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Oracle v. Google: Food Fight in Discovery Already - Hearing Feb. 9 - Updated 2Xs
Monday, February 07 2011 @ 03:29 AM EST

Believe it or not, there is already a discovery dispute in Oracle v. Google. And I'm really glad, because that's the only way we can find out what has been going in discovery. What we find out now is that both parties have served the other with interrogatories, and neither is happy with the other's answers, so both are writing letters to the judge, calling them motions to compel. We get to see Google's answers to Oracle's interrogatories, and that really fleshes out Google's position for me.

Oracle, though, feels that there's not enough flesh on the bones, not enough for them to prepare for depositions, so Oracle filed a motion to compel [PDF] in the form of a letter to Judge William Alsup, the presiding judge, on February 1, seeking to force Google to supplement its responses to interrogatories. But Google feels that it can't do any better until Oracle provides more specificity, so it then sent a couple of letters to the judge also, one responding [PDF] to the issues raised by Oracle's motion to compel and a second a motion to compel [PDF], telling the judge that Oracle has failed to fulfill its obligations in discovery and that "the parties have reached an impasse regarding the adequacy of Oracle’s Patent Local Rule 3-1 disclosures, and we request the Court’s assistance in resolving the issues about which the parties disagree."

There will be a hearing February 9th at 11 AM at the US District Court for the Northern District of California, Courtroom 9, 19th Floor, at the courthouse at 450 Golden Gate Avenue, San Francisco, CA, to resolve all the discovery issues. The lawyers have to show up at 8 AM at a meet and confer, and if it's not settled by 11 AM, which I doubt it will be, the hearing begins and the judge will settle it.

Here are the filings, so you can follow along meaningfully. I must warn you that the exhibit attached to Google's motion, #79, is 407 pages long. I've provided text versions for a lot of the rest, but for that exhibit, you'll have to either download it all and read the PDF or rely on the other materials and my descriptions:

02/01/2011 - 77 - First MOTION to Compel Google's Responses To Interrogatory Nos. 4-16 filed by Oracle America, Inc.. (Attachments: # 1 Exhibit A - Google responses to first interrogatories)(Peters, Marc) (Filed on 2/1/2011) (Entered: 02/01/2011)

02/02/2011 - 78 - ORDER SETTING HEARING ON PLAINTIFF'S DISCOVERY DISPUTE re 77 First MOTION to Compel Google's Responses To Interrogatory Nos. 4-16 : Motion Hearing set for 2/9/2011 11:00 AM in Courtroom 9, 19th Floor, San Francisco before Hon. William H. Alsup.. Signed by Judge Alsup on February 2, 2011. (whalc1, COURT STAFF) (Filed on 2/2/2011) (Entered: 02/02/2011)

02/02/2011 - 79 - MOTION to Compel Regarding Oracle's Patent Local Rule 3-1 Disclosures filed by Google Inc.. (Attachments: # 1 Exhibit)(Sabnis, Cheryl) (Filed on 2/2/2011) (Entered: 02/02/2011)

02/03/2011 - 80 - ORDER Setting Hearing on Motion 79 MOTION to Compel Regarding Oracle's Patent Local Rule 3-1 Disclosures, 77 First MOTION to Compel Google's Responses To Interrogatory Nos. 4-16 : Motion Hearing set for 2/9/2011 11:00 AM in Courtroom 9, 19th Floor, San Francisco before Hon. William H. Alsup.. Signed by Judge Alsup on February 3, 2011. (whalc1, COURT STAFF) (Filed on 2/3/2011) (Entered: 02/03/2011)

02/04/2011 - 81 - Letter from Counsel for Google Inc. in Response to Oracle's Motion to Compel Google's Responses To Interrogatory Nos. 4-16. (Zimmer, Donald) (Filed on 2/4/2011) (Entered: 02/04/2011)

Sadly, we don't have Oracle's answers to Google's interrogatories, but I'll show you all that we do have.

Oracle's Motion to Compel:

Let's start with what Oracle's beef is about.

Here's its letter to the judge:

[Morrison & Foerster letterhead] February 1, 2011

The Hon. William Alsup
United States District Court
Northern District of California
450 Golden Gate Avenue Courtroom 9, 19th Floor
San Francisco, California 94102

Re: Oracle America, Inc. v. Google, Inc., Case No. 3:10-cv-03561-WHA
First Request for Discovery Relief

Dear Judge Alsup:

We are at the point where we need the Court’s assistance with an issue that is important in ensuring the parties keep to the case schedule: the need for Google to supplement its answers to Interrogatories 4-16 of Oracle’s First Set of Interrogatories. (Exhibit A). Each interrogatory asks Google to “explain the factual and legal bases” for pleading a particular defense. Google has not done so, and this undermines Oracle’s ability to proceed with discovery on a complete and timely basis.

Google’s answer does not plead facts sufficient to support its affirmative defenses. Accordingly, Oracle moved to strike the defenses on October 26, 2010. (Dkt. 35). In response to the Court’s issuance of a tentative case management order shortly thereafter, Oracle withdrew the motion and “propose[d] instead to move forward with the case pursuant to the Court’s tentative schedule,” because the upcoming invalidity contentions and interrogatories would require Google to “detail the theories and facts underlying its pleading by mid-January, 2011.” (Dkt. 54). Oracle reasoned that proceeding with discovery would be the best way to “achieve the practical objective of giving [Oracle] fair notice of what Google has in mind in defending this case.” (Dkt. 55).

It is now February 1, 2011, and Google has done almost nothing to explain the legal and factual bases for its defenses. Google’s interrogatory responses contain little substance, and instead provide general denials, boilerplate objections, and blanket incorporations by reference of entire pleadings, moving papers, and large-volume “haystacks” (e.g., “Android source code” and “Android documentation”) without any indication if there is any “needle” within.

The Hon. William Alsup
February 1, 2011
Page Two

The parties met and conferred about Google’s interrogatory responses on January 12 and January 24, and also exchanged correspondence. The result of this process is that Google has agreed to supplement only its response to Interrogatory 3 on February 4, but not its responses to the other interrogatories until some unspecified time later in the case.

All of Google’s responses suffer from the same deficiency: they contain blanket incorporations by reference of numerous other documents, many of which do not appear to apply to the particular interrogatory citing them. Federal Rule of Civil Procedure 33 provides that “[e]ach interrogatory must, to the extent it is not objected to, be answered separately and fully in writing under oath.” Fed. R. Civ. P. 33(b)(3). Responding to an interrogatory with a reference to another interrogatory, document, or pleading is improper. Pac. Lumber Co. v. Nat’l Union Fire Ins. Co., 2003 U.S. Dist. LEXIS 24585, *14-15 (N.D. Cal. Jan. 5, 2005). Google cannot merely “incorporate by reference” documents; it must answer the interrogatories.

In both its written response and the meet-and-confer process, Google’s chief objection to supplementation is that it is “premature”: Google objects to Interrogatories 4-8 as “unnecessary in view of the specific disclosures contemplated by the Patent Local Rules as well as premature at least because no claim terms have been construed . . . .” (Ex. A at 12- 13). Similarly, Google objects to Interrogatories 15 (concerning license) and 16 (concerning unclean hands) as “unnecessary with respect to the defense as they pertain to patent in view of the specific disclosures contemplated by the Patent Local Rules.” (Ex. A at 31).

Google’s objection is not legitimate under Patent Local Rule 2-5, which states that “it shall not be a ground for objecting to an opposing party’s discovery request (e.g., interrogatory, document request, request for admission, deposition question) . . . that the discovery request . . . is premature in light of, or otherwise conflicts with, these Patent Local Rules, absent other legitimate objection.” Patent L.R. 2-5. The Rule provides four circumstances in which a party may object to requests as being premature; none applies here. The idea that a defendant cannot explain its affirmative defenses until after some external deadline under the local rules, such as exchange of claim construction terms, is an old canard. Oracle provided its infringement charts and Google its invalidity charts, for example, without claim construction. It is neither premature nor unnecessary for Google to explain the factual and legal bases for its defenses now.

Google’s response to Interrogatory 15 is a prime example of how its responses are insufficient. That interrogatory asks Google to state the factual and legal bases for its affirmative defenses of License and Implied License. Google does not identify any licenses that might support a defense. There is no reason that Google could not now identify the licenses that it is relying on and explain how they apply.

2

The Hon. William Alsup
February 1, 2011
Page Three

Google’s response to Interrogatory 5 is similarly non-responsive. This interrogatory asks for Google’s bases for its affirmative defense of “Substantial Non-Infringing Uses.” After the boilerplate objections and incorporations by reference, Google simply states that “the Accused Instrumentalities, such as mobile handsets, are capable of substantial noninfringing uses.” (Ex. A at 15). But Google does not identify or describe a single such use. Instead, Google insists that, “[a]s presently understood, all uses are noninfringing uses for the reasons cited in response to Interrogatory No. 3.” Google then asserts that it “cannot meaningfully address all non-infringing uses at this time” because “Oracle has not identified any actual performance of any method on any specific Accused Instrumentality.” Though untrue, this is a red herring; nothing prevents Google from explaining now what uses Google believes are non-infringing.

Yet another example is Google’s response to Interrogatory 12, which asks for the factual and legal bases for Google’s copyright Fair Use defense. Oracle described in detail its copyright infringement contentions in its January 6 response to Google’s Interrogatory 2. That response points Google to fourteen registered copyrighted works, fifty-one Java API package specifications, and numerous specific examples of source code and documentation that are being infringed. If Google asserts that any of its copying, derivation, and distribution of the copyrighted material as described in that answer constitutes fair use, Google must explain why. Google cannot rely on hand-waving allegations that its use of Oracle’s copyrighted works “is for functional, best practices, or technical efficiency reasons,” “is de minimis,” or “is necessary to enable interoperability” (Ex. A at 25) without providing facts to support its position.

Without knowing the factual and legal bases for Google’s affirmative defenses, Oracle cannot effectively challenge them or prepare for depositions. Thus, Oracle requests that the Court compel Google to supplement Interrogatories 4-16 by February 11.

Respectfully submitted,

[signature]

Marc David Peters
Counsel for Plaintiff Oracle America, Inc.

cc: Counsel for Google Inc.

The 407-page exhibit begins with Oracle stating that "Oracle’s investigation into the extent of infringement by Google is ongoing, and Oracle makes these disclosures based on present knowledge of Google’s infringing activities." And here's what it thinks is infringing:
Based on Oracle’s investigation thus far, Oracle accuses the following Accused Instrumentalities of infringing each of asserted claims specified above: (i) “Android” or “the Android Platform”; (ii) Google devices running Android; and (iii) other mobile devices running Android. Representative examples of Google devices running Android include the Google Nexus One and the Google Nexus S. Representative examples of other mobile devices running Android include HTC’s EVO 4G, HTC’s Droid Incredible, HTC’s G2, Motorola’s Droid, and Samsung’s Captivate.

Google directly infringes the asserted claims enumerated above under 35 U.S.C. § 271(a) because Google, without authority, makes, uses, offers to sell, sells, or imports the Accused Instrumentalities within or into the United States. Further, Google induces the infringement of others under 35 U.S.C. § 271(b) to the extent it contracts, instructs, or otherwise induces others to make, use, offer to sell, sell, or import the Accused Instrumentalities within or into the United States. Google also contributes to the infringement of others under 35 U.S.C. § 271(c) to the extent it offers to sell, sells, or imports part or all of the Accused Instrumentalities within or into the United States. Further, Google supplies part or all of the Accused Instrumentalities in or from the United States to foreign contractors, including HTC, in violation of 35 U.S.C. § 271(f).

There are some footnotes, but in general I read this to say that if it's Android, Oracle thinks it is infringing. For example, footnote 2 reads:
“Android” or “the Android Platform” means “Android” as referred to in Google’s Answer (Docket No. 32) at Background ¶ 12 and in Google’s Answer to Amended Complaint (Docket No. 51) at Background ¶ 12 and at Factual Background ¶¶ 11-17, and includes any versions thereof (whether released or unreleased) and related public or proprietary source code, executable code, and documentation.
So Android means Android, all versions, at least from 2008 onward. I gather Google reads it that way too, and that's a problem for them. Oracle has included some claims charts, Exhibits A-G, but interestingly, Oracle admits, "The infringement evidence cited in Exhibits A-G is exemplary and not exhaustive." So, it's not all they know? I think that is a problem for Google too.

Here's Oracle's explanation for its claim of contributory and inducing infringement:

In addition to the acts of direct infringement described above, Google actively contributes to and induces infringement by third parties of each of the asserted claims of the asserted patents.

On information and belief, Google purposely and actively distributes the Accused Instrumentalities to manufacturers of products and application developers with the intention that they be used, copied and distributed to consumers. Google induces and contributes to the infringement of the asserted claims of each asserted patent, because Google encourages manufacturers, application developers, and service providers (including the members of the Open Handset Alliance), as well as end users, to copy, sell, distribute, re-distribute, and use products that embody or incorporate the Accused Instrumentalities. Google’s admissions in its Amended Counterclaims prove its intent and encouragement of others. (See, e.g., Google’s Amended Counterclaims ¶¶ 6-7, 13.) As discussed below, Google has actual knowledge of Oracle’s patents and its infringement is willful.

It then gives a list of its stuff that practice its patents, but once again there is an admission that it's a preliminary list, in footnote 6:
Oracle’s investigation concerning the identification of instrumentalities that practice the asserted claims of the asserted patents is ongoing. There have been many different products relating to the Java Platform over the years, each having many versions or variants, and the lists presented below reflect Oracle’s diligent efforts in identifying instrumentalities that practice the asserted claims of the asserted patents.
So it's not a complete list, and more meaningfully, it's not a list of how Google infringes. It's a list of what Oracle has that practice the claims. For example, it says JDK 1.0 and subsequent versions, JRE 1.1.1 and subsequent versions, and HotSpot 1.0 and subsequent versions practice its '104 reissue patent. But that doesn't really tell Google how any of its Android products infringe. Or maybe I'm missing something. I'll assume Oracle is saying that if Google's Android used any of these, they are infringing. That's not the complete list, though. Here's the list:
1. The ’104 Reissue Patent

The following instrumentalities of Oracle practice the asserted claims of the ’104 reissue patent:

  • JDK 1.0 and subsequent versions;
  • JRE 1.1.1 and subsequent versions;
  • HotSpot 1.0 and subsequent versions;
  • Java SE for Embedded 1.4.2_11 and subsequent versions;
  • CDC RI 1.0 and CDC-HI 1.0 and subsequent versions of each;
  • CDC AMS 1.0, 1.0_1, 1.0_2, Personal Basis and Personal Profile versions;
  • CLDC RI 1.0 and CLDC-HI 1.0 and subsequent versions;
  • Foundation Profile 1.0 and subsequent versions;
  • J2EE 1.2 (later called Java EE) and subsequent versions;
  • WTK 1.0 / Java ME SDK 1.0, and subsequent versions of each;
  • Java Real Time 1.0 and all subsequent versions; Personal Profile HI and RI 1.0 and subsequent versions;
  • Personal Basis Profile-HI and RI 1.0 and subsequent versions;
  • PersonalJava 1.0 and subsequent versions;
  • EmbeddedJava 1.0 and subsequent versions;
  • JavaOS 1.0 (all variants, including Java PC) and subsequent versions;
  • Java Card connected platform 3.0 and subsequent versions;
  • Oracle Java Wireless Client (formerly Sun Java Wireless Client) 1.0 and subsequent versions;
  • MIDP 1.0 and subsequent versions;
  • and Jrockit from 2002 and subsequent versions.
There's a list like this for each of Oracle's six patents. And Google has no excuse, Oracle argues, because it's a member of the Java Community Process, or JCP, and "Google is well aware of the need to obtain a license from Oracle in order to make use of Oracle’s Java Platform technologies as Google does in Android." You don't build a business on somebody else's IP. And they had discussions about getting a license, so they knew, but they just never took a license, so "Google deliberately disregarded a known risk that Oracle had protective patents covering Java Platform technologies."

