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Oracle v. Google - Minor Update on Reexaminations
Wednesday, August 31 2011 @ 09:00 AM EDT

In our last update on the reexamination of the Oracle (Sun) patents requested by Google we had shown two independent claims and six dependent claims of patent number 6,061,520 being rejected, with the remaining claims being confirmed by the examiner in an office action. Oracle has now accepted this outcome. In an amendment [PDF] to the '520 patent filed by Oracle, Oracle accepted the examiner's determination that the eight claims (6, 7, 9, 11, 18, 19, 21 and 23) were invalid, and Oracle consented to the cancellation of those claims.

That leaves two independent claims and 13 dependent claims still standing, all but one of which Google had challenged. So while Oracle has lost two important independent claims in this patent, the patent has not been entirely invalidated. The examiner still has to issue a final action and notice of allowance on the reexamination before it becomes final. In addition, Oracle has submitted several additional items of prior art that were produced in the litigation, and the examiner may yet have to consider that prior art as well.

In the updated chart below we indicate the status of the '520 patent as tentatively being final in blue in the "Claims Surviving" column on the right.

Oracle v. Google as of 2011-08-22























Patent No. Claims Claims Not Subject to Reexam Claims Subject to Reexam Claims Rejected Claims Confirmed Claims Surviving

Ind Dep Ind Dep Ind Dep Ind Dep Ind Dep Ind Dep
RE38104 30 11 2 8 28 3 - - - - 30 11
5966702 4 19 1 13 3 6 3 6 0 0 1 13
6061520 4 19 0 1 4 18 2 6 2 12 2 13
6125447 5 19 0 0 5 19 5 19 - - 0 0
6192476 7 14 0 0 7 14 7 10 0 4 0 4
6910205 3 11 1 8 2 3 2 3 - - 1 8
7426720 3 19 0 2 3 17 3 17 0 0 0 2
Totals 56 112 4 32 52 80 22 61 2 16 34 51
Percent of All Claims 100.00% 100.00% 7.14% 28.57% 92.86% 71.43% 39.29% 54.46% 3.57% 14.29% 60.71% 45.54%
Percent of Claims Reexamined





91.67% 79.22%



Here is the Oracle amendment in text:

Control No.: 90/011,489

3

Docket No.: 154892800100

STATUS OF CLAIMS

Pursuant to 37 C.F.R. § 1.530(e), and with entry of this Amendment, claims 1-4, 8, 10, 12-17, 20, and 22 are pending and confirmed, claims 6, 7, 9, 11, 18, 19, 21, and 23 are cancelled, and claim 5 is not subject to reexamination.

Control No.: 90/011,489

4

Docket No.: 154892800100

Interview Summary Pursuant To 37 C.F.R. 1.560(b)

Patent Owner thanks the Examiner for the courtesy of an in-person interview to discuss the Action on August 4, 2011. In attendance for the interview were Examiners Eric Kiss, Mary Steelman, and Fred Ferris, and for the Patent Owners, Christopher Eide (48,375), Julie Akhter (59,570), George Simon (47,089), Ben Goldberg (technical expert), Tracy Druce (35,493), and Lissi Mojica (63,421). Claim 6 of the Patent and the Lewis reference were discussed during the interview. The following recitations of claim 6 were primarily discussed: "play executing the code without running the code on the processing component to identify the operation if the code were run by the processing component," and "creating an instruction for the processing component to perform the operation."

Patent Owner presented that Lewis discloses a simulated stack for the purpose of determining memory usage information (e.g., a register or memory destination), but not "to identify the operation if the code were run by the processing component," or "creating an instruction for the processing component to perform the operation." (See also, the Examiner Interview Agenda accompanying the Examiner's Interview summary mailed August 4, 2011.)

As indicated in the Examiner Interview summary, the Examiners maintained that the "execution" using a simulated stack as disclosed by Lewis identifies the operations by recording information about constants, variable references, previously "executed" subexpressions, and procedure or method calls. Further, the Examiners maintained that the generation of "good code" using the simulated stack values equates to creating an instruction. Patent Owner respectfully disagreed in the interview.

Control No.: 90/011,489

5

Docket No.: 154892800100

REMARKS

I. Introduction

Claims 1-4 and 6-23 were subject to reexamination in the Action. Claims 1-4, 8, 10, 12-17, 20, and 22 stand confirmed, claims 6, 7, 9, 11, 18, 19, 21, and 23 stand rejected, and claim 5 is not subject to the reexamination. By virtue of this response, claims 6, 7, 9, 11, 18, 19, 21, and 23 are hereby cancelled. As detailed below, Patent Owner believes that all rejections are therefore rendered moot and request that a reexamination certificate be issued promptly.

II. Rejections

Claims 6, 7, 9, 11, 18, 19, 21, and 23 stand rejected under 35 U.S.C. 102(b) as being anticipated by Lewis.

In the interest of special dispatch, as indicated above, claims 6, 7, 9, 11, 18, 19, 21, and 23 have been cancelled herein, thereby rendering the rejection moot. The cancellation of the claims is solely to expedite the conclusion of the reexamination and should not be construed as relating to patentability. Patent Owner respectfully disagrees that Lewis raises a substantial new question of patentability and further disagrees that these claims are anticipated by Lewis for reasons stated in the Office Action and the Examiner Interview Summary.

III. Supplemental Information Disclosure Statement

Patent Owner further draws the Examiner's attention to the Supplemental Information Disclosure Statement filed herewith. The Supplemental Information Disclosure Statement cites further information produced during the pending litigation since the mailing of the Office Action.

IV. Conclusion

It is believed that all of the outstanding rejections have been addressed. Accordingly, Patent Owner respectfully requests that an NIRC be issued promptly. If it is determined that a telephone

Control No.: 90/011,489

6

Docket No.: 154892800100

conference would expedite the prosecution of this application, the Examiner is invited to telephone the undersigned at the number given below.

In the event the U.S. Patent and Trademark office determines that relief is required, Patent Owner petitions for any required relief and authorizes the Commissioner to charge the cost of such petitions and/or other fees due in connection with the filing of this document to Deposit Account No. 03-1952 referencing docket no. 154892800100.

Dated: August 23, 2011

Respectfully submitted,

By Electronic Signature /Christopher B. Eide/ Christopher B. Eide
Registration No.: 48,375
MORRISON & FOERSTER LLP
755 Page Mill Road Palo Alto,
California 94304-1018

  


Oracle v. Google - Minor Update on Reexaminations | 191 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Corrections here please
Authored by: The_Pirate on Wednesday, August 31 2011 @ 09:09 AM EDT
....

[ Reply to This | # ]

News Pick discussions
Authored by: The_Pirate on Wednesday, August 31 2011 @ 09:10 AM EDT
...

[ Reply to This | # ]

Off topic discussions
Authored by: The_Pirate on Wednesday, August 31 2011 @ 09:12 AM EDT
Uiii... my first 'first'! :)

[ Reply to This | # ]

Will pointing to the infringing code be next?
Authored by: Anonymous on Wednesday, August 31 2011 @ 09:12 AM EDT
I am wondering whether when the re-examination is complete,
the next step will be for Oracle to point exactly where
Android implements surviving claims, and therefore
'infringes'.

This should be the easier part since programmers can agree
on what a section of code does or does not do.

My hunch also tells me Google is studying [or has already
studied] the surviving claims and already has code to route
around the same. Reasonable?

[ Reply to This | # ]

You've got to know when to hold, know when to fold up
Authored by: celtic_hackr on Wednesday, August 31 2011 @ 10:15 AM EDT
Know when to walk away and know when to
...
run away, run away [from the killer rabbit].

It seems, the attorneys here figure it better to fold on some issues. Better to
have some patent claims survive than none, if you will.

Sorry, now I'll have that song and movie in my head for the rest of the day. Is
that an African swallow out there in the bird feeder? Nah, must be a European
one.

P.S. Those aren't quite the words. I wouldn't want to go over my alotted 15 word
fair use "limit" and cause grief for Groklaw. [wink, nudge] U know
waht I mean.

[ Reply to This | # ]

Oracle v. Google - Minor Update on Reexaminations
Authored by: Anonymous on Wednesday, August 31 2011 @ 11:22 AM EDT
One thing to remember is that is that it is only the Claims Confirmed, not the Claims Surviving, that are relevant to the Oracle v Google lawsuit.

The Claims Surviving column includes claims that were not subject to re-examination, and the claims not subject to re-examination are the ones that were never asserted against Google in the first place, at least as far as I can tell.

Although I don't know if the list of asserted claims is publicly filed anywhere, so can't verify that statement with 100% certainty, we know from the judge's claim construction order that Oracle originally asserted 132 patent claims against Google, and Google requested re-examination on exactly 132 claims. Moreover, the for 3 of the 7 patents the claim construction order spells out exactly which claims were asserted, and they exactly match the claims on which Google requested re-examination.

So the picture is much better for Google than would appear by simply looking at the Claims Surviving column.

In addition, the 4 confirmed claims from the '476 patent, while part of the original 132 claims, were not part of the 50 claims Oracle selected during the first phase of narrowing ordered by the judge. We know this from the parties' re-examination status update.

So, the only remaining claims in the lawsuit that have not been at least tentatively rejected by the USPTO are the ones from the '520 patent (plus the ones from the '104 patent where no first office action has yet issued, so we don't know how many of those will be confirmed or rejected).

No wonder Oracle is willing to cut its losses on the remaining '520 claims so it can have the final confirmation of the remaining claims sooner rather than later!

[ Reply to This | # ]

This is sick
Authored by: Anonymous on Wednesday, August 31 2011 @ 11:27 AM EDT
How can anyone in their right mind think that ANYTHING in
that patent is patentable?

This whole situation is sick. The USPTO is granting
government patented monopolies on things that any first year
student is expected to be able to do for homework. There is
ABSOLUTELY NOTHING IN THAT PATENT THAT IS NOVEL OR NON-
OBVIOUS and if the patent examiner can't see that, then she
needs to be fired!!!!!!!!!

[ Reply to This | # ]

language - please read comment guidelines
Authored by: sumzero on Wednesday, August 31 2011 @ 11:31 AM EDT
please do not swear or use other offensive language on
groklaw. the posting/comment guidlines are quite clear on
this.

i understand that the issues being discussed can lead to
heated emotions, but the ongoing conversation is enhanced by
the civility shown in the comments. it's one of the main
[among many] reasons that i particularly enjoy reading this
site.

sum.zero

---
48. The best book on programming for the layman is "alice in wonderland"; but
that's because it's the best book on anything for the layman.

alan j perlis

[ Reply to This | # ]

Searchable index of Comes v Microsoft
Authored by: Superbowl H5N1 on Thursday, September 01 2011 @ 06:58 AM EDT

I notice that Google does not seem to have all the available Comes v Microsoft exhibits indexed. How can that get kickstarted?

---
Here's where you can get the computer RMS uses:
http://freedomincluded.com/

[ Reply to This | # ]

Oracle v. Google - Minor Update on Reexaminations
Authored by: Anonymous on Friday, September 02 2011 @ 04:06 AM EDT
Problem for SCO is that an en banc hearing, or an appeal to the supreme court
can just be refused - and given the results from the appeal there's little
chance that an appeal to either would get through the stupidity filter.

I'd hope IBM et-al would go for the jugular now anyway and bury the corpse good
and deep.

[ Reply to This | # ]
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