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To read comments to this article, go here
Oracle v. Google - Email Battle Continues; Trial Delayed Until 2012
Thursday, October 27 2011 @ 11:45 AM EDT

Google is not giving up the ghost on the Lindholm emails. As evidenced by an email exchange between Oracle and Google counsel (563-1 [PDF; Text]), Google intends to appeal Judge Alsup's order upholding the magistrate's determination that the Lindholm emails are not privileged. (See Google Loses Lindholm Email Battle).

The Oracle filing, which included this email exchange, opposes Google's still-pending motion to maintain the confidential status of the Lindholm emails in light of the court's ruling that those emails are not privileged. (563 [PDF; Text])

Oracle's argument that the emails not retain their confidential designation is threefold:

1. The court has destroyed any confidential designation by publishing the emails in its order;

2. The emails do not fall with the class of material covered by the protective order; and

3. Google added the "Privileged and Confidential" footer to the email pages only after the magistrate asked that the documents be reproduced.

It is clear from the brief email exchange contained in the attachment to Oracle's opposition that Google disagrees with these arguments. Google points out Judge Alsup only ruled on the privilege issue and specifically excluded a determination as to whether the emails are covered by the protective order. While that is technically correct, the judge's statement in the order does not appear as strong as Google asserts:

This order makes no comment on the merits of that pending motion. The parties are reminded, however, that confidentiality designations governing the litigants’ treatment of discovery materials do not entitle such materials to automatic protection when filed or used in court. The order adopting the stipulated protective order warned that filings will be sealed only by court order in accordance with the Ninth Circuit’s strict caution against sealing records (Dkt. No. 68).

Having considered the full text of the Lindholm email quoted herein and all related declaration testimony, this order finds that the Lindholm email does not contain any truly sealable material. Accordingly, this order will be filed in the public docket. The pendency of Google’s motion to retain its confidentiality designation is irrelevant to this determination.

The judge appears to manifest skepticism as to the confidential nature of the email when he says it "does not contain any truly sealable material."

On the other hand, Google is actually requesting that the emails be maintained as "Highly Confidential," not merely "Confidential," and it appears from the earlier order that Oracle had conceded the latter and was only contesting the former.

In addition to disputing the privilege status of the Lindholm email and drafts, the parties also dispute the confidentiality status of those documents. Google designated the documents as “HIGHLY CONFIDENTIAL — ATTORNEYS’ EYES ONLY” under the stipulated protective order when it produced them to Oracle. Oracle then requested that Google re-designate the documents as only “CONFIDENTIAL,” a category providing lesser protection under the protective order. Google has filed a motion to retain its more restrictive confidentiality designation (Dkt. No. 513).
So the Lindholm dispute is not over, at least from Google's perspective.

The next most important tidbit from yesterday's filings is the Proposed Trial Plan document (564 [PDF; Text]). While the document lays out the judge's plan for how to approach the trial, it also makes clear that this trial has now slipped until sometime in 2012. When in 2012 remains a question as Judge Alsup is trying to find a sufficient block of time on his calendar to allow for what now appears to be more than a three-week trial.

In the last filing of the day Google is asking the judge to decide certain issues related to the copyright infringement question before the trial commences. (562 [PDF; Text]) Specifically, Google asks the judge to decide the:

. . . issues of law relating to Oracle’s copyright infringement claim: (1) which if any of the literal and non-literal elements of the Asserted Works that were allegedly copied are copyrightable; (2) whether the applicable standard for infringement is “substantial similarity” or “virtual identity”; and (3) which works the jury will be asked to compare in determining the copyright infringement issues.
Google cites to case law in the 9th Circuit that finds these determinations to be questions for the court, not a jury. Dealing with these issues in advance of trial would clearly make the trial more efficient.

