Lindholm Emails

On the Lindholm front Google filed a motion 441 [PDF] for relief from Magistrate Judge Ryu's order denying privilege protection of the Lindholm emails. Google argues that the magistrate not only got the law wrong, but the magistrate ignored the unchallenged evidence provided by Google supporting its privilege claim and then compounded the mistake by speculating as to the true nature of the Lindholm email. In fact, according to Google, that speculation was the sole basis for denying the privilege.

Google accepts that the magistrate got a number of points right: that the privilege, if it exists, extends to the drafts of the email; that the declarations Google provided should be accepted as honest statements of the individuals; and that the potential relevance of the emails to Oracle's claims is of no significance under the law. However, Google then hits hard on the grounds that the magistrate then ignored the evidence Google provided and cited to wrong law in sustaining her decision. Google also takes a whack at Oracle for repeatedly disclosing the email and drafts in court in violation of the protective order despite the fact that all were listed as confidential and attorney's eyes only.

Finally, Google also submitted a request 449 [PDF] to Judge Alsup seeking permission to file a motion to preserve the emails as Attorney's Eyes Only, thus restoring them to the position they were in before Oracle disclosed them.

Of course, we still need to hear from Oracle on the subject.

Mitchell Patent Report

As we discussed a few days ago, Google has a pending motion to strike portions of the expert report submitted by Oracle from Dr. Mitchell regarding the patent infringement claims. Google's objections relate to the introduction of new bases for infringement raised for the first time by Dr. Mitchell and the addition of three new devices to the list of those allegedly infringing. Oracle filed its response, and now Google replies. 447 [PDF]

In its reply Google emphasizes the fact that Oracle does not dispute the fact that Dr. Mitchell added new source code files to his basis for the infringement assertions nor does Oracle dispute the fact that the new devices were added. With respect to the source code disclosures the question then becomes one of whether Google is disadvantaged because these disclosures were not raised at the proper time. That is essentially the same argument with respect to the identification of the new devices.

Revised Cockburn Damages Report

Dr. Cockburn was required to revise his damages report based on the earlier "Daubert" hearing. Google now finds the revised report to contain substantially the same flaws, including great leaps in estimates without support. As a consequence Google is seeking permission to file a new "Daubert" motion. 450 [PDF]

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Docket

439 – Filed and Effective: 09/16/2011
ORDER
Document Text: Letter from Michael A. Jacobs REQUEST FOR LEAVE TO FILE PORTIONS OF DEPOSITION TRANSCRIPT (unredacted pursuant to Order--Dkt. 438). (Swoopes, Roman) (Filed on 9/16/2011) (Entered: 09/16/2011)

440 – Filed and Effective: 09/19/2011
ORDER
Document Text: CLERK'S NOTICE Retrieval of Submitted Documents. In accordance with Civil L.R. 79-5(e), the submitting party is hereby notified to retrieve lodged documents within three days of this notice: Unredacted version of prcis requesting leave to file excerpts of the Astrachan deposition. (wsn, COURT STAFF) (Filed on 9/19/2011) (Entered: 09/19/2011)

441 – Filed and Effective: 09/19/2011
MOTION
Document Text: MOTION For Relief From Nondispositive Pretrial Order of Magistrate Judge filed by Google Inc.. Motion Hearing set for 10/13/2011 08:00 AM in Courtroom 9, 19th Floor, San Francisco before Hon. William Alsup. Responses due by 9/26/2011. Replies due by 9/29/2011. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit

442 – Filed and Effective: 09/19/2011
Proposed Order
Document Text: Proposed Order re 441 MOTION For Relief From Nondispositive Pretrial Order of Magistrate Judge by Google Inc.

443 – Filed and Effective: 09/19/2011
Declaration
Document Text: Declaration of Daniel Purcell in Support of 427 Administrative Motion to File Under Seal ORACLE AMERICA, INC.S ADMINISTRATIVE MOTION TO FILE UNDER SEAL PORTIONS OF ORACLES RESPONSE PRECIS filed by Google Inc.. (Related document(s) 427)

444 – Filed and Effective: 09/19/2011
Proposed Order
Document Text: Proposed Order re 443 Declaration in Support, of Oracle America, Inc.'s Administrative Motion to File Under Seal Portions of Oracle's Response Precis by Google Inc.

445 – Filed and Effective: 09/19/2011
Transcript
Document Text: Transcript of Proceedings held on 9-15-11, before Judge William Alsup. Court Reporter/Transcriber Katherine Wyatt, Telephone number 925-212-5224. Per General Order No. 59 and Judicial Conference policy, this transcript may be viewed only at the Clerks Office public terminal or may be purchased through the Court Reporter/Transcriber until the deadline for the Release of Transcript Restriction.After that date it may be obtained through PACER. Any Notice of Intent to Request Redaction, if required, is due no later than 5 business days from date of this filing. Release of Transcript Restriction set for 12/19/2011.

446 – Filed and Effective: 09/19/2011
Minute Entry
Document Text: Minute Entry: Settlement Conference held.

447 – Filed and Effective: 09/19/2011
REPLY
Document Text: REPLY (re 410 MOTION to Strike Portions of the Mitchell Patent Report ) filed byGoogle Inc.. (Attachments: # 1 Affidavit Declaration, # 2 Exhibit Ex. G)

448 – Filed and Effective: 09/20/2011
DECLARATION
Document Text: DECLARATION of Luis Villa, IV In Response in Opposition to 426 Administrative Motion to File Under Seal re: Dkt. 398-10 filed byGoogle Inc.. (Attachments: # 1 Proposed Order Granting Motion to File Redacted Materials)(Related document(s) 426) (Villa, Luis) (Filed on 9/20/2011) (Entered: 09/20/2011)

449 – Filed and Effective: 09/20/2011
Letter
Document Text: Letter from Robert Van Nest. (Van Nest, Robert) (Filed on 9/20/2011) (Entered: 09/20/2011)

450 – Filed and Effective: 09/20/2011
Letter
Document Text: Letter from Robert Van Nest. (Van Nest, Robert) (Filed on 9/20/2011) (Entered: 09/20/2011)

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Documents

441

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

MOTION FOR RELIEF FROM
NONDISPOSITIVE PRETRIAL ORDER
OF MAGISTRATE JUDGE

Date: October 13, 2011
Time: 8:00 a.m.
Judge: The Honorable William Alsup

Date Comp. Filed: October 27, 2010
Trial Date: October 31, 2011

NOTICE OF MOTION AND MOTION

PLEASE TAKE NOTICE THAT at 8:00 a.m. on October 13, 2011, or as soon thereafter as the matter can be heard, before the Honorable William H. Alsup, in the United States District Court for the Northern District of California, Defendant Google Inc. ("Google") will and does hereby move for relief from Magistrate Judge Ryu's nondispositive orders holding that attorney-client privilege does not protect the Lindholm email and drafts thereof.

This motion is based on this Notice of Motion and Motion, the attached Memorandum, the pleadings and papers on file in this action, and on all other matters of record.

REQUESTED RELIEF

Google seeks the relief requested in the accompanying Proposed Order.

MEMORANDUM IN SUPPORT OF OBJECTIONS

I. INTRODUCTION

Thirty years ago, the Supreme Court issued a landmark ruling recognizing the importance of allowing corporate counsel to communicate confidentially with low- and mid-level employees when investigating possible legal claims against the corporation. In that decision, Upjohn Co. v. United States, 449 U.S. 383 (1981), the Court held that the effectiveness of such investigations depends upon a broadened attorney-client privilege, extending beyond the corporation's "control group" of top-level officers to include communications with lower-level employees, who often possess the knowledge that the attorney needs if he is to render sound legal advice.

