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Oracle Sues Lodsys! ~pj - Updated, Complaint as text
Monday, June 04 2012 @ 04:58 PM EDT

The constellations have shifted again. Oracle has just sued Lodsys, seeking to invalidate four of its patents. The complaint actually claims noninfringement and invalidity.

I know. Oracle is now the good guy. Major good guy.

See why I always tell you that to avoid whiplash, don't look at the parties in litigation and decide who you like, but anaylze the issues involved and plant your flag accordingly? Hence, here we are, on the same side of this issue, Groklaw and Oracle. Who'd-a thunk it last week?

No. The API claims in Oracle v. Google are still from the Devil, as far as I'm concerned. But now there is a new issue in new litigation, and Lodsys... well. We've been covering Lodsys for quite a while.

I have all the Oracle documents for you. You'll note that Oracle here is represented by Fox, O’Neill & Shannon, S.C.

Here are all the documents:

2:12-cv-00550-CNC
Oracle America Inc v. Lodsys Group LLC et al
Charles N Clevert, Jr, presiding
Date filed: 06/01/2012
Date of last filing: 06/04/2012

Doc. No. Dates Description
- Filed: 06/01/2012
Entered: 06/04/2012
Notice of Judge Assignment Docket Text: NOTICE Regarding assignment of this matter to Chief Judge Charles N Clevert, Jr ;Consent/refusal forms for Magistrate Judge Gorence to be filed within 21 days;the consent/refusal form is available on our web site (jcl)
1 Filed & Entered: 06/01/2012 COMPLAINT with Jury Demand; against All Defendants by Oracle America Inc. ( Filing Fee PAID $350 receipt number 0757-1494219) (Attachments: # (1) Civil Cover Sheet, # (2) Summons, # (3) Summons, # (4) Exhibit A to Complaint, # (5) Exhibit B to Complaint, # (6) Exhibit C to Complaint, # (7) Exhibit D to Complaint)(Hanrahan, Michael)
2 Filed & Entered: 06/01/2012 DISCLOSURE Statement by Oracle America Inc. (Hanrahan, Michael)
- Filed & Entered: 06/04/2012 Summons Issued as to Lodsys Group LLC, Lodsys LLC. (kah)
3 Filed & Entered: 06/04/2012 Report to the Commissioner of Patents and Trademarks (kah)
The four patents are Exhibits A-D attached to the complaint. There are two summonses, because they served Lodsys in Wisconsin, where the lawsuit will be happening, and in Texas, where Lodsys has some kind of dusty ghost office amongst the troll tumbleweed.

Update: I have the Complaint done as text. Get a load of all the prior art Oracle lists. If you know of more, by all means sing out.

It seems that Lodsys has been going after Oracle customers, and they in turn have been asking Oracle to indemnify them. Lodsys, methinks, has made a mistake. One doesn't go after Oracle's money. No. No. Never a good plan. I suspect Oracle will go for damages, tripled, and all their expenses, legal fees, etc. when this is over. That's what that long list of prior art is saying to me, that it's war. Also, note that DLA Piper US is also on the case. That's another signal that Oracle intends to prevail, all other things being equal. When you have to add "US" to your law firm name, it's because you are global. Here's what DLA Piper says about itself:

DLA Piper is a global law firm with 4,200 lawyers located in 31 countries and 77 offices throughout the Americas, Asia Pacific, Europe and the Middle East, positioning us to help companies with their legal needs anywhere in the world.
So, for Lodsys, there's no place to run, change its name, put on a hat and mustache, anywhere on earth to get away from DLA Piper. Here's Mark D. Fowler's bio; James M. Heinz's bio; and Kathryn Riley Grasso's bio. She represented Rambus. Eek. These are hard-core patent warriors, all partners at the firm. Mr. Fowler is Co-Chair of DLA Piper's Patent Litigation Practice. I remember him from his work for Sun against NetApp back in 2008. It's also a firm with an Open Source presence.

This is the A Team, ladies and gentlemen.

Here's the complaint, as text:

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

IN THE UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN

_________________

ORACLE AMERICA, INC.,

Plaintiff,

v.

LODSYS, LLC, and
LODSYS GROUP, LLC

Defendants.

__________________

COMPLAINT FOR DECLARATORY JUDGMENT
(JURY TRIAL DEMANDED)

__________________

Plaintiff Oracle America, Inc. (“Oracle ”) hereby files this Complaint for Declaratory Judgment against Lodsys, LLC and Lodsys Group, LLC (collectively, “Defendants” or “Lodsys”) and alleges as follows:

NATURE OF THE ACTION

1. This is an action for declaratory judgment of noninfringement and invalidity of four United States Patents pursuant to the Declaratory Judgment Act, 28 U.S.C. §§ 2201-2202, and the Patent Laws of the United States, 35 U.S.C. § 1 et seq., and for such other relief as the Court deems just and proper.

1

THE PARTIES

2. Plaintiff Oracle America, Inc. is a corporation organized and existing under the laws of State of Delaware and having as its principal place of business at [address], California 94065, and is doing business in this district.

3. On information and belief, Lodsys LLC is a limited liability company organized and existing under the laws of the State of Texas and claims to have a place of business at [address], Marshall, Texas 75670. The Texas Secretary of State lists the corporate address of Lodsys, LLC as 800 Brazos, Suite 400, Austin, Texas 78701.

4. On information and belief, Lodsys Group, LLC is a limited liability company organized and existing under the laws of the State of Texas and claims to have a place of business at [address], Marshall, Texas 75670, the same address as Lodsys, LLC. The Texas Secretary of State lists the corporate address of Lodsys Group, LLC as 800 Brazos, Suite 400, Austin, Texas 78701, the same address as that listed for Lodsys, LLC. Together, Lodsys, LLC and Lodsys Group, LLC claim to have all rights and title to the Patents-in-Suit (as defined hereinbelow).

