Thought, Inc. v. Oracle Corporation et al

Filing 131

ORDER DENYING MOTION FOR RECONSIDERATION by Hon. William H. Orrick denying 124 Motion for leave to file a motion for reconsideration. (jmdS, COURT STAFF) (Filed on 12/16/2014)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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THOUGHT, INC.,

Case No. 12-cv-05601-WHO

Plaintiff,
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v.

ORDER DENYING MOTION FOR
RECONSIDERATION

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ORACLE CORPORATION, et al.,

Re: Dkt. No. 124

Defendants.

United States District Court
Northern District of California

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Defendant Oracle moves for leave to file a motion for reconsideration of the Claim

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Construction Order. Oracle argues that I erred in two significant respects: by concluding that

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“sufficient structure” in a means-plus-function claim could be identified by specifically linked

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software and by failing to appropriately apply the “correction” doctrine in construing ambiguous

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or awkward claim language. Docket No. 124.

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I have considered Oracle’s motion for leave – which lays out the exact arguments and case

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law Oracle intends to raise upon reconsideration – as well as Thought’s response, and I DENY the

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motion for leave to file a motion for reconsideration.

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With respect to the identification of a specifically piece of “linked” software to satisfy the

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algorithm requirement for means-plus-function claims, I recognize that the question is a close one.

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The Federal Circuit has been stringently applying the “disclosed algorithm” requirement in its

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recent cases. However, Oracle has not cited any case that expressly or implicitly rejects my

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conclusion that when a specifically identified piece of software is disclosed and expressly linked

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to perform the function at issue – and there is expert testimony that a person of ordinary skill in

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the art would readily understand how to use that disclosed software to perform the function at

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issue – that disclosure is sufficient to satisfy the algorithm requirement.

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Federal Circuit precedent supports my conclusion. Med. Instrumentation & Diagnostics

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Corp. v. Elekta AB, 344 F.3d 1205, 1212 (Fed. Cir. 2003) (“The correct inquiry is to look at the

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disclosure of the patent and determine if one of skill in the art would have understood that

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disclosure to encompass software for digital-to-digital conversion and been able to implement

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such a program, not simply whether one of skill in the art would have been able to write such a

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software program.”). Here, there was no dispute that specifically identified software was

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disclosed in the specification and linked to each function at issue, and both sides’ experts agreed

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the software could be implemented by persons reasonably skilled in the art to perform the

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functions at issue. In these circumstances, there are no grounds to reconsider my prior conclusion.

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With respect to my construction of ambiguous or awkward claim language, whether or not
the final determination is considered a “construction” or “correction,” there is no need to

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United States District Court
Northern District of California

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reconsider my prior ruling. The final constructions were appropriate – either as a matter of

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construction or error correction – under applicable Federal Circuit precedent. See, e.g., Novo

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Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003) (“A district court can

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correct a patent only if (1) the correction is not subject to reasonable debate based on consideration

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of the claim language and the specification and (2) the prosecution history does not suggest a

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different interpretation of the claims.”).

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In the Claim Construction Order, I addressed and rejected each of Oracle’s attempts to

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manufacture “debate” and determined that the constructions or corrections adopted were not

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subject to reasonable debate when the claim language and specification were considered.

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Oracle’s request for leave to file a motion for reconsideration is DENIED.

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IT IS SO ORDERED.

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Dated: December 16, 2014
______________________________________
WILLIAM H. ORRICK
United States District Judge

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