The Court is concerned over whether this issue will devolve into an “infringement” type analysis at trial of various Oracle products and methods to determine if they practiced any of the claims to be tried, throwing yet another complication into the trial. By NOON ON NOVEMBER 30, 2011, each side is requested to please file a five-page statement explaining the extent to which this will be so and how the complication can be mitigated.

Google, on the other hand, used all of the permitted five pages to explain that it isn't quite that simple. (635 [PDF; Text]) According to Google, it does plan on presenting evidence of "the practice (or failure to practice) by Oracle and/or its licensees of each of the six patents still being asserted by Oracle in this action." Google suggests that the presentation of this evidence could disrupt the trial, depending on the extent of the dispute. Consequently, Google suggests that the parties "narrow the issue now, by identifying the patents (if any) over which there is a legitimate dispute about whether Oracle or its licensees practiced the asserted claims."

One worthwhile distinction to draw between the two communique's to the court. Oracle makes no mention of licensee products that may practice the asserted patents, focusing solely on Oracle products. Google makes clear that Oracle licensee products are also in the mix.

How Google views the Oracle position is quite clear:

Throughout the course of this litigation, Oracle has argued that this case is about “Java.” It has broadly characterized the patents-in-suit as “Java” patents, represented that the asserted patents were implemented by its “Java” products, and asserted that the patents as a group are crucial to the use of Java. Oracle’s infringement contentions identified numerous of its Java products as allegedly implementing each of the asserted patents. Oracle and its damages expert have argued for enormous monetary damages and an injunction for alleged infringement by Google of “Java patents.” Oracle repeatedly refers to the patents-in-suit as “Java related patents” in its trial brief. Oracle employees testified at Rule 30(b)(6) depositions that the ‘104, ‘205 and ‘702 patents were implemented in Oracle’s Java products.6 Oracle’s patent validity expert attempted to demonstrate commercial success of the patents (to rebut evidence of obviousness under the secondary considerations doctrine) by claiming that Oracle’s products practiced the ‘104, ‘205 and ‘476 patents. And Oracle made the same argument in reexamination proceedings of the ‘720 patent.

Despite its repeated rhetorical claims that its products practice the patents, Oracle seems to have proof problems. For example, it refused to provide a Rule 30(b)(6) witness to testify regarding practice of the ‘520 or ‘720 patents, stating: “We can confirm that we will not present an Oracle employee or officer at trial to testify regarding the conception, reduction to practice, or actual use of the inventions of the ‘520 and ‘720 patents.” And then, despite its constant drumbeat of claims that the patents are essential to Java, Oracle opportunistically reversed course when opposing Google’s motion for partial summary judgment on marking, claiming that its products do not necessarily practice the asserted claims.

Oracle should not be permitted to have it both ways and come to trial with two directly conflicting factual positions. If Oracle maintains that its products practice the patents, then it bears the burden of proving that it marked those products accordingly. Alternatively, if Oracle now maintains that its Java products do not practice the asserted patent claims, Oracle’s trial story that Google allegedly practices its key patented “Java” technology is false and misleading to the jury. Indeed, if Oracle’s position for marking purposes is that there is no proof that its products practice the asserted claims, then Oracle should not be permitted, in connection with its patent case, to describe the patents as “key Java technology.” Moreover, failure to practice would only further undermine Oracle’s already wildly-exaggerated patent damages calculations, as those calculations rely upon alleged harm to Oracle’s “Java” products and purported fragmentation of “Java” technology, and altogether fail to adopt a reasonable valuation for “Java” patents that even Oracle itself had no use for. And it would also severely undermine the fundamental premise of Oracle’s request for an injunction, namely Oracle’s allegation that it “practices . . . the six Java-related patents” and an injunction is therefore necessary to “prevent Google from further fragmenting the Java platform and undermining Oracle’s and others’ investments in Java.”

The only other filing of the day is the revised set of slides (633 [PDF; Images]) explaining the claims that Judge Alsup requested (see 631 [PDF; Text]) The new slides eliminate any obviousness contentions and add an explanation of the color coding to each slide.

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Docket

633 – Filed and Effective: 11/30/2011
Statement
Document Text: Statement re 631 Order, Joint Proposed Color-Coded Handout by Google Inc.. (Van Nest, Robert) (Filed on 11/30/2011) (Entered: 11/30/2011)

634 – Filed and Effective: 11/30/2011
Statement
Document Text: Statement re 621 Order on Motion for Summary Judgment Oracle letter regarding Oracle products practicing patents by Oracle America, Inc.. (Jacobs, Michael) (Filed on 11/30/2011) (Entered: 11/30/2011)

635 – Filed and Effective: 11/30/2011
Statement
Document Text: Statement re 621 Order on Motion for Summary Judgment by Google Inc.. (Attachments: # 1 Exhibit A)(Van Nest, Robert) (Filed on 11/30/2011) (Entered: 11/30/2011)

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Documents

633

634

[Morrison Foerster letterhead]

November 30, 2011

The Honorable William H. Alsup
United States District Court, Northern District of California
450 Golden Gate Avenue
San Francisco, California 94102

Re: Oracle America, Inc. v. Google Inc., No. 3:10-CV-03561-WHA (N.D. Cal.)

Dear Judge Alsup:

I write to address the Court’s concern, expressed in its November 15, 2011 order (ECF No. 621), regarding potential trial complications arising from questions about which Oracle products practice the asserted patent claims.

Oracle does not foresee this issue taking significant additional trial time. Oracle’s evidence will be presented to the jury in two parts. First, Oracle’s experts, as part of their testimony regarding Google’s infringement and the validity of the claims, will discuss the technology the claims embrace (as informed by the Court’s claim constructions). That testimony would be elicited regardless of questions about Oracle’s products. Second, Oracle’s percipient witnesses, namely, Java software engineers, will testify about which Oracle products do and do not include the relevant technologies.

As for Google, we know from its expert reports that it will not be presenting expert testimony on whether Oracle’s products practice the asserted claims. Nor does its witness list disclose percipient witnesses, other than Oracle engineers, who will testify on this topic. Thus Google’s presentation of evidence will be limited to cross-examination of Oracle’s witnesses. Based on the discovery Google took on this issue, we anticipate that this will not be timeconsuming. Google deposed the Java software engineers who will testify about the products and so has already had the opportunity to examine them. The questioning was not lengthy, perhaps because their testimony was supported by the source code that Oracle produced that corroborates which products contain which technologies.

Respectfully submitted,

/s/ Michael A. Jacobs

Michael A. Jacobs

635

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 STATEMENT RE THE
COURT’S NOVEMBER 15, 2011 ORDER
DENYING MOTION FOR PARTIAL
SUMMARY JUDGMENT LIMITING
DAMAGES BASED ON PATENT
MARKING STATUTE

Judge: Hon. William Alsup

INTRODUCTION

In its November 15, 2011 Order denying Google’s motion for partial summary judgment, the Court recognized that Oracle’s ability to recover damages would be limited by its failure to mark the products made by it or its licensees that practice the patents, pursuant to the patentmarking statute, 35 U.S.C. § 287(a).¹ The Court went on to express its concern that the trial would be complicated by an “‘infringement’ type analysis” of Oracle products to determine if they practiced the patents-in-suit. Accordingly, the Court directed each party to submit a brief statement describing how this issue might complicate trial and how any such complication could be mitigated.

The Court’s concern is well founded. Both parties intend to present evidence of the practice (or failure to practice) by Oracle and/or its licensees of each of the six patents still being asserted by Oracle in this action. Indeed, Oracle has designated no fewer than seven witnesses to testify regarding “products that practice the asserted claims of the patents-in-suit.”² Presentation of this evidence will add time and complexity to an already complicated trial. The best way to mitigate the effect of this issue at trial is to require the parties to narrow the issue now, by identifying the patents (if any) over which there is a legitimate dispute about whether Oracle or its licensees practiced the asserted claims. Any remaining complications from the marking issue can be mitigated by proceeding with the Court’s announced plan to trifurcate the trial, with copyright liability issues tried in phase one, patent liability in phase two, and damages and willfulness in phase three.

GOOGLE’S STATEMENT

A. Disclosure of the parties’ contentions on practice now will reduce the amount of
time at trial that would need to be devoted to marking issues.

To determine how marking issues will affect the trial, Oracle should immediately resolve the contradictions in its representations to this Court. Simply stated, does Oracle allege that any of its (or its licensees’) Java-related products practice the 26 asserted patent claims?

_________________________________

¹ Dkt. No. 621 at 2:23-3:1, 4:11-13.

² Plaintiff Oracle’s Fed. R. Civ. P. 26(a)(3) Witness List (Dkt. No. 525-2).

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Throughout the course of this litigation, Oracle has argued that this case is about “Java.” It has broadly characterized the patents-in-suit as “Java” patents,³ represented that the asserted patents were implemented by its “Java” products, and asserted that the patents as a group are crucial to the use of Java. Oracle’s infringement contentions identified numerous of its Java products as allegedly implementing each of the asserted patents.⁴ Oracle and its damages expert have argued for enormous monetary damages and an injunction for alleged infringement by Google of “Java patents.”⁵ Oracle repeatedly refers to the patents-in-suit as “Java related patents” in its trial brief. Oracle employees testified at Rule 30(b)(6) depositions that the ‘104, ‘205 and ‘702 patents were implemented in Oracle’s Java products.⁶ Oracle’s patent validity expert attempted to demonstrate commercial success of the patents (to rebut evidence of obviousness under the secondary considerations doctrine) by claiming that Oracle’s products practiced the ‘104, ‘205 and ‘476 patents.⁷ And Oracle made the same argument in reexamination proceedings of the ‘720 patent.⁸

Despite its repeated rhetorical claims that its products practice the patents, Oracle seems to have proof problems. For example, it refused to provide a Rule 30(b)(6) witness to testify regarding practice of the ‘520 or ‘720 patents, stating: “We can confirm that we will not present an Oracle employee or officer at trial to testify regarding the conception, reduction to practice, or actual use of the inventions of the ‘520 and ‘720 patents.”⁹ And then, despite its constant

_____________________________

³ See, e.g., February 9, 2011 Hr’g. Tr. (Dkt. No. 87) at 8; Oracle’s Trial Brief (Dkt. No. 536) at 2.

⁴ Oracle’s Second Supplemental Patent Local Rule 3-1 Disclosure of Asserted Claims and Infringement Contentions (Ex. B. to the Van Nest Decl. (Dkt. No. 552-3)).

⁵ See, e.g., September 12, 2011 Expert Report of Dr. Iain M. Cockburn Report at 8, 9, 25, 37.

⁶ John Pampuch testified on July 29, 2011 regarding the ‘702 patent, and Peter Kessler testified on August 4, 2011 regarding the ‘104 and ‘205 patents.

⁷ August 25, 2011 Expert Report of Dr. Benjamin F. Goldberg at 127-28, 131-32, at 144. Dr. Goldberg’s report, however, contained no expert analysis supporting his conclusory assertion that the asserted claims were practiced in Java products. In fact, Oracle failed to offer any expert report or analysis on practice of any of the patents-in-suit.

⁸ July 5, 2011 Response to First Office Action at 39 (“Patent Owner developed a commercial embodiment of the ‘720 Patent called Connected Device Configuration-Application Management System (CDC AMS).”).

⁹ Exhibit A, August 9, 2011 email from Daniel P. Muino. Nor did Oracle furnish an expert report or analysis on practice of the ‘520 or ‘720 patents. Thus, pursuant to the Court’s Supplemental Order (Dkt. No. 26 at ¶23(c)), Oracle may not offer testimony at trial on the practice of either the ‘520 patent or the ‘720 patent.

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drumbeat of claims that the patents are essential to Java, Oracle opportunistically reversed course when opposing Google’s motion for partial summary judgment on marking, claiming that its products do not necessarily practice the asserted claims.¹⁰

Oracle should not be permitted to have it both ways and come to trial with two directly conflicting factual positions. If Oracle maintains that its products practice the patents, then it bears the burden of proving that it marked those products accordingly.¹¹ Alternatively, if Oracle now maintains that its Java products do not practice the asserted patent claims, Oracle’s trial story that Google allegedly practices its key patented “Java” technology is false and misleading to the jury. Indeed, if Oracle’s position for marking purposes is that there is no proof that its products practice the asserted claims, then Oracle should not be permitted, in connection with its patent case, to describe the patents as “key Java technology.” Moreover, failure to practice would only further undermine Oracle’s already wildly-exaggerated patent damages calculations, as those calculations rely upon alleged harm to Oracle’s “Java” products and purported fragmentation of “Java” technology, and altogether fail to adopt a reasonable valuation for “Java” patents that even Oracle itself had no use for. And it would also severely undermine the fundamental premise of Oracle’s request for an injunction, namely Oracle’s allegation that it “practices . . . the six Java-related patents” and an injunction is therefore necessary to “prevent Google from further fragmenting the Java platform and undermining Oracle’s and others’ investments in Java.”¹²

In short, Oracle needs to take a position on whether its products or those of its licensees practice the patents-in-suit and stick to it. Google proposes that by December 9, 2011, for each of the 26 asserted patent claims, Oracle identify each Oracle product or Oracle-licensed product that allegedly practices the claim, and the time period during which the product allegedly was

______________________________

¹⁰ Dkt. No. 577 at 2.

¹¹ See Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1446 (Fed. Cir. 1998) (cited in Google’s Motion for Partial Summary Judgment (Dkt. No. 552) at 4).

¹² Oracle’s Trial Brief (Dkt. No. 568) at 27:24-28:5.