The other interesting point, which Google again raises in this letter, is that Oracle cannot have its cake and eat it too on the issue of copyright infringement. If Oracle wants to base its damages claim on copyright infringement on the entire value of Java, then the question is whether Google substantially copied all of Java not merely a handful of components within Java. If, on the other hand, Oracle is only asserting the copyright infringement of those components and not all of Java (which is what appears to be the case in all of the filings to date), then Oracle cannot claim copyright infringement damages based on the economic value of all of Java but must show the economic value of those individual components that are actually infringed, something which, Google asserts, Oracle has not done in any of its expert reports on damages.

As the Court has previously noted, elements of a registered work “may” qualify as separate works for at least some purposes. Copyright MSJ Order (Dkt. 433) at 6 (citing Tattoo Art, Inc. v. TAT Int’l, LLC, ___ F. Supp. 2d ___, 2011 WL 2585376, at *15-*16 (E.D. Va. June 29, 2011) (statutory damages)). If Oracle contends that the relevant “work” for any aspect of its copyright claim is something less than the works it registered, it must at least show that the work “has an independent economic value.” Id. at *16 (quoting Gamma Audio & Video, Inc. v. Ean-Chea, 11 F.3d 1106, 1117 (1st Cir. 1993)).
Along this same train of thought, Google also points to the varying standard for determining infringement, which is dependent on the extent of the material copied.

(3) Having dissected the alleged similarities and considered the range of possible expression, the court must define the scope of the plaintiff's copyright— that is, decide whether the work is entitled to “broad” or “thin” protection. Depending on the degree of protection, the court must set the appropriate standard for a subjective comparison of the works to determine whether, as a whole, they are sufficiently similar to support a finding of illicit copying.

35 F.3d at 1443 (emphasis in original). If “the range of protectable and unauthorized expression is narrow, the appropriate standard for illicit copying is virtual identity.” Id. at 1439.

This case is a long way from trial, but the interesting issues it continues to raise should prove enlightening.

Skip To Comments


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

Docket

561 - Filed and Effective: 10/24/2011
ORDER
Document Text: ORDER GRANTING APPLICATION FOR ADMISSION OF ATTORNEY FENTON PRO HAC VICE by Judge Alsup finding as moot 547 Motion for Pro Hac Vice; granting 551 Motion for Pro Hac Vice (whalc1, COURT STAFF) (Filed on 10/24/2011)(Entered: 10/24/2011)

562 – Filed and Effective: 10/25/2011
Letter
Document Text: Letter from Robert A. Van Nest Precis re Copyrightability. (Van Nest, Robert) (Filed on 10/25/2011) (Entered: 10/25/2011)

563 – Filed and Effective: 10/25/2011
RESPONSE
Document Text: RESPONSE (re 513 MOTION to Retain Confidentiality Designations ) filed by Oracle America, Inc. (Attachments: # 1 Declaration of Alanna C. Rutherford In Support Of Oracle's Opposition to Google's Motion to Retain Confidential Designations)(Rutherford, Alanna) (Filed on 10/25/2011) (Entered: 10/25/2011)

564 – Filed and Effective: 10/26/2011
PROPOSED TRIAL PLAN
Document Text: PROPOSED TRIAL PLAN. Signed by Judge Alsup on October 26, 2011. (whalc1, COURT STAFF) (Filed on 10/26/2011) (Entered: 10/26/2011)

565 – Filed and Effective: 10/26/2011
NOTICE
Document Text: NOTICE by Google Inc. re 561 Order on Motion for Pro Hac Vice, Truman H. Fenton (Sabnis, Cheryl) (Filed on 10/26/2011) (Entered: 10/26/2011)


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

Documents

562

[KEKER & VAN NEST LLP letterhead]

October 25, 2011

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

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

Dear Judge Alsup:

Google respectfully requests that the Court, following briefing from the parties, decide in advance of trial the following issues of law relating to Oracle’s copyright infringement claim: (1) which if any of the literal and non-literal elements of the Asserted Works that were allegedly copied are copyrightable; (2) whether the applicable standard for infringement is “substantial similarity” or “virtual identity”; and (3) which works the jury will be asked to compare in determining the copyright infringement issues.

