NDCA Addresses Pre-Trial Procedure for Streamlining Patent Marking Defense

In Oracle America, Inc. v. Google Inc., No. C-10-03561 WHA (NDCA Jan. 31, 2012), Judge Alsup issued an order concerning a patent marking procedure that Oracle (plaintiff) and Google (defendant) on which the parties had agreed to streamline the marking issue for trial. The court was concerned that disputes over which of Oracle's products practiced the asserted claims would devolve into an "infringement" type analysis at trial. The court thus forced the parties to devise a procedure that would simplify the issue. The procedure is interesting because it eliminates the "infringement" analysis at trial by forcing the parties to stipulate to products that practice the claims and thus must be marked. However, the court found that Google had violated the agreed procedure.

In the first step, plaintiff Oracle submitted a list of its products that practice each asserted patent, and provided supporting evidence. The next step required Google to respond and (a) identify any products in Oracle's identification that Google contends do not practice the claims, and (b) identify any additional Oracle products that Google contends practice the claims and explain why. Instead of doing this, Google merely objected to Oracle's evidence.

The court ordered Google to comply with the stipulated order and analyze whether the products identified by Oracle practice the asserted claims (not merely object to the evidence submitted by Oracle). The court observed:

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 comply or withdraw its patent marking defense.

The procedure was designed for the parties to prepare a stipulation of which products practice the asserted claims. The court admonished Google that it could not simply assert that by identifying certain products Oracle had admitted a failure to mark and that therefore Google has no need to respond to Oracle's identification of products that practice the claims. If that were allowed, Google could have its cake and eat it: Google could prevail on the marking defense without having to admit items that may hurt Google on other issues, such as the question of an injunction should Google lose at trial. That is, if Google admits that certain products practice the asserted claims, that admission might seal its marking defense, but would be detrimental to its defense that an injunction is not warranted, in the event such admitted products compete with the Google products found to infringe.