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Oracle v. Google - Pre-Trial Filings - Part I
Monday, October 10 2011 @ 06:00 PM EDT

Last Friday Oracle and Google began making their pre-trial filings. There was a lot of material filed, and we are not going to try to cover it all in one sitting. Today we will cover Google's motions and the witness lists of both parties. Tomorrow we will move on to Oracle's motions.

First up for Google was its reply to Oracle's response [PDF] to Google's second motion to strike portions of the Mitchell Patent Report [text]. 489 [PDF; text]

Jump to Comments ] 

You will recall in our earlier article about the Oracle response we stated:

With respect to Google's Critique's D and E, Oracle makes a compelling argument that Prof. Mitchell is not introducing new infringement contentions but merely explaining the contentions already made. With respect to Critique's F and G, Oracle argues (a) that Google did not obtain proper permission to file a motion with respect to Prof. Mitchell's Reply Report (only the original report), and (b) even if permitted, the Google critiques are off target, again suggesting new infringement contentions where none exist.
Google now makes equally compelling arguments that, once again, Oracle is trying to misdirect the issue and that Prof. Mitchell is, in fact, introducing new infringement contentions. As Google states, it's not that Mitchell doesn't mention the various functions, but that he previously used them to make one point about infringement and now is trying to reintroduce them in a different context to add to the infringement contentions.

There isn't a great deal to be said about the witness lists [491; Exhibit A; and Exhibit B; also in text below] other than there are no surprises and the lists are lengthy. Again, we don't see how they can get through this trial in the allotted time with this many witnesses and the number of infringement contentions Oracle has advanced.

Finally, we have Google's motions in limine. Recall that 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. So these are Google's motions to exclude certain evidence or testimony.

The first motion is Google's further attempt to exclude the Lindholm email. 492 [PDF; text below] Google had made this motion previously, and Judge Alsup stated he would hear the motion but that it would have to count against Google's limit of five motions in limine. So now it is restated here.

The second motion seeks to exclude a report prepared by Oracle employees and relied upon by Oracle's experts that purports to show certain performance improvements in Android are as the result of the alleged infringement. 493 [PDF; text below] The only problem is that the tests run by the employees were inherently flawed and were not carried out in a scientific manner. Google seeks to exclude the use of the reports for all purposes.

The third motion once again seeks to exclude certain portions of the Cockburn Damages Report. 494 [PDF; text below] Google restates its argument that the approach taken by Cockburn is inherently flawed because of a number of assumptions he makes in several specific instances. This motion may be a bit of a long shot, but if Google is successful, it will put quite a hole in the Cockburn report and Cockburn's testimony at trial.

The fourth motion seeks to exclude the Goldberg Report that purports to show that the commercial success of Java was pinned to the asserted patents. 495 [PDF; text below] The Goldberg Report seeks to show that the asserted claims cannot be obvious because both Java and Android have shown commercial success. The only problem is, according to Google, that Goldberg never demonstrated that Java actually relies upon any of the technology in the asserted claims, and of course, Google contests the asserted infringement. The need to tie the patent claims to the successful technologies would seem to be pretty fundamental.

The fifth and last motion by Google seeks to exclude certain evidence obtained from Motorola Mobility. 496 [PDF; text below] Oracle has listed at least one witness from Motorola Mobility, Rafael Camargo. As we have seen from Oracle in other instances, they seek to bolster (and extend) their infringement contentions with information obtained after the infringement contentions were already set in stone. For that reason, Google believes any information obtained from Motorola Mobility, all of which was obtained after the infringement contentions were final, should be excluded at trial.

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

Docket

489 – Filed and Effective: 10/06/2011
ORDER
Document Text: REPLY (re 473 Second MOTION to Strike Portions of the Mitchell Patent Report) filed by Google Inc.. (Attachments: # 1 Declaration Banner Decl, # 2 Exhibit F)(Francis, Mark) (Filed on 10/6/2011) (Entered: 10/06/2011)

490 – Filed and Effective: 10/07/2011
ORDER
Document Text: CLERKS NOTICE Rescheduling Hearing Time. Motions set for 10/13/2011 2:00 PM. (dt, COURT STAFF) (Filed on 10/7/2011) (Entered: 10/07/2011)

491 - Filed and Effective: 10/07/2011
Witness List
Document Text: Witness List by Oracle America, Inc.. (Attachments: # 1 Appendix A (Oracle's Witness List), # 2 Appendix B (Google's Witness List))(Muino, Daniel) (Filed on 10/7/2011) (Entered: 10/07/2011)

492 - Filed and Effective: 10/07/2011
MOTION
Document Text: MOTION in Limine No. 1 filed by Google Inc.. Responses due by 10/21/2011. Replies due by 10/28/2011. (Attachments: # 1 Oracle Opposition)(Kamber, Matthias) (Filed on 10/7/2011) (Entered: 10/07/2011)

493 - Filed and Effective: 10/07/2011
MOTION
Document Text: MOTION in Limine NO. 2 filed by Google Inc. Responses due by 10/21/2011. Replies due by 10/28/2011. (Attachments: # 1 Oracle Opposition)(Kamber, Matthias) (Filed on 10/7/2011) (Entered: 10/07/2011)

494 - Filed and Effective: 10/07/2011
MOTION
Document Text: MOTION in Limine No. 3 filed by Google Inc. Responses due by 10/21/2011. Replies due by 10/28/2011. (Attachments: # 1 Oracle Opposition)(Kamber, Matthias) (Filed on 10/7/2011) (Entered: 10/07/2011)

495 - Filed and Effective: 10/07/2011
MOTION
MOTION in Limine No. 4 filed by Google Inc.. Responses due by 10/21/2011. Replies due by 10/28/2011. (Attachments: # 1 Oracle Opposition)(Kamber, Matthias) (Filed on 10/7/2011) (Entered: 10/07/2011)

496 - Filed and Effective: 10/07/2011
MOTION
Document Text: MOTION in Limine No. 5 filed by Google Inc. Responses due by 10/21/2011. Replies due by 10/28/2011. (Attachments: # 1 Oracle Opposition)(Kamber, Matthias) (Filed on 10/7/2011) (Entered: 10/07/2011)

497 - Filed and Effective: 10/07/2011
Declaration
Document Text: Declaration of DANIEL PURCELL in Support of 496 MOTION in Limine No. 5, 494 MOTION in Limine No. 3, 492 MOTION in Limine No. 1, 493 MOTION in Limine NO. 2, 495 MOTION in Limine No. 4 filed by Google Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12, # 13 Exhibit 13, # 14 Exhibit 14, # 15 Exhibit 15, # 16 Exhibit 16, # 17 Exhibit 17, # 18 Exhibit 18, # 19 Exhibit 19, # 20 Exhibit 20, # 21 Exhibit 21, # 22 Exhibit 22, # 23 Exhibit 23, # 24 Exhibit 24, # 25 Exhibit 25, # 26 Exhibit 26, # 27 Exhibit 27, # 28 Exhibit 28, # 29 Exhibit 29, # 30 Exhibit 30, # 31 Exhibit 31, # 32 Exhibit 32, # 33 Exhibit 33, # 34 Exhibit 34, # 35 Exhibit 35, # 36 Exhibit 36, # 37 Exhibit 37, # 38 Exhibit 38, # 39 Exhibit 39, # 40 Exhibit 40)(Related document(s) 496 , 494 , 492 , 493 , 495 ) (Kamber, Matthias) (Filed on 10/7/2011) (Entered: 10/07/2011)


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

Documents

489

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

Honorable Judge William Alsup

Hearing Date: October 13, 2011
Hearing Time: 8:00 a.m.

DEFENDANT GOOGLE INC.’S REPLY
IN SUPPORT OF THE SECOND
MOTION TO STRIKE PORTIONS OF
THE MITCHELL PATENT REPORT

Google submits this Reply in support of its Second Motion to Strike Portions of the Mitchell Patent Report (“Motion,” Dkt. No. 473). Oracle’s opposition brief (“Opp. Br.,” Dkt. No. 482) does not provide any basis to deny the Motion and largely sidesteps the issues raised in Google’s Motion, as explained below.

Critique D: Oracle’s response to the Motion’s critique regarding the ‘720 patent is that “[t]he ICs gave Google sufficient notice of Oracle’s do_fork() infringement theory” (Opp. Br. at 3), a theory Google has not challenged in the present motion. Rather, Google moves to strike Dr. Mitchell’s reliance upon the vfork() and clone() mechanisms, and Oracle’s brief fails to identify even a single instance where its ICs refer to execution of vfork() or clone(). It is irrelevant that all three mechanisms eventually call do_fork() (id. at 1-2) because Dr. Mitchell identifies do_fork() and clone() for different claim elements. (Compare Ex. A to Motion at ¶ 624 (“process.c provides a sys_clone() system call, invoked by a clone() system call, that can provide the ‘process cloning mechanism’”) with id. at ¶ 627 (“fork.c provides the fork code do_fork() to perform the process cloning ‘to instantiate the child runtime system process…’”).)

Further, Dr. Mitchell explained that fork(), vfork(), and clone() system calls provide three different process cloning mechanisms (Ex. A to Motion at ¶ 606), so Oracle cannot claim that vfork() and clone() provide additional detail about fork(). These three mechanisms offer different functionality, as openly recognized in the Mitchell Report. (Motion at 1; Ex. A to Motion at ¶ 606.) Oracle’s ICs presented an infringement theory relating to the execution “chain” of fork() followed by do_fork(), with no mention of vfork() and clone(). Indeed, fork(), vfork() and clone() are mutually exclusive. When vfork() or clone() are executed, fork() is not executed. Thus, the new theories on vfork() and clone() in Dr. Mitchell’s Report are inconsistent with the fork() theory in the ICs. Oracle’s ICs provided no notice that its infringement theory involved vfork() or clone() functions, and Dr. Mitchell should not be able to refer to them at trial.

Critique E: Similarly, Oracle’s arguments regarding mBS Mobile skirt the real issue. Oracle does not identify mBS Mobile as a basis of Google’s direct infringement, but rather argues that it is “evidence establish[ing] that the infringing code that Google made was used” (Opp. Br. at 3), i.e., indirect infringement. Patent Local Rule 3-1(d) requires that indirect infringement

1

contentions include, “an identification of any direct infringement.” So Oracle’s indirect infringement theory regarding mBS Mobile (or any other particular application) should have been disclosed in the ICs if it intended to identify them as “evidence establish[ing] that the infringing code that Google made was used.” (Opp. Br. at 3.) Oracle should not have waited until the Mitchell Report to introduce this new theory. In its opposition, Oracle tries to dismiss its reliance on mBS Mobile as just a “benefit of infringement” or an “evidentiary item of proof.” (Id. at 3-4.) But that is no excuse because Oracle does not dispute that the Mitchell Report – for the first time – refers to the use of mBS Mobile as an act of infringement; likewise, Oracle’s brief does not deny that it intends to rely on mBS Mobile as an instance where “the infringing code that Google made was used.” (Id. at 3.) This theory should have been disclosed pursuant to Patent L.R. 3-1(d) and should therefore be stricken.

Critique F: With respect to the new theory for the ‘476 patent in the Mitchell Reply Report,1 Oracle’s argument boils down to its claim that – despite the ICs theory of infringement using Security Manager – “there is nothing in the infringement theory in Oracle’s ICs that requires Android’s SecurityManager class for Android to infringe.” (Id. at 4.) To the contrary, Oracle’s ICs identified the execution of SecurityManager as an integral part of its theory, and in fact, the entire theory hinges on a chain of events triggered by executing SecurityManager because it contains instructions that lead to the execution of the other code cited in the ICs as meeting numerous claim elements. (Ex. D to Motion at 5, 20-21). Google informed Oracle early in discovery that SecurityManager was not executed by Android, but Oracle waited until the Reply Report to change its infringement theory and argue that execution of SecurityManager is not needed. (There is no evidence to support Dr. Mitchell’s new theory, but the merits of his theory are a separate issue.) This new theory is simply a desperate effort to circumvent Google’s dispositive non-infringement position, and should be stricken from the Reply report.

2

Critique G: Oracle’s arguments regarding the ‘520 patent obscure the simple underlying issue; namely, whether its infringement theory is that Android initializes static arrays by creating a single Dalvik bytecode instruction (particularly “fill-array-data”), or by creating multiple bytecode instructions. Oracle’s ICs included only a theory of a single instruction. (See Ex. E to Motion at 29 (“The action we take here is to convert these initialization bytecodes into a single fill-array-data ROP”); id. at 30 (“The Dalvik virtual machine interprets the instruction to perform the static initialization of the array” (emphasis added)).) In an abundance of caution, Google’s interrogatory response on non-infringement included an argument that there was no infringement if multiple instructions were accused because it would be outside the asserted claims’ scope. (See Ex. B to Opp. Br.) Dr. Mitchell was well aware of this issue and took great care in his opening report to clarify that a single instruction was accused. (See, e.g., Ex. A to Motion at ¶ 525 (“The dx tool stores an instruction requesting the static initialization of the array”); id. at ¶ 541 (“the lengthy bytecode instructions are replaced by a single fill-array-data Dalvik instruction”) (emphasis added).) Likewise, Oracle’s counsel and validity expert (Dr. Goldberg) met with a USPTO Examiner in the pending ‘520 patent reexamination and argued that “an instruction” is limited to a single instruction that performs the static array initialization. (See Ex. F, Interview Summary at 2.)2 Accordingly, Oracle has disavowed the possibility of using multiple instructions to perform the patent claims’ static array initialization. See Marine Polymer Techs., Inc. v. Hemcon, Inc., No. 2010–1548, –– F.3d ––, 2011 WL 4435986, at *5 (Fed. Cir. Sept. 26, 2011) (holding that an unambiguous argument for narrower scope in a reexamination acts as an immediate disavowal of scope applicable to co-pending litigation). Nevertheless, in response to non-infringement arguments in Google’s expert report, Oracle now changes its position in the Reply Report, arguing that the ‘520 claims can be infringed by using multiple instructions, not just a single instruction (fill-array-data) as in the ICs. Oracle’s new and inconsistent theory regarding multiple instructions should be stricken from the Reply report.

3

DATED: October 6, 2011

KEKER & VAN NEST, LLP

By: /s/ Scott T. Weingaertner /s/

ROBERT A. VAN NEST (SBN 84065)
[email]
CHRISTA M. ANDERSON (SBN 184325)
[email]
KEKER & VAN NEST LLP
633 Battery Street [address telephone fax]

SCOTT T. WEINGAERTNER (Pro Hac Vice)
[email]
ROBERT F. PERRY
[email]
BRUCE W. BABER (Pro Hac Vice)
[email]
KING & SPALDING LLP
[address telephone fax]

DONALD F. ZIMMER, JR. (SBN 112279)
[email]
CHERYL A. SABNIS (SBN 224323)
[email]
KING & SPALDING LLP [address telephone fax]

IAN C. BALLON (SBN 141819)
[email]
HEATHER MEEKER (SBN 172148)
[email]
GREENBERG TRAURIG, LLP
[address telephone fax]

ATTORNEYS FOR DEFENDANT
GOOGLE INC.

______________________

1 Google acknowledges that its original Précis letter (Dkt. No. 377) did not specifically request leave to file a motion regarding Dr. Mitchell’s Reply Report (it had not yet been served), but the issues in the Reply Report are the same – new theories not disclosed in the ICs. Oracle has had an opportunity to oppose Google’s critiques of the Reply Report, and Google respectfully requests that the Court consider its critiques of both Mitchell reports. However, at the Court’s direction, Google can submit a separate Précis or Motion regarding the Reply Report.

2 Oracle’s argument referred to a claim which is not asserted, but the term (“an instruction”) should have the same meaning across all claims. See Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1328 (Fed. Cir. 2006) (“Under this court’s case law, the same terms appearing in different claims in the same patent … should have the same meaning unless … the specification and prosecution history [indicate otherwise]”).

4

I hereby attest that Scott T. Weingaertner concurs in the e-filing of this document.

Dated: October 6, 2011

/s/ Mark H. Francis /s/
Mark H. Francis

5


490

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

CLERK’S NOTICE
RESCHEDULING
HEARING TIME

_________________________

(Plaintiff shall serve a copy of this notice on any party in the above-entitled action not appearing on the Notice of Electronic Filing or Other Case Activity and/or the attached Certificate of Service.)

YOU ARE NOTIFIED THAT the hearing on the motions previously set for October 13, 2011 at 8:00 a.m. has been rescheduled for October 13, 2011 at 2:00 p.m. before the Honorable William Alsup. Please report to Courtroom 8, on the 19th Floor, United States Courthouse, 450 Golden Gate Avenue, San Francisco, CA 94102.

Because the Court will be in trial, parties should be aware that time for oral argument on this matter will be very limited. Please plan accordingly.

Dated: October 7, 2011

FOR THE COURT,
Richard W. Wieking, Clerk

By: /s/Dawn Toland
Dawn Toland
Courtroom Deputy to the
Honorable William Alsup


491

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

_____________________

ORACLE AMERICA, INC.,

Plaintiff,

v.

GOOGLE INC.,

Defendant.

_______________________

No. C 10-03561 WHA

PLAINTIFF’S AND DEFENDANT’S
FEDERAL RULE OF CIVIL
PROCEDURE 26(a)(3)
DISCLOSURES


APPENDIX A

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

____________________

ORACLE AMERICA, INC.,

Plaintiff,

v.

GOOGLE INC.,

Defendant.

____________________

No. C 10-03561 WHA

PLAINTIFF ORACLE’S FED. R.,br> CIV. P. 26(a)(3) WITNESS LIST

Plaintiff Oracle America, Inc. (“Oracle”) hereby submits its witness list for both the liability and damages phases of the trial, pursuant to Fed. R. Civ. P. 26(a)(3) and the Court’s Guidelines for Trial and Final Pretrial Conference in Civil Jury Cases.

Oracle identifies the name, contact information, and substance of the testimony of each witness it expects to present or may present at trial, other than solely for impeachment. Pursuant to the Court’s Guidelines, non-cumulative testimony is identified below in italics.

I. LIVE WITNESSES

Oracle expects to present live testimony from the following witnesses:

1

2

3

4

5

6

Oracle may present live testimony from the following witnesses:

7

8

9

10

Oracle reserves the right to call any witness identified by Google. The above descriptions are not intended to cover every possible topic or sub-topic on which these witnesses may testify and are made without prejudice to Oracle eliciting other testimony, including without limitation testimony regarding matters addressed during the deposition of a given witness.

II. DEPOSITION TESTIMONY

Oracle reserves the right to present the deposition testimony of Google’s corporate officers (Larry Page, Eric Schmidt, and Andy Rubin) and 30(b)(6) designees (Andy Rubin, Daniel Bornstein, and Patrick Brady) in addition to or in lieu of their live testimony. Oracle also reserves the right to present the deposition testimony of any witnesses listed above who are unavailable to testify at trial.

Oracle may present testimony from the following additional witnesses by deposition:

Oracle reserves the right to designate testimony from any witness identified by Google. The above descriptions are not intended to cover every possible topic or sub-topic on which

11

Oracle may offer deposition excerpts and are made without prejudice to Oracle offering other testimony.

