decoration decoration
Stories

GROKLAW
When you want to know more...
decoration
For layout only
Home
Archives
Site Map
Search
About Groklaw
Awards
Legal Research
Timelines
ApplevSamsung
ApplevSamsung p.2
ArchiveExplorer
Autozone
Bilski
Cases
Cast: Lawyers
Comes v. MS
Contracts/Documents
Courts
DRM
Gordon v MS
GPL
Grokdoc
HTML How To
IPI v RH
IV v. Google
Legal Docs
Lodsys
MS Litigations
MSvB&N
News Picks
Novell v. MS
Novell-MS Deal
ODF/OOXML
OOXML Appeals
OraclevGoogle
Patents
ProjectMonterey
Psystar
Quote Database
Red Hat v SCO
Salus Book
SCEA v Hotz
SCO Appeals
SCO Bankruptcy
SCO Financials
SCO Overview
SCO v IBM
SCO v Novell
SCO:Soup2Nuts
SCOsource
Sean Daly
Software Patents
Switch to Linux
Transcripts
Unix Books
Your contributions keep Groklaw going.
To donate to Groklaw 2.0:

Groklaw Gear

Click here to send an email to the editor of this weblog.


To read comments to this article, go here
Oracle and Google Try to Reduce Their Claims & Judge Issues Tentative Claims Construction Order
Sunday, May 01 2011 @ 07:27 PM EDT

The parties in Oracle v. Google have been asked by the judge to reduce the number of claims, so the case can actually be reasonably tried. So they have each filed their suggested cuts. Also the judge has issued a *tentative* claims construction order, asking for reaction from the parties and saying he may well make changes on his own initiative as more evidence is on the table.

I stress tentative, because I see articles predicting Google's doom, and honestly it's way too soon to predict anything. I realize the usual suspects are influencing journalists to believe that this order means victory for Oracle. But I continue to caution everyone that it's way too soon to know, other than the sad truth that patent owners tend to get the sweetest ride in any court, in any case. That's a bug in the system, nothing to crow about.

To show you what I mean, here's the PACER entry, showing you the title of the order being touted as a huge victory for Oracle:

The Conclusion section of the judge's order reads like this:
CONCLUSION

The constructions set forth above will apply in this dispute. The Court will reserve the authority, on its own motion, to modify these constructions if further evidence warrants such a modification. Additionally, by NOON ON MAY 6, 2011, each side may file a five-page critique (double-spaced, 12-point Times New Roman font, no footnotes, and no attachments) limited to points of critical concern. This is an opportunity for the parties to focus solely on their most cogent critique, not to rehash every point made in the briefs and at the hearing. No replies, please.

So, a whole lot of spin in the air. When you are being spun, just read the filing itself. You might have been given less than the entire story. If you are not sure, feel free to contact me. I'm happy to share with any journalist the court filings we have.

I have been very, very busy trying to set up a way for Groklaw to continue publishing articles, since so many of you asked me to do so, and while I can't announce any specifics yet, it's looking very good. I hope to be able to give you specifics in about a week, letting you know how articles will be done going forward if it all works out. I'm actually pretty excited about it. But for now I'm just explaining why I can't take the time to explain too much about all the filings in Oracle v. Google that I'm posting now. Thank you for your patience and your loyalty. And at least we have caught you up with the filings, and we'll try to swing back by down the road.

The docket:

04/05/2011 - 108 - ORDER REGARDING COURTROOM EQUIPMENT FOR APRIL 6 TUTORIAL by Judge Alsup finding as moot 105 Motion EquipmentEquipment; granting 107 Motion EquipmentEquipment (whalc1, COURT STAFF) (Filed on 4/5/2011) (Entered: 04/05/2011)

04/06/2011 - 109 - Minute Entry: Discovery Hearing held on 4/6/2011 before William Alsup (Date Filed: 4/6/2011), Tutorial Hearing held on 4/6/2011 before William Alsup (Date Filed: 4/6/2011). (Court Reporter Lydia Zinn.) (dt, COURT STAFF) (Date Filed: 4/6/2011) (Entered: 04/06/2011)

04/08/2011 - 110 - Transcript of Proceedings held on 04/06/2011, before Judge William H. Alsup. Court Reporter/Transcriber Lydia Zinn, Telephone number (415) 531-6587. Per General Order No. 59 and Judicial Conference policy, this transcript may be viewed only at the Clerks Office public terminal or may be purchased through the Court Reporter/Transcriber until the deadline for the Release of Transcript Restriction.After that date it may be obtained through PACER. Any Notice of Intent to Request Redaction, if required, is due no later than 5 business days from date of this filing. Release of Transcript Restriction set for 7/7/2011. (Zinn, Lydia) (Filed on 4/8/2011) (Entered: 04/08/2011)

04/08/2011 - 111 - NOTICE of Appearance by Valerie Wing Ho (Ho, Valerie) (Filed on 4/8/2011) (Entered: 04/08/2011)

