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To read comments to this article, go here
Oracle v. Google - No Real Progress on the Issue of Patent Marking
Wednesday, February 22 2012 @ 02:05 PM EST

The parties have now filed their joint statement on patent marking (721 [PDF;Text]), but it is hard to say they are any closer than before or that this entire exercise has substantially streamlined the issue of patent marking for trial. That's the pessimistic view. The optimistic view is that they at least agreed upon a series of conditional stipulations, i.e., if Android is found to infringe, then the specified Oracle products also practice the patent and required marking. Perhaps that is the best they can do. In any case, there are clearly differences that remain as to how the claims are to be read and applied, and those issues will only get resolved at trial.

Oracle again insists that Google is trying to have its cake and eat it, too, by insisting that these conditional stipulations only be used in the damages phase of the trial, not in the liability phase. Oracle wants the stipulations, regardless of whether they are conditional, to be effective for both phases of the trial. From Oracle's view, limiting the stipulation to the damages phase only benefits Google, i.e., Google need not make any concession as to the practice of the patents by Oracle during the liability phase.

For almost that very reason Google argues that the stipulation must be limited to the damages phase. From Google's standpoint, putting these stipulations in front of the jury during the liability phase may confuse the jury and cause the jury to believe it is evidence of an admission of infringement by Google.

It would be both confusing to the jury, and prejudicial to Google, to be told that they can presume that Oracle practices its patents if they end up deciding that Google infringes those patents. Much mischief could be created by the use of this stipulation outside the context for which it is intended, perhaps even leading the jury to believe that Google agrees with Oracle’s technical arguments for infringement—which is precisely the opposite of the truth.
I just can't imagine the Boies Schiller firm (representing Oracle) trying to do something like that at trial, can you?

In Google's view it is Oracle that is trying to have its cake and eat it, too. Oracle, while essentially conceding during the meet and confer that its products were not marked, refuses to stipulate to that lack of product marking. In other words, Oracle is trying to hold out on the issue of patent marking until trial. The whole point of this exercise was to dispose of that issue before trial.

This exercise in trying to reach a joint stipulation has not clarified the issue as Judge Alsup had hoped, and it will be interesting to see his reaction to this joint statement.


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

Docket

721 – Filed and Effective: 2/21/2012
Statement
Document Text: Statement re 707 Order Supplemental Joint Statement Regarding Oracle Products Practicing Patents by Google Inc., Oracle America, Inc.. (Peters, Marc) (Filed on 2/21/2012) (Entered: 02/21/2012)


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

Document

721

NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

ORACLE AMERICA, INC.
Plaintiff,
v.
GOOGLE INC.
Defendant.

Case No. CV 10-03561 WHA

SUPPLEMENTAL JOINT
STATEMENT REGARDING
ORACLE PRODUCTS
PRACTICING PATENTS

Dept.: Courtroom 8, 19th Floor
Judge: Honorable William Alsup

Pursuant to the Court’s January 31, 2012 Order Regarding Patent Marking Dispute (ECF No. 707) and the agreement between the parties as set forth in their December 30, 2011 Joint Statement Regarding Supplemental Order Regarding Patenting Marking (ECF No. 661), Plaintiff Oracle America, Inc. (“Oracle”) and Defendant Google Inc. (“Google”) hereby submit the following statement regarding Oracle products, Oracle-licensed products, Sun products, and Sunlicensed products (“Oracle Products”) that practice or have practiced the asserted claims of the patents-in-suit (“claims-in-suit”).

I. STIPULATIONS

In order to narrow the issues to be addressed at trial, the parties have agreed on a number of stipulations. Almost all of the disputes that the parties have regarding whether Oracle practices the asserted claims are based on the same technical arguments underlying the parties’ respective positions on the alleged infringement of the patents by the accused Android instrumentalities. Accordingly, as to many of the patents, the parties have worked on conditional stipulations that tie the issues together: i.e., if the accused Android functionality infringes, then Oracle’s products practice the patent.

The parties agree that as to the unconditional stipulation they have reached, the stipulation may be used in all phases of trial, as it is not conditional on the resolution of the dispute between the parties.

The parties have not been able to agree upon the evidentiary effect of the conditional stipulations. The positions of the parties are as follows:

Oracle argues that in order for such a conditional stipulation to be fair, it must be effective for all purposes as the Court suggested (ECF No. 641) and the parties agreed (ECF No. 661), and be applied to secondary considerations of nonobviousness in the patent liability phase of the trial as well as to marking or injunction issues in later phases; an explanation and limiting instruction from the Court would prevent any jury confusion. Oracle maintains that to streamline the trial and avoid the need for “infringement-like” analysis or testimony on Oracle’s products, the conditional stipulations must be effective in the patent liability phase of the trial. Otherwise, just as the Court has tried to prevent (ECF No. 707), Google will indeed “have it both ways” and

1

benefit from this procedure in the damages phase without having to admit items that may hurt Google in the liability phase. The parties agreed to “jointly submit to the Court a list of the Oracle Products that they stipulate practice the asserted claims, which shall have the effect of establishing that fact for all purposes at trial” (ECF No. 661), and if Google is unwilling to accept that the conditional stipulations apply to all phases of the trial, then they are not actually stipulations according to the agreed-upon procedure approved by the Court.

Oracle notes that the agreed-upon procedure concerns only Oracle’s practice of the patents and not the marking issue, so no stipulation regarding marking “must” be made, as Google suggests below. The legal effect of Oracle’s discovery admissions on the marking issue cannot be addressed until after the patent liability phase of the trial, given the conditional stipulations below.

Google believes that it and Oracle have unbridgeable technical disagreements as to what does and does not infringe the patents, as demonstrated by their expert reports on infringement issues. In an attempt to simplify the proof required in the case, Google has agreed to allow the jury to be the arbiter of who is right on coverage of the claims as to both the accused instrumentalities and the Oracle products (with one small exception for the ’520 patent, where the technical dispute encompasses issues beyond those raised by Oracle’s infringement theories as to the Google accused instrumentalities). It would be both confusing to the jury, and prejudicial to Google, to be told that they can presume that Oracle practices its patents if they end up deciding that Google infringes those patents. Much mischief could be created by the use of this stipulation outside the context for which it is intended, perhaps even leading the jury to believe that Google agrees with Oracle’s technical arguments for infringement—which is precisely the opposite of the truth.

With respect to Oracle’s claim about the potential savings in the presentation of evidence, the only issue to which Oracle has pointed in meet and confer discussions or here is that of the secondary considerations of non-obviousness of commercial success of its products. First, that issue would only arise if Google presses a claim at trial that a particular patent is invalid as obvious. Second, if Oracle wishes to argue that the alleged inventions of its patents are

2

responsible for the commercial success of its products, it would need to present evidence of a nexus between the commercial success and those patents. The evidentiary showing there would overlap with, and dwarf, any evidence that Oracle would contemplate putting on regarding how its products allegedly practiced the patents.

Nor is Google “trying to have it both ways” as Oracle claims. It has worked with Oracle to identify technical issues despite its evidentiary objections to what Oracle can prove (and the stipulations here do not waive any objections to evidence that Oracle seeks to introduce at trial). It has stipulated unconditionally as to the patent and products where the parties have no remaining technical issues, which fact is established for all purposes at trial. And Oracle gains the ability to say that its products practice any infringed patents during Phase 3 of the trial without putting on any additional evidence, which allows trial to be streamlined in a fair manner. But without actually agreeing with Oracle as to the technical merits of its infringement read, Google cannot agree to Oracle seeking to imply to the jury that, in effect, if Oracle practices its patents, Google must be an infringer. Indeed, it is Oracle that is trying to have its cake and eat it too. Google believes that Oracle must stipulate that the products enumerated below were not marked with the patent numbers pursuant to 35 U.S.C. § 287—a position with which Oracle does not disagree factually. But Oracle has refused to include those facts as part of the stipulation. Google believes that it would be appropriate for the parties to remove those factual issues from the need for presentation at trial as well, and thinks this stipulation would be an appropriate place to do so.

A. ’702 patent

1. Java OS 1.1 products
The parties stipulate that Java OS 1.1 (and variants, including Java PC) practice the asserted claims of the ’702 patent.

2. Java Card platform 2.1 products
There is a dispute between the parties as to the proper application of the claims of the ’702 patent. Oracle argues that the .CAP file created by the use of Java Card includes “reduced class files” as the phrase was construed by the Court, because the removal of additional elements is not excluded by the claim, which is written in an open manner. Google argues that Java Card does

3

not practice the ’702 patent for some of the same reasons that Google argues that the accused Android functionality does not practice the ’702 patent, namely that the .CAP file created by the use of Java Card is not comprised of “reduced class files” that contain what remains after duplicate constants have been removed from the class files. Google contends that the .CAP file does not contain reduced class files that contain reduced constant pools. The parties therefore stipulate as follows:

If the accused Android functionality infringes the ’702 patent, then Oracle’s Java Card platform 2.1 product and subsequent versions practice the ’702 patent.

B. ’104 patent
There is a dispute between the parties as to the proper application of the claims of the ’104 patent. Oracle contends that Oracle’s Java products do practice the ’104 patent because data references in the intermediate form object code instructions of Java class files are “symbolic references” as the phrase was construed by the Court because they are platform-independent and “identify data by a name other than the numeric memory location of the data,” which would be different on different computers. Oracle contends that Google’s argument is inconsistent with both the Court’s claim construction and the manner in which Google’s invalidity expert has applied the claims to the prior art. Google argues that Oracle’s Java products do not practice the ’104 patent for some of the same reasons that Google argues that the accused Android functionality does not practice the ’104 patent, namely that the intermediate form object code instructions used in Oracle’s Java products do not “contain[] one or more symbolic references.” Google contends that the Java bytecode instructions in Oracle’s Java products contain numeric references (i.e., indices), and not symbolic references. Google further observes that it is common for validity experts to take a broader view of the patent claims (which may be consistent with what the patentee is asserting in terms of infringement) than non-infringement experts. The parties therefore stipulate as follows:

If the accused Android functionality infringes the ’104 patent, then the following Oracle products practice the ’104 patent: JDK 1.0 and subsequent versions; JRE 1.1.1 and subsequent versions; HotSpot 1.0 and subsequent versions; Java SE for Embedded 1.4.2_11 and subsequent

4

versions; J2EE 1.2 (later called Java EE) and subsequent versions; Java Real Time 1.0 and subsequent versions; CDC RI 1.0 and CDC HI 1.0 and subsequent versions of each; CDC AMS 1.0, 1.0_1, and 1.0_2 (Personal Basis Profile and Personal Profile versions); Personal Profile RI 1.0 and subsequent versions; Personal Profile HI 1.1.1; Personal Basis Profile RI 1.0 and subsequent versions; Personal Basis Profile HI 1.1.1; Foundation Profile 1.0 and subsequent versions; CDC ToolKit 1.0 or Java ME SDK 3.0 EA and subsequent versions; CLDC RI 1.0 and 1.1; WTK 1.0 or Java ME SDK 3.0 EA and subsequent versions; CLDC HI 1.0 and subsequent versions; Oracle Java Wireless Client (formerly Sun Java Wireless Client) 1.0 and subsequent versions; PersonalJava 1.0 and subsequent versions; EmbeddedJava 1.0 and subsequent versions; JavaOS 1.0 (and variants, including Java PC) and subsequent versions; and Java Card connected platform 3.0 and subsequent versions.

C. ’205 patent
There is a dispute between the parties as to the proper application of the claims of the ’205 patent. Oracle argues that its Java products and Android do practice the ’205 patent, and that Google’s argument is based on a claim construction position that Google waived and that is inconsistent with both the plain meaning of the phrase and the manner in which Google’s invalidity expert has applied the claims to the prior art. Google argues that Oracle’s Java products do not practice the ’205 patent for some of the same reasons that Google argues that the accused Android functionality does not practice the ’205 patent, namely that Oracle’s Java products do not “generat[e], at runtime, a new virtual machine instruction.” Google contends that Oracle’s Java products use instructions that are pre-existing virtual machine instructions (i.e., bytecode) with defined meanings such that these instructions are neither “new” nor “generated.” Google further observes that it is common for validity experts to take a broader view of the patent claims (which may be consistent with what the patentee is asserting in terms of infringement) than non-infringement experts. The parties therefore stipulate as follows:

If the accused Android functionality infringes the ’205 patent, then the following Oracle products practice the ’205 patent: JDK 1.2 and subsequent versions; JRE 1.2 and subsequent versions; HotSpot 1.0 and subsequent versions; Java SE for Embedded 1.4.2 and subsequent

5

versions; J2EE 1.2 (later called Java EE) and subsequent versions; Java Real Time System 1.0 and subsequent versions; CDC HI 1.1.1 and subsequent versions; Personal Profile HI 1.1.1; Personal Basis Profile HI 1.1.1; CDC AMS 1.0, 1.0_1, and 1.0_2 (Personal Basis Profile and Personal Profile versions); CLDC HI 1.1 and subsequent versions; and CLDC RI 1.1.1.

D. ’720 patent
As reflected in the related claim-construction briefing, there is a dispute between the parties as to the proper interpretation of the claims of the ’720 patent. Oracle argues that “obtain[ing] a representation of at least one class from a source definition provided as object oriented program code” covers loading from class files and other object code. Google argues that “obtain[ing] a representation of at least one class from a source definition provided as object oriented program code” requires “compiling object oriented source code.” In light of the pending claim construction issue, the parties stipulate as follows:

If the Court adopts Oracle’s proposed construction, then Oracle’s CDC AMS product practices the ’720 patent. On the other hand, if the Court adopts Google’s proposed construction, then Oracle’s CDC AMS product does not practice the ’720 patent.

E. ’520 patent
1. Oracle’s CLDC HI 1.1.3 and CLDC RI 1.1.1 products There is a dispute between the parties as to the proper application of the claims of the ’520 patent. Oracle maintains that its CLDC HI 1.1.3 and CLDC RI 1.1.1 products and Android practice the asserted claims, because both interpret class initialization code to identify the static initialization of the array. Google argues that the Oracle products do not practice the ’520 patent for some of the same reasons that Google argues that the accused Android functionality does not practice the ’520 patent, namely that the Oracle code at issue uses parsing or pattern matching, rather than simulation of execution, to identify the initialization of a static array. The parties therefore stipulate as follows:

If the accused Android functionality infringes the ’520 patent, then Oracle’s CLDC HI 1.1.3 and CLDC RI 1.1.1 products and subsequent versions practice the ’520 patent.

6

II. DISPUTED PRODUCTS

A. ’520 patent

1. Oracle’s Java Card products
The parties dispute whether Oracle’s Java Card products create “an instruction” within the meaning of the claims of the ’520 patent. This is a technical dispute separate and distinct from the allegations involving the accused Android functionality.

Oracle contends that when the Java Card converter stores a value indicating the presence of static array initialization data, the array type, the array size, and the initialization values in the Static Field Component of the output .CAP file (Java Card™ 2.1.1 Virtual Machine Specification 100-101 (rev. 1.0, 2000), it creates “an instruction” as claimed in the ’520 patent.

Google contends that, when creating a .CAP file, the Java Card converter does not create “an instruction” within the meaning of the claims of the ’520 patent. Rather, the converter itself statically initializes the array and stores the initialized data value into the .CAP file. (See Z. Chen, Java Card Technology for Smart Cards, section 3.3.2 (Prentice Hall 2000).)

7

Dated: February 21, 2012

MORRISON & FOERSTER LLP

By: /s/ Marc David Peters

MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[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.

8

Dated: February 21, 2012

KEKER & VAN NEST LLP

By: /s/ Eugene M. Paige

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]

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

Attorneys for Defendant
GOOGLE INC.

9

ATTESTATION

I, Marc David Peters, am the ECF User whose ID and password are being used to file this JOINT STATEMENT REGARDING ORACLE PRODUCTS PRACTICING PATENTS. In compliance with General Order 45, X.B., I hereby attest that Eugene M. Paige has concurred in this filing.

Date: February 21, 2012

/s/ Marc David Peters

10


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