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Oracle v. Google - Court Rejects Much (But Not All) of the Supplemental Reports of Drs. Cox and Leonard
Thursday, March 15 2012 @ 07:45 PM EDT

Still pending from this latest round of damage reports has been Oracle's motion to strike portions of the supplemental reports submitted by Drs. Cox and Leonard on behalf of Google. (771 [PDF; Text] and 773 [PDF; Text]) The Court has now ruled on that motion and granted Oracle much of what it requested. (796 [PDF; Text])

Specifically, the Court has rejected:

  • Dr. Cox' calculation of damages for coyright disgorgement and copyright lost profit set forth in the supplemental report;
  • Dr. Leonard's statement that"[i]t is the value that Google was expecting to receive that matters for the reasonable royalty analysis;" and
  • Dr. Leonard's forward-citation ranking of the '104 patent.

Left standing from the supplemental reports are Dr. Leonard's ranking of the '205 and '720 patents, the reliance on the 2010 acquisition document, and anything else included in the supplemental reports to which Oracle did not object. Also left standing are the original Cox and Leonard reports as they were left standing following the Court's November 28, 2011 order (632 [PDF; Text]).

Given the devastation done to the Cockburn report by the Court's order from Monday, the striking of these portions of the Cox and Leonard reports is not a great loss to Google.



03/15/2012 - 796 - ORDER GRANTING IN PART AND DENYING IN PART DAUBERT MOTION TO STRIKE GOOGLE'S SUPPLEMENTAL EXPERT DAMAGES REPORTS by Hon. William Alsup granting in part and denying in part 729 Motion to Strike 734 MOTION to Strike EXCLUDE PORTIONS OF THE SUPPLEMENTAL EXPERT REPORT OF DR. ALAN J. COX.(whalc1, COURT STAFF) (Filed on 3/15/2012) (Entered: 03/15/2012)





No. C 10-03561 WHA




In this patent-infringement action, plaintiff moves to exclude portions of defendant’s supplemental expert damages reports. For the reasons stated below, the motion is GRANTED IN PART and DENIED IN PART.


The background was set forth in previous orders (see Dkt. Nos. 230, 685, 785). In response to Dr. Ian Cockburn’s third expert damages report, Google’s experts, Drs. Gregory Leonard and Alan Cox were permitted to submit supplemental damages report that directly responded to new material in Dr. Cockburn’s third report (Dkt. No. 702). Dr. Leonard’s supplemental report on patent damages was based on the six patents previously asserted, the ’476, ’702, ’720, ’205, ’104, and ’520 patents. While briefing was underway, one was withdrawn with prejudice. Another three rejected by the PTO examiner were withdrawn if the trial is held before the administrative appeals are completed, a withdrawal whose effect will be considered below.

Therefore, there is a strong possibility that only the ’104 and ’520 patents will be asserted at trial, and this order will only address issues pertaining to these two patents, without prejudice to revisiting objections specific to the withdrawn patents if they later arise.

In his supplemental report on patent damages, Dr. Leonard conducts a so-called “forward citation” analysis to arrive at his own ranking of the 22 patents from Dr. Cockburn’s report. This was done to critique Dr. Cockburn’s “upper bound” opinion that three patents in suit were the most valuable of the 22. Now that Dr. Cockburn’s “upper bound” opinion has been stricken and the number of asserted patents reduced, the only remaining issue is whether Dr. Leonard can opine that the ’104 patent ranks in the “middle or worse” of the top 22 patents. Specifically, whether Dr. Leonard can opine that the ’104 patent ranks 17th among the top 22 patents under the forward-citation analysis (Rpt at 7).

Dr. Leonard also criticizes Dr. Cockburn’s valuation of Sun’s Java mobile patent portfolio, which included 569 Sun patents, for being too high. For support of his opinion, Dr. Leonard references an Oracle acquisition-accounting document prepared in 2010 that purports to value Sun’s Core Technology, which included 14,000 Sun patents (including the patents in suit), at $505 million (Rpt at 9).

In his supplemental report on copyright damages, Dr. Cox decreases his calculated damages for both copyright disgorgement and copyright lost profits despite the fact that Dr. Cockburn’s third report did not revisit or revise his opinion on either subject. In Dr. Cox’s original October 2011 report, he had calculated damages for copyright disgorgement at $39.6 million and lost profits at $5.7 million. Those calculations relied on Dr. Steven Shugan’s conjoint analysis’ estimate of Android’s market share and revenue attributable to copyright infringement. Specifically, Dr. Cox relied on the conjoint analysis’ estimate that approximately 14% of Android’s market share and approximately 8% of Google’s revenue was due to Google’s infringement of the 37 API packages. Now, in his supplemental report, Dr. Cox abandons his prior reliance on the conjoint analysis and instead relies on Dr. Cockburn’s new group-and-value apportionment of the 2006 bundle for patent and copyright reasonable royalty. Using the groupand- value’s “lower bound” number of 5.1% for copyright allocation, Dr. Cox revises his


calculated damages of copyright disgorgement to $2.3 million and copyright lost profits to $2.1 million (Rpt at 8–12).


An expert witness may provide opinion testimony “if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case.” FRE 702. District courts thus “are charged with a ‘gatekeeping role,’ the objective of which is to ensure that expert testimony admitted into evidence is both reliable and relevant.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1360 (Fed. Cir. 2008).


A. Forward-Citation Ranking
of the Top 22 Patents.
As a critique of the “upper bound” opinion in Dr. Cockburn’s group-and-value approach, Dr. Leonard conducts a forward-citation ranking of the patents within the top 22. Specifically, Dr. Leonard uses the citation count of each of the top 22 patents as a proxy for the value of that patent. First, Dr. Leonard counts the number of times each patent has been cited by any another U.S. patent. Next, he “control[s] for patent age by comparing each patent’s forward citation count to the number of forward citations for other patents in the same technology class and of approximately the same age. Specifically, [he] considered patents that were issue within three years before or after the subject patent’s issue date” (Leonard Decl. ¶ 4). Finally, he ranks the top 22 patents by their age-adjusted citation counts to get the following result (Rpt at 7):

[T]he ’104/’205/’720 patents in suit rank 10th (’720), 11th (’205), and 17th (’104) among the 22 patents — again, in the middle of the pack or worse . . . . This, in turn, suggests that only the lower bound on Dr. Cockburn’s range has any support.
With respect to the ’104 patent, Dr. Leonard’s ranking is fatally flawed. Dr. Leonard fails to account for the fact the ’104 patent was re-issued twice, and thus fails to include citation counts to its predecessor patents. The predecessor to the ’104 patent was US Patent RE36204, which was applied for in November 1996 and issued in April 1999, and has one citation. The predecessor to USRE36204 was US Patent 5367685, which was applied for in December 1992


and issued in November 1994, and has 73 citations (Cockburn Decl. ¶ 5). Dr. Leonard fails count the 74 predecessor citations and instead counts only three citations for the ’104 patent (Richardson Decl. Exh. C). Had those predecessor citations been counted, the rank of the ’104 patent would have jumped from 17th to the top (see Cockburn Decl. ¶ 6).

Google responds to this criticism by arguing that because the ’104 patent has been reissued with different claims, then counting citations to predecessor patents would have been inappropriate. This argument is not persuasive. Patents are not cited for their claim language; instead, patents are cited if they disclose important ideas material to a later application’s patentability. That is why the citations are to the entire patent, which is largely composed of specifications and drawings, not claims. The predecessor patents to the ’104 patent had the same specifications and drawings. Not counting citations to these predecessor patents is error. Therefore, Dr. Leonard’s ranking of the ’104 patent and any opinion based on that ranking is STRICKEN.

B. Oracle’s 2010 Accounting Document.
As an alternative base for a reasonable royalty allocation, Dr. Leonard relies on an accounting document prepared by Oracle in connection with its January 2010 acquisition of Sun. In April 2010, a few months after Sun’s acquisition, Oracle’s accounting department prepared an “Estimation of the Fair Value of Certain Assets and Liabilities of Sun Microsystems, Inc. as of January 26, 2010” report. The report was prepared to assist “Oracle Corporation management in allocating the Sun purchase price for financial report purposes.” One section of this document calculated the fair value of the Sun Core Technology, which included all of Sun’s 14,000 patents in 2010 (including the patents in suit), at $505 million (Zimmer Decl. Exh. F). Dr. Leonard opines that this amount should serve as the base for apportionment of the patents in suit in the 2006 hypothetical negotiation.

