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Oracle v. Google - More on Patent Marking
Tuesday, December 06 2011 @ 08:30 AM EST

As the saying goes, sometimes it is best to leave well enough alone.

Oracle should probably have heeded that advice before filing its statement (638 [PDF; Text]) regarding the court's December 1 order to the parties regarding evidence of patent marking (636 [PDF; Text])

Oracle thought it would cleverly shift a burden to Google by asking the court to direct Google to:

"identify products in Oracle’s submission that Google contends do not practice the claims, in addition to identifying further products that practice the claims."

Even the court must have perceived that Oracle was trying to pull a fast one because Judge Alsup ordered Google to provide a response to the December 1 show-cause order because of Oracle's response and gave Google a limited amount of additional time in which to file that response. (639 [PDF; Text])

Google then obliged.

In its response (640 [PDF; Text]) Google reiterates that the burden of proof, either demonstrating marking or proving that it did not practice the invention, falls on the patentee -- in this case Oracle. Google agrees it would then respond to Oracle's "proof" and at the level of detail Oracle requested in its 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."
However, as Google points out, Google's willingness to respond does not shift the burden of proof, and for Google to be able to respond Oracle needs to meet its obligation of proof in sufficient detail that Google can properly respond. Consequently, Google now asks the court to supplement the original December 1 order not only with Oracle's proposed modification but with the added stipulation that:
"In order to properly allocate the burden of proof, require the same level of detail from both parties’ submissions, and ensure that this procedure provides the most assistance to the parties and the Court, Google requests that the Court direct Oracle, in its December 16, 2011 submission, to state with particularity its contentions that any of the products it identifies practice the asserted patents, and the evidentiary basis for any such contentions."
In other words, Oracle would have to provide sufficiently detailed evidence of the practice of the patent in the allegedly marked product to support Oracle's contention that it marked. Google should not have to respond to a bare claim of marking by then having to prove a missing claim element when Oracle has never, in fact, proven that each claim element has been met. This is clearly a better outcome for the court because it forces both parties to lay all of their cards on the table, but in proper sequence with Oracle going first.

Sometimes you are better off leaving well enough alone.

The Docket:

639 – Filed and Effective: 12/05/2011
Document Text: SUPPLEMENTAL ORDER REGARDING PATENT MARKING re 638 Response to Order to Show Cause filed by Oracle America, Inc., 636 Order. Signed by Judge Alsup on December 5, 2011. (whalc1, COURT STAFF) (Filed on 12/5/2011) (Entered: 12/05/2011)

640 – Filed and Effective: 12/05/2011
Document Text: Statement re 639 Order regarding Patent Marking by Google Inc.. (Francis, Mark) (Filed on 12/5/2011) (Entered: 12/05/2011)

The Documents"




No. C 10-03561 WHA



A prior order requested the parties’ response to the Court’s proposed plan regarding patent marking (Dkt. No. 636). Oracle filed its response and sought to add a new feature to the plan: Google should identify products in Oracle’s submission that Google contends do not practice the claims, in addition to identifying further products that practice the claims (Dkt. No. 638). The deadline in the prior order has passed and Google has not yet filed a response. Counsel for Google shall please comment on the Court’s proposed plan and also address the additional feature that Oracle has suggested by NOON TODAY.


Dated: December 5, 2011.

/s/ William Alsup




Case No. 3:10-cv-03561-WHA


Judge: Hon. William Alsup

Google hereby makes this response to the Court‘s Order Regarding Patent Marking (Dkt. No. 636). Google did not previously file any statement because Google agreed that there was no cause why an order should not be entered.

Google believes that the procedure set forth in the Court’s order is appropriate because it comports with the legal standard for proof of marking. Under Federal Circuit law, the patentee bears the burden of showing compliance with the marking statute. See Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1446 (Fed. Cir. 1998). The patentee also bears the burden of proving that it did not practice a patent if it takes that position. See DR Systems, Inc. v. Eastman Kodak Co., No. 08-cv-066920, 09 WL 2632685 at *4 (S.D. Cal. Aug. 24, 2009) (“patentees must also have the burden of proving the nonexistence of patented articles.” (citing Soverain Software LLC v., Inc., 383 F. Supp. 2d 904, 908 (E.D. Tex. 2005))); see also WiAV Solutions LLC v. Motorola, Inc. et al, 732 F. Supp. 2d 634, 640 (E.D. Va. 2010) (the patentee “bears the burden of showing that it, and its licensees, were not required to mark under § 287”).

Once Oracle has addressed the issue in its December 16, 2011 submission, Google has no objection to also setting forth its position on marking. Google accepts the Court’s directive that it identify with particularity any further Oracle products that Google contends practice the patents and why. Google also accepts Oracle’s suggestion that Google state its contentions regarding any Oracle products that Google contends do not practice the patents. But importantly, even if Google discloses its position regarding the products identified in Oracle’s disclosure, the burden of proof at trial still will remain with Oracle as to whether its products did or did not practice the asserted patents.