Oracle’s copyright claim appears to be largely based on the alleged copying of some aspect of the selection, structure and organization of the unprotected names that are included in its API packages. At the October 19 case management conference, however, Oracle’s counsel was unable to explain this claim with any clarity:

THE COURT: What is the selection that is so good that even beats the phone book standard?

MR. JACOBS: It is the—I would have to bring in the 11,000 pages and start making a selection of them and walking the Court through how the developers of the Java APIs made those determinations.

10/19/11 Tr. at 48. To ensure orderly trial preparation and efficient presentation of the case to a jury, the Court should resolve the copyrightability and related legal issues before trial.

Copyrightability is a question of law. The Ninth Circuit has held that “[u]sing analytic dissection . . . the court must determine whether any of the allegedly similar features are protected by copyright.” Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1443 (9th Cir. 1994) (emphasis added). Affirming the district court, the Ninth Circuit held that “the district court properly . . . distinguished ideas from expression, and decided the scope of Apple's

The Honorable William Alsup
October 25, 2011
Page 2

copyright by dissecting the unauthorized expression and filtering out unprotectable elements.” Id. at 1447 (emphasis added). Oracle has acknowledged that “[c]opyrightability is a question of law for the court,” and has proposed deciding at least part of the issue before trial via motion. See Oracle’s Trial Br. (Dkt. 536) at 23; Oracle’s 10/18/11 CMC Stmt. (Dkt. 544) at 4.

As one district court has remarked, “[a] jury has nothing to do with” the copyrightability determination. Pivot Point, Int’l, Inc. v. Charlene Prods., Inc., 932 F. Supp. 220, 225 (N.D. Ill. 1996) (citing Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)) (Easterbrook, J., sitting by designation). Similarly, in Lotus Dev. Corp. v. Borland Int’l, Inc., 788 F. Supp. 78 (D. Mass. 1992), the court held that the “issues of copyrightability, including any fact questions bearing upon them, must be determined by the court, not the jury.” Id. at 96 (emphasis added).

Allowing these issues to remain unresolved until trial would unnecessarily complicate the trial and would create a significant risk of jury confusion and prejudice. Especially where the allegedly infringed elements are “arrangement and coordination,”

a judge is better able to separate original expression from the non-original elements of a work where the copying of the latter is not protectable and the copying of the former is protectable. The judge understands the concept of the idea/expression dichotomy and how it should be applied in the context of the works before him.
Intervest Corp. v. Canterbury Estate Homes, 554 F.3d 914, 919-20 (11th Cir. 2008). “[T]he ability to separate protectable expression from non-protectable expression is, in reality, a question of law or, at the very least, a mixed question of law and fact.” Id. at 920.

Apple Computer provides the framework for resolution. In accord with “well-settled principles” of law, the Ninth Circuit in Apple Computer identified three steps, which it noted were helpful in that case, “as in other cases”:

(1) The plaintiff must identify the source(s) of the alleged similarity between his work and the defendant’s work.

(2) Using analytic dissection, and, if necessary, expert testimony, the court must determine whether any of the allegedly similar features are protected by copyright. . . . [U]nprotectable ideas must be separated from potentially

The Honorable William Alsup
October 25, 2011
Page 3

protectable expression; to that expression, the court must then apply the relevant limiting doctrines in the context of the particular medium involved, through the eyes of the ordinary consumer of that product.

(3) Having dissected the alleged similarities and considered the range of possible expression, the court must define the scope of the plaintiff's copyright— that is, decide whether the work is entitled to “broad” or “thin” protection. Depending on the degree of protection, the court must set the appropriate standard for a subjective comparison of the works to determine whether, as a whole, they are sufficiently similar to support a finding of illicit copying.

