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Oracle Ordered to Reduce Claims Against Google From 132 to 3
Thursday, May 05 2011 @ 05:34 AM EDT

The judge handling the Oracle v. Google patent litigation, Hon. William Alsup, has issued his order [PDF] on how much each side must cut back its claims and/or defenses. He didn't accept either side's numbers but came up with his own, and this case just got a whole lot smaller -- he has ordered Oracle to cut back its claims from 132 down to only 3:
Currently, there are 132 claims from seven patents asserted in this action, and there are hundreds of prior art references in play for invalidity defenses. This is too much. The following schedule will ensure that only a triable number of these items — three claims and eight prior art references — are placed before the jury in October, all others to be forsaken. Oracle will surrender all of its present infringement claims against Google based on the 129 asserted claims that will not be tried. Oracle may not renew those infringement claims in a subsequent action except as to new products.
So, 132 Oracle claims down to 3, and the rest are deep-sixed forever, not to be seen again. That obviously will also cut back on any possible damages. Methinks this judge has a clue.

Remember all those predictions of Google's doom? Are they coming true? Extrapolate please, the next time someone feverishly tells you that Oracle is wiping the floor with Google.

Here's the docket entry:

05/03/2011 - 131 - ORDER RE SCHEDULE FOR NARROWING ISSUES FOR TRIAL. Signed by Judge Alsup on May 3, 2011. (whalc1, COURT STAFF) (Filed on 5/3/2011) (Entered: 05/03/2011)

I've been trying to tell you that wild predictions of Android's doom from this case were, as Mark Twain put it, premature. Was I right or was I right? Of course, even one patent is capable of doing harm, which is why software and patents need to get a divorce. Note that the order says that Oracle may not renew the dropped claims. This is the end of the road for those claims. That is *huge*. The judge even asks the parties to tell him if they anticipate that a trial will end up being moot.

Here's the rest of the order's text, showing the step-down process and all the details:

Having reviewed the parties’ memoranda regarding the reexamination proceedings and the streamlining of this action, for which counsel are thanked, the Court proposes a three-step process, as below. Each side may file a five-page (double spaced, twelve-point Times New Roman font, no footnotes, and no attachments) critique of the tentative schedule by NOON ON MAY 6, 2011. After taking any critiques into account, the schedule will be finalized.

Currently, there are 132 claims from seven patents asserted in this action, and there are hundreds of prior art references in play for invalidity defenses. This is too much. The following schedule will ensure that only a triable number of these items — three claims and eight prior art references — are placed before the jury in October, all others to be forsaken. Oracle will surrender all of its present infringement claims against Google based on the 129 asserted claims that will not be tried. Oracle may not renew those infringement claims in a subsequent action except as to new products.

The first reduction will follow claim construction. Within SEVEN DAYS after the finalized claim construction order issues, Oracle shall narrow its patent infringement case to 40 asserted claims. Within SEVEN DAYS after that, Google shall narrow its invalidity case to 120 prior art references. It is anticipated that this first pair of reductions will be completed by the end of May. The second reduction will follow expert disclosures. By AUGUST 24 (five days after reply expert reports must be served), Oracle shall narrow its patent infringement case to 20 asserted claims. By AUGUST 29 (five days later), Google shall narrow its invalidity case to 60 prior art references. The parties will then have a week of expert discovery remaining, and another week before summary-judgment motions must be filed.

The third reduction will follow summary judgment. Between the date on which the summary-judgment order issues and the final pretrial conference, Oracle shall select no more than three asserted claims and Google shall select no more than eight prior art references for trial. All others will be forsaken. Counsel did not specify their understanding of a “triable number” of claims and prior art references, so the Court selected these figures based on its own views and experience. The exact dates for the final selections will be set in the summary-judgment order. Unless summary-judgment motions are filed early, the summary-judgment hearing will fall on October 13. If that happens, then the final pretrial conference currently scheduled for October will be continued to October 24 in order to allow time for this process. The trial remains set to begin on October 31. The parties, however, are requested to comment on the following. If our trial were postponed until after the inter partes reexaminations, to what extent would the results there possibly moot out the need for a trial here? When will the ex parte reexaminations be completed?

IT IS SO ORDERED.

And in other news, Oracle has sent a subpoena to the Apache Foundation:
The Apache Software Foundation (ASF) has received a [United States District Court subpoena] requiring the production of documents related to the use of Apache Harmony code in the Android software platform, and the unsuccessful attempt by Apache to secure an acceptable license to the Java SE Technology Compatibility Kit.

The request, received from Oracle America's attorneys on May 2nd gives the Foundation until May 13th, 2011 to produce the required materials. Apache will, of course, be complying with all court requirements. As an open development group the majority of our documents are already publicly available.

I assume Oracle did this because Open Source projects do everything behind closed doors and the only way to find out what happened regarding Apache's inability to get a license from Sun, now owned by Oracle, would be to send a subpoena.

Snort.

That's like you and me being married, filing joint tax returns, and then in a divorce action, you subpoena me for my tax returns, so you can ask me questions about why they were filed the way they were.

