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Oracle v. Google - Balance of Discovery Failures Lies with Oracle |
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Monday, August 08 2011 @ 11:00 AM EDT
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Oracle and Google have provided the magistrate with a joint letter [PDF]
regarding the remaining discovery disputes, and, at least from the
number of issues raised by each party, it is clear that Oracle is the
party dragging its feet.
It is fascinating to see what each wants to withhold if they can, with
Oracle so far delinquent on more items but promising to fulfill
requests. If, as Oracle states, they have no issue with producing all
of the items Google is requesting, why haven't they gotten on with it?
At the same time Google lets the judge know that it is from Missouri
with regard Oracle's promises, and it may need her intervention in a
bit. Given that there is only a week left in the discovery period, that
bit is a real little bit.
Of all the issues raised by Google, perhaps the most interesting is that
one of the largest technology companies in the world capable of
servicing the Fortune 500 (their claim, not mine) is incapable of
restoring the Sun website that they were capable of taking down. More
importantly, they took the Sun website down after this litigation had
commenced!
Oracle handed over electronic production of what it said was the Sun
website, but it was, by Oracle's own admission, "corrupted." It turned
out neither party could access it. Google still wants those materials,
which include, it says, "many press releases, letters, blogs and other
documents discussing open source, patents, lawsuits, licensing and other
key topics that have a major bearing on the parties' claims and
defenses". As with the Jonathan Schwartz blog, which Google only found
for itself on Internet Archive, one has to presume there are other
goodies lurking all over the old Sun website. Oracle says it has been
working on reproducing the website since April, but now, with the close
of discovery looming near, it still has not done so. This is alarming
Google, "given that the Sun.com website was decommissioned and taken
offline a few months ago, and many key documents identified by Google
are no longer available."
Oracle is a tech company. It can reproduce a website, one would assume, without such lengthy difficulties. If it wants to.
So I'm from Missouri myself at this point (actually, I am from Missouri
at any point, having grown up there). Oracle claims it will certainly
get the job done. No worries. But Google lets the judge know it may call
on her for intervention, and for good reason given Oracle's repeated
failure to produce these potentially critical items.
Also intriguing is that Oracle has gotten its hands on the paper
documents from both of the old Sun v. Microsoft litigations, 800 boxes,
and it isn't sharing much with Google. Out of 800 boxes of documents,
Oracle showed Google the contents of only 174. So that is being worked
on. Google naturally would like to see the rest, or at least "a detailed
privilege log" regarding what's in the rest of the boxes and why Oracle
won't let them see them.
On the website materials, here's Google's statement:
Since the very outset of discovery, Google has been requesting the
production of webpages from Sun.com. In particular, many of the webpages are highly
relevant, as they provide marketing and technical information for Oracle Java products
that are alleged to practice the asserted patents and copyrights. In addition, there are
many press releases, letters, blogs and other documents discussing open source, patents,
lawsuits, licensing and other key topics that have a major bearing on the parties' claims
and defenses. Oracle repeatedly referred to Sun web sites as a source for responsive
information in responding to Google's discovery requests but has failed to produce that
information. Oracle provided Google an electronic production early in the case that
purportedly included the website materials, but it turned out to be corrupted and neither
Google nor Oracle could access the materials. Since that time (at least early April),
Oracle has claimed to be working on re-producing the website, yet as the last days of
discovery approach, the website materials have not been produced. This is especially
alarming given that the Sun.com website was decommissioned and taken offline a few
months ago, and many key documents identified by Google are no longer available.
Oracle has affirmatively represented that the Sun website materials will be produced to
Google by no later than August 15. Oracle's long record of failing to provide the
webpages leads Google to believe that the Court may have to order production of the
materials to ensure they are provided. Alternatively, Google may seek a declaration that
Oracle be precluded from relying on any information contained therein for its case in
chief for failure to produce the information in response to discovery requests or seek
another remedy.
If this was Sears or Victoria's Secret or some other company that isn't
in the primary business of selling technology, one might understand
challenges in reproducing an old website. On the other hand, there are
undoubtedly no less than a thousand Groklaw readers who could do it.
But Oracle is in the technology business. They know how to do technical
tasks like this, one presumes. If not, why would you buy any technical
products from them?
Maybe Google should ask the judge to have Oracle turn over all of the
raw materials and let Google do it. After all, Oracle is represented by
the same law firm that represented SCO, Boies Schiller. That same firm
asked the judge in the SCO litigation for direct access to IBM's CMVC
server, the AIX and Dynix revision control system. Remember that? They
fought hard for it too, albeit unsuccessfully, so why would Boies
Schiller object to Google coming in and looking around for itself, if
Oracle is such a butterfingers, if that is in reality the real problem?
While this discovery dispute lingers between the parties, Oracle has
also taken a whack [PDF] at trying to drag Motorola Mobility (MM) into the
discovery dispute. It seems Oracle subpoenaed MM for certain
Android-related documents:
Oracle seeks to depose Motorola to confirm that the
Android software is installed on Motorola’s Android devices and to
determine if any changes
have been made to the software. Oracle further seeks to confirm that
Motorola uses the accused
technology in developing applications for Android.
What we don't know is exactly what Oracle requested, only what MM has,
to date provided. Also, from the Oracle document we learn that MM filed
timely objections to the requested information, but we do not know the
nature of those objections. Think about this a second. Oracle has
indicated it wants to extract a tax from Android, and you are an Android
implementer. Oracle has already sued Google. Do you think a lawsuit
against MM is a possibility? You bet. If I am in-house counsel at MM
I'm thinking, either sue me or go away, but I have no intention of
providing you with the rope. In any case, MM is not Google, and this
dispute does not reflect on the bigger issue that Oracle, a direct party
to the suit, is dragging its feet in its discovery responses.
**************************
August 5, 2011
BY ECF
The Honorable Donna M. Ryu
United States Magistrate Judge
Northern District of California
1301 Clay Street, Courtroom 4, 3rd floor
San Francisco, California 94612
Re: Oracle America, Inc. v. Google Inc., No. 3:10-CV-03561-WHA (N.D. Cal.)
Joint Letter Regarding Ongoing Discovery Disputes
Dear Judge Ryu:
In addition to other joint letters that are being filed today, the parties are actively engaged
in resolving a number of other discovery disputes and are required to submit those disputes to
Your Honor today in order to seek relief from the Court, should it be necessary. (See Dkt. No.
257 at ¶ 6.) Google and Oracle have agreed to summarize in this one letter the remaining
discovery issues that the parties are currently discussing. The parties believe many of these
issues may be resolved within the next two weeks. The parties seek the court's approval of the
joint proposals discussed in Section I below. In Sections II and III below, Google and Oracle,
respectively, have identified remaining disputed issues, many of which the parties may be able to
resolve.
I. JOINT ISSUES
1. Privilege Logs -
Joint Statement: The parties are required to complete supplementing their privilege logs
by August 15. Both parties have sent letters to each other identifying entries in the
other's privilege log where they believe the underlying documents are not privileged or
should be produced in redacted form. Each party is investigating the issues raised in the
other party's letter and has agreed to provide a response by August 15 that specifies for
each identified log entry whether the underlying document will be produced entirely or
in redacted form. To the extent the parties cannot resolve any of the issues raised in their
respective letters, the parties may jointly ask the Court to review the disputed documents
in camera to determine if privilege is warranted.
The parties also recognize that additional privilege logs may be served up to and
including August 15, and to the extent that issues identified with respect to those
supplementations cannot be resolved after the parties meet-and-confer, those issues may
be raised with the Court as well.
Honorable Donna M. Ryu
August 5, 2011
Page 2 of 3
2. Document Designations Pursuant to the Protective Order
- Joint Statement: Both parties have designated documents in their production in
accordance with the different confidentiality designations provided by the Protective
Order (Dkt. 66). Upon reviewing the document productions, each party has been asked
by the other party to "down-designate" particular documents (for example, from "Highly-
Confidential Attorney's Eyes Only" to just "Confidential"). The parties are currently
negotiating the down-designation of various documents in the Google and Oracle
productions, and believe that agreement can be reached with respect to most, if not all, of
the documents at issue. Should the parties be unable to reach an accord with respect to
particular documents, guidance from the Court may be necessary.
3. General Compliance with the ESI Agreement
- Joint Statement: Each party has identified shortcomings in the other party's massive
productions of electronic data. For example, many documents have been produced
without searchable text or without associated metadata. In addition, many thousands of
documents have been produced in native formats, instead of the required TIFF or JPEG
images. Each party has represented that it is working to correct these issues and replace
faulty productions. The parties expect that they will be able to resolve these issues
themselves, but if they cannot, may need to seek the assistance of the Court.
II. GOOGLE'S ISSUES
1. Oracle Documents from the Sun v. Microsoft Litigation
- Google's Statement: In two Sun Microsystems, Inc. v. Microsoft Corporation litigations
(C 97-20884-PVT, filed on Oct. 7, 1997 in N.D. Cal. and C 02-01150-PVT, filed on
March 8, 2002 in N.D. Cal.), Oracle (then named Sun) sued Microsoft regarding its Java
technology. Oracle informed Google on July 5 that it had collected 827 boxes of hard
copy documents relating to the case. On July 14, Oracle informed Google that 174 of the
800 boxes would be made available for inspection in San Jose (the remaining boxes were
retained as privileged). Google inspected the 174 boxes on July 19 and asked that select
documents in the boxes be produced electronically, along with key case materials not in
the 174 boxes, such as Sun's responses to interrogatories and requests for admission.
Google also requested a detailed privilege log for the contents of the remaining 653 boxes
to determine if the broad privilege claim is warranted. Oracle has represented that by
August 5, Google will be given (i) the requested electronic production, (ii) Sun's
responses to interrogatories and requests for admission, and (iii) the privilege log.
Google may need to seek relief from the Court if Oracle does not deliver the expected
documents, or if portions of the 653 boxes that Oracle withheld as privileged should be
produced.
- Oracle's Statement: As this dispute should now be resolved, Oracle will not respond to
Google's statement in detail. After many months of effort, Oracle was recently able to
recover the legal files from the 1997-2001 Sun v. Microsoft litigations from the offsite
Honorable Donna M. Ryu
August 5, 2011
Page 3 of 3
archives of Sun's former attorneys (the now-defunct Howrey firm) and make the
responsive, non-privileged, and non-work-product files available to Google's attorneys
for inspection. Google's attorneys requested copies of certain items, and Oracle has
produced the requested items and provided a privilege log that identifies items which
were withheld as attorney work-product. Oracle has complied with Google's request for
production of these materials and, accordingly, there should be no further dispute.
-
2. Production of documents from the Sun website
- Google's Statement: Since the very outset of discovery, Google has been requesting the
production of webpages from Sun.com. In particular, many of the webpages are highly
relevant, as they provide marketing and technical information for Oracle Java products
that are alleged to practice the asserted patents and copyrights. In addition, there are
many press releases, letters, blogs and other documents discussing open source, patents,
lawsuits, licensing and other key topics that have a major bearing on the parties' claims
and defenses. Oracle repeatedly referred to Sun web sites as a source for responsive
information in responding to Google's discovery requests but has failed to produce that
information. Oracle provided Google an electronic production early in the case that
purportedly included the website materials, but it turned out to be corrupted and neither
Google nor Oracle could access the materials. Since that time (at least early April),
Oracle has claimed to be working on re-producing the website, yet as the last days of
discovery approach, the website materials have not been produced. This is especially
alarming given that the Sun.com website was decommissioned and taken offline a few
months ago, and many key documents identified by Google are no longer available.
Oracle has affirmatively represented that the Sun website materials will be produced to
Google by no later than August 15. Oracle's long record of failing to provide the
webpages leads Google to believe that the Court may have to order production of the
materials to ensure they are provided. Alternatively, Google may seek a declaration that
Oracle be precluded from relying on any information contained therein for its case in
chief for failure to produce the information in response to discovery requests or seek
another remedy.
- Oracle's Statement: As this dispute is being resolved, Oracle will not respond to
Google's statement point-by-point. Oracle did provide Google with an electronic version
of the Sun.com website promptly after being requested to do so. That version turned out
to be corrupted, and Oracle has spent an enormous amount of time and effort recapturing
the website in a usable form. Oracle just finished collecting the content from the sun.com
website on the date this letter was filed and is in the process of producing that data to
Google. Google knows this. There should be no further dispute over these materials.
3. Ellison Documents
- Google's Statement: Although Oracle Corporation CEO Larry Ellison was identified by
Oracle at the very outset of the case (Initial Disclosures) and identified as a document
custodian, no documents from Mr. Ellison were produced until just days ago, on July 27.
Moreover, Oracle produced a sum total of 43 documents (while most custodians'
Honorable Donna M. Ryu
August 5, 2011
Page 4 of 3
productions are in the thousands, tens of thousands, or even hundreds of thousands).
