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Oracle v. Google - More Bad News for Oracle on the Patent Validity Front
Thursday, February 23 2012 @ 08:10 AM EST

The parties filed a joint update with the court regarding the pending reexaminations of the asserted Oracle patents before the U.S. Patent and Trademark Office. (722 [PDF; Text]) Not surprisingly, Oracle has taken yet another hit. This time it is on previously reexamined patent number RE 38,104.

On February 16 the USPTO issued a non-final rejection of all of the claims of the '104 patent that have been asserted by Oracle in this case. Oracle has until April 16 to file a response. Given the track record of Oracle's responses in these reexaminations, don't be surprised to see this reexamination result in a final rejection of all of the asserted claims of the '104 patent.

If that proves to be the case, then Oracle will be left with only the four claims of the '520 to assert at trial, and as we have pointed out before, the '520 claims are now facing limitation because of representations made by Oracle during the reexamination.

With these additional actions by the USPTO Google has also requested (723 [PDF; Text]) the parties be permitted to update their expert reports on invalidity. Clearly, Google wants to incorporate the findings of the USPTO into its expert report. While Google states that the reexaminations of the '702 and '205 patents have run their course, Oracle may yet file a response in each of those cases. If Oracle opposes this Google request, expert Oracle to indeed file those responses and seek to overcome the examiner's objections in each case.

It makes one wonder whether Oracle wouldn't be better off withdrawing its patent infringement claims and proceeding only on the copyright claims. The court would likely insist that Oracle withdraw the patent claims with prejudice, meaning Oracle could not reassert the seven patents originally asserted in this case, but that would not preclude Oracle from bringing another patent infringement suit in the future against Google ... provided it can find any of the Sun patents that are valid.


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

Docket

722 – Filed and Effective: 2/22/2012
Notice
Document Text: NOTICE by Google Inc., Oracle America, Inc. Regarding Reexamination of Patents-in-Suit (Francis, Mark) (Filed on 2/22/2012) (Entered: 02/22/2012)

723 – Filed and Effective: 2/22/2012
Letter
Document Text: Letter from Defendant Google Inc. Requesting Leave to Supplement Invalidity Expert Reports In View of Reexamination Proceedings. (Francis, Mark) (Filed on 2/22/2012) (Entered: 02/22/2012)


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

Documents

722

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 UPDATE REGARDING
REEXAMINATION OF PATENTS-IN-
SUIT

Oracle America, Inc. and Google Inc. jointly submit an update on the progress of the U.S. Patent and Trademark Office (“PTO”) in reexamining the patents-in-suit.

On February 7, 2012, the PTO issued a final office action rejecting all of the claims of U.S. Patent No. 5,966,702 asserted by Oracle in this case. A response by Oracle is due on April 7, 2012.

On February 16, 2012, the PTO issued an Action Closing Prosecution rejecting all of the claims of U.S. Patent No. 6,910,205 asserted by Oracle in this case. A response by Oracle is due on March 19, 2012.

On February 16, 2012, the PTO issued a non-final rejection of all of the claims of U.S. Patent No. RE 38,104 asserted by Oracle in this case. A response by Oracle is due by April 16, 2012.

1

Dated: February 22, 2012

MORRISON & FOERSTER LLP

By: /s/ Daniel P. Muino

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: February 22, 2012

KEKER & VAN NEST LLP

By: /s/ Scott T. Weingaertner

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

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

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

KEKER & VAN NEST LLP
ROBERT A. VAN NEST (SBN 84065)
[email]
CHRISTA M. ANDERSON (SBN184325)
[email]
DANIEL PURCELL (SBN 191424)
[email address telephone fax]

Attorneys for Defendant
GOOGLE INC.

3

ATTESTATION

I, Mark H. Francis, am the ECF User whose ID and password are being used to file this JOINT UPDATE REGARDING REEXAMINATION OF PATENTS-IN-SUIT. In compliance with General Order 45, X.B., I hereby attest that Daniel P. Muino has concurred in this filing.

Date: February 22, 2012

/s/ Mark H. Francis

4


723

[King & Spalding letterhead]

February 22, 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 give leave to update the parties’ expert reports on the invalidity of U.S. Patent Nos. 5,966,702 (“‘702 Patent”) and 6,910,205 (“‘205 patent”) in view of the recent developments in the reexaminations of these patents. (Dkt. No. 722.)

On January 4, 2012, the Court invited the parties to update their invalidity expert reports for each of the patents where the “reexaminations have run their course before the examiners.” (Dkt. No. 676 at 4.) That Order invited supplementation of invalidity expert reports in view of final office actions in the ex parte reexaminations of the ‘520 and ‘476 patents, and in view of an action closing prosecution in the inter partes reexamination of the ‘720 patent. (Id.)

