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Oracle v. Google - Minor Update on Reexaminations
Wednesday, August 31 2011 @ 09:00 AM EDT

In our last update on the reexamination of the Oracle (Sun) patents requested by Google we had shown two independent claims and six dependent claims of patent number 6,061,520 being rejected, with the remaining claims being confirmed by the examiner in an office action. Oracle has now accepted this outcome. In an amendment [PDF] to the '520 patent filed by Oracle, Oracle accepted the examiner's determination that the eight claims (6, 7, 9, 11, 18, 19, 21 and 23) were invalid, and Oracle consented to the cancellation of those claims.

That leaves two independent claims and 13 dependent claims still standing, all but one of which Google had challenged. So while Oracle has lost two important independent claims in this patent, the patent has not been entirely invalidated. The examiner still has to issue a final action and notice of allowance on the reexamination before it becomes final. In addition, Oracle has submitted several additional items of prior art that were produced in the litigation, and the examiner may yet have to consider that prior art as well.

In the updated chart below we indicate the status of the '520 patent as tentatively being final in blue in the "Claims Surviving" column on the right.

Oracle v. Google as of 2011-08-22

Patent No. Claims Claims Not Subject to Reexam Claims Subject to Reexam Claims Rejected Claims Confirmed Claims Surviving

Ind Dep Ind Dep Ind Dep Ind Dep Ind Dep Ind Dep
RE38104 30 11 2 8 28 3 - - - - 30 11
5966702 4 19 1 13 3 6 3 6 0 0 1 13
6061520 4 19 0 1 4 18 2 6 2 12 2 13
6125447 5 19 0 0 5 19 5 19 - - 0 0
6192476 7 14 0 0 7 14 7 10 0 4 0 4
6910205 3 11 1 8 2 3 2 3 - - 1 8
7426720 3 19 0 2 3 17 3 17 0 0 0 2
Totals 56 112 4 32 52 80 22 61 2 16 34 51
Percent of All Claims 100.00% 100.00% 7.14% 28.57% 92.86% 71.43% 39.29% 54.46% 3.57% 14.29% 60.71% 45.54%
Percent of Claims Reexamined

91.67% 79.22%

Here is the Oracle amendment in text:

Control No.: 90/011,489


Docket No.: 154892800100


Pursuant to 37 C.F.R. 1.530(e), and with entry of this Amendment, claims 1-4, 8, 10, 12-17, 20, and 22 are pending and confirmed, claims 6, 7, 9, 11, 18, 19, 21, and 23 are cancelled, and claim 5 is not subject to reexamination.

Control No.: 90/011,489


Docket No.: 154892800100

Interview Summary Pursuant To 37 C.F.R. 1.560(b)

Patent Owner thanks the Examiner for the courtesy of an in-person interview to discuss the Action on August 4, 2011. In attendance for the interview were Examiners Eric Kiss, Mary Steelman, and Fred Ferris, and for the Patent Owners, Christopher Eide (48,375), Julie Akhter (59,570), George Simon (47,089), Ben Goldberg (technical expert), Tracy Druce (35,493), and Lissi Mojica (63,421). Claim 6 of the Patent and the Lewis reference were discussed during the interview. The following recitations of claim 6 were primarily discussed: "play executing the code without running the code on the processing component to identify the operation if the code were run by the processing component," and "creating an instruction for the processing component to perform the operation."

Patent Owner presented that Lewis discloses a simulated stack for the purpose of determining memory usage information (e.g., a register or memory destination), but not "to identify the operation if the code were run by the processing component," or "creating an instruction for the processing component to perform the operation." (See also, the Examiner Interview Agenda accompanying the Examiner's Interview summary mailed August 4, 2011.)

As indicated in the Examiner Interview summary, the Examiners maintained that the "execution" using a simulated stack as disclosed by Lewis identifies the operations by recording information about constants, variable references, previously "executed" subexpressions, and procedure or method calls. Further, the Examiners maintained that the generation of "good code" using the simulated stack values equates to creating an instruction. Patent Owner respectfully disagreed in the interview.

Control No.: 90/011,489


Docket No.: 154892800100


I. Introduction

Claims 1-4 and 6-23 were subject to reexamination in the Action. Claims 1-4, 8, 10, 12-17, 20, and 22 stand confirmed, claims 6, 7, 9, 11, 18, 19, 21, and 23 stand rejected, and claim 5 is not subject to the reexamination. By virtue of this response, claims 6, 7, 9, 11, 18, 19, 21, and 23 are hereby cancelled. As detailed below, Patent Owner believes that all rejections are therefore rendered moot and request that a reexamination certificate be issued promptly.

II. Rejections

Claims 6, 7, 9, 11, 18, 19, 21, and 23 stand rejected under 35 U.S.C. 102(b) as being anticipated by Lewis.

In the interest of special dispatch, as indicated above, claims 6, 7, 9, 11, 18, 19, 21, and 23 have been cancelled herein, thereby rendering the rejection moot. The cancellation of the claims is solely to expedite the conclusion of the reexamination and should not be construed as relating to patentability. Patent Owner respectfully disagrees that Lewis raises a substantial new question of patentability and further disagrees that these claims are anticipated by Lewis for reasons stated in the Office Action and the Examiner Interview Summary.

III. Supplemental Information Disclosure Statement

Patent Owner further draws the Examiner's attention to the Supplemental Information Disclosure Statement filed herewith. The Supplemental Information Disclosure Statement cites further information produced during the pending litigation since the mailing of the Office Action.

IV. Conclusion

It is believed that all of the outstanding rejections have been addressed. Accordingly, Patent Owner respectfully requests that an NIRC be issued promptly. If it is determined that a telephone

Control No.: 90/011,489


Docket No.: 154892800100

conference would expedite the prosecution of this application, the Examiner is invited to telephone the undersigned at the number given below.

In the event the U.S. Patent and Trademark office determines that relief is required, Patent Owner petitions for any required relief and authorizes the Commissioner to charge the cost of such petitions and/or other fees due in connection with the filing of this document to Deposit Account No. 03-1952 referencing docket no. 154892800100.

Dated: August 23, 2011

Respectfully submitted,

By Electronic Signature /Christopher B. Eide/ Christopher B. Eide
Registration No.: 48,375
755 Page Mill Road Palo Alto,
California 94304-1018

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