Dude. You were there.


  


Oracle Ordered to Reduce Claims Against Google From 132 to 3 | 197 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Subpoena
Authored by: maroberts on Thursday, May 05 2011 @ 06:03 AM EDT
I do question whether you're a little harsh on the reason for a subpoena.

Whilst Open Source activities are generally carried out in the open and
inevitably discussion of being unable to agree terms is posted in emails and
message boards etc, the original documentary evidence and information may only
be in the hands of the organisation itself.

[ Reply to This | # ]

Numbers correct?
Authored by: Anonymous on Thursday, May 05 2011 @ 06:37 AM EDT
In the first step, Oracle reduces its claims to 3, in a second step it narrows
it to 20? That doesn't make sense!

/AVox

[ Reply to This | # ]

Corrections Thread
Authored by: bugstomper on Thursday, May 05 2011 @ 06:38 AM EDT
Please summarize in the Title box as error->correction or s/error/correction
to make it easy to scan the thread to see which errors have already been noted.

[ Reply to This | # ]

Off Topic threads
Authored by: bugstomper on Thursday, May 05 2011 @ 06:40 AM EDT
Please stay off topic here. Using HTML Formatted mode to make your links
clickable increases the fun and convenience factor of your off-topic posts.

[ Reply to This | # ]

News Picks Thread
Authored by: bugstomper on Thursday, May 05 2011 @ 06:45 AM EDT
So much News to Pick. And here is the place to pick it. Please put the title of
the News Picks article in the Title box and include a clickable link to the
article in HTML Formatted mode in the body of your comment for the convenience
of readers after the News Picks article has scrolled off the sidebar.

[ Reply to This | # ]

COMES goes here
Authored by: bugstomper on Thursday, May 05 2011 @ 06:48 AM EDT
Here is the place to submit Comes transcripts. See the Comes Tracking Page to find a document that needs transcribing.

[ Reply to This | # ]

Oracle Ordered to Reduce Claims Against Google From 132 to 3
Authored by: Anonymous on Thursday, May 05 2011 @ 06:51 AM EDT
By reducing the number of claims the court ensures that many invalid patents are
not properly challenged.

[ Reply to This | # ]

2 points
Authored by: Anonymous on Thursday, May 05 2011 @ 07:58 AM EDT
1. Authority? Oracle's right to sue over the patents is
secured by statute, and I'm pretty sure the Due Process
clause applies. I've never heard of a judge dismissing
claims for the stated reason that he was too busy to try
them. (Of course a clever judge could do it and state other
reasons - the victim might not bother to appeal.) What's
the precedent for this?

2. The tax return analogy is not bad - maybe your wife kept
copies of the paperwork and you didn't; or even if you did,
the existence of her copies is additional evidence that your
version of events isn't just made up. In this case Oracle
is apparently asking for documents about apache's side of
the (non-public) negotiations around licensing. Some of
those documents may be privileged and/or inadmissible, but
there is probably stuff that Oracle can use to rebut some of
the arguments they expect Google will make.

[ Reply to This | # ]

Appeal?
Authored by: Anonymous on Thursday, May 05 2011 @ 08:01 AM EDT
Won't Oracle appeal this decision if they don't win big?

I think software patents are vile, but they are still the law of the land. It seemed like we spent years and years with judges giving SCO every possible benefit of the doubt, presumably to make their decisions impossible to appeal. To my NAL-eyes, it seems that this judge is taking the opposite approach.

[ Reply to This | # ]

  • Appeal? - Authored by: Wol on Thursday, May 05 2011 @ 09:16 AM EDT
    • Appeal? - Authored by: cricketjeff on Thursday, May 05 2011 @ 09:31 AM EDT
      • Appeal? - Authored by: Barbie on Thursday, May 05 2011 @ 09:37 AM EDT
      • Appeal? - Authored by: Anonymous on Thursday, May 05 2011 @ 11:12 AM EDT
    • Appeal? - Authored by: Anonymous on Thursday, May 05 2011 @ 02:43 PM EDT
Oracle Ordered to Reduce Claims Against Google From 132 to 3
Authored by: webster on Thursday, May 05 2011 @ 09:48 AM EDT
.

He allowed them fewer claims than patents!

So should Oracle pick claims facing the least prior art?
.

[ Reply to This | # ]

general question about dropping claims
Authored by: Anonymous on Thursday, May 05 2011 @ 09:49 AM EDT
Not being a lawyer, as an outsider it seems like what the judge did isn't quite
fair. How can a judge limit what you can sue someone over? If I have evidence
that you infringed on 10 patents of mine, why should I not be able to sue over
all of them. I can see a judge limiting the number of items considered in a
single trial to make life bearable for the jury. But how can a judge dismiss
claims forever? Isn't that something a jury is suppose to decide? Wouldn't
Oracle be able to appeal on those grounds arguing that it was denied due
process?

[ Reply to This | # ]

Patent Thickets
Authored by: Anonymous on Thursday, May 05 2011 @ 11:29 AM EDT
What good is a thicket of patents if you only get to present from three shrubs?

