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To read comments to this article, go here
Oracle v. Google - Google Continuing To Press Hard On Its Positions
Friday, October 14 2011 @ 09:00 AM EDT

Google is continuing to press Oracle with further motion filings. This time Google attacks Oracle's claim for past patent damages as outside the scope of the law. (521 [PDF; text below]) Oracle has asserted a claim for patent damages from the year 2007. Oracle, however, did not give notice of infringement to Google until much later, perhaps as late as July 2010. If Google is successful in obtaining leave to file its motion and is successful on the motion, it could preclude virtually all damage claims for past patent infringement. Damages would then only be due from the date of notice going forward, if at all.

The basis for Google's position is an interesting quirk in patent law. Generally, patent law requires the patent holder to give notice of infringement before damages begin to accrue. Where a patent holder marks the holder's own goods for the patents which those goods embody, the patent holder is deemed to have placed other parties on notice of both the patents and the potential for infringement.

However, U.S. patent law does not require marking of method or process claims on the theory that there is nothing to mark. This would include such method or process claims as they apply to software. On the other hand, apparatus claims require marking of products, and, importantly:

the Federal Circuit has long held that where “both apparatus and method claims … were asserted and there was a physical device produced by the claimed method that was capable of being marked,” the patentee must mark that physical device in order “to recover damages” prior to the date of notice, even “under its method claims.”
In the instant case Google points out that Oracle admits it has not marked any products nor, to Oracle's knowledge, have its licensees, and Oracle is asserting both apparatus and method claims under six of the seven patents (it is not asserting apparatus claims in the '205 patent). No marking - no past damages.

If successful in raising and arguing this motion, Google will have taken another big bite out of Oracle's patent damage claims.

Google also goes after two reports recently filed by Oracle as "rebuttal" expert reports. (522 [PDF; text below]) The reports were prepared by Dr. Kenneth Serwin, an individual who had not previously submitted any reports, expert or otherwise, in this case. Google argues that such a rebuttal report is outside the court's instructions on damage and expert reports, which instructions made no provision for rebuttal reports. It's fairly clear that Oracle is trying to do an end run around Google with respect to the Cockburn reports; Google had agreed to delay Cockburn's deposition until all of his reports had been filed, but the Serwin reports comes too late for a deposition. Absent some showing by Oracle that it had given Google notice of Serwin and his preparation of a report, expect this one to go Google's way.

In a third strike in favor of Google the Boies firm now submits a rather contrite letter (524 [PDF; text below] admitting they screwed up their claims in the précis letter (see also Google Gets Significant Win on Mitchell Report) seeking to strike portions of Google's Leonard and Cox damages reports. Among the mistakes: (a) admitting that Google had identified Mr. Bray as a document custodian; (b) admitting that Google had identified Mr. Rizzo as a witness; and (c) admitting that Google had, in fact, produced the documents in question. After admitting all of those errors, there isn't a great deal of substance left in the précis letter.

The final item of the day is the joint submission of proposed voir dire questions. (520 [PDF; text below]. For the most part these questions are what you would expect the parties to ask of potential witnesses. Of all of the questions, my favorite is this one that Google seeks permission to ask:

2. Have you heard about the America’s Cup Race being held in San Francisco? Will you or someone close to you personally benefit from the developments that will occur to host the America’s Cup Race?
Do you think this is what Google is worried about?


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

Docket

520 – Filed and Effective: 10/12/2011
Proposed Voir Dire
Document Text: Proposed Voir Dire by Oracle America, Inc. Joint Submission of Proposed Voir Dire Questions. (Muino, Daniel) (Filed on 10/12/2011) (Entered: 10/12/2011)

521 – Filed and Effective: 10/12/2011
Letter
Document Text: Letter from Robert A. Van Nest Renewed Precis re Marking. (Van Nest, Robert) (Filed on 10/12/2011) (Entered: 10/12/2011)

522 – Filed and Effective: 10/12/2011
Letter
Document Text: Letter from Robert A. Van Nest Precis re Rebuttal Reports. (Van Nest, Robert) (Filed on 10/12/2011) (Entered: 10/12/2011)

