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Oracle v. Google - Pre-Trial Filings - Part I |
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Monday, October 10 2011 @ 06:00 PM EDT
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Last Friday Oracle and Google began making their pre-trial filings. There was a lot of material filed, and we are not going to try to cover it all in one sitting. Today we will cover Google's motions and the witness lists of both parties. Tomorrow we will move on to Oracle's motions.
First up for Google was its reply to Oracle's response [PDF] to Google's second motion to strike portions of the Mitchell Patent Report [text]. 489 [PDF; text]
[ Jump to Comments ]
You will recall in our earlier article about the Oracle response we stated:
With respect to Google's Critique's D and E, Oracle makes a compelling argument that Prof. Mitchell is not introducing new infringement contentions but merely explaining the contentions already made. With respect to Critique's F and G, Oracle argues (a) that Google did not obtain proper permission to file a motion with respect to Prof. Mitchell's Reply Report (only the original report), and (b) even if permitted, the Google critiques are off target, again suggesting new infringement contentions where none exist.
Google now makes equally compelling arguments that, once again, Oracle is trying to misdirect the issue and that Prof. Mitchell is, in fact, introducing new infringement contentions. As Google states, it's not that Mitchell doesn't mention the various functions, but that he previously used them to make one point about infringement and now is trying to reintroduce them in a different context to add to the infringement contentions.
There isn't a great deal to be said about the witness lists [491; Exhibit A; and Exhibit B; also in text below] other than there are no surprises and the lists are lengthy. Again, we don't see how they can get through this trial in the allotted time with this many witnesses and the number of infringement contentions Oracle has advanced.
Finally, we have Google's motions in limine. Recall that motions in limine are motions made before or during a trial requesting that the judge rule that certain evidence may, or may not, be introduced to the jury in a trial. So these are Google's motions to exclude certain evidence or testimony.
The first motion is Google's further attempt to exclude the Lindholm email.
492 [PDF; text below] Google had made this motion previously, and Judge Alsup stated he would hear the motion but that it would have to count against Google's limit of five motions in limine. So now it is restated here.
The second motion seeks to exclude a report prepared by Oracle employees and relied upon by Oracle's experts that purports to show certain performance improvements in Android are as the result of the alleged infringement.
493 [PDF; text below] The only problem is that the tests run by the employees were inherently flawed and were not carried out in a scientific manner. Google seeks to exclude the use of the reports for all purposes.
The third motion once again seeks to exclude certain portions of the Cockburn Damages Report. 494 [PDF; text below] Google restates its argument that the approach taken by Cockburn is inherently flawed because of a number of assumptions he makes in several specific instances. This motion may be a bit of a long shot, but if Google is successful, it will put quite a hole in the Cockburn report and Cockburn's testimony at trial.
The fourth motion seeks to exclude the Goldberg Report that purports to show that the commercial success of Java was pinned to the asserted patents.
495 [PDF; text below] The Goldberg Report seeks to show that the asserted claims cannot be obvious because both Java and Android have shown commercial success. The only problem is, according to Google, that Goldberg never demonstrated that Java actually relies upon any of the technology in the asserted claims, and of course, Google contests the asserted infringement. The need to tie the patent claims to the successful technologies would seem to be pretty fundamental.
The fifth and last motion by Google seeks to exclude certain evidence obtained from Motorola Mobility. 496 [PDF; text below] Oracle has listed at least one witness from Motorola Mobility, Rafael Camargo. As we have seen from Oracle in other instances, they seek to bolster (and extend) their infringement contentions with information obtained after the infringement contentions were already set in stone. For that reason, Google believes any information obtained from Motorola Mobility, all of which was obtained after the infringement contentions were final, should be excluded at trial.
***************
Docket
489 – Filed and Effective: 10/06/2011
ORDER
Document Text: REPLY (re 473 Second MOTION to Strike Portions of the Mitchell Patent Report) filed by Google Inc.. (Attachments: # 1 Declaration Banner Decl, # 2 Exhibit F)(Francis, Mark) (Filed on 10/6/2011) (Entered: 10/06/2011)
490 – Filed and Effective: 10/07/2011
ORDER
Document Text: CLERKS NOTICE Rescheduling Hearing Time. Motions set for 10/13/2011 2:00 PM. (dt, COURT STAFF) (Filed on 10/7/2011) (Entered: 10/07/2011)
491 - Filed and Effective: 10/07/2011
Witness List
Document Text: Witness List by Oracle America, Inc.. (Attachments: #
1 Appendix A (Oracle's Witness List), # 2 Appendix B (Google's Witness
List))(Muino, Daniel) (Filed on 10/7/2011) (Entered: 10/07/2011)
492 - Filed and Effective: 10/07/2011
MOTION
Document Text: MOTION in Limine No. 1 filed by Google Inc..
Responses due by 10/21/2011. Replies due by 10/28/2011. (Attachments: #
1 Oracle Opposition)(Kamber, Matthias) (Filed on 10/7/2011) (Entered:
10/07/2011)
493 - Filed and Effective: 10/07/2011
MOTION
Document Text: MOTION in Limine NO. 2 filed by Google Inc.
Responses due by 10/21/2011. Replies due by 10/28/2011. (Attachments: #
1 Oracle Opposition)(Kamber, Matthias) (Filed on 10/7/2011) (Entered:
10/07/2011)
494 - Filed and Effective: 10/07/2011
MOTION
Document Text: MOTION in Limine No. 3 filed by Google Inc.
Responses due by 10/21/2011. Replies due by 10/28/2011. (Attachments: #
1 Oracle Opposition)(Kamber, Matthias) (Filed on 10/7/2011) (Entered:
10/07/2011)
495 - Filed and Effective: 10/07/2011
MOTION
MOTION in Limine No. 4 filed by Google Inc..
Responses due by 10/21/2011. Replies due by 10/28/2011. (Attachments: #
1 Oracle Opposition)(Kamber, Matthias) (Filed on 10/7/2011) (Entered:
10/07/2011)
496 - Filed and Effective: 10/07/2011
MOTION
Document Text: MOTION in Limine No. 5 filed by Google Inc.
Responses due by 10/21/2011. Replies due by 10/28/2011. (Attachments: #
1 Oracle Opposition)(Kamber, Matthias) (Filed on 10/7/2011) (Entered:
10/07/2011)
497 - Filed and Effective: 10/07/2011
Declaration
Document Text: Declaration of DANIEL PURCELL in Support of 496
MOTION in Limine No. 5, 494 MOTION in Limine No. 3, 492 MOTION in Limine
No. 1, 493 MOTION in Limine NO. 2, 495 MOTION in Limine No. 4 filed
by Google Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit
3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8
Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit
12, # 13 Exhibit 13, # 14 Exhibit 14, # 15 Exhibit 15, # 16 Exhibit 16,
# 17 Exhibit 17, # 18 Exhibit 18, # 19 Exhibit 19, # 20 Exhibit 20, # 21
Exhibit 21, # 22 Exhibit 22, # 23 Exhibit 23, # 24 Exhibit 24, # 25
Exhibit 25, # 26 Exhibit 26, # 27 Exhibit 27, # 28 Exhibit 28, # 29
Exhibit 29, # 30 Exhibit 30, # 31 Exhibit 31, # 32 Exhibit 32, # 33
Exhibit 33, # 34 Exhibit 34, # 35 Exhibit 35, # 36 Exhibit 36, # 37
Exhibit 37, # 38 Exhibit 38, # 39 Exhibit 39, # 40 Exhibit 40)(Related
document(s) 496 , 494 , 492 , 493 , 495 ) (Kamber, Matthias) (Filed on
10/7/2011) (Entered: 10/07/2011)
**************
Documents
489
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
Honorable Judge William Alsup
Hearing Date: October 13, 2011
Hearing Time: 8:00 a.m.
DEFENDANT GOOGLE INC.’S REPLY
IN SUPPORT OF THE SECOND
MOTION TO STRIKE PORTIONS OF
THE MITCHELL PATENT REPORT
Google submits this Reply in support of its Second Motion to Strike Portions of the
Mitchell Patent Report (“Motion,” Dkt. No. 473). Oracle’s opposition brief (“Opp. Br.,” Dkt.
No. 482) does not provide any basis to deny the Motion and largely sidesteps the issues raised in
Google’s Motion, as explained below.
Critique D: Oracle’s response to the Motion’s critique regarding the ‘720 patent is that “[t]he
ICs gave Google sufficient notice of Oracle’s do_fork() infringement theory” (Opp. Br. at 3), a
theory Google has not challenged in the present motion. Rather, Google moves to strike Dr.
Mitchell’s reliance upon the vfork() and clone() mechanisms, and Oracle’s brief fails to identify
even a single instance where its ICs refer to execution of vfork() or clone(). It is irrelevant that
all three mechanisms eventually call do_fork() (id. at 1-2) because Dr. Mitchell identifies
do_fork() and clone() for different claim elements. (Compare Ex. A to Motion at ¶ 624
(“process.c provides a sys_clone() system call, invoked by a clone() system call, that can provide
the ‘process cloning mechanism’”) with id. at ¶ 627 (“fork.c provides the fork code do_fork() to
perform the process cloning ‘to instantiate the child runtime system process…’”).)
Further, Dr. Mitchell explained that fork(), vfork(), and clone() system calls provide three
different process cloning mechanisms (Ex. A to Motion at ¶ 606), so Oracle cannot claim that
vfork() and clone() provide additional detail about fork(). These three mechanisms offer different
functionality, as openly recognized in the Mitchell Report. (Motion at 1; Ex. A to Motion at ¶
606.) Oracle’s ICs presented an infringement theory relating to the execution “chain” of fork()
followed by do_fork(), with no mention of vfork() and clone(). Indeed, fork(), vfork() and
clone() are mutually exclusive. When vfork() or clone() are executed, fork() is not executed.
Thus, the new theories on vfork() and clone() in Dr. Mitchell’s Report are inconsistent with the
fork() theory in the ICs. Oracle’s ICs provided no notice that its infringement theory involved
vfork() or clone() functions, and Dr. Mitchell should not be able to refer to them at trial.
Critique E: Similarly, Oracle’s arguments regarding mBS Mobile skirt the real issue. Oracle
does not identify mBS Mobile as a basis of Google’s direct infringement, but rather argues that it
is “evidence establish[ing] that the infringing code that Google made was used” (Opp. Br. at 3),
i.e., indirect infringement. Patent Local Rule 3-1(d) requires that indirect infringement
1
contentions include, “an identification of any direct infringement.” So Oracle’s indirect
infringement theory regarding mBS Mobile (or any other particular application) should have
been disclosed in the ICs if it intended to identify them as “evidence establish[ing] that the
infringing code that Google made was used.” (Opp. Br. at 3.) Oracle should not have waited
until the Mitchell Report to introduce this new theory. In its opposition, Oracle tries to dismiss
its reliance on mBS Mobile as just a “benefit of infringement” or an “evidentiary item of proof.”
