Oracle moves to preclude Google’s future use of certain testimony given by Jonathan Schwartz concerning whether Sun had made any decision to sue Google while he was CEO. Mr. Schwartz’s testimony on this issue (i) has no legal nor factual predicate, (ii) raises issues irrelevant to Phase 2 and 3 of the case; and (iii) is otherwise inadmissible on Rule 403 and 701 grounds.

Oracle can prove Mr. Schwartz’s testimony false, and is prepared to do so, by offering testimony from other Sun executives, including executives who were not previously disclosed as witnesses. If necessary, Oracle may have little choice but to make a partial waiver of privilege. That is not the result Oracle seeks, nor would it avoid prejudicing Oracle. But if Google persists with the strategy that it used in Phase 1, Oracle must be allowed at least that much opportunity to set the record straight.

Set the record straight? Let's define our terms. What might they mean by "straight"? And is that really what they want? I suspect they'd prefer that Mr. Schwartz fly to Rio and enjoy splashing in the surf with his family until the trial is safely over. In short, Oracle seems quite worried about Jonathan Schwartz. I think I might know at least one reason why.

After all, one of Oracle's key witnesses, Scott McNealy, testified under oath that Jonathan Schwartz's blog was not corporate, only personal. This was a direct contradiction of Schwartz. But it has come to light since that day that Sun indeed viewed the CEO blog as a corporate blog. Does Oracle want that set straight? How can they fix that? I don't mean they won't trot people out to testify. But what could possibly work? Stay tuned.

Now imagine the jury's reaction, if they were to learn from Mr. Schwartz's testimony in the patent phase that what Mr. McNealy told them was not, in fact, the way it was. They likely would wonder how he could misspeak. Wasn't he the Chairman of the Board? If they based their verdict on McNealy's testimony, hence discounting what Schwartz told them, I think they'd feel appalled and maybe a little bit worried about what they had done.

What if they were influenced by Mr. McNealy's testimony and decided to find Google liable for infringement and not excused by Sun's waiver that Schwartz told them about in the copyright phase? Imagine how that jury might feel if they then learned from Schwartz in the patent phase, after rendering a verdict on the copyright phase, that the testimony they believed from Mr. McNealy wasn't worthy of reliance? I think we can all imagine how that jury would feel.

If I were Oracle, I'd be worried that such a jury might seek to change its copyright verdict or, if not allowed, just try to avoid finding for Oracle on patent claims, even if otherwise they might have. Jurors are people, and people don't like being fooled, inadvertently or otherwise. Especially otherwise.

The grounds of Oracle's motion are on the surface about lots of other things, legal things like privilege and waiver. And I expect they are also thinking about the inevitable appeal. No doubt Google is too. They certainly want Mr. Schwartz to put everything in the record. But worries about what Mr. Schwartz will reveal to this jury is what I personally suspect is the core of what is going on from Oracle's perspective, and it looks like they think they have a plan.

[ Update: VentureBeat's Jolie O'Dell has an interesting and relevant detail:

Judge William Alsup, who has proved to be a no-nonsense sort of character so far, previously denied Oracle’s request to bar other Schwartz-related evidence from use in the case. This evidence, a five-year-old blog post, showed that the CEO was publicly in favor of the Android operating system and believed it would have a positive overall impact on the larger Java community.

Much like Schwartz’s other testimony, the post “seems to be part of a pattern of acquiescence or tolerance of what Google was doing,” Alsup said in court last week. “At this time, Sun seemed to be enthusiastic about what Google was doing … It was only [two] years later that Oracle acquired the company and things changed.”

Also, the judge has asked the parties to answer two more questions regarding the decision he has to make about whether or not APIs are copyrightable, and whether the arrangement of them can be copyrighted. That is the issue that is the most important to the rest of us. Google can afford to pay whatever they are told to, should it go that way. That affects Google, not you and me. Likewise Oracle will still be Oracle, whether or not it gets any money from Google.

But the APIs issue affects everybody else too. It affects innovation. It affects who can code. It affects FOSS. It affects projects already out there for years. It affects the entire software industry. Keep that in mind, that whatever the jury rules, even if it finds Google liable, it's the judge who has to then shoulder the responsibility to rule on the issue of law. And that issue is the one that matters to us. Can you infringe APIs? Are they copyright-protectible? Their structure, sequence and arrangement? If the judge says yes, it will not only affect the software industry, it will put the US at odds with Europe, where the EU Court of Justice just ruled that APIs are not creative expression and can't be protected by copyright.

Here are the filings:

05/03/2012 - 1061 - MOTION in Limine CONCERNING TESTIMONY BY JONATHAN SCHWARTZ filed by Oracle America, Inc.. Responses due by 5/17/2012. Replies due by 5/24/2012. (Holtzman, Steven) (Filed on 5/3/2012) (Entered: 05/03/2012)

05/04/2012 - 1062 - FURTHER ITEMS TO BRIEF IN TWENTY-PAGE BRIEFS DUE MAY 10 [re 1057 Request for Briefing]. Signed by Judge William Alsup on 5/4/2012. (whasec, COURT STAFF) (Filed on 5/4/2012) (Entered: 05/04/2012)

05/04/2012 - 1063 - Minute Entry: Jury Trial held on 5/4/2012 before William Alsup (Date Filed: 5/4/2012). Jury Deliberations continued. Further Jury Trial set for 5/7/12 at 8:00 AM.(Court Reporter Kathy Sullivan.) (dt, COURT STAFF) (Date Filed: 5/4/2012) (Entered: 05/04/2012)

05/04/2012 - 1064 - Transcript of Proceedings held on 4/26/12, before Judge William H. Alsup. Court Reporter/Transcriber Katherine Powell Sullivan and Debra L. Pas, Official Reporters, Telephone number 415-794-6659/ Katherine_Sullivan@cand.uscourts.gov. Per General Order No. 59 and Judicial Conference policy, this transcript may be viewed only at the Clerks Office public terminal or may be purchased through the Court Reporter/Transcriber until the deadline for the Release of Transcript Restriction.After that date it may be obtained through PACER. Any Notice of Intent to Request Redaction, if required, is due no later than 5 business days from date of this filing. Redaction Request due 5/25/2012. Redacted Transcript Deadline set for 6/4/2012. Release of Transcript Restriction set for 8/2/2012. (Sullivan, Katherine) (Filed on 5/4/2012) (Entered: 05/04/2012)

05/04/2012 - 1065 - Transcript of Proceedings held on 4/27/12, Vol. 10, before Judge William H. Alsup. Court Reporter/Transcriber Debra L. Pas, Official Reporter, Telephone number 415-431-1477. Per General Order No. 59 and Judicial Conference policy, this transcript may be viewed only at the Clerks Office public terminal or may be purchased through the Court Reporter/Transcriber until the deadline for the Release of Transcript Restriction.After that date it may be obtained through PACER. Any Notice of Intent to Request Redaction, if required, is due no later than 5 business days from date of this filing. Redaction Request due 5/25/2012. Redacted Transcript Deadline set for 6/4/2012. Release of Transcript Restriction set for 8/2/2012. (Sullivan, Katherine) (Filed on 5/4/2012) (Entered: 05/04/2012)

05/04/2012 - 1066 - Transcript of Proceedings held on 4/27/12, Vol. 11, before Judge William H. Alsup. Court Reporter/Transcriber Debra L. Pas, Official Reporter, Telephone number 415-431-1477. Per General Order No. 59 and Judicial Conference policy, this transcript may be viewed only at the Clerks Office public terminal or may be purchased through the Court Reporter/Transcriber until the deadline for the Release of Transcript Restriction.After that date it may be obtained through PACER. Any Notice of Intent to Request Redaction, if required, is due no later than 5 business days from date of this filing. Redaction Request due 5/25/2012. Redacted Transcript Deadline set for 6/4/2012. Release of Transcript Restriction set for 8/2/2012. (Sullivan, Katherine) (Filed on 5/4/2012) (Entered: 05/04/2012)

05/04/2012 - 1067 - Transcript of Proceedings held on 4/30/12, before Judge William H. Alsup. Court Reporter/Transcriber Katherine Powell Sullivan and Debra L. Pas, Official Reporters, Telephone number 415-794-6659/ Katherine_Sullivan@cand.uscourts.gov. Per General Order No. 59 and Judicial Conference policy, this transcript may be viewed only at the Clerks Office public terminal or may be purchased through the Court Reporter/Transcriber until the deadline for the Release of Transcript Restriction.After that date it may be obtained through PACER. Any Notice of Intent to Request Redaction, if required, is due no later than 5 business days from date of this filing. Redaction Request due 5/25/2012. Redacted Transcript Deadline set for 6/4/2012. Release of Transcript Restriction set for 8/2/2012. (Sullivan, Katherine) (Filed on 5/4/2012) (Entered: 05/04/2012)