Google therefore believes that a large number of relevant documents may have been
intentionally withheld by Oracle. Google is giving Oracle an opportunity to rectify this
issue, but Google will likely ask the Court to compel production of Mr. Ellison's
documents and such other relief as may be necessary as a result of Oracle's timely failure
to produce Mr. Ellison's documents.
- Oracle's Statement: As this issue is being resolved, Oracle again will not respond in
detail to Google's arguments above. Oracle believes that it has complied with its
obligations with respect to the preservation, collection, review, and production of Mr.
Ellison's documents. Google raised this issue for the first time on the evening of August
4, but has not identified any particular deficiency in the production or documents that
appear to be missing. Oracle has nonetheless agreed to go back and confirm that it has
complied with its discovery obligations and will confer with Google about its production
of Mr. Ellison's documents. There is no ripe dispute over these materials.
4. Production of JavaOS source code
- Google's Statement: Google has been seeking production of source code for JavaOS
predating October 31, 1996 because it appears that this code may invalidate the asserted
`702 patent under 35 U.S.C. § 102(b). Oracle has repeatedly stated that it could not
locate or produce JavaOS source code predating January 10, 1997. On July 29, however,
Oracle's designated 30(b)(6) witness on topics relating to JavaOS and the production of
JavaOS source code testified under oath that Oracle could extract source code from
October 1996. Oracle has finally agreed that it will produce the October 1996 code for
inspection. Given Oracle's consistent failure to produce the October 1996 code
throughout the duration of discovery, Google has legitimate concerns that Oracle will not
produce the source code and the code will not be produced in time for Google to
incorporate evidence from the code into its opening expert report on invalidity. Google
expects it will need to raise this with the Court at the hearing, possibly to seek sanctions
or other relief.
- Oracle's Statement: As with the prior issues, this issue is being resolved. Oracle has
agreed to use its best efforts to extract source code files from its JavaOS workspace as
they may have existed as of a certain day, to be specified by Google, in October 1996.
Oracle will then make the extracted files available to Google. There should be no further
dispute over these materials.
5. Oracle response to Google's Requests for Production
- Google's Statement: Oracle responded to every one of Google's sixth set of Requests for
Production (Nos. 102-129) by either claiming it had no responsive documents, or refusing
to produce responsive documents. The requests seek documents about Oracle's
representations concerning the uncopyrightability of Application Programming Interfaces
("APIs"), as Oracle asserts in this case that APIs are copyrightable. The requests also
seek additional evidence that Oracle is not the creator or owner of materials for which it
Honorable Donna M. Ryu
August 5, 2011
Page 5 of 3
is asserting various copyrights in this case. The parties discussed this issue at a meet-and-confer call and Google followed up on the call with a letter detailing its primary
issues with Oracle's responses. Google has not yet received a response from Oracle and
intends on raising this issue at a hearing with the Court if Oracle refuses to produce
responsive documents.
- Oracle's Statement: The night before this discovery letter was due, Google indicated for
the first time that it has some concerns with certain of Oracle's responses and/or
objections to Google's sixth set of requests for production of documents. For most of
these requests, Oracle was unable to locate responsive documents following a diligent
search (RFPs 107-115, 118-129). The remaining requests seek documents of no apparent
relevance to the issues in this case (RFPs 102-105, 116-117). Oracle will meet and
confer in good faith to address any legitimate concerns Google may have regarding these
requests. Oracle expects that the parties will resolve these matters without need for
judicial assistance.
6. Oracle's designation of witnesses for Topic 11 of Google's Rule 30(b)(6) Notice
- Google's Statement: Google noticed a Rule 30(b)(6) deposition on Oracle for "Evidence
of conception, reduction to practice, and actual use of the invention(s) allegedly set forth
in the asserted claims." Oracle refused to present witness for all seven patents, but the
parties discussed a compromise of witnesses for four of the seven patents. Oracle
provided a witness for the `104 and `205 patent, but stated it could not locate a witness
who could testify about the `520 and `720 patents. Google is willing to accept Oracle's
position if it represents to this Court that it will not present any witness at trial to testify
regarding conception, reduction to practice, or actual use of the `520 and `720 patents.
- Oracle's Statement: Oracle objected to Google's Topic 11 on the basis that it improperly
combines multiple topics by seeking information on the conception, reduction to practice,
and actual use of each of the seven asserted patents. Accordingly, the topic is overbroad
and inconsistent with Judge Alsup's guidelines for 30(b)(6) deposition topics. (Dkt. 26 at
¶ 23.) As a compromise, Oracle offered to provide a witness to testify regarding two of
the seven patents. To this end, Oracle presented a witness on Topic 11 regarding the `104
and `205 patents and that deposition has been completed. Google also obtained
testimony regarding the reduction to practice and actual use of the `702 patent from
another Oracle witness. Having provided witnesses to testify regarding three patents,
Oracle should not be required to provide further testimony on this overbroad topic.
Nonetheless, Oracle is meeting and conferring with Google regarding the proposal
Google sets forth above.
Honorable Donna M. Ryu
August 5, 2011
Page 6 of 3
III. ORACLE'S ISSUES
1. Google's designation of a witness for Topic 11 of Oracle's Rule 30(b)(6) Notice
- Oracle's Statement: Oracle has asked Google to produce a witness to be deposed as a
Rule 30(b)(6) deponent regarding the portion of Topic 11 of its Rule 30(b)(6) Notice
concerning "Google's past and present usage and installed base projections in connection
with Android." Oracle agreed to narrow Topic 11 to exclude that portion of the topic
related to financial projections, in response to Google's claim that this portion was
duplicative of Oracle's Topic 2. The remaining portion of Topic 11 is not duplicative of
Topic 2. Google has agreed to consider producing a witness for this topic. If Google
produces a properly prepared witness to testify fully on this narrowed topic, Oracle
believes there will be no need for judicial assistance; Oracle may need to seek Court
intervention if Google does not do so.
- Google's Statement: Google believes that Oracle's 30(b)(6) Topic 11 is duplicative of
Oracle's Topic 2, which requested a witness on "Google's revenues related to Android,
including . . . (ii) how Google accounts for Android-related revenues and expenses,
[and] (iv) any financial projections relating to Android..." The subject matter of Topic 2
broadly related to Android revenue in a manner that necessarily included "Google's past
and present usage and installed base projections in connection with Android," and
Google's designated witness on topic 2 testified regarding projections for usage of
Android. While Google believes that it should not be required to present a witness to
testify about matters thoroughly inter-twined with a previous Topic, Google is
considering whether it is willing to do so in order to resolve this issue.
2. Google's Production of Deposition Transcripts
- Oracle's Statement: On July 28, 2011, Andy Rubin testified that he had been deposed
previously in other cases, including in Apple v. HTC. Oracle had previously requested
production by Google of deposition transcripts responsive to Oracle's document requests,
and Google's counsel then produced a deposition transcript for Daniel Bornstein from the
Apple v. HTC case. Google's counsel has represented that they are still evaluating
whether they will agree to produce the transcript of Mr. Rubin's deposition in the Apple
v. HTC case and other cases. Oracle anticipates that the parties will resolve this matter
without need for judicial assistance.
- Google's Statement: As noted in Oracle's statement, Google is still evaluating whether
and to what extent the transcripts of Mr. Rubin in the Apple v. HTC case and other cases
are responsive to Oracle's document requests. To the extent they are responsive, Google
will provide them. Google agrees with Oracle that the parties will likely resolve this
matter without the need for judicial assistance.
* * *
The parties agree to endeavor in good faith to resolve the above issues.
Honorable Donna M. Ryu
August 5, 2011
Page 7 of 3
Respectfully submitted,
BOIES, SCHILLER AND FLEXNER LLP | KEKER & VAN NEST, LLP |
/s/ Steven C. Holtzman
Steven C. Holtzman |
/s/ Robert A. Van Nest
Robert A. Van Nest |
I hereby certify that Steven C. Holtzman and Robert A. Van Nest concur in the e-filing of this
document.
/s/ Cheryl A. Sabnis
Cheryl A. Sabnis
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Authored by: designerfx on Monday, August 08 2011 @ 11:14 AM EDT |
Post your corrections here. [ Reply to This | # ]
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Authored by: Kilz on Monday, August 08 2011 @ 11:30 AM EDT |
Please make all links the clicky kind. [ Reply to This | # ]
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Authored by: Kilz on Monday, August 08 2011 @ 11:32 AM EDT |
Please mention the Newspick in the title of your post. [ Reply to This | # ]
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Authored by: red floyd on Monday, August 08 2011 @ 11:36 AM EDT |
For any non-USians, or others unfamiliar with the state (I spent two years there
in college).
The "From Missouri" comments are a reference to the state's nickname
as the "Show-me state". A Congressional Representative famously said,
"I'm from Missouri - you'll have to show me." (note -- this is a
paraphrase)
Common usage is to indicate skepticism.