(Id. at 3-4.) But that is no excuse because Oracle does not dispute that the Mitchell Report – for
the first time – refers to the use of mBS Mobile as an act of infringement; likewise, Oracle’s
brief does not deny that it intends to rely on mBS Mobile as an instance where “the infringing
code that Google made was used.” (Id. at 3.) This theory should have been disclosed pursuant
to Patent L.R. 3-1(d) and should therefore be stricken.
Critique F: With respect to the new theory for the ‘476 patent in the Mitchell Reply Report,1
Oracle’s argument boils down to its claim that – despite the ICs theory of infringement using
Security Manager – “there is nothing in the infringement theory in Oracle’s ICs that requires
Android’s SecurityManager class for Android to infringe.” (Id. at 4.) To the contrary, Oracle’s
ICs identified the execution of SecurityManager as an integral part of its theory, and in fact, the
entire theory hinges on a chain of events triggered by executing SecurityManager because it
contains instructions that lead to the execution of the other code cited in the ICs as meeting
numerous claim elements. (Ex. D to Motion at 5, 20-21). Google informed Oracle early in
discovery that SecurityManager was not executed by Android, but Oracle waited until the Reply
Report to change its infringement theory and argue that execution of SecurityManager is not
needed. (There is no evidence to support Dr. Mitchell’s new theory, but the merits of his theory
are a separate issue.) This new theory is simply a desperate effort to circumvent Google’s
dispositive non-infringement position, and should be stricken from the Reply report.
2
Critique G: Oracle’s arguments regarding the ‘520 patent obscure the simple underlying issue;
namely, whether its infringement theory is that Android initializes static arrays by creating a
single Dalvik bytecode instruction (particularly “fill-array-data”), or by creating multiple
bytecode instructions. Oracle’s ICs included only a theory of a single instruction. (See Ex. E to
Motion at 29 (“The action we take here is to convert these initialization bytecodes into a single
fill-array-data ROP”); id. at 30 (“The Dalvik virtual machine interprets the instruction to
perform the static initialization of the array” (emphasis added)).) In an abundance of caution,
Google’s interrogatory response on non-infringement included an argument that there was no
infringement if multiple instructions were accused because it would be outside the asserted
claims’ scope. (See Ex. B to Opp. Br.) Dr. Mitchell was well aware of this issue and took great
care in his opening report to clarify that a single instruction was accused. (See, e.g., Ex. A to
Motion at ¶ 525 (“The dx tool stores an instruction requesting the static initialization of the
array”); id. at ¶ 541 (“the lengthy bytecode instructions are replaced by a single fill-array-data
Dalvik instruction”) (emphasis added).) Likewise, Oracle’s counsel and validity expert (Dr.
Goldberg) met with a USPTO Examiner in the pending ‘520 patent reexamination and argued
that “an instruction” is limited to a single instruction that performs the static array initialization.
(See Ex. F, Interview Summary at 2.)2 Accordingly, Oracle has disavowed the possibility of
using multiple instructions to perform the patent claims’ static array initialization. See Marine
Polymer Techs., Inc. v. Hemcon, Inc., No. 2010–1548, –– F.3d ––, 2011 WL 4435986, at *5
(Fed. Cir. Sept. 26, 2011) (holding that an unambiguous argument for narrower scope in a
reexamination acts as an immediate disavowal of scope applicable to co-pending litigation).
Nevertheless, in response to non-infringement arguments in Google’s expert report, Oracle now
changes its position in the Reply Report, arguing that the ‘520 claims can be infringed by using
multiple instructions, not just a single instruction (fill-array-data) as in the ICs. Oracle’s new and
inconsistent theory regarding multiple instructions should be stricken from the Reply report.
3
DATED: October 6, 2011
KEKER & VAN NEST, LLP
By: /s/ Scott T. Weingaertner /s/
ROBERT A. VAN NEST (SBN 84065)
[email]
CHRISTA M. ANDERSON (SBN 184325)
[email]
KEKER & VAN NEST LLP
633 Battery Street
[address telephone fax]
SCOTT T. WEINGAERTNER (Pro Hac Vice)
[email]
ROBERT F. PERRY
[email]
BRUCE W. BABER (Pro Hac Vice)
[email]
KING & SPALDING LLP
[address telephone fax]
DONALD F. ZIMMER, JR. (SBN 112279)
[email]
CHERYL A. SABNIS (SBN 224323)
[email]
KING & SPALDING LLP
[address telephone fax]
IAN C. BALLON (SBN 141819)
[email]
HEATHER MEEKER (SBN 172148)
[email]
GREENBERG TRAURIG, LLP
[address telephone fax]
ATTORNEYS FOR DEFENDANT
GOOGLE INC.
______________________
1 Google acknowledges that its original Précis letter (Dkt. No. 377) did not specifically request leave to file a
motion regarding Dr. Mitchell’s Reply Report (it had not yet been served), but the issues in the Reply Report are the
same – new theories not disclosed in the ICs. Oracle has had an opportunity to oppose Google’s critiques of the
Reply Report, and Google respectfully requests that the Court consider its critiques of both Mitchell reports.
However, at the Court’s direction, Google can submit a separate Précis or Motion regarding the Reply Report.
2 Oracle’s argument referred to a claim which is not asserted, but the term (“an instruction”) should have the same
meaning across all claims. See Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1328 (Fed.
Cir. 2006) (“Under this court’s case law, the same terms appearing in different claims in the same patent … should
have the same meaning unless … the specification and prosecution history [indicate otherwise]”).
4
I hereby attest that Scott T. Weingaertner concurs in the e-filing of this document.
Dated: October 6, 2011
/s/ Mark H. Francis /s/
Mark H. Francis
5
490
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
________________________
ORACLE AMERICA, INC.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.
_______________________
No. C 10-03561 WHA
CLERK’S NOTICE
RESCHEDULING
HEARING TIME
_________________________
(Plaintiff shall serve a copy of this notice on any party in the above-entitled action not
appearing on the Notice of Electronic Filing or Other Case Activity and/or the attached
Certificate of Service.)
YOU ARE NOTIFIED THAT the hearing on the motions previously set for October
13, 2011 at 8:00 a.m. has been rescheduled for October 13, 2011 at 2:00 p.m. before the
Honorable William Alsup. Please report to Courtroom 8, on the 19th Floor, United States
Courthouse, 450 Golden Gate Avenue, San Francisco, CA 94102.
Because the Court will be in trial, parties should be aware that time for oral argument
on this matter will be very limited. Please plan accordingly.
Dated: October 7, 2011
FOR THE COURT,
Richard W. Wieking, Clerk
By: /s/Dawn Toland
Dawn Toland
Courtroom Deputy to the
Honorable William Alsup
491
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
_____________________
ORACLE AMERICA, INC.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.
_______________________
No. C 10-03561 WHA
PLAINTIFF’S AND DEFENDANT’S
FEDERAL RULE OF CIVIL
PROCEDURE 26(a)(3)
DISCLOSURES
APPENDIX A
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
____________________
ORACLE AMERICA, INC.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.
____________________
No. C 10-03561 WHA
PLAINTIFF ORACLE’S FED. R.,br>
CIV. P. 26(a)(3) WITNESS LIST
Plaintiff Oracle America, Inc. (“Oracle”) hereby submits its witness list for both the
liability and damages phases of the trial, pursuant to Fed. R. Civ. P. 26(a)(3) and the Court’s
Guidelines for Trial and Final Pretrial Conference in Civil Jury Cases.
Oracle identifies the name, contact information, and substance of the testimony of each
witness it expects to present or may present at trial, other than solely for impeachment. Pursuant
to the Court’s Guidelines, non-cumulative testimony is identified below in italics.
I. LIVE WITNESSES
Oracle expects to present live testimony from the following witnesses:
1
2
3
4
5
6
Oracle may present live testimony from the following witnesses:
7
8
9
10
Oracle reserves the right to call any witness identified by Google. The above descriptions
are not intended to cover every possible topic or sub-topic on which these witnesses may testify
and are made without prejudice to Oracle eliciting other testimony, including without limitation
testimony regarding matters addressed during the deposition of a given witness.
II. DEPOSITION TESTIMONY
Oracle reserves the right to present the deposition testimony of Google’s corporate
officers (Larry Page, Eric Schmidt, and Andy Rubin) and 30(b)(6) designees (Andy Rubin,
Daniel Bornstein, and Patrick Brady) in addition to or in lieu of their live testimony. Oracle also
reserves the right to present the deposition testimony of any witnesses listed above who are
unavailable to testify at trial.
Oracle may present testimony from the following additional witnesses by deposition:
Oracle reserves the right to designate testimony from any witness identified by Google.
The above descriptions are not intended to cover every possible topic or sub-topic on which
11
Oracle may offer deposition excerpts and are made without prejudice to Oracle offering other
testimony.
Dated: October 7, 2011
MICHAEL A. JACOBS
MARC DAVID PETERS
DANIEL P. MUINO
MORRISON & FOERSTER LLP
By: /s/ Daniel P. Muino
DANIEL P. MUINO
Attorneys for Plaintiff
ORACLE AMERICA, INC.
11
APPENDIX B
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
_____________________
ORACLE AMERICA, INC.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.
______________________
No. C 10-03561 WHA
GOOGLE’S TRIAL WITNESS
DISCLOSURE PURSUANT TO FED. R.
CIV. P. 26(A)(3)
Judge: Hon. William Alsup
Date Comp. Filed: October 27, 2010
Trial Date: October 31, 2011
Pursuant to Fed. R. Civ. P. 26(a)(3) and the Court’s Guidelines for Trial and Final
Pretrial Conference in Civil Jury Cases, Google discloses the following witnesses for the trial of
this matter. As required by the Guidelines, Google has identified non-cumulative testimony in
the summaries below by italicizing that testimony.
1. Google presently intends to call the following witnesses at the trial of this matter,
subject to Google’s right to modify this list according to developments in the case and rulings of
the Court. Contact information has already been provided in this matter.
1
2
3
2. Google may also call the following witnesses, contact information for whom has
already been provided:
4
5
6
7
8
In addition to the witnesses identified above, Google may call witnesses for rebuttal and
may call witnesses identified on Oracle’s witness list. Google will counter-designate testimony
of various witnesses designated by Oracle pursuant to Judge Alsup’s Guidelines for Trial and
Final Pretrial Conference in Civil Jury Cases. Should Oracle introduce any deposition testimony
it has designated for witnesses not at trial, Google will, in rebuttal, introduce the testimony they
have counter-designated.
Dated: October 7, 2011
Respectfully submitted,
KEKER & VAN NEST LLP
By: /s/ Robert A. Van Nest
ROBERT A. VAN NEST
Attorneys for Defendant
GOOGLE INC.
9
492
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
_______________________
ORACLE AMERICA, INC.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.
______________________
No. C 10-03561 WHA
GOOGLE’S MOTION IN LIMINE NO. 1
TO EXCLUDE LINDHOLM EMAIL AND
DRAFTS THEREOF
Judge: Hon. William Alsup
Date Comp. Filed: October 27, 2010
Trial Date: October 31, 2011
MOTION AND RELIEF REQUESTED
Under Federal Rule of Evidence 403, defendant Google, Inc. (“Google”) hereby moves
the Court for an order excluding in limine from all phases of this trial the August 6, 2010
Lindholm email and drafts,*1 which are the subject of Google’s pending Rule 72 motion to the
Court and which were submitted to the Court in camera in connection with that motion.
Google files this motion conditionally and asks the Court to rule on it only if, by the time
the Court takes up the parties’ motions in limine, no court has yet accepted Google’s contention
that the documents in question are protected by the attorney-client privilege and/or the attorney
work-product doctrine. In making this motion, Google does not waive (and hereby expressly
reasserts) its contention that the Lindholm email and drafts are protected by the attorney-client
privilege and by the attorney work-product doctrine.
DISCUSSION
Under Rule 403, the probative value (if any) of the Lindholm email and drafts “is
substantially outweighed by the danger of unfair prejudice, confusion of the issues, or misleading
the jury” because the email creates the false impression that Mr. Lindholm analyzed whether the
Android platform infringed the patents and/or copyrights asserted by Oracle and concluded that
it did.
The accompanying declaration by Mr. Lindholm establishes that this was not the case.
To the contrary, Mr. Lindholm declares under oath that, when he wrote the August 6, 2010
1
email, all of the following was true:
- He had never reviewed the patents asserted by Oracle in this lawsuit. Moreover,
he had no knowledge about what copyrights Oracle ultimately would claim were
infringed by Android, and had never reviewed any of the copyright registrations
asserted by Oracle in this lawsuit.*2
- He had not reviewed any of the source code or implementation for the aspects of
the Android platform accused by Oracle in this lawsuit.*3
- He did not have the legal training necessary to analyze whether the Android
platform infringes any of the patents or copyrights asserted by Oracle in this
lawsuit.*4
- He did not, in fact, undertake to analyze whether the Android platform infringes
any of the patents or copyrights asserted by Oracle in this lawsuit.*5
- Accordingly, he had no opinion as to whether the Android platform infringes any
of the patents or copyrights asserted by Oracle in this lawsuit.*6
Mr. Lindholm further declares that his August 6, 2010 email concerned alternatives to
technology that Oracle had recently accused Google of infringing. Again, he conducted no
analysis of, and had no opinion about, whether the Android platform actually infringes any of the
patents or copyrights asserted by Oracle in this lawsuit.*7 Accordingly, the Lindholm email and
drafts possess zero probative value in determining infringement—the central issue (along with
invalidity) of the first phase of the trial.
2
The Lindholm email and drafts likewise possess little (if any) probative value in
determining willfulness. Mr. Lindholm sent the email less than three weeks after Oracle
identified—for the first time—the specific patents it alleges are infringed by Android, and less
than one week before Oracle filed this lawsuit. The Lindholm email is therefore completely
irrelevant to Oracle’s allegation that Google willfully infringed Oracle’s intellectually property
rights before August 2010, and only marginally relevant (at best) to Oracle’s allegation that
Google willfully infringed at any point before Oracle filed this lawsuit.
On the other side of the Rule 403 scales, admitting the Lindholm email and/or drafts
poses an enormous “danger of unfair prejudice, confusion of the issues, or misleading the jury.”
The Court itself, when it first viewed one of the draft emails—out of context and without any
explanation of its marginal significance—initially appears to have believed that the draft could
be case-dispositive or at least highly damaging to Google. If the Court thought that, imagine
what a lay jury would conclude.
Moreover, it will not be possible at trial for Mr. Lindholm to reduce the prejudice of
admission by testifying about the document’s limited significance. Going beyond what he states
in the accompanying declaration would risk waiving the attorney-client privilege and workproduct
protection attaching to Google’s internal legal investigation of Oracle’s claims. There is
no dispute that such an investigation occurred. Google has submitted to this Court and to
Magistrate Ryu declarations about the investigation, and Magistrate Ryu did not dispute the
credibility of those declarations. Rather, Magistrate Ryu found that Google had not established a
sufficient link between that investigation and the Lindholm email and drafts. No one ever has
held, or should hold, that the compelled disclosure of the Lindholm email and drafts effectuated
a waiver of privilege as to the entire internal Google legal investigation of Oracle’s claims. But
that could be the result of requiring Mr. Lindholm to offer a full explanation of his email at trial;
and anything short of a full explanation is likely to strike a lay jury as evasive.
Thus, admitting the Lindholm email and drafts at trial would constitute an abuse of the
discretion conferred by Rule 403 because the documents possess little or no probative value but
pose an enormous danger of prejudice and confusion. “Where the evidence is of very slight (if
3
any) probative value, it’s an abuse of discretion to admit it if there’s even a modest likelihood of
unfair prejudice or a small risk of misleading the jury.” United States v. Gonzalez-Flores, 418
F.3d 1093, 1098 (9th Cir. 2005) (emphasis added) (citation omitted). Or, to put it another way:
“[E]vidence presenting even a ‘modest likelihood of unfair prejudice’ is ‘high enough to
outweigh the . . . probative value’ of marginally relevant evidence.” United States v. Espinoza-
Baza, 647 F.3d 1182, 1190 (9th Cir. 2011) (citation omitted).
Accordingly, the Court should exclude the August 6, 2010 Lindholm email and drafts in
limine from all phases of the trial.
Dated: September 24, 2011
Respectfully submitted,
KEKER & VAN NEST LLP
By: s/ Robert A. Van Nest
ROBERT A. VAN NEST
Attorneys for Defendant
GOOGLE INC.
________________________
*1 “The Lindholm email and drafts” refers to
(a) the Lindholm final emails (including, without limitation, the documents listed on Google’s
privilege log as items 2551 and 5513);
(b) the Lindholm draft emails (including, without limitation, the documents production-stamped
GOOGLE-12-00039558, GOOGLE-12-00039559, GOOGLE-12-00039560, GOOGLE-12-
00039561, GOOGLE-12-00039562, GOOGLE-12-00039563, GOOGLE-12-00039564,
GOOGLE-12-00039565, and the document listed on Google’s privilege log as item 5512); and
(c) the Lindholm draft and final emails that Google produced on August 26, 2011 under
compulsion of Magistrate Judge Ryu’s order granting Oracle’s motion to compel and with a full
reservation of rights (including, without limitation, the documents production-stamped
GOOGLE-12-100000001, GOOGLE-12-100000002, GOOGLE-12-100000003, GOOGLE-12-
100000004, GOOGLE-12-100000005, GOOGLE-12-100000006, GOOGLE-12-100000007,
GOOGLE-12-100000008, GOOGLE-12-100000009, GOOGLE-12-100000010, GOOGLE-12-
100000011).
*2 Declaration of Tim Lindholm in Support of Google’s Motion in Limine #1 to Exclude Mr.
Lindholm’s Email and Drafts Thereof (“Lindholm MIL Decl.”), attached as Ex. 1 to the
Declaration of Daniel Purcell in Support of Google Inc.’s Motions in Limine (“Purcell Decl.”)
filed herewith, ¶ 4.a.
*3 Purcell Decl. Ex. 1 (Lindholm MIL Decl.), ¶ 4.b.
*4 Purcell Decl. Ex. 1 (Lindholm MIL Decl.), ¶ 4.c.
*5 Purcell Decl. Ex. 1 (Lindholm MIL Decl.), ¶ 4.d.
*6 Purcell Decl. Ex. 1 (Lindholm MIL Decl.), ¶ 4.e.
*7 Purcell Decl. Ex. 1 (Lindholm MIL Decl.), ¶ 5.
4
493
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
____________________
ORACLE AMERICA, INC.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.
____________________
No. C 10-03561 WHA
GOOGLE’S MOTION IN LIMINE NO. 2
TO EXCLUDE ALLEGED
PERFORMANCE BENEFITS OF
ANDROID WITH THE ACCUSED
FUNCTIONALITY
Judge: Hon. William Alsup
Date Comp. Filed: October 27, 2010
Trial Date: October 31, 2011
MOTION AND RELIEF REQUESTED
Under Federal Rules of Evidence 401, 402, 403 and 702, defendant Google Inc.
(“Google”) hereby moves the Court for an order excluding in limine all evidence and argument
concerning the alleged performance benefits of Android with the accused functionality.
DISCUSSION
Oracle submitted four short reports by its own employees, Robert Vandette, Noel Poore,
Erez Landau and Seeon Birger (“the performance reports”), that collectively purport to quantify
the performance of Android with and without the alleged inventions claimed in five of Oracle’s
asserted patents. Based on these reports, Oracle experts Dr. Mitchell (on patent infringement),
Dr. Goldberg (on patent validity) and Dr. Cockburn (on damages) conclude that alleged
infringement of the asserted patents results in performance gains on Android devices, and by
extension, is the basis for consumer demand and Android’s success.
First, the Oracle employees who submitted the performance reports conceded that they
knew little about the Oracle patents, the asserted claims or the accused functionality. Moreover,
the employees lack any semblance of objectivity and failed to comply with the basic tenets of
Daubert and Rule 702. Second, the opinions are irrelevant to any issue of consequence in the
trial’s initial liability phase—and thus are inadmissible under Rule 402 except in the damages
phase, at most. Third, the opinions should be excluded under Rule 403 even for the damages
phase of trial because the limited probative value of the performance reports is substantially
outweighed by the danger of misleading the jury into thinking that actual Android devices
running actual Android applications would experience a similar performance impact.
1. The Performance Reports Fail to Comply with Daubert and Rule 702
The performance reports attempt to demonstrate the benefits of implementing five of the
asserted patents in the Android operating system. (The ‘447 and ‘476 patents are not addressed
in the reports). To accomplish this, Oracle ran various “performance benchmark” tests against
unmodified Android code to generate various performance statistics (e.g., how fast applications
are executed or how much storage space they require in memory). Oracle then modified the
Android code to try disabling the accused functionality, and re-ran the same tests in order to
1
compare the two sets of results and point to any drop in performance as indicative of the benefits
provided by the patented techniques. The idea may seem simple in theory, but it is a complicated
task in practice, and Oracle’s employees took countless shortcuts, disregarded approved
methodologies, and ran particular tests that were assured (and evidently designed) to reach the
conclusions sought by Oracle. Most critically, they made subpar modifications to the Android
code that were crude, hasty and in many instances crippled substantial non-accused
functionalities as well. The performance reports are so fraught with errors, assumptions and an
overall lack of detail that, had the reports been submitted for peer review to any reputable
technical journal or academic institution, they would be immediately rejected. See Ellis v.
Costco Wholesale Corp., No. 07-15838, 2011 U.S. App. LEXIS 19060 at *25-26 (9th Cir. Sept.
16, 2011) (“Under Daubert, the trial court must act as a ‘gatekeeper’ to exclude junk science that
does not meet Federal Rule of Evidence 702’s reliability standards by making a preliminary
determination that the expert’s testimony is reliable.” (citing Kumho Tire Co. v. Carmichael, 526
U.S. 137, 145 (1999).)
The essential prerequisite to any expert testimony is that it rest “on a reliable foundation.”
Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 584-587 (1993). As codified in Rule 702:
If scientific, technical, or other specialized knowledge will assist
the trier of fact to understand the evidence or to determine a fact in
issue, a witness qualified as an expert by knowledge, skill,
experience, training, or education, may testify thereto in the form
of an opinion or otherwise, if (1) the testimony is based upon
sufficient facts or data, (2) the testimony is the product of reliable
principles and methods, and (3) the witness has applied the
principles and methods reliably to the facts of the case.
A. It is Unclear What Was Done, Why, and By Whom
Dr. Mitchell has no firsthand knowledge about any code modifications, test conditions, or
the actual tests. He participated in some phone calls, after which he believed the employees used
“modifications that [he] suggested” and that “the actual experiments that were carried out
reflected [his] suggestions and requests on how to do it.” Mitchell Dep. Tr. (attached as Ex. 2 to
the Declaration of Daniel Purcell in Support of Google Inc.’s Motions in Limine (“Purcell
Decl.”) filed herewith) at 81:16 – 82:6; see also Purcell Decl. Ex. 3 (Mitchell Patent Report) at ¶
2
196. Yet, the Oracle engineers attribute everything they did to Dr. Mitchell. Robert Vandette
submitted a report on the ‘104 and ‘205 patents and admitted that he “relied on Dr. Mitchell to
interpret [the patent].” Purcell Decl. Ex. 4 (Vandette Dep. Tr.) at 74:16-17. When asked if he
had the “knowledge necessary to determine what functionality should be disabled,” he responded
that he was “not a patent attorney” and did not “know exactly which claim in the [‘104] patent
corresponds to [the] functionality” he disabled. Id. at 76:23-24; 77:24-78:1. Likewise, Noel
Poore submitted a report regarding the ‘520 and ‘702 patents and testified that he “looked
through the patent[s]” but had no idea which claims were asserted, and was “not necessarily
familiar enough with the detail of th[e] patent[s]” to know how they related to the accused
functionality. Purcell Decl. Ex. 5 (Poore Dep. Tr.) at 33-35; 74-75. Erez Landau revealed that
he reviewed only the Abstract of the ‘720 patent and “part of the claims.” Purcell Decl. Ex. 6
(Landau Dep. Tr.) at 21-22.
In addition, Vandette, Poore and Landau all indicate in their August 9, 2011 reports that
they downloaded the Android code, modified it, compiled it and tested it. Purcell Decl. Ex. 7
(Vandette report) at ¶ 27-39; Purcell Decl. Ex. 8 (Poore report) at ¶ 12-14; Purcell Decl. Ex. 9
(Landau report) at ¶ 25-31. Now, in a report Oracle submitted on September 12, 2011 (after the
close of expert discovery), a fourth employee named Seeon Birger claims that he was the one
who downloaded the Android code, modified it, compiled it, and provided it to the other Oracle
employees. See Purcell Decl. Ex. 10 (Birger report) at ¶ 11-21. Landau admitted as much
during his deposition (see Purcell Decl. Ex. 6 (Landau Dep. Tr.) at 58-63), while Vandette and
Poore appear to have concealed the fact that someone else performed the work disclosed in their
reports. See, e.g., Purcell Decl. Ex. 5, (Poore Dep. Tr.) at 25:9-11 (“Q. So you did all the work
in this report by yourself, correct? A. That’s correct”). In short, Oracle failed to provide the
foundational report underlying the other performance reports until weeks later, without
explanation, and prejudicing Google’s discovery into the benchmarking analyses. Even more
appalling, Oracle refuses to present Mr. Birger for deposition. See Purcell Decl. Ex. 11
(September 21, 2011 email from M. Francis to M. Peters.) For these reasons, all of the
benchmarking analyses are legitimately in question and should be excluded for Oracle’s failure
3
to comply with its expert-discovery obligations.
B. Oracle Made Improper Modifications to the Android Code
Oracle’s modifications of Android code improperly disabled or corrupted functionality in
Android that is not accused of infringement. For example, Vandette disabled the JIT compiler
for his ‘104 patent tests, even though the JIT compiler was never accused in connection with that
patent. Purcell Decl. Ex. 4 (Vandette Dep. Tr.) at 84:18-25. With respect to the ‘205 patent,
which is asserted against a single feature of the JIT compiler, Vandette again disabled the whole
JIT compiler, even though the ‘205 patent itself recognizes the existence of JIT compilers in the
prior art. For tests relating to the ‘702 patent, Poore modified Android code so existing
duplicates would remain in the Android “.dex” files—but his report openly admits that the
modified code created new duplicates that did not previously exist. Purcell Decl. Ex. 8 (Poore
Report) at ¶ 23. Landau admitted that when disabling the copy-on-write functionality allegedly
claimed by the ‘720 patent, his test program loaded 1,264 files into memory, but readily agreed
that “if copy-on-write is disabled, it would just be a waste of memory to load these [files] …”
and it would make no sense to have Android run that way. Purcell Decl. Ex. 6 (Landau Dep. Tr.)
at 86:1-87:24. As a whole, the performance reports fail to account for changes beyond the
accused functionality responsible for differences in performance between the original and
modified code. See Claar v. Burlington N.R.R., 29 F.3d 499 (9th Cir. 1994) (testimony excluded
where the expert failed to consider other obvious causes for the plaintiff’s condition). Oracle’s
experts offer no recognized methodology guiding their modifications of the Android source
code. Under Daubert, the Court needs to exclude expert testimony unless the “methodology
underlying the testimony is scientifically valid.” 509 U.S. at 592-93.
C. Oracle’s Reports Draw Conclusions Not Supported by Its Tests
Even assuming that Oracle’s performance reports quantify the difference in running
Android code with and without the accused functionality, Oracle uses the test results to make
unfounded conclusions that those results are indicative of the patents’ impact on the real-world
performance of Android, as follows:
- Vandette and Poore did not test the performance of any actual Android applications;
4
- Vandette and Poore did not test the performance of any actual Android devices;
- Landau tested 17 Android applications at one time on the Nexus One device released nearly
two years ago, and—as mentioned above—he modified the code to operate in a manner that
would never be implemented by Google and made no practical sense. See Purcell Decl. Ex.
12 (Landau Dep. Ex. 494) (Android’s website specifically states that the Nexus One should
not be used for testing);
- None of the employees attempted to implement reasonable non-infringing substitutes—they
simply crippled the code in a manner that would never actually be implemented;
- None of the tests measure overall system performance on an Android device and they fail to
recognize that the Dalvik VM is used only 1/3 of the time by Android—the other 2/3 of time
Android is executing native machine code. See Purcell Decl. Ex. 13 (Vandette Dep. Ex. 462,
May 2010 Google IO presentation) at slide 5;
- Oracle’s employees downloaded and tested a development version of Android’s “Froyo”
source code and not any particular code release that has been used by actual devices;
- There is nothing in the employee reports that indicates whether they followed the specific
instructions on Android’s website for downloading, compiling and installing Android on
devices. (For example, Landau testified that Mr. Birger used version 6 of the JDK software
to compile Android “Froyo” code, whereas the Android website specifically requires that
version 5 of the JDK be used. See Purcell Decl. Ex. 6 (Landau Dep. Tr.) at 61:17-21; Purcell
Decl. Ex. 14 (Landau Dep. Ex. 491)
Taking these factors into account, “there is simply too great an analytical gap between the
data and the opinion proffered.” General Elec. Co. v. Joiner, 522 U.S. 136, 146 (1997). All of
Oracle’s expert conclusions based on these reports amount to just “subjective belief or
unsupported speculation” and should be excluded. Daubert, 509 U.S. at 588-90 (“[I]f an opinion
is fundamentally unsupported, then it offers no expert assistance to the jury.”).
2. The Performance Reports Should Be Excluded From the Liability Phase of the Case
under Rule 402
Evidence regarding the purported performance impact of the asserted patents is
5
potentially probative of only damages theories, and all damages issues have been bifurcated.
Thus, the purported performance impact of the asserted patents has no bearing on alleged
infringement or invalidity and has no relevance to the liability phase of the trial.
As stated in Google’s motion regarding “commercial success,” claims about the
performance with and without the asserted patents pose at least a “modest likelihood” of unfair
prejudice and a more than a “small risk” of misleading the jury because it tends to create an
inflated sense of the patent’s importance to the success of Android. See United States v.
Gonzalez-Flores, 418 F.3d 1093, 1098 (9th Cir. 2005) (applying Rule 403 and holding that
“[w]here the evidence is of very slight (if any) probative value, it’s an abuse of discretion to
admit it if there’s even a modest likelihood of unfair prejudice or a small risk of misleading the
jury”) (citation omitted); see also United States v. Espinoza-Baza, 647 F.3d 1182, 1190 (9th Cir.
2011) (“evidence presenting even a ‘modest likelihood of unfair prejudice’ is ‘high enough to
outweigh the . . . probative value’ of marginally relevant evidence” under Rule 403) (citation
omitted).
3. The Performance Reports Should Be Excluded From the Damages Phase of the
Case under Rule 403
As explained above, Oracle’s performance reports fail to analyze the performance impact
of the accused infringing features on real-world Android devices and applications. Furthermore,
the results are unreliable because they do not account for realistic non-infringing alternatives or
the detrimental impact of Oracle’s sloppy code modifications to non-infringing Android
functionality. In view of these limitations, Oracle’s reports offer little probative value, which
value is substantially outweighed by its capacity to be used in prejudicial ways. For example,
Oracle may contend that consumers’ Android products would suffer a noticeable performance
impact without the accused functionality. But this premise is unsupported by the performance
reports, which focus on micro-benchmarks of the virtual machine, not overall system
performance. Even if Oracle presents testimony within the scope of the reports, it threatens to
mislead the jury to conclude that actual Android performance will mimic Oracle’s test results,
given all the flaws discussed above. Either way, the Court should exclude evidence regarding
6
the performance reports. See Rule 403 (“evidence may be excluded if its probative value is
substantially outweighed by the danger of unfair prejudice, confusion of the issues, or misleading
the jury…”); Daubert, 509 U.S. at 595 (“Expert evidence can be both powerful and quite
misleading because of the difficulty in evaluating it.” (citation omitted)).
As a final note, in order to safeguard the effectiveness of its ruling and thus avoid the
danger of prejudice, the Court also should bar counsel for both parties from making any remarks
in opening argument about the alleged performance benefits of the asserted patents in Android.
Dated: September 24, 2011
Respectfully submitted,
KEKER & VAN NEST LLP
By: s/ Robert A. Van Nest
ROBERT A. VAN NEST
Attorneys for Defendant
GOOGLE INC.
7
494
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
_________________________
ORACLE AMERICA, INC.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.
