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Oracle v. Google - Sweating the details - Updated
Friday, May 20 2011 @ 05:30 PM EDT

In the two most recent filings in Oracle v. Google we get a glimpse into the contentious nature of this proceeding, with neither side willing to budge a great deal. This shouldn't be overly surprising considering that we have two of the heavyweights of the information technology industry slugging at each other.

In the first filing, denominated Joint Memorandum Regarding the Court's Tentative Case Plan, 144 [PDF], the parties indicate agreement on the following points:

  1. The current fact discovery cut-off remains in effect, and the parties shall conduct discovery and file motions with the assigned Magistrate-Judge accordingly.
  2. By June 1, 2011, Oracle shall narrow its patent infringement case to no more than 50 asserted claims.
  3. By June 15, 2011, Google shall narrow its invalidity case to no more than six grounds of invalidity per asserted claim. A reference or set of references setting forth an anticipation or obviousness theory shall be counted by "chart" pursuant to Patent L.R. 3-3(c) (i.e., anticipation by a reference shall be counted as one ground for purposes of this paragraph; references setting forth an obviousness combination shall be counted as another ground). Other grounds shall be counted by stated legal theory, e.g., "enablement," "lack of written description," "improper broadening."
  4. The Court will entertain a summary judgment motion by Google on the copyright issue, and Oracle may seek the Court's leave to file a summary judgment motion on copyright issues as well. Briefing on copyright issues will adhere to the following schedule:
  5. a. Opening brief(s) on August 1, 2011;
    b. Opposition brief(s) on August 19, 2011; and
    c. Reply briefs on August 29, 2011.
  6. Other summary judgment motions will be entertained only upon obtaining leave pursuant to the Court's previous order to that effect.
  7. The trial remains set to begin on October 31. The trial, addressing all issues, will last for three weeks.
But then the contentiousness sets in. While the court had suggested Oracle limit itself to three claims (out of 132) and that Google be limited to eight prior art references with respect to those three claims [see, 131 [PDF]], Oracle believes it should be allowed to pursue a minimum of 21 claims and that Google would then be limited to four prior art references per claim, or 84 prior art references in total. In support of its position, Oracle refers back to its original objection to the court's plan, 133 [PDF], saying it would be prejudiced by such a limitation, that it intends to show that at least one claim in each of the seven patents was infringed, and that such extensive infringement will go to the degree of damages.

In turn Google offers a compromise. Instead of either 21 claims or 3 claims, Oracle would be permitted from 10 to 14 claims, i.e., up to 2 claims per patent, and that no substantial harm would be done to Oracle if the court limited Oracle to just one claim per patent. [NB: These patents only embody 54 independent claims combined, more than half of which are in a single patent, RE38,104. So the real issue is these 54 claims, not the 132 total claims, which includes dependent claims. If you can't get the independent claims to stick in an infringement assertion, you are going to have an extraordinarily difficult time showing a dependent claim was infringed.] Google does, however, agree with Oracle that Google should be permitted four prior art references per Oracle claim allowed.

Not surprisingly, the parties also do not agree on whether the court should grant a stay pending the outcome, although Google is willing to defer to the court's judgment. The full text of the Joint Memorandum is reproduced below.

The parties also filed a joint letter to the court addressing their spat over discovery and who, if anyone, inside the legal departments of the two companies should be allowed to review documents marked “HIGHLY CONFIDENTIAL – ATTORNEY'S EYES ONLY.” 145 [PDF]. The full text of the letter is reproduced below, and you should read it.

Based on my experience as former in-house counsel, I would have to side with Google on this one. In-house counsel, and in particular senior legal counsel, are involved in competitive decision-making all the time. Further, it is hard to understand the need for disclosure to in-house counsel of such sensitive information. It is also evident from the arguments set forth that the discovery requests that the two parties have served on each other are extensive and that they clearly go into a level of business detail that each party would consider trade secret information. It will be interesting to see where the court lands on this issue.

