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Oracle Am., Inc. v. Google Inc. - No. C 10-03561 WHA, 2011 U.S. Dist. LEXIS 109544 (N.D. Cal. Sep. 26, 2011)


Separately for each asserted claim, each accused apparatus, product, device, process, method, act, or other instrumentality (Accused Instrumentality) of each opposing party of which the party is aware. This identification shall be as specific as possible. Each product, device, and apparatus shall be identified by name or model number, if known.


Plaintiff Oracle America Inc. accuses Google Inc. of infringing some of Oracle's Java-related copyrights in portions of Google's Android software platform. Specifically, Oracle accuses 12 code files and 37 specifications for application programming interface packages. The Java technology and the basics of object-oriented programming were explained in the claim construction order. Defendant Google Inc. sought leave to file a motion to strike portions of the opening expert report of John C. Mitchell regarding patent infringement. Google asserted that many aspects of the report were not supported by plaintiff Oracle America, Inc.'s infringement contentions as required by the Patent Local Rules.


Was Google correct when it asserted that the expert report of John C. Mitchell extends to accused products and infringement theories that were not disclosed in Oracle's infringement contentions?




The Mitchell report referenced three devices that were not specifically named in this list: the LG Optimus, the HTC Droid Incredible 2, and the Motorola Atrix. Specifically, the report stated that a review of source code for particular Android devices, including those three, showed that the device manufacturers made no changes to the source code that would impact the infringement analysis performed on the repository version of the code. Oracle's infringement contentions did not support infringement theories directed at the LG Optimus,  the HTC Droid Incredible 2, or the Motorola Atrix. The Patent Local Rules required specific identification of particular accused products. However, as to the 104 patent, Patent Local Rule 3-1(c) required Oracle's disclosure of infringement contentions to include "[a] chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality." Google asserts that the source code file DvmDex.h was not identified in Oracle's claim charts, but that the Mitchell report now relies on that file as satisfying the "storing said numerical references" limitation of claim 11 of United States patent number RE38,104. Google, however, has not shown that the Mitchell report advanced any new, undisclosed theory regarding this limitation. As to the 702 patent, Google asserts that no so-called "'TreeMap' structure" was disclosed in Oracle's April 2011 infringement contentions, but that the Mitchell report now identifies such a structure as satisfying the "removing said duplicated elements" limitation of claim 1 of United States patent number 5,966,702. Google also asserts that the Mitchell report "refers to a number of source code files supporting this TreeMap process" that were not cited in Oracle's infringement contentions (Br. 4). Google is correct that Oracle's infringement contentions did not support Mitchell's TreeMap theory. Google, however, has not shown that Oracle should be fully precluded from citing any of the supposedly related source code files.

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