In one more order from the court yesterday Judge Alsup is clearly considering whether the trial needs to be delayed to allow the USPTO to complete the reexaminations of the Oracle patents. (757 [PDF; Text]) Judge Alsup has directed Oracle to "state a clear answer" to this question:
[G]iven that the examiners have issued final rejections on patents ’720, ’702, ’476, and ’205, and Oracle has only withdrawn
the ’476 patent, but still wishes to go to trial on patents ’720, ’702, ’205, ’520, and ’104, and
Oracle still wishes to have an instruction that those patents must be presumed valid and can only
be found invalid by clear and convincing evidence, would it be better to postpone trial until after
final decisions by the PTO on administrative appeal?
Judge Alsup also asks Oracle to answer this question:
[T]o avoid this problem,
will Oracle irrevocably withdraw with prejudice patents ’720, ’702, and ’205?
The judge has also invited Google to respond, although it is the Oracle answers that will be the most critical.
Clearly Judge Alsup is looking to streamline the case, and he has decided to do so by forcing Oracle's hand:
- Persist in asserting all of these patents, and you are looking at delaying the trial until at least late in the year.
- Drop three of the remaining five asserted patents (with prejudice, meaning they cannot be reasserted again later), and we will try to stay on schedule.
With respect to the two remaining patents, '104 and '520, keep in mind that the '104 patent has also received a non-final rejection, and any decision to delay could result in a final rejection and the loss of these claims, as well. Further, because of admissions made by Oracle during the reexamination of the '520 patent, Google will argue that those admissions limit the scope of the '520 claims, increasing the likelihood that Google does not infringe the claims.
Given the problems Oracle already faces with their expert's damages report, they may want to seriously rethink how this whole lawsuit is going to play out. Fortunately for Oracle they will likely have the court's decision on the damages report before they have to respond to this order.
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Docket
03/01/2012 - Set/Reset Deadlines as to 718 MOTION to Strike Portions of
Third Expert Report by Iain Cockburn and Expert Report by Steven Shugan;
Memorandum of Points and Authorities in Support Thereof. Motion Hearing
set for 3/7/2012 07:30 AM in Courtroom 8, 19th Floor, San Francisco
before Hon. William Alsup. (dt, COURT STAFF) (Filed on 3/1/2012)
(Entered: 03/01/2012)
03/01/2012 - 757 -
SUPPLEMENTAL ORDER REGARDING STATEMENT ON REEXAMINATIONS re 726 Order.
Signed by Judge Alsup on March 1, 2012. (whalc1, COURT STAFF) (Filed on
3/1/2012) (Entered: 03/01/2012)
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Document
757
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
SUPPLEMENTAL ORDER
REGARDING STATEMENT ON
REEXAMINATIONS
______________________________________
Oracle should state a clear answer to the following question: given that the examiners
have issued final rejections on patents ’720, ’702, ’476, and ’205, and Oracle has only withdrawn
the ’476 patent, but still wishes to go to trial on patents ’720, ’702, ’205, ’520, and ’104, and
Oracle still wishes to have an instruction that those patents must be presumed valid and can only
be found invalid by clear and convincing evidence, would it be better to postpone trial until after
final decisions by the PTO on administrative appeal? Also please answer: to avoid this problem,
will Oracle irrevocably withdraw with prejudice patents ’720, ’702, and ’205? The views of
Google on these questions will also be appreciated. Please provide responses by NOON ON
MARCH 9, 2012 , as part of the submission regarding the reexaminations.
IT IS SO ORDERED.
Dated: March 1, 2012.
/s/ William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE
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