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Oracle v. Google - Trial Briefs, Special Verdict Forms, and Jury Instructions
Wednesday, October 19 2011 @ 08:00 AM EDT

As Oracle's case against Google moves closer to trial (how much closer we still won't know for several days because of the criminal trial Judge Alsup is handling), the parties are making the last of their significant pre-trial filings. Monday the parties each filed their trial briefs, explaining what they intend to prove at trial, separate special verdict forms (the parties could not reach agreement on these) and proposed jury instructions, including pretrial motions from the parties regarding their disagreements over those instructions.

Today we will look at the trial briefs and the special verdict forms. Because of the length of the jury instructions and the related pretrial memoranda, which combined run to over 250 pages, we will save those for later.

Oracle's Trial Brief (536 [PDF; text]) and Google's Trial Brief (534 [PDF; text]) not surprisingly have markedly different views of the facts and the law. Here are some observations that I believe will be core to the outcome of this case:

  1. API Specifications vs. API Code - Oracle argues that Google not only, in 37 instances, copied Java APIs, Oracle also alleges that, in implementing those APIs in source code form, Google infringed the copyright in the API specifications. While source code and compiled object code of that source code are considered covered by the same copyright, it will be interesting to see on what basis Oracle can show that the writing of source code that implements a design specification constitutes copyright infringement of the specification.
  2. Google's Copyright Defenses - Although there may be some inherent weakness in Oracle's copyright infringement assertions, the question is whether any of Google's defenses to the assertion of copyright infringement will fare any better. Google's primary, and probably strongest claim, is that what Google allegedly copied is not protected by copyright. Google's fair use or de minimis copying defenses will likely, in my opinion, be less effective.
  3. Skip To Comments


  4. Direct Patent Infringement - Oracle's patent infringement assertions are no sure fire bet. To show infringement Oracle must demonstrate that the Android code implements every element of at least one claim of a patent, not simply the general concept of the patent. Google argues that it does not implement every element of any of the claims of any of the patents. Non-infringement will likely be a stronger argument for Google than invalidity, simply because it will tend to be more straightforward. However, Google has at least gotten the USPTO to reject the asserted claims on a first office action, which is certainly a better position than having the USPTO refuse the reexamination requests.
  5. Indirect Patent Infringement - Unless Oracle can prove direct infringement by Google, it will be very difficult for Oracle to find contributory infringement by Google. The exception would be if Android is infringing as installed in the devices but not infringing without being installed. In addition, if Google is found to directly infringe, then to the extent Google is held liable for the infringement of Android devices, Oracle doesn't get a second bite at the apple from the device manufacturers or for Google contributing to the infringement by the device manufacturers.
  6. Willful Patent Infringement - To find willful infringement there must first be a finding of infringement. Then Oracle will have the burden of demonstrating when Google was put on notice of Google's alleged infringement of the asserted patents. It is not enough for Oracle to simply say Google was aware of the Sun/Oracle patents, generally. This also plays into the issue of damages for past infringement and Google's estoppel (Google was led to believe it could infringe the Sun patents without threat from Sun) and laches (Sun/Oracle knew of the Android infringement for years but sat on their rights) defenses for such past infringement.
  7. Damages - Oracle appears to indicate total past damages of $263 million but is less specific with respect to on-going damages, simply indicating it "could" be several hundred million dollars a year. What is curious is, if Google's interpretation of the Oracle damage reports is correct, Oracle appears to be asking for more in copyright damages than in patent damages. Given the limited scope of the alleged copyright infringement, this strikes me as backwards. Also, keep in mind that four of the six asserted patents have a remaining life of five years or less. When these patents start to expire, any on-going royalties would have to be reduced.
  8. Injunctive Relief - Oracle has every right to seek injunctive relief, but post-eBay it would be a bit surprising if Oracle could obtain an injunction because a number of the balancing factors would favor Google.

There are some really interesting issues that will be presented in this case, and the above are just a sampling. No word recently on further settlement discussions, so it is unclear whether that remains a possibility. If not, then expect a battle on every issue that remains unresolved.

One immediate area of battle is over the special verdict forms. These, along with the jury instructions, indicate to the jury the questions they are to answer. Oracle and Google each submitted their own special verdict forms. (531, Appendix A (Oracle), Appendix B (Google) [PDF; text). You will note the differences in the two approaches right from the beginning. For example, on the issue of copyright infringement Oracle asks:

1. Has Oracle proven by a preponderance of the evidence (i.e., “more likely than not”) that Google infringed Oracle’s copyrights in the Java software platform by (1) copying elements of the 37 Java API design specifications into Android software or documentation, (2) creating derivative works within Android based on the 37 Java API design specifications, and/or (3) copying elements of the 12 Java software code files into Android?
but Google asks:

1. Has Oracle proven by a preponderance of the evidence that any of the following infringe Oracle’s registered copyrights in the Java 2 SE software platform by copying a sufficient amount of original, protectable elements Oracle’s copyrighted works?

a. Android’s API design specifications (documentation) for the 37 API packages at issue

...

b. The 12 Android software code files

...

c. Android’s implementation (code libraries) of the 37 API packages at issue

These different approaches reflect how the parties see the issues and how they want the jury to see the issues, and they will need to get resolved before the trial.

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

Docket

 531 – Filed and Effective: 10/14/2011
Proposed Form of Verdict
Document Text: Proposed Form of Verdict by Oracle America, Inc. Joint Submission of Proposed Special Verdict Forms. (Attachments: # 1 Appendix A (Oracle's Special Verdict Forms-Liability & Damages), # 2 Appendix B (Google's Special Verdict Forms-Liability & Damages))(Muino, Daniel) (Filed on 10/14/2011) (Entered: 10/14/2011)

532 – Filed and Effective: 10/14/2011
Administrative Motion
Document Text: Administrative Motion to File Under Seal Oracle's Trial Brief and Exhibits B, C, D and E to Declaration of Marc David Peters in Support of Oracle's Trial Brief filed by Oracle America, Inc.. (Jacobs, Michael) (Filed on 10/14/2011) (Entered: 10/14/2011)

533 – Filed and Effective: 10/14/2011
Administrative Motion
Document Text: Administrative Motion to File Under Seal Portion of Trial Brief filed by Google Inc.. (Attachments: # 1 Declaration of Daniel Purcell, # 2 Proposed Order)(Van Nest, Robert) (Filed on 10/14/2011) (Entered: 10/14/2011)

534 – Filed and Effective: 10/14/2011
TRIAL BRIEF
Document Text: TRIAL BRIEF [PUBLIC VERSION] by Google Inc.. (Van Nest, Robert) (Filed on 10/14/2011) (Entered: 10/14/2011)

535 – Filed and Effective: 10/14/2011
PRETRIAL MEMORANDUM
Document Text: PRETRIAL MEMORANDUM Defendant Google Inc.'s Memorandum In Support of Its Disputed Jury Instructions by Google Inc.. (Van Nest, Robert) (Filed on 10/14/2011) (Entered: 10/14/2011)

536 – Filed and Effective: 10/14/2011
TRIAL BRIEF
Document Text: TRIAL BRIEF (REDACTED) by Oracle America, Inc.. (Jacobs, Michael) (Filed on 10/14/2011) (Entered: 10/14/2011)

537 – Filed and Effective: 10/15/2011
Administrative Motion
Document Text: Amended Administrative Motion to File Under Seal Portions of Oracle's Trial Brief filed by Oracle America, Inc.. (Jacobs, Michael) (Filed on 10/15/2011) (Entered: 10/15/2011)

538 – Filed and Effective: 10/15/2011
PRETRIAL MEMORANDUM
Document Text: PRETRIAL MEMORANDUM Oracle America, Inc.'s Memorandum of Law in Support of Disputed Jury Instructions by Oracle America, Inc.. (Muino, Daniel) (Filed on 10/15/2011) (Entered: 10/15/2011)

539 – Filed and Effective: 10/15/2011
Proposed Jury Instructions
Document Text: Proposed Jury Instructions by Oracle America, Inc. Parties' Joint Proposed Jury Instructions. (Muino, Daniel) (Filed on 10/15/2011) (Entered: 10/15/2011)

540 – Filed and Effective: 10/16/2011
NOTICE
Document Text: NOTICE REGARDING ADMINISTRATIVE MOTIONS TO FILE DOCUMENTS UNDER SEAL re 533 Administrative Motion to File Under Seal Portion of Trial Brief filed by Google Inc., 507 Joint Administrative Motion to File Under Seal filed by Oracle America, Inc., 537 Amended Administrative Motion to File Under Seal Portions of Oracle's Trial Brief filed by Oracle America, Inc., 532 Administrative Motion to File Under Seal Oracle's Trial Brief and Exhibits B, C, D and E to Declaration of Marc David Peters in Support of Oracle's Trial Brief filed by Oracle America, Inc.. Signed by Judge Alsup on October 16, 2011. (whalc1, COURT STAFF) (Filed on 10/16/2011) (Entered: 10/16/2011)

541 – Filed and Effective: 10/17/2011
NOTICE
Document Text: NOTICE of Appearance by Jennifer Brenda Bonneville of Third-Party Motorola Mobility, Inc. (Bonneville, Jennifer) (Filed on 10/17/2011) (Entered: 10/17/2011)

542 – Filed and Effective: 10/17/2011
RESPONSE
Document Text: RESPONSE to the 507 Joint Administrative Request to File Documents Under Seal (Docket No. 507) - Declaration of Thomas G. Pasternak by Motorola Mobility, Inc.. (Attachments: # 1 Proposed Order)(Bonneville, Jennifer) (Filed on 10/17/2011) Modified on 10/18/2011 (wsn, COURT STAFF). (Entered: 10/17/2011)


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

Documents

531

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
SPECIAL VERDICT FORMS

_____________________________

JOINT SUBMISSION OF PROPOSED SPECIAL VERDICT FORM

Pursuant to the Court’s Guidelines for Trial and Final Pretrial Conference in Civil Jury Cases, the parties hereby submit their proposed special verdict forms for the liability and damages phases of the trial. As the parties were unable to reach agreement on the content of these verdict forms, each party has submitted its own separate set. Oracle’s proposed special verdict forms are attached as Appendix A; Google’s proposed special verdict forms are attached as Appendix B.

1

Dated: October 14, 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]
333 Main Street [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.

2

Dated: October 14, 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]
710 Sansome 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]

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

Attorneys for Defendant
GOOGLE INC.

3

ATTESTATION

I, Daniel P. Muino, am the ECF User whose ID and password are being used to file the JOINT SUBMISSION OF PROPOSED SPECIAL VERDICT FORMS. In compliance with General Order 45, X.B., I hereby attest that Matthias Kamber has concurred in this filing.

Date: October 14, 2011

/s/ Daniel P. Muino

4


APPENDIX A

Oracle's Special Verdict Forms-Liability & Damages

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

SPECIAL VERDICT FORM

LIABILITY PHASE

_____________________________________________

We, the jury in the above-entitled action, unanimously find the following on the questions submitted to us:

Oracle’s Claim for Copyright Infringement

1. Has Oracle proven by a preponderance of the evidence (i.e., “more likely than not”) that Google infringed Oracle’s copyrights in the Java software platform by (1) copying elements of the 37 Java API design specifications into Android software or documentation, (2) creating derivative works within Android based on the 37 Java API design specifications, and/or (3) copying elements of the 12 Java software code files into Android?

a. Copying the 37 Java API design specifications

Yes _______ (finding for Oracle) No _______ (finding for Google)

b. Derivative works based on the 37 Java API design specifications

Yes _______ (finding for Oracle) No _______ (finding for Google)

c. Copying the 12 Java software code files

Yes _______ (finding for Oracle) No _______ (finding for Google)

If you answered “Yes” to any of the above questions, proceed to Question No. 2. Otherwise, skip to Question No. 3.

2. Has Oracle proven by a preponderance of the evidence that mobile device companies, mobile service providers, developers, or end-users other than Google infringed Oracle’s copyrights in the Java software platform through their use of Android?

Yes _______ (finding for Oracle) No _______ (finding for Google)

If you answered “Yes” to the above question, proceed to question No. 2a. If not, please skip to Question No. 3.

a. Has Oracle proven by a preponderance of the evidence that Google vicariously infringed as a result of the third-party infringement you found in Question No. 2?

Yes _______ (finding for Oracle) No _______ (finding for Google)

b. Has Oracle proven by a preponderance of the evidence that Google intentionally induced or materially contributed to the third-party infringement you found in Question No. 2?

Yes _______ (finding for Oracle) No _______ (finding for Google)

Google’s Affirmative Defenses to Copyright Infringement

3. Has Google proven by a preponderance of the evidence that its use of copyrighted elements of Java constituted fair use?

Yes _______ (finding for Oracle) No _______ (finding for Google)

Proceed to Question No. 4.

Oracle’s Claims for Patent Infringement

4. Has Oracle proven by a preponderance of the evidence that Google directly infringes one or more valid asserted claims of the patents-in-suit by making, using, and/or distributing the accused Android software and Android devices?

’104 Patent Yes _______ No _______

’205 Patent Yes _______ No _______

’702 Patent Yes _______ No _______

’720 Patent Yes _______ No _______

’520 Patent Yes _______ No _______

2

’476 Patent Yes _______ No _______

Proceed to Question No. 5.

5. Has Oracle proven by a preponderance of the evidence that Google, by supplying the Android software to third-parties, contributed to the infringement of the asserted patent claims by mobile device companies, mobile service providers, developers, or end-users?

’104 Patent Yes _______ No _______

’205 Patent Yes _______ No _______

’702 Patent Yes _______ No _______

’720 Patent Yes _______ No _______

’520 Patent Yes _______ No _______

’476 Patent Yes _______ No _______

Proceed to Question No. 6.

6. Has Oracle proven by a preponderance of the evidence that Google actively induced infringement of the asserted patent claims by mobile device companies, mobile service providers, developers, or end-users that use the Android software or Android devices?

’104 Patent Yes _______ No _______

’205 Patent Yes _______ No _______

’702 Patent Yes _______ No _______

’720 Patent Yes _______ No _______

3

’520 Patent Yes _______ No _______

’476 Patent Yes _______ No _______

Proceed to Question No. 7.

7. If you found in Questions 4-6 that Google has infringed any of the asserted claims of any of the patents-in-suit, has Oracle proven by clear and convincing evidence that Google’s infringement was willful?

Yes _______ No _______

Proceed to Question No. 8.

Google’s Affirmative Defenses to Patent Infringement

8. Has Google proven by clear and convincing evidence that the asserted patent claims are invalid?

’104 Patent

Claim 11: Yes _______ No _______

Claim 27: Yes _______ No _______

Claim 29: Yes _______ No _______

Claim 39: Yes _______ No _______

Claim 40: Yes _______ No _______

Claim 41: Yes _______ No _______

’205 Patent

Claim 1: Yes _______ No _______

Claim 2: Yes _______ No _______

’702 Patent

Claim 1: Yes _______ No _______

4

Claim 6: Yes _______ No _______

Claim 7: Yes _______ No _______

Claim 12: Yes _______ No _______

Claim 13: Yes _______ No _______

Claim 15: Yes _______ No _______

Claim 16: Yes _______ No _______

’720 Patent

Claim 1: Yes _______ No _______

Claim 6: Yes _______ No _______

Claim 10: Yes _______ No _______

Claim 19: Yes _______ No _______

Claim 21: Yes _______ No _______

Claim 22: Yes _______ No _______

’520 Patent

Claim 1: Yes _______ No _______

Claim 8: Yes _______ No _______

Claim 12: Yes _______ No _______

Claim 20: Yes _______ No _______

’476 Patent

Claim 14: Yes _______ No _______

Have the presiding juror sign and date this form.

Signed: ________________________________ Date: ___________________________

5

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

SPECIAL VERDICT FORM

DAMAGES PHASE

_____________________________________________

We, the jury in the above-entitled action, unanimously find the following on the questions submitted to us:

Actual Damages for Copyright Infringement

1. What is the dollar amount that Oracle is entitled to receive from Google to compensate Oracle for its actual damages under its copyright infringement claim, in the form of EITHER a fair market value license for the copyright infringement OR lost profits?

FAIR MARKET VALUE LICENSE: $_________________________________.

OR,

LOST PROFITS: $_________________________________________________.

Infringer’s Profits for Copyright Infringement

2. What is the dollar amount that Oracle is entitled to receive from Google as infringer’s profits under Oracle’s copyright infringement claim?

$________________________________________________________________.
Damages for Patent Infringement

3. What is the dollar amount that Oracle is entitled to receive from Google to compensate Oracle for its damages under its patent infringement claims?

For the ’104 Patent: $____________________________________________.

For the ’205 Patent: $____________________________________________.

For the ’702 Patent: $____________________________________________.

For the ’720 Patent: $____________________________________________.

For the ’520 Patent: $____________________________________________.

For the ’476 Patent: $____________________________________________.

Have the presiding juror sign and date this form.

Signed: ________________________________ Date: ___________________________


APPENDIX B

Google's Special Verdict Forms-Liability & Damages

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

SPECIAL VERDICT FORM

LIABILITY PHASE

_____________________________________________

We, the jury in the above-entitled action, unanimously find the following on the questions submitted to us:

Oracle’s Claims for Copyright Infringement

1. Has Oracle proven by a preponderance of the evidence that any of the following infringe Oracle’s registered copyrights in the Java 2 SE software platform by copying a sufficient amount of original, protectable elements Oracle’s copyrighted works?

a. Android’s API design specifications (documentation) for the 37 API packages at issue

Yes_______ (finding for Oracle) No_______ (finding for Google)

b. The 12 Android software code files

Yes_______ (finding for Oracle) No_______ (finding for Google)

c. Android’s implementation (code libraries) of the 37 API packages at issue

Yes_______ (finding for Oracle) No_______ (finding for Google)

If you answered “Yes” to any of the above questions, proceed to question No. 2. If not, please skip to Question No. 5.

2. Has Oracle proven by a preponderance of the evidence that any mobile device company, developer, or end-user other than Google infringed Oracle’s registered copyrights in the Java 2 SE software platform by copying a sufficient amount of original, protectable elements of Oracle’s copyrighted works by copying Android’s API design specifications (documentation) for the 37 API packages at issue?

Yes_______ (finding for Oracle) No_______ (finding for Google)

If you answered “Yes” to the above question, proceed to question No. 2a. If not, please skip to Question No. 3.

a. Has Oracle proven by a preponderance of the evidence that Google vicariously infringed as a result of the infringement you found in question 2?