Using Java is enough, in Oracle's view, and Google knew it needed a license to use it, so to Oracle, it's very clearcut. Note I had to break the long urls in pieces in this next bit, so as not to ruin formatting here:

Google’s Android source code and documentation directly references and copies Java Platform technology specifications, documentation, and source code. See, e.g., mydroidlibcoresecuritysrcmain
javajavasecurityCodeSource.java;
mydroidlibcoresupportsrctest
javaorgapacheharmonysecurity
testssupportcertPoicyNodeImpl.java.

Google admits that Android incorporates a subset of Apache Harmony, which it asserts is “an implementation of Sun’s Java.” (See, e.g., Google’s Amended Counterclaims ¶¶ 6-7, 13.)

Google’s website content directly references and demonstrates use of Java Platform technologies. See, e.g., “What is Android?”, available at http://developer.android.com/guide/ basics/what-is-android.html (last visited Dec. 1, 2010) (“Android includes a set of core libraries that provides most of the functionality available in the core libraries of the Java programming language.”); Package Index, available at http://developer.android.com/reference/packages.html (last visited Dec. 1, 2010), and subsidiary webpages.

Google’s Android videos directly reference and demonstrate use of Java Platform technologies. See, e.g., Google I/O 2008 Video entitled “Dalvik Virtual Machine Internals,” presented by Dan Bornstein (Google), available at http://developer.android.com/ videos/index.html#v=ptjedOZEXPM (last visited Dec. 1, 2010).

Oracle says it will provide source code with more specifics once there is a protective order in place.

Exhibit A begins on page 15, and the rest of this huge exhibit, A-G, is lists of as much specificity as Oracle feels it can provide, lists how it thinks Android infringes. I won't try to explain it, because you will understand it way better than I can, so you can explain what strikes you in comments. But we'll take a look at what Google sees in the exhibits.

First, though, let's see how Google tells its side of the story about its answers to Oracle's interrogatories.

Google's Response Letter to Motion to Compel:

King & Spalding LLP
[address]
www.kslaw.com

Scott T. Weingaertner
[phone, fax, email]

February 2, 2011

The Hon. William Alsup
United States District Court
Northern District of California
450 Golden Gate Avenue
Courtroom 9, 19th Floor
San Francisco, CA 94102

Re: Oracle America, Inc. v. Google Inc., Civil Action No. 3:10-cv-03561-WHA (N.D. Cal.)
Response to Oracle’s Request regarding Interrogatory to Google Nos. 4-16 (Dkt. #77).

Dear Judge Alsup:

Google submits this response to Oracle’s request that the Court compel Google to supplement its responses to Interrogatories Nos. 4 through 16 of Oracle’s First Set of Interrogatories. The interrogatories at issue are contention interrogatories addressed to certain of Google’s defenses.1

Oracle’s Interrogatories Nos. 3 through 16 are premature, overbroad and unduly burdensome. Under Rule 26, Google should not be required to respond to them at all this early in discovery. See, e.g., In re Ebay Seller Antitrust Litigation, 2008 U.S. Dist. LEXIS 102815, *3 No. C 07-1882 (N.D. Cal., Dec. 11, 2008) (“courts tend to deny contention interrogatories before substantial discovery has taken place”); see also In re Convergent Technologies Sec. Litig., 108 F.R.D. 328, 337 (N.D. Cal. 1985) (“there is substantial reason to believe that the early knee jerk filing of sets of contention interrogatories that systematically track all the allegations in an opposing party’s pleadings is a serious form of discovery abuse”). Serving fourteen interrogatories as to “the factual and legal bases” for Google’s “pleading of” certain defenses is not a reasonable use of discovery at this stage of the proceedings. Google nevertheless has provided to Oracle responses as to both the facts in its possession at the time of filing its

The Hon. William Alsup
February 4, 2011
Page 2

operative pleading and the current bases for its defenses. Coupled with the explicit recitations in Google’s Answer as to the legal bases for its defenses, Google has provided more than sufficient information to Oracle in view of Google’s need to obtain discovery from Oracle and from third parties relating to the defenses.1

In its responses, Google has not withheld any information on the basis that the requests were “premature in light of, or otherwise conflicts with,” the Patent Local Rules – and Oracle’s argument to contrary is wrong. Google’s position has consistently been that these contention interrogatories originated in Oracle’s withdrawal of its unmeritorious motion to dismiss and that, in accordance with Fed. R. Civ. P. 26 and 33, Google should not be required to answer Oracle’s contention interrogatories at this early stage. See Fed.R.Civ.P 33(a)(2) (“the court may order that the interrogatory need not be answered until designated discovery is complete, or until a pretrial conference or some other time”).

In an effort to compromise with Oracle, Google has responded in good faith to the early contention interrogatories. Yet Oracle has demanded supplementation regarding the detail of Google’s legal theories that have not been fully developed due to lack of needed factual information, including the multiple deficiencies of Oracle’s own Infringement Contentions and discovery responses. Google has raised the Patent Local Rules provisions with Oracle because those Rules underscore that Google’s theories are subject to change and refinement, and they explicitly contemplate revision of positions as the parties and the Court engage in the procedures contemplated by those Rules, such as claim construction. Oracle’s demands therefore represent an improper, burdensome, unwarranted and premature quest for Google’s work product for Oracle’s strategic advantage.

Oracle cites Google’s response to Interrogatory No. 15 – which is directed to Google’s defense of license – as a “prime example” of Google’s purported deficiencies for failing to identify “any specific license.” During the parties’ meet and confer discussions, Google has pointed out to Oracle that this defense was pleaded “upon information and belief,” with a reasonable basis to believe that discovery would lead to facts to support this defense. As noted in Google’s motion to compel Oracle to supplement its Patent Local Rule 3-1 Infringement Contentions (“Google’s Motion to Compel”), Oracle has not yet identified any alleged direct infringers, and this failure makes it extremely difficult for Google to make meaningful inquiry regarding whether the alleged direct infringers are licensed and, if so, the terms and relevance of the license. Oracle has also only very recently begun to produce documents responsive to Google’s discovery requests relating to this defense, and Oracle’s production is not complete. In fact, it was not until January 25, 2011 – ten days ago – that Oracle finally agreed that it “will produce” documents related to licenses to Java “granted by Sun to any third party” in response to Google’s discovery requests that were served over two months ago, on December 2, 2010.

2

The Hon. William Alsup
February 4, 2011
Page 3

Oracle also cites to Google’s response to Interrogatory No. 5, which relates to the assertion in Google’s answer that the products accused of infringement have substantial noninfringing uses. As an initial matter, it is indisputably Oracle’s burden pursuant to 35 U.S.C. 271(c) to show the absence of such uses. See Halton Co. v. Streivor, Inc. 2010 No. C 10-00655 WHA, 2010 U.S. Dist. LEXIS 50649, *3-*8 (N.D. Cal. May 21, 2010) (granting motion to dismiss indirect infringement claims based inter alia on lack of “allegation by plaintiff . . . that the accused product was not capable of ‘substantial noninfringing use’”). In its Infringement Contentions, however, Oracle has neither (a) identified a single allegedly infringing device nor (b) affirmatively stated that any of the as-yet unidentified accused devices lack substantial noninfringing uses. Yet Oracle – without having identified the devices it accuses of infringement – is demanding that Google provide specific examples of noninfringing uses for those devices.