______________________
No. C 10-03561 WHA
GOOGLE’S MOTION IN LIMINE NO. 3
TO EXCLUDE PORTIONS OF
COCKBURN REPORT ON DAMAGES
Judge: Hon. William Alsup
Date Comp. Filed: October 27, 2010
Trial Date: October 31, 2011
MOTION AND RELIEF REQUESTED
Under Federal Rules of Evidence 401, 403 and 702, case law interpreting those rules, and
this Court’s July 22, 2011 Order, Docket No. 230 (“Order”), defendant Google Inc. (“Google”)
hereby moves the Court for an order excluding in limine certain aspects of the damages expert
report of Dr. Iain Cockburn (“Cockburn Report”), submitted by Oracle America, Inc. (“Oracle”)
in this case.
DISCUSSION
When it rejected Oracle’s damages expert Dr. Iain Cockburn’s first attempt at a damages
report two months ago, this Court gave Oracle one more try, issuing clear guidelines governing
the scope of any revised report. The Court expressly told Oracle that “[i]f the next and final
report fails to measure up in any substantial and unseverable way … then it may be excluded
altogether without leave to try again.” Order at 15. Cockburn’s second try, served on September
13, 2011, fails to follow the Court’s instructions and ignores governing law in numerous critical
respects. The Court should strike the deficient aspects of Cockburn’s new report and preclude
Oracle from offering expert testimony on those issues, as set forth below.
Critically, Cockburn has not backed off his bottom-line conclusion that Oracle is entitled
to billions of dollars in damages, although he has significantly changed the logic underlying his
damages number. [REDACTED] He was able to blackboard these huge numbers only by failing to
analyze the value of the specific asserted claims of the Oracle patents at issue or the contribution
of the allegedly infringing features to Google’s Android platform. Cockburn offered no analysis
whatsoever regarding Oracle’s alleged copyright damages. Based on those and other failings,
the Court ordered Cockburn back to the drawing board.
Cockburn’s revised report takes a different route, but ends up in almost exactly the same [REDACTED] post a huge patent-damages number rebuffed, Cockburn has loaded those same amounts onto
1
Oracle’s copyright claim. After offering no analysis of copyright damages in his first report, he
now opines that Oracle is entitled to about $2.3 billion in copyright damages through 2012. [REDACTED] He doesn’t offer any calculation of damages Oracle
will suffer after 2012, although he contends that future damages would be even larger than past
damages.**1
Most fundamentally, Oracle’s and Cockburn’s pursuit of the largest conceivable damages
number ignores Sun’s valuation of the intellectual property at issue around the time the alleged
infringement began. [REDACTED]
2
[REDACTED] Cockburn ignores all this.
But for purposes of this Daubert motion, Cockburn’s revised report is not only incorrect
and unreliable, it is excludable under the Federal Rules of Evidence and this Court’s Order.
Cockburn commits factual and legal errors similar to those in his first report. With respect to the
factual basis of Cockburn’s opinion, to be admissible, expert opinions must “sufficiently [tie the
expert testimony on damages] to the facts of the case.” Uniloc USA, Inc. v. Microsoft Corp., 632
F.3d 1292, 1315 (Fed. Cir. 2011) (citing Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579,
591 (1993)) (alteration in original). Here, Cockburn again fails to tie his opinions to the facts of
the case. Cockburn also ignores the legal framework governing both patent and copyright
damages, violating the requirement “that any and all scientific testimony or evidence admitted is
not only relevant, but reliable.” Daubert, 509 U.S. at 589. Since governing law provides that
damages must be calculated a certain way, and puts various categories of purported damages off
limits, expert testimony that ignores those limitations is necessarily irrelevant to the jury’s
damage analysis. See Imonex Servs., Inc. v. W.H. Munzprufer Dietmar Trenner GMbH, 408 F.3d
1374, 1380 (Fed. Cir. 2005) (barring expert from providing “testimony on the entire market
value rule” that “bore no relation to that rule”). Cockburn also fails to do several things that the
Court specifically directed him to do in its July 22, 2011 Order.
A. Cockburn’s opinion regarding the value of a lost copyright license with Google
should be excluded, because it ignores the governing legal standard and has no
factual basis.
First, this Court should exclude Cockburn’s opinion regarding the value of a fair-market
copyright license between Sun and Google, because his opinion ignores the legal standard for
calculating the value of such a license and has no basis in the record. [REDACTED] and then a further $102.6 million for 2012, id. at 23 & ¶ 59.
The law governing recovery of hypothetical copyright license damages is clear—to prove
its entitlement to such damages, a party is “required to show that, but for infringement, the
3
parties would have agreed to license the use of the copyrighted works at issue.” Oracle USA,
Inc. v. SAP AG, 2011 WL 3862074 at *7 (N.D. Cal. Sept. 1, 2011) (citing Polar Bear Prods.,
Inc. v. Timex Corp., 384 F.3d 700, 711 (9th Cir. 2004)). To make this showing, a plaintiff must
offer objective and non-speculative evidence “of benchmark transactions, such as licenses
previously negotiated for comparable use of the infringed work, and benchmark licenses for
comparable uses of comparable works.” Id. (citing Jarvis v. K2 Inc., 486 F.3d 526, 533-35 (9th
Cir. 2007) & Polar Bear, 384 F.3d at 709). When it is clear that the parties “would never have
agreed to a license” as is proposed by the plaintiff’s damages expert, no hypothetical license
damages can be awarded. Id. In other words, to recover hypothetical license damages here,
Oracle must offer evidence that it actually would have offered Google the same license it now
hypothesizes. Not only is there no evidence to support that conclusion here, all the evidence
proves the contrary.
[REDACTED]
This is improper as a matter of law. In seeking a hypothetical copyright license, Oracle is
limited to recovering what Sun actually would have received from Google in exchange for a
license. Oracle cannot import Sun’s lost profits into a licensing calculation, because those were
never the subject of any licensing discussion between Google and Sun. As this Court recently
explained in reversing a massive (but baseless) copyright damages award for Oracle, the notion
that a copyright plaintiff is entitled “to seek ‘hypothetical’ license damages … in the form of lost
license fees … has no support in the law.” Oracle, 2011 WL 3862074 at *8. Put another way, a
hypothetical license calculation must be based on Sun’s actual behavior in pre-suit licensing
4
negotiations, which presupposed a partnership with Google. But Cockburn’s upward
adjustments are based on revenues Sun allegedly lost because the opposite happened—Sun could
not partner with Google, because Google chose to compete with Sun instead. The Ninth Circuit
has never affirmed a hypothetical license calculation in a case involving competitors (who do not
commonly license each other), as opposed to partners. See id. at *8 & n.2. Needless to say,
there is no evidence that Sun would actually have offered any sort of license to a competitor, and
Cockburn cites none. In the real world, Sun never gave a license to Google for Android.
In addition to violating the law, Cockburn’s hypothetical copyright license has no factual
support, or at least none that a reasonable expert would ever rely on. Cockburn’s upward
adjustment of his $14.8 million baseline to $102.6 million relies entirely on a single internal Sun
presentation roughly sketching a projection of the money Sun might earn from a partnership with
Google. [REDACTED] The presentation contains a few slides with general ideas about
how Sun might monetize Android, but the numbers in the presentation are pure speculation.
There are no underlying financial data backing them up. Neither is there any particular reason to
believe Sun thought the vague concepts in the presentation were viable. [REDACTED] Daubert makes clear that, to be
admissible, expert testimony must “connote[ ] more than subjective belief or unsupported
speculation.” Daubert, 509 U.S. at 590. At most, the presentation reflects Sun’s optimistic
hope, without any grounding in experience or past practice, that it might be able to earn money
by partnering with Google. But there is no actual evidence that Sun could have established a
viable business to exploit Android. It never actually did so in the real world, despite its
familiarity with the Java platform and its long-standing relationships with device manufacturers
and mobile carriers. Because this presentation provides Cockburn’s entire factual foundation for
his upward adjustment, that adjustment is unreliable and excludable under Daubert.
5
B. Cockburn’s upward adjustments to his patent-damages calculation improperly add
lost profits to a purported reasonable royalty calculation, and also lacks any
reasonable factual foundation.
Second, the Court should exclude Cockburn’s upward adjustments to his patent damages [REDACTED]
[REDACTED]
6
This is an express (and unlawful) attempt to recover lost profits damages under the guise
of a reasonable royalty, without any attempt to satisfy the lost-profits standard of Panduit Corp.
v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152 (6th Cir. 1978). Cockburn does not even try to
disguise what he is doing. He directly uses Sun’s projected profits from monetizing a potential
partnership with Google as the basis of his upward adjustment. Purcell Decl. Ex. 31 (Cockburn
Report Ex. 15). This is not using a patentee’s likely lost profits as one factor bolstering a
reasonable royalty, as Georgia-Pacific permits; this is direct recovery of projected lost profits. It
is improper under the law and this Court’s order, which directed Cockburn to perform a
reasonable royalty calculation. Moreover, just as was the case with his (equally improper)
upward hypothetical copyright license calculation, the sum total of the factual support for
Cockburn’s upward patent-damages adjustment is the same single, tentative Sun presentation
speculating about amounts Sun might earn from partnering with Google. For the same reasons
discussed above, this document is not a valid basis of any expert opinion. But Cockburn relies
on nothing else. For all these reasons, the Court should exclude Cockburn’s patent-damages
calculation.
C. Cockburn fails to provide any calculation of future damages.
Third, although Cockburn has calculated damages through 2012, he fails to offer any firm
calculation of damages after 2012, as to either the patent or copyright claims. This Court could
not have instructed Cockburn more clearly on this point in its Order:
The hypothetical license, therefore, should be structured as a series of yearly
payments with no additional lump sum to be paid up front. This structure should
be adopted as an assumption in any damages analysis, so that the jury can more
easily divide the amount of damages between past and future infringement. If and
when a permanent injunction is entered, the damages award will then be adjusted
accordingly. Furthermore, any projection of future damages must take into
account the varying expiration dates of the asserted patent claims.
Order at 11 (emphasis in original). Cockburn simply ignored this directive. Although he asserts
that Oracle will continue suffering the consequences of Google’s alleged infringement after trial, [REDACTED] He then contends, without any quantification, that his
7
methodology for calculating past damages would undercalculate future damages. Id. at 23 ¶ 59.
But he does not provide any number, much less “take into account the varying expiration dates
of the asserted patent claims” on future damages, as this Court ordered. Order at 11.
Even worse, he ignores both the law and the Order, opining that “if I am asked to put an
estimate of an appropriate royalty for future infringement before the jury or the Court”—which
the Court did in fact direct him to do—future damages should be based on a hypothetical
negotiation taking place after the jury verdict. As the Court made clear in its Order, the law
requires that the hypothetical negotiation take place at the time of first infringement. Order at 6-7. There is no separate hypothetical negotiation standard for future damages. Cockburn asserts,
without citing authority, that assuming a post-trial negotiation is necessary to take account of
“the immediate prospect of an injunction,” but that is nonsensical. Every hypothetical
negotiation presumes a finding of infringement and thus the immediate prospect of an injunction.
See Cummins-Allison Corp. v. SBM Co., Ltd., 584 F. Supp. 2d 916, 918 (E.D. Tex. 2008) (“[A]
jury finding of infringement and no invalidity … merely confirms the original assumption of
those facts” in the hypothetical negotiation analysis); Ariba, Inc. v. Emptoris, Inc., 567 F. Supp.
