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Oracle and Google Try to Reduce Their Claims & Judge Issues Tentative Claims Construction Order
Sunday, May 01 2011 @ 07:27 PM EDT

The parties in Oracle v. Google have been asked by the judge to reduce the number of claims, so the case can actually be reasonably tried. So they have each filed their suggested cuts. Also the judge has issued a *tentative* claims construction order, asking for reaction from the parties and saying he may well make changes on his own initiative as more evidence is on the table.

I stress tentative, because I see articles predicting Google's doom, and honestly it's way too soon to predict anything. I realize the usual suspects are influencing journalists to believe that this order means victory for Oracle. But I continue to caution everyone that it's way too soon to know, other than the sad truth that patent owners tend to get the sweetest ride in any court, in any case. That's a bug in the system, nothing to crow about.

To show you what I mean, here's the PACER entry, showing you the title of the order being touted as a huge victory for Oracle:

The Conclusion section of the judge's order reads like this:
CONCLUSION

The constructions set forth above will apply in this dispute. The Court will reserve the authority, on its own motion, to modify these constructions if further evidence warrants such a modification. Additionally, by NOON ON MAY 6, 2011, each side may file a five-page critique (double-spaced, 12-point Times New Roman font, no footnotes, and no attachments) limited to points of critical concern. This is an opportunity for the parties to focus solely on their most cogent critique, not to rehash every point made in the briefs and at the hearing. No replies, please.

So, a whole lot of spin in the air. When you are being spun, just read the filing itself. You might have been given less than the entire story. If you are not sure, feel free to contact me. I'm happy to share with any journalist the court filings we have.

I have been very, very busy trying to set up a way for Groklaw to continue publishing articles, since so many of you asked me to do so, and while I can't announce any specifics yet, it's looking very good. I hope to be able to give you specifics in about a week, letting you know how articles will be done going forward if it all works out. I'm actually pretty excited about it. But for now I'm just explaining why I can't take the time to explain too much about all the filings in Oracle v. Google that I'm posting now. Thank you for your patience and your loyalty. And at least we have caught you up with the filings, and we'll try to swing back by down the road.

The docket:

04/05/2011 - 108 - ORDER REGARDING COURTROOM EQUIPMENT FOR APRIL 6 TUTORIAL by Judge Alsup finding as moot 105 Motion EquipmentEquipment; granting 107 Motion EquipmentEquipment (whalc1, COURT STAFF) (Filed on 4/5/2011) (Entered: 04/05/2011)

04/06/2011 - 109 - Minute Entry: Discovery Hearing held on 4/6/2011 before William Alsup (Date Filed: 4/6/2011), Tutorial Hearing held on 4/6/2011 before William Alsup (Date Filed: 4/6/2011). (Court Reporter Lydia Zinn.) (dt, COURT STAFF) (Date Filed: 4/6/2011) (Entered: 04/06/2011)

04/08/2011 - 110 - Transcript of Proceedings held on 04/06/2011, before Judge William H. Alsup. Court Reporter/Transcriber Lydia Zinn, Telephone number (415) 531-6587. Per General Order No. 59 and Judicial Conference policy, this transcript may be viewed only at the Clerks Office public terminal or may be purchased through the Court Reporter/Transcriber until the deadline for the Release of Transcript Restriction.After that date it may be obtained through PACER. Any Notice of Intent to Request Redaction, if required, is due no later than 5 business days from date of this filing. Release of Transcript Restriction set for 7/7/2011. (Zinn, Lydia) (Filed on 4/8/2011) (Entered: 04/08/2011)

04/08/2011 - 111 - NOTICE of Appearance by Valerie Wing Ho (Ho, Valerie) (Filed on 4/8/2011) (Entered: 04/08/2011)

04/11/2011 - 112 - NOTICE of Appearance by Roman A Swoopes (Swoopes, Roman) (Filed on 4/11/2011) (Entered: 04/11/2011)