Finally, Google has one further suggestion in light of Oracle’s December 2, 2011 letter to the Court. In order to properly allocate the burden of proof, require the same level of detail from both parties’ submissions, and ensure that this procedure provides the most assistance to the parties and the Court, Google requests that the Court direct Oracle, in its December 16, 2011 submission, to state with particularity its contentions that any of the products it identifies practice the asserted patents, and the evidentiary basis for any such contentions. This level of detail is essential for this process to work effectively. The disclosure by Google that Oracle requests, and


that Google is willing to provide, will be largely contingent on the nature of Oracle’s December 16, 2011 disclosure. To put Google in a position to respond meaningfully, Oracle should state positions that are specific, straightforward and based on evidence it has properly identified in its previous disclosures under Patent L.R. 3–1(g). Then, after reviewing Oracle’s submission, Google will submit its response on December 30, 2011.

Dated: December 5, 2011


By: s/ Robert A. Van Nest
Attorneys for Defendant



Oracle v. Google - More on Patent Marking | 179 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Authored by: Kilz on Tuesday, December 06 2011 @ 08:49 AM EST
Please list what is wrong in the title of your post.

[ Reply to This | # ]

Off Topic
Authored by: Kilz on Tuesday, December 06 2011 @ 08:50 AM EST
For all posts that are not on topic. Please make links the clicky kind.

[ Reply to This | # ]

Authored by: Kilz on Tuesday, December 06 2011 @ 08:51 AM EST
Please mention the name of the story in the title of your post.

[ Reply to This | # ]

Uh oh, there's that word again: particularity
Authored by: Anonymous on Tuesday, December 06 2011 @ 09:00 AM EST
Dang, a vexatious litigator can't seem to catch a break any more. Durn courts
always asking for particulars, specificity, clarity, and stuff. How can we make
a living like that? If this keeps up, we'll end up like SCO.

[ Reply to This | # ]

Sometimes you are better off leaving well enough alone.
Authored by: Anonymous on Tuesday, December 06 2011 @ 09:15 AM EST
Re: Sometimes you are better off leaving well enough alone.

Unless Oracle is using this case as an excercise, in order to provide a
foundation that they can use in the future, regarding other products as Oracle
develops them, in a way maybe similar to the way that Google developed what it
did around Oracle/Sun's IP.

As then, if even if Google wins, it clears the decks, so to speak for a lot of
options around patents that even Oracle finds expensive, maybe seeing them as
silly or a barrier to Oracle to develop what it wants to develop (that Oracle,
FOSS and many others see that should not exist in the world of IP).

If Oracle were to lose, do they realy lose?
So, they are crossing the t's and dotting the i's, and riding this as a cost of
doing business. An excersise to get a lot of these issues to the Supreme Court,
if need be.

This is a very interesting case.

[ Reply to This | # ]

Patent Marking and Quicksand
Authored by: Anonymous on Tuesday, December 06 2011 @ 09:23 AM EST
Actually, this whole "patent marking" issue just might
provide enough quick-sand to swallow this litigation-- and
might set some useful precedences when dealing with patent
lawsuits (and trolls thereof). Google has likely found a
key achille's heel... forming a sand-trap that Oracle's
lawyers might have a problem getting their balls onto the
green from.

I also wonder whether Oracle might have some problems with
this lawsuit being labeled as "capricious" should other
firms practicing any of these patent claims are not paying
license fees already to Oracle; If no one else has had to
cough up license fees for practicing a claim it might be a
way into cornering Oracle into litigating against everyone
else and, thus, like SCO Group, destroying themselves.
Somehow I do not see Oracle doing the "smart" thing since
they've placed their feet on a road that can, when pursued,
destroy software patents.


I don't even want to *think* about Oracle having to provide
"marking" via splash screens within Java, especially when
used in servers.

(laughs maniacally)

I support some honkin' big Java-based applications running
in servers and believe that having to provide patent marking
for the JREs would lessen the value in using the free memory
immolator as a programming platform. (I really think a lot
of this code SHOULD have been done in C! The only reason
Java is considered a viable application platform is by de-
skilling the process of programming... along with making
malloc() and free() go away.)

[ Reply to This | # ]

Shades of sco v. ibm
Authored by: tz on Tuesday, December 06 2011 @ 09:44 AM EST
Remember when IBM asked SCO to identify with specificity which lines in
Linux actually infringed?

One og the greatest evils in IP litigation is the amorphous claim that you
infringed something, somewhere in this huge haystack, but don't expect us
to find the needle. You tell us what you infringed.

[ Reply to This | # ]

Authored by: DaveJakeman on Tuesday, December 06 2011 @ 03:10 PM EST
Wow. There's no time stamp on the order, but that didn't give Google long to
get their act together. They still came up trumps though.

