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Oracle v. Google - 3rd Oracle In-House Attorney Gets Limited AEO Access
Tuesday, June 07 2011 @ 11:08 PM EDT

A third Oracle in-house lawyer has been granted limited access to Attorneys' Eyes Only materials. You will recall in an earlier ruling the magistrate denied Attorneys' Eyes Only rights to Dorian Daley, Oracle general counsel, and limited the rights of Deborah Miller and Matthew Sarboraria, but the status of Andrew C. Temkin was left for further determination based on supplemental filings.

Oracle filed a supplemental declaration [PDF], a declaration by Temkin, in support of giving him such access rights and providing greater detail about Temkin's activities. Google opposed, asking that he be barred or at least limited in his access, and in the end the judge decided to let Temkin join the other two in-house Oracle lawyers who can access, but subject to limitations. He will be barred from viewing Google carrier and hardware manufacturer contracts designated Attorneys' Eyes Only.

Here's the docket information:

06/01/2011 - 159 - Declaration of Andrew C. Temkin in Support of 145 Letter, 155 Terminate Motion and Deadlines/Hearings,,,,, Discovery Hearing,,,,, Terminate Motions,,,, Supplemental Declaration of Andrew C. Temkin In Support of 145 Oracle's Request for Access to Attorneys' Eyes Only Information in response to 155 Minute Order requesting more information filed byOracle America, Inc.. (Related document(s) 145 , 155 ) (Muino, Daniel) (Filed on 6/1/2011) (Entered: 06/01/2011)

06/01/2011 - 160 - STIPULATION and Proposed Order Regarding Briefing Schedule by Google Inc.. (Baber, Bruce) (Filed on 6/1/2011) (Entered: 06/01/2011)

06/02/2011 - 161 - ORDER REGARDING PROPOSED DAUBERT BRIEFING SCHEDULE re 160 Stipulation filed by Google Inc.. Signed by Judge Alsup on June 2, 2011. (whalc1, COURT STAFF) (Filed on 6/2/2011) (Entered: 06/02/2011)

06/03/2011 - 162 - Letter Brief re 159 Declaration in Support, Response to Supplemental Declaration of Andrew Temkin filed byGoogle Inc.. (Related document(s) 159 ) (Zimmer, Donald) (Filed on 6/3/2011) (Entered: 06/03/2011)

06/06/2011 - 163 - ORDER re 145 Letter filed by Oracle America, Inc. Signed by Magistrate Judge Donna M. Ryu on 6/6/2011. (dmrlc2, COURT STAFF) (Filed on 6/6/2011) (Entered: 06/06/2011)

Here's Oracle's supplemental declaration as text:

MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[email]
MARC DAVID PETERS (Bar No. 211725)
[email]
DANIEL P. MUINO (Bar No. 209624)
[email]
[address, phone, fax]

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

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

Attorneys for Plaintiff
ORACLE AMERICA, INC.

________________________

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

ORACLE AMERICA, INC.,

Plaintiff,

v.

GOOGLE INC.

Defendant.

____________________

SUPPLEMENTAL DECLARATION OF
ANDREW C. TEMKIN IN SUPPORT
OF ORACLE'S REQUEST FOR
ACCESS TO ATTORNEYS' EYES
ONLY INFORMATION

Judge: Honorable Donna M. Ryu

I, Andrew C. Temkin, state:

1. I am an attorney at law, licensed to practice in the State of California and before this Court. I have personal knowledge of the facts stated in this supplemental declaration and could testify competently to such facts if called as a witness.

2. On May 26, 2011, I provided a declaration in support of Oracle's request for access to Attorneys' Eyes Only information in this matter (the "Declaration"). At the May 31, 2011 hearing regarding Oracle's request, I understand that the Court had additional questions concerning my job responsibilities. Accordingly, I provide the following to respond to the Court's inquiries.

3. In the Declaration I stated that "I also assist and advise internal clients with respect to disputes and potential litigation. In this capacity, I represent Oracle in disputes with customers, distributors, and partners. While I evaluate claims for breach of contract against the Company or that the Company may have, I have no responsibility for drafting commercial contracts." [Declaration at ¶ 4.]

4. In the May 18, 2011 correspondence with the Court, Oracle described my duties to include:

  • 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.

  • Counsel the company with respect to miscellaneous legal issues.
I understand that the Court requests additional information regarding these statements.

5. To further clarify the nature of the "commercial disputes with customers" that I handle: Oracle specializes in providing database, middleware, applications, and other software solutions and hardware to its customers. In these business areas, Oracle offers a host of products, such as Oracle Database 11g (database), PeopleSoft (Customer Relationship Management ["CRM'] software suite), Siebel (CRM), E-Business Suite (including enterprise resource planning, CRM, and value chain management), among others. Oracle also offers hardware

2

products such as the Exadata and Exalogic servers as well as provides consulting services to customers in order to implement Oracle products in the customer's environment. To my knowledge, Oracle does not compete with Google in these areas. I do almost all of my work supporting these businesses and so there is no risk of inadvertent use of Google's information in that work because it has nothing to do with the businesses that Google is in.

6. One of my duties as in-house counsel is to handle disputes raised by customers, distributors, and partners relating to the performance of products sold by Oracle or an Oracle acquired company as described above. These disputes pertain to such things as product performance or warranty coverage. The issues tend to deal with the interpretation of contractual provisions or warranty obligations. Generally, the customer, distributor, and/or partner contends that Oracle and/or its products are not meeting obligations under an agreement. My work involves investigating the issues that have been raised, verifying facts, reviewing the applicable agreements, and advising the responsible Oracle personnel with respect to Oracle's obligations and risk. It is this work that is described in the May 18, 2011 letter as "[i]nvestigate and advise management with respect to commercial disputes with customers' and [p]rovide legal advice and support for Oracle's business lines with respect to customer and product issues."

7. In connection with these commercial disputes, I do not make decisions to offer a settlement or other consideration to the customer, distributor, or partner. These decisions are made by different business groups within Oracle. I do negotiate with customers, distributors, and partners regarding the resolution of the dispute and draft settlement agreements. These matters are often resolved without litigation; however some disputes do result in litigation either before or after the Legal Department has engaged. When such litigation arises, my job includes supervising outside counsel. My work on these commercial disputes does not involve "licensing, acquisition, or enforcement of intellectual property rights." Nor does it involve decision-making vis-a-vis competitors as described in Section 7.4(a)(1) of the Stipulated Protective Order. Oracle's relationship with its customers, distributors, or partners in these commercial disputes that I have worked on is as a seller of technology and the other products described above. These

3

disputes do not pertain to Java or any other business areas that would implicate Google's information.

8. In my Declaration, I explained that "I also work on matters where Oracle seeks to obtain payment from customers using its software outside the scope of their licenses, or who fail to pay for their Oracle products or services. These matters have not resulted in litigation." [Declaration ¶ 5.] My work in this regard involves analyzing situations where Oracle may have a claim against a customer, distributor, or partner with respect to the technology and other products described above. In these matters, a business group within the company that is outside of the Legal Department will identify the dispute; I am not involved in the process of identifying disputes. These issues typically deal with customers, distributors, or partners whose use or distribution of Oracle's products exceeds their license rights. These matters also deal with situations where a customer, distributor, or partner has failed to pay Oracle for the use of its products. I do not make the decision to bring any action or proceeding, nor have I worked on any such matter that has resulted in litigation. These decisions would be made by different business groups within the company. I do negotiate with customers, distributors, and partners regarding the resolution of these disputes and I draft applicable settlement agreements. My work in this regard does not involve decision-making vis-a-vis competitors as described in Section 7.4(a)(1) of the Stipulated Protective Order. Oracle's relationship with the customers, distributors, or partners in these matters is as a seller of the technology and other products described above.

10. All of the work described above can be fairly characterized as routine commercial dispute resolution work related to customer and partner transactions. This type of work

3

constitutes a large portion of the Litigation Group's responsibilities and has no relationship whatsoever to the issues in this case or Oracle's competitive position relative to Google or any other company.

11. I am one of the Oracle in-house attorneys responsible for this case. One of my responsibilities will be to attend certain depositions and make rapid reports back to the more senior members of the Oracle in-house team. I will also have responsibility for reviewing certain important documents and reporting to the Oracle in-house team. To enable me to attend depositions and review documents, I will require access to Attorneys' Eyes Only information.

I declare under penalty of perjury that the foregoing is true and correct and that this declaration was executed on June 1, 2011 at Redwood Shores, California.

[signature]
Andrew C. Temkin

4

This makes it sound like this attorney barely does anything that matters much, just low-level stuff, while others make all the important decisions. A question in one's mind might arise, namely, if that is so, why is it so urgent to Oracle to add this lawyer to the attorneys who get to see Attorneys' Eyes Only materials?

Google has concerns, which it has filed in a letter brief, in which they state:

While the supplemental declaration provides additional details that should have been included in Mr. Temkin’s first declaration, it still contains omissions that are of concern to Google. Moreover, while Mr. Temkin attempts to emphasize the decisions that he does not make, he downplays or ignores the more relevant decisions that he does make, such as the terms of negotiated licenses. Finally, Mr. Temkin’s statement of need falls short of the reasonably necessary standard pursuant to the governing case law.
In some respects Google's response may seem to amount to nit-picking, e.g., the references to the omitted duties. But Google wouldn't say that Temkin has omitted materials if they didn't have a basis of some kind for the suspicion. And Google makes a good point when it states:

The ability to attend depositions, “make rapid reports” and review “certain important documents” does not rise to the standard of need with respect to the governing case law, much less any reason to provide highly confidential information to a third in-house lawyer at Oracle. The court has already granted access to two Oracle in-house attorneys, and Oracle has numerous outside counsel who have appeared on its behalf. Mr. Temkin’s declaration provides no assertion that Oracle’s ability to prosecute its case is prejudiced by his lack of access to Attorney’s Eyes Only information.
Google lists some examples of what it feels was omitted. Here's one:

For example, Paragraph 5 of Mr. Temkin’s supplemental declaration appears to be carefully worded to be a true statement but leaves out critical information.Mr. Temkin identifies certain specific products and then notes that “Oracle does not compete with Google in these areas.” (Emphasis added.) He explicitly notes, however, that those specific product areas are “among others,” and fails to address whether those “other” areas include areas of competition with Google. Mr. Temkin further states that he “does almost all of [his] work supporting these businesses,” again apparently referring only to the specific businesses identified, and that “there is no risk of inadvertent use of Google’s information in that work because it has nothing to do with the business that Google is in.” (Emphasis added.) Again, this wording leaves open the possibility that the additional work that he performs supporting other, unnamed businesses is in an area of competition with Google. If Mr. Temkin were able to truthfully say that there is no risk of inadvertent use of Google’s highly confidential information in any of his work, he presumably would have done so.

Google cites another example in paragraph 7, where careful wording seems to indicate to Google that the whole story is not provided. If Google states, he's so uninvolved, why does he even need access? Why is he even working on this case?
Further, his statement of need falls well short of the requirement and, when read in the light of the rest of his declaration, raises the question of why Mr. Temkin would have any need for any involvement in this case, much less have access to highly confidential Google or third party information.
Google asks that because there are two things Oracle has to demonstrate to the judge's satisfaction, that Temkin isn't involved in advising management in areas of competition with Google and that he really needs access.

Google points out that this is Temkin's second opportunity to tell the court what he does in detail, and yet he still has not stated clearly and categorically "whether Mr. Temkin is involved in supporting any area of Oracle’s business in direct competition with Google" and for that reason, Google asks that he "be denied access to Google’s Attorneys’ Eyes Only information" or, failing that, that the restrictions on the other two Oracle in-house attorneys who have access to these materials also be applied to Temkin.

Here's the full text of the Google letter brief:

[King & Spaulding letterhead]

June 3, 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., Civil Action No. 3:10-cv-03561-WHA (N.D. Cal.)
Response to Supplemental Declaration of Andrew Temkin

Dear Judge Ryu:

Pursuant to the Court’s May 31, 2011 Minute Order (Dkt. 155), Google submits this response to the Supplemental Declaration of Andrew C. Temkin (Dkt. 159) filed on June 1 by Oracle America.

While the supplemental declaration provides additional details that should have been included in Mr. Temkin’s first declaration, it still contains omissions that are of concern to Google. Moreover, while Mr. Temkin attempts to emphasize the decisions that he does not make, he downplays or ignores the more relevant decisions that he does make, such as the terms of negotiated licenses. Finally, Mr. Temkin’s statement of need falls short of the reasonably necessary standard pursuant to the governing case law.

For example, Paragraph 5 of Mr. Temkin’s supplemental declaration appears to be carefully worded to be a true statement but leaves out critical information. Mr. Temkin identifies certain specific products and then notes that “Oracle does not compete with Google in these areas.” (Emphasis added.) He explicitly notes, however, that those specific product areas are “among others,” and fails to address whether those “other” areas include areas of competition with Google. Mr. Temkin further states that he “does almost all of [his] work supporting these businesses,” again apparently referring only to the specific businesses identified, and that “there is no risk of inadvertent use of Google’s information in that work because it has nothing to do with the business that Google is in.” (Emphasis added.) Again, this wording leaves open the possibility that the additional work that he performs supporting other, unnamed businesses is in an area of competition with Google. If Mr. Temkin were able to truthfully say that there is no risk of inadvertent use of Google’s highly confidential information in any of his work, he presumably would have done so.

Hon. Donna Ryu
June 3, 2011
Page 2

Similarly, in Paragraph 7, Mr. Temkin focuses on commercial disputes that involve Oracle “as a seller of technology and the other products described above,” and again focuses on “these disputes,” leaving open the question of whether this reference is limited to the products “described above,” or refers to Mr. Temkin’s entire responsibility. In Paragraph 10, he limits his description to “[a]ll of the work described above” as opposed to, for example, all of the work he performs.

This is the second opportunity Mr. Temkin has had to describe his responsibilities in detail and completely. Because the supplemental declaration still fails to state whether Mr. Temkin is involved in supporting any area of Oracle’s business in direct competition with Google, Mr. Temkin should be denied access to Google’s Attorneys’ Eyes Only information.

Mr. Temkin’s self-stated responsibilities demonstrate involvement in competitive decision making as defined in the Stipulated Protective Order as well as by the prevailing case law. For example, paragraph 7 of the supplemental declaration states that Mr. Temkin “negotiate[s] with customers, distributors, and partners regarding the resolution of the dispute and draft[s] settlement agreements.” Mr. Temkin suggests that such activity is not involvement in competitive decision making because he does not “make decisions to offer a settlement or other consideration to a customer, distributor, or partner.” This argument has already been rejected; the nature of Mr. Temkin’s involvement presents concerns and risks of inadvertent disclosure. For example, knowledge of the structure and content of Google licenses and other commercial agreements could provide a competitive advantage and is impossible to compartmentalize when negotiating and structuring a resolution to a dispute.

The Court specifically requested that Mr. Temkin’s declaration set forth the need for him to have access to Google’s Attorneys Eyes Only information. Mr. Temkin’s statements that he will “attend certain depositions” and make “rapid reports back to the more senior members of the Oracle in-house team,” as well as “review[] certain important documents and reporting to the Oracle in-house team,” fall well short of meeting the appropriate standard of need. Indeed, these statements, taken in combination with the rest of Mr. Temkin’s declaration, raises the question of why Mr. Temkin is one of the Oracle in-house attorneys “responsible for this case.” In paragraph 10, Mr. Temkin states that his work constitutes “routine commercial dispute resolution.” If this is in fact the entirety of Mr. Temkin’s job responsibilities and the entirety of his work “has no relationship whatsoever to the issues in this case,” the need for Mr. Temkin to attend depositions and “make rapid reports” back to more senior members is unclear at best.

The ability to attend depositions, “make rapid reports” and review “certain important documents” does not rise to the standard of need with respect to the governing case law, much less any reason to provide highly confidential information to a third in-house lawyer at Oracle. The court has already granted access to two Oracle in-house attorneys, and Oracle has numerous outside counsel who have appeared on its behalf. Mr. Temkin’s declaration provides no assertion that Oracle’s ability to prosecute its case is prejudiced by his lack of access to Attorney’s Eyes Only information. This statement of need is therefore inadequate and is even

2

Hon. Donna Ryu
June 3, 2011
Page 3

less compelling when viewed in the context of the rest of Mr. Temkin’s declaration and the access that has been granted to Ms. Miller and Mr. Sarboraria of Oracle.

For the foregoing reasons, Google respectfully requests that Mr. Temkin be denied access to any of Google’s Attorneys’ Eyes Only information. Mr. Temkin has failed to show that he is not involved in any competitive decision-making with respect to all areas in direct competition with Google. Further, his statement of need falls well short of the requirement and, when read in the light of the rest of his declaration, raises the question of why Mr. Temkin would have any need for any involvement in this case, much less have access to highly confidential Google or third party information.

Should the Court determine that Oracle has met its burden of showing both a lack of involvement in competitive decision making by Mr. Temkin and a need for him to have access, Google requests that Mr. Temkin’s access be limited in the same manner as Mr. Sarboraria and Ms. Miller in view of Mr. Temkin’s involvement in settlement negotiations.

Respectfully submitted,

[signature]
Bruce W. Baber
Counsel for Google Inc.

I think you can see that Google is expressing doubts about the completeness of Mr. Temkin's description of his duties, because if that is all he does, why is he on the list of attorneys responsible for this case?

However, the judge's order states that the parties stipulated to a protective order, one that allows up to five in-house counsel to view such materials, so he does allow Temkin to have access, but with the same limitations as the previous two attorneys are under:

NORTHERN DISTRICT OF CALIFORNIA

_________________

ORACLE AMERICA, INC.,

Plaintiff,

v.

GOOGLE INC.,

Defendant.