Yes_______ (finding for Oracle) No_______ (finding for Google)

b. Has Oracle proven by a preponderance of the evidence that Google intentionally induced or materially contributed to the infringement you found in question 2?

Yes_______ (finding for Oracle) No_______ (finding for Google)

Proceed to Question No. 3.

3. Has Oracle proven by a preponderance of the evidence that any mobile device company, developer, or end-user other than Google infringed Oracle’s registered copyrights in the Java 2 SE software platform by copying a sufficient amount of original, protectable elements of Oracle’s copyrighted works by copying the 12 Android software code files?

Yes_______ (finding for Oracle) No_______ (finding for Google)

If you answered “Yes” to the above question, proceed to question No. 3a. If not, please skip to Question No. 5.

a. Has Oracle proven by a preponderance of the evidence that Google vicariously infringed as a result of the infringement you found in question 3?

Yes_______ (finding for Oracle) No_______ (finding for Google)

b. Has Oracle proven by a preponderance of the evidence that Google intentionally induced or materially contributed to the infringement you found in question 3?

Yes_______ (finding for Oracle) No_______ (finding for Google)

Proceed to Question No. 4.

2

4. Has Oracle proven by a preponderance of the evidence that any mobile device company, developer, or end-user other than Google infringed Oracle’s registered copyrights in the Java 2 SE software platform by copying a sufficient amount of original, protectable elements of Oracle’s copyrighted works by copying Android’s implementation (code libraries) of the 37 API packages at issue?

Yes_______ (finding for Oracle) No_______ (finding for Google)

If you answered “Yes” to the above question, proceed to question No. 4. If not, please skip to Question No. 5.

a. Has Oracle proven by a preponderance of the evidence that Google vicariously infringed as a result of the infringement you found in question 4?

Yes_______ (finding for Oracle) No_______ (finding for Google)

b. Has Oracle proven by a preponderance of the evidence that Google intentionally induced or materially contributed to the infringement you found in question 4?

Yes_______ (finding for Oracle) No_______ (finding for Google)

Proceed to Question No. 5.

Google’s Affirmative Defenses to Copyright Infringement

5. Has Google proven by a preponderance of the evidence that its use of protectable elements of the Java 2 SE software product, if any, constitutes fair use?

Yes (finding for Google) No (finding for Oracle)

Proceed to Question No. 6.

6. Laches

a. Do you find that Google has proven by a preponderance of the evidence that Sun (whether under its former name of Sun Microsystems or its current name of Oracle America), delayed filing suit for an unreasonable and inexcusable length of time from the time Sun knew or reasonably should have know it had a claim for copyright infringement against Google?

Yes (finding for Google) No (finding for Oracle)

3

b. If you answered yes to Question 15(a), did this delay materially prejudice Google?

Yes (finding for Google) No (finding for Oracle)

Proceed to Question No. 7.

7. Equitable Estoppel

a. Do you find that Google proved by a preponderance of the evidence that Sun’s communications, conduct or inaction (whether under its former name of Sun Microsystems or its current name of Oracle America) mislead Google into believing that Sun did not intend to assert its copyrights against Google?

Yes (finding for Google) No (finding for Oracle)

b. If you answered yes to Question 7(a), do you find that Google relied on Sun’s misleading communications, conduct or inaction?

Yes (finding for Google) No (finding for Oracle)

c. If you answered yes to Question 7(b), do you find that Google will be materially prejudiced if Oracle is permitted to assert the copyrights-in-suit against Google?

Yes (finding for Google) No (finding for Oracle)

Proceed to Question No. 8.

8. Do you find that Google has proven by a preponderance of the evidence that through its language or conduct, Sun (whether under its former name of Sun Microsystems or its current name of Oracle America), consented to Google’s use of the asserted copyrights?

Yes (finding for Google) No (finding for Oracle)

Proceed to Question No. 9.

4

9. Do you find that Google has proven by a preponderance of the evidence that Sun (whether under its former name of Sun Microsystems or its current name of Oracle America), waived any of its rights to enforce the asserted copyrights or to collect compensation for any of the asserted copyrights?

Yes (finding for Google) No (finding for Oracle)

Proceed to Question No. 10.

Oracle’s Claims for Patent Infringement

10. Has Oracle proven by a preponderance of the evidence that Google made, used, sold, or offered for sale mobile devices that include every requirement of the following asserted claims:

’104 Patent

Claim 11: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 27: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 29: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 39: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 40: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 41: Yes_______(finding for Oracle) No_______ (finding for Google)

’205 Patent

Claim 1: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 2: Yes_______(finding for Oracle) No_______ (finding for Google)

’720 Patent

Claim 1: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 6: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 10: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 19: Yes_______(finding for Oracle) No_______ (finding for Google)

5

Claim 21: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 22: Yes_______(finding for Oracle) No_______ (finding for Google)

’476 Patent

Claim 14: Yes_______(finding for Oracle) No_______ (finding for Google)

Proceed to Question No. 11.

11. Has Oracle proven by a preponderance of the evidence that Google made, used, sold, or offered for sale the Android SDK that includes every requirement of the following asserted claims:

’104 Patent

Claim 11: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 27: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 29: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 39: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 40: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 41: Yes_______(finding for Oracle) No_______ (finding for Google)

’205 Patent

Claim 1: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 2: Yes_______(finding for Oracle) No_______ (finding for Google)

’702 Patent

Claim 1: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 6: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 7: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 12: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 13: Yes_______(finding for Oracle) No_______ (finding for Google)

6

Claim 15: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 16: Yes_______(finding for Oracle) No_______ (finding for Google)

’720 Patent

Claim 1: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 6: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 10: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 19: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 21: Yes_______(finding for Oracle) No_______ (finding for Google)

Claim 22: Yes_______(finding for Oracle) No_______ (finding for Google)

’476 Patent

Claim 14: Yes_______(finding for Oracle) No_______ (finding for Google)

12. Has Oracle proven by a preponderance of the evidence that any mobile device manufacturer, service provide, application developer, or end-user other than Google infringed Claim 11 of the ’104 Patent?

Yes_______(finding for Oracle) No_______(finding for Google)

If you answered “Yes” to the above question, proceed to the next question. If not, please skip to Question No. 13.

Yes____(finding for Oracle) No____(finding for Google)

b. Has Oracle proven by a preponderance of the evidence that Google contributed to the infringement you found in Question 12?

Yes____(finding for Oracle) No____(finding for Google)

[APPLY THIS APPROACH FOR ANY OTHER INDIRECT INFRINGEMENT CLAIMS FOR WHICH THERE IS A SUFFICIENT BASIS TO HAVE THE JURY RENDER A DECISION]

7

Proceed to Question No. 13.
Willful Patent Infringement

13. Has Oracle proven that it is highly probable that from an objective point of view the defenses put forth by Google failed to raise any substantial question with regard to infringement, validity or enforcement of the ’104 Patent?

Yes________(finding for Oracle) No________ (finding for Google)

If your answer to question 4 was “Yes”, please answer question 13.a. If your answer to question 13 was “No”, please proceed to question 14.

Yes________(finding for Oracle) No________ (finding for Google)

If your answer to question 13 and 13.a was “Yes”, as of what date do you find that Google's infringement became willful?

___________________________________________

14. Has Oracle proven that it is highly probable that from an objective point of view the defenses put forth by Google failed to raise any substantial question with regard to infringement, validity or enforcement of the ’205 Patent?

Yes________(finding for Oracle) No________ (finding for Google)

If your answer to question 14 was “Yes”, please answer question 14.a. If your answer to question 16 was “No”, please proceed to question 15.

a. Has Oracle proven that it is highly probable that Google actually knew, or it was so obvious that Google should have known, that its actions constituted infringement of the ’205 Patent and that that patent was valid?

Yes________(finding for Oracle) No________ (finding for Google)

If your answer to question 14 and 14.a was “Yes”, as of what date do you find that Google's infringement became willful?

___________________________________________

8

15. Has Oracle proven that it is highly probable that from an objective point of view the defenses put forth by Google failed to raise any substantial question with regard to infringement, validity or enforcement of the ’702 Patent?

Yes________(finding for Oracle) No________ (finding for Google)

If your answer to question 15 was “Yes”, please answer question 15.a. If your answer to question 15 was “No”, please proceed to question 16.

a. Has Oracle proven that it is highly probable that Google actually knew, or it was so obvious that Google should have known, that its actions constituted infringement of the ’702 Patent and that that patent was valid?

Yes________(finding for Oracle) No________ (finding for Google)

If your answer to question 15 and 15.a was “Yes”, as of what date do you find that Google's infringement became willful?

___________________________________________

16. Has Oracle proven that it is highly probable that from an objective point of view the defenses put forth by Google failed to raise any substantial question with regard to infringement, validity or enforcement of the ’720 Patent?

Yes________(finding for Oracle) No________ (finding for Google)

If your answer to question 16 was “Yes”, please answer question 16.a. If your answer to question 16 was “No”, please proceed to question 17.

a. Has Oracle proven that it is highly probable that Google actually knew, or it was so obvious that Google should have known, that its actions constituted infringement of the ’720 Patent and that that patent was valid?

Yes________(finding for Oracle) No________ (finding for Google)

If your answer to question 16.a was “Yes”, as of what date do you find that Google's infringement became willful?

___________________________________________

17. Has Oracle proven that it is highly probable that from an objective point of view the defenses put forth by Google failed to raise any substantial question with regard to infringement, validity or enforcement of the ’520 Patent?

Yes________(finding for Oracle) No________ (finding for Google)

9

If your answer to question 17 was “Yes”, please answer question 17.a. If your answer to question 17 was “No”, please proceed to question 18.

a. Has Oracle proven that it is highly probable that Google actually knew, or it was so obvious that Google should have known, that its actions constituted infringement of the ’520 Patent and that that patent was valid?

Yes________(finding for Oracle) No________ (finding for Google)

If your answer to question 17 and 17.a was “Yes”, as of what date do you find that Google's infringement became willful?

___________________________________________

18. Has Oracle proven that it is highly probable that from an objective point of view the defenses put forth by Google failed to raise any substantial question with regard to infringement, validity or enforcement of the ’476 Patent?

Yes________(finding for Oracle) No________ (finding for Google)

If your answer to question 18 was “Yes”, please answer question 18.a. If your answer to question18.a was “No”, please proceed to question 19.

a. Has Oracle proven that it is highly probable that Google actually knew, or it was so obvious that Google should have known, that its actions constituted infringement of the ’476 Patent and that that patent was valid?

Yes________(finding for Oracle) No________ (finding for Google)

If your answer to question 18 and 18.a was “Yes”, as of what date do you find that Google's infringement became willful?

___________________________________________

Google’s Affirmative Defenses to Patent Infringement

19. Has Google proven by clear and convincing evidence that the asserted patent claims are invalid as anticipated?

’104 Patent

a. Has Google proven by clear and convincing evidence that the asserted claims were anticipated by David Gries’s 1971 textbook, “Compiler Construction for Digital Computers,” John Wiley & Sons, Inc.

Claim 11: Yes_______(finding for Google) No_______ (finding for Oracle)

10

Claim 27: Yes_______(finding for Google) No_______ (finding for Oracle)

Claim 29: Yes_______(finding for Google) No_______ (finding for Oracle)

Claim 39: Yes_______(finding for Google) No_______ (finding for Oracle)

Claim 40: Yes_______(finding for Google) No_______ (finding for Oracle)

Claim 41: Yes_______(finding for Google) No_______ (finding for Oracle)

[APPLY THIS APPROACH FOR ANY ANTICIPATION DEFENSES TRIED TO THE JURY]

Proceed to Question No. 20.

20. The ultimate legal conclusion on the obviousness question will be made by the court. However, in order for the court to do so, you must answer the following preliminary factual questions:1

’720 Patent

a. What was the level of ordinary skill in the field that someone would have had at the time the claimed invention was made? (check the applicable answer)

______[Oracle’s contention]
______[Google’scontention]
______[other, specify ]

b. What was the scope and content of the prior art at the time of the claimed invention? (check the applicable answer)

______[set forth what Google has offered as the invalidating prior art]
______[set forth what Oracle asserts was within the scope and content of the prior art]
______[other, specify ]

c. What difference, if any, existed between the claimed invention and the prior art at the time of the claimed invention?

________________________

1 This formulation of the verdict form for obviousness is taken from the Sample Verdict Form from the Model Patent Jury Instructions for the Northern District of California corresponding to the use of Alternative 1 of the model instruction regarding Obviousness, which Google proposes adopting.

11

______[set forth Oracle’s contention as to the difference]
______[other, specify ]

d. Which of the following factors has been established by the evidence with respect to the claimed invention: (check those that apply) [verdict form should list only those factors for which a prima facie showing has been made]:

______commercial success of a product due to the merits of the claimed invention
______a long felt need for the solution that is provided by the claimed invention
______unsuccessful attempts by others to find the solution that is provided by the claimed invention
______copying of the claimed invention by others unexpected and superior results from the claimed invention
______acceptance by others of the claimed invention as shown by praise from others in the field or from the licensing of the claimed invention
______independent invention of the claimed invention by others before or at about the same time as the named inventor thought of it
______[other factor(s) indicating obviousness or nonobviousness— describe the factor(s) ]

[APPLY THIS APPROACH FOR ANY OBVIOUSNESS DEFENSES TRIED TO THE JURY]

Proceed to Question No. 21.

21. Laches

a. Do you find that Google has proven by a preponderance of the evidence that Sun (whether under its former name of Sun Microsystems or its current name of Oracle America), delayed filing suit for an unreasonable and inexcusable length of time from the time Sun knew or reasonably should have know it had a claim for patent infringement against Google?

Yes (finding for Google) No (finding for Oracle)

b. If you answered yes to Question 18(a), did this delay materially prejudice Google?

Yes (finding for Google) No (finding for Oracle)

Proceed to Question No. 22.

12

22. Equitable Estoppel

a. Do you find that Google proved by a preponderance of the evidence that Sun’s communications, conduct or inaction (whether under its former name of Sun Microsystems or its current name of Oracle America) misled Google into believing that Sun did not intend to assert its patents against Google?

Yes (finding for Google) No (finding for Oracle)

b. If you answered yes to Question 19.a, do you find that Google relied on Sun’s misleading communications, conduct or inaction?

Yes (finding for Google) No (finding for Oracle)

c. If you answered yes to Question 19.b, do you find that Google will be materially prejudiced if Oracle is permitted to assert the patents-in-suit against Google?

Yes (finding for Google) No (finding for Oracle)

Proceed to Question No. 23.

23. Do you find that Google has proven by a preponderance of the evidence that through its language or conduct, Sun (whether under its former name of Sun Microsystems or its current name of Oracle America), consented to Google’s use of the asserted patents?

Yes (finding for Google) No (finding for Oracle)

Proceed to Question No. ___.

24. Do you find that Google has proven by clear and convincing evidence that Sun (whether under its former name of Sun Microsystems or its current name of Oracle America), waived any of its rights to enforce the asserted patents or to collect compensation for any of the asserted patents?

Yes (finding for Google) No (finding for Oracle)
Have the presiding juror sign and date this form.

Signed: ________________________________ Date: ___________________________

13

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

SPECIAL VERDICT FORM

DAMAGES PHASE

_____________________________________________

We, the jury in the above-entitled action, unanimously find the following on the questions submitted to us:

Actual Damages for Copyright Infringement

1. What dollar amount in damages, if any, has Oracle shown it more likely than not suffered as a result of copyright infringement by Google, in the form of EITHER a fair market value license for the copyright infringement OR lost profits?

Please fill in only ONE of these blanks:

FAIR MARKET VALUE LICENSE

$_________________________________.

OR,

LOST PROFITS:

$_________________________________________________.

Infringer’s Profits for Copyright Infringement

2. What dollar amount, if any, is Oracle entitled to receive from Google as infringer’s profits not taken into account in computing actual damages under Oracle’s copyright infringement claim?

$________________________________________________________________.
Damages for Patent Infringement

3. What dollar amount in damages, if any, has Oracle shown it is entitled to as a result of infringement of the following patents?

For the ’104 Patent: $___________________________

For the ’205 Patent: $___________________________

For the ’702 Patent: $___________________________

For the ’720 Patent: $___________________________

For the ’520 Patent: $___________________________

For the ’476 Patent: $___________________________

Have the presiding juror sign and date this form.

