decoration decoration
Stories

GROKLAW
When you want to know more...
decoration
For layout only
Home
Archives
Site Map
Search
About Groklaw
Awards
Legal Research
Timelines
ApplevSamsung
ApplevSamsung p.2
ArchiveExplorer
Autozone
Bilski
Cases
Cast: Lawyers
Comes v. MS
Contracts/Documents
Courts
DRM
Gordon v MS
GPL
Grokdoc
HTML How To
IPI v RH
IV v. Google
Legal Docs
Lodsys
MS Litigations
MSvB&N
News Picks
Novell v. MS
Novell-MS Deal
ODF/OOXML
OOXML Appeals
OraclevGoogle
Patents
ProjectMonterey
Psystar
Quote Database
Red Hat v SCO
Salus Book
SCEA v Hotz
SCO Appeals
SCO Bankruptcy
SCO Financials
SCO Overview
SCO v IBM
SCO v Novell
SCO:Soup2Nuts
SCOsource
Sean Daly
Software Patents
Switch to Linux
Transcripts
Unix Books
Your contributions keep Groklaw going.
To donate to Groklaw 2.0:

Groklaw Gear

Click here to send an email to the editor of this weblog.


To read comments to this article, go here
Oracle Asks for a Fast Trial in the Spring; Google Wants the Fall ~ pj
Friday, March 09 2012 @ 10:15 PM EST

Today was Oracle's deadline to tell the court what it would do about the Oracle patents the USPTO has recently found invalid. Both parties were asked by the judge to let him know together what impact on the trial schedule the USPTO decisions would make. And his question was a bit more pointed:
[G]iven that the examiners have issued final rejections on patents ’720, ’702, ’476, and ’205, and Oracle has only withdrawn the ’476 patent, but still wishes to go to trial on patents ’720, ’702, ’205, ’520, and ’104, and Oracle still wishes to have an instruction that those patents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?
The judge gave Oracle a specific choice:
[T]o avoid this problem, will Oracle irrevocably withdraw with prejudice patents ’720, ’702, and ’205?
Well, not exactly, is Oracle's answer. It does want to go forward in the spring to trial, and if the patents found invalid in final decisions by the USPTO are still in the same category at time of trial, despite Oracle appealing them, Oracle will drop them from this litigation. That's a pretty big if, and not really a direct answer to the judge's question. Where's the irrevocable part?

The other problem is, the '104 patent hasn't gotten a final decision by the USPTO, unlike the others, not even leaving appeals out of the picture. So what should they do, wait or go forward, and if so how? Google, which filed its answer separately, because Oracle refused to tell Google what Oracle's response would be in advance, says a trial in the fall makes more sense. What's the point of going to all the effort of a trial over the '104 patent, it asks, when no one yet knows what the final decision by the USPTO will be?

We also have the parties' trial briefs on the copyright issues.

Jump To Comments

The filings:

03/09/2012 - 777 - Statement re 726 Order, 757 Order Oracle Statement Regarding Patent Reexaminations by Oracle America, Inc.. (Jacobs, Michael) (Filed on 3/9/2012) (Entered: 03/09/2012)

03/09/2012 - 778 - TRIAL BRIEF re Copyright Liability by Google Inc.. (Van Nest, Robert) (Filed on 3/9/2012) (Entered: 03/09/2012)

03/09/2012 - 779 - Statement re 726 Order Regarding Re-Examination Proceedings by Google Inc.. (Van Nest, Robert) (Filed on 3/9/2012) (Entered: 03/09/2012)

03/09/2012 - 780 - Brief re 708 Order, 754 Order ORACLE'S MARCH 9, 2012 BRIEF REGARDING COPYRIGHT ISSUES filed byOracle America, Inc.. (Related document(s) 708 , 754 ) (Jacobs, Michael) (Filed on 3/9/2012) (Entered: 03/09/2012)

I haven't had a chance to read the copyright trial briefs yet, so I'll do that separately later, but there's no reason for you to have to wait to read the filings.

But going back to the question the judge asked, the question Oracle was supposed to answer was whether it was willing to drop the invalid patents with prejudice -- meaning forever and ever, amen, as regards Google -- or accept a trial delay so any appeals at the USPTO could be finalized first. Oracle chooses speed, and it's willing to make some concessions, sorta, but with some elaborate contingency language:

The Court has asked Oracle to address whether it would be best to postpone trial until after final decisions by the PTO on administrative appeal, or alternatively whether Oracle will withdraw with prejudice the ’720, ’205, and ’702 patents in light of the “final” office actions rejecting the asserted claims of those patents.

Oracle’s highest priority is to bring this case to trial as soon as possible, and within the time period recently suggested by the Court (mid-April to mid-June, 2012). Accordingly, if the case goes to trial this spring, Oracle will withdraw from the litigation with prejudice each claim of the ’720, ’205, and ’702 patents asserted against Google that remains rejected at the time of trial, and proceed with the copyright case, the ’520 patent, the ’104 patent, and any asserted claims of the other three patents that are confirmed by the PTO.

In other words, if there is a delay for any reason and the trial doesn't happen in the spring, these patents could reappear. That's how I read it, reading the language with my Boies Schiller virtualization cap on. Also, if an appeal finds them valid after all, or parts of them, they are back in play, I think. They'll give the patents up, in other words, the ones the USPTO gave a final rejection to, as long as they are worthless, but if they are worth money (or possible money in the case of a trial delay), then they don't give them up with prejudice.

Plus the '104 patent was preliminarily found invalid by the USPTO, but Oracle wants to go to trial with that up in the air. They are appealing the USPTO decisions on the final rejections too, but rather than wait, Oracle agrees to drop the patents finally rejected that are at the time of trial still going through the appeal process and agrees that the jury can hear about the USPTO matters.

But it asks the judge to "encourage" Google drop its invalidity defense that Oracle claims the USPTO didn't accept regarding the '520 patent. Wow. That's nervy. The one patent still fully standing and it wants Google to accept the decision of the USPTO as final, while Oracle gets to continue to appeal the invalidity decisions on all the rest. Imagine if all the stars were to align just right Oracle's way, the pickle that would leave Google in, should it accept this encouragement.

I don't think so.

Google tells the court that Oracle refused to tell Google in advance what its decision was, so Google had to file its own response without knowing what Oracle's would say. Remember the judge asked them to provide him "a candid discussion". Well, Oracle apparently didn't want to discuss. Google provides the details:

The Court’s February 24 Order (Dkt. No. 726) directed the parties to confer and submit a statement on the effect that the Patent and Trademark Office’s rejections will have upon the shape of trial ....

On March 1, the Court entered a second Order (Dkt. No. 757) including specific questions that it wished the parties to address. Oracle did not want to share with Google the positions it intended to take in its March 9 statement in advance of the deadline to file responses to the Court’s Order. Google therefore files this separate statement. Google reserves the right to respond to Oracle’s submission.

No kidding. Meanwhile, Google points out the futility of going forward on the '104 patent until more is known:
Given the multiple final rejections by the PTO, a patent trial in its present form will require the Court, a jury, and dozens of witnesses to devote significant time and resources for little purpose. The only asserted patent to survive the reexamination process to date is the ‘520 patent; however, Oracle has attributed to this patent the least value of any of the seven patents originally asserted. (See Exhibit 18a to Iain Cockburn’s Third Damages Report (ascribing to the ‘520 patent a 0.3% apportionment percentage).) The ‘104 patent is the only other patent without a final rejection, but it currently stands rejected and a response from Oracle is due on April 16, 2012. Even if the jury was to conclude that the ‘104 patent is valid, Oracle has admittedly failed to mark with respect to that patent, which expires on December 12, 2012, so the potential damages period is relatively narrow and the propriety of an injunction questionable. Furthermore, any amendment to the asserted claims in the re-examination will eliminate past damages, leaving little to no remaining damages period given the impending expiration date. Finally, while Oracle may attempt to prolong the reexamination proceedings through lengthy appeals to the Board of Patent Appeals and the Federal Circuit, it is unlikely to overcome the examiners’ rejections. Proceeding to trial on these patents therefore would be a waste of jury, judicial and party resources.