Finally, with respect to Interrogatory No. 11 relating to Google’s fair use defense, Google has provided a response that states the basis for the defense and identifies the numerous aspects and features of the Android program that give rise to Google’s non-infringement and/or fair use positions. Google has done so, moreover, notwithstanding that (1) Oracle has not, as of today, yet fulfilled the most basic of Google’s requests – outstanding since December 2, 2010 – relating to its copyright claims, namely providing Google with a complete copy of the two works on which Oracle’s copyright claim is based, and (2) Oracle’s discovery responses do not identify with the necessary specificity the code portions and/or comments that Oracle believes show infringement. As the foregoing demonstrates, Google has responded in good faith to Oracle’s premature contention interrogatories regarding Google’s defenses notwithstanding Oracle’s failure to provide basic information and materials regarding Oracle’s claims, and Google believes that Google’s responses to Oracle’s discovery requests are at least as detailed – if not more so – than many of Oracle’s responses to date to Google’s discovery requests. Oracle’s insistence that Google must finalize and share with Oracle all of Google’s legal theories and all facts supporting its defenses at this time is unrealistic, unfair and unduly burdensome. Google therefore requests that the Court deny Oracle’s motion to compel further responses at this time.

Respectfully submitted,
[signature]
Scott T. Weingaertner
Counsel for Google Inc.

cc: Counsel of Record via ECF

_______________
11 Google has been engaging in a good faith effort to resolve Oracle’s request for supplementation of Google’s responses without the Court’s involvement and, to that end, had agreed to supplementation by a date certain of Google’s response to Interrogatory No. 3, based on Oracle’s representations that this interrogatory was of particular importance to Oracle. After securing this compromise, Oracle submitted its motion letter without advising Google of its intent to do so, despite Google’s assurance it would supplement its other responses in due course.

2During the parties’ meet and confer discussions, Oracle made clear it intended each of the fourteen interrogatories to require both the bases for the defenses at the time Google filed its pleadings as well as Google’s bases “now.” Google has therefore in effect answered a total of thirty separate interrogatories, five more than contemplated by Fed. R. Civ. P. 33.

3

To help you understand certain of Google's references, here's 35 U.S.C. 271(c):
Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.
As you can see, Google is saying that you can't be a "contributory infringer" of a patent if what you are selling is "suitable for substantial noninfringing use", and its argument is that Oracle has to burden to prove that it doesn't. And here's the case it relies on to argue that Oracle has to provide more information, Halton Co. v. Streivor, Inc., and you eagle eyes will notice that this was another case that Judge Alsup presided over. Google's eagle eyes noticed, for sure. Here's part of what Judge Alsup ruled [PDF] in dismissing plaintiff's complaint:
With respect to contributory infringement, “[w]hoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.” 35 U.S.C. 271(c).

Even assuming the truth of the facts alleged in the complaint, plaintiff has failed to make a plausible claim for induced or contributory infringement. Here’s why:

Induced infringement under 35 U.S.C. 271(b) requires the direct infringement by another entity, and that this direct infringement be “actively induce[d]” by the party accused under Section 271(b). See i4i Ltd. Partnership, 598 F.3d at 851. As the above excerpts from the complaint illustrate, no entity other than defendant as been accused of directly infringing the ’421 patent. Moreover, there are insufficient facts supporting a plausible inference of active inducement. The complaint merely alleged that defendant “makes, uses, sells and/or offers to sell” the accused infringing product, and continued to “intentionally” and “wilfully” infringe after receiving notice by plaintiff in April 2009 of possible infringement of the ’421 patent (Compl. ¶¶ 11–13). No mention of any “specific intent to encourage another’s infringement” is made.

Similarly, the complaint is devoid of facts to support a plausible inference of contributory infringement. As the excerpts from the complaint illustrate, there was no allegation by plaintiff that the accused commercial kitchen product was a “component of a patented machine . . . constituting a material part of the [patented] invention” or that the accused product was not capable of “substantial noninfringing use” (ibid.). 35 U.S.C. 271(c). Nothing alleged in the complaint fits the theory of contributory infringement.

In its opposition, plaintiff hangs its hat on FRCP 84, which states that the “forms in the Appendix suffice under these rules and illustrate the simplicity and brevity that these rules contemplate” (Opp. 3–4). The gist of plaintiff’s argument is that it has sufficiently pled indirect infringement using Form 18, which was created prior to the Iqbal decision and is found in the appendix of the current Federal Rules.

On its face, however, Form 18 is silent as to any theory of patent infringement besides direct infringement. See FRCP Appendix of Forms, Form 18 (recommending in a “Complaint for Patent Infringement” a statement that “defendant has infringed and is still infringing the Letters Patent by making, selling, and using [the accused products] that embody the patented invention”). Nowhere in Form 18 are theories and elements of induced infringement or contributory infringement referenced. Given this silence, this order finds that plaintiff cannot use Form 18 as a shield against the instant motion. Several other courts in this district have reached the same conclusion. See Bender v. LG Elecs. U.S.A., Inc., 2010 WL 889541 (N.D. Cal. Mar. 11, 2010) (Form 18 only provides an example of how direct patent infringement may be alleged); Elan Microelectronics Corp. v. Apple, Inc., 2009 WL 2972374 (N.D. Cal. Sept. 14, 2009) (“[i]n the absence of any other form that addresses indirect infringement and is made binding on the courts through Rule 84, the Court must apply the teachings of Twombly and Iqbal”).

For these reasons, plaintiff’s claims of indirect infringement under 35 U.S.C. 271(b) and 35 U.S.C. 271(c) are DISMISSED.

The problem, from Google's perspective, is a lack of specificity, Google says:
We believe that Oracle’s disclosures are deficient on their face for several reasons, many of which relate to the fact that Oracle has failed to identify, on a claim-by-claim basis, any specific alleged direct infringers or infringing acts. In addition, despite Oracle’s apparent reliance on the devices and actions of unidentified third parties, Oracle’s contentions fail to allege indirect infringement.
So that's Google's response to those Oracle lists. Google offered to let Oracle supplement its filing, but it says "Oracle flatly refused," so now Google asks the court to make them get more specific. Oracle, Google tells the court, assumes that all Android devices are infringing, but Google pointed out to them that they have to be specific about which devices infringe, because developers are free to modify the code as they please, and not all devices are the same. For example, in answering Oracle's Interrogatory 5, part of Google's answer touches on this issue:
Google further states that, pursuant to 35 U.S.C. § 271(c), Oracle has the burden to demonstrate that each Accused Instrumentality is “not a staple article or commodity of commerce suitable for substantial noninfringing use.” Oracle has made no such allegation or any attempt to meet this burden. Further, as presently understood, Oracle cannot meet this burden because the Accused Instrumentalities, such as mobile handsets, are capable of substantial noninfringing uses. Further, because Oracle has not identified any actual performance of any method on any specific Accused Instrumentality and therefore has not even identified a single purported infringing use, Google cannot meaningfully address all non-infringing uses at this time. As presently understood, all uses are noninfringing uses for the reasons cited in response to Interrogatory No. 3. Google reserves the right to supplement this response as it gains more clarity into both Oracle’s allegations and the construction of claim terms.
So that seems to be the main sticky wicket in this dispute. Do you see, though, how it all dovetails with what Google's arguments are? That's no accident. We are working backwards here in our discussion, but what the lawyers do is research first and then begin to carve their theory of the case from what the research showed them is most likely to work. Then, only after that, they write their documents to file with the court. They know already what they plan to argue at trial, at least an overview. But it's like a first draft, subject to change as discovery fills in the blanks a bit. And fill in the blanks is what both sides are asking the other to do. Google is doing a bit more than that. It's setting things up for a motion to dismiss the contributory infringement claim, if it can get the judge to order Oracle to be more specific and Oracle doesn't comply.

