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Oracle v. Google - Google Seeks To Knock Out Patent
Thursday, February 16 2012 @ 08:00 AM EST

Google is seeking to immediately knock out one of the remaining six patents asserted in this case, this time by summary judgment. In a letter to the court filed yesterday Google asks that claim 14 of U.S. Patent No. 6,192,476 be found invalid on the grounds that it claims unpatentable subject matter. (715 [PDF; Text])

Google's argument stems from the court's determination a few weeks ago that the term "computer-readable medium" includes transmission media. (Google Wins on Claim Construction Issues) Google asserts that, by that interpretation, the claim became invalid. Google points to the finding in In re Nuitjen:

Claims “that cover transitory electrical and electromagnetic signals propagating through some medium, such as wires, air, or a vacuum” are invalid because “[t]hose types of signals are not encompassed by any of the four enumerated statutory categories.” In re Nuijten, 500 F.3d 1346, 1352 (Fed. Cir. 2007). This Court has construed the phrase “computer-readable medium” of claim 14 to mean “any medium that participates in providing instructions to processor for execution, including but not limited to, transmission media.” (Dkt. No. 704 at 5 (emphasis added); see also id. at 4 (“[T]he specification described embodiments that unambiguously included transmission media, such as wireless signals.”).) Thus, the claim plainly covers transmission media, a point that Oracle underscored when it attempted to assert the claim against such media in this case. (See Mitchell Patent Report ¶ 11 (stating that “Google’s acts of direct infringement include [the] distribution of infringing source and binary code online”).)
Citing to the Grover Tank and Dealertrack decisions, Google anticipates that Oracle will argue that the mere inclusion of "transmission media" among types of computer-readable media should not invalidate the entire claim, only invalidating that aspect of computer-readable media. According to Google, Grover Tank and Dealertrack hold that the entire claim is invalidated if it is found to have overclaimed in any respect, as here.

Google suggests there is no question of fact here, only a question of law, and therefore the issue is ripe for summary judgment. Further, Oracle was clearly concerned about this outcome when it was arguing the claim construction of claim 14:

As Oracle argued, “the correct approach is to construe the phrase to mean only storage media, and preserve its validity.” (Dkt. No. 645 at 16.) [emphasis added]
Granting of summary judgment by the court may be perfunctory given that the USPTO has already issued a final rejection of claim (A Last Minute Present to Google from the USPTO, but Oracle still has until February 20 to seek reconsideration of the USPTO rejection.

At present only four of the 26 claims asserted by Oracle in this case have been affirmed by the USPTO upon reexamination, and those four are subject to a more limited interpretation because of statements made by Oracle during reexamination. (See Update on the Reexaminations) Oracle's patent claims are being eroded almost into non-existence.


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

Docket

715 – Filed and Effective: 2/15/2012
Letter
Document Text: Letter from Defendant Google Inc Re Invalidity of Claim 14 of the '476 Patent. . (Van Nest, Robert) (Filed on 2/15/2012) (Entered: 02/15/2012)


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

715

[KEKER & VAN NEXT LLP letterhead]

February 15, 2012

VIA E-FILING

The Honorable William 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:

Google requests that the Court allow Google to file a motion for summary judgment of invalidity of claim 14 of U.S. Patent No. 6,192,476 (“‘476 Patent”) on the grounds that it claims unpatentable subject matter. Claim 14 is the only remaining asserted claim of the ‘476 Patent, and its validity can be determined as a matter of law. See Dealertrack, Inc. v. Huber, --- F.3d ---, 2012 WL 164439, at *16 (Fed. Cir. Jan. 20, 2012) (“Whether a patent claim is drawn to patenteligible subject matter is an issue of law . . . .”). The Court’s recent Order of January 25 construed claim 14 to cover patent-ineligible subject matter. Google therefore seeks to further narrow the issues for trial by fully disposing of one of the six patents still asserted in this case.

There is no dispute that claim 14 encompasses unpatentable subject matter. Claims “that cover transitory electrical and electromagnetic signals propagating through some medium, such as wires, air, or a vacuum” are invalid because “[t]hose types of signals are not encompassed by any of the four enumerated statutory categories.” In re Nuijten, 500 F.3d 1346, 1352 (Fed. Cir. 2007). This Court has construed the phrase “computer-readable medium” of claim 14 to mean “any medium that participates in providing instructions to processor for execution, including but not limited to, transmission media.” (Dkt. No. 704 at 5 (emphasis added); see also id. at 4 (“[T]he specification described embodiments that unambiguously included transmission media, such as wireless signals.”).) Thus, the claim plainly covers transmission media, a point that

The Honorable William Alsup
February 15, 2012
Page 2

Oracle underscored when it attempted to assert the claim against such media in this case. (See Mitchell Patent Report ¶ 11 (stating that “Google’s acts of direct infringement include [the] distribution of infringing source and binary code online”).)

In its objections to Google’s proposed claim construction, Oracle all but acknowledged that claim 14 would be invalid if construed according to its plain terms. As Oracle argued, “the correct approach is to construe the phrase to mean only storage media, and preserve its validity.” (Dkt. No. 645 at 16.) This Court did not so limit its construction such that there is now a live legal issue regarding invalidity. In that context, Oracle may argue that Nuijten does not apply because the claim at issue in that case was directed only to unpatentable transitory signals, whereas claim 14 of the ‘476 Patent could be read to cover storage media as well as unpatentable signals. Any such argument would fly in the face of decades of precedent.

Indeed, overclaiming is a hallmark of invalid patent claims. The Supreme Court addressed the consequences of claiming too broadly in Graver Tank & Mfg’g Co. v. Linde Air Prods. Co., 336 U.S. 271 (1949). There, the claims encompassed both an inventive welding flux composition (patentable subject matter) as well as inoperable compositions (unpatentable subject matter). Id. at 276. The Supreme Court upheld the district court’s finding of invalidity, holding:

While the cases more often have dealt with efforts to resort to specifications to expand claims, it is clear that the latter fail equally to perform their function as a measure of the grant when they overclaim the invention. When they do so to the point of invalidity and are free from ambiguity which might justify resort to the specifications, we agree with the District Court that they are not to be saved because the latter are less inclusive.
Id. at 277. In short, where there is no ambiguity as to claim scope, overbroad claims are invalid.

Furthermore, the maxim established in Graver Tank applies in the context of Section 101, as illustrated in the Federal Circuit’s recent Dealertrack decision. There, the patentee argued

The Honorable William Alsup
February 15, 2012
Page 3

that the claims covered “a concrete, practical solution to a long-felt problem” and that, “for § 101 purposes, the claims describe how to program [a] computer by reference to the flow charts in the specification.” 2012 WL 164439 at *15. The Federal Circuit disagreed and held that the asserted method claims were invalid because they were drawn to “patent ineligible abstract ideas under § 101.” Id. at *18. The court reasoned:

The fact that certain algorithms are disclosed in the specification does not change the outcome. In considering patent eligibility under § 101, one must focus on the claims. . . . Here, the claims of the [patent] were construed not to be limited to any particular algorithm.
Id. at 17. In other words, the court held that it did not matter that the claims encompassed the disclosed algorithms when they also covered so much more; the fact that the claims also “cover[ed] a . . . process using any existing or future-devised machinery” rendered them invalid. Id. This finding follows longstanding precedent. See, e.g., Gottschalk v. Benson, 409 U.S. 63, *71 (1972) (invalidity finding where claim was broad enough to cover every use of mathematical formula in addition to the disclosed use). Additionally, it is “USPTO policy” that claims “that read on nonstatutory as well as statutory subject matter are unpatentable.” Ex parte Hu, Appeal No. 2010-000151, 2012 WL 439708, at n.2 (Bd. of Patent App. & Interferences Feb. 9, 2012).

Given this precedent, claim 14 of the ‘476 patent must be invalid as a legal matter. While Oracle could have included dependent claims claiming only patentable subject matter, or could have sought correction of claim 14 through reissue—as it did with the ‘104 patent—it did neither. And having chosen to assert infringement of claim 14 by non-statutory subject matter in this very case, it should not be heard to complain that it may lose that claim as a result.

Sincerely,
/s/ Robert A. Van Nest


  


Oracle v. Google - Google Seeks To Knock Out Patent | 160 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Oracle v. Google - Google Seeks To Knock Out Patent
Authored by: cricketjeff on Thursday, February 16 2012 @ 08:32 AM EST
Maybe Oracle should have checked their lawyers homework ...

---
There is nothing in life that doesn't look better after a good cup of tea.

[ Reply to This | # ]

Corrections Thread
Authored by: sproggit on Thursday, February 16 2012 @ 08:33 AM EST
Please outline your correction in the reply title:

"Erorr -> Error"

Thank you.

[ Reply to This | # ]

Comes Transriptions
Authored by: sproggit on Thursday, February 16 2012 @ 08:34 AM EST
Please provide updates on any Comes transcriptions here.

Thank you.

[ Reply to This | # ]

Off Topic
Authored by: sproggit on Thursday, February 16 2012 @ 08:35 AM EST
Please post all off-topic responses here. Please make all links clickable...

Thank you.

[ Reply to This | # ]

Oracle v. Google - Google Seeks To Knock Out Patent
Authored by: Anonymous on Thursday, February 16 2012 @ 08:54 AM EST

While Oracle could have ... sought correction of claim 14 through reissue — as it did with the ‘104 patent— it did [not].

Could Oracle still seek correction of claim 14 through reissue?

Gringo

[ Reply to This | # ]

News picks
Authored by: feldegast on Thursday, February 16 2012 @ 09:08 AM EST
Please make links clickable

---
IANAL
My posts are ©2004-2012 and released under the Creative Commons License
Attribution-Noncommercial 2.0
P.J. has permission for commercial use.

[ Reply to This | # ]

A Legal Bank Shot
Authored by: rsteinmetz70112 on Thursday, February 16 2012 @ 09:49 AM EST
Google by getting the Court to agree that computer readable media includes
transmission media, set up this motion for summary judgment.

A nice bit of legal work.

---
Rsteinmetz - IANAL therefore my opinions are illegal.

"I could be wrong now, but I don't think so."
Randy Newman - The Title Theme from Monk

[ Reply to This | # ]

Oracle v. Google - Google Seeks To Knock Out Patent
Authored by: scav on Thursday, February 16 2012 @ 11:23 AM EST
I like this in particular:
Oracle underscored when it attempted to assert the claim against such media in this case. (See Mitchell Patent Report ¶ 11 (stating that “Google’s acts of direct infringement include [the] distribution of infringing source and binary code online”).)

Does this mean this case can set a precedent that the distribution of (allegedly) infringing source and binary code on the internet is, as a matter of law, NEVER a direct infringement of ANY patent? (Because no valid patent claim can include storing something on a transmission medium, even if *using* that thing in a physical device would be infringing).

Bear in mind, even if Oracle's patent claims weren't incredible baloney, all Google did was distribute source. It's the handset makers who put Android in a device, the app developers who generate dalvik byte-code, and the end users who run it.

Every little erosion of the sphere of validity of software patents is welcome.

---
The emperor, undaunted by overwhelming evidence that he had no clothes, redoubled his siege of Antarctica to extort tribute from the penguins.

[ Reply to This | # ]

Still no challenge to software patents per se
Authored by: Anonymous on Thursday, February 16 2012 @ 01:11 PM EST
I guess there must be overwhelming case law somewhere that computer programs are
not mathematics, so overwhelming that there is no point in challenging it.
(Wouldn't mind seeing some citations, though.)

Must be something everybody (but me) knows by instinct and therefore doesn't
need to be pointed out. Go back to sleep, fool.

[ Reply to This | # ]

Oracle drops one Java patent claim against Google
Authored by: SilverWave on Friday, February 17 2012 @ 08:27 PM EST
Oracle drops one Java patent claim against Google

---
RMS: The 4 Freedoms
0 run the program for any purpose
1 study the source code and change it
2 make copies and distribute them
3 publish modified versions

[ Reply to This | # ]

Google rebuts Oracle damages report in Java lawsuit
Authored by: SilverWave on Friday, February 17 2012 @ 09:57 PM EST
Google rebuts Oracle damages report in Java lawsuit

Quote: "One, described as an "independent significance" approach, calls for damages of "at least $129.2 million," Google said.

A second, described as a "group and value" method, puts total copyright and patent damages at between $52.4 million and $169 million, assuming the court requires a number of deductions Cockburn included in his calculations, Google said."

---
RMS: The 4 Freedoms
0 run the program for any purpose
1 study the source code and change it
2 make copies and distribute them
3 publish modified versions

[ Reply to This | # ]

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