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Google and Oracle File Claim Construction Statements & Fight Again About Discovery - Updated
Thursday, March 31 2011 @ 12:26 AM EDT

Google and Oracle have each now filed Claim Construction Statements, along with supporting declarations, in the Oracle v. Google patent litigation, and the previous dustup over discovery has broken out once again, with Oracle writing to the judge whining about Google's responses to Oracle's Interrogatories numbers 4-16.

I know. We thought all that was resolved back in February, when they had a hearing on February 9 about both parties' motions to compel, and the parties told the judge they'd worked it out and each side would supplement.

But this is big time litigation, not little people like you and me, so nothing will be smooth and simple or quick. It's been a month, Oracle tells the judge, and Google *still* hasn't provided the information it *promised*. A whole *month*. More than a month. And Oracle sent a letter and emailed and left a voicemail and everything, but Google didn't engage with Oracle or respond. What's a company to do? It is "forced" to seek the judge's "assistance" to make Google do right.

So Judge William Alsup has set another hearing, this one on April 6. He doesn't sound too thrilled, though, and he tells them to meet and confer and try to work it out between themselves.

The filings:

03/17/2011 - 94 - CLAIM CONSTRUCTION STATEMENT - Oracle's Opening Claim Construction Brief - filed by Oracle America, Inc.. (Jacobs, Michael) (Filed on 3/17/2011) (Entered: 03/17/2011)

03/17/2011 - 95 - Declaration of Marc David Peters in Support of 94 Claim Construction Statement (Oracle's Opening Claim Construction Brief) filed byOracle America, Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8)(Related document(s) 94 ) (Peters, Marc) (Filed on 3/17/2011) (Entered: 03/17/2011)

03/17/2011 - 96 - CLAIM CONSTRUCTION STATEMENT Google Inc. Opening Claim Construction Brief filed by Google Inc.. (Baber, Bruce) (Filed on 3/17/2011) (Entered: 03/17/2011)

03/17/2011 - 97 - Declaration of Truman Fenton in Support of Google Inc. 97 Opening Claim Construction Brief, filed by Google Inc. (Baber, Bruce) (Filed on 3/17/2011) Modified on 3/18/2011 (wsn, COURT STAFF). (Entered: 03/17/2011)

03/30/2011 - 98 - Letter from Michael A. Jacobs regarding Google's failure to supplement its responses to Interrogatories 4-16. (Jacobs, Michael) (Filed on 3/30/2011) (Entered: 03/30/2011)

03/30/2011 - 99 - ORDER SETTING HEARING ON PLAINTIFF'S DISCOVERY DISPUTE [re 98 Letter filed by Oracle America, Inc.]. Meet-and-confer set starting at 10:00 AM and ending at 1:30 PM on 4/6/2011 in Court's jury room. Defendant's response due noon on 4/4/2011. Discovery Hearing set for 4/6/2011 01:30 PM in Courtroom 9, 19th Floor, San Francisco before Hon. William Alsup. Signed by Judge William Alsup on 3/30/2011. (whasec, COURT STAFF) (Filed on 3/30/2011) (Entered: 03/30/2011)

Update: More, more, more:

03/31/2011 - 100 - CLAIM CONSTRUCTION STATEMENT - Oracle's Responsive Claim Construction Brief filed by Oracle America, Inc.. (Jacobs, Michael) (Filed on 3/31/2011) (Entered: 03/31/2011)

03/31/2011 - 101 - Declaration of Marc David Peters in Support of 100 Claim Construction Statement (Oracle's Responsive Claim Construction Brief) filed byOracle America, Inc.. (Attachments: # 1 Exhibit 9, # 2 Exhibit 10, # 3 Exhibit 11 - manual filing notice)(Related document(s) 100 ) (Peters, Marc) (Filed on 3/31/2011) (Entered: 03/31/2011)

I doubt Google cares how long this takes, frankly. It has filed with the USPTO for reexamination of Oracle's patents. It believes they are invalid. But Oracle probably would prefer that this get resolved and over with ASAP, if you know what I mean, ideally without a trial and prior to any decision by the USPTO.

I doubt the news that James Gosling, the Father of Java, has joined Google made them happy. Where does Oracle go to hire an expert who can successfully duel with him? He *is* Java. And that's just one advantage to Google.

Another thing that I'd worry about if I were Oracle is Google's track record of successfully using a defense of patent invalidity in previous patent litigation. Some have opined that Google needs patents to defend against Oracle, but they certainly haven't needed any in earlier cases.

I doubt this dispute is really about what it seems on the surface. I am guessing Oracle already knows what Google means by all its previous interrogatory responses. I do, so how could Oracle not know? What I think this is about is that Oracle would like to remove Google's defenses from this case, if it can, or at least narrow them, and I think Oracle here is trying to begin to thatch the roof on a new motion to dismiss Google's defenses, by arguing that Google hasn't fleshed them out sufficiently or by getting more details it can use for that purpose, but time will tell if I'm right or not. When I see a lawyer sending a letter, then an email, then leaving a voicemail, I figure he's trying to establish some evidence to use against the recipient of the letter, email and voicemail.

Oracle had filed such a motion once before, then withdrew it when Google said it would provide more information, but now Oracle feels Google hasn't come through, as promised. So Oracle's outside attorney, Michael A. Jacobs of Morrison & Foerster, the very one, sent the letter to the judge. Google asked for permission to file a motion for summary judgment on Oracle's copyright claims right after the last hearing, but was denied by the judge. Now Oracle argues that if Google was ready to file a summary judgment motion, it ought to be able to tell Oracle what Google's defense is about, with specificity. It would like the judge to make Google answer all the Interrogatories listed in the letter.

The judge set the hearing for April 6 at the United States District Court in San Francisco, and he tells Google to file its response to Oracle's letter by April 4. The lawyers are to meet and confer first, and then the judge will take a break from a large criminal trial he's handling to hear whatever they can't work out.

I know. You'd rather see Mr. Jacobs file an appeal in SCO's bankruptcy case. So would I. But lawyers have to do what the client says, in the end, and with new owners drooling in the wings, waiting to swallow Novell and its assets, things may be complicated, as Facebook likes to put it. Or it could be a strategic decision beyond my ability to figure out. Nah. I don't believe that, actually.

Here's the main text from Judge William Alsup's order:

The parties shall meet-and-confer in the Courtís jury room starting AT 10:00 A.M. AND ENDING AT 1:30 P.M. with a 45-minute break for lunch on WEDNESDAY, APRIL 6, 2011. The Court is in an all-consuming, long, multi-defendant gang criminal trial and any unresolved discovery issue(s) will be shoe-horned into the tutorial set for 1:30 p.m. on April 6, which will be abbreviated. Defendantís response to plaintiffís March 30 letter is due by noon on April 4, 2011. Please note that only those lawyers who participate in the meet-and-confer in the Courtís jury room may argue at the discovery hearing.
It sounds like the judge would rather spend his time without interruptions, so I'm guessing most if not all of this will be worked out prior to the hearing.

I went looking to see what this big trial is about, and I found this article from 2004, about the worst patent case I've ever heard of, which says Judge Alsup used to be a partner at Morrison & Foerster. I think that would bother me some, if I were Google.

Judge Alsup certainly gets some weird cases. Maybe it's a California thing. Here's his current calendar, and if you look at April 6, OraGoogle, as I like to call them, already show up:

-- 1:30 PM: C10-035 - Oracle America, Inc. v. Google, Inc. (Doc: 99)
Meet-and-confer in Court's jury room. Michael Jacobs (phone redacted).

3:10-cv-03561-WHA - Oracle America, Inc. v. Google Inc.
Discovery Hearing

But here's the letter from Oracle, so you will know what Oracle is asking for:


March 30, 2011

[Morrison & Foerster letterhead]

The Honorable William Alsup
United States District Court Judge
Northern District of California
Courtroom 9, l9th Floor
450 Golden Gate Avenue
San Francisco, California 94102

Re: Oracle America, Inc. v. Google, Inc., Case No. 3:10-cv-03561-WHA
Second Request for Discovery Relief

Dear Judge Alsup:

As a result of Google's failure to supplement its responses to Oracle's Interrogatories 4-16, Oracle is forced to seek the Court's assistance. Oracle previously raised the issue of Google's deficient interrogatory responses in its First Request for Discovery Relief (Dkt. No. 77), submitted on February 1, 2011. Following a Court-ordered meet-and-confer on February 9, counsel for Oracle reported to the Court that the parties had agreed to "engage[e] better with each other in attempting to resolve these disagreements." Google's counsel expressly acknowledged this agreement to "engage." Yet, more than a month later, Google has done nothing to correct its deficient responses and has failed to engage with Oracle to resolve these issues. Oracle communicated its concerns regarding the interrogatory responses to Google in a letter dated March 8, 2011, followed-up by an e-mail on March 23, and a voicemail on March 24, but Google has not responded. Accordingly, the Court's assistance is now required.

