Free Reply Memorandum - District Court of California - California

Case 5:08-cv-02363-JW

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2 EDWAR R. REINS (Bar No. 135960)

1 MATTHEWD. POWERS (BarNo. 104795) matthew.powers(£weil.com

edward.reines(£weil.com 3 DOUGLAS E. LUMISH (BarNo. 183863) doug.lumish(£weil.com 4 THOMAS B. KING (Bar No. 241661) thomas.king(£weil.com 5 WElL, GOTSHAL & MANGES LLP 201 Redwood Shores Parkway
6 Redwood Shores, CA 94065

Telephone: (650) 802-3000
7 Facsimile: (650) 802-3100

9 MATTHEWM. SARORA(BarNo. 211600)
matthew.sarborara(£oracle.com

8 DEBORA K. MILLER (Bar No. 95527) deborah.miler(£oracle.com

10 ORACLE CORPORATION
500 Oracle Parkway
11 Redwood City, CA 94065 Telephone: (650) 506-5200
12 Facsimile: (650) 506-7114

13 Attorneys for Plaintiffs
ORACLE CORPORATION, ORACLE USA, INC., 14 ORACLE INTERNATIONAL CORPORATION, AN SffBEL SYSTEMS, INC.
15

16 17

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORN .

18 ORACLE CORPORATION, ORACLE USA, INC., ORACLE INTERNATIONAL 19 CORPORATION, AND SffBEL SYSTEMS, INC., 20 Plaintiffs,
21

Case No. C 08-2363-JW

v.

ORACLE'S REPLY TO ALCATEL LUCENT'S COUNTERCLAIMS, AND AFFIRMATIVE DEFENSES

22 ALCATEL LUCENT, ALCATEL-LUCENT HOLDINGS INC., ALCATEL USA, INC., 23 ALCATEL USA MARETING, INC., ALCATEL USA RESOURCES, INC.,
24 ALCATEL USA SOURCING, INC., LUCENT

25 TELECOMMUICATIONS
LABORATORIES, INC.,

TECHNOLOGffS INC., AN GENESYS

26

Defendants.
27
28
ORACLE'S REPLY TO COUNTERCLAIMS AND AFFIRMATIVE DEFENSES
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1 ORACLE'S REPLY TO ALCATEL LUCENT'S COUNTERCLAIMS,

2 AND AFFIRMTIVE DEFENSES
3 Plaintiffs Oracle Corporation, Oracle USA, Inc., Oracle International Corporation,

4 and Siebel Systems, Inc. (collectively "Oracle"), by and through their attorneys hereby submit
5 this Reply and Affrmative Defenses to the Counterclaims of

Defendants Alcatel Lucent, Alcatel-

6 Lucent Holdings Inc., Alcatel USA, Inc., Alcatel USA Marketing, Inc., Alcatel USA Resources,

7 Inc., Alcatel USA Sourcing, Inc., Lucent Technologies Inc., and Genesys Telecommunications
8 Laboratories, Inc. (collectively "the Alcatel Defendants") as follows:

9

1.

In response to paragraph 74 of the Alcatel Defendants' Counterclaims,

10 Oracle admits that Alcatel Lucent purports to be a French company whose principal place of

11 business is located at 54, rue La Boetie, 75008 Paris, France.
12

2.

In response to paragraph 75 of the Alcatel Defendants' Counterclaims,

13 Oracle admits that Alcatel-Lucent Holdings Inc. (f/a Alcatel USA Inc.) purorts to be a
14 corporation organized under the laws of the State of Delaware which maintains a place of
15 business at 3400 W. Plano Parkway, Plano, Texas.

16

3.

In response to paragraph 76 of the Alcatel Defendants' Counterclaims,

17 Oracle admits that Alcatel USA Marketing, Inc. purorts to be a corporation organzed under the

18 laws of the State of Delaware which maintains a place of business at 3400 W. Plano Parkway,

19 Plano, Texas.
20
4.
In response to paragraph 77 of the Alcatel Defendants' Counterclaims,

21 Oracle admits that Alcatel USA Sourcing, Inc. purports to be a corporation organized under the

22 laws of the State of Delaware which maintains a place of business at 3400 W. Plano Parkway,

23 Plano, Texas.
24
5.
In response to paragraph 78 of the Alcatel Defendants' Counterclaims,

25 Oracle admits that Lucent Technologies Inc. purports to be a corporation organized under the
26 laws of the State of Delaware which maintains a place of business at 600-700 Mountain Avenue,

27 Murray Hill, New Jersey.
28
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1

6.