Signed: ________________________________ Date: ___________________________


534

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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

Case No. 3:10-cv-03561-WHA

GOOGLE'S TRIAL BRIEF

Judge: Hon. William Alsup

Date Comp. Filed: October 27, 2010

Trial Date: October 31, 2011

_____________________________

TABLE OF CONTENTS

Page

I. INTRODUCTION ...... 1

II. RELEVANT FACTUAL BACKGROUND ....... 3

III. LEGAL AND FACTUAL ISSUES TO BE TRIED ....... 7

A. Oracle will not prevail on its patent infringement claims ....... 7

1. The '476 patent ....... 8

2. The '720 patent ....... 9

3. The '205 patent ........ 10

4. The '104 patent ........ 10

5. The '520 patent ........ 11

6. The '702 patent ........ 12

B. Oracle will not prevail on its copyright infringement claim ...... 12

C. Google will prevail on its defenses of estoppel, waiver, laches, and implied license ...... 15

D. Even if it could prove liability, Oracle would not be entitled to substantial damages ...... 17

E. Oracle's willfulness case is a fiction ...... 20

F. No matter what, Oracle will not be entitled to an injunction ...... 21

IV. CASE MANAGEMENT ISSUES ...... 24

i

TABLE OF AUTHORITIES

Page(s)

Federal Cases

A.C Aukerman Co. v. R.L. Chaides Const. Co.
960 F.2d 1020 (Fed. Cir. 1992) ... 24

Akamai Techs., Inc. v. Limelight Networks, Inc.
2008 WL 364401 (D. Mass. Feb. 8, 2008) ... 25

Banco Industrial de Venezuela v. Credit Suisse
99 F.3d 1045 (11th Cir. 1996) ... 25

Board of Trustees, Sheet Metal Workers' Nat 7 Pension Fund v. Palladium Equity Partners, LLC
722 F. Supp. 2d 845 (E.D. Mich. 2010) ... 26

Brandon v. D.R. Horton, Inc.
07CV1256 J (POR), 2008 WL 2096883 (S.D. Cal. May 16, 2008) ... 26

Cedarapids, Inc. v. CMI Corp.
1999 WL 33656876 (N.D. Iowa 1999) ... 24

Daubert v. Merrell Dow Pharmaceuticals, Inc.
509 U.S. 579(1993) ... 19 eBay, Inc. v. MercExchange, LLC
547 U.S. 388 (2006) ... 21, 22, 23, 24

F.C. Cycles Intern., Inc. v. Fila Sport, S.p.A.
184 F.RD. 64 (D. Md. 1998) ... 26

Figgie Int 'I, Inc. v. Wilson Sporting Goods Co.
1987 WL 13574 (N.D. 111. 1987) ... 24

Global-Tech Appliances, Inc. v. SEB S.A.
131 S. Ct. 2060 (2011) ... 8

i4i Ltd. P 'ship v. Microsoft Corp.
598 F.3d 831 (Fed. Cir. 2010) ... 22

Lotus Dev. Corp. v. Borland Int'I, Inc.
49 F.3d 807 (1st Cir. 1995), aff'dbyan evenly divided court, 516 U.S. 233(1996) ... 14

McKesson Information Solutions LLC v. Trizetto Group, Inc.
2006 WL 940543 (D. Del. Apr. 11, 2006) ... 25

Mitel, Inc. v. Iqtel, Inc. 124 F.3d 1366 (10th Cir. 1997) ... 14

Newton v. Diamond
388 F.3d 1189 (9th Cir. 2004) ... 15

Panduit Corp. v. Stahlin Bros. Fibre Works, Inc. 575 F.2d 1152 (6th Cir. 1978) ... 19

Perfect 10, Inc. v. Google Inc.
653 F.3d 976 (9th Cir. 2011) ... 5, 21, 24

Qualcomm Inc. v. Broadcom Corp.
548 F.3d 1004 (Fed. Cir. 2008) ... 24

ii

TABLE OF AUTHORITIES
(cont'd)

Page(s)

Sega Enterprises Ltd v. Accolade, Inc.
977 F.2d 1510 (9th Cir. 1992) ... 13

Sony Computer Entm 't, Inc. v. Connectix Corp. 203 F.3d 596 (9th Cir. 2000) ... 14

Starr Int'I Co. v. Am. Int'I Group, Inc. 623 F. Supp. 2d 497 (S.D.N.Y. 2009) ... 24

Static Control Components, Inc. v. Lexmark Int 1, Inc.
749 F. Supp. 2d 542 (E.D. Ky. 2010) ... 24

Wang Labs., Inc. v. Mitsubishi Elecs. America, Inc.
103 F.3d 1571 (Fed. Cir. 1997) ... 24

WeddingChannel.Com, Inc. v. The Knot, Inc.
2004 WL 2984305 (S.D.N.Y. Dec. 23, 2004) ... 25

Federal Statutes

35U.S.C. §101 ... 8

35 U.S.C. § 102(b) ... 9, 13

35U.S.C. §251 ... 11

Other Authorities

Mitchell Patent Report H 73, 80 ... 8, 9

Paul Goldstein, Goldstein On Copyright § 10.5.1 (3d ed. 2011) ... 14

iii

I. INTRODUCTION

This lawsuit is an attempt to obtain through the courts what the company formerly known as Sun Microsystems (and now called "Oracle America") failed for years to achieve through innovation, negotiation, or even costly corporate acquisitions—a viable path to competing in the mobile computing market. Oracle missed that boat and now wants the benefit of Google's initiative and hard work, both on its own and with numerous partners. Oracle's lawsuit targeting Google's Android mobile operating platform rests on three equally rickety legs.

Patent infringement. Although it is still unclear how many, or which, patent claims will actually be tried, Oracle currently asserts that Google infringes 26 claims of six patents. Oracle alleges that the claimed inventions improve the performance and security of Android's Dalvik virtual machine. However many claims Oracle ultimately tries, either Oracle will fail to prove that Google infringes or Google will prove those claims invalid.

Copyright infringement. The two bases of Oracle's copyright infringement claim are (1) Google's inclusion in Android of code libraries supporting core Java-language application programming interfaces ("APIs") that Oracle and its expert agree are "fundamental to the design of the Java language" and "functionally necessary" to make use of that language; and (2) a handful of small portions of trivial code and comments, which Oracle alleges were directly copied. But the APIs are not copyrightable as a matter of law. They are purely functional mechanisms that facilitate use and preparation of code written in the Java language. The Court has already ruled that the short phrases comprising the names and "method signatures" of APIs are not copyrightable. Even if some aspect of the APIs were copyrightable, Google's inclusion in Android of the libraries that implement those APIs would be fair use, because the APIs are essential for compatibility and interoperability between Android and Java-language applications. Only nine lines of allegedly copied code was even enabled on Android devices, and all the allegedly copied code either has already been removed or disabled, or will be removed from the imminent next release of the Android software.

Even if Oracle's infringement claims had merit (and they don't), it would be inequitable to hold Google liable given the fact that Sun knew all along that Google was developing

1

Android, including the Dalvik virtual machine Oracle now claims is infringing. Despite this, for four years after breaking off its partnership negotiations with Google in 2006, Sun not only never suggested Google was infringing any Sun intellectual property, it went out of its way to publicly praise Android as the best thing ever to happen to its moribund Java platform. Sun had a public position of never using its patents offensively, and made numerous public statements that APIs were not copyrightable. When it acquired Sun, even Oracle publicly praised Android. Only when Oracle concluded it lacked the engineering skill to build its own "Java phone" did it choose Plan B—this lawsuit. Oracle's statements and acts should defeat liability.

Damages. Even if Oracle could prove liability on some of its claims and overcome the equitable defenses just discussed, it would not be entitled to significant damages. Oracle's expert, Dr. Iain Cockburn, insists Oracle is entitled to $404.9 million in damages for infringing the six patents-in-suit, even though in 2006—before Android became a runaway success—Sun offered Google full rights to what Oracle now claims is a portfolio of approximately 2,000 Java-related patents for just $28 million over three years. The features of the Dalvik virtual machine that allegedly infringe the patents-in-suit are hardly essential to Android; most of them were either not incorporated or not enabled in most releases of Android. Oracle admitted in discovery responses that none of those features was essential to Sun's own Java virtual machine, either.

Cockburn goes on to tentatively opine that Oracle is entitled to as much as $2.3 billion in copyright damages, even though Sun's modest $28 million demand would have included a copyright license as well. Cockburn arrives at this massive figure by crediting the Sun copyrights at issue with 100% of Android's advertising and applications revenue, and by awarding Sun lost profits that it never could have earned given its inability to develop commercially successful Java-related products. For years before Android's release, Sun had the opportunity to fill a yawning market void by releasing an Android-like mobile operating platform. It never did, for reasons having nothing to do with Google. Even after Android was announced, Sun tried and failed to develop a product to complement Android. Cockburn inflates his opinions about the supposed value of the infringing features with a flawed econometric model and a rigged consumer study that assumed the conclusions that Cockburn wished to draw.

2

If Oracle is entitled to any damages at all, that amount is closer to $50 million than billions.

Much has been said and written about this lawsuit; but in the end, all Oracle will prove is that eleventh-hour threats and delayed litigation are no substitute for innovation.

II. RELEVANT FACTUAL BACKGROUND

In 2005, Google acquired a small company called Android, Inc., intending to develop the world's first free, open, and complete (i.e., "full stack") operating platform for mobile devices. Google believed that such a platform would be customizable and adaptable and would appeal to device manufacturers. Eventually Google's idea would become the Android platform. In 2005, Google knew that it needed to partner with other market participants to develop Android—and that attracting more partners would boost Android's chances of success. With that goal in mind, Google entered into talks with numerous companies, including the plaintiff in this lawsuit, Sun— the company later purchased by Oracle Corporation and renamed "Oracle America."

Google considered partnering with Sun because of Sun's experience developing the free and open Java programming language and implementing "Java virtual machines" that enabled Java-language applications to run on various kinds of hardware. But Sun had never previously attempted to develop a full stack mobile operating platform—an underlying operating system, middleware, and applications, all working together. Sun's business and expertise was limited to middleware running on a given operating system and enabling third-party applications to work.

Not only did Sun's expertise provide only part of what Google needed, Google had other options. Whether or not it worked with Sun, Google could have used the freely available Java language. Google also seriously considered other languages, like C or C++. Those languages would have made Android speedier, but possibly less flexible than a Java-based system.

Google's discussions with Sun from late 2005 to April 2006 were not negotiations for an intellectual-property license. The deal that they discussed would have given both parties much more—a partnership role in developing a new mobile platform; the ability to realize profits from that platform as each of them saw fit; and access to each other's technology and personnel, in addition to a cross-license to some of each other's intellectual property. The license component alone would have given Sun the right to use substantial Google intellectual property, and would

3

have allowed Google to use the approximately 2,000 patents Oracle now contends relate to Java, not to mention all the Java-related copyrights and the trademarked Java brand—which Sun had always treated as the crown jewel of its Java holdings. Sun had a long-standing, publicly announced policy of using its patents only defensively, but was willing to go to court to prevent unauthorized use of the JAVA trademark or the ubiquitous Java coffee-cup logo.

By the end of April 2006, though other terms of their partnership remained unsettled, Sun had agreed to accept a payment from Google of $28 million over three years to compensate Sun for the risk of lost licensing revenue that might result from an open source Android [REDACTED]

[Footnotes not listed as they apply to redacted material.]

4

At that point, negotiations broke down over issues unrelated to money. Both Google and Sun wanted greater control over Android's development, with Google wanting to make the platform more open and Sun wanting restrictions that Google viewed as incompatible with open source. Another cause of the breakdown, according to Gupta, was that Sun (without telling Gupta or formally asserting infringement) brought to Google's attention certain patents unrelated to Android or the current lawsuit. But there is no dispute that, had these other issues been worked out, Sun would have been willing to partner with Google on Android for $28 million. [REDACTED]

After negotiations broke off, Google continued to develop Android with assistance from numerous other companies that made up the Open Handset Alliance. Google and the OHA used the freely available Java language and other open source materials, but avoided any proprietary Sun technology. The Android engineering team used some open source code from existing sources (including Java language API libraries available from the Apache Software Foundation under an open source license) and wrote some all-new code. For the bottom layer of its stack, the core operating system, Google used the open source Linux kernel. For the middleware layer, rather than using Sun's proprietary Java virtual machine, it designed its own "Dalvik" virtual machine, which can execute programs written in Java and other languages. (Google engineer Dan Bornstein took name "Dalvik" from a village on the north coast of Iceland.) Google made sure that no former Sun employees worked on Dalvik during its initial development.

During the 18 months between the end of negotiations with Google and Google's public announcement of Android in November 2007, Sun knew that Google was continuing to develop Android without Sun's help, including by designing the Dalvik virtual machine that Oracle now accuses of infringing its patents. But Sun never suggested that Google was infringing, insisted that Google needed to take a license before it could release Android, or identified any specific patents or copyrights to Google. Sun occasionally talked to Google about ways that Sun might join the Android ecosystem, but there were no further partnership or licensing discussions.

5

When Google publicly announced Android in November 2007, Sun didn't file a lawsuit; it didn't publicly condemn Android for having violated Sun's rights; it never even challenged Google privately or demanded that Google take some sort of license. Just the opposite: Sun publicly and enthusiastically supported Android. Schwartz congratulated Google in a blog post for having "just strapped another set of rockets to the [Java] community's momentum—and to the vision defining opportunity across our (and other) planets."9 Schwartz and Sun perceived Android as an opportunity to revive the application developer community's interest in Java and thus create more business opportunities for Sun. Sun had no confidence in its own ability to get a Java-based mobile handset to market.10 In fact, Sun had seen multiple, independent Android-related projects end in failure. [REDACTED]

For over two years, Google continued to develop Android while relying on Sun's public praise for the platform. In October 2008, Google released Android as free, open source software. Although Android offered a good variety of applications from the start, growth of the platform was slow. [REDACTED] Android really took off when it manufacturers of popular handsets began to adopt it, starting with the release of the Motorola Droid in November 2009. Since then, Android has grown steadily into one of the most popular smartphone platforms in the world.

In early 2009, Oracle confirmed that it was negotiating to buy Sun. That deal closed on January 27, 2010, with Oracle paying a reported $7.4 billion for Sun and all its assets. [REDACTED]

___________________________

9 GOOGLE-00-00000512.

10 Schwartz Dep. at 157.

[Remainder of footnotes not listed as they apply to redacted material.]

6

[REDACTED]

Only when that didn't bear fruit did Oracle, for the first time, begin rattling its litigation saber at Google. Oracle began suggesting to Google that Android infringed some of Sun's (now Oracle's) Java-related intellectual property. But even then, Oracle remained frustratingly vague, refusing to identify what component of Android infringed what Oracle intellectual property. After years of assurances and even encouragement from Sun, Oracle's contentions made no sense and Google therefore asked Oracle to specifically explain the basis of its infringement claims. But Oracle refused to offer any details.

It was not until July 20, 2010—almost three years after the release of Android's Software Development Kit and Schwartz's congratulatory blog post—that Oracle finally supplied details about its infringement assertions. Only then did Google hear for the first time a specific claim that a particular aspect of Android infringed an identified patent claim. Oracle filed this lawsuit less than a month later, on August 12, 2010.

III. LEGAL AND FACTUAL ISSUES TO BE TRIED

A. Oracle will not prevail on its patent infringement claims.

Oracle argues that Android's Dalvik virtual machine and the Dalvik VM's supporting set of core libraries, which are used to run applications on Android devices, practice the asserted claims of the six patents-in-suit.12 Critically, to prove the bulk of its patent infringement case, Oracle must rely on proof of acts by third parties, not Google. Oracle's direct infringement case includes occasional uses of accused devices and methods by Google employees and a minuscule number of Android phones Google once manufactured, but Google no longer makes any phones. It does not sell, and has never sold, the Android software. Accordingly, Oracle's patent case rests almost entirely on claims for contributory or induced infringement. To win on those

____________________________

12 U.S. Patent Nos. 6,192,476 (the '476 patent), 5,966,702 (the '702 patent), 7,426,720 (the '720 patent), RE 38,104 (the '104 patent), 6,910,205 (the '205 patent) & 6,061,520 (the '520 patent).

7

claims, Oracle must prove direct infringement by third parties plus contributory infringement or inducement by Google. To prove Google contributed to or induced infringement of another, Oracle will have to show that Google had knowledge "of the existence of the patent that is infringed."13 Oracle, which steadfastly refused to notify Google of any allegedly relevant patents until July 20, 2010—three weeks before filing suit—will not be able to make that showing.

Even if it could get over that hurdle, Oracle's infringement case will fail because it rests on several false premises. Oracle first mischaracterizes Google's Dalvik VM as a Java VM, when the Dalvik VM was created independently by Google engineers without reference to any proprietary Sun materials. Oracle's infringement theories also improperly alter claim terms— expanding or narrowing them depending on which construction favors Oracle at any given time—and ignore relevant intrinsic evidence. Just as important, each of the patents-in-suit is invalid over prior art that clearly discloses all the core concepts and techniques claimed, most notably the virtual machine concept, which was known and had been used for decades prior to its use at Sun. And several of the asserted claims attempt to cover non-patentable subject matter— transitory propagating signals—and are thus invalid under 35 U.S.C. § 101. As the Court knows, the U.S. Patent and Trademark Office ("PTO") granted Google's requests for reexamination of all six patents-in-suit. Thus far the PTO has preliminarily rejected every asserted claim of four of the patents-in-suit, with a preliminary ruling on a fifth patent still to come.

1. The '476 patent

The '476 patent relates to the security protocol for the Java ME platform. It purports to implement the "AccessController" class, which checks the "ProtectionDomain" class to determine whether .class files should be given permission to perform a particular action. Oracle has no basis for even asserting this patent against Google, since the accused functionality is not currently implemented in any accused product.

Oracle's own infringement expert, Dr. John Mitchell, admitted in his report that Google has never implemented the accused functionality disclosed in the '476 patents.14 Mitchell even

______________________________

13 Global-Tech Appliances, Inc. v. SEBS.A., 131 S. Ct. 2060, 2068 (2011).

14 Mitchell Patent Report || 73, 80 ("If Google chooses to provide fine-grained security," "the best known approach" is the one in the '476 patent); id. 1141 (If "Google aims to implement a sound security framework, the Java security patents would be essential to achieving that goal.").

8

concedes that Google's security implementation is "not comparable" to the alleged inventions in the '476 patent.15 Although Oracle claims that this patent enhances security, the very code that Dr. Mitchell identifies as infringing explicitly warns the user that it does not provide a secure environment—in other words, that it does not do what the patent claims.16 In any event, the code that Dr. Mitchell claims infringes the '476 patent is vestigial. It was never actually implemented, and either has been disabled and/or removed or will be removed in the next Android release.17

Moreover, the '476 patent is invalid because it is anticipated by Fischer, which describes a security framework that maps onto the claims of that patent. Although the PTO reviewed the Fischer reference during the original examination, on reexamination the PTO issued an initial rejection of all claims as anticipated by Fischer, under 35 U.S.C. § 102(b).

2. The '720 patent

The '720 patent discloses a system and method for creating a clone of a virtual machine by preloading classes identified during runtime and using copy-on-write functionality provided by the underlying operating system.18 Google does not infringe for at least two reasons.

First, Android does not "dynamically preload" classes. Its class preloader is "static," not "dynamic," because it always preloads the same classes when it clones a child virtual machine. It does not determine which classes should be preloaded at runtime, as the '720 patent requires.

Second, Android does not contain a "class preloader to obtain a representation of at least one class from a source definition provided as object-oriented program code." This claim element requires that source code be compiled during runtime, but Android is not capable of runtime source-code compilation. Instead, all source compilation takes place at development time (when an application is created), not on the Android device.

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15 Id. 1140.

16 Id. f 680 ("Warning: security managers do not provide a security environment for executing untrusted code. Untrusted code cannot be safely isolated within the Dalvik VM.").

17 Bornstein 30(b)(6) Dep. at 111:23-112:18.

18 Copy-on-write uses references to memory locations until one of the processes accesses the data at that memory location. This effectively delays the need to copy data up front.

9

Oracle wrongly argues that the claims of the '720 patent require only runtime preloading of previously compiled classes using copy-on-write functionality. This not only contradicts the patent language, it would invalidate the patent, which was issued over prior art only because Sun distinguished copy-on-write functionality, which had been well-known in the prior art for years. Again, the PTO agrees—it has issued an initial office action invalidating the claims.

3. The '205 patent

The '205 patent concerns a method for creating and executing, at runtime, new virtual machine instructions that reference native machine-code instructions.

Oracle has two infringement theories, neither of which has merit.

First, Oracle claims Android's just-in-time functionality infringes. But that functionality does not "generate ... a new virtual machine instruction," as the asserted claims require. Even Oracle's expert Dr. Mitchell agrees, in his description of the accused functionality, that it doesn't generate a new VM instruction. Mitchell tries to avoid his concession by resorting—for the only time in this entire six-patent case—to the doctrine of equivalents. But his equivalence theory fails because it captures prior art and does not pass the "insubstantial differences" test. Moreover, Oracle is barred from using the doctrine of equivalents because its claim amendments during prosecution of the '205 patent contradict its equivalence theory.

Second, Oracle contends that the "dexopt" functionality infringes. But that theory fails because dexopt is not a runtime optimization at all. It is invoked at install or boot time. And again, Oracle's attempt to stretch the claims to read on Android renders the '205 patent invalid over the prior art. The PTO agrees with Google, having preliminarily invalidated every one of the asserted claims based on some of the same prior art combinations that Google cites here.

4. The '104 patent

The '104 patent concerns systems and methods for (1) determining the memory location (i.e., the "numerical reference") that (2) corresponds to a variable in an intermediate form code instruction (i.e., the "symbolic reference") (3) at runtime, (4) saving the numerical reference; and then (5) using the numerical reference to obtain data. As was the case with the '205 patent, Oracle asserts two infringement theories. Again, both of them are wrong.

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First, Oracle contends that an index into a table in memory infringes because the index itself qualifies as the required "symbolic reference." But this theory, offered by Dr. Mitchell for the first time in his reply report, is inconsistent with his opening report, in which he argued that indexes into these in-memory tables are numerical, not symbolic, references. Further, even if the asserted claims could be read to encompass indexes into tables, they would be invalid over the prior art. The PTO has granted Google's reexamination request, which remains pending.

Second, Dr. Mitchell again points to "dexopt," but, as discussed above, dexopt does not even operate at runtime, as the asserted claims require.

Finally, even if Oracle's infringement theories had merit (and they don't), the '104 patent is a reissued patent that was improperly broadened after the two-year period for broadening reissues had lapsed. That violates 35 U.S.C. § 251 and renders the '104 invalid.

5. The '520 patent

The '520 patent purports to cover a method of "play-executing," or simulating execution of, source code that initializes static arrays, in order to determine the values that the code would store into the static array upon initialization. The process described by this patent exists only to reverse an inefficiency that Sun built into Java bytecode. Java bytecode initializes static arrays using a cumbersome set of repeated instructions and thus takes up more space than it should. But Android does not perform the "play executing" claimed by this patent. Instead, it identifies the initialization of the array through "pattern matching," where the software finds the familiar pattern created by Java bytecode that is designed to initialize a static array. The software then takes the numbers in that pattern, using them to create an instruction that initializes the static array. Google's expert, Dr. Parr, performed a simple experiment showing that, when an instruction is introduced that does not match the pattern, Android's pattern-matching algorithm cannot properly create an instruction to initialize a static array. The fact that the algorithm fails in those cases means that the dx tool does not use play execution, because play execution—or simulated execution—would not fail. Oracle's expert could not and did not dispute this analysis.

Moreover, the relevant "play execution" aspect of the '520 patent is hardly novel. There are numerous references disclosing systems that simulate execution of Java and other bytecode.

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6. The '702 patent

The '702 patent concerns a method of eliminating duplicate constants from combined sets of Java class files to create "reduced class files" that will minimize memory usage. Android does not use this alleged invention. Google's expert, Dr. Parr, has shown that dex files (the product of the Google software that Oracle accuses of infringement) lack many attributes of reduced class files—including major version numbers, individual constant pools, and Java bytecode. Once again, Dr. Mitchell does not dispute Dr. Parr's analysis, conceding that dex files lack these essential elements. Yet he claims this does not matter, asserting that a "reduced class file" exists whenever duplicate constants have been removed from Java class files. This reading of the claims is directly at odds with, and foreclosed by, the Court's claim construction.

Further, the alleged invention of the '702 patent is not new. For years before Sun applied for this patent, Java class files in Sun's own middleware used "constant pools" to minimize the space taken up by class files. Prior to prosecuting the '702, Sun disclosed, during prosecution of U.S. Patent No. 5,815,718 to Tock, the aspects of the '702 patent that Oracle now claims are new. But Sun never cited Tock when prosecuting the '702, even though Tock was Sun's own prior art. The PTO has tentatively rejected all asserted claims of the '702 over Tock.

B. Oracle will not prevail on its copyright infringement claim.

Oracle's copyright infringement claim has three components, each of them meritless.

First, Oracle does not claim that Google's code infringes any Oracle copyright, because Google used entirely different code, much of it newly written by Google and its partners. Instead, Oracle claims that Android's inclusion of code libraries implementing the APIs from 37 Java language API packages (including the method signatures for everyday functions like abs() to calculate an absolute value and sqrt() to calculate a square root) infringes its copyrights.

Oracle cannot be right. The API packages and their organization are functional elements of the Java language that are essential for interoperability. Oracle has conceded that the Java programming language can be freely used by anyone. For years, Sun promoted the use of that language and its APIs by developers who write Java-language code. It is impossible, practically speaking, to use the Java language without the API packages. Even Oracle's expert admits that

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some of the API packages are "functionally necessary" to use the language. The API packages and their organization define the parts of speech—-such as verbs and nouns—and rules of grammar that enable Java-language speakers to understand one another. Without Android libraries implementing the API packages, an applications developer writing Java-language code for Android today would have no way to ensure she could safely use existing code using the APIs, and instead would have to learn a new vocabulary different from the standard widely-used Java language vocabulary.

No court ever has accepted the copyrightability of APIs. Oracle tries to justify its novel argument for API copyrightability by arguing that the creation, selection, and organization of APIs is a "creative" process. But the Copyright Act protects only original and creative expression, not effort or ideas (even if those efforts and ideas are creative).19 Programming interfaces are thus not protectable, as the Ninth Circuit repeatedly has held.

In Sega Enterprises Ltd. v. Accolade, Inc., Accolade had copied and disassembled Sega game cartridges "to discover the interface specifications for the Genesis console"20 and then use the specifications in its own product. Accolade's games did not copy Sega's code; as Accolade explained, "with the exception of the interface specifications, none of the code in its own games is derived in any way from its examination of Sega's code."21 The Ninth Circuit held that the fair use doctrine applied to Accolade's intermediate copying of interface specifications in order to reverse-engineer the Genesis console's APIs. The court relied heavily on the fact that copying was the only way that Accolade could have gained access to the "unprotected ideas and functional concepts" in Sega's code—the "interface specifications for the Genesis console."22

Eight years later, the Ninth Circuit again held that wholesale copying of a work (this time the firmware for the Sony Playstation console) for the purpose of reverse engineering APIs is a

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19 See 17 U.S.C. § 102(b).

20 977 F.2d 1510, 1515 (9th Cir. 1992).

21 Id.

22 Id. at 1525.

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fair use.23 To create a Playstation emulator called the Virtual Game Station, Connectix needed to replicate the interfaces to the Sony Playstation BIOS, but wrote its own code to implement those interfaces after uncovering the interfaces through reverse engineering. As in Sega, the court held that intermediate copying to uncover, and then use, "unprotected functional elements" (i.e. the interface specifications) was a fair use.24

Sega and Sony control this case, and this Court should rule as a matter of law that the API packages and organization are not copyrightable. In fact, Oracle's claim is even weaker than Sega's or Sony's. Here, there is not even an allegation of unauthorized intermediate copying of Oracle's code. Instead, Oracle contends that copying the APIs themselves is infringement. But if copying of the code that implements APIs is a fair use so long as the end product copies only the APIs themselves, then, as a matter of law and logic, copying only the APIs cannot infringe.25

Indeed, courts routinely have held that programming interfaces are not protectable under the Copyright Act.26 This Court already has ruled that the names and "method signatures" of Java APIs are not copyrightable as a matter of law.

Second, Oracle points to only three instances of any alleged literal copying, all of which are—individually and collectively—de minimis and thus not actionable.

  • One is a nine-line utility function that merely checks that three arguments related to sorting an array are "in-bounds." It does this by performing three simple checks—i.e., that the starting index is not greater than the ending index, that the starting index is not less than zero, and that the ending index is not greater than the size of the array to be sorted. This function was quantitatively and qualitatively trivial and could have been accomplished easily in numerous other, non-infringing ways. In fact, in late 2010, the method was removed and replaced with an entirely new and

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

    24 Id. at 603, 608.

    25 Because the premise of the Sega and Sony decisions was that copying of APIs does not even constitute infringement, it follows that no fair use assessment is needed to conclude that Google's use of the APIs from the 37 Java language API packages is non-infringing. But if the jury reaches the fair use issue, Google's use presents a stronger fair use case than those cases.

    26 See, e.g., Lotus Dev. Corp. v. Borland Int'l, Inc., 49 F.3d 807 (1st Cir. 1995) (menu-command hierarchy that functioned as programming interface was uncopyrightable method of operation), aff'dby an evenly divided court, 516 U.S. 233 (1996); Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366 (10th Cir. 1997) (command codes serving as an interface to call controller were not protectable under scenes a faire doctrine); Paul Goldstein, Goldstein On Copyright § 10.5.1 (3d ed. 2011) (courts have "categorically excluded copyright protection for interface specifications").

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    different method in a different file. That new code will be replaced to the public as part of the upcoming new release of Android. It cannot support an infringement claim. See Newton v. Diamond, 388 F.3d 1189, 1195 (9th Cir. 2004). Moreover, a year before this lawsuit was filed, Google donated the code files containing the allegedly copied lines of code to Oracle's Java-language development kit, OpenJDK. At that time, Oracle not only did not complain about alleged infringement, it actually thanked Google for its contribution.
  • The second trivial instance of alleged literal copying consists of eight test files allegedly copied from decompiled versions of Oracle code. Those files—which Google obtained from an outside contractor—are quantitatively de minimis in the context of the allegedly infringed works as a whole (which is the standard by which de minimis infringement is judged). See Newton, 388 F.3d at 1195 ("Substantiality is measured by considering the qualitative and quantitative significance of the copied portion in relation to the plaintiffs work as a whole."). Qualitatively, those files were never used or shipped on any Android phones, and in fact are so insignificant that Google has removed them from Android entirely without replacing them with anything at all.
  • The third instance of alleged literal copying does not even involve any executable code. Oracle points to scattered comments in two files that Google obtained from the same outside contractor. Those comments are quantitatively minimal, comprising a fraction even of the files in which they appear. They also are qualitatively mundane, offering short, functional descriptions that are in no sense creative expression. Finally, they are again so insignificant that Google has removed them from Android entirely without replacing them with anything at all.

Third, Oracle claims that Android's documentation—the short sentences that describe the function each API performs and collectively comprise the "specifications" for the APIs— infringes. This is akin to arguing that one dictionary infringes another because both define many of the same words using similar definitions. The sole example of this alleged infringement is the claim by Oracle's expert that the phrase "[r]eturns a reference to the private key component of this key pair" is similar to the phrase "[r]eturns the private key." But not only are those phrases different, any similarities are due to the unavoidable fact that they both describe the same Java method: "java.security.KeyPair.getPrivate." It cannot be copyright infringement to accurately describe something, just because someone else previously described that thing in a similar way.

C. Google will prevail on its defenses of estoppel, waiver, laches, and implied license.

Even if Oracle could carry its burden of proving patent or copyright infringement, which is unlikely, it should be barred from enforcing those rights because of its long history of public statements and acts contrary to the positions it is taking here, and its long delay in filing suit.

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Beginning as early as 2005, Sun was fully aware of Google's efforts to develop the free, open source, full stack Android mobile operating platform partly written in the Java programming language. Sun also knew that, in addition to offering middleware functionality, Android was a complete operating system with numerous components that Java ME lacked, such as an operating kernel and applications. Despite this knowledge, Sun never said a cross word to Google when Android was publicly announced in 2007 and then released in late 2008. Certainly Sun never asserted infringement or threatened to sue. Sun didn't change its tune until after it changed its name to Oracle America in early 2010, by which time Google and its many partners in the Open Handset Alliance had invested enormous amounts of time, money, and sweat in building the Android platform into a commercial success.

Sun's inaction conceded that Google was not infringing any Sun patent and was acting in a manner consistent with Sun's policies regarding the Android platform in particular and patent-infringement suits in general. Indeed, Sun publicly applauded Android's release as an open source platform. When Google first announced Android in 2007, Sun CEO Jonathan Schwartz posted a statement on his blog saying that he "just wanted to add [his] voice to the chorus of others from Sun in offering my heartfelt congratulations Google on the announcement of their new Java/Linux phone platform, Android. Congratulations!" Later in the same blog post, he declared that "Google and the Open Handset Alliance just strapped another set of rockets to the community's momentum." Moreover, Sun had an announced policy—reflected in numerous statements over the years by its most senior executives, including Schwartz—that Sun "filed patents defensively" and would use its "defensive portfolio" only to protect Sun's products against suits by others, not to be a patent aggressor. Indeed, Schwartz publicly stated in 2007 that the company wanted to "highlight the futility of using software patents to forestall competition—in the commercial marketplace, and among the free community." Consistent with that policy, Sun never filed suit—or even threatened to file suit—against Google based on the Android platform, even though Google told Sun from the beginning that it would proceed with an independent full stack operating platform project if the Sun partnership did not work out. Indeed, Google was one of Sun's largest customers, and Sun CEO Schwartz has explained that

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Sun would never sue its customers, because it wasn't possible to do business with a company if it was concerned Sun would turn around and file a lawsuit.

Similarly, with respect to Sun's copyright claim, as far back as June 1994, Sun executives took a public stance that APIs—the same functional elements of the Java language that are now the heart of Oracle's copyright infringement claim—are not copyrightable. Sun reaffirmed that position in publicly-filed amicus briefs, telling the world that it had no intention of asserting copyrights in APIs, which essentially declared Java-language APIs available for use by anyone at any time for any purpose. And Sun and Oracle both consistently treated APIs as unprotectable, public domain material, by copying and incorporating third-party APIs into their own products.

These and other similar policy statements by Sun establish Google's defenses of estoppel, waiver, laches and implied license—each premised on the fact that Sun expressly and publicly approved of Android and certainly never suggested it would sue Google. In fact, even Oracle applauded the Android platform, announcing in 2009 at the Java One conference that it was "flattered" by Android and further emphasizing that there were likely to be Android netbooks as a result of the efforts of "our friends at Google." Oracle cannot renege on these representations, claiming entitlement to revenues associated with Android now that Android is a success.

D. Even if it could prove liability, Oracle would not be entitled to substantial damages.

As the Court is aware, Oracle's damages expert Dr. Iain Cockburn initially served a report placing Oracle's damages for patent infringement alone somewhere in the vast range between $1.4 billion and $6.1 billion—nearly enough to finance Oracle's acquisition of Sun and all its many assets. He barely mentioned, and did not attempt to quantify, Oracle's purported copyright damages. The Court threw out his report and ordered him back to the drawing board. Dr. Cockburn has now returned with a damages estimate in the same ballpark—$2.7 billion in total damages—though he now allocates most of that sum ($2.3 billion) to the previously unexplored copyright claim and only $404.9 million to the patent claims. This second damages estimate is almost as groundless as the first one.

Dr. Cockburn's patent-damages calculation contains multiple fatal errors. He starts with the wrong baseline—using the $100 million demand that Sun made early in the negotiating

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process rather than the $28 million figure that the parties essentially agreed to in April 2006. He then determines that the asserted claims of the six patents-in-suit represent 30% of the value of Sun's entire Java-related intellectual-property portfolio—which included approximately 2,000 patents, copyrights, and the Java trademark, among other rights. But the six patents-in-suit contributed little to no value to Sun's implementation of the Java platform. Oracle alleges only one method in a commercial version of Java that practiced the '205 patent; and that method has been disabled and is no longer available. Oracle even gives away the functionality of the '720 patent as a free add-on, which suggests the market value of that functionality is zero.

The patents-in-suit are likewise unimportant, and certainly not essential, to Android. As discussed above, Google disabled functionality related to the '476 patent before Oracle filed this suit. Even if Oracle's overbroad (and probably invalidating) interpretations of the patent claims were accurate, Google could have avoided the allegedly infringing features through design changes, many of them trivial. Android would work just fine even if Google disabled or excised all the functionality that Oracle claims is infringing.

Dr. Cockburn reaches the 30% figure in three ways, each of them flawed.

First, he relies on made-for-litigation benchmarking studies by current Oracle employees, in which the employees purported to disable the allegedly infringing features of Android and concluded that doing so harmed performance. Oracle failed to disclose how those studies were done. Google's review of the studies have shown that the Oracle employees disabled far more than just the allegedly infringing functionality, shutting down elements of Android that are not even alleged to infringe. Unsurprisingly, having disabled the wrong features the studies arrived at massively inflated conclusions about the importance of the functionalities at issue. The true performance impact of the features at issue is much less significant than Cockburn asserts.

Second, Dr. Cockburn relies on a flawed econometric study, which purported to measure consumer preferences based on anecdotal evidence of second-hand eBay smartphone purchases. But even if second-hand smartphone buyers qualified as a representative sample, the computer code implementing the econometric study is riddled with errors, and the study fails Econometrics 101 by failing to control for numerous variables, thereby confusing correlation with causation.

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Third, Dr. Cockburn offers a rigged consumer-preference study by another Oracle expert, Dr. Steven Shugan, who asked consumers hypothetical questions about smartphone features identified by Dr. Cockburn. But Shugan failed to ask any questions about those consumers' real-world smartphone purchases, experiences, or preferences; nor did he make sure that the features that Dr. Cockburn identified were among the most significant to consumers deciding which smartphone to purchase. Dr. Shugan then assumed that, just because a certain percentage of consumers valued an attribute in his study—for example, variety of applications—the exact same percentage of consumers would have refused to buy an Android phone if the number of available applications dropped to an arbitrary level. None of these litigation-driven shenanigans provide any justification for Dr. Cockburn's 30% figure.

That leaves Dr. Cockburn with a patent damages figure of about $30 million (30 percent of $100 million), which he then gooses upward by adding in Sun's projected lost profits from [REDACTED] This is legal error—Dr. Cockburn is directly importing lost profits into a patent royalty without satisfying the demanding standard in Panduit Corp. v. Stahlin Bros. Fibre Works, Inc.27 His calculation lacks any reasonable basis; instead, he relies entirely on a single Sun presentation speculating about money that Sun might make from a product line that never came close to the market. Cockburn relies on that presentation even though the cover email attaching it makes clear that it is preliminary and shouldn't be relied upon. For all these reasons, Dr. Cockburn's patent-damages analysis fails to help the jury decide any issue. Google already has moved to strike Dr. Cockburn's new analysis under Daubert v. Merrell Dow Pharmaceuticals, Inc.28

Dr. Cockburn's copyright damages analysis is even worse. Cockburn has failed to offer any opinion regarding the portion of Google's profits that are attributable to infringement. Copyright law puts the burden on Google to deduct from its gross revenues (1) its expenses and (2) any portion of its profits attributable to factors besides infringement. Cockburn uses this rule

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27 575 F.2d 1152 (6th Cir. 1978).

28 509 U.S. 579(1993).

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as an excuse to punt. In his initial report, he simply assumed that Oracle should recover 100% of Google's gross revenue for Android-related advertising and applications. Google then submitted its own expert report, which deducting Google's expenses and the portions of its profits created by Android's many non-infringing components. In his reply report, Cockburn questions Google's expert opinion, but offers no alternative calculation. The bottom line is that he is still taking the most extreme position possible—that Oracle is entitled to 100% of Google's Android-related revenue on its copyright claim.

Cockburn also calculates the value of the license Sun would have negotiated with Google to use the copyrights; but in doing so, he commits another legal error. He adds in the lost profits that Sun purportedly would have made had it competed with Google, even though there is no evidence Sun would have issued a license to a competitor, only to a partner. The Sun-Google license discussions in 2005 and 2006 always involved a partnership relationship.

Finally, Cockburn calculates Sun's lost profits separately, but again ignores the mountain of evidence showing that Sun lacked the internal will and engineering resources to develop a competing mobile platform. His sole evidentiary basis consists of the same wishful-thinking Sun presentation about possible revenues Sun might derive from a smartphone operating platform that Sun lacked the expertise or will to bring to market. And Cockburn violates established copyright doctrine by double-counting amounts that overlap among Google's profits, Oracle's purported lost profits, and the lost value of a fair-market license.

E. Oracle's willfulness case is a fiction.

Oracle will not be able to increase its patent damages recovery by proving that Google willfully infringed. Discovery is over, and Oracle has no evidence that Google knew about the patents-in-suit before Oracle identified them in a July 20, 2010 pre-litigation meeting. All key Android team members have testified that they had no such knowledge. Sun's key negotiators likewise have admitted that they never breathed a word, during any of their meetings with Google about an Android partnership, that Android might be infringing any patents, much less identified the specific patents in this case. Even after Oracle entered the picture in early 2010 with its more aggressive, litigation-oriented approach, it refused to identify specific patents.

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Oracle will contend that Google must have known about the Sun intellectual property at issue because it hired Sun employees. That argument is evidence-free innuendo designed to prejudice the jury. The four former Sun employees who are inventors on the patents-in-suit and later joined Google had no involvement whatsoever with Android, nor any knowledge of the allegedly infringing Android functionality. There is no evidence that any of the former Sun employees who came to Google, other than the inventors, had any knowledge of the patents-in-suit—which constitute just six patents out of Sun's portfolio of several thousand patents anyway. Only one former Sun employee did any work at all on the Dalvik VM, and that work didn't begin until 2009—over a year after the Android SDK was released. Even then, it lasted less than a year and did not involve any of the specific Android functionalities that allegedly infringe.

Willfulness should not be an issue as to Oracle's copyright claim either. Under copyright law, willfulness is relevant only to statutory damages, and Oracle is not seeking statutory damages here. But even if willfulness were relevant to copyright, Google did not willfully infringe any of the copyrights at issue. Even if APIs are copyrightable, Google reasonably relied on Sun's repeated public insistence to the contrary, Sun's willingness to let others (such as the Apache Software Foundation and The GNU Project) use those same APIs freely, and Sun's own free use of third-party APIs. Most of the alleged literal copying was done by contractors working for Google without Google's knowledge, and was stripped out of Android when Google was notified of the alleged copying. The only alleged instance of literal copying of source code by Google relates to fewer than a dozen lines of code out of millions. Something so trivial and unimportant to the success of Android cannot be a basis for a damages enhancement.

F. No matter what, Oracle will not be entitled to an injunction.

Even if Oracle were to prevail on both its patent claims and copyright claim, it would not be entitled to injunctive relief. The standard governing entry of a permanent injunction in both patent and copyright infringement cases is set forth in the Supreme Court's opinion in eBay, Inc. v. MercExchange, LLC.29 That standard requires a plaintiff to

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29 547 U.S. 388, 391-92 (2006). Although eBay was a patent case, the Ninth Circuit confirmed earlier this year in Perfect 10, Inc. v. Google Inc., 653 F.3d 976 (9th Cir. 2011), that the eBay standard also applied in copyright infringement suits.

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demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.30
Oracle cannot satisfy any of the four parts of the eBay standard.

First, Oracle has not suffered, is not suffering, and will not suffer any irreparable injury because of Google's distribution of the Android software. Oracle has never developed, much less sold, a product that competes with the full stack Android operating platform—not when the company was called Sun, and not since it became Oracle. At most, Oracle offers middleware products through its Java ME platform, but it has never come close even to developing a full stack. [REDACTED] Both eBay subsequent Federal Circuit cases confirm that proof of harm to sales of a viable competing product is critical to a showing of irreparable injury.31 Even as to its Java middleware products, Oracle has continued to do well in markets outside the mobile area, where the Java platform was already in decline, and limited to older feature phones, before Android was released.

Second, and for similar reasons, Oracle cannot show that money damages are inadequate to compensate it for the alleged infringement. Not only does Oracle not compete with Google, but its argument that an injunction is the only way to prevent so-called "fragmentation" of "the Java ecosystem" is baseless. The evidence at trial will show that the Java mobile space was deeply fragmented, with various incompatible forks, long before Google acquired Android, Inc. in 2005. For years, Sun had followed a practice of developing incompatible variations of its Java mobile platform for paying customers. Similarly, the various iterations of Sun's own Java

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30 eBay, 547 U.S. at 391.

31 See eBay, 547 U.S. at 395-96 (Kennedy, J., concurring, joined by Stevens, Souter, and Breyer, JJ.) (noting that injunctions are unjustified where patentee does not use patents "as a basis for producing and selling goods, but, instead, primarily for obtaining license fees"); see also, e.g., i4i Ltd. P'ship v. Microsoft Corp., 598 F.3d 831, 861-62 (Fed. Cir. 2010) (affirming finding of irreparable injury where infringement caused plaintiffs product to lose market share).

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mobile platform were incompatible with one another—with applications written for one version being unable to run on others. Even Oracle's claim that Sun assured compatibility by making its licensees certify that they passed compatibility tests is fictitious. Sun never audited the results of those compatibility tests, and Oracle admits that the tests covered only 70% of the Java mobile functionality, thus allowing for incompatibility in the other 30%. The alleged "write once, run anywhere" Java value proposition is marketing-speak that is contradicted by Sun's own conduct. Any harm Oracle might have suffered can easily be compensated by payment of money.

Third, the balance of hardships strongly favors Google. Oracle is asking the Court to bar Google from distributing or supporting one of the most popular mobile operating systems in the world, which system is used by tens of millions of people numerous times every day. Any disruption in Android distribution and support would damage the long-term viability of Android, even if any allegedly infringing functionality were to be stripped out of the platform. Oracle, by contrast, is suffering only monetary harm (if it is suffering any harm at all).

Fourth, for similar reasons, an injunction in this case would massively disserve the public interest. Oracle's requested relief would essentially shut down Android, leaving tens of millions of users without their preferred operating system, forcing OEMs to eat millions of dollars in sunk costs and inventory, including development costs for future Android models. An injunction would likewise jeopardize similarly large investments by wireless carriers. No corresponding benefit to Oracle, or anyone, would offset that sort of chaos.

Finally, Oracle may try to introduce two red herrings into the injunction analysis, neither with any basis in law. First, Oracle may assert that, if Google is found to have willfully infringed the asserted patents or copyrights, that should make the Court more willing to enter an injunction. But willfulness is not one of the relevant considerations under the four-part eBay test. Fundamentally, injunctive relief is designed to protect a party from irreparable harm where money damages will not suffice—not to punish an alleged wrongdoer. Second, to the extent Oracle attempts to rely on the old Ninth Circuit rule that showing "a reasonable likelihood of success on the merits in a copyright infringement claim raises a presumption of irreparable

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harm," that rule was expressly declared dead by the Ninth Circuit earlier this year as having been "effectively overruled" by eBay.32

IV. CASE MANAGEMENT ISSUES

Finally, there are at least two important, practical case management issues that the Court should resolve before trial begins.

First, the Court should request an advisory verdict from the jury as to Google's equitable defenses. Although the Court "will ultimately make its own independent findings of fact and draw its own conclusions of law as to matters that fall within its purview, [it] will also benefit from the parties' arguments to the jury on these issues."33 For just that reason, trial courts often submit to advisory juries the types of equitable defenses Google is asserting here.34

Asking for an advisory jury verdict on Google's equitable defenses makes sense, because the evidence supporting those defenses overlaps substantially with evidence the jury will hear anyway during the liability phase. For instance, there is overlap between the equitable defenses and Oracle's infringement case. To prove inducement, Oracle will need to show that Google knew or should have known its acts would lead to infringement by others. Google will rebut any evidence Oracle might present with proof of Sun's and Oracle's inaction over many years in the face of Android's development and release and Sun's and Oracle's public statements praising Android-—the same evidence that supports Google's equitable defenses. Further, Google's laches defense requires proof that the patentee knew or should have known about the alleged infringement,35 and therefore "will require the court to examine the scope of the patent, which will also be necessary in proving infringement."36

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32 Perfect 10, 653 F.3d 976, slip op. at 10127-28.

33 Starr Int'l Co. v. Am. Int'l Group, Inc., 623 F. Supp. 2d 497, 502 (S.D.N.Y. 2009).

34 See; e.g., Qualcomm Inc. v. Broadcom Corp., 548 F.3d 1004, 1009 (Fed. Cir. 2008) (equitable waiver defense tried to advisory jury); Wang Labs., Inc. v. Mitsubishi Elecs. America, Inc., 103 F.3d 1571, 1576 (Fed. Cir. 1997) (implied license, equitable estoppel, and laches tried to advisory jury); Static Control Components, Inc. v. Lexmark Int'l, Inc., 749 F. Supp. 2d 542, 554 (E.D. Ky. 2010) (laches and estoppel defenses tried to advisory jury over plaintiffs objections).

35 See A.C. Aukerman Co. v. R.L. Chaides Const. Co., 960 F.2d 1020,1032 (Fed. Cir. 1992).

36 Cedarapids, Inc. v. CMICorp., 1999 WL 33656876 at *3 (N.D. Iowa 1999); see also Figgie Int'l, Inc. v. Wilson Sporting Goods Co., 1987 WL 13574 at *2-3 (N.D. 111. 1987) (same rule).

24

There is even more significant overlap between the issue of willfulness and the equitable defenses. Both require an extensive discussion of (1) the history of Sun's negotiations with Google regarding what became the Android platform; (2) Sun's failure to file suit or even give notice of purported infringement despite knowing that Google was developing Android; (3) Sun's and Oracle's public praise for Android; (4) and Sun's public statements disavowing copyrightability of APIs and oft-stated commitment to using its patent portfolio only defensively. Because Google's "equitable defense evidence would in any event be properly presented to the jury to negate elements of plaintiff s case,"37 there would be no additional burden on anyone, and a possible benefit to both the Court and the parties, if the Court requested an advisory verdict on Google's equitable defenses.

Second, Google asks the Court to confirm that Google may use at trial two documents on its exhibit list—JTX2686 and JTX2687—that Oracle belatedly and wrongly clawed back as privileged. Oracle did not assert privilege in the first place until months after the documents had been produced and had been used in one of Google's expert reports. Then, weeks after clawing back the documents, Oracle itself affirmatively marked the documents as a deposition exhibit, which waived any privileges or protections.

On August 25, 2011, Google technical expert Dr. Terence Parr served his report, in which he relied on and discussed both documents. Dr. Parr attached both documents as exhibits to his report. On August 29, 2011, Oracle gave notice to Google for the first time that it had produced 20 purportedly privileged documents, including the two at issue. Google complied with its obligations under the protective order and destroyed all copies of those documents. But then, on September 15, 2011, two weeks after its clawback request, Oracle reintroduced both documents

__________________________

37 Banco Industrial de Venezuela v. Credit Suisse, 99 F.3d 1045, 1051 (llth Cir. 1996); see also, e.g., Akamai Techs., Inc. v. Limelight Networks, Inc., 2008 WL 364401 (D. Mass. Feb. 8, 2008) (evidence of the parties' pre-litigation business discussions is relevant to willfulness, inducement, damages and equitable defenses); McKesson Information Solutions LLC v. Trizetto Group, Inc., 2006 WL 940543 (D. Del. Apr. 11, 2006) ("The entire history of the relationship between the parties will be admissible. ... Determination of willfulness is made on consideration of the totality of the circumstances. ... [E]vidence of laches, prior art known to the defendant and the parties' prior negotiations, is relevant to a willfulness defense[.]"); WeddingChannel.Com, Inc. v. The Knot, Inc., 2004 WL 2984305 (S.D.N.Y. Dec. 23, 2004) (evidence relating to alleged willful infringement also relevant to implied license and estoppel).

25

into the record when it marked the entire Parr report, including the attachments, as an exhibit at Dr. Parr's deposition. It remains an exhibit today; Oracle has never taken any corrective action to remove it from the record.

Oracle's knowing, affirmative marking and use of the documents as a deposition exhibit must constitute a waiver of any privilege. Courts routinely find waiver in similar circumstances.38 The Court should follow the logic of these cases and find both that Oracle has waived privilege as to these documents and that Google may use them at trial.

Google understands that Oracle takes the position that Magistrate Judge Ryu, and not this Court, ought to decide this issue. But this is not a discovery dispute—it is a trial management issue relating to Google's ability to use designated trial exhibits. Particularly because trial is just two weeks away, and the relevant factual background is both simple and fully before the Court, it makes the most sense for this Court to rule on the waiver issue.

Dated: October 14, 2011

Respectfully submitted,

KEKER & VAN NEST LLP

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

___________________________

38 See, e.g., Board of Trustees, Sheet Metal Workers' Nat'I Pension Fund v. Palladium Equity Partners, LLC, 722 F. Supp. 2d 845, 850 (E.D. Mich. 2010) ("[W]hen a privileged document is used at a deposition, and the privilege holder fails to object immediately, courts have found the privilege to be waived."); Brandon v. D.R. Horton, Inc., 07CV1256 J (POR), 2008 WL 2096883 (S.D. Cal. May 16, 2008) ("Plaintiffs [sic] failure to assert the privilege at Plaintiff Brandon's deposition is clear proof that, even if there was a privilege, it was absolutely and irrevocably waived, regardless of whether disclosure was inadvertent."); F.C. Cycles Intern., Inc. v. Fila Sport, S.p.A., 184 F.R.D. 64, 73-74 (D. Md. 1998) (rejecting claim that disclosure of memorandum was "inadvertent" when memorandum had been marked as exhibit without objection during two depositions).

26


536

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

ORACLE'S TRIAL BRIEF

Trial Date: October 31, 2011
Dept.: Courtroom 8, 19th Floor
Judge: Honorable William H. Alsup

_____________________________

TABLE OF CONTENTS

Page

I. INTRODUCTION AND OVERVIEW ...... 1

II. BACKGROUND OF JAVA AND ANDROID ...... 4

A. Oracle and Java ...... 4

B. Google and Android ...... 5

III. GOOGLE’S COPYRIGHT INFRINGEMENT ...... 6

A. Direct Copyright Infringement ...... 6

B. Indirect Copyright Infringement ...... 8

IV. GOOGLE’S PATENT INFRINGEMENT ...... 10

A. Direct Patent Infringement ...... 10

B. Indirect Patent Infringement ...... 14

1. Google’s Willful Blindness ...... 14

2. Google Cannot Escape Liability By Claiming That Android is Free ...... 16

C. Google’s Invalidity Contentions ....... 17
V. GOOGLE’S WILLFUL INFRINGEMENT ...... 18

A. Willful Infringement ...... 18

B. Willful Infringement as Part of the Liability Phase of Trial ...... 19

VI. COPYRIGHT AND PATENT DAMAGES ...... 20

A. Damages for Patent Infringement ...... 21

B. Damages for Copyright Infringement ...... 22

VII. ISSUES TO BE DECIDED BY THE COURT ...... 23

A. Copyrightability Of The 37 API Design Specifications and Copied Code ...... 23

B. Google’s Equitable Defenses of Laches, Equitable Estoppel, Waiver, and Implied License ...... 26

C. Injunction Against Android Platform ...... 27

i

TABLE OF AUTHORITIES

Page

CASES

A.C. Aukerman Co. v. RL Chaides Constr. Co.,
960 F.2d 1020 (Fed. Cir. 1992) (en banc) ...... 27

Apple Computer, Inc. v. Microsoft Corp.,
35 F.3d 1435 (9th Cir. 1994) ...... 24

Aro Mfg. Co. v. Convertible Top Replacement Co.,
377 U.S. 476 (1964) ...... 13, 14

Autoskill, Inc. v. Nat’l Educ. Support Sys., Inc.,
994 F.2d 1476 (10th Cir. 1993) ...... 25

Broadcom Corp. v. Qualcomm Inc.,
543 F.3d 683 (Fed. Cir. 2008) ...... 8

CMAX/Cleveland, Inc. v. UCR, Inc.,
804 F. Supp. 337 (M.D. Ga. 1992) ...... 25

Dongxiao Yue v. Chordiant Software, Inc.,
No. C-08-00019 2009 U.S. Dist. LEXIS 118824 (N.D. Cal. Dec. 21, 2009) ...... 24