Since the Court’s order, two more reexaminations have run their course. Specifically, the U.S. Patent and Trademark Office (“PTO”) has issued a final office action rejecting all asserted claims of ‘702 patent in the ex parte reexamination of that patent. (Dkt. No. 722.) Likewise, the PTO has issued an action closing prosecution rejecting all asserted claims of the ‘205 patent in the inter partes reexamination of that patent. (Id.)

The Court’s rationale in allowing supplementation of expert reports now applies to the reexaminations of these two patents as well. Specifically, at least some of the prior art cited in

The Honorable William Alsup
February 22, 2012
Page 2

each of the reexaminations for the ‘702 and ‘205 patents was not before the PTO during the initial examinations and the PTO has now rejected the asserted claims of both patents and closed prosecution. (See Dkt. No. 676 at 4.)

Therefore, Google hereby requests leave for the parties to update their expert reports on the invalidity of the ‘702 and ‘205 patents.

Respectfully submitted,

/s/ Scott T. Weingaertner

Scott T. Weingaertner
Counsel for Defendant Google Inc.


  


Oracle v. Google - More Bad News for Oracle on the Patent Validity Front | 310 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Oracle v. Google - More Bad News for Oracle on the Patent Validity Front
Authored by: rkhalloran on Thursday, February 23 2012 @ 08:24 AM EST
pp. 4: "If Oracle opposes this Google request, expert Oracle"

s/expert/expect

---
SCOX(Q) DELENDA EST!!!

------
"They who can give up essential liberty to obtain a little temporary safety
deserve neither." - Benjamin Franklin

[ Reply to This | # ]

The value of patents
Authored by: cricketjeff on Thursday, February 23 2012 @ 08:51 AM EST
In my long days of research, toiling at a hot lab bench (well playing with
beakers of stuff anyway) we were often spoken to about the value of patents.
The emphasis was on their defensive value, having a large arsenal of patents
meant any other company would prefer to cross licence with you rather than run
the risk of a patent suit.
Assuming this goal is still valid Oracle seem to be employing an extremely high
risk strategy. Suing over patents that anyone could easily see were far from
clear meant a very strong risk that they would be invalidated and that others
would see that patents can be challenged and overturned, thereby massively
reducing the book value of a major supposed asset.
It would be interesting to see if that's reflected in forthcoming annual
financial reports ...

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

[ Reply to This | # ]

But how would Oracle do this?
Authored by: Anonymous on Thursday, February 23 2012 @ 08:59 AM EST
...meaning Oracle could not reassert the seven patents originally asserted in this case, but that would not preclude Oracle from bringing another patent infringement suit in the future against Google ... provided it can find any of the Sun patents that are valid.

Would having to find any Sun patents that are valid require that Oracle first puts these patents through some court process?

I do not understand this because I trust Oracle thinks that all the patents in its portfolio are indeed valid. How exactly would Oracle "find any Sun patents that are valid" before bringing another suit?

On another note, I am sure we can agree on this: Oracle is facing some serious patent pressure, and Apple must be watching this suit closely. That is, Google will, and is ready to fight.

[ Reply to This | # ]

The Off Topic thread
Authored by: cricketjeff on Thursday, February 23 2012 @ 09:59 AM EST
Nothing related to the current article but do try to stay within the bounds of
topics likely to interest groklawyers please.

If you include liks remember to use html mode and follow the howto guide.

Jeff

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

[ Reply to This | # ]

Correction Thread
Authored by: nsomos on Thursday, February 23 2012 @ 10:08 AM EST
Please post your corrections here.

For example in ...
"expert Oracle to indeed file"

s/expert/expect/
or
expert -> expect

[ Reply to This | # ]

Do it again?
Authored by: Ian Al on Thursday, February 23 2012 @ 11:17 AM EST
Mark wrote,
The court would likely insist that Oracle withdraw the patent claims with prejudice, meaning Oracle could not reassert the seven patents originally asserted in this case, but that would not preclude Oracle from bringing another patent infringement suit in the future against Google ... provided it can find any of the Sun patents that are valid.
I thought the principle was that you only get one chance at a law suit with similar complaints. In other words, if you accuse a company of infringing copyrights or patents with one of their products, you have to include all the claimed infringements in that case because you knew, or should have known, that all the infringements were taking place. I thought that you could only start a new case if there were facts about the infringement that you could not have known at the time of the original case. The courts would see this as malicious and judicially inefficient and could just say 'no' on that basis.

As an example of new facts, you might have bought new copyrights or patents with the right to sue for damages to the previous owner after the end of the old case. Caldera sued Microsoft for copyright infringement damages caused to the previous owner of DRDos - Novell - after they bought DRDos from Novell.

I could see that Oracle might be able to reassert the claims that they winnowed out from this case because they were facts included in the original complaint, but I think the law stops them from reopening the case, anew, on the basis of patents and copyrights that they had during the original case, but did not assert were infringed. If this was not the case, Microsoft could bring infringement cases, one patent at a time, against Android and Linux and the courts would find this judicially very inefficient.

---
Regards
Ian Al
Software Patents: It's the disclosed functions in the patent, stupid!

[ Reply to This | # ]

Oracle v. Google - More Bad News for Oracle on the Patent Validity Front
Authored by: Anonymous on Thursday, February 23 2012 @ 12:28 PM EST
Maybe Oracle should sue the USPTO for issuing bogus patents.
Go for it Larry!

[ Reply to This | # ]

The Yachting-analogies thread
Authored by: BJ on Thursday, February 23 2012 @ 12:56 PM EST
I don't know anything about sailing and yachting or ships
in particular, but this boat is taking on water fast.

bjd


[ Reply to This | # ]

News Picks Thread
Authored by: artp on Thursday, February 23 2012 @ 01:21 PM EST
URLs appreciated!

---
Userfriendly on WGA server outage:
When you're chained to an oar you don't think you should go down when the galley
sinks ?

[ Reply to This | # ]

Comes Transcripts Beam-up location
Authored by: artp on Thursday, February 23 2012 @ 01:23 PM EST
It's a big job!

See Comes v. MS above for details.

Instructions on OCR work are at the end of the HTML How To
above, as well.

---
Userfriendly on WGA server outage:
When you're chained to an oar you don't think you should go down when the galley
sinks ?

[ Reply to This | # ]

So
Authored by: maroberts on Thursday, February 23 2012 @ 01:32 PM EST
How many million dollars will Dr Cockburn have to remove from his damages report
this time? :-P

[ Reply to This | # ]

"whether Oracle wouldn't be better off withdrawing its patent infringement claims"
Authored by: Yossarian on Thursday, February 23 2012 @ 03:16 PM EST
My reading of Google's fight over the patents, so far, is that
it uses mostly "prior art". If I were Oracle then I would not
worry so much about what Google found but about what Google
will find. The reason for that worry is that Google continues
to systematically scan written material and Google is probably
working on improving its search method so the search engine
will do most of the work in picking prior art.

So, if you are not going to win the fight, why even bother
with fighting?

[ Reply to This | # ]

Score Card
Authored by: Steve Martin on Thursday, February 23 2012 @ 03:35 PM EST

A quick status check on the seven patents cited in Oracle's original Complaint:

Complaint
Count
Patent NumberStatus
I6,125,447Withdrawn by Oracle
II6,192,47617 of 21 claims final-rejected: only remaining claim in the case
(claim 14) withdrawn from the case by Oracle
III5,966,702Final office action: rejected
IV7,426,720Action Closing Prosecution: rejected
VRE38,104non-final rejection
VI6,910,205Action Closing Prosecution: rejected
VII6,061,520Four claims being asserted by Oracle allowed after re-examination

So, barring any possible reconsideration, we're down to four claims of one patent, if my quick-and-dirty research here is accurate.

---
"When I say something, I put my name next to it." -- Isaac Jaffe, "Sports Night"

[ Reply to This | # ]

Oracle v. Google - More Bad News for Oracle on the Patent Validity Front
Authored by: Anonymous on Thursday, February 23 2012 @ 10:14 PM EST
What we need to do is pass legislation holding the Patent and Trademark office
legally liable for issuing invalid patents... It would make them much more
cautious about issuing patents until they have exhausted all efforts at
invalidating them in advance.

[ Reply to This | # ]

Definition: Bad Strategy:
Authored by: Anonymous on Friday, February 24 2012 @ 07:47 AM EST
It has been said before, but -

The definition of a bad idea would have to be engaging in a high stakes legal
battle with Google, that hinges on their being able to /search/ for
something.....

[ Reply to This | # ]

Is this all you got?
Authored by: pcrooker on Friday, February 24 2012 @ 06:16 PM EST
This case really reminds me of SCO. All hat and no cattle as pj would say. I
don't think we can ascribe the same conspiratorial suspicion that floated around
the SCO cases to Oracle. Or can we? ;-)

You do have to wonder why, though....

I can't imagine such players approaching Boies, Schiller for their services
again.

[ Reply to This | # ]

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