Google has filed a motion [PDF]
asking leave of the court to supplement its invalidity contentions
regarding Oracle's patents, invalidity contentions it claims "it has
now determined are among its strongest in the case".
It has found prior
art, in one instance going all the way back to Multics: In
brief, the asserted patents relate to virtual machine technology that was
first developed in the 1960s, and they claim techniques that have been
widely used in software
other than virtual machines since the early days of computers. As a
result, Google's review of
the prior art encompassed many thousands of publications, patents,
and products that span at
least five decades, much of which was not easily searchable or was
only available in hard copy in
various locations.
(See Sections B& D under Argument in the Motion)
In another instance, the court's claim
construction opened up prior art that was not usable before (see Sec. A under Argument in the Motion). In
their obviously very thorough search for prior art, Google also found
references that it says demonstrate obviousness. (See Sections E, G and H under Argument in the Motion) In a fourth instance Google says
that Oracle's JavaOS itself is prior art, and JavaOS was publicly
available for more than a year prior to the asserted patent. (See Sec. C under Argument in the Motion)
Google has asked Oracle for JavaOS code, but Oracle has not been forthcoming with the requested code, which Google calls discovery abuse:
Google seeks to rely on Oracle's JavaOS product as anticipating the
claims of the '702
patent. Oracle stated in its infringement contentions that its "JavaOS"
product implements the
'702 patent, and it is undisputed that JavaOS was publicly released and
licensed more than a year
before the filing date of the '702 patent, invalidating the '702 patent
under 35 U.S.C. § 102 ("§ 102"). (See Exs. K and L.) However, Oracle did not produce
any JavaOS source code until May
2011, and has still not produced the JavaOS source code that
predates the '702 patent by a year.
In view of Google's persistence on this subject, Oracle just sent
Google a letter trying to amend
its infringement contentions without leave of the Court, and argue
that its identification of
JavaOS 1.0 as a product practicing the patent was "in error."
(See Ex. M.) Thus, Google's
difficulty in understanding and charting the relevant JavaOS
information is a direct result of
Oracle's own discovery abuse, as Oracle desperately tries to keep its
own invalidating product
out of the case.
Finally, one reference, while not
technically prior art, turned out to be significant in demonstrating
obviousness, due to an admission by the same inventor elsewhere:
Google seeks to add new charts F-7 and G-4 that disclose § 103
obviousness defenses for
the '447 and '476 patents. While Google had the Gong reference
when it served its Initial
Contentions, the materiality of Gong was not apparent because it
was published after the filing
date of the '447 and '476 patents. Thus, it is not technically
prior art. Upon further inspection,
however, Gong turns out to be highly material to the question of
these patents' validity. The
reference, which was authored by the named inventor on both the '447
and '476 patents,
essentially admits that the security methods claimed in the patents
would have been obvious
since they are just a collection of well-known security techniques.
(See Ex. O, Gong at
Introduction ("It is worth emphasizing that this work by itself does
not claim to break significant
new ground in terms of the theory of computer security. Instead, it
offers a real world example
where well-known security principles are put into engineering practice
to construct a practical
and widely deployed secure system.").)
An Oracle lawyer conceded that there was no prejudice if Google
supplemented its invalidity defenses, although now Oracle wishes to take that position back, Google tells the
court, but it'd be a crying shame if such strong evidence of invalidity
and obviousness were to be disallowed on a technicality.
And how extensive were Google's efforts to find prior art? Well, according to the declaration of Mark Francis, quite extensive. This is part of what Google says it did to find prior art, from the Declaration of
Mark H. Francis [PDF], attached to Google's motion:
2. A number of attorneys, general researchers, experts, and commercial
search firms participated in Google’s search to identify many thousands
of potentially relevant prior art publications.
3. All such prior art publications were reviewed by an individual with a
background in software programming and determined to be relevant to one
or more of the patents-in-suit.
4. Google’s prior art search encompassed a wide variety of sources and
techniques to identify prior art dating back to the 1960’s, including
searching on commercial and publicly-available electronic databases such
as Google Scholar, the Patent Office’s patent database, the Institute
for Electrical and Electronics Engineers (IEEE) database, the
Association for Computing Machinery (ACM) database, and electronic
catalogs provided by a number of public and private universities with
extensive print collections of programming and systems materials.
