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Oracle v. Google - Pretrial Update
Thursday, December 08 2011 @ 09:30 AM EST

On November 21, Judge Alsup ordered the parties to identify four motions in limine that merited oral argument. (629 [PDF; Text]) Yesterday the parties submitted a pretrial status update that identified those four motions. (643 [PDF; Text]) The four motions identified are:

  • Oracle’s Motion in Limine No. 1 to Exclude Evidence or Argument Regarding Patent Reexaminations.
  • Oracle’s Motion in Limine No. 4 to Exclude Evidence or Argument Regarding Oracle’s Past Actions with Application Programming Interfaces.
  • Google’s Motion in Limine No. 1 to Exclude Lindholm E-mail and Drafts Thereof.
  • Google’s Motion in Limine No. 3 to Exclude Portions of Cockburn Report on Damages.


The selection of these four motions evidences the importance the respective parties place on them. Whether such oral arguments will make a substantive difference given the extensive briefing the parties have already done is questionable, but Judge Alsup clearly wants them to have their say.

The parties also provided their respective updates on the patent reexaminations. Of course, each party leads off its table with its strong suit (Oracle with the one patent where the claim has been upheld, and Google with one of the patents where all of the claims have been rejected), but it is clear from either table that Google may make serious inroads in invalidating many of the claims Oracle is asserting.

Google also addresses the interlocutory petition for a writ of mandamus pending before the Federal Circuit and indicates that, given that both parties have now fully briefed the court, a ruling would likely be forthcoming in 2-5 months. Combining that with the trial schedules of the lead counsel for each party evidences that it would be difficult to schedule a trial in this action before July 2012. If that is the case, there is a high likelihood that the pending reexaminations and the pending petition for the writ will be substantially resolved before trial.

In the only other filing of the day Judge Alsup clarified his earlier tentative order pertaining to the exclusion of portions of the Cockburn report (642 [PDF; Text]) to emphasize that the parties are to limit their comments to the existing record. (643 [PDF; Text]) The judge clearly doesn't want the parties raising any new issues.


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

Docket

643 – Filed and Effective: 12/07/2011
ORDER
Document Text: ORDER CLARIFYING TENTATIVE RULING re 642 Order,. Signed by Judge Alsup on December 7, 2011. (whalc1, COURT STAFF) (Filed on 12/7/2011) (Entered: 12/07/2011)

644 – Filed and Effective: 12/07/2011
Statement
Document Text: Pretrial Conference Statement by Oracle America, Inc. and Google Inc. (Supplemental). (Jacobs, Michael) (Filed on 12/7/2011) (Entered: 12/07/2011)


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

Documents

643

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 CLARIFYING
TENTATIVE RULING

____________________________________

A recent order allowed parties to submit ten-page memoranda critiquing its tentative ruling (Dkt. No. 642). To clarify, that invitation did not allow parties to expand the existing record. No new materials other than the ten-page memoranda may be submitted.

IT IS SO ORDERED.

Dated: December 7, 2011.

/s/ William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE


644

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 (DMR)

SUPPLEMENTAL JOINT
PRETRIAL CONFERENCE
STATEMENT

Date: December 21, 2011
Time: 8:00 a.m.
Dept.: Courtroom 9, 19th Floor
Judge: Honorable William H. Alsup

Pursuant to the Court’s November 21, 2011 order, Oracle America, Inc. and Google Inc. hereby jointly submit (1) a list of four pending motions in limine that the parties believe are most deserving of oral argument; (2) an update on the PTO’s progress in reexamining the 26 asserted patent claims; (3) an update on the status of Google’s petition to the Federal Circuit for a writ of mandamus regarding the Lindholm e-mail; and (4) a summary of other items that may impact the trial date, duration, and scheduling.

I. MOTIONS IN LIMINE FOR ORAL ARGUMENT

The parties propose that the Court hear oral argument on at least the following four motions in limine at the pretrial conference:

(1) Oracle’s Motion in Limine No. 1 to Exclude Evidence or Argument Regarding Patent Reexaminations.

(2) Oracle’s Motion in Limine No. 4 to Exclude Evidence or Argument Regarding Oracle’s Past Actions with Application Programming Interfaces.

(3) Google’s Motion in Limine No. 1 to Exclude Lindholm E-mail and Drafts Thereof.

(4) Google’s Motion in Limine No. 3 to Exclude Portions of Cockburn Report on Damages.

II. STATUS OF THE REEXAMINATIONS

Oracle’s Statement

Oracle provides the following update regarding the reexamination status of the six patents-in-suit:

  • ’520 patent: The PTO has confirmed the patentability of the asserted claims of the ’520 patent. A reexamination certificate issued on November 9, 2011.
  • ’720 patent: On November 18, 2011, the PTO issued an Action Closing Prosecution rejecting the asserted claims of the ’720 patent in light of the proferred prior art. Oracle’s response seeking reconsideration of this action is due on December 19, 2011.
  • ’104 patent: The PTO has not yet issued a first office action with respect to the ’104 patent.

1

  • ’476, ’702, ’205 patents: The PTO has tentatively rejected the asserted claims of these patents. All responses to the PTO’s tentative rejections have been submitted and further office actions are anticipated.
The table below shows the history of the reexaminations for each of the six asserted patents:

Patent No. (type of reexam)Office Action IssuedOracle Response FiledGoogle Response FiledFinal Office Action IssuedFurther Oracle Response DueAsserted Claims Subject To ReexamStatus
6,061,520 (ex parte)6/23/118/23/11n/an/an/aAll (1, 8, 12, 20)Claims Confirmed Patentable
7,426,720 (inter partes)5/5/117/5/118/4/1111/18/1112/19/11All (1, 6, 10, 19, 21, 22)Claims Rejected
Further response from Oracle due on 12/19/11
RE38,104 (ex parte)pending----All (11, 27, 29, 39, 40, 41)Awaiting PTO office action
6,192,476 (ex parte)6/16/119/16/11n/a--All (14)Claim Preliminarily Rejected
Awaiting futher PTO office action
5,966,702 (ex parte)6/6/119/6/11n/a--All (1, 6, 7, 12, 13, 15, 16)Claims Preliminarily Rejected
Awaiting futher PTO office action
6,910,205 (inter partes)8/19/1110/18/1111/18/11--All (1, 2)Claims Preliminarily Rejected
Awaiting futher PTO office action

Google’s Statement

The reexaminations of five of the six patents-in-suit remain ongoing, with roughly twothirds of the currently asserted claims having been rejected. Eighty percent of the asserted claims as to which the PTO has issued an office action currently stand rejected. In the inter partes reexamination of U.S. Patent No. 7,426,720, the PTO has issued an Action Closing Prosecution after rejecting all asserted claims of the patent for a second time. In summary, as shown below, the PTO has rejected all of the asserted claims of four of the six patents; the PTO has not yet issued an office action with respect to one of the six patents; and the PTO has confirmed the patentability of the asserted claims of one of the six patents.

2

The table below shows the current status of the reexaminations as to the asserted patents:

Patent No. (reexam type)Reexam FiledReexam OrderedFirst Office Action IssuedOracle Response Due / FiledGoogle Response Due / FiledAsserted Claims Subject to ReexamAsserted Claims Currently RejectedAsserted Claims Currently Allowed
6,192,476 (ex parte)3/13/23 Control No. 90/011,5216/16Filed 9/16n/aAll
(14)
All
(14)
None
5,966,702 (ex parte)2/153/23 Control No. 90/011,4926/6Filed 9/6n/aAll
(1, 6, 7, 12, 13, 15, 16)
All
(1, 6, 7, 12, 13, 15, 16)
None
7,426,720 (inter partes)3/-14/18 Control No. 95/001,5605/5Filed 7/5Filed 8/4All
(1, 6, 10, 19, 21, 22)
All
(1, 6, 10, 19, 21, 22)
None; Action Closing Prosecution issued 11/18
RE38,104 (ex parte)2/153/28 Control No. 90/011,490Pending-n/aAll
(11, 27, 29, 39, 40, 41)
-None
6,910,205 (inter partes)2/174/14 Control No. 95/001,5488/19Filed 10/19Filed 11/18All
(1, 2)
All
(1, 2)
None
6,061,520 (ex parte)2/153/23 Control No. 90/011,4896/23Filed 8/23n/aAll
(1, 8, 12, 20)
-All
(1, 8, 12, 20)

III. STATUS OF GOOGLE’S PETITION FOR A WRIT OF MANDAMUS

With the filing of Google’s reply brief on December 5, 2011, the petition is now fully briefed and the parties await further action by the Federal Circuit. Recently, the Federal Circuit has ruled on writ petitions within two to five months of the date briefing was completed. For example:

  • In re Link-A-Media Devices Corp., --- F.3d ----, 2011 WL 6004566, Misc. No. 990 (Fed. Cir. Dec. 2, 2011). The petition was fully briefed on July 22, 2011. The Federal Circuit granted the petition on December 2, 2011.
  • In re Shared Memory Graphics LLC, 659 F.3d 1336 (Fed. Cir. 2011). The petition was fully briefed on May 2, 2011. The Federal Circuit granted the petition on September 22, 2011.
  • In re Vertical Computer Systems, Inc., 435 Fed. Appx. 950 (Fed. Cir. 2011). The

3

    petition was fully briefed on June 8, 2011. The Federal Circuit denied the petition in a written opinion dated August 17, 2011.

  • In re Chicco USA, Inc., 429 Fed.Appx. 993 (Fed. Cir. 2011). The petition was fully briefed on April 11, 2011. The Federal Circuit denied the petition in a written opinion dated 7/12/2011).
IV. TRIAL SCHEDULING CONSIDERATIONS

Oracle’s Statement: To avoid further delay, Oracle requests that the Court set a trial date as early as possible following the submission of Dr. Kearl’s expert report on January 19, 2012. For the Court’s information, the parties have listed below the trial commitments of lead counsel in early 2012. Nonetheless, the parties can be expected to accommodate whatever date is convenient for the Court.

Google’s Statement: Google agrees that the trial should begin as soon as possible following the submission of Dr. Kearl’s expert report on January 19, 2012. In light of the prior commitments of lead counsel for both parties, however, and in light of the Court’s announced plan to trifurcate the trial with jury deliberations following each phase, Google proposes that early July 2012 is the earliest practicable date for trial.

Lead Counsel Trial Commitments

The parties have conferred regarding the schedules of lead trial counsel Michael Jacobs and David Boies for Oracle, and Robert Van Nest and Christa Anderson for Google. Messrs. Jacobs, Boies, and Van Nest, and Ms. Anderson have certain prior commitments in the first few months of 2012 that could conflict with the trial date in this case. Those trial commitments are as follows:

Michael Jacobs

  • eTool Development, Inc. et al v. National Semiconductor Corporation, EDTX Case No. 2:08-cv-00196-WCB. Pretrial conference December 20, 2011; trial January 3-10, 2012.
  • In the Matter of Certain Electronic Digital Media Devices and Components Thereof, Investigation No. 337-TA-796 (U.S. ITC). Trial May 31-June 6, 2012.

David Boies

  • Rincon EV Realty LLC, Rincon ET Realty LLC, and Rincon Residential Towers LLC v. CP III Rincon Towers, Inc., and DOES 1 through 50, inclusive, San

4

    Francisco Superior Court Case No. CGC-10-496887. Trial date is currently February 27, 2012 (expected 2-3 weeks).

Robert Van Nest

  • New York v. Intel Corp., D. Del. No. 09-827 (LDS). Pretrial Conference Jan. 27, 2012; trial February 14-24, 2012.
  • Commonwealth Scientific and Industrial Research Organization v. Lenovo (United States) Inc., E.D. Tex. No. 6:09-cv-399 (LED). Pretrial Conference March 22, 2012; trial April 2-20, 2012.
  • Genentech Inc. v. Trustees of the University of Pennsylvania, N.D. Cal. No. 5:10- cv-02037 LHK (PSG). Pretrial Conference May 23, 2012; trial June 11-22, 2012.
  • Mr. Van Nest also plans to be out of the country from April 26-May 11, 2012.

Christa Anderson

  • Marin Health Care District v. Sutter Health, JAMS Ref. No. 1100065277. Arbitration Jan. 17-Feb. 10, 2012.
  • Commonwealth Scientific and Industrial Research Organization v. Lenovo (United States) Inc., E.D. Tex. No. 6:09-cv-399 (LED). Pretrial Conference March 22, 2012; trial April 2-20, 2012.

5

Dated: December 7, 2011

MORRISON & FOERSTER LLP

By: /s/ Michael A. Jacobs

MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[email]
KENNETH A. KUWAYTI (Bar No. 145384)
[email]
MARC DAVID PETERS (Bar No. 211725)
[email]
DANIEL P. MUINO (Bar No. 209624)
[email address telephone fax]

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

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

Attorneys for Plaintiff
ORACLE AMERICA, INC.

6

Dated: December 7, 2011

KEKER & VAN NEST, LLP

/s/ Robert A. Van Nest

ROBERT A. VAN NEST (SBN 84065)
[email]
CHRISTA M. ANDERSON (SBN184325)
[email]
DANIEL PURCELL (SBN 191424)
[email address telephone fax]

SCOTT T. WEINGAERTNER (Pro Hac Vice)
[email]
ROBERT F. PERRY
[email]
BRUCE W. BABER (Pro Hac Vice) [email address telephone fax]

DONALD F. ZIMMER, JR. (SBN 112279)
[email]
CHERYL A. SABNIS (SBN 224323)
[email]
KING & SPALDING LLP
[address telephone fax]

GREENBERG TRAURIG, LLP
IAN C. BALLON (SBN 141819)
[email]
HEATHER MEEKER (SBN 172148)
[email address telephone fax]

Attorneys for Defendant
GOOGLE INC.

7

ATTESTATION

I, Michael A. Jacobs, am the ECF User whose ID and password are being used to file this SUPPLEMENTAL JOINT PRETRIAL CONFERENCE STATEMENT. In compliance with General Order 45, X.B., I hereby attest that Robert A. Van Nest has concurred in this filing.

Date: December 7, 2011

/s/ Michael A. Jacobs

8


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