-- Alma

[ Reply to This | # ]

Oracle Ordered to Reduce Claims Against Google From 132 to 3
Authored by: Anonymous on Thursday, May 05 2011 @ 11:54 AM EDT

That's like you and me being married, filing joint tax returns, and then in a divorce action, you subpoena me for my tax returns, so you can ask me questions about why they were filed the way they were.

Add taking all the old copies of the returns and supporting documents and that has happened to me.

[ Reply to This | # ]

What is a new product?
Authored by: Anonymous on Thursday, May 05 2011 @ 12:00 PM EDT

I see that they will not be allowed to assert the rest of the claims except against a new product. But what is a new product?

Suppose Google loses the case, has to pay damages for past Android infringement, and promptly modifies Android to work around the 1-3 claims that are found in this lawsuit to be infringing, so that they don't have to license the patent going forward.

Is that new version of Android a new product, so they can go after it for the claims that are not adjudicated in this lawsuit?

My expectation is that it would be a new product.

[ Reply to This | # ]

Fair? Life's not fair....
Authored by: Eeyore on Thursday, May 05 2011 @ 12:11 PM EDT
I've heard some folks saying "Oracle has evidence that Google is infringing
their patents, the judge shouldn't throw them out". There are a couple of
issues here:

1) As we have seen, allegations don't necessarily equal fact. With patent law,
if I have a patent, I can allege you have infringed my patent without ANY
evidence - you have to PROVE you don't.

2) The judge is giving Oracle and Google the chance to do some of the initial
leg work and only go to court with what you actually think you can defend.

[ Reply to This | # ]

Oracle Reduce Claims 132 to 3. Google win on 129 by fiat. Good but very Interesting.
Authored by: SilverWave on Thursday, May 05 2011 @ 01:52 PM EDT
I look forward to a fuller explanation and the background behind this.

---
RMS: The 4 Freedoms
0 run the program for any purpose
1 study the source code and change it
2 make copies and distribute them
3 publish modified versions

[ Reply to This | # ]

I'm a dude -- I wasn't there though.
Authored by: BJ on Thursday, May 05 2011 @ 02:08 PM EDT
N/T sorry.

bjd

[ Reply to This | # ]

Now if only...
Authored by: BitOBear on Thursday, May 05 2011 @ 03:54 PM EDT
Some judge somewhere needs to issue, sua sponte (spelling?), a clarification
that the "specific machine" test clearly requires that for a machine
to be specific, it must be single purpose.

I have been considering drafting a proposed bill that clearly defines the line
where software cannot be part of a specific machine. If the software runs or can
run on a machine running other software as well, other software being
applications or operating systems, then it is a general machine and not a
specific one. If the software runs or can run on a machine not purpose built for
a single physical task (e.g. the processor inside of an automtotive breaking
system) then it is not a specific machine.

If "specific machine" has any possible legal meaning, then any general
purpose machine, and any software running on a general purpose machine, is, a
priori, automatically known not to infringe any software patent.

The SCOTUS have ruled that a specific machine is required, nobody has, to the
best of my knowledge,, drawn a circle around all the non-specific machines and
say "none of _these_ machines meet that test under any
circumstances".

The presence of a discrete operating system (linux, msdos, macos etc, but not
necessarily RTXC or VxWorks) and one or more applications should automatically
prove that the machine is not "specific".

[ Reply to This | # ]

On reflection the Judge must have a reason to throw out 129 claims
Authored by: SilverWave on Thursday, May 05 2011 @ 07:32 PM EDT
So this seems to indicate that he believes they are very weak or flawed in some
way.

Or else why would he reject them?

---
RMS: The 4 Freedoms
0 run the program for any purpose
1 study the source code and change it
2 make copies and distribute them
3 publish modified versions

[ Reply to This | # ]

#1269 Motion Deeming Wrongful Default Notices Null And Void
Authored by: _Arthur on Thursday, May 05 2011 @ 10:13 PM EDT
Seems that SCO's superpriority lenders are attempting to put SCO in Default.

The trustee Edward Cahn is vaillantly trying to fight them off.

[ Reply to This | # ]

Best Response from lwd: Judge: tl;dr
Authored by: Anonymous on Friday, May 06 2011 @ 11:16 AM EDT


http://lwn.net/Articl es/441730/
Heh too good :)

[ Reply to This | # ]

Tax returns
Authored by: Anonymous on Friday, May 06 2011 @ 01:19 PM EDT
Hah. My ex-wife did exactly that.

Just to harass.

[ Reply to This | # ]

  • Tax returns - Authored by: Anonymous on Wednesday, May 18 2011 @ 06:23 AM EDT
Except as to new products. - Oracle Ordered to Reduce Claims Against Google From 132 to 3
Authored by: Anonymous on Monday, May 09 2011 @ 10:08 AM EDT
So the next update to Android is called a new product or the next variation on a
tablet, or a tablet and a keyboard, or...

I put nothing past these leaches.

[ Reply to This | # ]

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