The participants in the latest round (held Friday, September 30) may be somewhat telling as to the nature of those discussions. For Oracle, the lineup was: T.J. Angioletti (Chief IP Counsel); Thomas Kurian (Exec. VP, Product Dev.), Adam Messinger (VP, Product Dev.), Matthew Saboria (in-house counsel), and Mark Wayne (in-house counsel). For Google, the lineup was: Andy Rubin (Sr. VP, Android), Catherine Lacavara (chief litigation counsel), and Renny Hwang (in-house counsel). In other words, no CEO's were present, nor were any outside counsel. This has the feel of a working group trying to figure out the nuts and bolts of a deal.

In the meantime, Google has filed its reply to the Oracle response on Google's motion to overturn Magistrate Ryu's order on the Lindholm emails. 472 [PDF] It is clear that Google believes the magistrate's ruling was simply off the wall and not grounded in either fact or law and that Google is losing patience with the gamesmanship of Oracle counsel in this matter. Google asserts:

. . . Magistrate Judge overlooked relevant intrinsic and extrinsic evidence, and reached a variety of erroneous legal conclusions, on the way to ruling that Google failed to establish any link between the Lindholm email and Google’s internal legal investigation of Oracle’s claims.

The Magistrate Judge’s decision guts Upjohn. It improperly overburdens attorney-client communications. It requires the employee to include specific references to lawyers, litigation, or legal advice in every communication sent to a lawyer. If the employee fails to add such boilerplate allusions, the missing context cannot be supplied by declarations connecting the communication to lawyers, litigation, or legal advice. The effect is that a lawyer will be less likely to reach out to a low-level employee for fear that the employee will respond with a privilege-destroying email. The quality of legal advice to corporate clients will decline; for it is “only natural that [low- and mid-level] employees would have the relevant information needed by corporate counsel if he is adequately to advise the [corporate] client . . . .” Id. at 391

. . . Oracle tries to capitalize on its violation of the protective order by arguing that Google waived privilege because of its lawyer’s surprised reaction to questions about the email. Google has explained why the surprised reaction of a lawyer when confronted with a document for the first time is irrelevant to the application of attorney-client privilege. Oracle responds that the Court should discredit this argument because there is no declaration from Google’s lawyers confirming that they were “surprised” by the email. The notice provisions of the stipulated protective order are designed to preempt this type of after-the-fact dispute about the use of Highly Confidential documents in public hearings. Oracle violated the protective order and should not be allowed to benefit from that violation.

Oracle also argues that Google waived privilege by operating a search engine that facilitates access to third-party web pages displaying quotations from the Lindholm email. But Google cannot and does not control the content of third-party web pages. Google has taken every reasonable measure to protect against Oracle’s public dissemination of the Lindholm email. It is irrelevant to the privilege analysis that third parties have quoted the email on blog postings and other web pages. Indeed, that is a direct result of Oracle’s violation of the protective order. Again: Oracle cannot exploit the results of its own misconduct to destroy a document’s privileged status.

Third, Oracle’s waiver argument should be understood as the latest move in a cynical game that Oracle has been playing—a game of damned-if-you-do-and-damned-if-you-don’t. On the one hand, Oracle chastises Google for failing to quote the language of the Lindholm email in its brief, failing to provide a detailed explanation of what the content of the email means, and failing to tie its witness declarations (even) more closely to the email by describing its contents.

This is not an entirely new motion; rather, it is an extension of the earlier motion and identifies four additional instances where Google believes Oracle is attempting to introduce new infringement contentions through Prof. Mitchell's Patent (Reply) Report.

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

Docket

472 – Filed and Effective: 09/29/2011
REPLY
Document Text: REPLY (re 441 MOTION For Relief From Nondispositive Pretrial Order of Magistrate Judge ) filed by Google Inc.. (Van Nest, Robert) (Filed on 9/29/2011) (Entered: 09/29/2011)

473 – Filed and Effective: 09/29/2011
MOTION
Document Text: Second MOTION to Strike Portions of the Mitchell Patent Report filed by Google Inc.. Motion Hearing set for 10/13/2011 08:00 AM in Courtroom 8, 19th Floor, San Francisco before Hon. William Alsup. Responses due by 10/4/2011. Replies due by 10/6/2011. (Attachments: # 1 Declaration Banner Decl., # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Proposed Order Proposed Order)(Sabnis, Cheryl) (Filed on 9/29/2011) (Entered: 09/29/2011)

474 - Filed and Effective: 09/30/2011
Minute Entry
Minute Entry: Further Settlement Conference held. Further settlement discussions to be scheduled. (ofr, COURT STAFF)

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

Documents

472:

KEKER & VAN NEST LLP
ROBERT A. VAN NEST - #84065
[email]
CHRISTA M. ANDERSON - #184325
[email]
STEVEN A. HIRSCH - #171825
[email]
[address, phone, fax]

KING & SPALDING LLP
SCOTT T. WEINGAERTNER (Pro Hac Vice)
[email]
ROBERT F. PERRY
[email]
BRUCE W. BABER (Pro Hac Vice)
[email]
[address, phone, fax]

KING & SPALDING LLP
DONALD F. ZIMMER, JR. - #112279
[email]
CHERYL A. SABNIS - #224323
[email]
[address, phone, fax]

IAN C. BALLON - #141819
[email]
HEATHER MEEKER - #172148
[email]
GREENBERG TRAURIG, LLP
[address, phone, fax]

Attorneys for Defendant
GOOGLE INC.

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

REPLY IN SUPPORT OF GOOGLE’S
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

I. INTRODUCTION

Google’s opening brief showed that the Magistrate Judge overlooked relevant intrinsic and extrinsic evidence, and reached a variety of erroneous legal conclusions, on the way to ruling that Google failed to establish any link between the Lindholm email and Google’s internal legal investigation of Oracle’s claims. Oracle responds with a ridiculous argument that the declarations submitted by Google—which link the Lindholm email to Google’s legal investigation of Oracle’s infringement claims—actually refer to some other, hypothetical email and not the Lindholm email. Oracle never identifies this other, mystery email—nor could it, since the entire argument is a fiction.

The declarations submitted by Google established that (1) on August 6, 2010 Mr. Lindholm sent an email to in-house attorney Ben Lee; (2) the email reported on an investigation of the technology Oracle had just accused Google of infringing; (3) Mr. Lindholm conducted his investigation at Mr. Lee’s direction; and (4) Mr. Lindholm sent the email to assist Google’s legal analysis of Oracle’s infringement claims.

Magistrate Judge Ryu did not discredit those declarations—indeed, she disclaimed any such intention at the hearing. Instead, she appears to have reached an erroneous legal conclusion—reviewed de novo—that an email between a lower-level employee and in-house counsel cannot be deemed privileged if it does not refer expressly to litigation, and that declarations are ineffective to explain the privileged context of such an email after the fact.

Oracle responds by rewriting the Magistrate Judge’s decision to hold that the declarations were not credible and in fact represented an attempt to mislead the Court by discussing a different August 6, 2010 email from Tim Lindholm to Ben Lee. But Oracle’s argument is baseless. First, there is no such email. Second, the Lindholm and Lee declarations expressly state that they refer to the Lindholm email sought in Oracle’s motion to compel; and both declarations refer to the Lindholm email by its specific privilege-log numbers.

Oracle’s argument is meant to distract the Court from the Magistrate Judge’s key legal error: namely, that her ruling violates the principles laid down in Upjohn by stripping privilege from communications between low-level employees and corporate counsel unless the employee

1

includes specific references to threatened litigation in each of those communications. The Magistrate Judge’s ruling also contains or necessarily implies the following legally erroneous propositions, which this Court reviews de novo:

• A communication discussing IP licensing must concern non-legal business negotiations and therefore cannot be privileged.
• An investigation by in-house counsel relating to threatened legal claims cannot be privileged if ordered by management.
• Because Mr. Lee is an in-house attorney, Google must make a heightened showing that the Lindholm email related to a request for legal advice.

Each of those holdings was wrong for reasons explained in Google’s opening brief and below. The Magistrate Judge’s Order also rests on clearly erroneous factual findings. The Magistrate Judge disregarded the evidence of privilege contained in the Lindholm and Lee declarations and the evidence of privilege on the face of the Lindholm email. Oracle merely insists, ipse dixit, that the Magistrate Judge must have “carefully considered” the evidence because she made some mention of it. Oracle is wrong. The Magistrate Judge did not “carefully consider” this evidence. Rather, she made factual findings that are speculative, directly contradicted by the evidence, and therefore clearly erroneous.

Accordingly, the Court should grant the relief set forth in Google’s Proposed Order.¹

II. LEGAL ARGUMENT

A. This Court should review de novo and set aside the Magistrate Judge’s erroneous legal holdings, and also set aside her clearly erroneous factual findings.

Oracle’s opposition states that “the decision of the Magistrate judge is entitled to great deference.”² Not so. Under Federal Rule of Civil Procedure 72(a), “[t]he Magistrate’s legal conclusions are reviewed de novo to determine whether they are contrary to law.” Perry v. Schwarzenegger, 268 F.R.D. 344, 348 (N.D. Cal. 2010). “When . . . review of a non-dispositive motion by a district judge turns on a pure question of law, that review is plenary under the ‘contrary to law’ branch of the Rule 72(a) standard.” PowerShare, Inc. v. Syntel, Inc., 597 F.3d

2

10, 14-15 (1st Cir. 2010) (emphasis added). De novo review means “no deference,” not “great deference.”

Even as to factual findings, the “clearly erroneous” standard does not mean that the court simply “rubber stamps” the Magistrate Judge’s findings. See William W. Schwarzer, et al., FEDERAL CIVIL PROCEDURE BEFORE TRIAL (Rutter Group) (2011), 16:278. Rather, the court must review the entire record and set aside factual findings if it is left with the definite and firm conviction that error has been committed. Perry, 268 F.R.D. at 344.

B. The Magistrate Judge’s decision undermines Upjohn by stripping privilege from communications between low-level employees and counsel unless the employee remembers to refer to a specific threat of litigation in every communication.

Corporate counsel need to be able to communicate freely with low-level employees in order to gather information, develop legal advice, and relay that advice to corporate decisionmakers. That is the premise of Upjohn Co. v. United States, 449 U.S. 383, 389 (1981).

The Magistrate Judge’s decision guts Upjohn.³ It improperly overburdens attorney-client communications. It requires the employee to include specific references to lawyers, litigation, or legal advice in every communication sent to a lawyer. If the employee fails to add such boilerplate allusions, the missing context cannot be supplied by declarations connecting the communication to lawyers, litigation, or legal advice. The effect is that a lawyer will be less likely to reach out to a low-level employee for fear that the employee will respond with a privilege-destroying email. The quality of legal advice to corporate clients will decline; for it is “only natural that [low- and mid-level] employees would have the relevant information needed by corporate counsel if he is adequately to advise the [corporate] client . . . .” Id. at 391

The Magistrate Judge’s decision is rife with legal errors that undermine Upjohn and are subject to de novo review. Even if some or all of the errors discussed below are deemed “factual” in nature, however, they all meet the “clear error” standard.

3

1. Contrary to law, the Magistrate Judge concluded that a communication is not privileged unless it expressly discusses litigation or legal advice—a conclusion to be reviewed de novo.

The Magistrate Judge assumed that an email to counsel containing the phrase “Attorney Work Product” relates purely to “business negotiations” unless the “content of the email” specifically discusses litigation or legal advice. This is contrary to law. There is no requirement that an email expressly request or refer to litigation in order to be eligible for privilege. See In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 806 (Fed. Cir. 2000). This is particularly true where, as here, the email’s author and one of its recipients have submitted declarations establishing that the email concerns a legal investigation into the claims at issue in this lawsuit.

2. Contrary to law, the Magistrate Judge concluded that a communication discussing IP licensing must concern “business negotiations” and cannot be privileged—a conclusion to be reviewed de novo.

The Magistrate Judge held that the Lindholm email concerned “strategy discussions” about “business negotiations” and therefore, as a matter of law, must be unrelated to Oracle’s litigation threat. But “[c]alling the lawyer’s advice ‘legal’ or ‘business’ advice does not help in reaching a conclusion; it is the conclusion.” United States v. Chen, 99 F.3d 1495, 1502 (9th Cir. 1996). The true question is whether the proponent has established that the communication was sent to or from a legal advisor, in his capacity as such. Id.; see also Upjohn, 449 U.S. at 394. Moreover, there is no bright line between license negotiations and IP litigation, as licenses are a typical component of settlements involving an IP dispute.⁴ Thus, there is not, and cannot be, a rule that communications about licensing negotiations are ipso facto not privileged.

3. Contrary to law, the Magistrate Judge concluded that an investigation in response to threatened litigation cannot be privileged if executive management orders or supervises the investigation—a conclusion to be reviewed de novo.

The purpose of most corporate legal investigations is to offer legal advice to top management. Indeed, that was precisely the scenario in Upjohn, where the Supreme Court noted that “[t]he communications at issue were made by Upjohn employees to counsel for Upjohn

4

acting as such, at the direction of corporate superiors in order to secure legal advice from counsel.” 449 U.S. at 394 (emphasis added). Mr. Lindholm’s investigation in this case was no different. As Google’s declarations established, Mr. Lindholm, while acting under in-house counsel Ben Lee’s direction, investigated facts related to Oracle’s infringement claims and communicated that information to Mr. Lee so that he and General Counsel Kent Walker could develop legal advice and convey that advice to executive management. The Lindholm email is privileged, regardless of who ultimately “ordered” the investigation.

4. Contrary to governing Ninth Circuit law, the Magistrate Judge concluded that a “clear showing” is required to establish privilege where the communication is sent to or from in-house counsel—a conclusion to be reviewed de novo.

The Ninth Circuit has held that “[i]n determining the existence of privilege, no attempt is made to distinguish between ‘inside’ and ‘outside’ counsel.” United States v. Rowe, 96 F.3d 1294, 1296 (9th Cir. 1996). Moreover, even if the “clear showing” standard applied here, the Magistrate Judge’s ruling still would be contrary to law because she failed to consider an important corollary of the “clear showing” standard: “[T]here is a rebuttable presumption that a lawyer in the legal department or working for the general counsel is most often giving legal advice.” Boca Investerings P’ship v. United States, 31 F. Supp. 2d 9, 12 (D.D.C. 1998).

Oracle argues that this rebuttable presumption is “unavailing [sic] to Google, as it has provided no evidence whatsoever about Mr. Lee’s role at Google.”⁵ Oracle is mistaken. Mr. Lee’s declaration states: “At the time I received Mr. Lindholm’s email I was Senior Counsel for Google.”⁶ Mr. Lee’s title shows that he worked in the legal department, and his declaration also describes his work for General Counsel Kent Walker.⁷ Under these circumstances, the Magistrate Judge’s use of the “clear showing” standard was contrary to law.

C. The Magistrate Judge’s factual findings were clearly erroneous because she disregarded competent testimony and engaged in counterfactual speculation.

The rest of Google’s objections challenge the Magistrate Judge’s clearly erroneous

5

factual findings, which arose because she overlooked the evidence establishing the privilege and speculated about a separate, non-litigation-related “business negotiation” that did not occur at the time of the Lindholm email and that was not discussed in that email. The Lee and Lindholm declarations say nothing about a non-legal “business negotiation” taking place at or around the time of the Lindholm email, and Mr. Lindholm expressly declared that his August 6, 2010 email was not intended as “general business advice” about Android’s ongoing operations.¹⁸

The Magistrate Judge overlooked this evidence, as well as the evidence that the email concerned the accused technology, was written soon after Oracle had charged Google with infringement, and was addressed to the lawyer charged with overseeing Google’s legal investigation of Oracle’s claims.

In defense of the Magistrate Judge’s clearly erroneous factfinding, Oracle argues that the Lee and Lindholm declarations are unworthy of consideration because they discuss some email other than the Lindholm email. Oracle implies that Google’s lawyers tried to bamboozle the Magistrate Judge, and now this Court, by submitting declarations that appeared to be about the Lindholm email (which was wholly unrelated to the legal investigation) while actually describing some other, unidentified email (which was related to the legal investigation). In Oracle’s words: “The reasonable conclusion is that the investigation of technical alternatives described in the [Lindholm email] is not the legal advice described by Mr. Lee and Mr. Lindholm.”⁹

This baseless charge must be rejected for at least three reasons.

First, the Lee and Lindholm declarations are absolutely unambiguous about what email they are referring to. Both identify the specific privilege-log numbers of Mr. Lindholm’s August 6, 2010 email, and both state that they understand that that email is the subject of Oracle’s

6

motion to compel.¹⁰ No stronger tie to the Lindholm email was possible because the declarations could not attach and incorporate the Lindholm email and drafts without waiving privilege. “The proper procedure for asserting the attorney-client privilege as to particular documents” is to “submit them in camera for the court’s inspection, providing an explanation of how the information fits within the privilege.” In re Horn, 976 F.2d 1314, 1318 (9th Cir. 1992). And Magistrate Judge Ryu required the parties to file and serve their declarations; she restricted in camera submission to the Lindholm email and drafts themselves.¹¹

Second, Oracle tries to mislead the Court when it observes that there are “no fewer than 170 separate entries for emails from Mr. Lindholm to Mr. Lee ‘on or about August 6, 2010’”— implying that the Lee and Lindholm declarations could be discussing any one of those 170 other emails.¹² What Oracle fails to inform the Court is that every one of those entries other than the Lindholm emails and drafts is dated August 5, 2010—not August 6, 2010. See id. By contrast, the Lindholm declaration discusses his August 6, 2010 email and no other.¹³ And the Lindholm and Lee declarations both refer to the precise privilege-log numbers of the August 6, 2010 email.

Third, Oracle’s argument strains credulity by requiring the Court to believe that, at the very time when Mr. Lindholm and Mr. Lee were communicating about a legal investigation into Oracle’s infringement claims, they also were communicating about a wholly unrelated “business negotiation” that just happened to concern the exact same parties and the exact same technology. Oracle then asks the Court to infer that some other undisclosed August 6, 2010 email—and not

7

the Lindholm email—is the subject of the Lindholm and Lee declarations. But Google’s privilege log lists no August 6, 2010 email from Mr. Lindholm to Mr. Lee, other than the Lindholm email and drafts.¹⁴ This other, mystery email simply does not exist.

Oracle’s desperate attempts to justify the Magistrate Judge’s ruling reveal the weakness of its position. Google established the elements of the attorney-client privilege. To the extent that it turns on factual findings (as opposed to legal error), the Magistrate Judge’s ruling that Google failed to establish a link between the Lindholm email and the legal investigation described in the declarations should be set aside as clearly erroneous.

D. Oracle’s waiver arguments, which the Magistrate Judge did not reach, are meritless.

Recognizing the flaws in the decisions Magistrate Judge Ryu did make, Oracle attempts to argue the merits of a decision she did not make: namely, that Google waived privilege.

Oracle’s waiver argument is pure gamesmanship. First, Oracle blindsided Google by quoting the Lindholm email in court without providing advance notice to Google as required by the stipulated protective order. Oracle argues that it provided the required notice because it identified the Lindholm email as Highly Confidential immediately before reading it into the record at the July 21 hearings.¹⁵ Oracle is wrong. The protective order contemplates notice before the hearing, not during. That is why the order requires notice if a party “reasonably expect[s] a . . . hearing to include Protected Material.”¹⁶ Oracle plainly expected that the July 21 hearings would include the Lindholm email; indeed, Oracle brought the email to the Daubert hearing in this Court and had it at the ready to quote in the telephonic hearing before Magistrate Judge Ryu. Under these circumstances, Oracle cannot plausibly argue that it had no obligation to provide pre-hearing notice to Google. Yet, Oracle did not provide such notice.