35 F.3d at 1443 (emphasis in original). If “the range of protectable and unauthorized expression is narrow, the appropriate standard for illicit copying is virtual identity.” Id. at 1439.

Moreover, the relevant comparison for infringement is with Oracle’s “work as a whole.” Newton v. Diamond, 388 F.3d 1189, 1195 (9th Cir. 2004). As the Court has previously noted, elements of a registered work “may” qualify as separate works for at least some purposes. Copyright MSJ Order (Dkt. 433) at 6 (citing Tattoo Art, Inc. v. TAT Int’l, LLC, ___ F. Supp. 2d ___, 2011 WL 2585376, at *15-*16 (E.D. Va. June 29, 2011) (statutory damages)). If Oracle contends that the relevant “work” for any aspect of its copyright claim is something less than the works it registered, it must at least show that the work “has an independent economic value.” Id. at *16 (quoting Gamma Audio & Video, Inc. v. Ean-Chea, 11 F.3d 1106, 1117 (1st Cir. 1993)).

The Court should direct the parties to address each of these issues in their briefs. Because it is Oracle’s burden to prove that Google copied protected elements of its work, Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 636 (9th Cir. 2007), Oracle should file the opening brief.

Procedural matters. If, after reviewing the parties’ briefs, the Court decides that live testimony would be helpful, an evidentiary hearing could be scheduled. In addition, if the Court so desires and the parties are able to agree on an appropriate Special Master for the issues herein, Google would stipulate that the Special Master’s ruling on these issues would not be subject to further review by this Court, reserving all rights to appeal the issues to the Court of Appeals.

Sincerely,
/s/
Robert A. Van Nest


563

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 AMERICA, INC.’S
OPPOSITION TO GOOGLE INC.’S
MOTION TO RETAIN
CONFIDENTIALITY DESIGNATIONS

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

_______________________________________

Following months of back and forth on Defendant Google, Inc.’s (“Google”) claims of privilege and confidentiality over the production of several draft emails (“the Lindholm Documents”) (GOOGLE-12-10000001 - 10000011), on October 11, 2011, Google filed a motion to retain the Highly Confidential – Attorneys’ Eyes Only designation. Because the Lindholm Documents (1) fail to satisfy the criteria under the Protective Order set forth for any level of confidentiality; (2) have already been widely publicly disseminated and discussed in the media; and (3) bear no other indicia of competitively sensitive or trade secret information that would entitle the Documents to the limited category of protection, Plaintiff Oracle America, Inc. (“Oracle”) opposes Google’s motion to retain the confidentiality designation of the Lindholm Documents.

On October 22, 2011, Oracle’s counsel asked Google’s counsel to withdraw the present motion in light of the publication of the full text of the Lindholm Documents, which moots their confidentiality under the terms of the Protective Order. Google refused. In its response, Google failed to acknowledge that the contents of the Lindholm Documents have been widely disseminated to the public or address the confidentiality issues under the Protective Order. Rather, Google contended only that “despite the October 20 Order, Google believes these documents are privileged and intends to challenge the Court's ruling to the contrary.” (Rutherford Decl., Exh. A).

I. The Lindholm Documents Are Not Covered By The Protective Order As A Result Of
Public Dissemination By The Court.

On October 20, 2011, the Court published an Order which reproduced the text of the Lindholm Documents in full. (Dkt. No. 546 at 3). The publication of the text of the Documents puts it outside the scope of the Protective Order:

the protections conferred by this Stipulation and Order do not cover the following information: … any information . . . obtained by the Receiving Party [Oracle] after the disclosure from a source [the Court] who obtained the information lawfully and under no obligation of confidentiality to the Designating Party [Google].
Protective Order ¶ 3.

Google also fails to address that under the terms of the Protective Order, no confidentiality designation will be afforded to “any information that is in the public domain at the time of disclosure to a Receiving Party or becomes part of the public domain after its disclosure to a Receiving Party as a

1

result of publication not involving a violation of this Order, including becoming part of the public record through trial or otherwise.” Id. The Lindholm Documents are part of the public record. They have been discussed in open court and in three court orders. (Dkt. 230, 361, 546). The substance of the Documents has been discussed in well over a dozen news articles and blogs. (Dkt. 305, Ex. O); see, e.g., http://fosspatents.blogspot.com/2011/08/ oracle-and-google-keep-wrangling over.html; http://newsandinsight.thomsonreuters.com/New_York/ News/2011/ 08_-02_August/Oracle_judge_okays_damning_e-mail_despite_Google_privilege_claim/; http://www.pcworld.idg.com.au/article/print/396453/google_oracle_still_battling_over_android_email/; http://gaddjit.com/judge-email-in-oracle-google-case-will -remain-public/smart-phones. Thus, the Lindholm Documents no longer fall within the scope of the Protective Order.

II. Even Absent The Court’s October 20th Order, The AEO Designation on The Lindholm
Documents Is Improper

Even if they were not in the public domain, the Lindholm Documents do not warrant confidentiality protection under the Protective Order. The Protective Order defines “Highly Confidential – Attorneys’ Eyes Only” as limited to a sub-category of Confidential documents that are “extremely sensitive ‘Confidential Information or Items,’ disclosure of which to another Party or Non- Party would create a substantial risk of serious harm that could not be avoided by less restrictive means.” Joint Stipulated Protective Order ¶ 2.8 (Dkt. No. 66) (“Protective Order”). The Lindholm Documents do not satisfy the criteria for receiving protection under the Highly Confidential – AEO designation.

Indeed, the Documents do not even meet the requirements to receive a designation of “Confidential” under the Protective Order, which, in accordance with Federal Rule of Civil Procedure 26(c), requires that the Documents contain “a trade secret or other confidential research, development, or commercial information” that cannot be revealed except under certain restrictions. Fed. R. Civ. P. 26(c); Protective Order ¶ 2.2; see In re Violation of Rule 28(D), 635 F.3d 1352, 1358 (Fed. Cir. 2011) (“Implicit in our rule is a requirement that the district court protective order comply with Rule 26 of the Federal Rules of Civil Procedure.”).

2

Contrary to Google’s assertions, on their face, the Lindholm Documents do not reveal any “internal deliberations and evaluations of threats of litigation.” (Motion at 2 (Dkt. No. 513)). To the extent the Documents concern “a technology analysis related to a highly competitive business area,” the contents of the Documents are already publicly known and the sole competitor to whom they relate – Oracle. See Foltz v. State Farm Mut. Auto. Ins. Co., 331 F.3d 1112, 1130 (9th Cir. 2003) (a party must show “for each document it seeks to protect . . . that specific prejudice or harm will result”); Beckman Indus. v. Int’l Ins. Co., 966 F.2d 470, 476 (9th Cir. 1992) (“Broad allegations of harm, unsubstantiated by specific examples or articulated reasoning, do not satisfy the Rule 26(c) test.”)

Moreover, nothing in the Protective Order permits a party to cloak in confidentiality information that was embarrassing or simply contrary to the party’s litigation position. Indeed, this Court has previously stated that “if Google has a memo in their file saying, we are about to willfully infringe, there is no way I’m going to keep that secret from the public or the investing public.” 7/21/11 Hr’g Tx. at 19:10-12. (Dkt. No. 231). The Lindholm Documents fall squarely within the parameters of this Court’s words. Cf., In re Coordinated Pretrial Proceedings in Petroleum Prods. Antitrust Litig., 101 F.R.D. 34, 42-43 (C.D. Cal. 1984) (discussing “strong common law presumption of access” to documents filed in a civil proceeding).

Oracle initially requested that Google downgrade the designation of the Lindholm Documents from Highly Confidential to Confidential so that Oracle’s outside counsel could communicate fully with Oracle in-house counsel and senior executives involved in the case about the Lindholm Documents after portions of them were publicly disseminated. Indeed, strict adherence to the Protective Order means that even though the entirety of the Lindholm Documents have now been disseminated to the public in their entirety, including to Oracle’s in-house counsel and senior executives, they still cannot be discussed between Oracle’s outside counsel, in-house counsel and senior executives. No such perverse result was intended when the parties entered into the Protective Order.

In light of the impending trial in which the Lindholm Documents will be among many Google and Oracle documents used and relied upon in open court and the fact that the Documents fall into no category for which such designation is prescribed, Google should not be permitted to maintain any confidentiality designation over the Lindholm Documents.

3

III. The “Privileged & Confidential” Footer Added To The Reproduced Lindholm
Documents Should Be Removed

Following Magistrate Judge Ryu’s Order to reproduce the Lindholm Documents, Google altered the Documents, adding an additional “Privileged & Confidential” footer to each page. Oracle has repeatedly requested that the “PRIVILEGED & CONFIDENTIAL” footer be removed to avoid misleading the jury. Google has indicated that because it is still challenging the validity of the privilege ruling, it will not accede to the request. In light of the most recent Order of this Court, dated October 20, 2011 which denied Google’s Motion for Relief From the Non-Dispositive Pretrial Order of Magistrate Judge Ryu (Dkt. No. 546), Oracle requests that Google be ordered to reproduce the Lindholm Documents without alteration.

CONCLUSION

Because the Lindholm Documents do not meet any criteria for protection under the Joint Stipulated Protective Order, because they have been publicly disseminated and discussed in the media, and because the sole result of their continued protection is to hinder the free flow of advice and communication between client and counsel, Oracle respectfully requests that Google’s Motion to Retain the Confidentiality Designation of the Lindholm Documents be denied. Moreover, Oracle respectfully requests that Google be ordered to remove the additional “Privileged & Confidential” footer added to the Lindholm Documents and reproduce a clean set.

Dated: October 25, 2011

BOIES, SCHILLER & FLEXNER LLP

By: /s/ Alanna C. Rutherford
Alanna C. Rutherford

Attorneys for Plaintiff
ORACLE AMERICA, INC.

4


563 - Attachment 1

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

DECLARATION OF ALANNA C.
RUTHERFORD IN SUPPORT OF
ORACLE AMERICA, INC.’S
OPPOSITION TO GOOGLE INC.’S
MOTION TO RETAIN
CONFIDENTIALITY DESIGNATIONS

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

_______________________________________

I, Alanna C. Rutherford, declare as follows:

1. I am a partner with the law firm of Boies, Schiller & Flexner LLP, attorneys for plaintiff Oracle America, Inc. in the above captioned matter, and admitted to practice law before this Court.

2. I make this declaration based on my personal knowledge. If called as a witness, I could and would testify competently as to the matters set forth herein.

3. Attached hereto as Exhibit A is a true and correct copy of email correspondence between Oracle’s and Google’s counsel with the most recent email correspondence dated October 24, 2011. I received this email.

Dated: October 25, 2011

BOIES, SCHILLER & FLEXNER LLP

By: /s/ Alanna C. Rutherford
Alanna C. Rutherford

Attorneys for Plaintiff
ORACLE AMERICA, INC.

1

EXHIBIT A

From: Daniel Purcell [email address]
Sent: Monday, October 24, 2011 4:17 PM
To: Alanna Rutherford; DALVIK-KVN; [email address]; [email address]
Cc: Oracle-Google; [email address]
Subject: RE: Oracle v. Google: Motion to Retain Confidentiality of the Lindholm Documents

Alanna,

Thanks for your email. Google is not withdrawing its motion to retain the confidentiality designations for the Lindholm email and drafts thereof. The Court's October 20, 2011 Order addressed the privilege status of the Lindholm email, not the confidentiality issue. It did not moot Google's motion. In fact, it expressly states at page 14 that "This order makes no comment on the merits of [Google's] pending motion [to retain confidentiality designations]." As we've pointed out several times, including in the motion itself, the question whether these documents are confidential under the protective order does not depend on whether they are privileged.