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marked.¹³ By December 16, Google will respond and identify which contentions in Oracle’s submissions it would be able to stipulate to, and which contentions it will challenge at trial. The above disclosures could resolve most, if not all, of the marking dispute, and will significantly shorten the time that will need to be allocated to this issue at trial.

Imposing an immediate deadline for these disclosures is important given that Dr. Kearl is expected to submit his damages report on January 19, 2012 (Dkt. No. 575). If Oracle concedes that its products do not practice one or more of the asserted patent claims, Dr. Kearl may wish to take that into account. Likewise, if Oracle maintains that its products do implement the asserted patent claims but were not marked, Dr. Kearl may wish to take that into account as well.

B. Trifurcating the trial would further mitigate complications from the marking issue.

To the extent any disputes remain in view of the above disclosures (or should the Court not require such disclosures) both Google and Oracle will need to present evidence concerning whether or not Oracle (or Oracle-licensed) products practiced the patents-in-suit before July 20, 2010—the date upon which Oracle first notified Google of alleged infringement. Presentation of this evidence will add time and complexity to the patent liability and damages cases, but the evidence is irrelevant to the copyright case. Trifurcation will allow the jury to decide copyright liability without being bogged down by specific, individualized evidence about whether Oracle (or Oracle-licensed) products practiced any of the patents-in-suit.¹⁴

There are at least seven percipient witness Oracle employees who allegedly have knowledge regarding “products that practice the asserted claims of the patents-in-suit”: Mark Reinhold, Guy Steele, Peter Kessler, Erez Landau,

____________________________

¹³ Oracle already has conceded that it “is not aware of any device, system, or product expressly marked with the patent number of any of the Patents-in-Suit or any Related Patents . . .” Oracle Response to Request for Production No. 4 (Ex. B. to the Van Nest Decl. (Dkt. No. 552)).

¹⁴ Google notes, however, that the patentee bears the burden of proof with respect to marking. See Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1446 (Fed. Cir. 1998).

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John Pampuch, Noel Poore, and Bob Vandette.¹⁵ Google will question these witnesses (and/or other former Sun or Oracle employees on Oracle’s or Google’s witness lists) about whether (1) Oracle’s or its licensees’ products practiced the claims of the patents-in-suit that Oracle is asserting at trial; and (2) Oracle or its licensees sold, offered to sell, or imported those products into the United States before July 20, 2010. Google will support its examination of these witnesses with contemporaneous documentary evidence. Google expects that Oracle will elicit testimony from these same witnesses on these same issues, as Oracle’s witness list suggests.

Presentation of this evidence—by both Google and Oracle¹⁶—will inevitably add time and complexity to the patent and damages cases. But the evidence of practice of these patents is irrelevant to the copyright case. The severability of complex issues like whether Oracle or its licensees practiced the patents further supports the need for the trifurcated trial outlined by the Court.¹⁷ Because the jury does not need to hear evidence of whether the patents were practiced to decide copyright liability, the Court’s proposed trifurcated trial structure would allow the Court to mitigate the complicating effect of that evidence by excluding it from phase one of the trial. Accordingly, aside from requiring the disclosures as suggested in Part A, above, trifurcation is the most effective way to prevent the trial from being unnecessarily complicated by evidence of Oracle’s or its licensees’ practice (or failure to practice) the patents-in-suit.

Dated: November 30, 2011

KEKER & VAN NEST LLP

By: s/ Robert A. Van Nest
ROBERT A. VAN NEST
Attorneys for Defendant
GOOGLE INC.

____________________________

¹⁵ Plaintiff Oracle’s Fed. R. Civ. P. 26(a)(3) Witness List (Dkt. No. 525-2).

¹⁶ Oracle apparently intends to offer evidence of its own practice of the patents in order to “show[] non-obviousness of the patents and demand for the inventions.” See Oracle Opposition to Google’s Motion for Partial Summary Judgment (Dkt. No. 577) at 1:10-14; see also id. at 2:27-3:2, 3:8-12.

¹⁷ See, e.g., Bates v. United Parcel Serv., 204 F.R.D. 440, 448 (N.D. Cal. 2001) (bifurcating the trial because “the issues of liability and damages are separable in this case”); Ciena Corp. v. Corvis Corp., 210 F.R.D. 519, 520 (D. Del. 2002) (severing complex patent case into several phases in order to “reduce[] the number of legal principles the jury must consider and apply” at any given time); see also Oracle’s Critique of the Court’s Proposed Trial Plan (Dkt. No. 627) (urging the Court to consider the degree to which the issues for trial are separable in deciding whether to trifurcate the trial).

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