Oracle's Interrogatories 4-16 (see attachment to Dkt. No. 77) seek the "factual and legal bases" for Google's affirmative defenses. Because Google's answer to Oracle's complaint did not plead facts sufficient to support its affirmative defenses, Oracle moved to strike the defenses on October 26, 2010. Oracle subsequently withdrew the motion based on the expectation that Google's interrogatory responses would detail the bases for Google's affirmative defenses. But Google's responses contain little substance, and instead provide general denials, boilerplate objections, and blanket incorporations by reference. The following are examples of the deficiencies in Google's interrogatory responses:

The Hon. William Alsup
March 30, 2011
Page Two

Interrogatory 4 - This interrogatory seeks Google's bases for its "Patent Unenforceability (Waiver, Estoppel, Laches)" defense. In response, Google asserts that "Oracle was aware of Android pursuant to discussions with Andy Rubin prior to Android's acquisition by Google, which are believed to have occurred at least as early as 2005." (Dkt. No. 77 at 13.) Even if true, mere awareness that Android existed is not enough to support a claim of patent unenforceability. To provide any basis for the asserted defense, Google must address factors such as when Oracle was or should have been aware of Google's wrongdoing, and whether Oracle misled Google or waited unreasonably before filing this lawsuit. Google has offered no facts or explanation regarding this.

Interrogatory 5 - Bases for "Substantial Non-Infringing Uses" defense: Google states that "the Accused Instrumentalities, such as mobile handsets, are capable of substantial noninfringing uses." (Id. at 15.) But Google does not identify or describe a single such use. Instead, Google insists that, "[a]s presently understood, all uses are noninfringing uses for the reasons cited in response to Interrogatory No. 3." Google's response to Interrogatory 3 lists Google's non-infringement positions, but does not identify and explain which uses of Android are allegedly both non-infringing and substantial.

Interrogatory 6 - Bases for "Limitation on Patent Damages" defense: Google asserts that "Oracle has not given notice to the public by properly marking products . . . and any damages are therefore limited pursuant to 35 U.S.C. ß 287." (Id. at 17). However, this conclusory statement does not provide a basis for the defense, especially inasmuch as many of the asserted patent claims are method claims, for which marking is not required.

Interrogatory 7 - Bases for "Misuse" defense: Google's only assertion is that Oracle "used its copyright registrations in an attempt to extract licensing revenue for a larger body of material than what is covered . . . and to restrict the rights of third parties to truthfully state that, for example, products are 'Java compatible."' (Id. at I9). But this assertion with respect to "copyright registrations" has nothing to do with alleged patent misuse. Even with respect to the copyrights, Google never identifies which third parties allegedly had their rights restricted or what licensing revenue was allegedly extracted via misuse of copyrights.

Interrogatory 9 - Bases for "Elements Not Protected By Copyright" defense: Oracle provided Google with a detailed explanation of its copyright allegations, identifying fourteen registered copyrighted works, fifty-one Java API specifications, and specific examples of copied source code. Google's response only lists vague categories of purportedly unprotected elements, such as "key words and operators" and "programming methods. (Id. at 2l.) While Google represented to the Court on February 16 that it is ready for summary judgment on this issue, it has not explained which words, operators, and programming methods it believes are not protected by copyrights.

The Hon. William Alsup
March 30, 2011
Page Three

Interrogatory 11 - Bases for "Fair Use" defense: Oracle has identified specific Java copyrighted materials that were copied by Google into Android. Google's response to Interrogatory 11 generally asserts that any such copying was Fair Use, but does not address how any of the specific identified instances of copying purportedly constituted Fair Use.

Interrogatory 12 - Bases for "No Intent to Induce Copyright Infringement" defense: Google asserts that "its intention not to induce infringement is evidenced by . . . the fact that Android was developed through independent creation and use of material duly licensed or unprotectable . . . ." (Id. at 27.) But Google does not explain how the infringing materials were independently created and what allegedly licensed material Google used.

Interrogatory 13 - Bases for "Independent Creation" defense: Again, Google does not identify which, if any, of the copied Oracle APIs, documentation, and source and binary code were purportedly independently created by Google.

Interrogatory 15 - Bases for "License and Implied License" defenses: Google still has not identified any licenses that might support a license defense. Oracle has produced its Java licenses, but Google has not explained how any of them or any others licenses grant licensees the right to make, use, and sell Android-powered devices.

Interrogatory 16 - Bases for "Unclean Hands" defense: Google asserts that Oracle misused its intellectual property by attempting to "impermissibly expand the scope of the asserted patents and copyrights by requiring licensees to license items not covered by Oracle's alleged intellectual property in order to receive a license . . . ." (Id. at 35.) But this is merely a generic recitation of a misuse defense, as Google does not provide any facts regarding which particular licenses and licensees its referring to and how such licensing activity allegedly constituted misuse of Oracle's intellectual property.

For the foregoing reasons, Oracle respectfully requests that the Court compel Google to supplement its responses to Interrogatories 4-16 by April 8.

Respectfully submitted,


Michael A. Jacobs
Counsel for Plaintiff Oracle America, Inc.

cc: Counsel for Google Inc.

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