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Oracle v. Google - More Argument on the Copyright Issue (Connectix) - UPDATE
Friday, September 02 2011 @ 11:25 AM EDT

Although there have already been a significant number of filings in the case this week, there are really just a few that are important. One of those is Google's Reply in Support of Motion for Summary Judgement on the copyright claim. 368 [PDF] We had previously posted Oracle's response to Google's motion for summary judgment on the copyright issue. Now Google responds.

Google's response is a thorough recitation of the current law of copyright when it comes to analyzing software on the issue of copyright infringement, at least within the 9th Circuit. Google's strongest arguments are that the JAVA API's at issue are functional and, thus, not protected by copyright and, to the extent Google has copied anything, the copying has been de minimis, i.e., a few lines of code out of thousands. I am less comfortable with the scenes a faire argument Google advances if only because it does not have as strong a precedent.

One of the more humorous aspects of the Google reply is the whack they take at Oracle counsel for citing to cases that have been subsequently overruled.

3. Oracle improperly relies on dated law and other inapposite authorities. Oracle’s authorities do not support its position. The Ninth Circuit’s pre-Feist decision Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173 (9th Cir. 1989), did not address software interfaces. Moreover, the Johnson Controls court’s statement that non-literal elements may be copyrightable where they are expression rather than ideas, id. at 1175, is not relevant here, because Oracle’s APIs are methods of operation, and thus by definition are not expression. 17 U.S.C. § 102(b). In addition, the analysis in Johnson Controls parallels the Third Circuit’s pre-Feist approach in Whelan Associates v. Jaslow Dental Lab, 797 F.2d 1222 (3d Cir. 1986), which, in the Ninth Circuit’s words, has been “widely—and soundly—criticized as simplistic and overbroad.” Sega, 977 F.2d at 1525-26. Oracle, in effect, invites the Court to repeat the Whelan court’s error of defining the “idea” of a software program unduly narrowly and then wrongly assuming that everything else must be creative expression.

The CONTU Report also supports Google’s position, not Oracle’s. While the CONTU Report correctly states that the “written rules” of a game can be copyrighted even though they describe the process by which the game was played, CONTU Report at 21, this only means that the prose one uses to explain the mechanics of game may be copyrightable, even though the game mechanics themselves are not. See GOLDSTEIN ON COPYRIGHT § 2.15.1.3. As the CONTU Report explained, “[t]hat the words of a program are used ultimately in the implementation of a process should in no way affect their copyrightability.” CONTU Report at 21 (emphasis added). But while the implementation of a process (such as the implementation of an API) is potentially copyrightable, the process itself (like the abstract rules of a game, or an API itself) is not. 17 U.S.C. § 102(b).

Nor does Apple Computer, Inc. v. Formula, Int’l, Inc., 725 F.2d 521 (9th Cir. 1984), another pre-Feist case, help Oracle. In that case, the Ninth Circuit rejected Formula’s argument that operating systems, which the court noted were “programs that are designed to manage the computer system,” are unprotectable methods of operation. Id. at 523-25. Formula conceded that the code it used was substantially similar to Apple’s code, see id. at 522-23, so there was no issue whether Formula was entitled to write code, not substantially similar to Apple’s code, that independently implemented the interfaces to Apple’s operating system. Apple sought “to copyright only its particular set of instructions, not the underlying computer process.” Id. at 525. The issue in this case—not addressed in Apple v. Formula—is whether the interfaces for accessing the Java language libraries are protected. And, for the reasons expressed herein, those interfaces are unprotected methods of operation.

Oracle also mistakenly claims that in Brown Bag Software v. Symantec Corp., 960 F.2d 1465 (9th Cir. 1992), the Ninth Circuit “suggested” that screens, menus and keystrokes might be copyrightable. What the Ninth Circuit actually observed is that screens, menus and keystrokes might be suitable components for analytic dissection in the “extrinsic” prong of the test for substantial similarity. Id. at 1477. Analytic dissection is used to determine whether substantially similar elements are the result of protected or unprotected expression. Id. at 1475-76. The court’s reference to screens, menus and keystrokes as suitable components for analytic dissection does not suggest that those components are protectable, as Apple v. Microsoft made clear. Consistent with Apple v. Microsoft, the APIs and their selection and structure must be excluded from the infringement analysis because they are unprotectable. See supra, Part II.C.2.

Oracle has asked the judge to allow oral argument on this summary judgment motion regarding copyright. 383 [PDF]

The other significant argument raised in these filings was Google's objection to portions of the Opening Expert Report of John C. Mitchell Regarding Patent Infringement. 377 [PDF] Google claims Oracle is trying to slip in some new infringement allegations. Of course, Oracle denies it. 380 [PDF] Judge Alsup is giving Google the benefit of the doubt on the issue and ordering a briefing and hearing on the issue. 382 [PDF]

Dr. James R. Kearl, the Abraham O. Smoot Professor of Economics at Brigham Young University, has been appointed 374 [PDF] to serve as the Rule 706 damages expert, with Attorney John Cooper of Farella Braun + Martel LLP serving as Dr. Kearl's pro bono counsel. Dr. Kearl also serves as a senior consultant to Charles River Associates, which offers this biographical information:

Education

Post Doctoral, Economics and Law, Harvard University
Ph.D. Economics, Massachusetts Institute of Technology
B.A. Mathematics and Economics, Utah State University

Experience

J.R. Kearl, Senior Consultant, specializes in applied microeconomics, industrial organization, and public policy. His areas of expertise include public policy analysis, the economics of antitrust, regulation, intellectual property, economic damages, and trade policy. Dr. Kearl is the A.O. Smoot professor of economics at Brigham Young University. While a white house fellow, he served as a special assistant to the secretary of defense and to the U.S. trade representative, and has also served on the U.S. Census Advisory Committee on Population Statistics.

Finally, Judge Alsup alerted the parties to a potential conflict with the start of the trial. Judge Alsup has two major criminal trials pending. If the second goes forward as scheduled (commencing on October 17) it will delay the commencement of the trial in this case. 366 [PDF]

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

UPDATE

Some of you will recall Dr. Kearl from the SCO case where he represented IBM. An earlier Groklaw article on Dr. Kearl.


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

Docket

364  - Filed and Entered: 08/29/2011
ORDER
Docket Text: ORDER GRANTING STIPULATED REQUEST TO EXTEND DUE DATES FOR EXPERT REBUTTAL AND REPLY REPORTS ON PATENT-RELATED ISSUES re 348 Stipulation filed by Google Inc.. Signed by Judge Alsup on August 29, 2011. (whalc1, COURT STAFF) (Filed on 8/29/2011) (Entered: 08/29/2011)

365  - Filed and Entered: 08/29/2011
ORDER
Docket Text: ORDER denying 280 as untimely filed. Signed by Magistrate Judge Donna M. Ryu on 9/8/2011. (dmrlc2, COURT STAFF) (Filed on 8/29/2011) (Entered: 08/29/2011)

366  - Filed and Entered: 08/29/2011
ORDER
Docket Text: ORDER REGARDING JURY SELECTION. Signed by Judge Alsup on August 29, 2011. (whalc1, COURT STAFF) (Filed on 8/29/2011) (Entered: 08/29/2011)

367  - Filed and Entered: 08/29/2011
DECLARATION
Docket Text: DECLARATION in Opposition to 360 Order filed by Oracle America, Inc.. (Attachments: # 1 Exhibit Unredacted Exhibit 1 to F. Norton's Second Declaration In Response to Declarations Submitted On Behalf Of Google)(Related document(s) 360 ) (Norton, William) (Filed on 8/29/2011) (Entered: 08/29/2011)

368  - Filed and Entered: 08/29/2011
REPLY
Docket Text: REPLY (re 260 MOTION for Summary Judgment on Count VIII of Plaintiff Oracle America's Amended Complaint ) filed by Google Inc.. (Kwun, Michael) (Filed on 8/29/2011) (Entered: 08/29/2011)

369  - Filed and Entered: 08/29/2011
DECLARATION
Docket Text: Declaration of MICHAEL S. KWUN in Support of 368 Reply to Opposition/Response to Defendant Google Inc.'s Motion for Summary Judgment on Count VIII of Plaintiff Oracle America's Amended Complaint filed byGoogle Inc.. (Attachments: # 1 Exhibit EE, # 2 Exhibit FF, # 3 Exhibit GG)(Related document(s) 368 ) (Kwun, Michael) (Filed on 8/29/2011) (Entered: 08/29/2011)

370 - Filed and Entered: 08/29/2011
DECLARATION
Docket Text: Declaration of DANIEL BORNSTEIN in Support of 368 Reply to Opposition/Response to Defendant Google Inc.'s Motion for Summary Judgment on Count VIII of Plaintiff Oracle America's Amended Complaint filed byGoogle Inc.. (Related document(s) 368 ) (Kwun, Michael) (Filed on 8/29/2011) (Entered: 08/29/2011)

371 Filed and Entered: 08/29/2011
DECLARATION
Docket Text: Declaration of OWEN ASTRACHAN in Support of 368 Reply to Opposition/Response to Defendant Google Inc.'s Motion for Summary Judgment on Count VIII of Plaintiff Oracle America's Amended Complaint filed byGoogle Inc.. (Related document(s) 368 ) (Kwun, Michael) (Filed on 8/29/2011) (Entered: 08/29/2011)

372 Filed and Entered: 08/29/2011
ADMINISTRATIVE MOTION
Docket Text: Administrative Motion to File Under Seal Exhibit 3 to the Reply Astrachan Declaration in Support of Motion for Summary Judgment on Count VIII of Plaintiff Oracle America's Amended Complaint filed by Google Inc.. (Kwun, Michael) (Filed on 8/29/2011) (Entered: 08/29/2011)

373 - Filed and Entered: 08/29/2011
CERTIFICATE OF SERVICE
Docket Text: CERTIFICATE OF SERVICE by Google Inc. (Exhibit 3 to 371 Reply Declaration of Owen Astrachan in Support of Defendant Google Inc.'s Motion for Summary Judgment on Count VIII of Plaintiff Oracle America's Amended Complaint [Proposed] Publicly Filed Version--Redacted; and Unredacted Version (Kwun, Michael) (Filed on 8/29/2011) Modified on 8/30/2011 (wsn, COURT STAFF). (Entered: 08/29/2011)

374 - Filed and Entered: 08/30/2011
ORDER
Docket Text: ORDER APPOINTING RULE 706 EXPERT AND COUNSEL. Signed by Judge Alsup on August 30, 2011. (whalc1, COURT STAFF) (Filed on 8/30/2011) (Entered: 08/30/2011)

375 - Filed and Entered: 08/30/2011
ORDER
Docket Text: ORDER PARTIALLY GRANTING AND PARTIALLY DENYING MOTION TO FILE OPPOSITION MATERIALS UNDER SEAL, Order by Hon. William Alsup granting in part and denying in part 340 Administrative Motion to File Under Seal.(whalc1, COURT STAFF) (Filed on 8/30/2011) (Entered: 08/30/2011)

376 - Filed and Entered: 08/30/2011
ORDER
Docket Text: ORDER CLARIFYING ORDER REGARDING JURY SELECTION re 366 Order. Signed by Judge Alsup on August 30, 2011. (whalc1, COURT STAFF) (Filed on 8/30/2011) (Entered: 08/30/2011)

377 - Filed and Entered: 08/30/2011
LETTER
Docket Text: Letter from Scott T. Weingaertner requesting leave to file motion to strike portions of the Mitchell expert report on patent infringement. (Francis, Mark) (Filed on 8/30/2011) (Entered: 08/30/2011)

378 - Filed and Entered: 09/01/2011
STIPULATION
Docket Text: STIPULATION AND [PROPOSED] ORDER TO EXTEND THE CUT-OFF FOR THE DEPOSITIONS OF MOTOROLA MOBILITY, INC., DIPCHAND NISHAR, AND THOMTHY LINDHOLM by Oracle America, Inc.. (Muino, Daniel) (Filed on 9/1/2011) (Entered: 09/01/2011)

379 - Filed and Entered: 09/01/2011
DECLARATION
Docket Text: Declaration in Support of 372 Administrative Motion to File Under Seal Exhibit 3 to the Reply Astrachan Declaration in Support of Motion for Summary Judgment on Count VIII of Plaintiff Oracle America's Amended Complaint Declaration of George P. Simion in Support of Google's Administrative Motion to File Under Seal filed byOracle America, Inc.. (Attachments: # 1 Attachment 1 (revised redacted version of Exhibit 3 to the Reply Astrachan Declaration), # 2 Proposed Order [Proposed] Order Granting Google's Administrative Motion to File Under Seal)(Related document(s) 372 ) (Swoopes, Roman) (Filed on 9/1/2011) (Entered: 09/01/2011)

380 - Filed and Entered: 09/01/2011
LETTER
Docket Text: Letter Brief re 377 Letter opposition to Google's request for leave to move to strike portions of the Opening Expert Report of John C. Mitchell filed byOracle America, Inc.. (Related document(s) 377 ) (Jacobs, Michael) (Filed on 9/1/2011) (Entered: 09/01/2011)

381 - Filed & Entered: 09/01/2011
ORDER
Docket Text: ORDER APPROVING STIPULATION TO EXTEND DEADLINE FOR THREE DEPOSITIONS re [378] Stipulation filed by Oracle America, Inc.. Signed by Judge Alsup on September 1, 2011. (whalc1, COURT STAFF) (Filed on 9/1/2011)

382 - Filed & Entered: 09/01/2011
ORDER
Docket Text: ORDER GRANTING LEAVE TO FILE LIMITED MOTION TO STRIKE re [377] Letter filed by Google Inc.. Signed by Judge Alsup on September 1, 2011. (whalc1, COURT STAFF) (Filed on 9/1/2011)

383 - Filed and Entered: 09/01/2011
LETTER BRIEF
Docket Text: Letter Brief requesting oral argument on Google's motion for summary judgment scheduled for September 15, 2011 filed by Oracle America, Inc.. (Jacobs, Michael) (Filed on 9/1/2011) (Entered: 09/01/2011)


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

Documents

368:

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

GOOGLE INC.’S REPLY IN SUPPORT
OF MOTION FOR SUMMARY
JUDGMENT ON COUNT VIII OF
PLAINTIFF ORACLE AMERICA’S
AMENDED COMPLAINT

Judge: Hon. William Alsup

Hearing: 2:00 p.m., September 15, 2011

TABLE OF CONTENTS

Page

I. INTRODUCTION ...........1

II. ARGUMENT...............1

A. The Court should ignore or strike Oracle’s improper objections..............1

B. Oracle must prove “virtual identity” between the works, which it
cannot do................1

C. The Java language APIs are methods of operation..............2

1. Oracle repeatedly mischaracterizes the APIs in an attempt to
show creative expression where there is none.............2

2. Oracle’s examples of “creativity” in the design of APIs are
examples of form following function, and thus militate against
copyrightability........3

a. The selection of elements to include in a set of APIs is
not copyrightable. .........4

b. The structure for a set of APIs is not copyrightable.........5

c. The names of the elements in the APIs are not
copyrightable.........6

3. Oracle improperly relies on dated law and other inapposite
authorities............6
D. Any creative expression in the Java language APIs has merged into
their underlying ideas, or is unprotected scenes a faire........8

E. Google’s fair use case is stronger than that of Sony v. Connectix, in
which the Ninth Circuit held that Connectix’s use was fair.........9

F. Oracle has identified no inconsistency between Google’s position and
Google’s treatment of its own APIs........10

G. Oracle offers no evidence of substantial similarity between the
documentation of the Android core libraries and the Java
language API
documentation.........11

H. The alleged copying in portions of 12 files out of several thousands of
files is de minimis and thus not actionable.........12

1. The alleged copying must be considered against the entirety of
the Asserted Works to determine whether it is de minimis........12

2. The rangeCheck function is not qualitatively or quantitatively
significant..........13

i

TABLE OF CONTENTS
(cont'd)

Page

3. The eight allegedly decompiled files are not qualitatively
or quantitatively significant.....14

4. The allegedly copied comments in the remaining two files are
not qualitatively or quantitatively significant. ........14

5. Google’s implementation of 37 Java language API packages is
irrelevant to the de minimis analysis........15

III. CONCLUSION..............15

ii

TABLE OF AUTHORITIES

Page(s)

Federal Cases

Allen v. Academic Games League of America, Inc.
89 F.3d 614 (9th Cir. 1996) ..........7

Apple Computer, Inc. v. Formula, Int’l, Inc.
725 F.2d 521 (9th Cir. 1984) ...........7

Apple Computer, Inc. v. Microsoft Corp.
35 F.3d 1435 (9th Cir. 1994) ..........1, 8

ATC Distribution Group, Inc. v. Whatever It Takes Transmissions & Parts, Inc.
402 F.3d 700 (6th Cir. 2005) ..........3

Autoskill Inc. v. National Educational Support Systems, Inc.
994 F.2d 1476 (10th Cir. 1993) ...........8

Bean v. McDougal Littell
669 F. Supp. 2d 1031 (D. Ariz. 2008) ........12

Brown Bag Software v. Symantec Corp. 960 F.2d 1465 (9th Cir. 1992) .......7, 8

CMAX/Cleveland, Inc. v. UCR, Inc.
804 F. Supp. 337 (M.D. Ga. 1992) ..........8

Engineering Dynamics, Inc. v. Structural Software, Inc.
26 F.3d 1335 (5th Cir. 1994) ..........8

Feist Pubs., Inc. v. Rural Tele. Serv. Co.
499 U.S. 340 (1991)............1, 5, 14, 15

Gates Rubber Co. v. Bando Chem. Indus., Ltd.
9 F.3d 823 (10th Cir. 1993) .........3

Incredible Techs., Inc. v. Virtual Techs., Inc.
400 F.3d 1007 (7th Cir. 2005) .........12

Johnson Controls, Inc. v. Phoenix Control Sys., Inc.
886 F.2d 1173 (9th Cir. 1989) .........6

Johnson v. Gordon
409 F.3d 12 (1st Cir. 2005)........11, 15

Lotus v. Borland
49 F.3d 807 (1st Cir. 1995), aff’d by an evenly divided court, 516 U.S. 233 (1996)...... passim

Mattel, Inc. v. MGA Entm’t, Inc.
616 F.3d 904 (9th Cir. 2010) ..........15

Matthew Bender & Co., Inc. v. West Pub. Co.
158 F.3d 674 (2d Cir. 1998) ...........4

Mitel, Inc. v. Iqtel, Inc.
124 F.3d 1366 (10th Cir. 1997) .......9

Newton v. Diamond
388 F.3d 1189 (9th Cir. 2004) .......13, 14

iii

TABLE OF AUTHORITIES
(cont'd)

Page(s)

Northwestern Nat’l Ins. Co. v. Baltes
15 F.3d 660 (7th Cir. 1994) .......11

Sega Enters. Ltd. v. Accolade, Inc.
977 F.2d 1510 (9th Cir. 1993) ....... passim

Sony Computer Entm’t, Inc. v. Connectix Corp.
203 F.3d 596 (9th Cir. 2000) ....9, 10, 11

Whelan Associates v. Jaslow Dental Lab
797 F.2d 1222 (3d Cir. 1986) .........6

Federal Statutes

17 U.S.C. § 102(b) ......... passim

17 U.S.C. § 106 ............5

Federal Rules

CIV. L.R. 7-3(a).......1

FED. R. CIV. P. 56(c) ..........14

FED. R. EVID. 201(b) ...........9

Federal Regulations

37 C.F.R. § 202.1 ........6

37 C.F.R. § 202.3(b)(3)........12

37 C.F.R. § 202.3(b)(4)(i)(A) ..........12

Other Authorities

H.R. Rep. No. 1476, 94th Cong., 2d Sess. 57 (1976), reprinted in 1976 U.S.C.C.A.N. 5659 ........3

Michael A. Jacobs, Copyright & Compatibility, 30 JURIMETRICS J. 91, 102 (1989)........4

PAUL GOLDSTEIN, GOLDSTEIN ON COPYRIGHT (3d ed. 2011)..........2, 3, 7, 8

iv

I. INTRODUCTION

Oracle’s Opposition concedes that, with the exception of portions of 12 out of several thousand files, it has no evidence of any copying by Google of any Oracle source code. Aside from those 12 files, Oracle’s copyright claim is premised on “non-literal” infringement and the incorrect notion that the Java language APIs—separate and apart from their implementations, which Google did not copy—are copyrightable.

The Java language APIs at issue are unprotectable methods of operation, as Sun (now Oracle) itself told Congress in 1994. And even if there was any creative expression in those APIs, that expression has necessarily merged into the ideas represented by the APIs or is unprotectable scenes a faire, or its use by Google is a fair use as a matter of law.

Oracle’s argument is largely based on the assertions that designing good APIs is difficult; that designing a highly functional set of APIs requires careful choices; and that given the alleged complexity of its APIs, they must contain some creative expression. But the Supreme Court rejected this type of “sweat of the brow” approach to copyrightability over twenty years ago. Feist Pubs., Inc. v. Rural Tele. Serv. Co., 499 U.S. 340 (1991). An extensive effort can no more transform methods of operation into copyrightable subject matter than industrious collection can turn facts into creative expression.

Sun’s CTO was correct. Functional interfaces are not copyrightable. The Court should grant Google’s motion for summary judgment on Oracle’s copyright claim.

II. ARGUMENT

A. The Court should ignore or strike Oracle’s improper objections.

“Any evidentiary and procedural objections to the motion must be contained within the [opposition] brief or memorandum.” CIV. L.R. 7-3(a). Oracle filed 8 pages of objections in addition to a 25-page opposition. The Court should reject Oracle’s improper objections.

Oracle must prove “virtual identity” between the works, which it cannot do.

Where “the range of protectable and unauthorized expression is [at most] narrow, the appropriate standard for illicit copying is virtual identity.” Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1439 (9th Cir. 1994). The Java language APIs are not protected at all, and

1

the remaining allegedly copied expression is de minimis. Judged against the “virtual identity” standard—or even the “substantially similar” standard—there is no copyright infringement.

C. The Java language APIs are methods of operation.

The Java language APIs are the means by which developers can access the functionality of the Java language libraries. They are, in a very literal sense, methods for operating portions of the only works that Oracle pleaded in its Amended Complaint, namely versions 1.4 and 5.0 of the Java 2 Standard Edition platform1 (the “Asserted Works”). The APIs define the precise statements that must used for developers to access the functionalities in the Java language libraries. The APIs are thus unprotectable methods of operating the Java language libraries. 17 U.S.C. § 102(b); see also PAUL GOLDSTEIN, GOLDSTEIN ON COPYRIGHT § 10.5.1 (3d ed. 2011) (courts have “categorically excluded copyright protection for interface specifications”).2

1. Oracle repeatedly mischaracterizes the APIs in an attempt to show creative
expression where there is none.
Oracle repeatedly mischaracterizes the APIs, implying that they contain creative expression. Oracle is wrong.

According to Oracle, the APIs “tell” how to use the libraries. Opp. at 2:27. Oracle is wrong. The APIs do not “tell” how to use the libraries, they are the means by which one uses the libraries; the documentation3 for the APIs “tells” how to use the libraries.

According to Oracle, the APIs are the “blueprint” for the libraries. Id. at 3:5-6. Oracle is wrong. Unlike a blueprint, which states in detail how to build a structure, the APIs merely define the functions that the libraries implement. The proper analogy would be to a summary building

________________________

1 In addition to the APIs at issue, the Asserted Works include significant additional elements (such as the Java platform virtual machine and development tools) that are not the subject of Oracle’s copyright claim.

2 Oracle also claims that Google’s implementation (i.e., the collection of Java language libraries) is a derivative work of Oracle’s APIs, see Opp. at 6:5-9, even though it concedes that except for portions of 12 files there is no evidence of literal code copying. This type of bootstrapping is unsupportable. Copying an idea, fact or method of operation cannot be made actionable by alleging that the non-infringing code implementing these unprotectable elements is a derivative work. If it were, the non-infringing competitors would not have prevailed in Apple v. Microsoft, Sega v. Accolade, Sony v. Connectix or Lotus v. Borland.

3 Oracle’s claim that Google’s documentation infringes is addressed separately. See Part II.G, infra.

2

plan that identifies the rooms that are to be included and other functional requirements, but does not describe implementation details. As Oracle’s expert acknowledges, the APIs are an “abstraction.” Mitchell Decl., Ex. 2 ¶ 23.

According to Oracle, the APIs “describe” the fields and methods in the library classes. Id. at 3:11. Oracle is wrong. The documentation might “describe” the fields and methods, but an API merely identifies the fields and methods that are included.

In short, the APIs are not the libraries themselves, and they do not “describe” or “tell” how to operate the libraries. Instead, the APIs are the methods of operating the libraries. And, by definition, methods of operation are not creative expression within the meaning of the Copyright Act. See 17 U.S.C. § 102(b).4

2. Oracle’s examples of “creativity” in the design of APIs are examples of form following function, and thus militate against copyrightability.
Oracle argues that the design of good APIs requires skill and creativity, and that as a result its APIs are copyrightable. But that is not the law: “Original and creative ideas . . . are not copyrightable . . . .” ATC Distribution Group, Inc. v. Whatever It Takes Transmissions & Parts,Inc., 402 F.3d 700, 707 (6th Cir. 2005) (citing 17 U.S.C. § 102(b)). Moreover, functional aspects of a work are not copyrightable. Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1524 (9th Cir. 1993) (citing 17 U.S.C. § 102(b)). The functional and factual aspects of a work may be copied, “as may those expressive elements of the work that ‘must necessarily be used as incident to’ expression of the underlying ideas, functional concepts, or facts.” Id. (quoting Baker v. Selden, 101 U.S. 99, 104 (1879)). Consistent with these core copyright principles, a work that is “largely functional” receives only weak protection under the Copyright Act. 977 F.2d at 1527.

The aspects of API design that Oracle points to in support of its claim of creativity all focus on enhancing the functionality of APIs.5 Oracle argues that well-designed APIs are “easier

________________________

4 See also H.R. Rep. No. 1476, 94th Cong., 2d Sess. 57 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5670 (“the expression adopted by the programmer is the copyrightable element in a computer program, and . . . the actual processes or methods embodied in the program are not within the scope of the copyright law”). At least one court has suggested that system architecture is one of the most common places where uncopyrightable processes will be found. See Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 837 (10th Cir. 1993).

5 The testimony from Google witnesses is not to the contrary. Some engineers prefer designing APIs over implementing, but that does not mean that APIs are more creatively expressive than the underlying code. Reply Astrachan Decl., Ex. 4 ¶ 32. Instead, it means that some engineers prefer coming up with ideas, while others prefer the different challenges that come from writing code in different ways to implement an idea. Id.

3

to learn and use” (Opp. at 3:23-24), and “almost disappear from sight” (id. at 4:1, quoting Swoopes Decl., Ex. 21). Oracle argues, in effect, that form follows function in well-designed APIs. But designing for functionality is the very antithesis of creative expression.6

a. The selection of elements to include in a set of APIs is not copyrightable.
Oracle argues that its selection of API elements is protected. Opp. at 12:23-25 (“If the designer includes too little, the developers will not have the tools and flexibility they prefer. If the designer includes too much, the APIs become overwhelming and difficult to use.”). These arguments are immaterial because they do not make the APIs protectable. Determining what features are “must have” features may well require creative insights into the needs of programmers. Determining the point at which the cost of increasing difficulty of use outweighs the benefits of increased options may require refined judgment calls. But the feature set that results from this process is not a creative expression. Instead, it is a designer’s best guess at the optimal feature set for a product. Whether that notion is called an idea, a system, or a method of operation, it is not protected by copyright. See 17 U.S.C. § 102(b); see also Matthew Bender & Co., Inc. v. West Pub. Co., 158 F.3d 674, 682 (2d Cir. 1998) (finding “[t]he creative spark is missing where . . . the author made obvious, garden-variety, or routine selections . . . .”).

Oracle’s theory would lead to absurd results. If feature sets in software were copyrightable, then competitors could not include the same feature set in their software. Moreover, Oracle concedes that the Android class libraries do not include all of the Oracle API elements, and that Android includes many API elements that the Oracle APIs lack. See Opp. at 20:27-21:1. Thus, under Oracle’s theory, merely having a partially overlapping feature set

____________________

6 Industry practice has long reflected that APIs are uncopyrightable. For example, while AT&T required that vendors using its Unix implementation take a license, it understood that the specifications for the UNIX interfaces were not protected by copyright. See Michael A. Jacobs, Copyright & Compatibility, 30 JURIMETRICS J. 91, 102 (1989). Similarly, vendors of IBM compatible personal computers relied on the unprotectability of interfaces in developing noninfringing alternatives to IBM’s BIOS. See id. Both Sun and Oracle have repeatedly relied on this principle. See id. at 100; Astrachan Decl., Ex. 1 ¶¶ 62-86.

4

would constitute infringement. Such a result would allow developers to misuse copyright to claim monopoly control over entire product areas. This is precisely what the idea-expression dichotomy, on which copyright law is premised, is designed to prevent.

Because the Java language APIs and their elements are functional, Google (and others) could have freely implemented all of the Java language APIs. But those elements are functional (and thus unprotectable) regardless of whether Google implemented all of them, or only some. Google’s decision to implement only a subset of the APIs cannot transform those APIs into protectable expression. Similarly, the presence in Android of additional APIs that are not part of the Java platform cannot change the unprotectable nature of the Java language APIs, and does nothing to detract from Google’s non-infringement argument. The Borland spreadsheet, for example, included commands not present in the Lotus 1-2-3 spreadsheet. See Lotus v. Borland, 49 F.3d 807, 810 (1st Cir. 1995), aff’d by an evenly divided court, 516 U.S. 233 (1996).7

b. The structure for a set of APIs is not copyrightable.
Oracle also argues that “designing the appropriate structure” for a set of APIs results in creative expression. Opp. at 12:17. Oracle claims that the structure “is critical to the programmer,” and that, depending on the structure chosen, an API can be “your organization’s biggest asset” or can “even turn your users toward your competitor.” Id. at 13:6-19. These arguments are irrelevant to copyrightability. Not everything of value or competitive advantage is protected by copyright. Copyright protection is limited to original and creative expression of the types eligible for protection under the Copyright Act.

The structure chosen by the designers of Oracle’s APIs is functional, not creative expression.8 To make use of the APIs, developers must know, among other things, the package,

__________________________

7 Oracle’s claims that Google “fragmented” the Java APIs and that copyright should be used to enforce its “compatibility” licensing goals, see, e.g., Opp. at 8:9-15, 21:9-16, are likewise irrelevant. The Copyright Act does not protect against fragmentation or permit only “compatible” uses of unprotected elements. See 17 U.S.C. §§ 102(b), 106. Instead, everyone is allowed “to build freely upon the ideas and information conveyed by a work.” Feist, 499 U.S. at 350. Google is entitled to use as much or little as it wishes of Oracle’s unprotectable methods of operation.

8 A phone book could be organized alphabetically by last or first name, or geographically by street. The fact that there are different functional ways that data can be organized does not make any of those functional choices copyrightable. See Feist, 499 U.S. at 362-63.

5

class, and subclass to which the methods belong; the parameters the methods take; the order of the parameters; the fields the data structures use; and how those fields are arranged. All of those features are necessary elements of the methods by which developers access the functionality in the libraries. Astrachan Decl., Ex. 1 ¶¶ 129-33; Reply Astrachan Decl., Ex. 4 ¶ 26.

c. The names of the elements in the APIs are not copyrightable.
Oracle’s opposition ignores the fundamental copyright principle that the names of the APIs and their elements are not copyrightable: “Words and short phrases such as names, titles, and slogans” are not copyrightable. 37 C.F.R. § 202.1 (emphasis added). There is no prohibition against using unprotected material, and that tautology is no less true if one uses many unprotected elements rather than just a few. Oracle’s fallback position—that the selection, coordination, and arrangement of unprotected elements can itself be expressive—fares no better, because the selection and structure of the APIs are not expressive, as explained above. See also Lotus, 49 F.3d at 816 (even if a software developer makes “some expressive choices” in choosing and arranging the menu items in its user interface, “that expression is not copyrightable because it is part of [the program’s] ‘method of operation.’”).

3. Oracle improperly relies on dated law and other inapposite authorities.
Oracle’s authorities do not support its position. The Ninth Circuit’s pre-Feist decision Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173 (9th Cir. 1989), did not address software interfaces. Moreover, the Johnson Controls court’s statement that non-literal elements may be copyrightable where they are expression rather than ideas, id. at 1175, is not relevant here, because Oracle’s APIs are methods of operation, and thus by definition are not expression. 17 U.S.C. § 102(b). In addition, the analysis in Johnson Controls parallels the Third Circuit’s pre-Feist approach in Whelan Associates v. Jaslow Dental Lab, 797 F.2d 1222 (3d Cir. 1986), which, in the Ninth Circuit’s words, has been “widely—and soundly—criticized as simplistic and overbroad.” Sega, 977 F.2d at 1525-26. Oracle, in effect, invites the Court to repeat the Whelan court’s error of defining the “idea” of a software program unduly narrowly and then wrongly assuming that everything else must be creative expression.

The CONTU Report also supports Google’s position, not Oracle’s. While the CONTU

6

Report correctly states that the “written rules” of a game can be copyrighted even though they describe the process by which the game was played, CONTU Report at 21, this only means that the prose one uses to explain the mechanics of game may be copyrightable, even though the game mechanics themselves are not. See GOLDSTEIN ON COPYRIGHT § 2.15.1.3.9 As the CONTU Report explained, “[t]hat the words of a program are used ultimately in the implementation of a process should in no way affect their copyrightability.” CONTU Report at 21 (emphasis added). But while the implementation of a process (such as the implementation of an API) is potentially copyrightable, the process itself (like the abstract rules of a game, or an API itself) is not. 17 U.S.C. § 102(b).

Nor does Apple Computer, Inc. v. Formula, Int’l, Inc., 725 F.2d 521 (9th Cir. 1984), another pre-Feist case, help Oracle. In that case, the Ninth Circuit rejected Formula’s argument that operating systems, which the court noted were “programs that are designed to manage the computer system,” are unprotectable methods of operation. Id. at 523-25. Formula conceded that the code it used was substantially similar to Apple’s code, see id. at 522-23, so there was no issue whether Formula was entitled to write code, not substantially similar to Apple’s code, that independently implemented the interfaces to Apple’s operating system. Apple sought “to copyright only its particular set of instructions, not the underlying computer process.” Id. at 525. The issue in this case—not addressed in Apple v. Formula—is whether the interfaces for accessing the Java language libraries are protected.10 And, for the reasons expressed herein, those interfaces are unprotected methods of operation.

Oracle also mistakenly claims that in Brown Bag Software v. Symantec Corp., 960 F.2d 1465 (9th Cir. 1992), the Ninth Circuit “suggested” that screens, menus and keystrokes might be copyrightable. What the Ninth Circuit actually observed is that screens, menus and keystrokes might be suitable components for analytic dissection in the “extrinsic” prong of the test for

________________________

9 But see Allen v. Academic Games League of America, Inc., 89 F.3d 614, 617-18 (9th Cir. 1996) (applying merger doctrine and denying protection even to expression in game manuals).

10 Indeed, Oracle’s expert acknowledges the distinction between the expression in implementing code and the ideas of the APIs themselves when he states that the source code that implements the APIs is the “written expression” of the API. Mitchell Decl., Ex. 2 ¶ 55.

7

substantial similarity. Id. at 1477. Analytic dissection is used to determine whether substantially similar elements are the result of protected or unprotected expression. Id. at 1475-76. The court’s reference to screens, menus and keystrokes as suitable components for analytic dissection does not suggest that those components are protectable, as Apple v. Microsoft made clear. Consistent with Apple v. Microsoft, the APIs and their selection and structure must be excluded from the infringement analysis because they are unprotectable. See supra, Part II.C.2.11

D. Any creative expression in the Java language APIs has merged into their underlying ideas, or is unprotected scenes a faire.

To implement APIs that are compatible with the Java language APIs, Google had no choice but to replicate the precise details of the interfaces, just as GNU and Apache did with the GNU Classpath and Apache Harmony projects. See Mot. at 8:21-9:3.12 Nonetheless, citing Control Data Sys., Inc. v. Infoware, Inc., 903 F. Supp. 1316, 1323 (D. Minn. 1995), Oracle argues that because Sun had many options available when it designed the APIs, the particular choices Sun made do not merge into the ideas underlying the APIs. Opp. at 16:24-28. Courts in the Ninth Circuit, however, have rejected this approach. See GOLDSTEIN ON COPYRIGHT § 2.3.2.1 (observing that courts in the Ninth Circuit have held that “it is the range of expressive choice that existed at the time the competing product was created—not the range of expression that existed at the time the copyrighted work was created—that controls”).

For example, in Sega, the Ninth Circuit noted that even specific computer code can be copied if it is the only means of accomplishing a task. 977 F.2d at 1524. At issue was code Sega had written and by which Sega-authorized games “unlocked” its Genesis gaming console. Id. at 1524 n.7. The court did not focus on whether the plaintiff had more than one option available to it when writing the “unlock” code, as it likely did. The court focused instead on whether the defendant at the time of the alleged infringement had alternatives to using the Sega code. Id.

_______________________

11 Oracle also relies on Engineering Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335, 1345-46 (5th Cir. 1994), which followed the district court reasoning in Lotus that was reversed by the First Circuit in 1995; and Autoskill Inc. v. National Educational Support Systems, Inc., 994 F.2d 1476 (10th Cir. 1993), and CMAX/Cleveland, Inc. v. UCR, Inc., 804 F. Supp. 337, 355 (M.D. Ga. 1992), both of which pre-date Lotus, Mitel, and Apple v. Microsoft.

12 Oracle does not dispute that it has not accused the GNU Classpath or Apache Harmony implementations of these same APIs of infringing its copyrights.

8

Concluding that there were no such alternatives, the court rejected the argument that copying the unlock code infringed Sega’s copyright. Id.

Oracle does not seriously dispute that to implement APIs that interoperate with the Java language APIs, Google had to adopt the structure and organization of those APIs. See Opp. at 17:1-3.13 Given the lack of choices available to Google, any arguable expression in the Java language APIs merges with the idea of providing APIs that are interoperable with the Java language APIs. See Lotus, 49 F.3d at 818 (“In the context of methods of operation” using unprotectable ideas “requires the use of the precise method of operation already employed”).14

E. Google’s fair use case is stronger than that of Sony v. Connectix, in which the Ninth Circuit held that Connectix’s use was fair.

In Sony Computer Entm’t, Inc. v. Connectix Corp., 203 F.3d 596 (9th Cir. 2000), the Ninth Circuit held that the repeated intermediate copying of the entire code for Sony’s PlayStation BIOS was fair because the end product, Connectix’s Virtual Game Station (“VGS”), copied only unprotected elements of the BIOS. Among other things, VGS copied the “entry points” (i.e., the interface) into the BIOS and implemented 137 of the 242 functions supported by the BIOS. See Reply Kwun Decl., Ex. GG (Connectix’s Opening Appellate Brief) at 13, 18.15 Connectix deduced the required functionality by examining the parameters sent to the BIOS and the information returned by the BIOS. See id. at 13. In short, Connectix copied the APIs for over half of the functions in the Sony PlayStation BIOS. Moreover, during the development of VGS, Connectix repeatedly copied the entirety of the BIOS—i.e., Sony’s implementations as

________________________

13 Oracle suggests, without any supporting citation, that implementing the APIs at issue was not necessary to ensure compatibility with “Java.” Opp. at 17:18-19. But Oracle nowhere disputes that to support use of the Java programming language (which Sun long encouraged and over which Oracle claims no copyright) and provide interoperability with the well-known constructs in the Java language APIs, Google had to make use of the names, organization and structure of those APIs.

14 Oracle criticizes Lotus by noting that the Tenth Circuit took a different approach in Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366 (10th Cir. 1997). Opp. at 11:6-12. Mitel relied on scenes a faire, 124 F.3d at 1374-76, while Lotus relied on section 102(b), 49 F.3d at 815. However, under either approach, Oracle’s APIs are not protectable.

15 Google requests that the Court take judicial notice of Connectix’s Opening Appellate brief for the purpose of clarifying the facts and issues that were before the Ninth Circuit in that case. See FED. R. EVID. 201(b).

9

well. See 203 F.3d at 605.

Google, like Connectix, has developed an end product that includes implementations of a subset of the plaintiff’s APIs. Google, like Connectix, did so for the purpose of increasing interoperability. Oracle, like Sony, accuses the defendant of competing with its product. Here, however, Oracle has not accused Google of making unlawful intermediate copies of its implementation of the Java language APIs. And the undisputed facts show that Java has only become more popular since this lawsuit was filed. Compare Kwun Decl., Ex. A (Am. Compl.) ¶ 9 (alleging over 6.5 million Java developers) with Reply Kwun Decl., Ex. EE at 1 (recent Oracle press release touting over 9 million Java developers). Far from harming Oracle’s market, Android apparently “strapped another set of rockets to the [Java] community’s momentum,” just as Sun’s CEO predicted. Kwun Decl., Ex. L.

The undisputed facts are therefore even more strongly in Google’s favor than they were in Connectix’s favor in Sony. The Ninth Circuit held, as a matter of law, that Connectix’s use of Sony’s BIOS APIs was fair. Sony, 203 F.3d at 608. A fortiori, Google’s use of the Java language APIs must also be fair.

F. Oracle has identified no inconsistency between Google’s position and Google’s treatment of its own APIs.

In a single sentence with no analysis, Oracle incorrectly claims that Google “asserts copyright . . . over its own APIs.” Opp. at 14:15-16. None of the three cited exhibits supports this conclusion. For example, the AdSense agreement states only that to the extent that there are intellectual property rights (including copyrights) in the “AdSense API Specifications,” those belong to Google. See Swoopes Decl., Ex. 23 at 6 (§ IV.10). Moreover, the agreement defines “AdSense API Specifications” to include the “Google-supplied implementations . . . of AdSense API,” not just the APIs themselves, which is what is at issue here. Id., Ex. 23 at 1 (§ I) (emphasis added); see also id., Ex. 24 at 4 (§ III.2) & Ex. 25 at 1.

Oracle also suggests that Google seeks to prevent others from modifying the Android core libraries while reserving the right to implement libraries with functionality that differs from that of the Java platform libraries. See Opp. at 8:16-21. What Oracle ignores is that the

10

consequence of modifying the Android core libraries is not a copyright lawsuit. Instead, devices that do not meet the Android compatibility guidelines simply “may not use the Android trademark.” Reply Kwun Decl., Ex. FF at 4. Regardless of whether the compatibility guidelines are met, “[a]nyone is welcome to use the Android source code . . . .” Id.

G. Oracle offers no evidence of substantial similarity between the documentation of the Android core libraries and the Java language API documentation.

The entirety of Oracle’s argument that the Android API documentation is infringing is its expert’s summary “conclusion” that Google’s and Oracle’s documentation are substantially similar, and a single cite to a side-by-side comparison of excerpts from that documentation. Opp. at 6:1-4. Its expert’s “analysis” again points to the same side-by-side comparison, and offers the following allegedly “similar” documentation:

As an illustration, the Java API specification describes the method java.security.KeyPair.getPrivate as follows: “Returns a reference to the private key component of this key pair.” The Android spec uses the following prose: “Returns the private key.”
Mitchell Decl., Ex. 1 ¶ 207. These two phrases are not substantially similar, and no reasonable jury could conclude otherwise. Indeed, this example only supports Google’s position: the only similarities between the two phrases are from the unprotectable facts about the java.security.KeyPair.getPrivate method that they are both describing.

The Court is under no obligation to go beyond the single illustrative example that Oracle’s expert has offered. Cf. Northwestern Nat’l Ins. Co. v. Baltes, 15 F.3d 660, 662-63 (7th Cir. 1994) (“District judges are not archaeologists.”). However, if the Court were inclined to conduct its own comparison of the two respective sets of documentation without further guidance from Oracle, a brief review of the provided side-by-side comparisons demonstrates that any similarities arise only from unprotected facts about the APIs that are being documented. See generally Exs. E-F to Mitchell Decl., Ex. 1. The two sets of documentation are no more alike than two dictionaries that include and define the same words.

In any event, the minimal expressive content in Oracle’s documentation is entitled to no copyright protection at all. “[C]opyright law protects original expressions of ideas but it does not safeguard either the ideas themselves or banal expressions of them.” Johnson v. Gordon, 409

11

F.3d 12, 19 (1st Cir. 2005) (emphasis added) (citing Feist, 499 U.S. at 345-51); Incredible Techs., Inc. v. Virtual Techs., Inc., 400 F.3d 1007, 1013 (7th Cir. 2005) (“utilitarian explanations” of a system “are not sufficiently original or creative to merit copyright protection,” or alternatively are protected “only against virtually identical copying”); see also Lotus, 49 F.3d at 815 n.9 (stating in dicta that a “strong argument” could be made that brief explanations of menu commands merge with the underlying idea of explaining the commands).

H. The alleged copying in portions of 12 files out of several thousands of files is de minimis and thus not actionable.

1. The alleged copying must be considered against the entirety of the Asserted Works to determine whether it is de minimis
Oracle argues that the Court should evaluate infringement on a file-by-file basis, but the authority it cites requires exactly the opposite. Even if a registered work includes “copyrightable elements that are otherwise recognizable as self-contained works,” 37 C.F.R. § 202.3(b)(4)(i)(A) (emphasis added), where the claimant files a “single application” and pays a “single registration fee,” all of those copyrightable elements “shall be considered a single work.” Id. § 202.3(b)(4)(i) (emphasis added). Oracle did not register the files separately. In view of the registrations Oracle obtained and on which it bases its infringement claim, the allegedly infringed “works” are the Java SE 1.4 and 5.0 platforms, not the individual files.

Moreover, the district court case on which Oracle relies, Bean v. McDougal Littell, 669 F. Supp. 2d 1031, 1034 (D. Ariz. 2008), discusses only the registration of a collective work. To claim copyright to “independent works in which copyright is being claimed and which appear within a larger work or within a collection of works,” the claimant must list the titles of all such independent works on a continuation sheet as part of the registration application. 37 C.F.R. § 202.3(b)(3). Oracle’s registrations do not list any individual files, see Kwun Decl., Ex. B, nor does Oracle provide any evidence that the individual files are anything but code fragments that are not recognizable as self-contained works.

Oracle argues that comparing infringement only to the Asserted Works as a whole would lead to unjust results. This is incorrect for two reasons. First, Oracle, not Google, chose to register its works in the manner it did and to assert the specific copyright registrations that it has

12

asserted. Second, Oracle is wrong to claim that this allows developers to “steal files at will from large software programs.” Opp. at 24:1-2. The de minimis defense applies only where the allegedly copied material is both quantitatively and qualitatively insignificant.16

The law requires that the alleged copying must be assessed in comparison to the Asserted Works as a whole. Newton v. Diamond, 388 F.3d 1189, 1195 (9th Cir. 2004). Applying that test, the limited alleged copying identified by Oracle is, as a matter of law, de minimis.

2. The rangeCheck function is not qualitatively or quantitatively significant.
Oracle concedes that the rangeCheck function is quantitatively insignificant. Opp. at 24:15-17 (function is “only nine lines long” and is part of a file with “3,180 lines of code”). Oracle nonetheless claims it is qualitatively significant because it is called nine times in the Arrays.java file. This is a non-sequitur that fails to comprehend the meaning of “qualitative”; it is like saying that the letter ‘e’ is qualitatively significant in the English language because it is the most commonly used letter. See also Reply Astrachan Decl., Ex. 3 ¶ 56.

The fact that a function is called repeatedly may have nothing to do with any qualitative significance, and everything to do with inefficient programming. Id. ¶ 57. And, in fact, that is the case here—due to limitations in the Java programming language, the author of Arrays.java was forced to call upon the rangeCheck code multiple times. Id. ¶ 58. “Thus the metric of number of calls is not a measure of the importance of rangeCheck, but rather of the inadequacies imposed by the Java language.” Id.

Oracle’s only attempt to support its claim of qualitative significance is its expert’s speculation that there “may” be “more to it than meets the eye” to the nine lines of the rangeCheck function. Mitchell Decl., Ex. 2 ¶ 86. Oracle’s expert speculates that the order of the three error checks performed may be significant. Id. But he offers no explanation or evidence in support of this speculation, opining only that it is “possible” that “some amount of trial and error went into figuring out how to arrange the tests in this code so that the most informative error

______________________

16 If infringement were considered on a file-by-file basis—and, for the reasons stated, that would be error—Oracle’s damages and injunctive relief theories would need to be limited to the individual files identified by Oracle.

13

condition is reported.” Id. Unfounded speculation cannot preclude summary judgment. See FED. R. CIV. P. 56(c).

Finally, even were this speculation given credence—and given the lack of any evidentiary basis, it cannot be—it at best shows that any significance to the rangeCheck function derives from a functional choice arrived at through sweat of the brow. Whatever significance one might attach to the functional order of the three error checks performed, it has no qualitative significance under copyright law. See Sega, 977 F.2d at 1524; Feist, 499 U.S. 359-60.

3. The eight allegedly decompiled files are not qualitatively or quantitatively significant.
Oracle effectively concedes that the eight allegedly decompiled files that Google received from a contractor are test files. Although Oracle asserts that the files were not part of the “test” directories in its works, Opp. at 25:15-16, that does nothing to illuminate whether they are in fact test files. Tellingly, Oracle’s expert does not and cannot dispute that they are test files. See Mitchell Decl., Ex. 2 ¶ 95.

Oracle’s expert offers the circular speculation that because these files were part of Android, they must be important. Id. This speculation is belied by the fact that Google has removed these eight files from its Android distribution and did not replace them with anything else. Bornstein Decl. ¶ 8; Reply Bornstein Decl. ¶ 2. Oracle offers no evidence that the files are qualitatively significant. Its expert claims that the files are more than “dummy” files, Mitchell Decl., Ex. 2 ¶ 91, that the classes implemented have a “meaningful” function, id. ¶ 92, that some of the methods in these files include more program logic than others, id. ¶ 93, and that they implement certain Interfaces, id. ¶ 94. Even if these assertions were true, they offer no evidence that the eight files are qualitatively significant to the Asserted Works as a whole. Oracle’s expert’s analysis does nothing to bar summary judgment.

Finally, Oracle offers no evidence to rebut Google’s showing that the eight files are quantitatively de mimimis, judged against the Asserted Works as a whole.

4. The allegedly copied comments in the remaining two files are not qualitatively or quantitatively significant.
As Google has explained, the allegedly copied comments in the remaining two files are

14

descriptive and functional. Mot. at 23:15; see also Astrachan Decl., Ex. 1 ¶¶ 172-73. Oracle does not dispute the mundane nature of the comments. See Opp. at 24:24-25:2. Oracle asserts only that the comments—which Google has since removed and not replaced, Bornstein Decl. ¶ 9; Reply Bornstein Decl. ¶ 3—are “significant” to the “works from which they have been taken.” Id. at 25:2. But the “works” Oracle refers to are the two individual files, based on Oracle’s incorrect argument about what “works” are at issue. See id. at 24:3-5. Oracle offers no evidence that the comments are qualitatively significant when measured against the Asserted Works as a whole. Indeed, it is questionable whether the comments include any protected expression in the first place, because “banal expressions” are not protected, even if original. Johnson, 409 F.3d at 19; see also Lotus, 49 F.3d at 815 n.9.

And, again, Oracle offers no evidence to rebut Google’s showing that the comments in the two files are quantitatively de mimimis, judged against the Asserted Works as a whole.

5. Google’s implementation of 37 Java language API packages is irrelevant to the de minimis analysis.
Oracle argues that the foregoing examples of, at most, de minimis copying must be considered together with Google’s decision to implement 37 Java language API packages. Oracle is again wrong. The infringement analysis proceeds only after the removal of unprotected elements via analytic dissection. Mattel, Inc. v. MGA Entm’t, Inc., 616 F.3d 904, 913 (9th Cir. 2010). As explained above, the APIs are not protected, and thus are not part of the infringement analysis at all. Because the alleged copying in the portions of the 12 files is, as a matter of law, quantitatively and qualitatively insignificant when compared to the Asserted Works as a whole, Oracle’s infringement claim fails.

III. CONCLUSION

For the foregoing reasons, Google respectfully requests that the Court enter summary judgment in Google’s favor on Count VIII of Oracle’s Amended Complaint.

Dated: August 29, 2011

KEKER & VAN NEST LLP
By: s/ Michael S. Kwun
MICHAEL S. KWUN
Attorneys for Defendant GOOGLE INC.

15


369:

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

REPLY DECLARATION OF
MICHAEL S. KWUN IN SUPPORT OF
DEFENDANT GOOGLE INC.’S MOTION
FOR SUMMARY JUDGMENT ON
COUNT VIII OF PLAINTIFF ORACLE
AMERICA’S AMENDED COMPLAINT

Judge: Hon. William Alsup

Hearing: 2:00 p.m., September 15, 2011

I, Michael S. Kwun, declare as follows: 1. I am the same Michael S. Kwun who submitted an August 1, 2011 Declaration in support of Defendant Google Inc.’s Motion for Summary Judgment on Count VIII of Plaintiff Oracle America, Inc.’s Amended Complaint. I submit this reply declaration in support of Defendant Google Inc.’s Motion for Summary Judgment on Count VIII of Plaintiff Oracle America, Inc.’s Amended Complaint. I make this declaration based on my own personal knowledge. If called as a witness, I could and would testify competently to the matters set forth herein. 2. Attached hereto are true and correct copies of the following documents (for ease of reference, I will not reuse exhibit letters that I used in my prior declaration):
Exhibit EE. An August 1, 2011 press release from Oracle, titled “Oracle Announces Availability of Java SE 7,” printed from the URL .

Exhibit FF. A document titled “Frequently Asked Questions,” printed from the URL http://source.android.com/faqs.html.

Exhibit GG. The May 27, 1999 Opening Appellate Brief filed by Connectix Corp. in Sony Computer Entm’t, Inc. v. Connectix Corp., No. 99- 15852 (9th Cir.), as downloaded from Westlaw.

I declare under penalty of perjury that the foregoing facts are true and correct. Executed on August 29, 2011 in San Francisco, California.

/s/ Michael S. Kwun
Michael S. Kwun

1


370:

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

REPLY DECLARATION OF DANIEL
BORNSTEIN IN SUPPORT OF
DEFENDANT GOOGLE INC.'S MOTION
FOR SUMMARY JUDGMENT ON
COUNT VIII OF PLAINTIFF ORACLE
AMERICA'S AMENDED COMPLAINT

Judge: Hon. William Alsup

Hearing: 2:00 p.m., September 15, 2011

I, Daniel Bornstein, declare as follows:

1. I am the same Daniel Bornstein who submitted an August 1, 2011 Declaration in Support of Defendant Google Inc.'s Motion for Summary Judgment on Count VIII of Plaintiff Oracle America, Inc.'s Amended Complaint. I make this declaration based on my own personal knowledge. If called as a witness, I could and would testify competently to the matters set forth herein.

2. In my August 1, 2011 Declaration, I stated that eight files — AclEntrylmpl.java; Acllmpl.java; Grouplmpl.java; Ownerlmpl.java; Permissionlmpl.java; Principallmpl.java; PolicyNodelmpl.java; and AclEnumerator.java — had been removed from the Android platform. These files were not replaced by anything else. I know this to be true because I am the person who removed them, and I did not replace them with anything else.

3. In my August 1, 2011 Declaration, I stated that certain comments in two files — CodeSourceTest.java; and CollectionCertStoreParametersTest.java — had been removed from those files. These comments were not replaced by anything else. I know this to be true because I am the person who removed them, and I did not replace them with anything else.

I declare under penalty of perjury that the foregoing facts are true and correct. Executed on August 29, 2011 in Mountain View, California.

/s/Daniel Bornstein
Daniel Bornstein

1


371:

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

REPLY DECLARATION OF OWEN
ASTRACHAN IN SUPPORT OF
DEFENDANT GOOGLE INC.’S MOTION
FOR SUMMARY JUDGMENT ON
COUNT VIII OF PLAINTIFF ORACLE
AMERICA’S AMENDED COMPLAINT

Judge: Hon. William Alsup

Hearing: 2:00 p.m., September 15, 2011

I, Owen Astrachan, declare as follows:

1. I am the same Owen Astrachan who submitted an August 1, 2011 Declaration in support of Defendant Google Inc.’s Motion for Summary Judgment on Count VIII of Plaintiff Oracle America, Inc.’s Amended Complaint. I submit this reply declaration in support of Defendant Google Inc.’s Motion for Summary Judgment on Count VIII of Plaintiff Oracle America, Inc.’s Amended Complaint. I make this declaration based on my own personal knowledge. If called as a witness, I could and would testify competently to the matters set forth herein.

2. Attached hereto as Exhibit 3 (for ease of reference, I am not reusing exhibit numbers that were used in my prior declaration) is a true and correct copy of the rebuttal expert report (“Astrachan Rebuttal Report”) I prepared in this action.

3. Attached hereto as Exhibit 4 is a true and correct copy of the rebuttal expert report (“Astrachan Reply Report”) I prepared in this action.

4. The Astrachan Rebuttal Report and the Astrachan Reply Report are true and correct expressions of my opinions based on the facts I currently know.

I declare under penalty of perjury that the foregoing facts are true and correct. Executed on August 29, 2011 in Durham, North Carolina.

[signature]
Owen Astrachan

1


377:

[King & Spaulding letterhead]

August 30, 2011

The Honorable William Alsup
U.S. District Court, Northern District of California
450 Golden Gate Avenue
San Francisco, California 94102

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

Dear Judge Alsup:

Google respectfully requests leave to file a motion to strike the portions of the Opening Expert Report of John C. Mitchell Regarding Patent Infringement (the “Mitchell Report”) including infringement allegations that were never disclosed in any of the three versions of Oracle’s Disclosure of Asserted Claims and Infringement Contentions (“ICs”).

The Patent Local Rules required Oracle to provide “[a] chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality.” Patent L.R. 3-1 (c) (emphasis added). Despite availing itself of repeated opportunities to supplement its ICs, Oracle never supplemented them to add the material that Dr. Mitchell now includes in his expert report on infringement—even after being expressly warned by this Court of the consequences of failing to make full disclosure. See April 6 2011 Transcript of Proceedings (Dkt No. 110) at 10:14–11:13 (“If you want to stand on your shifting sands, and they get shifted out from under you, then you just lose. End of story. So I’m not saying you will, but we’ve got those disclosure rules for a reason. And if your -- if your disclosures aren’t good enough, there won’t be a second chance. You just lose.”). Accordingly, the new infringement allegations in the Mitchell Report—served over eight months after Oracle’s ICs

The Honorable William Alsup
August 30, 2011
Page 2

were due—should be stricken. See Monolithic Power Sys. v. O2 Micro Int’l Ltd., No. 08-cv-04567, 2009 U.S. Dist. LEXIS 101035 (N.D. Cal. October 16, 2009) (granting a motion to strike portions of an expert report relating to products not identified in the infringement contentions).

As one example, the Mitchell Report now accuses of infringement Android source code files that were never identified in any of Oracle’s ICs. For instance, in alleging infringement of claim 11 of the ‘104 patent, the Mitchell Report relies on source code files Class.c, DvmDex.h, DexFile.h, Object.c, Intern.c, Interp.c, and IntermpAsm-x86.S. Yet Oracle never identified any of these files in its ICs. Rather, the various versions of the ICs pointed to other files, and did not contain the portions of code now relied upon by Oracle. These new files are not merely “background,” “context,” or “evidence” in support of Oracle’s allegations—they are completely new files that Oracle now alleges satisfy claim elements essential to Oracle’s infringement theories. Under the Patent Local Rules, Oracle was required to disclose these theories over eight months ago. Yet Oracle delayed until after the close of fact discovery to include these allegations in the Mitchell Report, in direct violation of both the letter and the spirit of this Court’s rules, which “require parties to crystallize their theories of the case early in the litigation and to adhere to those theories once they have been disclosed.” MEMC Elec. Materials v. Mitsubishi Materials Silicon Corp., No. 01-cv-4925, 2004 WL 5363616 at *4 (N.D. Cal. 2004).

As another example, the Patent Local Rules required Oracle to identify “[e]ach method or process shall be identified by name, if known, or by any product, device, or apparatus which, when used, allegedly results in the practice of the claimed method or process.” Patent L.R. 3-1 (b). Again, the Mitchell Report now improperly alleges infringement by third-party devices that were never identified in any of Oracle’s ICs.

The Honorable William Alsup
August 30, 2011
Page 3

Oracle’s intentional delay in disclosing its infringement theories has caused significant prejudice to Google, depriving Google of the opportunity to pursue discovery to address these new allegations. At this stage in the case, the parties are supposed to be narrowing the case, not expanding it as part of expert discovery. Oracle has had ample time to prepare this lawsuit and develop its infringement theories; the accused Android source code is publicly and openly available and has been since long before Oracle filed suit. Dr. Mitchell himself notes in his report that he “participated in the analysis and preparation of” Oracle’s ICs. And as evidenced in its opposition of Google’s motion to supplement its invalidity contentions, Oracle is well aware that changing “patent theories mid-stream” (or in this case, at the end-of-the-stream) would prejudice Google’s trial planning. (Dkt. No. 240 at 1.) Thus Oracle has no excuse for failing to provide infringement contentions citing the source code files and products that now appear—for the first time—in the Mitchell Report, particularly after having multiple chances to supplement and in the face of this Court’s warning.

Oracle’s stalling tactics, lack of diligence and failure to comply with this Court’s rules should be rejected. See Volterra Semiconductor Corp. v. Primarion, Inc., No. C-08-05129 JCS, 2011 WL 2559612, *84 (N.D. Cal. 2011) (disclosure of new theories or accused products in an expert report does not excuse the obligation to supplement contentions). For these reasons, Google seeks leave to file a motion for leave to strike portions of the Mitchell Report.

Respectfully submitted,

/s/ Scott T. Weingaertner
Scott T. Weingaertner
Counsel for Defendant Google Inc.


380:

[Morrison Foerster letterhead]

September 1, 2011

The Honorable William H. Alsup
United States District Court, Northern District of California
450 Golden Gate Avenue
San Francisco, California 94102

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

Dear Judge Alsup:

Oracle opposes Google’s request for leave to move to strike portions of the Opening Expert Report of John C. Mitchell Regarding Patent Infringement (the “Report”). The Report was fully supported by Oracle’s infringement contentions (“ICs”).

Google’s first complaint is that Oracle’s ICs never “identified” certain source code files that the Report cites. Analysis of Google’s example demonstrates the opposite. In some cases, Google is flat-out wrong; the file is identified in the ICs. In other cases, the function implemented in the supposedly omitted file is identified in the ICs, thereby identifying by function the file in question. And in yet other cases, the function that is identified in the ICs is called by a function implemented in the file. In each case, the infringement theory is fully disclosed: Oracle has not changed “patent theories mid-stream,” and no “sands” are “shifting.”

Google’s example concerns Oracle’s contention that Android’s symbolic reference resolution functions infringe claim 11 of the ’104 patent. Space allows detail on only the first three of Google’s supposedly omitted files:

Class.c: Oracle’s ICs in fact identify Class.c (see, e.g., ICs Ex. A at 20, 21 (“See the notes at the top of oo/Class.c”)). The Report provides more detail by quoting the cited notes. (Report ¶ 234 (“This converts symbolic references into pointers.”).)

The Honorable William H. Alsup
September 1, 2011
Page Two

DvmDex.h: Oracle’s ICs quote from the Resolve.c source file (ICs Ex. A at 17-34). That source file (in its dvmResolveClass function) contains calls to the dvmDexGetResolvedClass and dvmDexSetResolvedClass functions (id. at 19, 21). The comments to those calls in the quoted source code make clear the called functions’ involvement in symbolic reference resolution (“Check the table first -- this gets called from the other ‘resolve’ methods”; “Add what we found to the list so we can skip the class search next time through”). Those functions are implemented in the DvmDex.h source file. The Report provides more detail by quoting the DvmDex.h source code, but the ICs disclose the role of that code.

DexFile.h: Oracle’s ICs quote from the Resolve.c source file, which (in its dvmResolveMethod function) contains a call to the dexGetMethodId function to obtain the resolved reference (id. at 22). The immediately preceding log message makes clear that function’s role in symbolic reference resolution (“resolving method”). The dexGetMethodId function is implemented in the DexFile.h source file. The Report provides more detail by quoting the DexFile.h source code, but the ICs disclose the role of that code.

In short, Oracle’s ICs identify with specificity how Android devices infringe the asserted claims. The Report illustrates those contentions with additional detail but does not provide new infringement theories. Google cites decisions concerning only new theories of infringement or invalidity; none say that expert reports cannot more fully illustrate or explain a theory disclosed in infringement contentions. Out-of-district authority supports Oracle. See Fenner Invs., Ltd. v. Hewlett-Packard Co., No. 6:08-CV-273, 2010 U.S. Dist. LEXIS 17536, at *7 (E.D. Tex. Feb. 26, 2010) (“The scope of infringement contentions and expert reports are not . . . coextensive.”).

The Honorable William H. Alsup
September 1, 2011
Page Three

Google’s second complaint is that the Report added third-party accused instrumentalities. Oracle’s ICs accuse “mobile devices running Android” of infringement and list eight representative examples of such devices. In the litigation, Google has presented an “ostrich” defense: It disclaims any knowledge of the code that runs on Android mobile devices, even though it releases fully operational Android code on its public web site with the intent that it be quickly adopted by mobile device makers. Moreover, Google allows only compatible devices to bear the Android trademark. (See http://source.android.com/faqs.html (“Devices that are properly compatible can seek approval to use the Android trademark.”).) To counter Google’s defense, Prof. Mitchell examined sample Android devices and determined that Google’s licensees did not modify the infringing functionality. The Report thus provides evidence to support the disclosed theory of infringement (i.e., that mobile devices running Android infringe), not a new theory and not a new accused instrumentality.

Oracle described its theory of infringement in ICs that span more than 400 pages and that were specific enough for Google to provide invalidity contentions and answer a noninfringement interrogatory. At a Court-directed meet and confer on the ICs, the undersigned also invited Google to pose any questions it wished if it had difficulty understanding Oracle’s ICs. At no time did Google pose such queries. It is far too late for Google to complain about the level of specificity of Oracle’s ICs. Oracle requests that the Court deny Google’s request for leave.

Respectfully submitted,

/s/ Michael A. Jacobs

Michael A. Jacobs


382:

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA

ORACLE AMERICA, INC.,

Plaintiff,

v.

GOOGLE INC.,

Defendant.

_________________

No. C 10-03561 WHA

ORDER GRANTING
LEAVE TO FILE LIMITED
MOTION TO STRIKE

__________________

Defendant requests leave to file a motion to strike portions of the opening expert report by John C. Mitchell (Dkt. No. 377). Plaintiff opposes (Dkt. No. 380). The request is GRANTED to the following extent. Defendant may file a motion to strike that is limited to ten pages and three points of critique. The three points of critique may not be categories of critique with multiple items crammed in; rather, the motion should identify three specific items in the report that supposedly were not timely disclosed. The motion will be briefed and heard on the normal 35-day schedule. The opposition brief may not exceed fifteen pages, and the reply brief may not exceed five pages. Supporting declarations must be short with few exhibits. If defendant succeeds on the motion, then defendant may be allowed to file an additional motion or motion in limine concerning other objectionable items in the Mitchell report.

IT IS SO ORDERED.

Dated: September 1, 2011.

[signature]
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE



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