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Oracle v. Google - Orders, Orders, Orders
Tuesday, September 27 2011 @ 09:00 AM EDT

There have been a significant number of orders issued by the court in Oracle v. Google in the last few days, and the parties continue to do battle over several issues, including the Lindholm emails and the Cockburn Damages Report.

The first item of interest, and it is a big one, is that Oracle has agreed not to contest Google's motion for summary judgment on the issue of Google's non-liability under Sec. 271(f) of the Patent Act. 455 [PDF] You will recall that 271(f) can extend liability to foreign sales. So avoidance of that liability is significant. With the Oracle consent in place, Judge Alsup granted Google's motion for summary judgment with respect to Sec. 271(f). 461 [PDF]

The next bit of significant news is that the settlement conference is on-going, and the parties have been ordered to resume the conference on September 30. 457 [PDF], 465 [PDF] It's not clear whether this is an indication that the parties have actually made some progress, but it is unlikely that the magistrate would insist on their continuing to meet if some progress hasn't occurred.

The Lindholm emails continue to be a bone of contention. Recall that there are two paths being pursued by Google at this time: one to reverse Magistrate Ryu's ruling that that the emails were not privileged; and one to seek to restore the emails to Attorney's Eyes Only status. On this latter point, Judge Alsup has ordered the parties to have a meet-and-confer on the issue because they have never complied with that earlier order. 462 [PDF] It's not like such a meeting will prove productive, but the judge appears to be annoyed that the parties have been obstinate about meeting.

On the larger issue of reversing Magistrate Ryu's ruling, Oracle has filed its response to Google's motion. 467 [PDF] Oracle raises some good points in their response, but a couple of issues remain troubling. The first is the manner in which the emails were made public. It still appears that Oracle knowingly ignored the privilege logs and skirted their obligation under the privilege agreement by introducing the emails in court. Granted, Google should have immediately objected, but the lack of clean hands should bother the court.

The second issue, and this one is outrageously absurd, is the fact that the emails WHICH ORACLE MADE PUBLIC show up in the results of a Google search, and therefore Google is guilty of continuing to make them public.

Third, Google waived the privilege by affirmatively publishing the ostensibly privileged information on the google.com search page and directing members of the public to the document’s contents. As Judge Friendly warned nearly forty years ago: “[i]t is not asking too much to insist that if a client wishes to preserve the privilege under such circumstances, he must take some affirmative action to preserve confidentiality.” In re Horowitz, 482 F.2d 72, 82 (2d Cir. 1973), cert. denied, 414 U.S. 867; see also In re von Bulow, 828 F.2d 94, 101-02 (2d Cir. 1987) (client waived attorney-client privilege when client promoted book published by his attorney that included client’s privileged material).
Is Google now obligated to censor its search results for Google secrets that others make public in violation of confidentiality agreements and then introduce to the Internet? If that is true, then imagine Google's exposure and liability beyond this immediate case. This argument may actually come back to haunt Oracle for the simple fact that it takes a response that is, to a large extent, rational and extends it to the irrational.

Another major ruling is the court's order with respect to Prof. Mitchell's patent report. You will recall that Google has been seeking to strike portions of that report because it introduced at least two new infringing products and because it raised what Google believed to be new infringement claims arising from newly introduced source code. Judge Alsup partially granted and partially denied Google's motion to strike. 464 [PDF] Google won on the issue of the new products. Oracle had argued that these products embodied the allegedly infringing Android software in unmodified form, and therefore they should be allowed. Google countered that the rules required such disclosures to be made earlier, and the court agreed. The only downside for Google is that, should Oracle prevail with respect to the products that remain subject to Oracle's infringement allegations, Oracle could quickly sue again with respect to these additional products.

On the source code issue the court largely ruled in Oracle's favor, saying that Prof. Mitchell could introduce the source code in question. However, Oracle and Prof. Mitchell are precluded from introducing a new theory of infringement based on the TreeMap structure. Call this one a draw.

Finally, Google is going to be allowed to proceed with its motion seeking to strike portions of the revised Cockburn damages report. 470 [PDF] However, this motion will count as one of Google's five allowed motions in limine, thus reducing the number of such motions available for other issues.

Motions in limine are motions made before or during a trial requesting that the judge rule that certain evidence may, or may not, be introduced to the jury in a trial. (See, Wikipedia article) Losing one of their five allowed motions in limine may mean that Google will not be able to exclude some piece of critical evidence later on. This is a bit like a coach being required to use a timeout early in an athletic contest only to find he/she has no timeouts left later in the contest when it is more crucial.


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

Docket

455 – Filed and Effective: 09/22/2011
RESPONSE
Document Text: RESPONSE (re 409 MOTION for Summary Judgment Motion for Partial Summary Judgment and/or Summary Adjudication Re: Google's Non-Liability Under 35 U.S.C. § 271(f)) (Statement of Non-Opposition) filed by Oracle America, Inc. (Attachments: # 1 Proposed Order)(Kuwayti, Kenneth) (Filed on 9/22/2011) Modified on 9/23/2011 (wsn, COURT STAFF). (Entered: 09/22/2011)

456 – Filed and Effective: 09/23/2011
ORDER
Document Text: ORDER REQUESTING SUBMISSION OF REVISED DAMAGES REPORT re 450 Letter filed by Google Inc.. Signed by Judge Alsup on September 23, 2011. (whalc1, COURT STAFF) (Filed on 9/23/2011) (Entered: 09/23/2011)

457 – Filed and Effective: 09/23/2011
ORDER
Document Text: ORDER SETTING FURTHER SETTLEMENT CONFERENCE. Signed by Judge Paul S. Grewal on 9/23/2011. (ofr, COURT STAFF) (Filed on 9/23/2011) (Entered: 09/23/2011)

458 – Filed and Effective: 09/26/2011
ORDER
Document Text: ORDER REQUESTING CASE MANAGEMENT STATEMENTS. Signed by Judge Alsup on September 26, 2011. (whalc1, COURT STAFF) (Filed on 9/26/2011) (Entered: 09/26/2011)

459 – Filed and Effective: 09/26/2011
ORDER
Document Text: ORDER GRANTING MOTION TO FILE EXHIBIT UNDER SEAL, Order by Hon. William Alsup granting 426 Administrative Motion to File Under Seal.(whalc1, COURT STAFF) (Filed on 9/26/2011) (Entered: 09/26/2011)

460 – Filed and Effective: 09/26/2011
ORDER
Document Text: ORDER GRANTING LEAVE TO FILE RESPONSE UNDER SEAL, Order by Hon. William Alsup granting 427 Administrative Motion to File Under Seal.(whalc1, COURT STAFF) (Filed on 9/26/2011) (Entered: 09/26/2011)

461 – Filed and Effective: 09/26/2011
ORDER
Document Text: ORDER GRANTING UNOPPOSED MOTION FOR PARTIAL SUMMARY JUDGMENT REGARDING 35 U.S.C. 271(f) THEORY, Order by Hon. William Alsup granting 409 Motion for Summary Judgment.(whalc1, COURT STAFF) (Filed on 9/26/2011)

462 – Filed and Effective: 09/26/2011
ORDER
Document Text: ORDER DENYING PRECIS REQUEST PENDING MEET-AND-CONFER SESSION re 449 Letter filed by Google Inc.. Signed by Judge Alsup on September 26, 2011. (whalc1, COURT STAFF) (Filed on 9/26/2011) (Entered: 09/26/2011)

463 – Filed and Effective: 09/26/2011
Letter
Document Text: Letter from Steven C. Holtzman. (Holtzman, Steven) (Filed on 9/26/2011) (Entered: 09/26/2011)

464 – Filed and Effective: 09/26/2011
ORDER
Document Text: ORDER PARTIALLY GRANTING AND PARTIALLY DENYING MOTION TO STRIKE PORTIONS OF MITCHELL REPORT AND VACATING HEARING, Order by Hon. William Alsup granting in part and denying in part 410 Motion to Strike.(whalc1, COURT STAFF) (Filed on 9/26/2011) (Entered: 09/26/2011)

465 – Filed and Effective: 09/26/2011
ORDER
Document Text: ORDER RESCHEDULING SETTLEMENT CONFERENCE: 10/1/11 Further Settlement Conference rescheduled for 9/30/2011 at 09:00 AM in Courtroom 5, 4th Floor, San Jose before Magistrate Judge Paul S. Grewal. Signed by Judge Paul S. Grewal on 9/26/2011. (ofr, COURT STAFF) (Filed on 9/26/2011) (Entered: 09/26/2011)

466 – Filed and Effective: 09/26/2011
Administrative Motion
Document Text: Administrative Motion to File Under Seal ORACLE AMERICA, INC.S ADMINISTRATIVE MOTION TO FILE UNDER SEAL PORTIONS OF PLAINTIFFS OPPOSITION TO DEFENDANTS MOTION FOR RELIEF FROM NON-DISPOSITIVE ORDER OF MAGISTRATE JUDGE filed by Oracle America, Inc.. (Norton, William) (Filed on 9/26/2011) (Entered: 09/26/2011)

467 – Filed and Effective: 09/26/2011
RESPONSE
Document Text: RESPONSE (re 441 MOTION For Relief From Nondispositive Pretrial Order of Magistrate Judge ) PLAINTIFFS OPPOSITION TO DEFENDANTS MOTION FOR RELIEF FROM NON-DISPOSITIVE ORDER OF MAGISTRATE JUDGE [REDACTED] filed byOracle America, Inc.. (Norton, William) (Filed on 9/26/2011) (Entered: 09/26/2011)

468 – Filed and Effective: 09/26/2011
Order
Document Text: DOCUMENT E-FILED UNDER SEAL re 459 Order on Administrative Motion to File Under Seal Exhibit 13 to Swoopes Declaration in Support of Oracle's Opposition to Google's Motion for Summary Judgment on Count VIII of Second Amended Complaint by Oracle America, Inc.. (Swoopes, Roman) (Filed on 9/26/2011) (Entered: 09/26/2011)

469 – Filed and Effective: 09/26/2011
Letter
Document Text: Letter from Robert Van Nest in Response to Holtzman Letter re Daubert. (Van Nest, Robert) (Filed on 9/26/2011) (Entered: 09/26/2011)

470 – Filed and Effective: 09/27/2011
ORDER
Document Text: ORDER REGARDING PRECIS REQUEST TO FILE DAUBERT MOTION CONCERNING SECOND DAMAGES REPORT re 450 Letter filed by Google Inc.. Signed by Judge Alsup on September 27, 2011. (whalc1, COURT STAFF) (Filed on 9/27/2011) (Entered: 09/27/2011)


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

Documents

455

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

STATEMENT OF NON-OPPOSITION TO GOOGLE’S LIABILITY UNDER
35 U.S.C. § 271(f)

Date: October 13, 2011
Time: 8:00 a.m.
Dept.: Courtroom 8, 19th Floor
Judge: Hon. William H. Alsup

Defendant Google Inc. (“Google”) has filed a Motion for Partial Summary Judgment and/or Summary Adjudication Re: Google’s Non-Liability Under 35 U.S.C. § 271(f), asking the Court to grant summary adjudication “that Google is not liable to Oracle under 35 U.S.C. § 271(f) with respect to any patent-infringement claim asserted in this action.” (Dkt. No. 409 at 7.)

Understanding that the motion is limited to 35 U.S.C. § 271(f), and without waiving its rights to pursue claims against Google under 35 U.S.C. § 271(b)-(c), and rights to pursue claims involving foreign revenue or activity that are attributable to infringement in the United States pursuant to 35 U.S.C. § 271(a), or any other theory of liability apart from 35 U.S.C. § 271(f), plaintiff Oracle America, Inc. does not oppose Google’s Motion for Partial Summary Judgment concerning 35 U.S.C. § 271(f).

Dated: September 22, 2011

MORRISON & FOERSTER LLP

By: /s/ Kenneth A. Kuwayti

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

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

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

Attorneys for Plaintiff
ORACLE AMERICA, INC.


456

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 REQUESTING SUBMISSION OF DAMAGES REPORT

Google Inc. requests leave “to file a Daubert motion on certain aspects of the revised damages report of Oracle’s damages expert Dr. Iain Cockburn” (Dkt. No. 450). Google shall please submit a copy of the revised report by NOON ON SEPTEMBER 26, 2011, to help the Court evaluate this request.

IT IS SO ORDERED.

Dated: September 23, 2011.

/s/ William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE


457

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 SETTING FURTHER SETTLEMENT CONFERENCE

IT IS ORDERED that a further settlement conference shall be held on October 1, 2011 at 9:00 a.m.

IT IS SO ORDERED.

Dated: September 23, 2011

/s/Paul S. Grewal
PAUL S. GREWAL
United States Magistrate Judge


458

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 REQUESTING CASE MANAGEMENT STATEMENTS

By NOON ON SEPTEMBER 29, 2011, counsel for Oracle America, Inc. shall submit a case management statement listing each patent claim it will actually assert at trial and shall explain why the total number of such claims is consistent with prior representations made to the Court. In stating the claims to be tried, counsel must remember that any claim not asserted will be deemed foregone as to all accused matters. By NOON ON OCTOBER 3, 2011, counsel for Google Inc. shall state separately as to each such claim the full extent to which counsel concede any such alleged infringement but for any issues of invalidity and shall specify, claim by claim, any and all invalidity defenses to be asserted at trial. By NOON ON OCTOBER 4, 2011, both sides shall update the Court on the status of each re-examination pending for each such claim and shall explain why the case should not be stayed in whole or in part until the re-examinations are completed. Counsel are expected to honor their full duty of candor as officers of the court.

Also in the October 4 submissions, all counsel shall state the minimum number of hours needed for all direct and cross examination per side. Also state the extent to which plaintiff’s latest damage study rests on copyright issues versus patent issues. All submissions are limited to ten pages. The Court recognizes that some of this information will be provided in the final pretrial statements, but the Court requests the information now in order to manage its overall docket.

IT IS SO ORDERED.

Dated: September 26, 2011.

/s/ William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE


459

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 MOTION TO FILE EXHIBIT UNDER SEAL

Exhibit 13 supporting plaintiff’s opposition to defendant’s motion for summary judgment on the copyright claim, which contains the personal telephone number of Google executive Andy Rubin, was filed in the public docket (Dkt. No. 398-10). That filing has since been locked, and a redacted version of Exhibit 13 with the phone number obscured was filed in its stead (Dkt. No. 428). Plaintiff now seeks leave to file the unredacted version of Exhibit 13 under seal (Dkt. No. 426). The motion is GRANTED. Plaintiff shall file the unredacted version of Exhibit 13 under seal by SEPTEMBER 28, 2011.

IT IS SO ORDERED.

Dated: September 26, 2011.

/s/ William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE


460

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 RESPONSE UNDER SEAL

Plaintiff’s request to file under seal the unredacted version of its response to defendant’s précis requesting permission to file a Rule 72 motion (Dkt. No. 427) is GRANTED. Plaintiff shall file the unredacted version of its response (Dkt. No. 429) under seal by SEPTEMBER 28, 2011. Please be aware this is without prejudice to a future order that refers to the redacted material and is public.

IT IS SO ORDERED.

Dated: September 26, 2011.

/s/ William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE


461

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 UNOPPOSED MOTION FOR PARTIAL SUMMARY
JUDGMENT REGARDING 35 U.S.C. 271(f) THEORY

On September 8, 2011, defendant Google Inc. filed a motion for partial summary judgment “that Google is not liable to Oracle under 35 U.S.C. § 271(f) with respect to any patent-infringement claim asserted in this action” (Dkt. No. 409). Plaintiff Oracle America, Inc. timely filed a notice of non-opposition to the motion (Dkt. No. 455). Having considered the motion and supporting declaration, the motion is GRANTED. This order finds that Google is not liable to Oracle under 35 U.S.C. 271(f) with respect to any patent-infringement claim asserted in this action. This order, however, does not comment on any other theory of liability.

IT IS SO ORDERED.

Dated: September 26, 2011.

/s/ William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE


462

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 DENYING PRÉCIS REQUEST PENDING MEET-AND- CONFER SESSION

Google Inc. requests leave to file a motion “to maintain its existing confidentiality designations on the Tim Lindholm emails, which Google produced to Oracle pursuant to Magistrate Judge Ryu’s orders of August 25 and August 26, 2011 finding that the Lindholm emails were not protected by any applicable privilege or immunity” (Dkt. No. 449). Oracle America, Inc. opposes this request (Dkt. No. 453).

Disputes regarding confidentiality designations are governed by the protective order in this action. In particular, a motion to maintain a challenged confidentiality designation may be made only after the parties attempt to resolve the dispute by meeting and conferring through direct voice-to-voice dialogue (Dkt. No. 66 at 8). Here, the parties have made no such attempt, and they point the finger of blame for this failure at one another.

Because the mandatory meet-and-confer process was skipped, Google’s request to file a motion to maintain its challenged confidentiality designation will not be granted at this time. The parties, however, must conduct a meet-and-confer session by SEPTEMBER 28, 2011, and must make a good faith effort to resolve this issue. If the parties fail to resolve their dispute through the meet-and-confer, then Google may file its proposed motion without seeking further leave.

IT IS SO ORDERED.

Dated: September 26, 2011.

/s/ William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE


463

[BOIES, SCHILLER & FLEXNER LLP letterhead]

September 26, 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., No. C 10-3561 WHA

Dear Judge Alsup:

I write to follow up on the parties’ exchange of précis submissions last week regarding Google’s request (Dkt. No. 450) to file a Daubert motion regarding Professor Cockburn’s damages report.

On Saturday, September 24, the parties exchanged motions in limine. Google’s motion in limine # 3 raised precisely the issues described in Google’s Daubert précis; Google’s motion in limine # 2 raised additional issues relating to Oracle’s damages report. Google’s decision to challenge Professor Cockburn’s damages study in limine is consistent with the Court’s previous suggestion that it follow this course. See 9/15/2011 Tr. at 67:3-7 (“if you want to bring a motion to knock [Oracle’s new damages study] out, that should be one of your motions in limine.”).

Google has now raised, on the merits, all of the issues (and more) that it sought to brief in the proposed Daubert motion. Oracle will respond to the in limine motions on October 4, the parties will file the motions and oppositions with the Court on October 7, and the parties will argue those motions on October 17.

Oracle respectfully requests that the Court deny as moot Google’s précis request for leave to file what would be a duplicative Daubert motion filed (as requested by Google) on or after the date when the motions in limine will be fully briefed and argued.

Sincerely yours,

/s/ Steven C. Holtzman


464

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 PARTIALLY GRANTING AND PARTIALLY DENYING MOTION TO
STRIKE PORTIONS OF MITCHELL REPORT AND VACATING HEARING

INTRODUCTION

In this patent and copyright infringement action involving features of Java and Android, defendant moves to strike portions of an opening expert report regarding patent infringement. For the reasons stated below, the motion is GRANTED IN PART AND DENIED IN PART.

STATEMENT

The factual background of this action has been set forth in previous orders (see Dkt. Nos. 137, 230, 433). In August 2011, defendant Goolge Inc. sought leave to file a motion to strike portions of the opening expert report of John C. Mitchell regarding patent infringement. Google asserted that many aspects of the report were not supported by plaintiff Oracle America, Inc.’s infringement contentions as required by the Patent Local Rules (Dkt. No. 377). Google was allowed to file the instant motion over Oracle’s objections. The motion, however, was limited to three points of critique, with the understanding that additional points could be raised if Google succeeded on the first three (Dkt. Nos. 380, 382). This order follows expedited briefing (see Dkt. No. 385).

ANALYSIS

Our Patent Local Rule 3-1 requires detailed disclosure of a party’s patent infringement contentions. See Patent L.R. 3-1. Oracle initially disclosed its infringement contentions in December 2010, and Google challenged their sufficiency two months later (Dkt. No. 79). Oracle agreed to supplement its initial infringement contentions and in fact did so twice. Oracle ultimately chose to stand on its April 2011 second supplemental disclosures, despite Google’s position that they still were inadequate. Oracle was warned that if its disclosures later proved inadequate to support its infringement theories, there would be no second chance to cure the defects (Dkt. No. 110 at 10–11).

Google now asserts that the expert report of John C. Mitchell extends to accused products and infringement theories that were not disclosed in Oracle’s April 2011 infringement contentions. Neither party has identified any binding authority interpreting the relevant provisions of our local rules.

1. ACCUSED PRODUCTS.

Patent Local Rule 3-1(b) required the following information to be disclosed as part of Oracle’s infringement contentions (emphasis added):

Separately for each asserted claim, each accused apparatus, product, device, process, method, act, or other instrumentality (“Accused Instrumentality”) of each opposing party of which the party is aware. This identification shall be as specific as possible. Each product, device, and apparatus shall be identified by name or model number, if known.
Oracle’s April 2011 disclosures accused the following instrumentalities of patent infringement (Francis Exh. F at 2) (footnotes omitted):

(i) “Android” or “the Android Platform”; (ii) Google devices running Android; and (iii) other mobile devices running Android. Representative examples of Google devices running Android include the Google Dev Phones, the Google Nexus One, and the Google Nexus S. Representative examples of other mobile devices running Android include HTC’s EVO 4G, HTC’s Droid Incredible, HTC’s G2, Motorola’s Droid, and Samsung’s Captivate.
The Mitchell report referenced three devices that were not specifically named in this list: the LG Optimus, the HTC Droid Incredible 2, and the Motorola Atrix. Specifically, the report stated that

2

a review of source code for particular Android devices, including those three, showed that the device manufacturers made no changes to the source code that would impact the infringement analysis performed on the repository version of the code (Francis Exh. A at ¶ 191).

Oracle’s infringement contentions did not support infringement theories directed at the LG Optimus, the HTC Droid Incredible 2, or the Motorola Atrix. The Patent Local Rules required specific identification of particular accused products. They did not tolerate broad categorical identifications like “mobile devices running Android,” nor did they permit the use of mere representative examples. Representative examples may be a useful tool for proving an infringement case at trial, but a full list of accused products must be disclosed as part of a party’s infringement contentions. Because the LG Optimus, the HTC Droid Incredible 2, and the Motorola Atrix were not among the products specifically identified in Oracle’s disclosure of accused products, Oracle may not now accuse them of infringement.

Oracle’s arguments to the contrary are unavailing. First, Oracle emphasizes its theory that all devices running Android function the same way in all relevant respects. The merits of this theory are irrelevant to the question of whether Oracle’s disclosures adequately supported the infringement accusations in the Mitchell report. Even with the intention of relying on circumstantial evidence to prove the similarity of many accused devices, Oracle could have and should have specifically identified all such accused devices. Oracle does not claim that the names of other Android devices were not known to it in April 2011. See Patent L.R. 3-1(b) (requiring accused products to be “identified by name or model number, if known”).

Second, contrary to Oracle, Google has not waived the instant critique. Google does not now argue that Oracle’s infringement contentions were unclear or inadequate, as in the decision Oracle cites for waiver; instead, Google argues that the Mitchell report added new accused products. Google could not have known, much less waived, this argument until the report was served. Moreover, the parties formally agreed to disagree on the adequacy of Oracle’s April 2011 infringement contention disclosures (Dkt. No. 110 at 10).

Third, Oracle argues that its infringement contentions gave Google adequate notice regarding the scope of the accused products, because the disclosure identified which components

3

of Android devices were at issue. The Patent Local Rules, however, placed the burden of specifically identifying all accused devices on the accuser. Even if it would have been easy for Google to compile an accurate list of all the devices Oracle considered to be Android devices, Rule 3-1(b) required Oracle to provide such a list in its disclosure of infringement contentions.

As to the accused products newly identified in the Mitchell report, Google’s motion is GRANTED. Oracle’s infringement theories may be directed only toward accused products that were specifically named in its April 2011 disclosure of infringement contentions. Because the LG Optimus, the HTC Droid Incredible 2, and the Motorola Atrix were not among the products specifically listed therein, Oracle may not now accuse them of infringement.

2. SOURCE CODE FILE DVMDEX.H (’104 PATENT).

Patent Local Rule 3-1(c) required Oracle’s disclosure of infringement contentions to include “[a] chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality.” Google asserts that the source code file DvmDex.h was not identified in Oracle’s claim charts, but that the Mitchell report now relies on that file as satisfying the “storing said numerical references” limitation of claim 11 of United States patent number RE38,104. Google, however, has not shown that the Mitchell report advanced any new, undisclosed theory regarding this limitation.

Rule 3-1(c) required identification of the precise element of any accused product that was alleged to practice a particular claim limitation; it did not require identification of every evidentiary item of proof showing that the accused element did in fact practice the limitation. Google confuses this distinction. That a particular document or source code file was not cited in a party’s infringement disclosures does not automatically preclude the party from using that document or file to support a theory that was timely disclosed. Google’s heavy reliance on a nonbinding decision requiring “pinpoint citations” to source code files is misplaced. Moreover, the source code cited in Oracle’s infringement contentions adequately supported the challenged aspects of the Mitchell report concerning the storing limitation of claim 11.

It is undisputed that the file DvmDex.h was not named in the relevant portion of Oracle’s infringement contentions. The DvmDex.h file itself, however, is not the element accused of

4

performing the storing limitation of claim 11. Rather, the Mitchell report identified specific functions located within that file as satisfying the storing limitation. Those functions also were identified in the relevant portion of Oracle’s infringement contentions. The reference to DvmDex.h in the Mitchell report therefore does not constitute a new infringement theory. Just as an accused hammer may later be described as being located in a toolbox, the accused functions disclosed in Oracle’s infringement contentions are described more fully in the Mitchell report with reference to the file DvmDex.h.

Google highlights two examples of passages in the Mitchell report it finds objectionable. Neither is problematic. Google quotes a statement that “[t]he DvmDex.h file contains the source code for the dvmDexSetResolvedMethod function, which serves to store the resolved symbolic reference” (Francis Exh. A at ¶ 277). The function dvmDexSetResolvedMethod — which is the accused element under this theory — was identified at least twice in the relevant portion of Oracle’s infringement contentions (Peters Exh. 1 at 25, 28). Similarly, Google quotes a statement that “[t]he DvmDex.h file also has dvmDexSetResolvedClass which serves to store the resolved symbolic reference after the class name gets resolved” (Francis Exh. A at ¶ 271). The function dvmDexSetResolvedClass, too, was identified at least twice in the relevant portion of Oracle’s infringement contentions (Peters Exh. 1 at 21, 48).

Google has not shown that the references in the Mitchell report to the source code file DvmDex.h invoke a new infringement theory that was not disclosed in Oracle’s infringement contentions. Accordingly, the portion of Google’s motion directed at the source code file DvmDex.h is DENIED.

3. TREEMAP THEORY AND RELATED SOURCE CODE FILES (’702 PATENT).

Again, the Patent Local Rules required disclosure of a chart identifying where each limitation of each asserted claim was found within each accused item. Google asserts that no socalled “‘TreeMap’ structure” was disclosed in Oracle’s April 2011 infringement contentions, but that the Mitchell report now identifies such a structure as satisfying the “removing said duplicated elements” limitation of claim 1 of United States patent number 5,966,702. Google also asserts that the Mitchell report “refers to a number of source code files supporting this TreeMap process”

5

that were not cited in Oracle’s infringement contentions (Br. 4). Google is correct that Oracle’s infringement contentions did not support Mitchell’s TreeMap theory. Google, however, has not shown that Oracle should be fully precluded from citing any of the supposedly related source code files.

Oracle’s infringement contentions identified the Android dx tool as the item accused of infringing claim 1 of the ’702 patent (Peters Exh. 2 at 2). With respect to the method step in question, however, the contentions did not explain how the dx tool supposedly removed duplicated elements. The contentions illustrated conditions before and after the dx tool was used to form a .dex file from a plurality of class files, inferring that duplicated elements must have been removed along the way. But they did not say what did the removing (id. at 13–17). In light of the Mitchell report, this vagueness ran afoul of the requirement to identify “specifically where each limitation of each asserted claim is found” in the accused item. Patent L.R. 3-1(c).

The Mitchell report laid out a precise theory as to where the “removing said duplicated elements” limitation of claim 1 was found within the dx tool process. According to his report, the intern() method calls FieldIds.put, which is an instance of the class TreeMap, and uses it to hold the interned field constants. “This is the step at which removal of duplicate constants is performed” (Francis Exh. A at ¶ 461). That is, “as class files are processed to form a .dex file, TreeMap is used to identify and remove duplicate elements” (id. at ¶ 476). Oracle does not contend that the Mitchell report advanced any other theory as to where the “removing said duplicated elements” limitation of claim 1 was found. This theory that a TreeMap object was used to perform the removing limitation of claim 1, however, was not disclosed in Oracle’s infringement contentions. Indeed, the contentions did not disclose any specific theory as to where this limitation was found in the dx tool process. Oracle may not raise a new infringement theory at this late date.

Contrary to Oracle, it is not too late for Google to raise the instant challenge. Google’s invalidity contentions are irrelevant, and Google’s response to Oracle’s non-infringement interrogatory did not lift Oracle’s disclosure burden. The TreeMap theory in the Mitchell report simply was not supported by Oracle’s infringement contentions.

6

On the other hand, Google’s attack on the source code files supposedly related to the TreeMap theory goes to far. As explained above, the fact that a particular source code file was not cited in a disclosure of infringement contentions does not necessarily preclude later citations to that file. Google has not shown that the manner in which the Mitchell report relied on particular source code files in discussing claim 1 of the ’702 patent was improper. Moreover, Google’s broad argument attacking this entire group of code file citations in conjunction with the TreeMap issue ignores the order limiting the motion to three points of critique (Dkt. No. 382 (“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 portion of Google’s motion directed at claim 1 of the ’702 patent is GRANTED IN PART AND DENIED IN PART. As to the TreeMap infringement theory regarding the removing limitation of claim 1, the motion is GRANTED. Mr. Mitchell may not offer any direct testimony about that theory at trial. As to the source code files supposedly related to the TreeMap theory, however, the motion is DENIED.

* * *

Any denial of a motion to strike does not mean that the item at issue in the motion is automatically admitted in evidence — it still must be moved in evidence, subject to any other objections, at trial. Similarly, any grant of a motion to strike does not exclude the item at issue in the motion under any and all circumstances; a party who prevailed on a motion to strike may open the door to the stricken material.

CONCLUSION

For the reasons stated above, defendant’s motion to strike portions of the opening expert report of John C. Mitchell regarding patent infringement is GRANTED IN PART AND DENIED IN PART. As to the accused products newly identified in the Mitchell report — the LG Optimus, the HTC Droid Incredible 2, and the Motorola Atrix — the motion is GRANTED. As to the source code file DvmDex.h, the motion is DENIED. As to the TreeMap infringement theory directed at the removing limitation of claim 1 of the ’702 patent, the motion is GRANTED. As to the source

7

code files supposedly related to the TreeMap theory, the motion is DENIED. The hearing set for September 29, 2011, is VACATED.

Because defendant raised meritorious critiques in the instant limited motion, defendant may file an additional motion to strike other portions of the Mitchell report. The motion would not count as one of defendant’s motions in limine The number of critiques to be raised in the second motion will not be limited, but the supporting memorandum may not exceed twelve pages. Any such motion must be filed by SEPTEMBER 29, 2011, and noticed to be heard on OCTOBER 13, 2011. An opposition not to exceed fifteen pages would be due on OCTOBER 4, 2011. A reply not to exceed three pages would be due on OCTOBER 6, 2011.

IT IS SO ORDERED.

Dated: September 26, 2011.

/s/ William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE


465

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 RESCHEDULING SETTLEMENT CONFERENCE

The settlement conference presently set for October 1, 2011 is hereby rescheduled for Friday, September 30, 2011 at 9:00 a.m. Parties are to appear in Courtroom 5, 4th Floor of the United States District Court, 280 South First Street, San Jose, CA 95113.

IT IS SO ORDERED.

Dated: September 26, 2011

Paul S. Grewal
Paul S. Grewal
United States Magistrate Judge


467

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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

No. C 10-03561 WHA

PLAINTIFF’S OPPOSITION TO DEFENDANT’S MOTION FOR RELIEF
FROM NON-DISPOSITIVE ORDER OF MAGISTRATE JUDGE

Dept.: Courtroom 8, 19th Floor
Judge: Honorable William H. Alsup

TABLE OF CONTENTS

I. Introduction... 1

II. Statement of Facts... 1

A. The Text Of The Lindholm Email Proves It Is A Business Communication ... 1

B. Google Did Not Rebut The Facts Established By The Text Of The Email ... 3

C. Google’s Own Lawyers Understood That The Email Concerned Business Negotiations – And Said So To The Court ... 4

D. Google Waived Any Otherwise Applicable Privilege By Producing The Email After Repeatedly And Closely Reviewing Its Contents, By Arguing The Substance Of The Email In Court, And By Continuing To Publish The Email And Direct People To It On The Internet ... 5

III. Argument ... 6

A. Magistrate Judge Ryu’s Order Is Entitled To “Great Deference” And Google Has Not Demonstrated The Clear Error Necessary To Set It Aside ... 6

B. Google Has The Burden Of Establishing The Existence Of The Privilege ... 6

C. The Lindholm Email Is A Communication Discussing Google’s Business Strategy Of Negotiating For A License, Which Is Not Subject To Any Privilege ... 7

D. Magistrate Judge Ryu Correctly Found That Google Failed To Meet Its Burden Of Establishing That The Email Was A Communication To An Attorney For The Primary Purpose Of Obtaining Legal Advice ... 7

1. Magistrate Judge Ryu Correctly Found That Mr. Lee’s Declaration Lacked A Foundation That He Had Reviewed The Email At Issue ... 9

2. Magistrate Judge Ryu Correctly Found That Google’s Declarations Failed To Rebut The Reasonable Inference That Mr. Lee and Mr. Lindholm Were Discussing “Non- Privileged Matters, Including The Business Of Negotiating For A Java License” ... 9

3. Magistrate Judge Ryu Correctly Found That Google Never Explained Why The Email Focuses On Business Executives Rubin, Page And Brin, Yet None Of The Declarations Describing Legal Advice Refer To The Involvement Of Those Persons ... 10

4. Magistrate Judge Ryu Properly Relied On Content Of The Entire Email In Correctly Finding That It Was Not Prepared In Anticipation Of Litigation Or To Further The Provision Of Legal Advice ... 11

5. Magistrate Judge Ryu Correctly Found That The Email Text Never Mentions Legal Advice, Lawyers, Litigation, Oracle, Or Patent Infringement But Rather Reflects A Strategy Discussion To Address Business Negotiations Regarding A Java License ... 12

6. Magistrate Judge Ryu Correctly Applied The Law Requiring A Clear Showing For Claims of Privilege Involving In House Counsel, But Google Has Not Met Even The Lower Standard It Advocates ... 12

7. Magistrate Judge Ryu Correctly Found That The Assertions By Google Counsel To The Court About The Email Undermine Google’s Claim Of Privilege ... 13

i

E. Magistrate Judge Ryu Correctly Held That Google Failed To Establish Work Product Protection For The Email ... 14

F. Google Has Waived Any Otherwise Applicable Privilege ... 14

IV. Conclusion ... 15

ii

TABLE OF AUTHORITIES

Cases

Adams v. Gateway, Inc.,
2003 WL 23787856 (D. Utah 2003) ... 7

Burdick v. IRS,
979 F.2d 1369 (9th Cir. 1992) ... 6

Conant v. McCoffey,
C 97–0139 FMS, 1998 WL 164946 (N.D. Cal. Mar.16, 1998) ... 6

Conceptus Inc. v. Hologic, Inc.,
No. C 09-02280 WHA, 2010 WL 3911943 (N.D. Cal. Oct. 5, 2010) ... 14, 15

Grimes v. City and County of San Francisco,
951 F.2d 236 (9th Cir. 1991) ... 6

Hakim v. Cannon Avent Group, PLC,
479 F.3d 1313 (Fed. Cir. 2007) ... 9

Hardy v. New York News,
114 F.R.D. 633 (S.D.N.Y. 1987) ... 7

In re Horowitz,
482 F.2d 72 (2d Cir. 1973), cert. denied, 414 U.S. 867 ... 15

In re Sealed Case,
737 F.3d 94 (D.C. Cir. 1984) ... 13

In re von Bulow,
828 F.2d 94 (2d Cir. 1987) ... 15

Luna Gaming-San Diego, LLC v. Dorsey & Whitney, LLP,
2010 WL 275083 (S.D. Cal. Jan 13, 2010) ... 15

Nguyen v. Excel Corp.,
197 F.3d 200 (5th Cir. 1999) ... 15

United States v. AbonceBarrera,
257 F.3d 959 (9th Cir. 2001) ... 6

United States v. Chen,
99 F.3d 1495 (9th Cir. 1996) ... 7, 10

United States v. ChevronTexaco Corp.,
241 F. Supp. 2d 1065 (N.D. Cal. 2002) ... 7, 13

United States v. Martin,
278 F.3d 988 (9th Cir. 2002) ... 6

United States v. Rowe,
96 F.3d 1294 (9th Cir. 1996) ... 13

Weil v. Investment/Indicators,
647 F.2d 18 (9th Cir. 1981) ... 14

iii

Wheeling-Pittsburgh Steel Corp. v. Underwriters Labs., Inc.,
81 F.R.D. 8 (N.D. Ill. 1978) ... 15

Other Authorities

Kenneth S. Broun et al., 1 McCormick on Evidence, at § 10 ... 9

iv

I. Introduction

This motion arises from Google’s efforts to conceal – through the attorney client privilege and the work product doctrine – an email written by an engineer and directed to a business executive, in which the engineer told the executive that Google had no choice but to pay Oracle for a Java license because there were no technical alternatives. [REDACTED]

Although Google begins its brief with an invocation of the Supreme Court’s decision in Upjohn, this dispute has nothing to do with Upjohn, which may explain why Google never cited that case to Magistrate Judge Ryu. The dispute here is whether Google proved that an email that discusses nothing but an engineer’s assessment of technical alternatives and business negotiation strategy is, contrary to what it says, a communication seeking legal advice. It is not.