04/14/2011 - 113 - NOTICE REGARDING CLAIM CONSTRUCTION HEARING. Signed by Judge Alsup on April 14, 2011. (whalc1, COURT STAFF) (Filed on 4/14/2011) (Entered: 04/14/2011)

04/15/2011 - 114 - MOTION for leave to appear in Pro Hac Vice - Brian C. Banner ( Filing fee $ 275, receipt number 34611058729), filed by Google Inc. (Attachments: # 1 Proposed Order)(wsn, COURT STAFF) (Filed on 4/15/2011) (Entered: 04/15/2011)

04/18/2011 - 115 - ORDER GRANTING APPLICATION FOR ADMISSION OF ATTORNEY BANNER PRO HAC VICE by Judge Alsup granting 114 Motion for Pro Hac Vice (whalc1, COURT STAFF) (Filed on 4/18/2011) (Entered: 04/18/2011)

04/18/2011 - 116 - MOTION Request and Proposed Order Regarding Courtroom Equipment for April 20th Claim Construction Hearing filed by Oracle America, Inc.. (Swoopes, Roman) (Filed on 4/18/2011) (Entered: 04/18/2011)

04/19/2011 - 117 - ORDER GRANTING REQUEST TO BRING EQUIPMENT INTO COURTROOM by Judge Alsup granting 116 Motion Equipment (whalc1, COURT STAFF) (Filed on 4/19/2011) (Entered: 04/19/2011)

04/20/2011 - 118 - Minute Entry: Claims Construction / Markman Hearing held on 4/20/2011 before William Alsup (Date Filed: 4/20/2011). (Court Reporter Lydia Zinn.) (dt, COURT STAFF) (Date Filed: 4/20/2011) (Entered: 04/20/2011)

04/20/2011 - 119 - MOTION for leave to appear in Pro Hac Vice - Alanna Rutherford ( Filing fee $ 275, receipt number 34611058881) filed by Oracle America, Inc. (Attachments: # 1 Proposed Order)(wsn, COURT STAFF) (Filed on 4/20/2011) (Entered: 04/20/2011)

04/21/2011 - 120 - ORDER GRANTING APPLICATION FOR ADMISSION OF ATTORNEY RUTHERFORD PRO HAC VICE by Judge Alsup granting 119 Motion for Pro Hac Vice (whalc1, COURT STAFF) (Filed on 4/21/2011) (Entered: 04/21/2011)

04/25/2011 - 121 - Transcript of Proceedings held on 04/20/2011, before Judge William H. Alsup. Court Reporter/Transcriber Lydia Zinn, Telephone number (415) 531-6587. Per General Order No. 59 and Judicial Conference policy, this transcript may be viewed only at the Clerks Office public terminal or may be purchased through the Court Reporter/Transcriber until the deadline for the Release of Transcript Restriction.After that date it may be obtained through PACER. Any Notice of Intent to Request Redaction, if required, is due no later than 5 business days from date of this filing. Release of Transcript Restriction set for 7/25/2011. (Zinn, Lydia) (Filed on 4/25/2011) (Entered: 04/25/2011)

04/25/2011 - 122 - NOTICE of Change In Counsel by Richard Steven Ballinger (Ballinger, Richard) (Filed on 4/25/2011) (Entered: 04/25/2011)

04/25/2011 - 123 - Letter from Marc David Peters (counsel for Oracle America) regarding construction of "reduced class file". (Peters, Marc) (Filed on 4/25/2011) (Entered: 04/25/2011)

04/25/2011 - 124 - ORDER REQUESTING MEMORANDA. Signed by Judge Alsup on April 25, 2011. (whalc1, COURT STAFF) (Filed on 4/25/2011) (Entered: 04/25/2011)

04/26/2011 - 125 - MOTION to Withdraw as Attorney Motion to Relieve Richard S. Ballinger as Counsel of Record for Oracle America, Inc. Pursuant to L.R. 11-5 filed by Oracle America, Inc.. (Attachments: # 1 Proposed Order)(Ballinger, Richard) (Filed on 4/26/2011) (Entered: 04/26/2011)