In response to paragraph 79 of the Alcatel Defendants' Counterclaims,

2 Oracle admits that Genesys Telecommunications Laboratories, Inc. purorts to be a corporation
3 organized under the laws of the State of California which maintains a place of business at 2001
4 Junipero Serra Blvd., Daly City, California.

5

7.

In response to paragraph 80 of the Alcatel Defendants' Counterclaims,

6 Oracle Corporation admits that it is a corporation organized under the laws of the State of
7 Delaware, that it maintains its principal place of

business at 500 Oracle Parkway, Redwood City,

8 Californa, 94065, and that it conducts business in the Northern District of Californa.
9 8.
In response to paragraph 81 of the Alcatel Defendants' Counterclaims,

10 Oracle USA, Inc. admits that it is a corporation organized under the laws of the State of Colorado,
11 that it maintains its principal place of

business at 500 Oracle Parkway, Redwood City, California,
California.

12 94065, and that it conducts business in the Northern District of

13

9.

In response to paragraph 82 of the Alcatel Defendants' Counterclaims,

14 Oracle International Corporation admits that it is a corporation organized under the laws of the

15 State of Delaware, that it maintains its principal place of business at 500 Oracle Parkway,

16 Redwood City, California, 94065, and that it conducts business in the Northern Distrct of

17 Californa.
18

10.

In response to paragraph 83 of the Alcatel Defendants' Counterclaims,

19 Siebel Systems, Inc. admits that it is a corporation organized under the laws of the State of
20 Delaware, that it maintains its principal place of business at 500 Oracle Parkway, Redwood City,
21 Californa, 94065, and that it conducts business in the Northern District of

California.

22 JURISDICTION AND VENUE
23
11.
In response to paragraph 84 of the Alcatel Defendants' Counterclaims,

24 Oracle admits that the Alcatel Defendants' Counterclaims arse under the Patent Laws of the

25 United States and that this Cour has subject matter jurisdiction over such Counterclaims. Oracle

26 denies any and all remaining allegations in paragraph 84 of the Alcatel Defendants'
27 Counterclaims.

28
ORACLE'S REPLY TO COUNTERCLAIMS AND AFFIRMATIVE DEFENSES

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1

12.

In response to paragraph 85 of the Alcatel Defendants' Counterclaims,

2 Oracle admits that this is an intellectual property case. Oracle denies any and all remaining
3 allegations in paragraph 85 of

the Alcatel Defendants' Counterclaims.
13.
In response to paragraph 86 of the Alcatel Defendants' Counterclaims,

4

5 Oracle admits that venue is proper in this district. Oracle denies any and all remaining allegations
6 in paragraph 86 of the Alcatel Defendants' Counterclaims.

7

14.

In response to paragraph 87 of the Alcatel Defendants' Counterclaims,

8 Oracle admits that it is subject to personal jurisdiction in this distrct. Oracle denies any and all
9 remaining allegations in paragraph 87 of the Alcatel Defendants' Counterclaims.

10 COUNT I: COUNTERCLAIM FOR DECLARATORY JUDGMENT OF
11 NONINFRINGEMENT, INVALIDITY AND UNENFORCEABILITY OF U.S. PATENT

12 NO. 7,188,183
13

15.

In response to paragraph 88 of the Alcatel Defendants' Counterclaims,

14 Oracle realleges and incorporates by reference its responses to paragraphs 74 to 87.
15

16.

In response to paragraph 89 of the Alcatel Defendants' Counterclaims,

16 Oracle admits that Oracle International Corporation is the owner of U.S. Patent No. 7,188,183.

17 Oracle fuher admits that it filed this lawsuit against the Alcatel Defendants for infrngement of
18 the' 183 patent. Oracle fuher admits that an actual controversy exists between the paries.

19 Oracle denies any and all remaining allegations in paragraph 89 of the Alcatel Defendants'
20 Counterclaims.

21
22 Counterclaims.

17.

Oracle denies the allegations in paragraph 90 of the Alcatel Defendants'

23
24 Counterclaims.

18.

Oracle denies the allegations in paragraph 91 of the Alcatel Defendants'

25

26
27
28
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1 COUNT II: COUNTERCLAIM FOR DECLARATORY JUDGMENT OF
2 NONINFRINGEMENT, INVALIDITY AND UNENFORCEABILITY OF U.S. PATENT

3 NO. 6,661,877
4
19.
In response to paragraph 92 of the Alcatel Defendants' Counterclaims,

5 Oracle realleges and incorporates by reference its responses to paragraphs 74 to 91.
6

20.

In response to paragraph 93 of the Alcatel Defendants' Counterclaims,

7 Oracle admits that Oracle International Corporation is the owner of U.S. Patent No. 6,661,877.

8 Oracle further admits that it fied this lawsuit against the Alcatel Defendants for infrngement of
9 the '877 patent. Oracle fuher admits that an actual controversy exists between the paries.

