decoration decoration
Stories

GROKLAW
When you want to know more...
decoration
For layout only
Home
Archives
Site Map
Search
About Groklaw
Awards
Legal Research
Timelines
ApplevSamsung
ApplevSamsung p.2
ArchiveExplorer
Autozone
Bilski
Cases
Cast: Lawyers
Comes v. MS
Contracts/Documents
Courts
DRM
Gordon v MS
GPL
Grokdoc
HTML How To
IPI v RH
IV v. Google
Legal Docs
Lodsys
MS Litigations
MSvB&N
News Picks
Novell v. MS
Novell-MS Deal
ODF/OOXML
OOXML Appeals
OraclevGoogle
Patents
ProjectMonterey
Psystar
Quote Database
Red Hat v SCO
Salus Book
SCEA v Hotz
SCO Appeals
SCO Bankruptcy
SCO Financials
SCO Overview
SCO v IBM
SCO v Novell
SCO:Soup2Nuts
SCOsource
Sean Daly
Software Patents
Switch to Linux
Transcripts
Unix Books
Your contributions keep Groklaw going.
To donate to Groklaw 2.0:

Groklaw Gear

Click here to send an email to the editor of this weblog.


To read comments to this article, go here
Oracle v. Google - Last Minute Discovery Activity
Wednesday, August 17 2011 @ 09:00 AM EDT

The clock on discovery is winding down in Oracle v. Google, so not surprisingly there has been a flurry of activity in the last few days, most of it having to do with the now famous Lindholm non-email that was unintentionally disclosed by Google to Oracle, then intentionally disclosed by Oracle to the court, then requested by Google to be shoved back in the box, and so on.

Google is seeking to assure that the non-email (it was a draft that was never sent) is not before the court, but they are fighting an uphill battle. And Oracle, having gamed the system and declared the document to be public, is trying to make that hill as steep as possible.

The last thing Google requested was an in camera (in chambers) review by the magistrate, the purpose of which is to allow the magistrate to make a determination of which position to adopt without placing the document officially before the court and the public. The magistrate granted that request 286 [PDF].

Next up is a fight over whether Dipchand Nishar of Google will be deposed for two hours versus four hours. Yes, the joint letter 288 [PDF] to the magistrate covers a lot of other ground with some very incendiary accusations by Oracle, but the bottom line is the dispute only involves the length of the deposition. The magistrate ended up splitting the difference and granted Oracle 289 [PDF] three hours for the deposition.

Then there is the fight over whether Google would provide someone to testify as to Google's awareness of Sun's intellectual property rights. The parties filed another joint letter 290 [PDF] on this topic. However, once again, while Oracle makes all sorts of bombastic claims, this is really not a dispute about whether a witness will be produced, only about what can be covered in the deposition. Oracle clearly wants to go on a fishing expedition about intellectual property not asserted in this case, and Google wants to limit the questions to only the intellectual property asserted in the case. In the end the magistrate sided with Google in her order. 291 [PDF]

We have another joint letter 296 [PDF] to the magistrate, this one about "Oracle’s Request for Non-Mobile Data and Projections." This is an argument over the amount and nature of additional data Google may need to provide with respect to non-mobile financial information. This one has not been decided, yet.

Finally, we have a series of declarations, three from Google (299 [PDF], 300 [PDF], and 301 [PDF]) and one from Oracle (305 [PDF]) related to the production of the Lindholm emails. In the first from Google we get to hear from Tim Lindholm first-hand what was going on. In it we learn that he was asked by Google legal counsel to assist in trial preparation. In the process he was working on an email memorandum that would, in its completed form, constitute attorney work-product. In the process of his drafting that memorandum, the Google system performed a series of auto-saves on incomplete versions that were never sent. He also references one document cited by Oracle as being totally unrelated to these drafts or the ultimate email memo he actually sent.

Next we hear from Kristin Zmrhal of Google, the project manager of discovery support. Ms. Zmrhal was responsible for gathering and herding the Google electronic documents production. From her we learn that Google scanned some 97 million documents, actually reviewed some 11 million documents, and ultimately produced some 3.7 million documents encompassing some 19 million pages. It is little wonder that some incomplete documents that should not have been produced slipped through the system.

The last declaration from Google is from former Google legal counsel, Ben Lee. He simply recites how he engaged Tim Lindholm to assist him and that he surpervised Mr. Lindholm's work throughout the process.

The Oracle declaration is from Boies Schiller partner, Fred Norton. In it he recites the history of the production of the Lindholm emails from Oracle's perspective. I note that he repeats the erroneous statement, previously clarified, that Judge Alsup has already ruled the end product email from Lindholm as not subject to privilege. No real surprises in the Norton declaration.

So now we wait to hear from the magistrate.

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

Oracle v. Google Docket Update

282 - Filed and Entered: 08/09/2011
Order
Docket Text: Order by Magistrate Judge Donna M. Ryu granting 274 Administrative Motion to File Under Seal.(dmrlc2, COURT STAFF) (Filed on 8/9/2011) (Entered: 08/09/2011)

283 - Filed and Entered: 08/09/2011
Order
Docket Text: Order by Magistrate Judge Donna M. Ryu granting 276 Administrative Motion to File Under Seal.(dmrlc2, COURT STAFF) (Filed on 8/9/2011) (Entered: 08/09/2011)

284 - Filed and Entered: 08/09/2011
Sealed Document
Docket Text: DOCUMENT E-FILED UNDER SEAL re 282 Order on Administrative Motion to File Under Seal Joint Letter regarding Nishar Deposition by Oracle America, Inc.. (Holtzman, Steven) (Filed on 8/9/2011) (Entered: 08/09/2011)

285 - Filed and Entered: 08/09/2011285
Sealed Document
Docket Text: DOCUMENT E-FILED UNDER SEAL re 283 Order on Administrative Motion to File Under Seal Joint Letter Re Awareness of Sun IP Rights by Oracle America, Inc.. (Muino, Daniel) (Filed on 8/9/2011)(Entered:08/09/2011)

286 - Filed and Entered: 08/09/2011286
Order
Docket Text: ORDER requesting supplemental information re 277 Letter filed by Oracle America, Inc. Signed by Magistrate Judge Donna M. Ryu on 8/9/2011. (dmrlc2, COURT STAFF) (Filed on 8/9/2011) (Entered: 08/09/2011)

287 - Filed and Entered: 08/09/2011
Notice of Appearance
Docket Text: NOTICE of Appearance by Wendy Michelle Mantell for Defendant Google Inc. (Mantell, Wendy) (Filed on 8/9/2011) (Entered: 08/09/2011)

288 - Filed and Entered: 08/10/2011
Joint Letter to Magistrate
Docket Text: Letter from Steven C. Holtzman & Daniel Purcell Joint Letter to Magistrate Judge Ryu Regarding Nishar Deposition. (Holtzman, Steven) (Filed on 8/10/2011) (Entered: 08/10/2011)

289 - Filed and Entered: 08/10/2011
Order
Docket Text: ORDER re 288 Letter filed by Oracle America, Inc. Signed by Magistrate Judge Donna M. Ryu on 8/10/2011. (dmrlc2, COURT STAFF) (Filed on 8/10/2011) (Entered: 08/10/2011)

290 - Filed and Entered: 08/10/2011
  Joint Letter to Magistrate
Docket Text: Letter from Daniel P. Muino & Daniel Purcell Joint Letter to Magistrate Judge Ryu Regarding Awareness of Sun IP Rights [REDACTED]. (Muino, Daniel) (Filed on 8/10/2011) (Entered: 08/10/2011)

291 - Filed and Entered: 08/10/2011
  Order
Docket Text: ORDER re 290 Letter filed by Oracle America, Inc. Signed by Magistrate Judge Donna M. Ryu on 8/10/2011. (dmrlc2, COURT STAFF) (Filed on 8/10/2011) (Entered: 08/10/2011)

292 - Filed and Entered: 08/10/2011
Administrative Motion
Docket Text: Administrative Motion to File Under Seal Parties' Joint Letter Regarding Non-Mobile Data filed by Oracle America, Inc.. (Norton, William) (Filed on 8/10/2011) (Entered: 08/10/2011)

293 - Filed and Entered: 08/11/2011
Transcript of Proceedings
Docket Text: Transcript of Proceedings held on July 21, 2011, before Magistrate Judge Donna M. Ryu. Release of Transcript Restriction set for 11/9/2011. (Skillman, Diane) (Filed on 8/11/2011) (Entered: 08/11/2011)

294 - Filed and Entered: 08/11/2011
Order
  Docket Text: Order by Magistrate Judge Donna M. Ryu granting 292 Administrative Motion to File Under Seal.(dmrlc2, COURT STAFF) (Filed on 8/11/2011) (Entered: 08/11/2011)

295 - Filed and Entered: 08/11/2011
  Document Filed Under Seal
Docket Text: DOCUMENT E-FILED UNDER SEAL re 294 Order on Administrative Motion to File Under Seal Parties' Joint Letter Regarding Non-Mobile Data by Oracle America, Inc.. (Norton, William) (Filed on 8/11/2011) (Entered: 08/11/2011)

296 - Filed and Entered: 08/11/2011
  Letter Regarding Non-Mobile Data
Docket Text: Letter Regarding Non-Mobile Data (REDACTED). (Norton, William) (Filed on 8/11/2011) (Entered: 08/11/2011)

297 - Filed and Entered: 08/12/2011
  Motion to Redact
Docket Text: MOTION to Redact 293 Transcript, Google Inc.'s Notice of Motion and Motion to Redact and Seal Portions of Hearing Transcript; Memorandum of Points and Authorities in Support Thereof filed by Google Inc.. (Attachments: # 1 Proposed Order)(Van Nest, Robert) (Filed on 8/12/2011) (Entered: 08/12/2011)

298 - Filed and Entered: 08/12/2011
Affidavit in Support of Motion to File Under Seal
Docket Text: AFFIDAVIT in Support of Google, Inc's Administrative Motion to File Under Seal Portions of the Parties' Joing Letter (Dkt. No. 280 ) filed by Oracle America, Inc.. (Attachments: # 1 Proposed Order)(Holtzman, Steven) (Filed on 8/12/2011) Modified on 8/15/2011 (wsn, COURT STAFF). (Entered: 08/12/2011)

299 - Filed and Entered: 08/15/2011
Declaration of Tim Lindholm
Docket Text: Declaration of Tim Lindholm in Support of 277 Letter, 286 Order Requesting Supplemental Information filed byGoogle Inc.. (Related document(s) 277 , 286 ) (Van Nest, Robert) (Filed on 8/15/2011) (Entered: 08/15/2011)

300 - Filed and Entered: 08/15/2011
  Declaration of Kristin Zmrhal
Docket Text: Declaration of Kristin Zmrhal in Support of 277 Letter, 286 Order Requesting Supplemental Information filed by Google Inc.. (Related document(s) 277 , 286 ) (Van Nest, Robert) (Filed on 8/15/2011) (Entered: 08/15/2011)

301 - Filed and Entered: 08/15/2011
Declaration of Benjamin Lee
Docket Text: Declaration of Benjamin Lee in Support of 277 Letter, 286 Order Requesting Supplemental Information filed byGoogle Inc.. (Related document(s) 277 , 286 ) (Van Nest, Robert) (Filed on 8/15/2011) (Entered: 08/15/2011)

302 - Filed and Entered: 08/15/2011
Notice of Appearance
Docket Text: NOTICE of Appearance by Kenneth Alexander Kuwayti (Kuwayti, Kenneth) (Filed on 8/15/2011) (Entered: 08/15/2011)

303 - Filed and Entered: 08/15/2011
  Notice of Appearance
Docket Text: NOTICE of Appearance by Benjamin Andrew Petersen (Petersen, Benjamin) (Filed on 8/15/2011) (Entered: 08/15/2011)

304 - Filed and Entered: 08/15/2011
Administrative Motion
  Docket Text: Administrative Motion to File Under Seal Portions of the Declaration of Fred Norton In Support of Oracle America, Inc.'s Motion to Compel Production of Documents filed by Oracle America, Inc.. (Norton, William) (Filed on 8/15/2011) (Entered: 08/15/2011)

305 - Filed and Entered: 08/15/2011
Declaration of Fred Norton
Docket Text: Declaration of Fred Norton in Support of 277 Letter, 286 Order Requesting Supplemental Information filed by Oracle America, Inc.. (Attachments: # 1 Exhibit A through W)(Related document(s) 277 , 286 ) (Norton, William) (Filed on 8/15/2011) (Entered: 08/15/2011)

***********

Document 286

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA

ORACLE AMERICA, INC.,
Plaintiff,
v.
GOOGLE, INC.,
Defendant.