5. On information and belief, Lodsys, LLC and Lodsys Group, LLC are alter egos of each other and/or Lodsys Group, LLC is a mere continuation of Lodsys, LLC, and Lodsys Group, LLC is otherwise liable fully for, and liable as if it were the same as, Lodsys, LLC. On information and belief, Mark Small is the Chief Executive Officer of both Lodsys, LLC and Lodsys Group, LLC, is an employee of both Lodsys, LLC and Lodsys Group, LLC, resides and maintains his residence within this judicial district, and conducts Lodsys’ business from an office located in Oconomowoc, Wisconsin in this judicial district.

2

JURISDICTION AND VENUE

6. This action arises under the patent laws of the United States, Title 35, United States Code, 35 U.S.C. § 1, et seq., and under the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202. This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338(a), 1367, 2201 and 2202 and the Patent Laws of the United States, 35 U.S.C. § 1 et seq. Venue is proper in this district pursuant to 28 U.S.C. §§ 1391 and 1400.

7. Upon information and belief, this Court has personal jurisdiction over Lodsys because Mr. Small resides within, and conducts Lodsys’ business related to licensing and enforcement of the patents-in-suit, including licensing and enforcement actions directed at Oracle customers, from his location within this judicial district.

8. Oracle develops and licenses a suite of e-commerce enhancement software which Oracle provides, typically on a software-as-a-service basis, through servers that Oracle owns or controls (“Web Commerce Products”). The Web Commerce Products, including Oracle Live Help Chat on Demand (“Chat”) and Oracle Contact on Demand (“COD”), are products, that enhance the websites of Oracle’s customers by providing features such as chat sessions between website visitors and customer service representatives associated with such websites. The Web Commerce Products are separate and distinct from a suite of customer experience software provided by Oracle subsidiary RightNow Technologies, Inc. (the “CRM Products”) that are the subject of a separate declaratory judgment lawsuit pending before this Court. The Web Commerce products include products that were formerly marketed by Art Technology Group, Inc. prior to its acquisition by Oracle, and by InstantService.com, Inc. prior to its acquisition by Art Technology Group, Inc., and by eStara. Inc., prior to its acquisition by Art Technology Group, Inc., and products developed internally by Oracle.

3

9. Lodsys purports to own rights in four United States Patents: U.S. Patent No. 5,999,908 (“the ’908 patent”), U.S. Patent No. 7,133,834 (“the ’834 patent”), U.S. Patent No. 7,222,078 (“the ’078 patent”) and U.S. Patent No. 7,620,565 (“the ’565 patent”) (collectively the “Patents-in-Suit”).

10. Lodsys did not invent the technology claimed in the Patents-in-Suit. Instead, Lodsys claims to have acquired the Patents-in-Suit from a non-practicing entity, Webvention, LLC, and now seeks to extract royalties by demanding that Oracle’s customers, or Oracle, take a license under the Patents-in-Suit.

11. On information and belief, Lodsys is a patent holding company that does not practice any of the Patents-in-Suit but attempts to obtain licensing revenues in connection with its assertions of those patents.

12. Through communications and conduct, Lodsys has repeatedly threatened numerous Oracle customers with assertion of the Patents-in-Suit against Oracle’s Web Commerce Products. For example, since early 2011 and continuing until shortly before the filing of this Complaint, Lodsys has sent notice of infringement letters (“Notice Letters”) to dozens of Oracle’s customers bearing the heading “Re: Infringement of U.S. Patent Nos. 5,999,908, 7,133,834, 7,222,078 and 7,620,565 (Abelow).” These Notice Letters define the term “Lodsys Patents” as including all four of the Patent-in-Suit and state that “[w]e have reviewed your use of the Lodsys Patent[s] and have prepared the enclosed claim chart demonstrating at least one instance of how you utilize the inventions embodied in the Lodsys Patents.” One or more claim charts purporting to establish infringement of one or more of the Patents-in-Suit is included with the Notice Letters. The claim charts, through screen shots of the customer’s website, identify Oracle products as the allededly infringing functionality. These Notice Letters also included

4

offers to license the Patents-in-Suit.

13. Some of the threatened Oracle customers, including Walgreen Co., Recreational Equipment, Inc. and Epicor, Inc. were recently named as defendants in lawsuits brought by Lodsys in the United States District Court for the Eastern District of Texas on May 10, 2012, confirming Lodsys’ ability and willingness to file suit.

14. Lodsys has not yet sued most of the threatened Oracle customers for infringement of the Patents-in-Suit, in this Court or elsewhere. However, several factors, including the imminent expiration of the Patents-in-Suit on August 6, 2012, the high number of Oracle customers who have received Lodsys Notice Letters, and the fact that, since the filing of the aforementioned lawsuits, Lodsys continues to send Notice Letters to additional Oracle customers, to follow-up via e-mail and telephone calls with many Oracle customers and threatens to bring suit if the customer does not obtain a license, provide a reasonable basis for Oracle to believe that Lodsys intends to file additional suits against Oracle customers for infringement of the Patents-in-Suit.

15. As a result of the Notice Letters and aforementioned lawsuits, many of the threatened Oracle customers have asserted that Oracle is obligated to indemnify them with respect to the Patents-in-Suit.

16. Lodsys is not entitled to any royalties from Oracle or any of its customers, nor does Oracle or any of its customers need a license to the Patents-in-Suit. Oracle, its customers and the end users of the Oracle customers’ websites have not infringed, and do not infringe, either directly or indirectly, any valid and enforceable claim of any of the Patents-in-Suit, either literally or under the doctrine of equivalents.

17. Lodsys’ conduct creates a substantial controversy between Oracle and Lodsys of

5

sufficient immediacy and reality to warrant the issuance of a declaratory judgment.

THE PATENTS

18. U.S. Patent No. 5,999,908 (“the ’908 patent”) is entitled “Customer-Based Product Design Module” and bears an issuance date of December 7, 1999. A true and correct copy of the ’908 patent is attached hereto as Exhibit A.

