Oracle America, Inc. v. Google Inc.

Filing 498

First MOTION in Limine to Exclude Evidence or Argument Regarding Patent Reexaminations (MIL No. 1) filed by Oracle America, Inc.. Motion Hearing set for 10/24/2011 02:00 PM in Courtroom 8, 19th Floor, San Francisco before Hon. William Alsup. Responses due by 10/21/2011. Replies due by 10/28/2011. (Attachments: # 1 Google Opposition)(Muino, Daniel) (Filed on 10/7/2011)

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 MORRISON & FOERSTER LLP MICHAEL A. JACOBS (Bar No. 111664) mjacobs@mofo.com MARC DAVID PETERS (Bar No. 211725) mdpeters@mofo.com DANIEL P. MUINO (Bar No. 209624) dmuino@mofo.com 755 Page Mill Road, Palo Alto, CA 94304-1018 Telephone: (650) 813-5600 / Facsimile: (650) 494-0792 BOIES, SCHILLER & FLEXNER LLP DAVID BOIES (Admitted Pro Hac Vice) dboies@bsfllp.com 333 Main Street, Armonk, NY 10504 Telephone: (914) 749-8200 / Facsimile: (914) 749-8300 STEVEN C. HOLTZMAN (Bar No. 144177) sholtzman@bsfllp.com 1999 Harrison St., Suite 900, Oakland, CA 94612 Telephone: (510) 874-1000 / Facsimile: (510) 874-1460 ORACLE CORPORATION DORIAN DALEY (Bar No. 129049) dorian.daley@oracle.com DEBORAH K. MILLER (Bar No. 95527) deborah.miller@oracle.com MATTHEW M. SARBORARIA (Bar No. 211600) matthew.sarboraria@oracle.com 500 Oracle Parkway, Redwood City, CA 94065 Telephone: (650) 506-5200 / Facsimile: (650) 506-7114 Attorneys for Plaintiff ORACLE AMERICA, INC. 18 UNITED STATES DISTRICT COURT 19 NORTHERN DISTRICT OF CALIFORNIA 20 SAN FRANCISCO DIVISION 21 ORACLE AMERICA, INC. 22 Plaintiff, ORACLE AMERICA, INC.’S MOTION IN LIMINE NO. 1 TO EXCLUDE EVIDENCE OR ARGUMENT REGARDING PATENT REEXAMINATIONS Defendant. Dept.: Courtroom 8, 19th Floor Judge: Honorable William H. Alsup 23 v. 24 GOOGLE INC. 25 26 Case No. CV 10-03561 WHA 27 28 ORACLE MOTION IN LIMINE NO. 1 TO EXCLUDE EVIDENCE RE PATENT REEXAMINATIONS CASE NO. CV 10-03561 WHA sf- 3042734 1 Oracle moves the Court to preclude Google from introducing any evidence or argument 2 regarding the pending, non-final reexaminations of six of the patents-in-suit. The existence and 3 status of these non-final proceedings is irrelevant to the matters in this case. Any reference to 4 them at trial would be highly prejudicial and is likely to create juror confusion. Under Rule 403, 5 the Court should preclude Google from offering any evidence or argument regarding these non- 6 final patent reexaminations. 7 I. 8 In early 2011, Google filed requests for reexamination of each of the patents-in-suit. In 9 10 11 REEXAMINATIONS OF THE PATENTS-IN-SUIT March and April 2011, the PTO ordered reexaminations for all of the patents. The PTO subsequently issued office actions for all but the ’104 patent. For the ’520 patent, the claims that Oracle is asserting against Google in this case were all 12 confirmed patentable over the cited prior art. That proceeding is now concluded, except for the 13 issuance of the reexamination certificate. For the other six patents, the reexaminations are still 14 pending: (1) no office action has yet issued for the ’104 patent; (2) the ’447, ’476, and ’702 ex 15 parte reexaminations are awaiting further office actions from the PTO, following Oracle’s 16 responses filed in those actions; (3) the ’720 inter partes reexamination is awaiting a further 17 office action following responses from both Oracle and Google; and (4) the ’205 inter partes 18 reexamination is awaiting Oracle’s response to the PTO’s office action. The chart below 19 summarizes the current status of these reexaminations: 20 21 Patent No. (type of reexam) Reexam Ordered Office Action Issued Oracle Response Due / Filed Google Response Due / Filed Asserted Claims Currently Rejected 6,125,447 (ex parte) 3/23/11 6/29/11 8/29/11 n/a All (10, 11) Non-final; awaiting second PTO office action 6,192,476 (ex parte) 3/23/11 6/16/11 9/16/11 n/a All (13, 14, 15) Non-final; awaiting second PTO office action 5,966,702 (ex parte) 3/23/11 6/6/11 9/6/11 n/a All (1, 6, 7, 12, 13, 15, 16) Non-final; awaiting second PTO office action Asserted Claims Allowed 22 23 24 25 26 27 Status 28 ORACLE MOTION IN LIMINE NO. 1 TO EXCLUDE EVIDENCE RE PATENT REEXAMINATIONS CASE NO. CV 10-03561 WHA sf- 3042734 1 1 2 7,426,720 (inter partes) 4/18/11 5/5/11 RE38,104 (ex parte) 3/28/11 4/14/11 8/19/11 10/19/11 11/18/11 6,061,520 (ex parte) 3/23/11 6/23/11 8/24/11 n/a Non-final; awaiting second PTO office