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Oracle v. Google - Trial Likely Delayed
Thursday, October 06 2011 @ 07:04 AM EDT

The trial of Oracle's patent infringement claims against Google will likely not go forward on the original schedule. 483 [PDF] As Judge Alsup has indicated for some time, there is a large criminal trial scheduled to commence on October 17. That trial now seems likely, meaning that it is also quite likely that the Oracle case will not be able to move forward on October 31 as scheduled.

Other issues could further delay (or even stay) the trial. One is the number of infringement contentions Oracle has set forth. [Stay or Not to Stay, That Is the Question - Redux] Then there is the time required by the damages expert, Dr. James R. Kearl, to complete his work 484 [PDF], a task made more difficult by the continued moving target of infringement contentions and damage claims.

In other filings Oracle is opposing [482, PDF] Google's second motion to strike portions of Professor Mitchell's Patent Report. With respect to Google's Critique's D and E, Oracle makes a compelling argument that Prof. Mitchell is not introducing new infringement contentions but merely explaining the contentions already made. With respect to Critique's F and G, Oracle argues (a) that Google did not obtain proper permission to file a motion with respect to Prof. Mitchell's Reply Report (only the original report), and (b) even if permitted, the Google critiques are off target, again suggesting new infringement contentions where none exist.

In the last filing of the day, Google opposes [PDF] Oracle’s précis letter [PDF; text] for leave to file a motion for reconsideration or supplement its infringement contentions with respect to the list of infringing devices. Google argues there has been no change in the facts or law that would permit such a reconsideration, and, further, Oracle has not shown good cause for amending its infringement contentions. It is interesting looking back at the Oracle précis letter that Oracle claimed a statement made in court by Mr. Weingaertner, counsel for Google, is evidence that Google accepted all Android devices as coming within the Oracle infringement contentions:

MR. WEINGAERTNER: In the months that have gone by since filing this lawsuit, Android devices, which are accused, have become the fastest-selling smartphones in the world. Oracle’s point here is that that is somehow due to Java technology.
One has to wonder what the limiting phrase "which are accused" means if it is not a reference to the specific devices Oracle identified as infringing in its original infringement contentions. Don't look for Judge Alsup to change his mind on this issue.

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

Docket

482 – Filed and Effective: 10/04/2011
RESPONSE
Document Text: RESPONSE (re 473 Second MOTION to Strike Portions of the Mitchell Patent Report ) filed byOracle America, Inc.. (Attachments: # 1 Affidavit Peters Declaration, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C)(Jacobs, Michael) (Filed on 10/4/2011) (Entered: 10/04/2011)

483 – Filed and Effective: 10/05/2011
NOTICE
Document Text: NOTICE RE FINAL PRETRIAL CONFERENCE. Signed by Judge Alsup on October 5, 2011. (whalc1, COURT STAFF) (Filed on 10/5/2011) (Entered: 10/05/2011)

484 – Filed and Effective: 10/05/2011
ORDER
Document Text: ORDER REGARDING ATTENDANCE AT FINAL PRETRIAL CONFERENCE. Signed by Judge Alsup on October 5, 2011. (whalc1, COURT STAFF) (Filed on 10/5/2011) (Entered: 10/05/2011)

485 – Filed and Effective: 10/05/2011
Letter
Document Text: Letter from Scott T. Weingaertner in Opposition to Oracle's Precis letter for leave to file a motion for reconsideration or supplement its infringement contentions. (Sabnis, Cheryl) (Filed on 10/5/2011) (Entered: 10/05/2011)


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

Documents

482

MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[email]
MARC DAVID PETERS (Bar No. 211725)
[email]
DANIEL P. MUINO (Bar No. 209624)
[email]
[address, phone, fax]

BOIES, SCHILLER & FLEXNER LLP
DAVID BOIES (Admitted Pro Hac Vice)
[email]
[address, phone fax]
STEVEN C. HOLTZMAN (Bar No. 144177)
[email]
[address, phone fax]

ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[email]
DEBORAH K. MILLER (Bar No. 95527)
[email]
MATTHEW M. SARBORARIA (Bar No. 211600)
[email]
[address, phone, fax]

Attorneys for Plaintiff
ORACLE AMERICA, INC.

________________

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

__________________

ORACLE AMERICA, INC.

Plaintiff,

v.

GOOGLE INC.

Defendant.

_______________

Case No. CV 10-03561 WHA

ORACLE AMERICA, INC.’S
OPPOSITION TO GOOGLE INC.’S
SECOND MOTION TO STRIKE
PORTIONS OF THE MITCHELL
PATENT REPORT

Date: October 13, 2011
Time: 8:00 a.m.
Dept.: Courtroom 8, 19th Floor
Judge: Honorable William H. Alsup

I. INTRODUCTION

Oracle opposes Google’s second motion to strike portions of the Mitchell Opening Patent Infringement Report (“Report”) and the Mitchell Reply Patent Infringement Report (“Reply Report”).

II. ARGUMENT

In the Court’s September 26, 2011 Order, the Court held: “Rule 3-1(c) required identification of the precise element of any accused product that was alleged to practice a particular claim limitation; it did not require identification of every evidentiary item of proof showing that the accused element did in fact practice the limitation. Google confuses this distinction.” (ECF No. 464 at 4.) In Google’s four new critiques, Google continues to confuse the distinction. As shown below, the precise element of Android that Prof. Mitchell identifies as practicing a given claim limitation is the same in Oracle’s ICs.

A. Response to Critique D: The Report on Infringement of the ’720 Patent Is Supported by the ICs

Oracle’s ’720 patent infringement theory focuses on a function present in Android called do_fork(). Page 19 of Oracle’s claim chart for the ’720 patent identifies Android’s do_fork() function as practicing the “copy-on-write process cloning mechanism” element of Claim 1 and quotes from the relevant source code that implements it (fork.c). (Declaration of Brian C. Banner (“Banner Decl.”) Ex. C, Oracle ICs Ex. G at 19.) Page 38 of Oracle’s claim chart likewise identifies Android’s do_fork() function as practicing the “process cloning mechanism” element of Claim 6, and includes the same source code quote. (Id. at 38.) Oracle ICs thus alleged that the do_fork() function in Android satisfies both the “copy-on-write process cloning mechanism” of Claim 1 and the “process cloning mechanism” of Claim 6.

Prof. Mitchell presents the same do_fork() infringement theory in his Report. Prof. Mitchell’s analysis of how Android includes the copy-on-write process cloning mechanism of Claim 1 concludes with an identification of do_fork():

1

The file linux-2.6kernelfork.c provides the do_fork() code, that calls the copy_process() module, to perform the copy-on-write process cloning “to instantiate the child runtime system process by copying references to the memory space of the master runtime system process into a separate memory space for the child runtime system process, and to defer copying of the memory space of the master runtime system process until the child runtime system process needs to modify the referenced memory space of the master runtime system process.”
(Declaration of Marc Peters (“Peters Decl.”) Ex. A, Report ¶ 614 (emphasis added).) Similarly, Prof. Mitchell’s infringement theory for Claim 6 rests on do_fork(). His analysis of how Android includes the process cloning mechanism of Claim 6 concludes with an identification of do_fork():

The file linux-2.6kernelfork.c provides the fork code do_fork() to perform the process cloning “to instantiate the child runtime system process by copying the memory space of the master runtime system process into a separate memory space for the child runtime system process.” The unset CLONE_VM flag from the clone() system call can be passed as an argument for parameter clone_flags to do_fork(), which passes it to copy_process(), which performs the process cloning. As stated previously, because clone() does not set the CLONE_VM flag, do_fork() provides the “process cloning mechanism” of claim 6 “to instantiate the child runtime system process by copying the memory space of the master runtime system process into a separate memory space for the child runtime system process.”
(Banner Decl. Ex. A, Report ¶ 627 (emphasis added).) This is one of the paragraphs that Google moves to strike. But Prof. Mitchell’s do_fork() infringement theory matches the one in the ICs exactly. In addition, his discussion of the clone_flags parameter of the do_fork() function, which Google also seeks to strike, is not new either. Oracle identified the clone_flags parameter in the ICs for both Claims 1 and 6. (Banner Decl. Ex. C, Oracle ICs Ex. G at 19, 38.)

Google’s complaint about Prof. Mitchell’s references to the fork() and other system calls mischaracterizes Prof. Mitchell’s reliance on them. He invoked the fork() system call, for example, to explain how Android’s Zygote functionality uses fork() when it receives a command to fork a new VM instance, and this in turn results in a call to do_fork(). (See Peters Decl. Ex. A, Report ¶¶ 598-614.) Similarly, he explained how the do_fork() routine provides the different types of process cloning in Claims 1 and 6 by referring to a Linux textbook, and explained how the fork(), clone(), and vfork() system calls invoke do_fork() with different clone_flags settings, including CLONE_VM (which is unset for both fork() and clone()). (See id. at ¶ 606, pages 302- 305.) But this is not a new infringement theory—it is rather further flesh on the bones of the

2

original do_fork() theory. To borrow the Court’s metaphor, the discussion of the fork(), clone(), and vfork() system calls is just to explain in which toolboxes the accused do_fork() hammer may be found. Prof. Mitchell is permitted to explain in his Report the infringement theories disclosed in Oracle’s ICs. Sicurelli v. Jeneric/Pentron Inc., No. 03-CV-4934 (SLT) (KAM), 2005 U.S. Dist. LEXIS 42233, at *33 (E.D.N.Y. May 3, 2005) (“[E]xpert reports are expected to provide additional information regarding the specific factual bases for plaintiffs’ infringement contentions.”).

The ICs gave Google sufficient notice of Oracle’s do_fork() infringement theory. The Report adheres to that theory and provides an explanation of the theory, with citations to appropriate evidence. The Court should reject Google’s Critique D.

B. Response to Critique E: There Is No New “mBS Mobile” Infringement Theory for the ’476 Patent

Oracle’s ICs allege that Android’s implementation of the Java Security Framework, which includes such Java-API-specified classes as AccessController, ProtectionDomain, and SecurityManager, infringes the ’476 patent. (In fact, these are some of the Java APIs that Google copied from Oracle.) Google moves to strike two identical paragraphs (70 and 77) of the Report that discuss an Android application called “mBS Mobile.” But neither the ICs nor Prof. Mitchell accuse the “mBS Mobile” Android application of infringement. Instead, Prof. Mitchell discusses the mBS Mobile application to describe the benefits that application developers receive from Google having included the infringing code within Android. The paragraphs that Google moves to strike begin: “Some of the ways that application developers could benefit from the java.security framework are illustrated by descriptions of the mBS Mobile application.” (Banner Decl. Ex. A, Report ¶¶ 70, 77.) These paragraphs, by their very terms, do not disclose an infringement theory; they describe a “benefit” of infringement.

The Report discusses the mBS Mobile application in connection with the benefit offered by Android’s infringing functionality to rebut Google’s contentions on two points. First, the mBS Mobile evidence establishes that the infringing code that Google made was used, which rebuts Google’s contention that the code was never used. Second, it establishes that SecurityManager

3

was enabled in Android—in fact, it was functional in at least all versions of Android through version 2.2. The Court held that Patent Local Rule 3-1(c) does not require identification of every evidentiary item of proof of infringement. (ECF No. 464 at 4.) Prof. Mitchell’s discussion of mBS Mobile falls into this category. The Court should reject Google’s Critique E.

C. Response to Critique F: The Reply Report on Infringement of Claim 14 of the ’476 Patent Is Supported by the ICs

Oracle objects that Google did not obtain leave to move to strike any part of the Reply Report, as this is beyond the scope of its August 30, 2011 précis and the Court’s September 26, 2011 Order, which concerned only the Report. For this reason alone, the Court should deny Google’s Critique F.

Oracle’s ICs identify Android’s AccessController class as containing instructions that perform Claim 14’s “determining whether said action is authorized based on an association between permissions and a plurality of routines in a calling hierarchy associated with said principal.” (Banner Decl. Ex. D, Oracle ICs Ex. E at 22-23.) The ICs disclose that AccessController does the determining by calling the checkPermission method of Android’s AccessControlContext class. (Id. at 23-24.) The ICs quote from Android’s AccessController source code to specifically identify that its checkPermission method is declared to be a “public” and “static” method. (Id. at 23.)

Google’s complaint is that Prof. Mitchell’s Reply Report addresses infringement when SecurityManager is disabled. But there is nothing in the infringement theory in Oracle’s ICs that requires Android’s SecurityManager class for Android to infringe. It is true that use of Android’s SecurityManager results in infringement, but that is because SecurityManager calls AccessController’s checkPermission method. This fact was disclosed in the ICs (id. at 21) and was discussed in Prof. Mitchell’s Report. (Banner Decl. Ex. A, Report ¶ 736.) But there is nothing in either Oracle’s ICs or the Report that limits the infringement theory to SecurityManager alone.

The paragraph of Prof. Mitchell’s Reply Report that Google moves to strike rests squarely on the identification of AccessController in Oracle’s ICs. Here it is in full:

4

Even if the SecurityManager is disabled, the Java security framework may still be used. For example, “the static methods in AccessController are always available to be called.” (L. Gong et al., Inside Java 2 Platform Security 109 (2nd Ed. 2003).) Even if no SecurityManager is instantiated, Android code includes AccessController.java and the static methods associated with the class may be called. Therefore, the functionality of the Java security framework is accessible via the AccessController.
(Banner Decl. Ex. B, Reply Report ¶ 115.) In this paragraph, Prof. Mitchell explains, with reference to a textbook written by the ’476 inventor, that Android includes AccessController and its static methods whether or not a SecurityManager object was ever created (instantiated). This is a reference to the accused AccessController and its static method checkPermission that was identified on page 23 of Oracle’s ICs. It is not a new infringement theory because it is not pointing to any new accused functionality; it is merely pointing out that infringement occurs even if SecurityManager is disabled.

Google’s Critique F is thus directly analogous to the critique regarding DvmDex.h that the Court rejected in Google’s first motion, and should be rejected for the same reason. (ECF No. 464 at 4 (“[T]he Mitchell report identified specific functions located within that file as satisfying the storing limitation. Those functions also were identified in the relevant portion[s] of Oracle’s infringement contentions.”).) DataTreasury Corp. v. Wells Fargo & Co., No. 2:06-CV-72 DF, 2010 U.S. Dist. LEXIS 110658, at *23 (E.D. Tex. Sept. 13, 2010) (denying defendant’s motion to strike portions of plaintiff’s infringement expert report because report did “not substantially deviate from [the] infringement contentions”). The Court should reject Google’s Critique F.

D. Response to Critique G: The Reply Report on Infringement of the ’520 Patent Is Supported by the ICs

Oracle again objects that Google did not obtain leave to move to strike any part of the Reply Report, as this is beyond the scope of its August 30, 2011 précis and the Court’s September 26, 2011 Order, which concerned only the Report. For this reason alone, the Court should deny Google’s Critique G.

Oracle’s ICs identify the Simulator class (and, in particular, its “simulate” methods) as performing the step of “simulating execution of the byte codes of the clinit method against a

5

memory without executing the byte codes to identify the static initialization of the array by the preloader” that is recited in Claim 1 of the ’520 patent. (Banner Decl. Ex. E, Oracle ICs Ex. F at 11-15.) Google described Simulator as the “Class which knows how to simulate the effects of executing bytecode.” (Id. at 11.) As the ICs disclose, Simulator employs several helper methods to perform its simulating functions, including the parseInstruction and parseNewarray methods. (Id. at 13, 14, 15) For the “storing . . . an instruction” step of Claim 1 of the ’520 patent, Oracle’s ICs identify the “writeDex” method of the Main.java file as performing the step. (Id. at 21-22.)

The quotation in Google’s brief of Prof. Mitchell’s in paragraph 92 of the Reply Report is incomplete. (Mot. at 5.) The full paragraph that Google moves to excise portions of is:

parseNewarray is part of the functionality and operation of Simulator.java, the “class which knows how to simulate the effects of executing bytecode,” and which Prof. Parr concedes simulates bytecodes. It is not uncommon that functionality be carried out or span multiple classes of files. The dx tool was designed to receive class files that had been created by a Java compiler, and parseNewarray interprets the array initialization bytecodes that result from compilation to determine the static values, which are then used to create (and store) one or more instructions requesting the static initialization of the array. The claims do not require the simulating step to succeed in identification of the static initialization of the array in all cases, which is why Prof. Parr’s example in his Appendix A, Section II is not evidence of noninfringement. Actually, it is evidence of infringement, because the operation of the Simulator on his modified T.class file produced instructions requesting the static initialization of the array, which were stored in the output .dex file. I note that those instructions were fewer than the original number of bytecodes from the .class file, which is the purpose of the ’520 patent.
(Banner Decl. Ex. B, Reply Report ¶ 92 (emphasis added).) Note that Prof. Mitchell did not, as argued by Google, identify the number of instructions stored in the .dex file as the reason for infringement. By use of an ellipsis to merge two different sentences, Google in its brief removed the text in which Prof. Mitchell identified “the operation of the Simulator” as his reason for finding infringement.

There is no infringement contention in paragraph 92 of the Reply Report that is not in Oracle’s ICs. The analysis rests on Simulator, which was disclosed in the ICs. The purpose of this paragraph is to respond to an argument made by Google’s noninfringement expert Prof. Parr, who created a class file (the “modified T.class file” referred to above) by manually altering a real class file with an editing tool and then processing the altered file with the Android dx tool. (It is worth noting here that the non-real-world example created by Prof. Parr was not disclosed in

6

Google’s noninfringement interrogatories. (See Peters Decl. Ex. B.) When Prof. Mitchell opines that Prof. Parr’s example is evidence of infringement rather than noninfringement, it is not a new infringement theory. The “modified T.class” file is not one that is actually produced when compiling Java source code using the real-world Android SDK, it is something Google’s expert created. (See Peters Decl. Ex. C (“After compiling this class using the standard Java compiler (i.e., into a file named ‘T.class’), I was able to use a library called ASM to alter the bytecode within the clinit method of the T.class file.”).) Whether or not processing it satisfies one of the ‘520 patent claim limitations is not something that needed to be disclosed in Oracle’s ICs.

It would be unfair to permit Google’s expert to hypothesize a factual scenario different from real facts and opine that this scenario reveals something about the operation of the Android SDK that is evidence of noninfringement, and yet forbid Oracle’s expert from responding to that opinion. All that Prof. Mitchell has done in paragraph 92 of the Reply Report is apply the Simulator-based infringement theory that was disclosed in the ICs to the new, hypothetical factual scenario created by Prof. Parr. Because that is permissible for experts to do, Google’s attempt to take a scalpel to paragraph 92 must fail.

Another reason that the Court should reject Google’s Critique G is because it is directly contrary to the position Google took in its noninfringement interrogatory response. On August 1, 2011, Google argued that Android does not infringe any asserted claim because “it would not employ a method that creates or stores a single instruction to perform each of the respective accused functions in that there are multiple instructions identified in Exhibit F [Oracle’s ‘520 infringement chart] . . . .” (Peters Decl. Ex. B at 27 (emphasis added).) As even Google’s own interrogatory response acknowledged, the ICs support a more-than-one-instruction infringement theory.

7

III. CONCLUSION

The Report and the Reply Report are fully supported by the ICs. Prof. Mitchell has adhered to the infringement theories that Oracle disclosed. For the foregoing reasons, Oracle asks this Court to deny Google’s second motion to strike.

Dated: October 4, 2011

MICHAEL A. JACOBS
MARC DAVID PETERS
DANIEL P. MUINO
MORRISON & FOERSTER LLP

By: /s/ Michael A. Jacobs

Attorneys for Plaintiff
ORACLE AMERICA, INC.

8


483

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA

ORACLE AMERICA, INC.,

Plaintiff,

v.

GOOGLE INC.,

Defendant.

No. C 10-03561 WHA

NOTICE RE FINAL
PRETRIAL CONFERENCE

This is a notice to give counsel an update on the schedule. As counsel know, the second wave of defendants in the large criminal case is scheduled for trial on October 17. At present, it appears that the trial will be necessary. This will mean that the trial in the instant case will likely be postponed. In hopes that the October 31 trial in the instant case can still go forward, even though that now seems unlikely, the October 31 trial date will not yet be vacated. The final pretrial conference, however, is CONTINUED from October 17 to 2:00 P.M. ON OCTOBER 24, 2011. If the criminal trial does go forward, then it is possible that the date for the final pretrial conference will be adjusted yet again. The schedule for pretrial filings remains unchanged.

Dated: October 5, 2011.

/s/William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE


484

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA

ORACLE AMERICA, INC.,

Plaintiff,

v.

GOOGLE INC.,

Defendant.

No. C 10-03561 WHA

ORDER REGARDING
ATTENDANCE AT FINAL
PRETRIAL CONFERENCE

Attorney John Cooper, who was appointed to represent the Rule 706 damages expert, should plan to attend the October 24 final pretrial conference. Attorney Cooper shall please be prepared to state the minimum amount of time that Dr. James R. Kearl will need to complete his work on damages. Dr. Kearl himself may attend the final pretrial conference, but his presence is not required.

IT IS SO ORDERED.

Dated: October 5, 2011.

/s/William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE


485

[King & Spaulding letterhead]

October 5, 2011

The Honorable William Alsup
U.S. District Court, Northern District of California
450 Golden Gate Avenue
San Francisco, California 94102

Re: Oracle America, Inc. v. Google Inc., Civil Action No. 3:10-cv-03561-WHA

Dear Judge Alsup:

Google opposes Oracle’s Précis letter for leave to file a motion for reconsideration or supplement its infringement contentions. (“Précis,” Dkt. No. 479.) The Civil Local Rules do not permit Oracle to file a motion for reconsideration under these circumstances. Oracle’s request for leave to supplement its contentions is likewise untimely and inappropriate – nothing could be more prejudicial to Google than allowing Oracle to make wholesale revisions to its infringement case on the eve of trial. For the reasons explained below, Oracle’s requests should be denied.

I. Oracle Provides No Legitimate Basis for its Request for Reconsideration

First, Oracle requests leave to file a motion for reconsideration pursuant to Civil L.R. 7-9(b)(2), but misapplies that rule, which only permits such a motion based on “[t]he emergence of new material facts or a change of law occurring after the time of such order.” (emphasis added). But Oracle concedes that the Patent Local Rules, which Oracle points to for an alleged change in the law, have not been changed since December 2009 – months before Oracle even filed suit. And Rules 3-1(b) and (d) – the specific rules pointed to by Oracle – have not changed since March 2008. Oracle has not identified any change in law or any new material facts after the Court’s Order and therefore has no basis to file a motion for reconsideration under the Civil Local Rules. See Newman v. McGrath, No. 06-cv-05931, 2007 WL 1848193 at *2 (N.D. Cal. June 27, 2007) (“the Court will not consider arguments based on established authority that could have been made in its prior motion” (citing Civil L.R. 7-9(b)(2)).

The Honorable William Alsup
October 5, 2011
Page 2

Second, Oracle does not cite a single case to support its contention that the Patent Local Rules have a lower burden of disclosure for indirect infringement allegations. Not surprisingly, that is not the law. Google’s Motion to Strike (Dkt. No. 410 at 6) cited recent case law requiring plaintiffs to identify the specific products accused of indirect infringement. See Bender v. Advanced Micro Devices, Inc., No. 09-cv-01152, 2010 U.S. Dist. LEXIS 89957 at *12 (N.D. Cal. July 29, 2010) (requiring plaintiff to “provide adequate notice of the specific products as to which he alleges indirect infringement” (emphasis added)). No authority supports Oracle’s attempted distinction between Rules 3-1(b) and (d) either. Federal Circuit law requires evidence of direct infringement plus other elements to prove indirect infringement. See DSU Medical Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1303 (Fed. Cir. 2006) (“the patentee always has the burden to show direct infringement for each instance of indirect infringement”). Rule 3-1(d) therefore requires “an identification of any direct infringement” – as in Rule 3-1(b) – and additionally requires the plaintiff to disclose “the acts of the alleged indirect infringer that contribute to or are inducing that direct infringement.” Indeed, the January 2008 Patent Local Rules Advisory Subcommittee Report that proposed the current version of Rules 3-1(b) and (d) explains they “require[] that the patentee disclose its theories of direct and indirect infringement with its contentions” and makes no distinction between the two provisions.

II. Oracle Does Not Have a Shred of Good Cause to Amend Its Contentions

Oracle’s request to amend its contentions fails to satisfy any of the three key factors of Patent Local Rule 3-6: It is not timely, there is no good cause, and it would be prejudicial to Google. First, the request comes at the eve of trial, after the close of fact and expert discovery, so is certainly not timely. Second, Oracle does not even suggest that it has good cause here – its only excuse is that it “did not appreciate” what the Patent Local Rules required (Précis at 3).

The Honorable William Alsup
October 5, 2011
Page 3

Yet, it is clear that Oracle made a conscious decision to leave its contentions ambiguous (despite amending them multiple times) and refused numerous requests that it identify specific accused products and explain how third parties indirectly infringed the patents. Google raised this very issue early in discovery (Dkt. No. 79), and the Court warned Oracle at the April 6, 2011 hearing that “if your disclosures aren’t good enough, there won’t be a second chance. You just lose.” (Dkt. No. 110 at 11:11-12.) Nevertheless, Oracle kept silent about the full extent of the accused devices, ignored published opinions interpreting Rule 3-1, and disregarded this Court’s repeated guidance that the parties fully disclose their theories during discovery. Google “should not be required to work through expert discovery and prepare its case based on guesswork as to what is in and what is out.” (Oracle’s Opp. to Google’s Amd. Mtn. for Leave to Supp. Invalidity Contentions, Dkt. No. 240 at 10; see also id. at 3 (citing IXYS Corp. v. Advanced Power Tech., Inc., No. 02-cv-03942, 2004 U.S. Dist. LEXIS 10934, at *8 (N.D. Cal. June 16, 2004)).)

Even if good cause were to exist, the third factor of Rule 3-6 does not permit amending contentions if there is “undue prejudice to the nonmoving party.” Google has conducted its entire discovery, submitted non-infringement, invalidity and damages expert reports, and is now preparing for trial all based on the disclosures in Oracle’s infringement contentions. Nothing could be more prejudicial then allowing Oracle to amend its contentions just weeks before trial.

For the foregoing reasons, the requests in Oracle’s Précis should be denied.

Respectfully submitted,

/s/ Scott T. Weingaertner
Scott T. Weingaertner

I hereby attest that Scott T. Weingaertner concurs in the filing of this document.

/s/ Cheryl A. Sabnis /s/
Cheryl A. Sabnis



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