19. U.S. Patent No. 7,133,834 (“the ’834 patent”) is entitled “Product V alue Information Interchange Server” and bears an issuance date of November 7, 2006. A true and correct copy of the ’834 patent is attached hereto as Exhibit B.

20. U.S. Patent No. 7,222,078 (“the ’078 patent”) is entitled “Methods and System for Gathering Information from Units of a Commodity” and bears an issuance date of May 22, 2007. A true and correct copy of the ’078 patent is attached hereto as Exhibit C.

21. U.S. Patent No. 7,620,565 (“the ’565 patent”) is entitled “Customer-Based Product Design Module” and bears an issuance date of November 17, 2009. A true and correct copy of the ’565 patent is attached hereto as Exhibit D.

FIRST CLAIM FOR RELIEF
(Declaratory Judgment of Non-Infringement of the ’908 Patent)

22. Oracle realleges and incorporates herein by reference each and every allegation contained in Paragraphs 1 through 21 as though fully set forth herein.

23. Oracle, its customers, and the end users of the Oracle customers’ websites have not infringed, and do not infringe, directly or indirectly any valid and enforceable claim of the ’908 patent in connection with any Web Commerce Products, including but not limited to the Chat and COD products.

6

24. As a result of the acts and facts alleged in the foregoing paragraphs, there exists a substantial controversy of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.

25. A judicial declaration is necessary and appropriate so that Oracle and its customers may ascertain their rights regarding the ’908 patent.

SECOND CLAIM FOR RELIEF
(Declaratory Judgment of Non-Infringement of the ’834 Patent)

26. Oracle realleges and incorporates herein by reference each and every allegation contained in Paragraphs 1 through 25 as though fully set forth herein.

27. Oracle, its customers, and the end users of the Oracle customers’ websites have not infringed, and do not infringe, directly or indirectly, any valid and enforceable claim of the ’834 patent in connection with any Web Commerce Products, including but not limited to the Chat and COD products.

28. As a result of the acts and facts alleged in the foregoing paragraphs, there exists a substantial controversy of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.

29. A judicial declaration is necessary and appropriate so that Oracle and its customers may ascertain their rights regarding the ’834 patent.

7

THIRD CLAIM FOR RELIEF
(Declaratory Judgment of Non-Infringement of the ’078 Patent)

30. Oracle realleges and incorporates herein by reference each and every allegation contained in Paragraphs 1 through 29 as though fully set forth herein.

31. Oracle, its customers, and the end users of the Oracle customers’ websites have not infringed, and do not infringe, directly or indirectly any valid and enforceable claim of the ’078 patent in connection with the Web Commerce Products, including but not limited to the Chat and COD products.

32. As a result of the acts and facts alleged in the foregoing paragraphs, there exists a substantial controversy of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.

33. A judicial declaration is necessary and appropriate so that Oracle and its customers may ascertain their rights regarding the ’078 patent.

FOURTH CLAIM FOR RELIEF
(Declaratory Judgment of Non-Infringement of the ’565 Patent)

34. Oracle realleges and incorporates herein by reference each and every allegation contained in Paragraphs 1 through 33 as though fully set forth herein.

35. Oracle, its customers, and the end users of the Oracle customers’ websites have not infringed, and do not infringe, directly or indirectly any valid and enforceable claim of the ’565 patent in connection with any Web Commerce Products, including but not limited to the Chat and COD products.

36. As a result of the acts and facts alleged in the foregoing paragraphs, there exists a substantial controversy of sufficient immediacy and reality to warrant the issuance of a

8

declaratory judgment.

37. A judicial declaration is necessary and appropriate so that Oracle and its customers may ascertain their rights regarding the ’565 patent.

FIFTH CLAIM FOR RELIEF
(Declaratory Judgment of Invalidity of the ’908 Patent)

38. Oracle realleges and incorporates by reference herein each and every allegation contained in paragraphs 1 through 21 as though fully set forth herein.

39. Claims 1-37 of the ’908 patent are invalid for failure to meet the conditions of patentability of, and to otherwise comply with, one or more provisions of 35 U.S.C. §§ 100 et seq., 101, 102, 103 and 112. At a minimum, the claims of the ’908 patent are invalid under 35 U.S.C. §§ 102 and 103 based upon at least the following pieces of prior art in view of Lodsys’ apparent application of the claims of that patent: U.S. Patent No. 4,245,245 (“Matsumoto”), U.S. Patent No. 4,546,382 (“McKenna”), U.S. Patent No. 4,345,315 (“Cadotte”), U.S. Patent No. 4,567,359 (“Lockwood”), U.S. Patent No. 4,689,619 (“O’Brien, Jr.”), U.S. Patent No. 4,740,890 (“William”), U.S. Patent No. 4,816,904 (“McKenna”), U.S. Patent No. 4,829,558 (“Welsh”), U.S. Patent No. 4,862,268 (“Campbell”), U.S. Patent No. 4,893,248 (“Pitts”), U.S. Patent No. 4,973,952 (“Malec”), U.S. Patent No. 4,912,552 (“Allison, III”), U.S. Patent No. 4,992,940 (“Dworkin”), U.S. Patent No. 5,001,554 (“Johnson”), U.S. Patent No. 5,003,384 (“Durden”), U.S. Patent No. 5,029,099 (“Goodman”), U.S. Patent No. 5,036,479 (“Prednis”), U.S. Patent No. 5,056,019 (“Schultz”), U.S. Patent No. 5,065,338 (“Phillips”), U.S. Patent No. 5,077,582 (“Kravette”), U.S. Patent No. 5,083,271 (“Thacher”), U.S. Patent No. 5,117,354 (“Long”), U.S. Patent No. 5,138,377 (“Smith”), U.S. Patent No. 5,207,784 (“Schwartzendruber”), U.S. Patent No. 5,237,157 (“Kaplan”), U.S. Patent No. 5,282,127 (“Mii”), U.S. Patent No. 5,283,734 (“Von