10 Oracle denies any and all remaining allegations in paragraph 93 of the Alcatel Defendants'
11 Counterclaims.

12
13 Counterclaims.

21.

Oracle denies the allegations in paragraph 94 of the Alcatel Defendants'

14
15 Counterclaims.

22.

Oracle denies the allegations in paragraph 95 of the Alcatel Defendants'

16 COUNT III: COUNTERCLAIM FOR DECLARTORY JUDGMENT OF
17 NONINFRINGEMENT, INVALIDITY AND UNENFORCEABILITY OF U.S. PATENT

18 NO. 6,493,695
19

23.

In response to paragraph 96 of the Alcatel Defendants' Counterclaims,

20 Oracle realleges and incorporates by reference its responses to paragraphs 74 to 95.
21

24.

In response to paragraph 97 of the Alcatel Defendants' Counterclaims,

22 Oracle admits that Oracle International Corporation is the owner of U.S. Patent No. 6,493,695.

23 Oracle further admits that it fied this lawsuit against the Alcatel Defendants for infrngement of
24 the '695 patent. Oracle further admits that an actual controversy exists between the paries.

25 Oracle denies any and all remaining allegations in paragraph 97 of the Alcatel Defendants'
26 Counterclaims.

27

25.

Oracle denies the allegations in paragraph 98 of the Alcatel Defendants'

28 Counterclaims.
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1

26.

Oracle denies the allegations in paragraph 99 of the Alcatel Defendants'

2 Counterclaims.

3 COUNT iv: COUNTERCLAIM FOR DECLARTORY JUDGMENT OF
4 NONINFRINGEMENT, INVALIDITY AND UNENFORCEABILITY OF U.S. PATENT
5 NO. 7,171,190

6

27.

In response to paragraph 100 of the Alcatel Defendants' Counterclaims,

7 Oracle realleges and incorporates by reference its responses to paragraphs 74 to 99.

8

28.

In response to paragraph 101 of the Alcatel Defendants' Counterclaims,

9 Oracle admits that Oracle International Corporation is the owner of U.S. Patent No. 7,171,190.

10 Oracle further admits that it filed this lawsuit against the Alcatel Defendants for infrngement of

11 the' 190 patent. Oracle fuher admits that an actual controversy exists between the parties.
12 Oracle denies any and all remaining allegations in paragraph 101 of the Alcatel Defendants'
13 Counterclaims.

14

29.

Oracle denies the allegations in paragraph 102 of the Alcatel Defendants'

15 Counterclaims.

16
17 Counterclaims.

30.

Oracle denies the allegations in paragraph 103 of the Alcatel Defendants'

18 COUNT v: COUNTERCLAIM FOR DECLARTORY JUDGMENT OF
19 NONINFRINGEMENT, INVALIDITY AND UNENFORCEABILITY OF U.S. PATENT
20 NO. 7,039,176

21

31.

In response to paragraph 104 of the Alcatel Defendants' Counterclaims,

22 Oracle realleges and incorporates by reference its responses to paragraphs 74 to 103.
23

32.

In response to paragraph 105 of the Alcatel Defendants' Counterclaims,

24 Oracle admits that Oracle International Corporation is the owner of U.S. Patent No. 7,039,176.

25 Oracle further admits that it filed this lawsuit against the Alcatel Defendants for infrngement of

26 the' 176 patent. Oracle fuher admits that an actual controversy exists between the parties.
27 Oracle denies any and all remaining allegations in paragraph 105 of the Alcatel Defendants'
28 Counterclaims.
ORACLE'S REPLY TO COUNTERCLAIMS
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A TIVE DEFENSES

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1

33.

Oracle denies the allegations in paragraph 106 of the Alcatel Defendants'

2 Counterclaims.
3

34.

Oracle denies the allegations in paragraph 107 of the Alcatel Defendants'

4 Counterclaims.

5 COUNT VI: COUNTERCLAIM FOR DECLARTORY JUDGMENT OF
6 NONINFRINGEMENT, INVALIDITY AND UNENFORCEABILITY OF U.S. PATENT

7 NO. 7,136,448
8

35.

In response to paragraph 108 of the Alcatel Defendants' Counterclaims,

9 Oracle realleges and incorporates by

reference its responses to paragraphs 74 to 107.
In response to paragraph 109 of the Alcatel Defendants' Counterclaims,

10

36.

11 Oracle admits that Oracle International Corporation is the owner of U.S. Patent No.7, 136,448.

12 Oracle fuher admits that it filed this lawsuit against the Alcatel Defendants for infrngement of

13 the' 448 patent. Oracle further admits that an actual controversy exists between the parties.
14 Oracle denies any and all remaining allegations in paragraph 109 of the Alcatel Defendants'
15 Counterclaims.

16
17 Counterclaims.

37.

Oracle denies the allegations in paragraph 110 of the Alcatel Defendants'

18
19 Counterclaims.

38.

Oracle denies the allegations in paragraph 111 of the Alcatel Defendants'

20 COUNT VII: U.S. PATENT NO. 5,418,943
21

39.

In response to paragraph 112 of the Alcatel Defendants' Counterclaims,

22 Oracle realleges and incorporates by reference its responses to paragraphs 74 to 111.
23
40.
In response to paragraph 113 of the Alcatel Defendants' Counterclaims,

24 Oracle admits that Lucent Technologies Inc. purports to be the owner of U.S. Patent No.
25 5,418,943. Oracle further admits that a copy of

the '943 patent was attached to the Complaint as

26 Exhibit G. Oracle denies any and all remaining allegations in paragraph 113 of the Alcatel
27 Defendants' Counterclaims.

28
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1

41.

Oracle denies the allegations in paragraph 114 of the Alcatel Defendants'

2 Counterclaims.
3

42.

Oracle denies the allegations in paragraph 115 of the Alcatel Defendants'

4 Counterclaims.

5 COUNT VIII: U.S. PATENT NO. 6,272,502
6

43.

In response to paragraph 116 of the Alcatel Defendants' Counterclaims,

7 Oracle realleges and incorporates by reference its responses to paragraphs 74 to 115.

8

44.

In response to paragraph 117 of the Alcatel Defendants' Counterclaims,

9 Oracle admits that Lucent Technologies Inc. purorts to be the owner of U.S. Patent No.
10 6,272,502. Oracle further admits that a copy of

the '502 patent was attached to the Complaint as

11 Exhibit H. Oracle denies any and all remaining allegations in paragraph 117 of the Alcatel
12 Defendants' Counterclaims.

13

45.

Oracle denies the allegations in paragraph 118 of the Alcatel Defendants'

14 Counterclaims.
15

46.

Oracle denies the allegations in paragraph 119 of the Alcatel Defendants'

16 Counterclaims.

17 COUNT IX: U.S. PATENT NO. 6,205,449
18

47.

In response to paragraph 120 of the Alcatel Defendants' Counterclaims,

19 Oracle realleges and incorporates by reference its responses to paragraphs 74 to 119.
20 48.
In response to paragraph 121 of the Alcatel Defendants' Counterclaims,

21 Oracle admits that Lucent Technologies Inc. purorts to be the owner of U.S. Patent No.
22 6,205,449. Oracle further admits that a copy of

the '449 patent was attached to the Complaint as

23 Exhibit i. Oracle denies any and all remaining allegations in paragraph 121 of the Alcatel

24 Defendants' Counterclaims.

25

49.

Oracle denies the allegations in paragraph 122 of the Alcatel Defendants'

26 Counterclaims.

27
28 Counterclaims.

50.

Oracle denies the allegations in paragraph 123 of the Alcatel Defendants'

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1

COUNT X: u.s. PATENT NO. 6,502,133
51.
In response to paragraph 124 of the Alcatel Defendants' Counterclaims,

2

3 Oracle realleges and incorporates by reference its responses to paragraphs 74 to 123.

4

52.

In response to paragraph 125 of the Alcatel Defendants' Counterclaims,

5 Oracle admits that Lucent Technologies Inc. purports to be the owner of U.S. Patent No.
6 6,502,133. Oracle fuher admits that a copy of

the '133 patent was attached to the Complaint as

7 Exhibit J. Oracle denies any and all remaining allegations in paragraph 125 of the Alcatel

8 Defendants' Counterclaims.

9
10 Counterclaims.
11

53.

Oracle denies the allegations in paragraph 126 of the Alcatel Defendants'

54.

Oracle denies the allegations in paragraph 127 of the Alcatel Defendants'

12 Counterclaims.

13 COUNT XI: u.s. PATENT NO. 5,649,068
14

55.

In response to paragraph 128 of the Alcatel Defendants' Counterclaims,

15 Oracle realleges and incorporates by reference its responses to paragraphs 74 to 126.
16

56.

In response to paragraph 129 of the Alcatel Defendants' Counterclaims,

17 Oracle admits that Lucent Technologies Inc. purports to be the owner of U.S. Patent No.

18 5,649,068. Oracle fuher admits that a copy of the '068 patent was attached to the Complaint as

19 Exhibit L. Oracle denies any and all remaining allegations in paragraph 129 of the Alcatel
20 Defendants' Counterclaims.

21
22 Counterclaims.

57.