DSU Med. Corp. v. JMS Co.,
471 F.3d 1293 (Fed. Cir. 2006) (en banc) ...... 14

eBay Inc. v. MercExchange, LLC,
547 U.S. 388 (2006) ...... 27

Eng’g Dynamics, Inc. v. Structural Software, Inc.,
26 F.3d 1335 (5th Cir. 1994) ...... 25

Georgia-Pacific Corp. v. U.S. Plywood Corp.,
318 F. Supp. 1116 (S.D.N.Y. 1970) ...... 21

Global-Tech Appliances, Inc. v. SEB S.A.,
131 S. Ct. 2060 (2011) ...... 14

Granite States Ins. Co. v. Smart Modular Techs. Inc.,
76 F.3d 1023 (9th Cir. 1996) ...... 27

Haworth, Inc. v. Herman Miller, Inc.,
No. 1:92CV877 1993 WL 761974 (W.D. Mich. July 20, 1993) ...... 20

i4i Ltd. Partnership v. Microsoft Corp.,
598 F.3d 831 (Fed. Cir. 2010) ...... 28

ii

TABLE OF AUTHORITIES
(continued)

Page

In re Seagate Tech., LLC,
497 F.3d 1360 (Fed. Cir. 2007) ...... 18, 19

Jacobsen v. Katzer,
No. C 06-01905 JSW, 2009 U.S. Dist. LEXIS 115204 (N.D. Cal. Dec. 10, 2009) ...... 24

Jada Toys, Inc. v. Mattel, Inc.,
518 F.3d 628 (9th Cir. 2008) ...... 7

Johnson Controls, Inc. v. Phoenix Control Systems, Inc.,
886 F.2d 1173 (9th Cir. 1989) ...... 25

Jonathan Browning, Inc. v. Venetian Casino Resort LLC,
No. C 07-03983 JSW, 2009 U.S. Dist. LEXIS 57525 (N.D. Cal. June 18, 2009) ...... 23

Kos Pharms., Inc. v. Barr Labs., Inc.,
218 F.R.D. 387 (S.D. N.Y. 2003) ...... 20

Krippelz v. Ford Motor Co.,
636 F. Supp. 2d 669 (N.D. Ill. 2009) ...... 19

L.A. News Serv. v. Reuters Tv Int'l,
340 F.3d 926 (9th Cir. 2003) ...... 8

Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc.,
No. 10-15909, No. 10-16015 2011 U.S. App. LEXIS 18815 (9th Cir. Sept. 9, 2011) ...... 8, 9, 18

Lucent Techs., Inc. v. Gateway, Inc.,
580 F.3d 1301 (Fed. Cir. 2009) ...... 21

MDY Indus., LLC v. Blizzard Entm’t, Inc.,
Nos. 09-15932, 09-16044, 2011 U.S. App. LEXIS 3428 (9th Cir. Feb. 17, 2011) ...... 9, 10

Northbrook Digital, LLC v. Vendio Servs. Inc.,
625 F. Supp. 2d 728 (D. Minn. 2008) ...... 16

PalTalk Holdings, Inc. v. Microsoft Corp.,
No. 2:06-CV-367 (DF), 2009 U.S. Dist. LEXIS 131087 (E.D. Tex. Feb. 2, 2009) ...... 19

Pivot Point Int’l, Inc. v. Charlene Prods., Inc.,
932 F. Supp. 220 (N.D. Ill. 1996) ...... 6

Polar Bear Prods., Inc. v. Timex Corp.,
384 F.3d 700 (9th Cir. 2004) ...... 23

iii

TABLE OF AUTHORITIES
(continued)

Page

Pye v. Mitchell,
574 F.2d 476 (9th Cir. 1978) ...... 8

Qualcomm Inc. v. Broadcom Corp.,
548 F.3d 1004 (Fed. Cir. 2008) ...... 27

THK Am., Inc. v. NSK Co. Ltd.,
151 F.R.D. 625 (N.D. Ill. 1993) ...... 20

Thorn EMI N. Am., Inc. v. Micron Tech., Inc.,
821 F. Supp. 272 (D. Del. 1993) ...... 6

Uniloc USA, Inc. v. Microsoft Corp.,
632 F.3d 1292 (Fed. Cir. 2011) ...... 10

Wang Labs., Inc. v. Mitsubishi Elecs. Am., Inc.,
103 F.3d 1571 (Fed. Cir. 1997) ...... 27

Wang Labs., Inc. v. Mitsubishi Elecs. Am., Inc.,
1994 WL 471414 (C.D. Cal. Mar. 3, 1994), aff’d on other grounds, 103 F.3d 1571 (Fed. Cir. 1997) ...... 20

STATUTES

17 U.S.C. 102(b) ...... 25

35 U.S.C.
§§ 101 and 102 ...... 17

§ 271(c) ...... 16

§ 284 ...... 21

17 U.S.C.A.
§ 504 ...... 22

OTHER AUTHORITIES

3-12 Nimmer on Copyright § 12.10[B][1] ...... 24

Fed. R. Civ. P. 39(c) ...... 27

iv

I. INTRODUCTION AND OVERVIEW

Oracle will prove at trial that Google deliberately chose to base its Android software platform on Java technology, seeking to develop and deploy Android rapidly and to capitalize on the large community of Java software developers. [REDACTED] (Trial Ex. 7 ). Google chose to take its chances and push forward with Java, helping itself to Oracle’s intellectual property without a license. Oracle will prove at trial that Google’s Android software platform infringes (1) Oracle’s copyrights in its Java software platform, and (2) six of Oracle’s Java-related patents.

The evidence of Google’s copyright infringement is overwhelming. To attract Java programmers to Android, Google copied the design specifications of at least 37 application programming interface packages (“APIs”) for Java’s core libraries into Android’s core libraries. The designs for those 37 Java APIs, spanning 11,000 printed pages, contain the carefully-wrought architecture for thousands of individual Java class files, methods, and data fields at the core of the Java platform. The API designs detail the relationships and complex interdependencies among these thousands of elements, and contain highly original and creative expression. The 37 APIs that Google copied constitute a substantial and vital chunk of Java’s core libraries (37 out of 166 APIs in Java Development Kit Version 5). Furthermore, notwithstanding Google’s claim that it developed Android in a “clean room,” it also copied proprietary Java source code, object code and comments in 12 software files.

Oracle will ask the Court, after hearing the evidence, to instruct the jury that the API specifications and the copied code are protected by copyright. The Court has already rejected Google’s primary argument – that the API specifications are methods of operation – and Google does not contest that software code is copyrightable. A finding of infringement inevitably follows from a determination that the works are protected by copyright, because this is not a case where Google denies access or copying. [REDACTED] Google’s copyright expert also

1

acknowledges that Android copies the names and organization of the APIs. And Google does not dispute copying the 12 source code files. The only issue will be whether the copying is justified under Google’s affirmative defenses.

The evidence of Google’s patent infringement is equally strong. Google chose to model Android on the key features of the Java software platform and development environment. As a result, Android faced many of the same technical challenges that Oracle did with Java and, not surprisingly, adopted many of the same technical solutions to those problems. Some of the most important of those solutions are the subject of the six Java-related patents.

Oracle will rely in large part on the Android source code to prove that the accused functionalities infringe each of the asserted claims. In addition, it will show that in blog postings and public presentations, the Android engineers discussed in detail the features of Android that are covered by the six Java-related patents, often in language that directly tracks the patent claims. Similarly, Google engineers’ comments in the Android source code confirm that the patented features are included in Android.

Google’s infringement was willful from the very beginning. [REDACTED] Indeed, even after Oracle’s legal team presented patent infringement charts to Google’s lawyers on July 20, 2010, Google continued to make Android available on its website and even created new versions of the platform. Management repeatedly signed off on Android releases notwithstanding Oracle’s patent assertions. Google proffers no advice of counsel or other analysis to defend its conduct.

Google’s damages expert says that Android is losing money. But the truth is that Android is wildly successful, and is one of the most popular technology products in the world today. 550,000 new Android devices are activated every day. Google Chairman Eric Schmidt has publicly touted Android’s profitability, telling the market that Android revenues are “enough to pay for all of the Android activities and a whole bunch more.” [REDACTED]

2

[REDACTED] Moreover, Google’s own documents show this is just the tip of the iceberg of Android’s value to Google. Google’s use of Java technology enabled Google to bring Android to market quickly, and [REDACTED] Google estimates that the real value of Android could eventually become up to $10 billion per year.

Google’s success has come at Oracle’s expense. Of course, Google must pay for the right to use Oracle’s intellectual property. But Oracle has suffered harm far beyond a lost license fee. By incorporating the specific copyrighted works and patented inventions into Android and giving Android away for free, Google has undermined Oracle’s ability to license Java to wireless device manufacturers. Sun was forced to abandon its project for a Java-based smartphone software stack in the wake of Android’s launch, realizing that there was no way to compete with a free product. Worse still, because Android exploits Java but is not fully compatible with it, Android represents Sun’s, and now Oracle’s, nightmare: an incompatible forking of the Java platform, which undermines the fundamental “write once, run anywhere” premise of Java that is so critical to its value and appeal. Oracle, as the owner and steward of the Java platform, has a vested interest in avoiding platform fragmentation and facilitating an active Java developer community. Google is fully aware of the importance of preventing fragmentation. Ironically, one of the reasons that Google chose to build its platform on Java was its lack of fragmentation. [REDACTED] The harm from this continued fragmentation, from a product that is rapidly becoming one of the most widespread operating systems in the world, is irreparable and beyond quantification. Oracle will ask the Court to issue an injunction after the trial unless Google agrees to take immediate steps to remedy the fragmentation that has already occurred, and further agrees that the fragmentation will stop.

3

II. BACKGROUND OF JAVA AND ANDROID

A. Oracle and Java

On January 27, 2010, Oracle Corp. acquired Sun Microsystems, Inc., merged it into Oracle USA, Inc., a wholly owned subsidiary of Oracle Corp., and renamed it Oracle America, Inc. (“Oracle”). One of the most important Sun technologies Oracle acquired was the Java platform and associated intellectual property. After licensing negotiations between Oracle and Google failed (and following several years of unsuccessful licensing discussions between Sun and Google), Oracle filed this complaint against Google on August 12, 2010.

The Java platform is a bundle of programs, specifications, reference implementations, and developer tools that allow developers to write applications in the Java programming language and device manufacturers and users to deploy those applications on servers, desktops, mobile devices, and other devices. Java was designed to achieve “write once, run anywhere” capability, a goal that it achieved, as evidenced by its widespread adoption in the computer programming community. The fundamental idea is that a software developer writes application source code using the Java programming language, compiles it once into an intermediate form known as Java “bytecode,” and distributes the bytecode to users. Users’ computers are configured with a preinstalled Java “virtual machine” or “JVM” that was written for the user’s particular computer architecture. The Java bytecode application executes “on top” of the JVM. The JVM presents a consistent interface to the bytecode application programs, so the same application bytecode can run on any computer that has a JVM. This means application developers only have to write their source code once, and it can run on any device containing a JVM, instead of writing a different version compatible with each device.

Interposing a virtual machine between the application code and the machine created significant technical challenges. Sun’s engineers developed new technologies that overcame those challenges. Among other things, they developed enhancements to improve performance speed and efficient memory usage in mobile devices. They also innovated in the area of security to address the many sources of Java programs available over the Internet. These efforts have

4

resulted hundreds of Java-related patents, including the six Java-related patents asserted in this case.

The Java class libraries that Sun developed are important components of the Java platform. The class libraries help application developers program more efficiently by supplying pre-written code for various applications, thereby obviating the need to write such code from scratch. The APIs are the blueprints to the class libraries, providing not just the names and hierarchical structure of thousands of elements (classes and “interfaces” and associated methods and data “fields”), but also the interdependencies among the various elements and the extent to which they are exposed to one another. Long-time Java programmers have come to expect Sun’s particular API designs and class libraries to be present in Java-based platforms.

Oracle estimates that the Java platform has attracted more than 6.5 million software developers, and that more than 1.1 billion desktop computers and 3 billion mobile phones run Java. Oracle distributes the Java platform under a variety of licensing terms, all of which share one common goal: protecting compatibility and thereby ensuring “write once, run anywhere.” This is the core value proposition for application developers and the bedrock of a positive feedback loop that drives Java’s success. As the Java website explains: “A marketplace flooded with proprietary code that varies from the official specification, or worse, parallel platform versions, would ‘fork’ the platform, eliminating its basic ‘Write Once, Run Anywhere’ compatibility foundation.” Oracle, and Sun before it, has gone to great lengths to prevent incompatible forks.

B. Google and Android

The Android operating system software “stack” consists of applications written in the Java programming language, a Java-based application framework, and Java core class libraries, all running on a “Dalvik” virtual machine (Android’s version of the JVM). Android first compiles Java application source code into Java bytecode, and then transforms the Java bytecode into Android bytecode known as “DEX.”

From the very beginning, Google built Android to be a Java operating system. Google knew that it had no effective alternatives if it wished to develop and offer a mobile platform

5

quickly that would appeal to users and application developers on whose efforts the competitive success of a platform depends.

Google invites Android application developers to program in the Java programming language using the Android software development kit (“SDK”). The Android SDK provides the tools and APIs necessary to develop applications on the Android platform using the Java programming language. Google also makes available Java “class library APIs,” which are aspects of the Java programming interface. Google’s expert testified that, once it chose to base its platform on Java, Google was “practically required” to include these APIs.

Because the output of Android software developers is not Java bytecode but Android’s DEX bytecode, Android applications cannot run on Java virtual machines even though originally written in the Java programming language. This disrupts the Java ecosystem and destroys the write-once/run-anywhere paradigm that drove Java’s acceptance. Android thus represents the highly injurious fragmentation of Java that Sun and Oracle have worked assiduously to prevent.

Google developed Android with the expectation that it would be widely adopted and profitable for Google by: (1) generating significant advertising revenue streams from Google search and other Google applications on Android devices; and (2) reinforcing Google’s dominant position in search and advertisements by ensuring its access to and position in the increasingly important mobile marketplace. Google believed it was critical to bring its Android mobile platform to market quickly, fearing dramatic decline if it failed to do so. (Trial Ex. 370 [REDACTED]

III. GOOGLE’S COPYRIGHT INFRINGEMENT

A. Direct Copyright Infringement

Oracle will prove that Google is liable for copyright infringement based on Google’s substantial copying of 37 API design specifications from Java’s core libraries, and software code from Oracle’s Java software platform.

To prevail on copyright infringement, Oracle must show that: (1) it owns the copyrights; and (2) Google copied original elements of the copyrighted APIs and code. Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 637-38 (9th Cir. 2008). Oracle’s Java-related works at issue in this

6

case are registered with the Copyright Office, establishing Oracle’s ownership of the copyrightsin- suit. Google does not deny that it copied the API specifications and source code.

In developing Android, Google employees and contractors deliberately copied the 37 Java API design specifications, containing the fundamental structure for much of the Java core class libraries. The “core” libraries are at the heart of the Java platform, providing foundational support for all applications running on the JVM. These APIs had been carefully and painstakingly designed by Sun engineers. Designing APIs for a complex modern software platform like Java is a highly creative, intellectually demanding endeavor. Google’s own expert acknowledged that designing APIs “certainly has creative elements” and he testified that: “[W]e’ve been writing software for more than 50 years. And it’s still incredibly difficult, despite all the advances that have been made in languages, in libraries, APIs are one of the things, although they’re not software, they’re related to software that it’s still hard to do.” In the words of Google engineer and API designer Joshua Bloch, who formerly worked for Sun and designed many of the APIs at issue, “API design is an art, not a science.” Oracle will present evidence at trial showing the many different and complex expressive choices that were made in designing the Java APIs. This design is set forth in the API specifications themselves and is incorporated into the Java source code that implements them.

Google engineers have admitted to consulting the Java API design specifications while designing Android. Former Google engineer Robert Lee was the lead core library developer for Android. He testified that he was tasked to [REDACTED] To this end, Google copied the 37 core Java API specifications into the Android API specifications, and incorporated the Java API specifications and their design into the Android source code, creating derivative works. Mr. Lee acknowledged that [REDACTED] Google engineers also testified that they based some of Android on code obtained from the Apache Software Foundation’s implementation of Java known as “Harmony.” But Google was well aware that the Harmony version of Java was not licensed for use in mobile phones. This was the topic of a widely publicized dispute between Sun and Apache. Google knew it should not have been copying from Harmony for Android.

7

And even if this were not the case, Google cannot excuse its copyright infringement by claiming that it copied from a third party, even if it thought the party was licensed. Pye v. Mitchell, 574 F.2d 476, 481 (9th Cir. 1978).

Android engineers also directly copied source code into Android from 11 Java code files into 12 files of its own. [REDACTED] Google also copied object code for eight other Java files, decompiled it to source code, and copied the source code from the file into Android. Google copied significant portions of comments from two additional files. The evidence of this copying is compelling, and Google has never attempted to deny it.

B. Indirect Copyright Infringement

Under Ninth Circuit law, as a consequence of Google’s direct infringement, Oracle is entitled to recover profits Google received from the further copying and exploitation of its infringing work by others in the United States or abroad. L.A. News Serv. v. Reuters Tv Int'l, 340 F.3d 926, 931-32 (9th Cir. 2003). Google is liable for indirect copyright infringement as well, based on the direct infringement of mobile device manufacturers, carriers and developers.

Google is liable for contributory infringement. To prove contributory infringement, Oracle must show that: (1) Google knew or had reason to know of the infringing activity of others; and (2) Google intentionally or materially contributed to the infringing activity of others. Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., No. 10-15909, No. 10-16015 2011 U.S. App. LEXIS 18815, at *12-15 (9th Cir. Sept. 9, 2011).

The Ninth Circuit recently addressed the question of contributory copyright infringement in Louis Vuitton. It held that: “Material contribution turns on whether the activity in question ‘substantially assists’ direct infringement.” Id. at *13 (citation omitted). The Ninth Circuit found there was contributory infringement in the Louis Vuitton case because the defendant’s hosting of servers was “an essential step in the infringement process.” Id. at *13-14 (citation omitted). Google “substantially assisted” the direct infringement of mobile device companies (OEMs), carriers, and developers by distributing infringing copies of Android source code and binary code

8

by making it available to them for download. Google requires its OEMs to maintain the full set of Android APIs in Android devices including the 37 core APIs it copied from Oracle to prevent fragmentation of the Android platform. Google’s Android “anti-fragmentation” license provides that “[d]evice implementations MUST NOT omit any managed APIs,” and “MUST NOT modify the publicly exposed APIs on the Android platform” and “MUST NOT add any publicly exposed elements . . . to the APIs.” (emphasis in original). The infringing code was copied by mobile device manufacturers, and distributed by these manufacturers and carriers who sold the Android mobile devices that contain them. Google also does not dispute that the “rangeCheck” [REDACTED] has been included on many generations of Android devices, and so has been copied and distributed as well. Developers copy the infringing code from Google’s website when they download the Android SDK, as Google requires, to do their development work. Each of these activities is an “essential step” in the infringement process and thus Google is liable for contributory infringement.