9

Kohorn”), U.S. Patent No. 5,291,416 (“Hutchins”), U.S. Patent No. 5,335,048 (“Takano”), U.S. Patent No. 5,347,449 (“Meyer”), U.S. Patent No. 5,347,632 (“Filepp”), U.S. Patent No. 5,477,262 (“Banker”), U.S. Patent No. 5,496,175 (“Oyama”), U.S. Patent No. 5,740,035 (“Cohen”), U.S. Patent No. 5,956,505 (“Manduley”), JP H2-65556 (“Kita”), JP-03-064286-A (“Garza”), JP H3-80662 (“Ukegawa”), JP S60-200366 (“Tanaka”), and JP S62-280771 (“Furukawa”). These examples of prior art are intended to be illustrative and not exhaustive, and Oracle reserves the right to assert other specific pieces of prior art.

40. As a result of the acts and facts alleged in the foregoing paragraphs, there exists a substantial controversy of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.

41. A judicial declaration is necessary and appropriate so that Oracle and its customers may ascertain their rights regarding the ’908 patent.

SIXTH CLAIM FOR RELIEF
(Declaratory Judgment of Invalidity of the ’834 Patent)

42. Oracle realleges and incorporates by reference herein each and every allegation contained in Paragraphs 1 through 21 as though fully set forth herein.

43. Claims 1-22 of the ’834 patent are invalid for failure to meet the conditions of patentability of, and to otherwise comply with, one or more provisions of 35 U.S.C. §§ 100 et seq., 101, 102, 103 and 112. At a minimum, the claims of the ’834 patent are invalid under 35 U.S.C. §§ 102 and 103 based upon at least the following pieces of prior art in view of Lodsys’ apparent application of the claims of that patent: U.S. Patent No. 4,245,245 (“Matsumoto”), U.S. Patent No. 4,546,382 (“McKenna”), U.S. Patent No. 4,345,315 (“Cadotte”), U.S. Patent No. 4,567,359 (“Lockwood”), U.S. Patent No. 4,689,619 (“O’Brien, Jr.”), U.S. Patent No. 4,740,890

10

(“William”), U.S. Patent No. 4,816,904 (“McKenna”), U.S. Patent No. 4,829,558 (“Welsh”), U.S. Patent No. 4,862,268 (“Campbell”), U.S. Patent No. 4,893,248 (“Pitts”), U.S. Patent No. 4,973,952 (“Malec”), U.S. Patent No. 4,912,552 (“Allison, III”), U.S. Patent No. 4,992,940 (“Dworkin”), U.S. Patent No. 5,001,554 (“Johnson”), U.S. Patent No. 5,003,384 (“Durden”), U.S. Patent No. 5,029,099 (“Goodman”), U.S. Patent No. 5,036,479 (“Prednis”), U.S. Patent No. 5,056,019 (“Schultz”), U.S. Patent No. 5,065,338 (“Phillips”), U.S. Patent No. 5,077,582 (“Kravette”), U.S. Patent No. 5,083,271 (“Thacher”), U.S. Patent No. 5,117,354 (“Long”), U.S. Patent No. 5,138,377 (“Smith”), U.S. Patent No. 5,207,784 (“Schwartzendruber”), U.S. Patent No. 5,237,157 (“Kaplan”), U.S. Patent No. 5,282,127 (“Mii”), U.S. Patent No. 5,283,734 (“Von Kohorn”), U.S. Patent No. 5,291,416 (“Hutchins”), U.S. Patent No. 5,335,048 (“Takano”), U.S. Patent No. 5,347,449 (“Meyer”), U.S. Patent No. 5,347,632 (“Filepp”), U.S. Patent No. 5,477,262 (“Banker”), U.S. Patent No. 5,496,175 (“Oyama”), U.S. Patent No. 5,740,035 (“Cohen”), U.S. Patent No. 5,956,505 (“Manduley”), JP H2-65556 (“Kita”), JP-03-064286-A (“Garza”), JP H3-80662 (“Ukegawa”), JP S60-200366 (“Tanaka”), and JP S62-280771 (“Furukawa”). These examples of prior art are intended to be illustrative and not exhaustive, and Oracle reserves the right to assert other specific pieces of prior art.

44. As a result of the acts and facts alleged in the foregoing paragraphs, there exists a substantial controversy of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.

45. A judicial declaration is necessary and appropriate so that Oracle and its customers may ascertain their rights regarding the ’834 patent.

11

SEVENTH CLAIM FOR RELIEF
(Declaratory Judgment of Invalidity of the ’078 Patent)

46. Oracle realleges and incorporates by reference herein each and every allegation contained in Paragraphs 1 through 21 as though fully set forth herein.