Now, in a ruling that flouts Upjohn's letter and spirit, the Magistrate in this case has compelled the production of a confidential email communication between Google engineer Tim Lindholm and Google in-house counsel Ben Lee (among others). The communication concerned an investigation that Mr. Lindholm conducted at the direction of Google's lawyers as part of the legal department's effort to evaluate this lawsuit for the company's senior management. This was a classic Upjohn scenario—a corporation asking its counsel to communicate with a lower-level employee to investigate a threatened legal claim against the corporation. The final email containing that communication was listed, twice, on Google's privilege log. The Magistrate also compelled production of nine drafts of that email, which were created automatically by a

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computer backup system during the five minutes in which Mr. Lindholm drafted his message.

For reasons set forth below, the Magistrate's rulings were contrary to law and founded upon erroneous findings of fact. Without any evidentiary support, the Magistrate speculated that the Lindholm email could concern ordinary, non-privileged business matters - i.e., business negotiations - rather than Google's internal legal investigation of Oracle's claims. The Magistrate then held that Google had failed to disprove that possibility by submitting evidence linking the email to Google's investigation.

To reach that conclusion, the Magistrate had to ignore both intrinsic and extrinsic evidence that the email was privileged. The intrinsic evidence that she ignored included the facts that the email was addressed to a Google attorney, that it said "Attorney Work Product" and "Google Confidential" at the top, and that it concerned an attempt to investigate alternatives to some of the very technology that Oracle had accused Google of infringing. While these facts may not be dispositive, they cannot be simply ignored.

The Magistrate also ignored extrinsic evidence, in the form of declarations by Mr. Lindholm and Mr. Lee, expressly linking the email to Google's legal investigation and specifically refuting the Magistrate's speculation that the email was intended to convey ordinary business information. Although the Magistrate credited the Lindholm and Lee declarations, she ignored the fact that they confirm the link between the Lindholm email and Google's legal investigation of Oracle's claims—the very link that she found to be lacking.

The Magistrate's approach to assessing privilege claims is contrary to Upjohn's teachings and intent because it effectively strips privilege from communications by lower- and mid-level employees to corporate counsel unless those employees are sufficiently savvy and detail-oriented to include specific references to the legal investigation in each of those communications. Under the Magistrate's approach, the employee's failure to include such references in each communication cannot be remedied later by declarations explaining the connection between the communication and the legal investigation.

Accordingly, the Court should reject the Magistrate's conclusions, sustain Google's objections, and grant the relief set forth in the accompanying Proposed Order.

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II. STATEMENT OF FACTS

A. Google's evidentiary submission to Magistrate Ryu

In opposing Oracle's motion to compel, Google submitted in camera to Magistrate Judge Ryu the final Lindholm email and all drafts thereof. Google also filed five declarations regarding the Lindholm email or otherwise responding to Oracle's motion.¹ The declarations provided the undisputed facts necessary to establish privilege, as summarized below.

1. Oracle's threatened litigation and Google's investigation of Oracle's claims.

On July 20, 2010, Google Senior Counsel Ben Lee attended a meeting at Google headquarters with attorneys representing Oracle.² At that meeting, Oracle asserted that Android infringed on several Oracle patents, which it specifically identified for the very first time.³ Oracle threatened to sue Google over those patents.⁴ After the meeting, Mr. Lee asked Google engineer Tim Lindholm to gather information related to Oracle's infringement claims in order to assist Google's legal analysis of those claims.⁵

On July 30, 2010, Google General Counsel Kent Walker convened a meeting to formulate a response to Oracle's infringement claims.⁶ Mr. Lee and Mr. Lindholm attended that meeting, as did Google's top management.⁷ At the meeting, Mr. Walker instructed Mr. Lindholm and Google engineer Dan Grove to continue to work under Mr. Lee's supervision to gather information about Oracle's infringement claims in order for Mr. Lee and Mr. Walker to develop legal advice and convey that advice to Google's executive management.⁸

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2. Lindholm's email regarding technology implicated by Oracle's claims.

On August 6, 2010, Mr. Lindholm sent an email to Mr. Lee and to Andy Rubin (then a Google Vice President in charge of Android).⁹ The final version of the email, sent at 11:05 a.m., contained the phrases "Attorney Work Product" and "Google Confidential" at the top, and was listed twice on Google's privilege log.¹⁰ Mr. Lindholm's declaration expressly states that his email "report[ed] investigations and analyses that Mr. Grove and I conducted at the request of Google General Counsel Kent Walker, under the supervision of Mr. Lee, and in anticipation of Oracle's threatened lawsuit."¹¹ Likewise, Mr. Lee's declaration states: "On or about August 6, 2010,1 received an email from Mr. Lindholm regarding the investigation Mr. Walker and I had asked him to conduct. On information and belief, I understand that two copies of this email were listed on Google's privilege log as entries 2551 and 5513 and that one copy of it has been submitted in camera to the Court."¹² Mr. Lindholm also specifically declared that his email did not contain "general business advice" about Android.¹³ Rather, Mr. Lindholm sent the email to assist Mr. Lee and Mr. Walker in their efforts to develop legal advice regarding Oracle's infringement claims and to convey that advice to Google's executive management.¹⁴

3. Google's inadvertent production of eight "auto-saves" of the Lindholm email.

Google inadvertently produced to Oracle eight drafts of the Lindholm email.¹⁵ The drafts are "snapshots" of the email that Mr. Lindholm ultimately sent, taken at eight different stages of preparation during the roughly four-minute period between 11:01 a.m. and 11:04 a.m.¹⁶ None of the eight inadvertently produced drafts contained the phrases "Attorney Work Product" or "Google Confidential" because that was one of the last things that Mr. Lindholm wrote before

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sending the email.¹⁷ Likewise, none of those eight drafts contained an addressee in the "Two" field because that was the last thing Mr. Lindholm wrote.¹⁸ Because the Lindholm drafts lack these obvious indicia of privilege, Google's electronic screening mechanisms did not catch those drafts before production.¹⁹ But Google did designate the eight inadvertently produced drafts as "HIGHLY CONFIDENTIAL - ATTORNEY'S EYES ONLY," pursuant to the stipulated protective order in this case.²⁰

B. Oracle's disclosure of the Lindholm email and Google's immediate clawback.

On July 21, 2011, Oracle twice disclosed in open court the contents of an auto-save of the Lindholm email without providing prior notice to Google. Oracle's disclosure violated the protective order, which states that "[p]arties shall give the other parties notice if they reasonably expect a deposition, hearing, or other proceeding to include Protected Material [,]"²¹

The first disclosure occurred in a telephone conference with Magistrate Judge Ryu. Oracle's counsel read the email into the record without giving Google a copy of the email or any production number. The second disclosure occurred in a Daubert hearing before this Court. Oracle included a draft of the Lindholm email in an 80-page binder that it handed to Google at the hearing. During the hearing, Oracle's counsel read the email into the record, implying that the draft was an email that Mr. Lindholm actually had sent. The Court questioned Google's counsel about the email, and counsel answered the questions without any opportunity to review the draft, let alone an opportunity to determine that the draft was an auto-save of a privileged email sent to Google Senior Counsel Ben Lee. After the Daubert hearing, Google investigated the issue, determined that the Lindholm email was in fact a draft of an email that had been listed twice on Google's privilege log, and immediately clawed back the eight inadvertently produced

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drafts of the Lindholm email.

Oracle then moved Magistrate Judge Ryu to compel the production of the Lindholm email and all drafts thereof.²²

C. The proceedings before Magistrate Judge Ryu.

On August 25, 2011, Magistrate Ryu heard argument on Oracle's motion to compel. At the outset of the hearing, she announced her tentative ruling granting the motion. Later that day, she issued a written order requiring Google to produce the final Lindholm email and all related drafts "immediately." She issued a written statement of her reasons the next day.

Magistrate Ryu made three significant findings that Google does not challenge.

First, the Magistrate concluded, based on her in camera review of the documents, that "they form a sequence of automatically saved drafts of an email that was created during a four minute span before being sent."²³ And the Magistrate correctly recognized that "if [the final version of the Lindholm Email] is privileged, then its drafts are as well."²⁴

Second, the Magistrate stated that she did not question the honesty or integrity of Google's declarants. She noted that "it may well be that. .. what is said in the declarations is completely accurate . . . but that doesn't mean that this e-mail fell within [the] category" of documents relating to Google's legal investigation of Oracle's claims.²⁵

Third, Magistrate Ryu gave no credence to Oracle's arguments that the email should be produced because (in Oracle's erroneous view) its contents will help Oracle prove willful infringement. That argument was rightly rejected. "The principal difference between the attorney-client privilege and the work product doctrine, in terms of the protections each provides, is that the privilege cannot be overcome by a showing of need, whereas a showing of need may justify discovery of an attorney's work product." Admiral Ins. Co. v. United States Dist. Ct., 881 F.2d 1486, 1494 (9th Cir. 1989) (citation omitted). Thus, "[re]levance ... is not the standard for

6

determining whether or not evidence should be protected from disclosure as privileged, and that remains the case even if one might conclude [that] the facts to be disclosed are vital, highly probative, directly relevant or even go to the heart of an issue." Dion v. Nationwide Mut. Ins. Co., 185 F.R.D. 288, 293 (D. Mont. 1998).

Despite making these findings, the Magistrate's written order concluded that, based on "the contents of the email itself" and on the "many basic gaps in the factual record that Google failed to fill," Google had failed to prove that the Lindholm email ever was privileged.²⁶ Specifically, the Magistrate held that Google had failed to establish "the first three prongs of the attorney-client privilege test, namely that the Lindholm Email constitutes a communication related to the purpose of obtaining legal advice from a legal advisor in his capacity as such."²⁷ According to the Magistrate, Google's declarants had failed to "connec[t] the dots" by specifically linking the Lindholm email to the pre-litigation investigation described in the declarations.²⁸ The Magistrate's reasons for this conclusion are explored in Part III.B, below.

The Magistrate ordered Google to produce the emails immediately, and she denied Google's motions to seal or redact references to the emails in the hearing transcripts.²⁹ Google produced the final Lindholm email and all drafts thereof to Oracle on August 26, 2011, accompanied by a written assertion of privilege and a reservation of rights to claw the documents back if this Court or the Federal Circuit finds that they are privileged.³⁰

III. OBJECTIONS

A. Standard of review.

Federal Rule of Civil Procedure 72(a) states that, when timely objections are lodged to a magistrate's nondispositive ruling, "[t]he district judge in the case must. .. modify or set aside any part of the order that is clearly erroneous or is contrary to law."

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B. The Magistrate's reasons for finding the attorney-client privilege inapplicable are clearly erroneous because they ignore intrinsic and extrinsic evidence of privilege, and also are contrary to law because they strip a lower-level employee's communications with in-house counsel of privilege unless the employee refers expressly to lawyers, litigation, or a legal investigation in each communication.

The attorney-client privilege "recognizes that sound legal advice or advocacy serves public ends and that such advice or advocacy depends upon the lawyer's being fully informed by the client." Upjohn, 449 U.S. at 389. "The first step in the resolution of any legal problem is ascertaining the factual background and sifting through the facts with an eye to the legally relevant." Id. at 390-91. The privilege therefore "protect[s] not only the giving of professional advice to those who can act on it but also the giving of information to the lawyer to enable him to give sound and informed advice." Id. at 390; see also United States v. Chen, 99 F.3d 1495, 1501 (9th Cir. 1996); Admiral Ins. Co., 881 F.2dat 1492-93; Kimberly-Clark Corp. v. Tyco Healthcare Retail Group, No. 05-C-985, 2007 WL 1246411 (E.D. Wis. Apr. 27, 2007).

The present dispute concerns a classic Upjohn scenario in which corporate counsel (Ben Lee and Kent Walker) enlisted the help of lower-level employees (Tim Lindholm and Dan Grove) to investigate potential legal claims against the corporation. But the Magistrate concluded that Mr. Lindholm's email did not warrant protection under Upjohn because Google had failed to establish "the first three prongs of the attorney-client privilege test, namely that the Lindholm Email constitutes a communication related to the purpose of obtaining legal advice from a legal advisor in his capacity as such." To reach that conclusion in the face of the contrary evidence set forth above at Part II, the Magistrate adopted a novel four-step methodology:

First, the Magistrate ignored all intrinsic evidence that the communication is privileged — e.g., the fact that the email is addressed to an attorney, that it says "Attorney Work Product" and "Google Confidential" at the top, and that it concerns the search for alternatives to technology that Oracle was then claiming Google infringed. Second, the Magistrate ignored all extrinsic evidence that the communication is privileged — e.g., declarations by the email's author and by the attorney to whom the email was sent, stating that the email relates directly and exclusively to Google's legal investigation of Oracle's claims. Third, the Magistrate speculated

8

about then-occurring non-legal business activities to which the communication might relate if viewed out of context and stripped of all indicia of privilege - a conjecture unsupported by any evidence. Fourth and finally, the Magistrate declared that the party asserting the privilege had failed to carry its burden of disproving her speculations about how the communication might concern ordinary business matters as opposed to a legal investigation.

Employing this methodology, the Magistrate set forth seven reasons, which Google discusses and objects to below, for concluding that the Lindholm email was not privileged.

1. "[Former Google in-house counsel Ben] Lee ... did not indicate that he reviewed the Email and could competently represent that it was connected to work that he requested from Lindholm as part of the provision of legal advice he describes in his declaration."³¹

Objection: clearly erroneous and contrary to law. Mr. Lee states: "On or about August 6, 2010, I received an email from Mr. Lindholm regarding the investigation Mr. Walker and I had asked him to conduct."³² The Magistrate appears to have concluded that Mr. Lee's statement lacked foundation because he did not add: "I know what Mr. Lindholm's email was about because I read it." Surely that statement is too obvious to require when the declarant declares that he received the email in question and describes what it was about.

