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The Battle Over Android Continues: Google Succeeds in Striking Part of Oracle’s Expert Report

In August 2011, Google filed a motion to strike portions of the opening and reply expert reports of Oracle’s expert on patent infringement. Google argued that much of the report was not supported by Oracle’s infringement contentions as required by the Northern District of California’s local patent rules. The district court noted that Patent Local 3-1 “requires detailed disclosure of a party’s patent infringement contentions. “Although Oracle supplemented its disclosures on two occasions after Google raised objections, Oracle declined to supplement a third time despite Google’s contention that they were still inadequate. Oracle was also warned that if the disclosures later proved to be inadequate to support its infringement theories, there would be no chance to cure the defects.

As part of Patent Local 3-1, Oracle was required in its infringement contentions to include a chart that identified where each limitation of each asserted claim is found within each accused product. Google asserted that two of the functions, vfork() and clone() were not identified in the claim charts, but that Oracle’s expert relied on them to satisfy certain of the claim limitations in the patents-in-suit. The district court agreed with Google on the limitation for the “process cloning mechanism”: “Oracle’s operative infringement contentions did not identify the vfork() or clone () functions as satisfying the ‘process cloning mechanism’ limitation of Claim 6. This is not disputed. Oracle therefore may not now rely on those functions as satisfying that claim limitation.”

Google also asserted that the application called “mBS Mobile” was not disclosed in Oracle’s operative infringement contentions and that, nonetheless, Oracle’s expert report identified that application to provide the security functionality claimed in another patent-in-suit. The district court found that it was undisputed that mBS Mobile was not mentioned in Oracle’s infringement contentions. However, the district court found that the expert report did not satisfy any particular limitation of the asserted claim of the patent but rather was cited as an example of the benefit of the alleged infringement. “As explained with reference to Google’s first motion to strike portions of the [expert] report, the Patent Local Rules required Oracle to disclose the theories of infringement, not to identify every evidentiary item of proof supporting those theories.” Accordingly, the motion was denied with respect to mBS Mobile.

The district court also excluded a new infringement theory added in the reply expert report, referring to the new theory as “not true rebuttal” but rather “sandbagging.” “Here, the opening report identified a series of accused steps, and the reply report then sought to replace one step in the series with a different (and unspecified) accused element. Doing so would present a new infringement theory.” Accordingly, the district court struck this portion of the reply brief.

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The district court’s opinion highlights the need to make sure that infringement contentions are complete and detailed. They also should be supplemented as necessary. It also highlights the importance of including all opinions in the opening report of the expert. Failure to do either can lead to exclusion of expert evidence at trial.

Oracle America, Inc. v. Google Inc., Case No. C 10-03561 WHA (N.D. Cal. Oct. 11, 2011)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or