And I see another preliminary dance going on. In Google's Answers to Interrogatories, one paragraph mentions burden of proof:

8. Google further objects to each of Interrogatories No. 3 through 16 due to the use of the phrase “affirmative defense.” Google’s Answer and Counterclaims does not refer to the defenses as “affirmative defenses,” and Google objects to the use of the term to the extent Oracle is attempting to suggest any burden in relation to any of the defenses beyond what is required by any applicable statute or case law. Some of the defenses listed are clearly not affirmative defenses. For example, Oracle identifies Substantial Non-Infringing Uses (Patent) as an affirmative defense, when it is Oracle’s burden to show an absence of substantial noninfringing use pursuant to 35 U.S.C. 271(c).
So part of this is each side trying to shift the burden to the other, Oracle by calling a defense an affirmative defense, and Google noticing and saying, not so fast. It's *your* burden, not ours. If you remember the SCO v. Novell second trial, you saw how important it is who has the burden of proof, because if it's 50-50, then whoever had the burden loses. And sometimes it really is 50-50. So Google is here protecting itself from a later claim by Oracle that Google has a burden to prove that its allegedly infringing products have substantial noninfringing uses. Oracle meanwhile was walking along, whistling away, as if nothing much was happening when it called the defenses affirmative, but Google noticed and thought Oracle might have argued at trial or in a motion battle that the burden was Google's and pointed to the interrogatories as "proof".

Yup. It happens. It's why lawyers burn out sometimes, but it's also what litigators love about litigation. It's a little bit exciting when you notice a strategy in time to counter and avoid checkmate. Kind of like chess. And it's exciting to try to plan a strategy and watch it play out successfully.

Google's Answers to Oracle's Interrogatories:

So let's look at Google's answers to Oracle's Interrogatories so we can form our own opinion. It's 38 pages long, so I'll hit the highlights for you here, but you can read the PDF in full.

You'll see a lot of repetitive language, essentially indicating a desire not to get ambushed. Oracle calls it boilerplate, but protection is why you see language like this throughout Google's answers to Oracle's interrogatories:

12. Google further objects to each of Interrogatories No. 3 through 16 for seeking the bases for pleading in response to Oracle’s Amended Complaint, which was deficient in many respects, or for seeking Google’s current positions on its defenses in view of Oracle’s Patent Local Rule 3-1 disclosures, which were also deficient. Oracle’s Amended Complaint did not identify any asserted claims of the Patents-in-Suit; Oracle’s Patent Local Rule 3-1 disclosures did not identify accused products with any reasonable specificity on a claim by claim basis; and both documents failed to include any factual allegation for many elements as to which Oracle has the burden of proof. Any response below does not constitute a waiver of any work product or attorney-client privileged material relating to Google’s interpretation of the numerous ambiguities contained in Oracle’s Amended Complaint and Patent Local Rule 3-1 disclosures. Further, any response below should not be considered any affirmative representation that Oracle has presented a cognizable claim, met its Rule 8 obligations or met its obligations under Patent Local Rule 3-1, or that particular information in the response will represent an applicable basis in the future as further clarity as to Oracle’s allegations is attained. Google further objects to each patent-related Interrogatory as unnecessary in view of the specific disclosures contemplated by the Patent Local Rules as well as premature at least because claim terms have not been construed.

13. Despite the ambiguity in Oracle’s Interrogatories created by the use of the word “pleading,” Google provides the following responses with respect to its bases for both pleading its defenses and maintaining them. Google explicitly preserves its work product and attorney- client privileged information and other relevant objections. Google has conducted a reasonable inquiry sufficient to comply with any obligations with respect to these Interrogatories, and makes no representation that these responses include an exhaustive list of all facts relevant to the defenses identified in these Interrogatories. Inclusion of Oracle’s allegations in a list of facts in any response herein does not mean that Google agrees with the veracity of the allegation, but merely references the fact that particular allegations were made. Google expressly maintains all objections made in responsive pleadings. Google makes no representation that its responses below completely set forth all of its bases for its defenses, as Google objects that such a response would be unduly burdensome, premature, and require the unwarranted disclosures of attorney work product and attorney-client privileged information.

That's just telling Oracle not to go there. Google waives nothing by responding. It admits nothing.

But after all the protective language, here are the reasons Google believes at this point that Oracle can't prove its infringement claims, beginning with its answer to Oracle's Interrogatory 3:

INTERROGATORY NO. 3:

Please explain the factual and legal bases for Google’s pleading of its first affirmative defense: No Patent Infringement.

RESPONSE:

[Protective language omitted]

... Subject to the foregoing objections and the General Objections, without waiver or limitation thereof, Google states that the following facts relevant to this defense were in its possession or accessible to Google at the time it pleaded this defense in its Answer and Counterclaims:

  • Allegations contained in Oracle’s Complaint and Exhibits (Doc. #1).

  • Allegations contained in Oracle’s Amended Complaint and Exhibits (Doc. #36).

  • Allegations contained in presentation materials received from Oracle pursuant to Fed. R. Evid. 408.

  • The patents-in-suit and their prosecution histories.  Android source code.

  • Android documentation, including public documentation located at
    http://source.android.com/; http://developer.android.com/;
    http://code.google.com/android/; http://sites.google.com/site/io/dalvik-vm-internals.

Google further states the following based on Oracle’s contentions as presently understood:

  • Oracle has not made any showing or specific allegation of indirect infringement attributable to Google through inducement or contributory infringement. For example, Oracle has not demonstrated that Google had specific knowledge of the asserted patents sufficient for either inducement or contributory infringement. Oracle further has not demonstrated that the Accused Instrumentalities were not capable of substantial noninfringing uses. As presently understood, Oracle cannot make these showings.

  • Oracle has not made any showing or any specific allegation of direct infringement, for example, because it has not demonstrated that methods have been performed. As presently understood, Oracle cannot make these showings because one or more functionalities identified as infringing were not implemented and used in any products.

  • Oracle has not made any showing or any specific allegation that Google directed and controlled other parties to the extent multiple parties are required to infringe a claim. As presently understood, Oracle cannot make this showing. Until Oracle identifies on a claim by claim basis the identity of alleged direct infringers performing each step of each asserted claim, Google cannot respond more completely to this Interrogatory.

  • Google will set forth its invalidity contentions pursuant to the Patent Local Rules and the Case Management Order. Google contends that each asserted claim is invalid and therefore Google cannot infringe such a claim.

  • Upon information and belief, Google contends that one or more accused functionalities are properly licensed by Google or by one or more alleged direct infringers. By way of example, Oracle accuses its own javac compiler as an element of its allegations for United States Patent No. 6,061,520. Upon information and belief, Google expects discovery to reveal that alleged direct infringers are licensed to use that product. Until Oracle identifies on a claim by claim basis the identity of alleged direct infringers performing each step of each claim and Google receives information regarding Oracle’s licenses, Google cannot respond more fully to this Interrogatory.

  • As presently understood, Oracle cannot demonstrate infringement of asserted patents for at least the following additional reasons:
    • As presently understood, with respect to United States Patent No. 6,061,520, the Accused Instrumentalities do not meet the element in claim 1 of “simulating execution of the byte codes of the clinit method against a memory without executing the byte codes to identify the static initialization of the array by the preloader” or other elements citing similar functionality.

    • As presently understood, with respect to United States Patent No. RE38,104, the Accused Instrumentalities do not meet the element of claim 11 of “a processor configured to execute said instructions containing one or more symbolic references by determining a numerical reference corresponding to said symbolic reference, storing said numerical references, and obtaining data in accordance to said numerical references,” or other elements citing similar functionality.

    • As presently understood, with respect to United States Patent No. 6,910,205, the Accused Instrumentalities do not meet the element of claim 1 of “generating, at runtime, a new virtual machine instruction that represents or references one or more native instructions that can be executed instead of said first virtual machine instruction,” or other elements citing similar functionality.

    • As presently understood, with respect to United States Patent No. 5,966,702, the Accused Instrumentalities do not meet the element of claim 1 of “forming a multi-class file comprising said plurality of reduced class files,” or other elements citing similar functionality.

    • As presently understood, with respect to United States Patent No. 6,125,447 and United States Patent No. 6,192,476, the Accused Instrumentalities do not meet any substantive elements of the claims.

    • As presently understood, with respect to United States Patent No. 7,426,720, the Accused Instrumentalities do not meet the element of claim 1 of “a copy-on write process cloning mechanism to instantiate the child runtime system process by copying references to the memory space of the master runtime system process into a separate memory space for the child runtime system process, and to defer copying of the memory space of the master runtime system process until the child runtime system process needs to modify the referenced memory space of the master runtime system process,” or other elements citing similar functionality.

Google reiterates that the above contentions are being made very prematurely and in view of inadequate disclosures by Oracle, as well as in advance of any claim construction rulings. Google reserves the right to amend and supplement this response as it gains more insight into Oracle’s contentions, as well as after any claim construction order.

And why does Google think it has waiver, estoppel and laches defenses? The next interrogatory answer, after the disclaimer language, tells us:
Subject to the foregoing objections and the General Objections, without waiver or limitation thereof, Google states that the following facts relevant to this defense were in its possession or accessible to Google at the time it pleaded this defense in its Answer and Counterclaims:

  • Allegations contained in Oracle’s Complaint and Exhibits (Doc. #1).

  • Allegations contained in Oracle’s Amended Complaint and Exhibits (Doc. #36).

  • Allegations contained in presentation materials received from Oracle pursuant to Rule 408 of the Federal Rules of Evidence.

  • The patents-in-suit and their prosecution histories.

  • Publicly available documents with information regarding the statements and actions of Oracle and its predecessor Sun Microsystems, Inc. including the information disclosed in paragraphs 1 through 10 of the counterclaims asserted in Google’s Answer and Counterclaims under the heading “The Java Platform and Programming Language,” as well as the information produced at GOOGLE-00305323 through GOOGLE-00305769.

  • Publicly available documents with information regarding the development of the Android Platform, including the information disclosed in paragraphs 11 through 17 of the counterclaims asserted in Google’s Answer and Counterclaims under the heading “The Open Handset Alliance and Development of the Android Platform.”

  • Facts relating to the market for Android as disclosed in paragraphs 20 through 22 under the heading “Android and the Java Programming Language” of Google’s Answer and Counterclaims. These facts are publicly available, see, e.g., GOOGLE-00320072 through GOOGLE-00320077.

    Google further states that, as reflected in Oracle’s Patent Local Rule 3-1 disclosures, Oracle was aware of Android pursuant to discussions with Andy Rubin prior to Android’s acquisition by Google, which are believed to have occurred at least as early as 2005. Google further states that Oracle was aware of Android and the Open Handset Alliance, at least as early as November 2007, as reflected by Jonathan Schwartz’s public comments congratulating Google and the Open Handset Alliance on the announcement of Android. Nevertheless, Oracle waited several years before bringing suit, while the Android market grew and while Google and numerous handset manufacturers and other entities made significant investments in the Android Platform. Google further states that Oracle’s actions, including statements and actions of its predecessor Sun encouraging use of the Java programming language, form the basis of Google’s defenses involving waiver, estoppel and laches. Google has a reasonable belief that the discovery it requested will reveal additional evidence to support this defense and reserves the right to supplement this response accordingly.

And here's the rationale in part behind Google's misuse defense:
Google further states that Oracle and its predecessor Sun have attempted to impermissibly expand the scope of the asserted patents and copyrights by requiring licensees to license items not covered by Oracle’s alleged intellectual property in order to receive a license to Oracle’s alleged intellectual property or to engage in activities for which no license is required. Specifically, Oracle has used its copyright registrations in an attempt to extract licensing revenue for a larger body of material than what is covered by its intellectual property and to restrict the rights of third parties to truthfully state that, for example, products are “Java compatible.” Google has a reasonable belief that the discovery it requested will reveal additional evidence to support this defense and reserves the right to supplement this response accordingly.
As for Oracle's copyright infringement claims, here's why Google thinks it will prevail:
Google further states that, as presently understood, Oracle’s allegations of copyright infringement appear to include and/or be based, at least in part, on elements of the Asserted Works that are purely functional (such as key words and operators); elements (such as programming methods) that consist of abstract ideas, procedures, processes, systems, methods of operation, concepts or principles that are not protectable by copyright; elements (including variable identifiers or types, class names, file names, or other words and short phrases) that are not eligible for copyright protection; elements that are not original, including machine-generated documentation and machine-generated spacing, organization, or “white space” in source code files; elements as to which idea and expression are merged (such as routine invocation or encapsulation of classes); elements that constitute the programming equivalents of unprotectable, common “scènes à faire” (such as programming techniques that are commonly used in the industry other than in the Asserted Works, or constitute best practices in programming unrelated to the Asserted Works) or are otherwise elements dictated by external factors (such as hardware and design constraints); elements that have entered the public domain; and/or elements that are subject to a limited number of forms of expression due to functional or other considerations. In addition, any similarities between any protectable elements of the Asserted Works and the Android Platform are, at most, de minimis and not actionable. Google has served Interrogatories to obtain further details regarding Oracle’s copyright allegations and requires complete responses to those Interrogatories to respond more completely to this Interrogatory. Google therefore reserves the right to supplement this response accordingly.
That's pretty much what I explained to you last week or so about why any conclusions about Oracle's allegations of copyright infringement were premature. But there's more, on the counterclaim of copyright unenforceability (waiver, estoppel, and laches. After repeating the same information about Oracle knowing about Android at least as far back as 2005, Google adds this:
Google further states that Oracle’s actions, including statements and actions of its predecessor Sun encouraging use of the Java programming language, form the basis of Google’s defenses involving waiver, estoppel and laches. Google has a reasonable belief that the discovery it has requested will reveal additional evidence to support this defense and reserves the right to supplement this response accordingly.

Google further states that, upon information and belief, Oracle knew at least as early as May 2005 that elements of the Android Platform were made publicly available by the Apache Software Foundation under the terms of the Apache Software License version 2.0 and were necessary to allow for interoperability. Upon information and belief, Oracle has never pursued any claim against the Apache Software Foundation or accused the materials created by the Apache Harmony Project of infringement and it is a publicly known fact that many members of the software development community have relied upon the availability of software code embodied in the Apache Harmony Project materials under the terms of the Apache Software License version 2.0 and used or distributed that code under those terms. Google has a reasonable belief that the discovery it has requested will reveal additional evidence to support this defense and reserves the right to supplement this response accordingly.

Here's why Google feels it has a fair use defense:
Google further states that, as presently understood, Oracle’s allegations are such that the nature of the works asserted by Oracle and covered by the Asserted Copyrights, the amount (if any) and substantiality of the portions of such works used by Google in relation to the works as a whole, the purpose and character of any use thereof made by Google, and the effect, if any, of such use on the potential market for the works, when taken together, preclude Oracle’s claims due to the doctrine of fair use pursuant to 17 U.S.C. § 107. More specifically, Google asserts that any use in the Android Platform of any protectable, copyrighted elements of any works of Oracle is for functional, best practices, or technical efficiency reasons, to enable the use on Android devices of applications or other materials written in the Java programming language and/or for other Java platforms; that any such use is de minimis when compared to the Android Platform or the Asserted Works of Oracle; that any such use is necessary to enable interoperability of such applications or materials on the Android Platform; and that any such use is a fair use. Google has served Interrogatories to obtain further details regarding Oracle’s copyright allegations and requires complete responses to those Interrogatories to respond more completely to this Interrogatory. Google therefore reserves the right to supplement this response accordingly.
As to its defense that it had no intention to infringe Oracle's copyrights, Google points to the steps it took to avoid it in this snip from its answer to Interrogatories 12, 13, and 14:
Google states that its intention not to induce infringement is evidenced by, among other things, the fact that Android was developed through independent creation and use of material duly licensed or unprotectable, and measures taken to ensure that Android was comprised only of material that was original to Google, duly licensed or unprotectable....

In addition, any similarities between the Android Platform and the Asserted Works are, at most, de minimis and not actionable and/or involve unprotectable elements.

