Google cannot contend that Oracle did practice the patents for purposes of the marking statute and also contend Oracle did not practice the patents for other purposes—such as the remarkable commercial success of Oracle’s Java, which shows non-obviousness of the patents and demand for the inventions.

In addition to Oracle’s own practice of the patents, the marking requirement extends also to any products practicing the patents that are sold by the patentee’s licensees. See Amsted Indus. v. Buckeye Steel Castings Co., 24 F. 3d 178, 185 (Fed. Cir 1994); Devices for Med., Inc. v. Boehl, 822 F. 2d 1062, 1292 (Fed. Cir 1987). Here, Oracle admitted in its response to Google’s Interrogatory No. 1 that it both practices the “patents in suit in its own Java-related products and authorizes others to practice them through its Java licensing program.” Among the “others” are mobile-phone manufacturers whose handsets sold in the United States practice the patents.

Finally, Oracle argues that the issue is not ripe unless Google is found to be infringing of the apparatus/device claims. But it is not the finding of infringement that triggers the marking requirement, it is the assertion of the apparatus claims in the infringement action. Here is the full text of that portion of American Med. Sys., Inc. v. Medical Eng’g Corp. cited by Google (521 [PDF; Text]):

B. Patent Marking Relating to Method Claims

AMS argues that the district court erred in limiting its recoverable damages from the infringed method claims of the '765 patent pursuant to section 287(a). The law is clear that the notice provisions of section 287 do not apply where the patent is directed to a process or method. [citations removed] (noting that section 287(a) does not apply where only method claims are infringed). The district court, however, relied on Devices for Medicine, Inc. v. Boehl, 822 F.2d 1062, 3 U.S.P.Q.2D (BNA) 1288 (Fed. Cir. 1987), in holding that "where there are both product and method claims being claimed infringed, the patentee must mark the product." 794 F. Supp. at 1391, 26 U.S.P.Q.2D (BNA) at 1095.

In Devices for Medicine, the court noted that in Bandag and Hanson, a distinction was made between cases "in which only method claims are asserted to have been infringed" and cases where a patentee alleges infringement of both the apparatus and method claims of the same patent. Devices for Medicine, 822 F.2d at 1066, 3 U.S.P.Q.2D (BNA) at 1292 . The Devices for Medicine court further stated that because the method claims of the patent were directed to the use of the claimed product, "having sold the product unmarked, [the patentee] could hardly maintain entitlement to damages for its use by a purchaser uninformed that such use would violate [patentee's] method patent." Id., 3 U.S.P.Q.2D (BNA) at 1292.

AMS contends that Devices for Medicine is inapposite, because in that case the patent contained product claims and claims covering the use of the same product. AMS asserts that the sale of a product carries an implied license to use it as a matter of law; therefore failing to mark a patented product rationally creates an expectation of receiving a right from the seller to use it for its customary purposes. By contrast, AMS argues that the '765 patent involves methods of making and sterilizing the patented product and that sale of a product does not grant any implied license to make an additional product or to use a particular manufacturing process to make it. Therefore, AMS asserts that the rationale of Devices for Medicine should not apply and that section 287(a) has no application to the instant method claims.

We find AMS's distinction of the claims in Devices for Medicine from those in the present action to be meaningless within the context of section 287(a). The purpose behind the marking statute is to encourage the patentee to give notice to the public of the patent. The reason that the marking statute does not apply to method claims is that, ordinarily, where the patent claims are directed to only a method or process there is nothing to mark. Where the patent contains both apparatus and method claims, however, to the extent that there is a tangible item to mark by which notice of the asserted method claims can be given, a party is obliged to do so if it intends to avail itself of the constructive notice provisions of section 287(a).

In this case, both apparatus and method claims of the '765 patent were asserted [emphasis added] and there was a physical device produced by the claimed method that was capable of being marked. Therefore, we conclude that AMS was required to mark its product pursuant to section 287(a) in order to recover damages under its method claims prior to actual or constructive notice being given to MEC.

