First up is a Google précis seeking to suppress the now famous Lindholm email. Not surprisingly, Oracle opposed this. And Judge Alsup's decision? He issued an order (271) [PDF] denying Google's request but also denying Oracle's request to compel Google to produce the document. Basically, Judge Alsup says it is up to the magistrate to settle this dispute. Let's call it a draw.

Second, the parties, in an unusual demonstration of cooperation, actually reached agreement on candidates to serve as the FRE (Federal Rules of Evidence) 706 expert on the issue of damages. The parties agreed on two candidates and then each party submitted one additional candidate. Judge Alsup has set (273) [PDF] a conference for August 19 to meet with the candidates. Let's call this a draw as well.

Third (that cooperation didn't last long) is a joint letter (280) [PDF] to the magistrate concerning Oracle's production of witnesses for deposition. The crux of this dispute from Google's perspective goes to Oracle's delay in providing requested documents in discovery that earlier deponents should have testified to. Google is now requesting another shot at those deponents. In addition, Google is asking that Oracle produce a witness from the former Sun personnel to testify on the Oracle acquisition of Sun from Sun's perspective. On the other side of the ledger, Oracle believes it has already provided adequate witnesses and sufficient time for them to be questioned - move on. The magistrate has not ruled on this dispute. Let's call this a draw for now.

Finally, there is the issue of Google being allowed to supplement its invalidity contentions, and on this issue Google largely struck out. In his order (281) [PDF] Judge Alsup denied Google's request largely on the grounds of fairness. As this case progressed Oracle initially advanced 132 claims of infringement, and Google asserted its invalidity contentions on these claims (over 300 invalidity theories). By order Oracle was then required to first narrow its asserted claims to 50, which Oracle did, and Google in turn was required to limit its invalidity defense to no more than six per claim.

But then Google asked to supplement its invalidity contentions. Had Oracle known of these supplement invalidity contentions it might well have chosen a different 50 claims. To allow Google to supplement at this stage would be unfair to Oracle. A party is only permitted to amend its invalidity contentions on a showing of good cause, and in Judge Alsup's view Google failed to state good cause except in one instance.

The one instance where the court found good cause was in Google's request to add three new claims charts with respect to U.S. Patent No. 6,910,205. Here Google had previously provided the prior art and was only seeking to add the claims charts to demonstrate its applicability. Since Oracle acknowledged the prior art had been previously disclosed, the court found no ill effect in allowing these explanatory claim charts. Score this one for Oracle.

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

Docket

08/04/2011 - 271 - ORDER DENYING PRECIS REQUESTS re 269 Letter filed by Oracle America, Inc., 265 Letter filed by Google Inc.. Signed by Judge Alsup on August 4, 2011. (whalc1, COURT STAFF) (Filed on 8/4/2011) (Entered: 08/04/2011)

08/04/2011 - 272 - ORDER REGARDING COUNSEL FOR RULE 706 EXPERT. Signed by Judge Alsup on August 4, 2011. (whalc1, COURT STAFF) (Filed on 8/4/2011) (Entered: 08/04/2011)

08/05/2011 - 273 - ORDER SETTING CONFERENCE WITH DAMAGES EXPERT CANDIDATES. Signed by Judge Alsup on August 5, 2011. (whalc1, COURT STAFF) (Filed on 8/5/2011) (Entered: 08/05/2011)

08/08/2011 - 279 - ORDER VACATING AUGUST 18 HEARING re 214 Amended MOTION for Leave to File Supplement Invalidity Contentions filed by Google Inc.. Signed by Judge Alsup on August 8, 2011. (whalc1, COURT STAFF) (Filed on 8/8/2011) (Entered: 08/08/2011)

08/08/2011 - 280 - Letter from Beko Reblitz-Richardson and Scott T. Weingaertner re Kehring and Creven Redactions. (Sabnis, Cheryl) (Filed on 8/8/2011) (Entered: 08/08/2011)

08/08/2011 - 281 - ORDER PARTIALLY GRANTING AND PARTIALLY DENYING MOTION TO SUPPLEMENT INVALIDITY CONTENTIONS AND VACATING HEARING by Judge Alsup finding as moot 208 Motion for Leave to File; granting in part and denying in part 214 Motion for Leave to File (whalc1, COURT STAFF) (Filed on 8/8/2011) (Entered: 08/08/2011)

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

Documents

271

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

ORDER DENYING
PRÉCIS REQUESTS

On July 28, 2011, Google Inc. filed a précis requesting permission to file motions to seal and redact portions of the public record containing references to a Google document cited by Oracle America, Inc. at the July 21 hearing on Google’s Daubert motion (Dkt. No. 247). On August 1, 2011, the request was denied (Dkt. No. 255). Google now seeks leave to submit an in camera factual proffer supporting its denied request (Dkt. No. 265). This new request is also DENIED. Construed as support for Google’s July 28 request, it is untimely. Construed as a request for leave to file a motion for reconsideration of the August 1 order, it does not establish any of the grounds for reconsideration set forth in Civil Local Rule 7-9(b).