2d 914, 918 (E.D. Tex. 2008) (same).**2
In any event, regardless of what standard applies, the fundamental problem is Cockburn’s
failure to offer any future damages calculation, or any reasoning that could support such a
8
calculation, despite being told to do so. The Court should preclude Oracle from offering any
expert testimony on future damages at trial.
D. Cockburn fails to conduct any analysis at the level of the individual patent claims.
Fourth, Cockburn again ignores this Court’s Order by omitting a claim-by-claim analysis
of any of the asserted patents, either with respect to the date of first infringement or their
contribution to the Android platform. Instead, he treats each patent as an indivisible whole. See
Purcell Decl. Ex. 20 (Cockburn Report Ex. 2) (describing functionality on patent-by-patent
basis); id. Exs. 21-30 (Cockburn Report Exs. 4-13) (calculating value of each patent as a whole
without any analysis of individual patent claims). But in its Order, the Court made clear that
“determining the date of first infringement requires a claim-by-claim analysis.” Order at 7
(emphasis added). Similarly, some of the asserted patent claims might be less valuable, or easier
to design around, than other claims contained within that same patent, but Cockburn conducts no
analysis of any of those issues.
Accordingly, the Court should bar Oracle and Cockburn from presenting any evidence or
testimony that the date of first infringement of any of the asserted patents postdates the date of
first infringement of the first patent infringed. Because Cockburn has refused to apportion patent
value among the asserted claims in his report, the Court should also preclude him from doing so
at trial. The Court should further instruct the jury that, because Oracle has no evidence of the
value of individual patent claims, if the jury finds any asserted claim of any patent not infringed,
it may assume that the non-infringed claim represented the full value of that patent, and thus that
Oracle is entitled to no damages for infringement of other claims of that patent.
E. Cockburn should not be permitted to inflate his damages estimate by presenting
data about licenses for noncomparable technologies or settlements of
noncomparable litigation.
Finally, Cockburn continues to bolster his conclusions by referring to licenses involving
unrelated technology and parties—such as a semiconductor license negotiated between Nokia
and Qualcomm. Purcell Decl. Ex. 15 (Cockburn Report) at 37-38 & ¶¶ 104-05. This is just an
effort to put big numbers before the jury. The Federal Circuit has repeatedly instructed courts to
exercise “vigilance” in permitting experts to testify about “past licenses to technologies other
9
than the patent in suit.” ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 869 (Fed. Cir. 2010)
(emphasis in original); see also Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1329 (Fed.
Cir. 2009). This Court should bar Cockburn from testifying about licenses for technologies
other than those embodied by the patents-in-suit, or licenses involving neither Sun nor Google.
Likewise, Cockburn persists in justifying his billion-dollar damages estimate by reference
to Sun’s settlement of its lawsuit with Microsoft. Cockburn’s rationale for injecting the Sun-
Microsoft settlement into this case is that Sun purportedly was concerned there, as Oracle is here,
about fragmentation of Java. Purcell Decl. Ex. 15 (Cockburn Report) at 26-27 & ¶¶ 70-71. But
the Microsoft lawsuit was about a lot more than fragmentation, as Cockburn admits when he
notes that Sun sued Microsoft for marketing its own competing virtual machine using the Java
brand, something Google has never done. Id. at 26 & ¶ 71. Cockburn has made no effort to
separate out the value of the different components of that settlement. As discussed already, [REDACTED] It would obviously be tremendously prejudicial to Google to allow
Cockburn to reference the $900 million amount of the Sun-Microsoft settlement, without having
any basis to connect that settlement to Oracle’s claims in this case or explain the dollar value of
fragmentation generally. Accordingly, the Court should exclude any references to that
settlement.
Dated: September 24, 2011
Respectfully submitted,
KEKER & VAN NEST LLP
By: s/ Robert A. Van Nest
ROBERT A. VAN NEST
Attorneys for Defendant
GOOGLE INC.
____________________
**1 Due to the Court’s order restricting Google to only 200 total pages of materials supporting its
motions in limine, Google has submitted only the relevant excerpts of the revised Cockburn
Report. The revised Cockburn Report, by itself, is 202 pages, and the exhibits and appendices to
that report are about that long as well. Google believes that this Court would benefit from
reviewing the entire report prior to deciding the admissibility of Cockburn’s opinions, and would
promptly provide the full report to the Court if directed.
**2 In a letter to the Court on September 22, 2011, Oracle cited two cases for the proposition that a
post-trial damages award should be based on a separate hypothetical negotiation taking place
after the jury verdict. Oracle’s first case, Paice LLC v. Toyota Motor Corp., 504 F.3d 1293 (Fed.
Cir. 2007), does not hold that post-trial damages must be calculated via a post-verdict
hypothetical negotiation. It provides only that a trial court has discretion in setting a reasonable
royalty for post-trial infringement. See id. at 1314-15. Oracle’s other case, Boston Scientific
Corp. v. Johnson & Johnson, No. C 02-00790 SI, 2009 WL 975424 (N.D. Cal. Apr. 9, 2009),
relies on a misapplication of the Federal Circuit’s opinion in Amado v. Microsoft Corp., 517 F.3d
1353 (Fed. Cir. 2008), which discussed only how post-verdict infringement damages should be
adjusted “[w]hen a district court concludes that an injunction is warranted, but is persuaded to
stay the injunction pending an appeal.” Amado, 517 F.3d at 1362. In that context, a court may
adjust damages based on factors such as “the infringer’s likelihood of success on appeal, the
infringer’s ability to immediately comply with the injunction, [and] the parties’ reasonable
expectations if the stay was entered by consent or stipulation.” Id. Amado never suggests, much
less holds, that post-trial damages must be based on a hypothetical post-verdict negotiation. To
the extent Boston Scientific supports such a conclusion, it is inconsistent with the better-reasoned
Cummins-Allison and Ariba cases, which recognize that any hypothetical negotiation already
assumes validity, infringement, and the looming possibility of an injunction.
10
495
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
__________________
ORACLE AMERICA, INC.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.
_________________
No. C 10-03561 WHA
GOOGLE’S MOTION IN LIMINE NO. 4
TO EXCLUDE PORTIONS OF
GOLDBERG REPORT DISCUSSING
COMMERCIAL SUCCESS
Judge: Hon. William Alsup
Date Comp. Filed: October 27, 2010
Trial Date: October 31, 2011
MOTION AND RELIEF REQUESTED
Under Federal Rules of Evidence 401, 402, and 403, defendant Google, Inc. (“Google”)
hereby moves the Court for an order excluding in limine evidence attributing any “commercial
success” of Java to the asserted patents because Oracle cannot as a legal matter satisfy its burden
of proving the requisite nexus. Such evidence includes paragraphs 423-427, 435-443, and 482-485 of the Goldberg Report***1. In any event, the Court should exclude in limine evidence
attributing Android’s (or even Java’s) commercial success to the asserted patents, unless and
until Google opens the door to such evidence by presenting an obviousness defense, and Oracle
demonstrates the requisite nexus. In addition to the Java-related paragraphs already listed, this
includes paragraphs 428-431, 444-447, 461-466, and 469-473 of the Goldberg Report.
DISCUSSION
“Commercial success” is just one of a long list of potentially relevant “secondary
considerations” that the patentee may invoke to rebut the defendant’s proof of obviousness. As
this Court observed in its Therasense decision, “[t]he Federal Circuit has held that ‘secondary
considerations, when present, must be considered in determining obviousness.’” Therasense,
Inc. v. Becton, Dickinson & Co., 565 F. Supp. 2d 1088, 1123 (N.D. Cal. 2008) (Alsup, J.), aff’d,
593 F.3d 1289 (Fed. Cir. 2010) reh’g en banc granted, opinion vacated, 374 F. App’x. 35 (Fed.
Cir. 2010) (en banc), panel opinion reinstated in relevant part and district court aff’d in relevant
part, 2011 WL 2028255 (Fed. Cir. May 25, 2011) (en banc) (citation omitted). The list of
potentially probative secondary considerations has expanded over time to include “commercial
success,” “long-felt but unsolved needs,” “failure of others,” and seven other factors that this
Court has discerned in the Federal Circuit’s precedents. See id. at 1123. Despite their disparate
natures, all of these factors—including “commercial success”—have one thing in common:
Evidence regarding them “only has probative value where there is ‘a nexus between the merits of
the claimed invention and the secondary consideration.’” Id. at 1124 (citation omitted). “The
1
burden of proof as to this connection or nexus resides with the patentee.” Id. (citation omitted).
1. Oracle cannot attribute Java’s commercial success to the ‘520, ‘720, and ‘520
patents specifically. nor to the asserted patents generally.
Oracle only cites the purported commercial success of Java to demonstrate nonobviousness
of four of the seven asserted patents: the ‘104 patent, the ‘205 patent, the ‘447
patent, and the ‘476 patent. See generally Goldberg Report §§ XVI.A.2, B.2, and F.2 (Purcell
Decl. Ex. 33). With respect to the remaining patents—the ‘520 patent, the ‘702 patent, and the
‘720 patent—Oracle only relies on the commercial success of Android to demonstrate nonobviousness.
See generally id at §§ XVI.C.2, D.2, and E.2. The Court should therefore at
minimum exclude under Rule 402 any evidence that Java’s success is attributable to the practice
of the ‘520, ‘702, and ‘720 patents.
Furthermore, because Oracle does not contend Java practices all of the asserted patents,
any suggestion that the success of “Java” generally is attributable to the asserted patents would
be misleading. Oracle cannot logically claim that Java’s success is attributable to the asserted
patents when it only contends that about half of those patents are even practiced by Java. As
such, the Court should exclude any such illogical and false generalizations under Rule 403.
2. Oracle cannot attribute Java’s commercial success to the ‘104, ‘205, ‘447,
and ‘476 patents because it cannot establish the necessary nexus.
Even as to the ‘104, ‘205, ‘447, and ‘476 patents, which Oracle has attempted to relate to
the success of Java, the Court should exclude such evidence because there is no analysis as to
whether Java actually practices those patents. Instead of analyzing the issue, Oracle’s experts
simply “assume” that this is the case. For example, Dr. Benjamin Goldberg, contends that “I
understand that Sun Microsystems and Oracle have implemented the claimed invention of the
’104 patent in their Java virtual machines.” See Purcell Decl. Ex. 33 (Goldberg Report) ¶ 423.
He makes the same claim with respect to the ‘447 and ‘476 patents. See id. ¶ 482. Dr. Goldberg
does not cite to anything in the record to support these assertions, and certainly engages in no
analysis of the issue himself (nor does Dr. Mitchell, Oracle’s expert on the issue of
infringement).
2
With respect to the ‘205 patent, Dr. Goldberg claims that “I understand that Java engineer
Dr. Peter Kessler has confirmed that the HotSpot virtual machine employs the
_fast_invokevfinal() nonstandard bytecode to implement the asserted claims of the ’205 patent.”
Id. ¶ 436. Again, there is no basis for this assertion. Dr. Goldberg has not analyzed whether
Java practices the claims. Nor did Dr. Kessler, upon whom Dr. Goldberg relies. To the contrary,
Dr. Kessler repeatedly testified that he could not interpret and apply the asserted claims of the
‘205 patent. See Purcell Decl. Ex. 34 (Kessler Depo.) at 52:13-19; 59:13-22. He similarly
testified with respect to the ‘104 patent, and Oracle’s counsel repeatedly objected to the line of
questioning as calling for expert testimony, implying that Dr. Kessler was not in a position to
evaluate whether Java indeed practices the asserted claims. See id. at 187:20 – 188:23.
In light of Oracle's failures to even analyze whether Java practices the ‘104, ‘205, ‘447,
and ‘476 patents, any evidence suggesting Java does so should be excluded under Rules 402 and
403. Indeed, without such an analysis, there can be no showing of a “nexus between the merits
of the claimed invention and the secondary consideration.” Therasense, 565 F. Supp. 2d at 1123.
3. Whether or not Android’s (or even Java’s) commercial success is
attributable to the asserted patents is not relevant unless Google presents an
obviousness defense, and should be excluded until that point.
The paragraphs of the Goldberg Report addressed by this motion purport to demonstrate
that the inventions claimed in each of Oracle’s asserted patents have contributed to the
commercial success of Java, Android, or both. Such evidence is irrelevant—and thus
inadmissible under Rule 402—unless and until Google presents an obviousness defense to the
specific patent(s) that Dr. Goldberg is discussing. With 42 claims across 7 patents still at issue, it
is impossible to tell whether obviousness will even be an issue at trial. In fact, Oracle may moot
this issue altogether if it finally narrows the scope of the case to triable claims, rather than an
unrealistic laundry list of issues.
In any event, evidence of the impact of the asserted patents on the commercial success of
Android or of Java has no relevance —and is therefore inadmissible under Rule 402—unless and
until (1) Google presents an obviousness defense as to a specific patent, and (2) Oracle meets its
burden of demonstrating a “nexus” between the merits of the invention claimed in that patent and
3
the commercial success of Android (in the case of the ’205, ’702, ’520, and ’720 patents) or the
commercial success of Java (in the case of the ’104, ’205, ’447 and ’476 patents).
Prior to that juncture, evidence regarding “commercial success” also should be
inadmissible under Rule 403’s probative-value-versus-prejudice balancing test—even assuming
arguendo that such evidence possesses some marginal relevance to the liability case. “Where the
evidence is of very slight (if any) probative value, it’s an abuse of discretion to admit it if there’s
even a modest likelihood of unfair prejudice or a small risk of misleading the jury.” United
States v. Gonzalez-Flores, 418 F.3d 1093, 1098 (9th Cir. 2005) (emphases added) (citation
omitted) (applying Rule 403). Or, to put it another way: “[E]vidence presenting even a ‘modest
likelihood of unfair prejudice’ is ‘high enough to outweigh the . . . probative value’ of marginally
relevant evidence.” United States v. Espinoza-Baza, 647 F.3d 1182 (9th Cir. 2011) (citation
omitted) (applying Rule 403). “Commercial success” evidence poses at least a “modest
likelihood” of unfair prejudice and a more than a “small risk” of misleading the jury because it
tends to create an inflated sense of the patent’s importance to the rapid development of the
mobile-device market and, by implication, to the success of Android. Unfair prejudice and the
risk of misleading are even greater with respect to Dr. Goldberg’s assertions that the ’104, ’205,
’447, and ’476 patents contributed to “Java’s commercial success” (Purcell Decl. Ex. 33
(Goldberg Report), ¶¶ 427, 443, 485), because Java actually has achieved little or no success in
the field of mobile devices.
CONCLUSION
The Court should, pursuant to Rules 402 and 403, exclude in limine any evidence
attributing the commercial success of Java to the asserted patents because (a) Oracle does not
even rely on all of them to demonstrate success; and (b) as to those it does rely on, Oracle cannot
demonstrate the requisite nexus. At a minimum, the Court should exclude under Rules 402 and
403 any evidence attributing the commercial success of either Java or Android to the asserted
patents unless and until such time as Google opens the door via an obviousness defense and
Oracle demonstrates the requisite nexus.
4
Dated: September 24, 2011
Respectfully submitted,
KEKER & VAN NEST LLP
By: s/ Robert A. Van Nest
ROBERT A. VAN NEST
Attorneys for Defendant
GOOGLE INC.
________________________
***1 “Goldberg Report” refers to the “Expert Report of Dr. Benjamin F. Goldberg Regarding
Validity of Patents-In-Suit” dated August 25, 2011, relevant excerpts of which are attached as
Ex. 33 to the Declaration of Daniel Purcell in Support of Google Inc.’s Motions in Limine
(“Purcell Decl.”) filed herewith.
5
496
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
_____________________
ORACLE AMERICA, INC.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.
___________________
No. C 10-03561 WHA
GOOGLE’S MOTION IN LIMINE NO. 5
TO EXCLUDE EVIDENCE OBTAINED
FROM MOTOROLA MOBILITY, INC.
Judge: Hon. William Alsup
Date Comp. Filed: October 27, 2010
Trial Date: October 31, 2011
MOTION AND RELIEF REQUESTED
Under Patent Local Rule 3-1 and Federal Rules of Civil Procedure 26 and 37, defendant
Google, Inc. (“Google”) hereby moves the Court for an order excluding in limine from all phases
of this trial the documents and testimony**1** of, and all evidence and argument relating to,
Motorola Mobility, Inc. (“Motorola Mobility”). Those documents and testimony, and related
argument, are expected to be presented as evidence of alleged infringement that was not
disclosed in Oracle’s Infringement Contentions (“ICs”), was not addressed in Oracle’s expert
reports regarding alleged infringement,**2** and was not timely requested in discovery by Oracle.
Oracle failed to timely discover the Motorola Mobility documents and testimony, has not asked
for leave of the Court to amend its ICs, and should not be allowed to submarine Google by
presenting this untimely evidence of Motorola Mobility products and activities.
DISCUSSION
Oracle’s original complaint accused Google of indirect infringement based on the
activities of “purchasers, licensees, and users of Android.” (Dkt. 1 at ¶¶ 18, 21, 24, 27, 30, 33,
36.) As Oracle’s counsel acknowledged before the Court on February 9, 2011, “Google
expressed a concern that [Oracle] had not articulated sufficiently the basis for [Oracle’s] belief
that the [] Android code that is on the Google public Android website is, in fact, the code that is
present on the handsets that would represent the direct infringement in cases of indirect
infringement.” Feb. 9, 2011 Hrg. Tr. (attached as Ex. 35 to the Declaration of Daniel Purcell in
Support of Google Inc.’s Motions in Limine (“Purcell Decl.”) filed herewith) at 4:16–21. Yet,
Oracle chose not to seek discovery from Motorola Mobility until April, which was more than
halfway through the eight month discovery period and after Oracle locked in its ICs. Further,
Oracle’s infringement expert, Dr. John Mitchell, did not consider or rely upon any of the
1
documents and testimony of Motorola Mobility at issue in this motion.
Oracle was required to disclose explicit factual bases for its infringement theories in its
ICs, which were first served in December of 2010. Moreover, Oracle represented to this Court
that it would rely on its ICs as they existed in early April. Purcell Decl. Ex. 36, (Apr. 6, 2011
Hrg. Tr.) at 10:17–11:4. Those ICs identified—but did not provide an infringement analysis
of—a single Motorola Mobility product, the Motorola Droid. Purcell Decl. Ex. 37, (Oracle’s
ICs) at § I.B. Only after the hearing where Oracle accepted the consequences of relying on its
existing contentions, and five months into an eight month discovery process, Oracle issued a
subpoena to Motorola Mobility requesting documents on fifteen additional Android products.
Purcell Decl. Ex. 38, (Notice of Subpoena). That subpoena for documents was followed months
later by a Rule 30(b)(6) subpoena regarding the same list of products. Purcell Decl. Ex. 39,
(Rule 30(b)(6) Subpoena of Motorola Mobility, Inc.).
As discussed in Google’s Motion to Strike Portions of the Mitchell Patent Report,
Oracle’s evidence of alleged direct infringement should be limited to the specific products
accused in the ICs, which identify a single Motorola product, the Droid. (Dkt. 410 at 5.)
Oracle’s plan has been to identify “representative examples” of allegedly infringing products
while seeking damages for the entire universe of Android devices. Purcell Decl. Ex. 37,
(Oracle’s ICs) at § I.B. While some courts have held that a party may rely on representative
products in ICs to seek discovery on similar products (see, e.g., Honeywell Int’l, Inc. v. Acer
America Corp., 655 F. Supp. 2d 650 (E.D. Tex. 2009)), the Patent Local Rules require specific
identification of allegedly infringing products. A party must show “good cause” to amend its
contentions to identify newly accused products. See generally LG Elecs., Inc. v. Q-Lity
Computer, Inc., 211 F.R.D. 360 (N.D. Cal., 2002); Atmel Corp. v. AuthenTec, Inc., No. 06-2138,
2008 U.S. Dist. LEXIS 10846 (N.D. Cal. Jan. 31, 2008). Here, fact discovery closed without
Oracle ever seeking leave to amend its contentions to add the additional fifteen Motorola
Mobility products, including the Atrix 4G, Cliq, Cliq 2, Droid 2, Droid Pro, Droid X, Bravo,
Flipside, Citrus, Defy, Charm, Backflip, Devour, Xoom, and i1.
As explained in Google’s recently filed motion to strike, Patent Local Rule 3-1 requires,
2
in relevant part, that infringement contentions provide:
(b) Separately for each asserted claim, each accused apparatus,
product, device, process, method, act, or other instrumentality
(“Accused Instrumentality”) of each opposing party of which the
party is aware. This identification shall be as specific as possible.
Each product, device, and apparatus shall be identified by name
or model number, if known. Each method or process shall be
identified by name, if known, or by any product, device, or
apparatus which, when used, allegedly results in the practice of the
claimed method or process;
. . .
(d) For each claim which is alleged to have been indirectly
infringed, an identification of any direct infringement and a
description of the acts of the alleged indirect infringer that
contribute to or are inducing that direct infringement. Insofar as
alleged direct infringement is based on joint acts of multiple
parties, the role of each such party in the direct infringement must
be described.
. . .
(Emphasis added.) According to these rules, products accused of direct or indirect infringement
must be explicitly identified in a plaintiff’s infringement contentions. Oracle’s generalized
assertions of infringement by “Google devices running Android” or “other mobile devices
running Android” are insufficient under the Patent Local Rules to extend Oracle’s infringement
allegations to cover unidentified products, as are attempts to suggest that the identified products
are merely “representative.” See Bender v. Advanced Micro Devices, Inc., No. 09-1149 MMC,
2010 U.S. Dist. LEXIS 11539 at *3 (N.D. Cal. February 1, 2010) (“even if [the plaintiff] can
establish that it is appropriate to use representative claim charts, he has not in all instances
adequately identified the accused products at issue. Pursuant to Rule 3-1(b), the patentee’s
identification of which accused products allegedly infringe cannot be so amorphous or imprecise
so as to force the opposing party to essentially ‘guess which versions of its products’ are
allegedly infringing. InterTrust Techs. Corp. v. Microsoft Corp., No. C 01-1640 SBA, 2003 U.S.
Dist. LEXIS 22736, at *6 (N.D. Cal. Nov. 26, 2003)”); Bender v. Maxim Integrated Products,
Inc., ,No. 09-01152 (SI), 2010 U.S. Dist. LEXIS 89957 at *9 (N.D. Cal. July 29, 2010)
(“plaintiff must identify each accused product and link it to a representative product [claim chart]
in order to provide [the defendant] with fair notice of the specific products which are accused in
this lawsuit.”).
3
Nearly six months ago, Oracle had identified fifteen specific publically available Android
products offered by Motorola Mobility, but chose not to amend its ICs to identify or analyze its
infringement contentions against those products. Oracle cannot now, on the eve of trial,
introduce evidence of alleged direct infringement by these products.
Nor should Oracle’s infringement expert, Dr. Mitchell, be allowed to present any
opinions on the documents and testimony of Motorola Mobility as that material was not
considered in his infringement reports. Purcell Decl. Ex. 40 (Second Supplemental List of
Materials Considered). Under Rule 26(a)(2)(B)(ii) and 26(e)(2), Dr. Mitchell was required to
identify all of “the facts or data considered . . . in forming [his opinions].” Rule 37(c)(1)
prevents Dr. Mitchell from opining on that material.
Accordingly, the Court should exclude the documents and testimony of, and all evidence
and argument relating to, Motorola Mobility including documents labeled MOTO-ORACLE-
0001 through MOTO-ORACLE-0088 and the Rule 30(b)(6) deposition testimony of Rafael
Camargo taken on September 8, 2011.
Dated: September 24, 2011
Respectfully submitted,
KEKER & VAN NEST LLP
By: s/ Robert A. Van Nest
ROBERT A. VAN NEST
Attorneys for Defendant
GOOGLE INC.
______________________
**1** The “documents and testimony” of Motorola Mobility consist of documents labeled MOTOORACLE-
0001 through MOTO-ORACLE-0088, which were produced pursuant to a Rule 45
subpoena, and deposition testimony Rafael Camargo taken on September 8, 2011 pursuant to a
Rule 30(b)(6) subpoena.
**2** While Motorola Mobility’s documents and testimony were not addressed in the Mitchell
Report, the Motorola Atrix product was identified in the Mitchell Report at paragraph 191 with
reference to an unrelated analysis by Dr. Mitchell. Paragraph 191 is addressed by Google’s
pending motion to strike on many of the same grounds presented here. (Dkt. 410 at 5.)
4
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Authored by: bugstomper on Monday, October 10 2011 @ 06:03 PM EDT |
Please summarize in the Title box error->correction or s/error/correction/ to
make it easy to scan to see what errors have already been mentioned.
[ Reply to This | # ]
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Authored by: bugstomper on Monday, October 10 2011 @ 06:06 PM EDT |
Pick your News here. Please put the title of the News Picks article you are
commenting on in the Title box and include the link to the article (preferably
as a clicky in HTML mode) for the convenience of the reader after the article
has scrolled off the News Picks sidebar.
[ Reply to This | # ]
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Authored by: bugstomper on Monday, October 10 2011 @ 06:07 PM EDT |
Please stay off topic in these threads. But do use HTML mode to make your
comments interestingly clickable.
[ Reply to This | # ]
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- How Google and Facebook might lose their edge by selling out their users - Authored by: SilverWave on Monday, October 10 2011 @ 07:03 PM EDT
- So, um, what's up with SCO? - Authored by: Anonymous on Monday, October 10 2011 @ 07:34 PM EDT
- A billion pixels for a billion stars - Authored by: SilverWave on Monday, October 10 2011 @ 10:25 PM EDT
- Delaware Registered Companies - Authored by: Anonymous on Tuesday, October 11 2011 @ 09:05 AM EDT
- No Photos Please, We're British - Authored by: Anonymous on Tuesday, October 11 2011 @ 03:35 PM EDT
- More on the German Backdoor - Authored by: Anonymous on Tuesday, October 11 2011 @ 04:04 PM EDT
- Black Tuesday at Apple - Authored by: Anonymous on Tuesday, October 11 2011 @ 04:47 PM EDT
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Authored by: bugstomper on Monday, October 10 2011 @ 06:12 PM EDT |
If you have transcribed any of the Comes transcripts, please post them here
using Plain Text mode to post the HTML markup so that it is easy for PJ to copy
and paste.
Use the Comes Tracking Page to find documents that are
still in need of transcription and to register your intention so as to avoid
duplication of effort.
[ Reply to This | # ]
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Authored by: Anonymous on Monday, October 10 2011 @ 09:33 PM EDT |
What license did they get and what did they use it for?
("Danger" is mentioned multiple times in Oracle's witness
list, which has not yet been OCR-ed).
[ Reply to This | # ]
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Authored by: Ian Al on Tuesday, October 11 2011 @ 04:11 AM EDT |
The Oracle lawyers confidently state that all these patented inventions are
definitely used in Java, absolutely, no doubt about it at all, they are all
definitely in there, somewhere.
However, the skilled Java engineers
have no idea what these patented inventions do, let alone where they are used in
Java or Android. So, 'let's just poke a stick in the wheels of Android and see
how it then shapes up to Java'. It's a bit like making American Apple Pie with
avocados.
The
United States Patent and Trademark Office reminds us what the skills of
these folk are."A person of ordinary skill in the art is also a
person of ordinary creativity, not an automaton." KSR International Co. v.
Teleflex Inc., "[I]n many cases a person of ordinary skill will be able to fit
the teachings of multiple patents together like pieces of a puzzle." Office
personnel may also take into account "the inferences and creative steps that a
person of ordinary skill in the art would employ."
So, let's see
how the top Oracle USA Java engineers went about using these ordinary skills to
test Android against Java (There's their first major
foul-up).
Robert Vandette submitted a report on the ‘104 and ‘205
patents and admitted that he “relied on Dr. Mitchell to interpret [the
patent].”...When asked if he had the “knowledge necessary to determine what
functionality should be disabled,” he responded that he was “not a patent
attorney” and did not “know exactly which claim in the [‘104] patent corresponds
to [the] functionality” he disabled.
Noel Poore
submitted a report regarding the ‘520 and ‘702 patents and testified that he
“looked through the patent[s]” but had no idea which claims were asserted, and
was “not necessarily familiar enough with the detail of th[e] patent[s]” to know
how they related to the accused functionality.
Erez
Landau revealed that he reviewed only the Abstract of the ‘720 patent and “part
of the claims.”
in a report Oracle submitted on
September 12, 2011 (after the close of expert discovery), a fourth employee
named Seeon Birger claims that he was the one who downloaded the Android code,
modified it, compiled it, and provided it to the other Oracle employees. Landau
admitted as much during his deposition, while Vandette and Poore appear to have
concealed the fact that someone else performed the work disclosed in their
reports.
(“Q. So you did all the work in this report by yourself,
correct?
A. That’s correct”).
So, the testers used their
exceptional skills in this particular art of running software on virtual
processors (because they helped invent Java) to do some representative
comparative tests on Android.
For example, Vandette disabled the
JIT compiler for his ‘104 patent tests, even though the JIT compiler was never
accused in connection with that patent. With respect to the ‘205 patent, which
is asserted against a single feature of the JIT compiler, Vandette again
disabled the whole JIT compiler, even though the ‘205 patent itself recognizes
the existence of JIT compilers in the prior art. For tests relating to the ‘702
patent, Poore modified Android code so existing duplicates would remain in the
Android “.dex” files—but his report openly admits that the modified code created
new duplicates that did not previously exist. Landau admitted that when
disabling the copy-on-write functionality allegedly claimed by the ‘720 patent,
his test program loaded 1,264 files into memory, but readily agreed that “if
copy-on-write is disabled, it would just be a waste of memory to load these
[files] …” and it would make no sense to have Android run that
way.
Java and Dalvik are all about running the apps on mobile
devices. That's what this dispute is all about; running apps on Android devices
using Java technology. How did the persons skilled in the art go about showing
the vital importance of the Java inventions to the running of the accused
devices?
Vandette and Poore did not test the performance of any
actual Android applications;
Vandette and Poore did not test the
performance of any actual Android devices;
I usually end my
comments will a half-ways witty aside. I break with tradition to forecast that
all the resulting comments will include the terms of art 'software patents' and
'patent lawyers'.--- Regards
Ian Al
Software Patent: code for Profit! [ Reply to This | # ]
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- Astute observations, Mr. Ian Al - n/t - Authored by: Anonymous on Tuesday, October 11 2011 @ 06:57 AM EDT
- I'm sorry, Prof., could you explain what these inventions are, again? - Authored by: darrellb on Tuesday, October 11 2011 @ 07:11 AM EDT
- I'm sorry, Prof., could you explain what these inventions are, again? - Authored by: Anonymous on Tuesday, October 11 2011 @ 08:25 AM EDT
- How about distributing a modified version of Android? - Authored by: Anonymous on Tuesday, October 11 2011 @ 10:28 AM EDT
- Looks like lots of companies own a footgun - Authored by: Kilz on Tuesday, October 11 2011 @ 10:41 AM EDT
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Authored by: FreeChief on Tuesday, October 11 2011 @ 05:44 PM EDT |
I tried to read (extracts from) one of the patents posted here on Groklaw. It
was such deep and thick lawyer's gobbledygook that I couldn't really figure out
what it was talking about. It did seem to be describing copy-on-write
implementation of large value assignment. But I thought I must be reading it
wrong, because that idea is so old!
I know, from working on the
project, and from talking to the people who wrote the code, that the Accent
operating system (later called Mach), developed at Carnegie-Mellon University
around 1980, used the copy-on-write technique to implement process forking.
(See
Wikepedia
for
more information.)
There are probably some old papers that describe the
technique, although it wasn't really considered at the time to be worth
publishing, since it had already been described in papers, for example, by Peter
Hibbard, who used it to implement array assignment in an Algol-68
compiler.
I was amazed to see the names of Guy Steele, Josh Bloch, and Jim
Gosling on the list of witnesses for Oracle. They were all there (at CMU) at
the time (1980). All the cross examiner needs to do is ask them when they first
heard of copy-on-write. The answer will pre-date the first Java compiler by at
least a decade.
— Programmer in Chief
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Authored by: Anonymous on Wednesday, October 12 2011 @ 05:25 PM EDT |
Pardon me. Maybe I'm being a bit nasty. But doesn't it seem like we are seeing
the BSF shuffle once again? It doesn't matter whether it is the truth, or a lie,
use it as long as it gets you a win.
My opinion of Boies, Schiller, Flexner as a legal firm is that they could give
Dewey, Screwem, and Howe a run for their money.
Wayne
http://madhatter.ca
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