04/11/2011 - 112 - NOTICE of Appearance by Roman A Swoopes (Swoopes, Roman) (Filed on 4/11/2011) (Entered: 04/11/2011)

04/14/2011 - 113 - NOTICE REGARDING CLAIM CONSTRUCTION HEARING. Signed by Judge Alsup on April 14, 2011. (whalc1, COURT STAFF) (Filed on 4/14/2011) (Entered: 04/14/2011)

04/15/2011 - 114 - MOTION for leave to appear in Pro Hac Vice - Brian C. Banner ( Filing fee $ 275, receipt number 34611058729), filed by Google Inc. (Attachments: # 1 Proposed Order)(wsn, COURT STAFF) (Filed on 4/15/2011) (Entered: 04/15/2011)

04/18/2011 - 115 - ORDER GRANTING APPLICATION FOR ADMISSION OF ATTORNEY BANNER PRO HAC VICE by Judge Alsup granting 114 Motion for Pro Hac Vice (whalc1, COURT STAFF) (Filed on 4/18/2011) (Entered: 04/18/2011)

04/18/2011 - 116 - MOTION Request and Proposed Order Regarding Courtroom Equipment for April 20th Claim Construction Hearing filed by Oracle America, Inc.. (Swoopes, Roman) (Filed on 4/18/2011) (Entered: 04/18/2011)

04/19/2011 - 117 - ORDER GRANTING REQUEST TO BRING EQUIPMENT INTO COURTROOM by Judge Alsup granting 116 Motion Equipment (whalc1, COURT STAFF) (Filed on 4/19/2011) (Entered: 04/19/2011)

04/20/2011 - 118 - Minute Entry: Claims Construction / Markman Hearing held on 4/20/2011 before William Alsup (Date Filed: 4/20/2011). (Court Reporter Lydia Zinn.) (dt, COURT STAFF) (Date Filed: 4/20/2011) (Entered: 04/20/2011)

04/20/2011 - 119 - MOTION for leave to appear in Pro Hac Vice - Alanna Rutherford ( Filing fee $ 275, receipt number 34611058881) filed by Oracle America, Inc. (Attachments: # 1 Proposed Order)(wsn, COURT STAFF) (Filed on 4/20/2011) (Entered: 04/20/2011)

04/21/2011 - 120 - ORDER GRANTING APPLICATION FOR ADMISSION OF ATTORNEY RUTHERFORD PRO HAC VICE by Judge Alsup granting 119 Motion for Pro Hac Vice (whalc1, COURT STAFF) (Filed on 4/21/2011) (Entered: 04/21/2011)

04/25/2011 - 121 - Transcript of Proceedings held on 04/20/2011, before Judge William H. Alsup. Court Reporter/Transcriber Lydia Zinn, Telephone number (415) 531-6587. Per General Order No. 59 and Judicial Conference policy, this transcript may be viewed only at the Clerks Office public terminal or may be purchased through the Court Reporter/Transcriber until the deadline for the Release of Transcript Restriction.After that date it may be obtained through PACER. Any Notice of Intent to Request Redaction, if required, is due no later than 5 business days from date of this filing. Release of Transcript Restriction set for 7/25/2011. (Zinn, Lydia) (Filed on 4/25/2011) (Entered: 04/25/2011)

04/25/2011 - 122 - NOTICE of Change In Counsel by Richard Steven Ballinger (Ballinger, Richard) (Filed on 4/25/2011) (Entered: 04/25/2011)

04/25/2011 - 123 - Letter from Marc David Peters (counsel for Oracle America) regarding construction of "reduced class file". (Peters, Marc) (Filed on 4/25/2011) (Entered: 04/25/2011)

04/25/2011 - 124 - ORDER REQUESTING MEMORANDA. Signed by Judge Alsup on April 25, 2011. (whalc1, COURT STAFF) (Filed on 4/25/2011) (Entered: 04/25/2011)

04/26/2011 - 125 - MOTION to Withdraw as Attorney Motion to Relieve Richard S. Ballinger as Counsel of Record for Oracle America, Inc. Pursuant to L.R. 11-5 filed by Oracle America, Inc.. (Attachments: # 1 Proposed Order)(Ballinger, Richard) (Filed on 4/26/2011) (Entered: 04/26/2011)

04/26/2011 - 126 - ORDER GRANTING MOTION FOR WITHDRAWAL OF ATTORNEY BALLINGER by Judge Alsup granting 125 Motion to Withdraw as Attorney. Attorney Richard Steven Ballinger terminated (whalc1, COURT STAFF) (Filed on 4/26/2011) (Entered: 04/26/2011)

04/27/2011 127 *** FILED IN ERROR. PLEASE DISREGARD. *** TENTATIVE CLAIM-CONSTRUCTION ORDER AND REQUEST FOR CRITIQUE. Signed by Judge Alsup on April 27, 2011. (whalc1, COURT STAFF) (Filed on 4/27/2011) Modified on 4/28/2011 (whalc1, COURT STAFF). (Entered: 04/27/2011)

04/28/2011 128 TENTATIVE CLAIM-CONSTRUCTION ORDER AND REQUEST FOR CRITIQUE re-filed with signature re 127 Order. Signed by Judge Alsup on April 27, 2011. (whalc1, COURT STAFF) (Filed on 4/28/2011) (Entered: 04/28/2011)

04/29/2011 129 RESPONSE to re 124 Order Oracle's memorandum describing its plan for streamlining the case for trial by Oracle America, Inc.. (Jacobs, Michael) (Filed on 4/29/2011) (Entered: 04/29/2011)

04/29/2011 130 Brief SETTING FORTH PLAN TO REDUCE CLAIMS TO A TRIABLE NUMBER filed byGoogle Inc.. (Sabnis, Cheryl) (Filed on 4/29/2011) (Entered: 04/29/2011)

Oracle has 132 claims from 7 patents. That will give you an idea why the judge wants to see the case get smaller. Oracle says it is amenable to reducing the number of claims if Google will cut back on its asserted grounds of invalidity. It proposes first cutting back its claims to a 75 and Google reducing its asserted prior art references, or combinations of references, to 4 per patent. Wait. That's quite a cut. Here's how Oracle describes Google's current position:
At the same time, Google presently asserts that thirty-one references anticipate and twenty-one combinations of references render obvious the asserted claims of seven patents-in-suit, based on the charts that it provided with its invalidity contentions. Google also served a 24-page list of more than 500 prior art references that, in some unexplained manner, Google alleged could be combined to render obvious the patents-in-suit. Google has also asserted many other grounds of invalidity against the patent claims, such as definiteness, written description, enablement, and double patenting. Many of Google's invalidity contentions are inconsistent and presented in the alternative: Google contends that many pateent claims are not enabled but also contends that the same claims are enabled by the prior art.
Oracle -- surprise, surprise -- thinks the case should proceed without waiting for the reexaminations that Google has filed with the USPTO. It would take too long. Oracle says its schedule will take advantage of the momentum that the Court's schedule has established.

Right. Why wait to see if the patents are even valid?

Sigh.

This is lawyers noticing this judge has indicated he wants this case to go to trial soon, so they pile on this advantage they see. So, next Oracle proposes to cut back again to 35 claims after that by a certain date, with Google narrowing its invalidity contentions to 3 per patent.

Hilarious. Here's a comment by Groklaw member cpeterson, which will show you Oracle's funny math. So, how about Google? It's first sentence indicates no eagerness to forget about the reexaminations:

Google Inc. thanks the Court for the opportunity to present its views on a plan for reducing the number of claims to a triable number by the trial date and how to take advantage of the PTO reexamination now in progress.
Hahaha. This is also funny, because Google, I suspect, wouldn't mind if that trial never happened, but certainly not before the reexamination process is done. I think the judge sensed that also, which is why he told them both to get a move on and get the case down to a less ridiculous number of claims.

So what is Google's plan? It also suggests a step-down process. It points out that some of Oracle's claims are duplicative, so Google's map for culling suggests that would be a good place to begin cutting. Google also suggests that the court let the USPTO prune out the invalid patents, so as to give Oracle "the benefit of feedback from the PTO", heh heh, and then Google can whittle down quite a bit in response.

Judges sometimes say yes to such requests, to wait for the reexaminations to finish, but as you saw in the RIM litigation, sometimes judges say no, and defendants get stuck with damages only to have the patents go through the reexamination later, sometimes to be found invalid.

After that, Google suggests that Oracle reduce to 20 claims, and Google cut back to 4 prior art references/combinations per asserted claim. It adds:

As discussed below and in accordance with Google's Phase I requirement (above), Oracle's Phase II Election could take into account an assessment of Google's proposed dispositive motions, thereby reducing the need for summary judgment motions.
So, Google clearly has motions in mind already. Then as phase III, Google suggests Oracle reduce its claims, after expert discovery, to maybe two claims, and Google would reduce its prior art references/combinations to two per asserted claim.

Update: I Programmer highlights some details:

The judge, who was given a primer in Java in order to be able to come to decisions about the terminology involved, revealed his irritation as lawyers for the two sides argued for 90 minutes about the wording of the patents declaring:
it's frustrating that these gigantic law firms can't write clearer language so we don't have to go through this process.
He also referred to pressures that mean he wants the case to be over before the end of November, because that's when his law clerk is scheduled to finish her allotted 12 month term with him and he feels it would be "a real burden" to have to bring another law clerk up to speed on this complex case.
Uh oh. When a law clerk's schedule is more important than finding out if a patent is valid or not, something doesn't feel right.

  View Printable Version


Groklaw © Copyright 2003-2013 Pamela Jones.
All trademarks and copyrights on this page are owned by their respective owners.
Comments are owned by the individual posters.

PJ's articles are licensed under a Creative Commons License. ( Details )