04/26/2011 - 126 - ORDER GRANTING MOTION FOR WITHDRAWAL OF ATTORNEY BALLINGER by Judge Alsup granting 125 Motion to Withdraw as Attorney. Attorney Richard Steven Ballinger terminated (whalc1, COURT STAFF) (Filed on 4/26/2011) (Entered: 04/26/2011)

04/27/2011 127 *** FILED IN ERROR. PLEASE DISREGARD. *** TENTATIVE CLAIM-CONSTRUCTION ORDER AND REQUEST FOR CRITIQUE. Signed by Judge Alsup on April 27, 2011. (whalc1, COURT STAFF) (Filed on 4/27/2011) Modified on 4/28/2011 (whalc1, COURT STAFF). (Entered: 04/27/2011)

04/28/2011 128 TENTATIVE CLAIM-CONSTRUCTION ORDER AND REQUEST FOR CRITIQUE re-filed with signature re 127 Order. Signed by Judge Alsup on April 27, 2011. (whalc1, COURT STAFF) (Filed on 4/28/2011) (Entered: 04/28/2011)

04/29/2011 129 RESPONSE to re 124 Order Oracle's memorandum describing its plan for streamlining the case for trial by Oracle America, Inc.. (Jacobs, Michael) (Filed on 4/29/2011) (Entered: 04/29/2011)

04/29/2011 130 Brief SETTING FORTH PLAN TO REDUCE CLAIMS TO A TRIABLE NUMBER filed byGoogle Inc.. (Sabnis, Cheryl) (Filed on 4/29/2011) (Entered: 04/29/2011)

Oracle has 132 claims from 7 patents. That will give you an idea why the judge wants to see the case get smaller. Oracle says it is amenable to reducing the number of claims if Google will cut back on its asserted grounds of invalidity. It proposes first cutting back its claims to a 75 and Google reducing its asserted prior art references, or combinations of references, to 4 per patent. Wait. That's quite a cut. Here's how Oracle describes Google's current position:
At the same time, Google presently asserts that thirty-one references anticipate and twenty-one combinations of references render obvious the asserted claims of seven patents-in-suit, based on the charts that it provided with its invalidity contentions. Google also served a 24-page list of more than 500 prior art references that, in some unexplained manner, Google alleged could be combined to render obvious the patents-in-suit. Google has also asserted many other grounds of invalidity against the patent claims, such as definiteness, written description, enablement, and double patenting. Many of Google's invalidity contentions are inconsistent and presented in the alternative: Google contends that many pateent claims are not enabled but also contends that the same claims are enabled by the prior art.
Oracle -- surprise, surprise -- thinks the case should proceed without waiting for the reexaminations that Google has filed with the USPTO. It would take too long. Oracle says its schedule will take advantage of the momentum that the Court's schedule has established.

Right. Why wait to see if the patents are even valid?

Sigh.

This is lawyers noticing this judge has indicated he wants this case to go to trial soon, so they pile on this advantage they see. So, next Oracle proposes to cut back again to 35 claims after that by a certain date, with Google narrowing its invalidity contentions to 3 per patent.

Hilarious. Here's a comment by Groklaw member cpeterson, which will show you Oracle's funny math. So, how about Google? It's first sentence indicates no eagerness to forget about the reexaminations:

Google Inc. thanks the Court for the opportunity to present its views on a plan for reducing the number of claims to a triable number by the trial date and how to take advantage of the PTO reexamination now in progress.
Hahaha. This is also funny, because Google, I suspect, wouldn't mind if that trial never happened, but certainly not before the reexamination process is done. I think the judge sensed that also, which is why he told them both to get a move on and get the case down to a less ridiculous number of claims.

So what is Google's plan? It also suggests a step-down process. It points out that some of Oracle's claims are duplicative, so Google's map for culling suggests that would be a good place to begin cutting. Google also suggests that the court let the USPTO prune out the invalid patents, so as to give Oracle "the benefit of feedback from the PTO", heh heh, and then Google can whittle down quite a bit in response.

Judges sometimes say yes to such requests, to wait for the reexaminations to finish, but as you saw in the RIM litigation, sometimes judges say no, and defendants get stuck with damages only to have the patents go through the reexamination later, sometimes to be found invalid.

After that, Google suggests that Oracle reduce to 20 claims, and Google cut back to 4 prior art references/combinations per asserted claim. It adds:

As discussed below and in accordance with Google's Phase I requirement (above), Oracle's Phase II Election could take into account an assessment of Google's proposed dispositive motions, thereby reducing the need for summary judgment motions.
So, Google clearly has motions in mind already. Then as phase III, Google suggests Oracle reduce its claims, after expert discovery, to maybe two claims, and Google would reduce its prior art references/combinations to two per asserted claim.

Update: I Programmer highlights some details:

The judge, who was given a primer in Java in order to be able to come to decisions about the terminology involved, revealed his irritation as lawyers for the two sides argued for 90 minutes about the wording of the patents declaring:
it's frustrating that these gigantic law firms can't write clearer language so we don't have to go through this process.
He also referred to pressures that mean he wants the case to be over before the end of November, because that's when his law clerk is scheduled to finish her allotted 12 month term with him and he feels it would be "a real burden" to have to bring another law clerk up to speed on this complex case.
Uh oh. When a law clerk's schedule is more important than finding out if a patent is valid or not, something doesn't feel right.

  


Oracle and Google Try to Reduce Their Claims & Judge Issues Tentative Claims Construction Order | 236 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Off Topic Here
Authored by: designerfx on Sunday, May 01 2011 @ 07:54 PM EDT
anything not involving the article, reply here.

[ Reply to This | # ]

news picks here
Authored by: designerfx on Sunday, May 01 2011 @ 07:55 PM EDT
please link the news pick if it is the first comment reply
when possible.

[ Reply to This | # ]

Corrctions here (non anonymous)
Authored by: FreeChief on Sunday, May 01 2011 @ 07:58 PM EDT
Anonymous -> Programmer in Chief

Don't start canonical threads when not logged in.

This article is awful wide.

 — Programmer in Chief

[ Reply to This | # ]

Oracle and Google Try to Reduce Their Claims & Judge Issues Tentative Claims Construction Order
Authored by: old joe on Sunday, May 01 2011 @ 08:04 PM EDT
My guess: Google will say Oracle's complaints are so general that Google can't
see what they are on about and all the Oracle claims should be dismissed unless
they get a lot more specific.

[ Reply to This | # ]

[COMES] Comes v. MS docs
Authored by: Aladdin Sane on Sunday, May 01 2011 @ 08:06 PM EDT
Comes v. MS docs here.

---
Well, it's either Captain Kirk or Doctor Strangelove. —me, ca. 1984-1985

[ Reply to This | # ]

Times New Roman?
Authored by: Anonymous on Monday, May 02 2011 @ 01:22 AM EDT
Is this the new way of saying "You must use Microsoft Office" without
actually saying it?

[ Reply to This | # ]

Class files and reduced class files
Authored by: Anonymous on Monday, May 02 2011 @ 08:14 AM EDT
Is a "Reduced Class File" a "Class File"?

As far as I can see the Judge may have got this one wrong.

AFAIK a reduced class file is functionally equivalent to a class file. But I
don't know wheter it has to functionally equivalent... though it would be pretty
useless if it wasn't.

[ Reply to This | # ]

Thank-you PJ
Authored by: soronlin on Monday, May 02 2011 @ 10:39 AM EDT
> I have been very, very busy trying to set up a way for
> Groklaw to continue publishing articles

I haven't pushed you PJ, because this is your web-site, and it is your life. But
thank-you for doing this.

Groklaw is a unique resource and meeting place. It should continue if there is
any way for it to do so.

[ Reply to This | # ]

Google does *not* ask court to wait for PTO
Authored by: Anonymous on Monday, May 02 2011 @ 03:44 PM EDT
It only asks that the court takes into account whatever
preliminary stuff the PTO might say before the deadlines
already set by the Judge (which are the same deadlines
referenced by Oracle).

This is a smart move because the PTO often does a
preliminary rejection, which it then reverses after the
patentee (Oracle) has answered. So by taking the PTO's
preliminary answers, Google will probably be using answers
*more* damning for Oracle than whatever the PTO would have
answered in the end.

A nice display of legal Jujitsu, although they are obviously
betting on unknown future events.

On most details, the proposed schedules presented by Google
and Oracle are almost the same, with only the (crucial)
finer details differing.

[ Reply to This | # ]

I wonder....
Authored by: Anonymous on Tuesday, May 03 2011 @ 12:56 AM EDT

His comment about the Clerk following on his comment about the authorings of the Legal Offices could mean:

    I'll be very put out with you two if you can't resolve your differences!
Course, IANAL, but it is a possible interpretation.

RAS

[ Reply to This | # ]

Oracle and Google Try to Reduce Their Claims & Judge Issues Tentative Claims Construction Order
Authored by: Anonymous on Tuesday, May 03 2011 @ 05:52 AM EDT
Where did the missing post go?

[ Reply to This | # ]

Grounds for appeal already?
Authored by: cricketjeff on Tuesday, May 03 2011 @ 10:11 AM EDT
Surely a judge making important case decisions based on administrative
trivialities would be grounds for the losing party to appeal, and if it wouldn't
be WHY wouldn't it be?

They are supposed to be Courts of Justice!

---
There is nothing in life that doesn't look better after a good cup of tea.

[ Reply to This | # ]

Not really fair?
Authored by: Anonymous on Tuesday, May 03 2011 @ 11:36 AM EDT
So Google is suggesting ways that the case load can be reduced by showing
charges which can be settled in other ways.

But Oracle is actually not asking that the number counter charges get reduced,
Oracle is actually trying to limit how Google is able to answer those charges.

Its like being charge with a murder and having 5000 witnesses who can testify
that you could not have done the crime. The defense is trying to say that you
need to pick three people and limit your defense to those three. Pick the wrong
three and you go to jail ... Just because there are 4997 others who can also
testify does not matter...

Not really fair is it? Would a judge be able to see through this kind of gaming
the system?

[ Reply to This | # ]

Oracle and Google Try to Reduce Their Claims & Judge Issues Tentative Claims Construction Order
Authored by: Anonymous on Thursday, May 05 2011 @ 12:09 AM EDT
Here is the problem. Under CAFC 2008-1001 - the so called $0 copyright law,
Google does not have a defense, as well as those others that have violated any
copyrighted product.

Prior to Aug 2008, the copyright law required a value, which reduce the lawsuit
under copyright law (as congress intended it). The problem, is that the EFF in
conjunction with DLA, wanted to get the $0 copyright law to protect open source.
Now they have a mess on their hands.

In the copyright case, oracle has already won, and can get a permanent
injunction against Google and force Google to recall all infringement devices
(over 300M of them), and have them destroyed. For Google to win this, then need
to take it to the Supreme Court.

So you have a copyright case that Google lost and a patent case which requires
past damages in the form of license fees. These will be license fees that
Google will need to pay on top of the Copyright damages.

Imagine that, force to destroy all droid devices, and pay a license fees on top
of thoese devices that they were ordered destroyed by the court.

Should be interesting to see Google quarterly results with a 20 - 40 Billion
reserve… Google has no license defense, Google has already lost. All that
matters is the size of Google's checkbook.

I wonder when they will announce the merger of Oracle and google.

my 2 cents.

[ Reply to This | # ]

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