No sooner did the parties file their respective positions on the subject of patent marking with the court (see Proof of Patent Marking) than Judge Alsup has issued an order on how to move forward. (636 [PDF; Text]) Except for the deadlines (Judge Alsup allowing more time for responses than Google had proposed), the court has, as we anticipated, largely adopted the approach suggested by Google, although at this first step Judge Alsup is only interested in getting a complete list of products the parties contend embody the patents. Where the court then elects to go remains to be seen.
Google's proposal:
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 marked. 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. ... 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.
Judge Alsup's order:
Counsel for Oracle shall identify, for each of the 26 asserted claims, each Oracle product,
Oracle-licensed product, Sun product, or Sun-licensed product that practiced the claim during the
alleged damages period from January 1, 2007 through July 20, 2010, the time of actual notice.
This must be filed by DECEMBER 16, 2011. In making this submission, counsel shall keep in
mind that they are officers of the court and full candor is required.
By DECEMBER 30, 2011, counsel for Google shall respond and identify any further
products by Oracle or Sun that practiced any of the 26 asserted claims, specifying with
particularity which ones and why. Counsel shall keep in mind that they are officers of the court
and full candor is required. Mere allegations will not suffice. Google will only list products they
can prove practiced the asserted claims.
The course adopted by the court is both prudent and efficient. Clearly, the issue of whether the apparatus claims being asserted by Oracle (the claims that begin with, for example: "an apparatus," "a computer program product," "a data processing system," or "a computer-readable storage medium") are embodied in products can be determined now, and knowing whether there is evidence to support those contentions before the trial begins will spur the matter along. Once Judge Alsup has seen the available evidence, he can then decide whether it is worth pursuing further at this time or whether the issue is best handled at trial.
It is also interesting that the judge has warned both parties "counsel shall keep in
mind that they are officers of the court and full candor is required." In other words, each party had best be diligent in their search for evidence and as accurate as possible in their assessment of that evidence.
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Docket
636 – Filed and Effective: 12/01/2011
ORDER
Document Text: ORDER REGARDING PATENT MARKING re 635 Statement filed by Google Inc., 634 Statement filed by Oracle America, Inc.. Signed by Judge Alsup on December 1, 2011. (whalc1, COURT STAFF) (Filed on 12/1/2011) (Entered: 12/01/2011)
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Documents
636
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
PATENT MARKING
________________________________________
Having read the parties’ letters dated November 30, 2011, counsel are requested to show
cause by 5:00 PM TOMORROW why the following procedure should not be adopted in order to
streamline and manage the trial.
Counsel for Oracle shall identify, for each of the 26 asserted claims, each Oracle product,
Oracle-licensed product, Sun product, or Sun-licensed product that practiced the claim during the
alleged damages period from January 1, 2007 through July 20, 2010, the time of actual notice.
This must be filed by DECEMBER 16, 2011. In making this submission, counsel shall keep in
mind that they are officers of the court and full candor is required.
By DECEMBER 30, 2011, counsel for Google shall respond and identify any further
products by Oracle or Sun that practiced any of the 26 asserted claims, specifying with
particularity which ones and why. Counsel shall keep in mind that they are officers of the court
and full candor is required. Mere allegations will not suffice. Google will only list products they
can prove practiced the asserted claims.
After reviewing these submissions, the Court will determine the appropriate next steps.
IT IS SO ORDERED.
Dated: December 1, 2011.
/s/ William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE
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