In its supplemental copyright brief [PDF; Text] Oracle expends a lot of energy misinterpreting Google's copyright liability brief and making declarative and authoritative statement as to what the law is (as opposed to making its arguments to the court as to what the law is). Oracle starts off by asserting that Google "argues the structure of the Java APIs is not protectable because the structure is not a computer program." That is not what Google argued at all. Google argued that you have to start (under the abstraction prong of the abstraction-filtration-comparison test) by considering what is not protected by copyright and then arguing that virtually everything in the APIs constitutes non-copyrightable material. Thus, the only thing that is protectible is the compilation (the complete API) and then only if the compilation constitutes an original work of authorship. More importantly, Google argues that API specifications, unlike code that implements the API, are not computer programs, and thus, the "selection, arrangement and structure" argument is inapplicable. So Google isn't arguing that "a computer program does not itself have to be a computer program to be copyrightable" as Oracle suggests; Google is arguing that an API specification is not a computer program.

Jump To Comments

Again, at another point Oracle argues: "Google copied the detailed selection, arrangement, and structure of Oracle’s computer programs, which are described in Oracle’s specifications and source code." But that is a dramatic change from Oracle's contentions to date. Oracle has only argued that Googled copied the API specifications, not the source code implementation. This comes across as Oracle deliberately trying to confuse the Court.

Oracle is right on at least one point, i.e., that the issue of whether programming languages are protectable subject matter under copyright is not particularly germane to the issues at hand. Oracle has already conceded that the Java Programming Language is not at issue. Oracle's disagreement with Google, in part, is whether some or all of the APIs at issue are necessary to the utility of the Java Programming Language, and that clearly remains a point of contention between the parties.

Google, for its part, argues that API specifications, in their essence, are not subject matter protected by copyright. (860 [PDF; Text]) because they are an idea, process, system or method of operation and that they are not computer programs. As Google points out:

The APIs “tell the programmer how to use the library, and include a set of names that can be used to access different features of the library, together with conventions about their use.” Oracle Copyright MSJ Opp. [Dkt. 339] at 2 (emphasis added). That is, they are a system or method of operation. And as Oracle implicitly concedes, the APIs, divorced from the noninfringing source code, do not even qualify as a set of instructions for bringing about “a certain result.”

The source code Google wrote to implement the APIs is copyrightable expression, even though it implements what is, at a higher level of abstraction, an unprotectable method of operation.

In the end, these disparate positions on copyright liability are not the final word because the Court issued two orders requesting further briefing on the issue of copyright liability. In the first (865 [PDF; Text]) the Court has asked the parties to further brief the issue of whether programming languages have been held to be copyrightable or should be so held. Specifically, the Court directed the parties to:

... please file further briefing on whether computer programming languages have been held to be copyrightable or should be so held, developing the arguments much more fully than were done in the recent briefs. Also please summarize the expected trial evidence on the extent to which the 37 APIs should be or are deemed part of the Java programming language. What will be the expected trial evidence as to how APIs are regarded in other programming languages like C ++ . How did APIs develop in the history of programming, according to the trial evidence?

... take a firm yes or no position on whether computer programming languages are copyrightable. In addition, each side shall include whether it has ever taken an inconsistent position before any other court or agency, including the PTO, and if so, append those inconsistent statements.

In a separate motion (861 [PDF; Text]) Google has asked that certain issues be deemed as undisputed. This motion, in part, is a response to the Court's earlier request of the parties to affirm the Court's understanding of what is at issue in the case (854 [PDF; Text]). Google moves that the following three issues be deemed undisputed:

1. The Java programming language is open and free for anyone to use.
2. The names of the Java language API files, packages, classes, and methods are not protected by copyright law.
3. Aside from a nine-line function that Oracle accuses Google of copying, Oracle does not contend that Android’s source code in any of the accused APIs was copied from the source code used in the Java platforms.

As Google points out in the accompanying memorandum, Oracle has stated on numerous occasions that the Java Programming Language is freely available under an open source license and is not in contention here. Second, the Court has previously held that "the names of the Java language API files, packages, classes, and methods are not protected by copyright law. This issue is therefore the law of the case, and cannot be disputed." Finally, of the 11 files that Oracle contends Google copied directly, only 3 are in the 37 APIs at issue, and only one of those three is source code (the other two were comments contributed by Intel to the Harmony project). Presumably, the commentary has no economic value. The remaining 8 files are part of the Android code but were not a part of the Oracle Java API specifications.

The parties also attack each other's motion to exclude portions of Dr. Kearl's report. You will recall that, in its motion to exclude, Google stated:

... Dr. Kearl also opined that, as a matter of economics, no apportionment is appropriate, and that Google should be charged a royalty for the entire bundle — not merely the intellectual property in suit. Kearl Report W 97-105. [REDACTED] Id. [REDACTED] Id. Dr. Kearl opined that, if Google knew during the 2006 negotiations which of the Sun patents and copyrights ultimately would be useful to Android, the negotiation over the bundle would really have been a negotiation over that specific IP. (There is no evidence that Google knew anything specific about the contents of the Sun bundle in 2006, and Dr. Kearl cites none.) Alternatively, Dr. Kearl opined that, if Google did not know which of the Sun patents and copyrights would be useful to Android, it may have wanted to keep open multiple options as to how to design Android or to buy insurance against future infringement claims by Sun. Id. ¶¶ 100-103. [REDACTED] ... At deposition, Dr. Kearl readily conceded that his economic judgment was in tension with the requirements of the law and the Court's prior orders ...

Oracle, on the other hand, focused its earlier motion to exclude almost solely on the amount by which the 2006 valuation was to be discounted for Google's expenses in developing Android. Oracle argued that there was no evidence to support the amount of that discount. In its response (868 [PDF; Text]) Google argues that Oracle's motion to exclude is really a thinly-veiled preemptive evidentiary ruling request seeking to bar Google from introducing evidence of the cost of developing Android. Google argues Oracle is, in effect, seeking a further motion in limine when Oracle has already used up its allotted five such motions. Google's argument would appear to be clear cut and consistent with the law. We'll see if the judge agrees.

Finally, the parties have stipulated as to the equipment they want available at trial. (864 [PDF; Text]). The list of equipment is only interesting from the standpoint of how highly technical and connected (to the internet) these trials have become.

Jump To Comments

Docket

04/05/2012 - 859 - Brief re 852 Trial Brief Oracle's April 5, 2012 Brief Regarding Copyright Issues filed byOracle America, Inc.. (Related document(s) 852 ) (Jacobs, Michael) (Filed on 4/5/2012) (Entered: 04/05/2012)

04/05/2012 - 860 - Brief re 853 Brief, Google's 4/5/12 Copyright Liability Trial Brief filed byGoogle Inc.. (Related document(s) 853 ) (Van Nest, Robert) (Filed on 4/5/2012) (Entered: 04/05/2012)

04/05/2012 - 861 - MOTION Administrative Relief to Deem Issues Undisputed filed by Google Inc.. Responses due by 4/19/2012. Replies due by 4/26/2012. (Van Nest, Robert) (Filed on 4/5/2012) (Entered: 04/05/2012)

04/05/2012 - 862 - Declaration of Reid P. Mullen in Support of 861 MOTION Administrative Relief to Deem Issues Undisputed filed byGoogle Inc.. (Related document(s) 861 ) (Van Nest, Robert) (Filed on 4/5/2012) (Entered: 04/05/2012)

04/05/2012 - 863 - Proposed Order re 861 MOTION Administrative Relief to Deem Issues Undisputed by Google Inc.. (Van Nest, Robert) (Filed on 4/5/2012) (Entered: 04/05/2012)

04/05/2012 - 864 - STIPULATION WITH PROPOSED ORDER STIPULATION AND [PROPOSED] ORDER AUTHORIZING ENTRY AND USE OF EQUIPMENT FOR TRIAL filed by Oracle America, Inc.. (Holtzman, Steven) (Filed on 4/5/2012) (Entered: 04/05/2012)

04/06/2012 - 865 - REQUEST FOR FURTHER BRIEFING. Signed by Judge Alsup on April 6, 2012. (whalc1, COURT STAFF) (Filed on 4/6/2012) (Entered: 04/06/2012)

04/06/2012 - 866 - Administrative Motion to File Under Seal filed by Google Inc.. (Attachments: # 1 Proposed Order)(Van Nest, Robert) (Filed on 4/6/2012) (Entered: 04/06/2012)

04/06/2012 - 867 - Declaration in Support of 866 Administrative Motion to File Under Seal Declaration of Reid Mullen in Support of Administrative Motion to Seal Portions of Google's Opposition to Oracle's Motion to Strike Portions of Dr. James Kearl's Expert Report filed byGoogle Inc.. (Related document(s) 866 ) (Van Nest, Robert) (Filed on 4/6/2012) (Entered: 04/06/2012)

04/06/2012 - 868 - RESPONSE (re 850 MOTION to Strike ORACLE AMERICA, INC.S MOTION TO EXCLUDE PORTIONS OF THE RULE 706 EXPERT REPORT OF DR. JAMES KEARL ) Google Inc's Opposition to Oracle America, Inc.'s Motion to Strike Portions of Dr. James Kearl's Expert Report filed byGoogle Inc.. (Van Nest, Robert) (Filed on 4/6/2012) (Entered: 04/06/2012)

04/06/2012 - 869 - Declaration of David Zimmer in Support of 868 Opposition/Response to Motion, to Strike Portions of Dr. James Kearl's Expert Report filed byGoogle Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C)(Related document(s) 868 ) (Van Nest, Robert) (Filed on 4/6/2012) (Entered: 04/06/2012)

04/06/2012 - 870 - Administrative Motion to File Under Seal ORACLE AMERICA, INC.S ADMINISTRATIVE MOTION TO FILE UNDER SEAL filed by Oracle America, Inc.. (Attachments: # 1 Declaration DECLARATION OF ANDREW C. TEMKIN IN SUPPORT OF ORACLE AMERICA, INC.S ADMINISTRATIVE MOTION TO FILE UNDER SEAL, # 2 Proposed Order [PROPOSED] ORDER GRANTING IN PART ORACLE AMERICA, INC.S ADMINISTRATIVE MOTION TO FILE UNDER SEAL)(Holtzman, Steven) (Filed on 4/6/2012) (Entered: 04/06/2012)

04/06/2012 - 871 - *** FILED IN ERROR. DOCUMENT LOCKED. DOCUMENT TO BE REFILED LATER. ***
RESPONSE (re 845 MOTION to Strike Notice of Motion and Memorandum of Points and Authorities in Support of Its Motion to Strike Portion of Dr. James Kearl's Expert Report ) ORACLE AMERICA, INC.S OPPOSITION TO GOOGLES MOTION TO STRIKE PORTIONS OF DR. JAMES KEARLS EXPERT REPORT filed byOracle America, Inc.. (Holtzman, Steven) (Filed on 4/6/2012) Modified on 4/6/2012 (ewn, COURT STAFF). (Entered: 04/06/2012)

04/06/2012 - 872 - Declaration of MEREDITH DEARBORN in Support of 871 Opposition/Response to Motion, DECLARATION OF MEREDITH DEARBORN IN SUPPORT OF ORACLE AMERICA, INC.S OPPOSITION TO GOOGLES MOTION TO STRIKE PORTIONS OF DR. JAMES KEARLS EXPERT REPORT filed byOracle America, Inc.. (Attachments: # 1 Exhibit Exhibits A-K)(Related document(s) 871 ) (Holtzman, Steven) (Filed on 4/6/2012) (Entered: 04/06/2012)

04/06/2012 - 873 - RESPONSE (re 845 MOTION to Strike Notice of Motion and Memorandum of Points and Authorities in Support of Its Motion to Strike Portion of Dr. James Kearl's Expert Report ) ORACLE AMERICA, INC.S OPPOSITION TO GOOGLES MOTION TO STRIKE PORTIONS OF DR. JAMES KEARLS EXPERT REPORT [PUBLIC REDACTED VERSION] filed byOracle America, Inc.. (Holtzman, Steven) (Filed on 4/6/2012) (Entered: 04/06/2012)

04/06/2012 - 874 - SUPPLEMENTAL REQUEST FOR FURTHER BRIEFING re 865 Order. Signed by Judge Alsup on April 6, 2012. (whalc1, COURT STAFF) (Filed on 4/6/2012) (Entered: 04/06/2012)

04/06/2012 - 875 - Administrative Motion to File Under Seal Google Inc.'s Administrative Motion to File Under Seal its Response to the Court's Order Regarding Telephone Call filed by Google Inc.. (Attachments: # 1 Proposed Order)(Van Nest, Robert) (Filed on 4/6/2012) (Entered: 04/06/2012)

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Documents

859

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 APRIL 5, 2012 BRIEF
REGARDING COPYRIGHT ISSUES

Dept.: Courtroom 8, 19th Floor
Judge: Honorable William H. Alsup

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I. GOOGLE INCORRECTLY STATES THE LAW ON THE SIGNIFICANCE OF
SELECTION, ARRANGEMENT, OR STRUCTURE

The Court's questions on selection, arrangement, and structure have uncovered the extremity of Google's position. Google is urging the Court to adopt bright-line tests for which it has no supporting legal authority and that are directly contrary to Ninth Circuit law.

A. The Structure Of A Computer Program Does Not Itself Have To Be A
Computer Program To Be Copyrightable

Google argues the structure of the Java APIs is not protectable because the structure is not a computer program:

The selection, arrangement and structure of the APIs present a different situation. At any level of abstraction above the actual implementation (i.e., the source code), the APIs no longer meet the statutory definition of a computer program.

(ECF No. 852 at 5-6.) Google cites no judicial authority for its position.

There is no reason to require that the selection, arrangement and structure of a copyrightable computer program itself be a computer program. The structure of a motion picture does not need to fit the definition of "motion pictures" (17 U.S.C. § 101) to be copyrightable. Nor does the structure of a book need to be a book to be copyrightable. See, e.g., Stewart v. Abend, 495 U.S. 207, 238 (1990) (movie "Rear Window" infringed book copyright by copying its "unique setting, characters, plot, and sequence of events").

In the Ninth Circuit the test for determining the copyrightability of the selection, arrangement or structure of a computer program is set forth in Johnson Controls:

Whether the nonliteral components of a program, including the structure, sequence and organization and user interface, are protected depends on whether, on the particular facts of each case, the component in question qualifies as an expression of an idea, or an idea itself.

Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173, 1175 (9th Cir. 1989). The test does not require non-literal components of a computer program to be a program to be protected.

Google gives Johnson Controls a tepid endorsement, but Johnson Controls is hardly alone. It has been settled law for more than 20 years that the non-literal components of computer programs qualify for copyright protection. See, e.g., Computer Assocs. Int'l, Inc. v. Altai, 982

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F.2d 693, 702-03 (2d Cir. 1992) ("We have no reservation in joining the company of those courts that have already ascribed to this logic."); Gen. Universal Sys., Inc. v. Lee, 379 F.3d 131, 142 (5th Cir. 2004) ("settled" that copyright protection extends to "a program's nonliteral elements, including its structure, sequence, organization, user interface, screen displays, and menu structures."). Google's proposal, that the test should be whether the structure "divorced from implementing code" qualifies as a computer program, would gut that law. (ECF No. 852 at 6.)

