1. The exclusion of the Lindholm emails from all phases of the trial;
2. the exclusion of all evidence and argument concerning the alleged performance benefits of Android with the accused functionality;
3. the exclusion of certain aspects of the damages expert report of Dr. Iain Cockburn;
4. the exclusion of evidence attributing any “commercial success” of Java to the asserted patents; and
5. the exclusion of the documents and testimony of, and all evidence and argument relating to, Motorola Mobility, Inc.

(See, Pre-Trial Filings - Part I)

Oracle's motions in limine cover:

1. The exclusion of any evidence or argument regarding the pending, non-final reexaminations of six of the patents-in-suit;
2. the exclusion of any evidence or argument that Google relied on advice of counsel in connection with its decisions to develop and release Android;
3. the exclusion of argument or evidence at trial that any changes were made to the infringing components of the Android source code by third party original equipment manufacturers (OEMs);
4. the exclusion of any evidence or argument regarding Oracle’s and Sun’s alleged use of third party application programming interfaces (“APIs”) and past statements regarding copyright protection for interfaces generally; and
5. the exclusion of any evidence or argument contrary to the statements in Mr. Lindholm's August 6,2010 email, concerning his investigation of alternatives to Java for Android.

(See, Pre-Trial Filings - Part II)

Judge Alsup has now invited the parties to jointly submit a list of the four motions in limine that are most deserving of oral argument. (629 [PDF; Text]) Presumably, each party will name the two of its own motions it most wants to argue before the judge. How the remainder will be disposed of, given that neither party has filed a response to the motions in limine of the other, is unclear. The list is due to Judge Alsup by December 7.

Judge Alsup has also issued a supplemental order with respect to the color-coded slides he asked the parties to prepare to explain the invalidity contentions with respect to the patent claims. (631 [PDF; Text]) As was clear from the letters submitted by Google (626 [PDF; Text]) and Oracle (630 [PDF; Text]), there was some confusion as to whether the slides were to cover only contentions covering novelty and non-obviousness or novelty alone. Judge Alsup only wants the slides to address the issue of novelty, i.e., where "anticipation" is by a single reference. This will not preclude Google from arguing obviousness, only that the slides will not reflect those arguments. Also, Judge Alsup, in this supplemental order, did not address the issue raised by Google with respect to Oracle's burden of proof as to the other elements of the asserted claims.

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Docket

629 – Filed and Effective: 11/21/2011
ORDER
Document Text: ORDER FOR SUPPLEMENTAL JOINT STATEMENT TWO WEEKS BEFORE FINAL PRETRIAL CONFERENCE. Signed by Judge Alsup on November 21, 2011. (whalc1, COURT STAFF) (Filed on 11/21/2011) (Entered: 11/21/2011)

630 – Filed and Effective: 11/21/2011
Letter
Document Text: Letter from Michael A. Jacobs re: Color-Coded Handout. (Jacobs, Michael) (Filed on 11/21/2011) (Entered: 11/21/2011)

631 – Filed and Effective: 11/22/2011
ORDER
Document Text: SUPPLEMENTAL ORDER TO SUBMIT COLOR-CODED HANDOUT OF CLAIMS TO BE TRIED re 630 Letter filed by Oracle America, Inc., 626 Letter filed by Google Inc., 587 Order. Signed by Judge Alsup on November 22, 2011. (whalc1, COURT STAFF) (Filed on 11/22/2011) (Entered: 11/22/2011)

*************

Documents

629

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA

ORACLE AMERICA, INC.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.

No. C 10-03561 WHA

ORDER FOR SUPPLEMENTAL
JOINT STATEMENT TWO
WEEKS BEFORE FINAL
PRETRIAL CONFERENCE

____________________________________

By NOON ON DECEMBER 7, 2011, two weeks before the final pretrial conference, counsel shall please submit a joint list of four pending motions in limine they think are most deserving of oral argument. At least those four will be heard at the final pretrial conference. No new materials may be used at the argument without court approval.

In addition, please include an update on the progress of the PTO in reexamining the 26 claims Oracles wishes to present to the jury. Also, please advise on the timeline for resolution of the petition for writ of mandamus regarding the Lindholm email and claim of privilege. The joint statement may also include any other items that should impact on the trial date, duration, and scheduling.