In opposing Google’s latest request, Oracle America, Inc. “respectfully requests that the Court issue an order compelling Google to produce the Lindholm document forthwith” (Dkt. No. 269 at 3). This request is also DENIED. Oracle does not explain why it “has twice asked Google to re-produce the Lindholm document” despite the fact that the document already was produced (ibid.). Moreover, all discovery disputes in this action have been referred to Magistrate Judge Ryu. A letter to the undersigned judge responding to a précis request is not the proper place to raise a discovery dispute.

IT IS SO ORDERED. Dated: August 4, 2011.

/s/William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

273

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

ORDER SETTING
CONFERENCE WITH
EXPERT CANDIDATES

The parties have submitted the names and resumes of four candidates to serve as court-appointed experts under FRE 706. Two candidates were jointly proposed to testify regarding damages. Additionally, each side proposed one candidate to testify regarding the basis of consumer demand for Android. A conference will be held with counsel and the two damages expert candidates at 8:00 A.M. ON AUGUST 19, 2011. The conference will provide an opportunity for the Court to vet the candidates and discuss the proposed scope of assignment appended hereto. The question of a second expert will be held in abeyance for the time being.

Each of the damages expert candidates should submit a letter by AUGUST 15, 2011, setting forth a fee proposal and stating whether, in his view, any opinions provided in previous reports or testimony would unduly restrict his freedom of movement in arriving at an opinion in this case. Additionally, the candidate who submitted a resume dated July 2007 should submit an updated resume. Counsel shall ensure that both damages expert candidates receive copies of this order and the proposed scope of assignment.

IT IS SO ORDERED.

Dated: August 5, 2011.

/s/William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

SCOPE OF ASSIGNMENT FOR RULE 706 EXPERT
[For Discussion Only]

Under Rule 706 of the Federal Rules of Evidence, the Court finds that the complexity and magnitude of damages at issue in this patent and copyright infringement action are so exceptional as to warrant the appointment of a court-appointed expert under Rule 706.

The Federal Rules of Evidence allow a court to appoint an expert either “on its own motion or on the motion of any party.” FRE 706(a). Rule 706(a) provides:

The court may appoint any expert witnesses agreed upon by the parties, and may appoint expert witnesses of its own selection. . . . A witness so appointed shall be informed of the witness’ duties by the court in writing, a copy of which shall be filed with the clerk, or at a conference in which the parties shall have opportunity to participate. A witness so appointed shall advise the parties of the witness’ findings, if any; the witness’ deposition may be taken by any party; and the witness may be called to testify by the court or any party. The witness shall be subject to cross-examination by each party, including a party calling the witness.

As recognized by the Federal Circuit in Monolithic Power Sys., Inc. v. O2 Micro Int’l Ltd., 558 F.3d 1341, 1348 (Fed. Cir. 2009), under Ninth Circuit law, “district courts enjoy wide latitude to make these appointments.” In Monolithic, the Federal Circuit held that the district court did not abuse its discretion in appointing a Rule 706 expert, because the court properly administered the standards set by the rule — such as allowing the parties to show cause why an expert should not be appointed, instructing the parties to nominate and agree upon candidates, providing the witness with detailed written instructions, and making the witness available for depositions and examination at trial — and the case presented “unusually complex” issues with “starkly conflicting expert testimony.” Ibid.

The damages arguments advanced to date in the instant action have been complex and contradictory. The underlying patent claims are numerous and highly technical, and their relationships with the parties’ products and revenues are not straightforward. Given this backdrop, the Court finds that this dispute warrants the appointment of a Rule 706 expert to help the jury evaluate contradictory damages evidence. Ibid.

2

A Rule 706 damages expert shall be appointed to testify at trial regarding the amount of damages that may be attributable to any proven infringement. A second Rule 706 expert may be appointed to testify at trial concerning whether or not the tried claims constitute the basis of demand for Android. In order to provide the foregoing testimony, the expert(s) shall do the following in a timely manner consistent with the case management schedule:

• Study and evaluate all relevant testimony and documents that have been produced in discovery.
• Study and evaluate the expert reports by both sides.
• Make requests to counsel for such additional materials as will be needed.
• Meet with the two sides’ experts to discuss the issues and their respective views in non-recorded sessions. Whether anything said by anyone in these sessions will be viable as evidence shall be discussed with counsel.
• Prepare a report on subjects concerning which the expert will testify at trial.
• Sit for a deposition.

3

280

KING & SPAULDING

August 5, 2011

The Honorable Donna M. Ryu
United States Magistrate Judge
Northern District of California
450 Golden Gate Avenue
San Francisco, CA 94102

Re: Oracle America, Inc. v. Google Inc., Civil Action No. 3:10-cv-03561-WHA (N.D. Cal.)

Dear Judge Ryu:

Google seeks a Court Order compelling Oracle to present a prepared witness for Google’s Third Notice of Rule 30(b)(6) Deposition of Plaintiff Oracle America, Inc., Topic 4. Oracle has declined Google’s request. The parties met and conferred by telephone on August 4, 2011, but were unable to resolve the issue. Google respectfully requests the Court’s assistance with this matter.

Google’s Statement

Google served its Corrected Third Notice of Rule 30(b)(6) Deposition of Plaintiff Oracle America, Inc. on July 6, 2011. Topic 4 required Oracle to present a witness on:

Oracle’s acquisition of Sun’s intellectual property rights concerning Java as part of the Acquisition of Sun (including but not limited to communications, valuations, negotiations, and reports to governmental bodies concerning the acquisition of these rights).