---
I am not merely a "consumer" or a "taxpayer". I am a *CITIZEN* of the United
States of America.
[ Reply to This | # ]
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- "From Missouri" - Authored by: Anonymous on Monday, August 08 2011 @ 11:45 AM EDT
- "From Missouri" - Authored by: Anonymous on Monday, August 08 2011 @ 12:25 PM EDT
- "From Missouri" - Authored by: Anonymous on Monday, August 08 2011 @ 01:54 PM EDT
- "From Missouri" - Authored by: Anonymous on Monday, August 08 2011 @ 03:00 PM EDT
- "From Missouri" - Authored by: Anonymous on Monday, August 08 2011 @ 07:32 PM EDT
- Sho-Me tribe? - Authored by: Anonymous on Tuesday, August 09 2011 @ 08:16 AM EDT
- Sho-Me tribe? - Authored by: Anonymous on Thursday, August 11 2011 @ 01:22 PM EDT
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Authored by: tyche on Monday, August 08 2011 @ 12:25 PM EDT |
Oh, REALLY??? I once worked for a company that wanted to get on the Internet.
So I developed a website for them and put it up on the ISP that they approved.
I had a backup (mainly because the website was produced locally on my work
computer then pushed up en-mass to the ISP's server. I kept my original work.
This is one way to maintain a backup). Larger companies use other means of
creating and maintaining backups. You can't tell me that Oracle destroyed all
of those backups when they downed the live web pages. This is a TSCOG ploy,
plain and simple.
Craig
Tyche
---
"The Truth shall Make Ye Fret"
"TRUTH", Terry Pratchett[ Reply to This | # ]
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Authored by: SilverWave on Monday, August 08 2011 @ 12:27 PM EDT |
@_@
---
RMS: The 4 Freedoms
0 run the program for any purpose
1 study the source code and change it
2 make copies and distribute them
3 publish modified versions
[ Reply to This | # ]
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Authored by: bugstomper on Monday, August 08 2011 @ 02:17 PM EDT |
I do quite a bit of my $DAY_JOB programming in Java, and I've become
increasingly frustrated over the past months when Googling for information on
Java quirks and bugs leads to Sun web pages that suddenly no longer exist. Most
of the time there is a copy in Google's caches, at least enough for my
purposes.
I wonder how much of this material Google already has that they can come up with
if they need it after seeing how much they can put Oracle through the wringer
for not doing what they are supposed to. I can see that they would want the
material to come from Oracle so there is no dispute as to its validity and to
have Oracle do the work of production, but perhaps they have the cache handy to
catch Oracle in any lies or tricks that they try.
[ Reply to This | # ]
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Authored by: tuxi on Monday, August 08 2011 @ 04:40 PM EDT |
Could Oracle's failure to provide the website be considered spoilation of
evidence? If so, what remedies would be likely to be considered? Could it make
the Google Cache the authoritative reference?
--- tuxi [ Reply to This | # ]
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Authored by: Anonymous on Tuesday, August 09 2011 @ 02:17 AM EDT |
Or any other competitor to Oracle, for that matter:
"If Oracle can't even back up their own website, how can you trust them
with your data?"
bkd[ Reply to This | # ]
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Authored by: Anonymous on Tuesday, August 09 2011 @ 04:56 PM EDT |
In a recent ruling, Judge Alsup has denied most of Google's Amended MOTION for Leave to
File Supplement Invalidity Contentions to expand its invalidity claims in
the case that was mentioned in an earlier Groklaw
article.
ORDER PARTIALLY GRANTING AND PARTIALLY DENYING MOTION TO SUPPLEMENT INVALIDITY
CONTENTIONS AND VACATING HEARING
With one exception,
Google has not shown
good cause for amending its invalidity contentions at this
late date. Google asserts that the invalidity defenses it seeks to add “are
among its strongest in the case” (Br. 1). Google, however, did not submit its
proposed amendments or explain why its new invalidity theories are supposedly so
strong. The parties did not brief the strength of Google’s new invalidity
theories. It is therefore impossible to determine whether Google’s proposed
supplements are meritorious or futile. Google argues that the strength of its
new defenses is “demonstrated by the by the fact that Google elected them on
June 15” (Reply Br. 8). This reasoning is circular. The June 15 deadline
required Google to narrow its invalidity case to six grounds for each of the
fifty patent claims chosen by Oracle — a total of three hundred invalidity
theories. It is possible that Google simply did not have that many good
invalidity theories and is now trying to fill in with whatever it can belatedly
cobble together. Google has not carried its burden of showing
otherwise.