Magistrate Judge Ryu carefully considered the evidence and correctly applied the law. She gave Google a full and fair opportunity to justify its claims of privilege, carefully reviewed the email itself and all of Google’s factual submissions, and found that Google had not met its burden. Her Order requiring production of the email suffers from no error at all, much less clear error. The Order should be affirmed.

II. Statement of Facts

A. The Text Of The Lindholm Email Proves It Is A Business Communication

On July 20, 2010, Oracle lawyers made a presentation to Google, asserting that Android infringed specific patents related to Java. (Dkt. No. 336, Second Norton Decl., Ex. 4.)

About two weeks later, on August 6, 2010, Google engineer Tim Lindholm emailed Google Vice President Andy Rubin, who was in charge of Android. Mr. Lindholm was a Sun engineer working on Java until July 2005, when he joined Google and immediately began advising Mr. Rubin about Android. (Dkt. No. 305, Norton Decl., ¶ 11, Ex. A-G.) This is what Mr. Lindholm wrote in his email:

[REDACTED]

1

What we’ve actually been asked to do (by Larry and Sergei) is to investigate what technical alternatives exist to Java for Android and Chrome. We’ve been over a bunch of these, and think they all suck. We conclude that we need to negotiate a license for Java under the terms we need.

[REDACTED]

(Google in camera submission.) After he wrote those words, at literally the last moment, Mr. Lindholm added “Google Confidential” and “Attorney Work Product” at the top of the page, and added Ben Lee, a Google in-house lawyer, to the email’s addressees. (Compare id. at p. 8 (time stamp of 11:04, omitting header and Mr. Lee); with id. at p. 11 (time stamp of 11:05 with header and Mr. Lee added).)

Mr. Lindholm’s email is without question a business communication. The text of the email makes no reference, express or implied, to litigation, infringement, lawyers, or legal advice. Three of the four paragraphs refer to negotiation, and in particular, Google’s business strategy in negotiating for a Java license. The factors relevant to Mr. Lindholm’s analysis are in no way legal or even inputs to providing legal advice, as Magistrate Judge Ryu found. (Dkt. No. 361 at 5:21-22; 6:3-5.)

Indeed, as Magistrate Judge Ryu noted, every substantive sentence of the email refers to a business or technical consideration, never a legal one. (See Dkt. No. 361 at 2, 5-6.) Mr. Lindholm was given his task by Google founders “Larry and Sergei,” not any lawyer. His task was to “to investigate what technical alternatives exist to Java for Android and Chrome,” not evaluate claims of infringement or assist with legal analysis. His conclusion that the technical alternatives “all suck,” was that of an engineer assessing business options. His conclusion that “we need to negotiate a license for Java under the terms we need” recognized the business consequences of having no viable alternatives to Java. [REDACTED]

2

[REDACTED]

Magistrate Judge Ryu expressly relied on Mr. Lindholm’s contemporaneous written statements in finding that “the Email appears to be a strategy discussion intended to address business negotiations regarding a Java license” (Dkt. No. 361 at 6:12-13) and that “the contents of the email itself severely undermine the claim that Lindholm generated this particular email as part of an attorney-directed effort to provide legal advice or prepare for litigation.” (Dkt. No. 361 at 5:5-7.)

B. Google Did Not Rebut The Facts Established By The Text Of The Email

While Google argues that Magistrate Judge Ryu’s findings were “clearly erroneous,” it ignores every single one of Mr. Lindholm’s specific statements in the email. Google’s five declarations – including two from Mr. Lindholm – do not so much as mention those facts.1 The after-the-fact declarations assert, in conclusory fashion, that Mr. Lindholm was reporting on investigations he and Dan Grove (another Google engineer) conducted “at the request of Google General Counsel Kent Walker, under the supervision of Mr. Lee, and in anticipation of Oracle’s threatened lawsuit.” (Dkt. No. 408-2, Lindholm Decl. at ¶ 14.)

Google attempts to bolster that generalized assertion with a declaration from Mr. Lee, stating that “[o]n or about August 6, 2010, I received an email from Mr. Lindholm regarding the investigation Mr. Walker and I had asked him to conduct.” (Dkt. No. 301, Lee Decl.) But as Magistrate Judge Ryu found, Mr. Lee, who no longer works for Google, failed to establish that he actually read the email that is in dispute. Indeed, Mr. Lee does not state that he has read that email, but only says he “received an email from Mr. Lindholm” and that “on information and belief” the email he “received” is on Google’s privilege log. (Dkt. No. 361 at 5:8-11.) That Mr. Lee did not actually look at the email is demonstrated by the fact that his original declaration – also on information and belief – incorrectly identified the

_______________________________

1 Google appears to contend that Magistrate Judge Ryu found the declarations credible. (Dkt. No. 441 at 2:17-18; 6:14-17). Google is wrong. Magistrate Judge Ryu merely observed – at the hearing – that “I don’t need to reach the issue of whether somebody is not credible or is lying, or anything like that.” (Dkt. No. 441-5 at 24:17-19 (emphasis added). Her actual written finding in the Order – that the “contents of the email itself severely undermine the claim” of privilege – must be credited over any contention that Google’s declarations are credible.

3

privilege log entry associated with the email. (Dkt. No. 441 at 3 n.1.) Moreover, Google’s privilege log has no fewer than 170 separate entries for emails from Mr. Lindholm to Mr. Lee “on or about August 6, 2010.” (Dkt. No. 367-1, Second Norton Decl., Ex. 1, at p. 8-15, 23-29, 57, 78-82 (entries for withheld emails dated August 5 and 6, 2010, from Tim Lindholm to Ben Lee).) Nothing in Mr. Lee’s declaration establishes that the email he purports to describe is the one at issue here, and not one of the other 170.

In addition, these carefully crafted declarations undermine any contention that Mr. Lindholm was communicating information to lawyers for the sole (or even primary) purpose of obtaining legal advice. Mr. Lindholm twice concedes that he was gathering information for “management to consider in evaluating technology issues.” (Dkt. No. 408-2, Lindholm Decl. ¶ 7; Dkt. No. 408-3, Lindholm Response Decl. ¶ 7.)

C. Google’s Own Lawyers Understood That The Email Concerned Business Negotiations – And Said So To The Court

The substance of the email was discussed at two hearings in this case held on July 21, 2011: first, at a telephonic discovery hearing before Magistrate Judge Ryu, and then at the Daubert hearing in this Court. At the discovery hearing, Google was represented by 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. (Dkt. No. 305, Norton Decl. ¶ 18.) At the Daubert 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 Google in-house lawyers Catherine Lacavera and Mr. Hwang. (Id. ¶ 27).

No Google lawyer objected at either hearing that the email was privileged. To the contrary, at both hearings Google’s trial counsel, clearly recognizing and displaying familiarity with the email, argued its substance. (Id. ¶¶ 17-37.) Contrary to what Google argues now, this is how Mr. Van Nest explained the email to the Court on July 21:

Number 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
* * *
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

4

there any other way we can do this and avoid it, altogether?
(Id. ¶¶ 34-35, Ex. I at 41:21-42:3, 42:6-10 (emphases added).)2 As Magistrate Judge Ryu found, the fact that Google’s own lawyers, who are “intimately familiar with the facts of this case, believed that the Email concerned business negotiations,” not legal advice, is by itself compelling evidence that the email really does concern business negotiations, not legal advice. (Dkt. No. 361 at 6:21-7:2.)3

D. Google Waived Any Otherwise Applicable Privilege By Producing The Email After Repeatedly And Closely Reviewing Its Contents, By Arguing The Substance Of The Email In Court, And By Continuing To Publish The Email And Direct People To It On The Internet

Although Magistrate Judge Ryu found it unnecessary to reach the issue, Google has waived any otherwise applicable privilege, for at least three reasons.

First, Google produced at least eight versions of the email, each time affixing the legend “Highly Confidential - Attorney’s Eyes Only.” (Dkt. No. 441 at 5:4-6.) Pursuant to the Protective Order, Google’s use of the legend is an implicit representation that it exercised “restraint and care” before making the designation, and each time satisfied itself that the entire document warranted highly confidential treatment. (Dkt. No. 66 at §§ 5.1, 5.2(a).) Indeed, Google used a single set of document reviewers to determine whether a given document was privileged, confidential, or highly confidential. (Dkt. No. 317, Zmrhal Decl., ¶ 10.) Google’s production of the email was not “inadvertent.”

Second, as noted above, Google made no objection to the use of the Lindholm email at either of the hearings on July 21. Instead, Google’s attorneys argued the substance of the document, asserting

___________________________

2 Google asserts in its brief that neither Mr. Baber nor Mr. Van Nest had “any opportunity” to review the document before they made assertions in Court about what it meant. No record evidence supports that claim. There is no declaration from Mr. Baber, Mr. Van Nest, or any Google lawyer who attended the two July 21 hearings saying that they were unaware of the email until Oracle mentioned it. Although Mr. Van Nest has retracted other incorrect statements that he has made to the Court (e.g., Dkt. No. 242), he has never retracted the statements he made on July 21 about the Lindholm email.

3 Although irrelevant here, Google also claims that Oracle violated the Protective Order by using the email in court without giving Google notice. (Dkt. No. 441 at 5:8-11.) That claim is false. The discovery hearing concerned Oracle’s request to take Mr. Lindholm’s deposition, which Google opposed. Oracle quoted the email only after Google counsel told the Court – incorrectly – that Mr. Lindholm “didn’t work on Android at Google and he wasn’t involved in negotiations.” (Dkt. No. 305, Norton Decl. ¶¶ 20-23). In response, Oracle’s counsel first identified the document as Highly Confidential, and quoted it in part to correct the record. (Id.) At the Daubert hearing, Oracle counsel explained that he had documents that were designated by Google as Highly Confidential, and did not intend to disclose them in open court. Only after the Court stated that it would not treat evidence of willful infringement as confidential, the Court directed Oracle counsel to “say whatever you want,” and the six Google lawyers in attendance decided not to object, did Oracle refer to the email. (Id. ¶¶ 28-31) Each time Google had notice under the Protective Order.

5

privilege only after the Court warned Google counsel “you are going to be on the losing end of this document, and with Andy Rubin on the stand.” (Dkt. No. 305, Norton Decl., Ex. I at 40:25-41:6).

Third, even after it asserted privilege, Google itself continued to make the contents of the email widely available. Portions of the Lindholm email were widely published in reports of the July 21 Daubert hearing. (Id. ¶ 47.) Since then, Google searches including the name Lindholm and related terms generate thousands of hits of internet web pages quoting the email. These quotes of purportedly privileged material appear on Google’s search page itself, not just in the linked web pages. (Id. ¶ 48, Ex. O, P.) Google concedes that it can exclude these links from its search results, but it has chosen not to do so. (Dkt. No. 336, Second Norton Decl., ¶¶ 7-9; Dkt. No. 332, Cutts Decl., ¶ 6.)

III. Argument

A. Magistrate Judge Ryu’s Order Is Entitled To “Great Deference” And Google Has Not Demonstrated The Clear Error Necessary To Set It Aside

For discovery disputes and other non-dispositive matters, such as this one, the decision of the magistrate judge “is entitled to great deference.” United States v. AbonceBarrera, 257 F.3d 959, 969 (9th Cir. 2001). “A non-dispositive order entered by a magistrate must be upheld unless it is ‘clearly erroneous or contrary to law,’” and the reviewing court may not substitute its own judgment for that of the magistrate judge. Grimes v. City and County of San Francisco, 951 F.2d 236, 241 (9th Cir. 1991). Magistrate Judge Ryu’s ruling would be clearly erroneous only if this Court were left with a “definite and firm conviction that a mistake has been committed.” Burdick v. IRS, 979 F.2d 1369, 1370 (9th Cir. 1992). “A decision is ‘contrary to law’ if it applies an incorrect legal standard or fails to consider an element of the applicable standard.” Conant v. McCoffey, C 97–0139 FMS, 1998 WL 164946, *2 (N.D. Cal. Mar.16, 1998). Of Google’s seven objections, only one challenges a legal principle; the other six must be considered under the demanding “clearly erroneous” standard.

The Order is entirely correct as to both law and facts and should be affirmed under any standard.

B. Google Has The Burden Of Establishing The Existence Of The Privilege

Google has the burden of establishing that the email is privileged. See, e.g., United States v. Martin, 278 F.3d 988, 999-1000 (9th Cir. 2002). Moreover, “[b]ecause it impedes full and free discovery of the truth, the attorney-client privilege is strictly construed.” Id. In seeking to establish

6

that a document is privileged, Google must prove that the “‘,b>primary purpose’ of the communication was securing legal advice.” United States v. ChevronTexaco Corp., 241 F. Supp. 2d 1065, 1076 (N.D. Cal. 2002) (emphasis added).

C. The Lindholm Email Is A Communication Discussing Google’s Business Strategy Of Negotiating For A License, Which Is Not Subject To Any Privilege

The text of the email establishes that Mr. Lindholm was investigating technical alternatives to assist in developing a negotiation strategy. Even if lawyers were involved in formulating that strategy, and even if the motivation to negotiate came from a threat of litigation, communications of that business strategy are not privileged. As another court held on very similar facts,

Gateway was negotiating with Adams at the same time it was making its investigation. Gateway’s good faith negotiations with Adams show Gateway had significant business interests which were at issue in the investigation. These issues may have been similar to those in potential litigation. Documents showing business or negotiation strategy are not matters of litigation strategy protected by the work product privilege.
Adams v. Gateway, Inc., 2003 WL 23787856, *15 (D. Utah 2003) (emphasis added). See also Hardy v. New York News, 114 F.R.D. 633, 644-45 (S.D.N.Y. 1987) (“When the ultimate corporate decision is based on both a business policy and a legal evaluation, the business aspects of the decision are not protected simply because legal considerations are also involved.”).4

D. Magistrate Judge Ryu Correctly Found That Google Failed To Meet Its Burden Of Establishing That The Email Was A Communication To An Attorney For The Primary Purpose Of Obtaining Legal Advice.

Google conveniently summarizes its argument as having four parts. (Dkt. No. 441 at 8:21-9:5) Less conveniently for Google, all fours parts are wrong.

First, Google objects that Magistrate Judge Ryu “ignored all intrinsic evidence that the communication is privileged,” by which Google means the last-minute addition of the words “Attorney Work Product” and inclusion of Mr. Lee, and the fact that email concerns some of the same technology that Oracle asserted was infringing. But Magistrate Judge Ryu did not “ignore” anything – she considered all of the “intrinsic” evidence, particularly the words that Mr. Lindholm wrote at the time.

_________________________

4 Google cites United States v. Chen, 99 F.3d 1495, 1501-02 (9th Cir. 1996) as holding that communications related solely to business negotiations can be privileged. (Dkt. 441 at 13 n.42) Chen says no such thing. Chen merely observes that the labels “business” and “legal” often are not helpful; the issue is whether the attorney is employing his or her knowledge of the law. Id.

7

(Dkt. No. 361 at 5:3-7 (rejecting argument that “work product” legend and inclusion of Mr. Lee support inference that the Email is privileged, as “the contents of the email itself severely undermine” claim of privilege); 7:3-8 (rejecting argument that boilerplate legend of “work product” or inclusion of attorney is enough to confer privilege; citing cases); 6:7-10 (observing that email’s reference to alternatives to Java for Chrome as well as for Android “further erodes Google’s claim” of privilege, because Oracle did not mention Chrome at the July 20 meeting, and Chrome has played no role in this litigation).)

Second, Google objects that Magistrate Judge Ryu “ignored all extrinsic evidence that the communication is privileged,” by which Google means its declarations. Again, Magistrate Judge Ryu “ignored” nothing. Rather, she carefully analyzed those declarations, and found them inadequate to meet Google’s burden or to overcome the specific facts in the email itself. (Dkt. No. 361, at 4:15-5:2 (summarizing the Google declarations); 5:7-20 (listing “basic gaps” in the Google declarations).)

Third, Google objects that Magistrate Judge Ryu “speculated about then-occurring non-legal business activities to which the communication might relate.” There was no “speculation.” Rather, Magistrate Judge Ryu focused closely on the text of the email, including its emphasis on business negotiation strategy and considerations unrelated to the litigation; the inconsistencies between what the email says and what Google claims the email is; the inconsistencies between the persons identified in the email (Page, Brin, Rubin, [REDACTED]) and the parties involved in the legal investigation (Walker, Lee, and unspecified “senior management”); and Google’s inability to explain why the facts stated in the email do not match up to its story now. (Dkt. No. 361 at 5:3-6:14.)

Fourth, Google objects that Magistrate Judge Ryu “declared that the party asserting privilege had failed to carry its burden of disproving her speculations about how the communication might concern ordinary business matters as opposed to a legal investigation.” This is nonsense. Magistrate Judge Ryu found that the email itself “severely undermines” any claim of privilege, explained in detail why that was so, and found that Google had “no rejoinder to these central facts.” (Dkt. No. 361 at 5:6, 5:25). Magistrate Judge Ryu did not require Google to “disprove[e] her speculations.” She required Google to meet its burden of establishing privilege by addressing the facts, not just reciting legal standards in formulaic declarations. Google failed to meet that burden.

Having summarized its argument, Google then lists seven quotes from the Order, calls those

8

Magistrate Judge Ryu’s “seven reasons” for concluding the email was not privileged, and objects to each. Google’s selective quotes do not, of course, represent all of the reasons that Magistrate Judge Ryu gave for granting the motion to compel. Most importantly, Google still has “no rejoinder” to the “central facts” of the email itself. But all of its specific objections are equally meritless.

1. Magistrate Judge Ryu Correctly Found That Mr. Lee’s Declaration Lacked A Foundation That He Had Reviewed The Email At Issue

Magistrate Judge Ryu found that Mr. Lee “did not indicate that he reviewed the Email and could competently represent that it was connected to the work he requested from Lindholm as part of the legal advice he describes in his declaration.” (Dkt. No. 361 at 5:9-11) Google’s objection to this evidentiary ruling is reviewed under the clearly erroneous standard. See Hakim v. Cannon Avent Group, PLC, 479 F.3d 1313, 1320 (Fed. Cir. 2007). There is no error, clear or otherwise.

Google merely argues that Mr. Lee was not required to provide a foundation for his testimony, because his declaration states that he “received the email in question and describes what it is about.” (Dkt. No. 361 at 9:14-15). But this statement does not establish Mr. Lee’s competence as a witness. Fed. R. Evid. 602. The party offering the testimony bears the burden of laying a foundation showing that the witness “had an adequate opportunity to observe and presently recalls the observation.” Kenneth S. Broun et al., 1 McCormick on Evidence, at § 10. Not only did Google fail to provide this foundation, but Mr. Lee’s mis-identification of the email in his original declaration, his assertion “on information and belief” that the email he describes is the one on Google’s privilege log, and the scores of other entries on Google’s privilege log that could be the email he received “on or about August 6, 2010,” all provide additional reasons to conclude that the required foundation was absent.

2. Magistrate Judge Ryu Correctly Found That Google’s Declarations Failed To Rebut The Reasonable Inference That Mr. Lee and Mr. Lindholm Were Discussing “Non- Privileged Matters, Including The Business Of Negotiating For A Java License”

Google next objects to Magistrate Judge Ryu’s observation that Mr. Lindholm and Mr. Lee may well have been discussing “non-privileged matters, including the business of negotiating for a Java license” and that Google failed to negate that possibility. Again, this factual finding is reviewed on the clearly erroneous standard, and Magistrate Judge Ryu’s ruling is correct.

Contrary to Google’s assertion, Magistrate Judge Ryu was not engaged in “counterfactual

9

speculation;” she was highlighting Google’s failure to rebut the obvious, reasonable interpretation of Mr. Lindholm’s email as a discussion of business negotiations, not litigation. Further, Google’s claim that Mr. Lindholm “specifically excluded the possibility that the email was about anything else” (Dkt. 441 at 10:1-2) is mere exaggeration. What Mr. Lindholm actually wrote was that, in preparing the email, he “was not intending to give general business advice to anyone in connection with Android’s ongoing business operations.” (Dkt. No. 408-3, Lindholm Response Decl., ¶ 7.)5 Even assuming that Mr. Lindholm could credibly claim that his email contained no business advice – and he cannot – that generic statement leaves open the reasonable possibility that he was giving Mr. Rubin specific advice about “technical alternatives to Java” and business strategies for negotiating for a Java license, neither of which was part of “Android’s ongoing business operations” in August 2010.

3. Magistrate Judge Ryu Correctly Found That Google Never Explained Why The Email Focuses On Business Executives Rubin, Page And Brin, Yet None Of The Declarations Describing Legal Advice Refer To The Involvement Of Those Persons.

In the email, Mr. Lindholm wrote to Mr. Rubin that he had been given his task “by Larry and Sergei.” In his declaration, he described assistance he gave to an investigation at the request of Ben Lee and Kent Walker. (Dkt. No. 408-2, Lindholm Decl. ¶¶ 5, 7.) Magistrate Judge Ryu correctly found that neither Lindholm nor Lee explained this discrepancy. They do not aver that Messrs. Rubin, Page, or Brin were involved in efforts to obtain legal advice. The reasonable conclusion is that the investigation of technical alternatives described in the email is not the legal advice described by Mr. Lee and Mr. Lindholm, because business executives, not lawyers, were directing Mr. Lindholm.

Google’s objection, again, is subject to clearly erroneous review. Google appears to first assert that Mr. Page and Mr. Brin must have been involved in legal analysis of Oracle’s infringement claims, even though none of Google’s five declarations says that. From this conjecture, Google asserts that when Mr. Lindholm wrote about the request from “Larry and Sergei” that he investigate “technical alternatives to Java for Android and Chrome” the only plausible inference is that he was really referring to a request from Mr. Walker and Mr. Lee that he assist them in efforts to “develop legal advice and

________________________

5 Courts generally do not credit witnesses’ conclusory characterizations of communications as “business” advice or “legal” advice. Chen, 99 F.3d at 1501-02. Indeed, Mr. Lindholm’s declaration leaves open the possibility that he believes – mistakenly – that discussions of business negotiation strategy that include lawyers are not “business” advice.

10

convey that advice to Google’s executive management.” (Dkt. No. 441 at 10:5-18) But “Larry and Sergei” are not “Kent and Ben;” Mr. Lindholm knows the difference. Google’s efforts to fill the “basic gaps” in its declarations with its lawyers’ own say-so do not meet its burden.

Google then contends that Magistrate Judge Ryu “appears to have assumed that a legal investigation can be ordered or supervised either by top management, or by the company’s general counsel – but never by both.” (Id. at 10:19-11:1.) Magistrate Judge Ryu made no such assumption. She merely pointed out that the email identifies an investigation directed by Mr. Page and Mr. Brin, and the declarations identify an investigation directed by Mr. Walker and Mr. Lee, and despite that significant discrepancy, Google offered no evidence to explain it.

4. Magistrate Judge Ryu Properly Relied On Content Of The Entire Email In Correctly Finding That It Was Not Prepared In Anticipation Of Litigation Or To Further The Provision Of Legal Advice.

Magistrate Judge Ryu carefully analyzed the text of the email and found that nothing in it indicated “that Mr. Lindholm prepared it in anticipation of litigation or to further the provision of legal advice” and explained why. (Dkt. No. 361 at 5:21-25.)

First, Google claims that the “content of the email” supports the claim of privilege. But what Google calls “content” is window dressing. As Magistrate Judge Ryu explained, the text of the email describes business negotiation strategy, not legal advice or litigation strategy. The fact that the email refers to Java technology, which Android infringes, does not undermine in any way the fact that Mr. Lindholm’s email was analyzing business options, not assisting in litigation analysis.

Second, Google argues that Magistrate Judge Ryu was wrong when she wrote that the email is “not directed to Walker or Lee, or indeed, to any lawyer.” (Id. at 5:22-23.) In fact, Google says, Mr. Lee’s name is in the “To:” line. Google misses the point. The email is “directed to” Mr. Rubin, who is the sole person in the salutation, and the email seeks a response from Mr. Rubin alone.

Third, Google argues that Magistrate Judge Ryu was wrong when she wrote that the email “expressly states that Page and Brin (and not the lawyers) instructed Lindholm and Grove to undertake the technological research discussed in the Email.” (Id. at 5:23-25). But that is exactly what Mr. Lindholm wrote: “what we have been asked to do (by Larry and Sergei) . . . .” Although Google’s quibble is difficult to discern, it appears that Google misreads the Order. Magistrate Judge Ryu did not

11

find that the email expressly states that no lawyer asked Mr. Lindholm to investigate technical alternatives. Instead, Magistrate Judge Ryu found that Page and Brin are expressly mentioned in the email as directing the project, while the lawyers are not mentioned at all. The omission of the lawyers does, however, strongly support the inference that the investigation described in the email was not performed at the request of lawyers, but by the Google founders who are actually named.

5. Magistrate Judge Ryu Correctly Found That The Email Text Never Mentions Legal Advice, Lawyers, Litigation, Oracle, Or Patent Infringement But Rather Reflects A Strategy Discussion To Address Business Negotiations Regarding A Java License.

Google’s fifth objection is especially frivolous. Magistrate Judge Ryu examined the email and correctly observed that the text of the email makes no reference to legal advice, lawyers, litigation, Oracle, or patent infringement. She found that it focused on “technological aspects of Chrome and Android, and the need to negotiate a license for Java.” Based on the entirety of the email text, she concluded that the email “appears to be a strategy discussion intended to address business negotiations regarding a Java license” (Id. at 6:3-5, 12-13)

Based on those findings, Google accuses Magistrate Judge Ryu of holding that a communication cannot be privileged unless it contains an express reference to litigation. (Dkt. No. 441 at 12:13-19). No such holding, implied or express, is in the Order. Magistrate Judge Ryu simply did what Google still refuses to do: read the email and apply the plain meaning of its words. For good reason, Magistrate Judge Ryu found that those words, quoted in full at the outset of this brief, but nowhere in Google’s brief, “severely undermine” the claim of privilege. It is neither novel nor offensive to the privilege to point out that a communication that focuses entirely on alternatives, price, and negotiation strategy, and never mentions litigation, lawyers, or legal claims, probably is not privileged.

Google also accuses Magistrate Judge Ryu of engaging in “speculation” by characterizing the email as “a strategy discussion intended to address business negotiations regarding a Java license.” Google’s argument still fails to deal with the email’s repeated references to “negotiation,” “alternatives,” “options,” “license,” “terms,” and “price.”

6. Magistrate Judge Ryu Correctly Applied The Law Requiring A Clear Showing For Claims of Privilege Involving In House Counsel, But Google Has Not Met Even The Lower Standard It Advocates.

This Court has held that “[w]ith respect to internal communications involving in-house

12

counsel,” the party claiming privilege must make a ‘clear showing’ that the ‘speaker’ made the communications for the purpose of obtaining or providing legal advice.” ChevronTexaco, 241 F. Supp. 2d at 1076 (following now-Justice Ginsburg’s opinion in In re Sealed Case, 737 F.3d 94, 99 (D.C. Cir. 1984)). Magistrate Judge Ryu cited that standard in her Order; Google says she is wrong. She is not.

Google cites United States v. Rowe, 96 F.3d 1294, 1296 (9th Cir. 1996) as supposedly rejecting the rule of In re Sealed Case. But Rowe did not concern this issue, and Google quotes it out of context. In Rowe, lawyers performed an internal investigation of improprieties at their own law firm. The government also investigated and served subpoenas on the lawyers. The government argued that communications among the lawyers were not privileged, because there was no communication with a client. See id. The Ninth Circuit held that the lawyers were acting, effectively, as in house counsel, and that as such, their confidential communications concerning the investigation were privileged. The Ninth Circuit never purported to address the showing necessary to establish privilege for in-house communications, and the treatise it cited did not address that point either. See id. In short, Rowe stands only for the uncontroversial rule that in-house lawyers have a “client” for purposes of the attorneyclient privilege. No case has ever cited it for the rule Google attributes to it.

Google then argues that under the “clear showing” standard, there is a rebuttable presumption that a lawyer in the legal department is “most often” giving legal advice. (Dkt. No. 441 at 14:7-13). But this rule is unavailing to Google, as it has provided no evidence whatsoever about Mr. Lee’s role at Google. Moreover, as Google itself has argued in this very case, lawyers with responsibility for litigation matters also have responsibility for making business decisions.6

In any event, Google failed under either standard to establish that the email was for the primary purpose of obtaining legal advice, as opposed to a discussion of business negotiation strategy.

7. Magistrate Judge Ryu Correctly Found That The Assertions By Google Counsel To The Court About The Email Undermine Google’s Claim Of Privilege

The substance of the Lindholm email was discussed at two hearings on July 21. Not only did Google’s inside and outside counsel make no objection that the document was privileged, they actually

_________________________

6 See, e.g., Dkt. No. 145 at 5-10 (Google’s objections to disclosure of Highly Confidential material to Oracle in-house lawyers Dorian Daley, Deborah Miller, Matthew Sarboraria, and Andrew Temkin, on grounds that these attorneys are responsible for competitive decision making).

13

argued the document’s substance. Mr. Van Nest went further, asserting that Mr. Lindholm was acting at the direction of the CEO, and that the email reflected the parties’ “negotiations” for a “license.”

In an effort to evade its own lawyers’ words, Google contends that those lawyers were “surprised” and seeing the email for the “first time.” That claim has no support in the record. Mr. Baber and Mr. Van Nest did not tell the Court they were unfamiliar with the document; to the contrary, they made affirmative representations about what the email meant. There is no declaration from any Google lawyer professing that he or she had not seen the email before July 21, and for good reason: the July 21 discovery hearing included Oracle’s motion to take Mr. Lindholm’s deposition. It is implausible that Google counsel opposed allowing Oracle to take Mr. Lindholm’s deposition without even reviewing documents he produced that contained words like Android, Java, license, and negotiate.

In any event, Google again misses the point. As Magistrate Judge Ryu noted, sophisticated Google lawyers who know the facts of the case saw the Lindholm email and concluded that it discusses business negotiation strategy, not privileged communications. They reached that conclusion, not because they were “surprised” or ill-informed but because that is what the document indicates.

E. Magistrate Judge Ryu Correctly Held That Google Failed To Establish Work Product Protection For The Email.

Magistrate Judge Ryu found that Google failed to prove that the email was prepared for the purpose of litigation. She also found that Google waived any work product dual purpose argument, a finding that Google does not challenge. (Dkt. No. 361 at 8:15-21 & n.6). Accordingly, Google can establish work product protection only if the email was created exclusively in preparation for litigation. Because the document concerns negotiations, not litigation, Google cannot demonstrate that this email was created in preparation for litigation at all, and its claim of work product protection must fail.

F. Google Has Waived Any Otherwise Applicable Privilege.

Google has the burden of establishing that it did not waive the privilege. See Weil v. Investment/Indicators, 647 F.2d 18, 23-25 (9th Cir. 1981); Conceptus Inc. v. Hologic, Inc., No. C 09- 02280 WHA, 2010 WL 3911943, *1 (N.D. Cal. Oct. 5, 2010). Google has waived any applicable privilege for three independent reasons, none of which it addresses in its brief.

First, Google originally produced eight copies of drafts of the email after its attorneys carefully

14

reviewed them and decided – eight separate times – to designate them as Attorneys’ Eyes Only, but not privileged. Google’s production after making that designation – presumably with restraint and care, (Dkt. No. 66 at 5) cannot be inadvertence. See Conceptus, 2010 WL 3911943, *2.

Second, Google waived the privilege when it not only failed to object to Oracle’s use of the documents at two separate hearings, but Google itself actually argued the substance of those documents. “[I]f a privileged document is used at a deposition, and the privilege holder fails to object immediately, the privilege is waived.” Luna Gaming-San Diego, LLC v. Dorsey & Whitney, LLP, 2010 WL 275083, *5 (S.D. Cal. Jan 13, 2010) (privilege waived by failure to object to use of document for two minutes at deposition); see also Nguyen v. Excel Corp., 197 F.3d 200, 206–08 (5th Cir. 1999); Wheeling-Pittsburgh Steel Corp. v. Underwriters Labs., Inc., 81 F.R.D. 8, 9-10 (N.D. Ill. 1978).

Third, Google waived the privilege by affirmatively publishing the ostensibly privileged information on the google.com search page and directing members of the public to the document’s contents. As Judge Friendly warned nearly forty years ago: “[i]t is not asking too much to insist that if a client wishes to preserve the privilege under such circumstances, he must take some affirmative action to preserve confidentiality.” In re Horowitz, 482 F.2d 72, 82 (2d Cir. 1973), cert. denied, 414 U.S. 867; see also In re von Bulow, 828 F.2d 94, 101-02 (2d Cir. 1987) (client waived attorney-client privilege when client promoted book published by his attorney that included client’s privileged material).

IV. Conclusion

For all of the reasons stated above and in the Order itself, the Order should be affirmed.

Dated: September 26, 2011

Respectfully submitted,

BOIES, SCHILLER & FLEXNER LLP

By: /s/ Fred Norton
Fred Norton
Attorneys for Plaintiff ORACLE AMERICA, INC.

15


469

[Keker & Van Nest LLP letterhead]

September 26, 2011

VIA E-FILING

The Honorable William 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:

I write in brief response to Steven Holtzman’s letter of earlier today, which letter asked the Court to deny Google’s request to file a Daubert motion on aspects of the revised damages report of Oracle’s damages expert Dr. Iain Cockburn. Mr. Holtzman argues that the Court should deny Google’s request because Google has raised Daubert issues related to Cockburn in one of its five allotted motions in limine.

Google had no choice but to submit the Daubert challenges as a motion in limine in order to preserve its right to assert the challenge, in the event the Court denied Google’s request to file a stand-alone Daubert motion. As Google pointed out previously, waiting to brief and hear the Daubert challenges later would have the advantage of allowing Google also to raise any issues presented by Cockburn’s reply report, which Oracle has agreed to serve by October 10, 2011, a week before the scheduled pretrial conference. Having said that, Google defers to the Court as to whether it would prefer to consider these issues by way of a motion in limine or more formal and deliberate separate Daubert briefing.

Sincerely,

/s/ Robert A. Van Nest


470

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 REGARDING PRÉCIS REQUEST TO FILE DAUBERT MOTION
CONCERNING SECOND DAMAGES REPORT

Google Inc. requests leave “to file a Daubert motion on certain aspects of the revised damages report of Oracle’s damages expert Dr. Iain Cockburn” (Dkt. No. 450). At the hearing on Google’s summary judgment motion regarding the copyright claim, Google was instructed that its arguments to disqualify Dr. Cockburn’s second damages study should be raised as one of Google’s motions in limine (Dkt. No. 445 at 67). Google, however, now “seeks leave to file this Daubert motion separately, rather than as one of its five motions in limine, largely because of timing” (Dkt. No. 450 at 3). Specifically, “Google asks for a briefing schedule allowing Google to file its motion after Cockburn’s deposition, which will follow his reply report, now due on October 10” and which “would allow the Court to resolve this issue before a December 2011 damages trial” (ibid.).

Oracle America, Inc. opposes Google’s request (Dkt. No. 452). After the parties served their motions in limine, Oracle reported that one of Google’s motions in limine raised Oracle’s proposed critiques of the damages report, supposedly rendering Google’s précis request moot

(Dkt. No. 463). In response, Google explained that the motion in limine was intended to preserve its challenges, and that a later schedule for briefing and hearing its Daubert motion was still preferable (Dkt. No. 469).

Having considered the submissions from both sides, Google’s request is GRANTED IN PART AND DENIED IN PART. Google’s Daubert motion directed at the revised damages study will count as one of its motions in limine. The motion, however, need not be resolved at the final pretrial conference on October 17. Supplemental briefing on the motion will be allowed as follows. On OCTOBER 20, 2011, Google may file a supplemental brief based on Dr. Cockburn’s reply report and deposition. On OCTOBER 27, 2011, Oracle may file a responsive supplemental brief. Each supplemental brief is limited to twenty pages, with no more than two hundred pages of supporting materials.

IT IS SO ORDERED.

Dated: September 27, 2011.

/s/William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE



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