In view of the foregoing, and presuming Oracle is intent on pursuing patent claims that stand finally rejected in reexamination, Google proposes that the trial proceed no sooner than the fall. This plan is consistent with the Court’s suggestion at the December 21, 2011 pre-trial conference. It would also allow time for the single remaining non-final reexamination proceeding on the ‘104 patent to proceed to a final rejection, an amendment of the claims (thereby eliminating past damages and giving rise to intervening rights), or a confirmation of patentability.

Oracle wants every advantage, and of course that is their legal right to try for it. But let's see what the judge finds reasonable. The bottom line, however, despite all the Oracle claims, is that at the moment, it has only one patent fully standing, and the most interesting detail Google reveals is that it's the least valuable patent, according to Oracle's own damages expert. No wonder Oracle wants Google to drop its invalidity defense on the one remaining patent. Its case is going down the toilet.

Of course, we don't know yet if Oracle has much of a damages expert. We await the judge's decision on Google's motion to strike most of his numbers in his third try at coming up with a damages report the judge would accept. He found Oracle's proposed numbers outrageously high.

Here are the two statements by the parties, first Oracle's and then Google's, as text, minus one chart which I'll plug in next - done:

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

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, phone, fax]

BOIES, SCHILLER & FLEXNER LLP
DAVID BOIES (Admitted Pro Hac Vice)
[email]
[address, phone fax]
STEVEN C. HOLTZMAN (Bar No. 144177)
[email]
[address, phone fax]

ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[email]
DEBORAH K. MILLER (Bar No. 95527)
[email]
MATTHEW M. SARBORARIA (Bar No. 211600)
[email]
[address, phone, fax]

Attorneys for Plaintiff
ORACLE AMERICA, INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

__________________

ORACLE AMERICA, INC.

Plaintiff,

v.

GOOGLE INC.

Defendant.

_________________

Case No. CV 10-03561 WHA

ORACLE’S STATEMENT
REGARDING PATENT
REEXAMINATIONS

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

Pursuant to the Court's Orders of February 24 and March 1, 2012, Oracle America, Inc. hereby provides (1) a summary of the current status of the patent reexamination proceedings, (2) Oracle's proposal for withdrawing the '720, '205, and '702 patents should those patents continue to stand rejected at the time of a spring trial, and (3) a discussion of why the trial should not be delayed to await further office action in the '104 patent reexamination.

I. STATUS OF THE REEXAMINATIONS

As of today, the PTO has confirmed the patentability of the asserted claims of the '520 patent, tentatively rejected the asserted claims of the '104 patent, and issued final office actions rejecting the asserted claims of the '720, '205, and '702 patents:

Patent No.
(type of
reexam)
Office
Action
Oracle
Response
Google
Response
Final
Office
Action
Further
Oracle
Response
Asserted
Claims
Subject To
Reexam
Status
6,061,520
(ex parte)
6/23/118/23/11n/an/an/a All (1, 8,
12, 20)
Claims Confirmed
Patentable
RE38,104
(ex parte)
2/16/124/16/12n/a -- All (11, 27,
29, 39, 40,
41)
Claims Preliminarily
Rejected

Further response from
Oracle due on 4/16/12
7,426,720
(inter partes)
5/5/117/5/118/4/1111/18/11 12/19/11All (1, 6, 10,
19, 21, 22)
Claims Rejected
Awaiting further PTO
action
6,910,205
(inter partes)
8/19/1110/19/1111/18/11 2/16/12 3/16/12 All (1, 2)Claims Rejected
Further response from
Oracle due on 3/16/12
5,966,702
(ex parte)
6/6/119/6/11n/a 2/7/124/7/12All
(1, 6, 7, 12,
13, 15, 16)
Claims Rejected
Further response from
Oracle due on 4/7/12

II. ORACLE WILL WITHDRAW THE ’720, ’205, AND ’702 PATENTS IF
THEY REMAIN REJECTED AT THE TIME OF A SPRING TRIAL

The Court has asked Oracle to address whether it would be best to postpone trial until after final decisions by the PTO on administrative appeal, or alternatively whether Oracle will withdraw with prejudice the ’720, ’205, and ’702 patents in light of the “final” office actions rejecting the asserted claims of those patents. Oracle’s highest priority is to bring this case to trial as soon as possible, and within the time period recently suggested by the Court (mid-April to mid-June, 2012).

1

Accordingly, if the case goes to trial this spring, Oracle will withdraw from the litigation with prejudice each claim of the '720, '205, and '702 patents asserted against Google that remains rejected at the time of trial, and proceed with the copyright case, the '520 patent, the '104 patent, and any asserted claims of the other three patents that are confirmed by the PTO. It would be unjust to delay the trial of Oracle's '520 patent, '104 patent, and copyright claims any further. Oracle's copyright claims are independent of the patent reexamination proceedings and ready for trial. The '520 patent claims have been confirmed and are ready for trial, and, as discussed below, it would be unreasonable to defer trial until there is some further action in the '104 patent reexamination.

Notwithstanding its proposal to withdraw the claims of the '720, '205 and '702 patents that remain rejected as of the time of a spring trial, Oracle notes that the reexaminations of these patents have not yet reached final resolution at the examiner level. Oracle has filed a request for reconsideration of the '720 patent rejections and is awaiting further action by the examiner. Oracle expects to file requests for examiner reconsideration of the '205 and '702 patent rejections, which are due on March 16 and April 7, respectively. Oracle has substantial arguments supporting reconsideration, raising a credible prospect that one or more of the rejections will be reversed by the examiners. Even if Oracle's requests for reconsideration are denied, Oracle can appeal to the Board of Patent Appeals and Interferences, and then to the Federal Circuit. The reexaminations of these patents are not "final" and it will take some time before the PTO ends the reexaminations by issuing a reexamination certificate. Oracle reiterates its objection to allowing information about these non-final reexaminations to be presented to the jury at trial because it is more prejudicial than probative. (See ECF No. 498.)

Oracle acknowledges, however, that the Court has ruled otherwise, and will permit the jury to learn of the examiner's rejections of the asserted claims of the '720, '205, and '702 patents over Oracle's objections. Particularly given that in many cases the examiner declined to adopt Google's theories of invalidity asserted in the litigation, evidence of the rejections is not dispositive and does not relieve Google of its burden to prove invalidity by clear and convincing evidence unless and until there is a reexamination certificate, which will likely take years.

2

Nevertheless, to achieve Oracle's goal of bringing this case suggested timeframe (mid-April to mid-June, 2012), Oracle will agree to withdraw with prejudice any of the '720, '205, and '702 patent claims asserted against Google in this litigation that remain rejected at that time. This approach will streamline the trial and reduce the burden on the jury.

And, in fairness and to further reduce the burden on the jury, the Court should encourage Google to withdraw with prejudice its invalidity defenses that failed in the reexaminations. Google's arguments against the '520 patent could not satisfy the much lower burden of proof in reexaminations. Now that the presumption of validity of the '520 patent has been enhanced by the reexamination result, Google will not be able to overcome it, and it does not make sense to spend time on such issues. Google should agree to streamline the trial by accepting its losses.

III. THE CASE SHOULD NOT BE STAYED PENDING ISSUANCE OF A
FINAL OFFICE ACTION IN THE '104 PATENT REEXAMINATION

The Court has asked the parties to address whether the trial should be delayed until a final office action has issued in the '104 patent reexamination. The trial should not be so delayed. First, a delay pending a further office action could extend a year or more. Oracle's response to the examiner's non-final office action is due on April 16, 2012. When the examiner might issue the next office action (which could be another non-final action) is speculative at best. The '104 reexamination has proceeded much more slowly than the other reexaminations. The PTO took eleven months to issue an initial non-final office action after ordering reexamination of the '104 patent, as opposed to two-and-a-half months for the '720 patent. There is no telling when there will be a final office action in the '104 reexamination (whether confirming or rejecting claims).

Second, Oracle has strong arguments supporting the validity of the '104 patent, and Oracle believes that the examiner will withdraw his non-final rejections. To be sure, this would strengthen Oracle's litigation position were trial to follow withdrawal of the rejections, but Oracle would prefer to present its case to the jury sooner, without that confirmation, than wait an indefinite period for it to come through. The following chart shows the examiner's preliminary rejections, all of which are based on two conclusions, only one of which resembles Google's invalidity theories in the litigation:

3

'104 Claim Google's Litigation Contentions PTO Non-Final Rejections
11 Anticipated by Gries
Anticipated by Chaitin
Rendered Obvious by Davidson/AT&T
Improperly broadeded under § 251
Anticipated by Gries
Rendered obvious by Chaitin
27 Anticipated by Gries
Rendered Obvious by Davidson/AT&T
Improperly broadeded under § 251
Rendered obvious by Chaitin
29 Anticipated by Gries
Rendered Obvious by Davidson/AT&T
Improperly broadeded under § 251
Rendered obvious by Chaitin
39 Anticipated by Gries
Rendered Obvious by Davidson/AT&T
Improperly broadeded under § 251
Anticipated by Gries
Rendered obvious by Chaitin
40 Anticipated by Gries
Rendered Obvious by Davidson/AT&T
Improperly broadeded under § 251
Anticipated by Gries
Rendered obvious by Chaitin
41 Anticipated by Gries
Rendered Obvious by Davidson/AT&T
Improperly broadeded under § 251
Anticipated by Gries
Rendered obvious by Chaitin

Oracle believes that the examiner’s non-final rejections will be withdrawn in the next action. The anticipation rejections over the Gries textbook refer to a portion of the book that Google’s expert testified at deposition did not disclose the claim limitations. In fact, Gries does not disclose anything not already disclosed in the “Background of the Invention” section of the ’104 patent.

The examiner’s rejection of the asserted claims as being rendered obvious by Chaitin violates basic tenets of the law of obviousness. Chaitin discloses an optimizing compiler that takes in source code and outputs native machine code for direct execution on a hardware processor. Nothing in Chaitin or the prior art would suggest Chaitin’s compiler should be so much altered that it instead accepts intermediate form object code, partially transforms it through symbolic reference resolution, and no longer generates native machine code, but instead executes the transformed intermediate form object code with a virtual machine or interpreter. The examiner’s obviousness rejection will not stand because it is based on changing the principle of operation of Chaitin and rendering it unsatisfactory for its stated, intended purpose (generating efficient native machine code that “would be competitive with hand coded assembly language

4

whereby there would no longer be any significant incentive to do programming at the machine language level"). Incidentally, when ordered by the Court to identify its two best anticipation references, Google chose Gries and Davidson/AT&T (an obviousness combination) over Chaitin.

Third, as noted above, there is almost a complete mismatch between Google's litigation defenses and the PTO's non-final rejections. Essentially, the PTO has thrown out almost all of Google's invalidity contentions, thus strengthening Oracle's position in the litigation if and when Oracle demonstrates that the grounds preliminarily adopted by the examiner are unfounded. The examiner expressly stated that the Chaitin patent did not anticipate any claims of the '104 patent, and did not adopt Google's Davidson/AT&T or Section 251 arguments.

Fourth, fairness requires not waiting for further action in the '104 reexamination. Throughout this case, the Court required Oracle to narrow the claims for trial and bear the risk that the PTO would later confirm the patentability of claims that Oracle withdrew. That has, in fact, happened--the PTO confirmed the patentability of withdrawn Claims 8, 9, 17, and 18 of the '476 patent. The Court should likewise require Google to bear the risk of its reexamination choices. By waiting six months to request reexamination of the '104 patent, Google took the risk that the reexamination would not be sufficiently advanced by the time of trial. Google gambled and lost: the '104 reexamination has only inched along, whereas the case is ready for trial and has been for some time.

The best choice is to try the '104 patent this spring, along with the '520 patent and copyright case. Google may present its case for invalidity of the '520 patent, though, as noted above, the Court should encourage it not to because the '520 claims were confirmed over all of Google's invalidity arguments. Google may present its case for invalidity of the '104 patent, very little of which has anything to do with the non-final rejection in the reexamination. The parties are as ready to try the '104 patent as they are the '520 patent. It does not make sense to delay everything until some indeterminate future time when the examiner issues the next office action in the '104 reexamination, particularly because there is no guarantee that that action will be a final action. The Court should take advantage of the existing opportunity to try the case to final judgment in April-June 2012.

5

Dated: March 9, 2012

MICHAEL A. JACOBS
MARC DAVID PETERS
DANIEL P. MUINO
MORRISON & FOERSTER LLP

By: /s/ Michael A. Jacobs

Attorneys for Plaintiff
ORACLE AMERICA, INC.

6

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

ROBERT A. VAN NEST (SBN 84065)
[email]
CHRISTA M. ANDERSON (SBN 184325)
[email]
KEKER & VAN NEST LLP
[address, phone, fax]

DONALD F. ZIMMER, JR. (SBN 112279)
[email]
CHERYL A. SABNIS (SBN 224323)
[email]
KING & SPALDING LLP
[address, phone, fax]

SCOTT T. WEINGAERTNER (Pro Hac Vice)
[email]
ROBERT F. PERRY
[email]
BRUCE W. BABER (Pro Hac Vice)
[email]
KING & SPALDING LLP
[address, phone, fax]

IAN C. BALLON (SBN 141819)
[email]
HEATHER MEEKER (SBN 172148)
[email]
GREENBERG TRAURIG, LLP
[address, phone, fax]

Attorneys for Defendant
GOOGLE INC.

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

GOOGLE'S STATEMENT REGARDING
RE-EXAMINATION PROCEEDINGS

The Court's February 24 Order (Dkt. No. 726) directed the parties to confer and submit a statement on the effect that the Patent and Trademark Office's rejections will have upon the shape of trial:
By NOON ON MARCH 9, the parties shall submit a candid discussion of the impact these rejections will have on the shape of trial. Please discuss whether in light of the track record of final rejections, it is best to delay the trial to allow the single remaining non-final reexamination to run its course.
Id. On March 1, the Court entered a second Order (Dkt. No. 757) including specific questions that it wished the parties to address.

Oracle did not want to share with Google the positions it intended to take in its March 9 statement in advance of the deadline to file responses to the Court's Order. Google therefore files this separate statement. Google reserves the right to respond to Oracle's submission.

The Court has already considered and decided the issue of trial structure, concluding that a single, three-phase trial is the most practical way to try Oracle's patent, copyright and damages allegations. Google agrees. The phases help focus the disparate issues for a jury, while also providing an efficient way for that jury to efficiently consider evidence that is relevant to multiple phases.

The Court has also addressed the admissibility of the reexamination proceedings in light of Oracle's request for a jury instruction that the asserted patents enjoy a presumption of validity. Specifically, to give the jury a truthful accounting of the position of the PTO with regard to the invalidity of those patents, the Court has ruled that final rejections entered by the PTO will be admissible in both the liability and damages phase. (Dkt No. 676 at 4-5.)

Given the multiple final rejections by the PTO, a patent trial in its present form will require the Court, a jury, and dozens of witnesses to devote significant time and resources for little purpose. The only asserted patent to survive the reexamination process to date is the `520 patent; however, Oracle has attributed to this patent the least value of any of the seven patents originally asserted. (See Exhibit 18a to Iain Cockburn's Third Damages Report (ascribing to the `520 patent a 0.3% apportionment percentage).) The `104 patent is the only other patent without a final rejection, but it currently stands rejected and a response from Oracle is due on April 16,

1

2012. Even if the jury was to conclude that the `104 patent is valid, Oracle has admittedly failed to mark with respect to that patent, which expires on December 12, 2012, so the potential damages period is relatively narrow and the propriety of an injunction questionable. Furthermore, any amendment to the asserted claims in the re-examination will eliminate past damages, leaving little to no remaining damages period given the impending expiration date. Finally, while Oracle may attempt to prolong the reexamination proceedings through lengthy appeals to the Board of Patent Appeals and the Federal Circuit, it is unlikely to overcome the examiners' rejections.1 Proceeding to trial on these patents therefore would be a waste of jury, judicial and party resources.

In view of the foregoing, and presuming Oracle is intent on pursuing patent claims that stand finally rejected in reexamination, Google proposes that the trial proceed no sooner than the fall. This plan is consistent with the Court’s suggestion at the December 21, 2011 pre-trial conference. It would also allow time for the single remaining non-final reexamination proceeding on the ‘104 patent to proceed to a final rejection, an amendment of the claims (thereby eliminating past damages and giving rise to intervening rights), or a confirmation of patentability. Based on the progress of other reexaminations, Google expects that a final rejection is likely to issue in summer 2012—and possibly sooner if Oracle does not delay until the last possible day its response to the current Office Action rejecting all of the asserted claims of the ‘104 patent.

In response to the questions posed by the Court in its Supplemental Order on March 1 (Dkt. No. 757), Google believes that Oracle should irrevocably withdraw with prejudice the ’720, ’702, ’205 patents. In addition, as set forth above, Google believes that trial should not begin until at least after the PTO examiner has concluded his consideration of the ‘104 patent.

Accordingly, Google believes that the Court should not commence trial until at least the fall while the ‘104 patent continues to proceed through the PTO. In the interim, the Court can

2

focus its attention on preparing other issues in the case for trial, including the copyright issues, the damages issues, and the work of the independent damages expert.

DATED: March 9, 2012

KEKER & VAN NEST, LLP

By: /s/ Robert A. Van Nest

ROBERT A. VAN NEST (SBN 84065)
[email]
CHRISTA M. ANDERSON (SBN 184325)
[email]
KEKER & VAN NEST LLP
[address, phone, fax]

SCOTT T. WEINGAERTNER (Pro Hac Vice)
[email]
ROBERT F. PERRY
[email]
BRUCE W. BABER (Pro Hac Vice)
[email]
KING & SPALDING LLP
[address, phone, fax]

IAN C. BALLON (SBN 141819)
[email] HEATHER MEEKER (SBN 172148)
[email]
GREENBERG TRAURIG, LLP
[address, phone, fax]

ATTORNEYS FOR DEFENDANT
GOOGLE INC.

_____________
1 For fiscal year 2011, between September 1, 2010 and September 30, 2011, the Board of Patent Appeals reversed only 17% of reexamination decisions. 57% were affirmed, and 25% were affirmed in part. See http://www.uspto.gov/ip/boards/bpai/ stats/receipts/fy2011_sep_e.jsp (providing statistics for Technology Center 3900, which handles reexaminations).

3


  View Printable Version


Groklaw © Copyright 2003-2013 Pamela Jones.
All trademarks and copyrights on this page are owned by their respective owners.
Comments are owned by the individual posters.

PJ's articles are licensed under a Creative Commons License. ( Details )