The docket:

144 - Filed & Entered: 05/18/2011
Response ( Non Motion )
Docket Text: RESPONSE to re [143] Order Joint Memorandum Regarding the Court's Tentative Case Plan by Oracle America, Inc.. (Jacobs, Michael) (Filed on 5/18/2011)

145 - Filed & Entered: 05/18/2011
Letter
Docket Text: Letter Oracle's Request to Seek Permission to Provide Designated In-House Counsel With Access to AEO Information. (Jacobs, Michael) (Filed on 5/18/2011)

Update: Magistrate Judge Donna Ryu will hold a hearing on May 31 at 11:30 AM on Oracle's motion to provide AEO material to their in-house counsel:

05/20/2011 - 146 - ORDER SCHEDULING HEARING ON COMPETITIVE DECISION MAKERS. Signed by Judge Donna M. Ryu on 5/20/11. (dmrlc2, COURT STAFF) (Filed on 5/20/2011) (Entered: 05/20/2011)

Here's 144, Joint Memorandum Regarding the Court's Tentative Case Plan, as text, followed by the Letter, #145, after the double row of stars:

*******************

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

--------------------------

ORACLE AMERICA, INC.

Plaintiff,

v.

GOOGLE INC.

Defendant.

-------------------------

Case No. 3:10-cv-03561-WHA

Honorable Judge William Alsup

JOINT MEMORANDUM REGARDING
THE COURT’S TENTATIVE CASE PLAN

Plaintiff Oracle America, Inc. (“Oracle”) and Defendant Google Inc. (“Google”) present their views on the Court’s May 11, 2011 Notice re Tentative Case Plan. As directed, the parties engaged in a meet and confer, during which the parties reached agreement on some points and remain in disagreement on others. This memorandum summarizes these points of agreement and outstanding disputes.

I. Agreed Points

  1. The current fact discovery cut-off remains in effect, and the parties shall conduct discovery and file motions with the assigned Magistrate-Judge accordingly.
  2. By June 1, 2011, Oracle shall narrow its patent infringement case to no more than 50 asserted claims.
  3. By June 15, 2011, Google shall narrow its invalidity case to no more than six grounds of invalidity per asserted claim. A reference or set of references setting forth an anticipation or obviousness theory shall be counted by "chart" pursuant to Patent L.R. 3-3(c) (i.e., anticipation by a reference shall be counted as one ground for purposes of this paragraph; references setting forth an obviousness combination shall be counted as another ground). Other grounds shall be counted by stated legal theory, e.g., "enablement," "lack of written description," "improper broadening."
  4. The Court will entertain a summary judgment motion by Google on the copyright issue, and Oracle may seek the Court's leave to file a summary judgment motion on copyright issues as well. Briefing on copyright issues will adhere to the following schedule:
  5. a. Opening brief(s) on August 1, 2011;
    b. Opposition brief(s) on August 19, 2011; and
    c. Reply briefs on August 29, 2011.
  6. Other summary judgment motions will be entertained only upon obtaining leave pursuant to the Court's previous order to that effect.
  7. The trial remains set to begin on October 31. The trial, addressing all issues, will last for three weeks.

1

II. Disputed Issues

The parties could not reach agreement on the following issues:

A. Final Number of Claims and Defenses for Trial

7a. Oracle’s proposal: By September 1, 2011, or no later than 15 days after a ruling on any pending patent-related summary judgment motions allowed pursuant to paragraph 5 above, whichever is later, Oracle shall narrow its patent infringement case to no more than 21 asserted claims. By no later than 15 days after Oracle’s narrowing of claims pursuant to this paragraph, Google shall narrow its invalidity case to no more than four grounds of invalidity per claim. In the alternative, Oracle proposes that any narrowing of claims to be asserted at trial be addressed by the parties in papers submitted in connection with the final pre-trial conference. Oracle opposes any other approach to narrowing its asserted claim on the grounds set forth in its response to the Court’s May 4, 2011 Order.

7b. Google’s proposal: Google believes that the Court's initial plan for narrowing the claims makes the case more manageable for the Court and the jury, and is the best use of judicial resources. Google proposed a compromise of 10 to 14 claims to be asserted by Oracle (upon which the parties could not reach agreement) and believes the Court has the authority to limit the number of claims asserted to one claim per patent without depriving Oracle of due process in asserting its claims. See In re Katz Interactive Call Processing Patent Lit., Case No. 2009-1450 et al., 97 U.S.P.Q.2d 1737, 1744-45, 2011 WL 607381, *4, (Fed. Cir. Feb. 18, 2011) (rejecting plaintiff’s argument that district court’s narrowing of claims for trial violated due process). Google otherwise agrees that no later than 15 days after Oracle’s narrowing of claims pursuant to this paragraph, Google shall narrow its invalidity case to no more than four grounds of invalidity per claim.

2

B. Stay Pending Resolution of Reexamination Proceedings

8a. Oracle’s proposal: Pursuant to the Court’s May 11, 2011 Notice re Tentative Case Plan, no stay will be granted pending reexamination. Oracle will bear the risk of subsequent adverse events in reexamination pursuant to applicable law.

8b. Google’s proposal: To the extent that Oracle intends to assert a large number of claims at trial, resulting in a complicated and extremely burdensome trial, Google defers to the Court's discretion to grant a stay pending reexamination. In the event that there is no stay, Oracle will take the risk that claims selected for trial will be cancelled or modified during re-examination

3

FILER’S ATTESTATION

I, Michael A. Jacobs, am the ECF user whose identification and password are being used to file this JOINT MEMORANDUM REGARDING THE COURT’S TENTATIVE CASE PLAN. In compliance with General Order 45.X.B, I hereby attest that Scott T. Weingaertner concurs in this filing.

4

DATED: May 18, 2011

MORRISON & FOERSTER LLP, for Oracle

By: /s/ Michael A. Jacobs

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]
STEVEN C. HOLTZMAN (Bar No. 144177)
[email]
[address, phone, fax]

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

Attorneys for Plaintiff
ORACLE AMERICA, INC.

5

KING & SPALDING LLP

By: /s/ Scott T. Weingaertner
SCOTT T. WEINGAERTNER (Pro Hac Vice)
[email]
ROBERT F. PERRY
[email]
BRUCE W. BABER (Pro Hac Vice)
[address, phone, fax]

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

IAN C. BALLON (SBN 141819)
[email]
HEATHER MEEKER (SBN 172148)
[email]
GREENBERG TRAURIG, LLP
[address, phone, fax]

Attorneys for Defendant
GOOGLE INC.

6

********************
********************

[Morrison & Foerster Letterhead]

May 18, 2011

The Honorable Donna M. Ryu
United States Magistrate Judge
Northern District of California
1301 Clay Street, Courtroom 4, 3rd floor
Oakland, CA 94612

Re: Oracle America, Inc. v. Google, Inc., Case No. 3:10-cv-03561-WHA
Joint Letter Regarding Oracle’s Request For In-House Counsel Access to AEO
Information

Dear Judge Ryu:

Oracle seeks permission to provide its designated in-house counsel with access to“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” information (“AEO information”). Google has declined Oracle’s request. The parties met and conferred by telephone on May 11, 2011, but were unable to resolve the issue. Oracle respectfully requests the Court’s assistance with this matter.

Oracle's Statement

Oracle wishes to provide its designated in-house litigation counsel with access to AEO information, as permitted by the Stipulated Protective Order (“SPO”). As required, Oracle has presented Google with information establishing the qualifications of four Oracle in-house attorneys (Dorian Daley, Deborah Miller, Matthew Sarboraria, and Andrew Temkin) to see AEO information. Google has objected to all four designees, leaving Oracle without a single in-house attorney privy to AEO information. Judge Alsup has instructed that confidentiality designations be narrowly tailored and that information not be restricted without good cause (SPO, pp. 1-3 (Dkt. 66)), but Google has designated a large number of its documents as AEO (the highest level) and refused to permit access by any of Oracle’s designees. Accordingly, Oracle is forced to seek the Court’s assistance.

The Stipulated Protective Order permits disclosure of AEO information to up to five in-house attorneys who are not involved in “competitive decision-making” and to whom disclosure is reasonably necessary. SPO, ¶ 7.3(b), 7.4(a) (Dkt. 66). Oracle’s four designees are directly responsible for overseeing and managing this litigation. Given the fast pace of the case, access to AEO information is critical to enable in-house counsel to:
(1) expeditiously make informed decisions and provide feedback to outside counsel;

Morrison | Foerster

The Honorable Donna M. Ryu
May 18, 2011
Page Two

(2) advise Oracle’s senior management (who are not permitted to receive AEO information) on case decisions; and (3) engage in meaningful settlement discussions. Oracle is entitled to have its in-house litigators fully engaged in this case, subject to the safeguards imposed by the Stipulated Protective Order.

As required, Oracle provided Google with the following information regarding the job responsibilities of Oracle’s designees:

  1. Dorian Daley is General Counsel, Senior Vice President, and Secretary at Oracle. Her current and reasonably foreseeable future primary job responsibilities are:
    • Manage and oversee Oracle’s legal department, and serve as corporate secretary. In these roles, Ms. Daley is responsible for all company legal and regulatory matters, including litigation, and for advising management and the board as to such matters.
    • Given Ms. Daley’s background as a litigator, she is also actively involved in supervising certain litigation matters, including the present case.
  2. Deborah Kay Miller is Vice President and Associate General Counsel of Litigation at Oracle. Her current and reasonably foreseeable future primary job responsibilities are:
    • Manage all litigation against Oracle and its acquired companies, except employment-related litigation.
    • Supervise the in-house Litigation Group, which consists of 13 attorneys and 5 legal assistants.
    • Prepare quarterly reports on significant litigation and claims to upper management, auditors, and insurers.
    • Supervise the engagement of outside counsel for litigation matters and the review of their bills.
    • Prepare and manage budgets for the litigation group.
    • Supervise Oracle’s e-discovery program and its vendors.
    • Evaluate all significant requests for settlement authority for any nonemployment claim and make recommendations to senior management.
    • Review all settlements of significant claims and of litigation matters.
    • Provide advice about disputes from all parts of the company.
  3. Matthew Sarboraria is Senior Patent Counsel at Oracle. His current and reasonably foreseeable future primary job responsibilities are:
    • Patent litigation, including active involvement in select matters.
    • Patent licensing, including review and negotiation of license agreements.

2

    • Patent threat evaluation, including review and analysis of offers to sell and license patents.
    • Assist Corporate Legal group with IP related due diligence for M&As.
    • Investigate IP matters and advise management.
    • Respond to third-party subpoenas.
    • Counsel the company with respect to miscellaneous legal issues.
    • Serve on the board of directors of the Coalition for Patent Fairness.
    4. Andrew Temkin is Corporate Counsel in the Litigation Group at Oracle. His current and reasonably foreseeable future primary job responsibilities are:
    • Supervise and manage outside counsel in commercial and IP litigations.
    • Investigate patent threats and indemnification requests.
    • Investigate and advise management with respect to commercial disputes with customers.
    • Provide legal advice and support for Oracle’s business lines with respect to customer and product issues.
    • Respond to third-party subpoenas.
    • Counsel the company with respect to miscellaneous legal issues.

Google’s objection to Oracle’s four designees is based on the incorrect assumption that the designees are involved in competitive decision-making at Oracle. As Oracle has explained to Google, they are not. Oracle’s designees are lawyers with solely legal responsibilities – they are not business personnel charged with competitive decision-making. The issue of whether Ms. Daley is a competitive decision-maker was evaluated in 2008 by Judge Charles Legge, sitting as a Special Master in Oracle Corp, et al. v. SAP AG, et al., Case No. 07-1658 (N.D. Cal.). Judge Legge concluded that Ms. Daley is not involved in competitive decision-making in her capacity as General Counsel, Senior Vice President, and Secretary at Oracle (the same positions that she holds today). See Case No. 07-1658, Dkt. 72 at 3-4 (available on Pacer). In reaching this conclusion, Judge Legge considered the following information about Ms. Daley’s background and job responsibilities:

* Before joining Oracle, Ms. Daley was a litigator at Landels, Ripley & Diamond.

* For all of her career at Oracle up until she was named General Counsel in September 2007, her work focused principally on litigation, dispute resolution, and government investigation matters. During her time with Oracle, she has made court appearances, taken and defended depositions, and managed in-house and outside litigation counsel. She has had access to the opposing party’s Highly Confidential information in a number of cases.

* At the time the protective order was entered in the SAP case, Ms. Daley was Vice President and Associate General Counsel of Litigation (the same position that

3

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Page Four

Ms. Miller holds today). She was designated as a recipient of Highly Confidential information without objection from defendants in that case. * In her capacity as General Counsel, Ms. Daley has continued to supervise certain Oracle litigation matters. Her name has appeared on the captions of cases that she manages, as it has in this case. To enable Ms. Daley to effectively manage these cases, she has sought and obtained access to the opposing party’s highly confidential information.

* Ms. Daley is not involved in making competitive decisions for Oracle – that is the responsibility of other senior executives and committees within the company. While Ms. Daley does attend meetings of Oracle’s Board of Directors, her role is to provide legal advice as requested.

Based on this information, Judge Legge concluded that Ms. Daley was not a competitive decision-maker and was entitled to continue receiving Highly Confidential information.

As Google observes, Ms. Daley has titles and board memberships in connection with several Oracle subsidiaries. Her role in this capacity is purely to ensure alignment of governance policies and practices, as well as board processes. She is not a competitive decision-maker in connection with any of these subsidiaries. Ms. Daley also had the title of President of Sun Microsystems following its acquisition by Oracle. That title was a construct for transition, integration, tax, and signature-signing purposes. She had no management responsibility and no involvement in competitive decision-making in connection with that title. Finally, with respect to the Java Community Process, Ms. Daley is not a participant in that process. She was involved in a single JCP-related conference call (not an official JCP meeting) that was organized at Google’s behest, but has had no other connection to the JCP.

Likewise, Oracle’s other three designees – all litigation attorneys who directly or indirectly report to Ms. Daley – are not involved in competitive decision-making (although his title is “Corporate Counsel,” Mr. Temkin is primarily responsible for managing litigation). While they certainly have responsibilities relating to litigation, licensing, and other legal matters, they are not charged with making decisions vis-à-vis Oracle’s competitors in light of competitor information. Google suggests that Oracle’s designees should be barred from AEO access because they advise others at Oracle (including competitive decision-makers) regarding litigation, settlements, licensing, and other legal matters. But this interpretation of the AEO access provision would effectively block any inhouse attorney from qualifying for access, all of whom provide legal advice in the course of their duties. The Stipulated Protective Order clearly permits in-house attorneys to receive AEO information, so long as they are only operating as lawyers and not as competitive decision-makers. Oracle’s designees meet this requirement.

4

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Page Five

Oracle has met and conferred at length with Google in an effort to resolve this issue: (1) on April 6, 2011, Oracle sent a letter identifying its designees and providing detailed information on their background and job responsibilities; (2) on April 20, 2011, Google objected to all four designees, stating that their job duties make them competitive decisionmakers; (3) on April 22, 2011, the parties conferred telephonically, with Oracle’s outside counsel explaining that the designees’ responsibilities are solely legal; (4) on April 25, 2011, Oracle sent a letter providing further information about Ms. Daley’s duties and highlighting Judge Legge’s conclusion in the SAP case that Ms. Daley was not involved in competitive decision-making; (5) on April 27, 2011, Google refused, without exception, to grant Oracle’s designees access to AEO information; and (6) on May 11, 2011, following further discussion by telephone, Google again refused to grant access to any of Oracle’s designees.

Under the Stipulated Protective Order, Google bears the burden of proving that the risk of harm resulting from disclosure of AEO information to Oracle’s in-house litigation attorneys outweighs the attorneys’ need to receive that information. SPO, ¶ 7.4(c) (Dkt. 66). Google cannot meet this burden. Disclosure of AEO information to Oracle’s designees would pose no risk of harm to Google: (1) as experienced litigators, the designees are fully cognizant of their duties under the Protective Order and would strictly abide by its requirements; and (2) as lawyers not involved in competitive decision-making, there would be no risk of information being inadvertently used against Google for competitive purposes. Google has not explained how disclosure of AEO information to these lawyers, with the safeguards imposed by the Protective Order, would cause harm to Google.

For these reasons, Oracle respectfully requests permission to provide AEO information to its designated in-house attorneys. Should the Court wish, Oracle would be happy to provide further information, including copies of the briefing on this issue in the SAP case, a copy of Judge Legge’s report, and/or a declaration setting forth the facts stated herein. Pursuant to the Court’s guidelines, Oracle has not submitted these items with this joint letter.

Google's Statement

The Joint Stipulated Protective Order (Dkt. 66) allows access to “[u]p to five (5) Designated House Counsel of the Receiving Party (1) who has no involvement in competitive decision-making, (2) to whom disclosure is reasonably necessary for this litigation . . .” (Id. at ¶ 7.3(b).) It expressly defines “competitive decision-making” as:

decision-making relating to any and all decisions made in light of or that take into account information regarding a competitor or potential competitor, including but not limited to such decisions regarding contracts, marketing, employment, pricing, product or service development or design, product or service offerings, research and

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development, or licensing, acquisition or enforcement of intellectual property rights (other than this action), provided, however, that this phrase shall be interpreted in accordance with the relevant case law.
(Id. at ¶ 7.4(a).) It further requires the Party that seeks to disclose to Designated House Counsel any HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY information to “describe[] the Designated House Counsel’s current and reasonably foreseeable future primary job duties and responsibilities in sufficient detail to determine if House Counsel is involved, or may become involved, in any competitive decision-making.” (Id.)

Oracle’s disclosure demonstrates that each of the individuals Oracle designated is “involved in competitive decision-making,” under any reasonable interpretation of that phrase in view of the express definition and prevailing case law. Oracle states Ms. Daley “is responsible for all company legal and regulatory matters, including litigation, and for advising management and the board as to such matters.” Oracle makes much of the fact that Ms. Daley and the others are attorneys providing legal advice, yet this entire provision of the Stipulated Protective Order applies only to “counsel.” Therefore, the Order presumes that – as common sense would suggest – attorneys are often involved in competitive decisionmaking by providing advice to others (such as to other Board members, as Ms. Daley does). Oracle is apparently basing its position on an extremely narrow reading of involvement in competitive decision-making, suggesting it is a question of whether the in-house counsel are “business personnel charged with competitive decision-making.” See Oracle’s Statement, supra. This contrived definition is not only incompatible with the express definition quoted above from the Stipulated Protective Order, but it also reads out the modifier “involvement” from the inquiry entirely, and is nonsensical as the provision applies only to “counsel” and non-counsel business personnel would not even be considered under this provision.

Oracle’s description of Ms. Daley’s job responsibilities is drastically incomplete and fails to include sufficient detail as to many aspects such as details of her representations to the Java Community Process, her participation in the acquisition of Sun, her position as the President and CEO of Sun, her participation on twenty-three boards, and her position as the President and CEO of Art Technology Group, Inc., and Phase Forward, Inc. – all activities that have led to her involvement in competitive decision-making. Instead, Oracle provides only conclusory denials of involvement in competitive decision-making for some, but not all, of these responsibilities. Oracle further fails to provide details as to those reporting to Ms. Daley, directly or through subordinates, including whether they include transactional attorneys. Ms. Daley, Oracle’s General Counsel, is integrally involved in mergers and acquisitions. See, e.g., Big Deals, http://www.law.com/jsp/tal/PubArticleTAL.jsp?id=1202431809384 (last visited May 16, 2011) (listing Ms. Daley as primary “In-house: Corporate” attorney involved in acquisition of Sun Microsystems, Inc.); see also Petra Pasternak, New Oracle GC Gets Initiation M&A Fight, THE RECORDER (Oct. 16, 2007),

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http://www.law.com/jsp/ca/PubArticleCA.jsp?id=900005493477 (last visited May 16, 2011) (stating that Ms. Daley would be “calling the shots” in acquisition of BEA Systems, and noting that due to her promotion “she will no doubt play a much bigger role in overseeing mergers and acquisitions for Oracle”). These statements demonstrate that Ms. Daley is far from just a litigator overseeing litigation. Oracle’s own description states that she is responsible for “advising management” on “all company legal and regulatory matters.” It is difficult to imagine how a General Counsel providing legal advice on all matters could be more involved in competitive decision-making. This is particularly true if she has transactional attorneys reporting to her and is providing advice on these matters to other members of senior management.

Oracle’s description also shows that each of the other three individuals is also plainly involved in competitive decision-making. Deborah Kay Miller “[e]valuate[s] all significant requests for settlement authority for any non-employment claim and make[s] recommendations to senior management” and “[r]eview[s] all settlements of significant claims and of litigation matters.” Matthew Sarboraria performs “review and negotiation of patent license agreements,” “[p]atent threat evaluation, including review and analysis of offers to sell and license patents,” and provides “M&A Support” by “[a]ssist[ing] Oracle’s Corporate Legal group with IP related due diligence.” Andrew Temkin “[i]nvestigate[s] patent threats and indemnification requests,” and “[p]rovides legal advice and support for Oracle’s business lines with respect to customer and product issues.”

Oracle offers no case law or substantive discussion to refute that the limited job description disclosures Oracle provides demonstrate on their face that each of the proposed designees is “involved in competitive decision-making.” The inquiry is not, as Oracle would have it, whether they are “business personnel charged with competitive decision-making.” The relevant inquiry is whether these counsel, in their roles as attorneys, advise others on areas involving competitive decisions. See U.S. Steel Corp v United States, 730 F.2d 1465, 1468 n.3 (Fed. Cir. 1984) (“The phrase [‘competitive decision-making’] would appear serviceable as shorthand for a counsel’s activities, association, and relationship with a client that are such as to involve counsel’s advice and participation in any or all of the client’s decisions (pricing, product design, etc.) made in light of similar or corresponding information about a competitor.”) (emphasis added). Reviews of settlements and making recommendations to senior management, evaluating threats and providing M&A support, and providing legal advice and support for Oracle’s business lines are precisely the types of involvement in competitive decision-making explicitly prohibited by the Stipulated Protective Order.

Oracle’s position as to the meaning of involvement in competitive decision-making in this instance, when it is requesting broad, unfettered access to all of Google’s HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY information, is plainly at odds with its

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position in other cases when it is Oracle’s information at issue. See, e.g., Joint Motion for Entry of Protective Order, Vasudevan Software, Inc. v. International Business Machines Corp., No. 5:09-CV-05897 (N.D. Cal. July 22, 2010), Dkt. 152 (hereinafter “Vasudevan Motion”) (Oracle opposing access to in-house counsel of Plaintiff by citing the following cases: Phoenix Solutions, Inc. v. Wells Fargo Bank, N.A., 254 F.R.D. 568, 580 (N.D. Cal. 2008) (patent prosecution counsel seeking license on behalf of client was a competitive decision maker); Intel Corp. v. Via Technologies, Inc., 198 F.R.D. 525, 530–31 (N.D. Cal. 2000) (finding in-house counsel involved in patent licensing in the context of litigation settlements was competitive decision maker)) (parentheticals in Oracle and IBM’s original brief). As discussed above, each of the four Oracle designees engages in activities the same as, or very similar to, “seeking license,” or being “involved in patent licensing in the context of litigation settlement,” which Oracle has explicitly argued was competitive decisionmaking in trying to restrict access to its own information.

Oracle relies almost exclusively on the Special Master’s ruling in the SAP case, which addressed the question of whether there was “sufficient reason for terminating Ms. Daley’s access to Highly Confidential information” See Report and Recommendations Re: Discovery Hearing No. 3 at 3, Oracle Corp. v. SAP AG, No. 07-1658 (N.D. Cal. Apr. 4, 2008), Dkt. 72. Needless to say, the fact that SAP agreed in the first instance to allow Ms. Daley to have access to its HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY information undoubtedly factored into Judge Legge’s analysis. Further, the information pertaining to Ms. Daley in that report is out of date. For example, the Special Master relied on the fact that “she is not a member of the board,” see id. at 4, but since that determination, Ms. Daley was appointed to the Oracle Financial Services board of directors (as well as 22 other companies). Judge Legge also explicitly relied on his belief that Ms. Daley “has not been a corporate or transactional lawyer.” (Id. at 3.) It does not appear that Oracle disclosed to Judge Legge that in her role as General Counsel Ms. Daley would have both corporate and transactional lawyers reporting to her. Also, Judge Legge’s rationale counsels against access for Mr. Temkin, who is a corporate lawyer. In any event, that analysis is certainly not binding here as each request should be considered in view of the specific facts at the time of the request. See U.S. Steel Corp., 730 F.2d at 1468.

Oracle has fallen far short in demonstrating that it is reasonably necessary for any or all of its designees to have access to all of Google’s HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY. Oracle’s reasons – managing outside counsel, advising management, and engaging in settlement discussions – do not rise to the level of a demonstrated “need.” See Intel Corp. v. VIA Technologies, Inc., 198 F.R.D. at 529 (“The party seeking access [by in-house counsel] must demonstrate that its ability to litigate will be prejudiced, not merely its ability to manage outside litigation counsel.”). None of Oracle’s justifications for access go to prejudice in litigating its case. Oracle has retained two sizeable outside counsel firms with seven outside counsel appearing in the case on behalf of Oracle,

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Morrison | Foerster

The Honorable Donna M. Ryu
May 18, 2011
Page Nine

as well as at least twice that number having actively participated. See Vasudevan Motion at 9 (Oracle citing A. Hirsh, Inc. v. United States, 657 F.Supp. 1297, 1305 (C.I.T. 1987) for support of its position that “in view of retained counsel’s competence, it is not clear how plaintiff’s position will be prejudiced by excluding [in-house] counsel from access”). Oracle has not shown any need for the disclosures it seeks. Oracle does not cite to any prejudice in the ability to litigate its case, and at most suggests a preference or a convenience.

Because Oracle has not shown that the individuals are not involved in competitive decision-making, or that disclosure is reasonable necessary, the burden should not shift to Google, particularly in view of Oracle’s unwillingness to provide requested information that would further demonstrate the potential harm during meet and confer. Nevertheless, both the risk of harm and magnitude of harm to Google is substantial. Oracle has alleged that “Google’s Android competes with Oracle America’s Java as an operating system and software development platform for cellular telephones and other mobile devices.” Amended Complaint at ¶ 12, Dkt. 36 (Oct. 27, 2010). Oracle has sought incredibly broad discovery on virtually every competitive aspect of Google’s business including, e.g., “Google’s business model with respect to Android, including all drafts of any revenue model, marketing strategy, distribution model, costs, licensing strategies, and financial projection relating to Android,” and “Documents relating to communication with any handset manufacturer, other mobile device manufacturer, or mobile operator or carrier relating to any business projections, business model, results, revenues, profits, or costs relating to Android.” These are but two of the one hundred seventy-four requests for production that Oracle has served on Google, which cover innumerable HIGHLY CONFIDENTIAL areas, such as licenses, business plans, board minutes, market analysis, forecasts, etc. Recently Oracle has greatly expanded its damages theories and has requested essentially all of Google’s financial data dating back eleven years, to 2000. The timing of these expansive requests for information dating back to eight years before the first Android device hit the market, coupled with the demand for broad access to four of Oracle’s in-house counsel who are involved in competitive decision-making issues such as mergers and acquisitions, licensing, and settlement valuation, make both the risk of harm and magnitude of harm readily apparent. Oracle’s reliance on a presumption that Oracle’s in-house counsel will endeavor to abide by the Stipulated Protective Order is no answer. In fact, if such a presumption was enough, there would be no need for a distinction between in-house counsel and outside counsel in protective orders such as this one. The existence of this provision and the related case law makes clear that the question is one of inadvertent disclosure. See, e.g., Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1470 (9th Cir. 1992). The risk of inadvertent disclosure by the identified in-house counsel would be acute, as it would be difficult, if not impossible, for Oracle’s in-house counsel to compartmentalize and not reveal or improperly rely on, even if subconsciously, Google HIGHLY CONFIDENTIAL information in providing legal advice to others on issues such a mergers and acquisitions,

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Morrison | Foerster

The Honorable Donna M. Ryu
May 18, 2011
Page Ten

settlements, and licensing. Contrary to Oracle’s assertion that no in-house counsel could qualify under the Protective Order, an in-house litigator who was solely involved in overseeing litigation could qualify, but not those with an interest in litigation who also have many other responsibilities providing advice in the context of competitive decision-making as is the case with the four individuals identified by Oracle.

During the parties’ meet and confer discussions, Oracle was unwilling to provide additional requested information relevant to this inquiry, including the production of documents that have been outstanding for months. If the Court does not agree that this is a clear case of Oracle seeking access by those with involvement in competitive decisionmaking based on its own descriptions, Google requests that the Court compel Oracle to provide complete disclosures as to the job responsibilities of the individuals, organizational charts, and the additional information requested by Google, such as detail as to Ms. Daley’s presentation to the Java Community Process and Mr. Sarboraria’s participation in public panels relating to maximizing intellectual property potential. Google further notes that although Oracle is required by the Stipulated Protective Order to “assess the risk of harm that the disclosure would entail, and suggest any additional means that could be used to reduce that risk,” Oracle has made no good faith effort to do either. Instead, Oracle argues that the “designees’ responsibilities are solely legal,” see supra at 1, and then tautologically concludes that they are not involved in competitive decision-making and thus there is no risk of harm to Google. Oracle’s unwillingness to acknowledge any risk to Google by the disclosure of its most confidential business information to Oracle’s General Counsel is indicative of its extreme and unreasonable position.

For the foregoing reasons, Google respectfully requests that the Court deny Oracle’s request. In the alternative, Google requests that Oracle be required to produce the detailed information requested herein before additional briefing or a hearing takes place. Google does not believe Oracle’s offer to bolster only the selected information it chose to include is sufficient, when Google is aware of many facts (some cited above) that suggest Oracle is in possession of considerable additional information that is very relevant to this inquiry. Oracle should not be able to benefit from withholding that information and disclosing only a selfserving subset.

Respectfully submitted,

MORRISON & FOERSTER LLP

/s/ Michael A. Jacobs
Michael A. Jacobs
Counsel for Plaintiff Oracle America, Inc.

KING & SPALDING LLP
/s/ Scott T. Weingaertner
Scott T. Weingaertner
Counsel for Defendant Google Inc.

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