Oracle denies the allegations in paragraph 130 of the Alcatel Defendants'

23
24 Counterclaims.

58.

Oracle denies the allegations in paragraph 131 of the Alcatel Defendants'

25 COUNT XII: U.S. PATENT NO. 6,732,156
26
59.
In response to paragraph 132 of the Alcatel Defendants' Counterclaims,

27 Oracle realleges and incorporates by reference its responses to paragraphs 74 to 131.
28
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1

60.

In response to paragraph 133 of the Alcatel Defendants' Counterclaims,

2 Oracle admits that Genesys purorts to be the owner of

US. Patent No. 6,732,156. Oracle fuher

3 admits that a copy of

the '156 patent was attached to the Complaint as Exhibit M. Oracle denies

4 any and all remaining allegations in paragraph 133 ofthe Alcatel Defendants' Counterclaims.

5

61.

Oracle denies the allegations in paragraph 134 of the Alcatel Defendants'

6 Counterclaims.

7
8 Counterclaims.
9 PRAYER

62.

Oracle denies the allegations in paragraph 135 of the Alcatel Defendants'

FOR

RELIEF

10

63.

Oracle denies that the Alcatel Defendants are entitled to any relief at all,

11 including the relief requested in the Alcatel Defendants' Counterclaims. The Alcatel Defendants'

12 prayer for relief should be denied in its entirety and with prejudice, and the Alcatel Defendants
13 should take nothing.

14 AFFIRMTIVE DEFENSES
15 For its Affirmative Defenses, Oracle states as follows:

16 FIRST AFFIRMATIVE DEFENSE
17

64.

The Alcatel Defendants' Counterclaims fail to state a claim upon which

18 relief can be granted.

19 SECOND AFFIRMATIVE DEFENSE
20
65.

Oracle does not and has not infrnged, either directly, indirectly,

21 contrbutorily, or by inducement, any claim of the patents in suit either literally or under the
22 doctrine of equivalents, wilfully or otherwise.

23 THIRD AFFIRMATIVE DEFENSE
24
66.

The patents asserted in the Alcatel Defendants' Counterclaims are invalid,

25 unenforceable, and/or void for failure to satisfy the requirements of patentability contained in 35

26 US.C.,including without limitation §§ 101, 102, 103 and/or 112.
27
28
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1

FOURTH AFFIRMATIVE DEFENSE
67.
The Alcatel Defendants' Counterclaims are bared, in whole or in par,

2
3 pursuant to the doctrnes of

waiver, estoppel and/or laches.

4 FIFTH AFFIRMATIVE DEFENSE
5

68.

The Alcatel Defendants are barred in whole or in par from recovering

6 damages under 35 U.S.c. § 287.

7 SIXTH AFFIRMATIVE DEFENSE
8

69.

The Alcatel Defendants' Counterclaims are barred in whole or in part

9 pursuant to the doctrine of prosecution history estoppel.

10 SEVENTH AFFIRMATIVE DEFENSE
11

70.

The patents asserted in the Alcatel Defendants' Counterclaims are

12 unenforceable due to inequitable conduct as set forth herein.

13 THE '943 PATENT
14

71.

The '943 patent is unenforceable due to inequitable conduct. Upon

15 information and belief, and based on Oracle's understanding of the allegations by the Alcatel
16 Defendants, one or more of the people substantively involved in the prosecution of

the application

17 leading to the '943 patent were aware of information material to the patentability of the claims of
18 the '943 patent, but withheld that information from the Patent Office with the intent to deceive.
19

72.

During the prosecution of the application leading to the '943 patent, one or

20 more of the people substantively involved in its prosecution (including Ronald Brachman and
21 Alex Borgida) were aware ofR.M. Arbarbanel & M.D. Williams, A Relational Representation

for

22 Knowledge Bases, in Expert Database Systems (L. Kerschberg, ed., 1987). Based on Oracle's
23 understanding of the Alcatel Defendants' infrngement allegations, Arbarbanel contains

24 information material to patentability. Nonetheless, those substantively involved in the
25 prosecution of the application leading to the '943 patent failed to disclose this material
26 information to the Patent Office at any time durng the prosecution of the '943 patent with intent

27 to deceive. This withholding of information material to patentability with the intent to deceive
28 the Patent Offce constitutes inequitable conduct.
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1

73.

Durng the prosecution of the application leading to the '943 patent, one or

2 more of the people substantively involved in its prosecution (including Ronald Brachman and
3 Alex Borgida) were aware ofP.A. Bernstein, Database System Support

for Software Engineering

4 An Extended Abstract, Proc. ICSE-87 166-78 (1987). Based on Oracle's understanding of the

5 Alcatel Defendants' infrngement allegations, Bernstein contains information material to
6 patentability. Nonetheless, those substantively involved in the prosecution of the application
7 leading to the '943 patent failed to disclose this material information to the Patent Offce at any

8 time during the prosecution of the '943 patent with intent to deceive. This withholding of
9 information material to patentability with the intent to deceive the Patent Office constitutes

10 inequitable conduct.
11

74.

During the prosecution of the application leading to the '943 patent, one or

12 more of the people substantively involved in its prosecution (including Ronald Brachman and

13 Alex Borgida) were aware ofW. Kim et al., Integrating an Object-Oriented Programming System

14 with a Database System, Proc. OOPSLA '88 142-152 (1988). Based on Oracle's understanding
15 of the Alcatel Defendants' infrngement allegations, Kim contains information material to
16 patentability. Nonetheless, those substantively involved in the prosecution of the application

17 leading to the '943 patent failed to disclose this material information to the Patent Offce at any

18 time during the prosecution of the '943 patent with intent to deceive. This withholding of
19 information material to patentability with the intent to deceive the Patent Offce constitutes

20 inequitable conduct.
21

75.

During the prosecution of the application leading to the '943 patent, one or

22 more of the people substantively involved in its prosecution (including Ronald Brachman and
23 Alex Borgida) were aware ofE. Mays et al., A Persistent Store

for Large Knowledge Bases, Proc.

24 6th ffEE Conf. on AI Applications 169-175 (1990). Based on Oracle's understanding of the

25 Alcatel Defendants' infrngement allegations, Mays contains information material to patentability.
26 Nonetheless, those substantively involved in the prosecution of

the application leading to the '943

27 patent failed to disclose this material information to the Patent Offce at any time during the
28
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1 prosecution of the '943 patent with intent to deceive. This withholding of information material to
2 patentability with the intent to deceive the Patent Office constitutes inequitable conduct.

3

76.

Durng the prosecution of the application leading to the '943 patent, one or

4 more of the people substantively involved in its prosecution (including Ronald Brachman and
5 Alex Borgida) were aware ofD. Metaxas & S. Sellis, Database Implementation

for Large Frame

6 Based Systems, Proc. 2d Intl'l. Conf. on Data and Knowledge Engineering for Manufacturing and

7 Engineering 19-25 (1989). Based on Oracle's understanding of the Alcatel Defendants'

8 infrngement allegations, Metaxas, contains information material to patentability. Nonetheless,
9 those substantively involved in the prosecution of the application leading to the '943 patent failed

10 to disclose this material information to the Patent Office at any time during the prosecution of the

11 '943 patent with intent to deceive. This withholding of information material to patentability with
12 the intent to deceive the Patent Offce constitutes inequitable conduct.

13 THE '502 PATENT
14

77.

The '502 patent is unenforceable due to inequitable conduct. Upon

15 information and belief, and based on Oracle's understanding of the allegations by the Alcatel
16 Defendants, one or more of the people substantively involved in the prosecution of

the application

17 leading to the '502 patent were aware of information material to the patentability of the claims of
18 the '502 patent, but withheld that information from the Patent Office with the intent to deceive.
19

78.

During the prosecution of

the application leading to the '502 patent, one or

20 more of the people substantively involved in its prosecution (including Latha Colby) were aware
21 of Latha S. Colby & Inderpal S. Mumick, Staggered Maintenance of

Multiple Views, presented at

22 Workshop on Materialized Views: Techniques and Applications (June 7, 1996). Based on
23 Oracle's understanding of the Alcatel Defendants' infrngement allegations, Staggered

24 Maintenance of Multiple Views contains information material to patentability. Nonetheless, those

25 substantively involved in the prosecution of the application leading to the '502 patent failed to
26 disclose this material information to the Patent Office at any time durng the prosecution of the
27 '502 patent with intent to deceive. This withholding of

information material to patentability with

28 the intent to deceive the Patent Office constitutes inequitable conduct.
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1

THE '133 PATENT
79.

2

The ' 133 patent is unenforceable due to inequitable conduct. Upon

3 information and belief, and based on Oracle's understanding of the allegations by the Alcatel

4 Defendants, one or more of the people substantively involved in the prosecution of the application
5 leading to the ' 133 patent were aware of information material to the patentability of the claims of

6 the '133 patent, but withheld that information from the Patent Offce with the intent to deceive.

7

80.

Durng the prosecution of the application leading to the' 133 patent, one or

8 more of the people substantively involved in its prosecution (including Gerald Baulier, Stephen
9 Blott, Philip Bohanon, Benson Branch, and Thomas Cliff) were aware of European Patent No.

10 EP0809387 (filed May 20, 1997). Based on Oracle's understanding of the Alcatel Defendants'

11 infrngement allegations, the '387 patent contains information material to patentability.
12 Nonetheless, those substantively involved in the prosecution of

the application leading to the '133

13 patent failed to disclose this material information to the Patent Office at any time durng the
14 prosecution ofthe '133 patent with intent to deceive. This withholding of

information material to

15 patentability with the intent to deceive the Patent Office constitutes inequitable conduct.
16

81.

Durng the prosecution of

the application leading to the '133 patent, one or

17 more of the people substantively involved in its prosecution (including Gerald Baulier, Stephen
18 Blott, Philip Bohanon, Benson Branch, and Thomas Cliff) were aware of European Patent No.

19 EP0809410 (filed May 20, 1997). Based on Oracle's understanding of the Alcatel Defendants'

20 infrngement allegations, the '410 patent contains information material to patentability.
21 Nonetheless, those substantively involved in the prosecution of

the application leading to the '133

22 patent failed to disclose this material information to the Patent Office at any time durng the
23 prosecution of the' 133 patent with intent to deceive. This withholding of information material to
24 patentability with the intent to deceive the Patent Offce constitutes inequitable conduct.
25

82.

Durng the prosecution of

the application leading to the '133 patent, one or

26 more of the people substantively involved in its prosecution (including Philip Bohanon) were
27 aware of U.S. Patent No. 5,845,292 (filed Dec. 16, 1996). Based on Oracle's understanding of
28 the Alcatel Defendants' infrngement allegations, the '292 patent contains information material to
ORACLE'S REPLY TO COUNTERCLAIMS AND AFFIRMATIVE DEFENSES

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1 patentability. Nonetheless, those substantively involved in the prosecution of the application
2 leading to the '133 patent failed to disclose this material information to the Patent Offce at any

3 time during the prosecution of the ' 133 patent with intent to deceive. This withholding of
4 information material to patentability with the intent to deceive the Patent Offce constitutes

5 inequitable conduct.

6

83.

Durng the prosecution of

the application leading to the '133 patent, one or

7 more of the people substantively involved in its prosecution (including Philip Bohanon) were
8 aware of U.S. Patent No. 5,864,849 (filed Dec. 16, 1996). Based on Oracle's understanding of
9 the Alcatel Defendants' infrngement allegations, the '849 patent contains information material to
10 patentability. Nonetheless, those substantively involved in the prosecution of the application

11 leading to the ' 133 patent failed to disclose this material information to the Patent Offce at any

12 time during the prosecution of the '133 patent with intent to deceive. This withholding of
13 information material to patentability with the intent to deceive the Patent Office constitutes

14 inequitable conduct.
15

84.

Durng the prosecution of the application leading to the ' 133 patent, one or

16 more of the people substantively involved in its prosecution (including Stephen Blott) were aware
17 of

U.S. Patent No. 6,119,173 (filed Oct. 7, 1997). Based on Oracle's understanding ofthe Alcatel

18 Defendants' infrngement allegations, the ' 1 73 patent. contains information material to
19 patentability. Nonetheless, those substantively involved in the prosecution of the application

20 leading to the ' 133 patent failed to disclose this material information to the Patent Office at any

21 time durng the prosecution of the ' 133 patent with intent to deceive. This withholding of
22 information material to patentability with the intent to deceive the Patent Offce constitutes

23 inequitable conduct.

24 THE '068 PATENT
25
85.

The '068 patent is unenforceable due to inequitable conduct. Upon
the allegations by the Alcatel

26 information and belief, and based on Oracle's understanding of

27 Defendants, one or more of the people substantively involved in the prosecution of the application

28
ORACLE'S REPLY TO COUNTERCLAIMS AND AFFIRMATIVE DEFENSES

14

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1 leading to the '068 patent were aware of

information material to the patentability of

the claims of

2 the '068 patent, but withheld that information from the Patent Office with the intent to deceive.

3

86.

Durng the prosecution ofthe application leading to the '068 patent, one or

4 more ofthe people substantively involved in its prosecution (including Vladimir Vapnik) were
5 aware of Vladimir Vapnik, Estimation of

Dependencies Based on Empirical Data (1982). Based

6 on Oracle's understanding ofthe Alcatel Defendants' infrngement allegations, Estimation of

7 Dependencies Based on Empirical Data contains information material to patentability.
8 Nonetheless, those substantively involved in the prosecution of

the application leading to the '068

9 patent failed to disclose this material information to the Patent Office at any time durng the
10 prosecution of the '068 patent with intent to deceive. This withholding of

information material to

11 patentability with the intent to deceive the Patent Offce constitutes inequitable conduct.

12 THE '156 PATENT
13

87.

