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Oracle v. Google - Google: Oracle Attempting to "Smuggle" in New Theory; Oracle: Not So
Saturday, March 03 2012 @ 09:20 AM EST

Google is not happy about Oracle's request to amend its infringement contentions (755 [PDF; Text]). In a letter to the court (758 [PDF; Text]) Google accuses Oracle of attempting "to smuggle a completely new infringement theory into the case at this late stage."

As we anticipated in our earlier story, Google argues it is disingenuous for Oracle to claim surprise at the court's claim construction of the term "runtime." As Google points out, Oracle could have (and should have) followed the same approach as Google with respect to the construction of "runtime," i.e., prepare one argument using Google's construction and an alternative argument using Oracle's. But Oracle chose to ignore the Google proposed construction, and it did so at its peril. It should not now be rewarded for its failure and laziness.

Google also points to the fact that allowing such an amendment at this late stage would be an exceptional act by the court. Piled upon all of the other exceptional acts of the court that Oracle seems to expect by its refusal to follow the court's instructions, Oracle comes across as the delinquent asking for just one more chance.

Not surprisingly, Oracle responds (765 [PDF; Text]) to the Google letter in typical fashion by saying Google doesn't understand and is misconstruing the facts and Oracle's argument. And in typical fashion, Oracle ignores the heart of the Google opposition, i.e., that there is no excuse for Oracle waiting until now to assert this alternative infringement contention.

Intriguingly, while in the Van Nest letter Google offers an alternative relief -- that if Oracle is granted the right to amend "that Google be granted leave to supplement its invalidity contentions and expert reports in response" -- Oracle is silent on that, addressing only the main alternative relief Google asked for -- that Oracle's motion be denied.

Oracle first needs to address whether it intends to assert the '205 patent despite the fact that all of the asserted claims of '205 have been rejected in reexamination. If it persists, then the court should stay this proceeding pending the outcome of all of the reexaminations. If Oracle wises up and realizes it is beating a dead horse here, then this whole argument becomes moot. In any case, there is no reasonable basis for the court to grant Oracle's request to amend.

In an unrelated order (766 [PDF; Text]) Judge Alsup is asking the parties to explain how the new Cockburn damage numbers relate to the numbers in the second Cockburn damages report.


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

Docket

03/02/2012 - 758 - Letter from Robert A. Van Nest Opposing Oracle's Request for Leave to Amend its '205 Patent Infringement Contentions. (Francis, Mark) (Filed on 3/2/2012) (Entered: 03/02/2012)

03/02/2012 - 759 - RESPONSE (re 734 MOTION to Strike EXCLUDE PORTIONS OF THE SUPPLEMENTAL EXPERT REPORT OF DR. ALAN J. COX ) filed by Google Inc.. (Van Nest, Robert) (Filed on 3/2/2012) (Entered: 03/02/2012)

03/02/2012 - 760 - Declaration of Reid P. Mullen in Support of 759 Opposition/Response to Motion to Exclude Portions of the Supplemental Expert Report of Dr. Alan J. Cox filed by Google Inc.. (Attachments: # 1 Exhibit A)(Related document(s) 759 ) (Van Nest, Robert) (Filed on 3/2/2012) (Entered: 03/02/2012)

03/02/2012 - 761 - Administrative Motion to File Under Seal filed by Google Inc.. (Van Nest, Robert) (Filed on 3/2/2012) (Entered: 03/02/2012)

03/02/2012 - 762 - RESPONSE (re 729 MOTION to Strike PORTIONS OF GREGORY LEONARDS SUPPLEMENTAL REPORT ) filed by Google Inc.. (Van Nest, Robert) (Filed on 3/2/2012) (Entered: 03/02/2012)

03/02/2012 - 763 - Declaration of David Zimmer in Support of Google Inc.'s Oppostion to Oracle America, Inc.'s Motion to Strike Portions of Gregory Leonard's Supplemental Expert Report filed by Google Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit E(1), # 7 Exhibit F, # 8 Exhibit G)(Van Nest, Robert) (Filed on 3/2/2012) (Entered: 03/02/2012)

03/02/2012 - 764 - Declaration of GREGORY LEONARD in Support of Google's Opposition to Oracle's Motion to Strike Portions of Gregory Leonard's Supplemental Report filed by Google Inc.. (Van Nest, Robert) (Filed on 3/2/2012) (Entered: 03/02/2012)

03/02/2012 - 765 - Letter from Michael A. Jacobs Re Oracle Request for Leave to File Motion to Amend Oracle's 205 Patent Infringement Contentions and Report. (Jacobs, Michael) (Filed on 3/2/2012) (Entered: 03/02/2012)

3/02/2012 - 766 - ORDER REGARDING DAUBERT HEARING ON MARCH 7. Signed by Judge Alsup on March 2, 2012. (whalc1, COURT STAFF) (Filed on 3/2/2012) (Entered: 03/02/2012)


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

Documents

758

[Keker & Van Nest LLP Letterhead]

March 2, 2012

VIA E-FILING

The Honorable William Alsup
United States District Court, Northern District of California
[address]

Re: Oracle America, Inc. v. Google Inc., No. 3:10-CV-03561-WHA (N.D. Cal.)

Dear Judge Alsup:

Google opposes Oracle's eleventh-hour request for leave to inject a new infringement theory and submit a supplemental expert report with respect to the `205 patent. (Dkt. No. 755.) Oracle's position is unclear. It first claims that "no changes" to its theories of infringement "are intended" but later notes that "no change is proposed for the second infringement theory" -- implicitly conceding that the "first" theory will change. In fact, Oracle's amended contentions and supplemental report represent a marked shift in its allegations. As an excuse for this shift, Oracle points to the Court's recent construction. That construction provides no basis to smuggle a completely new infringement theory into the case at this late stage.

Oracle's infringement theory as to the `205 patent has always been directed at the time when an application is running, which Oracle has argued includes the time when the application is loaded into memory upon launch. Oracle alleged that the accused "dexopt" process replaces certain virtual machine instructions of an application while it is running in the Dalvik virtual machine. Oracle now wants to assert for the first time a different infringement theory directed at the replacement of certain virtual machine instructions at the time when an application is first installed on a device. That process could happen hours, days, or weeks before an application is actually executed in the Dalvik virtual machine. Oracle further argues, again for the first time, that installation qualifies as "runtime" (as construed by this Court) because dexopt is allegedly

The Honorable William Alsup
March 2, 2012
Page 2

initially launched by some peripheral virtual machine instructions in the Android operating system (even though dexopt itself is native machine code and has no virtual machine instructions). This new theory is a dramatic departure from Oracle's previous position and contradicts Oracle's earlier contentions, in support of which Oracle's expert argued in his report and at deposition that dexopt runs while an application is launched by a user.

Oracle cannot justify its failure to disclose this new theory during discovery. Over a year ago, Google's Patent L.R. 4-2 disclosure included a proposed construction of "runtime" ("during execution of the virtual machine instructions") that is nearly identical to the Court's recent construction ("during execution of one or more virtual machine instructions"). Although the parties selected other terms for the initial Markman briefing, Oracle was well aware of Google's construction of "runtime" and chose to ignore it. In the expert reports served over six months ago, Google's non-infringement expert report took into account both parties' proposed constructions of "runtime," yet Oracle's expert report (and reply report) never addressed Google's proposed construction, and never raised this new theory. Indeed, Oracle withheld this new infringement theory against dexopt until this week - over a month after the Court issued its construction. There is no merit to Oracle's feigned surprise by the Court's construction.

This Court has already properly stricken Oracle's prior, late-hour attempts to introduce new theories that it failed to disclose during discovery. (See Dkt. Nos. 464; 512.) The Patent Local Rules requires leave of Court based on good cause shown, which Oracle has not shown. See Patent L.R. 3-6. As often explained by this Court, "[i]n contrast to the more liberal policy for amending pleadings, `the philosophy behind amending claim charts is decidedly conservative, and designed to prevent the shifting sands approach to claim construction.'" Kilopass Tech., Inc. v. Sidense Corp., No. 10-cv-02066, 2011 U.S. Dist. LEXIS 126837, at *3-4