05/04/2012 - 1068 - Transcript of Proceedings held on 5/1/12, before Judge William H. Alsup. Court Reporter/Transcriber Katherine Powell Sullivan, RPR, CRR, CSR, Telephone number 415-794-6659/Katherine_Sullivan@cand.uscourts.gov. Per General Order No. 59 and Judicial Conference policy, this transcript may be viewed only at the Clerks Office public terminal or may be purchased through the Court Reporter/Transcriber until the deadline for the Release of Transcript Restriction.After that date it may be obtained through PACER. Any Notice of Intent to Request Redaction, if required, is due no later than 5 business days from date of this filing. Redaction Request due 5/25/2012. Redacted Transcript Deadline set for 6/4/2012. Release of Transcript Restriction set for 8/2/2012. (Sullivan, Katherine) (Filed on 5/4/2012) (Entered: 05/04/2012)

05/04/2012 - 1069 - Transcript of Proceedings held on 5/2/12, before Judge William H. Alsup. Court Reporter/Transcriber Debra L. Pas, Official Reporter, Telephone number 415-431-1477. Per General Order No. 59 and Judicial Conference policy, this transcript may be viewed only at the Clerks Office public terminal or may be purchased through the Court Reporter/Transcriber until the deadline for the Release of Transcript Restriction.After that date it may be obtained through PACER. Any Notice of Intent to Request Redaction, if required, is due no later than 5 business days from date of this filing. Redaction Request due 5/25/2012. Redacted Transcript Deadline set for 6/4/2012. Release of Transcript Restriction set for 8/2/2012. (Sullivan, Katherine) (Filed on 5/4/2012) (Entered: 05/04/2012)

05/04/2012 - 1070 - Transcript of Proceedings held on 5/3/12, before Judge William H. Alsup. Court Reporter/Transcriber Katherine Powell Sullivan, RPR, CRR, CSR, Telephone number 415-794-6659/Katherine_Sullivan@cand.uscourts.gov. Per General Order No. 59 and Judicial Conference policy, this transcript may be viewed only at the Clerks Office public terminal or may be purchased through the Court Reporter/Transcriber until the deadline for the Release of Transcript Restriction.After that date it may be obtained through PACER. Any Notice of Intent to Request Redaction, if required, is due no later than 5 business days from date of this filing. Redaction Request due 5/25/2012. Redacted Transcript Deadline set for 6/4/2012. Release of Transcript Restriction set for 8/2/2012. (Sullivan, Katherine) (Filed on 5/4/2012) (Entered: 05/04/2012)

05/04/2012 - 1071 - Transcript of Proceedings held on 5/4/12, before Judge William H. Alsup. Court Reporter/Transcriber Katherine Powell Sullivan, RPR, CRR, CSR, Telephone number 415-794-6659/Katherine_Sullivan@cand.uscourts.gov. Per General Order No. 59 and Judicial Conference policy, this transcript may be viewed only at the Clerks Office public terminal or may be purchased through the Court Reporter/Transcriber until the deadline for the Release of Transcript Restriction.After that date it may be obtained through PACER. Any Notice of Intent to Request Redaction, if required, is due no later than 5 business days from date of this filing. Redaction Request due 5/25/2012. Redacted Transcript Deadline set for 6/4/2012. Release of Transcript Restriction set for 8/2/2012. (Sullivan, Katherine) (Filed on 5/4/2012) (Entered: 05/04/2012)

The judge's additional two questions he'd like the parties to brief:

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

___________

Plaintiff,

v.

GOOGLE INC.,

Defendant.

___________

No. C 10-03561 WHA
FURTHER ITEMS TO BRIEF
IN TWENTY-PAGE BRIEFS DUE MAY 10

14. Inheritance does not exist among packages, only within a class. True? If not, why not?

15. Inheritance is a characteristic of a class that results from the superclass-subclass feature of the Java operating systems. True? If not, why not?

IT IS SO ORDERED.

Dated: May 4, 2012.

[signature]
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

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]
ALANNA RUTHERFORD (Admitted Pro Hac Vice
[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 AMERICA, INC.’S MOTION IN
LIMINE CONCERNING TESTIMONY BY
JONATHAN SCHWARTZ

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

Oracle moves to preclude Google’s future use of certain testimony given by Jonathan Schwartz concerning whether Sun had made any decision to sue Google while he was CEO. Mr. Schwartz’s testimony on this issue (i) has no legal nor factual predicate, (ii) raises issues irrelevant to Phase 2 and 3 of the case; and (iii) is otherwise inadmissible on Rule 403 and 701 grounds.¹

Google referenced such testimony in its Closing Statement for Phase 1 and appears poised to rely upon such statements again in Phase 2 as Mr. Schwartz appears on Google’s most recent “rolling” list of witnesses. Because Google’s reliance on Mr. Schwartz’s testimony is impermissible, Oracle seeks the following relief: (i) that for Phases 2 and 3 of the trial, the Court preclude Google from making any reference to or argument based on, or eliciting any further testimony regarding, the purported legal opinions and conclusions that Jonathan Schwartz offered in his testimony in Phase 1 of the trial, RT at 2002:5-7, and (ii) that the Court instruct the jury that it should disregard that testimony in Phases 2 and 3 of the trial.

Late in its Phase 1 case in chief, on Thursday, April 26, Google called former Sun CEO Jonathan Schwartz as a witness. Google’s counsel concluded his direct examination with the following:

Q. Mr. Schwartz, as CEO of Sun, did you make a decision not to pursue litigation against Google over Android?

A. Yes. We didn’t feel we had any grounds.

(RT at 2002:5-7.) Google’s question called for a yes or no answer, but Mr. Schwartz in response volunteered an opinion as to what “we” “felt” about the grounds for pursuing litigation against Google over Android. Google’s counsel referred to this testimony by Mr. Schwartz in Google’s closing argument to the jury (RT at 2519:19-21) and also cited this testimony in Google’s proposed findings of fact. (Dkt. 1047 at p. 23 ¶ 72.)

The question appeared to ask only whether Mr. Schwartz had made a decision not to pursue litigation. But Mr. Schwartz’s answer – and Google’s subsequent use of that answer – implicates Sun’s (now Oracle’s) privileged discussions by suggesting that there was an unidentified group of

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people (“we”), who had made some final decision as to whether to pursue litigation and the strength of those claims. What legal grounds Sun’s management felt they had or what decisions they were considering is clearly privileged. Moreover, Mr. Schwartz had no right nor any basis to make such a statement which subjects Oracle to privilege waivers that Mr. Schwartz has no authority to invoke. Further, the suggestion that Oracle had decided not sue is clearly against the weight of the evidence presented in this case. Any attempt by Oracle to rebut such a statement at the time of Mr. Schwartz’s testimony would have put Oracle in the quandary of having to decide whether to waive privilege on the spot to rebut his testimony.

Oracle does not seek to re-litigate the issues presented in Phase 1. Nonetheless, the same jury will be asked to render decisions in Phases 2 and 3. Oracle is concerned that Google will argue in both opening statements and closing arguments that Mr. Schwartz’s purported decision not sue and his purported opinions about “grounds” for a lawsuit, are relevant to the issues that the jury must yet decide. They are not.

First, Mr. Schwartz’s testimony is simply untrue, to the extent that it is offered to suggest that Sun, the company, had made an affirmative decision not to sue Google over Android. Phase 1 evidence demonstrated that there were ongoing discussions between Sun and Google after Google’s announcement of Android in November 2007, that those discussions continued after Oracle acquired Sun in 2010, and that those discussions in fact never stopped. (TX 2371, 1056, 2070, 2362; RT at 492:18-22 (Page) (“Continue to have discussions to this day” with Sun); RT at 1071:23-1073:9 (Cizek) (Sun expressed infringement concerns in April 2009)). The tenor of the discussions was such that Mr. Schmidt testified that he was sufficiently concerned about Sun suing Google that he considered buying all the rights to Java from Sun to “make Java lawsuits go away” (RT 1516:13- 1517:11 (Schmidt)); others at Google expressed similar concerns. (TX 326, 406, 1029.) If Google is allowed to rely on this testimony, and the jury is allowed to believe that it matters, the trial will divert into an irrelevant sideshow over Mr. Schwartz’s subjective state of mind, instead of Sun’s affirmative acts.

Second, Mr. Schwartz’s testimony about his subjective state of mind – his purported decision not to sue – is irrelevant to any of the remaining issues that the jury will decide: patent infringement,

2

damages, and willfulness. Google cited this testimony as relevant to its equitable defenses (Dkt. 1047 at p. 23 ¶ 72), but what Mr. Schwartz “felt” about Sun’s claims against Google has no bearing on any of Google’s defenses. This is particularly true in light of Mr. Schwartz’s testimony that “I don’t think I’m qualified to speak as a lawyer” and that “I’m not there to write our contracts.” (RT at 2014:10-2015:11.) Waiver, along with all of Google’s other defenses, requires an affirmative act by Sun to abandon its rights, not merely a failure to act or even a decision not to act for some period of time. See United States v. King Features Entm't, Inc., 843 F.2d 394, 399 (9th Cir. 1988); Adidas America, Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029, 1074 (D. Or. 2008). Google cannot, in good faith, argue that Mr. Schwartz ever told Google that he had reached such a decision (in fact, he testified at deposition that he had not, see Schwartz Dep. at 140:23-141:1), and no witness, from Google, from Oracle, or anywhere else, has ever claimed otherwise. As a result, Mr. Schwartz’s testimony on this point is simply irrelevant to all issues in the trial.

