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)

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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) MARC DAVID PETERS (Bar No. 211725) DANIEL P. MUINO (Bar No. 209624) 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) 333 Main Street, Armonk, NY 10504 Telephone: (914) 749-8200 / Facsimile: (914) 749-8300 STEVEN C. HOLTZMAN (Bar No. 144177) 1999 Harrison St., Suite 900, Oakland, CA 94612 Telephone: (510) 874-1000 / Facsimile: (510) 874-1460 ORACLE CORPORATION DORIAN DALEY (Bar No. 129049) DEBORAH K. MILLER (Bar No. 95527) MATTHEW M. SARBORARIA (Bar No. 211600) 500 Oracle Parkway, Redwood City, CA 94065 Telephone: (650) 506-5200 / Facsimile: (650) 506-7114 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

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