5. Much of this searching was based on a manual identification and
review of these prior art materials.
6. One search technique employed to locate prior art was the use of
bibliographies to perform forward and reverse citation searches on many
of the relevant publications.
7. For many of the older prior art publications, citation searching
required manual adjustment of search criteria due to inconsistencies in
citation formats.
8. Review of electronic materials and conversations with experts in the
field identified a number of potential prior art systems and materials
that were not easily accessible through traditional search engines.
9. Google’s searchers manually reviewed extensive collections of prior
art materials relating to Multics, IBM System 360, and other systems
dating back to the 1960’s.
10. Many of these older prior art documents were not indexed or easily
searchable.
11. Some of the identified prior art documentation was only available
from individuals’ personal collections.
12. Once located, many such prior art documents were difficult to
understand without first learning about the particular computer
platforms they discussed.
13. Each of these older prior art systems had its own distinctive
terminology and many had system architectures foreign to all but
experienced computer programmers and researchers.
14. Google’s attorneys and experts examined a number of physical prior
art documents in university libraries across the country looking for
relevant material in textbooks, conference proceedings, dissertations,
and product documentation.
15. Google’s attorneys also searched through various websites (eBay.com,
abebooks.com and others) and purchased prior art textbooks and product
documentation that contained prior art or identified other relevant
publications or products.
16. Google has also conducted searches of Oracle’s massive document
production to identify relevant prior art material, but the voluminous
nature of that production, combined with limited available metadata and
search context, lack of searchable text, and disorganized dump of the
production, has made searching difficult and time consuming.
17. Google has expended over fifteen hundred hours [emphasis added] person hours in the
search process, involving over fifteen individuals, including technical
consultants and experts.
Pay attention folks, this is like a class in how to find prior art.
Oh, and those Oracle (Sun) inventors' documents that could not be produced because they had been, according to Oracle, destroyed. Well, according to Mr. Francis maybe not so much:
19. Attached to this declaration as Exhibit A is a true and correct copy of
Oracle’s Supplemental Response to Google Interrogatory No. 13 (dated April 25, 2011),
stating that the inventors’ documents had been destroyed (“Oracle no longer has custodial
data for the following people because they left employment at Sun Microsystems some
time ago and their data was removed from Sun’s systems pursuant to Sun’s policies: Lars
Bak … Nedim Fresko, Robert Griesemer, … Li Gong, … Richard Tuck, …Frank
Yellin.”) (highlights added).
20. Attached to this declaration as Exhibit B is a true and correct copy of an
excerpt from the transcript of the April 14, 2011 deposition of Lisa J. Ripley
acknowledging that the inventors’ documents had been destroyed (highlights added).
21. Attached to this declaration as Exhibit C is a true and correct copy of a
letter from Oracle to Google on June 22, 2011, stating that Oracle “recently identified”
documents associated with two of the named inventors.
Here are the
filings:
07/08/2011 - 208
- MOTION for Leave to File Supplement Invalidity Contentions filed by
Google Inc.. (Attachments: # 1 Affidavit
Declaration of Mark Francis in support of Motion for Leave to Supplement
Invalidity Contentions, # 2 Proposed Order
Proposed Order Granting Google Inc's Motion for Leave to Supplement
Invalidity Contentions)(Sabnis, Cheryl) (Filed on 7/8/2011)
(Entered: 07/08/2011)
Here is the Google motion, as text:
***************************
ROBERT A. VAN NEST - #84065
[email]
CHRISTA M. ANDERSON - #184325
[email]
KEKER & VAN NEST LLP
[address, phone, fax]
DONALD F. ZIMMER, JR. (SBN 112279)
[email]
CHERYL A. SABNIS (SBN 224323)
[email]
KING & SPALDING LLP
[address, phone, fax]
SCOTT T. WEINGAERTNER (Pro Hac Vice)
[email]
ROBERT F. PERRY
[email]
BRUCE W. BABER (Pro Hac Vice) [email]
KING & SPALDING LLP
[address, phone, fax]
IAN C. BALLON (SBN 141819)
[email]
HEATHER MEEKER (SBN 172148)
[email]
GREENBERG TRAURIG, LLP
[address, phone, fax]
Attorneys for Defendant
GOOGLE INC.
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
___________________
ORACLE AMERICA, INC.
Plaintiff,
v.
GOOGLE INC.
Defendant.
________________________
Case No. 3:10-cv-03561-WHA
Honorable Judge William H. Alsup
Hearing Date: August 18, 2011
Hearing Time: 2:00 p.m.
DEFENDANT GOOGLE INC.'S
MOTION FOR LEAVE TO
SUPPLEMENT
INVALIDITY
CONTENTIONS
_______________________
TABLE OF CONTENTS
I. INTRODUCTION
.................................................................................................................
1
II. LEGAL STANDARDS
........................................................................................................
2
III. BACKGROUND FACTS
..................................................................................................
3
A. Google's Difficult Search for Prior Art
.......................................................................... 3
B. Procedural History
..........................................................................................................
4
IV. ARGUMENT
.....................................................................................................................
5
A. '104 Patent Charts A-9 and A-12, § 103 (AAPA/Rau) and § 103
(Gries/Rau)
.....................................................................................................................
5
B. '104 Patent, Chart A-10, § 103 (Tafvelin in view of
dynamic linking as
described in Daley, Krakowiak, and/or
Vyssotsky).........................................................
6
C. '702 Patent, § 102 (JavaOS)
...........................................................................................
6
D. '702 Patent, Chart B-4, § 103 (Multics Segment Binder as
Described in
Organick, Honeywell, and/or Vyssotsky)
........................................................................ 7
E. '205 Patent; Charts E-9, E-10, E-11; § 103
(Wakeling/Magnusson), § 103
(Lewis/Magnusson), § 103
(Deutsch/Magnusson)..........................................................
8
F. Defenses raised in February and March 2011 as part of the
reexamination
proceedings before the U.S. Patent
Office......................................................................
8
G. '447 Patent, Chart F-6, § 103 (Wahbe/Java Language
Specification); '476
Patent, Chart G-6, § 103 (Roskind/Roskind Patent)
....................................................... 9
H. '447 patent, Chart F-7, § 103 (Gong); '476 patent,
Chart G-4, § 103 (Gong)................ 9
I. § 101/102 Printed Matter Defense
................................................................................
10
IV. CONCLUSION
.................................................................................................................
10
i
TABLE OF AUTHORITIES
Page(s)
CASES
Acco Brands, Inc. v. PC Guardian AntiTheft Products, Inc.,
No. 04-cv-03526, 2008 U.S. Dist. LEXIS 88142 (N.D. Cal. May
22, 2008)............................2
IXYS Corp. v. Advanced Power Tech., Inc.,
321 F. Supp. 2d 1133 (N.D. Cal. 2004)
....................................................................................8
The Bd. of Trustees of Leland Stanford Junior Univ. v. Roche
Molecular Sys., Inc.,
No. 05-cv-04158, 2008 U.S. Dist. LEXIS 16556 (N.D. Cal. Mar. 4,
2008) ................. 2-3, 4, 8
Vasudevan Software, Inc. v. IBM,
No. 09-cv-05897, 2011 U.S. Dist. LEXIS 33132 (N.D. Cal. Feb. 18,
2011) ............................2
Yodlee, Inc. v. CashEdge, Inc.,
No. 05-cv-1550, 2007 U.S. Dist. LEXIS 39564 (N.D. Cal. May 17,
2007)..............................2
STATUTES
35 U.S.C. §
101..............................................................................................................................10
35 U.S.C. §
102......................................................................................................................
6-7, 10
35 U.S.C. §
103......................................................................................................................
passim
OTHER AUTHORITIES
Patent L.R. 3-3
.................................................................................................................................8
Patent L.R. 3-6
.......................................................................................................................
passim
ii
PLEASE TAKE NOTICE that on August 18, 2011 at 2:00 p.m., or
as soon thereafter as
counsel may be heard, Defendant Google Inc. ("Google") will, and
hereby does, respectfully move
for leave to supplement its invalidity contentions. This Motion is
based on the following
memorandum of points and authorities in support, the Declaration of
Mark H. Francis ("Decl.") and
accompanying exhibits, the entire record in this matter, and on such
evidence as may be presented at
the hearing of this Motion.
I. INTRODUCTION
In this motion, Google seeks leave to supplement its
invalidity contentions with certain
invalidity defenses that it has now determined are among its
strongest in the case. In the five and
a half months that have passed since Google served its invalidity
contentions ("Initial
Contentions"), the Court has issued a claim construction order that
opened the door to some
additional invalidity defenses and Google has developed others in the
course of discovery and its
ongoing search and analysis of the voluminous and highly technical
prior art in the case both of
which are recognized grounds for "good cause" under Patent Local Rule
3-6. Although Oracle
has refused to consent to supplementation, it cannot deny that during
that five and a half months
Google has repeatedly informed it of potential changes to Google's
invalidity contentions.
Oracle also cannot deny that its refusal to provide discovery into its
JavaOS product has delayed
Google's investigation of a key piece of prior art. Oracle's claim of
prejudice rings hollow in
light of the fact that it has had invalidity claim charts for almost
all of the references at issue
since May 16, and in some cases months earlier.
Both parties have known since May that the scope of this
case would soon be reduced by
more than half, once Oracle clarified which 50 claims out of the 132
claims originally asserted
it actually intended to pursue at trial. Had Google filed this motion
before Oracle narrowed its
case and included all of the potential changes to its invalidity
contentions, the resulting motion
would have been several times larger than this one, and the bulk of it
would have been mooted
almost immediately by the parties' narrowing decisions. The burden on
the parties and the Court
would have been even more severe had Google filed successive motions
for each set of
1
discoveries over the course of the spring. Under these
circumstances, where the contents of the
supplemental contentions have already been disclosed, leaving no
reason to subject the parties
and the Court to unnecessary briefing, it would elevate form over
substance to penalize Google
by depriving it of several of its strongest invalidity defenses.
See Yodlee, Inc. v. CashEdge, Inc.,
No. 05-cv-1550, 2007 U.S. Dist. LEXIS 39564 at *4 (N.D. Cal. May 17,
2007) ("The Patent
Local Rules supplement the Civil Local Rules and the Federal Rules of
Civil Procedure, which
are to be construed to secure the just, speedy, and inexpensive
determination of every action. ... [I]t would be unjust for information
so highly material to the merits to be avoided on the basis of
such mere technicalities") (citations and quotations omitted).
For the foregoing reasons, as explained further below, Google
respectfully requests that
the Court grant leave for it to supplement its invalidity contentions.
II. LEGAL STANDARDS
Patent Local Rule 3-6 provides that a party may supplement its
contentions "by order of
the Court upon a timely showing of good cause." The rule provides
"[n]on-exhaustive
examples" of circumstances that may support a finding of good cause,
including "a claim
construction by the Court different from that proposed by the party
seeking amendment" and
"recent discovery of material, prior art despite earlier diligent
search." Other factors that courts
consider in the good cause determination include "the relevance of the
newly-discovered prior
art, whether the request to amend is motivated by gamesmanship, [and]
the difficulty of locating
the prior art," Acco Brands, Inc. v. PC Guardian AntiTheft
Products, Inc., No. 04-cv-03526,
2008 U.S. Dist. LEXIS 88142 at *5 (N.D. Cal. May 22, 2008), whether
movants were diligent in
amending their contentions, and whether the other party would be
prejudiced if the motion were
granted. Vasudevan Software, Inc. v. IBM, No. 09-cv-05897,
2011 U.S. Dist. LEXIS 33132 at
*4-5 (N.D. Cal. Feb. 18, 2011). In weighing the effect of any alleged
delay in moving for leave
to amend, courts consider whether movants acted promptly in
communicating potential changes
to their contentions to opposing parties, thereby minimizing or
eliminating the risk of prejudice.
See, e.g., The Bd. of Trustees of Leland Stanford
Junior Univ. v. Roche Molecular Sys., Inc., No.
2
05-cv-04158, 2008 U.S. Dist. LEXIS 16556 at *8-9 (N.D. Cal. Mar.
4, 2008).