The '156 patent is unenforceable due to inequitable conduct. Upon

14 information and belief, and based on Oracle's understanding of the allegations by the Alcatel
15 Defendants, one or more of the people substantively involved in the prosecution of

the application

16 leading to the ' 156 patent were aware of information material to the patentability of the claims of

17 the' 156 patent, but withheld that information from the Patent Office with the intent to deceive.
18

88.

During the prosecution of the application leading to the ' 156 patent, one or

19 more of the people substantively involved in its prosecution (including Alec Miloslavsky and
20 Donald Boys) were aware of

U.S. Patent No. 5,619,648 (filed Nov. 30, 1994). Based on Oracle's

21 understanding of the Alcatel Defendants' infrngement allegations, the '648 patent contains

22 information material to patentability. Nonetheless, those substantively involved in the
23 prosecution of the application leading to the ' 156 patent failed to disclose this material
24 information to the Patent Office at any time during the prosecution of

the '156 patent with intent

25 to deceive. This withholding of information material to patentability with the intent to deceive
26 the Patent Offce constitutes inequitable conduct.
27
89.

Durng the prosecution of the application leading to the ' 156 patent, one or

28 more of the people substantively involved in its prosecution (including Alec Miloslavsky and
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1 Donald Boys) were aware of

U.S. Patent No. 5,721,770 (fied Jun. 2, 1996). Based on Oracle's

2 understanding of the Alcatel Defendants' infrngement allegations, the '770 patent contains
3 information material to patentability. Nonetheless, those substantively involved in the

4 prosecution of the application leading to the '156 patent failed to disclose this material
5 information to the Patent Offce at any time durng the prosecution of the ' 156 patent with intent

6 to deceive. This withholding of information material to patentability with the intent to deceive
7 the Patent Office constitutes inequitable conduct.

8

90.

Durng the prosecution of the application leading to the ' 156 patent, one or

9 more of the people substantively involved in its prosecution (including Alec Miloslavsky and
10 Donald Boys) were aware of

U.S. Patent No. 5,206,903 (filed Dec. 16, 1990). Based on Oracle's

11 understanding of the Alcatel Defendants' infrngement allegations, the '903 patent contains

12 information material to patentability. Nonetheless, those substantively involved in the
13 prosecution of the application leading to the ' 156 patent failed to disclose this material
14 information to the Patent Office at any time durng the prosecution of

the '156 patent with intent

15 to deceive. This withholding of information material to patentability with the intent to deceive
16 the Patent Office constitutes inequitable conduct.
17

91.

Durng the prosecution of the application leading to the' 156 patent, one or

18 more of the people substantively involved in its prosecution (including Alec Miloslavsky and
19 Donald Boys) were aware of

U.S. Patent No. 5,563,805 (filed Aug. 16, 1994. Based on Oracle's

20 understanding of the Alcatel Defendants' infrngement allegations, the '805 patent contains

21 information material to patentability. Nonetheless, those substantively involved in the
22 prosecution of the application leading to the ' 156 patent failed to disclose this material
23 information to the Patent Offce at any time durng the prosecution of the ' 156 patent with intent

24 to deceive. This withholding of information material to patentability with the intent to deceive
25 the Patent Office constitutes inequitable conduct.
26
92.

Durng the prosecution of the application leading to the ' 156 patent, one or

27 more of the people substantively involved in its prosecution (including Alec Miloslavsky and
28 Donald Boys) were aware of

U.S. Patent No. 5,948,054 (filed Feb. 27, 1996). Based on Oracle's
16
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AND AFFIRM

A TIVE DEFENSES

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1 understanding of the Alcatel Defendants' infrngement allegations, the '054 patent contains
2 information material to patentability. Nonetheless, those substantively involved in the

3 prosecution of the application leading to the '156 patent failed to disclose this material
4 information to the Patent Office at any time during the prosecution of

the '156 patent with intent

5 to deceive. This withholding of information material to patentability with the intent to deceive
6 the Patent Office constitutes inequitable conduct.

7 DEMAND FOR JURY TRIAL
8 93. Oracle demands a trial by jur on all issues so triable.

9 Dated: June 25, 2008 WEIL, GOTSHAL & MANGES LLP
10
11

By:

lsi
Douglas E. Lumish doug.lumish(£weil.com
Attorneys for Plaintiffs

12
13

14
15

16 17
18

ORACLE CORPORATION, ORACLE USA, INC., ORACLE INTERNATIONAL CORPORATION, AND SffBEL SYSTEMS, INC.

19

20
21

22
23

24
25

26 27
28
ORACLE'S REPLY TO COUNTERCLAIMS
AND AFFIRM

A TIVE DEFENSES

17

Case No. C 08-2363-JW