Oracle America, Inc. v. Google Inc.

Filing 970

MOTION Oracle Motion for Clarification Regarding 702 Patent filed by Oracle America, Inc.. Responses due by 4/24/2012. (Jacobs, Michael) (Filed on 4/24/2012)

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16

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.

17
18

UNITED STATES DISTRICT COURT

19

NORTHERN DISTRICT OF CALIFORNIA

20

SAN FRANCISCO DIVISION

21

ORACLE AMERICA, INC.

22

Plaintiff,

ORACLE MOTION FOR
CLARIFICATION REGARDING
’702 PATENT

Defendant.

Dept.: Courtroom 8, 19th Floor
Judge: Honorable William H. Alsup

23

v.

24

Case No. CV 10-03561 WHA

GOOGLE INC.

25
26
27
28

ORACLE MOTION FOR CLARIFICATION REGARDING ’702 PATENT
CASE NO. CV 10-03561 WHA
pa-1525167

1
2

Oracle America, Inc. (“Oracle”) requests guidance from the Court regarding the inclusion
of the ’702 patent in the patent infringement phase of the trial.

3

In response to the Court’s request for “a candid discussion of the impact these

4

[reexamination] rejections will have on the shape of trial,” Oracle made the following

5

commitment:

6
7
8
9

Accordingly, if the case goes to trial this spring, Oracle will withdraw from the
litigation with prejudice each claim of the ’720, ’205, and ’702 patents asserted
against Google that remains rejected at the time of trial, and proceed with the
copyright case, the ’520 patent, the ’104 patent, and any asserted claims of the
other three patents that are confirmed by the PTO.
(ECF No. 777 at 2.) Oracle also stated that it had “substantial arguments supporting

10

reconsideration, raising a credible prospect that one or more of the rejections will be reversed by

11

the examiners.” (Id.) It was for this reason that Oracle made its withdrawal conditional.

12

That prospect has come to pass. As the Court and the parties now know, on April 19 the

13

PTO reversed its earlier decisions and confirmed the patentability of all the claims of the ’702

14

patent in re-examination, which include all the claims that Oracle accuses Google of infringing.

15

Google’s prediction that Oracle would be “unlikely to overcome the examiners’ rejections” (ECF

16

No. 779 at 2) was wrong. Google’s invalidity contentions have been weighed and found wanting,

17

on a standard much more favorable to Google than what Google faces at trial. A reexamination

18

certificate confirming the asserted claims will issue in due course—Google is not permitted to

19

appeal the PTO’s decision in the ex parte reexamination.

20
21
22
23
24
25
26
27
28

The Court has twice commented on Oracle’s conditional withdrawal in written orders. On
March 13, 2012, the Court wrote:
In reliance on Oracle’s withdrawal with prejudice of the ’720, ’205, and ’702
patents, given the final rejections by the PTO examiner, and having twice
admonished counsel to reserve mid-April to mid-June 2012 for the trial of this
case, this order now sets April 16 as the first day of trial, which will be devoted to
jury selection and opening statements. The trial shall continue day to day on the
trifurcated plan previously set and on the daily 7:30 a.m. to one p.m. schedule
previously set, with the trial expected to run about eight weeks.
(ECF No. 786 at 1.) Two days later, the Court wrote:
Another three [patents] rejected by the PTO examiner were withdrawn if the trial
is held before the administrative appeals are completed, a withdrawal whose effect
will be considered below. Therefore, there is a strong possibility that only the
ORACLE MOTION FOR CLARIFICATION REGARDING ’702 PATENT
CASE NO. CV 10-03561 WHA
pa-1525167

1

1
2
3

’104 and ’520 patents will be asserted at trial, and this order will only address
issues pertaining to these two patents, without prejudice to revisiting objections
specific to the withdrawn patents if they later arise.
(ECF No. 796 at 1.)

4

The Court trifurcated the trial in its January 4, 2012 Final Pretrial Order (ECF No. 675).

5

Phase Two, which has not yet begun, “will be directed to all patent liability and defense issues,

6

including any generalized defenses.” (Id. at 3.) Phase One, which is underway, “will be directed

7

to all liability and defenses for all copyright claims but not for any other issues.” (Id. at 2.)

8
9

Because the patent infringement phase of the trial has not begun, Oracle does not regard
the ’702 patent as yet withdrawn and intends to assert the ’702 patent in Phase Two. The

10

evidence shows that Google has significantly benefited from its use of the ’702 patent. Testing

11

shows that Android application files are between 1.45 and 3.33 times smaller than they would be

12

if the patented technology were not used, which results in a variety of additional performance

13

benefits. (See Summary and Report of Noel Poore (TX669) at 13.) An injunction against

14

Google’s continued infringement is warranted, particularly because the ’702 patent does not

15

expire until October 2017.

16

Not to allow the ’702 patent to go forward would deprive Oracle of a significant

17

intellectual property right. Google would not be unfairly prejudiced by including it, because the

18

parties have prepared for and anticipated this moment. Both Oracle and Google kept their ’702-

19

related exhibits on the trial exhibit list. (When considering whether and what exhibits could be

20

dropped, Google asked if Oracle had indeed dropped the ’702 patent with prejudice. Oracle said

21

“no.”) No additional experts will need to appear. Oracle’s experts Profs. Mitchell and Goldberg

22

are appearing for other patents, as is Google’s ’702 noninfringement expert Prof. Parr. (We

23

assume Google will withdraw its failed ’702 invalidity theories as it did for the ’520 patent.)

24

Oracle brings this motion for clarification because the Court has characterized Oracle’s

25

conditional withdrawal differently at different times. Accordingly, Oracle respectfully requests

26

that the Court confirm that Oracle may proceed to try infringement of the ’702 patent in Phase

27

Two in light of the PTO’s recent confirmation of all asserted claims.

28
ORACLE MOTION FOR CLARIFICATION REGARDING ’702 PATENT
CASE NO. CV 10-03561 WHA
pa-1525167

2

1
2
3

Dated: April 24, 2011

MICHAEL A. JACOBS
MARC DAVID PETERS
DANIEL P. MUINO
MORRISON & FOERSTER LLP

4
5
6
7

By: /s/ Michael A. Jacobs
Attorneys for Plaintiff
ORACLE AMERICA, INC.

8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
ORACLE MOTION FOR CLARIFICATION REGARDING ’702 PATENT
CASE NO. CV 10-03561 WHA
pa-1525167

3