No. C-10-03561-WHA (DMR)

ORDER FOR SUPPLEMENTAL
INFORMATION RE PARTIES’ JOINT
DISCOVERY LETTER OF AUGUST 5,
2011 [DOCKET NO. 277]

After reviewing the parties’ joint discovery letter of August 5, 2011 [Docket No. 277] (“Letter”) and other relevant documents, it is hereby ORDERED that Defendant shall lodge, and not file, with the court by August 15, 2011 for in camera review all versions of “the Lindholm document” discussed in the Letter. (See Letter at 1, 2 n.1.) It is further ORDERED that the parties shall file with the court no later than August 15, 2011 sworn declarations providing factual, and not legal, information that each party believes relevant to the alleged privileged status of the Lindholm documents; and it is further ORDERED that no later than August 19, 2011 the parties shall file with the court sworn declarations responding factually -- not legally -- to the opposing party’s August 15 submission.

IT IS SO ORDERED.

Dated: August 9, 2011

DONNA M. RYU
United States Magistrate Judge


Document 288

Boies, Shiller & Flexner Letterhead

August 5, 2011

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

Re: Oracle America, Inc. v. Google Inc., No. 3:10-CV-03561-WHA (N.D. Cal.)

Dear Judge Ryu:

Oracle America, Inc. (“Oracle”) requests reconsideration of the Court’s July 21, 2011 order denying Oracle’s request for permission to depose Mr. Dipchand Nishar for up to four hours. For the reasons set forth below, reconsideration is warranted under Local Rule 7.9 and the deposition of Mr. Nishar should proceed immediately. Counsel for Oracle and Google conferred on August 4 and 5, and Google has indicated that it is willing to agree to have Mr. Nishar deposed, but Oracle and Google have been unable to reach any agreement on the appropriate amount of time for that deposition, and therefore seek relief from the Court.

Oracle Statement

On July 28, 2011, Google’s counsel submitted a letter to the Court acknowledging that he had misrepresented the nature of Mr. Nishar’s responsibilities during the July 21 hearing on Oracle’s request for permission to depose Mr. Nishar and three others. Counsel wrote: “I am writing to correct a portion of my statement so the record is clear. Prior to becoming the senior director for products in the Asia/Pacific region, Mr. Nishar was in charge of Google’s non- Android mobile business, roughly in the period from 2005-2007. However, he had no responsibility for Android itself, and played only a minor role in the negotiations between Google and Sun over Android.” (Docket No. 242.)

Google counsel’s July 28 letter corrects one earlier misrepresentation to the Court, but repeats another. Further review of documents produced by Google – including hundreds of emails sent or received by Mr. Nishar that were not produced by Google until after the July 21 hearing – makes clear that, contrary to counsel’s renewed representation, Mr. Nishar played more than a “minor role in the negotiations between Google and Sun over Android.” These negotiations are a key issue in the case, given Judge Alsup’s ruling that they that form the “starting point” of the damages analysis.

Reconsideration of the Court’s order declining to permit Oracle to depose Mr. Nishar is appropriate based on counsel’s misrepresentation and these newly-produced documents. Oracle

The Honorable Donna M. Ryu
August 5, 2011
Page 2 of 6

should be allowed to depose this important witness. The relevant documents include the following:1

[REDACTED]

_________________

1 We have marked with an asterisk all documents that Google produced on or after July 21, the date of the hearing on Oracle’s request for permission to depose Mr. Nishar and three others. We did not specifically identify the other documents discussed in this letter in our previous letter given the limited space in which to cover requests for the depositions of four different employees. Those documents are relevant here in light of counsel’s representation that Mr. Nishar only played a “minor” role in the negotiations between Sun and Google, which is contrary to the evidence.

The Honorable Donna M. Ryu
August 5, 2011
Page 3 of 6

[REDACTED]

The Honorable Donna M. Ryu
August 5, 2011
Page 4 of 6

[REDACTED]

Mr. Nishar also authored and sent a number of strategy documents that confirm the importance of Android to Google. [REDACTED]

Since the hearing on July 21, Oracle has received more than 700,000 additional documents from Google, including hundreds of documents referring to Mr. Nishar and which confirm his involvement in some of the key issues in this case, including the negotiations that took place between Sun and Google and the formulation of Google’s strategy for Android and its mobile business.2 Reconsideration is warranted under Local Rule 7.9 based on (1) Google counsel’s correction of his prior misstatement to the Court; (2) Google counsel’s continued mischaracterization of Mr. Nishar’s role; and (3) the newly-produced documents. These are new facts that Oracle learned only after the Court issued its order, and thus in the exercise of reasonable diligence, Oracle could not have presented them at the time of its original motion.

Earlier today, after Oracle sent a draft letter to Google’s counsel setting out the facts stated above, Google wrote that it would not oppose this motion if Oracle would agree to limit the deposition to just two hours. Oracle offered to limit the deposition to four hours, and Google refused. The parties were unable to reach an agreement on this issue, and the one remaining issue in dispute is therefore the length of Mr. Nishar’s deposition. Google no longer opposes Oracle’s request to depose Mr. Nishar – the only dispute is whether that deposition should go for two hours (Google’s request) or four hours (Oracle’s request).

Seeking to limit the deposition to two hours, Google’s counsel again tries to minimize Mr. Nishar’s relevance, arguing that he was only “periodically kept [ ] informed” by his superiors, and that any of Mr. Nishar’s knowledge “dates from the middle of last decade.” The first assertion is clearly undercut by the documentary evidence, including the documents described above. The second assertion is exactly the point: Mr. Nishar’s testimony relates to the negotiations between Sun and Google that took place in 2005 and 2006, which Judge Alsup has specifically held are of core significance both with respect to the issue of Google’s willful infringement and the calculation of damages. There are a substantial number of documents, and Oracle wants to ensure that it has sufficient time to cover them with Mr. Nishar.

________________

2 Oracle does not contend that Google purposefully withheld these documents until after the July 21 hearing in order to prevent Oracle from identifying them at that hearing. The production of these documents simply confirms that there are new facts that Oracle learned after the hearing that warrant reconsideration.

The Honorable Donna M. Ryu
August 5, 2011
Page 5 of 6

Oracle respectfully requests that the Court reconsider its prior decision and permit Oracle to depose Mr. Nishar about these documents and the subjects to which they relate for up to four hours. To the extent Oracle can complete the deposition in less time, it will. Google’s continued misrepresentations regarding Mr. Nishar’s role should not be permitted to prevent discovery of relevant evidence from him.

Google Statement

Google hasn’t “misrepresented” any fact about Dipchand Nishar or his involvement in Google’s negotiations regarding Sun. Mr. Nishar had no involvement in any technical issue regarding Android and was not responsible for negotiating with Sun regarding a potential business partnership respecting Android. Andy Rubin was the lead on all negotiations, and in fact Oracle witnesses have repeatedly confirmed at deposition that nearly all, if not all, of Google’s discussions with Sun regarding Android were handled by Mr. Rubin alone.

The fact that Mr. Nishar was copied on emails concerning internal Google strategy in negotiating with Sun does not suggest that he had any significant role in either the negotiations themselves or Google’s internal strategy sessions regarding those negotiations. Nothing in any of the documents Oracle cites suggests, much less proves, that Mr. Nishar was a decisionmaker with respect to any aspect of the Sun-Google negotiations. Most of them show nothing more than that his superiors at Google periodically kept him informed of the status of negotiations. Even viewed most favorably to Oracle, the documents show only that Mr. Nishar occasionally offered his opinions regarding discrete issues regarding Android. None of this reveals any more than a minor role for Mr. Nishar in these negotiations.

Further, Oracle’s attempt to make something of the fact that Google produced documents relevant to Mr. Nishar after the July 21, 2011 hearing is groundless bomb-throwing. This is a massive case where both sides have produced millions of pages of documents. The deadline for document production was July 29, 2011—eight days after the discovery hearing—and both parties produced many thousands of pages, relating to all the key witnesses in this case, in the days immediately preceding the cutoff. Oracle’s suggestion that Google withheld Mr. Nishar’s documents until after the July 21, 2011 hearing is baseless—just like its repeated use of the word “misrepresent” to describe Google’s accurate description of Mr. Nishar’s minimal role in negotiations with Sun.

The Honorable Donna M. Ryu
August 5, 2011
Page 6 of 6

That said, Google offered to resolve this dispute by agreeing that Oracle may depose Mr. Nishar for two hours on the two topics relevant to Oracle’s request: (1) Google’s mobile strategy; and (2) Google’s discussions with Sun. This approach is entirely consistent with the approach this Court took regarding the Lindholm, Lee, and Page depositions, where the Court imposed a two-hour limit and confined the examination to specified topics. Oracle accepted the offer with respect to scope, but insisted on four hours. Google believes that four hours is excessive, given that Oracle is already well over the deposition limit imposed by Judge Alsup and that Mr. Nishar is a third-party witness whose relevant information, to the extent he has any, dates from the middle of last decade. If the Court is inclined to order a deposition of Mr. Nishar, Google would not oppose a two-hour deposition on the specified topics.

Respectfully submitted,

BOIES, SCHILLER AND FLEXNER LLP
By: /s/ Steven C. Holtzman
Steven C. Holtzman
Attorneys for Plaintiff
ORACLE AMERICA, INC

KEKER & VAN NEST LLP
By: /s/ Daniel Purcell
Daniel Purcell
Attorneys for Defendant
GOOGLE INC.

I, Steven C. Holtzman, have obtained Mr. Daniel Purcell’s concurrence to file this document on his behalf.

Dated: August 5, 2011

BOIES, SCHILLER & FLEXNER LLP
By: /s/ Steven C. Holtzman
Steven C. Holtzman
Attorneys for Plaintiff
ORACLE AMERICA, INC.


Document 290

Morrison - Foerster Letterhead

August 5, 2011

The Honorable Donna M. Ryu
U.S. District Court - Northern District of California
1301 Clay Street, Courtroom 4, 3rd floor
Oakland, California 94612

Re: Oracle America, Inc. v. Google Inc., No. 3:10-CV-03561-WHA (N.D. Cal.)

Dear Judge Ryu:

Oracle brings this motion to compel defendant Google to provide testimony regarding its awareness of intellectual property rights belonging to Sun Microsystems (and now Oracle) pertaining to Java. This information is indisputably relevant to Oracle’s claim of willful infringement, but Google improperly blocked discovery of these facts by invoking the attorney-client privilege.

The attorney-client privilege protects communications conveying legal advice, not facts. The facts concerning the dates and circumstances under which Google became aware of the intellectual property rights at issue are not privileged and are subject to discovery. Indeed, in a case earlier this year, Magistrate Grewal observed that in cases alleging willful infringement, such information is “routinely” sought and provided. Vasudevan Software, Inc. v. IBM Corp., No. C 09-05897 RS (PSG), 2011 U.S. Dist. LEXIS 47764, at *9 (N.D. Cal. Apr. 27, 2011).

Oracle properly requested a Rule 30(b)(6) witness on the topic of Google’s awareness of the intellectual property rights at issue in this case. But at that deposition, Google refused to allow the witness to provide any 30(b)(6) testimony on this topic, claiming that all of the information relating to Google’s awareness of Sun/Oracle’s intellectual property rights was privileged. This is not the first time Google has wrongly tried to use the privilege to frustrate discovery on this issue. As the Court recently held, Google improperly claimed privilege over a draft email directed to this same witness recognizing Google’s need to negotiate a license for Java. (ECF Nos. 230 at 3, 255.)

