The judge handling the Oracle v. Google patent litigation, Hon. William Alsup, has issued his order [PDF] on how much each side must cut back its claims and/or defenses. He didn't accept either side's numbers but came up with his own, and this case just got a whole lot smaller -- he has ordered Oracle to cut back its claims from 132 down to only 3:
Currently, there are 132 claims from seven patents asserted in this
action, and there are hundreds of prior art references in play for
invalidity defenses. This is too much. The following schedule will
ensure that only a triable number of these items — three claims and
eight prior art references — are placed before the jury in October, all
others to be forsaken. Oracle will surrender all of its present
infringement claims against Google based on the 129 asserted claims
that will not be tried. Oracle may not renew those infringement claims
in a subsequent action except as to new products. So, 132 Oracle claims down to 3, and the rest are deep-sixed forever, not to be seen again. That obviously will also cut back on any possible damages. Methinks this judge has a clue.
Remember all those predictions of Google's doom? Are they coming true? Extrapolate please, the next time someone feverishly tells you that Oracle is wiping the floor with Google.
Here's the docket entry:
I've been trying to tell you that wild predictions of Android's doom from this case were, as Mark Twain put it, premature. Was I right or was I right? Of course, even one patent is capable of doing harm, which is why software and patents need to get a divorce. Note that the order says that Oracle may not renew the dropped claims. This is the end of the road for those claims. That is *huge*. The judge even asks the parties to tell him if they anticipate that a trial will end up being moot.
05/03/2011 - 131 - ORDER RE
SCHEDULE FOR NARROWING ISSUES FOR TRIAL. Signed by Judge Alsup on May 3,
2011. (whalc1, COURT STAFF) (Filed on 5/3/2011) (Entered: 05/03/2011)
Here's the rest of the order's text, showing the step-down process and all the details:
Having reviewed the parties’ memoranda regarding the reexamination proceedings and the streamlining of this action, for which counsel are thanked, the Court proposes a three-step process, as below. Each side may file a five-page (double spaced, twelve-point Times New Roman font, no footnotes, and no attachments) critique of the tentative schedule by NOON ON MAY 6, 2011. After taking any critiques into account, the schedule will be finalized.
And in other news, Oracle has sent a subpoena to the Apache Foundation:
Currently, there are 132 claims from seven patents asserted in this action, and there are hundreds of prior art references in play for invalidity defenses. This is too much. The following schedule will ensure that only a triable number of these items — three claims and eight prior art references — are placed before the jury in October, all others to be forsaken. Oracle will surrender all of its present infringement claims against Google based on the 129 asserted claims that will not be tried. Oracle may not renew those infringement claims in a subsequent action except as to new products.
The first reduction will follow claim construction. Within SEVEN DAYS after the finalized claim construction order issues, Oracle shall narrow its patent infringement case to 40 asserted claims. Within SEVEN DAYS after that, Google shall narrow its invalidity case to 120 prior art references. It is anticipated that this first pair of reductions will be completed by the end of May. The second reduction will follow expert disclosures. By AUGUST 24 (five days after reply expert reports must be served), Oracle shall narrow its patent infringement case to 20 asserted
claims. By AUGUST 29 (five days later), Google shall narrow its invalidity case to 60 prior art references. The parties will then have a week of expert discovery remaining, and another week before summary-judgment motions must be filed.
The third reduction will follow summary judgment. Between the date on which the summary-judgment order issues and the final pretrial conference, Oracle shall select no more than three asserted claims and Google shall select no more than eight prior art references for trial. All others will be forsaken. Counsel did not specify their understanding of a “triable number” of claims and prior art references, so the Court selected these figures based on its own views and experience. The exact dates for the final selections will be set in the summary-judgment order. Unless summary-judgment motions are filed early, the summary-judgment hearing will fall on October 13. If that happens, then the final pretrial conference currently scheduled for October will be continued to October 24 in order to allow time for this process. The trial remains set to begin on October 31. The parties, however, are requested to comment on the following. If our trial were postponed until after the inter partes reexaminations, to what extent would the results there possibly moot out the need for a trial here? When will the ex parte reexaminations be completed?
IT IS SO ORDERED.
The Apache Software Foundation (ASF) has received a [United States District Court subpoena] requiring the production of documents related to the use of Apache Harmony code in the Android software platform, and the unsuccessful attempt by Apache to secure an acceptable license to the Java SE Technology Compatibility Kit. I assume Oracle did this because Open Source projects do everything behind closed doors and the only way to find out what happened regarding Apache's inability to get a license from Sun, now owned by Oracle, would be to send a subpoena.
The request, received from Oracle America's attorneys on May 2nd gives the Foundation until May 13th, 2011 to produce the required materials. Apache will, of course, be complying with all court requirements. As an open development group the majority of our documents are already publicly available.
That's like you and me being married, filing joint tax returns, and then in a divorce action, you subpoena me for my tax returns, so you can ask me questions about why they were filed the way they were.
Dude. You were there.