Dear Judge Alsup:

Is Google really saying that it is not on notice of Oracle’s infringement theories?

The Android platform was created by Google and was released and promoted for widespread adoption. Having succeeded in that goal, Google now wants to throw its licensees and users under the bus, and feign ignorance of the uses to which its creation is being put.

I gather Oracle has figured out that this is going to be a hard-fought case, not an easy payday after all, and that it's going to take a long time and effort:

To prosecute the case more efficiently, Oracle asked Google to stipulate that Google’s partners’ and licensees’ versions of Android are the same in relevant aspects as the versions that Google distributes; Google declined. Google’s refusal may necessitate difficult third-party and even international discovery, but this issue bears on the ultimate proof at trial, not on the sufficiency of Oracle’s infringement contentions.

Update: This is probably a good place to put a snip from the Android FAQ that Groklaw member jbb found and posted in a comment:

Is compatibility mandatory?

No. The Android Compatibility Program is optional. Since the Android source code is open, anyone can use it to build any kind of device. However, if a manufacturer wishes to use the Android name with their product, or wants access to Android Market, they must first demonstrate that the device is compatible.

Oracle and Google have each thrown a dime on the ground and they are each standing firm on it. Oracle believes, apparently, that all Androids are the same with regard to the infringement; Google thinks they are different enough that Oracle needs to get specific. Both have able legal advice, and that means usually that each has found cases that support it.

I will show you Oracle's case in a minute. But if you are Google, and you don't think you've infringed a thing or that the Oracle patents are invalid anyhow, why would you just give up without a fight? Even if Google were to lose in the end, it will be years before Oracle sees a penny from this case, and while Oracle spends millions for an uncertain result in the end, all the time this case winds its way through the molasses that is the US court system, Android is simply taking over the world and evolving and morphing too.

Oracle says it's given Google what it needs to prepare, hundreds of pages of examples, and it listed all the versions of Android it could think of that it believes infringe, seven "representative" Android devices, Google’s Nexus One and Nexus S; the HTC EVO 4G, Droid Incredible, and G2; the Motorola Droid; and the Samsung Captivate. As far as Oracle is concerned, they all infringe. It doesn't know if the version of Android that came out since the case was filed, Gingerbread, infringes. It's looking into that, but what more can Oracle be expected to tell Google? 407 pages [PDF] isn't sufficient? Is Google kidding, you can almost hear Oracle asking?

As for Google's argument that Oracle must provide proof of a lack of noninfringing uses in connection with its claim of contributory infringement, Oracle is blunt:

With respect to contributory infringement specifically, the Patent Local Rules do not require any “allegation as to the lack of noninfringing uses as required by 35 U.S.C. 271(c).” Patent L.R. 3-1(d) requires a patentee to identify “any direct infringement and a description of the acts of the alleged indirect infringer that contribute to or are inducing that direct infringement.” Oracle has done that.

Induced infringement under 35 U.S.C. 271(b) requires the direct infringement by another entity, and that this direct infringement be “actively induce[d]” by the party accused under Section 271(b). See i4i Ltd. Partnership, 598 F.3d at 851. As the above excerpts from the complaint illustrate, no entity other than defendant as been accused of directly infringing the ’421 patent. Moreover, there are insufficient facts supporting a plausible inference of active inducement. The complaint merely alleged that defendant “makes, uses, sells and/or offers to sell” the accused infringing product, and continued to “intentionally” and “wilfully” infringe after receiving notice by plaintiff in April 2009 of possible infringement of the ’421 patent (Compl. ¶¶ 11–13). No mention of any “specific intent to encourage another’s infringement” is made.

Similarly, the complaint is devoid of facts to support a plausible inference of contributory infringement. As the excerpts from the complaint illustrate, there was no allegation by plaintiff that the accused commercial kitchen product was a “component of a patented machine . . . constituting a material part of the [patented] invention” or that the accused product was not capable of “substantial noninfringing use” (ibid.). 35 U.S.C. 271(c). Nothing alleged in the complaint fits the theory of contributory infringement.

But Oracle has a case too. Here's Oracle's, Dynacore Holdings Corp. v. U.S. Philips Corp. At first it seemed to me to be an odd choice, given its, to my reading, support of Google's position, but look at the last paragraph of this excerpt:

Perhaps the clearest articulation of the error inherent in Dynacore's allegations arose not in the context of patent law, but rather in a complex question of copyright law. Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984). Sony's Betamax allowed home users to tape copyrighted programs from their televisions. The copyright owners sued Sony for contributory infringement. Id. at 419, 104 S.Ct. 774. The parties conceded that consumers could use the Betamax to tape programs for both infringing and non-infringing purposes. The Supreme Court found that concession fatal to the contributory infringement claim: "The Betamax is, therefore, capable of substantial non-infringing uses. Sony's sale of such equipment to the general public does not constitute contributory infringement of respondents' copyrights." Id. at 456, 104 S.Ct. 774.