523 – Filed and Effective: 10/12/2011
Proposed Order
Document Text: Proposed Pretrial Order Joint Proposed Pretrial Order by Oracle America, Inc.. (Attachments: # 1 Appendix A (Joint Trial Exhibit List), # 2 Appendix B (Oracle Witness List), # 3 Appendix C (Google Witness List))(Muino, Daniel) (Filed on 10/12/2011) (Entered: 10/12/2011)

524 – Filed and Effective: 10/12/2011
Letter
Document Text: Letter from Steven C. Holtzman re Precis. (Holtzman, Steven) (Filed on 10/12/2011) (Entered: 10/13/2011)

525 – Filed and Effective: 10/13/2011
Proposed Order
Document Text: Proposed Pretrial Order CORRECTED Joint Proposed Pretrial Order by Oracle America, Inc.. (Attachments: # 1 Appendix A (Joint Trial Exhibit List), # 2 Appendix B (Oracle Witness List), # 3 Appendix C (Google Witness List))(Muino, Daniel) (Filed on 10/13/2011) (Entered: 10/13/2011)


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

Documents

520

[counsel listed on signature page]

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 (DMR)

JOINT SUBMISSION OF PROPOSED
VOIR DIRE QUESTIONS

JOINT SUBMISSION OF PROPOSED VOIR DIRE QUESTIONS

Pursuant to the Court’s Guidelines for Trial and Final Pretrial Conference in Civil Jury Cases, the parties submit the following proposed voir dire questions:

Key Questions

1. Do you have any personal knowledge of this case, or have you read or heard it discussed, or have an opinion regarding it?

2. Are you familiar with Oracle Corporation, Oracle America, Google, or Sun Microsystems? Have you or anyone close to you worked for these companies? Have you or anyone close to you had any negative experience with any products or services of these companies? Do you have any strong feelings, positive or negative, about these companies?

3. Do you, or does anyone close to you, have any training, experience or special knowledge in any of the following fields? If so, please tell me about it.

Computer software or hardware development or design.
Mobile computing technology, including smartphones and tablets.
Cellular phones.
Electrical engineering.
Product design and development.
Java programming.
Telephony.
Finance.
Patent and copyright law.
4. Do you consider yourself computer savvy? Do you regularly read technology or computer articles or magazines? Do you use the Internet? If so, how often?

5. Are you familiar with the Android software platform? Do you use an Android phone or tablet? In particular, do you use any of the following Android phones: HTC’s EVO 4G, HTC’s Droid Incredible, HTC’s G2, Motorola’s Droid, or Samsung’s Captivate? Do you have any strong feelings, positive or negative, about Android or Android devices?

6. Do you have any views about open sourcing software or open source licenses? If so, please describe.

7. Are you familiar with the Java software platform? Do you have any strong feelings, positive or negative, about Java?

1

8. Have you or a family member ever had your copyrighted works copied by another without authorization? Have you or a family member ever been accused of copying any copyrighted works without authorization?

9. Have you or a family member ever invented anything? If so, what was it?

10. Do you work for a company now or have you ever worked for a company that has patents, copyrights or other forms of intellectual property? How important to that company are (were) its patents and other intellectual property? What role did you have with respect to the company’s intellectual property?

11. Oracle’s CEO is Larry Ellison. Google’s CEO is Larry Page. Do any of you have opinions about either Mr. Ellison or Mr. Page that are so strong that you think you could not set them aside and decide this case solely on the evidence and testimony presented at this trial?

Additional Questions

12. What is your occupation? Who do you work for? What do you do at work? How long have you been on this job? What prior jobs have you had?

13. Have you recently been laid off by an employer? Which employer? Have you found new employment?

14. What is the occupation of your spouse, domestic partner, and/or other adults in your household?

15. Please describe your educational background, including the highest level of education received and any subject areas studied (such as a major or minor).

16. You have been given a list of companies, law firms, attorneys, and potential witnesses (see below).

a. Are you related to or personally acquainted with any of these individual witnesses or attorneys?

b. Are you personally acquainted with anyone who works for these companies or law firms?

c. Do you or any member of your household now own, or have you or any such member ever owned, any stocks or bonds in any of the companies?

2

d. Have you, any family member, or anyone close to you had any dealings with, or relied financially in any way on, any of the companies or law firms?

e. Have you, any family member, or anyone close to you had any negative experience with any products or services of any of these companies or law firms? Do you have any strong feelings, positive or negative, toward any of these companies or law firms?

17. Do you have strong feelings about large corporations? Please describe.

18. Have you or a family member ever been a plaintiff, a defendant, or a witness in a civil lawsuit? What did the case involve? Was it a positive or negative experience for you?

19. Have you ever served as a juror before?

a. If so, was it in a civil or a criminal case? Can you tell us what the case was about?

b. Was that a positive or negative experience for you?

20. Do you have any strong opinions regarding the size of damages awards in lawsuits?

21. Do you have any strong feelings, positive or negative, about computer software companies in general or any specific software companies?

22. Have you or a family member ever written or composed a copyrighted work?

23. Have you or a family member or friend ever registered a copyright? If so, what was the copyright for? When did you (they) register the copyright?

24. Have you or someone close to you ever had any dealings with the U.S. Patent and Trademark Office?

25. Have you or a family member or friend ever applied for a patent? If so, what was the patent for? When did you (they) apply for it?

26. Have you ever been involved in litigation over patents or copyrights?

27. Have you ever been involved in selling, buying, or licensing patents or copyrights?

3

28. Do you have any strong opinions about a patent granting exclusive rights to the inventors or their employers? Do you have any strong opinions about patents that cover software technology?

29. Do you consider yourself to be someone who is likely to adopt new technologies or gadgets?

30. Do you seek out information about new technologies?

31. Do you have any special disability or problem that would make it difficult or impossible for you to serve as a member of the jury on this case?

32. Do you know of any other matter which you believe should be called to the court’s attention as having some bearing upon your qualifications or ability to sit as a juror, or which you think may prevent you from rendering a fair and impartial verdict based solely upon the evidence and my instructions as to the law?

Google separately requests that the Court ask prospective jurors the following additional questions:

1. If you use the Internet, are you concerned about whether your privacy is protected when you are using the Internet?

2. Have you heard about the America’s Cup Race being held in San Francisco? Will you or someone close to you personally benefit from the developments that will occur to host the America’s Cup Race?

3. Have you ever seen a product that included a new idea which you believed you had thought of first?

4. Do you feel that, when the U.S. Patent and Trademark Office grants a patent, it is wrong for a company to question whether or not a patent is valid?

5. Have you ever heard of a situation where it was determined that a patent was infringed? What have you heard?

6. Do you feel that if one company accuses another company of infringing its patent, the accusation is probably true?

4

7. Have you ever heard of a situation where it was determined that a patent was not valid? What have you heard?

8. Have you ever worked for a company that used Oracle products or services or paid license fees to Oracle?

9. Have you ever worked for a company that used Oracle America products or services or paid license fees to Oracle America?

10. Have you ever worked for a company that used Sun Microsystems products or services or paid license fees to Sun Microsystems?

11. To what extent do you enjoy debating political or social issues?

List of Companies, Law Firms, Attorneys, and Potential Witnesses

Companies: Android Inc.; Danger Inc.; Apache Foundation; Samsung; Motorola; HTC; LG.

Law Firms: Morrison & Foerster; Boies Schiller & Flexner; Keker & Van Nest; King & Spalding; Greenberg Traurig.

Attorneys: Michael Jacobs, Marc Peters, Daniel Muino, Ken Kuwayti, Patricia Svilik, Ruchika Agrawal, Yuka Teraguchi, Jason Hall, Ben Petersen, Roman Swoopes, David Boies, Steve Holtzman, Fred Norton, Alanna Rutherford, Beko Richardson, Meredith Dearborn, Rosaline Chan, Robert Van Nest, Christa Anderson, Daniel Purcell, Matthias Kamber, Michael Kwun, Gene Paige, Scott Weingaertner, Bruce Baber, Steve Snyder, Mark Francis, Chris Carnaval.

Potential witnesses: Joshua Bloch, Daniel Bornstein, Patrick Brady, Tim Bray, Martin Buccholz, Iain Cockburn, Larry Ellison, James Gosling, Vineet Gupta, Jeet Kaul, Kathleen Knopoff, Ben Lee, Bob Lee, Tim Lindholm, Andy McFadden, Joshua McGuire, John Mitchell, Dan Morrill, Larry Page, Mark Reinhold, Hasan Rizvi, Andy Rubin, Eric Schmidt, Eric Schulman, Edward Screven, Steven Shugan, Param Singh, Guy Steele, Brian Swetland, Safra Catz, Ben Goldberg, James Kearl, Thomas Kurian, Erez Landau, Scott McNealy, Nachi Periakaruppan, Noel Poore, Alan Purdy, Ken Serwin, Bob Vandette, Marc Visnick, Rafael Camargo, Rich Miner, Jonathan Schwartz, Owen Astrachan, David August, Jack Davidson, David Mazières, Terrence Parr, Dennis Allison, Robert Dewar, John Levine, Leo Cizek, Alan Cox, Alan Eustace, Nedim Fresko. Craig Gering, Robert Griesemer, David Gries, Steven Harris, Doug Kehring, Peter Kessler, Greg

5

Leonard, Hiroshi Lockheimer, Peter Lord, Peter Magnusson, Geoffrey Morton, Dipchand Nishar, Andrew Palay, John Pampuch, Lisa Ripley, John Rizzo, Susan Wojcicki, Aditya Agarwal, T.J. Angioletti, Adam Messinger, Lino Persi, Brian Sutphin, Amit Zavery.

6

Dated: October 12, 2011

MORRISON & FOERSTER LLP

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

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.

7

Dated: October 12, 2011

KEKER & VAN NEST LLP

By: /s/ Matthias Kamber
Matthias Kamber

ROBERT A. VAN NEST (SBN 84065)
[email]
CHRISTA M. ANDERSON (SBN184325)
[email]
DANIEL PURCELL (SBN 191424)
[email]
[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]

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

Attorneys for Defendant
GOOGLE INC.

8

ATTESTATION

I, Daniel P. Muino, am the ECF User whose ID and password are being used to file this Joint Submission of Proposed Voir Dire Questions. In compliance with General Order 45, X.B., I hereby attest that Matthias Kamber has concurred in this filing.

Date: October 12, 2011

/s/ Daniel P. Muino

9


521

[Keker & Van Nest LLP letterhead]

October 12, 2011

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:

Google renews its request to file, on a schedule to be set by the Court, a motion for partial summary judgment on Oracle’s entitlement to damages on its patent claims due to the fact that none of its or its licensees’ products were marked as embodying the patents-in-suit. On August 12, 2011, Google filed a précis letter seeking leave to file that motion. Oracle opposed, and on August 19, 2011, the Court denied Google’s request without prejudice, concluding that such a motion would be premature “because so many of the asserted claims still remaining in the case will not be tried.” Since then, Oracle has committed to try 26 claims from six patents. With Oracle’s commitment, the marking issue is now ripe for decision by the Court.

In response to Google’s Request for Production No. 4, Oracle admitted it “is not aware of any device, system, or product expressly marked with the patent number of any of the Patents-in-Suit or Related Patents.” As a result, Oracle may not recover damages for the period pre-dating notice to Google of alleged infringement of the patents-in-suit.

The marking statute requires that:

Patentees, and persons making, offering for sale, or selling within the United States any patented article … may give notice to the public that the same is patented, either by fixing thereon the word “patent” or the abbreviation “pat.”, together with the number of the patent, or when, from the character of the article, this cannot be done, by fixing to it, or to the package wherein one or more of them

The Honorable William Alsup
October 12, 2011
Page 2

is contained, a label containing a like notice. In the event of a failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice.
35 U.S.C. § 287(a) (emphasis added). Although the marking statute does not extend to method claims because, “ordinarily, where the patent claims are directed to only a method or process there is nothing to mark,” American Med. Sys., Inc. v. Medical Eng’g Corp., 6 F.3d 1523, 1538- 39 (Fed. Cir. 1993), the Federal Circuit has long held that where “both apparatus and method claims … were asserted and there was a physical device produced by the claimed method that was capable of being marked,” the patentee must mark that physical device in order “to recover damages” prior to the date of notice, even “under its method claims.” Id. at 1539 (emphasis added). The Federal Circuit reaffirmed this rule just two years ago in Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1316-17 (Fed. Cir. 2009).

Here, as to five of the six patents-in-suit (all but the ‘205 patent) Oracle has committed to assert apparatus, system, or computer-readable medium claims, whose embodiments include tangible objects and trigger the obligation to mark. Oracle has identified numerous such products that it contends actually “practice the asserted claims of” each of the five patents-in-suit. See Oracle’s Second Supplemental Patent Local Rule 3-1 Disclosure at 9-11. Among the products Oracle identifies are multiple releases of its Java desktop, enterprise, mobile, and embedded software platforms. Id. Software products must be marked, particularly where they are made available on websites, as the Java platform software was. See Soverain Software LLC v. Amazon.com, Inc., 79 U.S.P.Q.2d 1208, 1212 (E.D. Tex. 2005); IMX Inc. v. LendingTree LLC, 79 U.S.P.Q.2d 1373, 1375-76 (D. Del. 2005); Northbrook Digital Corp. v. Browster, Inc., 2008

The Honorable William Alsup
October 12, 2011
Page 3

WL 4104695, at *4 (D. Minn. Aug. 26, 2008).

In addition to Oracle’s own practice of the patents, the marking requirement extends also to any products practicing the patents that are sold by the patentee’s licensees. See Amsted Indus. v. Buckeye Steel Castings Co., 24 F. 3d 178, 185 (Fed. Cir 1994); Devices for Med., Inc. v. Boehl, 822 F. 2d 1062, 1292 (Fed. Cir 1987). Here, Oracle admitted in its response to Google’s Interrogatory No. 1 that it both practices the “patents in suit in its own Java-related products and authorizes others to practice them through its Java licensing program.” Among the “others” are mobile-phone manufacturers whose handsets sold in the United States practice the patents.

To recover patent-infringement damages for the period before it gave notice to Google of the alleged infringement, Oracle must show that it (or its licensees) actually marked products on the market that allegedly practice the patents. That marking would have to have been “substantially consistent and continuous,” which would have required that “substantially all” of the patented products were marked. American Med. Sys., 6 F.3d at 1537-38. But Oracle has directly admitted it has no evidence of any marking by anyone.

Accordingly, Oracle is barred as a matter of law from recovering pre-notice damages as to five of the six patents-in-suit—every patent except the ‘205. This is a significant issue, because Oracle’s revised expert report on damages, served on September 10, 2011, confirms that Oracle is seeking damages beginning in 2007, even though Google contends Oracle first gave Google actual notice of the patents-in-suit on July 20, 2010. The date of actual notice can be determined at trial, but the Court can and should rule now that Oracle failed to mark and that, as a result, Oracle is barred from recovering patent damages prior to the date of actual notice.

Sincerely, /s/ Robert A. Van Nest


522

[Keker & Van Nest LLP letterhead]

October 12, 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:

Google requests permission to file, on a schedule to be determined by the Court, a motion to strike two “rebuttal” expert reports served on October 10, 2011 by Oracle damages expert Dr. Kenneth Serwin. Prior to serving these reports, Dr. Serwin had never previously submitted any report in this case. Nothing in any of this Court’s orders regarding expert disclosures and expert reports gives Oracle the right to serve “rebuttal” reports from damages experts that did not serve initial reports. Accordingly, the Court should strike both Serwin reports.

The Court first set a schedule for damages expert discovery in a November 19, 2010 case management order. That order required Oracle to “serve all of its damages report” 70 days before the July 29, 2011 due date for “other non-damages opening reports.” Nov. 19, 2010 Order ¶¶ 8-9. The Order then contemplated that Google would file a Daubert motion, and that Google would serve its “opposition report” 14 days after that motion was resolved with Oracle serving a “reply” report seven days after Google’s opposition report. Id. ¶ 9. The November 19, 2010 order did not give any party permission to submit “rebuttal” reports, either with respect to the damages reports specifically, id., or expert reports generally. Id. ¶ 8. Indeed, that order made clear that even reply material would be "subject to possible exclusion for 'sandbagging.'" Id.

The Honorable William Alsup
October 12, 2011
Page 2

When the Court granted Google’s Daubert motion on Oracle’s initial damages report, the Court revised the prior schedule, which had contemplated that at least some portion of Oracle’s initial damages report would survive review. In its July 22, 2011 order, the Court ordered Oracle to submit its “revised damages report limited to the claims actually to be tried” 35 days before the final pretrial conference—September 12, 2011—and Google to serve any “responsive defense report” 14 days prior to that conference—October 3, 2011. July 22, 2011 Order at 15-16. The July 22, 2011 order made no mention of reply reports, and certainly did not give either party the right to serve “rebuttal” reports from experts who did not serve an initial report.

After Oracle served the revised damages report of Dr. Iain Cockburn on September 12, 2011, Google contacted Oracle about scheduling Dr. Cockburn’s deposition. Google asked Oracle if it contended Dr. Cockburn had the right to a reply report, because Oracle’s position on that issue would affect the timing of Dr. Cockburn’s deposition. Oracle responded that, despite the fact that the July 22, 2011 order did not provide for any such thing, it had the right to serve a reply report seven days after Google’s responsive report, on October 10, 2011. Because the Court’s November 19, 2010 order made clear that experts were to be deposed only once, Google agreed to forego deposing Dr. Cockburn prior to service of Google’s responsive report if Oracle agreed to serve a formal reply report from Dr. Cockburn disclosing all of Dr. Cockburn’s reply opinions. Never once, during these discussions or at any other time, did Oracle assert the right to serve a “rebuttal” damages report from an expert who had not submitted an initial report, or give Google any indication that it was planning to do so.

On October 10, 2011, along with Dr. Cockburn’s reply reports, Oracle also served two “rebuttal” reports on damages from Dr. Kenneth Serwin, who had never previously submitted a

The Honorable William Alsup
October 12, 2011
Page 3

report in this case. But the Court gave the parties clear instructions on how to conduct damages expert discovery, and none of the Court’s directives permit any party to serve “rebuttal” reports. Moreover, even outside the context of damages expert discovery, neither party has served any “rebuttal” reports, on any issue, from any expert who had not previously submitted an initial report. Both parties have always confined themselves to serving reply reports from experts who submitted initial reports. Oracle’s service of the Serwin reports violates the parties’ consistent practices in addition to finding no support in the Court’s previous orders. Accordingly, Google respectfully requests leave to file a motion to strike those reports.

Sincerely,

/s/ Robert A. Van Nest


524

[Boies, Schiller & Flexner LLP letterhead]

October 12, 2011

The Honorable William Alsup
United States District Court, Northern District of California
450 Golden Gate Avenue
Courtroom 9, 19th Floor
San Francisco, California 94102

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

Dear Judge Alsup:

We have reviewed the opposition précis submitted by Google on October 12, 2011 (Dkt. 519). We write to correct three errors in Oracle’s précis dated October 10, 2011 (Dkt. 511), on which Google focuses. First, Google did produce documents for Mr. Bray in discovery, although Mr. Bray was never included in any initial disclosures by name. Second, Google disclosed Mr. Rizzo in its First Amended Rule 26 Disclosures in July, rather than in August, as we had erroneously concluded. Third, Google did produce the thirty-three license agreements late in discovery, but cited versions of the agreements bearing no document production numbers in its expert disclosures. Oracle regrets these errors and asks that the Court consider the précis solely on the basis of the corrected statements and Oracle’s other arguments.

Respectfully submitted,

/s/ Steven C. Holtzman


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