As the saying goes, sometimes it is best to leave well enough alone.
Oracle should probably have heeded that advice before filing its statement (638 [PDF; Text]) regarding the court's December 1 order to the parties regarding evidence of patent marking (636 [PDF; Text])
Oracle thought it would cleverly shift a burden to Google by asking the court to direct Google to:
"identify products in Oracle’s submission that Google contends do not practice the
claims, in addition to identifying further products that practice the claims."
Even the court must have perceived that Oracle was trying to pull a fast one because Judge Alsup ordered Google to provide a response to the December 1 show-cause order because of Oracle's response and gave Google a limited amount of additional time in which to file that response. (639 [PDF; Text])
Google then obliged.
In its response (640 [PDF; Text]) Google reiterates that the burden of proof, either demonstrating marking or proving that it did not practice the invention, falls on the patentee -- in this case Oracle. Google agrees it would then respond to Oracle's "proof" and at the level of detail Oracle requested in its response:
"to not only “identify any further products by Oracle or Sun that practiced any of the 26 asserted claims, specifying with particularity which ones and why,” but also explain with the same particularity any contention Google has that a product identified in Oracle’s submission does not practice the claims."
However, as Google points out, Google's willingness to respond does not shift the burden of proof, and for Google to be able to respond Oracle needs to meet its obligation of proof in sufficient detail that Google can properly respond. Consequently, Google now asks the court to supplement the original December 1 order not only with Oracle's proposed modification but with the added stipulation that:
"In order to properly allocate the burden of proof, require the same level of detail from both parties’ submissions, and ensure that this procedure provides the most assistance to the parties and the Court, Google requests that the Court direct Oracle, in its December 16, 2011 submission, to state with particularity its contentions that any of the products it identifies practice the asserted patents, and the evidentiary basis for any such contentions."
In other words, Oracle would have to provide sufficiently detailed evidence of the practice of the patent in the allegedly marked product to support Oracle's contention that it marked. Google should not have to respond to a bare claim of marking by then having to prove a missing claim element when Oracle has never, in fact, proven that each claim element has been met. This is clearly a better outcome for the court because it forces both parties to lay all of their cards on the table, but in proper sequence with Oracle going first.
Sometimes you are better off leaving well enough alone.
639 – Filed and Effective: 12/05/2011
Document Text: SUPPLEMENTAL ORDER REGARDING PATENT MARKING re 638 Response to Order to Show Cause filed by Oracle America, Inc., 636 Order. Signed by Judge Alsup on December 5, 2011. (whalc1, COURT STAFF) (Filed on 12/5/2011) (Entered: 12/05/2011)
640 – Filed and Effective: 12/05/2011
Document Text: Statement re 639 Order regarding Patent Marking by Google Inc.. (Francis, Mark) (Filed on 12/5/2011) (Entered: 12/05/2011)
FOR THE NORTHERN DISTRICT OF CALIFORNIA
ORACLE AMERICA, INC.,
No. C 10-03561 WHA
A prior order requested the parties’ response to the Court’s proposed plan regarding patent
marking (Dkt. No. 636). Oracle filed its response and sought to add a new feature to the plan:
Google should identify products in Oracle’s submission that Google contends do not practice the
claims, in addition to identifying further products that practice the claims (Dkt. No. 638). The
deadline in the prior order has passed and Google has not yet filed a response. Counsel for
Google shall please comment on the Court’s proposed plan and also address the additional feature
that Oracle has suggested by NOON TODAY.
IT IS SO ORDERED.
Dated: December 5, 2011.
/s/ William Alsup
UNITED STATES DISTRICT JUDGE
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
ORACLE AMERICA, INC.,
Case No. 3:10-cv-03561-WHA
GOOGLE'S STATEMENT RE THE
COURT’S DECEMBER 5, 2011
SUPPLEMENTAL ORDER REGARDING
Judge: Hon. William Alsup
Google hereby makes this response to the Court‘s Order Regarding Patent Marking (Dkt.
No. 636). Google did not previously file any statement because Google agreed that there was no
cause why an order should not be entered.
Google believes that the procedure set forth in the Court’s order is appropriate because it
comports with the legal standard for proof of marking. Under Federal Circuit law, the patentee
bears the burden of showing compliance with the marking statute. See Nike, Inc. v. Wal-Mart
Stores, Inc., 138 F.3d 1437, 1446 (Fed. Cir. 1998). The patentee also bears the burden of
proving that it did not practice a patent if it takes that position. See DR Systems, Inc. v. Eastman
Kodak Co., No. 08-cv-066920, 09 WL 2632685 at *4 (S.D. Cal. Aug. 24, 2009) (“patentees must
also have the burden of proving the nonexistence of patented articles.” (citing Soverain Software
LLC v. Amazon.com, Inc., 383 F. Supp. 2d 904, 908 (E.D. Tex. 2005))); see also WiAV Solutions
LLC v. Motorola, Inc. et al, 732 F. Supp. 2d 634, 640 (E.D. Va. 2010) (the patentee “bears the
burden of showing that it, and its licensees, were not required to mark under § 287”).
Once Oracle has addressed the issue in its December 16, 2011 submission, Google has no
objection to also setting forth its position on marking. Google accepts the Court’s directive that
it identify with particularity any further Oracle products that Google contends practice the
patents and why. Google also accepts Oracle’s suggestion that Google state its contentions
regarding any Oracle products that Google contends do not practice the patents. But importantly,
even if Google discloses its position regarding the products identified in Oracle’s disclosure, the
burden of proof at trial still will remain with Oracle as to whether its products did or did not
practice the asserted patents.
Finally, Google has one further suggestion in light of Oracle’s December 2, 2011 letter to
the Court. In order to properly allocate the burden of proof, require the same level of detail from
both parties’ submissions, and ensure that this procedure provides the most assistance to the
parties and the Court, Google requests that the Court direct Oracle, in its December 16, 2011
submission, to state with particularity its contentions that any of the products it identifies practice
the asserted patents, and the evidentiary basis for any such contentions. This level of detail is
essential for this process to work effectively. The disclosure by Google that Oracle requests, and
that Google is willing to provide, will be largely contingent on the nature of Oracle’s December
16, 2011 disclosure. To put Google in a position to respond meaningfully, Oracle should state
positions that are specific, straightforward and based on evidence it has properly identified in its
previous disclosures under Patent L.R. 3–1(g). Then, after reviewing Oracle’s submission,
Google will submit its response on December 30, 2011.
Dated: December 5, 2011
KEKER & VAN NEST LLP
By: s/ Robert A. Van Nest
ROBERT A. VAN NEST
Attorneys for Defendant