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)

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)
[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.

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