Google further states that Oracle has not met its burden to establish indirect infringement attributable to Google through inducement. For example, as presently understood, Oracle has not demonstrated that Google has engaged in purposeful, culpable expression or conduct designed or intended to result in others infringing Oracle’s Asserted Copyrights. As presently understood, Oracle cannot make this showing, precluding a finding of inducement of copyright infringement. Google has served Interrogatories to obtain further details regarding Oracle’s copyright allegations and requires complete responses to those Interrogatories to respond more fully to this Interrogatory. Google therefore reserves the right to supplement this response accordingly....

Google further states that the Android Platform, including the Android operating system, the Android Software Development Kit and the Dalvik Virtual Machine, was created independently of any works protected by the Asserted Copyrights. More particularly, the instructions provided by Google to all individuals involved in development of the source code for the Android core libraries were to use only materials in the public domain and/or available under so-called “permissive” or attribution-only source licenses such as the Apache Software License version 2.0 or equivalent such licenses, and/or to create new code without reference to any protectable materials, and, to the best of Google’s knowledge, these instructions were complied with as to all source code releases for the Android Platform.

Google further states in response to this Interrogatory that certain third parties contributed to the development of code for Android, but that the identities of such third parties and the specific nature of their involvement is subject to contractual confidentiality provisions. Google is undertaking to obtain the consent of the relevant parties to disclosing additional information, and reserves the right to supplement this response promptly once such consent is obtained....

Google further states that Google took reasonable steps to insure that any third parties involved in the development of Android did not use or reference existing source code other than materials that were in the public domain and/or openly available through permissive (or equivalent) licenses. Examples of these representations are included in the production cited. To the extent any third party or individual did not perform its tasks according to Google’s requirements, those actions were without Google’s knowledge and are not attributable to Google.

We get some insight into why Google cares so much about getting Oracle to get more specific, when it explains why it thinks it has a defense of license, and here's the heart of that:
Google further states that, as presently understood, Oracle’s allegations are directed toward one or more functionalities that are likely licensed by alleged direct infringers for at least some Accused Instrumentalities. Because Oracle has not specified with precision the Accused Instrumentalities and alleged direct infringers, Google cannot respond more completely to this Interrogatory. By way of example, certain of Oracle’s allegations with regard to the ‘520 patent include its own program, javac, as a component of the allegation. Upon information and belief, Google expects discovery to reveal that at least some alleged direct infringers are licensed to use that program. Until Oracle identifies on a claim by claim basis the identity of alleged direct infringers performing each step of each claim and Google receives information regarding Oracle’s licenses, Google cannot respond more completely to this Interrogatory.

Google further states that in the absence of an explicit license to asserted patents and copyrights, Google and other purported infringers are entitled to an implied license based on Oracle’s actions, including statements and actions of its predecessor Sun. Google has a reasonable belief that the discovery it has served will reveal additional evidence to support this defense and reserves the right to supplement this response accordingly.

And here's the bit about unclean hands:
Google further states that Oracle has unclean hands at least for the reasons of its misuse of its intellectual property, namely, that Oracle and its predecessor Sun have attempted to impermissibly expand the scope of the asserted patents and copyrights by requiring licensees to license items not covered by Oracle’s alleged intellectual property in order to receive a license to Oracle’s alleged intellectual property or to engage in activities for which no license is required. Specifically, Oracle has used its alleged copyright rights in an attempt to extract licensing revenue for a larger body of material than what is covered by its intellectual property and to restrict the rights of third parties to truthfully state that, for example, products are “Java compatible.”
Oracle may feel this isn't enough, but I surely have a better understanding of why Google is not settling this case.

Google's Letter Regarding Oracle's Allegedly Insufficient Patent Disclosures:

And that brings us back to the dispute about Oracle's patent disclosures. To give you some context, here's a bit of a 2010 Jones Day article on what's enough in a complaint to survive challenge in a motion to dismiss, "Pleading Facts and Arguing Plausibility: Federal Pleading Standards a Year After Iqbal":

Indeed, Twombly itself suggested that pleadings based on what is now Model Form 11 would be adequate because the form "alleges that the defendant struck the plaintiff with his car while plaintiff was crossing a particular highway at a specified date and time." 550 U.S. at 565 n.10. Likewise, courts continue to hold that a complaint of direct patent infringement properly alleged on Form 18 states a claim, while also concluding that more complex claims of indirect patent infringement fall outside the scope of Form 18 and require additional factual allegations. See, e.g., Eolas Tech., Inc. v. Adobe Systems, Inc., 2010 WL 2026627, *2-3 (E.D. Tex.) (holding that a patent infringement properly alleged on Form 18 will state a claim); Halton Co. v. Streivor, Inc., 2010 WL 2077203, *3 (N.D. Cal.) (suggesting that claims for direct patent infringement may be brought under Form 18, but that claims for indirect patent infringement, which require intent, may not). Thus, the level of factual support required increases as proof of the claim grows more difficult and complex.
Note it also references Halton v. Strivor. So this is what Google is relying on, that in connection with Oracle's claim of contributory infringement especially, it has to tell Google a lot more than it has. Oracle, for its part, is asking Google for more than Google feels it has a duty or even the ability to answer, in that as discovery moves along, it will know much more clearly what its defenses will be. At a minimum, it needs, it is saying, enough specificity to actually know what devices Oracle is accusing of infringement on a claim by claim basis.

Here's the letter, then, from Google to the judge regarding what it says are deficiencies in Oracle's patent disclosures:

King & Spalding LLP
[address]
www.kslaw.com

Scott T. Weingaertner
[phone, fax, email]

February 2, 2011

The Hon. William Alsup
United States District Court
Northern District of California
450 Golden Gate Avenue
Courtroom 9, 19th Floor
San Francisco, CA 94102

Re: Oracle America, Inc. v. Google Inc.,
Civil Action No. 3:10-cv-03561-WHA

Dear Judge Alsup:

The parties have reached an impasse regarding the adequacy of Oracle’s Patent Local Rule 3-1 disclosures, and we request the Court’s assistance in resolving the issues about which the parties disagree.

We believe that Oracle’s disclosures are deficient on their face for several reasons, many of which relate to the fact that Oracle has failed to identify, on a claim-by-claim basis, any specific alleged direct infringers or infringing acts. In addition, despite Oracle’s apparent reliance on the devices and actions of unidentified third parties, Oracle’s contentions fail to allege indirect infringement. Oracle has also completely ignored, for example, the element of lack of substantial noninfringing use, which is its burden as explicitly set forth in 35 U.S.C. 271(c). See, e.g., Halton Co. v. Streivor, Inc. 2010 No. C 10-00655 WHA, 2010 U.S. Dist. LEXIS 50649, *3-*8 (N.D. Cal. May 21, 2010) (granting motion to dismiss indirect infringement claims based inter alia on lack of “allegation by plaintiff . . . that the accused product was not capable of ‘substantial noninfringing use’”). Google raised these issues three weeks ago on January 10, 2011, and had agreed not to oppose a motion by Oracle to supplement its Rule 3-1 disclosures; Oracle has flatly refused. Google therefore requests that the Court compel Oracle to supplement its contentions, and, if Oracle cannot do so in a timely manner, to preclude Oracle from subsequent amendments to cure these deficiencies.

Based on our meet and confer discussions with Oracle’s counsel, we believe these deficiencies in Oracle’s disclosures may be indicative of a failure by Oracle to conduct sufficient diligence and to compare any devices to any of the asserted patent claims on a claim-by-claim basis, as well as a failure to identify any alleged infringing act that has actually been performed.

The Hon. William Alsup
February 2, 2011
Page 2

It appears that in lieu of its obligations pursuant to Patent Local Rule 3-1, Oracle has instead relied on an unsupported assumption that any Android code that it has identified on a public repository has in fact been implemented and/or used in third party devices. Oracle’s reliance on such an assumption is unwarranted. Since at least October 4, 2010, when Google filed its Answer, Oracle has been on notice that “[d]evelopers are free to modify the source code of the Android platform to fit their particular purpose,” see Dkt. 32, ¶ 16 at 16, and Oracle even incorporated this language by reference into its own definition of “Android” in its First Set of Interrogatories to Google. This fact should also have been evident to Oracle from the public repository itself long before that. Google has offered to not oppose a motion by Oracle to amend its Infringement Contentions pursuant to Patent Local Rule 3-6, but Oracle has refused, requiring Google to seek relief from the Court.

Oracle’s approach in its infringement contentions, as shown in the attached Exhibits, is to cite source code from the public Android source code repository, coupled with highly generalized statements regarding the Accused Instrumentalities. For apparatus patent claims, for example, Oracle makes statements such as “Accused Instrumentalities include devices that run Android or the Android SDK.” See, e.g., Ex. D, claim 19 at p. 35. For method claims, Oracle makes statements such as “Android includes methods . . .” See Ex. D, claim 1 at p. 1. 1

These statements fail to provide Google with the requisite notice and particulars of Oracle’s infringement claims. For the method claims, Oracle has not identified any occasion on which the claimed method was allegedly performed, nor the identity of any purported direct infringer performing the method. With respect to the apparatus claims, it is Oracle’s burden to identify the allegedly infringing devices with specificity. Rather than comply with this requirement, Oracle has improperly attempted to place the burden on Google, asking Google to conduct analysis of all third party devices to disprove infringement. This approach contravenes the intent and purpose of the Patent Local Rules, which were implemented so that a patent plaintiff would crystallize its theories and conduct the requisite analyses prior to bringing suit and filing its Infringement Contentions. See, e.g., Bender v. Maxim Integrated Products 2010 U.S. Dist. LEXIS 32115, *6-*8 (N.D. Cal., Mar. 22, 2010) (granting motion to compel because plaintiff’s infringement contentions “were based on assumptions” and because the contentions “do not describe any acts committed by a third party that would suggest direct infringement”). Despite its apparent reliance on unspecified acts and devices of third parties, Oracle did not even affirmatively set forth a claim of indirect infringement, instead claiming in its cover

2

The Hon. William Alsup
February 2, 2011
Page 3

document only that “Google induces the infringement of others” and “contributes to the infringement of others” to the extent it makes Android available to others. See Oracle’s Preliminary Infringement Contentions at 2-3 (emphasis added). Oracle has also failed to make any allegation as to the lack of noninfringing uses as required by 35 U.S.C. 271(c).

As the deficiencies highlighted above demonstrate, Oracle has failed to comply with its Patent Local Rule 3-1 obligations and has refused an offer from Google to not oppose an amendment curing the deficiencies. Google therefore requests the Court’s assistance in resolving this issue by either compelling Oracle’s compliance or ordering that Oracle will not be allowed to amend to cure these deficiencies at a later date.

Google understands that the Court has set a hearing for Wednesday, February 9, on the motion to compel that Oracle filed on February 1. While Google had hoped that the parties would be able to continue their attempts to resolve their differences through negotiation, it appears that Oracle believes that further such efforts will not be productive. We therefore respectfully request that the Court also address at the hearing on February 9 the issues raised in this letter.

Respectfully submitted,
[signature]
Scott T. Weingaertner
Counsel for Google Inc.

cc: Counsel of Record via ECF

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

/s/ Cheryl A. Sabnis /s/

______________
1 While Oracle identifies some “representative examples” of “devices running Android” in its cover document, it provides no analysis of those devices. During the parties’ meet and confer discussions, Oracle has made clear that it has not performed any such analysis and is merely relying on assumptions regarding the operation of Android devices. Oracle has even requested a stipulation from Google to the effect that all third party devices implement the publicly-available code as it exists in the repository. Google cannot agree to such a stipulation, which would be inconsistent with the fact that developers are free to modify the code.

Quite a lot to digest, eh? You'd have to be a developer with some experience with Java and/or Dalvik to know who has the stronger argument, but I'm not one, so I'll leave it to you. But at its core, what we are seeing is Google saying, in effect, that Oracle is the plaintiff. It has to tell what it is complaining about enough for Google to know how to defend itself. And so far, its position is that it can't really go forward in discovery revelations unless Oracle gets more specific on a claim by claim basis, telling Google which Android devices are infringing. And just because there's Android code in a public repository, that doesn't prove that the code "has in fact been implemented and/or used in third party devices". That's the missing piece, from Google's perspective.

Oracle so far is saying, if I've understood their claims, and not having their answers to Google's interrogatories, I might not have it fully, that all of Android is infringing the patents, all devices that run Android from 2008 onward. Stating it is to see what the problem is, I think. In any case, we can see why they need the judge to intervene and tell them who has to cough up specifics first and/or to what degree. Although how he will know in such a technical dispute is a little hard for me to see. I'm struggling, not being a developer, and I know he has in earlier cases we've covered made clear that he's not a programmer either. But he surely knows the law, and that is what he'll try to apply, and I don't doubt that it's why he set up a meet and confer for the parties prior to the hearing. He's hoping to encourage them to work it out themselves, if at all possible.

The Judge's Order:

Here's the text of the judge's order:

Defendant’s discovery dispute letter brief is acknowledged. The discovery issues raised by defendant shall be addressed at the same time as those raised by plaintiff. The parties shall meet-and-confer in the Court’s jury room starting from 8:00 A.M. AND ENDING AT 11:00 A.M. ON WEDNESDAY, FEBRUARY 9, 2011. At 11:00 a.m., the Court shall hold a hearing to resolve any and all remaining discovery issue(s). Please note that only those lawyers who personally participate in the meet-and-confer in the Court’s jury room may be heard at the discovery hearing.

Plaintiff may file a responsive letter brief, not to exceed three pages, by NOON ON FEBRUARY 7, 2011.

Plaintiff is Oracle. And the food fight will be on display in full on February 9th, with an Oracle letter due two days before, responsive to this second letter about Google's complaints. That will probably show up today. If so, I'll add it to this magnus opus. Phew. So much to explain already.

If anyone is free to attend the hearing, it would be grand. So far, I'm not aware of anyone in that area that can go, but I'm hoping. If you are in the area and are willing to attend, please do. Feel free to email me if you'd like any instructions, if you exist. We all hope someone is in the San Fransisco area and is free to attend, because otherwise it will be months before there will be a transcript available. But if no one can go, never fear. We will eventually find out what happened.

Update: I forgot something I think is important to mention about Google's answers to the interrogatories. There is an issue as to what makes up the "Java Platform", how to define it, in Google's section of general objections:

3. Google objects to Oracle’s definition of “Java Platform” on the grounds that the definition is overbroad and misleading to the extent it purports to include “the Java programming language,” as to which Oracle does not own proprietary rights. When used in Google’s responses, the phrase “Java Platform” shall not include “the Java programming language” and, without acknowledging or agreeing that Oracle owns any proprietary rights in any elements thereof, shall have the meaning ascribed to that phrase in paragraph 9 of Oracle’s Amended Complaint, namely “a bundle of related programs, specifications, reference implementations, and developer tools and resources that allow a user to deploy applications written in the Java programming language on servers, desktops, mobile devices, and other devices,” including but not limited to the Java compiler, the Java Virtual Machine, the Java Development Kit, the Java Runtime Environment, the Just-In-Time compiler, Java class libraries, Java application programming interfaces, and Java specifications and reference implementations.
The issue comes up later in the section where Google explains fair use, and I've got the impression this is going to be a place to put a post-it, so to speak, because I expect there will be a lot more on this subject to come.

Update 2: Per the judge's order, here's Oracle's Memorandum in Opposition to Google's Motion to Compel:

02/07/2011 - 82 - Memorandum in Opposition re 79 MOTION to Compel Regarding Oracle's Patent Local Rule 3-1 Disclosures filed byOracle America, Inc.. (Peters, Marc) (Filed on 2/7/2011) (Entered: 02/07/2011)


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