According to the accounting document, $505 million was the calculated “fair value” for 14,000 patents under a “profit allocation method.” Fair value was defined as “the price that would be received to sell an asset or paid to transfer a liability in orderly transaction between market participants at the measurement date [January 2010].” The profit-allocation method


estimated the value “by capitalizing the profit saved because the company owns the technology. In other words, the owner realizes a benefit from owning the intangible asset rather than paying a rent or profit for the use of the asset” (Zimmer Decl. Exh. F). To summarize, the $505 million was an estimate of a reasonable royalty for an unrestricted, perpetual license (although not necessarily an exclusive license) of all 14,000 patents in Sun’s 2010 patent portfolio. Although this valuation was on Sun’s 2010 patent portfolio, four years after our 2006 hypothetical negotiation, it is nevertheless relevant to the reasonable royalty analysis.

Post-infringement information can be helpful in assessing whether a royalty is reasonable. Lucent Technologies, Inc. v. Gateway, Inc., 298 F.3d at 1313–14 (2009). Here, the 2010 document is relevant because the patents in suit were also owned by Sun in 2010. Thus, the $505 million valuation would have included the patents in suit. This dollar amount, in turn, can shed light on the reasonableness of the royalty estimates by the parties’ experts. Rephrased in the words of our Supreme Court, the 2010 document can “bring out and expose to light the elements of value that were there from the beginning.” Sinclair Refining Co. v. Jenkins Petroleum Co., 289 U.S. 689, 691-92 (1933). Although the number of total patents owned by Sun likely changed between 2006 and 2010, this does not make the 2010 valuation irrelevant as there is no evidence that Sun’s patent portfolio unforeseeably surged or plunged in value between 2006 and 2010.

Oracle argues that the report should be excluded because the profit allocation method does not measure the full value of Sun’s intellectual property in 2006, including profits earned through licensing to third parties such as Google. This may be true. Nevertheless, the profit allocation method is relevant because it estimates the value of a license to Sun’s patent portfolio. Since the 2006 negotiation between Google and Sun was for a license to the patents in suit, not a complete sale of the patents in suit, the $505 million calculation is relevant and will not be excluded.

C. Opinion That Reasonable Royalty Should Be Limited to the Value that
Google Was Expecting to Receive.
Oracle requests that the Court strike Dr. Leonard’s opinion that the reasonable royalty should be limited to Google’s expected revenue from a license. In his supplemental report, Dr. Leonard opines that “[i]t is the value that Google was expecting to receive that matters for the


reasonable royalty analysis” (Rpt at 8). This statement is too close to an inappropriate suggestion of law.

The infringer’s revenue from the infringement does not cap the amount of a reasonable royalty. Both patentee’s and infringer’s expected revenues and losses should be considered in calculating a reasonable royalty. The court of appeals has held that “although an infringer’s anticipated profit from use of the patented invention is among the factors to be considered in determining a reasonable royalty, the law does not require that an infringer be permitted to make a profit.” Monsanto Co. v. Ralph, 382 F.3d 1374, 1384 (Fed. Cir. 2004) (emphasis added). Permitting Dr. Leonard to offer testimony that is contrary to law would intrude on the Court’s role in instructing the jury as to the relevant considerations for calculating a reasonable royalty. Therefore, Dr. Leonard’s opinion that “[i]t is the value that Google was expecting to receive that matters for the reasonable royalty analysis” is STRICKEN.

Subject to the rules of evidence, Dr. Leonard can opine that “Google would have decided how much it was willing to pay Sun based on its expectations of the value of the partnership to Google” (Opp. at 11), just as Dr. Cockburn can opine that Sun would not have licensed its intellectual property for an allegedly incompatible Android without full compensation for its losses.

The order allowing Google to submit supplemental damages reports limited the revisions to only those “directly responsive to new material by Dr. Cockburn” (Dkt. No. 702). Dr. Cox’s calculation of copyright disgorgement and copyright lost profits in his supplemental report goes beyond this instruction because Dr. Cockburn did not revisit either of those topics in his third damages report.

In his original October 2011 report, Dr. Cox chose not do perform his own Android market-share analysis. Instead, his calculations of copyright disgorgement and copyright lost profit relied on Dr. Shugan’s estimate of incremental Android market shares and revenue attributable to the 37 API packages. Specifically, Dr. Cox took the results from Dr. Shugan’s conjoint analysis to come up with 8.1% for the incremental Android revenue wrongfully earned


and 13.45% for the market share of Android attributable to the copyright infringement (Dearborn Decl. Exh. A at 58, 38–40).

None of the information relied on by Dr. Cox in his October 2011 report changed in Dr. Cockburn’s third damages report: Dr. Shugan’s conjoint analysis was not changed. No new estimates of Android market share and revenue attributable to the copyright infringement were calculated. Therefore, Dr. Cox revisions in his supplemental report were not “directly responsive to new material by Dr. Cockburn.”

Instead of directly responding to new material in the third damages report, Dr. Cox simply takes numbers from Dr. Cockburn’s new group-and-value approach, which did not calculate Android revenue or market share, and uses them in a new methodology for calculating copyright disgorgement. Such a revision was not allowed by the order permitting supplemental reports. Furthermore, in other calculations, Dr. Cox simply substitutes numbers from Dr. Shugan’s conjoint analysis with lower numbers from Dr. Cockburn’s new group-and-value approach. These are inappropriate substitutions. Dr. Cockburn’s group-and-value approach and Dr. Shugan’s conjoint analysis were two completely different calculations. Dr. Shugan’s conjoint analysis purported to estimate 2008-2011 Android market share and revenue. The group-and-value approach purported to apportion the 2006 license bundle. The problem with equating the two calculations has been stated many times and will not be repeated here (Dkt. No. 685, 785).

In his October 2011 report, Dr. Cox chose to rely on the market share estimates from Dr. Shugan’s conjoint analysis. He cannot backpedal from that reliance now. This remains true even though a recent order has stricken the conjoint analysis’ determination of market share (Dkt. No. 785). This is because Google itself argued that the conjoint analysis’ determination of market share was unreliable in its Daubert motion against Dr. Cockburn’s third damages report (Dkt. No. 718 at 14–17). Google has put itself in this difficult position by arguing that the conjoint analysis was unreliable while knowing that its own expert was relying on the results. Google’s expert cannot abandon his calculations now.


In sum, because Dr. Cox’s calculation of damages for copyright disgorgement and lost profit in his supplemental report are not directly responsive to new material by Dr. Cockburn, these calculations are STRICKEN.


For the reasons stated, Dr. Cox’s calculation of damages for copyright disgorgement and copyright lost profit in his supplemental report is STRICKEN. Dr. Leonard’s statement that “[i]t is the value that Google was expecting to receive that matters for the reasonable royalty analysis” is STRICKEN. Dr. Leonard’s forward-citation ranking of the ’104 patent is STRICKEN. The motion to strike Dr. Leonard’s ranking of the ’205 and’720 patents is denied without prejudice. The motion to exclude the 2010 acquisition document is DENIED. Nothing stricken by this order affects the experts’ original reports, which are not the subject of this Daubert motion.


Dated: March 15, 2012.

/s/ William Alsup



Oracle v. Google - Court Rejects Much (But Not All) of the Supplemental Reports of Drs. Cox and Leonard | 232 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Authored by: Kilz on Thursday, March 15 2012 @ 08:09 PM EDT
Please list the mistake in the title of your post.

[ Reply to This | # ]

Off Topic
Authored by: Kilz on Thursday, March 15 2012 @ 08:10 PM EDT
For all posts that are not on topic.

[ Reply to This | # ]

Authored by: Kilz on Thursday, March 15 2012 @ 08:11 PM EDT
Please mention the name of the news story in the top most post.

[ Reply to This | # ]

Authored by: Kilz on Thursday, March 15 2012 @ 08:12 PM EDT
Please leave anything you have done to help PJ with this important work here.

[ Reply to This | # ]

Google actually gets a big win out of this
Authored by: Anonymous on Thursday, March 15 2012 @ 08:51 PM EDT
An actual Oracle document as evidence that they believed all 14,000 of Sun's
patents were worth only $505 million was not excluded and can therefore be
presented to the jury. Kind of blows a hole in their wish of billions of dollars
in damages for 6 out of 14,000 patents.

[ Reply to This | # ]

Oracle v. Google - Court Rejects Much (But Not All) of the Supplemental Reports of Drs. Cox and Leonard
Authored by: AntiFUD on Thursday, March 15 2012 @ 10:17 PM EDT
I must be suffering from a bout of being thicker than two planks, but I am now
confused (despite being 'educated' by a bunch of so-called experts, for both
sides) about how one assesses the value of a patent and/or its claims, and the
value of a software copyright.

My experience is/was in valuing companies prior to their IPOs, working based on
cash-flow generation, net present valuations of assets and liabilities and
internal rates of return on loans or investments on both cash and an accrual

However, what I have learned, or rather failed to learn, from our rather
restricted insight into Oracle's and Google's damages reports is that there
really is no really cut and dried way to assess the value of a patent or its
claims whether with respect to the inventor, to the assignee (troll?) or a
possible infringer. The same goes for a copyright over a collection, such as a
bunch of APIs, or a snippet of code that might have been open sourced but which
might have been considered to be a derivative work by some legal eagle.

Having failed, with respect to the foregoing, I am no closer to knowing, as a
rule of thumb, exactly what as a percentage of the foregoing indeterminability
(is that really a new word?) of value of an individual patent or copyright
(code) infringement, would be considered a 'reasonable' royalty or license fee.

I once met the guy who invented the cat's-eye that reflect headlights to
delineate road markings and he had earned millions at 1 penny apiece.

As an aside, the only thing that Oracle has satisfactorily explained in all
their filings is that they have changed Sun's java mission statement from:
"Write once, run anywhere" to "Write once, run anywhere, but pay
us billions if we don't like you".

Oh, and by the way, I am sure that it will come up during the trial, but how can
Oracle, as a provider of really, really reliable secure databases, plausibly
assert that they have lost Sun's website and all the webpages that would have
given us, and the jury, insight into exactly what was what and when with respect
to the development of "Java" in all its versions and glory and the
terms of any licensing thereof and thereto and what was 'published' wrt the APIs
and java language and any and all encouragement to users/developers to embrace
the Java ecosystem.

Rant over.

IANAL - Free to Fight FUD - "to this very day"

[ Reply to This | # ]

Oracle v. Google - Court Rejects Much (But Not All) of the Supplemental Reports of Drs. Cox and Leonard
Authored by: janolder on Friday, March 16 2012 @ 04:46 AM EDT
Oracle is defending the "write one, run anywhere" of java in this case. Google taking java and making it not write once, run anywhere in android is why oracle is bringing this case.
Oracle is doing no such thing and Google is doing no such thing. Oracle is trying to offset the cost of acquiring Sun by any means possible, even if it results in alienating the Java user base. I've certainly decided to not use Java for any new products going forward.

In court Oracle is going after Google for reimplementing the Java specification. If Oracle was, as you claim, interested in defending "write once, run anywhere" they would applaud Google for adhering to the spec as closely as they have and perhaps urge Google to implement all of it. Instead, Oracle takes the position that Google should not have written libraries per Java spec which is the opposite of defending "write once, run anywhere" as you'd end up with something that executes Java code but will only run on Android.

[ Reply to This | # ]

"write one, run anywhere"
Authored by: mcinsand on Friday, March 16 2012 @ 10:44 AM EDT
"write one, run anywhere"

This still galls me, especially since one patent test was *supposed* to tie
software to specific hardware... at least that was either my misunderstanding or
the rules changes. The whole point of Java is to remove the connection between
software and a specific machine, but the patents are still there.

[ Reply to This | # ]

Yet Another API definition, The Towbar analogy
Authored by: Anonymous on Friday, March 16 2012 @ 10:49 AM EDT
I think the briefing request is very astute.

The level of noise around these very forums on where the lines are drawn between
languages, libraries, system calls, specifications is evidence of the confusion
caused by the use of the term API and how it is being used by either of these
parties to the litigation.

I've not exactly been silent on it and I've seen some very weird ideas about
what is and what is not an API and what it may or may not be that could or could
not have been copied.

So here's my take, and I'm going to try and keep it simple if not short, but to
start let's be clear on one thing

A Towbar.
My definition of a towbar that is; which is what we need for this rather than
either an accurate or generalised definition.
It's purpose is to enable a vehicle to tow a trailer.
It is..
1) a variously shaped/length metal bar
2) Attachment points for rigidly fixing the bar to a vehicle
3) An T-extension to the bar which is attached from (usually) the middle of the
bar and stick out beyond the rear of the vehicle, curls upwards till vertical
and is topped by a metal ball.

The Vehicle is java program
The Trailer is a JVM

The API is the metal ball.

Oracle own the trailer, they called it Java, It is an extremely useful trailer
and no-one has seen anything quite like it before, even though for a long time,
they wished that such a trailer was possible.
It is Oracles trailer, you may not make another one like it without their
permission and you may not call it Java unless they agree to let you which they
will usually do provided that regardless of what's underneath, it looks exactly
like their trailer. It is a good trailer and we don't mind rewarding your for

In order to demonstrate how useful their trailer was, they gave away a free
vehicle and called it TheJavaLanguage and said look, use this, it makes it
really easy to use our trailer, go forth, use freely and be fruitful.

Of course you don't have to use their free vehicle, you can use anything you
like, so long as it has a suitably sized metal ball on it. Thing is though, you
can be very comfortable about the fact that if you do use the free vehicle, the
trailer will do exactly what it says on the tin(tm)(c)(r), whereas if you use
your own vehicle, well it might be difficult(tm)(c)(r) you know. If the
MetalBall is too little, the trailer might wobble a bit, if it's too big, the
trailer might even fall off completely, but there's no need to because you've
got this handy free vehicle which the trailer manufacturer has assured you will
work perfectly. But you don't have to use their vehicle to pull the trailer if
you don't want to

Similarly, you gave me the vehicle, you can't *make* me attach your trailer to

In fact I've had a brilliant idea it's like this snowboard type thing but with
wheels on it and a para-sail that automagically deploys at the right speed and
an aerial so I can send and receive things wirelessly and a camera so I can
store wherever I've been and so much other stuff you just wouldn't believe it.

I call it a Dalvik.

And the *really* fun part, is if I drill a hole towards the front of my Dalvik
board I can use a (suitably sturdy) piece of string to tie it to my free vehicle
using the Metal Ball(tm)(c)(r) as an attachment point and Dalvik will *fly*.

I know that Oracle didn't think that's what I was going to use my free vehicle
for, and they may not like it, but, you know the dude who invented fireworks
probably didn't think they would end up being twisted into effective killing
devices either. Get over it.

Sorry? What did you say Oracle? Well yeah, I am shipping 4million Dalviks a day
and quite a few people are making a sizeable chunk of pocket change from related
products....but, erm , I don't quite get it, say again why you think I should
start paying you for all those vehicles you gave away!

There you have it.
Fire away

[ Reply to This | # ]

Java Language and API are inseperable.
Authored by: BitOBear on Friday, March 16 2012 @ 01:59 PM EDT
Quick Tautology:

Java Programs are invoked by calling the "main" method of some class.

All methods are members of some class.

All classes are descended from java.lang.Object either explicitly or


Or everything that is thrown or caught must be a descendant of


java.lang.String... e.g. the thing you get when you pair up double-quotes in any
java code. Ponder this tautology: "this text, including the quotes, inside
any java program, would cause a java.lang.String object to be created by the


I gave better citations previously. (one main article back).

Simply put, the language spec is full of holes and undefined tidbits without the

[ Reply to This | # ]

More on APIs
Authored by: Anonymous on Saturday, March 17 2012 @ 07:57 PM EDT
Cleaning cruft from my downloads folder last night I stumbled across

Joshua Bloch via Google on how (and why) to write APIs, from 2007 on youtube

A lawyer's view on Copyright Protection for APIs, 2005, Efthimios Parasidis 32pp pdf

[ Reply to This | # ]

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