Oracle America, Inc. v. Google Inc.

Filing 704

SUPPLEMENTAL CLAIM CONSTRUCTION ORDER re 637 Claim Construction Statement filed by Google Inc., 647 Objection filed by Google Inc., 645 Objection filed by Oracle America, Inc., 691 Response ( Non Motion ) filed by Oracle America, Inc., 646 Declaration in Support, filed by Oracle America, Inc., 693 Brief filed by Google Inc.. Signed by Judge Alsup on January 25, 2012. (whalc1, COURT STAFF) (Filed on 1/25/2012)

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1 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE NORTHERN DISTRICT OF CALIFORNIA 8 9 ORACLE AMERICA, INC., 11 For the Northern District of California United States District Court 10 12 13 14 No. C 10-03561 WHA Plaintiff, SUPPLEMENTAL CLAIM CONSTRUCTION ORDER v. GOOGLE INC., Defendant. / 15 16 17 INTRODUCTION In this patent and copyright infringement action, the parties seek supplemental 18 construction of three phrases from the asserted patents. After consideration of the briefing from 19 both sides, final constructions for two of the three phrases are set forth below. 20 21 STATEMENT The technical background was set forth in the first claim construction order in May 2011 22 (Dkt. No. 137). The first claim construction order construed five of six requested terms. After 23 the number of asserted claims was reduced, the Court invited the parties to list additional terms in 24 dispute (Dkt. No. 603). The parties now request construction of three phrases. This order follows 25 opening and reply briefs from both sides. 26 27 28 ANALYSIS Courts must determine the meaning of disputed claim terms from the perspective of a 1 person of ordinary skill in the pertinent art at the time the patent was filed. Chamberlain Group, 2 Inc. v. Lear Corp., 516 F.3d 1331, 1335 (Fed. Cir. 2008). While claim terms are generally given 3 their ordinary and customary meaning, the patent’s specification is always highly relevant to the 4 claim construction analysis. Phillips v. AWH Corp., 415 F.3d 1303, 1312–15 (Fed. Cir. 2005). 5 Although courts have discretion to consider extrinsic evidence, including dictionaries, scientific 6 treatises, and testimony from experts and inventors, such evidence is “less significant than the 7 intrinsic record in determining the legally operative meaning of claim language.” Phillips, 415 8 F.3d at 1317–18. 9 While this order acknowledges that the parties have a right to a ruling on all disputed claim terms by the time the jury instructions are settled, the Court will reserve the authority, on its 11 For the Northern District of California United States District Court 10 own motion, to modify the constructions in this order if further evidence — intrinsic or 12 extrinsic — warrants such a modification. Given that claim construction is not a purely legal 13 matter, but is (as the Supreme Court describes it) a “mongrel practice” with “evidentiary 14 underpinnings,” it is entirely appropriate for the Court to adjust its construction of claims if the 15 evidence compels an alternative construction. Markman, 517 U.S. at 378, 390. The parties 16 should be aware, however, that they are not invited to ask for reconsideration of the constructions 17 herein. Motions for reconsideration may be made only in strict accordance with the rules of 18 procedure, if at all. 19 1. 20 The ’476 patent, entitled “Controlling Access to a Resource,” was issued in February THE ’476 PATENT: “COMPUTER-READABLE MEDIUM.” 21 2001. The invention generally related to a dynamic security method for determining appropriate 22 access privileges. While this could have been practiced on a personal computer, embodiments of 23 the invention were not limited to any specific combination of hardware circuitry and software 24 (col. 5:2–3). 25 26 27 28 Only independent claim 14 is asserted. The phrase construed by this order is italicized below. Claim 14 covered (col. 19:59–20:5): 14. A computer-readable medium bearing instructions for providing security, the instructions including instructions for performing the steps of: 2 1 detecting when a request for an action is made by a principal; 2 determining whether said action is authorized based on an association between permissions and a plurality of routines in a calling hierarchy associated with said principal; 3 4 5 wherein each routine of said plurality of routines is associated with a class; 6 7 and wherein said association between permissions and said plurality of routines is based on a second association between classes and protection domains. 