The witness was also not properly prepared, and conceded he never checked if anyone outside Google’s legal department was aware of the Sun intellectual property rights, even though numerous Google employees previously worked at Sun, including Eric Schmidt — Sun’s former CTO — and four inventors of the patents at issue here.

BACKGROUND FACTS

Oracle served Google with its 30(b)(6) notice on July 13, 2011. Topic 12 was:

Google’s awareness of Sun Microsystems’s (now Oracle’s) Java intellectual property, including any risk of infringement by Android

The Honorable Donna M. Ryu
August 5, 2011
Page Two

and any discussion concerning the need to obtain a license from Sun Microsystems (now Oracle).

Google’s designated 30(b)(6) witness for Topic 12 was Andy Rubin, the Vice- President of Android, who testified on July 27, 2011. (30(b)(6) Tr. at 5:9-6:1.) Mr. Rubin was permitted to give some testimony during his individual deposition earlier that same day regarding his personal knowledge of Sun’s Java intellectual property rights, but counsel repeatedly instructed him not to answer on privilege grounds any questions about Google’s review of the patents or interactions with counsel. (See, e.g., Rubin Tr. at 19:20-21:1, 25:1- 27:10, 33:8-35:23, 36:14-38:9, 108:20-109:18, 265:25-268:16.) When it came to the 30(b)(6) portion of the deposition, Google refused to permit Mr. Rubin to provide any testimony whatsoever. Google’s counsel instructed Mr. Rubin not to answer even whether he had inquired if Google’s legal team had any awareness of Sun’s intellectual property rights. (30(b)(6) Tr. at 6:7-13.) Mr. Rubin followed that instruction in response to a followup question about Google’s awareness of the Sun intellectual property rights:

[REDACTED] (Id. at 8:21-9:15.)

[REDACTED] (Id. at 9:16-21.)

In fact, notwithstanding this blanket assertion of privilege, Mr. Rubin was not prepared to testify as to the awareness of individuals outside of the legal department with regard to the Sun intellectual property rights.

[REDACTED] (See id. at 6:14-17.)

After the deposition, Oracle met and conferred with Google, citing to the recent Vasudevan Software decision and other authority, and asking Google to make Mr. Rubin or another witness available to provide testimony on Topic 12. Google refused.

The Honorable Donna M. Ryu
August 5, 2011
Page Three

ARGUMENT

I. GOOGLE’S AWARENESS OF SUN/ORACLE’S INTELLECTUAL PROPERTY RIGHTS IS DIRECTLY RELATED TO WILLFULNESS.

It is beyond dispute that because Oracle is alleging willful infringement Google’s awareness of the Sun intellectual property rights is relevant.

In the patent context, “[d]etermination of willfulness is made on consideration of the totality of the circumstances….” Knorr-Bremse Systeme Fuer Nutzfahrzeuge GMBH v. Dana Corp., 383 F.3d 1337, 1342-43 (Fed. Cir. 2004) (en banc) (citations omitted). Willfulness is measured by a standard of “objective recklessness,” and ”whether the accused infringer knew or should have known “that its actions constituted infringement of a valid patent” is part of that inquiry. In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007). Google claims below that its knowledge of Sun’s Java intellectual property is “wholly irrelevant” to willfulness. Google is wrong, and cites excerpts from the Court’s order regarding the basis for computing damages entirely out of context. Oracle is not restricted under Rule 26 to taking discovery of Google’s knowledge of the seven specific patents only. Google’s knowledge of Sun’s Java intellectual property rights is clearly probative of whether Google knew or should have known of the patents at issue, and is reasonably calculated to lead to admissible evidence. And Google’s decision to “push[] home with Android” without taking a license, despite knowledge of Sun’s extensive Java intellectual property rights, is part of the “totality of circumstances” establishing recklessness. (See ECF No. 210 (court questions for damages hearing).)

Knowledge is similarly relevant, although not required, for a finding of willful copyright infringement, which, in the Ninth Circuit, is defined as acting “with knowledge that [one’s] conduct constitutes copyright infringement.” Dolman v. Agee, 157 F.3d 708, 715 (9th Cir. 1998) (upholding finding of willfulness based on defendant’s continued infringement when he knew there was a question as to copyright ownership).

II. THE DATE AND CIRCUMSTANCES UNDER WHICH GOOGLE BECAME AWARE OF SUN/ORACLE’S INTELLECTUAL PROPERTY RIGHTS ARE NOT PRIVILEGED.

It is equally clear that Google cannot block discovery of the date and circumstances relating to when it became aware of the intellectual property rights at issue by asserting the attorney client privilege. Google implicitly acknowledges this. While the privilege was the basis for the deponent’s refusal to answer, Google abandons its privilege argument here.

The attorney-client privilege protects confidential communications seeking legal advice, not facts. Upjohn, the Supreme Court’s seminal case on privilege, highlights this critical distinction, holding that, “[t]he privilege only protects disclosure of communications; it does not protect disclosure of the underlying facts by those who communicated with the attorney.” Upjohn Co. v. United States, 449 U.S. 383, 395-96 (1981) (emphasis added). The

The Honorable Donna M. Ryu
August 5, 2011
Page Four

ARGUMENT

date and circumstances under which Google became aware of Sun/Oracle’s intellectual property rights are facts it must disclose.

Intervet, Inc. v. Merial Ltd., 256 F.R.D. 229 (D.D.C. 2009). In Intervet, the plaintiff served an interrogatory and 30(b)(6) notice asking the defendant to identify the dates on which it first became aware of the patent, the persons who became aware of it, and to “explain the circumstances under which the ’601 patent came to Intervet’s attention.” Id. at 231, 233. The defendant provided the date it became aware of the patent— more information than Google has provided—but, like Google, refused to provide anything further, claiming the remaining information was privileged because its in-house attorney was the person most knowledgeable about it. Id. at 231.

The court squarely rejected this argument. It noted that, “information about how and when” a defendant becomes aware of a patent is “highly relevant” to the issue of willfulness. Id. at 232. Citing Upjohn, the court found that the date the defendant became aware of the patent and the circumstances under which it became aware were facts that were not protected by the privilege, and that what the attorney “knew as an objective fact is not privileged merely because it happened that her legal advice was ultimately sought about that fact.” Id. The court ordered the defendant to, “at a minimum,” supplement its response to include the names of the persons who first discovered the patent, the date “when these discoveries were made,” and to “describe the circumstances under which the discovery was made, including, if applicable, that the patent was discovered by an attorney for Intervet.” Id. at 233. The defendant was also ordered to produce a 30(b)(6) witness to testify fully on these topics

Magistrate Grewal cited Intervet with approval in Vasudevan Software, noting:

[W]hen willfulness has been alleged in a patent infringement case, plaintiffs routinely seek information about the date and circumstances by which a defendant learned about a patent. In such circumstances, “the facts about the discovery [of the patent] are not in themselves protected by the attorney-client privilege” and a defendant is obligated to provide the dates of the discovery and the circumstances under which the discovery was made.

Vasudevan Software, 2011 U.S. Dist LEXIS 47764, at *9 (citing Intervet, 256 F.R.D. at 231-34). Magistrate Grewal granted the motion to compel in an analogous situation, where the defendant sought discovery of the patentee’s awareness of prior art. Id., at *9-10. He ordered the plaintiff to “provide the actual dates upon which each piece of prior art became known and a description of any and all circumstances by which the prior art became known to each individual….” Id., at *10. To the extent the plaintiff attempted to withhold any information because disclosure “would reveal the substance of an attorney-client communication,” it was required to tender the basis for its privilege claim. Id.

Similarly, in DSM Desotech Inc. v. 3D Sys. Corp., No. 08 C 1531, 2011 U.S. Dist. LEXIS 3292, at *12-13 (N.D. Ill. Jan. 12, 2011), the court compelled discovery of whether

The Honorable Donna M. Ryu
August 5, 2011
Page Five

persons who participated in the prosecution of the plaintiff’s patents were aware of the existence of the defendant’s allegedly infringing product at the time they made changes to the patent claims. The court found that the legal reasons why the claims were changed were privileged, but whether attorneys prosecuting the patent applications were aware of the product at the time of the changes “are discoverable facts.” Id., at *12-13.

Google is well aware of the distinction between discoverable facts and protected communications. In a deposition taken by Google just the week before the Rubin 30(b)(6), Google’s counsel demanded that witness Craig Gering provide the underlying facts relating to his knowledge of communications regarding Sun’s assertion of Java patent rights against Google. In response to an objection to exclude knowledge obtained from attorneys, Google’s counsel insisted the underlying fact of Sun’s assertion of patent rights was not privileged, and that he was only precluded from inquiring into the legal advice that may have been given by counsel. After a brief break to consider the issue, Oracle permitted the witness to testify. (Gering Tr. at 208:22-211:25.)

Now that the shoe is on the other foot, Google is improperly trying to use the attorney-client privilege to shield all 30(b)(6) testimony relating to the facts concerning its awareness of the Sun intellectual property rights.1

III. GOOGLE’S 30(B)(6) WITNESS WAS NOT PROPERLY PREPARED TO TESTIFY ON THIS ISSUE.

In addition, this motion should be granted because Google’s 30(b)(6) witness was not properly prepared to testify. [REDACTED] (30(b)(6) Tr. at 6:14-17.) Google does not dispute this fact below.

Further, Mr. Rubin’s testimony [REDACTED] is belied by the August 2010 email directed to him from Google engineer Tim Lindholm, stating the technical alternatives to Java “all suck” and acknowledging Google’s “need to negotiate a license for Java.” (ECF No. 230 at 3.) Google claims the email originated from a meeting attended by “top Google management” and concerned gathering information “for the consideration of Google legal and management.” (ECF No. 265 at 2.) Google’s management was also involved in discussions with Oracle about these claims, long

_____________________

1 Google has not claimed that these facts are protected by the work product doctrine, nor could it. First, the doctrine protects thoughts and mental impressions and “does not protect facts concerning the creation of work product or facts contained within the work product” unless doing so would “inherently reveal the attorney’s mental impression.” Gen-Probe, Inc. v. Becton, Dickinson & Co., No. 09cv2319 BEN (NLS), 2011 U.S. Dist. LEXIS 27961, at *5 (S.D. Cal. Mar. 18, 2011) (citation omitted) (emphasis in original). That is not the case here, where Oracle seeks simply the date and circumstances of awareness. Second, the doctrine only protects materials “prepared in anticipation of litigation or for trial.” See id; Fed. R. Civ. P. 26(b)(3).

The Honorable Donna M. Ryu
August 5, 2011
Page Six

before the suit was filed. Moreover, Google’s Executive Chairman, Eric Schmidt, is the former CTO of Sun, and scores of former Sun engineers now work at Google, including named inventors on 125 Sun Java patents. Four Google employees are inventors on the patents at issue here. And there are hundreds of entries on Google’s privilege log authored or received by non-attorneys, including Mr. Rubin, referring to licensing Java, patents and negotiations with Sun. (See, e.g., Rubin Tr. at 33:8-35:23.) Many of these entries do not copy an attorney at all. Mr. Rubin’s claim is clearly false.

Google’s claim that this witness was prepared to testify about the specific patents is nonsense. Mr. Rubin did not talk to anybody outside the legal department to prepare, and Google asserted privilege repeatedly to block discovery of any contact he had with attorneys or facts he learned from them. Oracle is entitled to a properly prepared 30(b)(6) witness who will testify fully on the topic of Google’s awareness of the Sun (now Oracle) Java intellectual property rights.

GOOGLE’S RESPONSE

Oracle’s motion regarding topic 12 at its core reflects a fundamental disconnect between what Oracle demands and the kinds of discovery permissible in litigation—and between the case law it cites and the discovery it seeks. Oracle wants Google to provide a witness to testify “regarding its awareness of intellectual property rights belonging to Sun Microsystems (and now Oracle) pertaining to Java.” (Emphasis added.) Yet, as Oracle knows and as J. Alsup has reiterated in his recent ruling, this case is not about all Javarelated “intellectual property rights.” Docket No. 230 at 3:3-13 (noting that Java is a “complex platform” and “only part of Java . . . [is] said to embody the asserted claims”). It is, instead, about narrow set of seven patents and specific asserted copyrights—a sliver of whatever set of unidentified “intellectual property rights” Sun might have owned or claimed to own in connection with Java. Therefore, to the extent that this topic goes beyond knowledge of the “intellectual property rights” actually at issue in this case, the subject matter is wholly irrelevant to this case and Oracle cites no authority to the contrary.

Google has brought this issue to Oracle’s attention on several occasions. First, it did so in its objections to the noticed topic. See, e.g., Google’s Objections to Oracle’s July 13, 2011 Notice of Deposition, at 3 (objecting to the topic to the extent it “goes beyond allegedly infringed patents and copyrights”). Second, Google reminded Oracle about its objections at the commencement of the deposition at issue. At neither juncture did Oracle dispute that the objection to the scope of the topic was well-founded or identify any bases for a right to discovery concerning irrelevant, unasserted intellectual property rights. Instead, and as reflected in the quotes of testimony selectively set forth in Oracle’s motion, Oracle insisted on asking overbroad, irrelevant questions about any knowledge about any Sun intellectual property relating to Java.

In the meet-and-confer efforts trying to resolve this issue, Google reiterated again the problem with the topic and the questions asked, and offered a solution to this dispute. Specifically, Google stated that it would be willing to produce a witness to testify regarding

The Honorable Donna M. Ryu
August 5, 2011
Page Seven

Google’s first knowledge of the specific patents and copyrights at issue in this case. (Indeed, Google’s witness was prepared to testify on this topic during the first day of deposition, but Oracle failed to present the witness with proper questions.) Oracle flatly refused this offer and filed this joint letter.

Oracle is entitled to nothing more than a witness to testify regarding the date and circumstances under which Google became aware of the specific intellectual property at issue in this case as it relates to Android, and that Oracle has identified no legal basis to demand anything further. Accordingly, Google respectfully submits that this motion should be denied and Oracle should question Google’s witness on the topic but appropriately tailored to the intellectual property at issue in this case.2

Google further notes that Oracle’s commentary in its joint letter concerning Google’s alleged knowledge of the intellectual property at issue in this case misrepresents the law. General knowledge of “intellectual property rights” is irrelevant to a claim of willful infringement. Oracle’s case law demonstrates that the relevant knowledge relates to the asserted intellectual property right—be they patents or copyrights—not some vague notion of “intellectual property rights” generally. Indeed, the 30(b)(6) topic at issue in Intervet related to the dates on which it first became aware of the patent. 256 F.R.D. at 231 (“explain the circumstances under which the ’601 patent came to Intervet’s attention”). And the discovery at issue in Vasudevan related to “information about the date and circumstances by which a defendant learned about the patent.” 2011 U.S. Dist. LEXIS 47764, at *9 (emphasis added). Google has proffered a witness regarding precisely those issues. But Oracle seeks to parlay the discovery law regarding knowledge of specific patents into a broader witch hunt for Google’s “awareness of the Sun intellectual property rights.” See, infra, p.9. That is not what the law provides for.

Furthermore, as Oracle’s witnesses have consistently testified, neither Sun nor Oracle put Google on notice regarding any of the specific intellectual property at issue in this case until after Oracle’s acquisition of Sun and its pursuit of a litigation strategy against Google— which was long after Android was developed. That knowledge is therefore immaterial to Oracle’s willfulness claim.

Finally, Oracle is flatly wrong in suggesting that former Sun employees’ knowledge of Java intellectual property is somehow imputed to Google simply because those employees work for Google. As a company that has a long-standing history of respecting others’ intellectual property rights, Google (like other reputable technology companies) does not seek to mine new employees’ knowledge of prior employers’ intellectual property rights. To the contrary, Google expects and asks its engineers to develop Google technology without reliance on others’ technologies and would not ask employees to disclose that kind of

___________________ 2 Contrary to Oracle’s statements in its argument above, Google does not abandon its privilege objections to the improper questions posed by Oracle’s counsel during deposition. Indeed, Oracle’s improper questions, apparently intentionally designed to invade the attorney-client privilege and confuse the witness, created some of the very problems about which Oracle is now complaining.

The Honorable Donna M. Ryu
August 5, 2011
Page Eight

information to Google. See, e.g., Rubin Depo., individual deposition, 43:3-44:25. Therefore, it stands logic on its head for Oracle to suggest that somehow Google should know about intellectual property rights that an employee had knowledge of when he or she worked at another employer.

[REDACTED] Rubin Depo., individual deposition, 43:3-18; Rubin Depo., topic 12, 12:15-13:1.

In short, this dispute is one that could and should be resolved by Oracle agreeing to adhere to the fundamental discovery tenet that, at a minimum, limits discovery to that which is reasonably likely to lead to the discovery of admissible evidence. This topic—as Oracle tries to read it—is not so limited and is overbroad.

Respectfully submitted,

MORRISON & FOERSTER LLP
/s/ Daniel P. Muino
Daniel P. Muino
Counsel for Plaintiff Oracle America, Inc.

KING & SPALDING LLP
/s/ Daniel Purcell
Daniel Purcell
Counsel for Defendant Google Inc.

GENERAL ORDER 45 ATTESTATION

I, Daniel P. Muino, am the ECF User whose ID and password are being used to file this document. In compliance with General Order 45, X.B., I hereby attest that Daniel Purcell has concurred in this filing.

/s/ Daniel P. Muino
Daniel P. Muino


Document 296

Boies, Shiller & Flexner Letterhead

August 10, 2011

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

Re: Oracle America, Inc. v. Google Inc., No. 3:10-CV-03561-WHA (N.D. Cal.)
Joint Letter Regarding Oracle’s Request for Non-Mobile Data and Projections

Dear Judge Ryu:

This is further to our joint letter to Your Honor of this past Wednesday, August 3, regarding the non-mobile data issues that were the subject of the hearing before the Court and the parties’ subsequent meet and confer last Monday, August 1.

The parties have not been able to reach agreement on Oracle’s requests for non-mobile data and projections. We therefore ask the Court to decide these issues.

Oracle’s Position:

In an effort to reach a compromise, Oracle has radically reduced its non-mobile data requests, and even arranged to buy some of the necessary non-mobile data from a third party. The data Oracle now seeks could be produced in an Excel spreadsheet and would easily fit on a thumb drive. Google has this data. Nonetheless, Google – which searches the entire Internet in fractions of a second millions of times per day – claims that producing even this small amount of data is too great a burden. Google’s unsubstantiated claim of burden, for this small quantity of relevant data, cannot trump Oracle’s right to reasonable discovery.

A. Non-Mobile Data

The Court’s July 22, 2011, Daubert order makes clear that “Google profits from Android indirectly,” and the measure of damages in this case must consider the “overall value of Android.” (Dkt. 230 at 9:16, 9:21.) Your Honor further held, at the August 1 discovery hearing, that Oracle is entitled to seek reasonable discovery concerning network effects of Android.

Google’s business is advertising, and it sells advertising by auctioning “keywords” – the ability to have an advertisement appear alongside search results associated with a particular query. As Professor Cockburn explains in his report, and as is well accepted by both economists

The Honorable Donna M. Ryu
August 10, 2011
Page 2 of 11

HIGHLY CONFIDENTIAL -- ATTORNEYS’ EYES ONLY

and courts, advertising is a business in which network effects play a significant role. A recent article in the business section of the New York Times makes that very point about Google:

As the overwhelming search leader, Google has advantages that tend to reinforce one another. It has the most people typing in searches — billions a day — and that generates more data for Google’s algorithms to mine to improve its search results. All those users attract advertisers. And there is the huge behavioral advantage: “Google” is synonymous with search, the habitual choice. Once it starts, this cycle of prosperity snowballs — more users, more data, and more ad dollars. Economists call the phenomenon “network effects”; business executives just call it momentum. In search, Google has it in spades, and Microsoft, against the odds, wants to reverse it.1

Android contributes to this “snowball” effect by increasing the number of users, which results in “more ad dollars” for Google, not just in its mobile business, but in non-mobile as well. As Google admits below, “[t]he inquiry is whether Google’s overall advertising revenues have been affected by the availability of Android devices and, if so, in what way.” Oracle seeks data that would allow its experts to quantify that effect. Specifically, Oracle’s experts intend to isolate the effect of Android on Google’s non-mobile revenues through a statistical analysis of search volume, click-through rates, cost per click, and revenue for keywords before and after the introduction of Android. This analysis cannot be conducted using combined keyword quarterly averages, as Google proposes, because such averages alone cannot isolate the effect of Android. An economist would not measure the effect of electric cars on the automobile industry by looking only at the average price of all GM cars, from Chevettes to Corvettes.

Oracle has radically reduced its non-mobile data requests to a set of data that Google admits it has, that Google admits it can retrieve, and that is small and easily manageable. Specifically, Oracle seeks production of the following data:

  1. Oracle will provide to Google a set of 5,000 keywords. Because Google claims it cannot provide such a list, Oracle has made arrangements to buy those keywords – at a cost of $10,000 – from a third party that maintains certain keyword data. The 5,000 keywords represent an appropriate sample from that third party’s keyword data set.
  2. For each of those 5,000 keywords individually, Google will provide quarterly data for the period 1/1/2004 through 7/31/2011 on the following (limited to the United States):
    • Total search volume (e.g. number of auctions or searches per month per keyword)
    • Average Cost Per Click (“CPC”)
    • Average Click Through Rate (“CTR”)
    • Total Search Advertising Revenue
  3. Google will provide the quarterly aggregate data between and including Q1 2004 and Q1 2011 on the following (limited to the United States):
    • Total search volume (e.g. number of auctions or searches per month per keyword)

________________________
1 “Can Microsoft Make You ‘Bing’?,” The New York Times, July 30, 2011, at BU 1, available at http://www nytimes.com/2011/07/31/technology/with-the-bing-search-engine-microsoft-plays-theunderdog html?_r=1&sq=google%20bing&st=cse&scp=2&pagewanted=all

The Honorable Donna M. Ryu
August 10, 2011
Page 3 of 11

HIGHLY CONFIDENTIAL -- ATTORNEYS’ EYES ONLY

    • Average CPC
    • Average CTR
    • Total Search Advertising Revenue

Google claims – without any competent evidentiary support – that this narrowed request is still too burdensome. In fact, the requested dataset is so small that it could be produced in an Excel spreadsheet and stored on a thumb drive. Moreover, it is clear that Google tracks this data. Google’s Adwords Traffic Estimator2 provides the average monthly number of searches per keyword. Accountholders can run multiple queries – at least 50 – simultaneously. Moreover, the Traffic Estimator provides results in a second or less that include, by keyword, “global monthly searches,” “local monthly searches,” and estimated average CPC. Similarly, Google’s Keyword Tool3 allows anyone to type in one or more terms, and instantly view up to 100 variations on those terms, with “global monthly searches” and “local monthly searches” for each such variation. The search can also be filtered to limit the data to a specific region, such as the United States. Thus, one can enter “plush dolls” into the search query, and instantly see that “plush dolls” had an average of 49,500 searches per month on desktop and laptop devices globally, and an average of 33,100 per month in the United States. The same data for variations on the term – like “plush Elmo doll”– are also instantly provided. The Google filter further allows the user to break down results in numerous ways, such as searches using “desktops and laptop devices” versus “all mobile devices” versus “mobile WAP devices” versus “mobile devices with full internet browsers.” In addition, Google’s “Insights for Search” feature allows a user to obtain statistics about search volume for specific terms in specific geographic regions in any specified time frame from 2004 to present.4

Clearly Google has historical data on search per keyword and CPC per keyword, and has developed tools to allow such data to be rapidly searched and retrieved by the public. Google now says this data is limited and inaccessible. But Google itself wrote on its Adwords API Blog, “[a]s you could imagine, Google has a lot of historical data about keywords and the traffic they generate.”5 (emphasis Google’s) Google’s blog further states that “AdWords API users can access our trove of historical keyword and bid data via the Traffic Estimator Service, which gives detailed estimates of how much traffic a keyword may generate at various CPC values.”

Google next objects that the requested data could not be useful because – according to Google – a dataset based on 5,000 keywords is arbitrary, and ironically, too small to be statistically significant. Google’s objection – without having seen the data or the analysis – is unfounded and premature. Because Google claims it can produce neither a list of keywords nor

___________________

2 This is an online tool provided by Google and located at https://adwords.google.com/o/Targeting/Explorer?__u=1000000000&__c=1000000000&ideaRequestType=KEYW ORD_STATS#search.none.
3 This is an online tool provided by Google and located at https://adwords.google.com/o/Targeting/Explorer?__c=1000000000&__u=1000000000&__o=te&ideaRequestType =KEYWORD_IDEAS#search none.
4 http://www.google.com/insights/search/ (described by Google as “See what the world is searching for”)
5 http://adwordsapi.blogspot.com/2008/07/traffic-estimator-service-explained html (This page bears a 2010 Google copyright.)

The Honorable Donna M. Ryu
August 10, 2011
Page 4 of 11

HIGHLY CONFIDENTIAL -- ATTORNEYS’ EYES ONLY

a sample, Oracle has arranged to purchase, for $10,000, a list of randomly selected keywords from AdGooroo, a third-party vendor that tracks almost half a million keywords. Google’s footnoted speculations that Oracle would “select keywords that it would expect to have risen in ‘price’ since Android devices were introduced” and that Oracle intends to select a “nonrepresentative group of keywords” are simply false. Oracle’s proposal is neither arbitrary nor statistically insignificant. To the contrary, it provides a reasonable, useful dataset and resolves Google’s objections that it would be too burdensome for it to provide the keywords itself.

Rather than providing the data by keyword necessary to Oracle’s analysis, Google proposes that Oracle rely on aggregate data alone. However, such data alone cannot demonstrate network effects in this case. Keywords are the economic unit by which Google sells advertisements – for each monetized search, Google holds an “auction” by which it sells advertising space connected to specific keywords.6 Android increases the value of keywords generally because it increases the number of searches and, therefore, the volume of keyword sales. Separately, Android increases the utility and therefore price of certain keywords; for example, location-specific keywords become more valuable as they are used more heavily on Android. Searchers on Android devices are more likely to search for location specific keywords (increase search volume) and click through (increase CTR); accordingly, advertisers will pay more (CPC) and generate more revenue for Google (total revenue). These benefits are not observable without examination of keyword specific data. Google’s argument that Professor Cockburn’s damages report did not mention keywords is nonsense. Professor Cockburn’s report states that he did not calculate network effects because Google refused to produce this data.

B. Non-Mobile Projections

Oracle’s RFP No. 170 seeks non-mobile projections from 2004 through the present. Google has refused to produce any such projections. Oracle offered, prior to the parties’ July 21 letter to the Court, to reduce its request to projections created in the 15-month-period surrounding fall 2008, when Android was first shipped commercially. Judge Alsup has since held that the infringement may have occurred at different points in time for distinct patents and copyrights. Consequently, Oracle is still willing to limit its request to non-mobile projections created during five quarters, but proposes that those quarters be calendar year Q3 2005, Q3 2006, Q3 2007, Q3, 2008, and Q1 2009. If no projections are available from any particular quarter, Oracle would ask that projections instead be produced from the next available quarter.

C. Evidence

The Court made clear that the burdens associated with Oracle’s original requests required that Oracle make an evidentiary showing so the Court could perform the balancing necessary under Rule 26. Oracle submits that its much reduced data requests should require less of an evidentiary showing. Moreover, Oracle’s ability to demonstrate the fact of Android-related network effects, and Google’s own recognition of them, is impaired by Google’s failure to

___________________
6 For any given keyword, Google encourages advertisers to place advertisements on both mobile and non-mobile devices through a single AdWords’ campaign, through its default setting and Google “smartpricing.” http://adwords.google.com/support/aw/bin/static.py?hl=en&guide=23292&page=guide.cs

The Honorable Donna M. Ryu
August 10, 2011
Page 5 of 11

HIGHLY CONFIDENTIAL -- ATTORNEYS’ EYES ONLY

produce that information. Your Honor directed Google on August 1 that “any analysis of any kind that Google did that touches on the issue of network effects [of Android] has to be produced” by Google, and Google must certify to Oracle that it has conducted such a search and produced all such documents. Google has failed to produce any such certification, refuses to state when it will do so, and appears to deny that the Court in fact gave that specific instruction.

In any event, the evidence demonstrates the existence of Android’s network effects on Google’s non-mobile business, including revenues, Google’s awareness of those effects, and Google’s efforts to increase those effects. That evidence includes:

[REDACTED]

The Honorable Donna M. Ryu
August 10, 2011
Page 6 of 11

HIGHLY CONFIDENTIAL -- ATTORNEYS’ EYES ONLY

[REDACTED]

For all of these reasons, Oracle respectfully requests that the Court order Google to (1) produce the non-mobile data and projections described in this letter, and (2) produce “any analysis of any kind that Google did that touches on the issue of network effects” and certify to Oracle that it has done so, no later than August 15, 2011.

Google’s Position:

At the hearing last Monday, Your Honor made clear that Oracle would be required to show “specific evidence” supporting its requests for the extensive non-mobile data and projections that it is seeking before it would be entitled to that additional data. Oracle has not met its burden, yet it still seeks to impose substantial burdens on Google.

As we discussed with the Court during the hearing, Google has already produced to Oracle significant information regarding Google’s overall, i.e., mobile and non-mobile, advertising revenues. Thus, the information that Oracle requests would be additional information over and above what Google has already provided.

We have carefully reviewed the materials that Oracle has shared with us that it believes support its requests, including the documents cited above by Oracle. We do not believe that those materials justify production of the extensive additional non-mobile data that Oracle is seeking. We believe that this is particularly true with respect to Oracle’s continued requests for extensive data for some number of specific “keywords” for which advertisers pay Google.

The Honorable Donna M. Ryu
August 10, 2011
Page 7 of 11

HIGHLY CONFIDENTIAL -- ATTORNEYS’ EYES ONLY

First, we note in this regard that none of the documents identified by Oracle refer to any metrics or data based on keywords, and that the Cockburn damages report that has been excluded by Judge Alsup does not even mention “keywords.” Second, the documents on which Oracle relies at most refer generally to possible effects on overall Google advertising revenues as a result of increased mobile searches; the additional data that Google is prepared to provide to Oracle, as described below, would be directly responsive to and would relate to those same general, overall revenues. Third, the documents cited by Oracle are more of what Oracle has previously cited, namely documents reflecting that Android is generally “good for Google” (including Google search and other Google services), as it enhances the mobile search experience – and the Court has already ruled that such general documents are insufficient to justify the additional discovery. Fourth, as is explained more fully below, the gathering and production of the data that Oracle has requested would be a very substantial undertaking that would take significant resources – including both engineering resources, computing resources, and time – to complete.

In view of the above, Google does not believe that Oracle can meet the burden that the Court indicated it must meet before the Court would order any of the additional requested nonmobile discovery, over and above the non-mobile information that Google has already provided to Oracle (which includes Google’s overall, non-mobile revenue numbers and financials).

If the Court nonetheless concludes that Oracle has made a sufficient showing to justify some additional discovery on Google’s non-mobile advertising revenues, Google respectfully submits that the proposal made by Google to Oracle would be more than adequate. More specifically, Google has proposed that – if the Court concludes that Oracle has made the required threshold showing – Google would provide to Oracle aggregate and/or average quarterly data for the past seven years (2004 through the first quarter of 2011) regarding Google’s total number of searches, average “cost per click” for search ads, average “click through rate” for search ads, and total advertising revenues.

This data could be gathered in a reasonable period of time – likely in a three to four week time frame – and, while it would require significant engineering time and resources, it would not require the far greater and extensive amount of engineering time and resources that Oracle’s broader, keyword-based requests would entail. More importantly, this data would also be consistent with – and indeed go well above and beyond – the assertions made in the excluded Cockburn report regarding alleged “network effects,” which relate to Google’s overall advertising revenues (mobile and non-mobile) and do not raise any issues, metrics or data based on keywords. This data would also cover a time period that pre-dates the introduction of Android-based smartphones by several years and would provide Oracle with a pre-Android frame of reference.

In contrast, Oracle’s proposals for resolution of the non-mobile data issues have been consistently unreasonable. In its July 1 letter to the Court, Oracle originally requested massive amounts of data that would take months to gather if they could be gathered at all, including “web content indexed by Google” and “number of apps for the desktop,” and metrics (such as keyword data for display ads) that make no sense. Whether these requests were due to Oracle’s failure to

The Honorable Donna M. Ryu
August 10, 2011
Page 8 of 11

HIGHLY CONFIDENTIAL -- ATTORNEYS’ EYES ONLY

diligently investigate through publicly-available materials the advertising services for which it is demanding highly confidential and proprietary information or its continued overreaching in both discovery and its damages theories, they plainly sought to impose an unreasonable burden and significant costs on Google.

Oracle claims to have “radically” reduced its demands, but it has reduced them only from the impossible to the nearly impossible and extraordinarily burdensome. [REDACTED]7

Even then, moreover, the resulting dataset would provide information regarding only an extremely small subset of keywords, namely an arbitrary group of 5000 keywords. As we have also advised Oracle, there are literally hundreds of millions of keywords that are included in searches in just a single month. The relatively small group of 5000 keywords would apparently be selected by Oracle or a third party vendor based on unidentified criteria; based on the keywords chosen, the results of any such analysis could be drastically skewed – and, for the reasons stated above, whether they are representative of any larger group of keywords would as a practical matter be impossible to test.8 In view of these parameters, the data requested by Oracle (if it could even be gathered) could not in any way be statistically significant, and any analysis based on them would be purely speculative and not grounded in any reliable scientific methodology. The popularity of or metrics for any specific keyword or keywords cannot have a bearing on whether the existence of Android devices has had an effect on Google’s overall advertising revenues.

Importantly, moreover, none of the documents relied on by Oracle suggest any such bearing, and Oracle’s analogy about “GM cars” is inapplicable. If anything, this analogy counsels against Oracle’s requests; an arbitrarily selected group of 5000 keywords out of hundreds of millions used in just a given month would have no more bearing on Google’s overall advertising business than would the price of just a few specific GM models having specific accessories on GM’s overall business. The relevant inquiry, in short, is not whether one or more

_____________________
7 Google can provide further or more detailed information or evidentiary support regarding these facts if the Court requires.

8 Oracle has refused to advise Google how the 5000 keywords would be selected, other than to say they would be "keywords that have actually been auctioned by Google at various points in time." It appears from Oracle’s portion of this letter that Oracle would intend to select keywords that it would expect to have risen in “price” since Android devices were introduced – without consideration of whether such keywords were representative of any larger group, whether increases in their “prices” may be offset by decreases in “prices” for other keywords, or what if any effect Android may have had on Google’s overall revenue. Thus, it appears that Oracle indeed intends to select a non-representative group of keywords that it believes are most likely to support its theories.

The Honorable Donna M. Ryu
August 10, 2011
Page 9 of 11

HIGHLY CONFIDENTIAL -- ATTORNEYS’ EYES ONLY

individual keywords are more “expensive” now than they were prior to the introduction of Android phones and tablets. The inquiry is whether Google’s overall advertising revenues have been affected by the availability of Android devices and, if so, in what way.

Given the unreasonable burdens associated with gathering the information requested by Oracle, its statistical insignificance, and the necessarily speculative nature of any conclusions that could be drawn from it, Google submits that the costly and burdensome exercise requested by Oracle would in the end necessarily be unproductive and improper. Oracle has not suggested how analysis of such an extremely limited data set – which would require extensive effort to generate – could be useful in addressing its “network effects” arguments, let alone the causal nexus and other requirements it must meet under Judge Alsup’s Daubert order in support of its revised damages report.

Oracle’s reliance on the limited data available to AdWords customers on Google’s websites is misplaced. The website data to which Oracle refers are only estimates of future projections or approximations of averages. [REDACTED] The estimates themselves can also be manipulated in that the user of the estimator tool can change the input variables. See, e.g., the information at http://adwords.google.com/support/aw/bin/answer.py?hl=en&answer=27331 and http://adwords.google.com/support/aw/bin/answer.py?hl=en&answer=8692. And the data provided by the “Insights for Search” tool that Oracle cites is data relating to queries or searches – not the extensive metrics requested by Oracle.

In contrast to these estimates at a single point in time based on limited recent data, the “by keyword” data that Oracle is requesting is extensive, accurate historical data covering over seven years of time. The availability of the estimates is therefore irrelevant to the far larger and much more extensive data requests that Oracle wrongly contends are “reasonable.”

Similarly, Oracle’s assertion that the information it wants could be provided in a spreadsheet and fit on a thumb drive (and is therefore presumably reasonable) is both facile and misleading. For purposes of the Court’s decision, the issue is what kind of effort must be undertaken to gather the data – not the size of the resulting dataset or how many data points are to be included after that extensive effort is made. It may be a trite example, but the largest known prime number could also fit on a thumb drive, but it required two years and the processing of multiple supercomputers to discover. As outlined above, the effort in this case would be far in excess of any reasonable effort, especially in view of the information Google has already produced.

On the separate issue of “projections,” Oracle has also this week expanded its demands rather than “radically reduce” them. Instead of attempting to compromise its demands, Oracle has most recently requested revenue projections made by Google over a five-year period, rather than the fifteen-month period it originally requested. Based on the actual historical data Google has already provided and the additional information Google is prepared to provide, however,

The Honorable Donna M. Ryu
August 10, 2011
Page 10 of 11

HIGHLY CONFIDENTIAL -- ATTORNEYS’ EYES ONLY

production of documents showing past projections is unnecessary and is not relevant to any alleged “network effects.”

Finally, Oracle suggests that Google has “refused” to comply with the Court’s direction regarding the production of any additional documents that may discuss network effects relating to Android. We are in the process of complying with that direction and will do so. We note in this regard that our investigation to date has shown that Google has in fact produced a number of such documents to Oracle, including the Google documents cited above. We are currently determining whether there are any additional such documents that need to be produced in order to supplement Google’s already extensive production of documents relating to Android and Google advertising revenue (and not “any analysis of any kind that Google did that touches on the issue of network effects”).

Google therefore respectfully requests that the Court deny Oracle’s request for additional non-mobile data on the grounds that Oracle has not made the specific showing necessary to justify any such additional discovery. In the alternative, if the Court finds that Oracle has made a sufficient showing, Google requests that the Court limit the data that Google must provide to the aggregate and average data identified above, for the time periods stated.

We are available to discuss these issues further with the Court, by telephone or in person, at the Court’s convenience.

Respectfully submitted,

BOIES, SCHILLER AND FLEXNER LLP
/s/ Fred Norton
Fred Norton

KING & SPALDING LLP
/s/ Bruce W. Baber
Bruce W. Baber

The Honorable Donna M. Ryu
August 10, 2011
Page 11 of 11

HIGHLY CONFIDENTIAL -- ATTORNEYS’ EYES ONLY

ATTESTATION OF FILER

I, Fred Norton have obtained Mr. Bruce W. Baber’s concurrence to file this document on his behalf.

Dated: August 10, 2011

BOIES, SCHILLER & FLEXNER LLP
By: /s/ Fred Norton
Fred Norton
Attorneys for Plaintiff
ORACLE AMERICA, INC.


Document 299

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

ORACLE AMERICA, INC.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.

Case No. 3:10-cv-0356l-WHA

DECLARATION OF TIM LINDHOLM CONCERNING THE AUGUST 6,2010 EMAIL AND DRAFTS THEREOF

Judge: Hon. Donna M. Ryu
Date Comp. Filed: October 27,2010
Trial Date: October 31,2011

I, Tim Lindholm, state:

1. I have been employed since 2005 by defendant Google, Inc. ("Google") as a Software Engineer in the Systems Infrastructure group at Google. I have never worked on the Android team, and I have had no role in the design, development and/or implementation of the Android platform.

2. I am the author of the August 6, 2010 email and drafts thereof that I understand are the subject of the pending motion to compel filed by Oracle America, Inc. ("Oracle"). I submit this Declaration to provide factual information regarding those documents—namely, that they constituted a communication to a Google attorney and were (lie result of work that I performed at the direction of Google attorneys.

3. Except where I have stated facts on information and belief, I have knowledge of the facts set forth herein, and if called to testify as a witness thereto could do so competently under oath.

4. In late July 2010, Google in-house attorney Ben Lee informed me that he had attended a meeting in which Oracle made patent infringement claims against Google, I understood that Oracle was threatening to sue Google over those claims.

5. Mr. Lee asked me to gather certain information related to Oracle's infringement claims. I understood that my work for Mr. Lee would assist Google's legal analysis of Oracle's claims.

6. On July 30,2010, I was asked by Google General Counsel Kent Walker to attend a meeting, convened by him, where we discussed Oracle's infringement claims. The meeting took place at Google's offices in Mountain View, California. Mr. Walker and Mr. Lee attended the meeting, along with Google top management and several Google engineers. 7. At the meeting, Mr. Walker asked me to continue to work under Mr. Lee's direction, and to work with Google engineer Dan Grove, also under Mr, Lee's direction, to gather information for Google's lawyers and management to consider in evaluating technology issues related to Oracle's infringement claims.

8. On August 6, 2011, at 11:05 a.m., I sent an email reporting to Mr. Lee and to

1

Andy Rubin, who was then a Google Vice President in charge of Android, concerning certain topics that Mr. Walker and Mr. Lee had asked me and Mr. Grove to investigate. On information and belief, I understand that two copies of this document were listed on Google's privilege log as entries 5512 and 5513 and that one copy of it has been submitted in camera to the Court.

9. At the end of preparing my email, but before sending the email, I added the words "Attorney Work Product" and "Google Confidential" at the top. I then filled in the "To:" and "Cc:" fields. In the "To;" field I placed the email addresses of in-house lawyer Mr. Lee and of Mr. Rubin. In the "Cc:" field I put the email addresses of myself and of Dan Grove.

10. On information and belief, as I was writing the email, Google's electronic-mail computer system automatically saved several unfinished drafts of the email. I understand that eight of these "auto-saves" were produced inadvertently to Oracle. On information and belief, I understand that copies of the auto-saves have been submitted in camera to the Court.

11. The auto-saves represent "snapshots" of the email that I ultimately sent, taken at eight different stages of preparation during the roughly four-minute period between 11:01 a.m. and 11:04 a.m.

12. The auto-saves have empty "To:" lines because adding the addresses of Mr. Lee and Mr. Rubin was one of the last things that I did. The auto-saves likewise do not show the words "Attorney Work Product" or "Google Confidential" because adding those words was one of the last things that I did.

13. I understand that Oracle's motion seeks production of a document bearing production number GOOGLE-12-00039656. I have been shown that document and can confirm that it is not an auto-save of the email in question and is completely unrelated to any version of that email.

14. In sum, the documents sought by Oracle are really all one document, shown in different stages of preparation over the course of about four minutes. The documents constitute a communication to Google in-house attorney Ben Lee (among others), reporting investigations and analyses that Mr. Grove and I conducted at the request of Google General Counsel Kent

2

Walker, under the supervision of Mr. Lee, and in anticipation of Oracle's threatened lawsuit.

I declare under penalty of perjury that the foregoing is true and correct. Executed on August 12, 2011.

By: /s/ Tim Lindholm
Tim Lindholm


Document 300

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

DECLARATION OF KRISTIN ZMRHAL CONCERNING THE AUGUST 6,2010 EMAIL AND DRAFTS THEREOF

Judge: Hon. Donna M. Ryu
Date Comp. Filed: October 27,2010
Trial Date: October 31,2011

I, Kristin Zmrhal, state:

1. I have been employed since January 2001 by defendant Google, Inc. as a Project Manager of Discovery Support. I submit this declaration to provide factual information regarding (a) the "auto-save" function of Google's email service ("Gmail") and (b) Google's document collection and review procedures in this case. I understand that this information relates to Tim Lindholm's August 6, 2010 email and drafts thereof, which are the subject of a pending motion to compel in this case.

2. Except where I have stated facts on information and belief, I have knowledge of the facts set forth herein, and if called to testify as a witness thereto could do so competently under oath.

3. Gmail has an "auto-save" function that automatically saves a user's draft email as the email is being written. On information and belief, the auto-save function takes a snapshot of the user's draft email every 10-60 seconds and saves those snapshots to the user's "Drafts" folder. No user action is required to create or save an auto-saved draft of an email.

4. I manage a team of Google in-house discovery paralegals and legal assistants that are responsible for document collection in this case. Google's in-house attorneys and litigation paralegals have provided me and my team with a list of 86 document custodians for this case.

5. I or a member of my team input each custodian's username into a computer script. The script harvests Gmail messages (and drafts thereof) from Google's backend email system. The script creates electronic copies of all unique messages associated with the user's email account and transfers those copies to a separate server that can only be accessed by my discovery team, My team then downloads the custodial email onto an encrypted hard drive and delivers that hard drive to a third-party vendor for processing.

6. The Google in-house discovery and litigation paralegals have collected and delivered to the third-party vendor over 97 million documents for this case.

7. The third-party vendor processes the documents. The vendor electronically indexes the documents and filters out plainly irrelevant documents by applying search terms agreed upon by Google and Oracle America, Inc. ("Oracle"). The vendor then uploads the

1

filtered documents to an online review database for manual review.

8. The online review database allows users to view documents on a computer screen. Users can access the database via the internet and electronically "tag" documents as, for example, "responsive," "privileged," or "confidential." The database software allows users to sort and organize documents according to their tags and place them into a set for production.

9. Google uses a different third-party vendor to assist with the document review process. That third-party vendor's contract attorneys review the documents on the online review database. The vendor's contract attorneys review documents at an offsite facility. Google also employs its own contract attorneys to review documents on the online review database.

10. Google's outside counsel supervises the review process. Counsel gives to all contract attorneys a memorandum explaining the issues in the case. The memorandum provides guidance on how the contract attorneys should determine whether a document is "privileged," "confidential," or "highly confidential." For example, to determine whether a document is privileged, the memorandum instructs reviewers to look for phrases such as "privileged and confidential" or "attorney work product" in the text of the email. The memorandum also includes a list of in-house and outside counsel, and instructs the reviewers to look for those names in the document to determine whether that document is privileged.

11. A draft email that does not contain phrases such as "privileged and confidential" or "attorney work product" and that has no names listed in the "to" or "from" fields likely would not be tagged as "privileged."

12. To date, the contract attorneys have reviewed over 11 million documents on the online review database. Due to the sheer volume of documents that hit on an agreed upon search term and were uploaded to the online database for review, Google's in-house and outside counsel are not able to re-review for accuracy every document tagged by a contract attorney. Instead, counsel rely on electronic screening mechanisms to check the quality of the contract attorneys' review. These screening mechanisms—referred to. as "analytics"—are designed to identify, for example, potentially privileged documents that should have been tagged as "privileged" on initial review by a contract attorney. The analytic can identify potentially privileged documents

2

and group them together into a set to be re-reviewed by a contract attorney before production.

13. One analytic that Google's outside counsel used to identify potentially privileged documents in this case was to search for email containing phrases like "privileged and confidential" or "attorney work product" in the text of the email or an attorney's name in the "to" or "from" field of the email. An email not containing those phrases in the body or an attorney's name in the address fields would not be identified by that analytic and, if tagged by a contract attorney as responsive, would be produced. 14. Google has produced over 3.7 million documents in this case. Google's 60 separate document productions span almost 19 million pages.

15. On information and belief, 1 understand that eight auto-saved drafts of Mr. Lindholm's August 6, 2010 email were inadvertently produced in this case. Unlike the final email that Mr, Lindholm sent, none of those drafts contain the phrases "Attorney Work Product" or "Google Confidential." And unlike the final email that Mr. Lindholm sent, none of those drafts contain any recipient in the "to" field, let alone an attorney recipient.

16. On information and belief, I understand that the final August 6,2010 email from Tim Lindholm appears two times on Google's privilege log as entries 5512 and 5513 and that one copy of it has been submitted in camera to the Court.

I declare under penalty of perjury that the foregoing facts are true and correct. Executed on 8/12/2011.

/s/ Kristin Zmrhal
Kristin Zmrhal


Document 301

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

DECLARATION OF BENJAMIN LEE CONCERNING THE AUGUST 6, 2010 GOOGLE INC., EMAIL AND DRAFTS THEREOF

Judge: Hon. Donna M. Ryu
Date Comp. Filed: October 27, 2010
Trial Date: October 31, 2011

I, Benjamin Lee, state:

1. From 2006 through November 2010 I was employed by defendant Google, Inc. ("Google") as an in-house attorney. I was one of the recipients of Tim Lindholm's August 6, 2010 email, which I understand to be the subject of a pending motion to compel filed by Oracle America, Inc. ("Oracle"). At the time I received Mr. Lindholm's email I was Senior Counsel for Google.

2. In November 2010,I left Google for an in-house counsel position at Twitter, where I am currently Legal Counsel.

3. I submit this declaration to provide factual information regarding Mr. Lindholm's role in assisting myself and other Google attorneys in investigating and evaluating Oracle's patent-infringement claims.

4. Except where I have stated facts on information and belief, I have knowledge of the facts set forth herein, and if called to testify as a witness thereto could do so competently under oath.

5. On or about July 20, 2010, I attended a meeting with attorneys for Oracle at Google's office in Mountain View, California. At that meeting, Oracle claimed that Google was infringing on Oracle patents. Oracle threatened to sue Google over those patents.

6. After the July 20, 2010 meeting, I asked Mr. Lindholm to gather certain information related to Oracle's infringement claims. I asked Mr. Lindholm to do this to assist Google's legal analysis of those claims.

7. On or about July 30, 2010, Mr. Lindholm and I attended a meeting convened by Google General Counsel Kent Walker. The purpose of the meeting was to formulate a response to Oracle's infringement claims. Mr. Lindholm provided input on issues related to those claims at the meeting.

8. At the direction of Mr. Walker and myself, Mr. Lindholm continued after the July 30, 2010 meeting to work on issues related to Oracle's infringement claims. I supervised Mr. Lindholm's ongoing efforts and communicated with him several times in late July and early August 2010 to learn the results of those efforts.

1

9. On or about August 6, 2010, I received an email from Mr. Lindholm regarding the investigation Mr. Walker and I had asked him to conduct. On information and belief, I understand that two copies of this email were listed on Google's privilege logs as entries 5512 and 5513 and that one copy of it has been submitted in camera to the Court.

10. Mr. Lindholm's August 6, 2010 email addresses some of the Oracle-related topics that Mr. Walker and I asked him to investigate. Mr. Lindholm was acting at my and Mr. Walker's direction when he drafted the August 6, 2010 email.

I declare under penalty of perjury that the foregoing facts are true and correct. Executed on August 14, 2011.

/s/ Benjamin Lee>
Benjamin Lee


Document 305

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

ORACLE AMERICA, INC.
Plaintiff,
v.
GOOGLE, INC.
Defendant.

Case No. CV 10-03561 WHA

DECLARATION OF FRED NORTON IN
SUPPORT OF ORACLE AMERICA,
INC.’S MOTION TO COMPEL
PRODUCTION OF DOCUMENTS

Dept.: Courtroom 4, 3rd Floor_

I, FRED NORTON, declare as follows:

1. I am a partner with the law firm of Boies, Schiller & Flexner LLP, attorneys for plaintiff Oracle America, Inc. in the above captioned matter, and admitted to practice before this Court.

2. I make this declaration based on my own personal knowledge. If called as a witness, I could and would testify competently as to the matters set forth herein.

3. Oracle seeks to compel the production of twelve documents from Google.

4. Lindholm Clawback Drafts. Nine of the documents Oracle seeks were previously produced by Google, and later clawed back. I refer to those nine documents collectively as the “Lindholm Clawback Drafts.” Those documents bear the following Bates numbers:

GOOGLE-12-00039558
GOOGLE-12-00039559
GOOGLE-12-00039560
GOOGLE-12-00039561
GOOGLE-12-00039562
GOOGLE-12-00039563
GOOGLE-12-00039564
GOOGLE-12-00039565
GOOGLE-12-00039656

5. Lindholm Document. As discussed in greater detail below, one of the Lindholm Clawback Drafts has been specifically discussed in hearings before both Judge Alsup and Magistrate Judge Ryu. That email bears Bates number GOOGLE-12-00039565 and is referred to herein as “the Lindholm Document,” consistent with usage in prior briefing.

6. Judge Alsup has twice rejected Google’s claim that the Lindholm Document is privileged. (Dkt. Nos. 255, 271.)

7. None of the nine Lindholm Clawback Drafts has ever appeared on any Google privilege log, before or after Google clawed them back. Judge: Honorable Donna M. Ryu_

1

8. Lindholm Withheld Emails. Three of the documents were withheld by Google and listed on its privilege log as document numbers 2551, 5512, and 5513. I refer these three documents herein as the “Lindholm Withheld Emails.”

9. The nine Lindholm Clawback Drafts and three Lindholm Withheld Emails documents that Oracle seeks in its motion are referred to collectively in this Declaration as the “Lindholm Documents.”

Background of Tim Lindholm

10. On information and belief, and as reflected in the documents cited below, Tim Lindholm was a Sun employee until July of 2005, when he left Sun to become an employee of Google.

11. According to documents produced by Google, Lindholm was involved in Android from the very beginning of his employment at Google. For example:

a. Attached as Exhibit A is a true and correct copy of a document produced by Google, bearing Bates number GOOGLE-12-00000115, [REDACTED]

b. Attached as Exhibit B is a true and correct copy of a document produced by Google, bearing Bates number GOOGLE-01-00094556, [REDACTED]

c. Attached as Exhibit C is a true and correct copy of a document produced by Google, bearing Bates number GOOGLE-12-00000472-476, [REDACTED]

2

d. Attached as Exhibit D is a true and correct copy of a document produced by Google, bearing Bates number GOOGLE-12-00000656, [REDACTED]

e. Attached as Exhibit E is a true and correct copy of a document produced by Google, bearing Bates number GOOGLE-12-00044903, [REDACTED]

Attached as Exhibit F is a true and correct copy of a document produced by Google, bearing Bates number GOOGLE-01-00018836, [REDACTED]

3

g. Attached as Exhibit G is a true and correct copy of a document produced by Google, bearing Bates number GOOGLE-01-00081703-04, [REDACTED]

Google’s Production of the Lindholm Clawback Drafts

12. Google produced the Lindholm Clawback Drafts on or about April 27, 2011.

13. Pursuant to the Court’s December 20, 2010 Order Approving Stipulated Protective Order Subject to Stated Conditions (Dkt. No. 68), “[t]he parties must make a good-faith determination that any information designated ‘confidential’ truly warrants protection under Rule 26(c) of the Federal Rules of Civil Procedure. Designations of material as ‘confidential’ must be narrowly tailored to include only material for which there is good cause.”

14. The Protective Order approved by the Court requires that the parties exercise “restraint and care” in their designation of material as Confidential or Highly Confidential, and that the parties only designate those portions of the documents that warrant confidential or highly confidential treatment. (Dkt. No. 66, at §§ 5.1, 5.2(a))

15. Each of the Lindholm Clawback Drafts bears a legend indicating that Google designated the document “Highly Confidential – Attorney’s Eyes Only,” and that Google therefore had conducted the required review of the document and determined in good faith that the document warranted this designation.

Google’s Assertion of Privilege for the Lindholm Withheld Emails

16. On April 22, 2011, Google produced a privilege log that listed, among other entries, the three Lindholm Withheld E-Mails. All three are identified as emails written by Tim Lindholm on

4

August 6, 2010, and are further described by Google as follows (asterisks indicate persons that Google has identified as lawyers):

Doc. No. Recipient(s)Copyee(s) Privilege DescriptionAssertion
2551 Andy Rubin
Benjamin Lee
Dan Grove
Tim Lindholm
Email seeking advice of counsel re licensing term alternatives for code used in Android. ACP/WP
5512 a (a) - Email reflecting advice of counsel in preparation of litigation re alternatives for Java for Android and Chrome. WP
5513 Andy Rubin;
Benjamin Lee
Dan Grove
Tim Lindholm
Email seeking advice of counsel re technical alternatives for Java. AC

Use and Discussion of the Lindholm Document Before the Court

17. The July 21, 2011 Discovery Hearing. On July 14, 2011, Oracle filed a motion with Magistrate Judge Ryu seeking permission to take the depositions of certain Google employees, one of whom was Tim Lindholm. (Dkt. No. 215) Google opposed the motion.

18. The hearing on Oracle’s motion was held telephonically on July 21, 2011, at 11:30 a.m. According to the transcript and minutes of the hearing, Google was represented at the hearing by five attorneys: Robert Van Nest and Christa Anderson of Keker & Van Nest, Bruce Baber and Chris Carnaval of King & Spalding, and Renny Hwang, in-house counsel at Google.

19. Attached as Exhibit H is a true and correct copy of the transcript of the July 21, 2011 hearing before Magistrate Judge Ryu.

20. On the subject of Mr. Lindholm, Google’s counsel, Mr. Van Nest, argued that “since he has been at Google he hasn’t worked on Android. Not part of the Android team, not part of Mr. Bornstein’s team, not part of the negotiations. He’s on the periphery of that. He is somebody that

5

worked at Sun and he is somebody that worked on Java at Sun, but he didn’t work on Android at Google and he wasn’t involved in negotiations.” (Ex. H at 31:21-32:2)

21. In response, Oracle counsel argued that Mr. Lindholm’s involvement was more extensive than Google contended. Among other documents cited by Oracle, Mr. Jacobs of Morrison & Foerster quoted from portions of one of the Lindholm Clawback Drafts, which he first identified as having been designated by Google as Highly Confidential, Attorneys’ Eyes Only. Mr. Jacobs explained that the document was written by Mr. Lindholm in 2010, and included the statements: [REDACTED] (Ex. H at 33:8-9)

22. In response to Mr. Jacobs’s statement, counsel for Google (Mr. Baber) responded that “I don’t have the exact e-mail in front of me that Mr. Jacobs is referring to, but it’s my understanding that [REDACTED] (Ex. H at 34:19-23)

23. Mr. Jacobs responded further, stating that [REDACTED] Oracle counsel Mr. Holtzman added, “the text of that message also says [REDACTED] (Ex. H at 34:25-35:7)

24. None of the five attorneys representing Google objected to Mr. Jacobs’s or Mr. Holtzman’s use of the Lindholm Document at the July 21, 2011, discovery hearing, either on the grounds that it was purportedly a privileged document or on the grounds that it had been designated Highly Confidential – Attorneys’ Eyes Only.

25. July 21, 2011 Daubert Hearing. Later on July 21, 2011, at 2:00 p.m., Judge Alsup held a hearing on Google’s Daubert motion. Prior to the hearing, on July 12, 2011, Judge Alsup directed the parties to be prepared to address the issue of whether Google had willfully infringed the patents owned by Oracle. (Dkt. No. 210.)

26. Accordingly, Oracle counsel identified documents and testimony that were responsive to the issues identified by the Court, and prepared slides with excerpts from those documents to be handed

6

to the Court and Google counsel in a binder. Among the slides that Oracle prepared was a slide that reproduced the same Lindholm Clawback Draft that the parties had discussed with Magistrate Judge Ryu several hours earlier.

27. According to the transcript and minutes of the hearing, Google was represented by Mr. Van Nest, Ms. Anderson, and Dan Purcell of Keker & Van Nest, by Mr. Baber of King & Spalding, and by Catherine Lacavera and Renny Hwang of Google. A true and correct copy of that transcript is attached as Exhibit I.

28. At the outset of his argument, counsel for Oracle, Mr. Holtzman, gave to the Court and to Google counsel a binder that held the slides that Oracle intended the Court to have for the hearing. As he proceeded to address the Court’s questions on willfulness, Mr. Holtzman noted that documents with evidence relevant to that issue were in the binder, but that he would not discuss them in detail because Google had designated them Highly Confidential. (Ex. I at 17:12-20; 18:19-23) Judge Alsup directed Mr. Holtzman that “there is no restriction,” “this is a public proceeding,” “you can say anything you want,” and “[i]f Google has a memo in their file saying, we are about to willfully infringe, there is no way I’m going to keep that secret from the public or the investing public.” (Ex. I at 18:24-19:12)

29. None of the six attorneys representing Google at the hearing objected to Judge Alsup’s grant of permission to discuss, at the public hearing, documents that Google had designated as confidential or that disclosed Google’s intent to engage in willful infringement.

30. Mr. Holtzman identified the Lindholm Document, along with other documents, to the Court, and quoted it in part: “What we’ve actually been asked to do by Larry and Sergey is to investigate what technical alternatives exist to Java for Android and Chrome. We have been over a bunch of these and think they all suck. We conclude that we need to negotiate a license for Java . . . .” (Ex. I at 23:22-24:2)

31. None of the six attorneys representing Google at the hearing objected to Mr. Holtzman’s use of, or quotations from, the Lindholm Document. 32. Later in the hearing, Judge Alsup read the portions of the Lindholm Document into the record. (Ex. I at 40:1-23) Judge Alsup warned Google’s counsel that

7

They -- you know what they used to say about Joe Alioto? He needed -- you know, in a big case like this, he would come in, he only needed two documents: He need a document like this, the one I just read, and the Magna Carta, and he won every case. And you are going to be on the losing end of this document, and with Andy Rubin on the stand.

(Ex. I at 40:25-41:6)

33. Judge Alsup then asked counsel for Google “how are you going to get around that?”

34. On behalf of Google, Mr. Van Nest responded by discussing the substance of the document, stating that “[n]umber one, this is August 2010, this is 2010. This is after the Ellison crew has come in, about a month before the lawsuit starts, and says, here’s the patents, we think you’re infringing, you should take a license. . . . These are negotiations by the parties – ”. (Ex. I at 41:21- 42:3 (emphasis added).)

35. Mr. Van Nest then stated that “if Oracle comes in and says, okay, you are going to have to spend all this money on a lawsuit, and we are going to seek billions of dollars, the question from the CEO is, is there any other way we can do this and avoid it, altogether?” (Exhibit I, at 42:6-10 (emphasis added).)

36. Mr. Van Nest then argued, as Mr. Baber had earlier in the day, “The alternatives we’re talking about here [in the document] might be simply alternative languages.” (Ex. I at 42:11-13.)

37. Neither Mr. Van Nest, nor any of the other five Google attorneys present, objected at the hearing that the Lindholm Document was privileged.

Google’s Assertion of Privilege

38. At approximately 8:56 pm on Thursday, July 21, 2011, Google counsel Christa Anderson wrote to Oracle counsel to assert, for the first time, that the use of confidential Google documents at the Daubert hearing violated the Protective Order because Google purportedly had not been given notice that such documents might be used. A true and correct copy of Ms. Anderson’s July 21 email is attached as Exhibit J.

39. In her July 21 email, Ms. Anderson did not assert that any of the documents used at the Daubert hearing were privileged, nor did she assert that the use of the Lindholm Document or any other document at the July 21 discovery hearing violated the protective order.

8

40. On the afternoon of July 22, 2011, at approximately 2:11 p.m., Judge Alsup issued an order on the Daubert motion. The Daubert order quoted portions of the Lindholm Clawback Draft that had been discussed the previous day (Dkt. No. 230, at 3:24-27) The order is available on Westlaw at 2011 WL 2976449. A true and correct copy of the electronic filing notice showing the time the order was issued is attached as Exhibit K.

41. Approximately four hours later, at the deposition of Daniel Bornstein, Google asserted privilege as to the Lindholm Clawback Draft that had been discussed the previous day for the first time. A true and correct copy of excerpts of the transcript of the July 22, 2011 deposition, indicating the time at which the privilege was asserted , is attached as Exhibit L.

42. At approximately 7:05 pm on Friday, July 22, Google counsel Bruce Baber wrote to Oracle counsel, asserting that the Lindholm Clawback Draft that had been previously discussed was inadvertently produced and “subject to the attorney-client privilege and/or work product doctrine” and sought to claw that document back under the Protective Order. Mr. Baber asserted that “the message was prepared as a result of direction from counsel in anticipation of litigation.” (Emphasis added.) This explanation is different from the grounds for privilege asserted in Google’s privilege log as to the Lindholm Withheld E-Mails, including the versions that Google asserts are “final.” Mr. Baber further asserted that other, unidentified copies or iterations of the Lindholm Clawback Drafts had been produced and were also being clawed back. A true and correct copy of Mr. Baber’s July 22 email is attached as Exhibit M.

43. Google’s proffered justifications for its assertions of privilege are contrary to the Lindholm Document on its face, as well as Google counsel’s own statements about it. For example:

a. Google claims that the Lindholm Document was prepared as a result of direction from counsel. But the Lindholm Document on its face states that Mr. Lindholm was acting in response to what he had “been asked to do by Larry [Page] and Sergey [Brin],” not Google counsel, (Ex. I at 23:22-24:2 (emphasis added)), and Google counsel Mr. Van Nest expressly asserted to the Court that Mr. Lindholm was acting in response to “the question from the CEO” (Exhibit I, at 42:6-10 (emphasis added).)

9

b. Google claims that the Lindholm Document was prepared “in anticipation of litigation.” But the Lindholm Document, as Mr. Jacobs correctly observed at the July 21, 2011 discovery hearing [REDACTED] (Ex. H at 34:25-35:7) Google’s own counsel, Mr. Van Nest, demonstrated the same understanding in discussing the Lindholm Document with Judge Alsup several hours later, stating that the Lindholm Document was drafted in the context of “negotiations by the parties – ”. (Ex. I at 41:21- 42:3 (emphasis added).)

c. Google claims that some versions of the Lindholm Document (log 2551, 5513) sought advice of counsel. But the Lindholm Document on its face is addressed to Mr. Rubin, not counsel, beginning with the salutation, “Hi Andy . . . .” (Ex. I at 39:24-40:2) and does not seek advice of counsel.

d. Google claims that at least one version of the Lindholm Document (log 5512) is an email “reflecting advice of counsel in preparation of litigation re alternatives for Java for Android and Chrome.” But nothing in the Lindholm Documents discussion of “what technical alternatives exist to Java for Android” or his statement that “we have been over a bunch of these and think they all suck” or his statement that “we conclude that we need to negotiate a license for Java” reflects or seeks advice of counsel.

e. Google claimed in its August 3, 2011 letter to Judge Alsup (Dkt. No. 265) that Mr. Lindholm was acting at the direction of Google General Counsel Kent Walker. But none of the relevant entries on Google’s privilege log claim that Mr. Lindholm addressed or copied his email, or any draft of it, to Mr. Walker.

44. On July 27, Google identified additional Lindholm Clawback Drafts as inadvertently produced, and asserted the right to claw all of those back. A true and correct copy of Mr. Baber’s July 27 email is attached as Exhibit N. Oracle promptly complied.

10

Google Concedes That the Privilege Does Not Protect Facts Communicated to or By an Attorney

45. Google has taken position, in examining witnesses in this case, that if a witness “learns of a nonprivileged fact through a lawyer, that doesn’t make the fact privileged.” (Exhibit W, at 173:19-21 (statement by Google counsel Daniel Purcell, at the July 28, 2011 deposition of Hasan Rizvi)). Attached as Exhibit W is a true and correct copy of excerpts from the July 28, 2011 deposition transcript of Hasan Rizvi.

Publication of Lindholm Document in Press and by Google

46. The contents of the Lindholm Document were repeated widely in the press after Judge Alsup discussed the document at the hearing, including at

a. http://fosspatents.blogspot.com/2011/08/oracle-and-google-keep-wrangling-over.html

b. http://newsandinsight.thomsonreuters.com/New_York/News/2011/08_- _August/Oracle_judge_okays_damning_e-mail_despite_Google_privilege_claim/

c. http://www.pcworld.idg.com.au/article/print/396453/google_oracle_still_battling_over_ android_e-mail/

d. http://gaddjit.com/judge-email-in-oracle-google-case-will-remain-public/smart-phones

47. In addition, Google itself continues to make the contents of the Lindholm Document widely available. As of the date of this filing, a Google search, limited to the last month, with the query “Lindholm technical alternatives exist to Java for Android they all suck we need to negotiate a license for Java” yielded over 300 hits of internet web pages quoting the Lindholm Document. The query “Android Java alternatives suck” generated over 36,000 hits in the last month alone, again, consisting of hundreds or thousands of copies of excerpts of the Lindholm Document. These quotes appear on Google’s search page itself, not just in the linked web pages. True and correct copies of screen shots of the first page generated by each of the queries quoted above on August 15, 2011, are attached as Exhibits O and P.

11

Google’s Unsuccessful Motions Before Judge Alsup

48. On July 28, 2011, Google filed a précis asking Judge Alsup for leave to file a motion to redact both the hearing transcript and the Court’s Daubert order to strike all references to the Lindholm Document – including its own characterizations of that document. On August 1, 2011, Judge Alsup denied Google’s request and held that “the document is not a communication of any type, much less a communication protected by the attorney-client privilege,” that Google’s work-product argument was “unavailing,” and that “Google has provided no indication that the disputed document is in fact subject to the claimed attorney-client privilege.” (Dkt. No. 255.)

49. On August 3, 2011, Google offered to submit additional evidence in camera, including copies of the Lindholm Documents and a declaration from Mr. Lindholm, in support of its privilege claim. (Dkt. No. 265.) The Court denied that request and held that Google’s request failed to meet the standards of Local Rule 7-9(b) to justify reconsideration. (Dkt. No. 271.)

50. Although Google has clawed back from Oracle the Lindholm Clawback Drafts, and has unsuccessfully moved Judge Alsup to strike from the public record all references to the Lindholm Clawback Draft discussed on July 21 and quoted in Judge Alsup’s July 22 Order, Google has never requested that Judge Alsup return the Court’s copy of that document.

Google’s Refusal to Produce Mr. Lindholm for Deposition Prior to Resolution of This Motion

51. On August 5, 2011, Oracle and Google submitted a joint letter on the Lindholm privilege issue. Despite the fact that the privilege issue was unresolved, the parties continued to try to schedule Mr. Lindholm’s deposition. On Tuesday, August 9, Google proposed that Mr. Lindholm appear for deposition on Tuesday August 16. Oracle promptly agreed to that offer.

52. Later on August 9, Magistrate Judge Ryu ordered the parties to submit declarations concerning the privilege issue by August 15, 2011, and to submit responsive declarations by August 19, 2011. (Dkt. No. 286) As a result of that order and the agreed deposition date, Oracle would have an opportunity to question Mr. Lindholm on any factual basis for privilege asserted by him in a declaration filed with the Court, and to file the resulting testimony on August 19.

12

53. On August 11, 2011, Google counsel wrote to Oracle counsel to state that Google would not produce Mr. Lindholm on August 16, as previously agreed, but rather would wait for Magistrate Judge Ryu’s ruling on privilege and then “promptly” offer a new date. A true and correct copy of that email is attached as Exhibit Q.

54. Oracle counsel wrote back to object, but also to confirm that, given Google’s assurance that Mr. Lindholm would be produced “promptly” after Magistrate Judge Ryu’s ruling on privilege, Google would not further delay the deposition by objecting to or appealing on order by Magistrate Judge Ryu. Google refused to commit to promptly produce Mr. Lindholm for deposition in the event that Magistrate Judge Ryu rejects Google’s privilege claim. A true and correct copy of that correspondence is attached as Exhibit R.

55. As of the date of this declaration, Mr. Lindholm has not been deposed, Google has not provided a new date on which it will produce him, and Google has not agreed to any specific event or condition, upon the occurrence of which, it would produce Mr. Lindholm for his court-ordered deposition.

I declare under penalty of perjury that the foregoing is true and correct and that this declaration was executed on August 15, 2011 at Oakland, California.

By: /s/ Fred Norton_______
Fred Norton

13


  View Printable Version


Groklaw © Copyright 2003-2013 Pamela Jones.
All trademarks and copyrights on this page are owned by their respective owners.
Comments are owned by the individual posters.

PJ's articles are licensed under a Creative Commons License. ( Details )