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 v. Google - Google Files Case Management Statement
Tuesday, October 04 2011 @ 08:00 AM EDT

Oracle filed its case management statement last Friday specifying the claims it would assert. (Oracle v. Google - Oracle Specifies Claims It Will Assert) In its statement Oracle identified 26 claims it would be asserting, although it also suggested that there were only 15 unique sets of claims because of what Oracle described as "claim mirroring." Monday Google responded with its own case management statement identifying the grounds for invalidity it would assert against each of Oracle's asserted claims. Not unexpectedly Google complains that 26 claims (they are not conceding that it is really only 15) is way too many for a three-week trial:
With Oracle continuing to assert 26 separate patent claims across six unrelated patents, it remains unclear which claims will actually be tried in the jury trial scheduled to start on October 31. What is clear: it will be impossible to try 26 separate claims in the amount of time the Court has allotted for the trial.


Attempting to comply with the court's instructions, Google does limit its invalidity defenses to just three assertions per claim, with one exception where they assert four. And, although Google complains about Oracle's asserting 26 claims, Google's invalidity contentions do not vary with the "mirrored claims." Consequently, although either 15 or 26 claims may still be too much for trial, the number does not appear to work a particular hardship on Google.

It is worth noting that the USPTO has already confirmed the four claims of U.S. Patent No. 6,061,520 asserted by Oracle with respect to the same prior art Google asserts here, so it is not clear how Google will overcome that finding at trial.

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

Docket

475 – Filed and Effective: 10//03/2011
ORDER
Document Text: CASE MANAGEMENT STATEMENT Google's Response to the Court's Order Requesting Case Management Statements filed by Google Inc.. (Van Nest, Robert) (Filed on 10/3/2011) (Entered: 10/03/2011)


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

Documents

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

GOOGLE’S RESPONSE TO THE COURT’S ORDER REQUESTING CASE
MANAGEMENT STATEMENTS

Judge: Hon. William Alsup

Date Comp. Filed: October 27, 2010

Trial Date: October 31, 2011

Pursuant to the Court’s September 26, 2011 Order Requesting Case Management Statements (Dkt. 458) (“Order”), Defendant Google, Inc. (“Google”) responds as follows:

I. Factual Background

On September 29, 2011, Plaintiff Oracle America, Inc. (“Oracle”) submitted a case management statement in which it selected the following 26 separate patent claims to be asserted at trial:

  • U.S. Patent No. RE38,104: Claims 11, 27, 29, 39, 40, 41.
  • U.S. Patent No. 6,061,520: Claims 1, 8, 12, 20.
  • U.S. Patent No. 5,966,702: Claims 1, 6, 7, 12, 13, 15, 16.
  • U.S. Patent No. 6,910,205: Claims 1, 2.
  • U.S. Patent No. 7,426,720: Claims 1, 6, 10, 19, 21, 22.
  • U.S. Patent No. 6,192,476: Claim 14.
Per the Order, any claims other than those listed above “will be deemed foregone as to all accused matters.” (Dkt. No. 458, at 1.) In response to the Order, and to Oracle’s selection of the above-listed claims, Google provides the following statements regarding concession of alleged infringement and, claim by claim, any and all invalidity defenses that Google will assert at trial.

II. Statement Regarding Concession of Alleged Infringement

Google does not concede to infringing any of the above-asserted claims.

III. Selection of Invalidity Defenses

With Oracle continuing to assert 26 separate patent claims across six unrelated patents, it remains unclear which claims will actually be tried in the jury trial scheduled to start on October 31. What is clear: it will be impossible to try 26 separate claims in the amount of time the Court has allotted for the trial. In light of the large number of remaining patents and claims,however, it is difficult for Google to narrow the number of prior art defenses it may assert at trial. Nevertheless, Google has in good faith narrowed the number of prior art defenses it will pursue so that, for all but one patent, there are three or fewer prior-art-based invalidity defenses per asserted claim (and in the case of the one exception, there are only four).

Specifically, Google may assert the following invalidity defenses at trial.

  • U.S. Patent No. RE38,104
    • Claim 11:
      • Invalid in view of D. Gries, “Compiler Construction for Digital Computers,” John Wiley & Sons, Inc. (1971).
      • Invalid in view of U.S. Pat. No. 4,571,678 to Chaitin, issued Feb. 18, 1986.
      • Invalid in view of J.W. Davidson, “Cint: A RISC Interpreter for the C Programming Language,” SIGPLAN ‘87 Papers of the Symposium on Interpreters and Interpretive Techniques (1987), and further in view of AT&T, System V Application Binary Interface Motorola 68000 Processor Family Supplement, Prentice Hall Int’l (1990).

    • Claim 27:
      • Invalid in view of D. Gries, “Compiler Construction for Digital Computers,” John Wiley & Sons, Inc. (1971).
      • Invalid in view of J.W. Davidson, “Cint: A RISC Interpreter for the C Programming Language,” SIGPLAN ‘87 Papers of the Symposium on Interpreters and Interpretive Techniques (1987), and further in view of AT&T, System V Application Binary Interface Motorola 68000 Processor Family Supplement, Prentice Hall Int’l (1990).

    • Claim 29:
      • Invalid in view of D. Gries, “Compiler Construction for Digital Computers,” John Wiley & Sons, Inc. (1971).
      • Invalid in view of J.W. Davidson, “Cint: A RISC Interpreter for the C Programming Language,” SIGPLAN ‘87 Papers of the Symposium on Interpreters and Interpretive Techniques (1987), and further in view of AT&T, System V Application Binary Interface Motorola 68000 Processor Family Supplement, Prentice Hall Int’l (1990).

    • Claim 39:
      • Invalid in view of D. Gries, “Compiler Construction for Digital Computers,” John Wiley & Sons, Inc. (1971).
      • Invalid in view of J.W. Davidson, “Cint: A RISC Interpreter for the C Programming Language,” SIGPLAN ‘87 Papers of the Symposium on Interpreters and Interpretive Techniques (1987), and further in view of AT&T, System V Application Binary Interface Motorola 68000 Processor Family Supplement, Prentice Hall Int’l (1990).

    • Claim 40:
      • Invalid in view of D. Gries, “Compiler Construction for Digital Computers,” John Wiley & Sons, Inc. (1971).
      • Invalid in view of J.W. Davidson, “Cint: A RISC Interpreter for the C Programming Language,” SIGPLAN ‘87 Papers of the Symposium on Interpreters and Interpretive Techniques (1987), and further in view of AT&T, System V Application Binary Interface Motorola 68000 Processor Family Supplement, Prentice Hall Int’l (1990).

    • Claim 41:
      • Invalid in view of D. Gries, “Compiler Construction for Digital Computers,” John Wiley & Sons, Inc. (1971).
      • Invalid in view of J.W. Davidson, “Cint: A RISC Interpreter for the C Programming Language,” SIGPLAN ‘87 Papers of the Symposium on Interpreters and Interpretive Techniques (1987), and further in view of AT&T, System V Application Binary Interface Motorola 68000 Processor Family Supplement, Prentice Hall Int’l (1990).

    • All asserted claims: Invalid for failure to comply with 35 U.S.C. § 251 (reissue statute).

  • U.S. Patent No. 6,061,520
    • Claim 1:
      • Invalid in view of B.T. Lewis et al., “Clarity MCode: A Retargetable Intermediate Representation for Compilation,” ACM, IR ’95, 1/95, San Francisco, California, USA (1995).
      • Invalid in view of M. Cierniak et al., “Briki: an Optimizing Java Compiler,” IEEE Compcon ’97 Proceedings (1997).
      • Invalid in view of Cierniak, and further in view of Lindholm, Java virtual machine Specification, Release 1.0 Beta DRAFT (1995).

    • Claim 8:
      • Invalid in view of B.T. Lewis et al., “Clarity MCode: A Retargetable Intermediate Representation for Compilation,” ACM, IR ’95, 1/95, San Francisco, California, USA (1995).
      • Invalid in view of M. Cierniak et al., “Briki: an Optimizing Java Compiler,” IEEE Compcon ’97 Proceedings (1997).

    • Claim 12:
      • Invalid in view of B.T. Lewis et al., “Clarity MCode: A Retargetable Intermediate Representation for Compilation,” ACM,

        IR ’95, 1/95, San Francisco, California, USA (1995).
      • Invalid in view of M. Cierniak et al., “Briki: an Optimizing Java Compiler,” IEEE Compcon ’97 Proceedings (1997).
      • Invalid in view of Cierniak, and further in view of Lindholm, Java virtual machine Specification, Release 1.0 Beta DRAFT (1995).

    • Claim 20:
      • Invalid in view of B.T. Lewis et al., “Clarity MCode: A Retargetable Intermediate Representation for Compilation,” ACM, IR ’95, 1/95, San Francisco, California, USA (1995).
      • Invalid in view of M. Cierniak et al., “Briki: an Optimizing Java Compiler,” IEEE Compcon ’97 Proceedings (1997).
      • Invalid under 35 U.S.C. § 101 (“computer-readable medium” - carrier wave not patentable)

  • U.S. Patent No. 5,966,702
    • Claim 1:
      • Invalid in view of U.S. Pat. No. 5,815,718 to Tock, et al., filed May 30, 1996.
      • Invalid in view of U.S. Pat. No. 5,613,120 to Palay, filed Oct. 20, 1994.

    • Claim 6:
      • Invalid in view of U.S. Pat. No. 5,815,718 to Tock, et al., filed May 30, 1996.
      • Invalid in view of U.S. Pat. No. 5,613,120 to Palay, filed Oct. 20, 1994.

    • Claim 7:
      • Invalid in view of U.S. Pat. No. 5,815,718 to Tock, et al., filed May 30, 1996.
      • Invalid in view of U.S. Pat. No. 5,613,120 to Palay, filed Oct. 20, 1994.

    • Claim 12:
      • Invalid in view of U.S. Pat. No. 5,815,718 to Tock, et al., filed May 30, 1996.
      • Invalid in view of U.S. Pat. No. 5,613,120 to Palay, filed Oct. 20, 1994.

    • Claim 13:
      • Invalid in view of U.S. Pat. No. 5,815,718 to Tock, et al., filed May 30, 1996.
      • Invalid in view of U.S. Pat. No. 5,613,120 to Palay, filed Oct. 20, 1994.

    • Claim 15:
      • Invalid in view of U.S. Pat. No. 5,815,718 to Tock, et al., filed May 30, 1996.
      • Invalid in view of U.S. Pat. No. 5,613,120 to Palay, filed Oct. 20, 1994.

    • Claim 16:
      • Invalid in view of U.S. Pat. No. 5,815,718 to Tock, et al., filed May 30, 1996.
      • Invalid in view of U.S. Pat. No. 5,613,120 to Palay, filed Oct. 20, 1994.

  • U.S. Patent No. 6,910,205
    • Claim 1:
      • Invalid in view of P. Tarau et al., “The Power of Partial Translation: An Experiment with the CIfication of Binary Prolog,” ACM Symposium on Applied Computing (1995).
      • Invalid in view of P. Magnusson, “Partial Translation,” Swedish Institute of Computer Science Technical Report (T93:5) (Oct. 1993).
      • Invalid in view of U.S. Pat. No. 5,842,017, issued on 10/24/1998 to Hookway et al.
      • Invalid in view of B.T. Lewis et al., “Clarity MCode: A Retargetable Intermediate Representation for Compilation,” ACM, IR ’95, 1/95, San Francisco, California, USA (1995), and further in view of Magnusson.

    • Claim 2:
      • Invalid in view of P. Tarau et al., “The Power of Partial Translation: An Experiment with the CIfication of Binary Prolog,” ACM Symposium on Applied Computing (1995).
      • Invalid in view of P. Magnusson, “Partial Translation,” Swedish Institute of Computer Science Technical Report (T93:5) (Oct. 1993).
      • Invalid in view of U.S. Pat. No. 5,842,017, issued on 10/24/1998 to Hookway et al.
      • Invalid in view of B.T. Lewis et al., “Clarity MCode: A Retargetable Intermediate Representation for Compilation,” ACM, IR ’95, 1/95, San Francisco, California, USA (1995), and further in view of Magnusson.

  • U.S. Patent No. 7,426,720
    • Claim 1:
      • Invalid in view of U.S. Pat. No. 6,823,509 to Webb et al., filed Dec. 20, 2000, further in view of U.S. Pat. Pub. No. 2003/0088604 to Kuck et al., filed Nov. 7, 2002, and further in view of M. J. Bach, The Design of the Unix Operating System, Bell Telephone Labs., Inc. (1986).
      • Invalid in view of U.S. Pat. No. 6,405,367 to Bryant et al., filed June 5, 1998, and further in view of U.S. Patent No. 7,313,793 to Traut et al., filed July 11, 2002.

    • Claim 6:
      • Invalid in view of U.S. Pat. No. 6,823,509 to Webb et al., filed Dec. 20, 2000, further in view of U.S. Pat. Pub. No. 2003/0088604 to Kuck et al., filed Nov. 7, 2002, and further in view of M. J. Bach, The Design of the Unix Operating System, Bell Telephone Labs., Inc. (1986).
      • Invalid in view of U.S. Pat. No. 6,405,367 to Bryant et al., filed June 5, 1998, and further in view of U.S. Patent No. 7,313,793 to Traut et al., filed July 11, 2002.

    • Claim 10:
      • Invalid in view of U.S. Pat. No. 6,823,509 to Webb et al., filed Dec. 20, 2000, further in view of U.S. Pat. Pub. No. 2003/0088604 to Kuck et al., filed Nov. 7, 2002, and further in view of M. J. Bach, The Design of the Unix Operating System, Bell Telephone Labs., Inc. (1986).
      • Invalid in view of U.S. Pat. No. 6,405,367 to Bryant et al., filed June 5, 1998, and further in view of U.S. Patent No. 7,313,793 to Traut et al., filed July 11, 2002.

    • Claim 19:
      • Invalid in view of U.S. Pat. No. 6,823,509 to Webb et al., filed Dec. 20, 2000, further in view of U.S. Pat. Pub. No. 2003/0088604 to Kuck et al., filed Nov. 7, 2002, and further in view of M. J. Bach, The Design of the Unix Operating System, Bell Telephone Labs., Inc. (1986).
      • Invalid in view of U.S. Pat. No. 6,405,367 to Bryant et al., filed June 5, 1998, and further in view of U.S. Patent No. 7,313,793 to Traut et al., filed July 11, 2002.
      • Invalid under 35 U.S.C. §§ 101/102 (printed matter).

    • Claim 21:
      • Invalid in view of U.S. Pat. No. 6,823,509 to Webb et al., filed Dec. 20, 2000, further in view of U.S. Pat. Pub. No. 2003/0088604 to Kuck et al., filed Nov. 7, 2002, and further in view of M. J. Bach, The Design of the Unix Operating System, Bell Telephone Labs., Inc. (1986).
      • Invalid in view of U.S. Pat. No. 6,405,367 to Bryant et al., filed June 5, 1998, and further in view of U.S. Patent No. 7,313,793 to Traut et al., filed July 11, 2002.

    • Claim 22:
      • Invalid in view of U.S. Pat. No. 6,823,509 to Webb et al., filed Dec. 20, 2000, further in view of U.S. Pat. Pub. No. 2003/0088604 to Kuck et al., filed Nov. 7, 2002, and further in view of M. J. Bach, The Design of the Unix Operating System, Bell Telephone Labs., Inc. (1986).
      • Invalid in view of U.S. Pat. No. 6,405,367 to Bryant et al., filed June 5, 1998, and further in view of U.S. Patent No. 7,313,793 to Traut et al., filed July 11, 2002.

  • U.S. Patent No. 6,192,476
    • Claim 14:
      • Invalid in view of U.S. Pat. No. 5,412,717 to Fischer, filed May 15, 1992.
      • Invalid under 35 U.S.C. § 101 (“computer-readable medium” - carrier wave not patentable).
      • Invalid under 35 U.S.C. §§ 101/102 (printed matter).

Google reserves the right to narrow its list of invalidity defenses if and when Oracle further reduces the number of asserted claims to a manageable number for trial.

DATED: October 3, 2011

KEKER & VAN NEST, LLP

By: /s/ Robert A. Van Nest

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

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

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

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

Attorneys for Defendant
GOOGLE INC.



  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 )