8 9 This is the parties’ second request to construe “computer-readable medium.” During the 11 For the Northern District of California United States District Court 10 first claim construction proceedings, the parties sought to construe this phrase and all related 12 phrases appearing in six different patents. The first claim construction order refused to do so 13 because the patents were too heterogenous: the issue dates spanned a decade and patented subject 14 matter ranged from security and access protections to loading and processing techniques. The 15 order held that construing the phrase would require individualized attention to the intrinsic 16 evidence of each patent. Now, the parties only seek to construe the phrase as used in the ’476 17 patent. 18 19 20 21 The parties’ proposed constructions are shown below. ORACLE’S PROPOSED CONSTRUCTION GOOGLE’S PROPOSED CONSTRUCTION A storage device for use by a computer Any medium that participates in providing instructions to a processor for execution, including but not limited to, optical or magnetic disks, dynamic memory, coaxial cables, copper wire, fiber optics, acoustic or light waves, radio-waves and infra-red data communications 22 23 24 25 The construction of “computer-readable medium” is relevant to the parties’ invalidity arguments. 26 Oracle and Google agree that “computer-readable medium” encompassed storage media. The 27 dispute is whether it also encompassed transmission media, such as coaxial cables and fiber 28 3 1 optics that only contain transitory data signals. This order finds that “computer-readable 2 medium” did encompass transmission media. 3 In the specification, “computer-readable medium” was explicitly defined as: 4 The term “computer-readable medium” as used herein refers to any medium that participates in providing instructions to processor for execution. Such a medium may take many forms, including but not limited to, non-volatile media, volatile media, and transmission media. Non-volatile media includes, for example, optical or magnetic disks, such as storage device. Volatile media includes dynamic memory, such as main memory. Transmission media includes coaxial cables, copper wire and fiber optics, including the wires that comprise bus. Transmission media can also take the form of acoustic or light waves, such as those generated during radio-wave and infra-red data communications. 5 6 7 8 9 10 have been persuasive to a person of ordinary skill. The claim drafter acted as his own For the Northern District of California United States District Court (col. 5:4–16) (emphasis added). This explicit definition of “computer-readable medium” would 11 12 lexicographer when he expressly defined the phrase. Indeed, quotation marks were used around 13 the phrase “computer-readable medium,” a strong indication that what followed was a definition. 14 Sinorgchem Co. v. ITC, 511 F.3d 1132, 1136 (Fed. Cir. 2007). 15 In addition to this explicit definition, the specification described embodiments that 16 unambiguously included transmission media, such as wireless signals. For example, the 17 specification described the use of an infra-red transmitter as a medium (col. 5:32–35), and the use 18 of wireless links to send and receive signals (col. 5:52–56). 19 Against the explicit definition and described embodiments, Oracle argues the often-quoted 20 point, “claims should be so construed, if possible, as to sustain their validity.” Rhine v. Casio, 21 Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999). This argument is unpersuasive because there was no 22 ambiguity in the specification’s definition. The only construction that is consistent with the 23 language of the patent is a “computer-readable medium” that included transmission media. 24 Oracle’s citations to extrinsic dictionaries are also unpersuasive. Oracle argues that 25 because some contemporaneous technical dictionaries defined “media” as physical materials and 26 storage devices, the phrase “computer-readable medium” must have only included storage media. 27 Extrinsic sources, however, cannot be used to contradict claim meaning that is unambiguous in 28 light of intrinsic evidence. Phillips v. AWH Corp., 415 F.3d 1303, 1324 (Fed. Cir. 2005). 4 1 Oracle also makes a grammatical argument. It argues that the word “may” in the 2 definition paragraph meant that transmission media should have been treated as a disclosed but 3 unclaimed embodiment. A person skilled in the art would not have read the specification’s 4 definition that way. The sentence explained that computer-readable “medium may have taken 5 many forms.” And the next phrase explicitly included transmission media in the definition of the 6 medium: “including but not limited to . . . transmission media.” medium” presents a larger issue than just this action. Oracle rhetorically asks: since the Federal 9 Circuit has arguably interpreted the law to invalidate claims encompassing both storage media 10 and transmission media, “what shall courts do with the thousands of patents issued in the past 11 For the Northern District of California Finally, Oracle also makes a policy argument that the construction of “computer-readable 8 United States District Court 7 decade that have [relied on a prior interpretation]?” This order does not need to reach the larger 12 policy issue because validity has not yet been determined. Such a determination would require a 13 broader record and additional briefing. 14 One skilled in the art would have understood that transmission media was included in the 15 claim language. Accordingly, the phrase “computer-readable medium” shall be construed to 16 mean “any medium that participates in providing instructions to processor for execution, 17 including but not limited to, transmission media.” 18 19 Importantly, this construction of “computer-readable medium” only applies to the ’476 patent and does not apply to the other asserted patents. THE ’205 PATENT: “AT RUNTIME.” 20 2. 21 The ’205 patent, entitled “Intrepreting Functions Utilizing a Hybrid of Virtual and Native 22 Machine Instructions,” was issued in June 2005. The ’205 patent generally related to increasing 23 execution speed by replacing bytecode with instructions to access faster native code. 24 Two claims from this patent are asserted: independent claim 1, and its dependent claim 2. 25 The disputed phrase appeared only in text of claim 1. The disputed phrase is italicized below. 26 Claim 1 covered (col. 13:43–53): 27 28 1. In a computer system, a method for increasing the execution speed of virtual machine instructions at runtime, the method comprising: 5 1 receiving a first virtual machine instruction; 2 generating, at runtime, a new virtual machine instruction that represents or references one or more native instructions that can be executed instead of said first virtual machine instruction; and 3 4 5 6 executing said new virtual machine instruction instead of said first virtual machine instruction. 7 The phrase “at runtime” appeared twice in claim 1, once in the preamble and once in the body. 8 Illustrated below is a graphic representation of the claimed steps: 9 Figures 4 and 6 from the ’205 Patent: Claimed Method 11 For the Northern District of California United States District Court 10 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 6 1 2 3 4 5 The parties’ proposed constructions are shown below. ORACLE’S PROPOSED CONSTRUCTION GOOGLE’S PROPOSED CONSTRUCTION No construction necessary. The ordinary meaning is “during execution of the virtual machine.” “during execution of the virtual machine instructions” parties agree that “at runtime” included during the time that the virtual machine was running. The 8 parties dispute whether runtime only encompassed the narrower period during execution of virtual 9 machine instructions. Put another way, the dispute is whether the virtual machine has to be 10 executing instructions or just up-and-running (without executing instructions) when a “new 11 For the Northern District of California The construction of “at runtime” is relevant to the parties’ non-infringement arguments. The 7 United States District Court 6 virtual machine instruction” was generated. This order finds that a person of ordinary skill would 12 have understood that the generation step had to have occurred during execution of virtual 13 machine instructions. 14 Oracle’s definition of “at runtime” would render the phrase meaningless. If “at runtime” 15 meant any time during which the virtual machine was up-and-running, then the claimed 16 generation step would not have any additional limitations relative to the other steps in the claim: 17 receiving and executing. The asserted claim outlined three steps to be performed in a virtual 18 machine (Oracle’s Opening Br. 9) (computer system is virtual machine): receiving, generating, 19 and executing. Only the generating step has the additional limiting language of “at runtime.” 20 This would have suggested to a person of ordinary skill that the generating step had an additional 21 limitation relative to the receiving and execution steps. But if Oracle’s definition of “during 22 execution of the virtual machine” were adopted, there would not have been an additional 23 limitation for the generating step. This is because the virtual machine was necessarily up-and- 24 running while it was receiving and executing. Oracle does not dispute this (Oracle’s Opening Br. 25 9). Oracle’s construction is not persuasive because it would have rendered the additional 26 limitation of “at runtime” meaningless. 27 28 Construing “at runtime” to mean “during execution of virtual machine instructions,” on the other hand, would provide meaning supported by embodiments in the specification. The only 7 1 disclosed embodiments involved generating new virtual machine instructions during execution of 2 instructions. One embodiment was generating “go_native” instructions. The go_native 3 instruction was a preferred embodiment of a new virtual machine instruction (col. 7:23–26). The 4 go_native instruction was generated whenever the virtual machine decided to substitute a 5 sequence of bytecodes with native machine instructions called “snippets” (col. 6:26–30, 7:49–57). 6 The specification was clear that this process occurred during execution of virtual machine 7 instructions (col. 9:30–34, 7:49–51). 8 9 Another embodiment was generating new virtual machine instructions during Java virtual machine initialization, which also involved the execution of virtual machine instructions. New virtual machine instructions, including snippet codes, were generated along with a bytecode table 11 For the Northern District of California United States District Court 10 during intialization (col. 13:3–26 & Figure 13). A bytecode table is illustrated below: 12 13 Figure 13 from the ’205 Patent: Bytecode Table 14 15 16 17 18 19 20 21 22 23 24 25 26 Although the parties dispute whether initialization involved the execution of virtual machine 27 instructions, this order finds that a person of ordinary skill would have understood that 28 instructions were executed during initialization. There were many tasks the Java virtual machine 8 1 performed during initialization, such as class loading and class initialization. The process of class 2 loading and class initialization involved the execution of virtual machine instructions. Class 3 loading was done by executing virtual machine instructions found in a ClassLoader file, which 4 was written in the Java programming language (Fenton Decl. Exh. B). Similarly, the process for 5 class initialization was done by executing virtual machine instructions in the form of bytecode 6 (US Patent 6,061,520). Oracle disputes this. However, its supporting citations did not discuss 7 whether virtual machine instructions were executed during initialization. Instead, the citations 8 only addressed the general process of class loading and class initialization, which, as discussed, 9 involved the execution of virtual machine instructions. Oracle’s argues that construing “at runtime” to “during execution of the virtual machine 11 For the Northern District of California United States District Court 10 instructions” would be illogical because of the definite article ‘the’ in the construction. Put 12 another way, Oracle argues that it would be unclear which virtual machine instructions were 13 being referenced. This order agrees. The reference could not have been to the first virtual 14 machine instructions because those instructions may never have been executed. And referring to 15 the new virtual machine instructions would be illogical because those instructions are executed at 16 a later step in the claimed method. This order finds that a definite article is unnecessary and 17 confusing. 18 19 20 Accordingly, the phrase “at runtime” shall be construed to mean “during execution of one or more virtual machine instructions.” 3. THE ’720 PATENT: “OBTAIN[ING] A REPRESENTATION OF AT LEAST ONE CLASS FROM A SOURCE DEFINITION PROVIDED AS OBJECT ORIENTED PROGRAM CODE.” 21 The ’720 patent, entitled “System and Method for Dynamic Preloading of Classes through 22 Memory Space Cloning of a Master Runtime System Process,” was issued in September 2008. 23 The ’720 patent improved efficiency by dynamic preloading of classes through memory space 24 cloning. Six claims from this patent are asserted: independent claims 1 and 10, and their 25 dependent claims: 6, 19, 21, and 22. The disputed phrase is found in both independent claims. 26 The parties’ proposed constructions of “obtain[ing] a representation of at least one class from a 27 source definition provided as object oriented program code” are shown below. 28 9 1 2 3 4 ORACLE’S PROPOSED CONSTRUCTION GOOGLE’S PROPOSED CONSTRUCTION No construction necessary. The phrase has the ordinary meaning that its constituent words give it. load at least one class definition by compiling object oriented source code. 5 The main dispute is whether “a source definition” in the obtaining step referred to source code, 6 object code (bytecode or machine code), or either. Google argues for source code, while Oracle 7 argues that the “source definition” can be either source code or object code. 8 The record evidence does not illuminate the precise meaning of that phrase to a person of proves necessary, it will be construed before the jury is charged at the end of the trial, and its 11 For the Northern District of California ordinary skill in the pertinent art at the time the patent was filed. If construction of the phrase 10 United States District Court 9 construction will be based upon a more fully developed record. 12 CONCLUSION 13 For the reasons provided herein, the constructions set forth above will apply in this 14 dispute. The Court will reserve the authority, on its own motion, to modify these constructions if 15 further evidence warrants such a modification. Counsel, however, may not ask for modification. 16 17 IT IS SO ORDERED. 18 19 Dated: January 25, 2012. WILLIAM ALSUP UNITED STATES DISTRICT JUDGE 20 21 22 23 24 25 26 27 28 10

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