In any event, despite the October 20 Order, Google believes these documents are privileged and intends to challenge the Court's ruling to the contrary. Given that, Google must continue to avoid doing anything that could be construed as waiver of any privilege. Accordingly, barring a Court order, Google is not in a position to reproduce the emails without a privilege designation until the privilege issue is finally adjudicated.

Thanks.

-----Original Message-----
From: Alanna Rutherford [email address]
Sent: Saturday, October 22, 2011 6:39 PM
To: DALVIK-KVN; [email address]; [email address]
Cc: Oracle-Google; [email address]
Subject: Oracle v. Google: Motion to Retain Confidentiality of the Lindholm Documents

Counsel,

Following the Court's Order dated October 20, 2011 which published the full the text of the Lindholm Document for public consumption, Oracle is inquiring as to whether Google is willing to withdraw its October 11, 2011 Motion to Retain Confidentiality Designations of the Lindholm Documents. Although the Court stated that it will continue to entertain the request, it appears to be a moot issue following the issuance of the Court's Order and the text of the Protective Order, which states in pertinent part that "the protections conferred by this Stipulation and Order do not cover the following information: . any information known to the Receiving Party prior to the disclosure or obtained by the Receiving Party after the disclosure from a source who obtained the information lawfully and under no obligation of confidentiality to the Designating Party." ¶ 3.

Further, in light of the Court's finding that the Lindholm Documents are not privileged and confidential, we would ask that Google reproduce the documents without the added "Privileged & Confidential" footer.

Please let me know as soon as practicable but no later than the close of business Monday whether you are amenable to this.

Regards,

Alanna

________________________________
IRS Circular 230 disclosure:
To ensure compliance with requirements imposed by the IRS, unless we expressly state

1

otherwise, we inform you that any U.S. federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.

________________________________
The information contained in this electronic message is confidential information intended only for the use of the named recipient(s) and may contain information that, among other protections, is the subject of attorney-client privilege, attorney work product or exempt from disclosure under applicable law. If the reader of this electronic message is not the named recipient, or the employee or agent responsible to deliver it to the named recipient, you are hereby notified that any dissemination, distribution, copying or other use of this communication is strictly prohibited and no privilege is waived. If you have received this communication in error, please immediately notify the sender by replying to this electronic message and then deleting this electronic message from your computer. [v.1]

2


564

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

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

No. C 10-03561 WHA

PROPOSED TRIAL PLAN

___________________________________

The jury trial will be trifurcated into three phases, all before the same jury, as follows:

Phase one. Liability on the copyright claims, including all defenses thereto, will be tried and determined by special verdict before going to Phase Two.

Phase Two. Liability on the patent claims, including all defenses for the jury. The jury will decide these issues before going to Phase Three.

Phase Three. All remaining issues will be tried, including damages and willfulness.

All evidence presented in an earlier phase can be used by counsel and by the jury in a subsequent phase as relevant to the issues then on trial. If, for example, more general “Java” issues are pertinent in Phase One, such as implied license, laches, equitable estoppel, and waiver, then the more general evidence on “Java” may be presented in Phase One and considered again, as relevant, in any subsequent phase. There will need to be evidence-presentation time limits per side for each phase with the understanding that unused time may be carried forward to a subsequent phase. The time limits will be set later.

By NOON ON NOVEMBER 18, 2011, counsel may critique the proposed plan. If there are objections, then case law, rules, or statutes must be cited as well as the particular evidence/advocacy problems. Although the trial will not be in 2011, the Court needs some lead time to pre-clear a venire for hardship for a long trial.

IT IS SO ORDERED.

Dated: October 26, 2011.

/s/ William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

2



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