Dated: October 7, 2011

MICHAEL A. JACOBS
MARC DAVID PETERS
DANIEL P. MUINO
MORRISON & FOERSTER LLP

By: /s/ Daniel P. Muino
DANIEL P. MUINO

Attorneys for Plaintiff
ORACLE AMERICA, INC.

11


APPENDIX B

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

_____________________

ORACLE AMERICA, INC.,

Plaintiff,

v.

GOOGLE INC.,

Defendant.

______________________

No. C 10-03561 WHA

GOOGLE’S TRIAL WITNESS
DISCLOSURE PURSUANT TO FED. R.
CIV. P. 26(A)(3)

Judge: Hon. William Alsup

Date Comp. Filed: October 27, 2010

Trial Date: October 31, 2011

Pursuant to Fed. R. Civ. P. 26(a)(3) and the Court’s Guidelines for Trial and Final Pretrial Conference in Civil Jury Cases, Google discloses the following witnesses for the trial of this matter. As required by the Guidelines, Google has identified non-cumulative testimony in the summaries below by italicizing that testimony.

1. Google presently intends to call the following witnesses at the trial of this matter, subject to Google’s right to modify this list according to developments in the case and rulings of the Court. Contact information has already been provided in this matter.

1

2

3

2. Google may also call the following witnesses, contact information for whom has already been provided:

4

5

6

7

8

In addition to the witnesses identified above, Google may call witnesses for rebuttal and may call witnesses identified on Oracle’s witness list. Google will counter-designate testimony of various witnesses designated by Oracle pursuant to Judge Alsup’s Guidelines for Trial and Final Pretrial Conference in Civil Jury Cases. Should Oracle introduce any deposition testimony it has designated for witnesses not at trial, Google will, in rebuttal, introduce the testimony they have counter-designated.

Dated: October 7, 2011

Respectfully submitted,

KEKER & VAN NEST LLP

By: /s/ Robert A. Van Nest
ROBERT A. VAN NEST
Attorneys for Defendant
GOOGLE INC.

9


492

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

_______________________

ORACLE AMERICA, INC.,

Plaintiff,

v.

GOOGLE INC.,

Defendant.

______________________

No. C 10-03561 WHA

GOOGLE’S MOTION IN LIMINE NO. 1
TO EXCLUDE LINDHOLM EMAIL AND
DRAFTS THEREOF

Judge: Hon. William Alsup

Date Comp. Filed: October 27, 2010

Trial Date: October 31, 2011

MOTION AND RELIEF REQUESTED

Under Federal Rule of Evidence 403, defendant Google, Inc. (“Google”) hereby moves the Court for an order excluding in limine from all phases of this trial the August 6, 2010 Lindholm email and drafts,*1 which are the subject of Google’s pending Rule 72 motion to the Court and which were submitted to the Court in camera in connection with that motion.

Google files this motion conditionally and asks the Court to rule on it only if, by the time the Court takes up the parties’ motions in limine, no court has yet accepted Google’s contention that the documents in question are protected by the attorney-client privilege and/or the attorney work-product doctrine. In making this motion, Google does not waive (and hereby expressly reasserts) its contention that the Lindholm email and drafts are protected by the attorney-client privilege and by the attorney work-product doctrine.

DISCUSSION

Under Rule 403, the probative value (if any) of the Lindholm email and drafts “is substantially outweighed by the danger of unfair prejudice, confusion of the issues, or misleading the jury” because the email creates the false impression that Mr. Lindholm analyzed whether the Android platform infringed the patents and/or copyrights asserted by Oracle and concluded that it did.

The accompanying declaration by Mr. Lindholm establishes that this was not the case. To the contrary, Mr. Lindholm declares under oath that, when he wrote the August 6, 2010

1

email, all of the following was true:

  • He had never reviewed the patents asserted by Oracle in this lawsuit. Moreover, he had no knowledge about what copyrights Oracle ultimately would claim were infringed by Android, and had never reviewed any of the copyright registrations asserted by Oracle in this lawsuit.*2
  • He had not reviewed any of the source code or implementation for the aspects of the Android platform accused by Oracle in this lawsuit.*3
  • He did not have the legal training necessary to analyze whether the Android platform infringes any of the patents or copyrights asserted by Oracle in this lawsuit.*4
  • He did not, in fact, undertake to analyze whether the Android platform infringes any of the patents or copyrights asserted by Oracle in this lawsuit.*5
  • Accordingly, he had no opinion as to whether the Android platform infringes any of the patents or copyrights asserted by Oracle in this lawsuit.*6
Mr. Lindholm further declares that his August 6, 2010 email concerned alternatives to technology that Oracle had recently accused Google of infringing. Again, he conducted no analysis of, and had no opinion about, whether the Android platform actually infringes any of the patents or copyrights asserted by Oracle in this lawsuit.*7 Accordingly, the Lindholm email and drafts possess zero probative value in determining infringement—the central issue (along with invalidity) of the first phase of the trial.

2

The Lindholm email and drafts likewise possess little (if any) probative value in determining willfulness. Mr. Lindholm sent the email less than three weeks after Oracle identified—for the first time—the specific patents it alleges are infringed by Android, and less than one week before Oracle filed this lawsuit. The Lindholm email is therefore completely irrelevant to Oracle’s allegation that Google willfully infringed Oracle’s intellectually property rights before August 2010, and only marginally relevant (at best) to Oracle’s allegation that Google willfully infringed at any point before Oracle filed this lawsuit.

On the other side of the Rule 403 scales, admitting the Lindholm email and/or drafts poses an enormous “danger of unfair prejudice, confusion of the issues, or misleading the jury.” The Court itself, when it first viewed one of the draft emails—out of context and without any explanation of its marginal significance—initially appears to have believed that the draft could be case-dispositive or at least highly damaging to Google. If the Court thought that, imagine what a lay jury would conclude.

Moreover, it will not be possible at trial for Mr. Lindholm to reduce the prejudice of admission by testifying about the document’s limited significance. Going beyond what he states in the accompanying declaration would risk waiving the attorney-client privilege and workproduct protection attaching to Google’s internal legal investigation of Oracle’s claims. There is no dispute that such an investigation occurred. Google has submitted to this Court and to Magistrate Ryu declarations about the investigation, and Magistrate Ryu did not dispute the credibility of those declarations. Rather, Magistrate Ryu found that Google had not established a sufficient link between that investigation and the Lindholm email and drafts. No one ever has held, or should hold, that the compelled disclosure of the Lindholm email and drafts effectuated a waiver of privilege as to the entire internal Google legal investigation of Oracle’s claims. But that could be the result of requiring Mr. Lindholm to offer a full explanation of his email at trial; and anything short of a full explanation is likely to strike a lay jury as evasive.

Thus, admitting the Lindholm email and drafts at trial would constitute an abuse of the discretion conferred by Rule 403 because the documents possess little or no probative value but pose an enormous danger of prejudice and confusion. “Where the evidence is of very slight (if

3

any) probative value, it’s an abuse of discretion to admit it if there’s even a modest likelihood of unfair prejudice or a small risk of misleading the jury.” United States v. Gonzalez-Flores, 418 F.3d 1093, 1098 (9th Cir. 2005) (emphasis added) (citation omitted). Or, to put it another way: “[E]vidence presenting even a ‘modest likelihood of unfair prejudice’ is ‘high enough to outweigh the . . . probative value’ of marginally relevant evidence.” United States v. Espinoza- Baza, 647 F.3d 1182, 1190 (9th Cir. 2011) (citation omitted).

Accordingly, the Court should exclude the August 6, 2010 Lindholm email and drafts in limine from all phases of the trial.

Dated: September 24, 2011

Respectfully submitted,

KEKER & VAN NEST LLP

By: s/ Robert A. Van Nest
ROBERT A. VAN NEST
Attorneys for Defendant
GOOGLE INC.

________________________

*1 “The Lindholm email and drafts” refers to

(a) the Lindholm final emails (including, without limitation, the documents listed on Google’s privilege log as items 2551 and 5513);

(b) the Lindholm draft emails (including, without limitation, the documents production-stamped GOOGLE-12-00039558, GOOGLE-12-00039559, GOOGLE-12-00039560, GOOGLE-12- 00039561, GOOGLE-12-00039562, GOOGLE-12-00039563, GOOGLE-12-00039564, GOOGLE-12-00039565, and the document listed on Google’s privilege log as item 5512); and

(c) the Lindholm draft and final emails that Google produced on August 26, 2011 under compulsion of Magistrate Judge Ryu’s order granting Oracle’s motion to compel and with a full reservation of rights (including, without limitation, the documents production-stamped GOOGLE-12-100000001, GOOGLE-12-100000002, GOOGLE-12-100000003, GOOGLE-12- 100000004, GOOGLE-12-100000005, GOOGLE-12-100000006, GOOGLE-12-100000007, GOOGLE-12-100000008, GOOGLE-12-100000009, GOOGLE-12-100000010, GOOGLE-12- 100000011).

*2 Declaration of Tim Lindholm in Support of Google’s Motion in Limine #1 to Exclude Mr. Lindholm’s Email and Drafts Thereof (“Lindholm MIL Decl.”), attached as Ex. 1 to the Declaration of Daniel Purcell in Support of Google Inc.’s Motions in Limine (“Purcell Decl.”) filed herewith, ¶ 4.a.

*3 Purcell Decl. Ex. 1 (Lindholm MIL Decl.), ¶ 4.b.

*4 Purcell Decl. Ex. 1 (Lindholm MIL Decl.), ¶ 4.c.

*5 Purcell Decl. Ex. 1 (Lindholm MIL Decl.), ¶ 4.d.

*6 Purcell Decl. Ex. 1 (Lindholm MIL Decl.), ¶ 4.e.

*7 Purcell Decl. Ex. 1 (Lindholm MIL Decl.), ¶ 5.

4


493

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

____________________

ORACLE AMERICA, INC.,

Plaintiff,

v.

GOOGLE INC.,

Defendant.

____________________

No. C 10-03561 WHA

GOOGLE’S MOTION IN LIMINE NO. 2
TO EXCLUDE ALLEGED
PERFORMANCE BENEFITS OF
ANDROID WITH THE ACCUSED
FUNCTIONALITY

Judge: Hon. William Alsup

Date Comp. Filed: October 27, 2010

Trial Date: October 31, 2011

MOTION AND RELIEF REQUESTED

Under Federal Rules of Evidence 401, 402, 403 and 702, defendant Google Inc. (“Google”) hereby moves the Court for an order excluding in limine all evidence and argument concerning the alleged performance benefits of Android with the accused functionality.

DISCUSSION

Oracle submitted four short reports by its own employees, Robert Vandette, Noel Poore, Erez Landau and Seeon Birger (“the performance reports”), that collectively purport to quantify the performance of Android with and without the alleged inventions claimed in five of Oracle’s asserted patents. Based on these reports, Oracle experts Dr. Mitchell (on patent infringement), Dr. Goldberg (on patent validity) and Dr. Cockburn (on damages) conclude that alleged infringement of the asserted patents results in performance gains on Android devices, and by extension, is the basis for consumer demand and Android’s success.

First, the Oracle employees who submitted the performance reports conceded that they knew little about the Oracle patents, the asserted claims or the accused functionality. Moreover, the employees lack any semblance of objectivity and failed to comply with the basic tenets of Daubert and Rule 702. Second, the opinions are irrelevant to any issue of consequence in the trial’s initial liability phase—and thus are inadmissible under Rule 402 except in the damages phase, at most. Third, the opinions should be excluded under Rule 403 even for the damages phase of trial because the limited probative value of the performance reports is substantially outweighed by the danger of misleading the jury into thinking that actual Android devices running actual Android applications would experience a similar performance impact.

1. The Performance Reports Fail to Comply with Daubert and Rule 702

The performance reports attempt to demonstrate the benefits of implementing five of the asserted patents in the Android operating system. (The ‘447 and ‘476 patents are not addressed in the reports). To accomplish this, Oracle ran various “performance benchmark” tests against unmodified Android code to generate various performance statistics (e.g., how fast applications are executed or how much storage space they require in memory). Oracle then modified the Android code to try disabling the accused functionality, and re-ran the same tests in order to

1

compare the two sets of results and point to any drop in performance as indicative of the benefits provided by the patented techniques. The idea may seem simple in theory, but it is a complicated task in practice, and Oracle’s employees took countless shortcuts, disregarded approved methodologies, and ran particular tests that were assured (and evidently designed) to reach the conclusions sought by Oracle. Most critically, they made subpar modifications to the Android code that were crude, hasty and in many instances crippled substantial non-accused functionalities as well. The performance reports are so fraught with errors, assumptions and an overall lack of detail that, had the reports been submitted for peer review to any reputable technical journal or academic institution, they would be immediately rejected. See Ellis v. Costco Wholesale Corp., No. 07-15838, 2011 U.S. App. LEXIS 19060 at *25-26 (9th Cir. Sept. 16, 2011) (“Under Daubert, the trial court must act as a ‘gatekeeper’ to exclude junk science that does not meet Federal Rule of Evidence 702’s reliability standards by making a preliminary determination that the expert’s testimony is reliable.” (citing Kumho Tire Co. v. Carmichael, 526 U.S. 137, 145 (1999).)

The essential prerequisite to any expert testimony is that it rest “on a reliable foundation.” Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 584-587 (1993). As codified in Rule 702:

If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case.
A. It is Unclear What Was Done, Why, and By Whom

Dr. Mitchell has no firsthand knowledge about any code modifications, test conditions, or the actual tests. He participated in some phone calls, after which he believed the employees used “modifications that [he] suggested” and that “the actual experiments that were carried out reflected [his] suggestions and requests on how to do it.” Mitchell Dep. Tr. (attached as Ex. 2 to the Declaration of Daniel Purcell in Support of Google Inc.’s Motions in Limine (“Purcell Decl.”) filed herewith) at 81:16 – 82:6; see also Purcell Decl. Ex. 3 (Mitchell Patent Report) at ¶

2

196. Yet, the Oracle engineers attribute everything they did to Dr. Mitchell. Robert Vandette submitted a report on the ‘104 and ‘205 patents and admitted that he “relied on Dr. Mitchell to interpret [the patent].” Purcell Decl. Ex. 4 (Vandette Dep. Tr.) at 74:16-17. When asked if he had the “knowledge necessary to determine what functionality should be disabled,” he responded that he was “not a patent attorney” and did not “know exactly which claim in the [‘104] patent corresponds to [the] functionality” he disabled. Id. at 76:23-24; 77:24-78:1. Likewise, Noel Poore submitted a report regarding the ‘520 and ‘702 patents and testified that he “looked through the patent[s]” but had no idea which claims were asserted, and was “not necessarily familiar enough with the detail of th[e] patent[s]” to know how they related to the accused functionality. Purcell Decl. Ex. 5 (Poore Dep. Tr.) at 33-35; 74-75. Erez Landau revealed that he reviewed only the Abstract of the ‘720 patent and “part of the claims.” Purcell Decl. Ex. 6 (Landau Dep. Tr.) at 21-22.

In addition, Vandette, Poore and Landau all indicate in their August 9, 2011 reports that they downloaded the Android code, modified it, compiled it and tested it. Purcell Decl. Ex. 7 (Vandette report) at ¶ 27-39; Purcell Decl. Ex. 8 (Poore report) at ¶ 12-14; Purcell Decl. Ex. 9 (Landau report) at ¶ 25-31. Now, in a report Oracle submitted on September 12, 2011 (after the close of expert discovery), a fourth employee named Seeon Birger claims that he was the one who downloaded the Android code, modified it, compiled it, and provided it to the other Oracle employees. See Purcell Decl. Ex. 10 (Birger report) at ¶ 11-21. Landau admitted as much during his deposition (see Purcell Decl. Ex. 6 (Landau Dep. Tr.) at 58-63), while Vandette and Poore appear to have concealed the fact that someone else performed the work disclosed in their reports. See, e.g., Purcell Decl. Ex. 5, (Poore Dep. Tr.) at 25:9-11 (“Q. So you did all the work in this report by yourself, correct? A. That’s correct”). In short, Oracle failed to provide the foundational report underlying the other performance reports until weeks later, without explanation, and prejudicing Google’s discovery into the benchmarking analyses. Even more appalling, Oracle refuses to present Mr. Birger for deposition. See Purcell Decl. Ex. 11 (September 21, 2011 email from M. Francis to M. Peters.) For these reasons, all of the benchmarking analyses are legitimately in question and should be excluded for Oracle’s failure

3

to comply with its expert-discovery obligations.

B. Oracle Made Improper Modifications to the Android Code

Oracle’s modifications of Android code improperly disabled or corrupted functionality in Android that is not accused of infringement. For example, Vandette disabled the JIT compiler for his ‘104 patent tests, even though the JIT compiler was never accused in connection with that patent. Purcell Decl. Ex. 4 (Vandette Dep. Tr.) at 84:18-25. With respect to the ‘205 patent, which is asserted against a single feature of the JIT compiler, Vandette again disabled the whole JIT compiler, even though the ‘205 patent itself recognizes the existence of JIT compilers in the prior art. For tests relating to the ‘702 patent, Poore modified Android code so existing duplicates would remain in the Android “.dex” files—but his report openly admits that the modified code created new duplicates that did not previously exist. Purcell Decl. Ex. 8 (Poore Report) at ¶ 23. Landau admitted that when disabling the copy-on-write functionality allegedly claimed by the ‘720 patent, his test program loaded 1,264 files into memory, but readily agreed that “if copy-on-write is disabled, it would just be a waste of memory to load these [files] …” and it would make no sense to have Android run that way. Purcell Decl. Ex. 6 (Landau Dep. Tr.) at 86:1-87:24. As a whole, the performance reports fail to account for changes beyond the accused functionality responsible for differences in performance between the original and modified code. See Claar v. Burlington N.R.R., 29 F.3d 499 (9th Cir. 1994) (testimony excluded where the expert failed to consider other obvious causes for the plaintiff’s condition). Oracle’s experts offer no recognized methodology guiding their modifications of the Android source code. Under Daubert, the Court needs to exclude expert testimony unless the “methodology underlying the testimony is scientifically valid.” 509 U.S. at 592-93.

C. Oracle’s Reports Draw Conclusions Not Supported by Its Tests Even assuming that Oracle’s performance reports quantify the difference in running Android code with and without the accused functionality, Oracle uses the test results to make unfounded conclusions that those results are indicative of the patents’ impact on the real-world performance of Android, as follows:

  • Vandette and Poore did not test the performance of any actual Android applications;

4

  • Vandette and Poore did not test the performance of any actual Android devices;
  • Landau tested 17 Android applications at one time on the Nexus One device released nearly two years ago, and—as mentioned above—he modified the code to operate in a manner that would never be implemented by Google and made no practical sense. See Purcell Decl. Ex. 12 (Landau Dep. Ex. 494) (Android’s website specifically states that the Nexus One should not be used for testing);
  • None of the employees attempted to implement reasonable non-infringing substitutes—they simply crippled the code in a manner that would never actually be implemented;
  • None of the tests measure overall system performance on an Android device and they fail to recognize that the Dalvik VM is used only 1/3 of the time by Android—the other 2/3 of time Android is executing native machine code. See Purcell Decl. Ex. 13 (Vandette Dep. Ex. 462, May 2010 Google IO presentation) at slide 5;
  • Oracle’s employees downloaded and tested a development version of Android’s “Froyo” source code and not any particular code release that has been used by actual devices;
  • There is nothing in the employee reports that indicates whether they followed the specific instructions on Android’s website for downloading, compiling and installing Android on devices. (For example, Landau testified that Mr. Birger used version 6 of the JDK software to compile Android “Froyo” code, whereas the Android website specifically requires that version 5 of the JDK be used. See Purcell Decl. Ex. 6 (Landau Dep. Tr.) at 61:17-21; Purcell Decl. Ex. 14 (Landau Dep. Ex. 491)

Taking these factors into account, “there is simply too great an analytical gap between the data and the opinion proffered.” General Elec. Co. v. Joiner, 522 U.S. 136, 146 (1997). All of Oracle’s expert conclusions based on these reports amount to just “subjective belief or unsupported speculation” and should be excluded. Daubert, 509 U.S. at 588-90 (“[I]f an opinion is fundamentally unsupported, then it offers no expert assistance to the jury.”).

2. The Performance Reports Should Be Excluded From the Liability Phase of the Case under Rule 402

Evidence regarding the purported performance impact of the asserted patents is

5

potentially probative of only damages theories, and all damages issues have been bifurcated. Thus, the purported performance impact of the asserted patents has no bearing on alleged infringement or invalidity and has no relevance to the liability phase of the trial.

As stated in Google’s motion regarding “commercial success,” claims about the performance with and without the asserted patents pose at least a “modest likelihood” of unfair prejudice and a more than a “small risk” of misleading the jury because it tends to create an inflated sense of the patent’s importance to the success of Android. See United States v. Gonzalez-Flores, 418 F.3d 1093, 1098 (9th Cir. 2005) (applying Rule 403 and holding that “[w]here the evidence is of very slight (if any) probative value, it’s an abuse of discretion to admit it if there’s even a modest likelihood of unfair prejudice or a small risk of misleading the jury”) (citation omitted); see also United States v. Espinoza-Baza, 647 F.3d 1182, 1190 (9th Cir. 2011) (“evidence presenting even a ‘modest likelihood of unfair prejudice’ is ‘high enough to outweigh the . . . probative value’ of marginally relevant evidence” under Rule 403) (citation omitted).

3. The Performance Reports Should Be Excluded From the Damages Phase of the Case under Rule 403

As explained above, Oracle’s performance reports fail to analyze the performance impact of the accused infringing features on real-world Android devices and applications. Furthermore, the results are unreliable because they do not account for realistic non-infringing alternatives or the detrimental impact of Oracle’s sloppy code modifications to non-infringing Android functionality. In view of these limitations, Oracle’s reports offer little probative value, which value is substantially outweighed by its capacity to be used in prejudicial ways. For example, Oracle may contend that consumers’ Android products would suffer a noticeable performance impact without the accused functionality. But this premise is unsupported by the performance reports, which focus on micro-benchmarks of the virtual machine, not overall system performance. Even if Oracle presents testimony within the scope of the reports, it threatens to mislead the jury to conclude that actual Android performance will mimic Oracle’s test results, given all the flaws discussed above. Either way, the Court should exclude evidence regarding

6

the performance reports. See Rule 403 (“evidence may be excluded if its probative value is substantially outweighed by the danger of unfair prejudice, confusion of the issues, or misleading the jury…”); Daubert, 509 U.S. at 595 (“Expert evidence can be both powerful and quite misleading because of the difficulty in evaluating it.” (citation omitted)).

As a final note, in order to safeguard the effectiveness of its ruling and thus avoid the danger of prejudice, the Court also should bar counsel for both parties from making any remarks in opening argument about the alleged performance benefits of the asserted patents in Android.

Dated: September 24, 2011

Respectfully submitted,

KEKER & VAN NEST LLP

By: s/ Robert A. Van Nest
ROBERT A. VAN NEST
Attorneys for Defendant
GOOGLE INC.

7


494

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

_________________________

ORACLE AMERICA, INC.,

Plaintiff,

v.

GOOGLE INC.,

Defendant.

______________________

No. C 10-03561 WHA

GOOGLE’S MOTION IN LIMINE NO. 3
TO EXCLUDE PORTIONS OF
COCKBURN REPORT ON DAMAGES

Judge: Hon. William Alsup

Date Comp. Filed: October 27, 2010

Trial Date: October 31, 2011

MOTION AND RELIEF REQUESTED

Under Federal Rules of Evidence 401, 403 and 702, case law interpreting those rules, and this Court’s July 22, 2011 Order, Docket No. 230 (“Order”), defendant Google Inc. (“Google”) hereby moves the Court for an order excluding in limine certain aspects of the damages expert report of Dr. Iain Cockburn (“Cockburn Report”), submitted by Oracle America, Inc. (“Oracle”) in this case.

DISCUSSION

When it rejected Oracle’s damages expert Dr. Iain Cockburn’s first attempt at a damages report two months ago, this Court gave Oracle one more try, issuing clear guidelines governing the scope of any revised report. The Court expressly told Oracle that “[i]f the next and final report fails to measure up in any substantial and unseverable way … then it may be excluded altogether without leave to try again.” Order at 15. Cockburn’s second try, served on September 13, 2011, fails to follow the Court’s instructions and ignores governing law in numerous critical respects. The Court should strike the deficient aspects of Cockburn’s new report and preclude Oracle from offering expert testimony on those issues, as set forth below.

Critically, Cockburn has not backed off his bottom-line conclusion that Oracle is entitled to billions of dollars in damages, although he has significantly changed the logic underlying his damages number. [REDACTED] He was able to blackboard these huge numbers only by failing to analyze the value of the specific asserted claims of the Oracle patents at issue or the contribution of the allegedly infringing features to Google’s Android platform. Cockburn offered no analysis whatsoever regarding Oracle’s alleged copyright damages. Based on those and other failings, the Court ordered Cockburn back to the drawing board.

Cockburn’s revised report takes a different route, but ends up in almost exactly the same [REDACTED] post a huge patent-damages number rebuffed, Cockburn has loaded those same amounts onto

1

Oracle’s copyright claim. After offering no analysis of copyright damages in his first report, he now opines that Oracle is entitled to about $2.3 billion in copyright damages through 2012. [REDACTED] He doesn’t offer any calculation of damages Oracle will suffer after 2012, although he contends that future damages would be even larger than past damages.**1

Most fundamentally, Oracle’s and Cockburn’s pursuit of the largest conceivable damages number ignores Sun’s valuation of the intellectual property at issue around the time the alleged infringement began. [REDACTED]

2

[REDACTED] Cockburn ignores all this.

But for purposes of this Daubert motion, Cockburn’s revised report is not only incorrect and unreliable, it is excludable under the Federal Rules of Evidence and this Court’s Order. Cockburn commits factual and legal errors similar to those in his first report. With respect to the factual basis of Cockburn’s opinion, to be admissible, expert opinions must “sufficiently [tie the expert testimony on damages] to the facts of the case.” Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1315 (Fed. Cir. 2011) (citing Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 591 (1993)) (alteration in original). Here, Cockburn again fails to tie his opinions to the facts of the case. Cockburn also ignores the legal framework governing both patent and copyright damages, violating the requirement “that any and all scientific testimony or evidence admitted is not only relevant, but reliable.” Daubert, 509 U.S. at 589. Since governing law provides that damages must be calculated a certain way, and puts various categories of purported damages off limits, expert testimony that ignores those limitations is necessarily irrelevant to the jury’s damage analysis. See Imonex Servs., Inc. v. W.H. Munzprufer Dietmar Trenner GMbH, 408 F.3d 1374, 1380 (Fed. Cir. 2005) (barring expert from providing “testimony on the entire market value rule” that “bore no relation to that rule”). Cockburn also fails to do several things that the Court specifically directed him to do in its July 22, 2011 Order.

A. Cockburn’s opinion regarding the value of a lost copyright license with Google should be excluded, because it ignores the governing legal standard and has no factual basis.

First, this Court should exclude Cockburn’s opinion regarding the value of a fair-market copyright license between Sun and Google, because his opinion ignores the legal standard for calculating the value of such a license and has no basis in the record. [REDACTED] and then a further $102.6 million for 2012, id. at 23 & ¶ 59.

The law governing recovery of hypothetical copyright license damages is clear—to prove its entitlement to such damages, a party is “required to show that, but for infringement, the

3

parties would have agreed to license the use of the copyrighted works at issue.” Oracle USA, Inc. v. SAP AG, 2011 WL 3862074 at *7 (N.D. Cal. Sept. 1, 2011) (citing Polar Bear Prods., Inc. v. Timex Corp., 384 F.3d 700, 711 (9th Cir. 2004)). To make this showing, a plaintiff must offer objective and non-speculative evidence “of benchmark transactions, such as licenses previously negotiated for comparable use of the infringed work, and benchmark licenses for comparable uses of comparable works.” Id. (citing Jarvis v. K2 Inc., 486 F.3d 526, 533-35 (9th Cir. 2007) & Polar Bear, 384 F.3d at 709). When it is clear that the parties “would never have agreed to a license” as is proposed by the plaintiff’s damages expert, no hypothetical license damages can be awarded. Id. In other words, to recover hypothetical license damages here, Oracle must offer evidence that it actually would have offered Google the same license it now hypothesizes. Not only is there no evidence to support that conclusion here, all the evidence proves the contrary.

[REDACTED]

This is improper as a matter of law. In seeking a hypothetical copyright license, Oracle is limited to recovering what Sun actually would have received from Google in exchange for a license. Oracle cannot import Sun’s lost profits into a licensing calculation, because those were never the subject of any licensing discussion between Google and Sun. As this Court recently explained in reversing a massive (but baseless) copyright damages award for Oracle, the notion that a copyright plaintiff is entitled “to seek ‘hypothetical’ license damages … in the form of lost license fees … has no support in the law.” Oracle, 2011 WL 3862074 at *8. Put another way, a hypothetical license calculation must be based on Sun’s actual behavior in pre-suit licensing

4

negotiations, which presupposed a partnership with Google. But Cockburn’s upward adjustments are based on revenues Sun allegedly lost because the opposite happened—Sun could not partner with Google, because Google chose to compete with Sun instead. The Ninth Circuit has never affirmed a hypothetical license calculation in a case involving competitors (who do not commonly license each other), as opposed to partners. See id. at *8 & n.2. Needless to say, there is no evidence that Sun would actually have offered any sort of license to a competitor, and Cockburn cites none. In the real world, Sun never gave a license to Google for Android.

In addition to violating the law, Cockburn’s hypothetical copyright license has no factual support, or at least none that a reasonable expert would ever rely on. Cockburn’s upward adjustment of his $14.8 million baseline to $102.6 million relies entirely on a single internal Sun presentation roughly sketching a projection of the money Sun might earn from a partnership with Google. [REDACTED] The presentation contains a few slides with general ideas about how Sun might monetize Android, but the numbers in the presentation are pure speculation. There are no underlying financial data backing them up. Neither is there any particular reason to believe Sun thought the vague concepts in the presentation were viable. [REDACTED] Daubert makes clear that, to be admissible, expert testimony must “connote[ ] more than subjective belief or unsupported speculation.” Daubert, 509 U.S. at 590. At most, the presentation reflects Sun’s optimistic hope, without any grounding in experience or past practice, that it might be able to earn money by partnering with Google. But there is no actual evidence that Sun could have established a viable business to exploit Android. It never actually did so in the real world, despite its familiarity with the Java platform and its long-standing relationships with device manufacturers and mobile carriers. Because this presentation provides Cockburn’s entire factual foundation for his upward adjustment, that adjustment is unreliable and excludable under Daubert.

5

B. Cockburn’s upward adjustments to his patent-damages calculation improperly add lost profits to a purported reasonable royalty calculation, and also lacks any reasonable factual foundation.

Second, the Court should exclude Cockburn’s upward adjustments to his patent damages [REDACTED]

[REDACTED]

6

This is an express (and unlawful) attempt to recover lost profits damages under the guise of a reasonable royalty, without any attempt to satisfy the lost-profits standard of Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152 (6th Cir. 1978). Cockburn does not even try to disguise what he is doing. He directly uses Sun’s projected profits from monetizing a potential partnership with Google as the basis of his upward adjustment. Purcell Decl. Ex. 31 (Cockburn Report Ex. 15). This is not using a patentee’s likely lost profits as one factor bolstering a reasonable royalty, as Georgia-Pacific permits; this is direct recovery of projected lost profits. It is improper under the law and this Court’s order, which directed Cockburn to perform a reasonable royalty calculation. Moreover, just as was the case with his (equally improper) upward hypothetical copyright license calculation, the sum total of the factual support for Cockburn’s upward patent-damages adjustment is the same single, tentative Sun presentation speculating about amounts Sun might earn from partnering with Google. For the same reasons discussed above, this document is not a valid basis of any expert opinion. But Cockburn relies on nothing else. For all these reasons, the Court should exclude Cockburn’s patent-damages calculation.

C. Cockburn fails to provide any calculation of future damages.

Third, although Cockburn has calculated damages through 2012, he fails to offer any firm calculation of damages after 2012, as to either the patent or copyright claims. This Court could not have instructed Cockburn more clearly on this point in its Order:

The hypothetical license, therefore, should be structured as a series of yearly payments with no additional lump sum to be paid up front. This structure should be adopted as an assumption in any damages analysis, so that the jury can more easily divide the amount of damages between past and future infringement. If and when a permanent injunction is entered, the damages award will then be adjusted accordingly. Furthermore, any projection of future damages must take into account the varying expiration dates of the asserted patent claims.
Order at 11 (emphasis in original). Cockburn simply ignored this directive. Although he asserts that Oracle will continue suffering the consequences of Google’s alleged infringement after trial, [REDACTED] He then contends, without any quantification, that his

7

methodology for calculating past damages would undercalculate future damages. Id. at 23 ¶ 59. But he does not provide any number, much less “take into account the varying expiration dates of the asserted patent claims” on future damages, as this Court ordered. Order at 11.

Even worse, he ignores both the law and the Order, opining that “if I am asked to put an estimate of an appropriate royalty for future infringement before the jury or the Court”—which the Court did in fact direct him to do—future damages should be based on a hypothetical negotiation taking place after the jury verdict. As the Court made clear in its Order, the law requires that the hypothetical negotiation take place at the time of first infringement. Order at 6-7. There is no separate hypothetical negotiation standard for future damages. Cockburn asserts, without citing authority, that assuming a post-trial negotiation is necessary to take account of “the immediate prospect of an injunction,” but that is nonsensical. Every hypothetical negotiation presumes a finding of infringement and thus the immediate prospect of an injunction. See Cummins-Allison Corp. v. SBM Co., Ltd., 584 F. Supp. 2d 916, 918 (E.D. Tex. 2008) (“[A] jury finding of infringement and no invalidity … merely confirms the original assumption of those facts” in the hypothetical negotiation analysis); Ariba, Inc. v. Emptoris, Inc., 567 F. Supp. 2d 914, 918 (E.D. Tex. 2008) (same).**2

In any event, regardless of what standard applies, the fundamental problem is Cockburn’s failure to offer any future damages calculation, or any reasoning that could support such a

8

calculation, despite being told to do so. The Court should preclude Oracle from offering any expert testimony on future damages at trial.

D. Cockburn fails to conduct any analysis at the level of the individual patent claims.

Fourth, Cockburn again ignores this Court’s Order by omitting a claim-by-claim analysis of any of the asserted patents, either with respect to the date of first infringement or their contribution to the Android platform. Instead, he treats each patent as an indivisible whole. See Purcell Decl. Ex. 20 (Cockburn Report Ex. 2) (describing functionality on patent-by-patent basis); id. Exs. 21-30 (Cockburn Report Exs. 4-13) (calculating value of each patent as a whole without any analysis of individual patent claims). But in its Order, the Court made clear that “determining the date of first infringement requires a claim-by-claim analysis.” Order at 7 (emphasis added). Similarly, some of the asserted patent claims might be less valuable, or easier to design around, than other claims contained within that same patent, but Cockburn conducts no analysis of any of those issues.

Accordingly, the Court should bar Oracle and Cockburn from presenting any evidence or testimony that the date of first infringement of any of the asserted patents postdates the date of first infringement of the first patent infringed. Because Cockburn has refused to apportion patent value among the asserted claims in his report, the Court should also preclude him from doing so at trial. The Court should further instruct the jury that, because Oracle has no evidence of the value of individual patent claims, if the jury finds any asserted claim of any patent not infringed, it may assume that the non-infringed claim represented the full value of that patent, and thus that Oracle is entitled to no damages for infringement of other claims of that patent.

E. Cockburn should not be permitted to inflate his damages estimate by presenting data about licenses for noncomparable technologies or settlements of noncomparable litigation.

Finally, Cockburn continues to bolster his conclusions by referring to licenses involving unrelated technology and parties—such as a semiconductor license negotiated between Nokia and Qualcomm. Purcell Decl. Ex. 15 (Cockburn Report) at 37-38 & ¶¶ 104-05. This is just an effort to put big numbers before the jury. The Federal Circuit has repeatedly instructed courts to exercise “vigilance” in permitting experts to testify about “past licenses to technologies other

9

than the patent in suit.” ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 869 (Fed. Cir. 2010) (emphasis in original); see also Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1329 (Fed. Cir. 2009). This Court should bar Cockburn from testifying about licenses for technologies other than those embodied by the patents-in-suit, or licenses involving neither Sun nor Google.

Likewise, Cockburn persists in justifying his billion-dollar damages estimate by reference to Sun’s settlement of its lawsuit with Microsoft. Cockburn’s rationale for injecting the Sun- Microsoft settlement into this case is that Sun purportedly was concerned there, as Oracle is here, about fragmentation of Java. Purcell Decl. Ex. 15 (Cockburn Report) at 26-27 & ¶¶ 70-71. But the Microsoft lawsuit was about a lot more than fragmentation, as Cockburn admits when he notes that Sun sued Microsoft for marketing its own competing virtual machine using the Java brand, something Google has never done. Id. at 26 & ¶ 71. Cockburn has made no effort to separate out the value of the different components of that settlement. As discussed already, [REDACTED] It would obviously be tremendously prejudicial to Google to allow Cockburn to reference the $900 million amount of the Sun-Microsoft settlement, without having any basis to connect that settlement to Oracle’s claims in this case or explain the dollar value of fragmentation generally. Accordingly, the Court should exclude any references to that settlement.

Dated: September 24, 2011

Respectfully submitted,

KEKER & VAN NEST LLP

By: s/ Robert A. Van Nest
ROBERT A. VAN NEST
Attorneys for Defendant
GOOGLE INC.

____________________

**1 Due to the Court’s order restricting Google to only 200 total pages of materials supporting its motions in limine, Google has submitted only the relevant excerpts of the revised Cockburn Report. The revised Cockburn Report, by itself, is 202 pages, and the exhibits and appendices to that report are about that long as well. Google believes that this Court would benefit from reviewing the entire report prior to deciding the admissibility of Cockburn’s opinions, and would promptly provide the full report to the Court if directed.

**2 In a letter to the Court on September 22, 2011, Oracle cited two cases for the proposition that a post-trial damages award should be based on a separate hypothetical negotiation taking place after the jury verdict. Oracle’s first case, Paice LLC v. Toyota Motor Corp., 504 F.3d 1293 (Fed. Cir. 2007), does not hold that post-trial damages must be calculated via a post-verdict hypothetical negotiation. It provides only that a trial court has discretion in setting a reasonable royalty for post-trial infringement. See id. at 1314-15. Oracle’s other case, Boston Scientific Corp. v. Johnson & Johnson, No. C 02-00790 SI, 2009 WL 975424 (N.D. Cal. Apr. 9, 2009), relies on a misapplication of the Federal Circuit’s opinion in Amado v. Microsoft Corp., 517 F.3d 1353 (Fed. Cir. 2008), which discussed only how post-verdict infringement damages should be adjusted “[w]hen a district court concludes that an injunction is warranted, but is persuaded to stay the injunction pending an appeal.” Amado, 517 F.3d at 1362. In that context, a court may adjust damages based on factors such as “the infringer’s likelihood of success on appeal, the infringer’s ability to immediately comply with the injunction, [and] the parties’ reasonable expectations if the stay was entered by consent or stipulation.” Id. Amado never suggests, much less holds, that post-trial damages must be based on a hypothetical post-verdict negotiation. To the extent Boston Scientific supports such a conclusion, it is inconsistent with the better-reasoned Cummins-Allison and Ariba cases, which recognize that any hypothetical negotiation already assumes validity, infringement, and the looming possibility of an injunction.

10


495

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

__________________

ORACLE AMERICA, INC.,

Plaintiff,

v.

GOOGLE INC.,

Defendant.

_________________

No. C 10-03561 WHA

GOOGLE’S MOTION IN LIMINE NO. 4
TO EXCLUDE PORTIONS OF
GOLDBERG REPORT DISCUSSING
COMMERCIAL SUCCESS

Judge: Hon. William Alsup

Date Comp. Filed: October 27, 2010

Trial Date: October 31, 2011

MOTION AND RELIEF REQUESTED

Under Federal Rules of Evidence 401, 402, and 403, defendant Google, Inc. (“Google”) hereby moves the Court for an order excluding in limine evidence attributing any “commercial success” of Java to the asserted patents because Oracle cannot as a legal matter satisfy its burden of proving the requisite nexus. Such evidence includes paragraphs 423-427, 435-443, and 482-485 of the Goldberg Report***1. In any event, the Court should exclude in limine evidence attributing Android’s (or even Java’s) commercial success to the asserted patents, unless and until Google opens the door to such evidence by presenting an obviousness defense, and Oracle demonstrates the requisite nexus. In addition to the Java-related paragraphs already listed, this includes paragraphs 428-431, 444-447, 461-466, and 469-473 of the Goldberg Report.

DISCUSSION

“Commercial success” is just one of a long list of potentially relevant “secondary considerations” that the patentee may invoke to rebut the defendant’s proof of obviousness. As this Court observed in its Therasense decision, “[t]he Federal Circuit has held that ‘secondary considerations, when present, must be considered in determining obviousness.’” Therasense, Inc. v. Becton, Dickinson & Co., 565 F. Supp. 2d 1088, 1123 (N.D. Cal. 2008) (Alsup, J.), aff’d, 593 F.3d 1289 (Fed. Cir. 2010) reh’g en banc granted, opinion vacated, 374 F. App’x. 35 (Fed. Cir. 2010) (en banc), panel opinion reinstated in relevant part and district court aff’d in relevant part, 2011 WL 2028255 (Fed. Cir. May 25, 2011) (en banc) (citation omitted). The list of potentially probative secondary considerations has expanded over time to include “commercial success,” “long-felt but unsolved needs,” “failure of others,” and seven other factors that this Court has discerned in the Federal Circuit’s precedents. See id. at 1123. Despite their disparate natures, all of these factors—including “commercial success”—have one thing in common: Evidence regarding them “only has probative value where there is ‘a nexus between the merits of the claimed invention and the secondary consideration.’” Id. at 1124 (citation omitted). “The

1

burden of proof as to this connection or nexus resides with the patentee.” Id. (citation omitted).

1. Oracle cannot attribute Java’s commercial success to the ‘520, ‘720, and ‘520 patents specifically. nor to the asserted patents generally.

Oracle only cites the purported commercial success of Java to demonstrate nonobviousness of four of the seven asserted patents: the ‘104 patent, the ‘205 patent, the ‘447 patent, and the ‘476 patent. See generally Goldberg Report §§ XVI.A.2, B.2, and F.2 (Purcell Decl. Ex. 33). With respect to the remaining patents—the ‘520 patent, the ‘702 patent, and the ‘720 patent—Oracle only relies on the commercial success of Android to demonstrate nonobviousness. See generally id at §§ XVI.C.2, D.2, and E.2. The Court should therefore at minimum exclude under Rule 402 any evidence that Java’s success is attributable to the practice of the ‘520, ‘702, and ‘720 patents.

Furthermore, because Oracle does not contend Java practices all of the asserted patents, any suggestion that the success of “Java” generally is attributable to the asserted patents would be misleading. Oracle cannot logically claim that Java’s success is attributable to the asserted patents when it only contends that about half of those patents are even practiced by Java. As such, the Court should exclude any such illogical and false generalizations under Rule 403.

2. Oracle cannot attribute Java’s commercial success to the ‘104, ‘205, ‘447, and ‘476 patents because it cannot establish the necessary nexus.

Even as to the ‘104, ‘205, ‘447, and ‘476 patents, which Oracle has attempted to relate to the success of Java, the Court should exclude such evidence because there is no analysis as to whether Java actually practices those patents. Instead of analyzing the issue, Oracle’s experts simply “assume” that this is the case. For example, Dr. Benjamin Goldberg, contends that “I understand that Sun Microsystems and Oracle have implemented the claimed invention of the ’104 patent in their Java virtual machines.” See Purcell Decl. Ex. 33 (Goldberg Report) ¶ 423. He makes the same claim with respect to the ‘447 and ‘476 patents. See id. ¶ 482. Dr. Goldberg does not cite to anything in the record to support these assertions, and certainly engages in no analysis of the issue himself (nor does Dr. Mitchell, Oracle’s expert on the issue of infringement).

2

With respect to the ‘205 patent, Dr. Goldberg claims that “I understand that Java engineer Dr. Peter Kessler has confirmed that the HotSpot virtual machine employs the _fast_invokevfinal() nonstandard bytecode to implement the asserted claims of the ’205 patent.” Id. ¶ 436. Again, there is no basis for this assertion. Dr. Goldberg has not analyzed whether Java practices the claims. Nor did Dr. Kessler, upon whom Dr. Goldberg relies. To the contrary, Dr. Kessler repeatedly testified that he could not interpret and apply the asserted claims of the ‘205 patent. See Purcell Decl. Ex. 34 (Kessler Depo.) at 52:13-19; 59:13-22. He similarly testified with respect to the ‘104 patent, and Oracle’s counsel repeatedly objected to the line of questioning as calling for expert testimony, implying that Dr. Kessler was not in a position to evaluate whether Java indeed practices the asserted claims. See id. at 187:20 – 188:23.

In light of Oracle's failures to even analyze whether Java practices the ‘104, ‘205, ‘447, and ‘476 patents, any evidence suggesting Java does so should be excluded under Rules 402 and 403. Indeed, without such an analysis, there can be no showing of a “nexus between the merits of the claimed invention and the secondary consideration.” Therasense, 565 F. Supp. 2d at 1123.

3. Whether or not Android’s (or even Java’s) commercial success is attributable to the asserted patents is not relevant unless Google presents an obviousness defense, and should be excluded until that point.

The paragraphs of the Goldberg Report addressed by this motion purport to demonstrate that the inventions claimed in each of Oracle’s asserted patents have contributed to the commercial success of Java, Android, or both. Such evidence is irrelevant—and thus inadmissible under Rule 402—unless and until Google presents an obviousness defense to the specific patent(s) that Dr. Goldberg is discussing. With 42 claims across 7 patents still at issue, it is impossible to tell whether obviousness will even be an issue at trial. In fact, Oracle may moot this issue altogether if it finally narrows the scope of the case to triable claims, rather than an unrealistic laundry list of issues.

In any event, evidence of the impact of the asserted patents on the commercial success of Android or of Java has no relevance —and is therefore inadmissible under Rule 402—unless and until (1) Google presents an obviousness defense as to a specific patent, and (2) Oracle meets its burden of demonstrating a “nexus” between the merits of the invention claimed in that patent and

3

the commercial success of Android (in the case of the ’205, ’702, ’520, and ’720 patents) or the commercial success of Java (in the case of the ’104, ’205, ’447 and ’476 patents).

Prior to that juncture, evidence regarding “commercial success” also should be inadmissible under Rule 403’s probative-value-versus-prejudice balancing test—even assuming arguendo that such evidence possesses some marginal relevance to the liability case. “Where the evidence is of very slight (if any) probative value, it’s an abuse of discretion to admit it if there’s even a modest likelihood of unfair prejudice or a small risk of misleading the jury.” United States v. Gonzalez-Flores, 418 F.3d 1093, 1098 (9th Cir. 2005) (emphases added) (citation omitted) (applying Rule 403). Or, to put it another way: “[E]vidence presenting even a ‘modest likelihood of unfair prejudice’ is ‘high enough to outweigh the . . . probative value’ of marginally relevant evidence.” United States v. Espinoza-Baza, 647 F.3d 1182 (9th Cir. 2011) (citation omitted) (applying Rule 403). “Commercial success” evidence poses at least a “modest likelihood” of unfair prejudice and a more than a “small risk” of misleading the jury because it tends to create an inflated sense of the patent’s importance to the rapid development of the mobile-device market and, by implication, to the success of Android. Unfair prejudice and the risk of misleading are even greater with respect to Dr. Goldberg’s assertions that the ’104, ’205, ’447, and ’476 patents contributed to “Java’s commercial success” (Purcell Decl. Ex. 33 (Goldberg Report), ¶¶ 427, 443, 485), because Java actually has achieved little or no success in the field of mobile devices.

CONCLUSION

The Court should, pursuant to Rules 402 and 403, exclude in limine any evidence attributing the commercial success of Java to the asserted patents because (a) Oracle does not even rely on all of them to demonstrate success; and (b) as to those it does rely on, Oracle cannot demonstrate the requisite nexus. At a minimum, the Court should exclude under Rules 402 and 403 any evidence attributing the commercial success of either Java or Android to the asserted patents unless and until such time as Google opens the door via an obviousness defense and Oracle demonstrates the requisite nexus.

4

Dated: September 24, 2011

Respectfully submitted,

KEKER & VAN NEST LLP

By: s/ Robert A. Van Nest
ROBERT A. VAN NEST
Attorneys for Defendant
GOOGLE INC.

________________________

***1 “Goldberg Report” refers to the “Expert Report of Dr. Benjamin F. Goldberg Regarding Validity of Patents-In-Suit” dated August 25, 2011, relevant excerpts of which are attached as Ex. 33 to the Declaration of Daniel Purcell in Support of Google Inc.’s Motions in Limine (“Purcell Decl.”) filed herewith.

5


496

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

_____________________

ORACLE AMERICA, INC.,

Plaintiff,

v.

GOOGLE INC.,

Defendant.

___________________

No. C 10-03561 WHA

GOOGLE’S MOTION IN LIMINE NO. 5
TO EXCLUDE EVIDENCE OBTAINED
FROM MOTOROLA MOBILITY, INC.

Judge: Hon. William Alsup

Date Comp. Filed: October 27, 2010

Trial Date: October 31, 2011

MOTION AND RELIEF REQUESTED

Under Patent Local Rule 3-1 and Federal Rules of Civil Procedure 26 and 37, defendant Google, Inc. (“Google”) hereby moves the Court for an order excluding in limine from all phases of this trial the documents and testimony**1** of, and all evidence and argument relating to, Motorola Mobility, Inc. (“Motorola Mobility”). Those documents and testimony, and related argument, are expected to be presented as evidence of alleged infringement that was not disclosed in Oracle’s Infringement Contentions (“ICs”), was not addressed in Oracle’s expert reports regarding alleged infringement,**2** and was not timely requested in discovery by Oracle. Oracle failed to timely discover the Motorola Mobility documents and testimony, has not asked for leave of the Court to amend its ICs, and should not be allowed to submarine Google by presenting this untimely evidence of Motorola Mobility products and activities.

DISCUSSION

Oracle’s original complaint accused Google of indirect infringement based on the activities of “purchasers, licensees, and users of Android.” (Dkt. 1 at ¶¶ 18, 21, 24, 27, 30, 33, 36.) As Oracle’s counsel acknowledged before the Court on February 9, 2011, “Google expressed a concern that [Oracle] had not articulated sufficiently the basis for [Oracle’s] belief that the [] Android code that is on the Google public Android website is, in fact, the code that is present on the handsets that would represent the direct infringement in cases of indirect infringement.” Feb. 9, 2011 Hrg. Tr. (attached as Ex. 35 to the Declaration of Daniel Purcell in Support of Google Inc.’s Motions in Limine (“Purcell Decl.”) filed herewith) at 4:16–21. Yet, Oracle chose not to seek discovery from Motorola Mobility until April, which was more than halfway through the eight month discovery period and after Oracle locked in its ICs. Further, Oracle’s infringement expert, Dr. John Mitchell, did not consider or rely upon any of the

1

documents and testimony of Motorola Mobility at issue in this motion.

Oracle was required to disclose explicit factual bases for its infringement theories in its ICs, which were first served in December of 2010. Moreover, Oracle represented to this Court that it would rely on its ICs as they existed in early April. Purcell Decl. Ex. 36, (Apr. 6, 2011 Hrg. Tr.) at 10:17–11:4. Those ICs identified—but did not provide an infringement analysis of—a single Motorola Mobility product, the Motorola Droid. Purcell Decl. Ex. 37, (Oracle’s ICs) at § I.B. Only after the hearing where Oracle accepted the consequences of relying on its existing contentions, and five months into an eight month discovery process, Oracle issued a subpoena to Motorola Mobility requesting documents on fifteen additional Android products. Purcell Decl. Ex. 38, (Notice of Subpoena). That subpoena for documents was followed months later by a Rule 30(b)(6) subpoena regarding the same list of products. Purcell Decl. Ex. 39, (Rule 30(b)(6) Subpoena of Motorola Mobility, Inc.).

As discussed in Google’s Motion to Strike Portions of the Mitchell Patent Report, Oracle’s evidence of alleged direct infringement should be limited to the specific products accused in the ICs, which identify a single Motorola product, the Droid. (Dkt. 410 at 5.) Oracle’s plan has been to identify “representative examples” of allegedly infringing products while seeking damages for the entire universe of Android devices. Purcell Decl. Ex. 37, (Oracle’s ICs) at § I.B. While some courts have held that a party may rely on representative products in ICs to seek discovery on similar products (see, e.g., Honeywell Int’l, Inc. v. Acer America Corp., 655 F. Supp. 2d 650 (E.D. Tex. 2009)), the Patent Local Rules require specific identification of allegedly infringing products. A party must show “good cause” to amend its contentions to identify newly accused products. See generally LG Elecs., Inc. v. Q-Lity Computer, Inc., 211 F.R.D. 360 (N.D. Cal., 2002); Atmel Corp. v. AuthenTec, Inc., No. 06-2138, 2008 U.S. Dist. LEXIS 10846 (N.D. Cal. Jan. 31, 2008). Here, fact discovery closed without Oracle ever seeking leave to amend its contentions to add the additional fifteen Motorola Mobility products, including the Atrix 4G, Cliq, Cliq 2, Droid 2, Droid Pro, Droid X, Bravo, Flipside, Citrus, Defy, Charm, Backflip, Devour, Xoom, and i1.

As explained in Google’s recently filed motion to strike, Patent Local Rule 3-1 requires,

2

in relevant part, that infringement contentions provide:

(b) 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. Each 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;

. . .

(d) For each claim which is alleged to have been indirectly infringed, an identification of any direct infringement and a description of the acts of the alleged indirect infringer that contribute to or are inducing that direct infringement. Insofar as alleged direct infringement is based on joint acts of multiple parties, the role of each such party in the direct infringement must be described.

. . .

(Emphasis added.) According to these rules, products accused of direct or indirect infringement must be explicitly identified in a plaintiff’s infringement contentions. Oracle’s generalized assertions of infringement by “Google devices running Android” or “other mobile devices running Android” are insufficient under the Patent Local Rules to extend Oracle’s infringement allegations to cover unidentified products, as are attempts to suggest that the identified products are merely “representative.” See Bender v. Advanced Micro Devices, Inc., No. 09-1149 MMC, 2010 U.S. Dist. LEXIS 11539 at *3 (N.D. Cal. February 1, 2010) (“even if [the plaintiff] can establish that it is appropriate to use representative claim charts, he has not in all instances adequately identified the accused products at issue. Pursuant to Rule 3-1(b), the patentee’s identification of which accused products allegedly infringe cannot be so amorphous or imprecise so as to force the opposing party to essentially ‘guess which versions of its products’ are allegedly infringing. InterTrust Techs. Corp. v. Microsoft Corp., No. C 01-1640 SBA, 2003 U.S. Dist. LEXIS 22736, at *6 (N.D. Cal. Nov. 26, 2003)”); Bender v. Maxim Integrated Products, Inc., ,No. 09-01152 (SI), 2010 U.S. Dist. LEXIS 89957 at *9 (N.D. Cal. July 29, 2010) (“plaintiff must identify each accused product and link it to a representative product [claim chart] in order to provide [the defendant] with fair notice of the specific products which are accused in this lawsuit.”).

3

Nearly six months ago, Oracle had identified fifteen specific publically available Android products offered by Motorola Mobility, but chose not to amend its ICs to identify or analyze its infringement contentions against those products. Oracle cannot now, on the eve of trial, introduce evidence of alleged direct infringement by these products.

Nor should Oracle’s infringement expert, Dr. Mitchell, be allowed to present any opinions on the documents and testimony of Motorola Mobility as that material was not considered in his infringement reports. Purcell Decl. Ex. 40 (Second Supplemental List of Materials Considered). Under Rule 26(a)(2)(B)(ii) and 26(e)(2), Dr. Mitchell was required to identify all of “the facts or data considered . . . in forming [his opinions].” Rule 37(c)(1) prevents Dr. Mitchell from opining on that material.

Accordingly, the Court should exclude the documents and testimony of, and all evidence and argument relating to, Motorola Mobility including documents labeled MOTO-ORACLE- 0001 through MOTO-ORACLE-0088 and the Rule 30(b)(6) deposition testimony of Rafael Camargo taken on September 8, 2011.

Dated: September 24, 2011

Respectfully submitted,

KEKER & VAN NEST LLP

By: s/ Robert A. Van Nest
ROBERT A. VAN NEST
Attorneys for Defendant
GOOGLE INC.

______________________

**1** The “documents and testimony” of Motorola Mobility consist of documents labeled MOTOORACLE- 0001 through MOTO-ORACLE-0088, which were produced pursuant to a Rule 45 subpoena, and deposition testimony Rafael Camargo taken on September 8, 2011 pursuant to a Rule 30(b)(6) subpoena.

**2** While Motorola Mobility’s documents and testimony were not addressed in the Mitchell Report, the Motorola Atrix product was identified in the Mitchell Report at paragraph 191 with reference to an unrelated analysis by Dr. Mitchell. Paragraph 191 is addressed by Google’s pending motion to strike on many of the same grounds presented here. (Dkt. 410 at 5.)

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