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Oracle v. Google - A Minor Update on Claims Construction and Patent Marking
Monday, December 05 2011 @ 08:15 AM EST

Back on November 8, Judge Alsup issued an order directing the parties to identify any terms in the patent claims that should not be given their ordinary meaning and, therefore, required interpretation by the court. (603 [PDF; Text]) The parties have now filed their response, and it evidences a minimum of disagreements (for a change). (637 [PDF; Text]). The chart in the document shows the parties only in disagreement over the terms:

  • "computer-readable medium;"
  • "runtime;" and
  • "obtain(ing) a representation of at least one class from a source definition provided as object oriented program code."


What's interesting is that, in each of these instances, Oracle either believes the term is easily given its ordinary meaning or, as in the case of "computer-readable medium," a very broad, non-specific definition. To the contrary, Google seeks more refined meanings, which shouldn't be surprising since Google wants to limit the scope of what may be included in the claims. I find it humorous, and typical of the inability of these parties to agree on the time of day, that the definition that Google wants to assign to "runtime" is, according to Oracle, the term's ordinary meaning.

In the only other filing (638 [PDF; Text"]) of the day Oracle has consented to Judge Alsup's proposed process for gathering information on patent marking. (636 [PDF; Text"])

The one qualification Oracle requests is that the court

"require Google’s response to not only “identify any further products by Oracle or Sun that practiced any of the 26 asserted claims, specifying with particularity which ones and why,” but also explain with the same particularity any contention Google has that a product identified in Oracle’s submission does not practice the claims."
By requesting this additional qualification Oracle would seem to indicate that it intends to provide evidence that products have, in fact, been marked. We should know whether that is true fairly soon given that Oracle is required to file its evidence by December 16.


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

Docket

637 – Filed and Effective: 12/02/2011
CLAIM CONSTRUCTION STATEMENT
Document Text: CLAIM CONSTRUCTION STATEMENT Joint Identification Of Additional Claim Terms For Construction filed by Google Inc. (Paige, Eugene) (Filed on 12/2/2011) (Entered: 12/02/2011)

638 – Filed and Effective: 12/02/2011
RESPOSNE
Document Text: RESPONSE TO ORDER TO SHOW CAUSE by Oracle America, Inc. Oracle letter in response to Order Regarding Patent Marking (ECF No. 636). (Jacobs, Michael) (Filed on 12/2/2011) (Entered: 12/02/2011)


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

Documents

637

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 Alsup

JOINT IDENTIFICATION OF
ADDITIONAL CLAIM TERMS FOR
CONSTRUCTION

Pursuant to the Court’s November 8, 2011 Order Regarding Construction of Claims to be Tried (Dkt. No. 603), and having met-and-conferred as directed by the Court, Google and Oracle identify the following claim terms for construction, along with their respective proposed constructions. Per the Court’s Order, the parties identify only claim terms within the 26 claims identified by Oracle for trial (Dkt. No. 471).

1

DATED: December 2, 2011

MORRISON & FOERSTER LLP

By: /s/ Marc D. Peters
Marc D. Peters

MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[email]
MARC DAVID PETERS (Bar No. 211725)
[email]
DANIEL P. MUINO (Bar No. 209624)
[email address telephone fax]

BOIES, SCHILLER & FLEXNER LLP
DAVID BOIES (Admitted Pro Hac Vice)
[email address telephone fax]
STEVEN C. HOLTZMAN (Bar No. 144177)
[email address telephone fax]

ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[email]
DEBORAH K. MILLER (Bar No. 95527)
[email]
MATTHEW M. SARBORARIA (Bar No. 211600)
[email address telephone fax]

ATTORNEYS FOR PLAINTIFF
ORACLE AMERICA, INC.

2

DATED: December 2, 2011

KEKER & VAN NEST, LLP

By: /s/ Christa M. Anderson

ROBERT A. VAN NEST (SBN 84065)
[email]
CHRISTA M. ANDERSON (SBN 184325)
[email]
KEKER & VAN NEST LLP
[address telephone fax]

SCOTT T. WEINGAERTNER (Pro Hac Vice)
[email]
ROBERT F. PERRY
[email]
BRUCE W. BABER (Pro Hac Vice)
[email]
KING & SPALDING LLP
[address telephone fax]

DONALD F. ZIMMER, JR. (SBN 112279)
[email]
CHERYL A. SABNIS (SBN 224323)
[email]
KING & SPALDING LLP
[address telephone fax]

IAN C. BALLON (SBN 141819)
[email]
HEATHER MEEKER (SBN 172148)
[email]
GREENBERG TRAURIG, LLP
[address telephone fax]

ATTORNEYS FOR DEFENDANT
GOOGLE INC.

3

For those who may depend on screen readers, the same screenshot in HTML:

Claim Term Google’s Proposed
Construction
Oracle’s Proposed
Construction
‘476 Patent,
Claim 14
computer-
readable medium
any medium that
participates in providing
instructions to a processor
for execution, including but
not limited to, optical or
magnetic disks, dynamic
memory, coaxial cables,
copper wire, fiber optics,
acoustic or light waves,
radio-waves and infra-red
data communications
a storage device for use by
a computer
‘720 Patent,
Claims 1, 10
and 19
Obtain[ing] a
representation of
at least one class
from a source
definition
provided as
object oriented
program code
load at least one class
definition by compiling
object oriented source code
No construction necessary.
The phrase has the ordinary
meaning that its constituent
words give it.
‘205 Patent,
Claims 1 and
2
runtime during execution of the
virtual machine instructions
No construction necessary.
The ordinary meaning is
“during execution of the
virtual machine.”

638

[Morrison Foerster letterhead]

December 2, 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:

We write in response to the Court’s request to show cause (ECF No. 636) regarding the Court’s proposed procedure regarding patent marking. Oracle does not object to the Court’s proposed procedure. For clarity and efficiency, Oracle requests that the Court require Google’s response to not only “identify any further products by Oracle or Sun that practiced any of the 26 asserted claims, specifying with particularity which ones and why,” but also explain with the same particularity any contention Google has that a product identified in Oracle’s submission does not practice the claims. This will assist the Court and the parties in determining the extent of the disagreement between the parties, if any.

Respectfully submitted,

/s/ Michael A. Jacobs

Michael A. Jacobs


  


Oracle v. Google - A Minor Update on Claims Construction and Patent Marking | 151 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Corrections here
Authored by: feldegast on Monday, December 05 2011 @ 08:34 AM EST
So they can be fixed

---
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 | # ]

News picks
Authored by: feldegast on Monday, December 05 2011 @ 08:39 AM EST
Please make links clickable

---
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 | # ]

Off topic
Authored by: feldegast on Monday, December 05 2011 @ 08:41 AM EST
Please make links clickable

---
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 | # ]

Comes transcribing
Authored by: feldegast on Monday, December 05 2011 @ 08:43 AM EST
Thank you for helping with the transcribing of the Comes exhibits.

To 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 here http://www.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 | # ]

Picking Nits
Authored by: DaveJakeman on Monday, December 05 2011 @ 08:43 AM EST
"computer-readable medium"

I think Google's definition of this is broader than Oracle's. I wouldn't think
of coaxial cables, copper wire or fibre optics as computer-readable media,
unless they had something attached at the other end.

"obtain(ing) a representation of at least one class from a source
definition provided as object oriented program code."

I agree with Oracle here: this isn't a special term, but a phrase. It might be
necessary to define individual words within the phrase, but the phrase itself
means what its says.

"runtime"

Google and Oracle's definitions for this are slightly different. Or are they?
Could there be any possible significance to the word "instructions" in
this? Google seem to think so.

---
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 | # ]

Are Oracle trying to claw some info back
Authored by: Oliver on Monday, December 05 2011 @ 09:34 AM EST
Since the judge has forced Oracle to be specific, are they
trying to get some idea of Google's defence strategy with
their proposed modification to the order? And should it
work? On the face of it the request isn't unreasonable but
I'm not sure how the judge would normally expect that sort
of argument to play out.

Did the judge ask for the markable products in order to get
a complete list and then start arguing about it, or would he
have expected a definitive list which couldn't be
challenged? I can't see how the timetable would have
allowed the latter as Oracle had no opportunity to challenge
Google's list.

If it is the case that the lists are just the products, then
surely Oracle's request isn't justified. Although the
information they request should come out in the fullness of
time.

[ Reply to This | # ]

Representation of a class
Authored by: Anonymous on Monday, December 05 2011 @ 10:36 AM EST
I would have said that obtaining a representation of a class
from a source definition provided as object orientated code
did not match Google's definition of loading at least one
class by compiling object orientated code. For instance, if
this is code:

class MyClass {
int x = 0;
void y(int z) {
x = z;
}
}

Then here's one representation:
class MyClass: (var, method).

Here's another:
(MyClass).

Many representations can be parsed from the class above. The
definition that Google provides is only one way in which a
representation may be obtained.

However, I don't think that Oracle's explanation is good
enough; it's not clear from the words in the claim what
Oracle thinks is covered. Are all representations covered?
That seems a bit broad seeing as programs were being
compiled before Java was invented, and a wide variety of
representations were used.

[ Reply to This | # ]

  • Meaninless - Authored by: Anonymous on Monday, December 05 2011 @ 03:56 PM EST
Runtime...
Authored by: Anonymous on Monday, December 05 2011 @ 10:37 AM EST
I have a hard time parsing the legal documents, but did either of them make a
distinction between "a runtime" and "at runtime"? Because
when you start needing definitions, those two uses of the word have very
different meanings.

[ Reply to This | # ]

A question for anyone using a screen reader
Authored by: PJ on Monday, December 05 2011 @ 10:48 AM EST
I wonder about something. If we use screenshots,
does that affect your ability to follow along
with a screen reader? If so, I can do the table,
but if it's not an issue, then I won't.

[ Reply to This | # ]

An odd request from Oracle...
Authored by: Anonymous on Monday, December 05 2011 @ 02:07 PM EST
Oracle has argued, up to this point, that they have never made a product that
practices the patents in suit, but now they want the judge to order, before they
produce their list (presumably empty???), that Google must then reply with which
of the products on Oracle's list that Google might think do not practice the
patents in suit, and why.

Why, oh why, would Oracle make such a request of the judge, if their list of
products that practice the patents is null? Does this mean that they are
producing a list of products that is not empty? Does this mean that they lied to
the court earlier when they said that they never made any products that
practices the patents?

[ Reply to This | # ]

"Runtime"
Authored by: Anonymous on Monday, December 05 2011 @ 04:57 PM EST
So, there's only one word different between the two definitions: the word
"instructions." What difference does it make? I'm not sure. Yes, a
VM can be paused (i.e. not running machine instructions, but waiting for user
commands or saving a VM image or whatnot). And the VM might be doing other
things entirely, that matter only to the VM, though it's not clear if that has
anything to do with anything.

I wonder how the judge will decide such a small difference with no obvious
advantage to either side. Coin flip?

Overall, it appears that Google wants to have precise definitions so that they
can refer back to them later, while Oracle would prefer more flexibility in
defining the "ordinary meaning" later on. Though I have to wonder
what "ordinary meaning" there is to all these computer science terms
that non-techies will not understand.

I guess we'll just have to see if the judge prefers to nail down the definitions
or not. One might think that this would make things easier later, or one might
think that he'd rather not be bothered with this stuff at all, so I'm not sure
what to predict.

[ Reply to This | # ]

OT: Be carefuul what you put in email
Authored by: vadim on Tuesday, December 06 2011 @ 02:11 AM EST
Very instructive: https://om.wordpress.com/2011/11/29/be-careful-what-you-put-in-an-email/

[ Reply to This | # ]

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