In my previous blog post I explained that certain reports of Oracle having been "ordered" to drop 129 of its 132 patent infringement claims against Google were wrong. The judge had only issued a tentative order and asked the parties to comment on it by noon on Friday, which they did.
Further to the parties' Friday filings, the judge has finalized the claim construction order (both parties accepted it in principle) and has ordered a case management conference in his office for Wednesday morning at 7:00 AM. I'll quote the order now and comment on it sentence by sentence:
The recent submissions reveal unrealistic expectations about the judicial resources and time that can be devoted to this case.
In his tentative order the judge had proposed that Oracle reduce the number of asserted patent claims from 132 to 3 (in three steps). Oracle, as I explained in my previous post, reminded the judge of the Katz decision, a ruling by the Court of Appeals for the Federal Circuit (the court to which the present case could also be appealed), which basically says that a court may request such a narrowing of claims but only if a patent holder is not deprived of justice. In the Katz case the reasoning was that duplicative claims could be thrown out without depriving the patent holder of justice. In Oracle vs. Google, however, a narrowing down to only three patent claims would throw out a lot more than just the duplicative claims. Oracle argues that only two of the seven asserted patents are somewhat related (which is also the impression I got when I read the patents), and even those are in Oracle's opinion distinct inventions.
Oracle's counterproposal, which in my opinion is much more likely to be consistent with the Katz decision than the judge's tentative order, was to arrive at three asserted claims for each of the seven patents. This is, as the sentence quoted above from the judge's case management order shows, still too much in the judge's view. The judge again argues with resources. He previously complained about his resource constraints in connection with claim construction. While it's understandable that he tries to manage the case efficiently and to force the parties to streamline the case before it is put before the jury, there's a lot at stake in economic terms and the judge should not order a narrowing that would be arbitrary and could be successfully appealed.
The Court invites one attorney and one corporate representative per side to meet in chambers on MAY 11 at 7:00 A.M. to discuss alternatives and case management.
So the judge wants to have a private conversation in order to seal a deal on how many claims and how many defenses will go on trial. The judge probably hopes that he can convince the parties in person to accept a compromise. If the judge believed his original proposal of three claims was the right number, he could simply have ordered it against Oracle's objections. The fact that he now summons the parties to such a meeting suggests that the original proposal was a bargaining position but the judge is likely prepared to move up considerably from that number.
Whatever the ultimate arrangement will be, the key metric in my opinion is not how many patent claims (one patent can consist, and in the field of software usually does consist, of multiple claims) are asserted but how many different patents are asserted. With only three patent claims allowed, Oracle could at most assert three different patents. We will see how many of Oracle's seven originally asserted patents will go on trial. I believe at least six, but we will know soon. Being able to assert multiple claims per patent would also be desirable for Oracle, but if they just have to pick the best claim or the best two claims per patent, they will be able to do so, while dropping entire patents would hurt them a lot more.
This hour is necessary because the Court’s trial calendar begins at 7:30 a.m.
This is a message to the parties that the meeting will have to be wrapped up after a maximum of 30 minutes (probably a little less since the judge would have to go from his office to a room where a trial takes place). With this kind of schedule the judge also tries to show to the parties how busy he is.
The judge will probably test Oracle's determination to insist on a large number of claims to be asserted, and he may again threaten with staying the case pending reexaminations of the patents-in-suit by the USPTO.
If either side timely so requests, a court reporter will be present; otherwise, it will be unreported.
I doubt that Google wants this meeting reported. The judge probably prefers to exert pressure on the parties in a private meeting rather than in a reported one, and Google will probably want to let the judge do that. If I were Oracle, I would give serious consideration to putting in a request that the meeting be reported, given that there's still a huge discrepancy between the judge's proposed number of claims and Oracle's counterproposal and a certain possibility that this issue could play an important role in a possible appeal. However, Oracle might as well decide not to request the presence of a court reporter and just demonstrate to the judge in a private meeting its determination to defend its rights. That would also be a way to show strength. We'll know soon.
Each side shall bring to the conference a copy of its own human resources (or other) policy on the number of days of salary/wage-continuation for its employees on jury duty, both as of the commencement of this action and at present.
American companies have to deal with jury duty of their employees all the time. Oracle knows a lot about this: its CEO, Larry Ellison, very recently served as the foreman of a jury that awarded a woman $500,000 for slipping in diesel fuel at an automobile dealership.
The judge argues with resource constraints, and the narrowing of claims is very much about reducing the amount of work the jury will have to do. If Oracle now has to admit to the judge that they don't pay their employees' wages for huge numbers of days spent on a jury, the judge will tell them that they can't expect other companies now to dispense with their employees for too many days because of an overly complex Oracle vs. Google trial.
But Oracle vs. Google is a case of major economic importance, way above the average civil law case that goes on trial. If Oracle and Google have internal policies that limit the continuation of payment during jury duty to X number of days, that may be based on assumptions concerning the average case, while this case is an exceptional one. Also, no one can deny the importance of both Oracle and Google to Northern California's economy, and that exceptional importance also justifies a significant effort by the court and the jury to find out who's right in legal terms.
And no matter what those companies' policies are, the judge does not have a legal basis for requiring Oracle to drop non-duplicative claims. I believe he knows about that quite well, so he's now looking for creative ways to talk Oracle into a narrowing of the case. The way this judge handles the case is very interesting to watch, but Oracle is not the kind of company that will easily drop claims.
We may ever find out what exactly is said in that meeting (only the result is certain to become known soon), but it will probably be pretty much like bargaining in a bazaar...
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