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Oracle v. Google - Final Pretrial Order and Order on the Motions In Limine
Thursday, January 05 2012 @ 11:30 AM EST

A trial date has been set in Oracle v. Google, or more accurately, an earliest trial date has been set. In a final pretrial order issued yesterday (675 [PDF;Text]) Judge Alsup set the earliest date for trial as March 19, 2012. In reality the actual start date will be some time after March 19 since there are attorney conflicts in March, April and May that have been previously identified. This order is merely a recognition that the trial will not start before March 19.

In addition, in a separate order Judge Alsup has now disposed of most of the motions in limine (676 [PDF; Text]), and it is a mixed bag for the parties.

Jump To Comments

Returning to the final pretrial order, Judge Alsup makes clear in bullet number 2 that the final adjudication of infringement of the patent claims selected for trial will serve as a final adjudication of all patent claims identified in either the original or any amended complaint. He also makes clear that he intends to stick with a trifurcated trial (copyright infringement, patent infringement, damages/willfulness), an approach Oracle has repeatedly opposed. One thing Judge Alsup does not address is how much time he intends to set aside for the trial, which could very well impact the trial's start date.

Turning to the motions in limine, here is a synopsis of the court's ruling on each:

  • Google No. 1 - To exclude the Lindholm email and drafts - Denied. Unless Google can win on its writ of mandamus now before the Federal Circuit, Google will have to deal with this email at trial, and it is clear that Judge Alsup sees it as highly problematic for Google.
  • This attorney-prepared declaration is unpersuasive. Mr. Lindholm was a former Sun engineer who co-wrote the book, “The Java Virtual Machine Specification,” and was a member of early Java development teams. Mr. Lindholm joined Google in July 2005 and immediately worked on Android as a “generalist and interpreter of the engineering/business/legal ecosystem.” One of Mr. Lindholm’s roles on the Android team was to help negotiate a license for Java. Mr. Lindholm’s background shows that he was quite knowledgeable about Java and Android technology as separate platforms and any potential crossover between the two platforms, or so a reasonable jury could find. His admission that Google needed a Java license is relevant to the issue of infringement.

    The email is also relevant to damages. It goes to show that Google had no viable alternatives to Java. It also goes to willfulness because the email was sent after Oracle accused Google of infringement. Since Mr. Lindholm had a deep background in Java and Android technology, the email goes to show that there was an objectively high likelihood that Google’s actions constituted infringement of a valid patent.

    The risk of unfair prejudice does not outweigh the email’s relevance. Google is worried that the jury will interpret the email without context and overvalue its importance. Subject to this order’s ruling on Oracle’s motion in limine number five, counsel can try to explain it away or reduce the email’s significance by introducing testimony along the same lines as Mr. Lindholm’s declaration. But the probative value outweighs any unfair prejudice.

  • Google No. 2 - To exclude alleged performance benefits of Android with the accused functionality - Denied. Judge Alsup finds none of the Google-identified flaws in the Oracle performance studies. More importantly, Judge Alsup said Google could have performed its own studies and did not.
  • Google No. 3 - To strike expert damage opinion - To be addressed separately.
  • Google No. 4 - To exclude portions of Goldberg report discussing commercial success - Granted, but only to the extent of requiring Oracle to reasonably establish the disputed nexus exists before calling Dr. Goldberg to testify.
  • Google No. 5 - To exclude evidence obtained from Motorola Mobility, Inc. - Granted, but such evidence will be limited to addressing the Motorola Droid. It cannot be introduced to implicate any other Motorola devices that may also utilize Android.
  • Oracle No. 1 - To exclude evidence or argument regarding patent reexaminations - Denied in part and granted in part. The motion is denied with respect to those patents for which the USPTO has taken final action in reexamination. At this time there are three such patents: '520, '720, and '476. Presumably, if any of the others reach final action before the commencement of the trial, they too would be subject to denial of this motion. With respect to any asserted patents for which reexamination has not been completed by the time of trial, the motion is granted with the caveat that a party may request the court to allow specific information from the reexaminations to be introduced.
  • Oracle No. 2 - To exclude evidence or argument that Google relied on legal advice in making its decision to develop and release Android - Granted, but either side may seek the court's approval to reference such advice at trial with the court's permission.
  • Oracle No. 3 - To exclude evidence or argument that third-party OEMs changed infringing components of Android - Denied. Google, however, will be limited to introducing its discovery responses (not new testimony from Google personnel), third-party responses to subpoenas, and cross-examination of Oracle witnesses.
  • Oracle No. 4 - To exclude evidence or argument regarding Oracle's past actions with application programming interfaces - Granted in part and denied in part. The motion is granted to the extent such evidence that substantially predates 2006. Substantially predates clearly includes any such evidence from prior to the year 2000 and may or may not include evidence arising after 1999 and before 2006. Otherwise the Oracle motion is denied as being too broad.
  • Oracle No. 5 - To exclude evidence and argument contrary to statements in the Lindholm email - Granted in part and denied in part. To the extent Lindholm refused to provide responses to questions during deposition on the grounds of privilege, he will not now be able to provide such responses in testimony at trial. However, to the extent that Oracle seeks to preclude any other Google argument pertaining to viable alternatives to Java or the patents-in-suit, that Google did not need a license to Java or the patents-in-suit, or that some of the statements made by Lindholm in the email were not true, such preclusion is denied. Google will be allowed to present such evidence.

In the end it would appear, as we had suspected, that neither party achieved any significant wins on its respective motions. Judge Alsup carefully walked a fine line to assure that neither party was materially disadvantaged by these rulings. Of course, we will have to await the court's final ruling on Google's motion in limine number 3.

In other filings related to the order on the motions in limine, Oracle has now filed unredacted versions of its motions in limine numbers 2, 3, 4 and 5. Those motions are replicated in text form below with the now unredacted portions in bold and italics to highlight what had previously been redacted.


Skip To Comments


***********

Docket

662 - Filed and Effective: 01/03/2012
Transcript
Document Text: Transcript of Proceedings held on 12/21/11, before Judge William Alsup. Court Reporter/Transcriber Sahar Bartlett, CSR, RPR, Telephone number (415) 626-6060/sahar_bartlett@cand.uscourts.gov. Per General Order No. 59 and Judicial Conference policy, this transcript may be viewed only at the Clerks Office public terminal or may be purchased through the Court Reporter/Transcriber until the deadline for the Release of Transcript Restriction.After that date it may be obtained through PACER. Any Notice of Intent to Request Redaction, if required, is due no later than 5 business days from date of this filing. Release of Transcript Restriction set for 4/2/2012. (Bartlett, Sahar)

663 - Filed and Effective: 01/03/2012
Oracle's Second Motion in Limine
Document Text: Second MOTION in Limine to Exclude Evidence or Argument that Google Relied on Legal Advice in Making its Decisions to Develop and Release Android filed by Oracle America, Inc. Responses due by 1/17/2012. Replies due by 1/24/2012. (Attachments: # 1 Google's Opposition to Oracle's Motion in Limine No. 2 to Exclude Evidence or Argument that Google Relied on Legal Advice in Making its Decisions to Develop and Release Android)(Muino, Daniel)

664 - Filed and Effective: 01/03/2012
Oracle's Third Motion in Limine
Document Text: Third MOTION in Limine to Preclude Google From Offering Evidence or Argument that Third-Party OEMs Changed Infringing Components of Android (UNREDACTED VERSION) filed by Oracle America, Inc.. Responses due by 1/17/2012. Replies due by 1/24/2012. (Attachments: # 1 Google's Opposition to Oracle's Motion in Limine No. 3 to Preclude Google From Offering Evidence or Argument that Third-Party OEMs Changed Infringing Components of Android)(Muino, Daniel)

665 - Filed and Effective: 01/03/2012
Oracle's Fourth Motion in Limine
Document Text: Fourth MOTION in Limine to Exclude Evidence or Argument Regarding Oracle's Past Actions with Application Programming Interfaces (UNREDACTED VERSION) filed by Oracle America, Inc.. Responses due by 1/17/2012. Replies due by 1/24/2012. (Attachments: # 1 Google's Opposition to Oracle's Motion in Limine No. 4 to Exclude Evidence or Argument Regarding Oracle's Past Actions with Application Programming Interfaces)(Muino, Daniel)

666 - Filed and Effective: 01/03/2012
Declaration
Document Text: Declaration of Daniel P. Muino in Support of 505 Exhibits, 503 Declaration in Support, 504 Exhibits, (UNREDACTED VERSION) Declaration of Daniel P. Muino in Support of Oracle America, Inc.'s Motions in Limine Nos. 1 through 5 filed byOracle America, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K, # 12 Exhibit L, # 13 Exhibit M, # 14 Exhibit N, # 15 Exhibit O, # 16 Exhibit P, # 17 Exhibit Q, # 18 Exhibit R)(Related document(s) 505 , 503 , 504 ) (Muino, Daniel)

667 – Filed and Effective: 01/03/2012
MOTION
Document Text: MOTION in Limine PLAINTIFFS MOTION IN LIMINE NO. 5 TO EXCLUDE EVIDENCE AND ARGUMENT CONTRARY TO STATEMENTS IN TIM LINDHOLMS AUGUST 6, 2010 EMAIL (UNREDACTED VERSION) filed by Oracle America, Inc.. Responses due by 1/17/2012. Replies due by 1/24/2012. (Attachments: # 1 GOOGLES OPPOSITION TO ORACLES MOTION IN LIMINE NO. 5 TO EXCLUDE EVIDENCE AND ARGUMENT CONTRARY TO STATEMENTS IN TIM LINDHOLMS AUGUST 6, 2010 EMAIL)(Norton, William) (Filed on 1/3/2012) (Entered: 01/03/2012)

[Note: Documents 668 through 674 are simply a refiling of prior motions and responses previously filed. We have not reproduced them here in either pdf or text form.]

668 – Filed and Effective: 01/03/2012
MOTION
Document Text: MOTION in Limine No. 1 filed by Google Inc.. Responses due by 1/17/2012. Replies due by 1/24/2012. (Attachments: # 1 Oracle Opposition)(Kamber, Matthias)

669 – Filed and Effective: 01/03/2012
MOTION
Document Text: MOTION in Limine No. 2 filed by Google Inc.. Responses due by 1/17/2012. Replies due by 1/24/2012. (Attachments: # 1 Oracle Opposition)(Kamber, Matthias)

670 – Filed and Effective: 01/03/2012
MOTION
Document Text: MOTION in Limine No. 3 filed by Google Inc.. Responses due by 1/17/2012. Replies due by 1/24/2012. (Attachments: # 1 Oracle Opposition)(Kamber, Matthias)

671 – Filed and Effective: 01/03/2012
MOTION
Document Text: MOTION in Limine No. 4 filed by Google Inc.. Responses due by 1/17/2012. Replies due by 1/24/2012. (Attachments: # 1 Oracle Opposition)(Kamber, Matthias)

672 – Filed and Effective: 01/03/2012
MOTION
Document Text: MOTION in Limine No. 5 filed by Google Inc.. Responses due by 1/17/2012. Replies due by 1/24/2012. (Attachments: # 1 Oracle Opposition)(Kamber, Matthias)

673 – Filed and Effective: 01/03/2012
Declaration
Document Text: Declaration of DANIEL PURCELL in Support of 671 MOTION in Limine No. 4, 668 MOTION in Limine No. 1, 672 MOTION in Limine No. 5, 669 MOTION in Limine No. 2, 670 MOTION in Limine No. 3 filed byGoogle Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12, # 13 Exhibit 13, # 14 Exhibit 14, # 15 Exhibit 15, # 16 Exhibit 16, # 17 Exhibit 17, # 18 Exhibit 18, # 19 Exhibit 19, # 20 Exhibit 20, # 21 Exhibit 21, # 22 Exhibit 22, # 23 Exhibit 23, # 24 Exhibit 24, # 25 Exhibit 25, # 26 Exhibit 26, # 27 Exhibit 27, # 28 Exhibit 28, # 29 Exhibit 29, # 30 Exhibit 30, # 31 Exhibit 31, # 32 Exhibit 32, # 33 Exhibit 33, # 34 Exhibit 34, # 35 Exhibit 35, # 36 Exhibit 36, # 37 Exhibit 37, # 38 Exhibit 38, # 39 Exhibit 39, # 40 Exhibit 40)(Related document(s) 671 , 668 , 672 , 669 , 670 ) (Kamber, Matthias)

674 – Filed and Effecitve: 01/03/2012
DECLARATION
Document Text: DECLARATION of RUCHIKA AGRAWAL in Opposition to 671 MOTION in Limine No. 4, 668 MOTION in Limine No. 1, 672 MOTION in Limine No. 5, 669 MOTION in Limine No. 2, 670 MOTION in Limine No. 3 filed byGoogle Inc.. (Attachments: # 1 Exhibit 1-1, # 2 Exhibit 1-2, # 3 Exhibit 1-3, # 4 Exhibit 1-4, # 5 Exhibit 1-5, # 6 Exhibit 1-6, # 7 Exhibit 1-7, # 8 Exhibit 1-8, # 9 Exhibit 1-9, # 10 Exhibit 1-10, # 11 Exhibit 1-11, # 12 Exhibit 1-12, # 13 Exhibit 2-1, # 14 Exhibit 2-2, # 15 Exhibit 2-3, # 16 Exhibit 2-4, # 17 Exhibit 2-5, # 18 Exhibit 2-6, # 19 Exhibit 2-7, # 20 Exhibit 2-8, # 21 Exhibit 2-9, # 22 Exhibit 2-10, # 23 Exhibit 2-11, # 24 Exhibit 2-12, # 25 Exhibit 2-13, # 26 Exhibit 2-14, # 27 Exhibit 2-15, # 28 Exhibit 2-16, # 29 Exhibit 2-17, # 30 Exhibit 3-1, # 31 Exhibit 3-2, # 32 Exhibit 3-3, # 33 Exhibit 3-4, # 34 Exhibit 3-5, # 35 Exhibit 3-6, # 36 Exhibit 3-7, # 37 Exhibit 3-8, # 38 Exhibit 3-9, # 39 Exhibit 3-10, # 40 Exhibit 3-11, # 41 Exhibit 4-1, # 42 Exhibit 4-2, # 43 Exhibit 4-3, # 44 Exhibit 5-1, # 45 Exhibit 5-2, # 46 Exhibit 5-3, # 47 Exhibit 5-4)(Related document(s) 671 , 668 , 672 , 669 , 670 ) (Kamber, Matthias)

675 - Filed and Effective: 01/04/2012
FINAL PRETRIAL ORDER
FINAL PRETRIAL ORDER. Signed by Judge Alsup on January 4, 2012. (whalc1, COURT STAFF)

676 - Filed and Effective: 01/04/2012
OMNIBUS ORDER ON MOTIONS IN LIMINE
Document Text: OMNIBUS ORDER ON MOTIONS IN LIMINE FOR PRETRIAL CONFERENCE. Signed by Judge Alsup on January 4, 2012. (whalc1, COURT STAFF)

677 - Filed and Effective: 01/04/2012
ADMINISTRATIVE ORDER
Document Text: ADMINISTRATIVE ORDER BACKING UP ORDER # 659 by Hon. William Alsup granting in part and denying in part 507 Administrative Motion to File Under Seal.(whalc1, COURT STAFF)

678 - Filed and Effective: 01/04/2012
Document
Document Text: DOCUMENT E-FILED UNDER SEAL re 677 Order on Administrative Motion to File Under Seal Exhibit 5-04 to the Declaration of Ruchika Agrawal in Opposition to 671 Motion in Limine No. 4, 668 Motion in Limine No. 1, 672 Motion in Limine No. 5, 669 Motion in Limine No. 2, 670 Motion in Limine No. 3 filed by Google, Inc. by Google Inc.. (Kamber, Matthias)

679 - Filed and Effective: 01/04/2012
Document
Document Text: DOCUMENT E-FILED UNDER SEAL re 677 Order on Administrative Motion to File Under Seal Oracle's Opposition to 672 Motion in Limine No. 5 by Google Inc.. (Kamber, Matthias)


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

Documents

663 [Unredacted version of Document 499 - unredacted portions are in bold/italics]

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
MOTION IN LIMINE NO. 2 TO
EXCLUDE EVIDENCE OR
ARGUMENT THAT GOOGLE
RELIED ON LEGAL ADVICE IN
MAKING ITS DECISIONS TO
DEVELOP AND RELEASE
ANDROID

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

Oracle moves the Court to preclude Google from introducing any evidence or argument that Google relied on advice of counsel in connection with its decisions to develop and release Android. Google did not make the required disclosures under Patent L.R. 3-7 of documents reflecting any legal advice upon which it intends to rely. That alone should preclude Google from relying on advice of counsel to rebut allegations of willful patent infringement or intent to induce infringement. Moreover, during discovery, Google routinely asserted privilege to prevent Oracle from obtaining discovery on any legal advice Google may have received, with respect to both patent and copyright issues. Accordingly, Google should also be precluded from invoking legal advice as a defense to willful copyright infringement. For these reasons, the Court should exclude any evidence or argument that Google relied on legal advice in deciding to develop and release Android.

I. GOOGLE’S ASSERTION OF PRIVILEGE OVER LEGAL ADVICE

Google has invoked the attorney-client privilege to block all of Oracle’s discovery into any legal advice Google received in connection with Android. First, Google did not produce any documents relating to advice of counsel under Patent Local Rule 3-7. That rule requires “each party relying upon advice of counsel as part of a patent-related claim or defense” to produce a copy of “any written advice” and provide “a written summary of any oral advice” on which the party intends to rely and for which it has waived the attorney-client privilege and work product protection. Patent L.R. 3-7. Failure to comply with the rule means that the party may not rely on advice of counsel as a defense.

Second, Google asserted privilege and withheld from production numerous documents purportedly reflecting legal advice related to Android. Google’s privilege log contains many entries identifying privileged legal opinions that have been withheld from Oracle. (Declaration of Daniel P. Muino in Support of Oracle America, Inc.’s Motions In Limine Nos. 1 Through 5 (“Muino Decl.”), ¶ 5.) Indeed, Google systematically asserted privilege over any communications regarding advice of Google’s counsel.

Third, Google instructed its witnesses not to answer questions regarding legal advice pertaining to Android, based on the attorney-client privilege. For example, counsel instructed

1

Andy Rubin, Google’s Senior Vice President of Mobile and co-founder of Android, not to answer questions regarding legal advice pertaining to executive decisions on Android’s release Prior to any release, including both major and minor releases of Android, Google has a launch calendar, referred to as “Launch Cal.” The Launch Cal is a way to keep track of what needs to be reviewed and completed for a particular release. The Launch Cal includes a final sign-off for each lead of each team, including product management, engineering, executive, and legal. (Muino Decl. Exhibit E at 23:14-24:25; 30:4-31:21 (July 27, 2011 Deposition Transcript of Andrew Rubin).) This final sign-off is completed when a team lead checks a “bit” associated with their team. Mr. Rubin testified that prior to an Android release, the legal team was required to sign-off on release by checking a “legal bit” on Launch Cal. (Id.) Google’s assertion of privilege prevented Oracle from discovering the nature of any legal advice about this topic:

Q. BY MR. JACOBS: Have you interacted with the legal team over issues associated with the release of Android that prevented it from giving you the legal bit?

MS. ANDERSON: Objection. Instruct the witness not to answer on grounds of privilege as phrased.

Q. BY MR. JACOBS: Has the legal team ever conveyed to you we have concerns about a -- an Android release and we can't give you the legal bit?

MS. ANDERSON: Objection. Instruct the witness not to answer on the grounds of attorney-client privilege as phrased.

MR. JACOBS: And for all those instructions, you're following your counsel's instructions not to answer the question?

THE WITNESS: Yes, I am. (Muino Decl. Exhibit E at 25:13-26:2 (July 27, 2011 Deposition Transcript of Andrew Rubin).)

Google also asserted privilege over legal advice that Mr. Rubin received after this lawsuit was filed:

Q. BY MR. JACOBS: So let me ask you this question with the intent of dividing up possible privileged communications from non-privileged activities you may have conducted. Have you actually reviewed what I'll refer to as the infringement

2

contentions in this lawsuit? It's a very thick document in which Oracle sets forth the claims of the patents-in-suit and the accused functionality.

MS. ANDERSON: Objection. Instruct the witness not to answer on the grounds of attorney-client privilege to the extent responding would inherently disclose communications you had with counsel.

THE WITNESS: I'll take the instruction of my counsel.

Q. BY MR. JACOBS: Do you have a view, based on a review of the patents in the litigation, whether Android is bringing any of those patents?

MS. ANDERSON: Objection. Form. And also object to the extent the question is seeking to disclose communications with counsel, on that basis, I would instruct you not to answer on grounds of privilege, otherwise you may answer.

THE WITNESS: I will not answer based on the advice of my counsel.

Q. BY MR. JACOBS: Have you asked anybody on your team to assist counsel in reviewing the allegations?

MS. ANDERSON: Objection. Instruct the witness not to answer on grounds of attorney-client privilege.

THE WITNESS: I'll take that advice.

Q. BY MR. JACOBS: Has anybody on your team assisted counsel in reviewing Oracle's patent infringement allegations?

MS. ANDERSON: Objection, and instruct the witness not to answer on the grounds of attorney-client privilege.

THE WITNESS: Again, I'll take that advice.

(Id. at 36:14-37:25.) ...

Q. BY MR. JACOBS: Did you get -- did you involve Google's counsel in review of the terms of click-through licenses at any point in the development of Android?

MS. ANDERSON: Objection. Instruct the witness not to answer on grounds of attorney-client privilege.

THE WITNESS: I'll take that advice, thank you.

(Id. at 109:12-20.)

3

Google also used privilege as a shield to prevent Oracle from discovering any legal advice received by Google regarding the copyrightability of APIs:

Q. And in particular, I just have to ask this again: Did you consult with counsel over your tenure at Google around the question of whether API's were copyrightable as it related to Android?
MS. ANDERSON: Objection. Instruct the witness not to answer on the grounds of attorney-client privilege.
THE WITNESS: I'll accept the advice of my attorney.
(Id. at 155:22-156:5.)
Google asserted privilege and instructed Daniel Bornstein, Google engineer and one of the lead developers for Android, not to answer questions regarding whether or not he received advice of counsel about what materials he could look at to develop Android. (Muino Decl. Exhibit F at 161:22-162:21 (May 16, 2011 Deposition Transcript of Daniel Bornstein).) Google’s instruction prevented discovery on this subject:

Q. At the time, referring to, say, in early 2007, what was the source of your understanding that it was that you could use documentation to gain understanding of the idea of an API?
A. I don't know specifically.
Q. At the time, did you have -- receive any advice of counsel about what materials you could or could not look at to develop Android?
A. So I have had discussions with lawyers on and off throughout my career. I don't know how much I can say about the content of those.
MR. BABER: Instruct the witness to not say anything about the content of discussions.
THE WITNESS: Okay.
BY DR. PETERS:
Q. Did you see the -- were you ever advised by counsel that it was permissible to use a Javadoc to develop Android?
MR. BABER: Object and instruct the witness not to answer the question on the grounds of privilege.
BY DR. PETERS:
Q. Will you follow your counsel's instructions?
A. I will follow my counsel's instructions.
(Id.)
Further, Google asserted privilege in the deposition of Bob Lee, former Google engineer in charge of developing Android’s class libraries, and instructed him not to answer questions regarding whether Google analyzed the implications of Sun’s license dispute with Apache on the

4

release of Android. (Muino Decl. Exhibit G at 73:4-12 (August 3, 2011 Deposition Transcript of Bob Lee).) Google’s instruction prevented discovery on this subject:

Q. BY MR. PETERS: Did Google analyze whether or not the dispute between Sun and Apache was any bar to its release of Android?
MR. PURCELL: Object to the form. And to the extent you're aware of any analysis done by Google's lawyers or at the instruction of Google's lawyers, I instruct you not to answer.
THE WITNESS: Okay. I'm not sure. I don't know.
(Id.)
Fourth, Google asserted privilege in many of its responses to Oracle’s interrogatories. For example, Google asserted privilege in its response to Interrogatory No. 2. (Muino Decl. Exhibit H at 7-8 (Google’s Response to Oracle’s 1st Set of Interrogatories dated January 6, 2011).) Oracle’s Interrogatory No. 2 asks Google to “[i]dentify who at Google was and is responsible for Android’s compliance with the intellectual property rights of third parties and briefly describe their roles in that regard.” (Id.) Google asserted “attorney-client privilege, the work product doctrine, and/or any other applicable privilege, immunity, or protection.” (Id.) Further, it appears that Google failed to identify anyone from the legal team, nor did Google describe “their roles” in ensuring Android’s compliance. Google’s assertion of privilege over any legal advice it received pertaining to Android has been consistent and complete.

II. GOOGLE SHOULD BE PRECLUDED FROM INVOKING ADVICE OF COUNSEL AS A DEFENSE

Having failed to disclose the basis of any advice of counsel defense and having blocked all discovery on this subject, Google should be precluded from arguing that it relied on legal advice in connection with its decisions to develop and release Android.

First, Patent L.R. 3-7 is perfectly clear that advice of counsel defenses are precluded if a party fails to waive privilege and produce documents underlying the defense:

[E]ach party relying upon advice of counsel as part of a patent-related claim or defense for any reason shall:

5

(a) Produce or make available for inspection and copying any written advice and documents related thereto for which the attorney-client and work product protection have been waived;

(b) Provide a written summary of any oral advice and produce or make available for inspection and copying that summary and documents related thereto for which the attorney-client and work product protection have been waived; . . . .

A party who does not comply with the requirements of this Patent L.R. 3-7 shall not be permitted to rely on advice of counsel for any purpose absent a stipulation of all parties or by order of the Court.

Patent L.R. 3-7. The rule is absolute – unless underlying documents and oral advice are disclosed, invoking advice of counsel to rebut any patent-related claim (including willfulness and intent to induce infringement) is precluded, absent a stipulation or leave of Court. Protective Optics, Inc. v. Panoptx, Inc., 488 F. Supp. 2d 922, 923 (N.D. Cal. 2007) (“a defendant who wishes to escape charges of willful infringement may rely on the advice of his attorney, but he must alert the other side of his intention to do so, and he must turn over (or identify in a privilege log) all documents that relate to the attorney’s opinion. Failure to do so precludes use of the attorney’s opinion as a defense.”) Google has not made the required disclosures under L.R. 3-7; accordingly, it is precluded from offering an advice of counsel defense as a rebuttal to Oracle’s allegations of willful patent infringement and intent to induce infringement.

Second, Ninth Circuit law is clear that legal advice as a defense to willful copyright infringement must also be excluded if the party has invoked the attorney-client privilege to block discovery on that advice. See Columbia Pictures Indus., Inc. v. Krypton Broad. of Birmingham, Inc., 259 F.3d 1186, 1196 (9th Cir. 2001) (affirming exclusion of legal advice as a defense to willful copyright infringement, because defendant invoked privilege to block discovery on that advice); accord Chevron Corp. v. Pennzoil Co., 974 F.2d 1156, 1162 (9th Cir. 1992) (privilege cannot be waived selectively and thus used as a sword and shield); SNK Corp. of Am. v. Atlus Dream Ent’t Co., 188 F.R.D. 566, 571 (N.D. Cal. 1999) (“[f]airness dictates that a party may not use the attorney-client privilege as both a sword and a shield”).

In Columbia Pictures, the Ninth Circuit affirmed a trial court’s decision to exclude evidence of defendant’s reliance on advice of counsel, because the defendant asserted privilege

6

over the same evidence during discovery. Columbia, 259 F.3d at 1196. Defendant in that case sought to present evidence regarding advice of counsel to rebut an allegation of willful copyright infringement. Id. However, defendant “refused to answer questions regarding his interactions with counsel at his deposition.” Id. The district court granted plaintiff’s motion in limine to exclude evidence relating to defendant’s advice of counsel. Id. Defendant offered “to make himself available for deposition” on the subject of advice of counsel, but the district court rejected this offer, stating that “[t]he Defendant cannot now, at the eleventh hour, make himself available for a deposition.” Id. (quoting district court). The Ninth Circuit agreed that “refusing to answer questions regarding relevant communications with counsel until the ‘eleventh hour’” was sufficient ground for precluding testimony regarding the advice of counsel. Id.

Here, Google has used privilege as a shield. Google has systematically asserted attorneyclient privilege on all subjects relating to advice of counsel, whether pertaining to patents or copyrights. Google routinely asserted privilege at depositions of its witnesses on subjects regarding advice of counsel, including conversations surrounding the legal team’s analysis and checking of a “legal bit” to approve an Android release, as well as post-complaint analysis of Oracle’s claims of infringement.

For these reasons, any evidence or argument that Google relied on legal advice in connection with its Android decisions should be excluded from trial. Google should be precluded from presenting evidence or argument on both the substance of Google’s advice of counsel, as well as the fact that Google obtained and relied on that advice.

III. CONCLUSION

Google used the attorney-client privilege to shield from discovery any evidence regarding legal advice it received in connection with its Android decisions. Under Patent L.R. 3-7 and Ninth Circuit law, Google is precluded from asserting any advice of counsel defense. Oracle requests that the Court exclude any evidence or argument that Google relied upon legal advice in making its decisions to develop and release Android.

7

Dated: September 24, 2011

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


664 [Unredacted version of Document 500 - unredacted portions are in bold/italics]

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
MOTION IN LIMINE NO. 3 TO
PRECLUDE GOOGLE FROM
OFFERING EVIDENCE OR
ARGUMENT THAT THIRD-PARTY
OEMS CHANGED INFRINGING
COMPONENTS OF ANDROID

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

Oracle moves the Court to preclude Google from offering argument or evidence at trial that any changes were made to the infringing components of the Android source code by third party original equipment manufacturers (OEMs). Throughout this litigation, Google has steadfastly denied knowledge of any modifications made by OEMs to the infringing components of Android: (1) In response to Oracle’s Interrogatory 21, Google stated that it had “no direct, specific knowledge with regard to how third parties modify the accused Android source code and documentation”; and (2) Google’s corporate designee, Patrick Brady, testified that he did not know for certain, one way or the other, whether OEMs had changed the infringing components of Android installed on Android devices. Having disclaimed any knowledge of OEM changes to the infringing components, Google should be barred from offering any evidence or argument on that subject at trial.

I. GOOGLE HAS DENIED KNOWLEDGE OF OEM CHANGES TO THE INFRINGING COMPONENTS OF ANDROID

Oracle accuses the Android platform of infringing the patents-in-suit through several key platform components: (1) the Dalvik virtual machine, (2) the dexopt component, (3) the zygote process, (4) the dx tool, and (5) Android’s java.security framework (collectively, the “infringing components”). Through an interrogatory (No. 21) and a Rule 30(b)(6) deposition topic (No. 7), Oracle sought discovery from Google regarding its knowledge of any modifications made by third parties to the infringing components of Android. In its interrogatory answer and through the testimony of its corporate designee, Google flatly denied any specific knowledge of whether or not OEMs modify the infringing components of Android to be installed on their Android devices. Instead, Google insisted that OEMs “may freely modify Android source code subject to the terms of [the Apache License],” presumably without Google’s knowledge or oversight.

Google’s Response to Oracle’s Interrogatory 21: Oracle’s Interrogatory 21 asked Google to “[i]dentify and describe in detail each modification made by third parties to the allegedly infringing portions of Android source code and documentation identified by Oracle’s copyright and patent infringement contentions, including the author of, date of, and basis for each such modification.” (Declaration of Daniel P. Muino in Support of Oracle America, Inc.’s Motions In

1

Limine Nos. 1 Through 5 (“Muino Decl.”), Exhibit I, Defendant Google, Inc.’s Responses to Plaintiff’s Interrogatories, Set Four, at 10.) On July 29, 2011, Google responded as follows:

Subject to the foregoing objections and the General Objections, without waiver or limitation thereof, Google states that it has no direct, specific knowledge with regard to how third parties modify the accused Android source code and documentation. Google releases Android source code to the public under the open source Apache License, Version 2.0. Any third party may freely modify Android source code subject to the terms of this license.
Id. at 11 (Google’s objections omitted). To date, Google has not supplemented this response.

Testimony of Google’s Corporate Designee, Patrick Brady: Topic 7 of Oracle’s Rule 30(b)(6) deposition notice to Google sought testimony regarding “[m]odifications made by third parties to the allegedly-infringing portions of Android identified by Oracle’s copyright and patent infringement contentions, including the author of, date of, and basis for each such modification.” (Muino Decl. Exhibit J, Plaintiff’s Notice of Deposition of Defendant Google Inc. Pursuant to Fed. R. Civ. P. 30(b)(6), Topics 4-9.)

On July 21, 2011, Oracle took the deposition of Google’s corporate designee on Topic 7, Patrick Brady, Director of Android Partner Engineering. Mr. Brady was questioned regarding Google’s awareness of any changes made by OEMs Samsung, HTC, LG, and Motorola to the Dalvik virtual machine, dexopt component, and zygote process of the Android code installed on the OEMs’ Android devices. (See, e.g., Muino Decl. Exhibit K at 25:16-18, 26:10-12, 28:2-4, 31:4-17, 46:2-47:2, 48:15-18, 50:2-17, 50:12-51:2, 53:16-19, 56:6-11, 59:23-60:7, 62:17-25, 63:14-20, 64:20-65:19 (July 21, 2011 Deposition of Patrick Brady).) For nearly every device covered, Mr. Brady testified that he had no knowledge of any OEM changes to those Android components. (Id.) With respect to two devices, the Samsung Galaxy S2 and the LG Optimus, Mr. Brady assumed that some changes may have been made to the Dalvik virtual machine, but he was not certain of the specifics. (Ex.C, Brady Tr., pp. 47:16-48:5, 57:22-58:18.) Responding to the question of whether Samsung had made changes to the Dalvik virtual machine in the Galaxy S2, Mr. Brady responded that “they likely must have, but I don’t know the specifics.” Id. at 47:16-48:5. Mr. Brady based this assumption on the fact that the Galaxy S2 has a dual-core

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processor and that the version of Android that Google provided to Samsung “was not designed for duel core processors and so would have required some significant changes to the entire operating system, including the Dalvik Virtual Machine.” (Id.) When asked about the LG Optimus, Mr. Brady gave the same answer, claiming that the Optimus has a dual-core processor and that “my understanding is that anyone who wanted to run a Dalvik Virtual Machine on a dual-core processor architecture would need to make these changes.” (Id. at 57:22-58:18.) But Mr. Brady could not say for certain that changes had been made to the Dalvik virtual machine in that device, and had no knowledge of the specifics of any such changes.

II. GOOGLE SHOULD BE PRECLUDED FROM OFFERING EVIDENCE OR ARGUMENT ON OEM CHANGES TO INFRINGING ANDROID COMPONENTS

This Court has previously ruled that, with respect to evidence admissible at trial, parties “will be held to their discovery answers.” Doe v. Reddy, No. C 02-05570 WHA, 2004 U.S. Dist. LEXIS 30792, *14-15 (N.D. Cal. Mar. 24, 2004) (Alsup, J.). In Doe v. Reddy, the Court granted a motion in limine precluding defendant (accused of sexual relations with an underage girl) from suggesting at trial that plaintiffs (the girl’s parents) knew about the sexual relations. Id. The Court noted that defendant’s interrogatory responses had identified no evidence regarding parental knowledge of the sexual relations. Id. While the response did refer to certain deposition testimony, that testimony did not establish parental knowledge. Id. Accordingly, the Court ruled that “Defendants will be held to their discovery answers” and “at trial no suggestion will be made that the parents knew of the sexual relations.” Id.

Other courts in the 9th Circuit have followed this principle, limiting evidence admissible at trial to what is disclosed in discovery. See Service Employees Int’l Union (“SEIU”) v. Roselli, No. C 09-00404 WHA, 2010 WL 963707, at *5 (N.D. Cal. Mar. 16, 2010) (granting motion in limine to exclude evidence based on defendant’s refusal to provide discovery on that evidence); Tech. Licensing Corp. v. Thomson, Inc., No. CIV. S-03-1329, 2005 U.S. Dist. LEXIS 24239, at *16-17 (E.D. Cal. June 30, 2005) (limiting evidence at trial to information disclosed in response to interrogatory). In the SEIU case, this Court granted a motion in limine to exclude evidence regarding certain activities aimed at obtaining workers’ signatures, on the grounds that defendants

3

refused to answer questions about those activities during discovery. SEIU, 2010 WL 963707, at *5. The Court observed, “having avoided disclosing in discovery the materials sought by plaintiffs regarding defendants’ post-trusteeship activities on grounds of relevancy, it would be unfair sandbagging to allow defendants to now assert those same materials as a defense to plaintiffs’ claims.” Id.

In this case, Google’s interrogatory response disclaimed any specific knowledge of OEM modifications of Android code. Although Google’s response was served after the deposition of Mr. Brady on Topic 7, Google did not incorporate Mr. Brady’s testimony into its response. So Google has disclosed nothing at all in response to Oracle’s interrogatory regarding OEM changes to Android. Accordingly, Google should be precluded from suggesting at trial that OEMs changed the infringing components of Android, since it disclosed no evidence on this subject in its interrogatory response. Doe v. Reddy, 2004 U.S. Dist. LEXIS 30792, at *14.

Furthermore, even if Mr. Brady’s testimony were counted as disclosure on this subject, he too disclaimed specific knowledge of OEM modifications to the infringing components of Android. Testifying on Google’s behalf, Mr. Brady stated repeatedly that Google does not have specific knowledge of OEM changes to the infringing components of Android, because Google purportedly does not receive the final source code the OEMs install on their devices. (Ex. C, Brady Tr., p. 29:3-11.) While Mr. Brady assumed that two devices, Samsung’s Galaxy G2 and LG’s Optimus, may have had changes made to their Dalvik virtual machines on account of their dual-core processors, he had no certain or specific knowledge of this. (Id. at 47:16-48:5, 57:22- 58:18.) Mr. Brady’s testimony provides no basis for Google to argue that OEMs made changes to the infringing components of Android.

The preclusion of argument and evidence regarding OEM changes to Android should extend to Google’s experts, who should not be permitted to speculate regarding modifications to the Android code without a factual basis. For instance, Google’s expert, David August, stated in his report that “device manufacturers often modify the source code.” (Muino Decl. Exhibit L ¶ 108 (Expert Report of David I. August, Ph.D. Regarding the Non-Infringement of U.S. Patent No. 6,910,205).) Yet, Mr. August offered no basis for this statement other than an excerpt from

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the deposition of Mr. Brady.1 (Id. Ex. M at 131:2-9.) While Mr. Brady did testify regarding certain OEM changes to the Android code in general, he disclaimed any specific knowledge of OEM changes to the infringing components of Android. Accordingly, Mr. Brady’s testimony provides no basis on which Mr. August, or any other Google expert, may opine on purported OEM changes to the Android code.

III. CONCLUSION

For the foregoing reasons, Oracle requests that the Court preclude Google, its attorneys, witnesses, and experts, from offering any argument or evidence at trial that OEMs made changes to the infringing components of the Android code installed on their devices.

Dated: September 24, 2011

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

By: /s/ Daniel P. Muino

Attorneys for Plaintiff
ORACLE AMERICA, INC.

_________________________

1 Mr. August acknowledged that he has not examined any third party devices, nor has he conducted any research into how third party manufacturers might modify the source code. (Muino Decl. Exhibit M at 128:10-129:4, 130:10-19 (September 16, 2011 Deposition of David I. August).)

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665 [Unredacted version of Document 501 - unredacted portions are in bold/italics]

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
MOTION IN LIMINE NO. 4 TO
EXCLUDE EVIDENCE OR
ARGUMENT REGARDING
ORACLE’S PAST ACTIONS WITH
APPLICATION PROGRAMMING
INTERFACES

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

Oracle moves the Court to exclude any evidence or argument regarding Oracle’s and Sun’s alleged use of third party application programming interfaces (“APIs”) and past statements regarding copyright protection for interfaces generally. Google proffered examples of such evidence in the opening report of its copyright expert Owen Astrachan and in support of its motion for summary judgment on copyright. (See, e.g., ECF. No. 262-1, Declaration of Owen in Support of Defendant Google Inc.’s Motion for Summary Judgment (“Astrachan Decl.”), Ex. 1 ¶¶ 62-86 and Ex. C (alleging that Oracle and Sun implemented APIs from third parties’ preexisting software); ECF. No. 263-7 Declaration of Michael S. Kwun in Support of Defendant Google Inc.’s Motion for Summary Judgment (“Kwun Decl.”), Ex. G (September 1994 testimony of former Sun CTO and current Google Chairman Eric Schmidt regarding open interfaces to the National and Global Information Infrastructure).) As described below, additional examples can be found in Google’s discovery requests.

None of this evidence is relevant. It is not specific to the Java-related inventions and copyrighted works at issue in this case, and it is irrelevant to the issue of whether they are copyrightable in any event. Moreover, the risks of jury confusion, unfair prejudice, and waste of time substantially outweigh any minimal relevance the evidence may have.

I. ARGUMENT

“Evidence which is not relevant is not admissible.” Fed. R. Evid. 402. “Although relevant, evidence may be excluded if its probative value is substantially outweighed by the danger of unfair prejudice, confusion of the issues, or misleading the jury, or by considerations of undue delay, waste of time, or needless presentation of cumulative evidence.” Fed. R. Evid. 403. “‘Unfair prejudice’ within [this] context means an undue tendency to suggest decision on an improper basis.” Dream Games of Ariz., Inc. v. PC Onsite, 561 F.3d 983, 993 (9th Cir. 2009) (quoting Fed. R. Evid. 403 Advisory Committee’s note).

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A. Google’s Evidence About APIs Is Not Relevant.

1. Sun’s and Oracle’s Alleged Use of Third Party APIs Is Not Relevant.

In his opening report, Dr. Astrachan alleges that Oracle’s predecessor Sun implemented portions of APIs from a long defunct spreadsheet program called Visicalc dating from 1979, that Sun implemented portions of APIs from Linux as part of the Solaris operating system, and that Oracle implemented portions of APIs from IBM (allegedly a handful of names), again dating from 1979, in its database software. (See ECF. No. 262-1, Astrachan Decl. ¶¶ 62-86 and Ex. C.)

This case concerns whether Google unlawfully appropriated copyrightable expression and patented inventions from Oracle’s Java platform. Evidence of Sun’s and Oracle’s alleged use of portions of third party APIs in non-Java products is irrelevant.

The Court’s recent order on the copyright claims in this case highlights the need to analyze specific elements of the works at issue when determining copyrightability. “If Google believes, for example, that a particular method declaration is a scene a faire or is the only possible way to express a given function, then Google should provide evidence and argument supporting its views as to that method declaration.” (ECF. No. 433 at 9.) The evidence Google seeks to offer is not only unrelated to specific elements of the Java API specifications, but it is completely unrelated to Java.

Dr. Astrachan’s testimony is particularly irrelevant here because it does not establish that the circumstances relating to Sun’s and Oracle’s alleged use of third party APIs are similar to the facts at issue here. Dr. Astrachan does not even attempt in his report to compare the nature and extent of what Oracle allegedly used from third parties to what Google copied from the Java platform. To the contrary, Dr. Astrachan admits that he did not research whether Oracle’s spreadsheet products allegedly used anything more than a set of names from third parties:

Q. Did you read -- did you do research to determine how much of the API was used, whether it was just the names or whether it was the organizational structure?
A. No. My report talks about the names, and so I was concentrating on the fact that the names were the same in these two, and I didn’t look to see how those names might be organized within the different spreadsheets, because we’re talking about the spreadsheet example.

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(Declaration of Daniel P. Muino in Support of Oracle America, Inc.’s Motions In Limine Nos. 1 Through 5 (“Muino Decl.”), Exhibit N at 290:15-24 (September 9, 2011 Deposition of Owen Astrachan).)1 As detailed in Oracle's opposition to Google's copyright summary judgment motion (ECF. No. 396, Oracle America, Inc.'s Opposition to Google's Motion for Summary Judgment on Count VIII of Oracle's Amended Complaint), Google misappropriated not only an entire collection and arrangement of names, but other elements such as method signatures, the selection and arrangement of the elements, their complex interdependencies, and the prose text that describes them. Oracle's alleged use of certain names in a spreadsheet program, and nothing more, is not relevant to determining copyrightability of the Java platform, or whether Google's wholesale copying of the Java APIs constitutes "fair use."

In addition, Dr. Astrachan admitted that he did not research whether Oracle or Sun had permission to use the third party APIs he cites:

Q. Did you do any research to see whether there was permission given to Oracle or Sun to use these APIs?
A. I didn’t do research, but I’m reasonably confident that no agreement was made with Visicalc, for example, to include those method names, because I don’t think - - from Oracle or Sun, between StarOffice and OpenOffice. I don’t – I’m assuming they did not talk to the originators of Visicalc. That’s an assumption. I could be wrong.
Q. And you’re assuming that why, because --
A. Because I’m thinking that the originators of Visicalc probably aren’t around as part of Visicalc. They’re certainly around as part of being guys that are still alive.
Q. Right. The company’s not around anymore?
A. Correct.
(Muino Decl. Exhibit N at 289:19-290:9 (September 9, 2011 Deposition of Owen Astrachan).) In summary. Dr. Astrachan's spreadsheet example involves a product from the 1970s (ECF. No. 262-1, Astrachan Decl. ¶ 65), from a company that no longer exists, and as far as Dr. Astrachan knows, the company may have permitted Oracle's particular alleged use.

________________________

1 Dr. Mitchell similarly points out in his opposition report that Dr. Astrachan’s report “makes reference to only a handful of names and functions” from SQL. (ECF. No. 397-1, Dr. John C. Mitchell’s Report in Opposition to Dr. Owen Astrachan’s Opening Expert Report, ¶ 73) “From the little information he provided in his report, these names and functions do not appear to be comparable to the Java APIs.” (Id.)

3

Dr. Astrachan’s testimony on Oracle’s alleged use of third party APIs is wholly irrelevant to the central issue here—whether Google infringed Oracle’s Java copyrights—and it should therefore be excluded under Rule 402.

2. Former Sun or Oracle Employee Statements About Copyrightability of APIs Are Not Relevant.

Google’s evidence of statements made by former Sun employees is similarly irrelevant. Google’s copyright summary judgment motion repeatedly cites statements made in 1994 congressional testimony by then-Sun CTO and current Google chairman Eric Schmidt relating to the copyrightability of APIs. (ECF. No. 260, Defendant Google Inc.’s Notice of Motion and Motion for Summary Judgment on Count VIII of Plaintiff Oracle America’s Amended Complaint (“Google’s MSJ”), at 1; ECF. No. 263-7, Kwun Decl. Ex. G.) The prominence Google intends to give to these statements at trial, and the purpose for which it intends to use them, is evident from the fact that Dr. Schmidt is quoted in the very first paragraph of Google’s brief, stating his belief that “interface specifications are not protectable under copyright.” (Id.) Dr. Schmidt is quoted two more times in Google’s brief to similar effect. (ECF. No. 260, Google’s MSJ at 2, 25).

Google’s Requests for Admission (an excerpt of which are filed herewith as Muino Decl. Exhibit O (“Requests”)) contain additional statements regarding the copyrightability of non-Java products that Google tries to attribute to former Sun or Oracle employees. (See, e.g., Requests 349-54 (quoting alleged policies of the American Committee for Interoperable Systems (“ACIS”), of which Google claims Sun was a member).) For example, Request 350 asks Oracle to “Admit that, as an American Committee for Interoperable Systems member, Sun supported the following principle: ‘The rules or specifications according to which data must be organized in order to communicate with another program or computer, i.e., interfaces and access protocols, are not protectable expression under copyright law.’” (See also Requests 355-79 (referencing and quoting amicus briefs allegedly written by former Sun employees on behalf of ACIS in Sony Computer Entm’t v. Connectix Corp., 203 F.3d 596 (9th Cir. 2000)); Lotus Dev. Corp. v. Borland Int’l, Inc., 515 U.S. 1191 (1995); Bateman v. Mnemonics, Inc., 79 F.3d 1532 (11th Cir. 1996); Computer Assocs. Int’l., Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992); and DVD Copy Control

4

Ass’n Inc. v. Brunner, 10 Cal. Rptr. 3d 185 (Cal. Ct. App. 6th Dist. 2004).) Dr. Schmidt’s 1994 testimony is referenced in Requests 380-81.

These statements are completely irrelevant and should be excluded under Rule 402. Dr. Schmidt’s 1994 testimony, for example, which came before the first Java Development Kit was even published, was part of a discussion on interfaces relating to the planned National Information Infrastructure—not Java specifically. (ECF. No. 263-7, Kwun Decl. Ex. G.) Nor was Java at issue in the cases for which ACIS submitted amicus briefs. But even if the statements had been intended to encompass Java, they would not be relevant here. Statements advocating what the law should be, made over 10 years ago, have no place in this trial. The question of whether APIs, as a matter of policy, should not be copyrightable is initially one for the legislature. Indeed, Dr. Schmidt was testifying before Congress. And if Google is trying to admit former Sun or Oracle employees’ statements on the issue of whether APIs generally are copyrightable, that is a question of law for the Court, not the jury.

B. The Risk of Jury Confusion, Unfair Prejudice, and Undue Delay Substantially Outweighs any Probative Value.

Even if the Court finds that Oracle’s prior statements and alleged use of non-Java APIs are somehow relevant to Google’s defenses, this evidence should still be excluded under Fed. R. Evid. 403 because any minimal relevance they would have are outweighed by prejudice, undue delay, and the risk of jury confusion.

Google offers Dr. Astrachan’s third party API examples to suggest that Oracle, like Google, has copied other companies’ APIs and therefore is an unworthy plaintiff. Oracle, however, is not being sued for infringement. As discussed above, Google’s expert did not investigate the circumstances or the extent of the material Oracle allegedly used from others or how that relates to Google’s copying in this case. Based on an incomplete record, a jury might try to punish Oracle for innocuous acts that have no relevance to this case. Courts routinely exclude allegations of purportedly bad acts by a plaintiff under Rule 403. See, e.g., Leegin Creative Leather Prods. v. Belts by Nadim, Inc., 316 Fed. Appx. 573, 575 (9th Cir. 2009) (finding

5

no abuse of discretion “in holding evidence of Leegin’s alleged infringement of other copyrights not at issue in the trial inadmissible under Rules 401 and 403”).

Allowing this evidence would also complicate the trial and cause undue delay, in violation of Rule 403. See Hodge v. Mayer Unified Sch. Dist. No. 43 Governing Bd., No. 05-15577, 2007 U.S. App. LEXIS 8595, at *5 (9th Cir. Apr. 13, 2007) (finding no abuse of discretion in excluding defendant’s alleged “other acts” of gender discrimination “due to the risks of inefficiency and confusion stemming from the potential need to conduct mini-trials with regard to each” allegation); Santrayll v. Burrell, No. 91 Civ. 3166 (PKL), 1998 U.S. Dist. LEXIS 586, at *8-9 (S.D.N.Y. Jan. 22, 1998) (excluding evidence that copyright defendant previously copied from third parties not in the case). Consideration of Oracle’s alleged use of portions of third party APIs would require a mini-trial to determine the circumstances surrounding the alleged use of the APIs and to place that use in its proper context. In addition to analyzing the 37 packages of Java APIs that Google copied, the jury would have to go through a similar analysis for completely unrelated products that have nothing whatsoever to do with this case. The jury would have to consider what portions of APIs, if any, Oracle used; whether they were copyrightable; if they were copyrightable, whether Oracle had permission to use them; and how they compare to Google’s copying of the Java APIs. Google’s own expert did not make such an inquiry and it is too late for him to offer such an analysis now. Oracle should not be forced to spend the jury’s valuable time addressing these irrelevant issues.

Similarly, allowing into evidence Dr. Schmidt’s seventeen-year-old statement that interface specifications are not protected by copyright—or similar statements by others—would be prejudicial and would likely confuse the jury. The jury’s proper source for an explanation of the law is the Court’s instructions—not a statement by a former Sun employee to a congressional committee or a statement made in an amicus brief. See A&M Records v. Napster, Inc., No. C 99- 05183 MHP, No. C 00-0074 MHP, 2000 U.S. Dist. LEXIS 20668, at *26 (N.D. Cal. Aug. 10, 2000) (excluding expert report by law professor that “offers a combination of legal opinion and editorial comment on Internet policy”). Admitting these statements creates the risk that the jury would give them undue weight, and would follow the former employees’ proposed interpretation

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of the law instead of the Court’s. Indeed that appears to be the very purpose for which Google is offering these statements.

Admitting these sorts of statements into evidence would also cause undue delay, as both sides would need to put in evidence about the context and meaning of the statements. For example, providing the full context of the telecommunications reform legislation that formed the backdrop of Dr. Schmidt’s 1994 testimony could take hours.

II. CONCLUSION

For the reasons stated above, Oracle respectfully requests an order from this Court granting Oracle America’s Motion in Limine No. 4 and excluding from trial any evidence or argument regarding Oracle’s alleged use of third party APIs and Sun or Oracle’s past statements regarding copyright protection for interfaces generally, including the statements referenced in Google’s Requests for Admission.

Dated: September 24, 2011

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

By: /s/ Daniel P. Muino

Attorneys for Plaintiff
ORACLE AMERICA, INC.

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By: /s/ Daniel P. Muino

Attorneys for Plaintiff
ORACLE AMERICA, INC.

8


667 [Unredacted version of Document 502 - unredacted portions are in bold/italics]

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

PLAINTIFF’S MOTION IN LIMINE NO. 5
TO EXCLUDE EVIDENCE AND
ARGUMENT CONTRARY TO
STATEMENTS IN TIM LINDHOLM’S
AUGUST 6, 2010 EMAIL

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

Preliminary Statement

Oracle moves in limine to exclude any evidence or argument contrary to the statements in Mr. Lindholm's August 6,2010 email, concerning his investigation of alternatives to Java for Android, based on Google's refusal to permit discovery of the facts and circumstances of that investigation.

With knowledge of the specific patents that Oracle claims are infringed by Android, Google employee (and former Sun engineer) Tim Lindholm investigated whether Google had any alternatives to Java for Android. He concluded that the alternatives all “suck” and advised Andy Rubin that Google had to negotiate with Oracle for a Java license. Mr. Lindholm recounted these actions and conclusions in an email to Mr. Rubin on August 6, 2010.

On July 22, 2011, Oracle took the deposition of Daniel Bornstein, Google's Rule 30(b)(6) witness on the topic of non-infringing alternatives. At the deposition, Oracle counsel attempted to question Mr. Bornstein about Mr. Lindholm's email, but Google claimed that the email was privileged and clawed it back. Magistrate Judge Ryu subsequently rejected that claim of privilege, required Google to return the document to Oracle, and required Mr. Lindholm to appear for deposition. At the deposition, Mr. Lindholm admitted that he wrote the email, but Google's counsel once again asserted privilege and prevented Oracle from obtaining any discovery into the details of Mr. Lindholm's investigation, including the particular alternatives Mr. Lindholm investigated, the license terms he concluded were necessary, and the accuracy of the statements in his email.

Google may not prevent discovery of the facts underlying Mr. Lindholm's statements in his email, and then offer evidence at trial that is inconsistent with those statements.

Statement of Facts

On July 20, 2010, Oracle informed Google that Android infringed the seven specific patents at issue in this lawsuit. (Dkt No. 336, August 19, 2011 Declaration of Fred Norton, Exh. 4 (July 20,2010 Oracle-Google Android Meeting presentation bearing bates numbers GOOGLE-00392259-285).) Thereafter at the direction of Google founders Larry Page and Sergey Brin, Google engineer Tim Lindholm investigated the technical alternatives that Google had to those Java patents. (Dkt No. 316, August 17, 2011 Corrected Declaration of Tim Lindholm Concerning the August 6, 2010 Email and

1

Drafts Thereof; Declaration of Daniel P. Muino in Support of Oracle America, Inc.’s Motions In Limine Nos. 1 Through 5 (“Muino Decl.”) Ex. P, August 6, 2010 Lindholm e-mail bearing bates number GOOGLE-12-10000011.) Mr. Lindholm, formerly a Sun engineer responsible for developing the Java virtual machine, became involved in the Android project as soon as he joined Google in July 2005. Mr. Lindholm was an Android Project Advisor, participated in negotiations with Sun for a Java license, advised Google Vice President Andy Rubin, who was in charge of Android, on negotiation strategy and on alternatives to Java for Android, and provided detailed comments on licensing schemes for Java. (Muino Decl. Exhibit Q, September 7, 2011 Tim Lindholm Tr. at 7:23-8:25, 47:7-48:22, 52:25-55:11, 67:1-69:17, 76:3-78:1, 84:3-93:25, 100:14-108:4.)

On August 6, 2010, Mr. Lindholm wrote an email to Mr. Rubin. Mr. Lindholm wrote:

What we’ve actually been asked to do (by Larry and Sergei) is to investigate what technical alternatives exist to Java for Android and Chrome. We’ve been over a bunch of these, and we think they all suck. We conclude that we have to negotiate for a license for Java under the terms we need.
(Muino Decl. Exhibit P.)

On July 22, 2011, Oracle attempted to question Google’s Rule 30(b)(6) witness about the noninfringing alternatives mentioned in Mr. Lindholm’s email. Before Oracle had an opportunity to do so, Google asserted that the email was privileged and clawed it back under the terms of the Protective Order. (Muino Decl. Exhibit R, July 22, 2011 Daniel Bornstein 30(b)(6) Tr. at 186:4-22.) Consequently, Oracle had no opportunity to question any Google witness about the document until Magistrate Judge Ryu rejected Google’s claim of privilege and ordered Google to return the email to Oracle (Dkt Nos. 353, 354), which Google did on August 27, 2011 (Muino Decl. ¶ 17).

On September 7, 2011, Oracle took the court-ordered deposition of Mr. Lindholm.1 Oracle counsel asked Mr. Lindholm (1) what technical alternatives to Java for Android and Chrome he investigated, (2) what technical alternatives to Java specifically for Android he investigated, (3) what technical alternatives to Java specifically for Chrome he investigated, (4) who concluded that all of the

______________________

1 Google opposed the deposition of Mr. Lindholm arguing that “there is no basis for expanding the discovery limits to permit the deposition of Mr. Lindholm.” (Dkt. No. 215 at 5-8.) Magistrate Judge Ryu rejected that argument, and ordered Mr. Lindholm to appear for deposition. (Dkt No. 229.)

2

technical alternatives “suck,” (5) what Mr. Lindholm meant by “technical alternatives,” (5) what license terms Mr. Lindholm had in mind when he wrote “we have to negotiate for a license for Java under the terms we need,” and (6) whether any of the statements in Mr. Lindholm’s August 6, 2010 email were false. (Muino Decl. Ex. Q.)

Despite Magistrate Judge Ryu’s ruling that the e-mail was neither privileged nor attorney work product, and despite the fact that Oracle’s questions expressly concerned Mr. Lindholm’s investigation rather than his communications, Google counsel asserted privilege in response to every one of these questions, and Mr. Lindholm refused to answer any of them. (Muino Decl. Exhibit Q.)

Relief Sought

Oracle moves in limine for an order precluding Google, its attorneys, witnesses, and experts from offering any argument or evidence at trial that is contrary to the statements in Mr. Lindholm’s August 6, 2010 email and Mr. Lindholm’s August 15, 2011 Declaration. In particular, Google should be precluded from contesting the following facts from the email and Declaration:

  1. Mr. Lindholm was investigating and reporting on alternatives to the specific patents that Oracle asserted were infringed on July 20, 2010.
  2. Mr. Lindholm had thoroughly investigated all alternatives to the patents-in-suit, and Java generally.
  3. As of August 6, 2010, Google had no viable alternatives to the patents-in-suit, or Java generally, for Android.
  4. As of August 6, 2010, Google needed a license for Java generally and for each and every one of the seven patents-in-suit.
  5. As of August 6, 2010, all of the statements in the Lindholm document were true.

Argument

In the two weeks following Oracle’s presentation regarding the patents-in-suit to Google on July 20, 2010, Mr. Lindholm – a former Sun engineer with expertise in Java, experience with Sun’s licensing terms, familiarity with Android, and knowledge of Oracle’s specific claims of infringement – investigated alternatives to Java for Android at the direction of Google’s two senior-most executives,

3

Mr. Page and Mr. Brin. He made an unequivocal report on his investigation to Mr. Rubin, the Google executive in charge of Android. That report – the August 6, 2010 email – has been produced, but Google has withheld all details concerning the work Mr. Lindholm performed and the basis for the facts stated in his email. Fundamental fairness requires that Google not be permitted to block discovery into the details of Mr. Lindholm’s investigation and conclusions, and then offer other evidence to suggest that the investigation was incomplete, that his investigation was unrelated to the seven patents–in-suit, or that his conclusions were inaccurate.

As the Ninth Circuit has held in affirming the exclusion of evidence at trial, “the court may fashion remedies to prevent surprise and unfairness to the party seeking discovery. For example, where the party claiming privilege during discovery wants to testify at the time of trial, the court may ban that party from testifying on the matters claimed to be privileged.Columbia Pictures Television, Inc. v. Krypton Broad. of Birmingham, Inc., 259 F.3d 1186, 1196 (9th Cir. 2001) (quoting William A. Schwarzer, et al., Federal Civil Procedure Before Trial, ¶ 11:37, at 11–29 (2000) (emphasis added).) A motion in limine is an appropriate means to prevent a party from withholding information in discovery, only to take a contrary position at trial. See, e.g., Service Employees Int’l Union v. Roselli, 2010 WL 963707, No. C 09-00404 WHA, at *5 (N.D. Cal. Mar. 16, 2010) (granting motion in limine) (“[H]aving avoided disclosing in discovery the materials sought by plaintiffs . . . , it would be unfair sandbagging to allow defendants to now assert those same materials as a defense to plaintiffs’ claims”). By invoking privilege and refusing to permit Mr. Lindholm to answer any questions concerning his investigation and conclusions, Google necessarily has undermined Oracle’s ability to defend the accuracy of that candid, internal assessment against any efforts by Google to impeach it. Google simply may not tell the jury that what Mr. Lindholm wrote in his e-mail was wrong, while concealing the detailed information that shows he was right.

Recognizing the inherent unfairness of such conduct, courts have precluded litigants from offering evidence at trial if they prevented inquiry into those issues during discovery. In Galaxy Computer Services, Inc. v. Baker, 325 B.R. 544 (E.D. Va. 2005), the parties disputed the meaning of certain notes taken by the defendant’s transactional attorney, Mouer. There, as here, the court had

4

rejected a privilege claim over those notes. Id. at 557. Plaintiff’s counsel asked Mouer to “explain her notes” and the defendant’s counsel instructed Mouer not to answer on grounds of privilege. Id. at 558. The defendant later sought to have Mouer testify at trial to explain her notes. The court refused to allow that testimony, ruling that “to permit Mouer to testify to issues which she refused to testify to during her deposition based on privilege would allow the Defendants to use the attorney-client privilege as both a shield and a sword.” Id. at 559. Here, as in Galaxy Computer, Google should not be permitted to limit Mr. Lindholm’s deposition testimony and then at trial try to explain away the candid statements he made in his email. See also Memry Corp. v. Kentucky Oil Tech., N. V., No. C-04-03843 RMW, 2007 WL 4208317, at *9 (N.D. Cal. 2007) (based on instructions not to answer questions at deposition, precluding testimony on “anything that the instruction not to answer fairly covered”); Engineered Prods. Co. v. Donaldson Co., 313 F. Supp. 2d 951, 1022-23 (N.D. Iowa 2004) (barring party from introducing testimony at trial on issues the plaintiff had prevented the defendant from exploring during a deposition by invoking the attorney-client privilege).

Google could have disclosed the details of Mr. Lindholm’s investigation and conclusions, and litigated those issues on the merits. It chose not to do so, and instead elected to withhold that information. Google must live with the consequences of that decision. Google should not be permitted to offer evidence or argument that would contradict the statements in Mr. Lindholm’s August 6, 2010, email.

Moreover, it is appropriate to preclude not just Mr. Lindholm’s testimony that would contradict the statements in his email, but any evidence offered by Google that would do so. Mr. Lindholm’s investigation was not an independent exercise: he was acting at the express direction of the most senior executives of the company, Mr. Page and Mr. Brin; he was working with other Google employees in his investigation; and he reported their findings directly to the head of Android, Mr. Rubin. Further, Google’s assertions of privilege – by clawing back the email during the critical period of deposition discovery, refusing to allow the document to be used in the deposition of its Rule 30(b)(6) witness on non-infringing alternatives, and forbidding Mr. Lindholm from testifying about the email, other than to

5

admit he wrote it – have foreclosed inquiry not only into Mr. Lindholm’s conduct, but that of Google itself.

Finally, the relief that Oracle seeks is narrowly tailored to the specific statements in Mr. Lindholm’s email, and the specific lines of inquiry that Google foreclosed. In particular, Mr. Lindholm wrote that he investigated “technical alternatives” to Java. At his deposition Mr. Lindholm refused, on privilege grounds, to explain what he meant by “technical alternatives.” Mr. Lindholm also refused, on privilege grounds, to specify which alternatives he investigated. Google may not now offer evidence or argument that “technical alternatives” meant anything less than all potential alternatives.

Mr. Lindholm wrote that the alternatives he investigated “all suck.” At his deposition, Mr. Lindholm refused, on privilege grounds, to explain who held this belief or any other basis for his conclusion. Mr. Lindholm further refused, on privilege grounds, to state whether anything in his August 6, 2010 email was false. Google may not now offer evidence or argument that would contradict the conclusion that all potential alternatives to Java for Android “suck.”

Mr. Lindholm wrote that “we have to negotiate for a license for Java under the terms we need.” He refused, on privilege grounds, to identify the terms of the license that Google needed. Again, he also refused, on privilege grounds, to state whether anything in his email was false. Google may not now offer evidence or argument that Google did not need a license for Java generally, or for each of the seven patents–in-suit, or otherwise argue that the “terms” Google needed did not encompass all of the patents identified in Oracle’s July 20, 2010 presentation.

Google has asserted, and Mr. Lindholm attested in his sworn declaration, that he undertook his investigation of alternatives to Java and wrote his email summarizing that investigation in response to Oracle’s July 20, 2010 presentation, which informed Google that Android infringed each of the seven patents–in-suit. Google may not now offer evidence or argument that by “technical alternatives to Java,” Mr. Lindholm was referring something other than alternatives to the patents-in-suit. For example, Google may not argue that Mr. Lindholm’s reference to Java was a reference only to the Java programming language, or some combination of Java patents or copyrights that excluded the patents-insuit.

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Conclusion

For the foregoing reasons, Oracle requests that the Court preclude Google, its attorneys, witnesses, and experts, from offering any argument or evidence at trial that is contrary to the statements in Mr. Lindholm’s August 6, 2010 email.

Dated: September 24, 2011

DAVID BOIES
STEVEN C. HOLTZMAN
ALANNA RUTHERFORD
BOIES, SCHILLER & FLEXNER LLP

By: /s/ Fred Norton
Fred Norton

Attorneys for Plaintiff
ORACLE AMERICA, INC.

7


675

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

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

No. C 10-03561 WHA

FINAL PRETRIAL ORDER

_________________________________________

FOR GOOD CAUSE and after a final pretrial conference, the Court issues the following final pretrial order:

1. This case shall go to a JURY TRIAL at 7:30 AM on A DATE ON OR AFTER MARCH 19, 2012, TO BE SELECTED, and shall continue until completed on the schedule discussed at the conference. The issues to be tried shall be those set forth in the joint proposed pretrial order except to the extent modified by order in limine. This final pretrial order supersedes all the complaint, answer and any counterclaims, cross-claims or third-party complaints, i.e., only the issues expressly identified for trial remain in the case.

2. All claims for relief arising out of any patent alleged in the complaint or any amended complaint shall be deemed merged into the claims already selected by plaintiff to be tried.

3. Rulings on the motions in limine shall be set forth in separate orders.

4. Except for good cause, each party is limited to the witnesses and exhibits disclosed in the joint proposed final pretrial order less any excluded or limited by an order in limine. Materials or witnesses used solely for impeachment need not be disclosed and may

be used, subject to the rules of evidence.

5. The stipulations of facts set forth in the joint proposed final pretrial order are approved and binding on all parties.

6. The parties shall follow the Court's current Guidelines for Trial and Final Pretrial Conference, separately provided and available on the Internet at http://www.cand.uscourts.gov, which guidelines are incorporated as part of this order.

7. The trial shall be trifurcated as follows:

JURY SELECTION: To the potential jury pool, the Court will send out a written inquiry along the lines of the item previously supplied. This will go out with the summons. The ultimate purpose will be to excuse venirepersons for hardship without their having to travel to court, at least in clear-cut cases deserving to be excused. Those not so excused will appear on the first day of trial for jury selection. There will be no written substantive questionnaire. Jury selection will take about two hours. Counsel will be permitted to voir dire at the end of the Court’s voir dire. A jury of 12 will be sworn. The same jury will decide all phases of the trial.

OPENING STATEMENT: Each side shall have one hour for opening statement. This may address all issues in the case or simply Phase One issues, as counsel wish, subject to rulings specifically limiting mention of topics or evidence to the jury.

PHASE ONE: Phase One will be directed to all liability and defenses for all copyright claims but not for any other issues. To the extent it would constitute a copyright defense or go to a copyright liability issue, both sides may present more general “Java” evidence in Phase One (or Phase Two), such as implied license, laches, equitable estoppel, and waiver. Each side will have sixteen hours of evidence time for Phase One. At the end of the Phase One evidence, we will have closings (time limits to be determined), the jury will be instructed and the jury will deliberate and render a special verdict on all copyright liability issues. The Court is inclined to ask the jury for an advisory verdict on all equitable defenses, although the Court itself may possibly (or not) postpone ruling on equitable defenses until after Phase Two.

PHASE TWO: The same jury will then return for Phase Two. Each side will have 45 minutes for opening statement. In addition, we will show the jury the FJC video on the

2

patent system (this will not be charged against anyone’s time limit). Phase Two will be directed to all patent liability and defense issues, including any generalized defenses. This phase is where the color-coded claim charts will be useful. Each side will have twelve hours of evidence time. At the end of the Phase Two evidence, we will again have closings (time limits to be determined), the jury will be instructed and the jury will deliberate and render a special verdict on all patent liability issues.

PHASE THREE (IF NECESSARY): After openings of 45 minutes per side, all remaining issues would be tried including damages and willfulness. Each side may have up to eight hours of evidence time. Closings, instructions and verdict would then follow on those issues.

GENERAL: Unused time from an earlier phase may be banked and used by a side in a following phase but counsel may not borrow time from a future phase. Evidence and stipulations presented in an earlier phase will count as part of the trial record for all later phases and may be referenced in openings and closings for later phases. No trial testimony, however, will be video recorded. Witnesses will not be permitted to return to a subsequent phase to repeat testimony already given by them in an earlier phase. The jury will have already heard it. Witnesses may, however, return to provide new and fresh testimony on different points. Witnesses may not give testimony on a subject relevant only to a later phase. Openings and closings will not count against counsel’s allotment of evidence time. Both direct and cross-examination, however, will count against the allotment of evidence time. Evidence and argument relevant solely to whether a permanent injunction should issue must be saved for a subsequent proceeding, if necessary, after the jury trial.

Any objection to this order must be filed within seven calendar days and must be specific and cite to legal authority.

IT IS SO ORDERED.

Dated: January 4, 2012.

/s/William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

3


676

FOR THE NORTHERN DISTRICT OF CALIFORNIA

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

No. C 10-03561 WHA

OMNIBUS ORDER ON
MOTIONS IN LIMINE FOR
PRETRIAL CONFERENCE

_________________________________________

The pretrial conference in this action was heard on December 21, 2011. In advance of that conference, plaintiff submitted five motions in limine and defendants submitted five.

GOOGLE MOTION IN LIMINE NUMBER ONE (TO EXCLUDE LINDHOLM
EMAIL AND DRAFTS)

Google’s motion in limine number one is DENIED. Google seeks to exclude the Lindholm email under FRE 403, assuming that its pending petition for writ of mandamus is eventually denied. In support, Google submits the declaration of the email’s author, Tim Lindholm, stating that prior to writing the email, he never reviewed the patents or copyrights asserted by Oracle, he never reviewed any of the source code or implementation for the allegedly infringing aspects of Android, and he did not (and had no legal training necessary to) analyze whether

Android infringed.

This attorney-prepared declaration is unpersuasive. Mr. Lindholm was a former Sun engineer who co-wrote the book, “The Java Virtual Machine Specification,” and was a member of early Java development teams. Mr. Lindholm joined Google in July 2005 and immediately worked on Android as a “generalist and interpreter of the engineering/business/legal ecosystem.” One of Mr. Lindholm’s roles on the Android team was to help negotiate a license for Java. Mr. Lindholm’s background shows that he was quite knowledgeable about Java and Android technology as separate platforms and any potential crossover between the two platforms, or so a reasonable jury could find. His admission that Google needed a Java license is relevant to the issue of infringement.

The email is also relevant to damages. It goes to show that Google had no viable alternatives to Java. It also goes to willfulness because the email was sent after Oracle accused Google of infringement. Since Mr. Lindholm had a deep background in Java and Android technology, the email goes to show that there was an objectively high likelihood that Google’s actions constituted infringement of a valid patent.

The risk of unfair prejudice does not outweigh the email’s relevance. Google is worried that the jury will interpret the email without context and overvalue its importance. Subject to this order’s ruling on Oracle’s motion in limine number five, counsel can try to explain it away or reduce the email’s significance by introducing testimony along the same lines as Mr. Lindholm’s declaration. But the probative value outweighs any unfair prejudice.

GOOGLE MOTION IN LIMINE NUMBER TWO (TO EXCLUDE ALLEGED
PERFORMANCE BENEFITS OF ANDROID WITH THE ACCUSED
FUNCTIONALITY)

Google’s motion in limine number two is DENIED. Oracle can present the performance tests as evidence of Android’s performance improvements with the accused functionality. Google argues that the performances tests were unreliable because (i) it was unclear which Oracle engineer modified the Android code, (ii) the code could have been modified more cleanly (without affecting non-infringing functionalities), and (iii) the tests had limited relevance to real-world use of Android devices.

2

Oracle responds that the performance tests were performed by experienced engineers who will testify at trial that their modifications were reasonable and reliable and be subject to crossexamination before the results are introduced. The engineers had years of experience conducting performance analyses on similar software. The engineers downloaded Android source code from Google’s website. They followed Google’s instructions on building the Android code. The tests were conducted with widely accepted benchmarks that Google itself identified on its website. The tests were conducted both on emulators and on actual Android phones. The tests used hardware that Google used internally to test Android. The results using unmodified code were consistent with Google’s own benchmark results. And the results and methods were reproducible.

While Oracle did not eliminate all the possible shortcomings of these performance tests, the relevance of the results seem to outweigh the prejudice of any potential imprecision. Furthermore, the reliability of the performance test passes FRE 702 and Daubert scrutiny. Oracle explained who was responsible for what during the testing, and must do so again at trial. Oracle explained why the engineers had to remove specific sections of code to remove the patented functionalities at issue, and must do so again at trial. The tests used benchmarks that were widely accepted by the industry, including Google, as reliable proxies for real-world performance. Unfortunately for Google, it did not design its own performance tests. Without competing results from Google, it is difficult to know how Oracle’s results are biased and unreliable.

Google also argues that evidence of performance testing is irrelevant to liability and therefore should be limited to the damages phase of trial. This order disagrees. The performance tests show that the accused code ran on Android-operated devices. The tests also show that Google would have induced device manufacturers to install Android with the allegedly infringing functions.

GOOGLE MOTION IN LIMINE NUMBER THREE (TO STRIKE EXPERT
DAMAGES OPINION)

This motion will be addressed in a separate order.

3

GOOGLE MOTION IN LIMINE NUMBER FOUR (TO EXCLUDE PORTIONS OF
GOLDBERG REPORT DISCUSSING COMMERCIAL SUCCESS)

Google’s motion in limine number four is GRANTED ONLY AS FOLLOWS: Before Dr. Goldberg testifies, Oracle must introduce before the jury sufficient evidence from which it could reasonably conclude that the disputed nexus exists. No reference shall be made to Dr. Goldberg in the opening statements (but he should be cleared for contacts during voir dire and jury selection).

GOOGLE MOTION IN LIMINE NUMBER FIVE (TO EXCLUDE EVIDENCE
OBTAINED FROM MOTOROLA MOBILITY, INC.)

Google’s motion in limine number five is GRANTED AS FOLLOWS. Subject to other rules of evidence, Oracle can present evidence that tends to show infringement by the Motorola Droid, which was listed in Oracle’s infringement contentions. Similarly, Oracle can also present evidence to show that Motorola engineers used Android SDK’s dx tool to write Android applications. Evidence relevant to the Motorola Droid and dx tool can be presented even if it also suggests that other Motorola devices, which were not included in the infringement contentions, performed the allegedly infringing functionalities.

The jury will be told that the only Motorola device accused of infringement is the Motorola Droid and that other Motorola devices cannot be considered for infringement or damages. Oracle cannot argue that other Motorola devices infringed or that damages should be awarded for other Motorola devices.

* * *

ORACLE’S MOTION IN LIMINE NUMBER ONE (TO EXCLUDE EVIDENCE
OR ARGUMENT REGARDING PATENT REEXAMINATIONS)

Oracle’s motion in limine number one is DENIED IN PART AND GRANTED IN PART. The ’720, ’476, and ’520 patent reexaminations have run their course before the examiners. The examiners have rejected all asserted claims in the ’720 and ’476 patents and closed prosecution. The ’520 patent has finished reexamination with all asserted claims allowed. To be sure, the initiation of reexamination and the customary first office action prove little; but here, the

4

examiners have gone to the end of their process. It would be wrong to conceal this important information from the jury.

Subject to the rules of evidence, the parties will be permitted to introduce the office actions on reexamination for these three patents during phases two and three of trial. Invalidity experts for both sides may promptly update their reports, counsel may update their invalidity contentions, the updates being restricted just to these items, meaning the specific reasons given by the examiner for validity or invalidity.

The presumption of validity is based on the expertise of the examiner, but now the examiner has come out in favor of rejection on two patents in suit. The recent rejections are based, in part, on prior art not previously supplied to the examiner. Juries can take into account the extent to which the prior art reference was raised or not in the procedure leading to approval. Microsoft Corp. v. i4i Ltd. Partnership, 131 S.Ct. 2238, 2251 (2011). This is because the rationale underlying the presumption of validity is much diminished where the evidence before the factfinder was not before the PTO during the examination process. KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 426 (2007).

The decisions cited in opposition to this ruling did not involve re-examinations that had reached a final rejection by the examiner. In the Court’s view, it would be misleading to instruct the jury on the presumption of validity while concealing from the jury the fact that the rationale for the presumption — PTO examiner expertise — has been drawn into question by more recent examiner rejections based in part on prior art previously not disclosed to the PTO.

With respect to all other patents, the probative value is outweighed by the time and confusion that would be involved. Information regarding the reexaminations of the other patents are excluded under Rule 403, subject to one caveat: Either side may request permission to present to the jury some specific item of information from the reexamination of the other patents (other than the ’520, ’720, and ’476 patents). Such a request must precisely specify the application and relevance of the information. The request must be made in a timely fashion to give the other side time to respond.

5

ORACLE’S MOTION IN LIMINE NUMBER TWO (TO EXCLUDE EVIDENCE
OR ARGUMENT THAT GOOGLE RELIED ON LEGAL ADVICE IN MAKING
ITS DECISION TO DEVELOP AND RELEASE ANDROID)

Oracle’s motion in limine number two is GRANTED AS FOLLOWS. No reference shall be made by either side to advice of counsel to Google without a specific proffer and approval by the Court in advance.

ORACLE’S MOTION IN LIMINE NUMBER THREE (TO EXCLUDE EVIDENCE
OR ARGUMENT THAT THIRD-PARTY OEMS CHANGED INFRINGING
COMPONENTS OF ANDROID)

Oracle motion in limine number three is DENIED. Google will be held to its discovery responses and will not be allowed to present Google employees, officers, or directors on the subject of original equipment manufacturer (OEM) modifications of Android code, having said that it is ignorant on the subject. Google is not barred, however, from presenting third-party percipient witnesses or third-party documents obtained via trial subpoena from OEMs on the same topic. Nor will it be barred from cross-examing Oracle’s own witnesses that OEMs did use unmodified code. Oracle must prove direct infringement by OEMs as a predicate for proving indirect infringement by Google. That Google is ignorant on the subject of direct OEM infringement does not translate to affirmative proof of direct infringement.

ORACLE’S MOTION IN LIMINE NUMBER FOUR (TO EXCLUDE EVIDENCE
OR ARGUMENT REGARDING ORACLE’S PAST ACTIONS WITH
APPLICATION PROGRAMMING INTERFACES)

Oracle’s motion in limine number four is GRANTED IN PART AND DENIED IN PART. While objections may eventually be sustained to some aspects of the broad theater of contentions Oracle now seeks to exclude, a broad categorical exclusion of the magnitude requested on grounds of irrelevance is unwarranted. That said, anything that happened long before 2006 is too far removed from Sun’s policy and industry custom and usage at the time of the alleged infringement. Historical information that is too old has only marginal relevance to Google’s equitable defenses. And any marginal relevance would be greatly outweighed by the unfair prejudice, waste of time, and confusion from presenting to the jury statements and documents from the last century as indicative of Sun’s policy and industry custom at the time of alleged infringement in 2006.

6

This exclusion includes the September 1994 testimony of Eric Schmidt (Dkt. No. 263-7 Exh. G), any reference to the American Committee for Interoperable Systems, Sun’s pre-2006 use of APIs originally developed for older spreadsheet software (Dkt. No. 262-1 Exh. 1 ¶¶ 63–68), Sun’s pre-2006 distribution of Linux APIs (id. ¶¶ 69–79), Oracle’s pre-2006 distribution of the Oracle Database that contained APIs originally developed by IBM (id. at 80–86). Importantly, testimony and evidence regarding Oracle’s and Sun’s policies and practices after January 1, 2006, is not excluded even if those same policies and practices began before 2006.

ORACLE’S MOTION IN LIMINE NUMBER FIVE (TO EXCLUDE EVIDENCE
AND ARGUMENT CONTRARY TO STATEMENTS IN THE LINDHOLM EMAIL)

Oracle’s motion in limine number five is GRANTED IN PART AND DENIED IN PART. Tim Lindholm will not be allowed to testify on matters he claimed were privileged during his deposition. During his deposition, Mr. Lindholm refused to answer questions on the technical investigation leading up to his writing of the email. Specifically, Tim Lindholm refused to answer, on grounds of attorney-client privilege and work-product doctrine, the following questions: First, what technical alternatives to Java he investigated; second, who thought the alternatives “all sucked”; third, what he meant by technical alternatives; fourth, what license terms he had in mind; fifth, whether any statements of fact or opinion he made in the email were false. In the interest of fairness, Mr. Lindholm cannot testify on matters he refused to address during his deposition. Columbia Pictures Television, Inc. v. Krypton Broadcasting of Birmingham, Inc., 259 F.3d 1186, 1196 (9th Cir. 2001).

Oracle also seeks to preclude Google from arguing that it had viable alternatives to the patents-in-suit or Java, that it did not need a license for Java generally and for each patent-in-suit, and that not all statements in the Lindholm email were true. This broad exclusion is unwarranted and equates to a motion for summary judgment, which is too late at this stage.

CONCLUSION

Two caveats: Any denial above does not mean that the evidence at issue in the motion is admitted into evidence — it must still be moved into evidence, subject to other possible objections, at trial. And, a grant of a motion in limine does not exclude the evidence under any

7

and all circumstances; the beneficiary of a grant may open the door to the disputed evidence, for example.

IT IS SO ORDERED.

Dated: January 4, 2012.

/s/William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

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