You will recall that after the Judge Alsup issued his December 6 supplemental order the parties filed a joint stipulation on what they were to do. That stipulation provided:
In a substantial number of the instances cited by Oracle the fact witness they identified was either not provided during discovery or testified during discovery that he did not have the knowledge of the facts for which Oracle now elects to produce him. As Google points out in their response (Appendix B):
Not surprisingly, Oracle elects to castigate Google for the position Google has taken rather than refute the points that Google raises:
As to the issue of witnesses, Oracle argues that Google is somehow wrong in insisting that Oracle cannot now introduce new witnesses:
So the patent marking issue is no closer to being resolved than before with respect to the process ordered by Judge Alsup and stipulated to by the parties. The question is whether Oracle has (or even can) fulfill its obligations under the first step of the stipulated process. If it cannot, than this issue will be resolved quickly and in Google's favor.
[counsel listed on signature page]
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
ORACLE AMERICA, INC.
Plaintiff,
v.
GOOGLE INC.
Defendant.
Case No. CV 10-03561 WHA
JOINT STATEMENT REGARDING
ORACLE PRODUCTS
PRACTICING PATENTS
Dept.: Courtroom 8, 19th Floor
Judge: Honorable William H. Alsup
(1)
Pursuant to the Court's December 6, 2011 Supplemental Order
Regarding Patenting Marking (ECF No. 641) and the agreement between
the parties as set forth in their December 30, 2011 Joint Statement
Regarding Supplemental Order Regarding Patenting Marking (ECF No.
661), Plaintiff Oracle America, Inc. ("Oracle") and Defendant
Google Inc. ("Google") hereby submit the following statement
regarding Oracle products, Oracle-licensed products, Sun products,
and Sun-licensed products ("Oracle Products") that practice or have
practiced the asserted claims of the patents-in-suit
("claims-in-suit").
I. STIPULATION
Pursuant to Paragraph 3 of the parties' December 30, 2011 Joint
Statement Regarding Supplemental Order Regarding Patenting Marking
(ECF No. 661), the parties stipulate as follows:
JDK version 6 practices asserted claim 14 of the '476 patent;
and
JavaOS 1.1 practices asserted claim 7 of the '702 patent.
II. ORACLE'S STATEMENT
On October 21, 2011, Google filed a motion for partial summary
judgment, asking the Court to find, as a matter of law, that it was
not liable for damages for any infringement of five of the six
patents-in-suit before July 20, 2010, claiming undisputed facts
established Oracle was practicing the patents-in-suit but had not
marked its products. That motion was denied. Now, perhaps more
concerned about an injunction than patent marking in light of the
Court's recent damages rulings, Google has completely reversed
its position. Raising a host of evidentiary objections, Google
does a tactical about-face, and will agree only that two versions
of Oracle products practice two of the twenty-six claims at
issue in this case.
Following the denial of Google's summary judgment motion, the
Court ordered the parties to work together to streamline this issue
for trial. The parties stipulated to a procedure, based on a
proposal that originated with Google, under which Oracle would
identify which products it claims practice the patents and Google
would state whether it agreed or disagreed, and why. Oracle went to
great lengths to carry out its part of that stipulation. Google
ignored it, serving Oracle with a response consisting entirely of
objections instead of the information it agreed to
(2)
provide. Google's evidentiary objections have no place in this
procedure. The purpose of the stipulation was to try to avoid the
need to present evidence on these issues at trial. Having placed an
enormous burden on Oracle, Google is now essentially refusing to
engage in the narrowing process that it proposed (ECF No. 635 at 1,
3-4) and the Court ordered (ECF No. 636). For four of the patents
— the '104, '205, '520 and '720 — Google has provided
no useful information at all. At the last minute, Google agreed to
stipulate that one Oracle product practices the claim at issue in
the '476 patent, and that one Oracle product practices one of the
seven claims at issue in the '702 patent. Even as to these two
patents, Google has still not taken a position on whether the many
other products identified by Oracle practice the claims, and has
not squarely addressed the remaining six claims at issue in the
'702 patent.
Oracle identified its position as to all of the products and
claims at issue as the parties agreed, but Google is still playing
possum. Google should be required to comply with the parties'
December 30, 2011 Joint Statement and provide a clear statement of
which Oracle products it contends do, or do not, practice the
patents, and why.
A. Google Has Not Complied With The Parties' Stipulated
Procedure
When the Court denied Google's summary judgment motion on patent
marking, it expressed concern that the marking issue would "devolve
into an 'infringement' type analysis at trial of various Oracle
products and methods to determine if they practiced any of the
claims to be tried, throwing yet another complication into the
trial." (ECF No. 621 at 4.) The Court ordered the parties to work
together to find a way to mitigate this problem, ordering
specifically that "Both sides shall meet and confer in person and
devise a fully agreeable procedure regarding the marking statute."
(ECF No. 641 at 1.)
The parties subsequently stipulated that Oracle would identify
the products that practiced the 26 asserted claims, along with
"source code citations and/or other documentation" supporting its
contentions, fact witnesses and a summary of expected testimony.
(ECF No. 661.) Google, in turn, would respond by identifying "which
Oracle Products it contends do (or do not) practice the asserted
claims, and why." (Id.) Notably, this stipulation embodied a
process that was proposed by Google, in the November 30 statement
it filed with the Court:
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In short, Oracle needs to take a position on whether its
products or those of its licensees practice the patents-in-suit and
stick to it. Google proposes that by December 9, 2011, for
each of the 26 asserted patent claims, Oracle identify each Oracle
product or Oracle-licensed product that allegedly practices the
claim, and the time period during which the product allegedly was
marked. By December 16, Google will respond and identify
which contentions in Oracle's submissions it would be able to
stipulate to, and which contentions it will challenge at trial.
(ECF No. 635 at 3-4.) Google represented that: "The above
disclosures could resolve most, if not all, of the marking dispute,
and will significantly shorten the time that will need to be
allocated to this issue at trial." (Id. at 4 (emphasis
added).)
Google's representation made sense. Oracle had identified its
products embodying the claimed inventions early in the case, and
Google had ample opportunity to take discovery. And Google had just
moved for summary judgment on this issue, asking the Court to find
that Oracle practiced the patents. (ECF No. 552.)
Oracle satisfied its obligations, and expended more than a
hundred hours of its engineers' and attorneys' time complying with
the parties' agreed-upon procedure. For each of the six patents at
issue, Oracle identified the specific products, and versions of
products, that practice the patents, provided citations to source
code files, identified fact witnesses who could provide supporting
testimony, and summarized their expected areas of testimony. A copy
of Oracle's submission is attached to this Joint Statement as
Appendix A ("Oracle Response"). It was provided to Google, as the
parties agreed, on January 6, 2012.
But now Google has reversed course completely and has refused to
engage substantively in the issue-narrowing process it proposed.
Instead of responding with a statement identifying which Oracle
products it contends do, or do not, practice the patents, Google
served Oracle with a litany of objections. Google's response did
not, as the parties agreed, go through the list of products
identified by Oracle and state Google's position as to whether the
products practice the patents or not, and why. Nor did it identify
whether Google claims any additional products practiced the
patents, as Google was also required to do. (See ECF No. 661
at 2; Google Response, attached as Appendix B.) For three of the
patents — the '520, '702, and '476 patents — Google
simply ignored the question of which Oracle products practice the
patents. (Google Response at 9-14.) For the remaining three, the
'104, '205 and '720 patents, Google's only
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response was to state that according to the claim construction
provided by its own experts, no Oracle products practice the
patents. (Id. at 5-6, 8-9, 13-14.) This, of course, invites
precisely the infringement-type argument the Court was hoping to
avoid. Moreover, if Google intended to maintain these claim
construction positions, it never should have moved for summary
judgment on the marking statute, as the two arguments are mutually
exclusive. In the case of the '104 and '205 patents, Google's
contention that Oracle's products do not practice its own claims
turns on claim construction issues that Google has never presented
to the Court.
Google has stated that it does not want its response on the
patent marking issue to be used to impeach its experts on the issue
of infringement. To address this concern, Oracle offered to
stipulate that the parties' agreement regarding which Oracle
products practice the patents will not be used to support claim
construction or infringement arguments at trial. Google
refused.
The parties were directed by the Court to cooperate to try to
work out this issue. Google urged a procedure that required Oracle
to go first and identify the products that practiced the claims and
promised to respond. Google's position now is essentially that it
does not have to respond based on the evidentiary objections that
it is raising: during recent meet and confer on this issue, Google
has stated that it should not be required to respond because Oracle
does not have admissible evidence on these issues. As will be seen
below, Google's argument is based primarily on the incorrect claim
that 30(b)(6) deposition testimony — completed in the summer
of 2011, four months before it proposed this procedure
— was insufficient. Google also contends that it should not
have to respond because Oracle cannot present the right witnesses
at trial. But Google was also aware of its own contention when it
proposed the procedure, since it specifically referred to Oracle's
proposed trial witnesses in the November 30 statement in which it
argued that its procedure would save time by eliminating the need
to put this evidence on at trial. (See ECF No. 635 at 1
& n.2.)
If this was Google's position, it should never have proposed and
agreed to this process. Essentially all of the evidentiary
arguments it raises now were known to Google at the time it
stipulated to the procedure. Oracle spent an enormous amount of
time and resources relying upon
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the parties' agreement. Google should be required to comply with
the parties' December 30, 2011 Joint Statement immediately.
B. Google's Objections Are Meritless.
Google's numerous evidentiary objections have no place in the
joint statement procedure that the parties agreed to and the Court
ordered. The purpose of this procedure was for the parties to try
to reach agreement on which Oracle products practice the patents so
that, to the extent possible, the parties would not have to present
evidence on these issues at trial.
Nonetheless, Oracle feels it has little choice but to address
Google's objections, because Google's response consisted of little
else, and Oracle does not want the Court to be left with the
misimpression that these objections are valid. Google has
mischaracterized the record and Google's complaints principally
stem from its own failure to develop the record during
discovery.
1. The '104 Patent
Google's first objection to Oracle's identification of products
that practice the '104 patent is that it cannot respond because
Oracle supposedly failed "to actually cite any source code or
documentation" reflecting how the patent is practiced. (Google
Response at 3.) Google repeats this same rote objection for each of
the six patents-in-suit. (See id. at 6, 9, 11, 12, 13.) The
objection is baseless as to the '104 patent and as to the other
five patents as well. Oracle identified specific source code files
for each of the products it claims practices the six patents.
(See, e.g., Oracle Response at 2-12.) These are not "a
laundry list of names of various source code files" as Google
claims. (Google Response at 1.) To the contrary, Oracle has
identified specific source code files relevant to each product or
product version — typically less than five files — that
illustrate where and how the patent is practiced. (See,
e.g., Oracle Response at 2, 12.) If Google felt these responses
were somehow deficient, it could have raised that with Oracle
before its response was due. But it never did. In fact, although it
had a full two weeks to respond, Google's counsel waited until
three days before Google's response was due to ask for
copies of only some of the referenced source code files (which had
all been produced last year as part of the parties' procedure for
producing confidential source code). Google did not make a good
faith effort to prepare its response or to meet and confer during
this two-week period, and if
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it did not have enough time to review the files to verify
Oracle's position, it has only itself to blame.
Google's evidentiary objections are equally meritless. Google
has had ample discovery concerning Oracle's use of the '104 patent.
There is no legitimate dispute that Oracle practices the claims at
issue in the '104 patent. It is a fundamental patent that is
practiced in essentially every Oracle Java virtual machine product.
Oracle first identified products practicing the '104 patent in its
December 2, 2010 Disclosure of Asserted Claims and Infringement
Contentions ("Oracle 12/2/2010 Disclosure") and subsequently made
the source code available for Google's inspection. (Oracle
12/2/2010 Disclosure at 5-6.) These same products were identified
in Oracle's January 2012 disclosure, with only minor version
clarifications or deletions. Google chose not to serve any
interrogatories directed to Oracle's practice of the '104 patent,
although it had five interrogatories left at the close of
discovery. (Oracle Response at 2-5.)
Google's complaints are directed to the 30(b)(6) deposition of
Dr. Peter Kessler, who testified on both the '104 and '205 patents.
Google paints a highly misleading picture of Dr. Kessler's
testimony to try to make it seem as though he was unprepared. But
Dr. Kessler testified that he spent "days" reviewing source code
specifically to prepare for the 30(b)(6) deposition. (Kessler Dep.
