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Oracle v. Google - Oracle Responds on '720 Office Action - UPDATED
Wednesday, July 13 2011 @ 09:00 AM EDT

Oracle has responded on one of the seven office actions it faces in the reexamination of the patents it has asserted against Google. It is clear from the response that Oracle is not going to abandon ship without a fight. This first response pertains to U.S. Patent No. 7,426,720 and is covered by reexamination number 95/001560.

We are not going to reproduce the Oracle filings in text because (a) they are extremely lengthy and (b) a number of you have expressed concern about being exposed to the detail of the arguments. However, for those of you who are interested in the detail, here are the filings (cover sheet omitted):

Claims and Cited Art [PDF]

Remarks and Arguments [PDF]

Appendices [PDF]

And here is the first office action [PDF] for reference.

Basic Oracle Arguments

In responding to the first office action in the reexamination Oracle identifies the following elements of Claim 1 of the '720 patent as going to the heart of the invention:

  • A "class preloader" to obtain a representation of at least one class from a source definition provided as object-oriented program code;
  • A "master runtime system process" to interpret and to instantiate the representation as a class definition in a memory space of the master runtime system process;
  • A "runtime environment" to clone the memory space as a child runtime system process responsive to a process request; and
  • A "copy-on-write process cloning mechanism" to copy references to the memory space of the master runtime system process into a separate memory space of the child runtime system process and to defer copying of the master's memory space until the child needs to modify the referenced memory space.
It is these elements that Oracle asserts escape the prior art references the examiner has cited, particularly that any combination of these elements was obvious. What will be interesting is whether any of the subsequent prior art that Google has now brought to the attention of the court will have an impact on this or the other reexaminations. By Google filing those further documents with the court, Oracle is now under an obligation to assure that the examiner in each of the reexaminations is aware of those documents, as well, even if Google does not file them with the USPTO.



Judge Alsup has now posed a question to Google about Google's earlier negotiations with Sun over a possible patent license. The judge's question:

In reading the Daubert briefing, it appears possible that early on Google recognized that it would infringe patents protecting at least part of Java, entered into negotiations with Sun to obtain a license for use in Android, then abandoned the negotiations as too expensive, and pushed home with Android without any license at all. How accurate is this scenario? Does Google acknowledge that Android infringes at least some of the claims if valid? If so, how should this affect the damages analysis? How should this affect the questions of willfulness and equitable relief? Counsel should be prepared to address these issues at the hearing.

Of course, Google has to answer this for themselves. However, I can tell you as an experienced licensing attorney that parties frequently have discussions over possible patent licenses while specifically avoiding any discussion over whether the patents are believed to be infringed. Google may well have been simply testing the waters to see if it was worth buying an "insurance policy" from Sun just to avoid later problems. Given that Google walked away from those negotiations, it is far more likely that they decided (a) Sun was asking too much and (b) the likelihood of infringement was relatively low. However, like everything else in this case, you shouldn't be reading the tea leaves too early.


209 - Filed & Entered: 07/11/2011
Docket Text: REQUEST FOR UPDATE RE RE-EXAMINATION. Signed by Judge Alsup on July 11, 2011. (whalc1, COURT STAFF) (Filed on 7/11/2011)

210 - Filed & Entered: 07/12/2011
Order Docket Text: NOTICE REGARDING ADDITIONAL QUESTIONS FOR JULY 21 HEARING. Signed by Judge Alsup on July 12, 2011. (whalc1, COURT STAFF) (Filed on 7/12/2011)

211 - Filed & Entered: 07/12/2011
Declaration in Support Docket Text: Declaration in Support of [196] Administrative Motion to File Under Seal DECLARATION OF MATTHEW SARBORARIA IN SUPPORT OF GOOGLE, INC.S ADMINISTRATIVE MOTION TO FILE UNDER SEAL PORTIONS OF GOOGLES DAUBERT REPLY BRIEF filed byOracle America, Inc.. (Attachments: # (1) Proposed Order [PROPOSED] ORDER SEALING ORACLE AMERICA, INC.S CONFIDENTIAL INFORMATION FROM GOOGLE, INC.S DAUBERT REPLY BRIEF)(Related document(s)[196]) (Holtzman, Steven) (Filed on 7/12/2011)

212 - Filed & Entered: 07/12/2011

Order on Administrative Motion to File Under Seal Docket Text: ORDER PARTIALLY GRANTING MOTION TO FILE REPLY BRIEF UNDER SEAL, Order by Hon. William Alsup granting in part and denying in part [196] Administrative Motion to File Under Seal.(whalc1, COURT STAFF) (Filed on 7/12/2011)

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