Judge Alsup has considered the joint submission by the parties on the subject of patent marking as well as their supplemental filings (706 [PDF; Text]), and he has come out firing at Google. In a strongly worded order (707 [PDF; Text]) the court has strongly criticized Google for failing to live up to its obligations under the joint stipulation entered by the parties with respect to evidence of patent marking, declaring it:
[I]t is manifestly clear that Google failed to comply with its own stipulated procedure.
Fortunately for Google, they will get another opportunity to comply.
In the order, Judge Alsup states that Oracle has complied with its disclosure obligations. While that may technically be true, those disclosures are woefully inadequate to achieve the ends desired by the court. The court wanted to nail down the contentions of the parties on the front end, but that simply isn't going to happen with this process.
Quite frankly, the order Judge Alsup issued back in December that began this process, along with the stipulation entered by the parties on how to carry out the process, are fundamentally flawed. Of what use is it if Oracle simply points to a code segment and contends that it discloses all of the elements of an asserted claim if they do not demonstrate what specifically supports that contention? To then require Google to respond in the specific to such a broad assertion by Oracle shifts the burden of proof away from Oracle and onto Google. But that is, in effect, what Judge Alsup is doing here when he states:
Google’s response will specify which Oracle products it contends do (or do not) practice the asserted claims, and why. [emphasis added]
Noticeably, those two words "and why" are missing from the the first step of the stipulation directed to Oracle. Here, again, are those first two steps from the stipulation:
1. On January 6, 2012, Oracle will provide an identification, for each of the 26
asserted claims, of each Oracle product, Oracle-licensed product, Sun product, or Sun-licensed
product (“Oracle Products”) that practice or have practiced the claim. Oracle will also identify
the fact witnesses who possess information supporting Oracle’s contentions that the Oracle
Products practice or have practiced the asserted claims, as well as provide a summary of
testimony Oracle intends to elicit at trial from those witnesses regarding those Oracle Products’
practice of the claims. Oracle will also provide source code citations and/or other documentation
supporting Oracle’s contentions that the Oracle Products practice the asserted claims.
Excluding the "and why" provision in Oracle's step and while including it in Google's would appear to create a different standard for proof. Oracle can contend in the general, i.e., simply providing a code segment reference, while Google is obligated to respond in the specific, i.e., showing why the code segment does not embody the asserted patent claim.
2. On January 20, 2012, Google will respond to Oracle and identify any other Oracle
Products that Google contends practiced any of the 26 asserted claims during the alleged damages
period and identify any products in Oracle’s identification that Google contends do not practice
the identified claims. Google’s response will specify which Oracle Products it contends do (or do
not) practice the asserted claims, and why.
Google has no one to blame but itself for this difference in language, and by their response it is clear that they thought the standard of showing was the same for both parties. Well, not in Judge Alsup's mind.
If there is an upside to all of this for Google, it's that they are being provided a second chance to respond even if it is on a short timeline. Judge Alsup also did not totally let Oracle off the hook in that he is allowing Google to show how Oracle has failed to produce evidence supporting its contentions that it properly marked.
This new round is almost certain to produce new fireworks as, in his final directive, Judge Alsup has ordered the parties to meet and confer for the purpose of producing a joint stipulation by February 21. Don't expect the parties to agree on much.
707 – Filed and Effective: 1/31/2012
Document Text: ORDER REGARDING PATENT MARKING DISPUTE re 706 Statement filed by Google Inc., Oracle America, Inc.. Signed by Judge Alsup on January 31, 2012. (whalc1, COURT STAFF) (Filed on 1/31/2012) (Entered: 01/31/2012)
IN THE UNITED STATES DISTRICT COURT
ORACLE AMERICA, INC.,
FOR THE NORTHERN DISTRICT OF CALIFORNIA
No. C 10-03561 WHA
ORDER REGARDING PATENT
In the order denying Google’s motion for partial summary judgment on its patent marking
defense, the Court expressed concern that disputes over which Oracle or Sun products practiced
the asserted claims, and therefore required marking, would devolve into an “infringement” type
analysis at trial. In order to streamline the issue for trial, the parties were required to devise a
fully agreeable procedure to identify and stipulate to the Oracle or Sun products that practiced the
asserted claims. The parties filed a joint, stipulated procedure (Dkt. No. 661).
Now, it is manifestly clear that Google failed to comply with its own stipulated procedure.
Pursuant to the first step in the joint procedure, Oracle submitted a list of Oracle and Sun products
that practiced each of the asserted patents, the supporting source-code citations for each product,
and summary of testimony it intended to elicit at trial in support of these identifications. Pursuant
to the next step in the joint procedure, Google was required, by January 20, to:
respond to Oracle and identify any other Oracle products that Google
contends practiced any of the 26 asserted claims during the alleged
damages period and identify any products in Oracle’s identification that
Google contends do not practice the identified claims. Google’s response
will specify which Oracle products it contends do (or do not) practice the
asserted claims, and why.
Google failed to do so. Instead, Google merely objected to Oracle’s testimonial evidence and
complained that it did not have time to analyze the source-code citations provided. Google did
not independently analyze and address each product identified by Oracle. Nor did Google
identify any other products that practiced the asserted claims.
Google is hereby ordered to stand and deliver on its end of the bargain. For each product
identified by Oracle, Google shall independently analyze whether that product practiced the
asserted claims. Google cannot merely object to Oracle’s evidence. Note well that Google is the
one who raised the patent marking defense and presumably has its own evidence to show which
Sun or Oracle products fell within the asserted claims. Google has no need to see more evidence
to lay out its hand on this score. Google must unequivocally state whether each product practiced
or did not practice the asserted claims. For each contention, Google must provide an explanation
based on its own analysis of the product. Google must faithful comply or withdraw its patent
marking defense. If Google fails to do so by NOON ON FEBRUARY 14, then the Court will
entertain a motion to eliminate the patent marking defense.
With respect to Google’s suggestion that Oracle has not previously produced the code and
other evidence, Oracle replies that is wholly untrue and that all such evidence has previously been
produce in discovery (Dkt. No. 706 at 6–21). This question would only affect the products and
methods asserted by Oracle as falling within the claims and would not affect the products and
methods asserted by Google as falling within the claims. As to the latter, Google should already
have the evidence to back up its own contentions. As to the former, if it is really true that Oracle
has neglected to produce the evidence cited by Oracle in its step one submission, then Google
may in its February 14 submission, specify the missing evidence with particularity. Oracle shall
then have until NOON ON FEBRUARY 17 to admit or deny the assertion of non-production, stating
with particularity, if Oracle contends it was produced earlier, when, how, and to whom, the
evidence was produced, taking care to admit any part of the allegedly-missing evidence was not
produced. This issue, even if it is a genuine one, cannot justify the wholesale refusal to respond
at all as required by the stipulation.
Until Google faithfully complies with its own stipulated procedure, Oracle will not be held
to its step one admissions, that is, Google may not simply assert that Oracle has admitted a failure
to mark and therefore there is no need for Google to admit or deny in order to defend on grounds
of failure to mark. First, such a tactic would violate the stipulation. Second, such a tactic would
be gamesmanship to “have it both ways” so as to have the benefit of the procedure without having
to admit items that may hurt Google on other issues, such as the question of an injunction should
Google lose at trial.
As required by their own stipulation, the parties shall have a meet-and-confer regarding
their disclosures (this time with an acceptable disclosure from Google) with the aim of preparing
a stipulation of which products practice the asserted claims. By NOON ON FEBRUARY 21, the
parties shall jointly submit to the Court their stipulations, a statement on the evidentiary effect of
their stipulations at trial, and a list of those products for which there is a genuine dispute between
the parties, along with brief explanations of the basis for each party’s contention for each product.
IT IS SO ORDERED.
Dated: January 31, 2012.
/s/ William Alsup
UNITED STATES DISTRICT JUDGE