The Supreme Court's reasoning derived from patent law because "[t]here is no precedent in the law of copyright for the imposition of vicarious liability.... The closest analogy is provided by the patent law cases to which it is appropriate to refer because of the historic kinship between patent law and copyright law." Id. at 439, 104 S.Ct. 774. "In the Patent Act both the concept of infringement and the concept of contributory infringement are expressly defined by statute." Id. at 440, 104 S.Ct. 774. Nevertheless, the Patent Act does not suggest "that one patentee may object to the sale of a product that might be used in connection with other patents. Moreover, the Act expressly provides that the sale of a 'staple article or commodity of commerce suitable for substantial non-infringing use' is not contributory infringement." Id. (citations omitted).

Of more direct relevance to Dynacore, however, was the Supreme Court's explanation that the statutory theories of indirect patent infringement, as developed through case law, "deny the patentee any right to control the distribution of unpatented articles unless they are unsuited for any commercial non-infringing use," id. at 441, 104 S.Ct. 774 (citation omitted), because the "sale of an article which though adapted to an infringing use is also adapted to other and lawful uses, is not enough to make the seller a[n indirect] infringer. Such a rule would block the wheels of commerce." Id. at 442, 104 S.Ct. 774 (citations omitted).

The Sony standard for vicarious infringement liability, which the Supreme Court imported into copyright law from the narrow patent law reference to "a staple article or commodity of commerce suitable for substantial non-infringing use," 35 U.S.C. § 271(c) (emphasis added), remains a valid articulation of patent law even beyond staple articles and commodities: The mere sale of a product capable of substantial non-infringing uses does not constitute indirect infringement of a patent. See, e.g., Jansen, 342 F.3d at 1332; Anton/Bauer, 329 F.3d at 1349.

Dynacore must therefore either demonstrate that LANs compliant with the IEEE 1394 Standard necessarily infringe the '732 Patent, or point to a specific instance of direct infringement and restrict its suit to liability stemming from that specific instance. We must therefore determine whether all LANs compliant with the IEEE 1394 Standard directly infringe the '732 Patent, or whether there may also be substantial non-infringing configurations of IEEE 1394 compliant networks. We do not reach the defendant's liability under § 271(b) or (c) if there are substantial non-infringing uses of the defendants' products and there is no evidence of active and willful inducement.

I'm thinking what Oracle will argue at the hearing is that all Androids of necessity do infringe and that Google is guilty of "active and willful" inducement, and so for that reason it doesn't have to point to a specific instance of direct infringement. In any case, this is what it looks like the hearing will be about on the topic of requirements for Oracle to disclose specific acts. Everything will depend, I would say, on whether Google can demonstrate that some Android products are so different from the others that they can't possibly infringe or that if they do infringe, they do so in such a variety of different ways that they can't prepare a defense unless Oracle gives them a map with at least some X's on it, or that the patents represent an insignificant part of the products even if they are infringing and Androids have lots of noninfringing uses, that Oracle is, in effect, trying to shut down the wheels of commerce. And the one weakness that really could matter is whether Gingerbread doesn't turn out to be like the others. If that is what Oracle determines, then its entire argument falls, I think. Then the 7 Android products are representative of nothing except Oracle's need to get specific about all seven, distinguished from Gingerbread. All means all, and if Gingerbread doesn't infringe, there is no 'all' in this picture.

These are their positions, then, as they glare at each other across the field of battle, but remember that these are just the arguments about one topic -- whether or not Oracle must provide more specifics. Still, because of the two cases and the arguments each is making, I'd say we will get a pretty good look at the direction things will take after the dispute is settled.

Here's the docket:

02/07/2011 - 82 - Memorandum in Opposition re 79 MOTION to Compel Regarding Oracle's Patent Local Rule 3-1 Disclosures filed by Oracle America, Inc.. (Peters, Marc) (Filed on 2/7/2011) (Entered: 02/07/2011)

02/08/2011 - 83 - NOTICE of Appearance by Cheryl A. Sabnis of Counsel of Renny F. Hwang (Sabnis, Cheryl) (Filed on 2/8/2011) (Entered: 02/08/2011)

Update 2: The lawyers worked it out at the meet and confer prior to the hearing:

02/09/2011 - 84 - Minute Entry: Discovery Hearing held on 2/9/2011 before William Alsup (Date Filed: 2/9/2011). (Court Reporter Kathy Wyatt.) (dt, COURT STAFF) (Date Filed: 2/9/2011) (Entered: 02/09/2011)

02/09/2011 - 85 - ORDER REGARDING DISCOVERY AND DISCLOSURE DISPUTES re 77 First MOTION to Compel Google's Responses To Interrogatory Nos. 4-16 filed by Oracle America, Inc., 79 MOTION to Compel Regarding Oracle's Patent Local Rule 3-1 Disclosures filed by Google Inc.. Signed by Judge Alsup on February 9, 2011. (whalc1, COURT STAFF) (Filed on 2/9/2011) (Entered: 02/09/2011)

02/09/2011 - 86 - ORDER REGARDING MOTION MRACTICE. Signed by Judge Alsup on February 9, 2011. (whalc1, COURT STAFF) (Filed on 2/9/2011) (Entered: 02/09/2011)

ORDERED AFTER HEARING:

Parties met and conferred in the Court’s jury room from 8:00 am to 11:00 am. Parties stated for the record they agreed to further supplement the disclosures by 2/18/11 and will update the infringement and non-infringement contentions by 4/1/11. The interrogatory responses have also been resolved.

And the judge says he's really busy with a criminal trial, so for now he doesn't want any motions filed unless they ask for permission:

As explained at the February 9 hearing, a large-scale criminal trial before the undersigned judge will begin on March 7, 2011, and is expected to conclude during the late summer. Because this trial will consume an unusual amount of time and resources, motions in civil cases will be considered and heard only on a selective basis. Except for discovery disputes, no motions may be filed in this action without prior written approval. A party seeking approval to file a motion must file a précis that summarizes the essence of the motion and explains its urgency. Any party opposing approval to file based on the précis may file an opposition by noon on the second business day following the day on which the précis was filed. Both the précis and the opposition must be three double-spaced pages or shorter and may not contain footnotes or attachments. After considering the précis and the opposition (if any), the Court will either grant or deny leave to file the motion. If leave is granted, a briefing schedule and hearing date will be set.

Here is Oracle's Memorandum in Opposition as text, so you can read all the other points Oracle makes. I confess that this case is starting to fascinate me. It's just about perfect for learning about patent law, I'd say, because I learned a lot just from this one motion, and that's our goal:

*************************

[Morrison & Foerster letterhead]

February 7, 2011

The Hon. William Alsup
United States District Court
Northern District of California
450 Golden Gate Avenue
Courtroom 9, 9th Floor
San Francisco, CA 94102

Re: Oracle America Inc. v. Google Inc., Case No. 3:10-cv-03561-WHA
Opposition to Google’s Motion to Compel Infringement Contentions

Dear Judge Alsup:

Is Google really saying that it is not on notice of Oracle’s infringement theories? Oracle’s infringement contentions identified each version of the Android platform then known to Oracle¹ that infringes the asserted patent claims. Oracle’s contentions include nearly four hundred pages of charts, showing in exacting detail the parts of the Android platform that infringe Oracle’s patents and explaining how the infringement is accomplished, with references to Android’s creators’ presentations, Android documentation, Android architecture, specific Android programs, specific Android source code files, particular lines of Android source code, and down to individual lines of Android assembly code.

The Android platform was created by Google and was released and promoted for widespread adoption. Having succeeded in that goal, Google now wants to throw its licensees and users under the bus, and feign ignorance of the uses to which its creation is being put. Google knows quite a bit more about how Android is implemented and used than its letter to the Court suggests. For example, Google prohibits anyone from using the Android trademark unless their device is determined to be “Android compatible.”² Of significance to this lawsuit, through this licensing requirement, Google forbids device manufacturers from modifying aspects of Android that are copied from the Java platform: “Android follows the package and class namespace conventions defined by the Java programming language. To ensure compatibility with third-party applications, device implementers MUST NOT make any prohibited modifications . . . to these package

namespaces: java.*; javax.*; sun.*; android.*; com.android.*. . . . Device implementers MAY modify the underlying implementation of the APIs, but such modifications MUST NOT impact the stated behavior and Java-language signature of any publicly exposed APIs.”³ Through this and other licensing mechanisms, Google ensures that any device called “Android” functions exactly as Google intended it to.

This and other evidence will show that Google is liable to Oracle for both direct and indirect infringement. But it is not necessary to prove one’s case through infringement contentions. All that is needed is that they “be sufficient to raise a ‘reasonable inference that all accused products infringe.’” Shared Memory Graphics LLC v. Apple, Inc., No. C-10-2475 VRW (EMC), 2010 U.S. Dist. LEXIS 138868, at *11 (N.D. Cal. Dec. 30, 2011) (quoting Antonious v. Spalding & Evenflo Cos., Inc., 275 F.3d 1066, 1075 (Fed. Cir. 2002)). To prosecute the case more efficiently, Oracle asked Google to stipulate that Google’s partners’ and licensees’ versions of Android are the same in relevant aspects as the versions that Google distributes; Google declined. Google’s refusal may necessitate difficult third-party and even international discovery, but this issue bears on the ultimate proof at trial, not on the sufficiency of Oracle’s infringement contentions.

Oracle satisfied Patent L.R. 3-1’s requirement to identify each accused instrumentality for each asserted claim. Depending on whether the asserted claim is directed to a system, a method, or a computer software product, the accused instrumentalities are computers running Android or the Android development environment, the users of such computers (including application developers or end users), or the physical software medium itself (including Google’s webserver). Oracle provided examples of such; as Google concedes, Oracle’s contentions identify seven representative Android devices, including Google’s Nexus One and Nexus S; the HTC EVO 4G, Droid Incredible, and G2; the Motorola Droid; and the Samsung Captivate. (IC at 2.)⁴ Google ignores these and other examples, and appears to demand that the Court should require Oracle separately to list in its claim charts each Android device sold by third parties not joined in this litigation. It is Oracle’s contention that all such devices function in the same way with respect to the patented technology, and that is apparent from the contentions. If indeed it matters to Google, Google knows better than anyone which devices are “Android” devices. Granting Google’s motion would simply add to the length of Oracle’s claim charts without providing any additional substantive information.

Google’s complaints about Oracle’s indirect infringement contentions are another example of attacking form instead of substance. To support a claim of indirect infringement, a patentee may identify either individual acts of direct infringement, or an entire category of

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infringers. See Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1274 (Fed. Cir. 2004) (“Plaintiffs who identify an entire category of infringers (e.g., the defendant's customers) may cast their theories of vicarious liability more broadly, and may consequently seek damages or injunctions across the entire category.”). Here, and unlike the plaintiffs in the cases Google cites, Oracle identified categories of defendants who directly infringe, including manufacturers of Android products, application developers, service providers, and end users. (Note that Google itself falls within many of these categories, being an Android device seller, an Android application developer, and an Android user.) In its claim charts, Oracle identifies the Google-provided Android elements that infringe each claim, and from these, Google is specifically on notice as to which components it needs to defend. For example, Oracle explained how Google’s Dalvik virtual machine infringes the method claims of the ’205 patent when it runs. (IC at 113 et seq. & 158 et seq.) Google designed Dalvik to operate in an infringing manner and intends for Android users to use Dalvik in that manner. For another example, Oracle explained how Google’s provision of Android software contributes to the infringement of the computer system claims of the ‘447 patent when it is loaded onto and run by a computer system, at least in those cases where the processor and memory are not also provided by Google. (IC at 241-242.)

Google’s last point is an attack on Oracle’s word choice. Oracle’s contention that Google indirectly infringes “to the extent” that Google induces or contributes to direct infringement does indeed “affirmatively set forth a claim of indirect infringement.” It is an acknowledgement that the more Google distributes software that infringes when run and does everything it can to encourage others to use the infringing software and promote its widespread adoption, the greater Google’s liability for indirect infringement. With respect to contributory infringement specifically, the Patent Local Rules do not require any “allegation as to the lack of noninfringing uses as required by 35 U.S.C. 271(c).” Patent L.R. 3-1(d) requires a patentee to identify “any direct infringement and a description of the acts of the alleged indirect infringer that contribute to or are inducing that direct infringement.” Oracle has done that.

For the reasons above, Oracle respectfully requests that the Court deny Google’s motion to compel supplemental infringement contentions.

Respectfully submitted,

Marc David Peters

Counsel for Plaintiff Oracle America, Inc.

_______________
¹¹ The latest version of Android, “Gingerbread,” was released after Oracle served its infringement contentions. Oracle has yet to determine whether this requires any formal amendment to the infringement contentions.

² http://source.android.com/faqs.html#compatibility.

³ http://source.android.com/compatibility/android-2.2-cdd.pdf at 8.

⁴ “IC” refers to Oracle’s Infringement Contentions, which were attached to Google’s motion. The page numbers refer to the consecutive pagination in the upper right hand corner of each page.

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