In a previous ruling in the ongoing lawsuit between Oracle and Google over Android, the district court denied Google's motion for partial summary judgment on a defense of patent marking. In that ruling, the district court expressed concern that disputes over whether Oracle or Sun products practiced the asserted claims (and therefore required patent marking) might devolve into an infringement analysis at trial. Accordingly, in order to streamline the issues for trial, the district court required the parties to agree upon a procedure to identify and stipulate to Oracle or Sun products that practiced the asserted claims, which the parties did in a stipulation filed with the district court.
Under the first step of the procedure, Oracle submitted a list of Oracle and Sun products that practiced each of the asserted patents, the supporting source-code citations for each product, and a summary of testimony that it intended to elicit at trial in support of the identifications. In the next step, Google was required to identify any other Oracle products that Google contended practiced any of the 26 asserted claims and identify any products that Oracle listed which Google contended did not practice the claims. Google was also required to explain why.
Google failed to follow the procedure to which it had agreed. Instead, according to the district court, Google merely objected to Oracle's evidence and complained it did not have time to analyze the source code. Google did no independent analysis, nor did it identify any other products that practiced the asserted claims.
The district court ordered Google to comply. " Google is hereby ordered to stand and deliver on its end of the bargain. For each product identified by Oracle, Google shall independently analyze whether that product practiced asserted claims. Google cannot merely object to Oracle's evidence. Note well that Google is the one who raised the patent marking defense and presumably has its own evidence to show which Sun or Oracle products fell within the asserted claims. Google has no need to see more evidence to lay out its hand on this score. Google must unequivocally state whether each product practiced or did not practice the asserted claims. For each contention, Google must provide an explanation based on its own analysis of the product. Google must faithful[ly] comply or withdraw its patent marking defense."
In addition, the district court stated that Oracle would not be held to its admissions in the first step under the stipulated procedure until Google complied with its own stipulation procedures. "Until Google faithfully complies with its own stipulated procedure, Oracle will not be held to its step one admissions, that is, Google may not simply assert that Oracle has admitted a failure to mark and therefore there is no need for Google to admit or deny in order to defend on grounds of failure to mark. First, such a tactic would violate the stipulation. Second, such a tactic would be gamesmanship to 'have it both ways' so as to have the benefit of the procedure without having to admit items that may hurt Google on other issues, such as the question of an injunction should Google lose at trial."
Oracle America, Inc. v. Google Inc., Case No. C 10-03561 WHA (N.D. Cal. Jan. 31, 2012)
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