40:21-41:3.)1 Google's claim that Dr. Kessler was not a
qualified 30(b)(6) witness because he supposedly "had no percipient
knowledge of the functionality in Oracle's products allegedly
implementing the '104 patent" is nonsense. (See Google
Response at 5.) It is true that Dr. Kessler is not the inventor of
the '104 patent — the inventor is James Gosling, who was
working for Google at the time this 30(b)(6) deposition was
taken. However, Dr. Kessler is a "principal member of technical
staff" at Oracle America, a position he has held "since the early
1990s" at Sun, where he worked extensively on Java. (Kessler Dep.
8:8-21, 15:15-16:23.) He described his main job responsibilities as
"I write code, I review code, I advise other people on the meaning
and writing of code." (Id. at 8:11-14.) Because the '104
patent is practiced in
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virtually all of Oracle's Java virtual machine products, no one
person could be expected to have personal familiarity with them
all. Dr. Kessler testified that, to prepare for the deposition, "I
examined the source code for the JRE. I examined the source code
for HotSpot. And for the others, I relied upon the opinions of
other engineers who were more familiar with those source code
bases." (Id. at 198:9-18.)
Google chose to spend a very short amount of deposition time on
the '104 patent. The entire examination spans less than 20
transcript pages. (See id. at 183:14-203:8.) Dr. Kessler
testified fully and appropriately. It is simply not true, as Google
claims, that Dr. Kessler could not testify as to which Oracle
products other than the JDK, JRE and HotSpot practice "implemented
symbolic resolution or where." (Google Response at 4.) Dr. Kessler
was asked about, and confirmed, based on his own review and
consultation with others, which Oracle products practiced the '104
patent. (See Kessler Dep. 197:17-199:24.) He explained what
he did to look for the "symbolic references" that are the subject
of the '104 patent, and how he could tell if it had been
transformed into a "numeric reference." (Id. at
183:23-185:15.) Dr. Kessler also identified at least three places
in the Oracle source code where symbolic references are "resolved"
into numeric references — class names, method names and field
names and explained how that process worked. (Id. at
185:8-190:13.) He testified that, for the products other than the
ones he personally examined, his understanding was that "the
functionality is the same, even if the file names or the method
names are different." (Id. at 201:20-202:5.)
Google faults Dr. Kessler for not being able to provide it with
the specific names of files or methods that implement the patent.
(Google Response at 4.)2 But this is an entirely
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unreasonable expectation. A new version of the source code is
generated for every type of virtual machine, and the versions have
changed over time. There are literally hundreds of versions of the
source code, and a witness at a 30(b)(6) deposition cannot be
expected to testify as to exact file or method names. Dr. Kessler
testified that he could not provide specific names without looking
at source code, but Google's counsel chose not to show him any.
(Kessler Dep. 192:10-24.) A deposition is not a memory test, and it
would have been impossible for Dr. Kessler to memorize all of the
source code file and method names in any event. Dr. Kessler spent
extensive time preparing for the deposition, and testified as to
the products that practiced the use of symbolic references and how
he made that determination. Oracle made a good faith effort to
prepare and present a 30(b)(6) witness on an extremely broad topic,
and Google has more than enough information to proceed to trial.
But, if Google felt this was insufficient, it should have followed
up with Oracle to request further information, or filed a motion to
compel. It did neither.
Google also states that it declined to provide its position in
response to Oracle's January 2012 disclosure because its experts
construe the claims differently from Oracle. (See Google
Response at 5-6.) But these differing constructions are based on a
particular interpretation of terms that Google chose not to place
before the Court when it was given the chance to do so. (See
11/8/2011 Order Regarding Construction Of Claims To Be Tried, ECF
No. 603.) In any event, Oracle has proposed a compromise that would
resolve this issue. Google should be ordered to respond, on the
understanding that its response will not be used at trial for the
purpose of claim construction or infringement.
2. The '205 Patent
Google had more than sufficient identification and information
about Oracle's products that practice the '205 to respond as
required by the parties' stipulation. Instead of providing a
straightforward response, however, Google again ducks the question,
stating only that, under the claim construction proposed by its
expert, Oracle does not practice the claims. (Google Response at
8-9.) Once again, however, this argument depends on a claim
construction argument that Google chose not to submit to the Court
when it had the opportunity to do so. (See ECF No. 603.)
Google should be required to respond substantively.
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Oracle first identified products practicing the '205 patent in
its December 2, 2010 Disclosure and subsequently made the source
code available for Google's inspection. (Oracle 12/2/2010
Disclosure at 6-7.) In Oracle's January 6, 2012 disclosure, Oracle
confirmed the products practicing the '205 patent, deleting one
product and making some minor clarifications. (Oracle Response at
5-8.)
Google served one interrogatory regarding the '205 patent.
Notably, while the '205 patent is practiced in many Java products,
Google's interrogatory was directed only to JDK 1.2. The
interrogatory asked Oracle to:
Identify, by reference to the relevant portions of the source
code and the date on which such portions were first included in the
code, the specific functionality within JDK 1.2 that Oracle
contends practices the Asserted Claims of U.S. Patent No.
6,910,205.
(Google 6/16/2011 Corrected Interrogatory No. 16.) Oracle
understood this interrogatory as asking it to identify the first
time the specific functionality within JDK 1.2 that practiced the
'205 patent at the time was included in the code, and answered
accordingly:
The functionality that practices the Asserted Claims of U.S.
Patent No. 6,910,205 is implemented in the
TemplateTable::_fast_invokevfinal() method, which is included in
templateTable_i486.cpp of the HotSpot virtual machine. The HotSpot
virtual machine first became an optional component of JDK 1.2 in
version 1.2.1_004 on or about March 18, 1998.
(Oracle 7/14/2011 Response to Google Corrected Interrogatory No.
16.) It is apparent that Google had a different interpretation of
this interrogatory, and its response complains that the
interrogatory response did not list all of the portions of the
source code that practice the patent. (See Google Response
at 7.) Oracle identified additional source code files in the
portion of its January 2012 disclosure relating to JDK 1.2, because
those files were implemented later. Even the January 2012
disclosure is illustrative, however, since, again, there are
literally hundreds of different versions of this code. Google
should not require anything more for the purposes of responding to
the parties' stipulated procedure.
The two inventors of the '205 patent — Lars Bak and Robert
Griesemer — have been employed by Google through the entirety
of this litigation. Accordingly, Oracle designated Dr. Kessler on
the deposition topics relating to products practiced by the '205
patent. These were
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topic 11 (an overbroad topic directed to "evidence of
conception, reduction to practice or actual use" of the inventions
of all the asserted claims) and topic 10, which related
specifically to "[t]he practice of the asserted claims of U.S.
Patent No. 6,910,205 by JDK...." (Google 6/21/2011 30(b)(6)
Deposition Notice.) Robert Griesemer was deposed by Oracle in his
personal capacity on June 23, 2011.
Google again misrepresents Dr. Kessler's preparation for the
deposition and his responses. Google's suggestion that Dr. Kessler
only "knew about some source code that Oracle's counsel directed
him to consider in advance of his 30(b)(6) deposition" is false.
(See Google Response at 8.) As noted above, Dr. Kessler
spent days reviewing code specifically to prepare for his
deposition, and he also testified that, in relation to the
litigation more generally, he looked for evidence relating to
conception, reduction to practice, and actual use of the '205
patent over a period of about six months, and consulted with other
Oracle employees about these issues. (See Kessler Dep.
36:23-37:5, 40:21-41:3, 119:11-120:22.)
Google does not dispute that Dr. Kessler gave extensive
testimony as to how the method fast_invokevfinal practices the
patent. (See Google Response at 7-8; see, e.g.,
Kessler Dep. 68:170: 10, 78:4-79:5.) This method, as noted above in
response to Interrogatory 16, and at the deposition, is found in
the source code file TemplateTable. There are different versions of
TemplateTable for different computer platforms (such as those CPUs
made by Sun, Intel, and AMD). Google quarrels that Dr. Kessler
could not identify which of the "hundreds of versions" of the
source code file TemplateTable_i486 practice the patent. (Google
Response at 8.) While this functionality is disabled in some of
these hundreds of versions (Kessler Dep. 82:22-84:13), it is not
reasonable to expect that all of the individual practicing versions
could be identified by a witness in deposition, or even in response
to an interrogatory, or why such a burdensome inquiry is necessary
or relevant. Oracle clearly practices the patent.
Dr. Kessler also brought to his deposition two versions of the
source code file bytecodes.hpp (which had previously been produced
to Google), another file that implements the '205 patent. Oracle's
counsel prepared multiple copies of these files so that they could
be marked as exhibits, and handed them to Google's counsel at the
outset of the deposition, stating that they
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had been reviewed in preparation for the deposition. (Id.
at 5:13-18.) Google apparently already appreciated the significance
of this file because, later in the deposition, Google's counsel
marked as an exhibit of its own, the closely related source code
file bytecodes.cpp (bytecodes.hpp is its header file), and then,
realizing that it was not the file that had been brought to the
deposition by Oracle's counsel, left it unaddressed:
MR. KAMBER: Please mark as Exhibit 328 the bytecodes.cpp file,
I'm sorry, that your counsel provided us this morning.
(Exhibit Google 328 was marked for identification.)
Q. BY MR. KAMBER: What is Exhibit 328?
A. Exhibit 328 is a copy of bytecodes.cpp version 1.85, dated
December 23, 2003, but I do not believe this was the document
provided by my counsel.
MR. KAMBER: You're right. I grabbed the wrong file so I
apologize. We can just leave that marked as Exhibit 328.
(Id. at 174:13-24.)
Inexplicably, Google never came back to ask any question about
Exhibit 328, nor marked or asked questions about the bytecodes.hpp
files brought to the deposition by Oracle. If it had, Dr. Kessler
would have testified that these source code files also implemented
the invention in the '205 patent, as Google itself apparently had
already concluded. This is Google's fault, not Oracle's.
Various versions of TemplateTable and bytecode.hpp are listed as
source code files that evidence practice of the '205 patent as to
all but one product in Oracle's January 2012 disclosure.
(See Oracle Response at 5-8.) Dr. Kessler testified further
at his deposition that Java EE 1.2 and Java Realtime 1.0 both run
on top of JDK 1.2, and practice the '205 patent to the same extent
it is practiced in JDK 1.2. (Kessler Dep. 180:15-24.) This mirrors
the chart in the January 2012 disclosure for these two products.
(See Oracle Response at 7.)
There is no reason why Oracle should be precluded from putting
on evidence at trial that its products practice the '205 patent
given that Dr. Kessler testified that they did, and Oracle provided
ample evidence supporting that claim. If Google believed Dr.
Kessler was inadequately prepared for the '205 deposition or that
his responses were insufficient, it should have raised this
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with Oracle, and either asked for another witness or filed a
motion to compel, instead of raising the issue for the first time
here.
3. The '702 Patent
In its January 2012 disclosure, Oracle confirmed that the '702
patent is used in two Oracle products: JavaOS (version 1.1 and
variants, such as JavaPC) and Java Card (platform 2.1 and
subsequent versions). (Oracle Response at 8-9.) Google has
responded as to one product only — and even for that product
as to only one of the seven claims — stipulating that Java OS
version 1.1 practices claim 7 of the '702 patent. Google should be
required to state its position clearly for all of the products
identified by Oracle, and for all seven claims, as it agreed to do,
and for those products it contends do not practice the claims,
Google must explain why. (ECF No. 661 at 2.)
Oracle first identified these products as patent embodiments in
its December 2010 Disclosure (Oracle 12/2/2010 Disclosure at 7) and
later produced the relevant source code for inspection.
In addition, last summer, in response to a Google interrogatory
regarding JavaOS, Oracle identified the directories that contained
the source code that implemented the '702 patent in JavaOS 1.1, and
identified the files Jld.java, classloader.c, FileLoader.java, and
JavaOSVM.java within those directories for Google's convenience.
(Oracle 7/22/2011 Response to Google Amended Interrogatory No. 15.)
The files identified for JavaOS in Oracle's January 12 disclosure
correspond to the directories that Oracle identified last year and
include the same four files previously called out by name.
(Compare id. with Oracle Response at 8.) Google did not
serve any interrogatories aimed at Java Card.
Google also took a 30(b)(6) deposition on Oracle's use of the
'702 patent. Again, this deposition was limited to JavaOS, and did
not include JavaCard. Google's Topic 9 concerned "The practice of
the asserted claims of U.S. Patent No. 5,966,702 by JavaOS...."
(Google 6/21/11 30(b)(6) Deposition Notice.) John Pampuch was
Oracle's designee with respect to this topic.3
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Mr. Pampuch testified at length about how JavaOS 1.1 created and
used the multiclass files that are the subject of the '702 patent.
(Pampuch Dep. 139:13-22, 147:15-150:9, 151:5153: 23, 155:10-161:12,
166:14-167:1.) Google misleadingly excerpts Mr. Pampuch's
testimony, to make it appear that he was not aware if the "'702
patent concept of 'multiclass files' was ever
practiced." (Google Response at 10 (emphasis in original).)
This claim is false. As the excerpt itself shows, the testimony
cited by Google was in response to questioning as to whether Mr.
Pampuch was aware of "anyone outside of Sun,
including developers, other companies who licensed JavaOS, for
example, ever having used multiclass files or created multiclass
files." (Id. (emphasis added); see also id. (question
referring to "multiclass files, having been apparently
implemented, based on what you have seen") (emphasis
added).) Google's assertion that this testimony relates to Sun's
own implementation or use of the claimed inventions is blatantly
misleading, to say the least.
Moreover, Google excised more than a page out of the testimony
from Mr. Pampuch that it cites, replacing it with an ellipsis. In
the missing portion, Mr. Pampuch confirmed that JavaOS practiced
the "'702 patent concept of 'multiclass files'":
Q: It is possible, then, that by default, JavaOS was set to not
even use multiclass files; is that correct?
A: So JavaOS 1.1, as far as I can tell, you know, it would
always be able to load multiclass files. But the developer who was
creating the application might choose to use multiclass files to
create one or not.
(Pampuch Dep. 207:24-208:6.) Earlier in the deposition, Mr.
Pampuch expressly identified the specific portions in the JavaOS
source code where multiclass files are created and subsequently
read in:
Q: In your view, which source code files implement the
multiclass functionality?
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A: Classloader.c implements a portion of the multiclass loading
and the Java Virtual Machine and Jld.java and some related source
files in the same directory implement the creation of multiclass
files from regular class files. It may turn out FileLoader.java is
used, as well, but the implementation of multiclass is in
classloader.c.
(Pampuch Dep. 139:13-22.)
The record is clear: Mr. Pampuch testified that the '702
technology was implemented in JavaOS 1.1, a subject for which he
was Oracle's designee and for which he prepared to testify.
Google's argument that Mr. Pampuch contradicted Oracle's contention
that JavaOS practiced the '702 patent is preposterous.
Google also complains that Mr. Pampuch could not give testimony
as to one of the four specific source code files identified in the
December 2, 2010 Disclosure and the January 2012 response,
FileLoader.java. (See Google Response at 10-11.) But this is
only because Google did not show Mr. Pampuch the file at the
deposition, which was produced in discovery months before and
accessible to Google at the time of Mr. Pampuch's deposition.
Google showed Mr. Pampuch copies of Jld.java and classloader.c and
Mr. Pampuch was able to fully testify about them. (See,
e.g., Pampuch Dep. 139:13-22, 147:15-150:9, 151:5-153:23,
155:10-161:12, 166:14-167:1. ) But Google chose not to show
FileLoader.java to Mr. Pampuch, so it is not surprising that he
could not answer questions about a source code file on the fly,
unassisted by the code itself. Had Google provided a copy of the
code, it would have elicited the testimony Mr. Pampuch will give at
trial. Google also never pursued this issue with Oracle after the
deposition. In this case, Google did subsequently make a
self-serving statement, without explanation, that "Mr. Pampuch was
not prepared to testify about numerous issues within the scope of
the designated topics, a letter regarding this and other issues
will be forthcoming." (See 8/2/2011 Letter from M. Francis
to M. Peters.) But Google never sent the letter or otherwise
followed up. If Google had, Oracle could have addressed this issue
by interrogatory or by offering further deposition testimony.
Google cannot use its failure to properly pursue this discovery to
bar Oracle from presenting testimony.
Finally, Google complains that Mr. Pampuch was not prepared to
give testimony as to Java Card. But Java Card was expressly
excluded from Google's 30(b)(6) deposition topic, and
(15)
Google chose not to propound any other discovery directed at
Java Card either. Two things follow from the fact that there was no
30(b)(6) deposition on Java Card: First, as a practical matter, Mr.
Pampuch did not review any Java Card code before his deposition to
refresh his recollection about how Java Card works, because Google
did not identify it as a deposition topic. Second, as a legal
matter, he was not testifying as Oracle's corporate representative
when he was asked about Java Card, so Oracle is not bound by his
testimony.
To streamline the trial presentation, Oracle proposed to have
Mr. Pampuch testify about the use of the '702 patent as well in
Java Card as well as in JavaOS — though others could testify
as well. Google put Mr. Pampuch on its witness list to "testify
about Oracle's alleged practice of U.S. Patent No. 5,966,702,
including by JavaOS." (Google's Trial Witness Disclosure Pursuant
To Fed. R. Civ. P. 26(a)(3) at 7, ECF No. 491-2.) That is exactly
what Oracle has proposed he do. Google has had ample opportunity to
investigate Oracle's specific assertions concerning its practice of
the '702 patent. It is free to cross-examine Mr. Pampuch at trial,
but there is no reason or basis to exclude his testimony.
4. The '476 Patent
The '476 patent has been and is used in almost all mainline Java
products (such as Java SE, Java ME, and Java EE). Li Gong's
invention is one of the foundations of the celebrated Java Security
Framework and has been part of Java since version 1.2. The products
that practice the '476 patent were identified in Oracle's January
2012 disclosure. (Oracle Response at 9-11.) These products were all
first identified in Oracle's December 2, 2010 Disclosure, and the
source code was made available for inspection. (Oracle 12/2/2010
Disclosure at 7-8.)
Google stated in its response that it would consider entering
into a stipulation regarding the '476 patent. Earlier today, it
agreed to stipulate that one version of one of the many products
identified by Oracle (JDK version 6) practices the claim at issue.
It has not, as it was required to do, stated its position as to
whether the remaining products do or do not practice the patents
and why.
Google's response did not identify any legitimate reason why it
could not provide this information. Its response contained no
evidentiary objections for the '476 patent. Instead, it
(16)
provides a series of creative footdragging excuses. Google
proclaims, "Oracle provides no information to support its
contention that the witnesses identified in its Disclosures have
any percipient knowledge with regard to actual
embodiments." (Google Response at 12.) But, of course, Oracle was
never required to provide this under the parties' agreement, and it
is not needed for Google to determine whether the identified
products practice the patents.
Similarly, Google claims in its response that it is "unclear"
whether the source code files identified by Oracle for guidance
"actually create the required protection domains and permissions."
(Id. at 11.) But Google made absolutely no effort in the two
weeks following Oracle's disclosure to ask for any clarification or
assistance on this issue. And Google knows full well where the Java
code performs that function, since both parties' experts analyzed
and discussed the corresponding Android code in their expert
reports. Information about whether the Java source code was
compiled into executable instructions is readily available on the
Internet.4
Upon receiving Google's response, Oracle contacted Google to
arrange for a meet and confer. Oracle provided Google with the
information it requested during that meet and confer, and the end
result was that Google stipulated with respect to a single product
only, and took no position as to the rest. Google should be ordered
to comply with the parties' December 30 Agreement and identify the
products that do, or do not, practice the '476 patent and why.
5. The '520 Patent
In its January 2012 disclosure, Oracle confirmed that the '520
patent is used in three Oracle products: CLDC HI (1.1.3 and
subsequent versions), CLDC RI (1.1.1 and subsequent versions), and
Java Card (platform 2.1 and subsequent versions). (Oracle Response
at 11-12.) Oracle also identified a handful of source code files
that support that conclusion. Oracle first identified these
products as patent embodiments in its December 2010 Disclosure
(Oracle 12/2/2010 Disclosure at 8) and produced the relevant source
code for inspection.
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Rather than stating its position as to whether these products
practice the identified claims, and explaining why, Google states
only that "the products identified by Oracle cannot be proven at
trial to practice the asserted claims of the '520 patent." This
does not comply with the parties' Dec. 30, 2011 stipulation, and
Google should be ordered to properly respond.
The inventors of the '520 patent are no longer at Oracle —
one is employed by Google. As a result, last summer, Oracle did not
offer a witness to testify about the '520 patent for Google's
deposition topic No. 11, on the "Evidence of conception, reduction
to practice or actual use" of the inventions in the '520 patent
claims, and so is subject to the Court's Supplemental Order. (ECF
No. 26 at 7-8 ("If an organization cannot reasonably locate a
witness to testify based on personal knowledge, there is no
requirement under Rule 30(b)(6) for the organization to 'woodshed'
or to 'educate' an individual to testify on the subject. If the
organization does not produce any such deponent, however, the
organization may not present case-in-chief evidence at trial or on
summary judgment on that topic from any witness it could have so
designated."); see 8/9/2011 Email from D. Muino to M.
Francis.) However, while Oracle agreed that it would "not present
an Oracle employee or officer at trial to testify regarding [those
issues]," it expressly reserved the right to put on testimony from
former Sun/Oracle employees. (See id. ("We reserve the
right, of course, to present testimony on these subjects from our
experts, the inventors (Messrs. Yellin, Tuck, and Fresko), and
other former Oracle/Sun personnel with knowledge of the patented
inventions.").) It can present evidence of Oracle/Sun's use of the
'520 patent through such witnesses at trial.
In order to promote efficiency at trial and reduce the number of
witnesses, Oracle proposed having Mark Reinhold testify about CLDC
HI and CLDC RI and John Pampuch about Java Card as they pertain to
the '520 patent. Oracle expects to call both engineers to testify
at trial in any event, so it would take up little extra time to
have them address these issues. Oracle has offered to make Mr.
Reinhold and Mr. Pampuch available for deposition about the
practice of the '520 patent. Given the amount of time before trial
begins, that no Google expert opined on whether any Oracle product
did or did not practice the patent, and that, until recently,
Google maintained that the '520 patent was subject to the marking
requirement as a matter of law because
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Oracle's products practiced it, there would be no undue
prejudice to Google to take these limited depositions now. Google
declined Oracle's offer.
At the time Google proposed the procedure that the parties
ultimately adopted and agreed to, it was well aware that Oracle had
not presented a 30(b)(6) witness on the '520 patent. It even
referenced this fact in its November 30 statement to the Court.
(See ECF No. 635 at 2.) If Google's intention was to use
this as a basis for not responding to Oracle's
identification of the products that practice the '520 patent, it
never should have proposed this procedure. Google is playing games.
Now that Oracle has done its work and provided Google with the
information it requested, it is too late for Google to refuse to
respond on this ground.
6. The '720 Patent
In its January 2012 disclosure, Oracle confirmed that the '720
patent is used in the Oracle product CDC AMS (versions 1.0, 1.0_1,
1.0_2, Personal Basis Profile and Personal Profile versions).
Oracle first identified CDC AMS as a '720 patent embodiment in its
December 2010 Disclosure, and made the source code available for
inspection. (Oracle 12/2/2010 Disclosure at 8.) Google did not
serve any interrogatories directed to the '720 patent or CDC
AMS.
Oracle's January 2012 disclosure identifies three source code
files (ansi_java_md.c, mtask.c, and Warmup.java) that show its
practice of the '720 patent. The disclosure also refers Google to a
description of the implementation of the '720 patented technology
in Oracle's product (mtask.html). This description is very
detailed, and serves as a guide to the three source code files,
explaining exactly how the implementation functions. With this
information, and so few files at issue, confirming Oracle's
contention should have been simple. But Google again failed to do
so.
Instead, Google only states that its non-infringement expert,
Dr. Jack Davidson, construes the claims at issue in the '720 patent
differently from Oracle. (Google Response at 13.) Dr. Davidson has
never been cleared by Google under the protective order, so has
never examined the CDC AMS source code. His differing
interpretation relates to one of the claim construction disputes
presented to the Court (concerning the phrase "obtaining a
representation of at least one class..."). Having not examined the
code, it is not clear how Dr. Davidson is in any position to
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say it does not practice the patent. The source code at issue
was written by the inventor of the '720 patent, Nedim Fresko, to
implement his own invention. The fact that, under Dr. Davidson's
proposed special construction, the source code written by the
inventor would no longer be an embodiment also suggests that
Google's proposed construction is wrong. The Court recently
postponed resolving the claim construction dispute until a fuller
record is established at trial. (ECF No. 704 at 10.)
Mr. Fresko is no longer employed by Oracle, and subject to the
same agreement as the '520 patent, Oracle did not present a
30(b)(6) witness on the "conception, reduction to practice, or
actual use" of the invention in the '720 patent. (8/9/2011 Email
from D. Muino to M. Francis.) After the agreement was reached,
however, Google chose to elicit deposition testimony from Oracle
engineer Erez Landau about the use of the '720 patent in CDC AMS.
(Landau Dep. 25:12-27:18.) By pursuing this line of questioning,
Google opened the door to having Mr. Landau testify at trial
regarding CDC AMS and its use of the '720 patent, notwithstanding
Oracle's agreement not to present an employee witness on this
topic. Google would not be prejudiced, since it deposed Mr. Landau
on this issue, and it would be convenient for Mr. Landau to testify
about the use of the '720 in CDC AMS to the jury because Mr. Landau
will be testifying about the '720 patent in any event. Mr. Landau
did the performance testing that demonstrated Android's use of the
'720 patented technology and measured the benefits it offers, and
will be testifying on these topics.
But even if Mr. Landau does not testify about the implementation
of the '720 patent in Oracle products, there are alternative
witnesses. Mr. Fresko, who is not an Oracle employee, can testify
about that subject, and Oracle expressly reserved the right to
present testimony from him. (See 8/9/2011 Email from D.
Muino to M. Francis ("We reserve the right, of course, to present
testimony on these subjects from our experts, the inventors
(Messrs. Yellin, Tuck, and Fresko), and other former Oracle/Sun
personnel with knowledge of the patented inventions.").) Mr. Fresko
was subpoenaed by Google and has been deposed in this case. Google
identified Mr. Fresko on its trial witness list as someone who may
testify regarding the work that led to the issuance of the '720
patent and the documents authored by him, which is what Oracle
would call
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him at trial to do, if necessary. (Google's Trial Witness
Disclosure Pursuant To Fed. R. Civ. P. 26(a)(3) at 5, ECF No.
491-2.) Those documents include the very same materials identified
by Oracle in its January 2012 disclosure.
In addition, as is the case with the '520 patent, Google was
fully aware of the fact that Oracle had not presented a 30(b)(6)
witness on the '720 patent when it proposed the procedure that was
adopted by the parties, and made reference to this in its November
30 statement. (ECF No. 635 at 2.) It cannot use this fact now as a
basis for refusing to respond.
III. GOOGLE'S STATEMENT
The purpose of the agreed procedure on disclosures was to
determine whether the parties would be able to stipulate as to
evidence that Oracle proposed to present at trial regarding its
alleged practice of the asserted claims of the patents. (See
generally Dkt. No. 661.) Contrary to Oracle's arguments in this
paper, Google has never said it would prove that Oracle practiced
any of these claims. Instead, it argued that if Oracle were to
prove, as it contended it could, that it practiced these patents,
then its damages would be limited by its admitted failure to mark
any articles with the patent numbers. (Oracle, ironically, opposed
the motion for summary judgment, arguing that whether it practiced
the patents was an unresolved question of fact, such that its
damages could not be limited as a matter of law.) Google agreed to
this stipulated procedure in order to determine what, if anything,
Oracle proposed to present at trial regarding its alleged practice
of these patents, and to determine whether Google could agree to
stipulate that Oracle would not need to provide such proof at
trial.
Given Oracle's refusal to present evidence on certain of the
patents during discovery, and the positions that it took in its
opposition to Google's motion regarding patent marking, Google
expected that Oracle might not contend that it practiced some of
the patents. To the contrary, Oracle provided a disclosure
asserting that it practiced all six of the remaining patents.
As to the '476 patent, Google has considered the additional
technical information that Oracle has offered after the parties
met-and-conferred, and has made a good faith effort to conduct its
own examination of the source code for the Java Development Kit
(JDK), version 6. While Google does not believe that the
information Oracle presented showed the practice of the
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patent, Google was able to identify code that it believes
perform each of the steps of the only asserted claim, e.g., in the
AppletPanel and URLClassLoader classes, and determined that it can
therefore stipulate to the practice of that patent by the JDK,
version 6. With respect to Oracle's other identified products,
Google explained in meet and confer that it does not believe those
products satisfy that claim's requirement for a protection
domain.
As to the '702 patent, Google is willing to stipulate that the
software development tools provided for use with the JavaOS 1.1
product fall within the scope of claim 7 of the '702 patent. But
Google is not aware of (and Oracle has not provided any evidence
of) developers actually using those tools to perform the method of
claim 1 or thereby creating the apparatus of claim 13. And while
Oracle criticizes Google for not engaging in a claim-by-claim
analysis of the various products, Oracle's Disclosure itself
contained no such detail; it declared that certain products
practiced the patents without addressing any claims individually.
With respect to the only other product Oracle claims to practice
the '702 patent — Java Card — Google is not in a
position to stipulate given the state of the record. Specifically,
the very witness that Oracle has identified to testify on the
practice of the '702 patent by Java Card testified at deposition
that he did not know if the Java Card platform implemented the '702
patent. (Pampuch Dep. at 192:10-15.) Given the inability of
Oracle's own chosen witness to identify even whether, much less
how, Java Card practices the '702 patent (and nothing in Oracle's
disclosures would give any detail as to how it is allegedly
practiced), Google can't be expected to make such a determination
in a few weeks' time.
As to the remaining patents, Google cannot stipulate. In some
cases, that is because the parties have fundamental disagreements
on the interpretation of claim terms. In other cases, it is because
Oracle now seeks an end-run around its discovery representations
that it could not find a 30(b)(6) witness regarding Oracle's
practice of the patents; therefore, Oracle agreed it would not
present an Oracle witness on such issues at trial. (And, in any
event, Oracle has not disclosed any expert opinions that Java
practices the patents.) For at least these reasons, Google cannot
stipulate that Java practices the '104, '205, '520, and '720
patents.
(22)
Google's response to Oracle's disclosures lays out its position
on the various patents in detail. See Appendix B. Rather
than attempting to rebut Oracle's long-winded response, which was
first provided after the close of business on Thursday night,
Google focuses below on the crux reasons why it cannot stipulate to
Oracle's practice of the remaining four patents.
The '104, '205, and '720 patents. At bottom,
Google cannot agree that Oracle practices these patents because
Google and Oracle read the claims differently. That is apparent
from the non-infringement reports. Specifically, the problems are
as follows:
-
'104 Patent: Google disputes that Android contains
symbolic references in the instructions. Instead, Android uses
indexes into tables, which even Oracle's expert Dr. Mitchell agrees
are numeric references. Because the identified Java products also
do not use symbolic references in the instructions, and instead
only uses indexes into tables, Google cannot agree that Oracle
practices the '104 Patent.
-
'205 Patent: Google disputes that Android performs
runtime optimizations that replace virtual machine instructions.
The code identified by Oracle also fails to perform such
optimizations, such that Google cannot agree that Java practices
the '205 patent. In fact, Google elicited deposition testimony from
one of the inventors that the invention disclosed in the '205
patent was not effective and therefore never implemented in any
released version of a Java product.
-
'720 Patent: As highlighted in the claim construction
briefing, Google contends that the asserted claims require a class
loader capable of runtime compilation of source code into Java
classes. Oracle argues that the class loader only need be capable
of loading classes. The Java code that Oracle has identified only
meets Oracle's interpretation of the asserted claims; it does not
perform runtime compilation of source code into classes as Google
contends. As such, Google cannot agree that the code Oracle has
identified practices the '720 patent.
Notably, during the meet-and-confer procedure, Google previewed
that the parties' differing positions would likely mean that Google
could not stipulate as to Oracle's practice of these patents.
Oracle can hardly feign surprise that Google cannot agree to
stipulate as to these patents.
Now Oracle contends that, because Google did not submit the
claim construction dispute to the Court, Google's experts cannot
take the position that the plain meaning of the claims differs from
what Oracle's experts say they mean. There is no support for
Oracle's position. Nor has Oracle ever raised this complaint
before, despite being aware of Google's experts' reading of the
claims since last September. Simply put, Google and Oracle differ
in their reading of the claims on Android, such that Google cannot
stipulate that those same claims cover any Java product.
(23)
The '520 and '720 patents. In discovery, Oracle
refused to present a 30(b)(6) witness on its use of these patents,
claiming — remarkably — that no one at Oracle
had such knowledge. Oracle then expressly stated that it would not
present any Oracle officer or employee at trial to testify as to
alleged use by Oracle of these patents, while apparently purporting
to reserve the right to elicit such testimony from non-Oracle
personnel, or from expert witnesses. But Oracle never disclosed any
expert testimony on its own alleged practice of these patents (or
any of the other four asserted patents, for that matter). And when
Oracle served its disclosures on Google, it took the position that
it would have current Oracle employees offer testimony as to its
use of these patents. When asked about this about-face in the meet
and confer, Oracle's counsel took the position that this was just
more convenient than offering expert testimony or the testimony of
inventors. But Oracle can offer neither of those things; the
inventors are not on Oracle's witness list, and its experts have
disclosed no opinions relating to the practice of the patents. In
essence, for "convenience," Oracle is now asking to re-open
discovery many months after it has closed so that it can present
self-serving testimony that it refused to provide the first time
around. With both fact and expert discovery long since complete, it
is too late for Oracle's change of heart; Oracle's gamesmanship on
these patents should be rejected.
Beyond these crux issues lie a variety of discovery failures.
These failures make Oracle's claims that it practices the remaining
four patents impossible for Google to confirm and Oracle to prove
at trial. As discussed in more detail in Google's Disclosure (Ex.
B), these failures include:
-
The question of whether Oracle's products practice the patents
is a matter of expert opinion. Yet Oracle never submitted any
expert reports regarding Oracle's alleged practice of the
patents.
-
Oracle has, at most, fact witnesses who cannot opine
regarding its alleged practice of the asserted claims. See
Fed. R. Evid. 701; Fresenius Medical Care Holdings, Inc. v.
Baxter Int'l, Inc., No. 03-cv-1431-SBA, 2006 WL 1330002 at *3
(N.D. Cal. May 15, 2006) (forbidding a lay witness from comparing a
device to a patent claim (citing Rules 701 and 702)). Many of those
witnesses admitted that they are not qualified to opine on the
asserted claims, and Oracle's counsel objected to questions about
Oracle's practice of those claims as calling for expert
testimony.
-
Even Oracle's purported fact witnesses aren't qualified to
testify about the alleged use of particular code in
particular products because they are not percipient
witnesses. They have been spoon-fed by Oracle's counsel for the
purpose of offering testimony about use of the asserted patents,
but have no personal knowledge about which code was ultimately
implemented in product versions that
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were commercially released and actually used. As such, their
testimony is not admissible. See Pacheco v. Homecomings Fin.,
LLC, No. 08-cv-3002, 2010 U.S. Dist. LEXIS 64400, at *10 (N.D.
Cal. June 29, 2010) ("The testimony of a witness who does not have
personal knowledge of the subject of his or her testimony is
inadmissible." (citing Fed. R. Evid. 602)), aff'd, 2011 U.S.
App. LEXIS 25826 (9th Cir. Dec. 27, 2011).
-
Finally, Oracle's Disclosures rely on information that it
withheld during discovery. Specifically, Oracle's 30(b)(6)
witnesses on "[e]vidence of ... actual use of the invention(s)
allegedly set forth in the asserted claims" could not testify
regarding Oracle's practice of any asserted claims. Oracle is bound
by that testimony. See Calpine Corp. v. Ace Am. Ins. Co.,
No. 05-cv-00984-SI, 2007 U.S. Dist. LEXIS 75985 at *23-24 (N.D.
Cal. Oct. 12, 2007) ("Where a party seeks to depose a corporation,
the corporation shall designate a person to testify to matters
'known or reasonably available' to the corporation. Fed. R. Civ. P.
30(b)(6). The answers given by the person designated by the
corporation in a Rule 30(b)(6) deposition are binding on the
corporation." (emphasis added)).
Given these issues, Google cannot stipulate that Oracle
practices the patents — it simply does not believe that to be
the case based on the parties' differing reading of the claims and
the failures in Oracle's discovery disclosures.
(25)
Dated: January 27, 2011
MORRISON & FOERSTER LLP
By: /s/ Marc David Peters
MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[email]
MARC DAVID PETERS (Bar No. 211725)
[email]
DANIEL P. MUINO (Bar No. 209624)
[email]
[address]
[phone]
[fax]
BOIES, SCHILLER & FLEXNER LLP
DAVID BOIES (Admitted Pro Hac Vice)
[email]
[address]
[phone]
[fax]
STEVEN C. HOLTZMAN (Bar No. 144177)
[email]
[address]
[phone]
[fax]
ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[email]
DEBORAH K. MILLER (Bar No. 95527)
[email]
MATTHEW M. SARBORARIA (Bar No. 211600)
[email]
[address]
[phone]
[fax]
Attorneys for Plaintiff
ORACLE AMERICA, INC.
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Dated: January 27, 2011
KEKER & VAN NEST LLP
By: /s/ Eugene M. Paige
SCOTT T. WEINGAERTNER (Pro Hac Vice)
[email]
ROBERT F. PERRY
[email]
BRUCE W. BABER (Pro Hac Vice)
[email]
[address]
[phone]
[fax]
DONALD F. ZIMMER, JR. (SBN 112279)
[email]
CHERYL A. SABNIS (SBN 224323)
[email]
KING & SPALDING LLP
[address]
[phone]
[fax]
GREENBERG TRAURIG, LLP
IAN C. BALLON (SBN 141819)
[email]
HEATHER MEEKER (SBN 172148)
[email]
[address]
[phone]
[fax]
KEKER & VAN NEST LLP
ROBERT A. VAN NEST (SBN 84065)
[email]
CHRISTA M. ANDERSON (SBN184325)
[email]
DANIEL PURCELL (SBN 191424)
[email]
[address]
[phone]
[fax]
Attorneys for Defendant
GOOGLE INC.
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[See PDF for attestation]
(28)
|
To avoid burdening the Court with additional paper, the parties
agreed not to submit deposition transcripts and other materials
with this filing, but are prepared to file copies of the cited
documents promptly if the Court wishes. |
|
Google also asserts generally that the 30(b)(6) witnesses are
not "qualified" because they could not answer questions directed to
"Oracle's actual practice of the patent claims." (GoogleResponse at
3.) These types of questions are improper because they call for a
legal conclusion that depends on the legal construction of the
patent. As noted above, Dr. Kessler and the other 30(b)(6)
witnesses all properly testified as to the products that practiced
the technology described in the patents. This is how Oracle will
present its evidence at trial, as Oracle informed the Court on Nov.
30, 2011. (ECF No. 634.) Oracle's experts, as part of their
testimony regarding infringement and validity, will discuss the
technology within the scope of the claims (as informed by the
Court's claim constructions). The Java engineers will testify as to
which Oracle products include the relevant technologies. |
|
Mr. Pampuch was designated on two other topics that also
related solely to JavaOS, Topic 13, which concerned Oracle's
production of JavaOS documents, and Topic 14, which concerned the
retention of JavaOS 1.0 source code. (See Pampuch Dep.
12:12-18; Google 7/9/2011 and 7/18/2011 30(b)(6) Deposition
Notices.) No deposition was taken with respect to the '702 patent
under Google's overbroad topic 11 ("evidence of conception,
reduction to practice or actual use" of the inventions of all the
asserted claims). |
|
See, e.g., Oracle Java Archive,
http://www.oracle.com/technetwork/java/archive-139210.html
(downloadable executables); Java 2 SE 1.4.2 ClassLoader API
documentation, available at
http://docs.oracle.com/javase/1.4.2/docs/api/java/lang/ClassLoader.html
(documentation showing creation of protection domains and
association with classes). |
**************************
**************************
Appendix A
Oracle’s Disclosure of Products
Practicing Patent Claims
MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[email
MARC DAVID PETERS (Bar No. 211725)
[email]
DANIEL P. MUINO (Bar No. 209624)
[email]
[address, phone, fax]
BOIES, SCHILLER & FLEXNER LLP
DAVID BOIES (Admitted Pro Hac Vice)
[email]
[address, phone, fax]
STEVEN C. HOLTZMAN (Bar No. 144177)
[email]
[address, phone, fax]
ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[email]
DEBORAH K. MILLER (Bar No. 95527)
[email]
MATTHEW M. SARBORARIA (Bar No. 211600)
[email]
[address, phone, fax]
Attorneys for Plaintiff
ORACLE AMERICA, INC.
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
____________________
ORACLE AMERICA, INC.
Plaintiff,
v.
GOOGLE, INC.
Defendant.
_________________
Case No. CV 10-03561 WHA
ORACLE’S DISCLOSURE OF PRODUCTS
PRACTICING PATENT CLAIMS
Dept.: Courtroom 8, 19th Floor
Judge: Honorable William H. Alsup
Pursuant to the Court’s December 6, 2011 Supplemental Order Regarding Patenting Marking (Dkt. No. 641) and the agreement between the parties as set forth in their December 30, 2011 Joint Statement Regarding Supplemental Order Regarding Patenting Marking (Dkt. No. 661), Plaintiff Oracle America, Inc. (“Oracle”) hereby submits the following disclosure regarding Oracle products, Oracle-licensed products, Sun products, and Sun-licensed products (“Oracle Products”) that practice or have practiced the asserted claims of the patents-in-suit (“claims-in-suit”).
I. DISCLOSURE OF ORACLE PRODUCTS PRACTICING ASSERTED CLAIMS
Oracle here identifies instrumentalities, source code citations and/or documentation, fact
witnesses who possess information supporting Oracle’s contentions regarding Oracle Products that practice the claims-in-suit, and a summary of testimony Oracle intends to elicit at trial from those witnesses regarding those products’ practice of the claims-in-suit. The identified products have numerous releases and versions – including for various platforms (x86, SPARC, etc.) – that do not vary substantively as to their implementation of the patented techniques at issue. Accordingly, the citations below are exemplary, not exhaustive, and are intended to guide Google’s evaluation of the use of the patented inventions in Oracle Products. The identification of particular witnesses in association with particular products below represents Oracle’s present intention; Oracle reserves the right to substitute witnesses with respect to the Oracle products, in accordance with the Joint Final Pretrial Statement, to accommodate the needs of the trial and the witnesses’ schedules.
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A. The ’104 Patent
The following Oracle Products practice the asserted claims of the ’104 patent, as exemplified by the identified source code citations and/or documentation:
Identified
Instrumentality | Source Code Citations/
Documentation | Testifying Fact Witness And Summary |
JDK 1.0 and subsequent versions
JRE 1.1.1 and subsequent versions
HotSpot 1.0 and subsequent versions |
JDK 1.0 version: classinitialize.c interpreter.c
JDK 1.1 version: classinitialize.c executeJava.c interpreter.c
JDK 1.2 version: classinitialize.c executeJava.c interpreter.c
HotSpot version: interpreterRuntime.cpp templateTable.cpp templateTable_sparc.cpp
|
Peter Kessler will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’104 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’104 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions. He will describe the major components of the JDK, including the Java SE class libraries and Java Virtual Machine (JVM), as well as the inclusion of and transition to the HotSpot virtual machine.
Peter Kessler will testify that the identified versions of JRE encompass the JDK and therefore implement the asserted claims in the same way. |
Java SE for Embedded 1.4.2_11 and subsequent versions | see above and below | Robert Vandette will testify that the identified versions of Java SE Embedded are based on Java SE and the HotSpot virtual machine sources and therefore implement the asserted claims in the same way. He will testify that some releases used the CDC virtual machine technology (known as CVM), and therefore implement the asserted claims in the same way. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not |
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Identified
Instrumentality | Source Code Citations/
Documentation | Testifying Fact Witness And Summary |
. | . | vary substantively as to the features that implement the claimed invention |
J2EE 1.2 (later called
Java EE) and subsequent versions | see above | Mark Reinhold will testify that the identified versions of Java EE are bundled with Java SE and the JDK and therefore implement the asserted claims in the same way. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions. |
Java Real Time 1.0 and subsequent versions | see above | John Pampuch will testify that the identified versions of Java Real Time are based on JDK 1.4 and HotSpot (and subsequent versions) and therefore implement the asserted claims in the same way. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions. |
CDC RI 1.0 and CDC HI 1.0 and subsequent versions of each
CDC AMS 1.0, 1.0_1, and 1.0_2 (Personal Basis Profile and Personal Profile versions)
Personal Profile RI 1.0 and subsequent versions
Personal Profile HI 1.1.1
Personal Basis |
constantpool.c constantpool.h executejava_split1.c (or executejava_standard.c or executejava.c) interpreter.h
quicken.c | Noel Poore will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’104 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’104 patent.
He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions. |
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Identified
Instrumentality | Source Code Citations/
Documentation | Testifying Fact Witness And Summary |
Profile RI 1.0 and subsequent versions
Personal Basis Profile HI 1.1.1
Foundation Profile 1.0 and subsequent versions
CDC ToolKit 1.0 or Java ME SDK 3.0 EA and subsequent versions |
. | . |
CLDC RI 1.0 and 1.1
WTK 1.0 or Java ME SDK 3.0 EA and subsequent versions
CLDC HI 1.0 and subsequent versions
Oracle Java Wireless Client (formerly Sun Java Wireless Client) 1.0 and subsequent versions | For CLDC RI and WTK listed versions: bytecodes.c cache.c
cache.h interpret.c interpret.h
For CLDC HI and Oracle Java Wireless Client listed
versions: Interpreter_c.cpp TemplateTable.cpp TemplateTable.hpp TemplateTable_arm.cpp TemplateTable_i386.cpp TemplateTable_sh.cpp TemplateTable_thumb2.cpp | Mark Reinhold will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’104 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’104 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions. |
PersonalJava 1.0 and subsequent versions
EmbeddedJava 1.0 and subsequent versions
JavaOS 1.0 (and variants, including Java PC) and subsequent versions | classinitialize.c executeJava.c interpreter.c | John Pampuch will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’104 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’104 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not |
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Identified
Instrumentality | Source Code Citations/
Documentation | Testifying Fact Witness And Summary |
. | . | vary substantively as to the features that implement the claimed inventions. |
Java Card connected platform 3.0 and subsequent versions | bytecodes.c infrequent_bytecodes.c execute.c |
John Pampuch will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’104 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’104 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions.
|
B. The '205 Patent
The following Oracle Products practice the asserted claims of the ’205 patent, as exemplified by the identified source code citations and/or documentation:
Identified
Instrumentality | Source Code Citations/
Documentation | Testifying Fact Witness And Summary |
JDK 1.2 and subsequent versions
JRE 1.2 and subsequent versions
HotSpot 1.0 and subsequent versions |
HotSpot 1.0 version: instanceKlass.cpp interp_masm_sparc.cpp interpreter_sparc.cpp interpreterRuntime.cpp linkResolver.cpp methodOop.cpp methodOop.hpp nmethod.hpp rewriter.cpp templateTable.cpp templateTable_sparc.cpp vm_operations.cpp
Another example: bytecode.hpp globals.hpp instanceKlass.cpp |
Peter Kessler will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’205 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’205 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions. He will describe the major components of the JDK, including the Java SE class libraries and Java Virtual Machine (JVM), as well as the |
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Identified
Instrumentality | Source Code Citations/
Documentation | Testifying Fact Witness And Summary |
. | rewriter.cpp
templateTable.cpp
templateTable_i486.cpp
HotSpot 2.0 version: ciEnv.cpp
interpreter_sparc.cpp
methodOop.cpp
methodOop.hpp
templateTable.cpp
templateTable_sparc.cpp
Another example: bytecode.hpp globals.hpp
instanceKlass.cpp
rewriter.cpp
templateTable.cpp
templateTable_i486.cpp
JDK 1.3 to 1.6 example:
templateTable_i486.cpp
JDK 7 example:
templateTable_x86_32.cpp
JDK 8 example: instanceKlass.cpp
rewriter.cpp
templateTable.cpp
templateTable_x86_32.cpp | inclusion of and transition to the HotSpot virtual machine.
Peter Kessler will testify that the identified versions of JRE encompass the JDK and therefore implement the asserted claims in the same way. |
Java SE for Embedded 1.4.2 and subsequent versions |
see above and below | Robert Vandette will testify that the identified versions of Java SE Embedded are based on Java SE and the HotSpot virtual machine sources and therefore implement the asserted claims in the same way. He will testify that some releases used the CDC virtual machine technology (known as CVM), and therefore implement the asserted claims in the same way. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not |
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Identified
Instrumentality | Source Code Citations/
Documentation | Testifying Fact Witness And Summary |
. | . | vary substantively as to the features that implement the claimed inventions. |
J2EE 1.2 (later called
Java EE) and
subsequent versions |
see above | Mark Reinhold will testify that the identified versions of Java EE are bundled with Java SE and the JDK, and therefore implement the asserted claims in the same way. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions. |
Java Real Time System 1.0 and subsequent versions | see above |
John Pampuch will testify that the identified versions of Java Real Time are based on JDK 1.4 and HotSpot (and subsequent versions) and therefore implement the asserted claims in the same way. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions. |
CDC HI 1.1.1 and
subsequent versions
Personal Profile HI 1.1.1
Personal Basis Profile HI 1.1.1
CDC AMS 1.0, 1.0_1, and 1.0_2
(Personal Basis Profile and Personal Profile versions) |
classcreate.c executejava_standard.c interpreter.h jitcompile.c jitemitter_cpu.c jitgrammarrules.jcs jit_common.c jit_common.h jit_cpu.S | Noel Poore will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’205 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’205 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions. |
CLDC HI 1.1 and subsequent versions
CLDC RI 1.1.1 | InterpreterRuntime.cpp Method.cpp Method.hpp SharedStubs_arm.cpp SharedStubs_i386.cpp | Mark Reinhold will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’205 patent. He will explain the function and |
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Identified
Instrumentality | Source Code Citations/
Documentation | Testifying Fact Witness And Summary |
. | SharedStubs_sh.cpp SharedStubs_thumb2.cpp TemplateTable.cpp TemplateTable.hpp TemplateTable_arm.cpp TemplateTable_i386.cpp TemplateTable_sh.cpp TemplateTable_thumb2.cpp
| operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’205 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions. |
C. The '702 Patent
The following Oracle Products practice the asserted claims of the ’702 patent, as exemplified by the identified source code citations and/or documentation:
Identified
Instrumentality | Source Code Citations/
Documentation | Testifying Fact Witness And Summary |
JavaOS 1.1 (and variants, including Java PC) |
class.c ClassClass.java
ClassConstant.java
classinitialize.c
classloader.c
ConstantPool.java
DoubleValueConstant.java
FieldConstant.java
FileLoader.java
FMIrefConstant.java
InterfaceConstant.java
JavaOSVM.java
Jld.java
Main.java
MethodConstant.java
MultiClass.java
NameAndTypeConstant.java
SingleValueConstant.java
UnicodeConstant.java | John Pampuch will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’702 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’702 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions. |
Java Card platform 2.1 and subsequent versions |
PackageConverter.java
ClassConverter.java JcConstantPool.java | John Pampuch will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’702 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the |
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Identified
Instrumentality | Source Code Citations/
Documentation | Testifying Fact Witness And Summary |
. | . | ’702 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions. |
D. The '476 Patent
The following Oracle Products practice the asserted claims of the ’476 patent, as exemplified by the identified source code citations and/or documentation:
Identified
Instrumentality | Source Code Citations/
Documentation | Testifying Fact Witness And Summary |
JDK 1.2 and subsequent versions
JRE 1.2 and subsequent versions | ProtectionDomain.java Permission.java BasicPermission.java AccessController.java SecurityManager.java | Mark Reinhold will testify regarding how the identified instrumentalities practice the claim-in-suit of the ’476 patent. In doing so, he will refer to the identified source code citations and documentation to explain how the identified instrumentalities practice the claim-in-suit of the ’476 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions. He will describe the major components of the JDK, including the Java SE class libraries and Java Virtual Machine (JVM).
Mark Reinhold will testify that the identified versions of JRE encompass the JDK and therefore practice the patented techniques of the claim-in-suit in the same way. |
Java SE for
Embedded 1.4.2_11
and subsequent
versions | see above and below | Robert Vandette will testify that the identified versions of Java SE Embedded are based on Java SE and the HotSpot virtual machine sources and therefore implement the asserted claims in the same way. He will testify that some releases used the CDC virtual machine technology (known as CVM), and therefore implement the asserted claims in the same |
9
Identified
Instrumentality | Source Code Citations/
Documentation | Testifying Fact Witness And Summary |
. | . | way. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions. |
J2EE 1.2 (later called Java EE) and subsequent versions | see above | Mark Reinhold will testify that the identified versions of Java EE are bundled with Java SE and the JDK and therefore implement the asserted claims in the same way. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions. |
Java Real Time System 1.0 and subsequent versions | see above | John Pampuch will testify that the identified versions of Java Real Time are based on JDK 1.4 and HotSpot (and subsequent versions) and therefore implement the asserted claims in the same way. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions. |
CDC RI 1.0 and CDC-HI 1.0, and subsequent versions
CDC AMS 1.0, 1.0_1, and 1.0_2 (Personal
Basis Profile and
Personal Profile versions)
Personal Profile RI 1.0 and subsequent versions
Personal Profile HI 1.1.1
Personal Basis Profile RI 1.0 and subsequent versions |
ProtectionDomain.java Permission.java BasicPermission.java AccessController.java SecurityManager.java | Noel Poore will testify that the identified versions of the listed instrumentalities are based on JDK 1.3 and 1.4, and therefore practice the patented techniques of the claim-in-suit of the ’476 patent in the same way. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions. |
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Identified
Instrumentality | Source Code Citations/
Documentation | Testifying Fact Witness And Summary |
Personal Basis Profile HI 1.1.1
Foundation Profile 1.0.2 and subsequent versions
CDC Toolkit 1.0 and Java ME SDK 3.0 EA and subsequent versions |
. | . |
Java Card connected platform 3.0 and subsequent versions |
ProtectionDomain.java Permission.java BasicPermission.java AccessController.java | John Pampuch will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’476 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’476 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions. |
E. The '520 Patent
The following Oracle Products practice the asserted claims of the ’520 patent, as exemplified by the identified source code citations and/or documentation:
Identified
Instrumentality | Source Code Citations/
Documentation | Testifying Fact Witness And Summary |
CLDC HI 1.1.3
and subsequent versions
CLDC RI 1.1.1 and subsequent versions |
BytecodeOptimizer.cpp BytecodeOptimizer.hpp Bytecodes.hpp TemplateTable.cpp | Mark Reinhold will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’520 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’520 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions. |
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Identified
Instrumentality | Source Code Citations/
Documentation | Testifying Fact Witness And Summary |
Java Card platform 2.1 and subsequent versions |
ClinitConverter.java ClassConverter.java JcConstantPool.java |
John Pampuch will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’520 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’520 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions. |
F. The '720 Patent
The following Oracle Products practice the asserted claims of the ’720 patent, as exemplified by the identified source code citations and/or documentation:
Identified
Instrumentality | Source Code Citations/
Documentation | Testifying Fact Witness And Summary |
CDC AMS 1.0, 1.0_1, 1.0_2 (Personal Basis Profile and Personal Profile versions) | ansi_java_md.c mtask.c Warmup.java mtask.html | Erez Landau will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’720 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’720 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions. |
Dated: January 6, 2012
MICHAEL A. JACOBS
MARC DAVID PETERS
MORRISON & FOERSTER LLP
By:/s/ Marc David Peters
Attorneys for Plaintiff
ORACLE AMERICA, INC.
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CERTIFICATE OF SERVICE
[see PDF]
13-14
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Appendix B
Google’s Response to Oracle’s Position on
Alleged Practice of the Asserted Patent Claims
ROBERT A. VAN NEST (SBN 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
[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
Honorable Judge William Alsup
GOOGLE’S RESPONSE TO ORACLE’S
POSITION ON ALLEGED PRACTICE OF
THE ASSERTED PATENT CLAIMS
Google provides the following response to Oracle’s Disclosure of Products Practicing Patent Claims (“Oracle’s Disclosures”) pursuant to the Court’s December 6, 2011 Supplemental Order Regarding Patenting Marking (Dkt. No. 641) and the parties’ Joint Statement (Dkt. No. 661).
Pursuant to paragraph 2 of the Joint Statement, Google contends that Oracle cannot prove at trial that any of the products identified in Oracle’s Disclosures practice any of the 26 asserted patent claims. Oracle’s Disclosures indicate that it intends to prove at trial its alleged practice of the patents by way of testimony that it refused to provide during discovery. Moreover, Oracle has not identified any qualified fact or expert witnesses who can testify with respect to its contentions. Accordingly, Google cannot stipulate that any of the enumerated Oracle products practice any of the patents claims. And should the Court or jury find that any of the enumerated products do practice any of the patents claims, Oracle is not entitled to past damages pursuant to 35 U.S.C. § 287, for the reasons set forth in Google’s Motion for Summary Judgment on this issue (Dkt. No. 552).
I. GENERAL OBJECTIONS REGARDING ORACLE’S DISCLOSURES
First, according to the Joint Statement (Dkt. 661 and ¶ 1), “Oracle [is expected to]
provide source code citations and/or other documentation supporting Oracle’s contentions that the Oracle Products practice the asserted claims.” But Oracle has neither provided source code citations nor identified any documentation in support of its contentions. Instead, Oracle simply provides a laundry list of names of various source code files, with no indication as to what code in those files allegedly performs the claimed functionality (much less how). This approach has hampered Google in evaluating the technical merits of Oracle’s contentions with respect to many of the asserted claims.
Second, Oracle’s Disclosures reflect an intention by Oracle to present at trial testimony that (i) its witnesses were unable to, or refused to, provide at Rule 30(b)(6) depositions, and (ii) it affirmatively represented that it would not present at trial.
Third, the Federal Rules of Evidence provide that “[a] witness may not testify to a matter
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unless evidence is introduced sufficient to support a finding that the witness has personal knowledge of the matter.” (Id. at Rule 602 (emphasis added).) “‘Personal knowledge’ means knowledge of a fact perceived by the senses, by one who has had an opportunity to observe, and must have actually observed the fact.” Rosebrock v. Beiter, No. 10-cv-01878, 2011 U.S. Dist. LEXIS 61758, at *4 (C.D. Cal. May 26, 2011) (quoting Tilei v. Wan, No. 1:06-CV-00776, 2011 U.S. Dist. LEXIS 5686 (E.D. Cal. Jan. 13, 2011)). Oracle proposes to present employees to testify as fact witnesses regarding its patents and the alleged use of particular code in particular products with respect to which they have not had experience outside the context of this litigation that would qualify them as percipient witnesses. None of them are named inventors or were otherwise involved with the creation of the code at issue during the time period at issue. Instead, the proposed testimony will have been carefully spoon-fed by Oracle’s counsel for the sole purpose of offering what is in effect attorney argument from the witness stand. Whether or not the identified witnesses may have worked in Oracle’s large Java products group, they were not the engineers who implemented the source code purportedly related to the asserted patent claims. Nor do they have personal knowledge about which code was ultimately implemented in product versions that were commercially released and actually used. As a result, the identified witnesses are not qualified from their ordinary business experience as fact witnesses for any of the topics summarized throughout Oracle’s Disclosures, and their testimony is not admissible. See Pacheco v. Homecomings Fin., LLC, No. 08-cv-3002, 2010 U.S. Dist. LEXIS 64400, at *10 (N.D. Cal. June 29, 2010) (“The testimony of a witness who does not have personal knowledge of the subject of his or her testimony is inadmissible.” (citing Fed. R. Evid. 602)), aff’d, 2011 U.S. App. LEXIS 25826 (9th Cir. Dec. 27, 2011).
Moreover, even if they had percipient testimony to offer, the employees identified by Oracle cannot opine as fact witnesses on Oracle’s practice of the 26 asserted claims. See Fed. R. Evid. 701 (providing that if a “witness is not testifying as an expert, the witness’ testimony in the form of opinions or inferences is limited to those opinions or inferences which are (a) rationally based on the perception of the witness, (b) helpful to a clear understanding of the witness’
2
testimony or the determination of a fact in issue, and (c) not based on scientific, technical, or other specialized knowledge within the scope of Rule 702.” (emphasis added)).
Fourth, Oracle cannot offer these witnesses to provide expert opinion regarding its alleged practice of asserted patent claims (which requires application of claim language to commercial products), because it did not submit timely expert reports disclosing them as prepared to offer such testimony as required by the Federal Rules and the Court. See generally Fed. R. Civ. P. 26(a)(2)(B); Case Management Order, Dkt No. 56 at ¶ 11 (“[a]t trial, the direct testimony of experts will be limited to the matters disclosed in their reports.”). Moreover, these witnesses openly admitted during depositions that they were not qualified to opine on the asserted patent claims. (Pampuch Dep. at 119:17-22, 125:12-126:23, 127:15-128:22, 134:5-9 and 146:12-13; Kessler Dep. at 52:13-19, 58:20-21, 59:13-60:18; Poore Dep. at 25:22-13, 34:20-35:3; Vandette Dep. at 74:12-77:5, 88:7; Landau Dep. at 50:14-51:7). In fact, Oracle’s counsel objected to questions about Oracle’s actual practice of the patent claims on the grounds that it called for expert testimony. (See, e.g., Kessler Dep. at 60:5-6, 60:16-17, 60:25, 61:15-20, 79:9- 12.) And Oracle cannot claim that they are merely laying the foundation for its expert witnesses to opine as to the use of the patented methods in Oracle products, because none of those retained experts have expressed any opinion on the subject in their expert reports.
II. TECHNICAL AND EVIDENTIARY OBJECTIONS REGARDING THE ASSERTED
CLAIMS
A. The ‘104 Patent
Google maintains that the products listed by Oracle cannot be proven at trial to practice the asserted claims of the ‘104 patent. Oracle’s Disclosures do not provide the information required by the Joint Statement (Dkt. 661 and ¶ 1) because they include only generic descriptions of testimony to be offered and fail to actually cite any source code or documentation. As such, Google is unable to accurately evaluate and respond to Oracle’s Disclosures. Furthermore, Oracle cannot offer testimony at trial regarding the subject matter in its disclosures because its designated Rule 30(b)(6) witness refused to provide that information during discovery, and its
3
witnesses are not qualified fact witnesses on the topics identified in Oracle’s Disclosures. In addition, Oracle failed to submit any expert report regarding its alleged practice of the patent, and may not offer any such testimony opining on its practice of the asserted claims.
As a threshold matter, Oracle failed to produce a witness capable of supporting its contentions that Oracle has practiced asserted claims of the’104 patent. Oracle designated Peter Kessler as its 30(b)(6) witness regarding “[e]vidence of conception, reduction to practice, and actual use of the invention(s) allegedly set forth in the asserted claims” (emphasis added) in connection with the ‘104 patent. Although Dr. Kessler claimed at his deposition that the JDK, JRE, and HotSpot products implemented some form of symbolic resolution for class names, method names, and field names, he could not identify a single function or source code file demonstrating actual use. And for all of the other Oracle products now identified in Oracle’s Disclosures as practicing the ‘104 patent (e.g., J2EE, CDC, CLDC, etc.), he could not even testify whether these products implemented symbolic resolution or where. (Kessler Dep. at 193:21-195-14; see also id. at 201:1-203:1.) In addition, Dr. Kessler could not identify whether specific source code was even released in commercial versions of Oracle products. (See id.)
In short, Dr. Kessler was unable to—or refused to—testify at deposition regarding the very facts that Oracle now indicates it wishes him to offer at trial. Moreover, despite being identified as Oracle’s Rule 30(b)(6) witness on the topic, he could not—or refused to—testify regarding other products allegedly implementing the ‘104 patent—testimony that Oracle now seeks to present through other witnesses. (See id.) This is wholly improper. Oracle is bound to the 30(b)(6) testimony of its Rule 30(b)(6) designee and cannot offer testimony at trial that it withheld during discovery. See Calpine Corp. v. Ace Am. Ins. Co., No. 05-cv-00984-SI, 2007 U.S. Dist. LEXIS 75985 at *23-24 (N.D. Cal. Oct. 12, 2007) (“Where a party seeks to depose a corporation, the corporation shall designate a person to testify to matters ‘known or reasonably available’ to the corporation. Fed. R. Civ. P. 30(b)(6). The answers given by the person designated by the corporation in a Rule 30(b)(6) deposition are binding on the corporation.” (emphasis added)); San Francisco Bay Area Rapid Transit Dist. v. Spencer, No. 04-cv-04632-SI,
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2006 U.S. Dist. LEXIS 73135 at *2 (N.D. Cal. Sept. 25, 2006) (same); Gales v. WinCo Foods, 09-cv-05813-CRB, 2011 U.S. Dist. LEXIS 96125 at *16, n. 3 (N.D. Cal. Aug. 26, 2011) (“As a 30(b)(6) witness, her testimony is a sworn corporate admission binding on the corporation.”); Lam v. City & County of San Francisco, No. 08-cv-04702 PJH-LB, 2011 U.S. Dist. LEXIS 135538 at *2 (N.D. Cal. Nov. 17, 2011) (“the scope of the deposition in the notice is the minimum about which the witness must be prepared to testify. And a corporation has a duty under Rule 30(b)(6) to provide a witness who is knowledgeable in order to provide binding answers on behalf of the corporation.” (citations omitted)).
It was also apparent from Dr. Kessler’s deposition that he had no percipient knowledge of the functionality in Oracle’s products allegedly implementing the ‘104 patent; instead, he only knew about some source code that Oracle’s counsel directed him to in advance of his 30(b)(6) deposition, and was unable to testify regarding which code was actually released in products, as opposed to development or test code that was never implemented. (See id. at 183:23-184:2) Thus, Dr. Kessler is by no means a fact witness qualified to testify regarding the topics for which he has been identified.
From a technical standpoint, Google’s non-infringement expert, Dr. David August of Princeton University, described the claimed invention in a manner that differs from the view adopted by Oracle’s Disclosures (and its infringement contentions). (See, e.g., August 25, 2011 Expert Report of David August at ¶¶ 59-73.) Notwithstanding Oracle’s failure to provide any specific source code citations, Google is not aware of any code in the files identified by Oracle’s disclosure that practices the ‘104 patent and implements functionality within the scope of the asserted claims in accordance with Dr. August’s stated opinions. As such, Google cannot stipulate to Oracle’s practice of the claims “for all purposes and phases of trial.”
In addition, Google’s invalidity expert, Dennis Allison of Stanford University, stated in
his report that:
“[T]he ‘104 patent teaches that the symbolic reference is embedded in the interpreted instruction rather than the instruction containing a reference (an address) of a descriptor or value in a constant pool. [See, e.g. FIG 8]. The claims of the ‘685 patent [from which the ‘104 patent reissued] and the specification are consistent in this description. I
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understand that Oracle has alleged infringement of the ‘104 patent by references that are not embedded in the interpreted instruction. It is my opinion that this reading of the ‘104 patent claims is not disclosed anywhere in the original ‘685 patent.” (August 8, 2011 Expert Report of Dennis Allison at ¶¶ 244-245.)
Although Mr. Allison did not specifically address Oracle’s products, his expert report discusses the proper scope of the symbolic resolution technique set forth in the asserted claims of the ‘104 patent, and it is therefore evident that the functionality identified by Oracle with respect to its identified instrumentalities (Oracle’s Disclosures at 2-5) is beyond the scope of the ‘104 patent. In particular, rather than having symbolic references embedded in the interpreted instruction as is taught by the ‘104 patent, the instructions in each of those instrumentalities contains a reference to a descriptor or value in a constant pool.
In sum, not only does Google disagree with the technical merits of Oracle’s contentions, Oracle failed to identify a witness capable of supporting its contentions that Oracle has practiced asserted claims of the ‘104 patent. Nor has Oracle furnished an expert report regarding the alleged practice of this patent. Accordingly, Oracle cannot provide any testimony at trial (via experts or alleged fact witnesses) that opines on the practice of the asserted claims of the ‘104 patent.
B. The ‘205 Patent
Google maintains that the products listed by Oracle cannot be proven at trial to practice the asserted claims of the ‘205 patent. Oracle’s Disclosures do not provide the information required by the Joint Statement (Dkt. 661 and ¶ 1) because they include only generic descriptions of testimony to be offered and fail to actually cite any source code or documentation. Moreover, Oracle’s identification of a number of source code files is inconsistent with its identification of just a single file in response to Google Interrogatory No. 16. As such, Google is unable to accurately evaluate and respond to Oracle’s contentions. Furthermore, Oracle cannot offer testimony at trial regarding the subject matter in its disclosures because its designated Rule 30(b)(6) witness refused to provide that information during discovery, and its witnesses are not qualified fact witnesses on the topics identified in Oracle’s Disclosures. In addition, Oracle failed to submit any expert report regarding its alleged practice of the patent, and may not offer
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any such testimony opining on its practice of the asserted claims.
There is no evidence that the functionality claimed in the ‘205 patent was ever
implemented in a released product. Quite the contrary, code for the “go_native” snippets described in the ‘205 patent specification appears only in an “alpha1.5” development version of HotSpot 1.0 source code that was ultimately discarded and never released. One of the ‘205 patent’s inventors confirmed during deposition that it “[i]s not in HotSpot. We implemented it and we took it out and I believe it has never shipped in HotSpot, at least that is to the best of my recollection.” (Dep. of Robert Griesemer at 43:3-9 (emphasis added).) According to the inventor, “[t]he conclusion was that [implementing the snippets approach] was not worth the effort.” (Id. at 42:18-19.)
Oracle’s attempts to identify other functionality in its products as allegedly practicing the ‘205 patent are simply an end-run around Mr. Griesemer’s testimony that the concept behind the ‘205 patent was never practiced and “not worth the effort.” (Id.) After that deposition, Oracle responded to Google Interrogatory No. 16 by claiming that the ‘205 patent is implemented in JDK 1.2 by the fast_invokevfinal function in templateTable_i486.cpp of the HotSpot virtual machine. But the “fast_invokevfinal” routine identified by Oracle does not meet the claim elements of asserted claims 1 and 2. In any event, code and a supporting comment in the templateTable_i486.cpp file in many versions of the JDK shows suggests that the fast_invokevfinal function is disabled. As noted above, the other files now identified by Oracle were not referenced in Oracle’s interrogatory response.
Oracle presented Peter Kessler on August 4, 2011 as its designated witness for a Google 30(b)(6) deposition regarding “[e]vidence of conception, reduction to practice, and actual use of the invention(s) allegedly set forth in the asserted claims” (emphasis added) in connection with the ‘205 patent. In line with Oracle’s interrogatory response, Dr. Kessler identified only “fast_invokevfinal” in templateTable_i486.cpp for all versions of the JDK, and more broadly, for all of Oracle’s Java products. In particular, he stated “[t]here may well be other examples of my attorneys’ interpretation of the ‘205 in the source code, but the one that I know about is in
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fast_invokevfinal.” (Kessler Dep. at 54:7-10; see also id. at 56:6-7 (“I’m not aware of any other code that we’ve asserted implements the ‘205.”); id. at 56:18-20 (“At the current time I’m only aware of Oracle asserting the ‘205 in the fast_invokevfinal.”); id. at 63:12-14 (“Oracle ... has not asserted any other code with respect to this patent”).) Furthermore, Dr. Kessler’s “understanding is that some versions of templateTable_i486.cpp practice the ‘205 and some don’t” and “Oracle cannot today identify the version of templateTable_i486.cpp ... [t]hat practices the asserted claims of the ‘205.” (See e.g., id. at 83:11-13 (emphasis added); id. at 85:13-18; id. at 96:21- 97:2.) Dr. Kessler could not testify as to whether the code allegedly practicing the ‘205 patent ever shipped in a product. (See id. at 110:21-23.) In addition, Dr. Kessler could not provide any information about the alleged implementation of the ‘205 patent in any of the other Java products identified in Oracle’s infringement contentions. (See id. at 178-181.) As such, Google cannot be expected to stipulate that the various alleged implementations of the ‘205 patent identified in Oracle’s Disclosures indeed practice the ‘205 patent.
In short, Dr. Kessler could not testify at deposition regarding the very facts that Oracle now wishes to have him offer at trial. As a Rule 30(b)(6) witness, he was not prepared to testify regarding other products allegedly implementing the ‘205 patent for which Oracle now seeks to present testimony through other employees, and Oracle cannot offer at trial testimony completely opposite the testimony provided during discovery on its behalf by its designated Rule 30(b)(6) witness. (See cases cited above with respect to the ‘104 patent.) It was also apparent from Dr. Kessler’s deposition that he had no experience through his everyday work at Oracle with the functionality in Oracle’s products allegedly implementing the ‘205 patent; instead, he knew about some source code that Oracle’s counsel directed him to consider in advance of his 30(b)(6) deposition, and was unable to testify regarding which code was actually released in products, as opposed to development or test code that was never implemented. (See Kessler Dep. at 36-37.) Thus, Dr. Kessler is not a fact witness qualified to testify regarding the topics for which he has been identified.
From a technical standpoint, Google’s non-infringement expert, Dr. August, described
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the claimed invention in a manner that differs from the view adopted by Oracle’s disclosures (and its infringement contentions). (See, e.g., August 25, 2011 Expert Report of David August at ¶¶ 60-73.) As such, Google cannot stipulate to Oracle’s practice of the claims “for all purposes and phases of trial.” In addition, Dr. August specifically explained that functionality such as “inline caching” and “quick instructions” is not within the scope of the claims of the ‘205 patent. (Id. at ¶¶ 82-91.) Notwithstanding Oracle’s failure to provide any specific source code citations, Google is not aware of any code in the files identified by Oracle’s disclosure that practices the ‘205 patent and implements functionality within the scope of the asserted claims, in accordance with Dr. August’s stated opinions.
In sum, not only does Google disagree with the technical merits of Oracle’s contentions, Oracle failed to identify a witness capable of supporting its contentions that Oracle has practiced asserted claims of the ‘205 patent. Nor has Oracle furnished an expert report regarding the alleged practice of this patent. Accordingly, Oracle cannot provide any testimony at trial (via experts or alleged fact witnesses) that opines on the practice of the asserted claims of the ‘205 patent.
C. The ‘702 Patent
Google maintains that the products listed by Oracle cannot be proven at trial to practice the asserted claims of the ‘702 patent. Oracle’s Disclosures do not provide the information required by the Joint Statement (Dkt. 661 and ¶ 1) because they include only generic descriptions of testimony to be offered and fail to actually cite any source code or documentation. Moreover, the selection of source code files in Oracle’s Disclosures is inconsistent with the files identified by Oracle’s 30(b)(6) designee during deposition. As such, Google is unable to accurately evaluate and respond to Oracle’s contentions. Furthermore, Oracle cannot offer testimony at trial regarding the subject matter in its disclosures because its designated Rule 30(b)(6) witness could not provide that information during discovery, and its witness is not a qualified fact witness on the topics identified in Oracle’s Disclosures. In addition, Oracle failed to submit any expert report regarding its alleged practice of the patent, and may not offer any such testimony
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opining on its practice of the asserted claims.
Oracle’s Disclosures state that “John Pampuch will testify in support of Oracle’s
contention that the identified instrumentalities [i.e., JavaOS and the Java Card platform] practice the asserted claims of the ‘702 patent” (id. at 8). But such testimony would outright contradict Mr. Pampuch’s sworn testimony given at his Rule 30(b)(6) deposition. Indeed, Mr. Pampuch explicitly conceded he was not aware if the disclosed ‘702 patent concept of “multiclass files” was ever practiced:
Q Do you know if multiclass files, having been apparently implemented, based on what you have seen ... have they ever been used?
A I have not seen -- I don’t remember any specific instance of them being used, but certainly, to the extent that they were tested, they were used.
...
Q Are you aware of any applications that were developed that did use
multiclass files other than for testing purposes?
A No, not aware of any.
Q So it’s possible that multiclass files were never actually used other than for testing purposes?
A It’s possible.
Q Are you aware of anyone outside of Sun, including developers, other companies who licensed JavaOS, for example, ever having used multiclass files or created multiclass files?
A I don’t know with certainty.
Q You have never seen anything that indicates that anyone has used multiclass files; is that correct?
A No.
(Pampuch Dep. at 206:8-15; 208:7-23.) As Mr. Pampuch was Oracle’s designated Rule 30(b)(6) witness regarding “[t]he practice of the asserted claims of U.S. Patent No. 5,966,702 by JavaOS,” these answers foreclose any assertion that the ‘702 patent has been practiced. (See cases cited above with respect to the ‘104 patent.) Furthermore, this testimony was strictly with regard to “multiclass files”; with respect to one of the products claimed in Oracle’s Disclosures to practice the claims, Mr. Pampuch testified that he did not know if the Java Card platform implemented the ‘702 patent. (Pampuch Dep. at 192:10-15.)
Oracle’s Disclosures also claim that Mr. Pampuch will present testimony regarding files, such as FileLoader.java, about which he explicitly admitted having no knowledge during his
10
deposition:
Q Do you know what FileLoader.java does?
A No.
Q Do you know which portion of the claims -- of the asserted claims of the ‘702 patent would be implemented by this file?
THE WITNESS: No.
(Id. at 141:9-142:2 (objection omitted).
Overall, Mr. Pampuch could not testify on behalf or Oracle at his deposition regarding
the very facts that Oracle now reveals it will seek to have him offer at trial. It was also apparent from Mr. Pampuch’s deposition that he had no experience from his everyday work at Oracle with of the functionality in Oracle’s products allegedly implementing the ‘702 patent; instead, he knew about some source code that Oracle’s counsel identified for him to consider in advance of his 30(b)(6) deposition. (See id. at 92-95; 116-117.) Mr. Pampuch is by no means a percipient witness qualified to testify regarding the items for which he has been identified.
Oracle failed to identify a witness capable of supporting its contentions that Oracle has practiced asserted claims of the ‘702 patent. Nor has Oracle furnished an expert report regarding the alleged practice of this patent. Accordingly, Oracle cannot provide any testimony at trial (via experts or alleged fact witnesses) that opines on the practice of the asserted claims of the ‘702 patent.
D. The ‘476 Patent
Oracle’s Disclosures do not provide the information required by the Joint Statement (Dkt. 661 and ¶ 1) because they include only generic descriptions of testimony to be offered and fail to cite any source code or documentation. Subject to the foregoing objections and general objections, Google is unable to agree with Oracle at this point that the identified products practice the asserted claim of the ’476 patent because it is unclear whether the referenced source code files actually create the required protection domains and permissions. Indeed, Google’s review of the cited files suggests that they do not. Google hopes to clarify Oracle’s position via meet-and-confer with Oracle.
In addition, Google is unaware of evidence that the source code identified by Oracle has
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in fact been compiled into executable instructions embodied in a computer readable medium used by Oracle and/or its licensees. Again, Oracle may be able to clarify this issue via meet and confer. As it stands, Oracle provides no information to support its contention that the witnesses identified in its Disclosures have any percipient knowledge with regard to actual embodiments.
Finally, Oracle has not furnished an expert report regarding the alleged practice of this patent. Accordingly, Oracle cannot provide any testimony at trial (via experts or alleged fact witnesses) that opines on the practice of the asserted claim of the ‘476 patent.
E. The ‘520 Patent
Google maintains that the products listed by Oracle cannot be proven at trial to practice the asserted claims of the ‘520 patent. Oracle’s Disclosures do not provide the information required by the Joint Statement (Dkt. 661 and ¶ 1) because they include only generic descriptions of testimony to be offered and fail to actually cite any source code or documentation. As such, Google is unable to accurately evaluate and respond to Oracle’s contentions. Furthermore, Oracle cannot offer testimony at trial regarding the subject matter in its disclosures because it refused to provide a Rule 30(b)(6) witness regarding this subject matter during discovery. In addition, Oracle failed to submit any expert report regarding its alleged practice of the patent, and may not offer any such testimony opining on its practice of the asserted claims.
In response to a Google 30(b)(6) deposition notice regarding “[e]vidence of conception, reduction to practice, and actual use of the invention(s) allegedly set forth in the asserted claims” (emphasis added) of the ‘520 patent, Oracle informed Google that it “cannot locate a witness currently employed by Oracle who can testify based on personal knowledge as to the conception, reduction to practice, or actual use of the inventions of the ‘520 and ‘720 patents.” (See August 9, 2011 email from Daniel P. Muino to Mark Francis.) According to the Court’s Supplemental Order (Dkt. No. 26 at ¶23(c)), “[i]f an organization cannot reasonably locate a witness to testify based on personal knowledge, there is no requirement under Rule 30(b)(6) for the organization to ‘woodshed’ or to ‘educate’ an individual to testify on the subject. If the organization does not produce any such deponent, however, the organization may not present
12
case-in-chief evidence at trial or on summary judgment on that topic from any witness it could have so designated.” As such, Oracle cannot present any case-in-chief testimony at trial regarding any alleged use of the ‘520 patent.
Furthermore, Oracle affirmatively represented to Google during discovery that it would not seek to have any Oracle employee testify at trial regarding actual use of the ‘520 patent. (See August 9, 2011 email from Daniel P. Muino to Mark Francis (“We can confirm that we will not present an Oracle employee or officer at trial to testify regarding the conception, reduction to practice, or actual use of the inventions of the ‘520 and ‘720 patents.”))
Oracle refused to present a witness in response to Google’s Rule 30(b)(6) deposition notice concerning Oracle’s contentions that it practiced asserted claims of the ‘520 patent. Nor has Oracle furnished an expert report regarding the alleged practice of this patent. Accordingly, Oracle cannot provide any testimony at trial (via experts or alleged fact witnesses) that opines on the practice of the asserted claims of the ‘520 patent.
F. The ‘720 Patent
Google maintains that the products listed by Oracle cannot be proven at trial to practice the asserted claims of the ‘720 patent. Oracle’s Disclosures do not provide the information required by the Joint Statement (Dkt. 661 and ¶ 1) because they include only generic descriptions of testimony to be offered and fail to actually cite any source code or documentation. As such, Google is unable to accurately evaluate and respond to Oracle’s contentions. Furthermore, Oracle cannot offer testimony at trial regarding the subject matter in its disclosures because it refused to provide a Rule 30(b)(6) witness regarding this subject matter during discovery. In addition, Oracle failed to submit any expert report regarding its alleged practice of the patent, and may not offer any such testimony opining on its practice of the asserted claims.
Google’s non-infringement expert, Dr. Jack Davidson of the University of Virginia, described the claimed invention in a manner that differs from the view adopted by Oracle’s disclosures (and its infringement contentions). (See, e.g., August 25, 2011 Expert Report of Jack Davidson at ¶¶ 85-89.) In particular, the source code files referenced by Oracle do not provide a
13
mechanism to compile source code during the loading process and therefore do not implement the asserted claims. As such, Google cannot stipulate to Oracle’s practice of the claims “for all purposes and phases of trial.”
Moreover, in response to a Google 30(b)(6) deposition notice regarding “[e]vidence of conception, reduction to practice, and actual use of the invention(s) allegedly set forth in the asserted claims” (emphasis added) of the ‘720 patent, Oracle informed Google that it “cannot locate a witness currently employed by Oracle who can testify based on personal knowledge as to the conception, reduction to practice, or actual use of the inventions of the ‘520 and ‘720 patents.” (See August 9, 2011 email from Daniel P. Muino to Mark Francis.) According to the Court’s Supplemental Order (Dkt. No. 26 at ¶23(c)), “[i]f an organization cannot reasonably locate a witness to testify based on personal knowledge, there is no requirement under Rule 30(b)(6) for the organization to ‘woodshed’ or to ‘educate’ an individual to testify on the subject. If the organization does not produce any such deponent, however, the organization may not present case-in-chief evidence at trial or on summary judgment on that topic from any witness it could have so designated.” As such, Oracle cannot present any case-in-chief testimony at trial regarding any alleged use of the ‘720 patent.
Furthermore, Oracle affirmatively represented to Google during discovery that it would not seek to have any Oracle employee testify at trial regarding actual use of the ‘720 patent. (See August 9, 2011 email from Daniel P. Muino to Mark Francis (“We can confirm that we will not present an Oracle employee or officer at trial to testify regarding the conception, reduction to practice, or actual use of the inventions of the ‘520 and ‘720 patents.”))
Oracle refused to present a witness in response to Google’s Rule 30(b)(6) deposition notice concerning Oracle’s contentions that it practiced asserted claims of the ‘720 patent. Nor has Oracle furnished an expert report regarding the alleged practice of this patent. Accordingly, Oracle cannot provide any testimony at trial (via experts or alleged fact witnesses) that opines on the practice of the asserted claims of the ‘720 patent.
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DATED: January 20, 2012
KEKER & VAN NEST, LLP
By: /s/ Christa M. Anderson
ROBERT A. VAN NEST (SBN 84065)
[email]
CHRISTA M. ANDERSON (SBN 184325)
[email]
KEKER & VAN NEST 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]
DONALD F. ZIMMER, JR. (SBN 112279)
[email]
CHERYL A. SABNIS (SBN 224323)
[email]
KING & SPALDING LLP
[address, phone, fax]
IAN C. BALLON (SBN 141819)
[email]
HEATHER MEEKER (SBN 172148)
[email]
[address, phone, fax]
ATTORNEYS FOR DEFENDANT
GOOGLE INC.
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CERTIFICATE OF SERVICE
[see PDF]
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