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Oracle v. Google - Google Moves to Supplement Its Invalidity Defenses
Tuesday, July 12 2011 @ 09:00 AM EDT

Google has filed a motion [PDF] asking leave of the court to supplement its invalidity contentions regarding Oracle's patents, invalidity contentions it claims "it has now determined are among its strongest in the case". It has found prior art, in one instance going all the way back to Multics:
In brief, the asserted patents relate to virtual machine technology that was first developed in the 1960s, and they claim techniques that have been widely used in software other than virtual machines since the early days of computers. As a result, Google's review of the prior art encompassed many thousands of publications, patents, and products that span at least five decades, much of which was not easily searchable or was only available in hard copy in various locations.
(See Sections B& D under Argument in the Motion)

In another instance, the court's claim construction opened up prior art that was not usable before (see Sec. A under Argument in the Motion). In their obviously very thorough search for prior art, Google also found references that it says demonstrate obviousness. (See Sections E, G and H under Argument in the Motion) In a fourth instance Google says that Oracle's JavaOS itself is prior art, and JavaOS was publicly available for more than a year prior to the asserted patent. (See Sec. C under Argument in the Motion)

Google has asked Oracle for JavaOS code, but Oracle has not been forthcoming with the requested code, which Google calls discovery abuse:

Google seeks to rely on Oracle's JavaOS product as anticipating the claims of the '702 patent. Oracle stated in its infringement contentions that its "JavaOS" product implements the '702 patent, and it is undisputed that JavaOS was publicly released and licensed more than a year before the filing date of the '702 patent, invalidating the '702 patent under 35 U.S.C. § 102 ("§ 102"). (See Exs. K and L.) However, Oracle did not produce any JavaOS source code until May 2011, and has still not produced the JavaOS source code that predates the '702 patent by a year. In view of Google's persistence on this subject, Oracle just sent Google a letter trying to amend its infringement contentions without leave of the Court, and argue that its identification of JavaOS 1.0 as a product practicing the patent was "in error." (See Ex. M.) Thus, Google's difficulty in understanding and charting the relevant JavaOS information is a direct result of Oracle's own discovery abuse, as Oracle desperately tries to keep its own invalidating product out of the case.
Finally, one reference, while not technically prior art, turned out to be significant in demonstrating obviousness, due to an admission by the same inventor elsewhere:
Google seeks to add new charts F-7 and G-4 that disclose § 103 obviousness defenses for the '447 and '476 patents. While Google had the Gong reference when it served its Initial Contentions, the materiality of Gong was not apparent because it was published after the filing date of the '447 and '476 patents. Thus, it is not technically prior art. Upon further inspection, however, Gong turns out to be highly material to the question of these patents' validity. The reference, which was authored by the named inventor on both the '447 and '476 patents, essentially admits that the security methods claimed in the patents would have been obvious since they are just a collection of well-known security techniques. (See Ex. O, Gong at Introduction ("It is worth emphasizing that this work by itself does not claim to break significant new ground in terms of the theory of computer security. Instead, it offers a real world example where well-known security principles are put into engineering practice to construct a practical and widely deployed secure system.").)
An Oracle lawyer conceded that there was no prejudice if Google supplemented its invalidity defenses, although now Oracle wishes to take that position back, Google tells the court, but it'd be a crying shame if such strong evidence of invalidity and obviousness were to be disallowed on a technicality.

And how extensive were Google's efforts to find prior art? Well, according to the declaration of Mark Francis, quite extensive. This is part of what Google says it did to find prior art, from the Declaration of Mark H. Francis [PDF], attached to Google's motion:

2. A number of attorneys, general researchers, experts, and commercial search firms participated in Google’s search to identify many thousands of potentially relevant prior art publications.

3. All such prior art publications were reviewed by an individual with a background in software programming and determined to be relevant to one or more of the patents-in-suit.

4. Google’s prior art search encompassed a wide variety of sources and techniques to identify prior art dating back to the 1960’s, including searching on commercial and publicly-available electronic databases such as Google Scholar, the Patent Office’s patent database, the Institute for Electrical and Electronics Engineers (IEEE) database, the Association for Computing Machinery (ACM) database, and electronic catalogs provided by a number of public and private universities with extensive print collections of programming and systems materials.

5. Much of this searching was based on a manual identification and review of these prior art materials.

6. One search technique employed to locate prior art was the use of bibliographies to perform forward and reverse citation searches on many of the relevant publications.

7. For many of the older prior art publications, citation searching required manual adjustment of search criteria due to inconsistencies in citation formats.

8. Review of electronic materials and conversations with experts in the field identified a number of potential prior art systems and materials that were not easily accessible through traditional search engines.

9. Google’s searchers manually reviewed extensive collections of prior art materials relating to Multics, IBM System 360, and other systems dating back to the 1960’s.

10. Many of these older prior art documents were not indexed or easily searchable.

11. Some of the identified prior art documentation was only available from individuals’ personal collections.

12. Once located, many such prior art documents were difficult to understand without first learning about the particular computer platforms they discussed.

13. Each of these older prior art systems had its own distinctive terminology and many had system architectures foreign to all but experienced computer programmers and researchers.

14. Google’s attorneys and experts examined a number of physical prior art documents in university libraries across the country looking for relevant material in textbooks, conference proceedings, dissertations, and product documentation.

15. Google’s attorneys also searched through various websites (eBay.com, abebooks.com and others) and purchased prior art textbooks and product documentation that contained prior art or identified other relevant publications or products.

16. Google has also conducted searches of Oracle’s massive document production to identify relevant prior art material, but the voluminous nature of that production, combined with limited available metadata and search context, lack of searchable text, and disorganized dump of the production, has made searching difficult and time consuming.

17. Google has expended over fifteen hundred hours [emphasis added] person hours in the search process, involving over fifteen individuals, including technical consultants and experts.

Pay attention folks, this is like a class in how to find prior art.

Oh, and those Oracle (Sun) inventors' documents that could not be produced because they had been, according to Oracle, destroyed. Well, according to Mr. Francis maybe not so much:

19. Attached to this declaration as Exhibit A is a true and correct copy of Oracle’s Supplemental Response to Google Interrogatory No. 13 (dated April 25, 2011), stating that the inventors’ documents had been destroyed (“Oracle no longer has custodial data for the following people because they left employment at Sun Microsystems some time ago and their data was removed from Sun’s systems pursuant to Sun’s policies: Lars Bak … Nedim Fresko, Robert Griesemer, … Li Gong, … Richard Tuck, …Frank Yellin.”) (highlights added).

20. Attached to this declaration as Exhibit B is a true and correct copy of an excerpt from the transcript of the April 14, 2011 deposition of Lisa J. Ripley acknowledging that the inventors’ documents had been destroyed (highlights added).

21. Attached to this declaration as Exhibit C is a true and correct copy of a letter from Oracle to Google on June 22, 2011, stating that Oracle “recently identified” documents associated with two of the named inventors.

Here are the filings:

07/08/2011 - 208 - MOTION for Leave to File Supplement Invalidity Contentions filed by Google Inc.. (Attachments: # 1 Affidavit Declaration of Mark Francis in support of Motion for Leave to Supplement Invalidity Contentions, # 2 Proposed Order Proposed Order Granting Google Inc's Motion for Leave to Supplement Invalidity Contentions)(Sabnis, Cheryl) (Filed on 7/8/2011) (Entered: 07/08/2011)

Here is the Google motion, as text:

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

ROBERT A. VAN NEST - #84065
[email]
CHRISTA M. ANDERSON - #184325
[email]
KEKER & VAN NEST LLP
[address, phone, fax]

DONALD F. ZIMMER, JR. (SBN 112279)
[email]
CHERYL A. SABNIS (SBN 224323)
[email]
KING & SPALDING LLP
[address, phone, fax]

SCOTT T. WEINGAERTNER (Pro Hac Vice)
[email]
ROBERT F. PERRY
[email]
BRUCE W. BABER (Pro Hac Vice)
[email]
KING & SPALDING LLP
[address, phone, fax]

IAN C. BALLON (SBN 141819)
[email]
HEATHER MEEKER (SBN 172148)
[email]
GREENBERG TRAURIG, LLP
[address, phone, fax]

Attorneys for Defendant
GOOGLE INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

___________________

ORACLE AMERICA, INC.

Plaintiff,

v.

GOOGLE INC.

Defendant.

________________________

Case No. 3:10-cv-03561-WHA

Honorable Judge William H. Alsup

Hearing Date: August 18, 2011
Hearing Time: 2:00 p.m.

DEFENDANT GOOGLE INC.'S
MOTION FOR LEAVE TO
SUPPLEMENT INVALIDITY
CONTENTIONS

_______________________

TABLE OF CONTENTS

I. INTRODUCTION ................................................................................................................. 1

II. LEGAL STANDARDS ........................................................................................................ 2

III. BACKGROUND FACTS .................................................................................................. 3

A. Google's Difficult Search for Prior Art .......................................................................... 3

B. Procedural History .......................................................................................................... 4

IV. ARGUMENT ..................................................................................................................... 5
A. '104 Patent Charts A-9 and A-12, § 103 (AAPA/Rau) and § 103
(Gries/Rau) ..................................................................................................................... 5

B. '104 Patent, Chart A-10, § 103 (Tafvelin in view of dynamic linking as
described in Daley, Krakowiak, and/or
Vyssotsky)......................................................... 6

C. '702 Patent, § 102 (JavaOS) ........................................................................................... 6

D. '702 Patent, Chart B-4, § 103 (Multics Segment Binder as Described in
Organick, Honeywell, and/or Vyssotsky) ........................................................................ 7

E. '205 Patent; Charts E-9, E-10, E-11; § 103 (Wakeling/Magnusson), § 103
(Lewis/Magnusson), § 103
(Deutsch/Magnusson).......................................................... 8

F. Defenses raised in February and March 2011 as part of the reexamination
proceedings before the U.S. Patent
Office...................................................................... 8

G. '447 Patent, Chart F-6, § 103 (Wahbe/Java Language Specification); '476
Patent, Chart G-6, § 103 (Roskind/Roskind Patent)
....................................................... 9

H. '447 patent, Chart F-7, § 103 (Gong); '476 patent, Chart G-4, § 103 (Gong)................ 9

I. § 101/102 Printed Matter Defense ................................................................................ 10

IV. CONCLUSION ................................................................................................................. 10

i

TABLE OF AUTHORITIES

Page(s)

CASES

Acco Brands, Inc. v. PC Guardian AntiTheft Products, Inc.,
No. 04-cv-03526, 2008 U.S. Dist. LEXIS 88142 (N.D. Cal. May 22, 2008)............................2

IXYS Corp. v. Advanced Power Tech., Inc.,
321 F. Supp. 2d 1133 (N.D. Cal. 2004) ....................................................................................8

The Bd. of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., No. 05-cv-04158, 2008 U.S. Dist. LEXIS 16556 (N.D. Cal. Mar. 4, 2008) ................. 2-3, 4, 8

Vasudevan Software, Inc. v. IBM,
No. 09-cv-05897, 2011 U.S. Dist. LEXIS 33132 (N.D. Cal. Feb. 18, 2011) ............................2

Yodlee, Inc. v. CashEdge, Inc.,
No. 05-cv-1550, 2007 U.S. Dist. LEXIS 39564 (N.D. Cal. May 17, 2007)..............................2

STATUTES

35 U.S.C. § 101..............................................................................................................................10

35 U.S.C. § 102...................................................................................................................... 6-7, 10

35 U.S.C. § 103...................................................................................................................... passim

OTHER AUTHORITIES

Patent L.R. 3-3 .................................................................................................................................8

Patent L.R. 3-6 ....................................................................................................................... passim

ii

PLEASE TAKE NOTICE that on August 18, 2011 at 2:00 p.m., or as soon thereafter as counsel may be heard, Defendant Google Inc. ("Google") will, and hereby does, respectfully move for leave to supplement its invalidity contentions. This Motion is based on the following memorandum of points and authorities in support, the Declaration of Mark H. Francis ("Decl.") and accompanying exhibits, the entire record in this matter, and on such evidence as may be presented at the hearing of this Motion.

I. INTRODUCTION

In this motion, Google seeks leave to supplement its invalidity contentions with certain invalidity defenses that it has now determined are among its strongest in the case. In the five and a half months that have passed since Google served its invalidity contentions ("Initial Contentions"), the Court has issued a claim construction order that opened the door to some additional invalidity defenses and Google has developed others in the course of discovery and its ongoing search and analysis of the voluminous and highly technical prior art in the case both of which are recognized grounds for "good cause" under Patent Local Rule 3-6. Although Oracle has refused to consent to supplementation, it cannot deny that during that five and a half months Google has repeatedly informed it of potential changes to Google's invalidity contentions. Oracle also cannot deny that its refusal to provide discovery into its JavaOS product has delayed Google's investigation of a key piece of prior art. Oracle's claim of prejudice rings hollow in light of the fact that it has had invalidity claim charts for almost all of the references at issue since May 16, and in some cases months earlier.

Both parties have known since May that the scope of this case would soon be reduced by more than half, once Oracle clarified which 50 claims out of the 132 claims originally asserted it actually intended to pursue at trial. Had Google filed this motion before Oracle narrowed its case and included all of the potential changes to its invalidity contentions, the resulting motion would have been several times larger than this one, and the bulk of it would have been mooted almost immediately by the parties' narrowing decisions. The burden on the parties and the Court would have been even more severe had Google filed successive motions for each set of

1

discoveries over the course of the spring. Under these circumstances, where the contents of the supplemental contentions have already been disclosed, leaving no reason to subject the parties and the Court to unnecessary briefing, it would elevate form over substance to penalize Google by depriving it of several of its strongest invalidity defenses. See Yodlee, Inc. v. CashEdge, Inc., No. 05-cv-1550, 2007 U.S. Dist. LEXIS 39564 at *4 (N.D. Cal. May 17, 2007) ("The Patent Local Rules supplement the Civil Local Rules and the Federal Rules of Civil Procedure, which are to be construed to secure the just, speedy, and inexpensive determination of every action. ... [I]t would be unjust for information so highly material to the merits to be avoided on the basis of such mere technicalities") (citations and quotations omitted).

For the foregoing reasons, as explained further below, Google respectfully requests that the Court grant leave for it to supplement its invalidity contentions.

II. LEGAL STANDARDS

Patent Local Rule 3-6 provides that a party may supplement its contentions "by order of the Court upon a timely showing of good cause." The rule provides "[n]on-exhaustive examples" of circumstances that may support a finding of good cause, including "a claim construction by the Court different from that proposed by the party seeking amendment" and "recent discovery of material, prior art despite earlier diligent search." Other factors that courts consider in the good cause determination include "the relevance of the newly-discovered prior art, whether the request to amend is motivated by gamesmanship, [and] the difficulty of locating the prior art," Acco Brands, Inc. v. PC Guardian AntiTheft Products, Inc., No. 04-cv-03526, 2008 U.S. Dist. LEXIS 88142 at *5 (N.D. Cal. May 22, 2008), whether movants were diligent in amending their contentions, and whether the other party would be prejudiced if the motion were granted. Vasudevan Software, Inc. v. IBM, No. 09-cv-05897, 2011 U.S. Dist. LEXIS 33132 at *4-5 (N.D. Cal. Feb. 18, 2011). In weighing the effect of any alleged delay in moving for leave to amend, courts consider whether movants acted promptly in communicating potential changes to their contentions to opposing parties, thereby minimizing or eliminating the risk of prejudice. See, e.g., The Bd. of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., No.

2

05-cv-04158, 2008 U.S. Dist. LEXIS 16556 at *8-9 (N.D. Cal. Mar. 4, 2008).

III. BACKGROUND FACTS

A. Google's Difficult Search for Prior Art

The accompanying Declaration of Mark H. Francis details Google's search for relevant art. (Decl. at ¶ 1-3.) In brief, the asserted patents relate to virtual machine technology that was first developed in the 1960s, and they claim techniques that have been widely used in software other than virtual machines since the early days of computers. As a result, Google's review of the prior art encompassed many thousands of publications, patents, and products that span at least five decades, much of which was not easily searchable or was only available in hard copy in various locations. (Decl. at ¶ 2, 4-16.)

Compounding the difficulty of the search was the fact that technical terms used in the patents are not used consistently in the prior art not because the prior art does not disclose the concepts, but because the terms used to describe the same techniques have changed over the past fifty years. As a result, even where documents were electronically available, keyword searching was often ineffective and a more traditional brute force review was necessary. (Decl. at ¶ 13.)

Moreover, Google lacked access to one of the key starting points for a prior art search: the inventors' documents and records. Here, there are seven inventors named on the seven asserted patents, none of whom are still employed by Oracle. Throughout the duration of discovery, Oracle represented that all documents from the named inventors of the patents had been destroyed, and provided testimony to that effect on April 14, 2011.1 (See Exs. A and B.) As a result, Google has been hampered in investigating when the inventions were conceived, who was involved, whether any products actually implemented the invention, and what prior art was known to the inventors.2

3

Google's search for relevant prior art has been ongoing throughout this litigation, and the wide-ranging scope of the relevant art means that additional avenues for research have appeared along the way, as in the case of the five references discovered after Oracle narrowed its claims. Google only learned of those references by speaking with additional experts it retained in May. In total, Google has expended over fifteen hundred person hours in the search process, involving over fifteen individuals, including technical consultants and experts. (Decl. at ¶ 17.)

B. Procedural History

Google served its Initial Contentions in January of this year. It disclosed additional invalidity defenses to Oracle in February and March 2011, when Google filed reexamination requests with the U.S. Patent Office, including detailed claim charts. Oracle and the law firm of Morrison & Foerster, Oracle's trial counsel here, have been actively involved in the reexamination proceedings and thus privy to Google's disclosures in that context. Google repeatedly requested Oracle's non-opposition to the instant motion for leave, and even disclosed a draft of its supplemental contentions and claims charts to Oracle in May 2011. (See Exs. D-G.) See Bd. of Trustees, 2008 U.S. Dist. LEXIS 16556 at *10-11 (granting a motion for leave to supplement when the disclosing party "did not have its head in the sand" and "it immediately served amended contentions" upon discovery of new grounds). On June 1, by agreement of the parties (Dkt. No. 144) and approval of the Court (Dkt. No. 147), Oracle limited its allegations to 50 patent claims. On June 15, Google responded by limiting its invalidity defenses to six grounds per patent claim, for a total of 48 invalidity defenses, only five of which were previously unknown to Oracle.

Oracle's counsel Marc Peters conceded during a meet-and-confer call on May 23, 2011 that there would be no prejudice to Oracle if Google supplemented its invalidity contentions. Google memorialized Mr. Peters' concession in a letter to Oracle's counsel on May 25, and in a response to that letter on May 31, Oracle did not dispute it. (See Exs. H and I.) Although Oracle

4

now claims that it would not have made that statement had it known how many of the subsequently-disclosed defenses Google intended to use at trial, that argument makes no sense. If Oracle would not have been prejudiced by Google's adding all of its subsequently-disclosed defenses to its original Invalidity Contentions, it cannot be any more prejudiced by the addition of just a small subset of those defenses.

IV. ARGUMENT

Google's bases for good cause align directly with the examples prescribed by the Patent Local Rules.

A. '104 Patent Charts A-9 and A-12, § 103 (AAPA/Rau) and § 103 (Gries/Rau)

Google seeks to add new charts A-9 and A-12 that disclose 35 U.S.C. § 103 ("§ 103") obviousness combinations based on the Rau reference. These defenses respond to the Court's Claim Construction Order, which rejected Google's proposed claim constructions for both "intermediate form (object) code" and "resolve." (See Dkt. No. 137 at 17, 23-25.) Specifically, Google's proposed construction of "resolve" required that a symbolic reference be "replace[d] at least for the life of the process." In contrast to Google's proposed construction, Rau warns that "[a]ttempting to retain the [resolved] version [of an instruction] for extended periods of time will entail the use of large amounts of memory . . . [and may] defeat the purpose of using an [interpreted language]." (See Ex. J, Rau at 71.) Thus, Rau's disclosure did not read directly on Google's proposed construction. However, Rau does read on the Court's construction, which requires only the "determining [of] the numerical memory-location reference that corresponds to [a] symbolic reference." Accordingly, the Rau reference has become more important in light of the Court's construction of "resolve."

Rau's materiality is further emphasized in light of the Court's construction of "intermediate form (object) code," which requires that the code be "executable" (Dkt. No. 137 at 17), because Rau discloses an intermediate form that is executable (i.e., may be interpreted). (See Ex. J, Rau at 67 ("Given a host architecture and a high level language, one could either interpret the latter directly, compile it into the machine language or compile it into an

5

intermediate language which is then interpreted.").) Accordingly, Google's supplementation is warranted. See Patent L.R. 3-6(a).

Oracle suffers no prejudice as a result of this supplementation, as supplemental charts A-9 and A-12, or their equivalent, were provided to Oracle on or before May 16, 2011.

B. '104 Patent, Chart A-10, § 103 (Tafvelin in view of dynamic linking as described in Daley, Krakowiak, and/or Vyssotsky)

Google seeks to add new chart A-10 that discloses a § 103 obviousness combination based on Tafvelin in view of Daley, Krakowiak, and/or Vyssotsky. Google discovered each of these references only after serving its Initial Contentions, despite earlier diligent search. (Decl. at ¶ 18.)3 See Patent L.R. 3-6(b). Google provided chart A-10 based on Tafvelin and Daley to Oracle on May 16, 2011. Daley was cited for its disclosure of the dynamic linking feature that has been part of the Multics operating system since the 1960s. After Google disclosed Tafvelin and Daley to Oracle, one of Google's retained experts discovered Krakowiak and Vyssotsky. These two references disclose the same Multics dynamic linking system that is disclosed in Daley, and simply provide additional information about this feature. Because Oracle was already aware of Multics dynamic linking as a result of Google's disclosure of Daley, Oracle does not suffer any prejudice as a result of the later disclosure of Krakowiak and Vyssotsky. For at least these reasons, the Court should allow supplemental chart A-10. See Patent L.R. 3-6(b) ("good cause include[s] ... recent discovery of material, prior art despite earlier diligent search").

C. '702 Patent, § 102 (JavaOS)

Google seeks to rely on Oracle's JavaOS product as anticipating the claims of the '702 patent. Oracle stated in its infringement contentions that its "JavaOS" product implements the '702 patent, and it is undisputed that JavaOS was publicly released and licensed more than a year before the filing date of the '702 patent, invalidating the '702 patent under 35 U.S.C. § 102 ("§

6

102"). (See Exs. K and L.) However, Oracle did not produce any JavaOS source code until May 2011, and has still not produced the JavaOS source code that predates the '702 patent by a year. In view of Google's persistence on this subject, Oracle just sent Google a letter trying to amend its infringement contentions without leave of the Court, and argue that its identification of JavaOS 1.0 as a product practicing the patent was "in error." (See Ex. M.) Thus, Google's difficulty in understanding and charting the relevant JavaOS information is a direct result of Oracle's own discovery abuse, as Oracle desperately tries to keep its own invalidating product out of the case. Given Oracle's untimely production of this highly relevant prior art evidence, Oracle should not now be heard to complain that Google has not provided invalidity charts for JavaOS. See Patent L.R. 3-6(c) ("good cause [in the context of infringement contentions] include[s] ... recent discovery of nonpublic information..."); see also Patent L.R. 3-6(b). Google specifically requests the ability to further supplement its contentions with invalidity charts based on JavaOS after Oracle has produced all relevant documents and source code.

D. '702 Patent, Chart B-4, § 103 (Multics Segment Binder as Described in Organick, Honeywell, and/or Vyssotsky)

With the exception of Vyssotsky, Google disclosed everything in this supplemental defense in its Initial Contentions. Google discovered the Vyssotsky reference only after serving its Initial Contentions, despite earlier diligent search. See Patent L.R. 3-6(b). As discussed above in section IV.A.2, Vyssotsky discloses the dynamic linking feature of the Multics operating system. This feature, also known as the Multics segment binder, is similarly described in Organick and Honeywell, and Google seeks to supplement chart B-4 with the additional description of this system that is found in Vyssotsky. Because Google disclosed this system to Oracle in the Initial Contentions, Oracle suffers no prejudice as a result of this supplementation. Furthermore, supplemental chart B-4 has already been provided to Oracle, weeks in advance of expert reports, and in particular the rebuttal expert reports to which these contentions will be most relevant. For at least these reasons, the Court should allow supplemental chart B-4. See Patent L.R. 3-6(b) ("good cause include[s] ... recent discovery of material, prior art despite

7

earlier diligent search").

E. '205 Patent; Charts E-9, E-10, E-11; § 103 (Wakeling/Magnusson), § 103 (Lewis/Magnusson), § 103 (Deutsch/Magnusson)

Google seeks to add supplemental charts E-9, E-10, and E-11. These charts represent § 103 obviousness combinations based on references that were charted in Google's Initial Contentions as § 102 anticipation references. In its Initial Contentions, Google specifically disclosed its intention to use its § 102 references as § 103 prior art in combinations with other charted references. (See Ex. N.) See Bd. of Trustees, 2008 U.S. Dist. LEXIS 16556 at *9 (citing IXYS Corp. v. Advanced Power Tech., Inc., 321 F. Supp. 2d 1133, 1153 n.19(N.D. Cal. 2004) (finding that plaintiff "has long been on notice of these potential combination [sic]. In the interests of privileging substance over form, the court will proceed to address these most pertinent-and most well-known-of combinations.")). Except for the fact that the Magnusson reference is combined with Wakeling, Lewis, and Deutsch, no new material has been added to any of the charts that Google previously provided in its Initial Contentions. Accordingly, Oracle has been on notice of the specific prior art references and Google's reservation of rights to combine these references as § 103 combinations. Oracle suffers no prejudice as a result of this supplementation, as supplemental charts E-9 through E-11, or their equivalents, were provided to Oracle on or before May 16, 2011.

F. Defenses raised in February and March 2011 as part of the reexamination proceedings before the U.S. Patent Office.

Google seeks to supplement charts A-2 and A-3 ('104 patent); to add new charts C-8, C-9, C-11 ('720 patent); to add new charts D-5 and D-6 ('520 patent); and to add new chart F-5 ('447 patent). Within four to eight weeks of serving its Initial Contentions, these references were all submitted to the U.S. Patent Office in reexamination requests (and thereby disclosed to Oracle). Each reexamination request included detailed invalidity charts for these references in conformance with Patent L.R. 3-3. Accordingly, Oracle suffers no prejudice as a result of this supplementation as it has been on notice of these invalidity defenses since at least early March.

8

G. '447 Patent, Chart F-6, § 103 (Wahbe/Java Language Specification); '476 Patent, Chart G-6, § 103 (Roskind/Roskind Patent)

Google seeks to add new charts F-6 and G-6 that disclose § 103 obviousness combinations that render the claims of the '447 and '476 patents invalid. While Google possessed the Java Language Specification and the Roskind Patent before serving its Initial Contentions, neither was sufficient on its own to anticipate the claims of the respective patent. Google discovered Wahbe and the other Roskind reference only after serving its Initial Contentions, despite earlier diligent search. See Patent L.R. 3-6(b). Oracle suffers no prejudice as a result of this supplementation, as charts F-6 and G-6 have already been provided to Oracle, weeks in advance of expert reports, and in particular the rebuttal expert reports to which these contentions will be most relevant.

H. '447 patent, Chart F-7, § 103 (Gong); '476 patent, Chart G-4, § 103 (Gong)

Google seeks to add new charts F-7 and G-4 that disclose § 103 obviousness defenses for the '447 and '476 patents. While Google had the Gong reference when it served its Initial Contentions, the materiality of Gong was not apparent because it was published after the filing date of the '447 and '476 patents. Thus, it is not technically prior art. Upon further inspection, however, Gong turns out to be highly material to the question of these patents' validity. The reference, which was authored by the named inventor on both the '447 and '476 patents, essentially admits that the security methods claimed in the patents would have been obvious since they are just a collection of well-known security techniques. (See Ex. O, Gong at Introduction ("It is worth emphasizing that this work by itself does not claim to break significant new ground in terms of the theory of computer security. Instead, it offers a real world example where well-known security principles are put into engineering practice to construct a practical and widely deployed secure system.").) Oracle suffers no prejudice as a result of this supplementation, as supplemental charts F-7 and G-4, or their equivalent, were provided to Oracle as early as May 16, 2011.

9

I. § 101/102 Printed Matter Defense

Google also seeks to provide further elaboration of its invalidity defense based on the fact that the identified claims are non-statutory subject matter. Although Google originally identified that defense as one based on § 101, it has since learned that courts conduct what is in effect the same analysis under both § 101 and § 102. Although it is unclear if it is even necessary for Google to amend its contentions to raise this point, which simply clarifies the potential legal bases for a "printed matter" defense, Google has included this contention in the interest of clear and open disclosure. This issue is essentially a question of law and thus has no impact on fact or expert discovery. Because the basic defense was identified in Google's Initial Contentions and presented in its present form as early as May 16, 2011, Oracle suffers no prejudice as a result of this supplementation.

IV. CONCLUSION

For the forgoing reasons, Google respectfully requests that it be granted leave to include in its narrowed invalidity contentions certain theories not included in its Initial Contentions.

10

DATED: July 8, 2011

KING & SPALDING LLP

By: /s/ Scott Weingaertner

ROBERT A. VAN NEST - #84065
[email]
CHRISTA M. ANDERSON - #184325
[email]
KEKER & VAN NEST LLP
[address, phone, fax]

SCOTT T. WEINGAERTNER (Pro Hac Vice)
[email]
ROBERT F. PERRY
[email]
BRUCE W. BABER (Pro Hac Vice)
[email]
MARK H. FRANCIS (Pro Hac Vice)
[email]
KING & SPALDING LLP
[address, phone, fax]

DONALD F. ZIMMER, JR. (SBN 112279)
[email]
CHERYL A. SABNIS (SBN 224323)
[email]
KING & SPALDING LLP
[address, phone, fax]

ATTORNEYS FOR DEFENDANT
GOOGLE INC.

I hereby attest that Mark H. Francis concurs in the e-filing of this document. /s/ Cheryl A. Sabnis /s/

___________________

1 Oracle did produce documents from one named inventor, James Gosling, but not during the 1990-93 timeframe, and Gosling's '104 patent bears an initial filing date of December 22, 1992.

2 Just weeks ago, however, Google was informed that Oracle had suddenly discovered documents associated with two of the named inventors (one of whom had already been deposed), but it is unclear if Oracle has produced those documents yet. (See Ex. C.) To the extent Oracle discovers and produces new documents that are material to Google’s invalidity defenses, Google reserves the right to seek permission from the Court to provide further supplementation.

3 Tafvelin was published in 1975, Daley in 1968, and Vyssotsky in 1965. These publication dates illustrate the breadth of Google's search for prior art and that the well-known techniques claimed in the '104 patent date back to the early days of computers.

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