47. Claims 1-67 of the ’078 patent are invalid for failure to meet the conditions of patentability of, and to otherwise comply with, one or more provisions of 35 U.S.C. §§ 100 et seq., 101, 102, 103 and 112. At a minimum, the claims of the ’078 patent are invalid under 35 U.S.C. §§ 102 and 103 based upon at least the following pieces of prior art in view of Lodsys’ apparent application of the claims of that patent: U.S. Patent No. 4,245,245 (“Matsumoto”), U.S. Patent No. 4,546,382 (“McKenna”), U.S. Patent No. 4,345,315 (“Cadotte”), U.S. Patent No. 4,567,359 (“Lockwood”), U.S. Patent No. 4,689,619 (“O’Brien, Jr.”), U.S. Patent No. 4,740,890 (“William”), U.S. Patent No. 4,816,904 (“McKenna”), U.S. Patent No. 4,829,558 (“Welsh”), U.S. Patent No. 4,862,268 (“Campbell”), U.S. Patent No. 4,893,248 (“Pitts”), U.S. Patent No. 4,973,952 (“Malec”), U.S. Patent No. 4,912,552 (“Allison, III”), U.S. Patent No. 4,992,940 (“Dworkin”), U.S. Patent No. 5,001,554 (“Johnson”), U.S. Patent No. 5,003,384 (“Durden”), U.S. Patent No. 5,029,099 (“Goodman”), U.S. Patent No. 5,036,479 (“Prednis”), U.S. Patent No. 5,056,019 (“Schultz”), U.S. Patent No. 5,065,338 (“Phillips”), U.S. Patent No. 5,077,582 (“Kravette”), U.S. Patent No. 5,083,271 (“Thacher”), U.S. Patent No. 5,117,354 (“Long”), U.S. Patent No. 5,138,377 (“Smith”), U.S. Patent No. 5,207,784 (“Schwartzendruber”), U.S. Patent No. 5,237,157 (“Kaplan”), U.S. Patent No. 5,282,127 (“Mii”), U.S. Patent No. 5,283,734 (“Von Kohorn”), U.S. Patent No. 5,291,416 (“Hutchins”), U.S. Patent No. 5,335,048 (“Takano”), U.S. Patent No. 5,347,449 (“Meyer”), U.S. Patent No. 5,347,632 (“Filepp”), U.S. Patent No. 5,477,262 (“Banker”), U.S. Patent No. 5,496,175 (“Oyama”), U.S. Patent No. 5,740,035 (“Cohen”), U.S. Patent No. 5,956,505 (“Manduley”), JP H2-65556 (“Kita”), JP-03-064286-A

12

(“Garza”), JP H3-80662 (“Ukegawa”), JP S60-200366 (“Tanaka”), and JP S62-280771 (“Furukawa”). These examples of prior art are intended to be illustrative and not exhaustive, and Oracle reserves the right to assert other specific pieces of prior art.

48. As a result of the acts and facts alleged in the foregoing paragraphs, there exists a substantial controversy of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.

49. A judicial declaration is necessary and appropriate so that Oracle and its customers may ascertain their rights regarding the ’078 patent.

EIGHTH CLAIM FOR RELIEF
(Declaratory Judgment of Invalidity of the ’565 Patent)

50. Oracle realleges and incorporates by reference herein each and every allegation contained in Paragraphs 1 through 21 as though fully set forth herein.

51. Claims 1-32 of the ’565 patent are invalid for failure to meet the conditions of patentability of, and to otherwise comply with, one or more provisions of 35 U.S.C. §§ 100 et seq., 101, 102, 103 and 112. At a minimum, the claims of the ’565 patent are invalid under 35 U.S.C. §§ 102 and 103 based upon at least the following pieces of prior art in view of Lodsys’ apparent application of the claims of that patent: U.S. Patent No. 4,245,245 (“Matsumoto”), U.S. Patent No. 4,546,382 (“McKenna”), U.S. Patent No. 4,345,315 (“Cadotte”), U.S. Patent No. 4,567,359 (“Lockwood”), U.S. Patent No. 4,689,619 (“O’Brien, Jr.”), U.S. Patent No. 4,740,890 (“William”), U.S. Patent No. 4,816,904 (“McKenna”), U.S. Patent No. 4,829,558 (“Welsh”), U.S. Patent No. 4,862,268 (“Campbell”), U.S. Patent No. 4,893,248 (“Pitts”), U.S. Patent No. 4,973,952 (“Malec”), U.S. Patent No. 4,912,552 (“Allison, III”), U.S. Patent No. 4,992,940 (“Dworkin”), U.S. Patent No. 5,001,554 (“Johnson”), U.S. Patent No. 5,003,384 (“Durden”),

13

U.S. Patent No. 5,029,099 (“Goodman”), U.S. Patent No. 5,036,479 (“Prednis”), U.S. Patent No. 5,056,019 (“Schultz”), U.S. Patent No. 5,065,338 (“Phillips”), U.S. Patent No. 5,077,582 (“Kravette”), U.S. Patent No. 5,083,271 (“Thacher”), U.S. Patent No. 5,117,354 (“Long”), U.S. Patent No. 5,138,377 (“Smith”), U.S. Patent No. 5,207,784 (“Schwartzendruber”), U.S. Patent No. 5,237,157 (“Kaplan”), U.S. Patent No. 5,282,127 (“Mii”), U.S. Patent No. 5,283,734 (“Von Kohorn”), U.S. Patent No. 5,291,416 (“Hutchins”), U.S. Patent No. 5,335,048 (“Takano”), U.S. Patent No. 5,347,449 (“Meyer”), U.S. Patent No. 5,347,632 (“Filepp”), U.S. Patent No. 5,477,262 (“Banker”), U.S. Patent No. 5,496,175 (“Oyama”), U.S. Patent No. 5,740,035 (“Cohen”), U.S. Patent No. 5,956,505 (“Manduley”), JP H2-65556 (“Kita”), JP-03-064286-A (“Garza”), JP H3-80662 (“Ukegawa”), JP S60-200366 (“Tanaka”), and JP S62-280771 (“Furukawa”). These examples of prior art are intended to be illustrative and not exhaustive, and Oracle reserves the right to assert other specific pieces of prior art.

52. As a result of the acts and facts alleged in the foregoing paragraphs, there exists a substantial controversy of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.

53. A judicial declaration is necessary and appropriate so that Oracle and its customers may ascertain their rights regarding the ’565 patent.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff Oracle respectfully requests that judgment be entered in favor of Oracle and prays that the Court grant the following relief: 1. A declaration that Oracle, its customers, and the end users of the Oracle customers’ websites have not infringed, either directly or indirectly, literally or under the

14

doctrine of equivalents, any valid and enforceable claim of the Patents-in-Suit;

2. A declaration that one or more of the Patents-in-Suit is invalid for failing to meet the conditions of patentability required by 35 U.S.C. §§ 100, et seq., 101, 102, 103 and 112;

3. An order declaring that Oracle is a prevailing party and that this is an exceptional case, and awarding Oracle its costs, expenses, disbursements and reasonable attorney’s fees under 35 U.S.C. § 285 and all other applicable statutes, rules and common law; and

4. For such other and further relief as the Court may deem just and proper.

JURY DEMAND

Plaintiff respectfully requests a trial by jury.

Dated: June 1, 2012

Respectfully Submitted,
By: s/ Michael J. Hanrahan
Michael J. Hanrahan
[email]
Fox, O'Neill & Shannon, S.C.
[address, phone, fax]

Mark Fowler
[email]
DLA Piper LLP US
[address, phone, fax]

James M. Heintz
[email]
DLA Piper LLP US
[address, phone, fax]

15

Kathryn Riley Grasso
[email]
DLA Piper LLP US
[address, phone, fax]

Attorneys for Plaintiffs
Oracle Corp. and Oracle America, Inc.

16


  


Oracle Sues Lodsys! ~pj - Updated, Complaint as text | 300 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Good guys are those that 'invalidate' their own patents first
Authored by: BJ on Monday, June 04 2012 @ 05:01 PM EDT
Sorry.
Seeing is believing.
Oracle and esp. Ellison like their money too much.
I will not cheer on this one.

bjd



[ Reply to This | # ]

Corrections here if needed.
Authored by: entre on Monday, June 04 2012 @ 05:11 PM EDT
Post them here

[ Reply to This | # ]

Oracle Sues Lodsys! ~pj
Authored by: StormReaver on Monday, June 04 2012 @ 05:13 PM EDT
Thankfully, Oracle is not represented by BS&F. At least now, Oracle has a
chance of winning.

[ Reply to This | # ]

Oracle Sues Lodsys! ~pj
Authored by: Anonymous on Monday, June 04 2012 @ 05:16 PM EDT
I wonder if this was all a strategy by Oracle? Sue Google,
plan on being defeated, then use that defeat as precedent to
defeat others ?

[ Reply to This | # ]

If Oracle had Judge Alsup on the new case, then that would be to their advantage.
Authored by: Anonymous on Monday, June 04 2012 @ 05:22 PM EDT
If Oracle had Judge Alsup on the new case, then that would be to their
advantage.

And, ours. Anything to weaken the software patent trolls is a huge gain for all
in tech (these trolls don't make or invent anything).

[ Reply to This | # ]

off topic thread
Authored by: designerfx on Monday, June 04 2012 @ 05:24 PM EDT
off topic comments here

[ Reply to This | # ]

Patent Trolling!
Authored by: Anonymous on Monday, June 04 2012 @ 05:43 PM EDT
It stops being funny when it starts being you.

[ Reply to This | # ]

Oracle Sues Lodsys! ~pj - Updated, Complaint as text
Authored by: Steve Martin on Monday, June 04 2012 @ 06:35 PM EDT

This is the A Team, ladies and gentlemen.

I can't help but wonder, if this is the "A" team, why Oracle settled merely for Boies Schiller & Flexner when they went up against Google.

(And yes, that was intended to be tongue-in-cheek.)

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

[ Reply to This | # ]

Oh what a horrible thought...
Authored by: calris74 on Monday, June 04 2012 @ 06:40 PM EDT
Does this mean Groklaw and FOSSPatents will be pushing the
same agenda?

My world just dimmed a little :(

[ Reply to This | # ]

Oracle Sues Lodsys! ~pj - Updated, Complaint as text
Authored by: mushroom on Monday, June 04 2012 @ 06:48 PM EDT
Any-one verses a Patten Troll I'd route for the any-one,
even if the any-one was Microsoft.

[ Reply to This | # ]

BS&F Involved?
Authored by: BitOBear on Monday, June 04 2012 @ 06:56 PM EDT
Is the evil threesome involved in this or did they get a rational council?

If Oracle is in the right on something we have to hope that they aren't using
anybody irrational to fight their case lest they lose something important.

I think it sounds like this fight was picked -with- Oracle not -by- Oracle.

It's a case of "when bad things happen to bad people" because you have
to judge people not by the positions they find themselves defending but by the
positions they find themselves attacking.

It would be bad if Oracle uses inferior lawyering to fight a position we need
them to win.

[ Reply to This | # ]

Is this all Lodsys has?
Authored by: Anonymous on Monday, June 04 2012 @ 07:13 PM EDT
Just the four patents? Or do they have others, and Oracle is only being
affected by the four?

MSS2

[ Reply to This | # ]

Neither Oracle nor Lodsys is a human
Authored by: davecb on Monday, June 04 2012 @ 07:48 PM EDT
PJ wrote:
I know. Oracle is now the good guy. Major good guy.

See why I always tell you that to avoid whiplash, don't look at the parties in litigation and decide who you like, but anaylze the issues involved and plant your flag accordingly? Hence, here we are, on the same side of this issue, Groklaw and Oracle. Who'd-a thunk it last week?

Corporations are peculiar beings: if they're to be considered people, then so are swarms of bees and flocks of birds.

Corporations are collections of individual people, trying to fly in formation. Sometimes it works, other times you get totally inconsistent results.

Expect corporations to behave like absent-minded professors at best, psychopaths at worst.

I used to work for Sun, which was mostly a California Cowboy company, except when it wasn't (:-))

--dave

---
davecb@spamcop.net

[ Reply to This | # ]

"So, for Lodsys, there's no place to run"
Authored by: Yossarian on Monday, June 04 2012 @ 07:52 PM EDT
If, as I expect, Lodsys will lose, will not it be able to play
bankruptcy games, SCO's style, and pay Oracle nothing?

[ Reply to This | # ]

Why hasn't Oracle
Authored by: maroberts on Monday, June 04 2012 @ 08:10 PM EDT
..applied to the Patent Office for a review of these patents in a similar way to
Google, or is it likely to do so now it has commenced its action?

[ Reply to This | # ]

Good guy?
Authored by: Anonymous on Monday, June 04 2012 @ 08:19 PM EDT
I suspect that Oracle is acting in its own interests still, it just so happens
that our interests coincide on this one. That is, of course, still a good
thing.

If only we could get all the patent trolls to sue each other into oblivion....

[ Reply to This | # ]

the imminent expiration of the Patents-in-Suit on August 6, 2012
Authored by: rsteinmetz70112 on Monday, June 04 2012 @ 10:09 PM EDT
This jumped off the page at me.

I wonder if you can sure someone for previously infringing on a patent after it
expires?

---
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 | # ]

company != person
Authored by: clemenstimpler on Monday, June 04 2012 @ 10:46 PM EDT
Even though companies are treated as persons in many areas of US law (sometimes, in my view, with detrimental consequences, think of campaign spending), there is no need to believe that organisations as such have a 'moral character'. So to say that 'Oracle is the good guy' is just figurative speech.

At times, we may feel some sort of loyalty to a corporation, e. g. a sports team. But a fan that is capable of giving rational reasons for his allegiance to a sports team is by definition not a fan. Assertions to the contrary notwithstanding, sports is in itself fairly unimportant - that is why we can afford to invest emotions in what is going on there.

I press this point, because what we are talking about on Groklaw are civil proceedings. Their moral dimension is secondary. These law suits are relevant, because they have consequences for what we hold dear, namely the cause of free software. And yes, the success of free software cannot be explained merely by rational decisions about costs and benefits.

Nevertheless, progress for this cause depends on assessing the consequences in the legal realm with a certain amount of sobriety. Until now, our group identity as followers of the FOSS movement has been informed by our foes, particularly Microsoft. It may be an indication of maturity to leave this mindset behind.

Red Hat and Canonical can only exist, because they have pledged allegiance to free software. Others, like Apple, IBM and Oracle, have a somewhat uneasy relationship to the FOSS movement. Some, like Adobe and Microsoft, believe that their business model can succeed without FOSS.

But even if we believe that the FOSS model of developing software is morally superior to the business model of some of these companies, the success of free software will not depend on a moral assessment of business models, but on coming to terms with the legal challenges corporate actions pose to the environment free software requires. Sometimes a morally reprehensible business model may lead to choices that will further our cause.

When German president Gustav Heinemann was asked whether he loves his country (there is even a word for that in German: 'Vaterlandsliebe'), he merely answered: "Oh no, I won't love states, I only love my wife." ("Ach was, ich liebe keine Staaten, ich liebe meine Frau; fertig!"). We should follow his example in keeping things in perspective.

[ Reply to This | # ]

One troll suing another?
Authored by: Anonymous on Tuesday, June 05 2012 @ 07:07 AM EDT
Maybe it is just one patent troll suing another to keep it
off what it considers its own turf - you know like large
entities who can afford the patent litigation fees and even
afford to lose money on patent litigation as a price it is
willing to pay in order to enforce a monopoly, putting out of
business smaller trolls who might threaten its turf by also
extorting money.

[ Reply to This | # ]

Oracle Sues Lodsys! ~pj - Updated, Complaint as text
Authored by: Anonymous on Tuesday, June 05 2012 @ 07:44 AM EDT
Do you suppose "such other and further relief as the Court may
deem just and proper," could end up yielding damages for
common law extortion? That would be a fine "fare thee well"
ending for any troll bashing lawsuit.

[ Reply to This | # ]

5999908, 7222078, and 7620565 are interesting...
Authored by: jesse on Tuesday, June 05 2012 @ 08:04 AM EDT
All are the same thing, in different words.

The diagram is identical, other than a change in font.

And is a "done on a computer" type of process.

As a funny note - Oracle should get assistance from Google on 20100268704. This
is EXACTLY what google does and has been doing ever since it existed.

[ Reply to This | # ]

Oracle Sues Lodsys! ~pj - Updated, Complaint as text
Authored by: Anonymous on Tuesday, June 05 2012 @ 08:07 AM EDT
No sympathy for either here:

1) Live by the sword, die by the sword.
2) If you can't take it, don't dish it out.
3) If you go to war, be prepared to loose.
4) Those who abuse the patent system should expect no less
from others.

[ Reply to This | # ]

Oracle Sues Lodsys! ~pj - Updated, Complaint as text
Authored by: Witness on Tuesday, June 05 2012 @ 09:46 AM EDT
I don't trust Oracle.
Likely they will find a way to make the end result favor only Oracle.


---
Witness

[ Reply to This | # ]

Lodsys' backers?
Authored by: Anonymous on Tuesday, June 05 2012 @ 10:31 AM EDT
Do we know which companies are behind Lodsys?

I know a lot of their "investors" are really better characterised as
"victims".

I'm mostly just wondering if Oracle is on their list of investors.

[ Reply to This | # ]

Oracle as a computer services company
Authored by: Anonymous on Tuesday, June 05 2012 @ 03:01 PM EDT
I don't know anything about the patents, the software, the customers.

But I did notice that Oracle is operating as a computer services company,
according to their description.

So not only is Oracle defending their software but also (mainly?) their revenue
stream as a hosting company for these customers.

It would be like having someone sue me for using a tool offered by my ISP (the
proverbial Insta-Web Shopping Cart version 0.9). Bit of an echo of the EV1 case
back in the SCO heyday.

[ Reply to This | # ]

News Pick Google + Quickoffice = get more done anytime, anywhere
Authored by: cxd on Tuesday, June 05 2012 @ 03:52 PM EDT
I sent this to multiple Google support teams, and
developers.


Comment by Pamela Jones (PJ) on Groklaw.net one of the most
wide read legal blogs for software engineers and those
involved with the law. The blog has well over 100,000 hits
per day. It has now been accepted as an archived site by
the Library of Congress. It will be available to legal
scholars, law students, technologists and scientists for all
time.

From the News Picks on Groklaw June 5th 2012.

PJ had a valid comment that went out to all of her readers
Groklaw.net

If you are unaware of this site, ask any of your developers,
management, or legal teams. They will all know about this
site.

Her comment was valid and requires attention immediately if
Google wishes to keep the geek community supporting certain
of its websites.

Here is her quote about your announcement.

[PJ: I just want to say that I hate it that Google makes you
turn on cookies and Javascript to read the Official Google
Blog. That's not nice. It may be an overlooked issue decided
on a lower level. But whatever made that happen, please
stop. Or I'll have to stop visiting. I gave up the NY Times
over that issue, and I'll give up Google blogs too. It's
nobody's business what I read.] -

I agree with her, I also abandoned the NY Times. If you do
not fix this problem I will also stop visiting and some of
the millions that follow her blog will also stop. Please do
not offend the geeks. They have only provided your legal
team with so much free advice in order help you defeat of
Oracle. It makes no sense to offend those who are your
supporters with technical knowledge.

I worked on one of the first Android development phones the
OpenMoko and am a Droid supporter. My family has 5 Android
phones and we will not change platforms.

I would love to debug or help with code for your pure
Android phones that are coming out. Let me know if you
would like my free input and help.

Please follow your motto in this instance...... First do no
harm...... Your actions now are causing harm. It should be
an easy fix. Listen to your supporters in the tech
community and you will win.

Love your company. Not all company's have the vision and
lead in so many areas and still stay as honest as you have.

Please consider PJ and my advice..... and solve this
problem.

Looking forward to a pure Google phone with no add on. My
current phone was promised upgrade ability but now T- Moble
has decided to not upgrade to ICE cream sandwich. Now I
will wait until my 1 year warranty expires to root my
families phones and upgrade to ICS.

Have a super day. Do what is right let the consequence
follow.

cxd
Open Hardware Development

From a Hymn.
Do what is right let the consequence follow. Now is the
battle between freedom and might.
Do what is right let the consequence follow. Now is the
battle for freedom and right.


---
cxd

[ Reply to This | # ]

What's With Oracle Lately?
Authored by: sproggit on Tuesday, June 05 2012 @ 04:25 PM EDT
Have you ever had that experience of buying a new car. You drive it around for a week or two, and suddenly you spot the same make and model everywhere?

Maybe I'm the same with Oracle and press articles. We've just had a major court case involving Oracle and Google, and suddenly I see them in the news a bit more than usual.

Take this article, for example. It chronicles a day in the life of Mr Ellison when he was serving as a juror on a court case. During a break he drafted a press release that would announce that Oracle would end support for the Itanium processor. The article is worth a read, if only for the way it describes the firestorm that followed the breaking of that news. The result? HP are suing Oracle for Billions.

Back in December last year, Oracle's Quarterly Earnings Report got short shrift over at AllT hingsD, where they titled a review article "What Went Wrong With Oracle's Quarter?". In fairness, Oracle comfortable out-performed Google on % share growth, and left Microsoft for dust [the latter saw a $1.50 drop in value of 5 years, while oracle grew 35% in the same time period.

I really haven't been paying that much attention to Oracle overall, even when they were embroiled in the Google case. But it got me wondering. Could it be that Mr Ellison is losing his "Midas Touch"?

I am curious to know what other Groklawrians think... Is this just coincidence? Is this a case of Oracle beginning to lose their way? Are we observing the beginnings of the kind of boardroom melt-down that pretty near destroyed HP? [ Do you remember the pretexting scandal? ] Or is this just a brief succession of big waves before the Good Ship Oracle makes it to calmer seas?

Has anyone else observed any other curious strategic decisions? Is there a bigger trend here? Major changes in executive management?

It's just very interesting to see how the company is now more famous for it's court room battles than it's database technology... Well, almost.

[ Reply to This | # ]

Newspick - May cost Oracle BILLIONS
Authored by: Anonymous on Tuesday, June 05 2012 @ 08:44 PM EDT
My emphasis. We learned during Google vs Oracle not to trust headlines of the
sort that is in the Newspick: so why is it there?

[ Reply to This | # ]

Confused
Authored by: Ian Al on Wednesday, June 06 2012 @ 11:59 AM EDT
I had this wizard idea to invalidate the patents. The argument is that the internet became commercialised in the mid 1990s (Wikipedia) and Javascript became available in browsers in 1996.

If the patents had their origins before, say, 1997, then perhaps the technology was not there on the internet in order to implement them. Ideas in a patent with no means of implementation is an attempt to patent abstract ideas rather than an invention, which makes the patent invalid.

This is what I found in Exhibit B.
Patent No.: US 7,133,834 B1

Date of Patent: Nov. 7, 2006
Filed: Aug. 6, 1999

Related U.S. Application Data

Continuation of application No. 08/934,457, files on Sep. 19, 1997, now Pat. No. 5,999,908, which is a continuation of application No. 08/243,638, filed on May 16, 1994, now abandoned, which is a continuation-in-part of application No. 07/926,333, filed on Aug. 6, 1992, now abandoned.
The 1992 and 1994 dates are early enough to invalidate the patent, but the 1999 filing date is late enough for the internet to implement it. The abstract says 'An electronically accessible server receives, stores, and sends value information from customers'. It shows a software requester asking the customer to rate the software by means of a questionaire. I could only see this realistically being implemented via the internet after 1996.

What do you think? That 'Related U.S. Application Data' has me stumped because I don't understand the relevance. Has this invalidation approach got legs?

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

[ Reply to This | # ]

  • Confused - Authored by: Anonymous on Wednesday, June 06 2012 @ 12:16 PM EDT
    • Thanks - Authored by: Ian Al on Thursday, June 07 2012 @ 01:55 AM EDT
  • Confused - Authored by: Anonymous on Thursday, June 07 2012 @ 03:05 AM EDT
News Picks
Authored by: dio gratia on Friday, June 08 2012 @ 01:51 AM EDT
For those who routinely block anonymous comments. Please provide the title and
a link for the News Picks for which you are commenting.

[ Reply to This | # ]

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