III. BACKGROUND FACTS
A. Google's Difficult Search for Prior Art
The accompanying Declaration of Mark H. Francis details
Google's search for relevant
art. (Decl. at ¶ 1-3.) In brief, the asserted patents relate to
virtual machine technology that was
first developed in the 1960s, and they claim techniques that have been
widely used in software
other than virtual machines since the early days of computers. As a
result, Google's review of
the prior art encompassed many thousands of publications, patents,
and products that span at
least five decades, much of which was not easily searchable or was
only available in hard copy in
various locations. (Decl. at ¶ 2, 4-16.)
Compounding the difficulty of the search was the fact
that technical terms used in the
patents are not used consistently in the prior art not because the
prior art does not disclose the
concepts, but because the terms used to describe the same techniques
have changed over the past
fifty years. As a result, even where documents were electronically
available, keyword searching
was often ineffective and a more traditional brute force review was
necessary. (Decl. at ¶ 13.)
Moreover, Google lacked access to one of the key starting
points for a prior art search:
the inventors' documents and records. Here, there are seven inventors
named on the seven
asserted patents, none of whom are still employed by Oracle.
Throughout the duration of
discovery, Oracle represented that all documents from the named
inventors of the patents had
been destroyed, and provided testimony to that effect on April 14,
2011.1 (See Exs. A
and B.)
As a result, Google has been hampered in investigating when the
inventions were conceived,
who was involved, whether any products actually implemented the
invention, and what prior art
was known to the inventors.2
3
Google's search for relevant prior art has been ongoing
throughout this litigation, and the
wide-ranging scope of the relevant art means that additional avenues
for research have appeared
along the way, as in the case of the five references discovered after
Oracle narrowed its claims.
Google only learned of those references by speaking with additional
experts it retained in May.
In total, Google has expended over fifteen hundred person hours in
the search process, involving
over fifteen individuals, including technical consultants and
experts. (Decl. at ¶ 17.)
B. Procedural History
Google served its Initial Contentions in January of this year.
It disclosed additional
invalidity defenses to Oracle in February and March 2011, when Google
filed reexamination
requests with the U.S. Patent Office, including detailed claim
charts. Oracle and the law firm of
Morrison & Foerster, Oracle's trial counsel here, have been actively
involved in the
reexamination proceedings and thus privy to Google's disclosures in
that context. Google
repeatedly requested Oracle's non-opposition to the instant motion for
leave, and even disclosed
a draft of its supplemental contentions and claims charts to Oracle
in May 2011. (See Exs. D-G.)
See Bd. of Trustees, 2008 U.S. Dist. LEXIS 16556 at
*10-11 (granting a motion for leave to
supplement when the disclosing party "did not have its head in the
sand" and "it immediately
served amended contentions" upon discovery of new grounds). On June
1, by agreement of the
parties (Dkt. No. 144) and approval of the Court (Dkt. No. 147),
Oracle limited its allegations to
50 patent claims. On June 15, Google responded by limiting its
invalidity defenses to six
grounds per patent claim, for a total of 48 invalidity defenses, only
five of which were previously
unknown to Oracle.
Oracle's counsel Marc Peters conceded during a
meet-and-confer call on May 23, 2011
that there would be no prejudice to Oracle if Google supplemented its
invalidity contentions.
Google memorialized Mr. Peters' concession in a letter to Oracle's
counsel on May 25, and in a
response to that letter on May 31, Oracle did not dispute it.
(See Exs. H and I.) Although Oracle
4
now claims that it would not have made that statement had it known
how many of the
subsequently-disclosed defenses Google intended to use at trial, that
argument makes no sense.
If Oracle would not have been prejudiced by Google's adding all of
its subsequently-disclosed
defenses to its original Invalidity Contentions, it cannot be any
more prejudiced by the addition
of just a small subset of those defenses.
IV. ARGUMENT
Google's bases for good cause align directly with the examples
prescribed by the Patent
Local Rules.
A. '104 Patent Charts A-9 and A-12, § 103 (AAPA/Rau) and § 103
(Gries/Rau)
Google seeks to add new charts A-9 and A-12 that disclose 35
U.S.C. § 103 ("§ 103")
obviousness combinations based on the Rau reference. These
defenses respond to the Court's
Claim Construction Order, which rejected Google's proposed claim
constructions for both
"intermediate form (object) code" and "resolve." (See Dkt. No.