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

[ Reply to This | # ]

An opinion
Authored by: Anonymous on Tuesday, December 06 2011 @ 05:18 PM EST

This Oracle litigation seems to me to be part of a tag-wrestling match that in
reality is one group of companies colluding to damage Google and Android.

The team of companies appear to see Android as damaging to the emerging mobile
computing market but in particular damaging to them.

So Google gets dragged unwillingly into the ring by the 1st wrestler in the
litigating team, this 1st round increasingly looks like bluster as Oracle tries
to get Google to make a slip up but it is Oracle showing itself to be the clumsy

But as learned & perfected in the tSCOg litigation, just having the
litigation & keeping it running achieves some of the litigators goals &
this is more to do with distracting & slowing down Google & Android just
like the tSCOg litigation morphed into distracting IBM & casting a shadow
over Linux.

Android does have the potential to reduce profits & opportunities for US
corporations in competing markets. Android allows a lot of low cost Chinese
& potentially INdian companies to move quickly into & around US
companies in the mobile market.

Google's Android strategy undercuts the business models of companies who are
trying to emulate Apple's end-to-end mobile technology strategy. It allows Apple
competitors (such as Asian companies) to quickly get into the market with lesser
investment than most US companies need to come up with.

Microsoft is attempting to emulate Apple. Most other serious mobile computing /
cloud technology entrants appear to be suffering at the hands of Google's

So when Oracle gets tossed out of the ring (looking increasingly likely) who do
they tag to step in and take over ?.


[ Reply to This | # ]

Tentative ruling on Cockburn report
Authored by: Anonymous on Tuesday, December 06 2011 @ 08:04 PM EST
FOSSPatents is reporting on some tentative order by Judge that
is damaging to Oracle? Looking at the way he beats about the
bush and supplies consolation arguments to Oracle, it sounds
pretty big..

PJ do you plan to comment on this order?

[ Reply to This | # ]

Damned if they do....
Authored by: Anonymous on Tuesday, December 06 2011 @ 09:20 PM EST
So, Oracle is between a rock and a hard place here.

If they argue that none or very few of their products
practice the patents, they're going to have a VERY hard time
(even if they prevail on patent infringement) proving those
patents are so important that they're entitled to
significant damages--how can they claim their patents (which
are all pretty generic) are highly valuable if none of their
myriad technology products them?

On the other hand, we know that Oracle didn't mark most
(possibly all) of its products, so if it argues a large
number of products practice the patents, then they're going
to again have a strong uphill climb on damages even if they
prevail because of the marking statute.

Some predictions:

* Oracle claims a large number of products practice the
patents (so they can claim they're valuable). And while the
vast majority might be unmarked, they'll come up with one
product somewhere that shipped with a piece of paper that
listed every Oracle patent, no matter how vague, and claim
"We're now good on the marking statute--here's your notice!"

* This will be followed by a drawn-out dispute on whether
Oracle is required to mark ALL products, or if marking one
is sufficient (remember--the point with the marking
requirement is to provide "notice" to the market).
* Google will vigorously content that the product Oracle
identifies doesn't actually practice the patent (or, at
least, doesn't practice it in the form Oracle's claiming
Google is using it), so it shouldn't count for the marking

* Google will also claim "just providing a list of patent
numbers that MIGHT be lurking in a product isn't the same as
"marking" and debate that the product claims dozens of
patents that it doesn't in fact practice, and so claiming
that product satisfies the marking requirement makes a
mockery of the rule.

[ Reply to This | # ]

Oracle v. Google - More on Patent Marking
Authored by: Anonymous on Wednesday, December 07 2011 @ 08:21 AM EST
As a general question, considering the BPAI newspick, can
judges consider the results of other recent rulings in
dealing with their own on-going cases? Could the judge then
say "This is a software only issue, case dismissed."?

[ Reply to This | # ]

I see the technique here
Authored by: inode_buddha on Wednesday, December 07 2011 @ 11:38 AM EST
I see the technique here. Basically, make the accusation *and* shift the onus
onto the accused. Very similar to what SCO did.

There are other things too, not just in this specific case, but in many cases
involving FOSS. Mainly what I see is dilemmas.

Its a classical technique, to present a dilemma even a false one. A false
dichotomy intended to cause distress. Allegorically a dilemma is seen as 2 horns
on a bull - if you deflect one horn then the other one will get you. Even if one
horn is false, the other (real) one may get you if not careful.

The trick is to recognize the false dilemmas in call them out as such, or take
the third tack - punch the bull between the eyes.

Mark, what do you think?


"When we speak of free software,
we are referring to freedom, not price"
-- Richard M. Stallman

[ Reply to This | # ]

  • Experience says... - Authored by: Anonymous on Wednesday, December 07 2011 @ 12:54 PM EST
  • Nope - Authored by: Anonymous on Wednesday, December 07 2011 @ 05:08 PM EST
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