Google copied the detailed selection, arrangement, and structure of Oracle's computer programs, which are described in Oracle's specifications and source code. There is no dispute that the Android specifications and libraries have this same selection, arrangement, and structure. Google conceded at the hearing that they are "the same." (3/28 Hr'g Tr. at 49:23-50:1; see also ECF No. 778 at 3 ("substantially similar").) The specifications are documents, the class libraries are source code programs. They are both protected as literary works, and they fit hand in glove.

To try to escape liability under Johnson Controls, Google argues that APIs are indispensable (ECF No. 852 at 8), and that there is "no evidence" the APIs are creative (id. at 8 n.7). Google is wrong. The APIs are a detailed, intricate blueprint that is the product of over a decade of development work, and the evidence will clearly show this. Indeed, one of the people who worked on and "wrote the APIs for many class libraries at Sun" (Bloch Dep. 227:2-7), including several of the APIs in suit (id. at 24:7-16), has many times publicly given a presentation that extols both the creativity and the design decisions involved in writing APIs. See http:// www.infoq.com/presentations/effective-api-design. The APIs at issue are far more creative than the pieces of source code Google hired contractors to write over a period of months, when Google re-implemented the Java APIs according to the design it copied. The APIs easily meet the threshold of creativity applied by the Ninth Circuit in Johnson Controls, which found that "some discretion and opportunity for creativity exist in the structure" was sufficient to uphold the district court's preliminary injunction finding. 886 F.2d at 1176. Google has already conceded that the 37 APIs meet the originality standard of Feist, so "[t]he jury therefore need not be asked to address whether the APIs are original." (ECF No. 823 at 9.) Google cannot retract its admission now.

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Equally unavailing is Google's argument that the API structure is not copyrightable because the API elements "can be arranged in whatever order a developer chooses, to bring about whatever particular result that developer desires." (ECF No. 852 at 6.) How the developer chooses to use the APIs does not determine the APIs' structure, nor could it determine designers' selection of what elements to include in them. See, e.g., Stern Elecs., Inc. v. Kaufman, 669 F.2d 852, 855-56 (2d Cir. 1982) (rejecting challenge that video game was uncopyrightable because player could affect the sequence of the game's sights and sounds).

B. There Is No Blanket Exception To Copyrightability Of Expressive Selection,
Arrangement Or Structure.

Google again argues that "Section 102(b) excludes protection for all systems and methods of operation, without regard for whether they are original, creative, elegant, life-changing or difficult to develop." (ECF No. 852 at 2.) Lacking authority for this extreme and unsupported position, Google instead cites Nichols v. Universal Pictures Corp. This is ironic because, in pressing the Court to adopt inflexible categories of uncopyrightability, Google cites the case in which Learned Hand famously said of idea and expression: "Nobody has ever been able to fix that boundary, and nobody ever can." 45 F.2d 119, 121 (2d Cir. 1930). The facts of that case are stunningly different than this one: in Nichols, the only thing in common in the story of the two plays was "a quarrel between a Jewish and an Irish father, the marriage of their children, the birth of grandchildren and a reconciliation." Id. at 122. Here, Google didn't only adopt the ideas underlying the 37 Java APIs, it painstakingly copied element by element, relationship by relationship, until it had replicated several thousand elements from them. The case ATC Distribution Group, Inc. v. Whatever It Takes Transmissions & Parts, Inc., 402 F.3d 700, 705 (6th Cir. 2005), is about a transmission parts catalogue, and is just as far removed. But it contradicts Google's interpretation of section 102(b). It states that Section 102(b) "codifies the common law principle" that "protection is given only to the expression of the idea--not the idea itself.'" Id. at 707 (citation omitted). It thus aligns with Johnson Controls and virtually every other Circuit that has considered this issue. (See ECF No. 853 at 8 n.1.)

Although Google asks the Court to unconditionally deny protection to even the expressive

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elements of a work in every category listed in section 102(b), it has no principled way of defining them. Google cannot decide whether the APIs are a "method of operation" (as it originally claimed) or a "system" (as it now asserts), so it argues they are both. It claims the APIs are either a system or a method of operation because "[p]rogrammers cannot use the APIs without relying on the structure, sequence and organization of the APIs." (ECF No. 852 at 8.) But no computer program can be used without relying on its organization and structure, and still programs are copyrightable. Indeed, Google's immediately preceding argument that the APIs "can be arranged in whatever order the developer chooses" (id. at 6) is contradictory. No program could survive Google's "test."

II. DISCUSSION OF CONTU

Google tries to minimize CONTU. But Oracle and Google agree on one key point from the CONTU report: "Should a line need to be drawn to exclude certain manifestations of programs from copyright, that line should be drawn on a case-by-case basis by the institution designed to make fine distinctions-the federal judiciary." (ECF No. 852 at 4 (citing Final Report of the National Commission on New Technological Uses of Copyrighted Works 22-23 (1979)).)

It is surprising that Google would cite this portion of the CONTU report given that elsewhere in its brief, Google advocates a bright-line rule that no API should be afforded copyright protection under § 102(b) as a "system" or "method of operation." Notably, two former CONTU commissioners have stated that Google's bright-line rule is erroneous. See 1-2 Nimmer on Copyright § 2.03[D] ("It would, then, be a misreading of Section 102(b) to interpret it to deny copyright protection to `the expression' of a work, even if that work happens to consist of an `idea, procedure, process, etc.'"); Arthur R. Miller, Copyright Protection For Computer Programs, Databases, And Computer-Generated Works: Is Anything New Since CONTU?, 106 Harv. L. Rev. 977, 1036 (1993) ("Courts should continue to resolve questions of the copyrightability and scope of protection of computer programs by using the flexible principles that apply to literary works and not resort to arbitrary exclusion of particular software elements."). Their approach is consistent with the CONTU report's emphasis on protectability of expression, see CONTU Report at 19, and the earlier House Report's statement that "Section

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102(b) in no way enlarges or contracts the scope of copyright protection under the present law." H.R. Rep. No. 94-1476 at 57 (1976); S. Rep. No. 94-473 at 54 (1975).

In support of its bright-line approach, Google directs the Court to Interfaces on Trial 2.0. Its central thesis is that copyright protection comes at the expense of interoperability, and harms competition and the progress of science. But the level of copyright protection for interfaces is not one-size-fits-all. Moreover, having intentionally fragmented the Java platform, Google cannot wear the mantle of interoperability. Sun's and Oracle's API specification license relies on copyright protection to ensure interoperability. The best way to promote the progress of science is by encouraging investment in software development through strong copyright protection.

III. MERGER DISCUSSION

Google argues that even if the selection, arrangement and structure of the Java APIs is expressive, "there is no way to `express' the idea of the 37 APIs without repeating that selection, arrangement and structure." (ECF No. 852 at 10.) Google never identifies what it thinks the idea of the APIs is, or could be, that would require them to be expressed in precisely this way, instead of the millions of other possible combinations. It certainly would be difficult to articulate.

This is not a close call. Google is unable to cite any case with even remotely comparable facts that holds its way. Allen was a case about a copyright on the rules for an educational game, where the court found that merger applied because "[t]o hold otherwise would give Allen a monopoly on such commonplace ideas as a simple rule on how youngsters should play their games." Allen v. Academic Games League of Am., 89 F.3d 614, 618 (9th Cir. 1996).

Many courts have rejected Google's approach to the merger doctrine. In Control Data Sys., Inc. v. Infoware, Inc., for example, the court rejected application of the merger doctrine to components such as input/output formats, file layouts, and commands for the NOS operating system, finding the appropriate analysis "is to compare the idea of NOS, that is the idea of making an operating system for the Cyber computer, with the expression of that idea as embodied in NOS." 903 F. Supp. 1316, 1321-23 (D. Minn. 1995); see also CMAX/Cleveland, Inc. v. UCR, Inc., 804 F. Supp. 337, 354 (M.D. Ga. 1992) ("Defendants contend that the programs are only

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similar in their file names and the sequence of the field names within each file. The selection and arrangement of the field definitions within the files, however, are the expression of an idea.").

This same approach was followed in the order denying the petition for rehearing in Engineering Dynamics. Oracle's citation to the appellate opinion was entirely consistent with the petition order. It described the court's emphasis on expression and did not claim the decision was based only on how they "could have been structured in numerous ways." (Compare ECF No. 833 at 2 with Eng'g Dynamics, Inc. v. Structural Software, Inc., 46 F.3d 408, 409 (5th Cir. 1995).)

It is Google that mischaracterizes the court's opinion. Google argues the selection arrangement and structure reflect "judgments about what APIs are most useful, what options should be made available to developers, and how best to organize the APIs" and that "[t]hese choices were precisely the type of `functional judgments' the Fifth Circuit explained cannot be protected by copyright." (ECF No. 852 at 10.) The reverse is true. These are the kinds of judgments the Fifth Circuit held are protected by copyright. The court used the term "functional judgment" to refer to decisions constrained by industry standards or science. It used this language in confirming its earlier opinion remanding to the lower court to determine "whether EDI exercised any judgment in formulating the input cards or merely reflected the industry standards and laws of engineering." Eng'g Dynamics, 463 F.3d at 410 (emphasis added).

The decisions made with respect to the API design were not governed by these factors. The API designers had almost complete liberty in deciding what to include, evidenced by the growth of the API packages from 8 in the initial release to 166 in 2004 (see ECF No. 852 at 2 n.3, 5). They were also free to structure the design how they wanted, because the structure of the API design is for the benefit of the developers, and is not functionally required by the machine. (Mitchell Opp. Rep., ECF No. 397-1, ¶ 23.)

Copyright law does not require that the API designs were chosen for an "aesthetic or stylistic purpose" as Google contends, though many of them were. Choices made to "enhance the capabilities and usability" would be quite enough. (See ECF No. 852 at 10.)

But even if Google could prove merger applied, it would still be liable for its "nearly identical copying." Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1444 (9th Cir. 1994).

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IV. THE JAVA APIS ARE INTEGRAL TO THE JAVA PLATFORM BUT ARE
DISTINCT FROM THE JAVA LANGUAGE

Oracle agrees that a small number of classes are necessary for the language. The overwhelming majority are not.

Google at least starts its analysis in the right place: The Java Language Specification ("JLS"). (The Third Edition is available at http://docs.oracle.com/javase/ specs/jls/se5.0/jls3.pdf.) That book describes the specification for the Java language. Google miscites from that book, however, in claiming that several classes in the java.lang package "should be treated as part of the language for purposes of Oracle's copyright claims." Google fails to mention that some of the classes to which Google refers are not actually provided in the JLS, and are not part of the language. See JLS (3d ed. 2005) at 6 ("The language definition constrains the behavior of these classes and interfaces, but this document does not provide a complete specification for them. The reader is referred to other parts of the Java platform specification for such detailed API specifications.") (emphasis added). For example, the API specifications list over two dozen methods for class ClassLoader, but the JLS only requires one of them: "defineClass." (Compare id. at 312 with http://docs.oracle.com/javase/1.5.0 /docs/api/java/lang/ClassLoader.html).

Google also cites to a different book, without identifying it to the Court. That book is The Java Application Programming Interface, Vol. 1, the first of a two-volume set. The API specifications have been updated with each new Java platform release. While the Java language has stayed largely the same over time, the APIs have grown so large that the book set is no longer published in hardcopy book form, but is published online. What little the Java language requires of the Java libraries is spelled out in the JLS. The expression that Google copied is not there. Instead, it is found in Oracle's API specifications.

The rest of Google's argument is a house of cards. Google argues all of java.io, java.util, and java.net are "fundamental" or "integral" to the language. (ECF No. 852 at 12-13.) Google's evidence is the advertising copy on the back cover of the API book. (Trial Ex. 980.) On this issue, however, the parties' experts agree that Google is wrong. Google's expert testified that he agreed with the opinion of Oracle's expert that "it was not necessary to include any particular

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class or package (beyond perhaps a very few classes like Object and Class that are tied closely to the Java language) for the Java language to function," stating: "I think this is a reasonable characterization of what's needed for the language to work." (Astrachan Dep. 230:19-231:16.)

Google claims that 15 additional packages are fundamental merely because they have names similar to the four above. (See ECF No. 852 at 12.) But none of them even existed when the language debuted, so cannot be said to be "fundamental" to the language. (Trial Ex. 980 at xix.) For example, java.nio was not added to the platform until version 1.4 in 2002.

For the remaining 18 APIs, the most Google claims is that they "relate to features that are standard in modern applications." ECF No. 852 at 12. This does not make them integral to the language and it does not excuse Google's copying.

V. COPYRIGHTABILITY OF COMPUTER LANGUAGES

Because Google admits that the Java language and the class libraries are distinct (Google Amended Counterclaims ¶¶ 1-3, ECF No. 51 at 13, 14), and its use of the Java language is not at issue in this case, whether a language is copyrightable or patentable does not decide the case.

In any event, Google has not cited any federal judicial decision holding that a computer language is not copyrightable or patentable. It does cite and quote from the opinion of Advocate General Bot of the European Court of Justice in the SAS Institute Inc. v. World Programming Ltd. case, that languages are not copyrightable under the European Directive. See http://curia.europa.eu/juris /celex.jsf?celex=62010CC0406&lang1=en. Nevertheless, the Advocate General also stated that program interfaces could be copyrighted "provided that they contain some of the elements which are the expression of the intellectual creation of the author of the work." Id. at ¶ 60; see also id. at ¶ 81 ("As I see it, Directive 91/250 does not exclude interfaces from copyright protection. It merely states, in the thirteenth recital, that ideas and principles which underlie the various elements of a program, including those which underlie its interfaces, are not protected by copyright under the directive."). Thus the relevant portion of Advocate General Bot's opinion contradicts Google's argument in this case.

Google also writes: "The fact that a programming language is not patentable subject matter thus further supports the conclusion that it is on the `idea' side of the idea/expression

8

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dichotomy." (ECF No. 852 at 17.) Even if that "fact" were true, Google has it backwards. Because a computer language can be original, text-based, and capable of fixation--all qualities of copyright--the better conclusion is that it is on the "expression" side of the dichotomy. This conclusion is supported by the increasing popularity of coining new languages for motion pictures and television shows, for which a language's "sound" and "audience appeal" are considerations, such as recently invented languages like Na'vi (from the film Avatar) and Dothraki (from the HBO series Game of Thrones).¹ Why should years of creative work developing an original, never-before-written language not be protectable?

VI. THE APIS ARE COPYRIGHTABLE WHETHER OR NOT THEY ARE
PATENTABLE

Google's argument that Oracle may obtain patent protection but not copyright protection for its APIs was directly contradicted by the Supreme Court in Mazer v. Stein: "Neither the Copyright Statute nor any other says that because a thing is patentable it may not be copyrighted." 347 U.S. 201, 217 (1954). The Federal Circuit held that software is eligible for both patent and copyright. Atari Games Corp. v. Nintendo of Am. Inc., 975 F.2d 832, 839-40 (Fed Cir. 1992).

Allowing copyright protection for computer interfaces makes sense because original expressions in software are innovations of an incremental sort that Congress meant to encourage. Trade secrecy law cannot achieve this goal because interfaces can be reverse-engineered. Patent law, because of its novelty and nonobviousness requirements and examination process, protects those substantial innovations, claimed as broadly and generically as possible, and in return gives strong protection against even those who independently develop the same technology. Copyright law protects innovations at a much finer level of detail (where original expression can be found) than patents ever could, but only offers protection against the copyist.

VII. GOOGLE INFRINGES ORACLE'S API IMPLEMENTATIONS

For clarity, Oracle again states that, in addition to the copying of the selection, arrangement, and structure of the APIs fixed in the specifications and the source and object code

___________________________________________

¹ See, e.g., http://dailytrojan.com/2009/12/02/ usc-professor-gives-avatar-aliens-a-voice/; http://www.nytimes.com/ 2011/12/12/arts/television/in-game-of-thrones-a- language-to-make-the-world-feel-real.html.

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implementation of the class libraries, Oracle is claiming copyright infringement based on: (1) the thousands of elements Google copied from the Java API specifications into Android source code and documentation; (2) the selection and arrangement of the names of the API elements Google copied--an issue the Court expressly left open on summary judgment (see ECF No. 433 at 8); and (3) Google's creation of derivative works from the English-language descriptions of the elements in the API specifications.

With respect to the literally copied code files, Oracle previously identified the 11 Java source code files from which Google copied (ECF No. 780 at 3); of those, three files (including Arrays.java) are part of Oracle's source code implementation of the 37 APIs at issue. Twelve Android source code files contain material copied from the 11 files; of those, two Android files (TimSort.java and ComparableTimSort.java) are part of Google's source code implementation of the 37 APIs at issue. Both of these files include the rangeCheck() method that Google copied from Oracle's Arrays.java. Google also copied the comments to the rangeCheck() method.

But the real question is this: why is Google still distributing copied code? Just one month ago, Google represented to the Court that "the allegedly copied portions of these files have all been removed from Android" and asked the Court to find Oracle's infringement claim moot on that basis. (ECF No. 778 at 13.) Now Google admits that its representation is not true. (ECF No. 852 at 5 n.5) Google admits that code copied from Oracle is still available from its online source code repository, yet acts as if it--with some of the best software engineering talent in the world--is powerless to control its own repository. And Google does not explain how the copied material "reappeared" in Froyo after having supposedly been removed "over a dozen version releases ago." (Id.) What is to keep it from reappearing again?

Google admits it is still publishing and distributing copied rangeCheck code, and that copied code is still present in every phone made with every version of Android except Ice Cream Sandwich. And that is a huge number: 97.1% of Android phones active in the last 14 days have Oracle's rangeCheck in them. See http://developer.android.com/ resources/dashboard/platform-versions.html (last visited Apr. 3, 2012). An injunction is needed to stop Google from continuing to publish and distribute both copied code and copied APIs to Android phone manufacturers.

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Dated: April 5, 2012

MORRISON & FOERSTER LLP

By: /s/ Michael A. Jacobs

Attorneys for Plaintiff
ORACLE AMERICA, INC.

---

860

KEKER & VAN NEST LLP
ROBERT A. VAN NEST - # 84065
[email]
CHRISTA M. ANDERSON - # 184325
[email]
MICHAEL S. KWUN - # 198945
[email]
[address]
[phone]
[fax]

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

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

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

Attorneys for Defendant
GOOGLE INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

ORACLE AMERICA, INC.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.

Case No. 3:10-cv-03651 WHA

GOOGLE'S 4/5/12 COPYRIGHT
LIABILITY TRIAL BRIEF

Dept.: Courtroom 8, 19th Floor
Judge: Hon. William Alsup

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TABLE OF CONTENTS

			Page
I.	Oracle cannot retract its concession about the Java programming language.		1
II.	Section 102(b) denies copyright protection to the 37 APIs.		1
	A.	Section 102(b) excludes eight categories from copyright protection.	1
	B.	There is no numerosity exception to Section 102(b).	5
	C.	Oracle's other Section 102(b) cases are inapposite.	6
III.	The merger doctrine bars copyright protection for the 37 APIs.		8
IV.	Computer programming languages are not copyrightable.		8
V.	Subject to the terms of the Patent Act, one can try to patent a selection of APIs.		9
VI.	There is no basis for a motion to attack Google's equitable defenses.		10

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TABLE OF AUTHORITIES

	Page(s)
Federal Cases
Allen v. Academic Games League of Am., Inc. 89 F.3d 614 (9th Cir. 1996)	9
American Dental Ass'n v. Delta Dental Plans Ass'n 126 F.3d 977 (7th Cir. 1997)	6
Apple Computer, Inc. v. Formula Int'l, Inc. 725 F.2d 521 (9th Cir. 1984)	4
Atari Games Corp. v. Nintendo of Am. Inc. 975 F.2d 832 (Fed. Cir. 1992)	8, 10
ATC Distrib. Group, Inc. v. Whatever It Takes Transmissions 402 F. 3d 700 (6th Cir. 2005)	7
Brief English Sys., Inc. v. Owen 48 F.2d 555 (2d Cir. 1931)	9
CDN Inc. v. Kapes 197 F.3d 1256 (9th 1999)	5
eScholar, LLC v. Otis Educ. Sys. 76 U.S.P.Q.2d (BNA) 1880 (S.D.N.Y. 2005)	4
Feist Pubs., Inc. v. Rural Tel. Serv. Co. 499 U.S. 340 (1991)	5
Herbert Rosenthal Jewelry Corp. v. Kalpakian 446 F. 2d 738 (9th Cir. 1971)	8
Hutchins v. Zoll Med. Corp. 492 F.3d 1377 (Fed. Cir. 2007)	4
Incredible Techs., Inc. v. Virtual Techs., Inc. 400 F.3d 1007 (7th Cir. 2005)	4
Johnson Controls, Inc. v. Phoenix Control Sys., Inc. 886 F.2d 1173 (9th Cir. 1989)	4, 5, 8
Lotus Dev. Corp. v. Borland Int'l, Inc. 49 F.3d 807 (1st Cir. 1995)	3, 4
Mayo Collaborative Servs. v. Prometheus Labs, Inc. 132 S. Ct. 1289 (2012)	9
Mazer v. Stein 347 U.S. 201 (1954)	10

ii

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Mitel, Inc. v. Iqtel, Inc. 124 F.3d 1366 (10th Cir. 1997)	2, 3, 4
O'Reilly v. Morse 56 U.S. 62 (1854)	9
Practice Mgmt. Info. Corp. v. American Med. Ass'n 121 F.3d 516 (9th Cir. 1997)	6
Reiss v. National Quotation Bureau, Inc. 276 F. 717 (S.D.N.Y. 1921)	9
Satava v. Lowry 323 F.3d 805 (9th Cir. 2003)	5
Sega Enters. Ltd. v. Accolade, Inc. 977 F.2d 1510 (9th Cir. 1992)	5
Taylor Instrument Cos. v. Fawley-Brost Co. 139 F.2d 98 (7th Cir. 1943)	10
Toro Co. v. R&R Prods. Co. 787 F.2d 1208 (8th Cir. 1986)	4, 9
TRW Inc. v. Andrews 534 U.S. 19 (2001)	1
Federal Statutes
17 U.S.C. § 101	2, 3, 9
17 U.S.C. § 102(b)	/passim/
Other Authorities
Arthur R. Miller, Copyright Protection for Computer Programs, Databases, and Computer-Generated Works, 106 HARV. L. REV. 977 (1993)	4
Pamela Samuelson, Why Copyright Law Excludes Systems and Processes from the Scope of Protection, 85 TEX. L. REV. 1921, 1923 (2007)	1, 2, 4

iii

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I. Oracle cannot retract its concession about the Java programming language.

Oracle seeks to rewrite its concession that the Java programming language is free and open for anyone to use. Although again conceding that anyone can use the language to write programs, Oracle now claims that if developers want a computer to understand what they have written, that requires a license. See Oracle 4/3/12 Br. [Dkt. 853] at 5.

The Court should not condone this legal sophistry. It is both contrary to Oracle's prior representations to the Court, see Google 3/23/12 Br. [Dkt. 823] at 4-5, and internally inconsistent. When developers write programs that include API calls, they invoke the structure and arrangement of the APIs. For example, in order to retrieve content from a website using the getContent() method, the developer must include statements in the source code that indicate that the getContent() method is in the URL class in the java.net package. Oracle concedes that this requires no license. Yet Oracle argues that Google could not implement this method with its own source code because, according to Oracle, the structure and arrangement of this method are copyrighted. Oracle's concession that the language is free and open for anyone to use is fundamentally inconsistent with its claim that Google's use of the APIs infringes.¹

II. Section 102(b) denies copyright protection to the 37 APIs.

A. Section 102(b) excludes eight categories from copyright protection.

Oracle claims that Professor Samuelson incorrectly argues that Section 102(b) means what it says. Professor Samuelson argues that the eight categories of exclusion in Section 102(b) — "idea, procedure, process, system, method of operation, concept, principle, or discovery" — must each be given meaning. See Pamela Samuelson, Why Copyright Law Excludes Systems and Processes from the Scope of Protection, 85 TEX. L. REV. 1921, 1923 (2007) ("Samuelson"). Professor Samuelson is, of course, correct. "It is a cardinal principle of statutory construction that a statute ought, upon the whole, to be so construed that, if it can be prevented, no clause, sentence, or word shall be superfluous, void, or insignificant." TRW Inc. v. Andrews,

1

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534 U.S. 19, 31 (2001) (quotation marks and citation omitted). Oracle concedes that "[t]o the extent that a system or method of operation is an idea, it cannot be copyrighted." Oracle 4/3/12 Br. at 2 (emphasis added). But Section 102(b) says more than that — it says that systems and methods of operation cannot be copyrighted, period. Had Congress intended to say that systems and methods of operation were unprotectable only if they also are "ideas," it would have so said.

Oracle relies on the fact that many courts have referred to Section 102(b) as a codification of the so-called idea/expression dichotomy. But the word "idea" in "idea/expression dichotomy" is shorthand for the longer list of unprotectable categories in Section 102(b):

Section 102(b) codifies one of copyright law's fundamental distinctions — copyright protection extends to an author's original expression and not to the ideas embodied in that expression. Thus, when considering whether a defendant copied protectable elements of a copyrighted work, we must determine whether or to what extent the copied portions constitute ideas, processes, systems, or methods of operation, on one hand, or protectable expression, on the other.

Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366, 1370-71 (10th Cir. 1997) (emphases added).

We also know that Section 102(b) excludes more than ideas because that is what Section 102(b) says, and the legislative history confirms it. "Section 102(b) in no way enlarges or contracts the scope of copyright protection under the present law." H.R. Rep. No. 94-1476, at 57 (1976). "[P]resent law" was pre-1976 Act cases. That Section 102(b) was intended to "restate, in the context of the new single Federal system of copyright, that the basic dichotomy between expression and idea remains unchanged," id., confirms that the "idea/expression dichotomy" is shorthand for referring to the limitations developed through pre-1976 Act cases. See Samuelson, 85 TEX. L. REV. at 1924-44 (discussing pre-1976 Act cases).

That said, there is no dispute that "computer programs" may be copyrightable subject matter. A computer program is "a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result." 17 U.S.C. § 101. The Court thus should not interpret Section 102(b) to render computer programs per se unprotectable. But this does not require limiting excluded "systems" and "methods of operation" to "ideas," as Oracle argues. Section 102(b) already excludes ideas expressly, so excluding "systems" and "methods of operation" only if they are also ideas would render those terms superfluous.

2

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Whatever the limits of Section 102(b), the selection, arrangement and structure of the APIs fall on the unprotected side of the divide. The APIs "tell the programmer how to use the library, and include a set of names that can be /used to access different features of the library/, together with conventions about their use." Oracle Copyright MSJ Opp. [Dkt. 339] at 2 (emphasis added). That is, they are a system or method of operation. And as Oracle implicitly concedes,² the APIs, divorced from the noninfringing source code, do not even qualify as a set of instructions for bringing about "a certain result." See 17 U.S.C. § 101; Google 4/3/12 Br. [Dkt. 852] at 5-6. The APIs thus are at the abstract, unprotectable end of the dichotomy.

Oracle argues that the reasoning in Lotus Dev. Corp. v. Borland Int'l, Inc., 49 F.3d 807 (1st Cir. 1995), aff'd by an evenly divided court, 516 U.S. 233 (1996), proves too much, and would preclude copyright protection for all computer programs. Nothing suggests that the Lotus court intended such a result. First, Lotus did not allege that Borland had copied any computer code, so that issue was not before the First Circuit. Second, the menu hierarchy arguably was not even a series of instructions for "bringing about a certain result," 17 U.S.C. § 101 (emphasis added), but was a general purpose system or method of operation for bringing about whatever result a spreadsheet user might want. But even if the Lotus menu hierarchy could qualify as a "computer program," the accused aspects of the Oracle APIs are more abstract than that. They are not limited to the use of a spreadsheet program; they apply to the use of a programming language. Thus, even if Oracle were correct that the Lotus reasoning could be misapplied, on the facts of the present case the accused aspects of the APIs are uncopyrightable.

The Tenth Circuit's disagreement with the Lotus reasoning does not help Oracle either. The Tenth Circuit "conclude[d] that although an element of a work may be characterized as a method of operation, that element may nevertheless contain expression that is eligible for copyright protection." Mitel, 124 F.3d at 1372 (emphasis added). Such expression may be protectable, even if at a "higher level of abstraction" the material is a method of operation. Id.³

3

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Google agrees. The source code Google wrote to implement the APIs is copyrightable expression, even though it implements what is, at a higher level of abstraction, an unprotectable method of operation.⁴

But the Tenth Circuit never held that the command codes at issue were not a method of operation. Instead, it affirmed based on a lack of originality. See id. at 1373-76. In fact, after explaining that a method of operation can contain expression, the decision never again uses the phrase "method of operation." Because it affirmed on other grounds, the Tenth Circuit did not need to address whether there was protectable expression at a level of abstraction below the unprotected method of operation at issue.⁵

Oracle's dogged reliance on the pre-Feist decision in Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173 (9th Cir. 1989), also does not help it. The Ninth Circuit did not hold that "some discretion and opportunity for creativity" compels the conclusion that material is expressive. See id. at 1176. Instead, on a review for clear error of a preliminary injunction, it concluded that this fact "supports" a finding of expression, while also noting that "[t]his issue will no doubt be revisited at trial ...." Id. Johnson Controls held only that "structure, sequence and organization" will /sometimes/ be protected. See id. at 1175.

4

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Moreover, under Ninth Circuit precedent, Section 102(b) precludes copyright protection for functional requirements for compatibility. Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1522 (9th Cir. 1992). Google has not "mischaracterized" Sega. The Ninth Circuit explained:

The declarations of Accolade's employees indicate, and the district court found, that Accolade copied Sega's software solely in order to discover the functional requirements for compatibility with the Genesis console — aspects of Sega's programs that are not protected by copyright.

977 F.2d at 1522 (citing 17 U.S.C. § 102(b)). That passage indicates two things. First, as a factual matter, Accolade copied Sega's software (Sega's implementing code) for the purpose of discovering functional requirements for compatibility. Second, as a legal matter, those functional requirements for compatibility "are not protected by copyright," and the legal basis for that is Section 102(b). Id. (citing 17 U.S.C. § 102(b)). The ultimate question was whether Accolade's "intermediate copying" was a fair use, to which the court answered "yes." Id. at 1527-28. But the court could only reach that conclusion by relying on the legal principle that Section 102(b) excludes functional requirements for compatibility from copyright protection.⁶

B. There is no numerosity exception to Section 102(b).

Oracle argues that because its APIs meet the "extremely low" constitutional threshold for originality, see Feist Pubs., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991), and because the 37 APIs at issue have many elements, they are copyrightable. Oracle 4/3/12 Br. at 1-2 (citing Satava v. Lowry, 323 F.3d 805, 811 (9th Cir. 2003)). But Satava held only that such a work "is eligible" for copyright protection, id., explaining only how a combination might meet the extremely low constitutional threshold for originality, and not other requirements for copyrightability.⁷ "In no case" does protection for even an "original work of authorship" extend to "any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such a

5

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work." 17 U.S.C. § 102(b) (emphases added).

C. Oracle's other Section 102(b) cases are inapposite.

Oracle claims that Practice Mgmt. Info. Corp. v. American Med. Ass'n, 121 F.3d 516, 518-19 (9th Cir. 1997), supports its position. It does not, because that case addressed only whether a book describing a code system was copyrightable.⁸ And the Seventh Circuit's similar decision in American Dental Ass'n v. Delta Dental Plans Ass'n, 126 F.3d 977 (7th Cir. 1997), was either wrongly decided, or unclear about its scope. The court claims to have addressed whether the ADA's "taxonomy" for dental procedures was copyrightable subject matter. Id. at 977. But in concluding that the "taxonomy" was expressive, the Seventh Circuit relied on the text descriptions the ADA employed. See id. at 979. That suggests the issue was the copyrightability of the ADA's book about the taxonomy, not the taxonomy itself.⁹

Moreover, the Seventh Circuit held that using the taxonomy would not infringe. See id. at 981 (citing 17 U.S.C. § 102(b)). But, according to the Seventh Circuit, Section 102(b) did "not permit Delta to copy the Code itself, or make and distribute a derivative work based on the Code, any more than Baker could copy Selden's book." Id. (emphasis added). Thus, although the Seventh Circuit claimed it was deciding whether a "taxonomy" was copyrightable, the only thing it actually held was that copying "the Code" (earlier described as a book, see id. at 979) would infringe, as would making and distributing a "derivative work" based on the Code. Id. at 981. The court did not address the standard for determining what would be derivative, concluding that "[w]hether there are other obstacles to the relief the ADA seeks is a subject best left to the district court in the first instance." Id.¹⁰

6

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In a better reasoned opinion, the Sixth Circuit has commented that the Seventh Circuit's "rationale for holding that the individual procedure numbers were copyrightable is rather opaque." ATC Distrib. Group, Inc. v. Whatever It Takes Transmissions, 402 F.3d 700, 708 (6th Cir. 2005). The Sixth Circuit concluded that none of the factors considered by the Seventh Circuit "evidences any creativity by the ADA that would render the numbers eligible for copyright protection." Id. "Original and creative ideas, however, are not copyrightable, because 17 U.S.C. § 102(b) provides that 'in no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of [its] form.'" Id. at 707. "And all of the creative aspects of the ATC classification scheme are just that: ideas. ATC cannot copyright its prediction of how many types of sealing ring will be developed in the future, its judgment that O-rings and sealing rings should form two separate categories of parts, or its judgment that a new part belongs with the retainers as opposed to the pressure plates." Id. (emphasis added). Similarly, Oracle cannot copyright its decisions about how to group classes or the other aspects of the selection, arrangement and structure of the APIs.

The Sixth Circuit also rejected ATC's argument that the combination of the elements of its classification was protectable:

As a last resort, ATC suggested during oral argument that even if neither the ideas that gave rise to the parts numbers, nor the individual part numbers, qua expressions of those ideas, are copyrightable, the part numbers taken as a whole were somehow copyrightable as a middle ground between the two, much in the same way that while neither the basic idea behind a novel nor the individual words used to write it are protected, the story that those words form when taken together is copyrightable. The flaw in this argument is that there is no such middle ground in this case. Unlike the words that comprise a novel, which add up to a story, the numbers used in ATC's catalog only add up to a long list of numbers. Putting all the numbers together does not make them expressive in the way that putting words together makes a narrative.

Id. at 710. Oracle's argument is equally unavailing, because its organization similarly is inexpressive.¹¹ Whether the Court relies directly on a lack of expression or on the exclusions in Section 102(b), the selection, arrangement and structure of Oracle's APIs are not copyrightable.

7

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III. The merger doctrine bars copyright protection for the 37 APIs.

In the part of its brief addressing merger Oracle argues that the selection, arrangement and structure of its APIs are "expression." See Oracle 4/3/12 Br. [Dkt. 853] at 3-4. That misses the point. Merger denies protection to expression that has merged with the underlying idea. "When the 'idea' and its 'expression' are thus inseparable, copying the 'expression' will not be barred, since protecting the 'expression' in such circumstances would confer a monopoly of the 'idea' upon the copyright owner free of the conditions and limitations imposed by the patent law." Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F. 2d 738, 742 (9th Cir. 1971) (emphasis added) (citing, among other cases, Baker v. Selden, 101 U.S. 99, 103 (1879)).

The merger case cited by Oracle elsewhere in its brief, Atari Games Corp. v. Nintendo of Am. Inc., 975 F.2d 832 (Fed. Cir. 1992), does not help it. As in Johnson Controls, the Federal Circuit in Atari was reviewing a preliminary injunction under the clear error standard. Id. at 835, 840. Based on the preliminary injunction record, the court found "no clear error in the district court's conclusion" that the expression in Nintendo's "unlock" code did not merge with the underlying "process" because Nintendo had "produced expert testimony showing a multitude of different ways to generate a data stream which unlocks the NES console." Id. at 840. Here, the opposite is true — source code written by developers using the 37 APIs at issue would not work if Android did not have substantially the same selection, arrangement and structure of elements for those APIs as J2SE 5.0. Atari, in contrast, copied aspects of the structure of Nintendo's unlock program that were unnecessary to unlock the NES console. Id. at 844-45.

Moreover, as Google has explained, the Ninth Circuit does not limit application of the merger doctrine to high levels of abstraction. See Google 4/3/12 Br. [Dkt. 852] at 8-9. To the contrary, the Ninth Circuit has applied the merger doctrine to deny copyright protection for one person's particular expression of his own particular rules for his own particular games. See Allen v. Academic Games League of Am., Inc., 89 F.3d 614, 618 (9th Cir. 1996).

IV. Computer programming languages are not copyrightable.

Oracle offers no affirmative basis for concluding that a computer programming language

8

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can be copyrighted, noting only that it is unaware of any "federal"¹² judicial decision holding otherwise. Oracle cites a Southern District of New York holding copyrightable a set of codes that lacked any meaning or grammar, see Reiss v. National Quotation Bureau, Inc., 276 F. 717, 718 (S.D.N.Y. 1921) (Learned Hand, J.)), but that decision is of doubtful value, because ten years later the Second Circuit held that a published system for shorthand could not be protected by copyright. See Brief English Sys., Inc. v. Owen, 48 F.2d 555 (2d Cir. 1931).¹³

Regardless, the Court did not ask whether a set of codes that is free of any semantics can be copyrighted. The Court asked whether a computer programming language can be copyrighted. The fact that a language — or indeed, the APIs at issue — can be used by others to express, and has a structure designed to support that expression by others, distinguishes it from the code book at issue in Reiss, and is precisely what makes it a system for expression, or a /method for operation/ for communication. Section 102(b) forecloses copyright protection for that reason.¹⁴

V. Subject to the terms of the Patent Act, one can try to patent a selection of APIs.

Oracle agrees with Google that it is possible to try to patent a selection of classes for APIs, though the selection of classes would need to be part of a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. § 101; see Oracle 4/3/12 Br. at 6.¹⁵ Oracle notes, however, that it is commonplace for patents to include copyright notices. But the fact that patent specifications can contain copyrighted material is of no relevance. As the Federal Circuit has recognized, copyright and patent are fundamentally distinct legal regimes protecting

9

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different types of intellectual property. Atari, 975 F.2d at 839 ("Thus, patent and copyright laws protect distinct aspects of a computer program."). That distinction was well understood in the pre-1976 Copyright Act case law codified in Section 102(b) of the Copyright Act.^16 That the source code implementing a patented process, for example, can be copyrighted does not mean that the process itself can be copyrighted. See 17 U.S.C. § 102(b) ("processes" not protected).

VI. There is no basis for a motion to attack Google's equitable defenses.

Oracle belatedly seeks leave to attack two of Google's four equitable defenses, arguing Google has not produced evidence of reliance. Such a motion would be both too late and an improper attempt to seek summary judgment through an /in limine/ motion. See Order [Dkt. 384] at 1 (limiting parties to five in limines and warning that a "disguised summary judgment motion" would be "highly disfavored"). Moreover, Oracle's characterization of discovery on this issue is inaccurate. Both parties challenged the adequacy of the other's responses to contention interrogatories, the parties ultimately agreed on the level of supplementation and detail to be provided, and Oracle did not challenge Google's supplemental response. Most importantly, Oracle's assertion that these two defenses "turn on" statements made in 2011 is simply incorrect. As Oracle is well aware, it deposed Google witnesses such as Eric Schmidt and learned that they knew of Sun's statements approving of Android years ago, and understood them to mean that Sun had no issue with Android.

Dated: April 5, 2012

KEKER & VAN NEST LLP

By: /s/ Robert A. Van Nest
ROBERT A. VAN NEST

Attorneys for Defendant
GOOGLE INC.

10

___________________________________________

¹ Oracle argues that Google's counterclaims state the APIs are not part of the language. That is not true. Google distinguished between the language, the runtime, and the entire platform. Google's Am. Counterclaims [Dkt. 51], ¶ 1. Those things are different. The runtime, for example, includes a virtual machine. The platform further includes written documentation.

² Oracle concedes that the APIs do not bring about any results unless paired with an underlying implementation. See Oracle 4/3/12 Br. [Dkt. 853] at 5 ("whoever runs a program that includes API calls . . . needs an executable implementation of the APIs.").

³ The other cases cited by Oracle as disagreeing with the Lotus approach, eScholar, LLC v. Otis Educ. Sys., 76 U.S.P.Q.2d (BNA) 1880, 1897 (S.D.N.Y. 2005), and Toro Co. v. R&R Prods. Co., 787 F.2d 1208, 1212 (8th Cir. 1986), are no different, holding only that what is a method of operation at one level of abstraction may contain expression at a lower level of abstraction. Oracle also ignores other circuit court opinions that adopt analyses of Section 102(b) similar to that used in Lotus. See Incredible Techs., Inc. v. Virtual Techs., Inc., 400 F.3d 1007, 1012 (7th Cir. 2005); Hutchins v. Zoll Med. Corp., 492 F.3d 1377, 1383-84 (Fed. Cir. 2007).

⁴ In a non-sequitur, Oracle argues that the Court should not follow Lotus because "the Java class libraries ... qualify for copyright protection because they are computer programs written in source code." Oracle 4/3/12 Br. at 12. But there is no dispute that, aside from the nine-line rangeCheck() method, the source code is not at issue. In a similar non-sequitur, Oracle cites Apple Computer, Inc. v. Formula Int'l, Inc., 725 F.2d 521 (9th Cir. 1984), a pre-Feist case. In that case, the Ninth Circuit rejected Formula's argument that operating systems are unprotectable methods of operation. Id. at 523-25. But that case did not address whether the non-literal aspects of an operating system are copyrightable, because Formula conceded that its code was substantially similar to Apple's code. See id. at 522-23. Apple, meanwhile, conceded that it sought "to copyright only its particular set of instructions, not the underlying computer process." Id. at 525. /Apple v. Formula/ does not address any of the disputed issues in the present case.

⁵ Oracle cites an article by Professor Miller about the scope of Lotus. See Arthur R. Miller, Copyright Protection for Computer Programs, Databases, and Computer-Generated Works, 106 HARV. L. REV. 977 (1993). Professor Miller wrote that article while serving as counsel to Lotus in that case. See Samuelson, 85 TEX. L. REV. at 1949 n.191.

⁶ The Section 102(b) issues distinguish this case from CDN Inc. v. Kapes, 197 F.3d 1256 (9th 1999). CDN did not seek protection for a system of coin pricing, or a method of operation for coin pricing. Nor could Kapes argue that there were any functional requirements of compatibility requiring its use of CDN's prices.

⁷ The focus on originality is apparent in the court's citation to Feist for the proposition that the "principal focus should be on whether the selection, coordination, and arrangement are sufficiently original to merit protection." Id. (quoting Feist, 499 U.S. at 358).

⁸ The work at issue was the AMA's book, the Physician's Current Procedural Terminology ("CPT"). Id. at 517. The CPT identifies "more than six thousand medical procedures and provides a five-digit code and brief description for each." Id. (emphasis added). Nothing in the opinion suggests that the code system, divorced from the AMA's book, was at issue. See id. at 518-20. The Ninth Circuit affirmed the AMA's copyright in "the CPT," which the opinion earlier defined as the book itself, and which included the text descriptions. See id. at 517, 520.

⁹ The court further relied on the fact that the codes for the taxonomy could have been different in length, or used different numbers. See id. The court did not, however, explain what was "expressive" about that.

¹⁰ That said, the Seventh Circuit does appear to have concluded that the actual numbers used by the ADA were copyrightable subject matter under Section 102(a). Id. at 979.

¹¹ The sole example of alleged expressiveness in Oracle's brief is based on a hearsay Wikipedia article and attorney argument. See Oracle 4/3/12 Br. [Dkt. 853] at 4.

¹² Opinions outside the United States have so held. See Google 4/3/12 Br. [Dkt. 852] at 14-16.

¹³ Judge Hand's reasoning is also at odds with Toro, relied upon by Oracle elsewhere in its brief. In Toro, the Eighth Circuit held that an arbitrary collection of part numbers does not even cross the originality threshold required by the Copyright Act. 787 F.2d at 1213. Under this reasoning, the codes at issue in Reiss, which had "as yet no meaning," could not have been copyrightable.

¹⁴ Oracle also fails to state whether a computer language is patentable. Oracle's citation to O'Reilly v. Morse, 56 U.S. 62 (1854), is irrelevant, because Morse code is not a language (as Oracle as much as concedes, noting that it lacks a vocabulary or grammar), let alone a computer language. However, computer programming languages are not patentable. See Google 4/3/12 Br. at 16-17. That does not imply that a computer language must be copyrightable, because not everything is protected by copyright or parent. Cf. Mayo Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1293 (2012) ("Laws of nature, natural phenomena, and abstract ideas' are not patentable.") (quotation marks and citation omitted, and emphasis added).

¹⁵ Google reiterates that such a patent claim would be subject to challenge on any ground allowed by the Patent Act.

¹⁶ See, e.g., Taylor Instrument Cos. v. Fawley-Brost Co., 139 F.2d 98 (7th Cir. 1943) ("Thus it appears that Congress has provided two separate and distinct fields of protection, the copyright and the patent."). Mazer v. Stein, 347 U.S. 201 (1954), is not to the contrary. There the Court held that "the patentability of [Stein's] statuettes, fitted as lamps or unfitted, does not bar copyright as works of art." Id. at 217. The patent in that case, however, was not for a "useful art" — it was a design patent, covering the ornamental design of the lamp. Id. at 215.

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861

KEKER & VAN NEST LLP
ROBERT A. VAN NEST - # 84065
[email]
CHRISTA M. ANDERSON - # 184325
[email]
MICHAEL S. KWUN - # 198945
[email]
[address]
[phone]
[fax]

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

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

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

Attorneys for Defendant
GOOGLE INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

ORACLE AMERICA, INC.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.

Case No. 3:10-cv-03651 WHA

GOOGLE INC.’S MOTION FOR
ADMINISTRATIVE RELIEF TO DEEM
ISSUES UNDISPUTED

Dept.: Courtroom 8, 19th Floor
Judge: Hon. William Alsup

---

PLEASE TAKE NOTICE that, pursuant to the Court’s suggestion at the March 28, 2012 hearing, N.D. CAL. CIV. L.R. 7-11, Defendant Google Inc. (“Google”) will, and hereby does, respectfully move for administrative relief to deem the following three issues undisputed: (1) The Java programming language is open and free for anyone to use. (2) The names of the Java language API files, packages, classes, and methods are not protected by copyright law. (3) Aside from a nine-line function that Oracle accuses Google of copying, Oracle does not contend that Android’s source code in any of the accused APIs was copied from the source code used in the Java platforms. This Motion is based on the attached Declaration of Reid Mullen, as well as the entire record in this matter.

Dated: April 5, 2012

KEKER & VAN NEST LLP

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

---

KEKER & VAN NEST LLP
ROBERT A. VAN NEST - # 84065
[email]
CHRISTA M. ANDERSON - # 184325
[email]
MICHAEL S. KWUN - # 198945
[email]
[address]
[phone]
[fax]

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

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

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

Attorneys for Defendant
GOOGLE INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

ORACLE AMERICA, INC.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.

Case No. 3:10-cv-03651 WHA

MEMORANDUM OF POINTS AND
AUTHORITIES IN SUPPORT OF
GOOGLE INC.’S MOTION FOR
ADMINISTRATIVE RELIEF TO DEEM
ISSUES UNDISPUTED

Dept.: Courtroom 8, 19th Floor
Judge: Hon. William Alsup

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I. INTRODUCTION

Pursuant to the Court’s suggestion in the March 28, 2012 pretrial conference, March 28, 2012 Hrg. Tr. at 119-120, Google moves that three issues be deemed undisputed for purposes of this trial. First, Google moves to deem undisputed the statement: “The Java programming language is open and free for anyone to use.” Second, Google moves to deem undisputed the statement: “The names of the Java language API files, packages, classes, and methods are not protected by copyright law.” Third, Google moves to deem undisputed the statement: “Aside from a nine-line function that Oracle accuses Google of copying, Oracle does not contend that Android’s source code in any of the accused APIs was copied from the source code used in the Java platforms.” These issues cannot seriously be disputed. Google proposed to Oracle that these three issues are undisputed, but Oracle refused to stipulate to any of these statements as written. Oracle’s refusal to accept the consequences of its own concessions—and the Court’s express rulings—would only further complicate an already complex trial.

II. ARGUMENT

A. The Java programming language is open and free for anyone to use.

Throughout this case, counsel for Oracle has repeatedly stated that the Java programming language is free to use and open to anybody. Oracle cannot back away from these admissions on the eve of trial.¹ Examples of Oracle’s statements that the Java language is free and open include the following.

THE COURT: But you admit that the Java programming language is open to anybody.

MR. JACOBS: Yes.

Jul. 21, 2011 Hrg. Tr. at 50:18-20 (emphasis added).

THE COURT: I’m just wondering about the theory since – I don’t know enough about this to say, but some people would have thought that Java was in the public

________________________________________

¹ In responding to this proposed stipulation, Oracle stated that it “may be amenable to a stipulation to that effect,” but required in return that Google stipulate that the Java APIs and class libraries “are distinct from the language.” Unlike the fact that the Java language is open and free to use, which Oracle has repeatedly acknowledged in this case, the extent to which the Java APIs and class libraries are distinct from the language or, as Sun’s own publications state, “fundamental” to the language, is a contested issue in the case.

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domain and that nobody owned it, because many people have been hearing about Java for 30 years, so how could anybody own it?

MR. JACOBS: Well, it depends on what “it” is, your honor.

THE COURT: All right.

MR. JACOBS: So, for example, the Java Programming Language, we’re not asserting that we own that programming language for purposes of this case. But we are asserting, obviously, with respect to the patents that we have patent rights.

Feb. 9, 2011 Hrg. Tr. at 8:8-20 (emphasis added).

[MR. JACOBS]: And, of course, just as anyone could write a new novel in the English language, even if the English language was an invented language and protectable, the Java language is free for application programmers, free for them to use.

March 28, 2012 Hrg. Tr. at 81:6-9 (emphasis added).

[MR. JACOBS]: What we have said is we are making no claim for the protectability under copyright of the Java programming language, in and of itself. So the analytical move I don’t think we have to make is to somehow explain –

THE COURT: I think you’ve said in the past that anyone can use the Java progressing [sic] language.

MR. JACOBS: We have, because we make no claim that that is a violation of our copyright rights.

Sept. 15, 2011 Hrg. Tr. at 12:17-25 (emphases added). The Court has also recognized that, for the purposes of this case, Oracle has dedicated the Java programming language to the public for its free use.

[THE COURT]: On the other hand, we are not in 1995. We’re in 2012. And along the way Oracle has dedicated to the public domain, as far as this case is concerned anyway, the use of the Java programming language.

March 28, 2012 Hrg. Tr. at 67:22-25 (emphasis added).

Based on these representations by Oracle’s counsel, which the Court recognized at the March 28, 2012 hearing, the Court should deem undisputed what Oracle has repeatedly conceded: The Java programming language is open and free for anyone to use. Oracle’s refusal to stipulate to this issue will only result in confusing the jury as to what is at issue in this case.

B. The names of the Java language API files, packages, classes, and methods are
not protected by copyright law.

In its ruling on Google’s Motion for Summary Judgment, the Court held that the names of

2

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the Java language API files, packages, classes, and methods are not protected by copyright law. This issue is therefore the law of the case, and cannot be disputed. Google should be able to tell jurors that this point is established so the jurors can focus on what actually matters in the case.

In its summary judgment ruling, the Court noted: “Google argues that ‘the names of the Java language API files, packages, classes, and methods are not protectable as a matter of law’ (Br. 17). This order agrees. Because names and other short phrases are not subject to copyright, the names of the various items appearing in the disputed API package specifications are not protected.” Sept. 15, 2011 MSJ Order [Dkt No. 433] at 7:27-8:2 (emphasis added). The Court reiterated later in the decision that it “found that the names of the various items appearing in the disputed API package specifications are not protected by copyright on account of the words and short phrases doctrine.” Id. at 8:22-23. At the March 28, 2012 hearing, the Court confirmed this point: “The Court has already ruled that the use of the names is not protectable. Like ‘square root’ is not protectable.” March 28, 2012 Hrg. Tr. at 68:1-2.

The Court should therefore deem it undisputed that: The names of the Java language API files, packages, classes, and methods are not protected by copyright law. Oracle should not be allowed to confuse the jurors as to a simple fact that the Court has already decided.

C. Aside from a nine-line function that Oracle accuses Google of copying, Oracle
does not contend that Android’s source code in any of the accused APIs was
copied from the source code used in the Java platforms.

Aside from 11 files, Oracle has never claimed that Google copied any code directly from any version of Java. Of those 11 files, Oracle has conceded that only 3 of those are in the APIs. And of those three files, Oracle has conceded that only 1, the rangeCheck function, is actually source code (i.e., code that is compiled onto the phones). The Court should therefore deem it undisputed that, aside from rangeCheck, Oracle does not contend that Android’s source code in any of the accused APIs was copied from the source code used in the Java platforms.

First, Oracle’s counsel has stated that of the 11 instances of alleged literal copying, only 3 of the allegedly copied files were in the APIs. For example, at the March 28, 2012 hearing, Oracle’s counsel had the following exchange with the Court:

3

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[THE COURT]: So I want to start by asking basic fundamentals. Are the 11 instances of actual copying part of the 37 API source code? So let’s start with Mr. Jacobs.

MR JACOBS: In certain cases yes, Your Honor. Three of the 11 files are part of the Java APIs. Specifically, Google copied from java.util.Arrays.java into two Android files, rangeCheck. And Google copied from java.security.CodeSource.java the comments into the test file that Intel contributed to Harmony. And Google copied from java.security.CollectionCertStoreParameters.java into the test file that Intel contributed to Harmony. The other eight files are part of the implementation but are not part of the specification.

March 28, 2012 Hrg. Tr. at 4:13-5:1 (emphases added). Shortly thereafter, Oracle’s counsel made this same representation again:

THE COURT: Okay. Now, what are the other eight, then?

other eight are in other parts of Android. They aren’t in the libraries that implement the 37 APIs.

Id. at 21-25 (emphasis added). It is therefore an undisputed fact that of the 11 files that Oracle claims were copied from Java, only 3 were in the APIs.

Second, Oracle’s counsel also agreed that of those 3 files that were in the APIs, the 2 that consisted only of comments were not compiled on a phone, and hence were not source code. The Court initially had the following exchange with Google’s counsel:

THE COURT: Comments? Do you mean by that the specifications, or do you mean –

MR. KWUN: No.

THE COURT: -- the part of it that is so-called plain English to the user?

MR. KWUN: It’s in the source code file, but it’s not actual source code. It’s commentary –

THE COURT: Not compiled.

MR. KWUN: Right. So when you compile it, if you remove that text, it has no effect –

THE COURT: Comments don’t get compiled, do they?

MR. KWUN: They don’t.

THE COURT: So it’s just to help the writer of the source code follow what’s being done by the source code.

Id. at 11:12-20 (emphases added). Oracle’s counsel agreed with this discussion. Mr. Jacobs said:

4

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“So we’re on comments now. And we have a common understanding of comments. I agree with the previous discussion.” Id. at 23:23-24 (emphasis added). Thus, Oracle’s counsel agreed that of the 11 files, only 3 were in the APIs, and only 1 of those, the rangeCheck function, is actually source code (i.e. compiled onto a phone).

Oracle’s counsel also acknowledged that, other than the uncopyrightable API declarations, the source code for the APIs in Android is different than that in Java.

THE COURT: All right. So once you get past the declarations, is your source code different than the Java source code?

MR. KWUN: Yes.

THE COURT: Is that part agreed to?

MR. JACOBS: Yes, Your Honor.

Id. at 41:12-17. The Court later acknowledged Oracle’s concession, stating: “The code within the APIs used by Google is not the same code.” Id. at 68:3.

Oracle’s refusal to acknowledge that only a miniscule amount of source code is alleged to have been copied will result in confusing the jury into thinking that this case is primarily about copied source code.² To the contrary, the alleged literal copying is so minor that Oracle has not even based a damages claim on it. The jury should not be led down a false path that disguises the central issue in this case, which is whether Google was authorized to incorporate the selection, structure and arrangement of the 37 Java APIs.³ To clarify the issues for the jury, the Court should deem it undisputed that: Aside from a nine-line function that Oracle accuses Google of copying, Oracle does not contend that Android’s source code in any of the accused APIs was copied from the source code used in the Java platforms.

_________________________________________

² At the March 28, 2012 hearing, the Court noted, in describing Oracle’s description of its claims: “And I never quite know when the claim is for structure, selection, arrangement versus direct copying of source code versus copying the plain English explanation to the user. That’s been very frustrating for me trying to figure that out.” March 28, 2012 Hrg. Tr. at 7:22-8:1. Absent a stipulation from Oracle (or an order from this Court), the jury will surely experience the same frustrations the Court has had in trying to figure out what Oracle’s claims are.

³ To help focus the jury on the key issue in the case, Google has agreed to accept as undisputed that: “Android incorporates substantially the same selection, arrangement and structure of API elements as Java 2 SE does for the 37 API packages at issue.”

5

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Dated: April 5, 2012

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

6

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863

KEKER & VAN NEST LLP
ROBERT A. VAN NEST - # 84065
[email]
CHRISTA M. ANDERSON - # 184325
[email]
DANIEL PURCELL - # 191424
[email address telephone fax]

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

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

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

[PROPOSED] ORDER GRANTING
GOOGLE INC.’S MOTION FOR
ADMINISTRATIVE RELIEF TO DEEM
ISSUES UNDISPUTED

Dept.: Courtroom 8, 19th Floor
Judge: Hon. William Alsup

---

Before the Court is Google Inc.’s Motion for Administrative Relief to Deem Issues Undisputed. Based on the arguments presented in the motion, the pleadings on file, and any other relevant matter, the following issues shall be deemed undisputed for the purpose of the upcoming trial: (1) The Java programming language is open and free for anyone to use. (2) The names of the Java language API files, packages, classes, and methods are not protected by copyright law. (3) Aside from a nine-line function that Oracle accuses Google of copying, Oracle does not contend that Android’s source code in any of the accused APIs was copied from the source code used in the Java platforms.

IT IS SO ORDERED.

Dated:

_________________________

WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

1

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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 (DMR)

STIPULATION AND [PROPOSED] ORDER
AUTHORIZING ENTRY AND USE OF
EQUIPMENT FOR TRIAL

Dept.: Courtroom 8, 19th Floor
Judge: Honorable William Alsup
Comp. Filed: August 12, 2010
Trial Date: April 16, 2012

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A. Stipulation Regarding Equipment for use During Trial

WHEREAS, the trial in the above-captioned matter is scheduled to commence on April 16, 2012;

WHEREAS, the parties have met and conferred regarding the necessary equipment for use in the courtroom during trial;

WHEREAS, the parties have agreed to coordinate their use of equipment when practicable. The parties jointly request an order allowing the parties to bring into the courthouse on or after April 12, the equipment identified below and use that equipment in the courtroom during trial.

1. 6 17” LCD Monitor
2. 2 Inline 6in x lout VGA Switch IN3566
3. 1 Inline 1 in x 8 out VGA DA IN3268
4. 1 Two-way DA
5. 2 JBL EON10-G2 Powered 10” Speaker
6. 2 CAP-1 Computer Audio Patch (Mono)
7. 1 Mackie Pro 12 Channel Mixer
8. 3 Tech Table (18”x60”)w/skirt
9. 7 Rolling portable bookshelves
10. VGA cabling
11. 2 Small printers
12. 2 HP Color LaserJet CM4730 MFP
13. Extension cables and power strips
14. Hand trucks/dollys
15. 2 Local Area Network Switches
16. 2 Monitor stands
17. 3 Folding chairs
18. 1 Four-drawer filing cabinet

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B. Request for Secured Internet Access

The parties request that the Court permit the use of secure high-speed wireless or wired internet access in the courtroom during the upcoming trial. This technology will enable the trial teams to stay connected to their home offices while simultaneously reducing the files and personnel necessary in the courtroom. Subject to the Court’s approval, the parties will retain Courtroom Connect to provide this service. Courtroom Connect does not require any court resources to provide service, and installs a network that is completely independent of the Court’s systems. Courtroom Connect only needs the permission of the Court to temporarily locate the minimal amount of required equipment and cabling to connect to the Internet.

Many trials in federal courts have utilized Internet in the courtroom. Specifically, Courtroom Connect has provided Internet access in the Northern District of California on past trials such as Perry v. Schwarzenegger before former Chief Judge Vaughn Walker and Larry Bowato v. Chevron before Judge Susan Illston. In addition, Courtroom Connect has provided service on trials before Judge Martin Jenkins, Judge Charles Breyer, Judge Claudia Wilken, and others in Northern District of California. Only users approved by the Court will be able to access the Internet, and all users are required to use proven security standards.

IT IS SO STIPULATED.

Dated: April 5, 2012.

BOIES, SCHILLER & FLEXNER LLP

By: /s/ Steven C. Holtzman

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 telephone fax]

KEKER & VAN NEST LLP

By: /s/ Christa M. Anderson

KEKER & VAN NEST LLP
ROBERT A. VAN NEST (SBN 84065)
[email]
CHRISTA M. ANDERSON (SBN184325)
[email address telephone]

2

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[address telephone fax]

BOIES, SCHILLER & FLEXNER LLP
DAVID BOIES (Admitted Pro Hac Vice)
[email address telephone fax]
STEVEN C. HOLTZMAN (Bar No. 144177)
[email address telephone fax]

ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[email]
DEBORAH K. MILLER (Bar No. 95527)
[email]
MATTHEW M. SARBORARIA (Bar No. 211600)
[email address telephone fax]

Attorneys for Plaintiff
ORACLE AMERICA, INC.

[fax]

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

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

GREENBERG TRAURIG, LLP
IAN C. BALLON (SBN 141819)
[email]
HEATHER MEEKER (SBN 172148)
[email address telephone fax]
Attorneys for Defendant
GOOGLE INC.

3

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Having considered the parties’ stipulation and for good cause shown, it is ORDERED that:

1. The parties’ joint equipment request is GRANTED.

2. The parties’ request for a secured internet connection is GRANTED.

IT IS SO ORDERED.

Dated:______________________

_____________________________

HON. WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

4

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ATTESTATION OF FILER

I, Steven C. Holtzman, have obtained Christa M. Anderson’s concurrence to file this document on her behalf.

Dated: April 5, 2012

BOIES, SCHILLER & FLEXNER LLP

By: /s/ Steven C. Holtzman

Attorneys for Plaintiff
ORACLE AMERICA, INC.

5

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865

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA

ORACLE AMERICA, INC.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.

No. C 10-03561 WHA

REQUEST FOR FURTHER BRIEFING

The Court has read the recent briefs and thanks counsel for the excellent work on both sides.

By THURSDAY AT NOON both sides shall please file further briefing on whether computer programming languages have been held to be copyrightable or should be so held, developing the arguments much more fully than were done in the recent briefs. Also please summarize the expected trial evidence on the extent to which the 37 APIs should be or are deemed part of the Java programming language. What will be the expected trial evidence as to how APIs are regarded in other programming languages like C ++ . How did APIs develop in the history of programming, according to the trial evidence? Each side may have up to ten pages. Please don’t simply point out that the other side cannot find case law to support its position.

IT IS SO ORDERED.

Dated: April 6, 2012.

/s/ William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

868

KEKER & VAN NEST LLP
ROBERT A. VAN NEST - # 84065
[email]
CHRISTA M. ANDERSON - # 184325
[email]
DANIEL PURCELL - # 191424
[email]
[address]
[phone]
[fax]

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

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

GREENBERG TRAURIG, LLP
IAN C. BALLON - #141819
[email]
HEATHER MEEKER - #172148
[email]
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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-03651 WHA

GOOGLE INC.'S OPPOSITION TO
ORACLE AMERICA, INC.'S MOTION TO
STRIKE PORTIONS OF DR. JAMES
KEARL'S EXPERT REPORT

Dept.: Courtroom 8, 19th Floor
Judge: Hon. William Alsup

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Although it styles its request as a motion to strike only "one aspect" of the opinion of the Court's Rule 706 damages expert, Dr. James R. Kearl, Oracle's motion actually seeks a preemptive evidentiary ruling from the Court that would bar Dr. Kearl, Google's expert Dr. Alan Cox, or any Google witness from offering any testimony about Google's Android-related costs. Ultimately, Oracle gives the game away by confessing what the relief it requests would mean for this case. Oracle Mot. at 9:22-10:2. If the Court were to preclude all testimony on Android-related costs, that ruling alone could give Oracle [REDACTED] windfall (a result that could only rest on the absurd assumption that Google spent nothing on Android development), as compared with Dr. Kearl's opinion that Google's Android-related profits through September 2011 are [REDACTED] Simply put, Oracle has filed a motion to bar Google from offering any evidence on a matter that it concedes is worth [REDACTED] Oracle talks about prejudice, but the prejudice to Google from precluding any evidence related to Android's costs — the result Oracle is really asking for, even if it refuses to say so explicitly — would be staggering.

In seeking what amounts to a preclusive issue sanction deeming Google's Android-related profits equal to its revenues, Oracle's motion also directly flouts this Court's prior orders. The Court's order on pretrial filings explain that "motions in limine must be directed at excluding specific items of evidence; categorical motions and disguised summary judgment motions are highly disfavored." Sept. 9, 2011 Order [Dkt. 384] at 1. There can be no dispute that Oracle's motion seeks categorical exclusion of all evidence regarding Google's Android-related costs. Further, even if Oracle's motion were a properly narrowed motion in limine, only two weeks ago this Court directly instructed the parties: "Please do not file more in limine motions." Mar. 20, 2012 Order [Dkt. 820] at 1.

On the merits, Oracle's motion makes no sense legally or logically. Oracle points out that Dr. Kearl relies on the opinions of Google's expert Dr. Alan Cox, who relied on a foundation provided by Google documents and an interview with employee Aditya Agarwal, who is not on Google's witness list. Accordingly, Oracle argues, it is impossible for Google to provide any foundation for Dr. Cox's opinions, and thus impossible for Dr. Cox's report to provide any basis for Dr. Kearl to rely on, either.

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The mistaken central premise of Oracle's motion is that Google can only offer testimony about Android costs from Agarwal. Nothing in any of this Court's orders, or any case Oracle cites, imposes that limitation. As Oracle concedes, Dr. Cox's opinions are primarily based not on anything Agarwal told him, but on [REDACTED] Oracle Mot. at 6:4-9. That is the evidence that provides the foundation for the numbers in his report. As Agarwal made clear, [REDACTED] Declaration of David Zimmer in Support of Google's Opposition ("Zimmer Decl.") Ex. A (Agarwal Dep.) at 41:5-42:8. And despite Agarwal's absence from Google's witness list, there are several other Google witnesses who were disclosed on that list on subjects that encompass Android financial data. Most obviously, Google disclosed Android project head Andy Rubin as a witness expected to testify about, among other subjects, "the efforts and costs incurred in developing and ultimately open sourcing the Android platform." Google's Trial Witness Disclosure [Dkt. 525-3] at 4. At trial, Rubin (or others¹) should be able to authenticate the Android financial documentation and explain the figures contained therein, and thus lay the necessary foundation for Dr. Cox (and Dr. Kearl) to rely on those figures.

Indeed, Oracle has already brought this motion before, when it sought to strike portions of the Cox report last year, and the Court rejected it. When Oracle complained that Google's damages experts improperly relied on interviews with Google witnesses, the Court made clear that "the damages experts did rely on sources of information reasonably relied upon as long as the foundational facts are properly laid at trial. Of course, the expert should make clear that he assumes this point and is not himself qualified to make expert findings on the technical point." Nov. 28, 2011 Order [Dkt. 632] at 3. Again, the Court did not order that those foundational facts

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explaining the documentary evidence could only be laid by the same individuals Dr. Cox spoke to prior to completing his report. In the case of the financial data, Oracle is free to cross-examine Google's foundational witness about bias, or an alleged lack of expertise, or to point out gaps in his knowledge or the financial documents themselves. Oracle is likewise free, when it cross-examines Dr. Cox, to criticize him for relying on Google's accounting without having verified them through his own audit, or his lack of an accounting certificate, or any other relevant issue. Oracle may offer Agarwal's deposition testimony in its own case and has included Agarwal on its witness list. This is a matter for cross-examination, not categorical exclusion of evidence.

Oracle's motion goes on for several more pages, but offers no reason to strike any expert testimony now, before Google has had the chance to lay the appropriate foundation at trial. Oracle raises several issues related to the fact that Agarwal was Google's Rule 30(b)(6) designee on Android finances, but none provide a reason to strike anything. This Court's initial case management order made clear "Ru1e 30(b)(6) testimony never constitutes an irrebuttable judicial admission. It will normally, however, be admissible against the organization producing the witness." Sept. 22, 2010 Order [Dkt. 26] at 8, ¶ 23(d) (emphasis added). Again, if Oracle is complaining that Dr. Cox's opinions are inconsistent with Agarwal's deposition testimony, Oracle can try to introduce Agarwal's testimony to impeach Dr. Cox. To the extent Oracle is objecting that Agarwal could not explain the categories in the financial documentation in enough detail, Oracle may argue that the jury should not accord that evidence much, or any, weight.

Oracle's real complaint appears to be that Google didn't adequately prepare Agarwal for his deposition, but, again, Oracle fails to tell the Court the full story of the discovery process. Oracle's Rule 30(b)(6) deposition topic 2, for which Agarwal was Google's designee, was both compound — at least four topics in one — and extremely broad as to each (sub)topic.

Google's revenues related to Android, including (i) the identity of each person with knowledge regarding such revenues, (ii) how Google accounts for Android-related revenues and expenses, (iii) all profits and losses, revenues, expenses, and costs associated with Android, including those associated with Android Market and advertising on Android-enabled devices, (iv) any financial projections relating to Android, including the bases for Eric Schmidt's statement that "Google is positioning itself to earn $10 billion or more per year in the mobile device business, thanks to its Android operating system."

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Zimmer Decl. Ex. B (Orac1e's Mar. 10, 2011 Rule 30(b)(6) Deposition Notice) Topic 2. Oracle served this overbroad and compound notice despite the Court's case-management order, which warned that "[i]f a notice includes an overbroad topic, the overbroad topic shall be unenforceable and may not be later replaced with a proper topic." Sept. 22, 2010 Order [Dkt. 26] at 7, ¶ 23(a) (emphasis added).

Before the deposition, Google told Oracle that it considered the topic unenforceable and would not present a witness on the entire topic as written. It specifically objected that the topic was both overbroad and unduly burdensome, and particularly because it was compound

in view of paragraph 23(a) of [this Court's Sept. 22, 2010] Supplemental Order, insofar as this Topic improperly combines multiple subject matters into a single Topic, namely (1) identification of persons having knowledge regarding certain matters; (2) information regarding past revenues, if any, derived from Android and related financial information; and (3) future projections relating to Android.

Zimmer Decl. Ex. C (Google's March 25, 2011 Objections to Oracle's Rule 30(b)(6) Deposition Notice) at 2-3. Google agreed only to produce a witness "availab1e for deposition as its Rule 30(b)(6) designee in connection with any unobjectionable portions of this Topic." Id. at 3. This reveals yet another false premise underlying Oracle's motion; Google never agreed to designate Agarwal to testify about the entire breadth of Oracle's all-encompassing topic, including Google's precise methodology for associating particular costs with Android.

If Oracle disagreed with, or had any uncertainty as a result of, Google's objections, or felt after taking the deposition that Agarwal was not sufficiently prepared to testify as required, Oracle could and should have told Google (and, if necessary, informed the Court) and sought a further deposition during the discovery period. It never did. It did not even raise that objection and reserve its rights during the deposition itself. As a quick glance at the docket confirms, both Oracle and Google moved to compel Rule 30(b)(6) testimony from the other during discovery, where the moving party believed the other side had failed to comply with its obligations under the Rule. See Joint Letters re Oracle Request to Compel Google Testimony Under Rule 30(b)(6) [Dkt. 276, 290]; Joint Letter re Google Request to Compel Oracle Testimony Under Rule 30(b)(6) [Dkt. 280]. But in this instance, Oracle sat mute until the eve of trial, when it filed its motion for [REDACTED] evidentiary sanction.

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Indeed, many of Oracle's objections about Agarwal's purported lack of knowledge, Oracle Mot. at 5:11-21, are either obvious issues for cross-examination or trivial irrelevancies. First, Oracle asserts that [REDACTED] To the extent Google's accounting practices as to other business lines — a topic on which Oracle didn't seek Rule 30(b)(6) testimony and on which Agarwal wasn't designated — are even relevant in a case that is entirely about Android, that is a prototypical cross-examination issue. Second, Oracle complains that Agarwal [REDACTED] this shouldn't make any difference. In other words, [REDACTED] Third, Oracle criticizes Agarwal for [REDACTED] This makes no difference either; Google is entitled to deduct Android-related costs from its Android-related revenues regardless whether those costs were incurred during the development phase or after launch. Fourth, Oracle complains that [REDACTED] but Dr. Cox did in fact amortize those expenses over a five-year period before deducting them from Android revenues. Nov. 25, 2011 Corrected Cox Report at 29-31. Dr. Kearl concurred with Dr. Cox's amortization analysis entirely. March 21, 2012 Kearl Report at 47, ¶ 121.

Oracle also mistakenly asserts that, to allow a witness other than Agarwal to testify about Android finances at trial, and then permit Dr. Cox to rely on that testimony, would mean that Dr. Cox would be changing the basis of his opinion. Oracle misunderstands the basis of Dr. Cox's opinion, which is the Android financial documentation. That documentation, and the numbers it contains setting forth Android financial data, remain the same regardless of which Google witness vouches for its accuracy and explains its contents. Again, to the extent that any Google trial witness explains that document differently from Agarwal, Oracle would be entitled to object at that time, or to cross the trial witness on any purported inconsistency.

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Finally, in an effort to overstate Google's modest burden of proof regarding its Android-related costs, Oracle cites Frank Music Corp. v. Metro-Goldwyn-Mayer, Inc., 772 F.2d 505 (9th Cir. 1985). Frank Music stands for the unexceptional proposition that a copyright infringer has the burden of proving deductible costs. Google has never argued to the contrary. But even Frank Music — in a passage Oracle neglects to quote — made clear that this requirement does not "mean that an infringer must prove his overhead expenses and their relationship to the infringing product in minute detail." Id. at 516. Instead, the infringer bears only "the burden of explaining, at least in general terms, how claimed overhead actually contributed to the production of the infringing work." Id. (emphasis added). The proof in Frank Music fell short because the infringer offered only evidence of general, company-wide overhead expenses, and attributed a percentage of those to the infringing work, rather than providing a calculation of expenses specifically tied to the infringing work. See id. Here, Google has already done far more; the documentation Agarwal authenticated [REDACTED] At trial, Google will explain the document and the contribution of each cost category to the development and success of the Android platform.

Moreover, Oracle ignores more forgiving Ninth Circuit guidance explaining that complete precision is not required in calculation of a copyright infringer's wrongful profits. As Google has pointed out before, in Cream Records, Inc. v. Jos. Schlitz Brewing Co., 754 F.2d 826 (9th Cir. 1985), the Ninth Circuit affirmed a judgment awarding wrongful infringer's profits of $5,000, out of approximately $5 million in profits — or one-tenth of one percent — based on Schlitz's use of a short passage from "The Theme from Shaft" in a beer commercial. See id. at 827, 828. There, Schlitz offered no proof of the contribution of that musical snippet to its beer sales. Id. at 828. Even so, the district court based its modest damages award on a finding that the infringement was "minimal" and the music did not substantially add to the value of the commercial. Id.

Quoting Judge Learned Hand, the Ninth Circuit affirmed that apportionment:

But we are resolved to avoid the one certainly unjust course of giving the plaintiffs everything, because the defendants cannot with certainty compute their own share. In cases where plaintiffs fail to prove their damages exactly, we often make the best estimate we can, even though it is really no more than a guess (Pieczonka v.

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Pullman Co., 2 Cir., 102 F.2d 432, 434), and under the guise of resolving all doubts against the defendants we will not deny the one fact that stands undoubted.

Id. at 829 (quoting Sheldon v. Metro-Goldwyn Pictures Corp., 106 F.2d 45, 51 (2d Cir. 1939). As discussed already, "the one fact that stands undoubted" with respect to Google's development of Android is that Google was not able to create a successful smartphone platform for nothing. Although Cream Records involved the apportionment of profits rather than the deduction of costs, the overriding principle remains the same: the Copyright Act does not require perfection in financial calculations. "As to the amount of profits attributable to the infringing material, 'what is required is ... only a reasonable approximation.'" Id. (quoting Sheldon v. Metro-Goldwyn Pictures Corp., 309 U.S. 390, 408 (1940)).

Oracle is right that this Court has made clear, as it did in its earlier opinion in Therasense, Inc. v. Becton, Dickerson & Co., No. C04-02123 WHA, 2008 WL 2323856, *2 (N.D. Cal. May 22, 2008), that the factual foundation of an expert's testimony, particularly as to hotly contested issues, must be supplied by authenticated documents and witnesses with personal knowledge. But Google is not proposing, and has never proposed, to do anything less here. It will prove its deductible Android-related expenses through its authenticated Android financials, as explained by a witness with personal knowledge. Of course, the question whether Google has substantial deductible Android-related expenses is actually not hotly contested at all. Obviously Google does have such expenses; Oracle does not argue otherwise. The relief Oracle seeks — barring any evidence of Android-related costs from trial — would lead to a tremendously punitive result that everybody knows also would be factually wrong. Because nothing in case law or any prior order of this Court supports that result, the Court should deny Oracle's motion.

Dated: April 6, 2012

KEKER & VAN NEST LLP

By: /s/ Robert A. Van Nest
ROBERT A. VAN NEST

Attorneys for Defendant
GOOGLE INC.

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¹ Google disclosed former CEO Eric Schmidt and current CEO Larry Page as witnesses who may testify on, among other topics, "Google's business model and goals in the mobile market" and "Google's background, history, product development, advertising business, and revenues." Google's Trial Witness Disclosure [Dkt. 525-3] at 7 & 8. Google also disclosed Hiroshi Lockheimer and Andy McFadden as witnesses who may testify about, among other subjects, "the process of developing Android, including his work on development of the Android platform and for Google's Android team," categories which necessarily include costs incurred by Google during development. Id. at 6 & 7.

873

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 telephone fax]

BOIES, SCHILLER & FLEXNER LLP
DAVID BOIES (Admitted Pro Hac Vice)
[email address telephone fax]
STEVEN C. HOLTZMAN (Bar No. 144177)
[email address telephone fax]
ALANNA RUTHERFORD
[address telephone fax]

ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[email]
DEBORAH K. MILLER (Bar No. 95527)
[email]
MATTHEW M. SARBORARIA (Bar No. 211600)
[email address telephone 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 AMERICA, INC.’S OPPOSITION
TO GOOGLE’S MOTION TO STRIKE
PORTIONS OF DR. JAMES KEARL’S
EXPERT REPORT

Dept.: Courtroom 8, 19th Floor
Judge: Honorable William H. Alsup

PUBLIC REDACTED VERSION

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I. INTRODUCTION

The Court-appointed damages expert, Dr. James Kearl, has concluded that as a matter of economics the “best measure” of the value of the intellectual property in suit (without accounting for fragmentation) is the same amount that Google would have paid for a license to Sun’s Java ME intellectual property portfolio in 2006: a [REDACTED] royalty on all Android gross advertising revenues, or [REDACTED] per Android device. He further concludes that his “best economic advice” is that downward adjustment of that portfolio value is economically inappropriate, would necessarily undervalue the intellectual property that Google infringed, and would necessarily under-compensate Oracle. Nonetheless, Dr. Kearl includes a version of the apportionment analysis that the Court previously ruled admissible, concluding that that approach results in a royalty less than one-twentieth of what his best economic advice indicates is the value of the specific IP in suit.

Without addressing, much less challenging, Dr. Kearl’s economic reasoning, Google moves to strike his opinions as a matter of law. According to Google, Dr. Kearl must value the intellectual property in suit. That much is true. But that proposition does not help Google, for Dr. Kearl does expressly value the intellectual property in suit based on analysis of the parties’ 2006 negotiations, applying several independent rationales laid out in Section K of his report to conclude that that value is the full [REDACTED] advertising revenue share or the full [REDACTED] per Android device. Dr. Kearl does not simply assume that the parties would have negotiated a portfolio license.

Google argues that Dr. Kearl’s “best economic advice” is forbidden by the law of patent damages, as applied by the Court in its July 22, 2011 Order partially excluding the initial report filed by Oracle’s expert, Prof. Cockburn. (Dkt. 230.) But as applied to Dr. Kearl’s reasoning, Google can find no support for that purported rule of law either in this Court’s orders or in the decisions of the Federal Circuit. This Court did not address or anticipate Dr. Kearl’s economic reasoning in its July order or any of its other prior orders. The Federal Circuit has never held that it is impossible, as a matter of law, logic, fact, or economics, for a subset of a complex intellectual property portfolio to command the same price as the entire portfolio. Moreover, Google offers no explanation as to how or why its argument is correct as a matter of copyright law, as to which this Court’s July decision is

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inapplicable.¹ Dr. Kearl’s unchallenged economic reasoning on apportionment is legally sound and supported by the record facts in this case. No principle of law precludes it.

Granting Google’s motion would subvert the Court’s purpose in appointing an expert under Rule 706. Instead of hearing the best economic advice of the independent expert, the jury would hear him testify only to the royalty measure that he believes is, in fact, “less than a reasonable royalty for the use made of the invention by the infringer.” That is the exact opposite of what 35 U.S.C. § 284 requires. Such an opinion serves Google’s purposes, but no other. Oracle respectfully requests that the Court deny Google’s motion.

II. FACTS

A. Dr. Kearl’s Assessment of the Value of Sun’s 2006 Java Portfolio and Android
Advertising Revenues

To calculate the reasonable royalty for the IP in suit for this case, Dr. Kearl begins with the 2006 negotiations between the parties. Consistent with the Court’s prior orders, he then makes downward adjustments to exclude all elements of the transaction other than Sun’s Java ME intellectual property portfolio. (Kearl Report ¶¶ 73–80; Kearl Dep. 17:7–21.)² This measurement, combined with Google’s forecasts for Android unit sales, allows Dr. Kearl to isolate the value that Sun reasonably would have expected to receive as a result of licensing its patents and copyrights to Google in 2006. Dr. Kearl concludes that the value of the Java trademark is zero, and if anything warrants upward adjustment of the royalty for Sun’s other intellectual property. (Kearl Report ¶ 75.)

Dr. Kearl discounts the expected value of Sun’s copyrights and patents to its net present value in 2006. Depending on whether one uses [REDACTED]

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¹ Although Section K of Dr. Kearl’s report is titled “Allocation of the 2006 IP Portfolio Value to the Patents in Suit – Theory” (Kearl Report, p. 37), the section discusses both the patents and the copyrights in suit and applies its rationale to both, including both specific references to the copyrights in suit and general references to the “in suit IP.” (See, e.g., id. ¶¶ 100, 101, 103, 103 fn. 59, 104, 105.)

² References to the “Kearl Report” and “Kearl Dep.” refer to Exhibits E and F to the April 2, 2012 Declaration of Meredith Dearborn In Support Of Oracle America, Inc.’s Motion to Exclude Portions of the Rule 706 Expert Report of Dr. James Kearl. (Dkt. No. 850-1 (4/2/12 Dearborn Decl.); Dkt. 850-6 (Kearl Report); Dkt. 850-7 (Kearl Dep.).)

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[REDACTED] (Kearl Report ¶ 80, Tables 1, 2.)

Dr. Kearl then uses the same internal Google projections for Android to calculate the net present value to Google, also in 2006, of the advertising revenues that Google expected to earn from Android. Depending on which Google projections are used, that 2006 net present value to Google was [REDACTED] (Kearl Report ¶ 85, Tables 1, 2.)

B. Dr. Kearl’s Calculation of Portfolio Royalty

By comparing the expected net present value to each party, Dr. Kearl is able to calculate a royalty rate for the Java ME patents and copyrights. Concluding that the value of Sun’s expected benefit is [REDACTED] of the combined Sun and Google benefit, Dr. Kearl concludes that the bargain the parties would have struck in 2006 for a license to the Java ME portfolio would have been equal to a [REDACTED] royalty on Android advertising revenues, which he equates to [REDACTED] per Android device. (Kearl Report ¶¶ 20, 86.) Notably, because this royalty rate is based on the parties’ actual 2006 negotiations, it already factors in the availability and desirability of any non-infringing alternatives. (Kearl Report ¶¶ 177–179; Kearl Dep. 70:17–72:13.)³

C. Dr. Kearl’s Explanation of the Relationship Between the Value of the Portfolio and
Value of the IP In Suit

Dr. Kearl then considers the relationship between the value of the intellectual property in suit – a subset of the patents and copyrighted material in the portfolio at issue in 2006 – and the value of the entire portfolio. (Kearl Report ¶¶ 97–105.) Dr. Kearl concludes that, as a matter of economics, it would be inappropriate in this case to distinguish between the value of the portfolio and the value of the intellectual property in suit. (Kearl Dep. 149:3-5; 154:20-155:8.) His report states:

[REDACTED]

(Kearl Report ¶ 104; see also id. ¶ 20.) Dr. Kearl testified that this opinion reflects his “best

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³ Although Dr. Kearl agrees that the hypothetical license would have to compensate Sun for the increased risk of fragmentation of the larger Java platform from an incompatible implementation, he also agrees that his [REDACTED] royalty includes no such compensation. (Kearl Dep. 70:2-12.)

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economic judgment” (Kearl Dep. Tr. 102:5–102:22) and is the “best measure” of the value of the IP in suit:

[REDACTED]

(Kearl Dep. Tr. 107:7–11.)

Dr. Kearl explains why it is economically inappropriate to apportion the value of the 2006 Sun Java ME portfolio to ascertain the value of the intellectual property in suit in this case. Initially, Dr. Kearl observes that Sun routinely licensed its intellectual property on a portfolio basis, and that none of the party experts in this case has cited any evidence that Sun ever did otherwise. (Kearl Report ¶ 99.) Dr. Kearl makes this observation not to argue that the hypothetical negotiation would be for the entire portfolio, as Google implies, but rather to emphasize that there are no licenses to subsets of the portfolio that could be used as benchmarks. (Id.) Dr. Kearl notes that, [REDACTED]” (Id. ¶ 100; see also id. ¶ 103.) A licensee would never expect to use all of the patents and copyrights that it has licensed, and an apportionment approach that attempts to allocate value to every component of the portfolio will undervalue the intellectual property in suit. (Kearl Dep. 215:23- 218:2.)

Moving beyond these initial premises, Dr. Kearl provides three specific economic reasons why the value of the in-suit IP is equal to the value of the 2006 license bundle.

First, Dr. Kearl explains that

[REDACTED]

(Id. ¶ 100 (emphasis Dr. Kearl’s).) In his deposition, Dr. Kearl further explained that “[REDACTED].

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[REDACTED] (Kearl Dep. 103:19–104:2; see also id. 155:3–156:4) As discussed below (see infra, sections II.D-E), and contrary to what Google argues in its motion, there are substantial factual foundations for this opinion.

Second, Dr. Kearl opines that even if Google did not know what subset of the Java portfolio it needed in 2006,

[REDACTED]

(Kearl Report ¶ 101 (footnote omitted).) Thus, “[REDACTED] (Kearl Dep. 104:5–11.)

To illustrate these first two points, in his deposition Dr. Kearl used the example of a person who subscribes to a 100-page magazine knowing that he intends to read only one page. To that subscriber, the value of that single page is the same as the price of the entire magazine. This is true whether the subscriber already knows the specific page he intends to read, or simply knows that once he has the magazine, he will just choose one page to read. (Kearl Dep. 155:3–157:6.)

Third, Dr. Kearl reasons that if Google planned to create Android from the ground up, but written in Java and using, in part, “Java ME-like” technology, Google would have understood that it was likely that Sun, in the past, had encountered and resolved the same problems that Google would encounter as it implemented a Java-based virtual machine. (Kearl Report ¶ 102; see also Kearl Dep. 103:15–105:6.) In that case, a portfolio license would allow Google to design its Java-based platform and virtual machine as it saw fit, without fear of liability for infringing Sun Java technology. (Id.) Again, in that scenario, the value of the IP in suit would be equal to the value of the entire portfolio.

Dr. Kearl concludes:

[REDACTED]

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[REDACTED]

(Kearl Report ¶ 105.)

D. Google’s Own Documents, Admissions, and Testimony Support Dr. Kearl’s Analysis

Under Dr. Kearl’s analysis of the relationship between the value of the IP in suit and the value of the Java ME portfolio, it is not necessary to know whether Google had the specific IP in suit in mind at the time of the 2006 negotiation, or was unaware of what it needed and only later chose to include in Android elements that were protected by Sun’s intellectual property rights. In either case, the value of the IP in suit is equal to the value of the portfolio. (Kearl Report ¶¶ 99–105.) Nonetheless, there is substantial evidence that Google was aware of the contents of the Sun portfolio and had specific Java technology in mind at the time of the 2006 negotiation. Google’s bald assertion that “[t]here is no evidence that Google knew anything specific about the contents of the Sun bundle in 2006” (Dkt. 845, at 1) is plainly false.

As Dr. Kearl observes, the fact of the negotiations alone establishes that Google knew something about the contents of the Sun Java ME bundle in 2006. [REDACTED]” (Kearl Dep. 153:20-154:8.) Indeed, the copyrighted specifications were public and well known, especially to the many former Sun engineers at Google. Google holds a seat in the Executive Committee of the Java Community Process, and beginning in 2005 Android engineer Bob Lee was Google’s alternate representative on that committee. (Declaration of Meredith Dearborn In Support Of Oracle America, Inc.’s Opposition To Google’s Motion To Strike Portions Of Dr. James Kearl’s Expert Report (“4/6/12 Dearborn Decl.”) Ex. A (Lee Dep. 16:16-17:3).) Mr.

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Lee admitted at his deposition that he [REDACTED] having started work on the core libraries for Android “a couple months” after first joining the Android team in 2004. (Id. 6:1-18, 7:18-20, 66:1-9.)

