As we anticipated in our earlier story, Google argues it is disingenuous for Oracle to claim surprise at the court's claim construction of the term "runtime." As Google points out, Oracle could have (and should have) followed the same approach as Google with respect to the construction of "runtime," i.e., prepare one argument using Google's construction and an alternative argument using Oracle's. But Oracle chose to ignore the Google proposed construction, and it did so at its peril. It should not now be rewarded for its failure and laziness.

Google also points to the fact that allowing such an amendment at this late stage would be an exceptional act by the court. Piled upon all of the other exceptional acts of the court that Oracle seems to expect by its refusal to follow the court's instructions, Oracle comes across as the delinquent asking for just one more chance.

Not surprisingly, Oracle responds (765 [PDF; Text]) to the Google letter in typical fashion by saying Google doesn't understand and is misconstruing the facts and Oracle's argument. And in typical fashion, Oracle ignores the heart of the Google opposition, i.e., that there is no excuse for Oracle waiting until now to assert this alternative infringement contention.

Intriguingly, while in the Van Nest letter Google offers an alternative relief -- that if Oracle is granted the right to amend "that Google be granted leave to supplement its invalidity contentions and expert reports in response" -- Oracle is silent on that, addressing only the main alternative relief Google asked for -- that Oracle's motion be denied.

Oracle first needs to address whether it intends to assert the '205 patent despite the fact that all of the asserted claims of '205 have been rejected in reexamination. If it persists, then the court should stay this proceeding pending the outcome of all of the reexaminations. If Oracle wises up and realizes it is beating a dead horse here, then this whole argument becomes moot. In any case, there is no reasonable basis for the court to grant Oracle's request to amend.

In an unrelated order (766 [PDF; Text]) Judge Alsup is asking the parties to explain how the new Cockburn damage numbers relate to the numbers in the second Cockburn damages report.

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

Docket

03/02/2012 - 758 - Letter from Robert A. Van Nest Opposing Oracle's Request for Leave to Amend its '205 Patent Infringement Contentions. (Francis, Mark) (Filed on 3/2/2012) (Entered: 03/02/2012)

03/02/2012 - 759 - RESPONSE (re 734 MOTION to Strike EXCLUDE PORTIONS OF THE SUPPLEMENTAL EXPERT REPORT OF DR. ALAN J. COX ) filed by Google Inc.. (Van Nest, Robert) (Filed on 3/2/2012) (Entered: 03/02/2012)

03/02/2012 - 760 - Declaration of Reid P. Mullen in Support of 759 Opposition/Response to Motion to Exclude Portions of the Supplemental Expert Report of Dr. Alan J. Cox filed by Google Inc.. (Attachments: # 1 Exhibit A)(Related document(s) 759 ) (Van Nest, Robert) (Filed on 3/2/2012) (Entered: 03/02/2012)

03/02/2012 - 761 - Administrative Motion to File Under Seal filed by Google Inc.. (Van Nest, Robert) (Filed on 3/2/2012) (Entered: 03/02/2012)

03/02/2012 - 762 - RESPONSE (re 729 MOTION to Strike PORTIONS OF GREGORY LEONARDS SUPPLEMENTAL REPORT ) filed by Google Inc.. (Van Nest, Robert) (Filed on 3/2/2012) (Entered: 03/02/2012)

03/02/2012 - 763 - Declaration of David Zimmer in Support of Google Inc.'s Oppostion to Oracle America, Inc.'s Motion to Strike Portions of Gregory Leonard's Supplemental Expert Report filed by Google Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit E(1), # 7 Exhibit F, # 8 Exhibit G)(Van Nest, Robert) (Filed on 3/2/2012) (Entered: 03/02/2012)

03/02/2012 - 764 - Declaration of GREGORY LEONARD in Support of Google's Opposition to Oracle's Motion to Strike Portions of Gregory Leonard's Supplemental Report filed by Google Inc.. (Van Nest, Robert) (Filed on 3/2/2012) (Entered: 03/02/2012)

03/02/2012 - 765 - Letter from Michael A. Jacobs Re Oracle Request for Leave to File Motion to Amend Oracle's 205 Patent Infringement Contentions and Report. (Jacobs, Michael) (Filed on 3/2/2012) (Entered: 03/02/2012)

3/02/2012 - 766 - ORDER REGARDING DAUBERT HEARING ON MARCH 7. Signed by Judge Alsup on March 2, 2012. (whalc1, COURT STAFF) (Filed on 3/2/2012) (Entered: 03/02/2012)

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

Documents

758

[Keker & Van Nest LLP Letterhead]

March 2, 2012

VIA E-FILING

The Honorable William Alsup
United States District Court, Northern District of California
[address]

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

Dear Judge Alsup:

Google opposes Oracle's eleventh-hour request for leave to inject a new infringement theory and submit a supplemental expert report with respect to the `205 patent. (Dkt. No. 755.) Oracle's position is unclear. It first claims that "no changes" to its theories of infringement "are intended" but later notes that "no change is proposed for the second infringement theory" -- implicitly conceding that the "first" theory will change. In fact, Oracle's amended contentions and supplemental report represent a marked shift in its allegations. As an excuse for this shift, Oracle points to the Court's recent construction. That construction provides no basis to smuggle a completely new infringement theory into the case at this late stage.

Oracle's infringement theory as to the `205 patent has always been directed at the time when an application is running, which Oracle has argued includes the time when the application is loaded into memory upon launch. Oracle alleged that the accused "dexopt" process replaces certain virtual machine instructions of an application while it is running in the Dalvik virtual machine. Oracle now wants to assert for the first time a different infringement theory directed at the replacement of certain virtual machine instructions at the time when an application is first installed on a device. That process could happen hours, days, or weeks before an application is actually executed in the Dalvik virtual machine. Oracle further argues, again for the first time, that installation qualifies as "runtime" (as construed by this Court) because dexopt is allegedly

The Honorable William Alsup
March 2, 2012
Page 2

initially launched by some peripheral virtual machine instructions in the Android operating system (even though dexopt itself is native machine code and has no virtual machine instructions). This new theory is a dramatic departure from Oracle's previous position and contradicts Oracle's earlier contentions, in support of which Oracle's expert argued in his report and at deposition that dexopt runs while an application is launched by a user.

Oracle cannot justify its failure to disclose this new theory during discovery. Over a year ago, Google's Patent L.R. 4-2 disclosure included a proposed construction of "runtime" ("during execution of the virtual machine instructions") that is nearly identical to the Court's recent construction ("during execution of one or more virtual machine instructions"). Although the parties selected other terms for the initial Markman briefing, Oracle was well aware of Google's construction of "runtime" and chose to ignore it. In the expert reports served over six months ago, Google's non-infringement expert report took into account both parties' proposed constructions of "runtime," yet Oracle's expert report (and reply report) never addressed Google's proposed construction, and never raised this new theory. Indeed, Oracle withheld this new infringement theory against dexopt until this week - over a month after the Court issued its construction. There is no merit to Oracle's feigned surprise by the Court's construction.

This Court has already properly stricken Oracle's prior, late-hour attempts to introduce new theories that it failed to disclose during discovery. (See Dkt. Nos. 464; 512.) The Patent Local Rules requires leave of Court based on good cause shown, which Oracle has not shown. See Patent L.R. 3-6. As often explained by this Court, "[i]n contrast to the more liberal policy for amending pleadings, `the philosophy behind amending claim charts is decidedly conservative, and designed to prevent the shifting sands approach to claim construction.'" Kilopass Tech., Inc. v. Sidense Corp., No. 10-cv-02066, 2011 U.S. Dist. LEXIS 126837, at *3-4

The Honorable William Alsup
March 2, 2012
Page 3

(N.D. Cal. Nov. 2, 2011) (emphasis added) (quoting LG Elecs. Inc. v. Q-Lity Computer Inc., 211 F.R.D. 360, 367 (N.D. Cal. 2002) (quoting Atmel Corp. v. Information Storage Devices, Inc., No. 95-cv-1987, 1998 U.S. Dist. LEXIS 17564 at *7 (N.D. Cal. Nov. 5, 1998))). "The patent local rules were `designed to require parties to crystallize their theories of the case early in the litigation and to adhere to those theories once they have been disclosed.'" Id. (quoting O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 n. 12 (Fed. Cir. 2006) (emphasis added) (quoting Nova Measuring Instruments Ltd. v. Nanometrics, Inc., 417 F. Supp. 2d 1121, 1123 (N.D. Cal. 2006))). Courts are determined to "ensure that litigants put all their cards on the table up front." Atmel, 1998 U.S. Dist. LEXIS 17564 at *7-8. If Oracle had multiple dexopt infringement theories, it should have disclosed all of them to Google long ago.

If, however, the Court grants Oracle leave to amend its contentions and introduce its new theory, it would necessarily implicate similar "install time" implementations in the prior art -- including Sun's own Java platform, and publications by James Gosling, Stavros Macrakis, L.P. Deutsch & Allan M. Schiffman -- that Google did not identify in response to Oracle's previous theory. Google prefers not to submit new invalidity contentions and expert reports at this stage, especially for claims found to be invalid in the PTO's recent Action Closing Prosecution on the `205 patent. However, Google should not be precluded from supplementing its invalidity contentions if Oracle is allowed to introduce new infringement theories. Google respectfully requests that Oracle's request be denied and, in the alternative, that Google be granted leave to supplement its invalidity contentions and expert reports in response.

Sincerely,

/s/ Robert A. Van Nest

765

[Morrison & Foerster Letterhead]

March 2, 2012

Hon. William Alsup
United States District Court, Northern District of California
[address]

Re: Oracle America, Inc. v. Google, Inc., Case No. 3:10-cv-03561-WHA

Dear Judge Alsup:

Oracle has just received Google’s letter in opposition to Oracle’s request for leave to file a motion to amend its infringement contentions and report with respect to the ’205 patent. Google’s opposition contains a number of misleading or false characterizations of Oracle’s original infringement contentions, Oracle’s proposed supplementation, and Prof. Mitchell’s reports and testimony. Google’s argument is not supported by any citations to those materials.

Here are just two examples. First, Google argues that “Oracle’s infringement theory as to the ‘205 patent has always been directed at the time when an application is running, which Oracle has argued includes the time when the application is loaded into memory upon launch.” That is false. With respect to the “generating, at runtime” limitation, which is all that Oracle’s motion is about, Oracle’s infringement theory has always been directed to the time when Android’s dexopt is running.

Second, Google argues that Oracle’s proposed supplementation “is a dramatic departure from Oracle’s previous position and contradicts Oracle’s earlier contentions, in support of which Oracle’s expert argued in his report and at deposition that dexopt runs while an application is launched by a user.” That is false. Oracle’s original eight-page

Hon. William Alsup
March 2, 2012
Page Two

infringement chart for the “generating, at runtime” element stated (as did infringement expert Prof. Mitchell) that the infringing optimizations “are done by the dexopt command, either in the build system or by the installer.” (Oracle 4/1/11 Infringement Contentions Exhibit B-2 at 12; Mitchell Opening Report ¶ 411 (emphasis added).) When Oracle adds in its two- paragraph supplementation that dexopt runs while the virtual machine instructions of Installer.java are executing, it is anything but a dramatic departure from its previous position—it is the same as Oracle’s previous position.

Oracle respectfully requests that the Court grant leave for Oracle to file its motion to amend, so that the Court may make a decision on a full record, rather than through the limited view offered by the précis letter process.

Respectfully submitted,

/s/ Michael A. Jacobs

Michael A. Jacobs

766

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 REGARDING DAUBERT
HEARING ON MARCH 7

For the hearing on March 7, please be prepared to address the following. For the damages time period used in the third report, how do the new numbers compare to the old numbers in the second report? Walk through each step used by Dr. Cockburn to adjust and to apportion the 2006 offer to the claims/patents in suit. The main criticisms can then be addressed within the time limit for the hearing.

IT IS SO ORDERED.

Dated: March 2, 2012.

/s/ William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE