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Oracle v. Google - Oracle On Copyright
Friday, October 28 2011 @ 04:20 PM EDT

Yesterday's filings of significance all came from Oracle, beginning with a letter to the judge disagreeing with Google's request that certain copyright issues be disposed of by the judge before the trial commences. (566 [PDF; Text]) Google had suggested that the following issues related to Oracle's copyright infringement claims were a matter of law and should be decided by the court before the commencement of the trial to make the trial proceed more efficiently:
(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 essentially wants to claim these issues have already been decided when the judge rejected Google's summary judgment motion. That position is so highly inconsistent with the law it is laughable. The judge only found that Google did not win on summary judgment, not that Oracle won on the merits.

Oracle's next argument is that Google can't seem to comprehend the copyright issue. In fact, Google seems to comprehend it just fine. It is Oracle that can't seem to understand the inconsistency between what it claims has been infringed (substantially less than all of Java) and the basis for its copyright damages claim (all of Java). Moreover, Oracle seems to not understand that a copyright registration does not confer copyright protection to that which is not otherwise protected by copyright. I can file a copyright registration on a phonebook, but that does not make the content of that phonebook protectible subject matter. IF everything Google has purportedly copied is unprotectible subject matter (or even if a meaningful portion is unprotected by copyright) then it impacts the Oracle damages claim.

Oracle's second letter is essentially their alternative plan as to what should be determined by the judge before trial on the copyright issue. (567 [PDF; Text]) Consistent with Oracle's theory of the infringement, which now appears to largely rely on the selection and arrangement of subject matter regardless of whether that subject matter is protectible under copyright, Oracle seeks leave to file a "motion for summary judgment on the originality of the selection and arrangement of classes, subclasses, interfaces, fields, methods, error descriptions, and exceptions in the 37 API design specifications at issue."

Oracle makes a comparison to the selection and placement of ads in a yellow pages directory. But we are not dealing with a yellow pages directory; we are dealing with middleware in which certain functionality must exist or is commonplace. Is there really any magic in the selection and arrangement of functions that must exist for the software to have basic utility? Now that would be worth arguing. Although I have my doubts as to Oracle's ability to win this issue on summary judgment (or otherwise), I see no harm in letting them have their shot at it.

Next up is an unredacted version of Oracle's trial brief. (568 [PDF; Text]) No real surprises there.

Finally, we have Oracle's Responsive Supplemental Brief in Opposition to Google's Motion In Limine No. 3 to Exclude Portions of the Cockburn Report on Damages. (572 [PDF; Text]) It is clear, and should be no surprise, that there exists a fundamental disconnect between Oracle and Google on this issue. Oracle believes Prof. Cockburn's report is perfect; Google less so (See document 549 here for Google's take). The respective positions are largely tied to the the underlying positions on what constitutes (or does not constitute) copyright infringement, but it also goes to the issue of how to factor in the early discussions between Sun and Google on a partnership arrangement regarding Android.

Skip To Comments


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

Docket

566 – Filed and Effective: 10/27/2011
Letter
Document Text: Letter from Michael A. Jacobs Oracle Opposition To Google Precis Re Copyright. (Jacobs, Michael) (Filed on 10/27/2011) (Entered: 10/27/2011)

567 – Filed and Effective: 10/27/2011
Letter
Document Text: Letter from Michael A. Jacobs Oracle Precis regarding MSJ Of Originality Of Selection And Arrangement. (Jacobs, Michael) (Filed on 10/27/2011) (Entered: 10/27/2011)

568 - Filed and Effective: 10/27/2011
TRIAL BRIEF
Document Text: TRIAL BRIEF Oracle's Trial Brief UNREDACTED VERSION by Oracle America, Inc.. (Jacobs, Michael) (Filed on 10/27/2011) (Entered: 10/27/2011)

569 – Filed and Effective: 10/27/2011
NOTICE
Document Text: NOTICE by Oracle America, Inc. re 533 Administrative Motion to File Under Seal Portion of Trial Brief (Peters, Marc) (Filed on 10/27/2011) (Entered: 10/27/2011)

570 – Filed and Effective: 10/27/2011
Declaration
Document Text: Declaration in Support of 548 Administrative Motion to File Under Seal DECLARATION OF MATTHEW SARBORARIA IN SUPPORT OF GOOGLE, INC.S ADMINISTRATIVE MOTION TO FILE DOCUMENTS UNDER SEAL filed byOracle America, Inc.. (Attachments: # 1 Proposed Order)(Related document(s) 548 ) (Dearborn, Meredith) (Filed on 10/27/2011) (Entered: 10/27/2011)

571 – Filed and Effective: 10/27/2011
Administrative Motion
Document Text: Administrative Motion to File Under Seal ORACLE AMERICA, INC.S ADMINISTRATIVE MOTION TO FILE UNDER SEAL PORTIONS OF ORACLES RESPONSIVE SUPPLEMENTAL BRIEF IN OPPOSITION TO GOOGLES MOTION IN LIMINE NO. 3 TO EXCLUDE PORTIONS OF COCKBURN REPORT ON DAMAGES filed by Oracle America, Inc.. (Attachments: # 1 Proposed Order)(Holtzman, Steven) (Filed on 10/27/2011) (Entered: 10/27/2011)

572 – Filed and Effective: 10/27/2011
RESPONSE
Document Text: RESPONSE (re 494 MOTION in Limine No. 3 ) ORACLE AMERICA INC.S RESPONSIVE SUPPLEMENTAL BRIEF IN OPPOSITION TO GOOGLES MOTION IN LIMINE NO. 3 TO EXCLUDE PORTIONS OF COCKBURN REPORT ON DAMAGES (REDACTED) filed byOracle America, Inc.. (Holtzman, Steven) (Filed on 10/27/2011) (Entered: 10/27/2011)

573 – Filed and Effective: 10/28/2011
DECLARATION
Document Text: DECLARATION of MEREDITH DEARBORN in Opposition to 572 Opposition/Response to Motion, DECLARATION OF MEREDITH DEARBORN IN SUPPORT OF ORACLE AMERICA INC.S RESPONSIVE SUPPLEMENTAL BRIEF IN OPPOSITION TO GOOGLES MOTION IN LIMINE NO. 3 TO EXCLUDE PORTIONS OF COCKBURN REPORT ON DAMAGES filed byOracle America, Inc.. (Attachments: # 1 Exhibit EXHIBITS A-M)(Related document(s) 572 ) (Holtzman, Steven) (Filed on 10/28/2011) (Entered: 10/28/2011)


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

Documents

566

[Morrison Foerster letterhead]

October 27, 2011

The Honorable William H. Alsup
United States District Court, Northern District of California
450 Golden Gate Ave., Courtroom 8, 19th Floor
San Francisco, CA 94102

Oracle America, Inc. v. Google, Inc., Case No. 3:10-cv-03561-WHA

Dear Judge Alsup:

Oracle opposes Google’s request that the Court decide before trial a multiplicity of issues associated with Oracle’s copyright claim. Our grounds are as follows:

First, Google’s proposal—like its trial brief and the copyright Markman proposal it previously advocated—ignores the Court’s copyright summary judgment order, which rejected both Google’s claim for non-copyrightability of API specifications and Google’s argument for applying the virtual identity standard. (ECF No. 433 at 11 (“Because Google has not proven that a substantial portion of the specifications is unprotected, Google’s justification for applying the virtual identity standard fails.”).) Now Google seeks a second bite at both apples, without explaining why it should have that opportunity.

Second, Google’s proposal adds substantial procedural complexity to what is in fact an uncomplicated issue. Notwithstanding Google’s feigned confusion, Oracle’s claim is straightforward, and is set forth in Oracle’s pleadings and expert reports. Google copied 37 copyrighted Java API design specifications—comprising hundreds of classes, subclasses, interfaces, fields, methods, error descriptions, and exceptions, and their complex hierarchy and interrelationships—into its Android API documentation and source code, creating unauthorized derivative works. In short, Google cloned the layout, selection, and arrangement of thousands of elements in precisely the locations Java developers expect to find them. It also copied

The Honorable William H. Alsup
October 27, 2011
Page Two

portions of Java source code and comments—the copyrightability of which Google does not dispute—belying its claim that it developed an “independent, clean-room implementation.” Oracle need not prove “independent economic value” for each copied element. Google’s citation indicates that courts apply this test in assessing statutory damages, not infringement. See Tattoo Art, Inc. v. TAT Int’l, LLC, — F. Supp. 2d —, No. 2:10cv323, 2011 WL 2585376, at *15 (E.D. Va. June 29, 2011).

On the facts here, the “analytic dissection” that Google seeks is inapposite. As Google acknowledges, the Ninth Circuit has characterized analytic dissection as “helpful,” not mandatory. Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1443 (9th Cir. 1994) (“In this, as in other cases, the steps we find helpful to follow are these . . . .”). Other decisions hold similarly. “Not every case requires an extensive abstraction-filtration-comparison analysis.” Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366, 1372 (10th Cir 1997). Here, Google does not dispute the extent of its copying. Rather, it argues that the entirety of its copying is excused. There is no need to parse 11,000 pages of copied specifications for bits and pieces of uncopyrightable subject matter, because Oracle’s claim is for the totality of the conceded copying and Google’s defense only succeeds if it can excuse that same totality.

Hence, Google may seek to establish that individual elements of the API specifications, such as “sqrt,” are not copyrightable, but that will not impact the outcome of Oracle’s claim, which is that Google copied each API design specification into Android. In the case of the class “Math,” from the java.lang API specification, there are two fields, eleven methods “inherited” from a parent class, and forty-four declared methods (of which sqrt is just one). In turn, “Math” is just one of thirty-five classes from the java.lang API specification, in addition to eight interfaces, twenty-six exceptions, and twenty-two error descriptions—all of which Google copied. Google did the same for the other 36 core Java API design specifications at

The Honorable William H. Alsup
October 27, 2011
Page Three

issue. But determination of infringement is actually quite simple: a side-by-side comparison of Oracle’s and Android’s API specifications is all that is needed to demonstrate the nature and magnitude of Google’s copying. Any effort at parsing Google might propose would be irrelevant to the claim that it infringes the overall expression in Oracle’s API design specifications.

Third, at least part of what Google proposes is to advance the Court’s determination of jury instructions. But Google proposes to do that in the abstract, divorced from the actual issues in the case. The Court will be better equipped to direct the parties on instructional issues as the Court hears the evidence at trial. Moreover, Google purports to raise factual issues relating to copyrightability, such as “industry demand for compatibility.” (See ECF No. 260 at 17, Google’s Motion for Summary Judgment.) While copyrightability is a question of law, “threshold factual determinations in this regard, of course, are for the jury.” 3-12 Nimmer on Copyright § 12.10[B][1].

Fourth, the request is out of order. At the October 19 case management conference, Google sought a “copyright Markman” proceeding. (10/19/2011 Hr’g Tr. 39:5-14.) Google’s précis repeats and expands on that request. But the Court did not invite a written version of Google’s proposal. Instead, the Court allowed each side to request leave to file a single additional précis “for a motion that you think would be productive.” (Id. at 58:2-6.) Google’s proposal—even as numerated in its précis—contemplates resolution of not one but three issues, each with many associated sub-issues. (In contrast, Oracle proposes in a separate précis a limited summary judgment motion on originality of the selection and arrangement of API elements in the Java API design specifications.)

Respectfully submitted,

/s/ Michael A. Jacobs


567

[Morrison Foerster letterhead]

October 27, 2011

The Honorable William H. Alsup
United States District Court
Northern District of California
450 Golden Gate Ave., Courtroom 8, 19th Floor
San Francisco, CA 94102

Oracle America, Inc. v. Google, Inc., Case No. 3:10-cv-03561-WHA

Dear Judge Alsup:

Oracle requests leave to file a motion for summary judgment on the originality of the selection and arrangement of classes, subclasses, interfaces, fields, methods, error descriptions, and exceptions in the 37 API design specifications at issue.

The Court’s summary judgment order expressly left this question open, stating:

In finding that the names of the various items appearing in the disputed API package specifications are not protected by copyright, this order does not foreclose the possibility that the selection or arrangement of those names is subject to copyright protection. See Lamps Plus, Inc. v. Seattle Lighting Fixture Co., 345 F.3d 1140, 1147 (9th Cir. 2003) (“[A] combination of unprotectable elements is eligible for copyright protection only if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.”)
(ECF No. 433 at 8, Summary Judgment Order (emphasis supplied in order).)

The legal threshold for originality is low, and no genuine disputes of material fact obstruct resolution of the issue. “To be sure, the requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, ‘no matter how crude, humble or obvious’ it might be.” Feist Publ’ns, Inc. v. Rural Rel. Serv. Co., 499 U.S. 340, 345 (1991) (quoting 1 Nimmer & D. Nimmer, Copyright § 1.08[C][1] (1990)); compare Feist, 499 U.S. at 362 (alphabetical white

The Honorable William H. Alsup
October 27, 2011
Page Two

pages directory “devoid of even the slightest trace of creativity”) with Key Publ’ns, Inc. v. Chinatown Today Publ’g Enters., Inc., 945 F.2d 509, 513 (2d Cir. 1991) (selection and arrangement of yellow pages copyrightable because author excluded businesses she expected to close). In CDN Inc. v. Kapes, for example, the Ninth Circuit upheld the district court’s summary judgment ruling that prices in a guide for collectible coins were sufficiently original to be protected by copyright. 197 F.3d 1256, 1262 (9th Cir. 1999). The court emphasized that the required level of originality is “‘minimal’” and explained that the phone listings in Feist “did not qualify because they fell into the ‘narrow category of works in which the creative spark is utterly lacking or so trivial as to be virtually nonexistent.’” Id. at 1259-60 (quoting Feist, 499 U.S. at 359).

The selection and arrangement of names in the API design specifications exceeds this standard. Google’s expert counts over 7,250 methods alone. (ECF No. 262, Astrachan Decl. ¶ 7e.) That 2,218 of these methods are, by his calculation, named in accordance with Java’s naming rules confirms they were not randomly chosen or lack any amount of creativity, however slight. (See id. ¶ 7e and Ex. 1 ¶ 114). He also argues some names were drawn from other programming languages (id. Ex. 1 ¶¶ 123-28), but that too is legally irrelevant: all that is required is that the particular combination of names be original, even if individual components are not. United States v. Hamilton, 583 F.2d 448, 452 (9th Cir. 1978) (map copyrightable though based largely on other maps).

The arrangement of the classes, subclasses, methods, and other elements of the 37 APIs is highly original. At the case management conference, Google’s counsel suggested the order is merely “alphabetical.” This is misleading and irrelevant. Within each class or sub-class, method names may be listed alphabetically, but the 37 API packages are organized into over

The Honorable William H. Alsup
October 27, 2011
Page Three

500 classes, with many complex hierarchical relationships, interdependencies, and rules for exposure to other methods and classes. (See ECF No. 341, Mitchell Decl. Ex. 2 ¶¶ 20-38.) This satisfies the originality requirement. See, e.g., Am. Dental Assoc. v. Delta Dental Plans Assoc., 126 F.3d 977, 979 (7th Cir. 1997) (code for dental procedures copyrightable); Practice Mmgt. Info. Corp. v. Am. Med. Assoc., 877 F. Supp. 1386, 1390 (C.D. Cal. 1994), aff’d in relevant part, 121 F.3d 516 (9th Cir. 1997) (numerical codes for medical procedures copyrightable though required by government).

Oracle is entitled to summary judgment because it can show, as a matter of law, that its selection and arrangement meets the “minimal amount of creativity required to satisfy the low threshold for demonstrating originality.” See Jacobsen v. Katzer, No. C 06-01905 JSW, 2009 U.S. Dist. LEXIS 115204, at *9-10 (N.D. Cal. Dec. 10, 2009) (granting summary judgment of copyrightability of selection and arrangement of “Decoder Definition Text Files” reflecting decoder information from model railroad manufacturers). We request permission to file this motion.

Respectfully submitted,

/s/ Michael A. Jacobs


568

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. Google’s documents confirm Google knew it needed a license to do so, and when it could not get one on the terms it wanted, saw two choices: abandon reliance on Java technology and pursue an alternative, or “[d]o Java anyway and defend our decision, perhaps making enemies along the way.” (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. The lead Android engineers admit they had access to the Java API specifications and deliberately copied them into Android. 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. Internal Google e-mails dating from as far back as 2005 all the way to 2010, just before this lawsuit was filed, are replete with references to the use of Java technology in Android, the need for a license, affirmative acts of concealment, and the likelihood of infringement. 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.” Recent Google financial estimates note that Android will directly generate over $3 billion in advertising revenue and $2 billion in

2

gross profits through 2013, with far more in the several years after that. 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 ensured that archrivals Microsoft and Apple would not be able to “block” Google from the increasingly critical market for mobile search and other mobile applications. 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. And Google itself imposes licensing terms on Android that forbid OEMs and other licensees from fragmenting Android in exactly the way it has fragmented Java. 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.

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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

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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

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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 (“if we miss the ‘mobile window’, we’ll be out of business in 10 years”).

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

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case are registered with the Copyright Office, establishing Oracle’s ownership of the copyrights-in-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 “implement core libraries according to the Java APIs.” 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 he and other Android developers had access to Sun’s Java API specifications. 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.

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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. While working at Sun, former Sun engineer Joshua Bloch wrote the code for the Java method “rangeCheck.” He subsequently went to work for Google, where he copied that very same code into Android. 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

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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” program that engineer Joshua Bloch copied from Oracle 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

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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., “The JVM is going to be a central piece of the system we’re building, not some little add-on on the side

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– so we can provide some really good java application development and user experiences.” (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: “In-memory compactness is aided by having a shared constant pool for a set of classes (rather than one constant pool per class).” (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 Google proprietary applications 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. Rubin testified that given Sun’s broad patent portfolio, it would have been impractical to study Sun’s patents, and he was aware of no effort to do so. 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 works within 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

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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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572

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

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

1

TABLE OF CONTENTS

INTRODUCTION ...... 1

ARGUMENT ...... 3

A. Prof. Cockburn’s Apportionment Analysis Is Legally and Factually
Correct ...... 3

B. Prof. Cockburn’s Upward Adjustment Based On Sun’s Loss Of
Compatibility And Control Is Warranted Under the Facts And The Law ...... 8

C. Cockburn’s Calculation Of A Hypothetical License Damages Award For
Google’s Copyright Infringement Is Valid And Supported ...... 14

D. Cockburn’s Calculation Of Patent Damages By Features And Calculation
Of Copyright Damages Without Any Individual Copyright Breakdown Is
Appropriate ...... 15

E. There Is No Reason To Bar Dr. Cockburn From Testifying About Other
Relevant Licenses And Settlements, Including The Sun v. Microsoft
Agreements ...... 17

CONCLUSION ...... 19

i

TABLE OF AUTHORITIES

CASES

Cf. Cornell Univ. v. Hewlett-Packard Co.,
609 F. Supp. 2d 279 (N.D.N.Y. 2009) ...... 17

Finjan Inc. v. Secure Computing Corp.,
626 F.3d 1197 (Fed. Cir. 2010) ...... 5

Function Media, L.L.C. v. Google Inc., No. 2:07-CV-279-CE, 2010 WL 272409 (E.D. Tex. Jan. 15, 2010) ...... 5, 16

Garretson v. Clark,
111 U.S. 120 (1884) ...... 4

Georgia-Pacific Corp. v. U.S. Plywood Corp.,
318 F. Supp. 1116 (S.D.N.Y. 1970) ...... 4, 9

Global-Tech Appliances, Inc. v. SEB S.A.,
131 S. Ct. 2060 (2011) ...... 10

ID Sec. Sys. Canada, Inc. v. Checkpoint Sys., Inc.,
249 F. Supp. 2d 622, amended, 268 F. Supp. 2d 448 (E.D. Pa. 2003) ...... 11

Interactive Pictures Corp. v. Infinite Pictures, Inc,
274 F.3d 1371 (Fed. Cir. 2009) ...... 9, 10, 13

Lucent Techs, Inc. v. Gateway, Inc.,
580 F.3d 1301 (Fed. Cir. 2009) ...... 10, 18

Medtronic, Inc. v. Boston Scientific Corp.,
Civ. No. 99-1035, 2002 WL 34447587 (D. Minn. Aug. 8, 2002) ...... 5, 6, 7

Metallic Rubber Tire Co. v. Hartford Rubber Works Co.,
275 F. 315 (2d Cir. 1921) ...... 16

Oracle USA, Inc. v. SAP AG,
No. C07-1658 PJH, at Dkt. No. 1088 ...... 14, 15

Panduit Corp. v. Stahlin Bros. Fibre Works, 575 F.3d 1152 (6th Cir. 1978) ...... 2, 9, 11

Polar Bear Prods. v. Timex Corp.,
384 F.3d 700 (9th Cir. 2004) ...... 15

ResQNet.com v. Lansa, Inc.,
594 F.3d 860 (Fed Cir. 2010) ...... 4, 18

ii

SEB S.A. v. Montgomery Ward & Co., Inc.,
594 F.3d 1360 (Fed. Cir. 2010) ...... 10

Studiengesellschaft Kohle, m.b.H. v. Dart Indus., Inc.,
862 F.2d 1564 (Fed. Cir. 1988) ...... 7

TAS Distrib. Co. v. Cummins Engine Co., Inc.,
491 F.3d 625 (7th Cir. 2007) ...... 11

TK-7 Corp. v. Estate of Barbouti,
993 F.2d 722 (10th Cir. 1993) ...... 11

Trademark Research Corp. v. Maxwell Online, Inc.,
995 F.2d 326, 332 (2d Cir. 1993) ...... 11

VS Techs., LLC v. Twitter, Inc.,
2:11CV43, 2011 WL 4744572 (E.D. Va. Oct. 5, 2011) ...... 16

Wordtech Sys., Inc. v. Integrated Networks Solutions, Inc.,
609 F.3d 1308 (Fed. Cir. 2010) ...... 10

Zenith Electronics Corp. v. WH-TV Broad. Corp.,
395 F.3d 416 (7th Cir. 2005) ...... 11

RULES

Fed. Rules of Evid. 403 ...... 3

Fed. Rules of Evid. 701 ...... 11

iii

Pursuant to the Court’s September 27, 2011 order (Dkt. No. 470), Oracle submits this supplemental brief in opposition to Google’s supplemental brief (Dkt. No. 549) regarding Google’s motion in limine to exclude the testimony of Oracle’s damages expert, Prof. Iain M. Cockburn.

INTRODUCTION

Google’s supplemental brief does not raise any additional arguments that warrant excluding or limiting Prof. Cockburn’s testimony. Although the Court directed that this round of briefing be “based on Dr. Cockburn’s reply report and deposition” (Dkt. No. 470), nothing from Prof. Cockburn’s reports replying to the opinions of Google’s damages experts, Drs. Cox and Leonard, nor in Prof. Cockburn’s October 17, 2011 deposition testimony provides any new basis for Google’s Daubert challenge. Google simply restates and repackages it original arguments, cutting and pasting carefully selected snippets from Prof. Cockburn’s deposition that, taken out of context and ignoring the rest of the testimony, it believes supports its original arguments. The deposition taken as a whole confirms that Prof. Cockburn’s analysis is based on a wealth of evidence, detailed economic analysis, and the methodology suggested by this Court, and therefore passes muster under Daubert.

First, Google argues that Prof. Cockburn’s reasonably royalty calculations—for both patents and copyrights—should be excluded because Prof. Cockburn does not value all the intellectual property that is not in suit. But Google cites no case that requires such an endeavor, particularly where the expert—as Prof. Cockburn does—provides a detailed, multifaceted analysis, (including econometric analysis, conjoint analysis, and consideration of numerous contemporaneous Google documents) of the demonstrated value of both the full package of intellectual property over which the parties were negotiating in 2006 and the specific intellectual property at issue. Rather than address these issues in a Daubert motion, Google acknowledges Prof. Cockburn’s exhaustive methods of valuing the intellectual property at issue in this case, but relegates to a footnote the weak rejoinder that it intends to challenge the scientific basis for these methods “at trial.” (Supp. Br. at 5 n. 1.) Google neither attacks the reliability or scientific basis of Prof. Cockburn’s valuation of the specific patents and copyrights at issue, nor provides any legal basis for its assertion that more is required. In all respects, Prof. Cockburn’s valuation analysis withstands Google’s purported Daubert challenge.

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Second, Google again argues that Prof. Cockburn’s analysis is flawed because he adjusts the hypothetical license to account for Sun’s contemporaneous expectations for convoyed sales in the jointly controlled Android ecosystem without fulfilling the four-factor Panduit test for recovery under a lost profits measure. This argument is inconsistent with both the real-world considerations of the negotiating parties and the law governing patent and copyright damages. Unlike recovery of damages using a lost-profits measure, which is what the Panduit factors relate to, a reasonable royalty must be based on the parties’ expectations at the time of the negotiation. Numerous Federal Circuit cases approve of using internal projections to calculate a reasonable royalty, and it is commonplace to use the patentee’s expectation of convoyed sales as part of the reasonable royalty analysis as a whole, as Prof. Cockburn does. Google completely ignores the law governing recovery of a reasonable royalty based on a hypothetical negotiation, instead relying entirely on cases addressing the recovery of lost profits in contract, civil conspiracy, and antitrust cases. Those cases are all governed by different standards that are not, as the hypothetical license must be, based on the parties’ reasonable expectations. Google’s argument is baseless, and Prof. Cockburn’s analysis is sound.

Google also again argues that Prof. Cockburn’s upward adjustment to the “starting point” reasonable royalty should be stricken because it is supposedly based on a single, “unreliable” Sun business planning document. Google conveniently ignores that, with regard to the same upward adjustment, Google’s own damages experts rely on a single document of their own (a license between Sun and a third party, Danger)—indeed, a distortion of that document. Google also ignores that Prof. Cockburn explained at deposition and in his report that the adjustment is based on far more than the one Sun document. But even putting those facts aside, Google fails to explain how or why reliance on a contemporaneous revenue projection, especially where it declined to take the author’s deposition to even try to establish that those projections are unreliable, is problematic under Daubert. It is not.

Third, Google again argues that Prof. Cockburn’s copyright hypothetical license calculations should be stricken because Google contends there are no comparable real-world licenses. Even though Oracle pointed out in its opposition that the only legal authority for Google’s argument had been revised in a matter of weeks by its own author, Google persists in its faulty legal argument. Google’s argument also fails as a matter of fact. Prof. Cockburn calculates the hypothetical lost copyright license

2

fee with reference only to real-world contemporaneous documents, not speculation or “subjective” evidence of the sort Google says is insufficient. (By contrast, Google’s experts rely heavily on subjective interview evidence that reinvents history and contradicts documents written by those same interviewees in Google’s own contemporaneous documents.) Prof. Cockburn quantifies those aspects of the hypothetical license that are objectively grounded in the parties’ actual negotiations. There is neither a factual nor a legal basis for Google’s attack.

Fourth, Google repeats its argument that Prof. Cockburn is required to assign value to each individual asserted claim of each patent and each portion of the copyright claim. Google failed to cite a single case that would establish this hyper-granular apportionment requirement in its opening brief, and it fails to do so again. Prof. Cockburn carefully evaluates each of the individual patented features at issue in this case. Google has not suggested that the opinions would be any different on a claim-byclaim basis, and provides no basis on which to exclude Prof. Cockburn’s opinions.

Fifth, Google again argues that Prof. Cockburn should be barred from discussing certain other technology licenses, including the license entered into between Sun and Microsoft. Prof. Cockburn’s treatment of the Sun-Microsoft dispute is correct under applicable legal principles and correct under the facts. Google does not make a Daubert argument so much as an argument under Rule 403, but the relevance of the Sun-Microsoft settlement far outweighs its prejudicial force. The jury should be able to decide what weight to give that agreement. Moreover, Google had the opportunity to file a motion in limine to exclude those agreements from evidence, and it declined. Google should not be able to shoehorn a second in limine motion into its Daubert motion.

Oracle respectfully requests that the Court deny Google’s motion.

ARGUMENT

A. Prof. Cockburn’s Apportionment Analysis Is Legally and Factually Correct

Google now focuses its Daubert challenge on its assertion that Prof. Cockburn’s entire reasonable royalty analysis, for both patents and copyrights, should be stricken because Prof. Cockburn’s opinion is limited to the value of the intellectual property in suit and he did not assign a value to intellectual property that is not in suit. (Supp. Br. at 1–6 (“Having no sense of the whole, he has no basis to opine on the value of any of the parts.”).) This argument is meritless on its face. Prof.

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Cockburn has a detailed, multifaceted “basis to opine on the value” of precisely the parts that are at issue in this case—an analysis that, as the Court directed, starts from “the whole” and then specifically apportions, based on econometric analysis and multiple contemporaneous data points, to value the relevant parts: the patents and copyrights in suit. Google’s complaint that Prof. Cockburn somehow committed an error by not assigning value to technology that is not claimed here has no basis in law or reason.

The underlying legal principles are not new. “When a patent is for an improvement, and not for an entirely new machine or contrivance, the patentee must show in what particulars his improvement has added to the usefulness of the machine or contrivance.” Garretson v. Clark, 111 U.S. 120, 121 (1884); see also ResQNet.com v. Lansa, Inc., 594 F.3d 860, 869 (Fed Cir. 2010) (“the trial court must carefully tie proof of damages to the claimed invention’s footprint in the market place.”) (citing cases). The calculation of damages should consider the “portion of the realizable profit that should be credited to the invention as distinguished from non-patented elements, the manufacturing process, business risks, or significant features or improvements added by the infringer.” Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970).

Professor Cockburn’s analyses are consistent with these principles and the Court’s order. He evaluates how the claimed intellectual property “added to the usefulness” of the infringing Android devices and what portion of the starting point should be “credited to the invention.” (See Dkt. No. 230 (July 22, 2011 Daubert order) at 9 (“we must ultimately isolate the infringing features’ contribution”).) He does this by considering (a) contemporaneous Google documents discussing the importance of the functionality provided by the patents and copyrights in suit, (b) benchmarking analyses that measure the precise performance enhancements contributed by the patents in suit, (c) an econometric analysis measuring consumers’ willingness to pay for the patented enhancements and the value of the large number of applications facilitated by the use of the copyrighted Java APIs, and (d) a conjoint marketing analysis, based on survey data, measuring the value that consumers place on the particular performance enhancements and number of applications.1 Having valued both the whole and the relevant

_________________________________

1 Google contends in a footnote, without providing any basis for its contention, that all of these methodologies must have been rigged because Oracle engineers conducted some of the benchmarking analyses (using established, standard methods) underlying them. (Supp. Br. at 5 n.1.) They were not. In fact, Google’s expert’s profound misunderstanding of one of the methodologies that Prof. Cockburn considered—the conjoint—is detailed in Oracle’s Daubert motion to exclude Dr. Leonard’s testimony. (See Dkt. Nos. 558–560.) As noted above, it is telling that Google has not raised any actual Daubert challenge to the scientific basis for Prof. Cockburn’s apportionment methodologies, and instead just indicated that it will do so at trial.

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components, Prof. Cockburn is not obligated to separately value any non-infringing components. See, e.g., Function Media, L.L.C. v. Google Inc., No. 2:07-CV-279-CE, 2010 WL 272409, at *4 (E.D. Tex. Jan. 15, 2010); Finjan Inc. v. Secure Computing Corp., 626 F.3d 1197, 1211 (Fed. Cir. 2010) (finding that, based on internal documents calling the patented features “important,” the jury could infer that a substantial fraction of the accused products’ profits stemmed from the patented method).

Google cites only one case for its argument—an unpublished opinion from the District of Minnesota, Medtronic, Inc. v. Boston Scientific Corp., Civ. No. 99-1035, 2002 WL 34447587 (D. Minn. Aug. 8, 2002). That case provides no basis for excluding or limiting Prof. Cockburn’s testimony. In Medtronic, the court excluded testimony by the plaintiff’s expert because the expert had claimed that the patents-in-suit were worth “virtually all” of the value of the purchase price of the portfolio that defendants had paid to acquire them. Id. at *7–12. The expert opined that the patents-in-suit accounted for “all or substantially all” of the value of the portfolio based on his “gut feeling,” his “speculation” that the patents-in-suit were “broad and cover a lot of applications,” and his vague recollection of a separate deposition in which an outside law firm had referred to the patents as “very valuable.” Id. at *6–7. The expert relied on one piece of documentary evidence to back up his assertions: an internal memorandum from the defendants that stated that the three patents-in-suit were the “primary value” of the portfolio. Id. at *12. The court found that “primary value” did not necessarily translate into or support the expert’s opinion that the patents supplied “virtually all of the value.” Id. Accordingly, the court concluded that there was not a reliable factual basis for the expert’s opinion regarding the value of the patents-in-suit and excluded his testimony. Id.

This case bears no resemblance to Medtronic. As Google concedes, Prof. Cockburn’s apportionment analysis is not based on a “gut feeling.” (Supp. Br. at 5 (Cockburn’s analysis based on “three performance-based studies”).) First, Prof. Cockburn’s evaluation of the contribution of the

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intellectual property rests on multiple economic analyses based on two separate and independent measures of consumer preferences, input from the technical experts, and the review of many contemporaneous documents that establish Google’s appraisal of the value of the patented functionality and the importance of adopting copyrighted Java API to attract application developers. [REDACTED] This is more than enough “reliable factual basis.” Medtronic, 2002 WL 34447587, at *12. Second, rather than looking at just one document, as the expert did in Medtronic, Prof. Cockburn takes into account numerous Google documents that establish that an incremental increase in speed (provided by several of the patents in suit) is vitally important:

[REDACTED]
Third, Prof. Cockburn does not assert that 100% of the starting point should be apportioned to the intellectual property, nor does he claim that the patents and copyrights account for “virtually all of the value” of that starting-point license, as did the expert in Medtronic. His opinion is that the proper apportionment percentage is at least 30% for the patents and 15% for the copyrights. Medtronic provides no basis to exclude any of Prof. Cockburn’s testimony.

Google’s attack on Prof. Cockburn also relies on a false factual proposition regarding the components of the starting point license. Google’s contends that Prof. Cockburn should have accounted for the value of “Sun’s JAVA trademark” and Google’s “access to Sun’s engineers” (Supp. Br. at 2), and presumably reduced his apportionment percentages by some amount as a result. But the draft

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contract sent by Sun to Google in March 2006 specifies what was covered by Google’s $100 million payment to Sun: [REDACTED] The payment clause did not refer to any trademark or access to any engineers. In fact, Sun and Google both stood to benefit in other ways from that agreement, but none of those other benefits were tied to the payment term, [REDACTED] Sun defined “Sun Technology” to include its patents and copyrights (not trademarks) pertaining to the new platform. But in any event, Prof. Cockburn values the whole agreement under consideration by the parties in 2006 and then apportions from there based on his analysis of the portion of the value of Android attributable to the intellectual property in suit. It does not matter—at least not in this case— what specifically is included in the remainder of the valuation of the unconcluded 2006 agreement.2

If Google truly believed it was important to value the intellectual property not in suit, it could have asked its experts to conduct that analysis, and then presented that analysis at trial. Google did not. Instead, Google decided to ask Prof. Cockburn a series of questions at his deposition in an effort to tie this case to the unpublished Medtronic decision, and to attack Prof. Cockburn for not doing something

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that he had no obligation to do. Google’s arguments are baseless, and the motion should be denied.

B. Prof. Cockburn’s Upward Adjustment Based On Sun’s Loss Of Compatibility And
Control Is Warranted Under the Facts And The Law

Google’s second attack on Prof. Cockburn’s opinions repeats an argument raised in its original motion in limine: that Prof. Cockburn should not be permitted to consider and account for the substantial revenues that Sun expected from commercial licensing in connection with a compatible Android, despite the fact that the entire agreement with Google was based on the assumption that Sun would obtain those revenues. (Supp. Br. at 6–11.) Google adds nothing new in substance to its prior attack, and there is no basis to force the experts and the jury to ignore those substantial expected revenues in calculating damages in this case. Google’s argument mischaracterizes Prof. Cockburn’s report and testimony, misunderstands the facts, and ignores governing law.

First, Google contends that Prof. Cockburn “admitted the sole source” of this adjustment is “profits Sun allegedly lost the chance to earn because Google deployed the Android position.” (Supp. Br. at 6–7.) Google mischaracterizes Prof. Cockburn’s testimony. Although Google’s counsel designed its questions to try to get Prof. Cockburn to adopt the “lost profits” terminology, Prof. Cockburn testified that it was incorrect to characterize the calculation as “being lost profits” and that they instead reflect—as described in Prof. Cockburn’s reports—“a method of capturing the value to Sun of compatibility and control.” (Dearborn Decl. Ex. H (Cockburn Dep. at 135:17–136:2).) Prof. Cockburn later elaborated:

[REDACTED]
(Id. at 192:11–194:20.) Prof. Cockburn properly applies the difference between a lost profits measure of damages and the appropriate components of a reasonable royalty. As a measure of copyright damages, he calculates lost profits from Sun’s Java ME licensing revenues and its own plan for a full mobile software stack, Project Acadia, as an alternative measure of actual damages for Google’s copyright infringement in this case. (Cockburn Report ¶¶ 439–98.) The upward adjustment to the

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hypothetical license is not actual lost profits—it reflects Sun’s expectations in 2006 for convoyed sales to third parties as a result of a license agreement with Google. Notably, Prof. Cockburn does not include the loss of such convoyed sales—which would have been realized only had there been a license, not in the but-for world (no infringement) that informs lost profits analysis—in his lost-profits calculation. The expected convoyed sales are only, and appropriately, relevant to valuation of the patents and copyrights using a hypothetical license measure that seeks to measure (a) the value of a compatible, jointly controlled Android, plus (b) the value lost if compatibility is changed to incompatibility.

Second, Google’s legal challenge to Prof Cockburn’s adjustment, which Google repeats from its original motion in limine, is still meritless. As Oracle described in its original opposition brief (Dkt. No. 494-1 at 12), Google’s argument about the relationship between lost profits and reasonable royalty analysis is foreclosed by Panduit and Georgia-Pacific Factor 6, which specifically permits the expert to consider convoyed and ancillary sales in the hypothetical license analysis. In fact, Google now admits that “a patentee’s likely lost profits is [sic] one factor that can be used to justify a reasonable royalty calculation.” (Supp. Br. at 7 (emphasis added).) This legal standard makes sense, given that negotiating parties of course consider expected gains and losses when negotiating a license. Yet Google now claims, with no case citation, that the established Georgia-Pacific rule permitting consideration of any reasonably expected losses must not apply to this case. Google is incorrect.

Sales projections are routinely used to calculate damages based on the parties’ reasonable expectations at the time of the hypothetical negotiation. The Federal Circuit’s opinion in Interactive Pictures Corp. v. Infinite Pictures, Inc, 274 F.3d 1371, 1385 (Fed. Cir. 2009), a case that Oracle cited in its opposition to Google’s original motion (Dkt. No. 494-1 at 12) and which Google still ignores in its supplemental brief, is fatal to Google’s position. In Interactive Pictures, the plaintiff based its reasonable-royalty base on the infringer’s business plan and projections for future sales—a document that was prepared two months before infringement began. 274 F.3d at 1385. The defendant argued that this royalty base was outdated, and contained overly optimistic assumptions of future revenue growth that never actually materialized. The Federal Circuit disagreed with the defendant. The court first observed that “[w]e have previously upheld awards of damages premised on a lump sum royalty

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payment based on an infringer’s expected sales.” Id. The court also rejected the defendant’s argument that the projections were too speculative, even though the projections were not ultimately realized. “The fact that Infinite did not subsequently meet those projections is irrelevant to Infinite’s state of mind at the time of the hypothetical negotiation. Nor does Infinite’s subsequent failure to meet its projections imply that they were grossly excessive or based only on speculation and guesswork. Instead, Infinite’s subsequent failure to meet its projections may simply illustrate the ‘element of approximation and uncertainty’ inherent in future projections.” Id. In fact, the court said that the opposite rule—requiring only actual, realized sales revenue to be considered, rather than expected sales revenue—would “essentially eviscerate the rule that recognizes sales expectations at the time when infringement begins as a bases for a royalty base[.]” Id. Finally, the court concluded that convoyed sales were properly included in the royalty base. Id. (citing cases calling such an approach “eminently reasonable”).) The court thus refused to disturb the jury’s damages award.

Because of the hypothetical license’s focus on expectations, many cases apply this same standard with regard to both infringer’s and the patentee’s profit projections. See Wordtech Sys., Inc. v. Integrated Networks Solutions, Inc., 609 F.3d 1308, 1319 (Fed. Cir. 2010) (reasonable royalty can be calculated from the “infringers’ profit projections for infringing sales”); Lucent Techs, Inc. v. Gateway, Inc., 580 F.3d 1301, 1327 (Fed. Cir. 2009) (citing Interactive Pictures for the proposition that reasonable royalty can be calculated based on “the patentee’s business plan and its projections for future sales prepared two months before infringement began”) (internal quotation marks omitted); SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1380 (Fed. Cir. 2010), aff'd sub nom. Global- Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011) (refusing to reverse hypothetical license damages award based on plaintiff’s argument that it expected to obtain a 40 to 45 percent profit margin, because the “hypothetical construct seeks the percentage of sales or profit likely to have induced the hypothetical negotiators to license use of the invention” and “this court sees no reason to preclude a jury from hearing attorney argument based on an expectation of success.”) (citations omitted). Google has offered no response to any of these cases.

Rather than addressing the governing law, Google relies on five irrelevant, nonbinding cases for the proposition that projections cannot form the basis for an adjustment to a hypothetical license.

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(Supp. Br. at 10-11.) None of these cases is a patent or a copyright case, and none concerns a hypothetical license. The hypothetical license, of course, is a damages measure unique to intellectual property law, and focuses (unlike lost profits analysis) on the parties’ reasonable expectations at the time of the hypothetical negotiation. Google’s foray into unrelated areas of law—lost-profit damages for breach of contract,3 civil conspiracy,4 and antitrust5—where such expectations are not part of the damages calculation confirms the weakness of its position. Patent and copyright law provide no support for Google’s argument.

Google’s attempt to knock out the upward adjustment would, as Oracle has previously described, allow Google to pay less than it could have paid if it had just taken the license it needed in 2006. But:

The setting of a reasonable royalty after infringement cannot be treated, as it was here, as the equivalent of ordinary royalty negotiations among truly ‘willing’ patent owners and licensees. That view would constitute a pretense that the infringement never happened. It would also make an election to infringe a handy means for competitors to impose a ‘compulsory license’ policy upon every patent owner.
Panduit Corp. v. Stahlin Bros. Fibre Works, 575 F.3d 1152, 1158 (6th Cir. 1978). It is for this precise reason that the Panduit court, in considering a reasonable royalty, remanded to the district court with instructions to consider “the future business and attendant profit Panduit would expect to lose.” Id. at 1164. Google’s arguments are wrong on the law.

Third, as a matter of fact, Professor Cockburn does not, as Google incorrectly suggests, consider Sun’s convoyed sales projections in a vacuum or rely only on a single document to support the upward adjustment. Instead, he considers the reasonableness of the adjustment in light of Sun’s business model, Sun’s experience in the industry, Sun’s other documents, and Google’s contemporaneous expectation that Sun would have generated significant convoyed sales had a compatible license with

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shared control been concluded. (Cockburn Report ¶ 286–307; see also Agrawal 10/7 Decl. (Dkt. No. 509) at Ex. 3-6, 3-7, 3-8 (documents confirming that Google knew Sun would have a commercial implementation).) Whereas Google provides the Court snippets of Prof. Cockburn’s deposition testimony relating specifically to the Sun business model, it omits that Prof. Cockburn also clearly testified that he (1) assessed the model [REDACTED] Google’s challenge rests on a mischaracterization and selective misreading of both Prof. Cockburn’s report and Prof. Cockburn’s deposition.6

Fourth, Google’s continued insistence that the Sun convoyed sales projections are unreliable is off-base, especially in the context of a Daubert challenge. Google certainly may wish to try to cast doubt on the reliability of the projections at trial, based on examination of the relevant witnesses (none of whom it saw fit to depose) and use of the documents relating to the projections. But that is not the stuff of a motion in limine. Even if it were, Google is incorrect. The reliability of the projections is confirmed by the fact that the kinds of convoyed and ancillary sales projected were precisely the types of sales—licenses to OEMs for commercial implementations of Java technology—with which Sun had extensive experience, and which formed a core portion of Sun’s Java business. (See, e.g., Dearborn

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Decl. Ex. I (Singh Dep. Tr. 47:9-13) (“Sun had engineering services that would do implementations for customers, but consistent with the specification and consistent with the TCK.”); id. 99:18-23 (“Our business model is based on, as I mentioned, on runtime licensing revenue for – for the platform functionality as well as adding in services revenue on top of that.”).) Sun had offered engineering services on its commercial licenses for years, and the projections correspond to commercial licensing that Sun could have earned and expected to earn if it had been part of the Android story. (See Purcell 10/20 Decl. (Dkt. No. 550-4, 550-3) Ex. D & C (OAGOOGLE0100166873, OAGOOGLE0100166874 at 882).) In other words, the projections considered monetizing Android in a manner very similar to the way Sun was accustomed to monetizing Java. Google is incorrect in characterizing the projections as “a completely new line of business for Sun.” (Supp. Br. at 10.)

Nor does anything in the document itself suggest unreliability. The projections are reflected in a presentation created in early 2006, just before the infringement began, making it particularly relevant to shed light on Sun’s reasonable contemporaneous expectations. See Interactive Pictures, 274 F.3d at 1385. The projections were presented to Sun’s finance department. As described in Oracle’s prior brief, nothing in the cover e-mail suggests that the presentation containing the projections disclaims the accuracy of the projections. Kathleen Knopoff, the former Sun employee who is the author of the document and the sender of the e-mail that attached it is on Oracle’s trial witness list (see Dkt. No. 523- 2 at 3) and has been listed on Oracle’s initial disclosures since June 2011. Prof. Cockburn discussed and cited the projections in his May 2011 Report. Despite all of this, Google declined to take any fact discovery at all relating to the projections, including not taking Ms. Knopoff’s deposition. The only deposition testimony in the record relating to the projections is the testimony of another former Sun employee, Vineet Gupta, who participated in the 2005-2006 negotiations with Google and testified as follows with the Sun projections in front of him:

Q. Do you know Kathleen Knopoff?

A. Yes.

Q. Do you find her to be a trustworthy and valuable employee of Sun?

A. Yes. Yes.

Q. Do you have any reason to doubt the integrity of the information she would send you?

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A. No, no. That's why I said I let other people do their jobs. And I would trust. But that's the cost, and that's the area. That's what it is.
(Dearborn Decl. Exh. K (Gupta Dep. at 307:24-309:24).). Google should not be permitted to use a Daubert challenge in lieu of its failure to take timely discovery or try to rebut this uncontested testimony.7

C. Cockburn’s Calculation Of A Hypothetical License Damages Award For Google’s
Copyright Infringement Is Valid And Supported

In its motion in limine, Google argued that Oracle must show “evidence of benchmark transactions, such as licenses previously negotiated for a comparable use of the infringed work” in order to prove a lost copyright hypothetical license fee. (Dkt. No. 494 at 4.) In its opposition, Oracle pointed out that the author of the quoted language, Judge Hamilton, clarified soon after issuing the opinion including that language that “the court did not hold as a matter of law” that a copyright hypothetical license is “available only if the copyright owner provides evidence of actual licenses . . . and/or actual ‘benchmark’ licenses.” Oracle USA, Inc. v. SAP AG, No. C07-1658 PJH, at Dkt. No. 1088. In its supplemental brief, Google concedes that Judge Hamilton rejected Google’s interpretation. (Supp. Br. at 13.) And yet Google again relies on the earlier, disowned standard. (Id. at 12, 13.)

Google’s supplemental brief also shows that Google misunderstands Prof. Cockburn’s copyright hypothetical-license analysis. Google claims that there can be no copyright hypothetical license because, in Google’s view, there is no “objective” evidence that Sun would have licensed an incompatible implementation of Java. But Prof. Cockburn relies precisely on objective evidence: documents underlying the parties’ actual negotiations, which, as this Court has put it, are the “realworld ‘comparable’ close on point.” (Dkt. No. 230 at 14.)

Google repeatedly ignores the objective evidence. For example, it argues that the Ninth Circuit has not “affirmed hypothetical-license damages in a case involving competitors (who do not commonly license each other).” (Supp. Br. at 14.) But to the extent they were competitors at all at the time, Sun and Google did not in 2006 consider their competitive relationship an impediment to a license. Indeed,

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even in his deposition, [REDACTED]

Similarly, Prof. Cockburn quantifies the “starting point” license by taking the $100-million starting point8 and apportioning down to isolate the contributions of the copyrights-in-suit. (See Cockburn Report Exhibit 23.) The starting point is based on an actual, real-world offer, not “speculation.” Google understood that the purpose of the starting-point license was to compensate Sun not only for the right to license its intellectual property, but also for short-term revenue loss as it moved into an open-source business model. [REDACTED]) Prof. Cockburn’s starting point is based on the objective, real-world facts. Google wants to characterize it as somehow “subjective” or “speculative,” but it nowhere deals with the indicia of objectivity in Prof. Cockburn’s report and deposition testimony.

Prof. Cockburn’s copyright damages calculations are consistent with the principles set forth by the Ninth Circuit in Polar Bear Prods. v. Timex Corp., 384 F.3d 700, 708 (9th Cir. 2004). Judge Hamilton’s since-clarified decision in Oracle v. SAP provides no basis for Google’s motion.

D. Cockburn’s Calculation Of Patent Damages By Features And Calculation Of Copyright
Damages Without Any Individual Copyright Breakdown Is Appropriate

In its motion in limine, Google claimed that it was error for Prof. Cockburn to assess patent damages on a patent-by-patent, rather than claim-by-claim, basis. (Dkt. No. 494 at 9.) Google cited no

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case in which any court required apportionment on a claim-by-claim basis. Despite the fact that Oracle noted that deficiency in its opposition to Google’s motion (Dkt. No. 494-1 at 16), although Google now repeats the argument in its supplemental brief, and although Google in fact has now expanded its argument and contends that Prof. Cockburn should have separately calculated damages for each of the different categories of copyrighted materials (Supp. Br. at 16), Google has still not cited a single case for the proposition that apportionment must be so granular. Nor does Google provide either any indication or any argument that the results would have been different on a claim-by-claim basis as opposed to a feature-by-feature basis.

As described in Oracle’s prior brief (Dkt. No. 494-1), neither the law nor this court’s prior order requires apportionment down to a granular claim-by-claim basis. Most of the cases instructing how to do a proper apportionment focus on the incremental benefit attributable to the infringing feature or work, without any mention of any claim-by-claim or copyright-by-copyright analysis—exactly the analysis that Prof. Cockburn performs. The cases all focus on the incremental benefit provided by the infringing feature—not the claim.

For example, in VS Techs., LLC v. Twitter, Inc., 2:11CV43, 2011 WL 4744572 (E.D. Va. Oct. 5, 2011), the court recently upheld an expert’s apportionment analysis that measured the incremental value of the infringing feature. There, the expert calculated damages based on three methods for measuring incremental value, including a calculation of how use of the infringing feature led to increased use of the Twitter system and revenue to Twitter, and a calculation of the expected incremental economic benefit attributable to the infringing feature, and an evaluation of how, in his experience, that benefit would have been shared between Twitter and VS Technologies. Id. Defendant challenged the expert under Daubert and cases that have emphasized the apportionment rule. The court rejected that challenge, because the “proposed testimony does not seek to extend damages to any features not encompassed within the claimed invention.” Id. at *7. See also Function Media, 2010 WL 272409, at *4 (refusing to exclude plaintiff’s expert on apportionment grounds when he evaluated only the incremental profit); Metallic Rubber Tire Co. v. Hartford Rubber Works Co., 275 F. 315, 322-23 (2d Cir. 1921) (using infringers’-profits rule, calculating damages from an improvement based on the difference in defendant’s profits on improved, infringing tires and ordinary, non-infringing tires).)

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Similarly, for the copyrights, Prof. Cockburn calculates the incremental benefit to Android’s market share, and therefore to Google’s advertising revenues, of offering a platform with more available apps—a direct consequence of Google’s intentional choice to leverage the Java developer community by providing them with familiar Java APIs. (Dearborn Decl. Ex. H (Cockburn Dep. 201: 24–204:1).)

Prof. Cockburn’s analysis comports with established standards, and Google has cited no authority permitting exclusion of Prof. Cockburn’s analysis on the basis that he should have done an even more granular analysis. Oracle detailed in its responsive brief the reasons why more granular apportionment is not warranted as a matter of fact, law, case management, or economics. (Dkt. No. 494-1 at 16–17.) But even if there were a claim-by-claim apportionment requirement (which there isn’t), Google’s argument simply exalts form over substance. By insisting that Prof. Cockburn slice and dice damages ever more granularly, without once offering an illustration as to how one would accomplish that task, Google has invented an economic principle that is untethered both to facts and to the policies underlying intellectual-property damages. Prof. Cockburn’s analysis goes much farther than the “smallest salable unit” practicing the patents in suit, which is the economically rational royalty base; instead he measured only the incremental benefit to Google of the claimed invention. Cf. Cornell Univ. v. Hewlett-Packard Co., 609 F. Supp. 2d 279, 283–92 (N.D.N.Y. 2009) (smallest salable unit). There was no reason for Prof. Cockburn to do anything more, and there is no basis for Google’s Daubert challenge.

E. There Is No Reason To Bar Dr. Cockburn From Testifying About Other Relevant Licenses
And Settlements, Including The Sun v. Microsoft Agreements

In the last section of its supplement brief Google repeats yet another set of arguments from its original motion: that Prof. Cockburn’s citation to and consideration of the Qualcomm-Nokia license and the Sun-Microsoft settlement in his report is impermissible. (See Dkt. No. 494 at 9-10.) Google seeks an order barring Prof. Cockburn from “testifying about licenses for technologies other than those embodied in the patents-in-suit, or licenses involving neither Sun nor Google” and also barring Prof. Cockburn from making “any reference at trial to the Sun-Microsoft settlement.” (Supp. Br. at 16.) It does so even though Google’s own damages experts rely heavily on other licenses involving Sun, most

17

notably the Sun-Danger license, as discussed above. (See Dearborn Decl. Ex. J (Excerpts from Leonard Report at pp. 45–49).)

As explained in Oracle’s opposition to Google’s original motion, the Sun-Microsoft litigation and resulting settlement is relevant. That litigation involved—as does this case—an incompatible, platform-specific Java implementation that undermined the core value of Java. Sun and Microsoft resolved that dispute after years of litigation with a set of agreements resulting in nearly $2 billion paid by Microsoft to Sun. That included a license for Microsoft to use Sun’s Java patents. Among other things, the Sun-Microsoft litigation and resulting settlement are relevant to Sun’s perspective with respect to any hypothetical license negotiation here—precisely the sort of “objective” historical evidence that Google elsewhere erroneously complains is missing from Prof. Cockburn’s analysis. Google cannot have it both ways.

Moreover, neither of the two cases cited by Google warrant an order precluding Prof. Cockburn from testifying about any other agreements. In ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 869 (Fed. Cir. 2010), the court cited Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) for the proposition that courts should be “vigilant” when considering licenses other than for patents in suit, but neither case forbids consideration or testimony regarding such other licenses. Prof. Cockburn appropriately heeds this guidance, not using any other licenses as the basis for any quantification of damages (unlike Google’s damages experts, who rely on a misreading of the Sun- Danger license as the sole basis for their quantification of the upward adjustment for incompatibility). He simply reviews those mobile licenses and finds that their terms underscore the reasonableness of his calculations. The Federal Circuit decisions on which Google relies involved situations where the expert actually relied on the other agreements in calculating damages, which is not the case here. See ResQNet, 594 F.3d at 870 (expert “used licenses with no relationship to the claimed invention to drive the royalty rate up to unjustified double-digit levels”); Lucent, 580 F.3d at 1329 (expert used licenses to calculate damages where it was “doubtful that the technology of those license agreements is in any way similar to the technology being litigated” in that case). Prof. Cockburn’s use of other licenses is well within the legal limits. There is no basis for exclusion of any or all reference to them.

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CONCLUSION

The court should reject Google’s meritless Daubert challenge.

Dated: October 27, 2011

BOIES, SCHILLER & FLEXNER LLP

By: /s/ _______________
Steven C. Holtzman

Attorneys for Plaintiff
ORACLE AMERICA, INC.

____________________________

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.

2 It is true that the fact that Sun and now Oracle ordinarily license Java patents in a bundle should be relevant to the hypothetical license here. Studiengesellschaft Kohle, m.b.H. v. Dart Indus., Inc., 862 F.2d 1564, 1568 (Fed. Cir. 1988) (“[T]he patentee’s usual licensing approach should be considered in assessing a reasonable royalty.”). Sun, and now Oracle, are not in the custom of licensing particular patents; instead, they license the bundle of intellectual property that comprises the Java platform as a whole. Both parties’ experts agree that there are no comparable benchmark licenses on which to base a reasonable royalty for these particular isolated patents, nor is there a clean economic way to apportion all the way down to the patent level. In fact, under similar circumstances in a different case, Google’s own expert, Dr. Leonard, employed the entire market value rule: “The problem is, how much is that component worth versus the whole product? It makes it difficult. . . . So like let’s take a car. And let's say you had a patent on the engine. You could base a royalty for that using a patented technology on the price of the whole car. That’s really what I'm talking about here. Or you could somehow try to figure out what the value of the engine is. But the problem is that the engine isn’t really sold separately. It’s really hard to figure out what that value is. And you’re going to get into disputes between the two sides, the person who is paying the royalty is going to say, oh, the engine isn’t worth much. And the person receiving the royalty is going to say, oh, the engine is worth everything. So to avoid those kind of disputes you just set the royalty base as being the whole car.” (Dearborn Decl. Ex. G (Trial Tr., Day 7, November 15, 2007, 1342:9-11, 1342:23-1343:10, Bard Peripheral Vascular v. W.L. Gore & Associates, No. CV-03-597-PHX-MEM).)

3 Zenith Electronics Corp. v. WH-TV Broad. Corp., 395 F.3d 416, 420 (7th Cir. 2005) (contract lost profits, concerning lay opinion testimony under Rule 701); TAS Distrib. Co. v. Cummins Engine Co., Inc., 491 F.3d 625, 633 (7th Cir. 2007) (contract lost profits, construing Illinois state law); Trademark Research Corp. v. Maxwell Online, Inc., 995 F.2d 326, 332 (2d Cir. 1993) (breach of contract, construing New York state law).

4 TK-7 Corp. v. Estate of Barbouti, 993 F.2d 722, 723 (10th Cir. 1993) (civil conspiracy lost profits)

5 ID Sec. Sys. Canada, Inc. v. Checkpoint Sys., Inc., 249 F. Supp. 2d 622, amended, 268 F. Supp. 2d 448 (E.D. Pa. 2003) (lost profits under antitrust and state law claims)

6 Google’s argument is particularly ironic in light of the fact that Google’s own damages experts rely on a single, unrelated license agreement between Sun and a third party called Danger Inc. as the basis for their conclusion that the upward adjustment properly attributable to the fact that the hypothetical license would have been for an incompatible implementation is an amount double the royalty for a compatible license. (Dearborn Decl. Ex. J (excerpts from Leonard Report at pp. 45–49).) The irony is multiplied by the fact that Google’s experts’ complete reliance on the Sun-Danger license simply misreads the license and incorrectly conflates the impact on the royalty (double) from whether Danger’s implementation would be branded as “Java” with the impact on the royalty if the Danger implementation were to be incompatible, which is not addressed in the Danger license because compatibility was absolutely required.

7 Ironically, Google complains that Prof. Cockburn did not interview Ms. Knopoff. (Supp. Br. at 10.) Unlike Google’s damages experts, Prof. Cockburn preferred to base his opinions on the contemporaneous documents and record evidence, rather than spoonfed facts in interviews.

8 Google continues to insist that this starting point is incorrect. (Supp. Br. at 1–2.) Prof. Cockburn used the $100 million offer not only because that is what the Court directed but because that $100 million was linked to a proposed contract that more closely resembles the hypothetical license—one where Sun has less control. Google mischaracterizes the $28 million offer as a lower offer for the same consideration. Google could have tried to calculate the value of the additional control granted to Sun with the new contract, and adjusted the $28 million offer accordingly to come up with an alternative starting point, but Google chose not to.

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