action pending 6,910,205 (inter partes) All (1, 4, 6, 10, 13, 19, 21, 22) 7/5/11 8/4/11 3 4 Non-final; awaiting PTO office action 5 6 Non-final; Oracle to respond to office action All (1, 2, 3) 7 8 All (1, 4, 8, 12, 14, 20) Final; reexam certificate to issue 9 10 11 12 II. ARGUMENT A. The Non-Final Reexaminations Of The Patents-in-Suit Have No Probative Value Federal courts have routinely relied on Federal Rule Evidence 403 to exclude evidence at 13 trial regarding co-pending, non-final reexaminations of the patents at issue, on the grounds that 14 such reexamination proceedings are not probative of patent invalidity and are highly likely to 15 confuse the jury. See, e.g., SRI Int’l Inc. v. Internet Sec. Sys., Inc., 647 F. Supp. 2d 323, 356 (D. 16 Del. 2009) (“Absent unusual circumstances . . . non-final decisions made during reexamination 17 are not binding, moreover, they are more prejudicial (considering the overwhelming possibility of 18 jury confusion) than probative of validity”); i4i Ltd. P’ship v. Microsoft Corp., 670 F. Supp. 2d 19 568, 583 (E.D. Tex. 2009) (”As explained elsewhere in this opinion, the simple fact that a 20 reexamination decision has been made by the PTO is not evidence probative of any element 21 regarding any claim of invalidity. . . . Even if it were, the evidence was substantially more 22 prejudicial than probative”); Amphenol T & M Antennas, Inc. v. Centurion Int’l, Inc., No. 00 C 23 4298, 2002 U.S. Dist. LEXIS 822, at *5 (N.D. Ill. 2002). 24 A non-final patent reexamination proceeding, of course, is not probative of invalidity or 25 unpatentability. Procter & Gamble Co. v. Kraft Foods Global, Inc., 549 F.3d 842, 848 (Fed. Cir. 26 2008) (“As this court has observed, a requestor’s burden to show that a reexamination order 27 should issue from the PTO is unrelated to a defendant’s burden to prove invalidity by clear and 28 ORACLE MOTION IN LIMINE NO. 1 TO EXCLUDE EVIDENCE RE PATENT REEXAMINATIONS CASE NO. CV 10-03561 WHA sf- 3042734 2 1 convincing evidence at trial.”) (citation omitted); Hoechst Celanese Corp. v. BP Chems., Ltd., 78 2 F.3d 1575, 1584 (Fed. Cir. 1996) (“[T]he grant by the examiner of a request for reexamination is 3 not probative of unpatentability”); Volterra Semiconductor Corp. v. Primarion, Inc., No. C-08- 4 05129 JCS, 2011 U.S. Dist. LEXIS 49574, at *24 (N.D. Cal. Mar. 8, 2011) (“With respect to the 5 PTO Initial Office Actions and reexamination orders, … preliminary decisions and actions by the 6 PTO in the course of a reexamination proceeding are not probative of invalidity”). When office 7 actions and party responses are still pending, any interim rejections of patent claims are not 8 indicative of an ultimate finding of invalidity. Id. 9 Nor are the non-final reexaminations relevant to rebutting the charges of willful 10 infringement and intent to induce infringement. The initiation of a reexamination proceeding 11 does not exculpate an infringer from a finding of willfulness. Hoechst, 78 F.3d at 1583-84 12 (finding that the grant of a request for reexamination is not dispositive of willfulness). Moreover, 13 even if the reexaminations were relevant to willfulness and intent, the prejudicial effect of 14 disclosing them to the jury would vastly outweigh any probative value. See Presidio Components 15 Inc. v. Am. Tech. Ceramics Corp., No. 08-CV-335-IEG (NLS), 2009 U.S. Dist. LEXIS 106795, at 16 *5 (S.D. Cal. Nov. 13, 2009) (“[E]ven if the reexamination proceedings are somehow relevant on 17 the issues of obviousness or willfulness, they are nevertheless unfairly prejudicial”) (citation 18 omitted); Declaration of Daniel P. Muino in Support of Oracle America, Inc.’s Motions In Limine 19 Nos. 1 Through 5 (“Muino Decl.”), Exhibit A, Realtime Data, LLC v. Packeteer, Inc., No. 6:08- 20 cv-144-LED-JDL, (E.D. Tex. Dec. 30, 2009), ECF No. 805 at 4 (“[A]lthough an ongoing 21 reexamination proceeding and the USPTO’s actions therein could be considered by the Court as a 22 factor in a willfulness determination at the summary judgment stage, during trial in a request for 23 judgments as a matter of law as to willful infringement, and/or post-verdict, it should not be 24 introduced before the jury due to the highly prejudicial effect the USPTO’s actions would have on 25 the jury”); Muino Decl. Exhibit B, Intel Corp. v. Commonwealth Scientific & Indus. Research 26 Org., No. 6:06-cv-551 (E.D. Tex. Apr. 9, 2009), ECF No. 518 at 4 (“[W]ithout any conclusions 27 of the PTO to rely upon, evidence that the PTO is currently reexamining the patent may work to 28 ORACLE MOTION IN LIMINE NO. 1 TO EXCLUDE EVIDENCE RE PATENT REEXAMINATIONS CASE NO. CV 10-03561 WHA sf- 3042734 3 1 unduly alleviate Defendants’ ‘clear and convincing’ burden for both invalidity and willfulness in 2 front of the jury”). 