The facts confirm that Dr. Kearl’s analysis is consistent with the actual, real-world negotiations between the parties in this case. Examples of the evidence that, contrary to Google’s assertion, Google knew both many things that were “specific about the contents of the Sun bundle” (Dkt. 845, at 1) and what it wanted from that bundle in 2006 include:

• [REDACTED] (4/6/12 Dearborn Decl. Ex. B (Leonard Dep. 56:4-57:5)); see also Leonard Report at 9 - 10.
• [REDACTED] (4/6/12 Dearborn Decl. Ex. C (Cizek Dep. 195:14–206:21).)
• As a result of his prior dealings with Sun, Mr. Rubin was well aware of both the copyrights in the Java bundle, a [REDACTED] (4/6/12 Dearborn Decl. Ex. D (Rubin 7/27/11 Dep. 149:18-150:13).)
• The Google negotiating team in 2005-2006 included Tim Lindholm. (4/6/12 Dearborn Decl. Ex. E (Trial Exhibit 140, GOOGLE-01-00018836).) Mr. Lindholm had been a Sun employee, worked on the original Java platform, is the co-author of the Java Virtual Machine Specification, described [REDACTED], and described [REDACTED] (4/6/12 Dearborn Decl. Ex. F (Lindholm Dep. 7:23- 8:11; 13:21-1 (4/6/12 Dearborn Decl. Ex. C (Cizek Dep. 195:22-196:24).) While he was still at Sun, Mr. Lindholm was regarded as one of the “most technically knowledgeable people regarding the Java Micro Edition.” (Id. 195:22-196:24.)
• When Sun representatives met with Mr. Rubin in the fall of 2005, Mr. Rubin specifically indicated that Google was interested in a license to Sun’s Connected Device Configuration, or CDC (4/6/12 Dearborn Decl. Ex. H (Trial Exhibit 2720, OAGOOGLE0100029446); 4/6/12 Dearborn Decl. ME profile than the [REDACTED], and which included a subset of the 2006 portfolio (including most of the APIs in suit).

_______________________________________

⁴ For example, CDC 1.1.2 APIs include asserted packages java.io, java.lang, java.lang.ref, java.lang.reflect, java.net, java.security, java.security.cert, java.text, java.util, java.util.jar, java.util.zip, and javax.microedition.io. (See http://docs.oracle.com/javame/config/cdc/refimpl/ cdc1.1.2/jsr218/index.html). Personal Basis Profile APIs from 1.1.2 include asserted packages java.awt.font, java.beans, and more. (See http://docs.oracle.com/javame/config/cdc/refimpl/ pbp1.1.2/jsr217/index.html.)

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• By the time of that fall 2005 meeting, Google had already d[REDACTED] interested in [REDACTED] (4/6/12 Dearborn Decl. Ex. C (Cizek Dep. 98:22-99:14).)
• [REDACTED](4/6/12 Dearborn Decl. Ex. C (Cizek Dep. 125:10-25; 135:15-136:1).)
• On April 20, 2006, Mr. Rubin sent an “Android Product Requ[REDACTED]ich [REDACTED]ument includes the statement that [REDACTED]“ ).” (4/6/12 Dearborn Decl. Ex. I (Trial Exhibit 379, GOOGLE-24- 00016590, at p. 12 of 26).)
• [REDACTED] (4/6/12 Dearborn Decl. Ex. J (Trial Exhibit 157, GOOGLE-01-00025523).)
• [REDACTED] (4/6/12 Dearborn Decl. Ex. K (Trial Exhibit 251, GOOGLE-02-00104269).)

The evidence confirms that Google knew what was truly important at the time of the 2006 hypothetical negotiation: the patented technology it had already started to use and the copyrighted APIs and class libraries it was incorporating into its design for Android. Dr. Kearl’s analysis of why the value of the IP in suit is appropriately considered equal to the full value of the portfolio is consistent with the actual, real-world negotiations between the parties.

E. Dr. Kearl’s Econometric Analyses Further Corroborate His Conclusions as to the
Value of the IP In Suit

Other evidence discussed in Dr. Kearl’s report corroborates his conclusion that the value of the intellectual property in suit, separately or together, is equal to the 2006 value of the Java ME

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portfolio. For example, Dr. Kearl conducted an econometric analysis to determine consumers’ willingness to pay for the incremental performance benefits that Oracle claims are associated with the patents in suit, as well as the incremental benefits of additional applications afforded by the copyrighted APIs. (Kearl Report App’x F ¶¶ 334-404.) Dr. Kearl concludes that consumers would be willing to pay [REDACTED] over the average price of an Android phone for the performance benefits of infringing the ’104 patent, and that consumers would pay [REDACTED] over the average price of an Android phone for the additional applications afforded by infringing the API specifications. (Id. ¶¶ 400, 401; Exhibits F9, F10.) In comparison, Dr. Kearl’s royalty for the entire 2006 Java ME portfolio is [REDACTED] per Android phone. The econometric evidence provides additional support for Dr. Kearl’s conclusion that apportionment of the 2006 portfolio is inappropriate in this case.

III. ARGUMENT

Google does not quarrel with Dr. Kearl’s economic judgment. Google does not dispute that there are “good economic reasons why the value of the in suit IP” is equal to the value of the entire Java ME portfolio. Google does not challenge Dr. Kearl’s econometric analyses, nor does it deny that consumers would pay as much as twenty-five times Dr. Kearl’s [REDACTED] per unit royalty just to get the benefits provided by the two patents and the 37 API specifications. Indeed, on all factual and economics issues, Google’s brief is silent.

Instead, Google appears to make three arguments, all of which rest on the premise that this Court’s prior rulings on patent law damages forbid Dr. Kearl’s economic reasoning, no matter how sound it may be, and regardless of whether it applies to patents, copyrights, or both.

A. Dr. Kearl Specifically Values The IP in Suit.

Google begins by arguing that Dr. Kearl has set aside the law to conclude that Google “should be charged a royalty for the entire bundle—not merely the intellectual property in suit.” (Dkt. 845 at 1:15-16.) That is the fundamental premise of Google’s brief. It is false.

Dr. Kearl expressly did value the intellectual property in suit; he did not conclude that Google should be charged for any more than this. (Kearl Report ¶ 22 (“[REDACTED]

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[REDACTED]

(emphasis added in all).⁵

Nowhere in his report or his deposition testimony does Dr. Kearl suggest that damages in this case should be based on anything other than what Google would reasonably have agreed to pay for the specific intellectual property it infringed. Thus, Dr. Kearl testified that, in 2006, “[REDACTED] (Kearl Dep. Tr. 107:7–11.) Indeed, the point of the economic analysis that Google would exclude is to demonstrate precisely why Google would have agreed to pay as much for the IP in suit as it was prepared to pay for the larger portfolio.

At the same time, Dr. Kearl is quite clear that [REDACTED] (Kearl Report ¶ 105.) When Dr. Kearl’s actual opinions are considered, Google’s motion to strike takes on an Alice-in- Wonderland quality. Google points out that Dr. Kearl must value the IP in suit. Dr. Kearl says the “best” way to do exactly that is to use the value of the 2006 Java ME portfolio. He says that apportionment will fail to capture the full value of the IP in suit. In response, Google argues that Dr. Kearl must apportion. As a result, Google would essentially compel Dr. Kearl to offer only one opinion as to reasonable royalty—one that he believes is wrong, and one, crucially, that he believes is “less than a reasonable royalty for the use made of the [patented] invention by the infringer” (35 U.S.C. § 284) and less than “the actual damages suffered by him or her as a result of the [copyright] infringement.” (17 U.S.C. § 504(b).)

________________________________________

⁵ Dr. Kearl does not distinguish between and among the patents and copyrights in suit, and there is no need to do so under his analysis. For example, if one of the patents is found invalid or not infringed, it can readily be concluded that the value of that patent is zero, with no effect on the value of any remaining IP found to be valid (or copyrightable) and infringed.

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B. The Court’s Prior Orders Do Not Preclude Dr. Kearl’s Economic Opinion That The
Value of the IP in Suit Is Equal to the Value of the 2006 Java Portfolio.

Google next argues (Dkt. 845 at 2-3) that the Court rejected Dr. Kearl’s logic in the July 22, 2011 Daubert order. That is not correct, as even Google’s quotes from the Order demonstrate.

In his May report, Prof. Cockburn calculated a royalty for the entire Java portfolio based on the assumption that the hypothetical negotiation would have resulted in Google taking a portfoliowide Java license. Prof. Cockburn explained that he did so because Sun’s and Oracle’s “practice was to license Java, not to license individual patents.” (May 20, 2011 Cockburn Report ¶ 132; see id. at 23.) Prof. Cockburn further stated that “my understanding is that Oracle generally offered portfolio licenses, and for practical and legal reasons it is highly likely that Google and Oracle would have entered into a Java portfolio license in order to avoid serial claims and disputes.” (Id. ¶ 347.) In its July 22 Order, the Court held that Prof. Cockburn’s approach was improper as a matter of law: “An opinion that the hypothetical negotiation would have resulted in a Java license simply fights the hypothetical.” (Dkt. 230 at 5-6.)

Google argues that the rationale of the July Order forecloses the opinions expressed by Dr. Kearl in paragraphs 97–105 of his report. It does not. In fact, the July Order never considered the analysis that Dr. Kearl employs, either under the patent laws or the copyright laws. In contrast to the opinion in Prof. Cockburn’s May report, Dr. Kearl does not assert or assume that the hypothetical negotiation is for the entire portfolio. He concludes that Google would have paid as much for the specific IP in suit as it would have paid for the entire portfolio. He explains why this is so, based on economic analysis that Google, even now, has never challenged.

None of Dr. Kearl’s rationales for why the IP in suit, if found valid and infringed, warrant a reasonable royalty equivalent to the royalty for the 2006 portfolio fails to take into account the mandate that a reasonable royalty for patent infringement be limited to a royalty “for the use made of the invention by the infringer.” (Dkt. 230 at 5, quoting 35 U.S.C. § 284.) To the contrary, they specifically consider the value of that use. Similarly, none of Dr. Kearl’s rationales assumes that “Java was [ ] the invention” (Dkt. 203 at 5), or indeed that anything beyond each patent in suit is the relevant invention. To the contrary, they explicitly consider only the inventions (and the copyrights)

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themselves. And none of Dr. Kearl’s rationales depends on “fighting the hypothetical” negotiation that is relevant to calculation of damages in this case. (Id. at 5-6.) To the contrary, they envision a hypothetical negotiation permitting and valuing Google’s use of the IP at issue in this lawsuit, whether because Google in fact knew, as discussed above, what it wanted; because Google wanted the option to choose what it wanted; or because Google wanted insurance against litigation involving the particular IP it ended up infringing.

The three cases that Google cites have nothing to do with the economic reasoning that Google challenges. Google cites no case, from the Federal Circuit or elsewhere, holding that a portion of a patent portfolio cannot have a value equal to the entire portfolio. There is a good reason for this: the Federal Circuit has never so held. Indeed, “[t]he Federal Circuit has never held that, as a matter of law, a reasonable-royalty award cannot exceed what someone paid to acquire a patent portfolio that includes the patent-in-suit. . . . [S]uch a rule would make no sense.” Spectralytics, Inc. v. Cordis Corp., 650 F. Supp. 2d 900, 914 (D. Minn. 2009), aff’d in part, rev’d in nonpertinent part, 649 F.3d 1336, 1347 (Fed. Cir. 2011) (emphasis added). If a patent in suit can justify a reasonable royalty that is greater than the royalty paid for the entire portfolio, several components of portfolio can be worth as much as the whole. Whether that is the case here is a question of fact, not law, that should be decided by the jury after hearing all of the evidence and Dr. Kearl’s opinions, as applied to the record facts. Nothing in Dr. Kearl’s opinions is inconsistent with the Federal Circuit’s decision in ResQNet, because Dr. Kearl finds that “the economic harm caused by the infringement of the claimed invention” should be considered equal to the portfolio value in this case. ResQNet.com v. Lansa, Inc., 594 F.3d 860, 869 (Fed. Cir. 2010). That is quintessentially an economic and factual issue, not a legal one.

C. The Court Has Never Held That “Fair Apportionment” of the 2006 Java Portfolio
Cannot Be No Apportionment

Google argues (Dkt. 845 at 3-4) that this Court has held, as a matter of law, that any approach that starts with the 2006 negotiations must make a “fair apportionment” between the “technology in suit and the remainder of the technology then offered.” (Dkt. 845 at 3-4, quoting Dkt. 685 at 3.) But the Court has also stated that its orders limiting the testimony of Prof. Cockburn do not prevent other

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experts, including Dr. Kearl, from offering other approaches to reasonable royalty damages. (See, e.g., Dkt. 791 (“Also, the order for Dr. Ian Cockburn to adjust his valuation of the copyrights in suit and Sun’s Java mobile patent portfolio to $561 million does not preclude other experts from using a different valuation or a completely different approach altogether.”).)

Further, nothing in the Court’s orders categorically rejects, as a matter of either law or fact, an economic argument that a “fair apportionment” of the 2006 bundle is no apportionment. It is of course true that the Court has required that additional adjustments be made to the apportionment analyses that Prof. Cockburn has offered. But orders addressing how apportionment is to be done have no bearing on whether apportionment should be done under Dr. Kearl’s analysis.

D. There Is No Proper Basis to Exclude Dr. Kearl’s Opinion That Apportionment of the
IP in Suit as a Fraction of the Value of the Portfolio Will Underestimate the Value of
the IP in Suit.

In addition to its other defects, Google’s motion is overbroad. In paragraph 105 of his report, Dr. Kearl observes that even if it were impermissible to equate the value of the IP in suit with the value of the portfolio, the opinions that Google seeks to strike “[REDACTED]” (Kearl Report ¶ 105.) That is because apportionment fails to adequately consider the economic relationship between a complex portfolio and its constituent parts, and because apportionment disregards components of value that Google would receive from licensing the IP in suit. (Id.)

If the Court were to strike paragraphs 99-105 of Dr. Kearl’s report, as Google’s motion seeks, Dr. Kearl would not only be prevented from giving the jury his best economic advice as to the value of the intellectual property in suit; he also would be prevented from informing the jury why the alternative measures of value that the jury will hear are insufficient to compensate Oracle for the harm it has suffered. That would defeat the very purpose of appointing Dr. Kearl under Rule 706. (Dkt. 236 at 2 (observing that the Court appointed the Rule 706 expert to “assist the jury by providing a neutral explanation and viewpoint”); Dkt. 610 at 3 (“In light of the parties’ extremely divergent views on damages and the unusual complexity of the damages aspect of this case, an independent

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economic expert was needed to aid the jury.”).)

IV. Conclusion

For all of the reasons stated above, Google’s motion should be denied. The Court’s independent damages expert should be allowed, consistent with the facts and the law, to offer the jury his “best economic advice” as to the proper measure of damages in this case.

Dated: April 6, 2012

BOIES, SCHILLER & FLEXNER LLP

By: /s/ Steven C. Holtzman
Steven C. Holtzman

Attorneys for Plaintiff
ORACLE AMERICA, INC.

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874

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA

ORACLE AMERICA, INC.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.

No. C 10-03561 WHA

SUPPLEMENTAL REQUEST
FOR FURTHER BRIEFING

In the briefs due next Thursday, each side shall take a firm yes or no position on whether computer programming languages are copyrightable. In addition, each side shall include whether it has ever taken an inconsistent position before any other court or agency, including the PTO, and if so, append those inconsistent statements.

IT IS SO ORDERED.

Dated: April 6, 2012.

/s/ William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE