Monday, August 8, 2011

Judge does not allow Google to outmaneuver Oracle with untimely invalidity contentions

Judge William Alsup of the U.S. District Court for the Northern District of California has just denied, for the largest part, a Google motion for leave to supplement its invalidity contentions, i.e., a request for permission to provide additional material at a late stage that might convince a jury to consider Oracle's asserted patent claims invalid. An invalid patent cannot be infringed, so every successful invalidity contention takes down a part of Oracle's assertions.

The order, handed today and uploaded by me to Scribd, makes it clear that the judge has Google's tactics all figured out. Google was trying to gain a tactical advantage in the build-up to the trial. The judge didn't see any compelling reason for giving Google that tactical advantage and only allowed the inclusion of three particular claim charts -- all of them relating to the '205 patent, which covers a technical concept that apparently wasn't implemented in any official release of Java:

"Each of the prior art references in charts E-9, E-10, and E-11 was charted in Google's January 2011 contentions as required [...]. In this instance only, the Court will allow expansion to use the same references (and those references only) to prove up obviousness of the same claims."

But apart from those three charts, which are based on material that Google previously selected, he denied the motion. Not only did he deny it for the most part but he also criticized Google for a lack of diligence and "sandbagging", and suspects the folllowing:

"It is possible that Google simply did not have that many good invalidity theories and is now trying to fill in with whatever it can belatedly cobble together. Google has not carried its burden of showing otherwise."

The tactical game Google tried to play

Here's what Google tried to do (and didn't really achieve):

Most of you following that case probably know that Oracle asserted a large number of patent claims (132 claims from seven patents), and the judge wanted those assertions to be narrowed in two steps: based on a joint proposal from Oracle and Google, the court accepted a schedule according to which Oracle had to define a shortlist of 50 claims by June 1. That shortlist wasn't published originally but it entered the public record in mid July. It's not yet clear how many of those 50 patent claims the judge considers "triable" if this cases goes to trial (currently scheduled to begin on Halloween) -- he proposed three, but Oracle wants to assert 21. Whatever the final number will be, the patents to be actually asserted at trial will be selected out of the shortlist of 50.

The same case schedule also required Google to narrow its invalidity defenses to six grounds per patent claim still in the game at that stage. Google had until June 15 -- two weeks after the filing of Oracle's shortlist -- to narrow its invalidity contentions accordingly. In this case, "to narrow" meant to pick 300 invalidity arguments (6 grounds per each of the 50 claims). After Oracle's final narrowing of its claims (which will have to occur closer to trial), Google can then pick from that shortlist of 300 grounds the ones that it wishes to present to the jury. How many contentions Google gets to choose in the final pick remains to be seen, but the key thing is that Google's choice would be limited to that list, just like Oracle's choice of claims is limited to the shortlist of 50 claims.

This is how the judge describes the state of the process:

"With limited exceptions, fact discovery has closed, and expert discovery is underway. The claims and defenses at issue have been significantly narrowed in reliance on the parties' infringement and invalidity contentions. The final pretrial conference and jury trial are only two months away. This action is well advanced, and Google now seeks leave to bring an entire fleet of new invalidity defenses into the fray. Good cause has not been shown for allowing such a dramatic maneuver at this late date. Only one category of amendments will be allowed."

This is the judge's take on Google's delay tactics:

"Google waited several months after discovering most of its new defenses before it sought permission to move for leave to supplement its invalidity contentions. After permission to file a motion was granted in late June, Google waited another two and a half weeks to actually file its motion, and then filed a superceding amended version of the motion the following week. This delay suggests a lack of diligence."

What the judge calls a "lack of diligence" (which is the legal criterion here) is actually part of a tactical scheme that was all too obvious:

"Oracle’s selection of fifty out of its 132 asserted patent claims necessarily relied on the
relative strength of the parties’ infringement and invalidity contentions as to each claim [...] Google's decision to wait until after Oracle was locked into its patent-claim selections to fortify its invalidity case with 'defenses that it has now determined are among its strongest' amounts to sandbagging."

That last sentence is what this was all about: Google's lawyers played games in order to strengthen their case long after Oracle's narrowing of its asserted claims. But under the originally agreed-upon schedule, they were supposed to create their shortlist within two weeks of Oracle's shortlist.

The fact that Google's tactical scheme was thwarted by the judge means that the original schedule cannot be circumvented in a way that would be unfair vis-à-vis Oracle. Nothing more and nothing less.

By the way, the reexamination process over at the U.S. Patent & Trademark Office also continues. Today the WHDA Reexamination Alert Blog reported that Google has responded to Oracle's arguments in favor of the '720 patent. I reported on Oracle's fight for that patent a month ago. Oracle is also trying to defend all other patents-in-suit against Google's reexamination attack.

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