3 B. 4 Reference To The Non-Final Reexaminations At Trial Would Be Highly Prejudicial And Likely To Confuse The Jury Any reference to the non-final reexaminations in front of the jury would be prejudicial to 5 Oracle, as it would create a high likelihood of confusing and misleading the jury regarding the 6 validity of the patents. See Boston Scientific Corp. v. Cordis Corp., No. 10-315-SLR, 2011 U.S. 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Dist. LEXIS 46210, at *1-2 (D. Del. Apr. 28, 2011) (“It is generally not the court’s practice to admit the reexamination record as trial evidence. Rejections on reexamination are not binding, and such evidence is almost always more prejudicial than probative.”). Oracle’s patents are entitled to a presumption of validity and may only be invalidated based on clear and convincing evidence. See Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238 (2011) (applying the clear and convincing standard to all prior art references regardless of their use in initial examination); z4 Techs., Inc. v. Microsoft Corp., 507 F.3d 1340, 1354 (Fed. Cir. 2007) (invalidity must be shown by clear and convincing evidence). The jury will be instructed on this standard. Informing the jury that the PTO is reexamining the patents may cause jurors to erroneously conclude that the patents are invalid or no longer entitled to a presumption of validity. See Amphenol, 2002 U.S. Dist. LEXIS 822, at *5 (“[T]elling the jury that the patent has been called into question by the Patent Office may significantly influence the jury’s application of the presumption of validity and significantly prejudice [the patentee]. The prejudicial potential of this evidence far outweighs any probative value it may have.”). Jurors may well mistake the PTO’s interim rejections of certain patent claims as indicative of the government’s final position on the validity of those claims. Moreover, if the jury were informed of the non-final reexaminations, the parties and the Court would be obliged to explain the PTO’s reexamination procedures to the jury so as to mitigate confusion. This may lead to disputes on how to characterize the reexamination process and how to explain the substantive positions taken by the parties and the PTO in the reexaminations. Such disruption will be avoided if references to the non-final reexaminations are precluded. ORACLE MOTION IN LIMINE NO. 1 TO EXCLUDE EVIDENCE RE PATENT REEXAMINATIONS CASE NO. CV 10-03561 WHA sf- 3042734 4 1 In an analogous situation, this Court excluded argument regarding the prosecution 2 histories of certain trademark applications, including non-final Office Actions, in Autodesk, Inc. 3 v. Dassault Systémes Solidworks Corp., No. 3:08-cv-04397-WHA (N.D. Cal. Dec. 23, 2009), 4 ECF No. 209. (Muino Decl. Exhibit C.) In that case, Autodesk moved in limine to exclude 5 evidence or argument regarding these materials on the grounds that their introduction would be 6 prejudicial and likely to confuse the jury. (Id.) The Court precluded mention of the non-final 7 office actions and other prosecution filings during opening statements. (Muino Decl. Exhibit D, 8 Autodesk, ECF No. 240 at 52-53 (Dec. 31, 2009).) 9 10 III. CONCLUSION The non-final reexaminations are not probative of invalidity or any other issues of 11 relevance to this case. Permitting their introduction creates a high risk of confusing and 12 misleading the jury. Pursuant to Federal Rule Evidence 403, Oracle requests that the Court 13 preclude Google from offering any argument or evidence at trial regarding the six non-final 14 reexaminations of the patents-in-suit. 15 16 17 Dated: September 24, 2011 MICHAEL A. JACOBS MARC DAVID PETERS DANIEL P. MUINO MORRISON & FOERSTER LLP 18 19 20 By: /s/ Daniel P. Muino Attorneys for Plaintiff ORACLE AMERICA, INC. 21 22 23 24 25 26 27 28 ORACLE MOTION IN LIMINE NO. 1 TO EXCLUDE EVIDENCE RE PATENT REEXAMINATIONS CASE NO. CV 10-03561 WHA sf- 3042734 5

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