Oracle America, Inc. v. Google Inc.

Filing 587

ORDER TO SUBMIT COLOR-CODED HANDOUT OF CLAIMS TO BE TRIED. Signed by Judge Alsup on November 1, 2011. (whalc1, COURT STAFF) (Filed on 11/1/2011)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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ORACLE AMERICA, INC.,

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For the Northern District of California

United States District Court

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Plaintiff,
v.

ORDER TO SUBMIT
COLOR-CODED
HANDOUT OF
CLAIMS TO BE TRIED

GOOGLE INC.,

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Defendant.
/

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No. C 10-03561 WHA

The Court has presided over more than ten patent trials and has worked hard to find ways

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to assist the jury in comprehending the issues and evidence. One effective way is to use posters

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and handouts for the jury that isolate the claim phrases in actual contention. Each claim is on a

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separate page and the few phrases usually alleged to be missing from the accused item (for

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infringement purposes) and from the prior art reference (for anticipation purposes) are highlighted

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in colors coded to the respective issues. We will try this in the instant action.

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By NOON ON NOVEMBER 8, defendant shall identify to plaintiff in writing its best two

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references for anticipation purposes as to each of the 26 claims to be tried identified by plaintiff

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(Dkt. No. 471). It may be that at trial defendant will assert anticipation based on more than two

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references per claim. In identifying the references for purposes of the poster/handout, however,

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please pick only the best two. Of course, different references can be asserted against the various

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claims at trial.

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As to each claim to be tried, plaintiff shall highlight in gray each phrase it contends is

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missing from Reference No. 1 for anticipation purposes and shall highlight in blue each phrase it

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contends is missing from Reference No. 2 for anticipation purposes. Non-highlighted phrases

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will be deemed conceded as to those references. This must be done and provided to defendant by

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NOON ON NOVEMBER 15.

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As to each claim to be tried, defendant shall highlight in pink each phrase it contends is

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missing from the accused device or method. The remainder will be deemed conceded. This must

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be done and provided to plaintiff by NOON ON NOVEMBER 15.

information. Counsel shall use their best judgment as to the most effective way to visually

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For the Northern District of California

Counsel then shall meet and confer to create a joint handout that compiles all of this

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United States District Court

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communicate both the infringement and anticipation issues using only one copy of each claim to

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be tried. For example, in a previous trial, counsel clarified overlap by using red underlining

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(instead of pink highlighting) to identify phrases disputed as to infringement, while using parallel

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bands of highlighting to identify phrases disputed as to the two anticipation references. The joint

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proposed handout must be filed by NOON ON NOVEMBER 18.

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In the Court’s experience, very few phrases need be or should be highlighted by either

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side since almost always all but one or two phrases are clearly present. The Court expects and

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needs counsel to be candid and keep the highlighting to a minimum. This is important. This will

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assist everyone by assisting the jury in focusing mainly on phrases and evidence in dispute.

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IT IS SO ORDERED.

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Dated: November 1, 2011.

WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

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