Rule 706 of the Federal Rules of Evidence provides:

Rule 706. Court Appointed Experts

(a) Appointment.

The court may on its own motion or on the motion of any party enter an order to show cause why expert witnesses should not be appointed, and may request the parties to submit nominations. The court may appoint any expert witnesses agreed upon by the parties, and may appoint expert witnesses of its own selection. An expert witness shall not be appointed by the court unless the witness consents to act. A witness so appointed shall be informed of the witness' duties by the court in writing, a copy of which shall be filed with the clerk, or at a conference in which the parties shall have opportunity to participate. A witness so appointed shall advise the parties of the witness' findings, if any; the witness' deposition may be taken by any party; and the witness may be called to testify by the court or any party. The witness shall be subject to cross-examination by each party, including a party calling the witness.

(b) Compensation.

Expert witnesses so appointed are entitled to reasonable compensation in whatever sum the court may allow. The compensation thus fixed is payable from funds which may be provided by law in criminal cases and civil actions and proceedings involving just compensation under the fifth amendment. In other civil actions and proceedings the compensation shall be paid by the parties in such proportion and at such time as the court directs, and thereafter charged in like manner as other costs.

(c) Disclosure of appointment.

In the exercise of its discretion, the court may authorize disclosure to the jury of the fact that the court appointed the expert witness.

(d) Parties' experts of own selection.

Nothing in this rule limits the parties in calling expert witnesses of their own selection.

Dr. Kearl will prepare and submit a separate expert report which will independently a) critique the damages expert reports submitted by each side, b) provide his assessment of any or all issues raised or presented in the damages expert reports of the parties, and c) address each additional issue he believes should be evaluated in order to provide the jury with a complete and independent view of damages in this case.

[T]he Court is interested in full disclosure and understanding by Dr. Kearl of all issues relating to damages in this action.

Listed below are two preliminary versions of the order (393 [PDF] and 407 [PDF]), a clarification of the order (394 [PDF]), and the final order (413 [PDF]).

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Documents

393

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

_________________

ORACLE AMERICA, INC.,

Plaintiff,

v.

GOOGLE INC.,

Defendant.

___________________

Case No. 3:10-cv-03561-WHA

[PROPOSED] ORDER RE RULE 706
EXPERTS

Judge: Hon. William H. Alsup

Date Comp. Filed: October 27, 2010

Trial Date: October 31, 2011

By an order dated August 30, 2001 this Court appointed Dr. James R. Kearl, pursuant to Rule 706 of the Federal Rules of Evidence, to serve as an independent expert to the Court on the subject of damages claimed by the parties in this action. Mr. John L. Cooper of Farella, Braun + Martel LLP was appointed to serve as counsel to Dr. Kearl on a pro bono basis. The purpose of Dr. Kearl’s appointment is provide an independent professional analysis and view to assist the Court and the jury, in the event liability is found, in evaluating and assessing damages pursuant to the claims asserted in this action. Dr. Kearl is to use his professional judgment to determine the magnitude of work required to meet the purpose of this appointment. Dr. Kearl’s assignment shall include, but not be limited to, the following:

1. Review of all materials necessary in order for Dr. Kearl to be personally and thoroughly informed as to all aspects of damage claims of the parties in this action. Dr. Kearl may use assistants in conducting his work which assistants shall be compensated as provided in paragraph 9 of this Order. To the extent they have not already done so, Mr. Cooper, Dr. Kearl, and any of Dr. Kearl’s staff who will have access to confidential material of either party will sign the undertaking required under the Protective Order in this case regarding access to and review of confidential and highly confidential material. Mr. Cooper will assist Dr. Kearl in obtaining from counsel for the parties the material Dr. Kearl seeks to review. The full non privileged record in this matter shall be available to Dr. Kearl as he requests.

2. The parties have already provided to Mr. Cooper the expert damages report submitted by Dr. Iain M. Cockburn in May 2011, the parties’ briefing on Google’s Daubert motion regarding that report, and the order of this court dated July 22, 2011 resolving that motion. The parties shall immediately produce to Mr. Cooper the following materials to be conveyed to Dr. Kearl: a) a list of all depositions taken in this matter, including notices of all Rule 30(b)(6) depositions and the identity of the responding witnesses; b) a description by category of all documents produced by each party; c) copies of all substantive motions filed by the parties; d) copies of all documents filed in conjunction with any Markman hearings; e) copies of all expert reports filed in this matter; f) copies of all answers to interrogatories submitted by the parties; and g) copies of all responses to requests for admissions submitted by the parties.

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3. Review each party’s expert reports and all supporting materials submitted by each party’s damages expert. When the parties serve expert reports on the other party they shall serve copies of those reports and all supporting materials on Mr. Cooper to be conveyed to Dr. Kearl. The parties shall make available to Dr. Kearl through Mr. Cooper the full record of materials on which their experts relied in preparing their reports and testimony.

4. Within a reasonable period of time after Dr. Kearl has received all reports of damages experts to be submitted by the parties, Dr. Kearl shall prepare and submit his separate expert report which will independently a) critique the damages expert reports submitted by each side, b) provide his own independent view of each issue raised or presented in the damages expert reports of the parties, and c) address each additional issue he believes should be evaluated in order to provide the jury with a complete and independent view of damages in this case. Mr. Cooper will be available to provide whatever assistance Dr. Kearl needs to obtain information and prepare his report.

5. The parties have the right to conduct discovery of Dr. Kearl to the same extent provided as to any other expert witness. Dr. Kearl may be deposed by the parties within a reasonable time following submission of his report. Mr. Cooper shall participate in such deposition to represent the interests of Dr. Kearl. Communication between Mr. Cooper and Dr. Kearl shall be privileged to the extent provided by Rule 26 of the Federal Rules of Civil Procedure. Oracle and Google, collectively, shall have no fewer than 7 hours to question Dr. Kearl, with the precise amount of time to be determined after the parties have the opportunity to review the scope of Dr. Kearl’s expert report. Oracle and Google shall divide the allotted time equally. Mr. Cooper shall also have the opportunity to question Dr. Kearl at deposition. Following the completion of the deposition, Mr. Cooper shall submit the transcript of the deposition to the Court and the Court may direct additional questions to Dr. Kearl. Following the Court’s questioning, the parties shall have the opportunity to direct follow up questions to Dr. Kearl within the scope of any questions asked by the Court.

6. Dr. Kearl shall be permitted to attend the depositions of the parties’ damages experts in this matter, and Dr. Kearl’s counsel shall be permitted to question the parties’ damages

2

experts at those depositions. The parties will meet and confer and seek the Court’s guidance regarding the process, if any, by which Dr. Kearl, through Mr. Cooper, may submit proposed questions to the Court to be posed to the parties’ experts at trial.

7. While Dr. Kearl is not to function as a mediator, the Court is interested in full disclosure and understanding by Dr. Kearl of all issues relating to damages in this action. In serving that interest, the parties are directed to agree to a procedure by which Dr. Kearl can communicate with each of the parties’ expert witnesses in an informal off-the-record manner to address any ambiguities he may wish to have thus clarified. Such informal communications shall not be subject to discovery or admissible in court, and shall be solely between the experts.

8. Dr. Kearl will testify at trial subject to the provisions of Rule 26 of the Federal Rules of Civil Procedure. The parties will meet and confer and seek the Court’s guidance regarding how Dr. Kearl’s role at trial will be described to the jury. Dr. Kearl will be presented in direct examination at trial by Mr. Cooper. Each party will be permitted to cross examine Dr. Kearl as though he were an adverse expert witness. The Court will direct questions to Dr. Kearl as it deems appropriate.

9. Dr. Kearl shall be compensated on a monthly basis. His professional fees and expenses shall be paid to Mr. Cooper, one half by each party within in thirty days of receipt of each of his monthly invoices. Dr. Kearl shall submit his invoices and supporting materials, which shall include the invoices and supporting material of those persons assisting him, including the number of hours worked, the work performed, and the type of expenses incurred, to Mr. Cooper who will forward them to counsel for the parties for payment in accordance with this order. The parties may contact Mr. Cooper to seek to negotiate reductions in Dr. Kearl’s billing as they deem necessary or appropriate.

10. Neither Dr. Kearl nor any of his assistants shall communicate directly with the parties or with the Court. All communication Dr. Kearl has with the parties and the Court shall be conducted through Mr. Cooper. The communication provided in paragraph 7 of this order shall not be between the parties but shall be professional communication between the experts which is conducted off-the-record.

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11. Neither Dr. Kearl nor any of his assistants shall incur any liability to the parties as a result of their work on this matter.

IT IS SO ORDERED.

Dated:

_____________________
HON. WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

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394

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA

_________________

ORACLE AMERICA, INC.,

Plaintiff,

v.

GOOGLE INC.,

Defendant.

___________________

No. C 10-03561-WHA

ORDER REGARDING
PROPOSED ASSIGNMENT
ORDER FOR RULE 706 EXPERT

The proposed order regarding the assignment for the Rule 706 expert (Dkt. No. 393) is acknowledged. The parties are requested to submit a revised version of the proposed order in accordance with the following guidance.

First, precise deadlines should be set for the completion of Dr. Kearl’s expert report and deposition. As stated in the August 30 order appointing Dr. Kearl, his assignment should be planned such that it can be completed by early December in preparation for a possible damages trial at that time. Allowing a nebulous “reasonable period of time” for completion of those tasks would risk undue delay. The Court may consider altering the deadlines for Dr. Kearl’s report and deposition in light of future case developments, but in the meantime a workable schedule must be established and followed.

Second, Dr. Kearl’s role as a Rule 706 expert will be to inform the jury on the issue of damages, not to advise the Court. The assignment order should not make reference to Dr. Kearl assisting the Court.

Third, counsel are requested to proofread the proposed order carefully and correct all typographical errors such as missing words. The revised version of the proposed order should be filed by SEPTEMBER 8, 2011.

IT IS SO ORDERED.

Dated: September 6, 2011.

[signature]
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

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407

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

__________________

ORACLE AMERICA, INC.

Plaintiff,

v.

GOOGLE, INC.

Defendant.

____________________

Case No. CV 10-03561 WHA

[PROPOSED] ORDER RE RULE 706 EXPERTS

Dept.: Courtroom 9, 19th Floor
Judge: Honorable William Alsup
Date Comp. Filed: October 27, 2010
Trial Date: October 31, 2011

_____________________

By an order dated August 30, 2001, this Court appointed Dr. James R. Kearl, pursuant to Rule 706 of the Federal Rules of Evidence, to serve as an independent expert on the issue of damages claimed by plaintiff Oracle America in this action. Mr. John L. Cooper of Farella, Braun + Martel LLP was appointed to serve as counsel to Dr. Kearl on a pro bono basis. The purpose of Dr. Kearl’s appointment is to provide an independent professional analysis and view to inform the jury, in the event liability is found, on the issue of damages on the claims asserted in this action. Dr. Kearl is to use his professional judgment to determine the magnitude of work required to meet the purpose of this appointment. Dr. Kearl’s assignment will include, but not be limited to, and will be subject to the following:

1. Dr. Kearl may review any and all materials necessary for him to be personally and thoroughly informed as to all aspects of the damages claims and analyses of the parties in this action. Dr. Kearl may use assistants in conducting his work, which assistants shall be compensated as provided in paragraph 9 of this Order. To the extent they have not already done so, Mr. Cooper, Dr. Kearl, and any of Dr. Kearl’s staff who will have access to confidential material of either party will sign the undertaking required under the Protective Order in this case regarding access to and review of confidential and highly confidential material. Mr. Cooper will assist Dr. Kearl in obtaining from counsel for the parties any material Dr. Kearl seeks to review. The full, non-privileged record in this matter will be available to Dr. Kearl as he requests.

2. The parties have already provided to Mr. Cooper the expert damages report submitted by Dr. Iain M. Cockburn in May 2011, the parties’ briefing on Google’s Daubert motion regarding that report, the transcript of the July 21, 2011 hearing on that motion, and the order of this court dated July 22, 2011 resolving that motion. The parties will immediately produce to Mr. Cooper the following additional materials to be conveyed to Dr. Kearl: a) a list of all depositions taken in this matter, including notices of all Rule 30(b)(6) depositions and the identity of the responding witnesses; b) a description by category of all documents produced by each party; c) copies of all substantive motions filed by the parties; d) copies of all documents filed in conjunction with any Markman hearings; e) copies of all expert reports filed in this matter; f) copies of all answers to interrogatories submitted by the parties; and g) copies of all responses to requests for admissions submitted by the parties.

1

3. Dr. Kearl may review each party’s expert reports and all supporting materials submitted by each party’s damages expert or experts. When the parties serve expert reports on the other party, they will serve copies of those reports and all supporting materials on Mr. Cooper to be conveyed to Dr. Kearl. The parties will make available to Dr. Kearl through Mr. Cooper the full record of materials on which their experts relied in preparing their reports and testimony.

4. By November 14, 2011, Dr. Kearl will prepare and submit a separate expert report which will independently a) critique the damages expert reports submitted by each side, b) provide his assessment of any or all issues raised or presented in the damages expert reports of the parties, and c) address each additional issue he believes should be evaluated in order to provide the jury with a complete and independent view of damages in this case. Mr. Cooper will be available to provide whatever assistance Dr. Kearl needs to obtain information and prepare his report.

5. The parties will have the right to conduct discovery of Dr. Kearl to the same extent as any other expert witness. The parties will complete Dr. Kearl’s deposition by November 23, 2011, subject to a possible reasonable extension depending on the date on which the Court schedules the trial on damages. Mr. Cooper will participate in such deposition to represent the interests of Dr. Kearl. Communication between Mr. Cooper and Dr. Kearl will be privileged to the extent provided by Rule 26 of the Federal Rules of Civil Procedure. Oracle and Google, collectively, will have no fewer than 7 hours to question Dr. Kearl, with the precise amount of time to be determined after the parties have the opportunity to review the scope of Dr. Kearl’s expert report. Oracle and Google will divide the allotted time equally. Mr. Cooper will also have the opportunity to question Dr. Kearl at deposition. Following the completion of the deposition, Mr. Cooper will submit the transcript of the deposition to the Court and the Court may direct additional questions to Dr. Kearl. Following the Court’s questioning, the parties will have the opportunity to direct follow up questions to Dr. Kearl within the scope of any questions asked by the Court.

6. Dr. Kearl will be permitted to attend the depositions of the parties’ damages experts in this matter, and Mr. Cooper, as Dr. Kearl’s counsel, will be permitted to question the parties’ damages experts at those depositions. The parties will meet and confer and seek the Court’s guidance regarding

2

the process, if any, by which Dr. Kearl, through Mr. Cooper, may submit proposed questions to the Court to be posed to the parties’ experts at trial.

7. While Dr. Kearl is not to function as a mediator, the Court is interested in full disclosure and understanding by Dr. Kearl of all issues relating to damages in this action. In serving that interest, the parties are directed to agree to a procedure by which Dr. Kearl can communicate with each of the parties’ expert witnesses in an informal off-the-record manner to address any ambiguities he may wish to have clarified. Such informal communications will not be subject to discovery or admissible in court, and shall be solely between the experts.

8. Dr. Kearl will testify at trial subject to the provisions of Rule 26 of the Federal Rules of Civil Procedure. The parties will meet and confer and seek the Court’s guidance regarding how Dr. Kearl’s role at trial will be described to the jury. Dr. Kearl will be presented in direct examination at trial by Mr. Cooper. Each party will be permitted to cross examine Dr. Kearl as though he were an adverse expert witness. The Court will direct questions to Dr. Kearl as it deems appropriate.

9. Dr. Kearl will be compensated on a monthly basis. His professional fees and expenses will be paid to Mr. Cooper, one half by each party within in thirty days of receipt of each of his monthly invoices. Dr. Kearl will submit his invoices and supporting materials, which will include the invoices and supporting material of those persons assisting him, including the number of hours worked, the work performed, and the type of expenses incurred, to Mr. Cooper, who will forward them to counsel for the parties for payment in accordance with this order. The parties may contact Mr. Cooper to seek to negotiate reductions in Dr. Kearl’s billing as they deem necessary or appropriate.

10. Neither Dr. Kearl nor any of his assistants will communicate directly with the parties or with the Court. All communication Dr. Kearl has with the parties and the Court will be conducted through Mr. Cooper. The communications discussed in paragraph 7 of this order will not be between the parties but will be professional communication between the experts off the record.

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11. Neither Dr. Kearl nor any of his assistants will incur any liability to the parties as a result of their work on this matter.

IT IS SO ORDERED.

Dated:______________________

HON. WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

/s/ Steven C. Holtzman
Filer’s Attestation: Pursuant to General Order NO. 45,
Section X.B. regarding non-filing signatories, Steven C.
Holtzman hereby attests that he has obtained concurrence
from counsel for Google Inc. and Dr. James Kearl in the
filing of this proposed order.

4

413

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

__________________

ORACLE AMERICA, INC.

Plaintiff,

v.

GOOGLE, INC.

Defendant.

____________________

Case No. CV 10-03561 WHA

[PROPOSED] ORDER RE RULE 706 EXPERTS

Dept.: Courtroom 9 8, 19th Floor
Judge: Honorable William Alsup
Date Comp. Filed: October 27, 2010
Trial Date: October 31, 2011

_____________________

By an order dated August 30, 2001, this Court appointed Dr. James R. Kearl, pursuant to Rule 706 of the Federal Rules of Evidence, to serve as an independent expert on the issue of damages claimed by plaintiff Oracle America in this action. Mr. John L. Cooper of Farella, Braun + Martel LLP was appointed to serve as counsel to Dr. Kearl on a pro bono basis. The purpose of Dr. Kearl’s appointment is to provide an independent professional analysis and view to inform the jury, in the event liability is found, on the issue of damages on the claims asserted in this action. Dr. Kearl is to use his professional judgment to determine the magnitude of work required to meet the purpose of this appointment. Dr. Kearl’s assignment will include, but not be limited to, and will be subject to the following:

1. Dr. Kearl may review any and all materials necessary for him to be personally and thoroughly informed as to all aspects of the damages claims and analyses of the parties in this action. Dr. Kearl may use assistants in conducting his work, which assistants shall be compensated as provided in paragraph 9 of this Order. To the extent they have not already done so, Mr. Cooper, Dr. Kearl, and any of Dr. Kearl’s staff who will have access to confidential material of either party will sign the undertaking required under the Protective Order in this case regarding access to and review of confidential and highly confidential material. Mr. Cooper will assist Dr. Kearl in obtaining from counsel for the parties any material Dr. Kearl seeks to review. The full, non-privileged record in this matter will be available to Dr. Kearl as he requests.

2. The parties have already provided to Mr. Cooper the expert damages report submitted by Dr. Iain M. Cockburn in May 2011, the parties’ briefing on Google’s Daubert motion regarding that report, the transcript of the July 21, 2011 hearing on that motion, and the order of this court dated July 22, 2011 resolving that motion. The parties will immediately produce to Mr. Cooper the following additional materials to be conveyed to Dr. Kearl: a) a list of all depositions taken in this matter, including notices of all Rule 30(b)(6) depositions and the identity of the responding witnesses; b) a description by category of all documents produced by each party; c) copies of all substantive motions filed by the parties; d) copies of all documents filed in conjunction with any Markman hearings; e) copies of all expert reports filed in this matter; f) copies of all answers to interrogatories submitted by the parties; and g) copies of all responses to requests for admissions submitted by the parties.

1

3. Dr. Kearl may review each party’s expert reports and all supporting materials submitted by each party’s damages expert or experts. When the parties serve expert reports on the other party, they will serve copies of those reports and all supporting materials on Mr. Cooper to be conveyed to Dr. Kearl. The parties will make available to Dr. Kearl through Mr. Cooper the full record of materials on which their experts relied in preparing their reports and testimony.

4. By November 14, 2011, Dr. Kearl will prepare and submit a separate expert report which will independently a) critique the damages expert reports submitted by each side, b) provide his assessment of any or all issues raised or presented in the damages expert reports of the parties, and c) address each additional issue he believes should be evaluated in order to provide the jury with a complete and independent view of damages in this case. Mr. Cooper will be available to provide whatever assistance Dr. Kearl needs to obtain information and prepare his report.

5. The parties will have the right to conduct discovery of Dr. Kearl to the same extent as any other expert witness. The parties will complete Dr. Kearl’s deposition by November 23, 2011, subject to a possible reasonable extension depending on the date on which the Court schedules the trial on damages. Mr. Cooper will participate in such deposition to represent the interests of Dr. Kearl. Communication between Mr. Cooper and Dr. Kearl will be privileged to the extent provided by Rule 26 of the Federal Rules of Civil Procedure. Oracle and Google, collectively, will have no fewer than 7 hours to question Dr. Kearl, with the precise amount of time to be determined after the parties have the opportunity to review the scope of Dr. Kearl’s expert report. Oracle and Google will divide the allotted time equally. Mr. Cooper will also have the opportunity to question Dr. Kearl at deposition. Following the completion of the deposition, Mr. Cooper will submit the transcript of the deposition to the Court and the Court may direct additional questions to Dr. Kearl. Following the Court’s questioning, the parties will have the opportunity to direct follow up questions to Dr. Kearl within the scope of any questions asked by the Court.

6. Dr. Kearl will be permitted to attend the depositions of the parties’ damages experts in this matter, and Mr. Cooper, as Dr. Kearl’s counsel, will be permitted to question the parties’ damages experts at those depositions. The parties will meet and confer and seek the Court’s guidance regarding

2

the process, if any, by which Dr. Kearl, through Mr. Cooper, may submit proposed questions to the Court to be posed to the parties’ experts at trial.

7. While Dr. Kearl is not to function as a mediator, the Court is interested in full disclosure and understanding by Dr. Kearl of all issues relating to damages in this action. In serving that interest, the parties are directed to agree to a procedure by which Dr. Kearl can communicate with each of the parties’ expert witnesses in an informal off-the-record manner to address any ambiguities he may wish to have clarified. Such informal communications will not be subject to discovery or admissible in court, and shall be solely between the experts.

8. Dr. Kearl will testify at trial subject to the provisions of Rule 26 of the Federal Rules of Civil Procedure. The parties will meet and confer and seek the Court’s guidance regarding how Dr. Kearl’s role at trial will be described to the jury. Dr. Kearl will be presented in direct examination at trial by Mr. Cooper. Each party will be permitted to cross examine Dr. Kearl as though he were an adverse expert witness. The Court will direct questions to Dr. Kearl as it deems appropriate.

9. Dr. Kearl will be compensated on a monthly basis. His professional fees and expenses will be paid to Mr. Cooper, one half by each party within in thirty days of receipt of each of his monthly invoices. Dr. Kearl will submit his invoices and supporting materials, which will include the invoices and supporting material of those persons assisting him, including the number of hours worked, the work performed, and the type of expenses incurred, to Mr. Cooper, who will forward them to counsel for the parties for payment in accordance with this order. The parties may contact Mr. Cooper to seek to negotiate reductions in Dr. Kearl’s billing as they deem necessary or appropriate.

10. Neither Dr. Kearl nor any of his assistants will communicate directly with the parties or with the Court. All communication Dr. Kearl has with the parties and the Court will be conducted through Mr. Cooper. The communications discussed in paragraph 7 of this order will not be between the parties but will be professional communication between the experts off the record.

3

11. Neither Dr. Kearl nor any of his assistants will incur any liability to the parties as a result of their work on this matter.

IT IS SO ORDERED.

Dated:September 9, 2011.

[signature]
HON. WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

/s/ Steven C. Holtzman
Filer’s Attestation: Pursuant to General Order NO. 45,
Section X.B. regarding non-filing signatories, Steven C.
Holtzman hereby attests that he has obtained concurrence
from counsel for Google Inc. and Dr. James Kearl in the
filing of this proposed order.

4