137 at 17, 23-25.) Specifically,
Google's proposed construction of "resolve" required that a symbolic
reference be "replace[d] at
least for the life of the process." In contrast to Google's proposed
construction, Rau warns that
"[a]ttempting to retain the [resolved] version [of an instruction] for
extended periods of time will
entail the use of large amounts of memory . . . [and may] defeat the
purpose of using an
[interpreted language]." (See Ex. J, Rau at 71.) Thus,
Rau's disclosure did not read directly on
Google's proposed construction. However, Rau does read on the
Court's construction, which
requires only the "determining [of] the numerical memory-location
reference that corresponds to
[a] symbolic reference." Accordingly, the Rau reference has
become more important in light of
the Court's construction of "resolve."
Rau's materiality is further emphasized in light of
the Court's construction of
"intermediate form (object) code," which requires that the code be
"executable" (Dkt. No. 137 at
17), because Rau discloses an intermediate form that is
executable (i.e., may be interpreted).
(See Ex. J, Rau at 67 ("Given a host architecture and a
high level language, one could either
interpret the latter directly, compile it into the machine language or
compile it into an
5
intermediate language which is then interpreted.").) Accordingly,
Google's supplementation is
warranted. See Patent L.R. 3-6(a).
Oracle suffers no prejudice as a result of this
supplementation, as supplemental charts A-9 and A-12, or their
equivalent, were provided to Oracle on or before May 16, 2011.
B. '104 Patent, Chart A-10, § 103 (Tafvelin in view of
dynamic linking as described in
Daley, Krakowiak, and/or Vyssotsky)
Google seeks to add new chart A-10 that discloses a § 103
obviousness combination
based on Tafvelin in view of Daley, Krakowiak, and/or
Vyssotsky. Google discovered each of
these references only after serving its Initial Contentions, despite
earlier diligent search. (Decl.
at ¶ 18.)3 See
Patent L.R. 3-6(b). Google provided chart A-10 based on Tafvelin
and Daley to
Oracle on May 16, 2011. Daley was cited for its disclosure of
the dynamic linking feature that
has been part of the Multics operating system since the 1960s. After
Google disclosed Tafvelin
and Daley to Oracle, one of Google's retained experts discovered
Krakowiak and Vyssotsky.
These two references disclose the same Multics dynamic linking system
that is disclosed in
Daley, and simply provide additional information about this
feature. Because Oracle was
already aware of Multics dynamic linking as a result of Google's
disclosure of Daley, Oracle
does not suffer any prejudice as a result of the later disclosure of
Krakowiak and Vyssotsky. For
at least these reasons, the Court should allow supplemental chart A-10.
See Patent L.R. 3-6(b)
("good cause include[s] ... recent discovery of material, prior art
despite earlier diligent search").
C. '702 Patent, § 102 (JavaOS)
Google seeks to rely on Oracle's JavaOS product as
anticipating the claims of the '702
patent. Oracle stated in its infringement contentions that its "JavaOS"
product implements the
'702 patent, and it is undisputed that JavaOS was publicly released and
licensed more than a year
before the filing date of the '702 patent, invalidating the '702 patent
under 35 U.S.C. § 102 ("§
6
102"). (See Exs. K and L.) However, Oracle did not produce
any JavaOS source code until May
2011, and has still not produced the JavaOS source code that
predates the '702 patent by a year.
In view of Google's persistence on this subject, Oracle just sent
Google a letter trying to amend
its infringement contentions without leave of the Court, and argue
that its identification of
JavaOS 1.0 as a product practicing the patent was "in error."
(See Ex. M.) Thus, Google's
difficulty in understanding and charting the relevant JavaOS
information is a direct result of
Oracle's own discovery abuse, as Oracle desperately tries to keep its
own invalidating product
out of the case. Given Oracle's untimely production of this highly
relevant prior art evidence,
Oracle should not now be heard to complain that Google has not
provided invalidity charts for
JavaOS. See Patent L.R. 3-6(c) ("good cause [in the context of
infringement contentions]
include[s] ... recent discovery of nonpublic information..."); see
also Patent L.R. 3-6(b).
Google specifically requests the ability to further supplement its
contentions with invalidity
charts based on JavaOS after Oracle has produced all relevant
documents and source code.
D. '702 Patent, Chart B-4, § 103 (Multics Segment Binder as
Described in Organick,
Honeywell, and/or Vyssotsky)
With the exception of Vyssotsky, Google disclosed
everything in this supplemental
defense in its Initial Contentions. Google discovered the
Vyssotsky reference only after serving
its Initial Contentions, despite earlier diligent search. See
Patent L.R. 3-6(b). As discussed
above in section IV.A.2, Vyssotsky discloses the dynamic
linking feature of the Multics operating
system. This feature, also known as the Multics segment binder, is
similarly described in
Organick and Honeywell, and Google seeks to supplement
chart B-4 with the additional
description of this system that is found in Vyssotsky. Because
Google disclosed this system to
Oracle in the Initial Contentions, Oracle suffers no prejudice as a
result of this supplementation.
Furthermore, supplemental chart B-4 has already been provided to
Oracle, weeks in advance of
expert reports, and in particular the rebuttal expert reports to
which these contentions will be
most relevant. For at least these reasons, the Court should allow
supplemental chart B-4. See
Patent L.R. 3-6(b) ("good cause include[s] ... recent discovery of
material, prior art despite
7
earlier diligent search").
E. '205 Patent; Charts E-9, E-10, E-11; § 103
(Wakeling/Magnusson), § 103
(Lewis/Magnusson), § 103 (Deutsch/Magnusson)
Google seeks to add supplemental charts E-9, E-10, and E-11.
These charts represent
§ 103 obviousness combinations based on references that were charted
in Google's Initial
Contentions as § 102 anticipation references. In its Initial
Contentions, Google specifically
disclosed its intention to use its § 102 references as § 103 prior
art in combinations with other
charted references. (See Ex. N.) See Bd. of Trustees,
2008 U.S. Dist. LEXIS 16556 at *9 (citing
IXYS Corp. v. Advanced Power Tech., Inc., 321 F. Supp. 2d 1133,
1153 n.19(N.D. Cal. 2004)
(finding that plaintiff "has long been on notice of these potential
combination [sic]. In the
interests of privileging substance over form, the court will proceed
to address these most
pertinent-and most well-known-of combinations.")). Except for the fact
that the Magnusson
reference is combined with Wakeling, Lewis, and
Deutsch, no new material has been added to
any of the charts that Google previously provided in its Initial
Contentions. Accordingly, Oracle
has been on notice of the specific prior art references and Google's
reservation of rights to
combine these references as § 103 combinations. Oracle suffers no
prejudice as a result of this
supplementation, as supplemental charts E-9 through E-11, or their
equivalents, were provided to
Oracle on or before May 16, 2011.
F. Defenses raised in February and March 2011 as part of
the reexamination
proceedings before the U.S. Patent Office.
Google seeks to supplement charts A-2 and A-3 ('104 patent);
to add new charts C-8, C-9, C-11 ('720 patent); to add new charts D-5
and D-6 ('520 patent); and to add new chart F-5
('447 patent). Within four to eight weeks of serving its Initial
Contentions, these references were
all submitted to the U.S. Patent Office in reexamination requests
(and thereby disclosed to
Oracle). Each reexamination request included detailed invalidity
charts for these references in
conformance with Patent L.R. 3-3. Accordingly, Oracle suffers no
prejudice as a result of this
supplementation as it has been on notice of these invalidity defenses
since at least early March.
8
G. '447 Patent, Chart F-6, § 103 (Wahbe/Java Language
Specification); '476 Patent,
Chart G-6, § 103 (Roskind/Roskind Patent)
Google seeks to add new charts F-6 and G-6 that disclose §
103 obviousness
combinations that render the claims of the '447 and '476 patents
invalid. While Google
possessed the Java Language Specification and the Roskind
Patent before serving its Initial
Contentions, neither was sufficient on its own to anticipate the
claims of the respective patent.
Google discovered Wahbe and the other Roskind
reference only after serving its Initial
Contentions, despite earlier diligent search. See Patent L.R.
3-6(b). Oracle suffers no prejudice
as a result of this supplementation, as charts F-6 and G-6 have
already been provided to Oracle,
weeks in advance of expert reports, and in particular the rebuttal
expert reports to which these
contentions will be most relevant.
H. '447 patent, Chart F-7, § 103 (Gong); '476 patent, Chart
G-4, § 103 (Gong)
Google seeks to add new charts F-7 and G-4 that disclose § 103
obviousness defenses for
the '447 and '476 patents. While Google had the Gong reference
when it served its Initial
Contentions, the materiality of Gong was not apparent because it
was published after the filing
date of the '447 and '476 patents. Thus, it is not technically
prior art. Upon further inspection,
however, Gong turns out to be highly material to the question of
these patents' validity. The
reference, which was authored by the named inventor on both the '447
and '476 patents,
essentially admits that the security methods claimed in the patents
would have been obvious
since they are just a collection of well-known security techniques.
(See Ex. O, Gong at
Introduction ("It is worth emphasizing that this work by itself does
not claim to break significant
new ground in terms of the theory of computer security. Instead, it
offers a real world example
where well-known security principles are put into engineering practice
to construct a practical
and widely deployed secure system.").) Oracle suffers no prejudice as a
result of this
supplementation, as supplemental charts F-7 and G-4, or their
equivalent, were provided to
Oracle as early as May 16, 2011.
9
I. § 101/102 Printed Matter Defense
Google also seeks to provide further elaboration of its
invalidity defense based on the fact
that the identified claims are non-statutory subject matter. Although
Google originally identified
that defense as one based on § 101, it has since learned that courts
conduct what is in effect the
same analysis under both § 101 and § 102. Although it is unclear if
it is even necessary for
Google to amend its contentions to raise this point, which simply
clarifies the potential legal
bases for a "printed matter" defense, Google has included this
contention in the interest of clear
and open disclosure. This issue is essentially a question of law and
thus has no impact on fact or
expert discovery. Because the basic defense was identified in
Google's Initial Contentions and
presented in its present form as early as May 16, 2011, Oracle
suffers no prejudice as a result of
this supplementation.
IV. CONCLUSION
For the forgoing reasons, Google respectfully requests
that it be granted leave to include
in its narrowed invalidity contentions certain theories not included
in its Initial Contentions.
10
DATED: July 8, 2011 KING & SPALDING
LLP
By: /s/ Scott
Weingaertner
ROBERT A. VAN NEST - #84065
[email]
CHRISTA M. ANDERSON -
#184325
[email]
KEKER & VAN NEST LLP
[address, phone, fax]
SCOTT T. WEINGAERTNER
(Pro Hac Vice)
[email]
ROBERT F. PERRY
[email]
BRUCE W. BABER (Pro Hac
Vice)
[email]
MARK H. FRANCIS (Pro Hac
Vice)
[email]
KING & SPALDING LLP
[address, phone, fax]
DONALD F. ZIMMER, JR. (SBN
112279)
[email]
CHERYL A. SABNIS (SBN
224323)
[email]
KING & SPALDING LLP
[address, phone, fax]
ATTORNEYS FOR DEFENDANT
GOOGLE INC.
I hereby attest that Mark H. Francis concurs in the e-filing of
this document.
/s/
Cheryl A. Sabnis /s/
___________________
1 Oracle did produce
documents from one named inventor, James Gosling, but not during the
1990-93 timeframe,
and Gosling's '104 patent bears an initial filing date of December
22, 1992.
2 Just weeks ago, however,
Google was informed that Oracle had suddenly discovered
documents associated with two of the named inventors (one of whom had
already been deposed),
but it is unclear if Oracle has produced those documents yet.
(See Ex. C.) To the extent Oracle discovers and produces new
documents that are material to Google’s invalidity defenses, Google
reserves the right to seek permission from the Court to provide further
supplementation.
3 Tafvelin was
published in 1975, Daley in 1968, and Vyssotsky in 1965.
These publication
dates illustrate the breadth of Google's search for prior art and
that the well-known techniques
claimed in the '104 patent date back to the early days of computers.
11
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