The Honorable William Alsup
March 2, 2012
Page 3

(N.D. Cal. Nov. 2, 2011) (emphasis added) (quoting LG Elecs. Inc. v. Q-Lity Computer Inc., 211 F.R.D. 360, 367 (N.D. Cal. 2002) (quoting Atmel Corp. v. Information Storage Devices, Inc., No. 95-cv-1987, 1998 U.S. Dist. LEXIS 17564 at *7 (N.D. Cal. Nov. 5, 1998))). "The patent local rules were `designed to require parties to crystallize their theories of the case early in the litigation and to adhere to those theories once they have been disclosed.'" Id. (quoting O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 n. 12 (Fed. Cir. 2006) (emphasis added) (quoting Nova Measuring Instruments Ltd. v. Nanometrics, Inc., 417 F. Supp. 2d 1121, 1123 (N.D. Cal. 2006))). Courts are determined to "ensure that litigants put all their cards on the table up front." Atmel, 1998 U.S. Dist. LEXIS 17564 at *7-8. If Oracle had multiple dexopt infringement theories, it should have disclosed all of them to Google long ago.

If, however, the Court grants Oracle leave to amend its contentions and introduce its new theory, it would necessarily implicate similar "install time" implementations in the prior art -- including Sun's own Java platform, and publications by James Gosling, Stavros Macrakis, L.P. Deutsch & Allan M. Schiffman -- that Google did not identify in response to Oracle's previous theory. Google prefers not to submit new invalidity contentions and expert reports at this stage, especially for claims found to be invalid in the PTO's recent Action Closing Prosecution on the `205 patent. However, Google should not be precluded from supplementing its invalidity contentions if Oracle is allowed to introduce new infringement theories. Google respectfully requests that Oracle's request be denied and, in the alternative, that Google be granted leave to supplement its invalidity contentions and expert reports in response.

Sincerely,

/s/ Robert A. Van Nest


765

[Morrison & Foerster Letterhead]

March 2, 2012

Hon. William Alsup
United States District Court, Northern District of California
[address]

Re: Oracle America, Inc. v. Google, Inc., Case No. 3:10-cv-03561-WHA

Dear Judge Alsup:

Oracle has just received Google’s letter in opposition to Oracle’s request for leave to file a motion to amend its infringement contentions and report with respect to the ’205 patent. Google’s opposition contains a number of misleading or false characterizations of Oracle’s original infringement contentions, Oracle’s proposed supplementation, and Prof. Mitchell’s reports and testimony. Google’s argument is not supported by any citations to those materials.

Here are just two examples. First, Google argues that “Oracle’s infringement theory as to the ‘205 patent has always been directed at the time when an application is running, which Oracle has argued includes the time when the application is loaded into memory upon launch.” That is false. With respect to the “generating, at runtime” limitation, which is all that Oracle’s motion is about, Oracle’s infringement theory has always been directed to the time when Android’s dexopt is running.

Second, Google argues that Oracle’s proposed supplementation “is a dramatic departure from Oracle’s previous position and contradicts Oracle’s earlier contentions, in support of which Oracle’s expert argued in his report and at deposition that dexopt runs while an application is launched by a user.” That is false. Oracle’s original eight-page

Hon. William Alsup
March 2, 2012
Page Two

infringement chart for the “generating, at runtime” element stated (as did infringement expert Prof. Mitchell) that the infringing optimizations “are done by the dexopt command, either in the build system or by the installer.” (Oracle 4/1/11 Infringement Contentions Exhibit B-2 at 12; Mitchell Opening Report ¶ 411 (emphasis added).) When Oracle adds in its two- paragraph supplementation that dexopt runs while the virtual machine instructions of Installer.java are executing, it is anything but a dramatic departure from its previous position—it is the same as Oracle’s previous position.

Oracle respectfully requests that the Court grant leave for Oracle to file its motion to amend, so that the Court may make a decision on a full record, rather than through the limited view offered by the précis letter process.

Respectfully submitted,

/s/ Michael A. Jacobs

Michael A. Jacobs


766

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 DAUBERT
HEARING ON MARCH 7

For the hearing on March 7, please be prepared to address the following. For the damages time period used in the third report, how do the new numbers compare to the old numbers in the second report? Walk through each step used by Dr. Cockburn to adjust and to apportion the 2006 offer to the claims/patents in suit. The main criticisms can then be addressed within the time limit for the hearing.

IT IS SO ORDERED.

Dated: March 2, 2012.

/s/ William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE


  


Oracle v. Google - Google: Oracle Attempting to "Smuggle" in New Theory; Oracle: Not So | 223 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Corrections here
Authored by: feldegast on Saturday, March 03 2012 @ 09:21 AM EST
So they can be fixed

---
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 | # ]

News picks
Authored by: feldegast on Saturday, March 03 2012 @ 09:22 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 | # ]

Off topic
Authored by: feldegast on Saturday, March 03 2012 @ 09:23 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 | # ]

Comes transcribing
Authored by: feldegast on Saturday, March 03 2012 @ 09:24 AM EST
Thank you for your support

---
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 | # ]

I just don't get it.
Authored by: Anonymous on Saturday, March 03 2012 @ 10:29 AM EST
After the Novell-SCO litigation, I had such respect for
Michael Jacobs (and by extension Morrison & Foerster). Put
aside what you think of their clients in the 2 cases for a
second--I mean respect as consummate legal professionals.
They had all their ducks in a row, and they never made a
misstep.

I don't understand how the approach here is what I would
expect from them. They've already clearly pissed off the
court with the shenanigans on the damage reports. They've
lost a lot of "goodwill" capital. The court is already
pressing them on putting their case on hold pending USPTO
reexaminations that are in progress.

Now, they're trying a hail mary to try and wring some
possible additional allegations out of a patent that's so
weak that the USPTO has already rejecting it.

Not only is this untimely (not a good place to start), it's
also almost certain to involve additional delays (I don't
see the court NOT letting Google at least have leave to
respond to the new allegations, which puts the trial
schedule out the window). But more importantly, it's on a
patent that the USPTO has rejected--a patent the court has
already suggested to Oracle that they consider withdrawing
WITH PREJUDICE.

I get the concept of zealous representation, but this seems
not just highly unlikely to go anywhere, but it almost
certainly actively antagonizing a somewhat hostile court for
no good reason.

Oh, by the way, it's a great lead-in to your "no, your
honor, of course we're doing everything in our power to
comply with the court's orders and make the trial as
efficient as possible!" argument you're planning to make at
the Cockburn damage report hearing. You know, the one that
could throw out a huge amount of your damage theories for
BOTH patents AND copyrights?

[ Reply to This | # ]

"Oracle first needs to address..."
Authored by: Anonymous on Saturday, March 03 2012 @ 11:17 AM EST
This is confusing.

"First" - before what? Surely it's possible for the court
to rule on this current motion without waiting for any
further input from Oracle. If I were the judge, I'd have
issued my order already :) Is there some reason you think
the judge will want to delay ruling until Oracle picks a
course of action?

"needs to" - why? This is in regards to a prior
question/order from the judge, if I recall. Please keep in
mind that not all your readers read about every motion.
It's very helpful to recap where the case stands
procedurally and what's due to happen next, and to link to
those earlier orders where relevant.

[ Reply to This | # ]

an unrelated order
Authored by: IANALitj on Saturday, March 03 2012 @ 12:11 PM EST
At the end of Mark's comments, he describes an order from Judge Alsup as
"an unrelated order."

I agree that the subject matter is unrelated. However, I would suggest that on
a deeper level Oracle's request to put in an amendment is very similar to the
succession of damage reports that is the subject of Judge Alsup's order. Both
moves seem to me to be intended for delay and obfuscation, rather than to move
this sorry case forward.

Oracle (acting through its lawyers, of course, but they are probably being
instructed as to tactics) is digging itself into one hole after another. Judge
Alsup is handing them a shovel, and insisting that they use it in an attempt to
dig themselves out.

[ Reply to This | # ]

Oracle v. Google - Google: Oracle Attempting to "Smuggle" in New Theory; Oracle: Not So
Authored by: Anonymous on Saturday, March 03 2012 @ 12:36 PM EST
"In any case, there is no reasonable basis for the court to
grant Oracle's request to amend."

This judge doesn't seem to think he needs a good reason to
bend over backwards for Oracle; as evidenced by giving them an unprecedented
third try at a damages report.

[ Reply to This | # ]

Is it just my imagination?
Authored by: jbb on Saturday, March 03 2012 @ 02:40 PM EST
Is it just my imagination or is Oracle's entire case completely unraveling?