The Ninth Circuit emphasized in Louis Vuitton that no finding of intent is required for contributory copyright infringement: “We have never held that an express finding of intent is necessary to support liability for contributory copyright infringement. To the contrary, we have held that ‘intent may be imputed’ as a result of ‘a service provider’s knowing failure to prevent infringing actions.’” Id. at *12-13 (quoting Perfect 10, Inc. v. Amazon.com, 508 F.3d 1146, 1172 (9th Cir. 2007)). Here, Google not only failed to prevent infringing actions – it actively encouraged them.

Google is similarly liable for vicarious infringement. To prove vicarious infringement, Oracle must show that: (1) Google profited directly from the infringing activity of the mobile device manufacturers, application developers, and end-users; (2) Google had the right and ability to supervise and control the infringing activity of those parties; and (3) Google failed to exercise that right and ability. MDY Indus., LLC v. Blizzard Entm’t, Inc., Nos. 09-15932, 09-16044, 2011 U.S. App. LEXIS 3428, at *10 (9th Cir. Feb. 17, 2011). Google is profiting to the tune of hundreds of millions in dollars in advertising revenue alone based on this infringing activity. The Android licenses, with their anti-fragmentation requirements, prove that Google had the “right

9

and ability to supervise and control the infringing activity.” Google not only failed to stop the infringing activity, Google actually requires it.

IV. GOOGLE’S PATENT INFRINGEMENT

A. Direct Patent Infringement

Oracle will prove that Google has directly infringed the six Java-related patents by making, using, offering to sell, selling, or importing devices running Android or the Android SDK. The 26 asserted claims of the six Java-related patents include method, apparatus, and computer-readable medium claims. Many of the asserted claims can be grouped into pairs or triples, with each claim in the group having the same technical substance, but drafted as a different type (method, apparatus, or CRM). Google’s Android software is the linchpin of the infringement of each type of claim. Installing Android software on a device creates a system that infringes apparatus claims, using the Android device infringes the method claims, and the Android device’s storage media infringes the computer-readable media claim. Similarly, for two of the patents (the ’702 and ’520), infringement of the apparatus, method, and CRM claims occurs, respectively, through installation, use, and storage of the Android SDK on a computer to write Android applications. In each case, infringement arises from meeting identical limitations in all of the claim types.

To prevail on direct infringement, Oracle must show that Android, or the use of Android, satisfies each and every requirement of the asserted claims. Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1301 (Fed. Cir. 2011). Oracle’s evidence of Google’s infringement will include (1) a detailed analysis of Android source code performed by Oracle’s experts, (2) the testimony of Google engineers who developed Android, and (3) numerous comments in the Android source code, Google e-mails, blog postings, and public presentations describing the infringing Android functionality in a manner that often directly tracks the claim language.

Separately and together, the six Java-related patents cover innovations that are crucial to the viability of Android’s virtual-machine-based architecture. The internal e-mails among the Android developers reveal that the Java virtual machine was essential to Android: e.g., [REDACTED]

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[REDACTED] (Google engineer Brian Swetland, Trial Ex. 7). The six Java-related patents cover features designed to enhance performance speed and memory efficiency of the Java virtual machine, as well as provide a robust security framework:

Reissue Patent No. RE38,104. This patent covers systems and methods for resolving “symbolic references” (i.e., name references in bytecode for classes, methods, fields, or strings) into numerical references (references by memory location). Oracle will show that the asserted claims are infringed by Android’s Dalvik virtual machine and dexopt software, both of which resolve symbolic references in the bytecode into numeric references indicating memory locations.

Patent No. 6,910,205. This patent increases the execution speed of bytecode instructions by modifying them to represent or reference “native” machine instructions. Oracle will show that the asserted claims are infringed by Android’s dexopt software and Just-In-Time compiler, both of which translate certain bytecode instructions into new instructions that reference or represent native code.

Patent No. 5,966,702. This patent saves memory space by removing from individual class files certain code and data that are redundant across multiple class files and placing them in a “shared constant pool table.” The resulting “reduced class files” are packaged together in a multi-class file. Oracle will show that the asserted claims are infringed by Android’s dx tool, which pre-processes class files to identify and remove duplicated constant pool entries, places them into a shared table, and forms a multiclass file of reduced class files and the shared table.

Patent No. 7,426,720. The asserted claims relate to a method for improving application startup time and preserving memory space by running applications in separate virtual machines created using a “copy-on-write” cloning mechanism. Application programs share a memory space until one needs to “write” to that space, at which point, a copy of that space is made, thus minimizing the amount of memory needed. Oracle will show that the asserted claims are infringed by Android’s zygote software, which clones a child Dalvik virtual machine from a master Dalvik virtual machine for each new application launched using a copy-on-write cloning

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mechanism that defers copying of the shared memory space until a process attempts to write to a portion of the shared memory space.

Patent No. 6,061,520. The claimed invention simulates or “play executes” a program to create a reduced number of instructions to perform the same operation. Oracle will show that the asserted claims are infringed in part by Android’s dx tool, which simulates execution of bytecode to identify the static initialization of an array.

Patent No. 6,192,476. The claimed invention provides a security mechanism in which objects are allowed to perform only the actions specified in the “protection domains” associated with their classes. Although Google claims that Android does not use the Java security mechanism, the infringing code was indisputably included in all Android versions prior to the most recent release, allowing Android implementers the option of utilizing the Java security framework.

The evidence of Google’s infringement will not be difficult for a jury to follow, as it includes comments in Google documentation describing Android’s features in language that plainly tracks the patent claims. For instance, engineer comments in the Android source code show that Android resolves “symbolic references” (the term used in the ’104 patent claims) into memory location references, infringing the ’104 patent:

Similarly, internal Google documents reveal that Android includes a “shared constant pool” (the claim language of the ’702 patent) for storing redundant items from multiple class files, infringing the ’702 patent: [REDACTED] Android Product Requirements, Trial Ex. 141).

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Google’s own technical descriptions of Android show the substantial benefits of the patented features to the speed and memory efficiency of Android devices. For example, in a public video, Google engineer Dan Bornstein discussed the performance benefits of symbolic reference resolution, the technology of Oracle’s ’104 patent:

We do optimization. . . . we have a bunch of other things that we do such that when, when it comes time to run, we can run that much faster. So as an example of static linking, before, when, when a dex files arrives on a, on a device it will have symbolic references to methods and fields, but afterwards it might just be a simple, a simple integer v-table offset.
(Google I/O Android Video on “Dalvik Virtual Machine Internals” by Dan Bornstein (2008).)

The performance benefits of the patented features were confirmed through performance tests conducted by Oracle’s experts. In summary, the tests showed that the patented features substantially increase application execution speed on Android devices (as much as 13 times faster for some of the patented features), and save memory by as much as 40%, which ultimately prolongs battery life. A survey conducted by another Oracle expert demonstrates user demand for faster application launch times and greater multitasking capability, characteristics enhanced by the patented inventions.

B. Indirect Patent Infringement

Oracle will prove that Google has contributed to infringement by mobile device manufacturers, mobile service providers, developers, and end-users of Android, and actively induced them to infringe the asserted claims. To prevail on contributory infringement, Oracle must show that: (1) Google supplied an important component of the infringing part of the product; (2) the component is not a common component suitable for non-infringing use; and (3) Google supplied the component with knowledge of the Java-related patents (or having willfully blinded itself to their existence) and knowledge that the component was especially made or adapted for use in an infringing manner. Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 487-93 (1964); DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1303 (Fed. Cir. 2006) (en banc).

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To prevail on active inducement, Oracle must show that: (1) Google took action intending to cause acts by purchasers, licensees, and users of Android; (2) Google was aware of the six Java-related patents (or had willfully blinded itself to their existence) and knew or should have known that the acts, if taken, would constitute infringement of those patents; and (3) the acts were actually carried out by the purchasers, licensees, and users of Android and directly infringed that claim. DSU Med. Corp., 471 F.3d at 1304.

Oracle will show that Google has indirectly infringed the asserted claims by distributing the Android platform to mobile device manufacturers, mobile service providers, developers, and end-users, and encouraging them to use it without modification. Google uses the “Android” trademark and [REDACTED] as a “carrot” for compliance with Google’s detailed compatibility requirements for Android devices. Among other things, Google’s Compatibility Definition Document prohibits most changes to the Java APIs within Android (“Device implementations MUST NOT modify the publicly exposed APIs on the Android platform by changing any method or class signatures”), and prohibits or discourages changes to the infringing Dalvik virtual machine (“Device implementations MUST support the full Dalvik Executable (DEX) bytecode specification and Dalvik Virtual Machine semantics”). Google also encourages Java programmers to develop Android applications using the infringing Android SDK. The testimony and documents of Google personnel, as well as testimony from a corporate representative of Motorola Mobility (a major Android device maker), will show that Google goes to great lengths to prevent mobile device manufacturers from fragmenting Android, and in doing so, ensures that they do not modify the patented source code features.

1. Google’s Willful Blindness

In order to establish the “intent” prong of contributory infringement and infringement by inducement, Oracle need not prove that Google had actual knowledge of the six Java-related patents. Instead, as the Supreme Court recently held in Global-Tech Appliances, Inc. v. SEB S.A., Oracle can establish that Google had the requisite intent by showing that Google took deliberate actions to avoid learning of the Java-related patents. 131 S. Ct. 2060, 2067, 2070-71 (2011).

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Google’s jury instructions studiously avoid any reference to Global-Tech’s willful blindness standard, relying instead on model instructions decided four years before.

To prove willful blindness, Oracle must show that: (1) Google subjectively believed that there was a high probability that Oracle had protective patents covering the Java platform; and (2) Google took deliberate actions to avoid learning of that fact. Global-Tech Appliances, 131 S. Ct. at 2070-71.

Oracle will show that Google knew Sun had a broad patent portfolio covering the Java platform. Mr. Rubin, the head of Google’s Android division, knew that Sun had intellectual property covering Java from as early as 2003, when his company, Danger Inc., took a Java license from Sun. He subsequently negotiated with Sun for a Java license while at Android Inc. and then at Google. In late 2005 and 2006, after Google acquired Android Inc., Sun and Google discussed a collaboration to incorporate Java technology into what became the Android operating system. In 2008, Sun and Google engaged in further discussions. In the spring and summer of 2010, before the filing of this lawsuit in August 2010, Oracle and Google had another series of meetings to discuss a Java license for Android. [REDACTED] Moreover, in a July 20, 2010 meeting, Oracle presented to Google the six Java-related patents that are now at issue in the lawsuit. Given the history of licensing negotiations between Google and Sun/Oracle, Google cannot deny that it knew Java was subject to intellectual property protection and that Google needed a license to use it.

Furthermore, internal Google documents will show that Mr. Rubin and other Google employees were aware that Sun had Java-related intellectual property rights. And Google hired over one hundred former Sun employees, including four of the inventors of the asserted patents (Lars Bak, Frank Yellin, Robert Griesemer, and James Gosling), several Sun Java engineers who became key Android developers (Joshua Bloch and Tim Lindholm), and Sun’s former CTO, Eric Schmidt, who became Google’s CEO and Chairman. The inventors were, of course, heavily involved with the development of the Java virtual machine at Sun (Mr. Gosling, in particular, is regarded as the father of the Java platform). Messrs. Bloch and Lindholm were also closely

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involved with the JVM (Mr. Lindholm was co-author of the official Sun book on the JVM). And Mr. Schmidt, as Sun’s CTO, was intimately familiar with Java. With this large and knowledgeable cast of former Sun personnel in its employ, Google cannot deny that it was aware of Sun’s Java intellectual property portfolio and licensing practices. Oracle will show that despite its knowledge of the high probability that Android infringed Sun’s Java-related patents, Google made a deliberate choice not to investigate the patents in order to avoid learning of that fact. Google’s willful blindness to the existence of the Java-related patents satisfies the “intent” prong of Oracle’s indirect infringement claims.

2. Google Cannot Escape Liability By Claiming That Android is Free

Google contends that because it ostensibly makes Android available without monetary charge, it cannot be liable under §§ 271(a) or 271(c) for “offer[ing] to sell, or sell[ing]” Android. But there is no basis for exempting no-charge products from infringement liability under the statute. Google does not contest that it can still be liable under § 271(a) because it “makes” and “uses” Android. Courts have held that giving away a product is a “use” under § 271(a), particularly when the infringer derives economic gain from the product. There is no sound reason why no-charge products liable for direct infringement under § 271(a) should be exempt from contributory infringement under § 271(c). Moreover, Android is not given away free of obligation, as Google requires OEMs to comply with its compatibility requirements if they wish to benefit from use of the Android trademark and Google’s Android applications store.

Courts have held that giving away an infringing product without charge is a “use” under § 271(a). Northbrook Digital, LLC v. Vendio Servs. Inc., 625 F. Supp. 2d 728, 754 (D. Minn. 2008) (holding that free software may “use” accused technology and infringe under § 271); Thorn EMI N. Am., Inc. v. Micron Tech., Inc., 821 F. Supp. 272, 275 (D. Del. 1993) (“because delivery of free samples of allegedly infringing samples tangibly impinges on the patentee’s monopoly rights in a way that ordinary solicitation does not, such delivery must be regarded as ‘use’ of an allegedly infringing product for the purposes of § 271(a)”). Liability for the distribution of nocharge products is particularly appropriate where the infringer derives an economic gain from distribution of the product. See Northbrook, 625 F. Supp. 2d at 755 n.5 (“Because usage is a

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sufficient theory to establish jurisdiction over the infringement claims here, it is not necessary to consider whether Vendio derives any other economic gain that may constitute a sale under § 271(a). But there is little question that, even though Vendio distributes Dealio software for free, it does so to its commercial advantage.”).

There is no question that Google derives a huge economic benefit from its distribution of Android, including millions of dollars in advertising revenue generated from Android devices. Given the economic gain it derives from Android, it would make no sense to exempt Google’s distribution of Android from triggering contributory infringement liability under § 271(c). Google has offered no authorities to support such an exemption.

C. Google’s Invalidity Contentions

Google’s primary defense against Oracle’s patent claims is the asserted invalidity of the six Java-related patents, as well as a claim of patent unenforceability due to implied license, laches, estoppel, and waiver. No doubt recognizing the deficiencies of its original invalidity contentions, Google sought leave to supplement those contentions, but the Court mostly denied Google’s proffered supplementation as untimely. Google is now left with a narrowed group of invalidity contentions, many of them based on tenuous obviousness assertions.

Oracle will oppose any effort by Google to assert invalidity contentions that it was not granted leave to include in its supplemental contentions. In particular, Google still purports to assert its “printed matter” defense under 35 U.S.C. §§ 101 and 102 against Claim 19 of the ‘720 patent and Claim 14 of the ‘476 patent, even though the Court denied Google’s request to supplement its contentions to provide further elaboration on this defense. (Dkt. 281 at 7.) This printed matter defense was not timely disclosed and is not properly in the case. Similarly, Google should not be permitted to assert any invalidity grounds not included in its Court-ordered selection of contentions.

V. GOOGLE’S WILLFUL INFRINGEMENT

A. Willful Infringement

Oracle will prove that Google willfully infringed the copyrights-in-suit and the six Javarelated patents. To prevail on willful copyright infringement, Oracle must show that (1) Google

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was actually aware of the infringing actions; or (2) Google’s actions were the result of reckless disregard for, or willful blindness to, Oracle’s rights. Louis Vuitton Malletier, 2011 U.S. App. LEXIS 18815, at *15. To prevail on willful patent infringement, Oracle must show that: (1) Google acted despite a high likelihood that Google’s actions infringed a valid and enforceable patent; and (2) Google actually knew or should have known that its actions constituted an unjustifiably high risk of infringing a valid and enforceable patent. In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007).

Oracle will show that Google knew or willfully blinded itself to the fact that the Java platform is protected by the Java-related copyrights and patents, that Google infringed the copyrights and patents anyway, and that it contributed to and induced others to infringe them as well. There can be no question that Google knew Java was a proprietary technology subject to copyright and patent protection and that it needed a license to use it for Android. As previously described, the history of Java license negotiations in which Mr. Rubin and Google were involved unequivocally demonstrates Google’s knowledge. Internal communications at Google reveal that the company was well aware of the need to license Java technology for use in Android, and that it deliberately chose to proceed without a license. And the numerous Sun personnel that Google hired brought with them not only their knowledge of the Java technology, but also their awareness of Sun’s Java intellectual property and licensing practices.

Google argues that it cannot be liable for willful infringement prior to the time that it became specifically aware of the six Java-related patents. The parties agree that Oracle presented the six Java-related patents to Google at a meeting on July 20, 2010. Google insists that it had no knowledge of the specific patents prior to that time, and so cannot be liable for willfulness. Google is mistaken on the law.

Federal courts have found that specific knowledge of the patents is not necessarily required to trigger a finding of willful infringement. The Federal Circuit in Seagate held that a finding of willfulness requires a showing that “the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” In re Seagate, 497 F.3d at 1371 (emphasis added). District courts applying Seagate have found that specific knowledge of

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the patents is not required if the infringers had enough information that they knew or should have known their actions constituted an unjustifiably high risk of infringing a valid patent. Krippelz v. Ford Motor Co., 636 F. Supp. 2d 669, 671, n.2 (N.D. Ill. 2009) (“Knowledge of [a] patent is not the same thing as knowledge of the high likelihood that one’s actions constituted infringement of a valid patent”); PalTalk Holdings, Inc. v. Microsoft Corp. No. 2:06-CV-367 (DF), 2009 U.S. Dist. LEXIS 131087, at *6-7 (E.D. Tex. Feb. 2, 2009). In PalTalk, the court held that “knowledge may be actual or constructive.” Id. at 5. The patentee in that case identified information in the defendant’s possession that demonstrated the defendant’s awareness of both “the innovative characteristics of [patentee’s] technology and [its] development of a patent portfolio.” Id. at 6-7. The court held that “[a] reasonable jury could find based on the direct and circumstantial evidence presented that [defendant] had actual knowledge of the patents-in-suit.” Id. at 7.

Given all of the information that Google possessed regarding Sun’s Java intellectual property and the need to obtain a license for Java, Oracle will be able to demonstrate that Google willfully infringed the six Java-related patents both before and after the July 20, 2010 meeting.

B. Willful Infringement as Part of the Liability Phase of Trial

If this Court bifurcates the trial into liability and damages phases, the issue of willful infringement should be tried during the liability phase. There is a significant overlap between the evidence proving infringement and willful infringement. For example, numerous internal Google documents on Android’s architecture also discuss aspects of the Java platform and reveal Google’s knowledge of the need to take a Java license. Oracle also intends to examine the same Google witnesses for both infringement and willful infringement.

The evidence of willful infringement is relevant to other issues that the jury must decide in the liability phase as well. Oracle asserts that Google is liable for both direct and indirect infringement of the Oracle patents. While the parties do not agree on the instructions for willfulness or indirect infringement, they do agree that both require proof of knowledge and intent.

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Further, Google is asserting equitable defenses to infringement. Google has failed to articulate factual bases for these defenses, but if Google is allowed to present them during the liability phase, Google’s evidence and Oracle’s in response will bear directly on the issue of willfulness. See Haworth, Inc. v. Herman Miller, Inc., No. 1:92CV877, 1993 WL 761974, at *3- 4 (W.D. Mich. July 20, 1993) (willfulness to be tried in liability phase along with defendant’s equitable defenses since proof of willful infringement could provide a basis for the plaintiff to negate the defendant’s equitable defenses); Wang Labs., Inc. v. Mitsubishi Elecs. Am., Inc., No. CV 92-4698 JGD, 1994 WL 471414, at *2 (C.D. Cal. Mar. 3, 1994), aff’d on other grounds, 103 F.3d 1571 (Fed. Cir. 1997) (willfulness bears on equitable estoppel defense and thus should be tried with liability).

These closely related issues would become intertwined at trial. See Kos Pharms., Inc. v. Barr Labs., Inc., 218 F.R.D. 387, 393 (S.D. N.Y. 2003) (“questions regarding infringement and willfulness cannot always be neatly disaggregated into distinct evidentiary foundations grounded on entirely different witnesses and documents”); THK Am., Inc. v. NSK Co. Ltd., 151 F.R.D. 625, 629 (N.D. Ill. 1993) (“A willfulness determination . . . is a finding of fact inextricably bound to the facts underlying the alleged infringement.”). If the issue of willful infringement is left for the damages phase, Oracle will need to present much of the same evidence again. Accordingly, trying both infringement and willful infringement issues during the liability phase would promote judicial efficiency, conserve judicial resources, and respect the time commitment asked of the jurors.

VI. COPYRIGHT AND PATENT DAMAGES

Oracle seeks damages for both copyright infringement and patent infringement independently. For both copyright and patent infringement, Oracle seeks damages measured as a reasonable royalty for the infringement. For copyright, Oracle will also offer evidence on an alternative measure of damages, lost profits, as well as evidence of Google’s profits attributable to the infringement to the extent not included in the royalty or lost profits. Oracle contends that it is entitled to treble damages based on Google’s willful infringement of its patents, and that

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Google may not be able to deduct certain of its overhead costs if the jury finds that it deliberately plagiarized Oracle’s copyrights.

A “reasonable royalty” is calculated based on a hypothetical license negotiation as of the date infringement began. See Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1324-25 (Fed. Cir. 2009). The hypothetical license would allow use of the infringed intellectual property in exactly the way Google has used it: to create a mobile platform based on Java technology that is incompatible with Oracle’s Java platform and provides Google with two important benefits – a pre-existing base of application developers and platform independence crucial to ensuring that it continues to be the dominant provider of search and advertising on the Internet. In calculating a reasonable royalty, key considerations will be the substantial losses that Sun anticipated as a result of Android and the enormous gains that Google expected (and, in fact, has earned and will earn) from Android.

A. Damages for Patent Infringement

Following the methodology prescribed by the Court in its July 22, 2011 Order and the case law (including Georgia Pacific), Oracle’s damages expert calculated damages from patent infringement based on an assessment of a reasonable royalty arising from a hypothetical negotiation for a license that would enable Google’s use of the specific infringed intellectual property. To do so, the expert identified a reasonable starting point royalty, based on the actual negotiations between the parties in 2005 and 2006 and the nature of the license that Google assumed. As suggested by the Court, Oracle’s damages expert used $100 million as an appropriate “starting point.”

Following the Court’s direction, Oracle’s damages expert next determined that substantial upward adjustments are warranted to reflect the “use made of the invention by the infringer.” See 35 U.S.C. § 284; Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970). The actual-world negotiations between Sun and Google contemplated a license that would have guaranteed Android’s compliance with Java’s compatibility test kit (“TCK compliance”) and overall compatibility with Sun’s Java platform, thereby providing Sun substantial benefits in the form of convoyed sales (such as additional fees for customized source code) and further

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platform momentum, whereas the hypothetical license for use of Sun’s Java IP to create Android in the incompatible form in which it exists today eliminated these benefits and fragmented Java technology.

Oracle’s expert then used the opinions of technical experts, industry performance benchmarks, economic data, a consumer survey, detailed statistical analyses, and Google’s own documents to determine the contributions of the particular infringed patents relative to the “starting point,” adjusting downward as a result. He further apportioned to limit damages to the consequences of infringing acts performed within the United States, and concluded that a reasonable royalty for the patents-in-suit, taken together and based only on those elements that he was able to quantify is approximately $202 million through December 2011. He did not include the substantial, but irreparable and unquantifiable harm from fragmentation in this figure.

Consistent with the Court’s guidance that Oracle should also address the assumption that an injunction may not be entered, Oracle’s damages expert also noted that annual future damages will likely be significantly higher than annual past damages because of the finding of liability, changed market circumstances since the time of the original hypothetical negotiation, and the growing significance of fragmentation as Android increasingly penetrates multiple markets. Using the structure of the original hypothetical license, patent damages for 2012 alone would be approximately $200 million.

B. Damages for Copyright Infringement

As damages for Google’s copyright infringement, Oracle is entitled to recover the actual damages that Oracle suffered as a result of the infringement, and any of Google’s profits that are attributable to the infringement and are not taken into account in computing the actual damages 17 U.S.C.A. § 504.

With respect to actual damages for copyright infringement, Oracle’s expert first calculated actual damages as a reasonable royalty, using much the same approach as for patent damages. See Polar Bear Prods., Inc. v. Timex Corp., 384 F.3d 700, 707-08 (9th Cir. 2004). The value of the copyright hypothetical license is $102.6 million. As an alternative measure of actual damages, Oracle’s expert calculated Oracle’s lost profits, which are also significant. Oracle has

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suffered reductions in its Java licensing revenue to mobile device and other manufacturers, as well as lost profits from revenue it had projected to earn from the Java-based smartphone platform development project that it discontinued because Google released an infringing, incompatible Android for free. Actual damages measured as lost profits are $136.2 million.

Oracle’s expert also analyzed Google’s infringer’s profits. On this issue, it is Google’s burden to prove its deductible expenses and to demonstrate the portion of its profits that is not attributable to the infringed APIs, which even its own copyright expert recognizes “are necessary for functionality, interoperability and programming efficiency.” Infringer’s profits are already substantial and will be immense in the future. Although Google’s damages expert offered no independent apportionment analysis of his own, if the jury accepts that Google has carried its burden on apportionment, Oracle’s damages expert calculates past damages as infringer’s profits of $61.3 million; going forward, they could be in the hundreds of millions of dollars for 2012 alone.

VII. ISSUES TO BE DECIDED BY THE COURT

Several important issues of law should be decided by the Court after hearing the evidence at trial. The same is true for Google’s equitable defenses.

A. Copyrightability of The 37 API Design Specifications and Copied Code

The Court should instruct the jury on the copyrightability of the 37 core API design specifications and the 12 source code files that Google copied. Copyrightability is a question of law for the court. See Jonathan Browning, Inc. v. Venetian Casino Resort LLC, No. C 07-03983 JSW, 2009 U.S. Dist. LEXIS 57525, at *2 (N.D. Cal. June 18, 2009) (“Determinations of copyrightability are indeed questions of law reserved for the judge, and not the jury.”). The Ninth Circuit has held that the court should determine both copyright protection and its scope. Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1443, 1447 (9th Cir. 1994).

However, to the extent there are facts underlying copyrightability these may be for the jury to decide. See 3-12 Nimmer on Copyright § 12.10[B][1] (“to the extent that the defendant challenges the quantum of plaintiff's originality or creativity as a matter of law, or urges other such legal challenges to copyright subsistence, these matters should be resolved solely by the

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judge. But threshold factual determinations in this regard, of course, are for the jury.”) In addition, courts in this Circuit recognize that originality is a question of fact. Dongxiao Yue v. Chordiant Software, Inc., No. C-08-00019, 2009 U.S. Dist. LEXIS 118824, at *7 (N.D. Cal. Dec. 21, 2009) (“Whether a work is sufficiently original to warrant copyright protection is a question of fact.”) (citing Dezendorf v. Twentieth Century-Fox Film Corp., 99 F.2d 850, 850 (9th Cir. 1938). When there are no genuine issues of fact, originality may be resolved as a matter of law. Jacobsen v. Katzer, No. C 06-01905 JSW, 2009 U.S. Dist. LEXIS 115204, at *9-10 (N.D. Cal. Dec. 10, 2009).

In this case, Google purports to raise several factual issues relating to the copyrightability of the APIs. Google contends, for example, that its copying of the APIs was required by “industry demand.” Google’s Motion for Summary Judgement (Dkt. 260) at 21. It also tries to justify its copying on the grounds of compatibility (id. at 19), even though it does not deny that Android fragmented Java and is incompatible with it. Google is also challenging the originality of the 37 API design specifications that it copied. Oracle does not believe that any of these factual challenges are valid. But the Court should consider this evidence as it relates to copyrightability and originality over the course of the trial, and determine if there are any issues of fact for the jury to determine. Oracle believes the Court will conclude, as a matter of law, that the 37 API design specifications are both original and copyrightable.

As described above, the API design specifications set forth a very intricate, and creative design, that contains thousands of different elements and defines the many complex relationships among them. Google cannot raise a serious challenge to the expressive nature of the APIs or their originality. Copyright law protects expression in software design, including the selection and structure of software elements. Courts have recognized the copyrightability of programs with much simpler structures than the Java API design specifications herethan Java. For example, the Tenth Circuit upheld a district court’s finding of likelihood of success on copyrightability of the “organization, structure and sequence” of a computer program designed to teach reading skills, including a “keying procedure” that required students to respond by pressing the 1, 2 or 3 keys. Autoskill, Inc. v. Nat’l Educ. Support Sys., Inc., 994 F.2d 1476, 1492, 1495 n.23 (10th Cir. 1993).

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Similarly, in CMAX/Cleveland, Inc. v. UCR, Inc., 804 F. Supp. 337, 355 (M.D. Ga. 1992), the court held that the file structures for a software program design for companies in the “rent to own” business constituted copyrightable expression. See also Eng’g Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335, 1345-46 (5th Cir. 1994) (rejecting argument that input data formats in structural engineering software program did not contain original expression because they were purportedly “organized in a particular fashion to effectuate the performance of mathematical calculations”). Certainly the API design specifications reflect a far more complex structure and organization than the software in these cases.

Google’s main challenge to the copyrightability of the API design specifications was that they are supposedly unprotectable “methods of operation.” The Court has already has already rejected this argument on summary judgment, concluding that, “This order finds that the API package specifications at issue are not ‘methods of operation’ under 17 U.S.C. 102(b).” 9/15/11 Summary Judgment Order (Dkt. 433) at 10-11.

As for the 12 copied source and object code files, Google has never challenged that these files are protected by copyright. “Source and object code, the literal components of a program, are consistently held protected by a copyright on the program.” Johnson Controls, Inc. v. Phoenix Control Systems, Inc., 886 F.2d 1173, 1175 (9th Cir. 1989).

Accordingly, at the conclusion of the evidentiary phase of the trial, Oracle will ask the Court to instruct the jury that the 37 core API design specifications and the 12 source code files that Google copied are protected by copyright. The Court should also instruct the jury on the scope of protection to be afforded to the copyrighted works – in this case, substantial similarity – and the frame of reference for comparing the copyrighted works to the infringing workswithin which they should be compared.

Because Google does not deny access or copying, a finding that the APIs (and source code) are protected by copyright leads to a determination of copyright infringement, and the main issues for the jury to decideleaving will be Google’s affirmative defenses and , willfulness and damagesfor the jury to decide in the liability phase. The Court and the jury should hear this evidence at the same time, because it will overlap almost completely, and will involve the same

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fact and witness testimony and documentsation. As part of Google’s fair use defense, which the Court has already held raises factual issues that were not appropriate for determination on summary judgment (9/15/11 Summary Judgment Order (Dkt. 433) at 13), the jury must consider the “nature of the copyrighted work,” the “purpose and character of the use” and the “amount and substantiality of the portion used in relation to the work as a whole.” Id. (quoting 17 U.S.C. § 107). Google expressly raises the issue of compatibility in the context of both copyrightability and fair use. Google’s Motion for Summary Judgement (Dkt. 260) at 21. The jury and the Court will need to hear testimony from the same fact witnesses who were involved in designing these APIs and Google’s APIs to determine the amount of creativity involved in their design and their expressive nature. The jury will also need to understand this as well to determine both damages and the fourth fair use factor, the “effect of the use on the potential market for or value of the work as a whole.” Id.

At the conclusion of the evidence, the Court should instruct the jury on its findings of copyrightability so that they can apply those findings in reaching their verdict. See Pivot Point Int’l, Inc. v. Charlene Prods., Inc., 932 F. Supp. 220, 225 (N.D. Ill. 1996) (Easterbrook, C.J., sitting by designation) (,“[i]f the court determines that mannequin heads are copyrightable subject matter, the jury will be so instructed”).

B. Google’s Equitable Defenses of Laches, Equitable Estoppel, Waiver, and Implied License

Google is asserting laches, equitable estoppel, waiver, and implied license as defenses to Oracle’s claims of copyright and patent infringement. As set forth in the Joint Proposed Pretrial Order (Dkt. 525 at 10, 12), the parties agree that these issues should be resolved by the Court. But Google has nonetheless proposed that instructions be given to the jury on these defenses. There is no reason the jury should be asked to opine on these issues, when the parties already agree and the law is clear that the Court decides these defenses.

Laches, equitable estoppel, waiver, and implied license are equitable defenses to be decided by courts, not juries. A.C. Aukerman Co. v. RL Chaides Constr. Co., 960 F.2d 1020, 1028 (Fed. Cir. 1992) (en banc) (“As equitable defenses, laches and equitable estoppel are matters

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committed to the sound discretion of the trial judge . . . .”); Qualcomm Inc. v. Broadcom Corp., 548 F.3d 1004, 1019 (Fed. Cir. 2008) (reviewing “a district court’s judgment on the equitable defense of waiver for an abuse of discretion”).

The Ninth Circuit has held that “[a] litigant is not entitled to have a jury resolve a disputed affirmative defense if the defense is equitable in nature.” Granite States Ins. Co. v. Smart Modular Techs. Inc., 76 F.3d 1023, 1027 (9th Cir. 1996). Equitable issues may be submitted to a jury with the consent of both parties, but Oracle does not so consent. See Fed. R. Civ. P. 39(c); Wang Labs., Inc. v. Mitsubishi Elecs. Am., Inc., 103 F.3d 1571, 1578 (Fed. Cir. 1997) (“The parties agreed to submit Mitsubishi's implied license defense to the jury and the jury found an implied license to exist.”).

C. Injunction Against Android Platform

Oracle pursues injunctive relief to prevent Google from further fragmenting the Java platform and thereby undermining Oracle’s and others’ investments in Java’s “write once, run anywhere” promise. To prove that it is entitled to an injunction order against Google, Oracle must show that: (1) it has suffered an irreparable injury; (2) remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) balancing of hardships between Oracle and Google weighs in favor of the injunction; and (4) the public interest would not be disserved by a permanent injunction. eBay Inc. v. MercExchange, LLC, 547 U.S. 388, 391 (2006) (citations omitted). Injunction is an equitable remedy to be decided by the Court. Id. at 394.

Oracle will show that both the equities and the public interest require an injunction preventing Google from making, using, and distributing unauthorized, non-Java-compliant versions of the Android platform containing the copyrighted code and documentation and patented technology.1 Google’s infringement and the resulting fragmentation to Java evidence a clear case of irreparable injury. Oracle practices the copyrights-in-suit and the six Java-related

__________________________

1 Oracle will forego its injunction request only if Google commits in writing, in a form prescribed by Oracle, to ensure that Android will be Java-compatible and comply with all applicable Java licensing and payment conditions.

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patents, and has strived to keep the “write once, run anywhere” promise of the Java platform. Android’s incompatible forking of Java has caused irreparable injury to Oracle, and monetary damages are inadequate to compensate Oracle for the injury Android has caused to the value of the Java platform. An injunction is necessary to prevent Google from further fragmenting the Java platform and undermining Oracle’s and others’ investments in Java. Furthermore, as a result of Google’s infringement, Oracle will continue to lose share in the market for mobile platforms, as it has already lost significant sales for Java ME. i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831, 861 (Fed. Cir. 2010). Android will continue to draw application developers away from Java and will score significant design wins as a result. Amazon’s recent decision to make its Kindle e-reader an Android device, for example, illustrates that Android has caused and will cause further irreparable harm to Oracle. Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 702- 03 (Fed. Cir. 2008). Oracle practices the patents and copyrights-in-suit, and has strived to keep the “write once, run anywhere” promise of the Java platform. Android’s incompatible forking of Java has caused irreparable injury to Oracle, and monetary damages are inadequate to compensate Oracle for this injury. An injunction is necessary to prevent Google from further fragmenting the Java platform and undermining Oracle’s and others’ investments in Java.

Oracle anticipates that its request for an injunction will be decided by the Court based on evidence presented during trial as well as additional evidence presented through a hearing following at least the trial on liability.

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Respectfully submitted,

Dated: October 14, 2011

MORRISON & FOERSTER LLP

By: /s/ Michael A. Jacobs
Michael A. Jacobs

Attorneys for Plaintiff
ORACLE AMERICA, INC.

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