On February 16 the USPTO issued a non-final rejection of all of the claims of the '104 patent that have been asserted by Oracle in this case. Oracle has until April 16 to file a response. Given the track record of Oracle's responses in these reexaminations, don't be surprised to see this reexamination result in a final rejection of all of the asserted claims of the '104 patent.

If that proves to be the case, then Oracle will be left with only the four claims of the '520 to assert at trial, and as we have pointed out before, the '520 claims are now facing limitation because of representations made by Oracle during the reexamination.

With these additional actions by the USPTO Google has also requested (723 [PDF; Text]) the parties be permitted to update their expert reports on invalidity. Clearly, Google wants to incorporate the findings of the USPTO into its expert report. While Google states that the reexaminations of the '702 and '205 patents have run their course, Oracle may yet file a response in each of those cases. If Oracle opposes this Google request, expert Oracle to indeed file those responses and seek to overcome the examiner's objections in each case.

It makes one wonder whether Oracle wouldn't be better off withdrawing its patent infringement claims and proceeding only on the copyright claims. The court would likely insist that Oracle withdraw the patent claims with prejudice, meaning Oracle could not reassert the seven patents originally asserted in this case, but that would not preclude Oracle from bringing another patent infringement suit in the future against Google ... provided it can find any of the Sun patents that are valid.

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

Docket

722 – Filed and Effective: 2/22/2012
Notice
Document Text: NOTICE by Google Inc., Oracle America, Inc. Regarding Reexamination of Patents-in-Suit (Francis, Mark) (Filed on 2/22/2012) (Entered: 02/22/2012)

723 – Filed and Effective: 2/22/2012
Letter
Document Text: Letter from Defendant Google Inc. Requesting Leave to Supplement Invalidity Expert Reports In View of Reexamination Proceedings. (Francis, Mark) (Filed on 2/22/2012) (Entered: 02/22/2012)

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Documents

722

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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

Case No. 3:10-cv-03561-WHA

Honorable Judge William Alsup

JOINT UPDATE REGARDING
REEXAMINATION OF PATENTS-IN-
SUIT

Oracle America, Inc. and Google Inc. jointly submit an update on the progress of the U.S. Patent and Trademark Office (“PTO”) in reexamining the patents-in-suit.

On February 7, 2012, the PTO issued a final office action rejecting all of the claims of U.S. Patent No. 5,966,702 asserted by Oracle in this case. A response by Oracle is due on April 7, 2012.

On February 16, 2012, the PTO issued an Action Closing Prosecution rejecting all of the claims of U.S. Patent No. 6,910,205 asserted by Oracle in this case. A response by Oracle is due on March 19, 2012.

On February 16, 2012, the PTO issued a non-final rejection of all of the claims of U.S. Patent No. RE 38,104 asserted by Oracle in this case. A response by Oracle is due by April 16, 2012.

1

Dated: February 22, 2012

MORRISON & FOERSTER LLP

By: /s/ Daniel P. Muino

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.

2

Dated: February 22, 2012

KEKER & VAN NEST LLP

By: /s/ Scott T. Weingaertner

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.

3

ATTESTATION

I, Mark H. Francis, am the ECF User whose ID and password are being used to file this JOINT UPDATE REGARDING REEXAMINATION OF PATENTS-IN-SUIT. In compliance with General Order 45, X.B., I hereby attest that Daniel P. Muino has concurred in this filing.

Date: February 22, 2012

/s/ Mark H. Francis

4

723

[King & Spalding letterhead]

February 22, 2012

VIA E-FILING

The Honorable William Alsup
United States District Court, Northern District of California
450 Golden Gate Avenue
San Francisco, California 94102

Re: Oracle America, Inc. v. Google Inc., No. 3:10-CV-03561-WHA (N.D. Cal.)

Dear Judge Alsup:

Google requests that the Court give leave to update the parties’ expert reports on the invalidity of U.S. Patent Nos. 5,966,702 (“‘702 Patent”) and 6,910,205 (“‘205 patent”) in view of the recent developments in the reexaminations of these patents. (Dkt. No. 722.)

On January 4, 2012, the Court invited the parties to update their invalidity expert reports for each of the patents where the “reexaminations have run their course before the examiners.” (Dkt. No. 676 at 4.) That Order invited supplementation of invalidity expert reports in view of final office actions in the ex parte reexaminations of the ‘520 and ‘476 patents, and in view of an action closing prosecution in the inter partes reexamination of the ‘720 patent. (Id.)

Since the Court’s order, two more reexaminations have run their course. Specifically, the U.S. Patent and Trademark Office (“PTO”) has issued a final office action rejecting all asserted claims of ‘702 patent in the ex parte reexamination of that patent. (Dkt. No. 722.) Likewise, the PTO has issued an action closing prosecution rejecting all asserted claims of the ‘205 patent in the inter partes reexamination of that patent. (Id.)

The Court’s rationale in allowing supplementation of expert reports now applies to the reexaminations of these two patents as well. Specifically, at least some of the prior art cited in

The Honorable William Alsup
February 22, 2012
Page 2

each of the reexaminations for the ‘702 and ‘205 patents was not before the PTO during the initial examinations and the PTO has now rejected the asserted claims of both patents and closed prosecution. (See Dkt. No. 676 at 4.)

Therefore, Google hereby requests leave for the parties to update their expert reports on the invalidity of the ‘702 and ‘205 patents.

Respectfully submitted,

/s/ Scott T. Weingaertner

Scott T. Weingaertner
Counsel for Defendant Google Inc.