_________________

No. C-10-03561 WHA (DMR)

SUPPLEMENTAL ORDER RE ACCESS
TO "ATTORNEYS' EYES ONLY"
INFORMATION

On May 18, 2011, the parties submitted a joint letter regarding Plaintiff Oracle's request that four of its in-house counsel be given access to certain highly sensitive "attorneys' eyes only" ("AEO") information pursuant to the stipulated protective order in this case. [Docket No. 145]. Since such decisions must be determined by the facts "on a counsel-by-counsel basis," In re Deutsche Bank Trust Co. Americas, 605 F.3d 1373, 1378 (Fed. Cir. 2010) (quoting U.S. Steel Corp. v. United States, 730 F.2d 1465, 1468 (Fed. Cir. 1984) (quotation marks omitted)), the Court ordered Oracle to provide further detailed information in the form of declarations by the four attorneys. [Docket No. 146]. On May 31, 2011, the Court conducted a hearing, took oral argument, and ultimately found that one of the designated Oracle attorneys -- General Counsel Dorian Daley -- participates in competitive decision-making and should not be provided access to AEO in this case. [Docket No. 155].

The Court found that two other Oracle lawyers -- Deborah Miller and Matthew Sarboraria -- are in-house litigators who largely do not participate in competitive decision-making and should be given access to most AEO. Id. However, because Ms. Miller and Mr. Sarboraria review license agreements as they arise in disputes, in the course of negotiating such agreements, and/or in the context of case settlements, the Court held that they should be barred from access to AEO in the form of contracts with carriers or hardware manufacturers. Id. This is due to the fact that their involvement in evaluating licensing agreements necessarily affects Oracle's competitiveness in the market.

As noted by the case law, an attorney's agreement to keep certain information confidential can be insufficient to prevent inadvertent disclosure of the information. Even with the best of efforts and intentions, it is not possible to "lock-up trade secrets in [one's] mind, safe from inadvertent disclosure to [one's] employer." See, e.g., Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1471 (9th Cir. 1992); see also In re Deutsche Bank, 605 F.3d at 1378 (noting that it can be "humanly impossible" to control inadvertent disclosure by in-house counsel of "extremely potent" confidential information (quotation marks omitted)). Notwithstanding Ms. Miller’s and Mr. Sarboraria’s agreement to treat Google’s AEO information in the strictest confidence, they nevertheless may be affected by what they see. Having access to Google’s third party agreements may well impact their approach in crafting Oracle’s licensing agreements; barring them from access to such documents is a reasonable means to avoid that risk.

With respect to Oracle designated in-house counsel Andrew Temkin, the Court held that it needed further information to evaluate whether he should be provided access to AEO materials. [Docket No. 155]. Oracle subsequently filed Mr. Temkin's supplemental declaration. [Docket No. 159]. Google filed a responsive letter brief. [Docket No. 162]. The Court has reviewed the parties' supplemental materials and now finds that, as with Ms. Miller and Mr. Sarboraria, Mr. Temkin is an in-house litigator who, for the most part, does not participate in competitive decision-making. However, because of his involvement in reviewing and negotiating license agreements, he also should be barred from carrier and hardware manufacturer contracts that have been designated as AEO.

Defendant argues that Plaintiff has not met its burden of establishing the particular need for Mr. Temkin to view AEO information. Defendant directs the Court to the analysis in Intel Corp. v. Via Techs., Inc., 198 F.R.D. 525, 529 (N.D. Ca. 2000), and argues that "[n]o demonstration of specialized knowledge has been made and [the proposed attorney's] limited experience fails to support any claim that [the lawyer] is indispensible to the litigation." However, the parties' stipulation requires a far more modest showing by the party seeking access to AEO by Designated House Counsel. That party must "set forth in detail the reasons why the disclosure to Designated House Counsel ... is reasonably necessary." [Docket No. 66 (Stipulated Protective Order) ¶ 7.4(c)]. Here, Plaintiff has explained that Mr. Temkin requires access to AEO because he is one of the in-house attorneys responsible for the case, that he will be attending certain depositions and making rapid reports to more senior members of the in-house team, and also will be reviewing and reporting on certain documents. Although Oracle has retained a host of able outside counsel to represent its interests, it is understandable that Oracle also intends to rely on a handful of trusted members of its in-house team to provide oversight, advice, and guidance in this complex patent case. Indeed, the stipulated protective order itself contemplates that each party may designate up to five in-house counsel to view AEO materials. Id. ¶ 7.3(b).

In sum, after conducting a counsel-by-counsel and case-specific evaluation, the Court finds that three of the four Designated House Counsel named by Oracle should be provided access to AEO information pursuant to the stipulated protective order, subject to the limitations set forth above.

Be careful what you stipulate to. However, it is certainly possible that Google knew Temkin would get access, and nevertheless opposed strongly to make sure that he would be limited in his access, which is what has happened.

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