR)
pa-1475047

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those efforts specifically directed at the claims rejected through reexamination, including motion

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practice, expert reports, and other trial preparation, as well as make it more likely that the parties

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could reach an informal resolution of the matter. In short, both parties and the Court would

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benefit from a stay pending reexamination.

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That said, should the Court be inclined to allow Oracle to proceed to trial in October

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notwithstanding the status of the reexaminations, that option should be conditioned on Oracle

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now electing to narrow substantially its claims in order to allow this case to be trial-ready.

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Without such a narrowing, Google will be forced to address 50 asserted claims in voluminous

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expert reports, motion practice, and discovery efforts, even though, as a practical matter, only a

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small fraction of the claims could ever proceed to trial. Those burdens are compounded by

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Oracle’s continued pursuit of unreasonably burdensome discovery tactics, such as:

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(1) Just days ago Oracle first made available for inspection approximately 150
boxes of litigation materials from the Sun v. Microsoft litigation (relevant to
Oracle’s damages claims), even though Oracle now acknowledges that it knew this
category of documents existed months ago;

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(2) Just days ago Oracle first disclosed the existence of enormous source code
“workspaces” which may contain the critical source code that Oracle has long
claimed to be missing from Oracle’s files and that will likely establish an on-sale
bar;

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(3) Oracle recently demanded that Google produce on July 29 any documents it
has ever produced in more than two dozen other litigations that have involved
Android in some way, regardless of whether the documents bear any relevance to
the narrow accused aspects of the Android platform; and

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(4) Oracle has stonewalled throughout discovery in an effort to delay production of
the files from a key witness, Oracle CEO Larry Ellison, even though Oracle itself
disclosed Mr. Ellison as a witness on a host of material subjects.

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Thus, Google respectfully requests that the Court either stay this case, or proceed to trial

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in October only if Oracle now elects to reduce its claims to a number reasonably triable in the

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three week trial (such as three claims, with one selected from each patent group3). Google would

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then reduce its invalidity bases to three per claim to streamline the matter for trial.

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The patents in suit fall into three separate technology categories: run-time patents,
compile-time patents and security patents.

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JOINT SUMMARY REGARDING REEXAMINATIONS
CASE NO. CV 10-03561 WHA (DMR)
pa-1475047

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Dated: July 20, 2011

MORRISON & FOERSTER LLP

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By: /s/ Marc David Peters
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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]

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Attorneys for Plaintiff
ORACLE AMERICA, INC.

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JOINT SUMMARY REGARDING REEXAMINATIONS
CASE NO. CV 10-03561 WHA (DMR)
pa-1475047

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Dated: July 20, 2011

KEKER & VAN NEST, LLP

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By: __

/s/ Robert A. Van Nest

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ROBERT A. VAN NEST (SBN 84065)
[e-mail]
CHRISTA M. ANDERSON (SBN184325)
[e-mail]
DANIEL PURCELL (SBN 191424)
[e-mail]
710 Sansome Street
San Francisco, CA 94111-1704
Telephone: [phone]
Facsimile: [phone]

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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]

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GREENBERG TRAURIG, LLP
IAN C. BALLON (SBN 141819)
[e-mail]
HEATHER MEEKER (SBN 172148)
[e-mail]
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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JOINT SUMMARY REGARDING REEXAMINATIONS
CASE NO. CV 10-03561 WHA (DMR)
pa-1475047

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ATTESTATION
I, Marc David Peters, am the ECF User whose ID and password are being used to file this
JOINT SUMMARY OF THE STATUS OF THE PTO REEXAMINATIONS AND UPDATE ON
THE PARTIES’ VIEWS REGARDING STAY. In compliance with General Order 45, X.B., I
hereby attest that Robert A. Van Nest has concurred in this filing.

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Date: July 20, 2011

/s/ Marc David Peters

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JOINT SUMMARY REGARDING REEXAMINATIONS
CASE NO. CV 10-03561 WHA (DMR)
pa-1475047

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