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Oracle v. Google - That Didn't Take Long
Friday, December 02 2011 @ 09:00 AM EST

No sooner did the parties file their respective positions on the subject of patent marking with the court (see Proof of Patent Marking) than Judge Alsup has issued an order on how to move forward. (636 [PDF; Text]) Except for the deadlines (Judge Alsup allowing more time for responses than Google had proposed), the court has, as we anticipated, largely adopted the approach suggested by Google, although at this first step Judge Alsup is only interested in getting a complete list of products the parties contend embody the patents. Where the court then elects to go remains to be seen.

Google's proposal:

Google proposes that by December 9, 2011, for each of the 26 asserted patent claims, Oracle identify each Oracle product or Oracle-licensed product that allegedly practices the claim, and the time period during which the product allegedly was marked. By December 16, Google will respond and identify which contentions in Oracle’s submissions it would be able to stipulate to, and which contentions it will challenge at trial. ... To the extent any disputes remain in view of the above disclosures (or should the Court not require such disclosures) both Google and Oracle will need to present evidence concerning whether or not Oracle (or Oracle-licensed) products practiced the patents-in-suit before July 20, 2010—the date upon which Oracle first notified Google of alleged infringement.


Judge Alsup's order:

Counsel for Oracle shall identify, for each of the 26 asserted claims, each Oracle product, Oracle-licensed product, Sun product, or Sun-licensed product that practiced the claim during the alleged damages period from January 1, 2007 through July 20, 2010, the time of actual notice. This must be filed by DECEMBER 16, 2011. In making this submission, counsel shall keep in mind that they are officers of the court and full candor is required.

By DECEMBER 30, 2011, counsel for Google shall respond and identify any further products by Oracle or Sun that practiced any of the 26 asserted claims, specifying with particularity which ones and why. Counsel shall keep in mind that they are officers of the court and full candor is required. Mere allegations will not suffice. Google will only list products they can prove practiced the asserted claims.

The course adopted by the court is both prudent and efficient. Clearly, the issue of whether the apparatus claims being asserted by Oracle (the claims that begin with, for example: "an apparatus," "a computer program product," "a data processing system," or "a computer-readable storage medium") are embodied in products can be determined now, and knowing whether there is evidence to support those contentions before the trial begins will spur the matter along. Once Judge Alsup has seen the available evidence, he can then decide whether it is worth pursuing further at this time or whether the issue is best handled at trial.

It is also interesting that the judge has warned both parties "counsel shall keep in mind that they are officers of the court and full candor is required." In other words, each party had best be diligent in their search for evidence and as accurate as possible in their assessment of that evidence.


***********

Docket

636 – Filed and Effective: 12/01/2011
ORDER
Document Text: ORDER REGARDING PATENT MARKING re 635 Statement filed by Google Inc., 634 Statement filed by Oracle America, Inc.. Signed by Judge Alsup on December 1, 2011. (whalc1, COURT STAFF) (Filed on 12/1/2011) (Entered: 12/01/2011)


***********

Documents

636

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 REGARDING
PATENT MARKING

________________________________________

Having read the parties’ letters dated November 30, 2011, counsel are requested to show cause by 5:00 PM TOMORROW why the following procedure should not be adopted in order to streamline and manage the trial.

Counsel for Oracle shall identify, for each of the 26 asserted claims, each Oracle product, Oracle-licensed product, Sun product, or Sun-licensed product that practiced the claim during the alleged damages period from January 1, 2007 through July 20, 2010, the time of actual notice. This must be filed by DECEMBER 16, 2011. In making this submission, counsel shall keep in mind that they are officers of the court and full candor is required.

By DECEMBER 30, 2011, counsel for Google shall respond and identify any further products by Oracle or Sun that practiced any of the 26 asserted claims, specifying with particularity which ones and why. Counsel shall keep in mind that they are officers of the court and full candor is required. Mere allegations will not suffice. Google will only list products they can prove practiced the asserted claims.

After reviewing these submissions, the Court will determine the appropriate next steps.

IT IS SO ORDERED.

Dated: December 1, 2011.

/s/ William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

2


  


Oracle v. Google - That Didn't Take Long | 181 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Oracle v. Google - That Didn't Take Long
Authored by: Anonymous on Friday, December 02 2011 @ 09:19 AM EST
Judge Alsup just put the kibosh on Google's lawyers' Holiday plans

[ Reply to This | # ]

Corrections Thread
Authored by: bugstomper on Friday, December 02 2011 @ 09:23 AM EST
Please summarize in the Title box error->correction or s/error/correction/ to
make it easy for Mark or PJ to scan to see what needs to be corrected and to
make it easy for readers to see what corrections have already been reported.

[ Reply to This | # ]

Off Topic threads
Authored by: bugstomper on Friday, December 02 2011 @ 09:24 AM EST
Please stay off topic in these threads. Do consider using HTML Formatted mode to
make your comments pretty and your links clickable.

[ Reply to This | # ]

News Picks Thread
Authored by: bugstomper on Friday, December 02 2011 @ 09:26 AM EST
Pick your News here. Please put the title of the News Picks article you are
commenting on in the Title box of your comment. That makes it so much easier for
the reader who scans the headers to see what they are about.

Also please use include a link to the article in your comment, preferably using
HTML Formatted mode to make it clickable. That makes it easy for readers to find
the article after it has scrolled off the News Picks sidebar.

Hint: To avoid the Geeklog bug that sometimes adds an extra space in the text of
a link or worse breaks the link completely, add a space in between the closing
'>' of the tag and the text of the link, as in the following example.

<a href="http://example.com/a?foo"> Link</a>

That space before the text " Link" prevents that bug from triggering.

[ Reply to This | # ]

Comes transcripts here
Authored by: bugstomper on Friday, December 02 2011 @ 09:28 AM EST
Thank you for helping transcribe the Comes exhibits. Please post them with HTML markup, but posted in Plain Old Text mode to make it easy for PJ to copy and paste them.

Find a pdf to transcribe, and if you have a registered login book your intention to prevent duplication of effort, at the Comes Tracking Page

[ Reply to This | # ]

Officers of the Court
Authored by: cbc on Friday, December 02 2011 @ 09:41 AM EST
"In making this submission, counsel shall keep in mind that they are
officers of the court and full candor is required."

Whoa!

[ Reply to This | # ]

Oracle v. Google - That Didn't Take Long
Authored by: DaveJakeman on Friday, December 02 2011 @ 09:57 AM EST
I find it odd that Google are being instructed to "identify any further
products by Oracle or Sun that practiced any of the 26 asserted claims". I
would have thought that should be entirely up to Oracle and if Oracle miss the
boat, then tough. They are the plaintiff, after all.

---
When a well-packaged web of lies has been sold gradually to the masses over
generations, the truth seems utterly preposterous and its speaker a raving
lunatic.

[ Reply to This | # ]

Burden of proof
Authored by: jpvlsmv on Friday, December 02 2011 @ 10:11 AM EST
>> Google will only list products they can prove practiced
>> the asserted claims

This is a strange requirement in the order. It seems to be asking Google to
determine exactly what is and isn't in scope for each patent before trial.

I mean, Oracle can't even list (the accused Android) products they can prove
practice the claims, because that hasn't been decided by the jury yet.

With all the wrangling about whether the patent encompasses just a single
virtual machine instruction, or can cover multiple virtual machine instructions
(for example), how can Google say that they can prove anything?

--Joe

[ Reply to This | # ]

Oracle v. Google - That Didn't Take Long
Authored by: IANALitj on Friday, December 02 2011 @ 10:18 AM EST
In addition to the striking reminders that "full candor is required,"
Judge Alsup made a substantial addition to what Google is quoted as requesting.
(I am relying on the succinct quotations provided; I have not gone back to the
sources, to see whether there is some definition by which "Oracle"
includes "Sun.")

Google requested that "Oracle identify each Oracle product or
Oracle-licensed product that allegedly practices the claim."

Judge Alsup ordered that "Counsel for Oracle shall identify, for each of
the 26 asserted claims, each Oracle product, Oracle-licensed product, Sun
product, or Sun-licensed product that practiced the claim."

It seems that Judge Alsup is really on top of this matter. I get the impression
that Oracle would sometimes rather neglect the fact that it is standing in Sun's
shoes and is bound by Sun's actions (as well as having the benefits of others of
Sun's actions). This would be reminiscent of SCO's similar neglect of
inconvenient history, but this judge is clearly not buying it.

[ Reply to This | # ]

General product marking question
Authored by: jpvlsmv on Friday, December 02 2011 @ 10:33 AM EST
This has been tumbling around in my head for a while, but when Novell entered
into the patent cross-licensing deal with Microsoft (for their Linux
implementation), should it have started marking its distribution with the
licensed patents?

As I've understood what Google is saying here, Sun was required to mark its and
licensee's products with the relevant patent numbers, or else damages only
accrue from the time of "actual notice".

If Microsoft has licensed its patents for use by Novell (Suse) Linux, and Suse
Linux isn't marked, doesn't that make it a lot harder to threaten the whole
Linux ecosystem with patents (or at least a lot harder to collect beeelions of
dollars from it)?

--Joe

[ Reply to This | # ]

Oracle v. Google - That Didn't Take Long
Authored by: Henning Makholm on Friday, December 02 2011 @ 10:36 AM EST
Seems like Google is being pushed into a catch-22 here. Will they be allowed to say something like:
Actually we think that neither Android nor any Sun product practices such-and-such claim, because blah de blah. However, if Oracle can get the court to agree that Android does, then we'd like to argue that Sun product sucn-and-such practices it at least as much (because, again, blah de blah).
or do they have to choose in advance which defense theory to rely on?

[ Reply to This | # ]

I'm baffled.
Authored by: Anonymous on Friday, December 02 2011 @ 10:59 AM EST
First up Orcale has to identify any Oracle/Sun products it believes practice the
claims.

OK, I'm with that ... Alsup is just getting them to nail things down, so we all
know where we are.


And .. then .. this bit baffles me ... *Google* has to identify any Oracle/Sun
products that they think Orcale missed? What? Since when is it the defendants
duty to help the plaintiff flesh out their case?

[ Reply to This | # ]

By Dec 31st ...
Authored by: Anonymous on Friday, December 02 2011 @ 11:05 AM EST
"By DECEMBER 30, 2011, counsel for Google shall respond and identify any
further products by Oracle or Sun that practiced any of the 26 asserted claims,
specifying with particularity which ones and why."

Err ... "Your Honour, we do not have access to the entire Oracle codebase,
so it is difficult to make such an assesment at this point, however, if they
will give us complete access to their version control systems, source code and
developer notes, we will certainly have a look"

I'm still baffled as to why Google has to help Oracle identify infringed
products, thats Oracles task!

[ Reply to This | # ]

Oracle v. Google - That Didn't Take Long
Authored by: tknarr on Friday, December 02 2011 @ 01:04 PM EST

Why do I get the feeling that BSF was involved long before Oracle formally hired them on? The tap-dance Oracle did with the mirrored claims feels a lot like the tap-dancing we saw in SCO v. IBM and SCO v. Novell: any fancy step that'll keep things alive one iteration longer.

And the miscalculations feel the same too. In SCO v. IBM it felt like the lawyers believed that the merits of the case didn't matter, and they badly misjudged how seriously IBM would take the allegations and how willing they'd be to fight them. It feels the same way here, like Oracle expected Google to not put up a defense and is unprepared to counter even the obvious defenses except by delay. And the lawyers appear to have misjudged the judge as well. They seem to have thought that Judge Alsup would be as killing as Judge Kimball to give them the benefit of the doubt. But Judge Alsup seems to have more on his plate, and doesn't have a lot of patience for people who aren't getting to the point. And Oracle just weren't expecting that and aren't adjusting their strategy to match, just as BSF appeared unable to handle IBM digging in rather than coughing up like any of their previous targets.

[ Reply to This | # ]

This doesn't just concern patent marking
Authored by: bugstomper on Friday, December 02 2011 @ 06:45 PM EST
Google has achieved an interesting bonus by winning this one. Not only have they
forced Oracle to identify products that they say practice the patents, which by
Oracle's admission we know will not have been marked, but this will give Google
some specific ammunition in their attempts to assert prior art and
non-infringement.

For example, take the '104 Claim 11. That is a reissue of a patent originally
filed in 1992, with James Gosling listed as the inventor. Clearly it is about
the mechanism for resolving and caching symbolic references in the interpreter
at runtime that was a design decision of the JVM interpreter from the very first
versions.

Any attempt by Oracle to claim that the Java VM does not practice this will have
to make use of arguments that will apply to showing that the Dalvik VM doesn't
practice it. If Oracle admits to practicing it, then they lose on the damages
calculation, but as we already know, the Java products were not marked.

Aside from the damages aspect, by identifying a specific product that uses the
patent claim, Google will be able to compare the source code of the Java VM and
the Android code to show how Java implements the elements of the claim and
Android does not. When the trial deals with the red underlined portion of '104
Claim 11 where is says "certain of said instructions containing one or more
symbolic references" Google will be able to show what that looks like in
Java VM byte code, where the invokevirtual instruction can take a symbolic
reference as argument which is resolved and turned into a reference to the
constant pool the first time it is run, and contrast that to the Dalvik
invoke-virtual byte code instruction that takes as argument a numeric offset
into a method table.

[ Reply to This | # ]

Get what you want by making things easy on the judge?
Authored by: Anonymous on Friday, December 02 2011 @ 06:48 PM EST
Am I reading too much into this, or does it seem to anyone else like a party in
this case is more likely to get what they want if they make things easier for
the judge (simplify the case, cause less paperwork, fit it into the existing
plan, etc.)?

I wonder if it isn't always like that to some degree, but it seems like we're
seeing a lot of that in this case. Perhaps it's a symptom of the serious lack
of federal judges?

Or maybe it's my imagination. What do the rest of you think?

[ Reply to This | # ]

Dynmic linking prior art
Authored by: vadim on Sunday, December 04 2011 @ 05:55 AM EST
Folks, I've stumbled on this document http://www.multicians.org/fjcc4.html which is from 1965 and describes Multics file system. In section 4.1 it basically describes dynamic linking process whic include replacing symbolic references with real adresses during execution of the process. In 1965!!! I think it could be interesting for the Google defence team... If somebody could alert them about this document.

[ Reply to This | # ]

  • Earlier seed - Authored by: Anonymous on Sunday, December 04 2011 @ 04:01 PM EST
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