2. "Neither Lee nor Lindholm discusses whether, during the time period in question, they were communicating with each other solely about the legal advice they each describe. In other words, at that time, Lindholm may well have been communicating with Lee about other non-privileged matters, including the business of negotiating for a Java license."³³

Objection: clearly erroneous and contrary to law. Mr. Lee and Mr. Lindholm expressly declared that Mr. Lindholm's August 6, 2010 email addresses the investigation that Mr. Lee and Google General Counsel Kent Walker had asked Mr. Lindholm to undertake, under Lee's direction, in response to Oracle's infringement claims and in anticipation of Oracle's threatened lawsuit.³⁴ There is no basis in the record or elsewhere for the Magistrate's counterfactual speculation that Mr. Lindholm and Mr. Lee "may well have been" communicating about

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something else. Indeed, Mr. Lindholm's declaration specifically excluded the possibility that the email was about anything else, including "general business advice" related to Android.³⁵

3. [N]either Lee nor Lindholm states that Rubin, Page, and Brin were involved in the described efforts to formulate legal advice, nor do they attempt to explain why these individuals feature so prominently in the . . . Email."³⁶

Objection: clearly erroneous and contrary to law. There is no mystery as to why Google co-founders Larry Page and Sergey Brin and Android Chief Andy Rubin "feature[d] so prominently" in Mr. Lindholm's email.³⁷ As stated in Mr. Lee's and Mr. Lindholm's declarations, at that time, Google had just learned that software giant Oracle was threatening to sue Google on a claim that Google's Android platform infringed Oracle's patents and copyrights. Oracle has claimed billions of dollars in damages from that infringement. It is inconceivable that Google's top management would not instruct the company's lawyers to analyze and investigate a claim of such magnitude. Indeed, Mr. Lindholm's declaration confirms that Google's top management attended the July 30, 2010 meeting at which Mr. Lindholm discussed Oracle's infringement claims with Google's lawyers. Mr. Lindholm's declaration also shows that he understood that his investigation would assist Mr. Lee and Mr. Walker in their efforts to "develop legal advice and convey that advice to Google's executive management."³⁸ Thus, the references to Page, Brin, and Rubin are consistent with and explained by the Lee and Lindholm declarations.

Moreover, the Magistrate appears to have assumed that a legal investigation can be ordered or supervised either by top management, or by the company's general counsel — but

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never by both. This is not the law. Leading precedents upholding the attorney-client privilege involve situations in which "senior management" instructed managers to give statements to the corporation's counsel (see Admiral Ins., 881 F.2d at 1489, 1493) or a board chairman asked general counsel to investigate questionable corporate conduct by interviewing lower-level employees (see Upjohn, 449 U.S. at 387). Far from destroying the privilege, the involvement of top management confirms the importance of the legal investigation.

4. "Nothing in the content of the Email indicates that Lindholm prepared it in anticipation of litigation or to further the provision of legal advice. The Email is not directed to [attorneys] Walker or Lee ... [but rather] to Rubin, the Vice President of Android. It expressly states that Page and Brin (and not the lawyers) instructed Lindholm and Grove to undertake the technological research discussed in the Email."³⁹

Objection: clearly erroneous and contrary to law, for at least three reasons.

First, the "content of the Email" does indicate that it was prepared in anticipation of litigation and to further the provision of legal advice, because it includes the words "Attorney Work Product" and "Google Confidential," was sent to the Google in-house lawyer assigned to supervise Lindholm's investigation of facts related to Oracle's claims, and concerned alternatives to the technology that Oracle then was claiming Google had infringed.

Second, the email most assuredly is "directed to" Lee. It says so, right in the "To:" field. While the salutation is to Mr. Rubin, there is no legal rule that the attorney must be named in the salutation — especially when the communication says "Attorney Work Product" and "Google Confidential" at the top and is directly addressed to an attorney. While the fact that the communication is addressed to a lawyer may not be dispositive in and of itself, it cannot simply be ignored. See In re OM Sec. Litig., 226 F.R.D. 579, 587 (N.D. Ohio 2005).

Third, the email does not "expressly stat[e] that Page and Brin (and not the lawyers)" instructed Lindholm to conduct the pre-litigation investigation. "[A]nd not the lawyers" is an inference that the Magistrate mistakenly drew after disregarding (a) the confidentiality statements at the top of the email, (b) the fact that the email is addressed to a lawyer, (c) the fact that the email discusses alternatives to using a technology that had just been accused by Oracle

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(in a Rule 408 communication) of infringing intellectual-property rights, and (d) the many statements in Lee's and Lindholm's declarations explaining that the email reported the results of a pre-litigation investigation launched in response to Oracle's claims. Moreover the Lindholm declaration states that both top management and Google's lawyers attended the July 30, 2010 meeting at which Google General Counsel Kent Walker asked Mr. Lindholm to, in the Magistrate's words, "undertake the technological research discussed in the Email." In so doing, Mr. Walker presumably had the support and approval of Google's top management, including Page and Brin. Again, the Magistrate assumes that the involvement of top management renders any transaction presumptively non-legal—a proposition unsupported by law or logic.

5. "The Email text also never mentions legal advice, lawyers, litigation, Oracle, or patent infringement; rather, it focuses on technological aspects of Chrome and Android, and the need to negotiate a license for Java.... [T]he Email appears to be a strategy discussion intended to address business negotiations regarding a Java license ...."⁴⁰

Objection: clearly erroneous and contrary to law. The Magistrate held, in substance, that a communication cannot be related to a corporate legal investigation if it fails to refer to litigation or to request legal assistance. But a privileged communication need not expressly request legal assistance. See In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 806 (Fed. Cir. 2000); Hercules, Inc. v. Exxon Corp., 434 F. Supp. 136, 144 (D. Del. 1977). And it would eviscerate the privilege to hold that each communication generated by a corporate legal investigation must contain boilerplate assertions about the investigation to remain privileged.

The Magistrate's conclusion that the Lindholm email "appears to be a strategy discussion" about licensing negotiations rather than anything litigation-related is not supported by any factual evidence and rests on counterfactual speculation. The Magistrate does not question the credibility of the declarations stating that Ben Lee supervised Mr. Lindholm's investigation of the facts related to Oracle's infringement claims. But the Magistrate failed to consider the implications of that undisputed fact. Ben Lee is just one of more than 200 in-house attorneys that Google employs world-wide.⁴¹ Yet he is the only Google in-house attorney to

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whom Mr. Lindholm addressed an email discussing alternatives to using Oracle's allegedly infringed technology; he was present at the July 20, 2010 meeting where Oracle presented its infringement claims; and he was the attorney originally tasked with leading the investigation of Oracle's claims. It is no coincidence that Mr. Lindholm sent his email to Mr. Lee.

The Magistrate's speculation likewise fails to consider the timing of Mr. Lindholm's email — sent just one week after his July 30, 2010 meeting with Google lawyers and top management, and less than three weeks after Oracle had presented its infringement claims and had threatened Google with litigation. Again, it is no mere coincidence that Mr. Lindholm sent his email to Mr. Lee in the immediate wake of Oracle's threatened lawsuit, and while Google was attempting to investigate the facts underlying the technology at issue in that lawsuit.⁴²

6. "Lee's role as in-house counsel warrants heightened scrutiny.... [Google] 'must make a "clear showing" that the "speaker" made the communication[] for the purpose of obtaining or providing legal advice.'" ... Google has made no such showing."⁴³

Objection: clearly erroneous and contrary to law. The Magistrate derives this heightened "clear showing" standard (applicable only to communications with in-house counsel) from a district-court case, United States v. ChevronTexaco Corp., 241 F. Supp. 2d 1065, 1076 (N.D. Cal. 2002), that relied in turn on a D.C. Circuit case, In re Sealed Case, 737 F.3d 94, 99 (D.C. Cir. 1984). But the Ninth Circuit takes a different view. It has held that, "[i]n determining the existence of a privilege, no attempt is made to distinguish between 'inside' and 'outside' counsel" United States v. Rowe, 96 F.3d 1294, 1296 (9th Cir. 1996) (emphasis added) (citation, brackets, and internal quotation marks omitted). Instead, courts should adhere to '"the principle that the attorney-client privilege will apply to confidential communications concerning legal matters made between a corporation and its house counsel'" — a principle that '"has been

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followed with virtual unanimity by American courts." Id. (emphasis added) (citations omitted).

Even if the D.C. Circuit's "clear showing" doctrine applies here (which it does not), Google has met that standard. The Lindholm and Lee declarations clearly show that Mr. Lindholm's email concerned Google's legal investigation of Oracle's claims - not licensing negotiations carried out in the ordinary course of business. Moreover, the Magistrate failed to mention an important corollary of the "clear showing" doctrine that supports Google's position (if the doctrine applies at all). Courts applying the "clear showing" doctrine also observe that "[o]ne important indicator of whether a[n in-house] lawyer is involved in giving legal advice or [is acting] in some other activity is his or her place on the corporation's organizational chart. There is a [rebuttable] presumption that a lawyer in the legal department or working for the general counsel is most often giving legal advice, while the opposite presumption applies to a lawyer . . . who works for . . . some other seemingly management or business side of the house." Boca Investerings P'ship v. United States, 31 F. Supp. 2d 9, 12 (D.D.C. 1998) (emphasis added). Accordingly, even under the "clear showing" standard, Ben Lee's employment in Google's legal department gives rise to a presumption that he was giving legal advice about Oracle's claims and litigation threat, as opposed to non-legal business advice about unrelated licensing negotiations.

7. "The reactions of Google counsel when presented with [an incomplete draft of] the Lindholm Email in court reinforce the weaknesses of Google's contention that the Email warrants attorney-client privilege...."⁴⁴

Objection: clearly erroneous and contrary to law. The surprised reaction of a lawyer confronted for the first time with an incomplete draft of a document that has been stripped of its most conspicuous intrinsic indicia of privilege is utterly irrelevant, especially in a case where literally millions of pages of documents have been produced.

The Magistrate's reasoning poses special dangers in the circumstances of modem litigation, where auto-saved and manually saved drafts of word-processed documents and emails are likely to be inadvertently produced from time to time, for reasons set forth in the Zmrhal Declaration (Ex. D hereto). It is unrealistic, and harmful to the values protected by the attorney-client privilege and the Upjohn decision, to assume that the attorneys working on a case always

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will be able to recognize such documents for what they are at first glance.

C. The Magistrate cited the same clearly erroneous and legally deficient grounds for denying work-product protection to the Lindholm email.

"The work product doctrine extends beyond confidential communications between the attorney and client to 'any document prepared in anticipation of litigation by or for the attorney.'" United States v. Bergonzi, 216 F.R.D. 487, 494-95 (N.D. Cal. 2003) (emphasis added) (quoting In re Columbia/HCA Healthcare Billing Practices Litig., 293 F.3d 289, 304 (6th Cir. 2002)); see also ChevronTexaco Corp., 241 F. Supp. 2d at 1081. The Lindholm email is exactly that — a document prepared in anticipation of Oracle's lawsuit for Google attorney Ben Lee, among others.

The Magistrate denied the Lindholm email work-product protection "[fjor the same reasons discussed" in its treatment of the attorney-client privilege.⁴⁵ Google therefore objects to the Magistrate's ruling on the same grounds discussed at Part III.B, above.

IV. CONCLUSION

For the reasons stated above and in all the papers, declarations, and exhibits submitted to Magistrate Ryu, both publicly and in camera, the Court should grant the relief requested in the accompanying Proposed Order.

Dated: September 19, 2011

Respectfully submitted,

KEKER & VAN NEST LLP

By: s/ Robert A. Van Nest
ROBERT A. VAN NEST
Attorneys for Defendant
GOOGLE INC.

15

_________________________

¹ Google filed three "corrected" declarations to reflect its discovery that one of the three versions of the Lindholm email listed on Google's privilege log was a draft, not a copy of the final email. The corrected declarations are otherwise identical in substance to the original declarations.

² Ex. A. (Corrected Declaration of Benjamin Lee ("Lee Deck")) at ¶ 5.

³ Ex. A (Lee Decl.) at ¶ 5.

⁴ Ex. A (Lee Decl.) at ¶ 5.

⁵ Ex. A (Lee Deck) at ¶ 6; Ex. B (Corrected Declaration of Tim Lindholm ("Lindholm Deck")) at ¶ 5.

⁶ Ex. A (Lee Decl.) at ¶ 7.

⁷ Ex. A (Lee Decl.) at ¶ 7; Ex. B (Lindholm Deck) at ¶ 6.

⁸ Ex. A (Lee Deck) at ¶ 8; Ex. B (Lindholm Deck) at ¶ 7; Ex. C (Response Declaration of Tim Lindholm ("Lindholm Resp. Decl.")) at ¶ 7-8.

⁹ Ex. A (Lee Deck) at ¶ 9; Ex. B (Lindholm Deck) at ¶ 8.

¹⁰ Ex. A (Lee Deck) at ¶ 9; Ex. B (Lindholm Deck) at ¶ 9.

¹¹ Ex. B (Lindholm Deck) at ¶ 14 (emphasis added).

¹² Ex. A (Lee Deck) at ¶ 9 (emphasis added).

¹³ Ex. C (Lindholm Resp. Deck) at ¶ 7.

¹⁴ Ex. C (Lindholm Resp. Deck) at ¶ 7-8.

¹⁵ A ninth draft of the email was listed on Google's privilege log as entry 5512.

¹⁶ Ex. B (Lindholm Deck) at ¶ 11.

¹⁷ Ex. B (Lindholm Decl.) at ¶ 9.

¹⁸ Ex. B (Lindholm Decl.) at ¶ 9.

¹⁹ Ex. D (Corrected Declaration of Kristin Zmrhal ("Zmrhal Decl.")) at ¶¶ 10-15.

²⁰ Dkt. No. 66 at 2:26-3:2.

²¹ Dkt. No. 66 at 7:1-4.

²² Dkt. No. 277.

²³ Dkt.No. 361 at p. 2 n.3.

²⁴ Dkt.No. 361 at p. 4:15-16.

²⁵ Ex. E (Discovery Hearing Tr.) at 11:15-21 (emphasis added); id. at 23:23-24:19.

²⁶ Dkt.No. 361 at 5:5-8.

²⁷ Dkt.No. 361 at 4:18-21.

²⁸ Ex. E (Discovery Hearing Tr.) at 24:9-12.

²⁹ Dkt. Nos. 355, 356, and 360.

³⁰ Producing documents under compulsion does not waive privilege if reasonable efforts are taken to protect the privilege. See Gomez v. Vernon, 255 F.3d 1118, 1131-32 (9th Cir. 2001); Transamerica Computer Co. v. IBM Corp., 573 F.2d 646, 650-51 (9th Cir. 1978).

³¹ Dkt. No. 361 at 5:9-11.

³² Ex. A (Lee Deck) at ¶ 9 (emphasis added).

³³ Dkt. No. 361 at 5:11-15.

³⁴ Ex. A (Lee Decl.) at ¶¶ 5-10; Ex. B (Lindholm Deck) at ¶¶ 4-8; 14.

³⁵ Ex. C (Lindholm Resp. Decl.) at ¶ 7. Cf. Motley v. Marathon Oil Co., 71 F.3d 1547, 1550-51 (10th Cir. 1995) (upholding privilege based on in-house counsel's uncontradicted declaration that he prepared lists of employees for termination in order to give legal advice and "did not render business advice").

³⁶ Dkt.No. 361 at 5:16-18.

³⁷ In a footnote, the Magistrate speculates that Lindholm's references to "top management" or "executive management" "could" apply to "a multitude of individuals and not necessarily Page, Brin, and Rubin." Dkt. No. 361 at 6 n.4. Perhaps it "could" — but it doesn't, as the email itself confirms when it references those individuals. Google has the burden of establishing privilege. It does not have the burden of negating every alternative scenario that a creative mind could construct. Moreover, the fact that the Lindholm and Lee declarations do not also identify Page, Brin, and Rubin by name does not negate the facts that establish the privilege.

³⁸ Ex. C (Lindholm Resp. Decl.) at ¶ 7.

³⁹ Dkt. No. 361 at 5:21-25.

⁴⁰ Dkt.No. 361 at 6:3-5, 12-13.

⁴¹ See David Hechler, "Best Legal Department 2011 Winner: Google," May 19, 2011, Law.com, http://www.law.com/jsp/cc/PubArticleCC.jsp?id=1202494152428 (last visited Sept. 2, 2011).

⁴² Even if the Lindholm email relates solely to "business negotiations" (which it doesn't), such communications can be privileged, too. See Chen, 99 F.3d at 1501-02 (emphasis added). And there is no bright line between license negotiations and IP litigation. Licenses are a typical component of settlements involving an IP dispute. See, e.g., Jacobs v. Nintendo of Am., Inc., 370 F.3d 1097, 1098-99 (Fed. Cir. 2004); Therasense, Inc. v. Becton, Dickinson & Co., C 04-02123 WHA, 2008 WL 2323856 at *6 (N.D. Cal. May 22, 2008).

⁴³ Dkt. No. 361 at 7:9-18.

⁴⁴ Dkt.No. 361 at 6:15-16.

⁴⁵ Dkt. No. 361 at 8:16.

447

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

ORACLE AMERICA, INC.
Plaintiff,
v.
Defendant.

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

Honorable Judge William Alsup
Hearing Date: September 29, 2011
Hearing Time: 8:00 a.m.

DEFENDANT GOOGLE INC.’S REPLY IN SUPPORT OF THE
MOTION TO STRIKE PORTIONS OF THE MITCHELL PATENT REPORT

Oracle concedes in its opposition brief that the source code, files and products at issue in Google’s motion were identified for the first time in the Mitchell Report and are not explicitly disclosed in Oracle’s infringement contentions (“ICs”). (See Dkt. No. 435 (“Opp. Br.”).) Because these newly-identified source files and products represent new infringement theories, Oracle’s concession should end the inquiry, as the Patent Local Rules prohibit the introduction of new infringement theories absent leave of Court.

Oracle cannot dispute that these theories are first identified in the Mitchell Report, so it resorts to arguments that are unavailing and miss the point. First, Oracle argues that these newly-identified files and products simply provide “additional detail” for the theories presented in its ICs. But this explanation conflicts with Dr. Mitchell’s infringement theories, which explicitly rely on the newly-identified source code files to satisfy claim elements. Oracle’s strenuous attempt to oppose Google’s motion actually underscores that these newly-identified source files and products are not mere “additional detail” that would have no impact on Oracle’s infringement theory if they were stricken.

Second, Oracle incorrectly argues that Google’s motion is a challenge to the sufficiency of Oracle’s ICs. Google’s motion does not challenge the adequacy of Oracle’s ICs, as Oracle was free to allege whatever infringement theories it could. Rather, Google’s motion challenges the fact that the infringement theories Dr. Mitchell posits in his report are not the same theories disclosed by Oracle in its ICs. Absent the Court’s leave to supplement its ICs, Oracle is limited to the theories alleged in those ICs. See April 6, 2011 Hr’g Tr., Dkt. No. 110 at 11:11–13 (“[I]f your disclosures aren’t good enough, there won’t be a second chance. You just lose.”). The Mitchell Report is an eleventh-hour attempt to disclose new theories beyond the scope of Oracle’s ICs, which is why Dr. Mitchell’s new theories are improper.

Third, Oracle’s opposition seeks to persuade this Court that the volume of its ICs somehow excuses its delay and lack of diligence in disclosing the new theories presented in the Mitchell Report. This argument is illogical and not responsive to Google’s motion. If anything, the volume of Oracle’s ICs shows that Oracle had ample time and ability to review all of the

1

public source code and specifically chose not to include the source files that Dr. Mitchell now claims are central to his new infringement theories.

Fourth, Oracle’s opposition turns the case law on its head. Oracle argues that Dr. Mitchell’s identification of specific products not listed in Oracle’s ICs does not present new infringement theories because Oracle generically accused “all Android devices” in its ICs. Oracle cites no case law relieving a plaintiff of its obligation under the Patent Local Rules to identify specific products. Oracle should not be allowed at this late stage of the case to accuse new products of infringing, as Dr. Mitchell has done in his report.

There is no genuine dispute that the identified portions of the Mitchell report were identified there for the first time, are untimely and are unauthorized by this Court and the Patent Local Rules. They should therefore be stricken.

1. Critique A: Oracle Concedes that Dr. Mitchell Cites New Code As Practicing the
“Storing” Limitation of Claim 11 of the ‘104 Patent

The Mitchell Report presents for the first time an infringement theory for claim 11 of the ‘104 patent where the previously unidentified DvmDex.h file allegedly implements the “storing” limitation of the claim. Oracle is forced to concede that the code Dr. Mitchell points to as evidence of the presence of this key element of the claims of the ‘104 patent was not in Oracle’s ICs. (Opp. Br. at 5 (“[T]he ICs do not quote directly from the DvmDex.h file.”).) Oracle hopes to obscure this fact by referring to completely different files and arguing that “[t]he ICs map the DexOptimize.c and Optimize.c Android source code files to the ‘storing’ limitation” and that “[t]he Report quotes source code from the Optimize.c source file, just like the ICs, to show how Android meets the “storing” limitation.” (Id. at 3–4.)

But, as is repeatedly recognized in the Mitchell Report, both infringement theories for the ‘104 patent depend on the newly identified DvmDex.h code: “[t]hat called function [for storing] is implemented in the DvmDex.h file.” (Id. at 4 (emphasis added); id. at 5 (same); see also Motion to Strike at 2.) And that code was not in Oracle’s ICs. In other words, Oracle concedes that the implementation of “storing” is not performed by code in the ICs, but allegedly only by new code Dr. Mitchell now identifies in his report.

2

Oracle’s argument that its ICs identify source code in other files that calls functions implemented in the DvmDex.h file is unavailing. The undisputed fact is that Oracle’s ICs never identified the DvmDex.h file nor the implementation that Dr. Mitchell now relies upon for his new infringement theories. Simply listing hundreds of function calls, as in Oracle’s ICs, is not enough, a fact Oracle recognizes in opposing this motion, and in highlighting the relevant function calls for the Court. (See Opp. Br. at n. 2.) No such identification and highlighting is present in Oracle’s ICs, where these function calls are mixed in with at least dozens of others that are not part of Dr. Mitchell’s new theories. This is simply an impermissible, belated attempt to add new infringement theories after the close of fact discovery, two weeks before responsive expert reports were due, and without leave of court, and is highly prejudicial to Google and its defenses. See Intertrust Techs. Corp. v. Microsoft Corp., No. 01-cv-1640, 2003 U.S. Dist. LEXIS 22736, at *7–8 (N.D. Cal. Dec. 1, 2003) (“The purpose of Patent Local Rule 3-1 [] is in fact to be nit picky, to require a plaintiff to crystallize its theory of the case and patent claims.”).

Oracle also seeks to confuse matters by alleging, incorrectly, that Google is overreaching because “there is no cause to strike the discussion of Resolve.c in those Report paragraphs.” (Opp. Br. at 5.) But Google did not move to strike discussion of Resolve.c – it moved to strike references to the newly-identified DvmDex.h. Again, it is this code that Dr. Mitchell now identifies for the first time as meeting the specific “storing” limitation of claim 11 and that was never identified in the ICs. References to this newly identified code should therefore be stricken.

2. Critique B: Oracle Concedes that Dr. Mitchell Cites New Code As Practicing the
“Removing” Limitation of Claim 1 of the ‘702 Patent

The Mitchell Report introduced an infringement theory for claim 1 of the ‘702 patent that was not identified in its ICs. Under the new theory, a number of source code files relied on by Dr. Mitchell but not disclosed in the ICs allegedly implement the “removing” limitation of the claim. Oracle’s ICs alleged that this “removing” limitation was somehow shown in Google presentation slides. However, Oracle chose to rely on those slides in its ICs, and not to base its contentions on specific portions of source code.

In the Mitchell Report, Oracle tries to shift away from its theory based on Google slides

3

to a theory based on specific code contained in previously unidentified source code files. Oracle attempts to equate this newly identified code with the slides it relied on in its ICs, but those slides contain no such code. Oracle also contends that the identification – by name alone – of a set of files including “TypeIdsSection.java” is the equivalent of the specific code Dr. Mitchell now attempts to rely on as meeting the “removing” limitation of claim 1. (Id. at 8.)

Oracle’s ICs were focused on a set of high-level slides and made only separate, passing reference to any Google source code, and even that reference was not to specific code or even specific files but, at best, blanket reference to sets of files. For the “removing” step, the ICs included two string citations: a “see also generally” citation to two packages (or collections) of code, and a “see also” cite to four source code files including “TypeIdsSection.java” discussed in Oracle’s reply. Oracle’s ICs failed to provide pinpoint cites for any of the identified files and failed to explain how any of those files were relevant to performing the “removing” step.

Now, Oracle argues that Dr. Mitchell’s new theories did not need to be disclosed in its ICs, and impermissibly shifts the burden to Google to generate a theory as to how all of these files were related and which code passage(s) in which file(s) might eventually be relied upon. (Id. (arguing that the one filename “citation constitutes sufficient notice to Google that other similarly named files are also relevant to this limitation.” (emphasis added).) Oracle does not explain how Google was to divine which files Oracle might rely upon and what portions of those files supported Oracle’s original theory of infringement. Adding them belatedly and without leave has prejudiced Google and those portions of the Mitchell Report should be stricken.

Google is not moving to strike portions of the Mitchell Report that provide “background” information, but focuses on new code cited as implementing a particular claim limitation. Oracle says that “the Report merely provides ‘additional information regarding the specific factual bases’” (id. at 9). The truth is that the only “specific factual bases” in the report for the “removing” limitation are in newly identified source code files.

Oracle also contends that its withholding of infringement theories should be excused because Google served Invalidity Contentions and responded to a non-infringement contention

4

interrogatory. Of course it did – it had no choice but to develop those positions based on Oracle’s ICs. This militates in Google’s favor because it highlights the prejudice to Google of being faced with new infringement theories for the first time in the Mitchell Report, only after its claim construction, invalidity and non-infringement theories needed to be identified.

3. Critique C: Oracle Admits that the Specific Products Identified in the Mitchell
Report were not Previously Disclosed

Oracle is forced to concede that the Mitchell Report introduces new infringement theories based on specific products never identified in its ICs. Hoping the Court will excuse its prejudicial delay, Oracle now argues the ICs used the words “all Android devices.” That argument misses the mark. Those ICs identified some number of specific products but not those newly-raised by Dr. Mitchell, which are clearly new theories. Android is open source and manufacturers may freely modify that software, underscoring the complete lack of disclosure in Oracle’s ICs of the products it now seeks to add through the Mitchell Report. Oracle points to the existence of the Android Compatibility Test Suite (“CTS”) as a basis to assume that all Android devices are the same. If that were true, it should have been easy for Oracle to identify in the ICs the devices it first identified in the Mitchell Report. Moreover, the Android CTS underscores how Android source code is indeed different across devices: if the code were the same across devices, there would be no need for a CTS to test compatibility of an Android device. Differences in Android devices have been confirmed by uncontroverted evidence. (See Ex. G, July 21, 2011 Brady Dep. at 19–22, 38–39, 43–44, 61, 75, 77–78.) Oracle did not even try to look at the source code on each of the devices that are presented for the first time in Dr. Mitchell’s report. Its attempt to add these contentions in that report cannot be excused.

4. Conclusion

Oracle should not be permitted to circumvent the Patent Local Rules and present new infringement theories in its expert report. Allowing such ambush tactics would flout those Rules, would reward litigation gamesmanship, and would produce a manifestly unjust result. The Proposed Order striking specific portions of the Mitchell Report containing the newly added material identified above should be granted.

5

DATED: September 19, 2011

KEKER & VAN NEST, LLP

By: /s/ Christa M. Anderson

ROBERT A. VAN NEST - #84065
[email]
CHRISTA M. ANDERSON - #184325
[email]
KEKER & VAN NEST LLP
[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.

I hereby attest that Christa M. Anderson concurs in the e-filing of this document.

/s/ Cheryl A. Sabnis /s/
Cheryl A. Sabnis

449

KEKER & VAN NEST LLP letterhead

September 20, 2011

VIA E-FILING

The Honorable William Alsup
United States District Court, Northern District of California
450 Golden Gate Avenue
San Francisco, California 94102

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

Dear Judge Alsup:

Google requests leave to file a motion to maintain its existing confidentiality designations on the Tim Lindholm emails, which Google produced to Oracle pursuant to Magistrate Judge Ryu’s orders of August 25 and 26, 2011 finding that the Lindholm emails were not protected by any applicable privilege or immunity. As the Court knows, Google has filed objections to Magistrate Judge Ryu’s orders, asserting that the Lindholm emails are in fact privileged. Google files this letter to address the separate issue of whether those emails should be designated as “Highly Confidential/Attorneys’ Eyes Only” (“AEO”) under the protective order in this case.

Shortly after Google produced the Lindholm emails with AEO designations, Oracle asked Google to remove any confidentiality designation from the emails. Oracle’s position, communicated in emails to Google, was that Google allowed Oracle to read that email during a July 21, 2011 hearing before Magistrate Judge Ryu, that this Court allowed Oracle to discuss the content of the Lindholm emails in court during the Daubert hearing later that same day and later denied Google’s motion to redact the transcript of that hearing, and that the emails did not contain any “competitively sensitive” information. Google disagreed, and invited Oracle to engage in the voice-to-voice meet-and-confer session required under the protective order. Oracle

The Honorable William Alsup
September 20, 2011
Page 2

has not yet accepted Google’s invitation to engage in such a voice-to-voice meet-and-confer, but Google requests permission to file a motion to maintain the designations on the Lindholm emails out of an abundance of caution.

To begin with, the question whether the Lindholm emails are properly designated AEO under the protective order does not depend on, or even relate to, whether the emails are privileged. The purpose of the AEO designation is to shield from public disclosure material that is not privileged, but which nonetheless “would create a substantial risk of serious harm that could not be avoided by less restrictive means” if disclosed publicly. December 17, 2010 Protective Order § 2.8 [Dkt. No. 66].

Whether or not they are privileged, the Lindholm emails amply satisfy these criteria. The emails represent Mr. Lindholm’s response to Google’s in-house counsel concerning Oracle’s assertion of intellectual property claims against Google and Google’s potential responses to such claims. As a large corporation, Google is frequently involved in litigation. Google never discloses publicly, or even broadly within Google, its internal deliberations and evaluations of threats of litigation or the merits of claims asserted against it, its potential responses to threats of litigation, or its strategic approach to litigation generally. To the contrary, it protects all such deliberations and evaluations rigorously, because those internal deliberations and evaluations, and Google’s overall litigation strategy, are plainly competitively sensitive. Google’s internal strategic thinking, including its thinking regarding specific litigation, is of significant interest to Google’s competitors, customers, and potential litigation adversaries, and to the market generally. The public disclosure of Google’s internal deliberations threatens serious harm to Google’s ability to fairly prosecute and defend claims in future proceedings.

The Honorable William Alsup
September 20, 2011
Page 3

Google understands that this Court has previously and candidly informed the parties that any court proceedings in this case, including trial, will be conducted publicly, and that any evidence presented at trial will be publicly aired, even if the parties had designated that evidence confidential during discovery. Google is not seeking to interfere with that. Oracle’s request has nothing to do with a public trial; it is asking Google to strip the Lindholm emails of their confidentiality designations, which would make those documents fully public for all purposes, regardless of whether this case is tried. Oracle agreed to the protective order’s limitations on use of confidential materials prior to trial, and it should abide by those limitations now.

Finally, it is no answer for Oracle to say that the Lindholm emails should lose their AEO designation because they were discussed publicly in court and subsequently in the media. That was not Google’s doing. As Google has mentioned repeatedly, Oracle was able to discuss one of the Lindholm emails during the July 21, 2011 hearings only because it violated the protective order by failing to give Google the required prior notice that it planned to use that email at those hearings. Had Oracle given the proper notice, Google would have had the opportunity to investigate and to inform Oracle that the email was inadvertently produced prior to the hearing, thus avoiding the disclosure and ensuing media coverage. For Oracle to use the inevitable result of its protective order violation to justify full public disclosure is unreasonable.

For all these reasons, Google respectfully requests permission to file a motion to preserve the existing AEO designations on the Lindholm emails for all pretrial purposes.

Sincerely,

/s/ Robert A. Van Nest

cc: All Counsel

450

KEKER & VAN NEST LLP letterhead

September 20, 2011

VIA E-FILING

The Honorable William Alsup
United States District Court, Northern District of California
450 Golden Gate Avenue
San Francisco, California 94102

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

Dear Judge Alsup:

Google requests leave to file a Daubert motion on certain aspects of the revised damages report of Oracle’s damages expert Dr. Iain Cockburn. Cockburn’s revised September 12, 2011 report ignores governing law and the guidelines in this Court’s July 22, 2011 Order (“Order”).

Cockburn still insists Oracle is entitled to billions of dollars in damages. After offering no analysis regarding copyright damages in his first report, he now opines that Oracle is entitled to over $800 million in “unjust enrichment” damages for copyright infringement (in addition to damages for lost profits and a lost license fee), and over $1.2 billion for future unjust enrichment damages for 2012 alone, even though Sun offered Google a copyright license (along with all of Sun’s Java-related intellectual property) for just $28 million in mid-2006.

First, the Court should exclude Cockburn’s hypothetical copyright license estimate to the extent that it relies on upward adjustments to the license actually proposed by Sun in pre-suit negotiations. Cockburn concludes that 15% of a $100 million Java license would be attributable to the copyrights at issue, but then adjusts his $14.8 million figure upward to $102.6 million. But those adjustments are barred by, among other authority, Judge Hamilton’s recent opinion in Oracle USA, Inc. v. SAP AG, 2011 WL 3862074 at *7-*9 (N.D. Cal. Sept. 1, 2011), which held

The Honorable William Alsup
September 20, 2011
Page 2

that a hypothetical copyright license must be based on evidence that the plaintiff actually would have offered such a license. But Sun’s pre-suit licensing offer presupposed a partnership with Google, while Cockburn’s upward adjustments are based on revenues Sun allegedly lost because it could not partner with Google. There is no evidence that Oracle would actually have offered a license to a competitor and thus no support for Cockburn’s upward adjustments.

Equally disqualifying, Cockburn’s upward adjustment has no record support. It is based entirely on a single, admittedly optimistic Sun presentation about money Sun hoped to earn from a Google partnership. But there is no evidence Sun would have been able to establish a viable business to exploit Android. It never did so in reality. Moreover, the document relied on by Cockburn offers no underlying financial data to justify its projections. The cover email attached to the presentation, OAGOOGLE0100166873, openly concedes that the revenue numbers are tentative and unverified. Finally, Cockburn is double counting, because his upward adjustment includes Sun’s lost profits from mobile Java licensing. The amount Sun demanded from Google in negotiations already included money to compensate Sun for that same lost licensing revenue.

Second, the Court should exclude Cockburn’s upward adjustment to his patent damages calculation. Cockburn has dropped his patent damages estimate from $6.1 billion to $201.8 million, but the way he reaches the lower number is equally result-oriented. Cockburn began his patent damages analysis with the $100 million demand made by Sun to Google in early 2006, admitting that the $100 million would have bought Google a full technology partnership with Sun, access to Sun engineers and know-how, and a license to all Sun’s Java-related intellectual property—2,000 Java-related patents, all related copyrights, and the Java trademark. Even so, he still apportions 30% of the total to just the asserted patent claims, then boosts that $30 million

The Honorable William Alsup
September 20, 2011
Page 3

baseline amount to $201.8 million based on Sun’s projected profits from a Google partnership— all without even attempting to satisfy the lost-profits standard of Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152 (6th Cir. 1978). Moreover, the entire basis of Cockburn’s seven-fold upward adjustment is the same single, speculative Sun presentation discussed above.

Third, Cockburn fails to provide a firm calculation of future damages as to either patent or copyright damages. He simply states that future damages would be at least as large as past damages. He fails to “take into account the varying expiration dates of the asserted patent claims,” as this Court ordered. Order at 11. He also ignores the law and the Order, id. at 6-7, opining that future damages should be based on a hypothetical negotiation after the jury verdict.

Fourth, Cockburn ignores this Court’s Order by omitting a claim-by-claim analysis of the date of first infringement, or apportioning patent damages accordingly. Order at 7.

Finally, Google seeks leave to file this Daubert motion separately, rather than as one of its five motions in limine, largely because of timing. Cockburn reserves the right to offer reply opinions in response to Google’s damages report(s). In particular, Cockburn will try to rebut Google’s evidence that Google’s profits “attributable to the [copyright] infringement,” 17 U.S.C. § 504(b), are far less than Google’s gross advertising revenue from all Android devices, as Cockburn currently asserts. Those new opinions also may present Daubert issues. So all such issues may be addressed together, Google asks for a briefing schedule allowing Google to file its motion after Cockburn’s deposition, which will follow his reply report, now due on October 10. In view of the Court’s bifurcation of the damages phase of this case, briefing the motion on such a schedule would allow the Court to resolve this issue before a December 2011 damages trial.

Sincerely, /s/ Robert A. Van Nest