It seems that all of the judge's short little questions are aimed directly at the foundations of Oracle's case. Asking how numbers changed between Oracle's damages report #2 and their damages report #3 is brilliant. It's like he is asking Google to give him a good reason to throw out the report in its entirety. His question about whether the copyrightablity of APIs is language dependent gives Google a chance to give him a good reason to throw out the API copyright claims. The judge has already said that pursuing the claims about a few copied files would just be a waste of everyone's time.

Intermixed with all that there seem to be several difficulties with Oracle's patent claims, not the least of which is the fact that most of their patents in-suit have already been invalidated. In addition, the lack of marking and Oracle's testimony that they don't practice the patents themselves both hurt. Losing all of their damages report (or at least the bulk of it) would hurt a lot.

Nothing seems to be going Oracle's way now. The judge is going to have a chance to make some decisions in the next couple of weeks that could eviscerate most of Oracle's case and this is happening right when Oracle's credibility with this judge is hovering near zero. It is almost sad. It certainly whets my appetite to see SCO go mano a mano against IBM.

---
Shirky Principle: Institutions will try to preserve the problem to which they are the solution.

[ Reply to This | # ]

Oracle v. Google - Google: Oracle Attempting to "Smuggle" in New Theory; Oracle: Not So
Authored by: Anonymous on Sunday, March 04 2012 @ 12:00 PM EST
Now just about all the asserted patents are in serious trouble, can we
officially refer to oracle as the troll formerly known as sun?

[ Reply to This | # ]

Oracle v. Google - Google: Oracle Attempting to "Smuggle" in New Theory; Oracle: Not So
Authored by: Anonymous on Sunday, March 04 2012 @ 09:17 PM EST
In the expert reports served over six months ago, Google's non-infringement expert report took into account both parties' proposed constructions of "runtime," yet Oracle's expert report (and reply report) never addressed Google's proposed construction, and never raised this new theory.
[...]
If, however, the Court grants Oracle leave to amend its contentions and introduce its new theory, it would necessarily implicate similar "install time" implementations in the prior art -- including Sun's own Java platform, and publications by James Gosling, Stavros Macrakis, L.P. Deutsch & Allan M. Schiffman -- that Google did not identify in response to Oracle's previous theory. Google prefers not to submit new invalidity contentions and expert reports at this stage, especially for claims found to be invalid in the PTO's recent Action Closing Prosecution on the `205 patent. However, Google should not be precluded from supplementing its invalidity contentions if Oracle is allowed to introduce new infringement theories. Google respectfully requests that Oracle's request be denied and, in the alternative, that Google be granted leave to supplement its invalidity contentions and expert reports in response.
...pure gold. So they are basically saying "we did our homework, wish Oracle had done the same", and finish it off by saying "you know, this motion, if it goes through, is just a giant waste of everyone's time." I just find it hard to imagine that Oracle's motion goes through, especially since the judge wants a speedy trial (which Google is playing to). I am as puzzled as anyone else as to what they want to achieve with it.

On another note, this seems to be designed just to anger the judge, along the lines of "I ask you to toss this patent out with prejudice, and you think it's a good idea to change its claim construction?!"

Looking forward to what Wednesday brings. My money is on the damages report either being tossed out or unrecognizably cut down, and this motion denied. With what is left of the case, I would not be completely surprised if the case is tossed out as a whole.

[ Reply to This | # ]

Oracle v. Google - Google: Oracle Attempting to "Smuggle" in New Theory; Oracle: Not So
Authored by: Anonymous on Monday, March 05 2012 @ 07:33 AM EST
Mark says the following in the article:
As Google points out, Oracle could have (and should have) followed the same approach as Google with respect to the construction of "runtime," i.e., prepare one argument using Google's construction and an alternative argument using Oracle's.
Doesn't this imply that Google has already done any work necessary to counter whatever it is that Oracle now wants to change in their infringement claims? Why is Google now claiming that they will have to do extra work if this request is allowed, as they have already prepared an argument based on the definition of "runtime" that the court has decided upon?

[ Reply to This | # ]

1 million phones is nothing
Authored by: Anonymous on Monday, March 05 2012 @ 06:40 PM EST
For those who didn't get the sarcasm, one million phones in one year isn't even
a drop in the bucket: 440 million phones sold in the third QUARTER of 2011:
https://www.theglobeandmail.com/news/technology/mobile-technology/mobile-phone-s
ales-drop-off-in-third-quarter-report/article2236623/

[ Reply to This | # ]

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