Third, Mr. Schwartz’s testimony that “We didn’t feel we had any grounds” is an inadmissible opinion. Rule 701 permits opinion testimony only where the testimony is “rationally based on the witness’s perception” and “not based on scientific, technical, or other specialized knowledge within the scope of Rule 702.” If Mr. Schwartz expressed a personal opinion, it is both incompetent and irrelevant. Mr. Schwartz is not a lawyer, and even if he were, it is the province of the jury to find facts, not decide whether claims have a legal basis. Mr. Schwartz is not an engineer or an attorney, and he had no ability to assess the merits of any legal claims against Google over Android in either a technical or legal aspect. In fact, as noted above, he expressly admitted that fact in his trial testimony.

If instead Mr. Schwartz’s testimony is understood as expressing a conclusion of Sun’s lawyers, it should be excluded because Google failed to lay any foundation for that testimony, and Oracle cannot disprove it, without waiving privilege to Oracle (and Sun’s) internal analyses of its legal claims. Mr. Schwartz has no right to waive Sun’s privilege, or to put Sun’s privileged communications at issue. In short, Mr. Schwartz’s comments were both baseless and inappropriate, and their admission in either or both subsequent phases of this trial would severely prejudice Oracle. See Fed. R. Evid. 403.

3

Fourth, Mr. Schwartz’s testimony in Phase 1 concerned copyrights, not patents. Even if that testimony were proper and admissible – and for the reasons stated above, it is not – there is no basis in that trial testimony to conclude that Mr. Schwartz ever evaluated Sun’s patent claims or was capable of doing so, that he had made any effort to do so, or that he ever made any decision whether or not to sue on those particular claims. Indeed, there is no evidence in the record that even indicates when Mr. Schwartz supposedly made his personal decision not to sue Google over Android. As a result, there is no foundation to establish the relevance of Mr. Schwartz’s testimony to Phase 2 or 3.

If Google intends to argue that Mr. Schwartz waived Sun’s right to sue, it must come forward with evidence of waiver and give Oracle a full and fair chance to rebut such evidence. Forcing Oracle into the position of rebutting innuendo when the means of fighting such a suggestion involve either calling others in Sun’s top management who do not appear on the witness list and possibly partially waiving privilege over certain discussions is untenable.

Oracle brings this motion now because it cannot know how Google will try to use Mr. Schwartz’s Phase 1 testimony, or whether Google will call Mr. Schwartz again. If Google simply waits until its closing in Phase 2 or 3 to trot out Mr. Schwartz’s opinions, Oracle will not have an opportunity to rebut those claims with evidence. Further, if Google refuses to say whether it will try to use that testimony in Phase 2 or 3, Oracle must make an uninformed decision whether to spend its valuable trial time, and whether to waive privilege, just in case Google repeats its Phase 1 strategy.

Oracle maintains that Mr. Schwartz’s unanticipated and improper testimony on this specific issue is irrelevant, inadmissible, prejudicial, and would unfairly require Oracle to waive privilege to fully cross-examine and rebut. It should be excluded from all further phases of the trial, and the jury should be expressly instructed to disregard it.

Nonetheless, if Google is allowed to use that testimony or elicit further testimony along the same lines, or if the jury is allowed to consider it in any way, Oracle must be given fair notice and a fair chance to rebut. Oracle can prove Mr. Schwartz’s testimony false, and is prepared to do so, by offering testimony from other Sun executives, including executives who were not previously disclosed as witnesses. If necessary, Oracle may have little choice but to make a partial waiver of privilege. That is not the result Oracle seeks, nor would it avoid prejudicing Oracle. But if Google

4

persists with the strategy that it used in Phase 1, Oracle must be allowed at least that much opportunity to set the record straight.

Dated: May 3, 2012

BOIES, SCHILLER & FLEXNER LLP

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

Attorneys for Plaintiff
ORACLE AMERICA, INC.

_________________
1 This motion is being filed outside of the normal evening briefing schedule. Of course, Google's response deadline would also be outside of that schedule. We look forward to discussing this motion with the Court as the Court may direct.

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