Oracle made two witnesses available to testify on the single topic: Mr. Douglas Kehring on July 28, and Mr. Edward Screven on July 29. In response to a request made by Google’s counsel Oracle disclosed the subtopics each witness would testify on the night before Mr. Kehring’s deposition. In an email, Mr. Beko Reblitz-Richardson, Oracle’s counsel, informed Google that Mr. Kehring would testify “regarding negotiations and communications between Oracle and Sun in connection with Oracle’s acquisition of Sun and financial analyses prepared by Oracle in connection with that acquisition,” and that Mr. Screven would “testify regarding reports to governmental bodies in connection with Oracle’s acquisition of Sun”. The lines drawn by Oracle were arbitrary given Mr. Kehring’s role as Senior Vice President, Corporate

The Hon. Donna M. Ryu
August 5, 2011
Page 2

Development & Strategic Planning and Mr. Screven’s as Chief Corporate Architect. Moreover, Oracle’s arbitrary delineations were applied inconsistently throughout both depositions, thereby preventing Google from obtaining key testimony on the noticed topic. For example, when discussing valuations with Mr. Kehring, Mr. Reblitz-Richardson continuously objected to the questions as being outside the scope of the topic and stated on the record that “Mr. Screven will testify to the value of the -- of Java and the intellectual property acquired.” Deposition of Douglas Kehring (Kehring Depo.), 66:12-15 (emphasis added). The very next day, when Mr. Screven was being questioned on valuations, Mr. Fred Norton, Oracle’s counsel, made the same scope objection and stated on the record that “[Mr. Screven] was not designated by counsel to testify on valuation of Java intellectual property acquired by Oracle” and concluded that “valuations are outside the scope.” Deposition of Edward Screven (Screven Depo.), 25:6-8; 26:9- 10. Such inconsistent applications of the arbitrary delineations prevented Google from obtaining complete testimony on a significant portion of the noticed topic - valuations - and the resulting exchanges between counsel over Oracle’s scope objections cut into Google’s limited deposition time with both witnesses.

Further, under Federal Rule of Civil Procedure 30(b)(6), Oracle was obligated to produce a witness that was knowledgeable to testify about the designated topic. In spite of Rule 30(b)(6)’s mandate and notwithstanding the fact that Oracle America is essentially what was formerly Sun Microsystems, Oracle failed to produce a witness that was able to testify about the acquisition from Sun’s perspective. See Kehring Depo., 9:1-10:8. “Oracle’s acquisition of Sun” necessarily includes both perspectives, and consequently, Oracle was required to produce a knowledgeable witness to testify on both perspectives. Oracle’s argument that Google’s position is untimely rings hollow as well. As discussed above, despite the fact that Oracle designated two witnesses who never worked for Sun, Oracle did not disclose the subtopics of their testimony until the night before Mr. Kehring’s deposition. Under Rule 30(b)(6), those witnesses were obligated to educate themselves with the knowledge of the company. In this case, the company is the plaintiff in this case, Oracle America, which is the successor to Sun Microsystems. Oracle’s position that their status as legacy Oracle employees means that they did not need to equip themselves with knowledge from the plaintiff in this case cannot be sustained. Accordingly, Google could not have been aware that Oracle did not plan to prepare either of its witnesses on the acquisition from Sun’s perspective until then, and indeed, was not aware of Oracle’s position until Mr. Kehring’s deposition.

In addition, at least Mr. Kehring referred numerous questions, including basic and fundamental questions such as the basis for Oracle’s offer, to other individuals. [redacted] Accordingly, it is evident that neither Mr. Kehring nor Mr. Screven were prepared to testify about the issues

The Hon. Donna M. Ryu
August 5, 2011
Page 3

within the scope of the designated topic. Contrary to Oracle’s position, answering these sorts of questions would not require “omniscience” -- merely proper preparation. The entire purpose of Rule 30(b)(6) is to avoid just this sort of passing the buck to another company executive.

Finally, Oracle’s delayed document production and other document production deficiencies concerning key documents alone justify re-opening the deposition. For example, Google Exhibit 262 references an acquisition presentation from May 6, 2009 by Kaul, Gosling and Brewin that Google was not able to locate in Oracle’s document production. When made aware of this deficiency at Mr. Kehring’s deposition, Mr. Reblitz-Richardson represented that he did not know whether such a document exists. See id. at 152:14-21. In response to later correspondence asking Oracle to confirm whether the document exists and if not, the facts and circumstances surrounding why it no longer exists, Oracle ignored the question and stated that it was unaware of any responsive documents that have not been produced, but also claimed that it is still producing documents. Oracle’s document production deficiencies are not isolated. Indeed, Oracle produced Larry Ellison’s custodial documents on July 27, 2011 - months after they were originally requested, and on the evening prior to Mr. Kehring’s deposition. After inquiry from Google’s counsel, Oracle’s counsel stated that the documents “should not relate to any of the depositions tomorrow.” On information and belief, several of the documents involved email communications between Mr. Ellison and Messrs. Kehring and Screven relating to the acquisition of Sun, thus making them relevant to both topic 4 depositions. Such circumstances justify re-opening the topic 4 deposition.

For the foregoing reasons, Google respectfully requests that Your Honor compel Oracle to produce a prepared witness for the limited topics of Oracle’s valuations of Sun (and its intellectual property) and Oracle’s acquisition of Sun from Sun’s perspective.

Oracle’s Statement

Despite already deposing two of Oracle’s most senior executives for three and one half hours on its Rule 30(b)(6) Topic 4, Google now seeks to compel Oracle to provide another witness to testify for some unspecified additional time regarding two matters that Google claims were among the various sub-topics included in its Notice: (1) “Oracle’s valuations of Sun,” and (2) “Oracle’s acquisition of Sun from Sun’s perspective.” Google’s request should be denied. With respect to (2), supra, “Oracle’s acquisition of Sun from Sun’s perspective” was never even part of Topic 4. Google already questioned the two witnesses at length regarding valuations prepared in connection with the Sun acquisition. There is no basis for Google’s demand to expand the noticed Topic 4 to include another un-noticed topic or to permit additional questions on the noticed topic.

Oracle Provided, And Google Obtained, All Of The Testimony Google Is Entitled To Concerning “Oracle’s Valuations Of Sun.”

In response to Google’s Notice on Topic 4, Oracle identified and prepared Mr. Screven and Mr. Kehring, both senior Oracle executives with personal knowledge of Oracle’s acquisition

The Hon. Donna M. Ryu
August 5, 2011
Page 4

of Sun and the specific sub-topics covered by the notice, and who report directly to Oracle’s CEO (Mr. Screven) and Co-President and CFO (Mr. Kehring). Mr. Kehring is Senior Vice President, Corporate Development & Strategic Planning at Oracle, and he led the team at Oracle that prepared the financial analyses in connection with Oracle’s acquisition of Sun. Mr. Screven is the Chief Corporate Architect at Oracle, and he was also personally involved with Oracle’s acquisition of Sun.

The afternoon before the first deposition, Google’s counsel emailed to ask how the various sub-topics in Google’s notice would be divided. Oracle’s counsel responded that same evening, stating that,

“Mr. Screven will testify regarding reports to governmental bodies in connection with Oracle’s acquisition of Sun and the Java intellectual property acquired by Oracle. Mr. Kehring will testify regarding negotiations and communications between Oracle and Sun in connection with Oracle’s acquisition of Sun and financial analyses prepared by Oracle in connection with that acquisition.”

Significantly, Google did not object to the dual designation of Messrs. Screven and Kehring on Topic 4 as clearly described by counsel for Oracle. Moreover, this division was not “arbitrary,” as Google claims; rather it corresponded to the witnesses’ primary areas of personal knowledge on the topics Google had noticed. Both witnesses were able to testify, and did testify, concerning valuations of Sun and its intellectual property in connection with the acquisition. Consistent with his role and background in finance, Mr. Kehring addressed financial analyses, as disclosed in the email; consistent with his technical background and role in the acquisition, Mr. Screven addressed the value, in strategic and technical terms, of the Java intellectual property acquired by Oracle, again as disclosed in the email. Mr. Screven and Mr. Kehring both supplemented their personal knowledge of those topics by meeting with counsel and reviewing documents; Mr. Kehring also spoke with Safra Catz, one of Oracle’s co-presidents, and Cory West, Senior Vice President Corporate Controller. (Kehring Tr. at 7:24-8:25, 10:22-25; Screven Tr. at 6-11.)

Over two days, Google questioned Mr. Kehring for 2 hours and 55 minutes, and Mr. Screven for 35 minutes--the full 3.5 hours afforded by Judge Alsup’s order. (Docket No. 26 a p. 7.) The witnesses’ testimony covered all of the sub-topics in Google’s 30(b)(6) notice. Although Google argues that Mr. Kehring and Mr. Screven were not prepared to testify about “valuations of Sun,” both did so.

Mr. Kehring described in detail [redacted]

The Hon. Donna M. Ryu
August 5, 2011
Page 5

[redacted] Google’s request for additional time cannot be reconciled with its extensive questioning of Mr. Kehring on this matter.

Despite having questioned Mr. Kehring on financial valuations and models for nearly three hours, the next day Google’s counsel sought to question Mr. Screven as well about accounting analyses prepared by a third party. As Mr. Screven was not designated to testify about such financial analyses – Mr. Kehring was, and in fact did – Oracle properly objected that the questions exceeded the scope, but still allowed Mr. Screven to answer an entire series of questions on that issue. (Screven Tr. at 10:1-13:7.)

In short, Oracle provided witnesses who were prepared to testify, and did testify, on the topics in Google’s notice, including “Oracle’s valuations of Sun,” for the full 3.5 hours that Google is allowed. No further testimony is warranted.

Mr. Kehring and Mr. Screven Were Prepared Well Beyond The Standard That Google Has Applied To Its Own Witnesses.

In preparing and offering Mr. Kehring and Mr. Screven to testify on this topic, Oracle satisfied its obligations under Rule 30(b)(6). A 30(b)(6) witness is not charged with omniscience, and the fact that Mr. Kehring was unable to answer a few questions in no way suggests that he himself was not adequately prepared. See, e.g., Google Inc. v. American Blind & Wallpaper Factory, Inc., No. C 03-5340 JF (RS), 2006 WL 2318803, at * (N.D. Cal. Aug. 10, 2006) (denying motion to compel Google to produce a witness for further deposition under Rule 30(b)(6) on the grounds that Google’s witness was unprepared; “deponents under Rule 30(b)(6) must be prepared and knowledgeable, but they need not be subjected to a ‘memory contest.’”).

The Hon. Donna M. Ryu
August 5, 2011
Page 6

In any event, Mr. Kehring and Mr. Screven were not only prepared in compliance with Rule 30(b)(6), they were prepared far better than Google’s own corporate representatives. Mr. Rubin (a Google 30(b)(6) witness) testified [redacted] and reviewed no documents that might have refreshed his recollection and did not speak with any other Google employees as part of his preparations. Mr. Agarwal (another Google 30(b)(6) witness) similarly testified that he did not review any documents in preparation for his deposition other than the notice and one news article, and he also did not speak with any other Google employees. This has been a consistent pattern with Google’s 30(b)(6) witnesses, and Google has no basis to complain regarding Oracle’s efforts to prepare Mr. Kehring and Mr. Screven.

Topic 4 Does Not Seek Testimony Concerning “Oracle’s Acquisition Of Sun From Sun’s Perspective” And Google Cannot Unilaterally Amend the Notice After The Fact.

Topic 4 does not encompass Oracle’s acquisition of Sun “from Sun’s perspective,” and there is no basis for Google’s demand that Oracle provide a witness to answer questions on that topic. Topic 4 relates to Oracle’s acquisition of Sun, and there is no mention anywhere in the topic of “Sun’s perspective” in connection with that acquisition. Oracle reasonably read the topic as requiring it to produce one or more witnesses to testify regarding Oracle’s acquisition of Sun, and Oracle had no obligation to identify one or more witnesses that would testify regarding both Oracle’s and Sun’s perspectives. It would be odd, to say the least, to have a witness testify first as Oracle’s corporate representative concerning “Oracle’s acquisition of Sun’s intellectual property rights concerning Java as part of the Acquisition of Sun (including but not limited to communications, valuations, negotiations, and reports to governmental bodies concerning the acquisition of these rights)” and then have that witness testify – again as Oracle’s corporate representative – about Sun’s perspective on each of those various topics.¹

Google’s broad reading of Topic 4 to include both Oracle’s perspective and Sun’s perspective is not just contrary to its words. If that were what Google meant, the request would be compound and improper, and objectionable for that reason as well. There were two parties involved with the acquisition: Oracle and Sun. If Google wanted a witness to testify to Sun’s perspective, then it should have included another topic on that issue.

___________________
¹ Google’s Topic 4 actually uses a term that Google itself defined, “Acquisition of Sun.” Google carefully defined that term to mean “the Acquisition of Sun Microsystems, Inc., described by Oracle Corporation in its January 28, 2010 Form 8-K filing with the United States Securities and Exchange Commission as: ‘On January 26, 2010, pursuant to an Agreement and Plan of Merger dated as of April 19, 2009 (the “Merger Agreement”) by and among Oracle Corporation, a Delaware corporation (“Oracle”), Sun Microsystems, Inc., a Delaware corporation (“Sun”), and Soda Acquisition Corporation, a Delaware corporation and whollyowned subsidiary of Oracle (“Merger Subsidiary”), Merger Subsidiary was merged with and into Sun, with Sun surviving the Merger as a wholly-owned subsidiary of Oracle (the “Merger”).’ Nowhere in that lengthy definition did Google suggest that the term would also mean “from Sun’s perspective.”

The Hon. Donna M. Ryu
August 5, 2011
Page 7

In any case, Google’s demand is untimely. On July 15, Oracle’s counsel identified Mr. Screven and Mr. Kehring as the witnesses who would testify on Topic 4. Neither ever worked for Sun, as Google well knew. Instead of raising this issue then, Google’s counsel waited until July 28, the day of Mr. Kehring’s deposition, to complain that neither one would testify to “Sun’s perspective.” Google’s counsel then ignored Oracle’s request to tell us that day whether they in fact intended to raise this contention, and only did so yesterday, on August 4.

Oracle’s Production Of Documents Provides No Basis To Extend the Deposition.

Google’s complaints regarding Oracle’s document production are also unsupported. As of the date of the depositions, Oracle had already produced millions of documents to Google. Google on one other occasion (not in connection with these depositions) suggested that Oracle failed to produce certain documents, at which point Oracle’s counsel searched for and identified the relevant documents in the productions already made to Google. This suggests that Google’s lack of documents was due to its own inadequate searching, not any lack of production by Oracle. Oracle has conducted a diligent search for all documents responsive to Google’s requests pursuant to its responses, and has produced such documents. Google’s motion asserts “on information and belief” that one or more documents were produced after these depositions, but Google does not actually identify any document. When asked yesterday to identify any such documents that Google believes justify further questioning, Google failed to identify a single document. Oracle also offered to search for specific documents, but given Google’s previous misstatements regarding Oracle’s document production, Oracle requested that Google first explain what searches it had already performed. Google has not responded to that request either. Google just wants to re-open the deposition without any basis to do so.²

* * *

For these reasons, Oracle opposes Google’s request to extend Topic 4 to include another topic altogether, and to modify Judge Alsup’s rule to permit questioning beyond the three and a half hours provided for 30(b)(6) depositions.

________________
² Google is continuing to produce hundreds of thousands of additional documents, including more than 1,000 documents produced from Mr. Rubin’s files just one week ago and documents from the files of other Google witnesses who have been identified by Google as 30(b)(6) witnesses. To the extent Google identifies any documents produced after the deposition of Mr. Kehring or Mr. Screven that it believes were relevant, and the Court is inclined to re-open one or more of those depositions to permit additional questioning because of the late production of documents, Oracle would ask that the Court also permit Oracle to re-open the depositions of Google’s 30(b)(6) witnesses to question them about relevant documents produced after their depositions.

The Hon. Donna M. Ryu
August 5, 2011
Page 8

Respectfully submitted,

BOIES, SCHILLER & FLEXNER LLP
/s/ Beko Reblitz-Richardson
Beko Reblitz-Richardson
Counsel for Plaintiff Oracle America, Inc.

KING & SPALDING LLP
/s/ Scott T. Weingaertner
Scott T. Weingaertner
Counsel for Defendant Google Inc.

I hereby certify that Beko Reblitz-Richardson and Scott T. Weingaertner concur in the e-filing of this document.
s/s Cheryl A. Sabnis

281

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

ORDER PARTIALLY
GRANTING AND
PARTIALLY DENYING
MOTION TO SUPPLEMENT
INVALIDITY CONTENTIONS
AND VACATING HEARING

INTRODUCTION

In this patent and copyright infringement action involving features of Java and Android, defendant moves for leave to supplement its invalidity contentions. For the following reasons, the motion is largely DENIED.

STATEMENT

Oracle America, Inc. filed this action in August 2010, accusing Google Inc. of infringing 132 claims of seven patents, as well as various copyrights. Pursuant to Patent Local Rule 3-3, defendant Google served its patent invalidity contentions in January 2011. Google’s contentions included a variety of claim charts, which are required by the local rules for “each alleged item of prior art,” as well as a 22-page list of more than 500 additional references for which no claim charts were provided (Peters Decl. ¶ 1). Pat. Loc. R. 3-3(c). In February and March, Google filed reexamination requests with the United States Patent and Trademark Office concerning all seven patents at issue in this action (Dkt. No. 223 at 1).

The first step toward streamlining this gargantuan case for trial was jointly planned for early June (Dkt. Nos. 144, 147). On June 1, Oracle narrowed its patent case to fifty asserted patent claims, and two weeks later Google narrowed its invalidity defenses to six grounds per patent claim. Google now seeks leave to supplement its invalidity contentions with new defenses relating to the patent claims that remain in the action. The claims and technology at issue have been described in previous orders (Dkt. Nos. 137, 230). This order follows full briefing.

ANALYSIS

Amendment of invalidity contentions “may be made only by order of the Court upon a timely showing of good cause.” Pat. Loc. R. 3-6. With one exception, Google has not shown good cause for amending its invalidity contentions at this late date. Google asserts that the invalidity defenses it seeks to add “are among its strongest in the case” (Br. 1). Google, however, did not submit its proposed amendments or explain why its new invalidity theories are supposedly so strong. The parties did not brief the strength of Google’s new invalidity theories. It is therefore impossible to determine whether Google’s proposed supplements are meritorious or futile. Google argues that the strength of its new defenses is “demonstrated by the by the fact that Google elected them on June 15” (Reply Br. 8). This reasoning is circular. The June 15 deadline required Google to narrow its invalidity case to six grounds for each of the fifty patent claims chosen by Oracle — a total of three hundred invalidity theories. It is possible that Google simply did not have that many good invalidity theories and is now trying to fill in with whatever it can belatedly cobble together. Google has not carried its burden of showing otherwise.

Moreover, for purposes of Rule 3-6, “‘good cause’ requires a showing of diligence,” and “[t]he burden is on the movant to establish diligence rather than on the opposing party to establish a lack of diligence.” O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006) (discussing the validity and meaning of Patent Local Rule 3-6 of the Northern District of California). Google has not carried its burden of establishing diligence as to the vast majority of its proposed amendments. With limited exceptions, fact discovery has closed, and expert discovery is underway. The claims and defenses at issue have been significantly narrowed in reliance on the parties’ infringement and invalidity contentions. The final pretrial conference

2

and jury trial are only two months away. This action is well advanced, and Google now seeks leave to bring an entire fleet of new invalidity defenses into the fray. Good cause has not been shown for allowing such a dramatic maneuver at this late date. Only one category of amendments will be allowed.

1. GOOGLE’S LACK OF DILIGENCE.

Google waited several months after discovering most of its new defenses before it sought permission to move for leave to supplement its invalidity contentions. After permission to file a motion was granted in late June, Google waited another two and a half weeks to actually file its motion, and then filed a superceding amended version of the motion the following week. This delay suggests a lack of diligence. See O2 Micro, 467 F.3d at 1367 (upholding a district court’s finding of a lack of diligence where movant “waited almost three months . . . to serve its proposed amended contentions and two more weeks to formally move to amend”).

Google argues that it exercised “overall diligence” in light of the circumstances of this sprawling action (Reply Br. 4–7). Google’s delay in bringing the instant motion supposedly was motivated by a desire to conserve judicial and party resources (Br. 2):

Had Google filed this motion before Oracle narrowed its case and included all of the potential changes to its invalidity contentions, the resulting motion would have been several times larger than this one, and the bulk of it would have been mooted almost immediately by the parties’ narrowing decisions. The burden on the parties and the Court would have been even more severe had Google filed successive motions for each set of discoveries over the course of the spring and summer.

This argument is premised on the admission that “[b]oth parties have known since May that the scope of this case would soon be reduced by more than half” with the narrowing of claims and defenses planned for June (ibid.). True, Oracle asserted a large number of patent claims in its complaint, and narrowing was certainly in order. But this aspect of the action has no bearing on delay by Google before the narrowing plan went into effect, and it certainly does not justify subsequent delay.

Oracle’s selection of fifty out of its 132 asserted patent claims necessarily relied on the relative strength of the parties’ infringement and invalidity contentions as to each claim (Opp. 2). That some of the new theories were floated by Oracle before the June 1 narrowing deadline does

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not eliminate all prejudice, contrary to Google (Reply Br. 1). Uncertainty remained as to whether Google would seek or receive permission to add any of those additional defenses to its official invalidity case. Indeed, by failing to move for leave to amend its contentions promptly after disclosing additional defenses, Google signaled an intention not to bring those defenses into this action. Google’s decision to wait until after Oracle was locked into its patent-claim selections to fortify its invalidity case with “defenses that it has now determined are among its strongest” amounts to sandbagging (Br. 1).

Google’s other excuses for its delay likewise fail. The time and effort demanded by discovery and other “competing case demands” does not justify neglecting to seek leave to amend invalidity contentions (Reply Br. 7). The failure of the parties to reach agreement regarding a stipulated supplementation was foreseeable. If Google was serious about amending its invalidity contentions, it should not have gambled for months on the possibility that a stipulation might be reached (id. at 6–7). Google generally did not exercise diligence in seeking to amend its invalidity contentions and has not shown good cause for allowing most of its proposed amendments at this eleventh hour. Each category of proposed amendments will be addressed in turn.

2. OBVIOUSNESS THEORIES DIRECTED AT ’104 PATENT BASED ON RAU REFERENCE (CHARTS A-9 AND A-12).

Google seeks to add claim charts A-9 and A-12 to its invalidity contentions directed at United States patent number RE38,104. These two new charts purport to disclose invalidating obviousness combinations based on an item of prior art Google calls “the Rau reference” (Br. 5–6). The Rau reference was included in Google’s January invalidity contentions but only in the list of additional references for which no claim charts were provided. The list did not specify the patents or claims to which Google contended the Rau reference applied (Peters Exh. 5 at 43). Google provided supplemental charts A-9 and A-12 “or their equivalent” to Oracle “on or before May 16, 2011.” Google explains that these two new defenses “respond to the Court’s Claim Construction Order, which rejected Google’s proposed claim constructions for both ‘intermediate form (object) code’ and ‘resolve’” (Br. 5–6).

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A claim construction different from that proposed by the moving party is a circumstance “that may, absent undue prejudice to the non-moving party, support a finding of good cause.” Pat. Loc. R. 3-6 (emphasis added). Here, however, the claim construction order issued on May 9, 2011. Google served claim charts applying the Rau reference to the ’104 patent shortly thereafter, but those charts were not part of Google’s invalidity contentions. Contentions may be amended “only by order of the Court upon a timely showing of good cause.” Pat. Loc. R. 3-6 (emphasis added). Google did not seek leave to move to formally amend its invalidity contentions until a month after claim constructions were set, which was well after Oracle had narrowed its infringement case. Google did not file the instant motion until a month later still (Dkt. Nos. 181, 214). Google failed to exercise diligence in seeking to supplement its invalidity contentions with charts A-9 and A-12 following claim construction. Google’s untimely motion to do so now is DENIED. 3. OBVIOUSNESS THEORIES DIRECTED AT ’104 PATENT BASED ON MULTICS OS REFERENCES (CHART A-10).

Google also seeks to reinforce its defense against the ’104 patent by adding chart A-10, which purports to disclose an invalidating obviousness combination based on four prior art references discovered after Google served its invalidity contentions. Google served a claim chart based on two of the new references on May 16, and one of Google’s experts discovered the other two sometime thereafter (Br. 6–7).

The “recent discovery of material, prior art despite earlier diligent search” is another circumstance “that may, absent undue prejudice to the non-moving party, support a finding of good cause.” Pat. Loc. R. 3-6 (emphasis added). Again, however, Google delayed in seeking permission to supplement its invalidity contentions. Two of the references in chart A-10 were known to Google at least three months ago, and Google does not say when it discovered the other two. Google falls well short of showing that the four references in chart A-10 were discovered recently and that Google exercised diligence in seeking to add them to its invalidity contentions. Google’s motion to supplement its invalidity contentions with chart A-10 is DENIED.

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4. ANTICIPATION THEORIES DIRECTED AT ’702 PATENT BASED ON JAVAOS REFERENCE (NOT CHARTED). With respect to United States patent number 5,966,702, Google requests carte blanche to supplement its invalidity contentions with anticipation theories based on Oracle’s JavaOS product “after Oracle has produced all relevant documents and source code” (Br. 7). Google has not prepared any claim charts analyzing JavaOS in relation to the asserted patent claims. Google asserts that its delay in doing so was caused by “Oracle’s own discovery abuse”; Google claims that “Oracle did not produce any JavaOS source code until May 2011, and has still not produced the JavaOS source code that predates the ‘702 patent [sic] by a year” (ibid.). Oracle disputes this statement, claiming that the JavaOS source code it produced in May included code that predated the ’702 patent by more than a year (Opp. 6). In reply, Google states that it “gained additional evidence regarding the source code for that product just last Friday in a 30(b)(6) deposition of Oracle” (Reply Br. 7). Google, however, has not pointed to any indication that Oracle actually stonewalled against discovery regarding JavaOS.

At all events, the time for fact discovery has passed. Google had ample opportunity to request JavaOS source code from Oracle and to request discovery relief from the Court if Oracle was not forthcoming in its source code production. The parties raised a swarm of discovery disputes, but no source code production grievance was among them. Having failed to press for this discovery, Google may not now decry Oracle’s supposed “untimely production of this highly relevant prior art evidence” (Br. 7). Google’s motion to supplement its invalidity contentions with theories based on JavaOS is DENIED.

5. THEORIES BASED ON REEXAMINATION SUBMISSIONS (EIGHT CHARTS DIRECTED AT FOUR PATENTS).

Google also seeks to supplement its invalidity contentions with eight claim charts directed at four patents, all of which are based on prior art references that Google submitted to the United States Patent and Trademark Office when initiating the reexamination proceedings in February and March 2011. Specifically, Google seeks to add charts A-2 and A-3 directed at the ’104 patent; charts C-8, C-9, and C-11 directed at United States patent number 7,426,720; charts D-5

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and D-6 directed at United States patent number 6,061,520; and chart F-5 directed at United States patent number 6,125,447.

Google argues that Oracle “has been on notice of these invalidity defenses since at least early March” when Google submitted them to the USPTO and thereby disclosed them to Oracle (Br. 8). Not so. By failing to move for leave to amend its invalidity contentions promptly after initiating the reexaminations, Google telegraphed an intention not to assert those prior art references in this action. Google did not exercise diligence in seeking to supplement its invalidity contentions with charts A-2, A-3, C-8, C-9, C-11, D-5, D-6, and F-5 following its initiation of the reexamination proceedings. Google’s untimely motion to do so now is DENIED.

6. PRINTED MATTER DEFENSE.

Google “seeks to provide further elaboration of its invalidity defense based on the fact that the identified claims are non-statutory subject matter.” Google explains that it “originally identified that defense as one based on § 101,” but “has since learned that courts conduct what is in effect the same analysis under both § 101 and § 102.” Google did not submit a proposed “elaboration” or describe how its new understanding of the law would bear on amendment of its invalidity contentions. Google simply characterizes its proposed amendment as “essentially a question of law” and admits uncertainty as to whether such an amendment “is even necessary” (Br. 8–9). Google has not provided enough information about this proposed amendment to show what is being requested, much less to show good cause for granting the request. Google also has not shown why diligent legal research would not have revealed this issue sooner. Google’s motion for leave “to provide further elaboration” of its Section 101 invalidity contentions is DENIED. This is without prejudice to its argument (not yet ruled on) that such a point need not even be in a cart under the local rule.

7. OBVIOUSNESS THEORIES DIRECTED AT ’205 PATENT BASED ON PREVIOUS ANTICIPATION CONTENTIONS (CHARTS E-9, E-10, AND E-11).

Google seeks to add claim charts E-9, E-10, and E-11 to its invalidity contentions directed at United States patent number 6,910,205. These three charts purport to disclose invalidating obviousness combinations based on prior art references Google identified and charted individually in its January 2011 invalidity contentions as anticipating the ’205 patent. Google

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explains that the new charts do not contain new material but rather reorganize components of claim charts that were disclosed as part of its January 2011 contentions (Br. 7–8). Oracle acknowledges that all four of the prior art references contained in these new charts were asserted and charted as anticipatory in Google’s January 2011 contentions (Opp. 7).

Each of the prior art references in charts E-9, E-10, and E-11 was charted in Google’s January 2011 contentions as required by Patent Local Rule 3-3(c). In this instance only, the Court will allow expansion to use the same references (and those references only) to prove up obviousness of the same claims. Google’s motion to supplement its invalidity contentions with charts E-9, E-10, and E-11 is GRANTED.

CONCLUSION

For the foregoing reasons, the motion by Google Inc. for leave to supplement its invalidity contentions is GRANTED IN PART AND DENIED IN PART. As to charts E-9, E-10, and E-11, the motion is GRANTED. As to all other proposed amendments, the motion is DENIED.

IT IS SO ORDERED.

Dated: August 8, 2011.

/s/ William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

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