Oracle also objects to Google's request to file a motion seeking to strike Dr. Serwin's rebuttal report which Oracle has introduced. (527 [PDF; text below]) Google seeks to strike the Serwin rebuttal on the grounds that it was not expressly permitted under the court's prior orders nor anticipated by the practice of the parties to date. (522 [PDF; Text]) It is not clear from Google's objection whether their real concern is the existence of the report or the fact that it has arrived at a time where Google can no longer depose Dr. Serwin. Oracle makes a compelling argument that the absence of express direction by the court allowing rebuttal reports does not override permitted practice under the Federal Rules of Civil Procedure:

Rule 26 expressly contemplates rebuttal reports. “Absent a stipulation or a court order, the disclosure must be made . . . if the evidence is intended solely to contradict or rebut evidence on the same subject matter identified by another party under Rule 26(a)(2)(B) within 30 days after the other party’s disclosure.” FED. R. CIV. P. 26(a)(2)(D)(ii). Nothing in this Court’s orders obviates the right to a rebuttal expert, and the orders’ silence on the issue cannot be construed to do so. See, e.g., In re Katrina Canal Breaches Consolidated Litig., 2010 WL 1643760, at *2 (E.D. La. Apr. 20, 2010) (holding that where case management order was “silent as to supplemental and rebuttal reports,” Rule 26(a)(2)(D) applied and rebuttal reports submitted within 30 days of adversary’s report were timely).

provided that “the party with the burden of proof must disclose any reply reports rebutting specific material in opposition reports” seven days after opposition reports were filed.

In the final action of the day Judge Alsup has also granted Oracle the right to file its motion to strike portions of the Leonard/Cox reports submitted by Google. (528 [PDF; text below])

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

Docket

526 – Filed and Effective: 10/14/2011
ORDER
Document Text: Letter from Michael A. Jacobs Oracle's Opposition to Google's Renewed Precis re Marking. (Jacobs, Michael) (Filed on 10/14/2011) (Entered: 10/14/2011)

527 – Filed and Effective: 10/14/2011
ORDER
Document Text: Letter from Fred Norton Precis re Rebuttal Reports. (Norton, William) (Filed on 10/14/2011) (Entered: 10/14/2011)

528 - Filed and Effective: 10/14/2011
ORDER
Document Text: ORDER GRANTING LEAVE TO FILE DAUBERT MOTION re 511 Letter filed by Oracle America, Inc.. Signed by Judge Alsup on October 14, 2011. (whalc1, COURT STAFF) (Filed on 10/14/2011) (Entered: 10/14/2011)

529 - Filed and Effective: 10/14/2011
ORDER
Document Text: ORDER GRANTING LEAVE TO FILE MOTION REGARDING PATENT MARKING re 521 Letter filed by Google Inc.. Signed by Judge Alsup on October 14, 2011. (whalc1, COURT STAFF) (Filed on 10/14/2011) (Entered: 10/14/2011)

530 - Filed and Effective: 10/14/2011
ORDER
Document Text: ORDER GRANTING LEAVE TO FILE MOTION TO STRIKE "REBUTTAL" REPORTS re 522 Letter filed by Google Inc. Signed by Judge Alsup on October 14, 2011. (whalc1, COURT STAFF) (Filed on 10/14/2011) (Entered: 10/14/2011)

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

Documents

526

[Morrison & Foerster letterhead]

October 14, 2011

The Honorable William H. 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:

Oracle opposes Google’s renewed request for leave to move for summary judgment on whether Oracle’s entitlement to damages is limited by 35 U.S.C. § 287.

Genuine disputes of material fact exist that prevent summary judgment on the marking issue. Whether or not Oracle’s Java products practice the asserted claims of the patents-in-suit remains a hotly contested issue. Summary judgment is not appropriate so long as Google disputes that Oracle’s products are patented articles. If they are not, then there was no marking obligation. Google cannot contend that Oracle did practice the patents for purposes of the marking statute and also contend Oracle did not practice the patents for other purposes—such as the remarkable commercial success of Oracle’s Java, which shows non-obviousness of the patents and demand for the inventions. Google is still trying to have it both ways, and it may not. Whether Oracle’s Java products used the patented technology must be tried to the jury. It may also be that the jury finds that Oracle’s products only practice the asserted method claims, in which case there would have been no obligation to mark.

That Oracle has licensed its technology does not change the analysis. Oracle provides its products in source code form to many of its commercial licensees—the same

The Honorable William H. Alsup
October 14, 2011
Page Two

products that Google contends do not practice the patents. Google has not put forward any evidence in discovery that Oracle’s licensees do make “patented articles” that embody any of the asserted apparatus claims as required by the marking statute. Indeed, there is evidence to the contrary: Google sought to establish during deposition that the JavaOS product that Oracle contends practiced the ’702 patent was cancelled in 1999. See Stephen Shankland, Sun, IBM decaffeinate JavaOS (August 23, 1999), http://news.cnet.com/2100-1001-230175.html (last visited October 13, 2011) (Google’s Exhibit DX290 to the Pampuch 30(b)(6) deposition). If so, then there was no marking obligation at the time Google began its infringement of the ‘702 patent in 2006. Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1220 (Fed. Cir. 2002) (“The recovery of damages is not limited where there is no failure to mark, i.e., . . . where there are no products to mark.”). It is the sale of a “patented article,” not a mere license, that triggers the marking obligation. 35 U.S.C. § 287.

It is also possible that the jury will find that, for a given patent, only the method claims are infringed. If the jury so finds, then there would have been no marking obligation. Hanson v. Alpine Valley Ski Area, Inc., 718 F.2d 1075, 1083 (Fed. Cir. 1983) (holding that the failure to mark did not limit damages even though the patent contained apparatus claims because “[t]he only claims that were found infringed in this case, however, were claims 1, 2, and 6 of the Hanson patent, which are drawn to ‘[t]he method of forming, distributing and depositing snow upon a surface....’”).

Given the disputed facts regarding practice of the patents, Google’s renewed motion is still not a proper vehicle for deciding as a matter of law how the marking statute applies in this case. Google’s request for leave to file a motion for summary judgment on the patent marking statute should be denied.

The Honorable William H. Alsup
October 14, 2011
Page Three

Respectfully submitted,

/s/ Michael A. Jacobs

Michael A. Jacobs

527

[Boies, Schiller & Flexner LLP letterhead]

October 14, 2011

The Honorable William Alsup
U.S. District Court, Northern District of California
450 Golden Gate Avenue
San Francisco, California 94102

Re: Oracle America, Inc. v. Google Inc., No. C 10-3561 WHA

Dear Judge Alsup:

Oracle writes in response to Google’s précis dated October 12, 2011, seeking permission to file a motion to strike the rebuttal expert reports of Dr. Kenneth Serwin. (Dkt. No. 522.) On October 10, 2011, Dr. Serwin submitted reports rebutting the expert reports that Google’s two damages experts, Dr. Leonard and Dr. Cox, had submitted as their Rule 26(a) disclosures on October 3. Google contends that Dr. Serwin’s rebuttal reports are forbidden because the Court’s orders make no provision for such a report, and because all other rebuttal reports in the cases were submitted by experts who had previously served other reports.

These assertions are meritless. Rule 26 expressly contemplates rebuttal reports. “Absent a stipulation or a court order, the disclosure must be made . . . if the evidence is intended solely to contradict or rebut evidence on the same subject matter identified by another party under Rule 26(a)(2)(B) within 30 days after the other party’s disclosure.” FED. R. CIV. P. 26(a)(2)(D)(ii). Nothing in this Court’s orders obviates the right to a rebuttal expert, and the orders’ silence on the issue cannot be construed to do so. See, e.g., In re Katrina Canal Breaches Consolidated Litig., 2010 WL 1643760, at *2 (E.D. La. Apr. 20, 2010) (holding that where case management order was “silent as to supplemental and rebuttal reports,” Rule 26(a)(2)(D) applied and rebuttal reports submitted within 30 days of adversary’s report were timely). Oracle submitted Dr. Serwin’s rebuttal report, thus making the full disclosure required by Rule 26, long before the

The Honorable William H. Alsup
October 14, 2011
Page 2 of 3

deadline in the Rule.

Google next asserts that the Court’s Case Management Order “did not give any party permission to submit ‘rebuttal’ reports, either with respect to the damages reports specifically, id., or expert reports generally.” If the Order were silent on rebuttal reports; that would not help Google: Rule 26 specifically permits Oracle to file a rebuttal report. In re Katrina Canal Breaches, 2010 WL 1643760, at *2. However, the Order specifically provided that “the party with the burden of proof must disclose any reply reports rebutting specific material in opposition reports” seven days after opposition reports were filed. (Case Management Order (Dkt. No. 56) at ¶ 8 (emphasis added).) Dr. Serwin’s rebuttal report is, as the Court’s Order contemplates, truly a rebuttal: he only responds to the opinions and analyses proffered by Google’s experts, offering no affirmative analysis. The Court’s July 22, 2011, Order, which simply set a new date for Dr. Cockburn’s opening report, superseded neither the Case Management Order nor the rights of the parties under Rule 26.

Google further asserts that rebuttal reports may be submitted only by experts who submitted initial reports. Google cites nothing for this claim, because it is false. “[Rule 26] does not restrict rebuttal testimony to expert witnesses previously designated to testify in the case in chief. Plaintiffs have cited no authority for the proposition that rebuttal testimony should be so restricted. The court otherwise knows of none.” Knapp v. State Farm Fire & Cas. Co., 1995 WL 340991, at *2 (D. Kan. May 31, 1995).

Indeed, Google has submitted technical or damages expert reports for at least ten experts, several of whom have submitted both “reply” and “rebuttal” reports. Google cites no authority for the proposition that the opening report and the rebuttal report must come from the same expert, nor does it offer a principled explanation why that would prejudice Google. Google has

The Honorable William H. Alsup
October 14, 2011
Page 3 of 3

been aware of Dr. Serwin’s role for months; Google will have an opportunity to both depose and cross-examine Dr. Serwin; and Dr. Serwin’s opinion is properly limited to rebuttal testimony in response to Google’s expert reports.

Although not required to do so, Oracle informed Google that Dr. Serwin might be providing expert testimony in this case on numerous prior occasions. First, on July 27, 2011, Oracle provided Google with a list of names of additional experts it wanted to have access to AEO information under the Protective Order. Dr. Serwin’s name was on that list. Under the terms of the Protective Order, Google had two weeks to object to Dr. Serwin and other staff members at Berkeley Research Group, his consulting firm, receiving Google AEO materials. Google made no objection. Second, Oracle again disclosed Dr. Serwin by name at the August 19, 2011 hearing regarding court-appointed experts, alerting Google to the fact that Oracle may submit a report authored by a separate expert. (8/19/11 Tr. at 32 (“THE COURT: So who are the experts we will be critiquing here? MR. HOLTZMAN: Our original expert was Professor Iain Cockburn, Boston University. We may or may not add a second expert, who would mostly likely be Ken Serwin. THE COURT: Ken Who? MR. HOLTZMAN: Serwin, S-E-R-W-I-N. Those would be the primary damage-related experts.”). Third, Oracle’s witness list, served on October 1, clearly identifies Dr. Serwin as an “expert retained by Oracle who may testify as a rebuttal witness regarding damages.” In contrast, Google ultimately submitted opposition reports from two experts, but only identified one – Dr. Leonard – when asked directly by the Court who its experts were at the August 19, 2011 hearing. (8/19/11 Tr. at 32–33.)

Google has proffered no legitimate basis to strike Dr. Serwin’s rebuttal report. Oracle respectfully requests that the Court deny Google’s request to file a motion to strike.

Respectfully submitted,
/s/ Fred Norton

528

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 GRANTING LEAVE
TO FILE DAUBERT MOTION

___________________________

Plaintiff’s request for leave to file a motion to strike portions of the expert reports on damages by Dr. Gregory K. Leonard and Dr. Alan J. Cox (Dkt. No. 511) is GRANTED. The opening memorandum, which will be limited to fifteen pages, is due on OCTOBER 21, 2011. The opposition shall not exceed twenty pages and is due on October 28, 2011. The reply shall not exceed five pages and is due on NOVEMBER 1, 2011. The Court will then advise whether a hearing will be necessary. Each side may submit no more than 100 pages of evidentiary materials in addition to whatever reports are necessarily relevant.

The Court recommends that counsel consider making available for deposition some or all of the interviewees on which the witnesses rely and having this agreement worked out before the Court has to rule on the motion. Counsel also should consider whether a reciprocal arrangement might be appropriate if the other side’s witnesses also have relied on such interviewees.

IT IS SO ORDERED.

Dated: October 14, 2011.

/s/William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

529

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 GRANTING
LEAVE TO FILE
MOTION REGARDING
PATENT MARKING

___________________________

Defendant’s request for leave to file a motion for partial summary judgment on damages based on patent marking (Dkt. No. 521) is GRANTED. The opening memorandum, which will be limited to ten pages, is due on OCTOBER 21, 2011. The opposition shall not exceed fifteen pages and is due on October 28, 2011. The reply shall not exceed five pages and is due on NOVEMBER 1, 2011. The Court will then advise whether a hearing will be necessary. Each side may submit up to fifty pages of evidentiary materials.

IT IS SO ORDERED.

Dated: October 14, 2011.

/s/William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

530

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 GRANTING
LEAVE TO FILE
MOTION TO STRIKE
“REBUTTAL” REPORTS

___________________________

Defendant’s request for leave to file a motion to strike the “rebuttal” expert reports of Dr. Kenneth Serwin (Dkt. No. 522) is GRANTED. The opening memorandum, which will be limited to ten pages, is due on OCTOBER 21, 2011. The opposition shall not exceed fifteen pages and is due on October 28, 2011. The reply shall not exceed five pages and is due on NOVEMBER 1, 2011. The Court will then advise whether a hearing will be necessary. Each side may submit up to fifty pages of evidentiary materials in addition to whatever reports are necessarily relevant. In all briefing, counsel shall be careful in using the words initial, opposition, reply, and rebuttal.

IT IS SO ORDERED.

Dated: October 14, 2011.

/s/William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE