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Oracle v. Google - What is "competitive decision-making?" - Updated
Thursday, June 02 2011 @ 08:47 PM EDT

One of the unresolved issues in the Oracle v. Google case is whether certain Oracle in-house counsel, including their general counsel, will be given access to documents produced by Google which Google has declared as "HIGHLY CONFIDENTIAL - FOR ATTORNEYS EYES ONLY!"

According to the stipulation, 66 [PDF], entered by the parties and approved by the court, the only Oracle representatives that should have access to those highly confidential Google documents (or vice versa, in the case of highly confidential Oracle documents) are:

  • the Receiving Party’s Outside Counsel of Record in this action;
  • employees of said Outside Counsel of Record to whom it is reasonably necessary to disclose the information for this litigation and who have signed the “Acknowledgment and Agreement to Be Bound;”
  • Up 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,
    3. who has signed the “Acknowledgment and Agreement to Be Bound” (Exhibit A), and
    4. as to whom the procedures set forth in paragraph 7.4(a)(1), below, have been followed; and
  • Experts of the Receiving Party
    1. to whom disclosure is reasonably necessary for this litigation,
    2. who have signed the “Acknowledgment and Agreement to Be Bound” (Exhibit A), and
    3. as to whom the procedures set forth in paragraph 7.4(a)(2), below, have been followed.


However, with respect to "Designated House Counsel" (i.e., in-house counsel), Oracle and Google have not been able to agree as to the meaning of the term "competitive decision-making," despite the fact that it is defined in the stipulation. "Competitive decision-making" is defined in section 7.4(a)(1) of the stipulation 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 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.
Each of the four Oracle in-house counsel have submitted declarations stating why they are not competitive decision-makers:

  • Dorian Daley - 149 [PDF]
  • Deborah K. Miller - 152 [PDF]
  • Matthew Sarboraria - 153 [PDF]
  • Andrew C. Temkin - 154 [PDF]

Of these, the declarations of Dorian Daley, Oracle's general counsel, and Deborah Miller, associate general counsel for litigation, stand out. Noteworthy in Miller's declaration is the following statement

6. Settlements of patent infringement lawsuits typically include a patent license agreement and therefore I review such license agreements when they are a part of a settlement. However, my job does not include drafting patent license agreements, and the only time I review such agreements is in connection with a settlement or a dispute.
So let's see if this makes sense. The parties stipulated that "competitive decision-making" includes "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, . . . or licensing, acquisition or enforcement of intellectual property rights." [emphasis added]

It doesn't say drafting of those agreements. It says ANY decisions regarding contracts or licensing of intellectual property or enforcement of intellectual property. Exactly what part of section 6 of Ms. Miller's declaration does not fall within that scope? And by definition, a decision to enforce a patent is a decision to go after someone who is using your patent without your permission to compete with you, isn't it?

Ms. Daley does not profess to be as close to these licensing and enforcement decisions as Ms. Miller, but she held the position now held by Ms. Miller prior to being elevated to general counsel. So it is hard to imagine that Ms. Daley didn't engage in exactly the same patent infringement settlement activity. This is what Google is focused on in expressing their concerns about these individuals. Ms. Daley again raises the decision in the Oracle v. SAP case where a special master, not a judge, determined that Ms. Daley, as general counsel, was not a competitive decision-maker. (See, 149 - Exhibit C [PDF], the Special Master Report.)

However, as Google pointed out in its comments contained in the May 18th letter to the court [PDF], the SAP case is different in at least two respects. First, the parties had stipulated that Ms. Daley was not a competitive decision-maker, and it was only upon her promotion to general counsel that SAP was seeking reconsideration of that stipulation. Secondly, the special master in that case was not fully informed of the broad scope of Ms. Daley's duties as general counsel.

Finally, in the magistrate's order setting this matter for hearing, the magistrate referred to the seminal case U.S. Steel Corp. v. United States, 730 F.2d 1465, 1468 (Fed. Cir. 1984) on point, quoting:
...[t]he 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.
Again, this reference speaks to ANY advice and participation, not that it must occur in every case, that it be controlling, or that it even be extensive.

It will be interesting to see where the magistrate lands on this issue.

Update Ask, and ye shall receive. The magistrate's order is in, and it looks like Google largely prevailed. General Counsel Dorian Daley is denied access. Counsel Miller and Sarboraria are provided some access but will not be permitted to see contracts with carriers or hardware manufacturers. The jury is still out on counsel Temkin. Here is the magistrates order:

05/31/2011 - 155 - Minute Entry: Discovery Hearing HELD on 5/31/2011 before Magistrate Judge Donna M. Ryu. Plaintiff's Administrative Motion to file Under Seal Exhibits A, b, & D to Declaration of Dorian Daley GRANTED. Plaintiff's request to grant the following Designated House Counsel access to attorneys' eyes only ("AEO") information pursuant to the Protective Order: A. Dorian Daley - DENIED; B. Deborah Kay Miller - GRANTED ACCESS TO AEO INFORMATION, BUT NO ACCESS TO CONTRACTS WITH CARRIERS OR HARDWARE MANUFACTURERS; C. Matthew Sarboraria - GRANTED ACCESS TO AEO INFORMATION, BUT NO ACCESS TO CONTRACTS WITH CARRIERS OR HARDWARE MANUFACTURERS; D. Andrew Temkin - FURTHER INFORMATION REQUIRED. Please see minutes for more particulars. (Date Filed: 5/31/2011). ***Motions terminated: 150 Administrative Motion to File Under Seal Exhibits A, B and D to Declaration of Dorian Daley filed by Oracle America, Inc. (Court Reporter Raynee Mercado.) (ig, COURT STAFF) (Date Filed: 5/31/2011) Modified on 6/1/2011 (ig, COURT STAFF). (Entered: 06/01/2011)


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