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Oracle v. Google - Update on the Reexaminations
Tuesday, November 22 2011 @ 09:00 AM EST

As was noted in Google's filing last Friday with respect to the proposed trial plan [PDF; Text] the reexaminations of the six asserted Oracle patents are currently running largely in Google's favor. [Note: a seventh patent, the '447 patent which remains in reexamination is no longer being asserted by Oracle.] Google argues that this should sway the court in favor of staying at least the patent infringement action until final determinations on each of these reexaminations by the U.S. Patent and Trademark Office.

The most recent action by the USPTO has been the issuance of an Action Closing Prosecution on the '720 patent. ACP Dated 11-18-2011 [PDF]. In that action the USPTO maintains its rejection of all of the contested claims of the '720 patent, including the six claims asserted in the litigation. Oracle has 30 days in which to respond to the ACP and attempt to convince the examiner that the decision is misplaced.

As we have noted, the USPTO has allowed the four claims that Oracle is asserting in the '520 patent. (Notice of Intent to Issue Ex Parte Reexamination Certificate dated 10-03-2011) Interestingly, this reissue certificate cancels two claims upon which two of the asserted dependent claims rely (dependent claim 8 relies on independent claim 6, and dependent claim 20 relies on intermediate dependent claim 18; both independent claim 6 and dependent claim 18 have been rejected). Presumably the limitations of claims 6 and 18 will be subsumed into claims 8 and 20 respectively upon reissue. It is also worth noting that all told 2 independent claims and 6 dependent claims (including claims 6 and 18) of the '520 patent will be rejected as part of the reissue.

It is worth noting that Oracle is actively contesting the rejections in the '702, '476, and '205 patents, and the USPTO has not made a final determination in any of those reexaminations. In addition, the USPTO has yet to issue a non-final action in the '104 reexamination despite the fact that it issued a determination ordering a reexamination back in March of this year.

This is the table showing the status of the claims and the reexaminations as filed jointly by the parties on July 21, 2011. (See 223 [PDF; Text]) Note that at the time of this report to the court Oracle had not yet reduced the number of claims it was asserting. In addition, at the time of this report Oracle was still asserting the '447 patent.

Patent No. (type of reexam) Reexam Filed Reexam Ordered Office Action Issued Oracle Response Due / Filed Google Response Due Asserted Claims Subject To Reexam Asserted Claims Currently Rejected Asserted Claims Currently Allowed
6,125,447 (ex parte) 2/153/236/29Due 8/29n/a All (1, 2, 10, 11, 19, 20) All (1, 2, 10, 11, 19, 20)-
6,192,476 (ex parte) 2/153/236/16Due 8/16n/a All (4, 5, 6, 13, 14, 15, 21) All (4, 5, 6, 13, 14, 15, 21)-
5,966,702 (ex parte) 2/153/236/6Due 9/6n/a All (1, 6, 7, 12, 13, 15, 16) All (1, 6, 7, 12, 13, 15, 16)-
7,426,720 (inter partes) 2/154/185/5Filed 7/58/4 All (1, 4, 6, 10, 13, 15, 19, 21, 22) All (1, 4, 6, 10, 13, 15, 19, 21, 22)-
RE38,104 (ex parte) 3/13/28pending-- All (11, 12, 15, 17, 22, 27, 29, 38, 39, 40, 41)--
6,910,205 (inter partes) 2/174/14pending-- All (1, 2, 3, 8)--
6,061,520 (ex parte) 3/13/236/23Due 8/23n/a All (1, 4, 8, 12, 14, 20)- All (1, 4, 8, 12, 14, 20)

This is what that same report looks like as of November 20, 2011 with the Oracle claims now reduced, with the '447 patent no longer asserted, and with the actions by the USPTO in the reexaminations taken into account:

Patent No. (type of reexam) Reexam Filed Reexam Ordered Office Action Issued Oracle Response Due / Filed Google Response Due Asserted Claims Subject To Reexam Asserted Claims Currently Rejected Asserted Claims Currently Allowed
6,192,476 (ex parte) 2/153/236/16Filed 9/16n/a All (14) All (14)-
5,966,702 (ex parte) 2/153/236/6Filed 9/6n/a All (1, 6, 7, 12, 13, 15, 16) All (1, 6, 7, 12, 13, 15, 16)-
7,426,720 (inter partes) 2/154/185/5Filed 7/58/4 All (1, 6, 10, 19, 21, 22) All (1, 6, 10, 19, 21, 22)-
RE38,104 (ex parte) 3/13/28pending-- All (11, 27, 29, 39, 40, 41)--
6,910,205 (inter partes) 2/174/148/19Filed 10/19- All (1, 2)All (1, 2)-
6,061,520 (ex parte) 3/13/236/23Filed 8/23n/a All (1, 8, 12, 20)None All (1, 8, 12, 20)

That is, of the 26 claims that Oracle is asserting in the litigation against Google, only four such claims have been allowed. With respect to the '520 patent, which claims have been allowed, as Google pointed out in its response to the proposed trial plan Oracle has stated a limitation on those four claims in its interview with the examiner during the reexamination:

That the term “an instruction” as used in the claims of the ’520 patent refers to exactly one instruction rather than one or more instructions (USPTO Reexam Control No. 90/011,489, Interview Summary (Aug. 4, 2011)).
This "an instruction" term appears in each of the four claims of the '520 patent Oracle is asserting.

With all of these changes, here is where all of the Oracle reexaminations stand at this time (including non-asserted claims):

Oracle v. Google as of 2011-11-20























Patent No. Claims Claims Not Subject to Reexam Claims Subject to Reexam Claims Rejected Claims Confirmed Claims Surviving

Ind Dep Ind Dep Ind Dep Ind Dep Ind Dep Ind Dep
RE38104 30 11 2 8 28 3 - - - - 30 11
5966702 4 19 1 13 3 6 3 6 0 0 1 13
6061520 4 19 0 1 4 18 2 6 2 12 2 13
6125447 5 19 0 0 5 19 5 19 - - 0 0
6192476 7 14 0 0 7 14 7 10 0 4 0 4
6910205 3 11 1 8 2 3 2 3 - - 1 8
7426720 3 19 0 2 3 17 3 17 0 0 0 2
Totals 56 112 4 32 52 80 22 61 2 16 34 51
Percent of All Claims 100.00% 100.00% 7.14% 28.57% 92.86% 71.43% 39.29% 54.46% - - 60.71% 45.54%
Percent of Claims Reexamined





91.67% 79.22% 8.33% 20.78%


  


Oracle v. Google - Update on the Reexaminations | 77 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Corrections Thread
Authored by: hardmath on Tuesday, November 22 2011 @ 09:05 AM EST
Nature of correction in subject line, please.

---
Do the arithmetic or be doomed to talk nonsense. -- John McCarthy (1927-2011)

[ Reply to This | # ]

News Picks
Authored by: hardmath on Tuesday, November 22 2011 @ 09:06 AM EST
Please include a clickable link to the article when starting a
thread, as the News Picks column rolls more quickly than main
articles do.


---
Do the arithmetic or be doomed to talk nonsense. -- John McCarthy (1927-2011)

[ Reply to This | # ]

Comes Transcripts
Authored by: hardmath on Tuesday, November 22 2011 @ 09:09 AM EST

To book a document for transcribing please go here.

---
Do the arithmetic or be doomed to talk nonsense. -- John McCarthy (1927-2011)

[ Reply to This | # ]

Off-topic
Authored by: hardmath on Tuesday, November 22 2011 @ 09:11 AM EST
Off-topic but on your mind. [On topic? You're out of your
mind.]


---
Do the arithmetic or be doomed to talk nonsense. -- John McCarthy (1927-2011)

[ Reply to This | # ]

Can Oracle dig up some other patents?
Authored by: Anonymous on Tuesday, November 22 2011 @ 10:06 AM EST
I wonder whether Oracle can dig up some other patents it could have missed in
this trial, say two or three years from now.

May be, since patents are being filed all the time, but again, maybe not if the
patents were confirmed by the USPTO prior to the filing of this suit.

How does the law work in the US?

[ Reply to This | # ]

Comes Transcribing
Authored by: feldegast on Tuesday, November 22 2011 @ 10:09 AM EST
Thank you for your support, the booking page can be found here http://ww w.groklaw.net/staticpages/index.php? page=ComesBooking

---
IANAL
My posts are ©2004-2011 and released under the Creative Commons License Attribution-Noncommercial 2.0
P.J. has permission for commercial use.

[ Reply to This | # ]

The '104 and '520 claims
Authored by: bugstomper on Tuesday, November 22 2011 @ 12:52 PM EST
It looks like the only claims not yet rejected by the PTO are the '520 claims,
which passed the re-exam with the narrowing to require a single instruction
instead of multiple instructions, and the '104 which still could end up being
rejected.

The only thing about the '520 claims that Google says is not done in Android
code is the "play simulation" of the [clinit] method to find code that
performs static array initialization. That should be very easy to demonstrate in
a way that a jury could understand, if indeed there is no simulated running of
code during optimization that looks for arrays being statically initialized.

Unless Oracle tries to say that something that the code does is "play
simulation" and produces an argument to that effect which is so complex and
tortured that it just confuses the jury.

Other than that, if there is no simulation step in the optimization process than
this looks simple and fatal to any claims of infringement of the '520 claims.

The '104 claim also has a simple element that Google says is not in Android
which is fatal to Oracle's claims of infringement: All the '104 claims have to
do with optimization of byte code instructions that reference symbolic fields.
But the Dalvik code removes all symbolic references earlier in the processing
than the execution time that the '104 patent claims are talking about. There are
no symbolic reference fields so there can be no infringement.

[ Reply to This | # ]

Am I missing something from Oracle?
Authored by: bugstomper on Tuesday, November 22 2011 @ 02:17 PM EST
I have the impression that by this point of the trial both sides are supposed to
have presented what their arguments, evidence, and witnesses are going to be so
that there aren't going to be any surprises - no Perry Mason moments. Oracle has
listed the 26 claims that they say are infringed by Android code. Google has
said which elements of those claims they particularly want to focus on as not
being practiced in Android.

What I'm missing is anything from Oracle that says how they intend to prove that
Android does contain each of the elements of each of the claims. Is Oracle
allowed to say "somewhere in the Dalvik code is a method that we think
corresponds to 'play simulating cinit code to find static initialization of an
array' and we are not going to tell you where that is until we spring it on the
jury at the trial"? Google says that they are using as a defense the fact
that Android does not contain any such functionality. How can they properly
defend if they have no idea what Oracle is going to claim does implement that
functionality?

Or am I just missing which filing from Oracle contains those details?

[ Reply to This | # ]

This still makes no sense
Authored by: Anonymous on Tuesday, November 22 2011 @ 05:44 PM EST
I have read these patents. They are entirely, completely nonsense. How can
*any* claims survive? Are patent examiners really so easily fooled by
meaningless technobabble?

[ Reply to This | # ]

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