IT IS SO ORDERED.

Dated: November 21, 2011.

/s/ William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

630

[Morrison Foerster letterhead]

November 21, 2011

The Honorable William H. Alsup
United States District Court, Northern District of California
450 Golden Gate Avenue
San Francisco, California 94102

Re: Oracle America, Inc. v. Google Inc., No. 3:10-CV-03561-WHA (N.D. Cal.)

Dear Judge Alsup:

I write in response to Google’s letter (ECF No. 626) regarding the color-coded handouts of the claims to be tried that were submitted pursuant to the Court’s November 1 Order (ECF No. 587).

In its letter, Google asked the Court to require Oracle “to provide its contentions as to the elements of the asserted claims, if any, missing from the prior art combinations that Google has selected.” Google already has Oracle’s contentions. Oracle provided them to Google in the form of interrogatory responses and expert reports and deposition testimony. Google’s complaint appears to be that the color-coding on the handouts should address obviousness issues. I write to explain Oracle’s approach.

The goal of this project is to create handouts that will be helpful to the jury in understanding the infringement and validity disputes between the parties. To that end, the Court ordered Google to start by identifying its best two references for anticipation purposes. The parties would then jointly work to illustrate the infringement and anticipation issues using only one copy of each claim. (ECF No. 587.)

Instead of identifying only anticipatory references, however, Google chose also to identify obviousness combinations. For example, Google asserts that claim 1 of the ’104 patent is anticipated by Gries and Chaitin (ECF No. 475 at 3). But for the handouts, Google chose Gries and the obviousness combination Davidson/AT&T. For the ’720 patent, Google does not assert that any claim is anticipated, so Google selected two obviousness combinations.

In keeping with the spirit of the Court’s order, Oracle considered how to pictorially illustrate the obviousness disputes even though the Court’s order mentioned only anticipation. But while an anticipation issue is easy to illustrate (reference A does not have claim element X), obviousness is much more difficult. In some cases, all of the claim elements can be found in the asserted references, and the dispute is about whether the combination or modification

The Honorable William H. Alsup
November 21, 2011
Page Two

would have been obvious to make. That concept cannot be illustrated by marked-up claim language. In other cases, even though Oracle contends that some claim elements are missing from the collective asserted references, there is also a dispute about how the references would be combined or modified and what would result if they were, in addition to the dispute about whether the combination or modification itself would have been obvious to make.

In each obviousness case, there is something essential to the parties’ dispute that Oracle could not figure out how to illustrate with highlighting or some other simple graphical technique in the same way as anticipation issues can be. It would be confusing rather than helpful to the jury if only some kinds of obviousness issues were illustrated in the handout, because that would implicitly suggest that some issues are important and others can be overlooked. The confusion is magnified because the issues are different for different patents, and consistency between handout charts can lead to the jury being misled about the parties’ dispute.

Oracle tried to come up with useful ways to present the obviousness issues graphically but non-argumentatively, but has not yet been successful. Oracle remains open to suggestions.

In any event, additional work on the handouts could improve their usefulness to the jury. Google declined to include legends to identify the meaning of the red underlining and the blue and gray highlighting, but in Oracle’s judgment, legends are necessary—there would seem to be no reason to ask the jury to remember what each color means.

Respectfully submitted,

/s/ Michael A. Jacobs

Michael A. Jacobs

631

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA

ORACLE AMERICA, INC.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.

No. C 10-03561 WHA

SUPPLEMENTAL ORDER
TO SUBMIT COLOR-CODED
HANDOUT OF CLAIMS TO
BE TRIED

_________________________________

There seems to be confusion between the parties regarding whether obviousness combinations should be allowed in the color-coded handout. They should not be. The color-coded handouts are strictly for evaluating anticipation by single references. Please conform accordingly.

The parties should also include a legend on each page that identifies the meaning of the red lining, and the blue and gray highlighting with the names of anticipatory references, such as “missing from Android” and “missing from Reference X.”

A new joint handout must be filed by NOON ON NOVEMBER 30, 2011.

IT IS SO ORDERED.

Dated: November 22, 2011.

/s/ William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE