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Oracle v. Google - Update on the Reexaminations
Tuesday, November 22 2011 @ 09:00 AM EST

As was noted in Google's filing last Friday with respect to the proposed trial plan [PDF; Text] the reexaminations of the six asserted Oracle patents are currently running largely in Google's favor. [Note: a seventh patent, the '447 patent which remains in reexamination is no longer being asserted by Oracle.] Google argues that this should sway the court in favor of staying at least the patent infringement action until final determinations on each of these reexaminations by the U.S. Patent and Trademark Office.

The most recent action by the USPTO has been the issuance of an Action Closing Prosecution on the '720 patent. ACP Dated 11-18-2011 [PDF]. In that action the USPTO maintains its rejection of all of the contested claims of the '720 patent, including the six claims asserted in the litigation. Oracle has 30 days in which to respond to the ACP and attempt to convince the examiner that the decision is misplaced.

As we have noted, the USPTO has allowed the four claims that Oracle is asserting in the '520 patent. (Notice of Intent to Issue Ex Parte Reexamination Certificate dated 10-03-2011) Interestingly, this reissue certificate cancels two claims upon which two of the asserted dependent claims rely (dependent claim 8 relies on independent claim 6, and dependent claim 20 relies on intermediate dependent claim 18; both independent claim 6 and dependent claim 18 have been rejected). Presumably the limitations of claims 6 and 18 will be subsumed into claims 8 and 20 respectively upon reissue. It is also worth noting that all told 2 independent claims and 6 dependent claims (including claims 6 and 18) of the '520 patent will be rejected as part of the reissue.

It is worth noting that Oracle is actively contesting the rejections in the '702, '476, and '205 patents, and the USPTO has not made a final determination in any of those reexaminations. In addition, the USPTO has yet to issue a non-final action in the '104 reexamination despite the fact that it issued a determination ordering a reexamination back in March of this year.

This is the table showing the status of the claims and the reexaminations as filed jointly by the parties on July 21, 2011. (See 223 [PDF; Text]) Note that at the time of this report to the court Oracle had not yet reduced the number of claims it was asserting. In addition, at the time of this report Oracle was still asserting the '447 patent.

Patent No. (type of reexam) Reexam Filed Reexam Ordered Office Action Issued Oracle Response Due / Filed Google Response Due Asserted Claims Subject To Reexam Asserted Claims Currently Rejected Asserted Claims Currently Allowed
6,125,447 (ex parte) 2/153/236/29Due 8/29n/a All (1, 2, 10, 11, 19, 20) All (1, 2, 10, 11, 19, 20)-
6,192,476 (ex parte) 2/153/236/16Due 8/16n/a All (4, 5, 6, 13, 14, 15, 21) All (4, 5, 6, 13, 14, 15, 21)-
5,966,702 (ex parte) 2/153/236/6Due 9/6n/a All (1, 6, 7, 12, 13, 15, 16) All (1, 6, 7, 12, 13, 15, 16)-
7,426,720 (inter partes) 2/154/185/5Filed 7/58/4 All (1, 4, 6, 10, 13, 15, 19, 21, 22) All (1, 4, 6, 10, 13, 15, 19, 21, 22)-
RE38,104 (ex parte) 3/13/28pending-- All (11, 12, 15, 17, 22, 27, 29, 38, 39, 40, 41)--
6,910,205 (inter partes) 2/174/14pending-- All (1, 2, 3, 8)--
6,061,520 (ex parte) 3/13/236/23Due 8/23n/a All (1, 4, 8, 12, 14, 20)- All (1, 4, 8, 12, 14, 20)

This is what that same report looks like as of November 20, 2011 with the Oracle claims now reduced, with the '447 patent no longer asserted, and with the actions by the USPTO in the reexaminations taken into account:

Patent No. (type of reexam) Reexam Filed Reexam Ordered Office Action Issued Oracle Response Due / Filed Google Response Due Asserted Claims Subject To Reexam Asserted Claims Currently Rejected Asserted Claims Currently Allowed
6,192,476 (ex parte) 2/153/236/16Filed 9/16n/a All (14) All (14)-
5,966,702 (ex parte) 2/153/236/6Filed 9/6n/a All (1, 6, 7, 12, 13, 15, 16) All (1, 6, 7, 12, 13, 15, 16)-
7,426,720 (inter partes) 2/154/185/5Filed 7/58/4 All (1, 6, 10, 19, 21, 22) All (1, 6, 10, 19, 21, 22)-
RE38,104 (ex parte) 3/13/28pending-- All (11, 27, 29, 39, 40, 41)--
6,910,205 (inter partes) 2/174/148/19Filed 10/19- All (1, 2)All (1, 2)-
6,061,520 (ex parte) 3/13/236/23Filed 8/23n/a All (1, 8, 12, 20)None All (1, 8, 12, 20)

That is, of the 26 claims that Oracle is asserting in the litigation against Google, only four such claims have been allowed. With respect to the '520 patent, which claims have been allowed, as Google pointed out in its response to the proposed trial plan Oracle has stated a limitation on those four claims in its interview with the examiner during the reexamination:

That the term “an instruction” as used in the claims of the ’520 patent refers to exactly one instruction rather than one or more instructions (USPTO Reexam Control No. 90/011,489, Interview Summary (Aug. 4, 2011)).
This "an instruction" term appears in each of the four claims of the '520 patent Oracle is asserting.

With all of these changes, here is where all of the Oracle reexaminations stand at this time (including non-asserted claims):

Oracle v. Google as of 2011-11-20























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% - - 60.71% 45.54%
Percent of Claims Reexamined





91.67% 79.22% 8.33% 20.78%


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