Google has not carried its burden of
establishing diligence as to the vast majority of its proposed amendments. With
limited exceptions, fact discovery has closed, and expert discovery is underway.
The claims and defenses at issue have been significantly narrowed in reliance on
the parties’ infringement and invalidity contentions. The final pretrial
conference
and jury trial are only two months away. This action is well
advanced, and Google now seeks leave to bring an entire fleet of new invalidity
defenses into the fray. Good cause has not been shown for allowing such a
dramatic maneuver at this late date. Only one category of amendments will be
allowed.
Where this ruling concerns a topic of this article is
its reference to Google's motion to include an invalidity claim related to
source code potentially found in earlier versions of JavaOS. Judge Alsup
addressed this part of Google's motion with the following
words:
4. ANTICIPATION THEORIES DIRECTED AT ’702 PATENT
BASED ON JAVAOS REFERENCE (NOT CHARTED).
With respect to United
States patent number 5,966,702, Google requests carte blanche to supplement its
invalidity contentions with anticipation theories based on Oracle’s JavaOS
product “after Oracle has produced all relevant documents and source code” (Br.
7). Google has not prepared any claim charts analyzing JavaOS in relation to the
asserted patent claims. Google asserts that its delay in doing so was caused by
“Oracle’s own discovery abuse”; Google claims that “Oracle did not produce any
JavaOS source code until May 2011, and has still not produced the JavaOS source
code that predates the ‘702 patent [sic] by a year” (ibid.). Oracle disputes
this statement, claiming that the JavaOS source code it produced in May included
code that predated the ’702 patent by more than a year (Opp. 6). In reply,
Google states that it “gained additional evidence regarding the source code for
that product just last Friday in a 30(b)(6) deposition of Oracle” (Reply Br. 7).
Google, however, has not pointed to any indication that Oracle actually
stonewalled against discovery regarding JavaOS.
At all events, the time
for fact discovery has passed. Google had ample opportunity to request JavaOS
source code from Oracle and to request discovery relief from the Court if Oracle
was not forthcoming in its source code production. The parties raised a swarm of
discovery disputes, but no source code production grievance was among them.
Having failed to press for this discovery, Google may not now decry Oracle’s
supposed “untimely production of this highly relevant prior art evidence” (Br.
7). Google’s motion to supplement its invalidity contentions with theories based
on JavaOS is DENIED.
Judge Alsup provides an entire
section of analysis explaining why Google didn't show proper diligence in
pursuing its additional invalidity claims:
1. GOOGLE’S LACK
OF DILIGENCE.
Google waited several months after discovering most
of its new defenses before it sought permission to move for leave to supplement
its invalidity contentions. After permission to file a motion was granted in
late June, Google waited another two and a half weeks to actually file
its motion, and then filed a superceding amended version of the motion the
following week. This
delay suggests a lack of
diligence.
Indeed, by failing to move for leave to
amend its contentions promptly after disclosing additional defenses, Google
signaled an intention not to bring those defenses into this action. Google’s
decision to wait until after Oracle was locked into its patent-claim selections
to fortify its invalidity case with “defenses that it has now determined are
among its strongest”
amounts to sandbagging (Br.
1).
Google’s other excuses for its delay likewise
fail. The time and effort demanded by discovery and other “competing case
demands” does not justify neglecting to seek leave to amend
invalidity
contentions (Reply Br. 7). The failure of the parties to reach agreement
regarding a
stipulated supplementation was foreseeable. If Google was serious
about amending its invalidity
contentions, it should not have gambled for
months on the possibility that a stipulation might be
reached (id. at
6–7).
Judge Alsup's style is a strong contrast to what we saw
in much of the SCO cases. He's on a tight schedule, and he wants the competing
parties to stick to that schedule if they're serious about taking this case to
trial.
--bystander1313 [ Reply to This | # ]
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Authored by: inode_buddha on Thursday, August 11 2011 @ 07:03 AM EDT |
Foot-dragging in discovery AKA "sandbagging". Thereby forcing the
other side to scramble at the last minute. Shades of SCO...
---
-inode_buddha
"When we speak of free software,
we are referring to freedom, not price"
-- Richard M. Stallman[ Reply to This | # ]
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