Second, Oracle tries to capitalize on its violation of the protective order by arguing that Google waived privilege because of its lawyer’s surprised reaction to questions about the email.

8

Google has explained why the surprised reaction of a lawyer when confronted with a document for the first time is irrelevant to the application of attorney-client privilege. Oracle responds that the Court should discredit this argument because there is no declaration from Google’s lawyers confirming that they were “surprised” by the email.¹⁷ The notice provisions of the stipulated protective order are designed to preempt this type of after-the-fact dispute about the use of Highly Confidential documents in public hearings. Oracle violated the protective order and should not be allowed to benefit from that violation.

Oracle also argues that Google waived privilege by operating a search engine that facilitates access to third-party web pages displaying quotations from the Lindholm email. But Google cannot and does not control the content of third-party web pages.¹⁸ Google has taken every reasonable measure to protect against Oracle’s public dissemination of the Lindholm email. It is irrelevant to the privilege analysis that third parties have quoted the email on blog postings and other web pages. Indeed, that is a direct result of Oracle’s violation of the protective order. Again: Oracle cannot exploit the results of its own misconduct to destroy a document’s privileged status.

Third, Oracle’s waiver argument should be understood as the latest move in a cynical game that Oracle has been playing—a game of damned-if-you-do-and-damned-if-you-don’t. On the one hand, Oracle chastises Google for failing to quote the language of the Lindholm email in its brief, failing to provide a detailed explanation of what the content of the email means, and failing to tie its witness declarations (even) more closely to the email by describing its contents.¹⁹

On the other hand, Oracle maintains that Google has waived privilege because “Google itself argued the substance” of the Lindholm email at the July 21 hearings.²⁰ In sum: If Google explains the substance of the document, Oracle argues that privilege is waived.²¹ If Google

9

limits its submissions to the facts necessary to establish that the email is privileged, Oracle portrays those facts as “generalized assertions” that are insufficient to overcome “specific statements in the email.”²² Indeed, Oracle now has gone even further by suggesting that the declarations may be about some other email. Magistrate Judge Ryu’s reasoning suffers from similar flaws by focusing solely (if inaccurately) on the “content of the email” while disregarding all of the other evidence—including Mr. Lindholm’s and Mr. Lee’s declarations—that puts the email into its proper legal context.

In drafting its declarations, Google took care to avoid waiver claims while including all true and accurate facts supporting its claim of privilege. Google struck the proper balance between these competing concerns. It did not waive the privilege, and Oracle’s insistence that it did shows that the Magistrate Judge’s order cannot be defended on its own terms.

III. CONCLUSION

For the reasons stated above and in all the papers, declarations, and exhibits submitted to Magistrate Judge Ryu and to this Court, both publicly and in camera, the Court should grant the relief requested in Google’s Proposed Order.²³

Dated: September 29, 2011

Respectfully submitted,

KEKER & VAN NEST LLP

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

_______________________

¹ Dkt. No. 442.

² Opp. at 6:12-13.

³ Rather than addressing Upjohn, Oracle argues that the case cannot be relevant because Google did not cite it in its “brief” to Magistrate Judge Ryu. Oracle fails to mention that Google had roughly eight hours and exactly five pages in which to respond to Oracle’s long-planned motion to compel (Dkt. No. 277), and that the primary focus of Oracle’s motion was that Google had waived any privilege. Upjohn doesn’t concern waiver. Magistrate Judge Ryu evidently discerned Upjohn’s relevance, as she cited the case in her written order. Dkt. No. 361 at 7:8-9.

⁴ See, e.g, Jacobs v. Nintendo of Am., Inc., 370 F.3d 1097, 1098-99 (Fed. Cir. 2004); Hemstreet v. Spiegel, Inc., 851 F.2d 348, 349 (Fed. Cir. 1988); Therasense, Inc. v. Becton, Dickinson & Co., C 04-02123 WHA, 2008 WL 2323856 (N.D. Cal. May 22, 2008) (Alsup, J).

⁵ Dkt. No. 467 at 13:18-19.

⁶ Lee Decl. at ¶ 1.

⁷ Lee Decl. at ¶¶ 3-4.

⁸ Lindholm Resp. Decl. at ¶ 7. Oracle quarrels with Mr. Lindholm’s statement, arguing that it “leaves open the reasonable possibility” that he was providing “specific advice” about technology alternatives or business strategies. This argument is absurd. Mr. Lindholm’s declaration establishes that his email concerned an ongoing legal investigation into Oracle’s infringement claims. The email did not address a non-legal business negotiation and it did not address a business strategy, general or specific. It is Google’s burden to establish the grounds for asserting privilege, not to rebut every imaginative speculation or strained interpretation that a creative mind could devise.

⁹ Dkt. No. 467 at 10:17-19.

¹⁰ Lindholm Decl. at ¶¶ 2, 8; Lee Decl. at ¶¶ 1, 9. Oracle urges the Court to disregard these references because Mr. Lee and Mr. Lindholm “incorrectly identified” one of the privilege log entries associated with the Lindholm email in their original declarations. Dkt. No. 467 at 3:23- 4:1, 9:16-21. Oracle fails to mention that the entry Mr. Lee and Mr. Lindholm “incorrectly identified” was in fact another auto-saved draft of the Lindholm email. Dkt. No. 299 (Original Lindholm Decl.) at ¶ 8; Dkt. No. 301 (Original Lee Decl.) at ¶ 9. Google’s lawyers discovered that that entry was an auto-save after submitting the declarations.

¹¹ Dkt. No. 286 at 1:12-17 (ordering the parties to “lodge, and not file” the Lindholm email and drafts, and to “file with the court” sworn declarations supplying the factual information relevant to the privilege analysis.

¹² Dkt. No. 467 at 4:2-3 (emphasis added).

¹³ Lindholm Decl. at ¶ 2; ¶ 8 (declaring: “On August 6, 2011, at 11:05 a.m., I sent an email reporting to Mr. Lee . . . .”

¹⁴ See Dkt No. 336, Ex. 1.

¹⁵ Dkt. No. 467 at p. 5 n. 3.

¹⁶ Dkt. No. 66 at 7:1-4 (emphasis added).

¹⁷ Dkt. No. 467 at 14:3-10.

¹⁸ Declaration of Matt Cutts (Dkt. No. 332) at ¶ 5.

¹⁹ Dkt. No. 467 at 12:14-25.

²⁰ Dkt. No. 467 at 15:4-6.

²¹ Oracle recently served upon Google a motion in limine that attempts to exclude evidence or argument explaining the meaning of the content in the Lindholm email.

²² Dkt. No. 467 at 3:10-19.

²³ Dkt. No. 442.

10

473:

ROBERT A. VAN NEST (SBB 84065)
[email]
CHRISTA M. ANDERSON (SBN 184325)
[email]
KEKER & VAN NEST LLP
[address, phone, fax]

DONALD F. ZIMMER, JR. (SBN 112279)
[email]
CHERYL A. SABNIS (SBN 224323)
[email]
KING & SPALDING LLP
[address, phone, fax]

SCOTT T. WEINGAERTNER (Pro Hac Vice)
[email]
ROBERT F. PERRY
[email]
BRUCE W. BABER (Pro Hac Vice)
[email]
KING & SPALDING LLP
[address, phone, fax]

IAN C. BALLON (SBN 141819)
[email]
HEATHER MEEKER (SBN 172148)
[email]
GREENBERG TRAURIG, LLP

Attorneys for Defendant
GOOGLE INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

ORACLE AMERICA, INC.,

Plaintiff,

v.

GOOGLE INC.,

Defendant.

__________________

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

Honorable Judge William Alsup

Hearing Date: October 13, 2011
Hearing Time: 8:00 a.m.

DEFENDANT GOOGLE INC.’S SECOND
MOTION TO STRIKE PORTIONS OF
THE MITCHELL PATENT REPORT

PLEASE TAKE NOTICE that on October 13, 2011 at 8:00 a.m., or as soon thereafter as counsel may be heard, Defendant Google Inc. (“Google”) will, and hereby does, respectfully move to strike portions of the Expert Reports of John C. Mitchell Regarding Patent Infringement (the “Mitchell Report,” Ex. A; “Mitchell Reply Report,” Ex. B). This Motion is based on the following memorandum of points and authorities in support, the Declaration of Brian C. Banner (“Banner Decl.”) and accompanying exhibits, the entire record in this matter and on such evidence as may be presented at a hearing on this motion.

INTRODUCTION

In accordance with the Court’s Order granting leave to file an additional motion to strike (Dkt. No. 464 at 8), Google raises herein additional critiques of the Mitchell Report, and in other instances, critiques of Dr. Mitchell’s Reply report. In presenting the critiques below, Google is mindful of the stated rationale in the Court’s Order and only identifies issues that align with that guidance. This motion starts with Critique “D” to avoid overlapping with critiques A-C in the first motion.

CRITIQUE D – To Demonstrate Infringement of the ‘720 patent, the Mitchell Report Adds New Theories Regarding Android’s Use of The Functions vfork() and clone()

Oracle’s infringement contentions (“ICs”) allege that Android infringes asserted claims of the ‘720 patent by way of the fork() cloning mechanism in the Linux kernel (a software layer beneath the Dalvik VM). (See Ex. C, Oracle’s claim chart on the ‘720 patent at 15-17). In connection with asserted claim 1 of the ‘720 patent, Dr. Mitchell relies on this theory and claims that “[t]he Linux fork executed by Android provides the ‘copy-on-write process cloning mechanism’ in its fork() system call.” (Ex. A at ¶ 606.) Dr. Mitchell then adds that “Linux provides additional ‘process cloning mechanisms’ in its vfork() and clone() system calls” and even quotes a book that explains the distinctions between the “fork(), vfork(), and clone() System Calls.” (Id. (emphasis added).)

Neither of the vfork() and clone() mechanisms were ever identified in Oracle’s ICs. Like the TreeMap theory in Google’s first motion, these are new theories that Oracle failed to disclose previously. They qualify as a new theory because Oracle is not asserting that vfork() or clone()

1

are part of its fork() theory, of a more detailed explanation thereof. Rather, Oracle is asserting that these mechanisms can be used instead of the fork() theory in its ICs.

This distinction is of particular importance in regard to asserted claim 6. Whereas Oracle’s ICs for claim 6 identify only the fork() mechanism as meeting various claim elements (Ex. C at 34-35), Dr. Mitchell’s report does not rely on fork() and instead relies exclusively on the clone() mechanism. (See Ex. A at ¶¶ 622-627.) Dr. Mitchell identifies a feature of clone() called the “CLONE_VM flag” (id. at ¶ 624) and explains that when the “CLONE_VM flag” is not set, the clone() mechanism allegedly infringes claim 6. (See id. at ¶¶ 624, 627.)

It is firmly established that a plaintiff cannot introduce infringement theories that were not disclosed in its ICs. See O2 Micro Intern. Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 n.12 (Fed. Cir. 2006) (citing Nova Measuring Instruments Ltd. v. Nanometrics, Inc., 417 F. Supp. 2d 1121, 1123 (N.D. Cal. 2006) (“The [patent local] rules are designed to require parties to crystallize their theories of the case early in the litigation and to adhere to those theories once they have been disclosed.” (emphasis added))).

Accordingly, Google respectfully requests that the Court strike from the Mitchell Report the relevant portion of ¶ 606 and all of ¶¶ 622-627 because they improperly refer to and rely upon the vfork() and clone() mechanisms that were not identified in Oracle’s ICs.

CRITIQUE E – The Mitchell Report Improperly Adds A New “mBS Mobile” Infringement Theory for the ‘476 Patent

Oracle’s ICs for the ‘476 Patent generally allege that certain API libraries within Android’s operating system provide the security functionality claimed in the ‘476 Patent. But an introductory section of the Mitchell Report that precedes his detailed infringement analyses appears to offer a very different theory of infringement. In particular, Dr. Mitchell identifies a third party Android application called “mBS Mobile” and notes that “mBS Mobile is shipped with the Java Security Manager turned on and a default security policy…” (Ex. A at ¶¶ 70, 77.)^*1

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Dr. Mitchell appears to be arguing that, instead of the security functionality being entirely provided by Android’s source code, a foreign, third party application could theoretically be installed on an Android device and provide its own security functionality that interacts with Android code to practice the ‘476 Patent.^*2 While Google cannot guess at what Oracle attempts to achieve here, it knows that there was no mention of mBS Mobile anywhere in Oracle’s ICs. Thus, Dr. Mitchell should be precluded from offering any infringement theories in connection with the mBS Mobile product. For example, if Oracle contends mBS Mobile is relevant for indirect infringement, it should have been disclosed pursuant to Patent L.R. 3-1(d). See generally Bender v. Advanced Micro Devices, Inc., No. 09-cv-01152, 2010 U.S. Dist. LEXIS 89957 at *9 (N.D. Cal. July 29, 2010) (“plaintiff must identify each accused product and link it to a representative product [claim chart] in order to provide [the defendant] with fair notice of the specific products which are accused in this lawsuit.”)

Accordingly, Google respectfully requests that paragraph 70 and 77 be stricken from the Mitchell Report, or alternatively, Dr. Mitchell be precluded from offering any infringement theories based on mBS Mobile.

CRITIQUE F – The Mitchell Reply Report Adds a New Infringement Theory Regarding the ‘476 Patent

Oracle’s ICs allege that asserted claims of the ‘476 Patent are met, in part, by execution of the SecurityManager class (which has been disabled in Android). (See Ex. D, Oracle’s claim chart on the ‘476 patent at 5, 20-21 (use of SecurityManager) and 74-76 (asserted claims 13-15).) Dr. Mitchell similarly identifies execution of the SecurityManager class as meeting Claim 10, “element B” of the ‘476 patent. (See Ex. A at ¶¶ 734-36; 763.)

A new theory appearing for the first time in Dr. Mitchell’s Reply Report posits that, for the‘476 patent, “[e]ven if the SecurityManager is disabled, the Java security framework may still be used . . .” (See Ex. B at ¶ 115 (emphasis added).) Although Dr. Mitchell is vague on the

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details, he is essentially offering a new infringement theory that departs from Oracle’s earlier allegations in that it does not require execution of the SecurityManager class.

Just because Oracle’s existing infringement theories have not been borne out does not give it a license to posit new theories, after discovery, in a reply report. The entirety of paragraph 115 of the Reply report should be stricken because it represents a new infringement theory that was never previously disclosed by Oracle. See Nova, 417 F. Supp. 2d at 1123 (“The [patent local] rules are designed to require parties to crystallize their theories of the case early in the litigation and to adhere to those theories once they have been disclosed.” (emphasis added))). Furthermore, paragraph 115 of the Reply report should be stricken because the Court specifically instructed the parties that “[r]eply reports must be limited to true rebuttal and should be very brief. They should not add new material that should have been placed in the opening report…” Case Management Order, Dkt. No. 56 at ¶ 8.

CRITIQUE G – The Mitchell Reply Report Adds New Infringement Theories Regarding the ‘520 Patent

According to the infringement theory presented in Oracle’s ICs, Android’s dx tool allegedly infringes the asserted claims of the ‘520 patent where it successfully creates a single new instruction, referred to as a fill-array-data instruction, that replaces a less efficient series of Java bytecode instructions for initializing individual elements of a static array. Specifically, Oracle’s ICs allege that the asserted claims are met when the dx tool calls the parseNewarray() method to identify the static initialization of an array, and creates a single fill-array-data instruction for initializing the static array. (See Ex. E, Oracle’s claim chart on the ‘520 patent at 15-20 (pointing to the parseNewarray() method as satisfying “simulating execution” step), 20 (identifying slides 41-45 of the Dalvik Presentation as satisfying the “storing . . . an instruction” step) and at 29-30 (showing the fill-array-data instruction in the dx tool output).) In his opening Report, Dr. Mitchell relies upon this same theory of infringement for the ‘520 patent claims. (See, e.g., Ex. A at ¶¶ 524, 526, 541.)

In his Reply Report, Dr. Mitchell presents two new theories of infringement that were not disclosed in Oracle’s ICs. The first new theory posits that the dx tool can infringe the ‘520

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patent claims by “creat[ing] (and stor[ing]) one or more instructions requesting the static initialization of the array.” (Ex. B at ¶ 92 (emphasis added).) This new theory departs from Oracle’s ICs, where Oracle’s infringement theory is limited to instances where the dx tool allegedly creates a single fill-array-data instruction for initializing a static array. (See, e.g., Ex. A at ¶¶ 524, 526, 541.) In contrast, Dr. Mitchell’s new allegations of infringement now include instances where more than one instruction is created.

The second new theory presented for the first time in Dr. Mitchell’s Reply Report posits that an unsuccessful simulated execution can somehow infringe the ‘520 patent, meaning that the claimed step of “simulating execution” doesn’t need to identify a series of instructions for initializing individual elements of the array. Now, just translating the less efficient series of Java bytecode instructions for initializing individual elements of the array into a functionally identical series of Dalvik instructions is allegedly sufficient to infringe the ‘520 patent. Dr. Mitchell explains: “The claims do not require the simulating step to succeed in identification of the static initialization of the array in all cases,” and that code without the fill-array-data instruction “is evidence of infringement, because . . . [the resulting] instructions [are] fewer than the original number of bytecodes from the .class file.” (Ex. B at ¶ 92.)

This theory bears no resemblance to Oracle’s original theory, which required the creation of the new fill-array-data instruction. In its place, Dr. Mitchell’s new theory suggests that any translation of a Java bytecode array initialization sequence would infringe as long as the resulting code has fewer instructions than were present in the original Java .class file.

Dr. Mitchell’s attempt at introducing two new theories of infringement is improper. Accordingly, the “one or more instructions” phrase and the last three sentences of paragraph 92 of the Reply report should be stricken. See Nova, 417 F. Supp. 2d at 1123 (“The [patent local] rules are designed to require parties to crystallize their theories of the case early in the litigation and to adhere to those theories once they have been disclosed.” (emphasis added)).

CONCLUSION

For the forgoing reasons, Google respectfully requests the Court grant the relief it deems appropriate, such as an order providing that:

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(a) Oracle and its experts cannot refer to or rely upon new theories concerning the vfork() and clone() mechanisms with respect to the ‘720 patent (i.e., a portion of ¶ 606 and ¶¶ 622-627);

(b) Oracle and its experts cannot refer to or rely upon any infringement theories based on mBS Mobile with respect to the ‘476 Patent (i.e., ¶¶ 70, 77);

(c) Oracle and its experts cannot refer to or rely upon any infringement theories for the ‘476 Patent that do not require the SecurityManager (i.e., Reply ¶ 115);

(d) Oracle and its experts cannot refer to or rely upon any infringement theories for the ‘520 patent where static array initialization is performed by more than one instruction (i.e., Reply ¶ 92); and

(e) Oracle and its experts cannot refer to or rely upon any infringement theories for the ‘520 patent that do not require the fill-array-data instruction (i.e., Reply ¶ 92).

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DATED: September 29, 2011

KING & SPALDING, LLP

By: /s/ Scott T. Weingaertner /s/
ROBERT A. VAN NEST (SBN 84065)
[email]
CHRISTA M. ANDERSON (SBN 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.

_______________

^*1 Paragraph 70 of Dr. Mitchell’s Report appears to relate to the ‘447 patent, which is no longer asserted in this case. However, paragraph 70 is an exact copy of paragraph 77, which appears to relate to the presently-asserted ‘476 patent. Because neither paragraph mentions either patent by name, Google moves to strike both paragraphs so that it is clear that the mBS Mobile product may not be offered as evidence of infringement of the ‘476 patent.

^*2 It doesn’t help that many of the web links cited in these paragraphs by Dr. Mitchell no longer work.

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I hereby attest that Scott T. Weingaertner concurs in the e-filing of this document.

Dated: September 29, 2011

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

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