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Oracle v. Google - Patent Marking - Closing the Gap
Monday, January 30 2012 @ 09:30 AM EST

Oracle and Google have now filed their joint statement on patent marking (706 [PDF; Text]) as required by the court's supplemental order of December 6 (641 [PDF; Text]) Although reading the joint statement may give one the impression that the parties' positions are far apart (and they are), that doesn't mean that the joint statement hasn't closed the gap on the marking issue. In fact, it appears to have closed the gap significantly and in Google's favor.

You will recall that after the Judge Alsup issued his December 6 supplemental order the parties filed a joint stipulation on what they were to do. That stipulation provided:

1. On January 6, 2012, Oracle will provide an identification, for each of the 26 asserted claims, of each Oracle product, Oracle-licensed product, Sun product, or Sun-licensed product (“Oracle Products”) that practice or have practiced the claim. Oracle will also identify the fact witnesses who possess information supporting Oracle’s contentions that the Oracle Products practice or have practiced the asserted claims, as well as provide a summary of testimony Oracle intends to elicit at trial from those witnesses regarding those Oracle Products’ practice of the claims. Oracle will also provide source code citations and/or other documentation supporting Oracle’s contentions that the Oracle Products practice the asserted claims.

2. On January 20, 2012, Google will respond to Oracle and identify any other Oracle Products that Google contends practiced any of the 26 asserted claims during the alleged damages period and identify any products in Oracle’s identification that Google contends do not practice the identified claims. Google’s response will specify which Oracle Products it contends do (or do not) practice the asserted claims, and why.

3. Following Google’s response, the parties will meet-and-confer regarding their disclosures with the aim of preparing a stipulation of which Oracle Products practice the asserted claims. On January 27, 2012, the parties will jointly submit to the Court a list of the Oracle Products that they stipulate practice the asserted claims, which shall have the effect of establishing that fact for all purposes at trial, and a list of those Oracle Products for which there is a genuine dispute between the parties as to whether they practiced the asserted claims, along with brief explanations of the basis for each party’s contention.

Let's walk through these obligations one by one to see whether the parties responded in the manner to which they stipulated.

Jump To Comments

First up is Oracle. Oracle's first obligation was to identify "for each of the 26 asserted claims, of each Oracle product, Oracle-licensed product, Sun product, or Sun-licensed product (“Oracle Products”) that practice or have practiced the claim." Did Oracle identify each (and every Oracle or Sun product that practiced one of the 26 asserted claims with the supporting testimony or documentation to support its contention? Oracle says it did. But there is a problem with the Oracle's contentions. In fact, it is a big problem.

In a substantial number of the instances cited by Oracle the fact witness they identified was either not provided during discovery or testified during discovery that he did not have the knowledge of the facts for which Oracle now elects to produce him. As Google points out in their response (Appendix B):

Oracle’s Disclosures reflect an intention by Oracle to present at trial testimony that (i) its witnesses were unable to, or refused to, provide at Rule 30(b)(6) depositions, and (ii) it affirmatively represented that it would not present at trial.
Moreover, where Oracle does intend to produce witnesses, those witnesses have not been identified as expert witnesses and, therefore, can be produced only as personal knowledge witnesses. As Google points out, the problem with that approach is that none of the identified witnesses have the requisite personal knowledge.

Third, the Federal Rules of Evidence provide that “[a] witness may not testify to a matter unless evidence is introduced sufficient to support a finding that the witness has personal knowledge of the matter.” (Id. at Rule 602 (emphasis added).) “‘Personal knowledge’ means knowledge of a fact perceived by the senses, by one who has had an opportunity to observe, and must have actually observed the fact.” Rosebrock v. Beiter, No. 10-cv-01878, 2011 U.S. Dist. LEXIS 61758, at *4 (C.D. Cal. May 26, 2011) (quoting Tilei v. Wan, No. 1:06-CV-00776, 2011 U.S. Dist. LEXIS 5686 (E.D. Cal. Jan. 13, 2011)). Oracle proposes to present employees to testify as fact witnesses regarding its patents and the alleged use of particular code in particular products with respect to which they have not had experience outside the context of this litigation that would qualify them as percipient witnesses. None of them are named inventors or were otherwise involved with the creation of the code at issue during the time period at issue. Instead, the proposed testimony will have been carefully spoon-fed by Oracle’s counsel for the sole purpose of offering what is in effect attorney argument from the witness stand. Whether or not the identified witnesses may have worked in Oracle’s large Java products group, they were not the engineers who implemented the source code purportedly related to the asserted patent claims. Nor do they have personal knowledge about which code was ultimately implemented in product versions that were commercially released and actually used. As a result, the identified witnesses are not qualified from their ordinary business experience as fact witnesses for any of the topics summarized throughout Oracle’s Disclosures, and their testimony is not admissible. See Pacheco v. Homecomings Fin., LLC, No. 08-cv-3002, 2010 U.S. Dist. LEXIS 64400, at *10 (N.D. Cal. June 29, 2010) (“The testimony of a witness who does not have personal knowledge of the subject of his or her testimony is inadmissible.” (citing Fed. R. Evid. 602)), aff’d, 2011 U.S. App. LEXIS 25826 (9th Cir. Dec. 27, 2011).

Moreover, even if they had percipient testimony to offer, the employees identified by Oracle cannot opine as fact witnesses on Oracle’s practice of the 26 asserted claims. See Fed. R. Evid. 701 (providing that if a “witness is not testifying as an expert, the witness’ testimony in the form of opinions or inferences is limited to those opinions or inferences which are (a) rationally based on the perception of the witness, (b) helpful to a clear understanding of the witness’ testimony or the determination of a fact in issue, and (c) not based on scientific, technical, or other specialized knowledge within the scope of Rule 702.” (emphasis added)).

Fourth, Oracle cannot offer these witnesses to provide expert opinion regarding its alleged practice of asserted patent claims (which requires application of claim language to commercial products), because it did not submit timely expert reports disclosing them as prepared to offer such testimony as required by the Federal Rules and the Court. See generally Fed. R. Civ. P. 26(a)(2)(B); Case Management Order, Dkt No. 56 at ¶ 11 (“[a]t trial, the direct testimony of experts will be limited to the matters disclosed in their reports.”). Moreover, these witnesses openly admitted during depositions that they were not qualified to opine on the asserted patent claims. (Pampuch Dep. at 119:17-22, 125:12-126:23, 127:15-128:22, 134:5-9 and 146:12-13; Kessler Dep. at 52:13-19, 58:20-21, 59:13-60:18; Poore Dep. at 25:22-13, 34:20-35:3; Vandette Dep. at 74:12-77:5, 88:7; Landau Dep. at 50:14-51:7). In fact, Oracle’s counsel objected to questions about Oracle’s actual practice of the patent claims on the grounds that it called for expert testimony. (See, e.g., Kessler Dep. at 60:5-6, 60:16-17, 60:25, 61:15-20, 79:9- 12.) And Oracle cannot claim that they are merely laying the foundation for its expert witnesses to opine as to the use of the patented methods in Oracle products, because none of those retained experts have expressed any opinion on the subject in their expert reports.

With respect to the source code identifications, Google basically argues that Oracle had an obligation to provide a claim chart that not only identified the source code evidencing practice of a claim but establishing exactly how that source code practiced the claim. In other words, Oracle attempted to shift the burden to Google to prove that the products didn't practice the claims and did so in the most oblique manner. Google has called Oracle out on this attempted sleight of hand:

[A]ccording to the Joint Statement (Dkt. 661 and ¶ 1), “Oracle [is expected to] provide source code citations and/or other documentation supporting Oracle’s contentions that the Oracle Products practice the asserted claims.” But Oracle has neither provided source code citations nor identified any documentation in support of its contentions. Instead, Oracle simply provides a laundry list of names of various source code files, with no indication as to what code in those files allegedly performs the claimed functionality (much less how). This approach has hampered Google in evaluating the technical merits of Oracle’s contentions with respect to many of the asserted claims.
In summary, Google asserts that because Oracle has failed to meet its basic obligations under the first prong of the joint stipulation, Google cannot fulfill its obligation to respond.

Not surprisingly, Oracle elects to castigate Google for the position Google has taken rather than refute the points that Google raises:

For four of the patents — the '104, '205, '520 and '720 — Google has provided no useful information at all. At the last minute, Google agreed to stipulate that one Oracle product practices the claim at issue in the '476 patent, and that one Oracle product practices one of the seven claims at issue in the '702 patent. Even as to these two patents, Google has still not taken a position on whether the many other products identified by Oracle practice the claims, and has not squarely addressed the remaining six claims at issue in the '702 patent.

Oracle identified its position as to all of the products and claims at issue as the parties agreed, but Google is still playing possum. Google should be required to comply with the parties' December 30, 2011 Joint Statement and provide a clear statement of which Oracle products it contends do, or do not, practice the patents, and why.

It will now be up to the court to determine whether Oracle made adequate source code disclosures, but simply saying, "Oh, here's some source code we believe embodies X claim," is far different than an actual claim chart. The first is not useful; the second would clearly satisfy Oracle's obligation. Meanwhile, keep in mind that this burden of proof is Oracle's, not Google's.

As to the issue of witnesses, Oracle argues that Google is somehow wrong in insisting that Oracle cannot now introduce new witnesses:

... Google has stated that it should not be required to respond because Oracle does not have admissible evidence on these issues. As will be seen below, Google's argument is based primarily on the incorrect claim that 30(b)(6) deposition testimony — completed in the summer of 2011, four months before it proposed this procedure — was insufficient. Google also contends that it should not have to respond because Oracle cannot present the right witnesses at trial. But Google was also aware of its own contention when it proposed the procedure, since it specifically referred to Oracle's proposed trial witnesses in the November 30 statement in which it argued that its procedure would save time by eliminating the need to put this evidence on at trial. (See ECF No. 635 at 1 & n.2.)

If this was Google's position, it should never have proposed and agreed to this process. Essentially all of the evidentiary arguments it raises now were known to Google at the time it stipulated to the procedure. Oracle spent an enormous amount of time and resources relying upon the parties' agreement. Google should be required to comply with the parties' December 30, 2011 Joint Statement immediately.

But don't you suppose that Google knew this was a problem for Oracle all along, that Oracle had either refused to provide the necessary 30(b)(6) witnesses or the witnesses Oracle did provide admitted not having the requisite knowledge? This was part of Google's position when it filed for summary judgment on the patent marking issue. The mere fact that the court did not grant summary judgment does not now permit Oracle to introduce witnesses it could have provide (and was obligated to provide) last summer. The fact that Oracle now has a problem getting evidence introduced is a product of its own acts, not those of Google.

So the patent marking issue is no closer to being resolved than before with respect to the process ordered by Judge Alsup and stipulated to by the parties. The question is whether Oracle has (or even can) fulfill its obligations under the first step of the stipulated process. If it cannot, than this issue will be resolved quickly and in Google's favor.


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

Docket

706 - Filed and Effective: 01/27/2012
STATEMENT
Document Text: Statement re 641 Order, 661 Statement Joint Statement regarding Oracle Products Practicing Patents by Google Inc., Oracle America, Inc.. (Attachments: # 1 Appendix A, # 2 Appendix B)(Peters, Marc) (Filed on 1/27/2012) (Entered: 01/27/2012)

Jump to: Appendix A, Oracle's separate position, or Applendix B, Google's, attached to the Joint Statement, as text.

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

Documents

706

[counsel listed on signature page]

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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

Case No. CV 10-03561 WHA

JOINT STATEMENT REGARDING
ORACLE PRODUCTS
PRACTICING PATENTS

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

(1)

Pursuant to the Court's December 6, 2011 Supplemental Order Regarding Patenting Marking (ECF No. 641) and the agreement between the parties as set forth in their December 30, 2011 Joint Statement Regarding Supplemental Order Regarding Patenting Marking (ECF No. 661), Plaintiff Oracle America, Inc. ("Oracle") and Defendant Google Inc. ("Google") hereby submit the following statement regarding Oracle products, Oracle-licensed products, Sun products, and Sun-licensed products ("Oracle Products") that practice or have practiced the asserted claims of the patents-in-suit ("claims-in-suit").

I. STIPULATION

Pursuant to Paragraph 3 of the parties' December 30, 2011 Joint Statement Regarding Supplemental Order Regarding Patenting Marking (ECF No. 661), the parties stipulate as follows:

JDK version 6 practices asserted claim 14 of the '476 patent; and

JavaOS 1.1 practices asserted claim 7 of the '702 patent.

II. ORACLE'S STATEMENT

On October 21, 2011, Google filed a motion for partial summary judgment, asking the Court to find, as a matter of law, that it was not liable for damages for any infringement of five of the six patents-in-suit before July 20, 2010, claiming undisputed facts established Oracle was practicing the patents-in-suit but had not marked its products. That motion was denied. Now, perhaps more concerned about an injunction than patent marking in light of the Court's recent damages rulings, Google has completely reversed its position. Raising a host of evidentiary objections, Google does a tactical about-face, and will agree only that two versions of Oracle products practice two of the twenty-six claims at issue in this case.

Following the denial of Google's summary judgment motion, the Court ordered the parties to work together to streamline this issue for trial. The parties stipulated to a procedure, based on a proposal that originated with Google, under which Oracle would identify which products it claims practice the patents and Google would state whether it agreed or disagreed, and why. Oracle went to great lengths to carry out its part of that stipulation. Google ignored it, serving Oracle with a response consisting entirely of objections instead of the information it agreed to

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provide. Google's evidentiary objections have no place in this procedure. The purpose of the stipulation was to try to avoid the need to present evidence on these issues at trial. Having placed an enormous burden on Oracle, Google is now essentially refusing to engage in the narrowing process that it proposed (ECF No. 635 at 1, 3-4) and the Court ordered (ECF No. 636). For four of the patents — the '104, '205, '520 and '720 — Google has provided no useful information at all. At the last minute, Google agreed to stipulate that one Oracle product practices the claim at issue in the '476 patent, and that one Oracle product practices one of the seven claims at issue in the '702 patent. Even as to these two patents, Google has still not taken a position on whether the many other products identified by Oracle practice the claims, and has not squarely addressed the remaining six claims at issue in the '702 patent.

Oracle identified its position as to all of the products and claims at issue as the parties agreed, but Google is still playing possum. Google should be required to comply with the parties' December 30, 2011 Joint Statement and provide a clear statement of which Oracle products it contends do, or do not, practice the patents, and why.

A. Google Has Not Complied With The Parties' Stipulated Procedure

When the Court denied Google's summary judgment motion on patent marking, it expressed concern that the marking issue would "devolve into an 'infringement' type analysis at trial of various Oracle products and methods to determine if they practiced any of the claims to be tried, throwing yet another complication into the trial." (ECF No. 621 at 4.) The Court ordered the parties to work together to find a way to mitigate this problem, ordering specifically that "Both sides shall meet and confer in person and devise a fully agreeable procedure regarding the marking statute." (ECF No. 641 at 1.)

The parties subsequently stipulated that Oracle would identify the products that practiced the 26 asserted claims, along with "source code citations and/or other documentation" supporting its contentions, fact witnesses and a summary of expected testimony. (ECF No. 661.) Google, in turn, would respond by identifying "which Oracle Products it contends do (or do not) practice the asserted claims, and why." (Id.) Notably, this stipulation embodied a process that was proposed by Google, in the November 30 statement it filed with the Court:

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In short, Oracle needs to take a position on whether its products or those of its licensees practice the patents-in-suit and stick to it. Google proposes that by December 9, 2011, for each of the 26 asserted patent claims, Oracle identify each Oracle product or Oracle-licensed product that allegedly practices the claim, and the time period during which the product allegedly was marked. By December 16, Google will respond and identify which contentions in Oracle's submissions it would be able to stipulate to, and which contentions it will challenge at trial.

(ECF No. 635 at 3-4.) Google represented that: "The above disclosures could resolve most, if not all, of the marking dispute, and will significantly shorten the time that will need to be allocated to this issue at trial." (Id. at 4 (emphasis added).)

Google's representation made sense. Oracle had identified its products embodying the claimed inventions early in the case, and Google had ample opportunity to take discovery. And Google had just moved for summary judgment on this issue, asking the Court to find that Oracle practiced the patents. (ECF No. 552.)

Oracle satisfied its obligations, and expended more than a hundred hours of its engineers' and attorneys' time complying with the parties' agreed-upon procedure. For each of the six patents at issue, Oracle identified the specific products, and versions of products, that practice the patents, provided citations to source code files, identified fact witnesses who could provide supporting testimony, and summarized their expected areas of testimony. A copy of Oracle's submission is attached to this Joint Statement as Appendix A ("Oracle Response"). It was provided to Google, as the parties agreed, on January 6, 2012.

But now Google has reversed course completely and has refused to engage substantively in the issue-narrowing process it proposed. Instead of responding with a statement identifying which Oracle products it contends do, or do not, practice the patents, Google served Oracle with a litany of objections. Google's response did not, as the parties agreed, go through the list of products identified by Oracle and state Google's position as to whether the products practice the patents or not, and why. Nor did it identify whether Google claims any additional products practiced the patents, as Google was also required to do. (See ECF No. 661 at 2; Google Response, attached as Appendix B.) For three of the patents — the '520, '702, and '476 patents — Google simply ignored the question of which Oracle products practice the patents. (Google Response at 9-14.) For the remaining three, the '104, '205 and '720 patents, Google's only

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response was to state that according to the claim construction provided by its own experts, no Oracle products practice the patents. (Id. at 5-6, 8-9, 13-14.) This, of course, invites precisely the infringement-type argument the Court was hoping to avoid. Moreover, if Google intended to maintain these claim construction positions, it never should have moved for summary judgment on the marking statute, as the two arguments are mutually exclusive. In the case of the '104 and '205 patents, Google's contention that Oracle's products do not practice its own claims turns on claim construction issues that Google has never presented to the Court.

Google has stated that it does not want its response on the patent marking issue to be used to impeach its experts on the issue of infringement. To address this concern, Oracle offered to stipulate that the parties' agreement regarding which Oracle products practice the patents will not be used to support claim construction or infringement arguments at trial. Google refused.

The parties were directed by the Court to cooperate to try to work out this issue. Google urged a procedure that required Oracle to go first and identify the products that practiced the claims and promised to respond. Google's position now is essentially that it does not have to respond based on the evidentiary objections that it is raising: during recent meet and confer on this issue, Google has stated that it should not be required to respond because Oracle does not have admissible evidence on these issues. As will be seen below, Google's argument is based primarily on the incorrect claim that 30(b)(6) deposition testimony — completed in the summer of 2011, four months before it proposed this procedure — was insufficient. Google also contends that it should not have to respond because Oracle cannot present the right witnesses at trial. But Google was also aware of its own contention when it proposed the procedure, since it specifically referred to Oracle's proposed trial witnesses in the November 30 statement in which it argued that its procedure would save time by eliminating the need to put this evidence on at trial. (See ECF No. 635 at 1 & n.2.)

If this was Google's position, it should never have proposed and agreed to this process. Essentially all of the evidentiary arguments it raises now were known to Google at the time it stipulated to the procedure. Oracle spent an enormous amount of time and resources relying upon

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the parties' agreement. Google should be required to comply with the parties' December 30, 2011 Joint Statement immediately.

B. Google's Objections Are Meritless.

Google's numerous evidentiary objections have no place in the joint statement procedure that the parties agreed to and the Court ordered. The purpose of this procedure was for the parties to try to reach agreement on which Oracle products practice the patents so that, to the extent possible, the parties would not have to present evidence on these issues at trial.

Nonetheless, Oracle feels it has little choice but to address Google's objections, because Google's response consisted of little else, and Oracle does not want the Court to be left with the misimpression that these objections are valid. Google has mischaracterized the record and Google's complaints principally stem from its own failure to develop the record during discovery.

1. The '104 Patent

Google's first objection to Oracle's identification of products that practice the '104 patent is that it cannot respond because Oracle supposedly failed "to actually cite any source code or documentation" reflecting how the patent is practiced. (Google Response at 3.) Google repeats this same rote objection for each of the six patents-in-suit. (See id. at 6, 9, 11, 12, 13.) The objection is baseless as to the '104 patent and as to the other five patents as well. Oracle identified specific source code files for each of the products it claims practices the six patents. (See, e.g., Oracle Response at 2-12.) These are not "a laundry list of names of various source code files" as Google claims. (Google Response at 1.) To the contrary, Oracle has identified specific source code files relevant to each product or product version — typically less than five files — that illustrate where and how the patent is practiced. (See, e.g., Oracle Response at 2, 12.) If Google felt these responses were somehow deficient, it could have raised that with Oracle before its response was due. But it never did. In fact, although it had a full two weeks to respond, Google's counsel waited until three days before Google's response was due to ask for copies of only some of the referenced source code files (which had all been produced last year as part of the parties' procedure for producing confidential source code). Google did not make a good faith effort to prepare its response or to meet and confer during this two-week period, and if

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it did not have enough time to review the files to verify Oracle's position, it has only itself to blame.

Google's evidentiary objections are equally meritless. Google has had ample discovery concerning Oracle's use of the '104 patent. There is no legitimate dispute that Oracle practices the claims at issue in the '104 patent. It is a fundamental patent that is practiced in essentially every Oracle Java virtual machine product. Oracle first identified products practicing the '104 patent in its December 2, 2010 Disclosure of Asserted Claims and Infringement Contentions ("Oracle 12/2/2010 Disclosure") and subsequently made the source code available for Google's inspection. (Oracle 12/2/2010 Disclosure at 5-6.) These same products were identified in Oracle's January 2012 disclosure, with only minor version clarifications or deletions. Google chose not to serve any interrogatories directed to Oracle's practice of the '104 patent, although it had five interrogatories left at the close of discovery. (Oracle Response at 2-5.)

Google's complaints are directed to the 30(b)(6) deposition of Dr. Peter Kessler, who testified on both the '104 and '205 patents. Google paints a highly misleading picture of Dr. Kessler's testimony to try to make it seem as though he was unprepared. But Dr. Kessler testified that he spent "days" reviewing source code specifically to prepare for the 30(b)(6) deposition. (Kessler Dep. 40:21-41:3.)1 Google's claim that Dr. Kessler was not a qualified 30(b)(6) witness because he supposedly "had no percipient knowledge of the functionality in Oracle's products allegedly implementing the '104 patent" is nonsense. (See Google Response at 5.) It is true that Dr. Kessler is not the inventor of the '104 patent — the inventor is James Gosling, who was working for Google at the time this 30(b)(6) deposition was taken. However, Dr. Kessler is a "principal member of technical staff" at Oracle America, a position he has held "since the early 1990s" at Sun, where he worked extensively on Java. (Kessler Dep. 8:8-21, 15:15-16:23.) He described his main job responsibilities as "I write code, I review code, I advise other people on the meaning and writing of code." (Id. at 8:11-14.) Because the '104 patent is practiced in

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virtually all of Oracle's Java virtual machine products, no one person could be expected to have personal familiarity with them all. Dr. Kessler testified that, to prepare for the deposition, "I examined the source code for the JRE. I examined the source code for HotSpot. And for the others, I relied upon the opinions of other engineers who were more familiar with those source code bases." (Id. at 198:9-18.)

Google chose to spend a very short amount of deposition time on the '104 patent. The entire examination spans less than 20 transcript pages. (See id. at 183:14-203:8.) Dr. Kessler testified fully and appropriately. It is simply not true, as Google claims, that Dr. Kessler could not testify as to which Oracle products other than the JDK, JRE and HotSpot practice "implemented symbolic resolution or where." (Google Response at 4.) Dr. Kessler was asked about, and confirmed, based on his own review and consultation with others, which Oracle products practiced the '104 patent. (See Kessler Dep. 197:17-199:24.) He explained what he did to look for the "symbolic references" that are the subject of the '104 patent, and how he could tell if it had been transformed into a "numeric reference." (Id. at 183:23-185:15.) Dr. Kessler also identified at least three places in the Oracle source code where symbolic references are "resolved" into numeric references — class names, method names and field names and explained how that process worked. (Id. at 185:8-190:13.) He testified that, for the products other than the ones he personally examined, his understanding was that "the functionality is the same, even if the file names or the method names are different." (Id. at 201:20-202:5.)

Google faults Dr. Kessler for not being able to provide it with the specific names of files or methods that implement the patent. (Google Response at 4.)2 But this is an entirely

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unreasonable expectation. A new version of the source code is generated for every type of virtual machine, and the versions have changed over time. There are literally hundreds of versions of the source code, and a witness at a 30(b)(6) deposition cannot be expected to testify as to exact file or method names. Dr. Kessler testified that he could not provide specific names without looking at source code, but Google's counsel chose not to show him any. (Kessler Dep. 192:10-24.) A deposition is not a memory test, and it would have been impossible for Dr. Kessler to memorize all of the source code file and method names in any event. Dr. Kessler spent extensive time preparing for the deposition, and testified as to the products that practiced the use of symbolic references and how he made that determination. Oracle made a good faith effort to prepare and present a 30(b)(6) witness on an extremely broad topic, and Google has more than enough information to proceed to trial. But, if Google felt this was insufficient, it should have followed up with Oracle to request further information, or filed a motion to compel. It did neither.

Google also states that it declined to provide its position in response to Oracle's January 2012 disclosure because its experts construe the claims differently from Oracle. (See Google Response at 5-6.) But these differing constructions are based on a particular interpretation of terms that Google chose not to place before the Court when it was given the chance to do so. (See 11/8/2011 Order Regarding Construction Of Claims To Be Tried, ECF No. 603.) In any event, Oracle has proposed a compromise that would resolve this issue. Google should be ordered to respond, on the understanding that its response will not be used at trial for the purpose of claim construction or infringement.

2. The '205 Patent

Google had more than sufficient identification and information about Oracle's products that practice the '205 to respond as required by the parties' stipulation. Instead of providing a straightforward response, however, Google again ducks the question, stating only that, under the claim construction proposed by its expert, Oracle does not practice the claims. (Google Response at 8-9.) Once again, however, this argument depends on a claim construction argument that Google chose not to submit to the Court when it had the opportunity to do so. (See ECF No. 603.) Google should be required to respond substantively.

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Oracle first identified products practicing the '205 patent in its December 2, 2010 Disclosure and subsequently made the source code available for Google's inspection. (Oracle 12/2/2010 Disclosure at 6-7.) In Oracle's January 6, 2012 disclosure, Oracle confirmed the products practicing the '205 patent, deleting one product and making some minor clarifications. (Oracle Response at 5-8.)

Google served one interrogatory regarding the '205 patent. Notably, while the '205 patent is practiced in many Java products, Google's interrogatory was directed only to JDK 1.2. The interrogatory asked Oracle to:

Identify, by reference to the relevant portions of the source code and the date on which such portions were first included in the code, the specific functionality within JDK 1.2 that Oracle contends practices the Asserted Claims of U.S. Patent No. 6,910,205.

(Google 6/16/2011 Corrected Interrogatory No. 16.) Oracle understood this interrogatory as asking it to identify the first time the specific functionality within JDK 1.2 that practiced the '205 patent at the time was included in the code, and answered accordingly:

The functionality that practices the Asserted Claims of U.S. Patent No. 6,910,205 is implemented in the TemplateTable::_fast_invokevfinal() method, which is included in templateTable_i486.cpp of the HotSpot virtual machine. The HotSpot virtual machine first became an optional component of JDK 1.2 in version 1.2.1_004 on or about March 18, 1998.

(Oracle 7/14/2011 Response to Google Corrected Interrogatory No. 16.) It is apparent that Google had a different interpretation of this interrogatory, and its response complains that the interrogatory response did not list all of the portions of the source code that practice the patent. (See Google Response at 7.) Oracle identified additional source code files in the portion of its January 2012 disclosure relating to JDK 1.2, because those files were implemented later. Even the January 2012 disclosure is illustrative, however, since, again, there are literally hundreds of different versions of this code. Google should not require anything more for the purposes of responding to the parties' stipulated procedure.

The two inventors of the '205 patent — Lars Bak and Robert Griesemer — have been employed by Google through the entirety of this litigation. Accordingly, Oracle designated Dr. Kessler on the deposition topics relating to products practiced by the '205 patent. These were

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topic 11 (an overbroad topic directed to "evidence of conception, reduction to practice or actual use" of the inventions of all the asserted claims) and topic 10, which related specifically to "[t]he practice of the asserted claims of U.S. Patent No. 6,910,205 by JDK...." (Google 6/21/2011 30(b)(6) Deposition Notice.) Robert Griesemer was deposed by Oracle in his personal capacity on June 23, 2011.

Google again misrepresents Dr. Kessler's preparation for the deposition and his responses. Google's suggestion that Dr. Kessler only "knew about some source code that Oracle's counsel directed him to consider in advance of his 30(b)(6) deposition" is false. (See Google Response at 8.) As noted above, Dr. Kessler spent days reviewing code specifically to prepare for his deposition, and he also testified that, in relation to the litigation more generally, he looked for evidence relating to conception, reduction to practice, and actual use of the '205 patent over a period of about six months, and consulted with other Oracle employees about these issues. (See Kessler Dep. 36:23-37:5, 40:21-41:3, 119:11-120:22.)

Google does not dispute that Dr. Kessler gave extensive testimony as to how the method fast_invokevfinal practices the patent. (See Google Response at 7-8; see, e.g., Kessler Dep. 68:170: 10, 78:4-79:5.) This method, as noted above in response to Interrogatory 16, and at the deposition, is found in the source code file TemplateTable. There are different versions of TemplateTable for different computer platforms (such as those CPUs made by Sun, Intel, and AMD). Google quarrels that Dr. Kessler could not identify which of the "hundreds of versions" of the source code file TemplateTable_i486 practice the patent. (Google Response at 8.) While this functionality is disabled in some of these hundreds of versions (Kessler Dep. 82:22-84:13), it is not reasonable to expect that all of the individual practicing versions could be identified by a witness in deposition, or even in response to an interrogatory, or why such a burdensome inquiry is necessary or relevant. Oracle clearly practices the patent.

Dr. Kessler also brought to his deposition two versions of the source code file bytecodes.hpp (which had previously been produced to Google), another file that implements the '205 patent. Oracle's counsel prepared multiple copies of these files so that they could be marked as exhibits, and handed them to Google's counsel at the outset of the deposition, stating that they

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had been reviewed in preparation for the deposition. (Id. at 5:13-18.) Google apparently already appreciated the significance of this file because, later in the deposition, Google's counsel marked as an exhibit of its own, the closely related source code file bytecodes.cpp (bytecodes.hpp is its header file), and then, realizing that it was not the file that had been brought to the deposition by Oracle's counsel, left it unaddressed:

MR. KAMBER: Please mark as Exhibit 328 the bytecodes.cpp file, I'm sorry, that your counsel provided us this morning.

(Exhibit Google 328 was marked for identification.)

Q. BY MR. KAMBER: What is Exhibit 328?

A. Exhibit 328 is a copy of bytecodes.cpp version 1.85, dated December 23, 2003, but I do not believe this was the document provided by my counsel.

MR. KAMBER: You're right. I grabbed the wrong file so I apologize. We can just leave that marked as Exhibit 328.

(Id. at 174:13-24.)

Inexplicably, Google never came back to ask any question about Exhibit 328, nor marked or asked questions about the bytecodes.hpp files brought to the deposition by Oracle. If it had, Dr. Kessler would have testified that these source code files also implemented the invention in the '205 patent, as Google itself apparently had already concluded. This is Google's fault, not Oracle's.

Various versions of TemplateTable and bytecode.hpp are listed as source code files that evidence practice of the '205 patent as to all but one product in Oracle's January 2012 disclosure. (See Oracle Response at 5-8.) Dr. Kessler testified further at his deposition that Java EE 1.2 and Java Realtime 1.0 both run on top of JDK 1.2, and practice the '205 patent to the same extent it is practiced in JDK 1.2. (Kessler Dep. 180:15-24.) This mirrors the chart in the January 2012 disclosure for these two products. (See Oracle Response at 7.)

There is no reason why Oracle should be precluded from putting on evidence at trial that its products practice the '205 patent given that Dr. Kessler testified that they did, and Oracle provided ample evidence supporting that claim. If Google believed Dr. Kessler was inadequately prepared for the '205 deposition or that his responses were insufficient, it should have raised this

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with Oracle, and either asked for another witness or filed a motion to compel, instead of raising the issue for the first time here.

3. The '702 Patent

In its January 2012 disclosure, Oracle confirmed that the '702 patent is used in two Oracle products: JavaOS (version 1.1 and variants, such as JavaPC) and Java Card (platform 2.1 and subsequent versions). (Oracle Response at 8-9.) Google has responded as to one product only — and even for that product as to only one of the seven claims — stipulating that Java OS version 1.1 practices claim 7 of the '702 patent. Google should be required to state its position clearly for all of the products identified by Oracle, and for all seven claims, as it agreed to do, and for those products it contends do not practice the claims, Google must explain why. (ECF No. 661 at 2.)

Oracle first identified these products as patent embodiments in its December 2010 Disclosure (Oracle 12/2/2010 Disclosure at 7) and later produced the relevant source code for inspection.

In addition, last summer, in response to a Google interrogatory regarding JavaOS, Oracle identified the directories that contained the source code that implemented the '702 patent in JavaOS 1.1, and identified the files Jld.java, classloader.c, FileLoader.java, and JavaOSVM.java within those directories for Google's convenience. (Oracle 7/22/2011 Response to Google Amended Interrogatory No. 15.) The files identified for JavaOS in Oracle's January 12 disclosure correspond to the directories that Oracle identified last year and include the same four files previously called out by name. (Compare id. with Oracle Response at 8.) Google did not serve any interrogatories aimed at Java Card.

Google also took a 30(b)(6) deposition on Oracle's use of the '702 patent. Again, this deposition was limited to JavaOS, and did not include JavaCard. Google's Topic 9 concerned "The practice of the asserted claims of U.S. Patent No. 5,966,702 by JavaOS...." (Google 6/21/11 30(b)(6) Deposition Notice.) John Pampuch was Oracle's designee with respect to this topic.3

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Mr. Pampuch testified at length about how JavaOS 1.1 created and used the multiclass files that are the subject of the '702 patent. (Pampuch Dep. 139:13-22, 147:15-150:9, 151:5153: 23, 155:10-161:12, 166:14-167:1.) Google misleadingly excerpts Mr. Pampuch's testimony, to make it appear that he was not aware if the "'702 patent concept of 'multiclass files' was ever practiced." (Google Response at 10 (emphasis in original).) This claim is false. As the excerpt itself shows, the testimony cited by Google was in response to questioning as to whether Mr. Pampuch was aware of "anyone outside of Sun, including developers, other companies who licensed JavaOS, for example, ever having used multiclass files or created multiclass files." (Id. (emphasis added); see also id. (question referring to "multiclass files, having been apparently implemented, based on what you have seen") (emphasis added).) Google's assertion that this testimony relates to Sun's own implementation or use of the claimed inventions is blatantly misleading, to say the least.

Moreover, Google excised more than a page out of the testimony from Mr. Pampuch that it cites, replacing it with an ellipsis. In the missing portion, Mr. Pampuch confirmed that JavaOS practiced the "'702 patent concept of 'multiclass files'":

Q: It is possible, then, that by default, JavaOS was set to not even use multiclass files; is that correct?

A: So JavaOS 1.1, as far as I can tell, you know, it would always be able to load multiclass files. But the developer who was creating the application might choose to use multiclass files to create one or not.

(Pampuch Dep. 207:24-208:6.) Earlier in the deposition, Mr. Pampuch expressly identified the specific portions in the JavaOS source code where multiclass files are created and subsequently read in:

Q: In your view, which source code files implement the multiclass functionality?

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A: Classloader.c implements a portion of the multiclass loading and the Java Virtual Machine and Jld.java and some related source files in the same directory implement the creation of multiclass files from regular class files. It may turn out FileLoader.java is used, as well, but the implementation of multiclass is in classloader.c.

(Pampuch Dep. 139:13-22.)

The record is clear: Mr. Pampuch testified that the '702 technology was implemented in JavaOS 1.1, a subject for which he was Oracle's designee and for which he prepared to testify. Google's argument that Mr. Pampuch contradicted Oracle's contention that JavaOS practiced the '702 patent is preposterous.

Google also complains that Mr. Pampuch could not give testimony as to one of the four specific source code files identified in the December 2, 2010 Disclosure and the January 2012 response, FileLoader.java. (See Google Response at 10-11.) But this is only because Google did not show Mr. Pampuch the file at the deposition, which was produced in discovery months before and accessible to Google at the time of Mr. Pampuch's deposition. Google showed Mr. Pampuch copies of Jld.java and classloader.c and Mr. Pampuch was able to fully testify about them. (See, e.g., Pampuch Dep. 139:13-22, 147:15-150:9, 151:5-153:23, 155:10-161:12, 166:14-167:1. ) But Google chose not to show FileLoader.java to Mr. Pampuch, so it is not surprising that he could not answer questions about a source code file on the fly, unassisted by the code itself. Had Google provided a copy of the code, it would have elicited the testimony Mr. Pampuch will give at trial. Google also never pursued this issue with Oracle after the deposition. In this case, Google did subsequently make a self-serving statement, without explanation, that "Mr. Pampuch was not prepared to testify about numerous issues within the scope of the designated topics, a letter regarding this and other issues will be forthcoming." (See 8/2/2011 Letter from M. Francis to M. Peters.) But Google never sent the letter or otherwise followed up. If Google had, Oracle could have addressed this issue by interrogatory or by offering further deposition testimony. Google cannot use its failure to properly pursue this discovery to bar Oracle from presenting testimony.

Finally, Google complains that Mr. Pampuch was not prepared to give testimony as to Java Card. But Java Card was expressly excluded from Google's 30(b)(6) deposition topic, and

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Google chose not to propound any other discovery directed at Java Card either. Two things follow from the fact that there was no 30(b)(6) deposition on Java Card: First, as a practical matter, Mr. Pampuch did not review any Java Card code before his deposition to refresh his recollection about how Java Card works, because Google did not identify it as a deposition topic. Second, as a legal matter, he was not testifying as Oracle's corporate representative when he was asked about Java Card, so Oracle is not bound by his testimony.

To streamline the trial presentation, Oracle proposed to have Mr. Pampuch testify about the use of the '702 patent as well in Java Card as well as in JavaOS — though others could testify as well. Google put Mr. Pampuch on its witness list to "testify about Oracle's alleged practice of U.S. Patent No. 5,966,702, including by JavaOS." (Google's Trial Witness Disclosure Pursuant To Fed. R. Civ. P. 26(a)(3) at 7, ECF No. 491-2.) That is exactly what Oracle has proposed he do. Google has had ample opportunity to investigate Oracle's specific assertions concerning its practice of the '702 patent. It is free to cross-examine Mr. Pampuch at trial, but there is no reason or basis to exclude his testimony.

4. The '476 Patent

The '476 patent has been and is used in almost all mainline Java products (such as Java SE, Java ME, and Java EE). Li Gong's invention is one of the foundations of the celebrated Java Security Framework and has been part of Java since version 1.2. The products that practice the '476 patent were identified in Oracle's January 2012 disclosure. (Oracle Response at 9-11.) These products were all first identified in Oracle's December 2, 2010 Disclosure, and the source code was made available for inspection. (Oracle 12/2/2010 Disclosure at 7-8.)

Google stated in its response that it would consider entering into a stipulation regarding the '476 patent. Earlier today, it agreed to stipulate that one version of one of the many products identified by Oracle (JDK version 6) practices the claim at issue. It has not, as it was required to do, stated its position as to whether the remaining products do or do not practice the patents and why.

Google's response did not identify any legitimate reason why it could not provide this information. Its response contained no evidentiary objections for the '476 patent. Instead, it

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provides a series of creative footdragging excuses. Google proclaims, "Oracle provides no information to support its contention that the witnesses identified in its Disclosures have any percipient knowledge with regard to actual embodiments." (Google Response at 12.) But, of course, Oracle was never required to provide this under the parties' agreement, and it is not needed for Google to determine whether the identified products practice the patents.

Similarly, Google claims in its response that it is "unclear" whether the source code files identified by Oracle for guidance "actually create the required protection domains and permissions." (Id. at 11.) But Google made absolutely no effort in the two weeks following Oracle's disclosure to ask for any clarification or assistance on this issue. And Google knows full well where the Java code performs that function, since both parties' experts analyzed and discussed the corresponding Android code in their expert reports. Information about whether the Java source code was compiled into executable instructions is readily available on the Internet.4

Upon receiving Google's response, Oracle contacted Google to arrange for a meet and confer. Oracle provided Google with the information it requested during that meet and confer, and the end result was that Google stipulated with respect to a single product only, and took no position as to the rest. Google should be ordered to comply with the parties' December 30 Agreement and identify the products that do, or do not, practice the '476 patent and why.

5. The '520 Patent

In its January 2012 disclosure, Oracle confirmed that the '520 patent is used in three Oracle products: CLDC HI (1.1.3 and subsequent versions), CLDC RI (1.1.1 and subsequent versions), and Java Card (platform 2.1 and subsequent versions). (Oracle Response at 11-12.) Oracle also identified a handful of source code files that support that conclusion. Oracle first identified these products as patent embodiments in its December 2010 Disclosure (Oracle 12/2/2010 Disclosure at 8) and produced the relevant source code for inspection.

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Rather than stating its position as to whether these products practice the identified claims, and explaining why, Google states only that "the products identified by Oracle cannot be proven at trial to practice the asserted claims of the '520 patent." This does not comply with the parties' Dec. 30, 2011 stipulation, and Google should be ordered to properly respond.

The inventors of the '520 patent are no longer at Oracle — one is employed by Google. As a result, last summer, Oracle did not offer a witness to testify about the '520 patent for Google's deposition topic No. 11, on the "Evidence of conception, reduction to practice or actual use" of the inventions in the '520 patent claims, and so is subject to the Court's Supplemental Order. (ECF No. 26 at 7-8 ("If an organization cannot reasonably locate a witness to testify based on personal knowledge, there is no requirement under Rule 30(b)(6) for the organization to 'woodshed' or to 'educate' an individual to testify on the subject. If the organization does not produce any such deponent, however, the organization may not present case-in-chief evidence at trial or on summary judgment on that topic from any witness it could have so designated."); see 8/9/2011 Email from D. Muino to M. Francis.) However, while Oracle agreed that it would "not present an Oracle employee or officer at trial to testify regarding [those issues]," it expressly reserved the right to put on testimony from former Sun/Oracle employees. (See id. ("We reserve the right, of course, to present testimony on these subjects from our experts, the inventors (Messrs. Yellin, Tuck, and Fresko), and other former Oracle/Sun personnel with knowledge of the patented inventions.").) It can present evidence of Oracle/Sun's use of the '520 patent through such witnesses at trial.

In order to promote efficiency at trial and reduce the number of witnesses, Oracle proposed having Mark Reinhold testify about CLDC HI and CLDC RI and John Pampuch about Java Card as they pertain to the '520 patent. Oracle expects to call both engineers to testify at trial in any event, so it would take up little extra time to have them address these issues. Oracle has offered to make Mr. Reinhold and Mr. Pampuch available for deposition about the practice of the '520 patent. Given the amount of time before trial begins, that no Google expert opined on whether any Oracle product did or did not practice the patent, and that, until recently, Google maintained that the '520 patent was subject to the marking requirement as a matter of law because

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Oracle's products practiced it, there would be no undue prejudice to Google to take these limited depositions now. Google declined Oracle's offer.

At the time Google proposed the procedure that the parties ultimately adopted and agreed to, it was well aware that Oracle had not presented a 30(b)(6) witness on the '520 patent. It even referenced this fact in its November 30 statement to the Court. (See ECF No. 635 at 2.) If Google's intention was to use this as a basis for not responding to Oracle's identification of the products that practice the '520 patent, it never should have proposed this procedure. Google is playing games. Now that Oracle has done its work and provided Google with the information it requested, it is too late for Google to refuse to respond on this ground.

6. The '720 Patent

In its January 2012 disclosure, Oracle confirmed that the '720 patent is used in the Oracle product CDC AMS (versions 1.0, 1.0_1, 1.0_2, Personal Basis Profile and Personal Profile versions). Oracle first identified CDC AMS as a '720 patent embodiment in its December 2010 Disclosure, and made the source code available for inspection. (Oracle 12/2/2010 Disclosure at 8.) Google did not serve any interrogatories directed to the '720 patent or CDC AMS.

Oracle's January 2012 disclosure identifies three source code files (ansi_java_md.c, mtask.c, and Warmup.java) that show its practice of the '720 patent. The disclosure also refers Google to a description of the implementation of the '720 patented technology in Oracle's product (mtask.html). This description is very detailed, and serves as a guide to the three source code files, explaining exactly how the implementation functions. With this information, and so few files at issue, confirming Oracle's contention should have been simple. But Google again failed to do so.

Instead, Google only states that its non-infringement expert, Dr. Jack Davidson, construes the claims at issue in the '720 patent differently from Oracle. (Google Response at 13.) Dr. Davidson has never been cleared by Google under the protective order, so has never examined the CDC AMS source code. His differing interpretation relates to one of the claim construction disputes presented to the Court (concerning the phrase "obtaining a representation of at least one class..."). Having not examined the code, it is not clear how Dr. Davidson is in any position to

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say it does not practice the patent. The source code at issue was written by the inventor of the '720 patent, Nedim Fresko, to implement his own invention. The fact that, under Dr. Davidson's proposed special construction, the source code written by the inventor would no longer be an embodiment also suggests that Google's proposed construction is wrong. The Court recently postponed resolving the claim construction dispute until a fuller record is established at trial. (ECF No. 704 at 10.)

Mr. Fresko is no longer employed by Oracle, and subject to the same agreement as the '520 patent, Oracle did not present a 30(b)(6) witness on the "conception, reduction to practice, or actual use" of the invention in the '720 patent. (8/9/2011 Email from D. Muino to M. Francis.) After the agreement was reached, however, Google chose to elicit deposition testimony from Oracle engineer Erez Landau about the use of the '720 patent in CDC AMS. (Landau Dep. 25:12-27:18.) By pursuing this line of questioning, Google opened the door to having Mr. Landau testify at trial regarding CDC AMS and its use of the '720 patent, notwithstanding Oracle's agreement not to present an employee witness on this topic. Google would not be prejudiced, since it deposed Mr. Landau on this issue, and it would be convenient for Mr. Landau to testify about the use of the '720 in CDC AMS to the jury because Mr. Landau will be testifying about the '720 patent in any event. Mr. Landau did the performance testing that demonstrated Android's use of the '720 patented technology and measured the benefits it offers, and will be testifying on these topics.

But even if Mr. Landau does not testify about the implementation of the '720 patent in Oracle products, there are alternative witnesses. Mr. Fresko, who is not an Oracle employee, can testify about that subject, and Oracle expressly reserved the right to present testimony from him. (See 8/9/2011 Email from D. Muino to M. Francis ("We reserve the right, of course, to present testimony on these subjects from our experts, the inventors (Messrs. Yellin, Tuck, and Fresko), and other former Oracle/Sun personnel with knowledge of the patented inventions.").) Mr. Fresko was subpoenaed by Google and has been deposed in this case. Google identified Mr. Fresko on its trial witness list as someone who may testify regarding the work that led to the issuance of the '720 patent and the documents authored by him, which is what Oracle would call

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him at trial to do, if necessary. (Google's Trial Witness Disclosure Pursuant To Fed. R. Civ. P. 26(a)(3) at 5, ECF No. 491-2.) Those documents include the very same materials identified by Oracle in its January 2012 disclosure.

In addition, as is the case with the '520 patent, Google was fully aware of the fact that Oracle had not presented a 30(b)(6) witness on the '720 patent when it proposed the procedure that was adopted by the parties, and made reference to this in its November 30 statement. (ECF No. 635 at 2.) It cannot use this fact now as a basis for refusing to respond.

III. GOOGLE'S STATEMENT

The purpose of the agreed procedure on disclosures was to determine whether the parties would be able to stipulate as to evidence that Oracle proposed to present at trial regarding its alleged practice of the asserted claims of the patents. (See generally Dkt. No. 661.) Contrary to Oracle's arguments in this paper, Google has never said it would prove that Oracle practiced any of these claims. Instead, it argued that if Oracle were to prove, as it contended it could, that it practiced these patents, then its damages would be limited by its admitted failure to mark any articles with the patent numbers. (Oracle, ironically, opposed the motion for summary judgment, arguing that whether it practiced the patents was an unresolved question of fact, such that its damages could not be limited as a matter of law.) Google agreed to this stipulated procedure in order to determine what, if anything, Oracle proposed to present at trial regarding its alleged practice of these patents, and to determine whether Google could agree to stipulate that Oracle would not need to provide such proof at trial.

Given Oracle's refusal to present evidence on certain of the patents during discovery, and the positions that it took in its opposition to Google's motion regarding patent marking, Google expected that Oracle might not contend that it practiced some of the patents. To the contrary, Oracle provided a disclosure asserting that it practiced all six of the remaining patents.

As to the '476 patent, Google has considered the additional technical information that Oracle has offered after the parties met-and-conferred, and has made a good faith effort to conduct its own examination of the source code for the Java Development Kit (JDK), version 6. While Google does not believe that the information Oracle presented showed the practice of the

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patent, Google was able to identify code that it believes perform each of the steps of the only asserted claim, e.g., in the AppletPanel and URLClassLoader classes, and determined that it can therefore stipulate to the practice of that patent by the JDK, version 6. With respect to Oracle's other identified products, Google explained in meet and confer that it does not believe those products satisfy that claim's requirement for a protection domain.

As to the '702 patent, Google is willing to stipulate that the software development tools provided for use with the JavaOS 1.1 product fall within the scope of claim 7 of the '702 patent. But Google is not aware of (and Oracle has not provided any evidence of) developers actually using those tools to perform the method of claim 1 or thereby creating the apparatus of claim 13. And while Oracle criticizes Google for not engaging in a claim-by-claim analysis of the various products, Oracle's Disclosure itself contained no such detail; it declared that certain products practiced the patents without addressing any claims individually. With respect to the only other product Oracle claims to practice the '702 patent — Java Card — Google is not in a position to stipulate given the state of the record. Specifically, the very witness that Oracle has identified to testify on the practice of the '702 patent by Java Card testified at deposition that he did not know if the Java Card platform implemented the '702 patent. (Pampuch Dep. at 192:10-15.) Given the inability of Oracle's own chosen witness to identify even whether, much less how, Java Card practices the '702 patent (and nothing in Oracle's disclosures would give any detail as to how it is allegedly practiced), Google can't be expected to make such a determination in a few weeks' time.

As to the remaining patents, Google cannot stipulate. In some cases, that is because the parties have fundamental disagreements on the interpretation of claim terms. In other cases, it is because Oracle now seeks an end-run around its discovery representations that it could not find a 30(b)(6) witness regarding Oracle's practice of the patents; therefore, Oracle agreed it would not present an Oracle witness on such issues at trial. (And, in any event, Oracle has not disclosed any expert opinions that Java practices the patents.) For at least these reasons, Google cannot stipulate that Java practices the '104, '205, '520, and '720 patents.

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Google's response to Oracle's disclosures lays out its position on the various patents in detail. See Appendix B. Rather than attempting to rebut Oracle's long-winded response, which was first provided after the close of business on Thursday night, Google focuses below on the crux reasons why it cannot stipulate to Oracle's practice of the remaining four patents.

The '104, '205, and '720 patents. At bottom, Google cannot agree that Oracle practices these patents because Google and Oracle read the claims differently. That is apparent from the non-infringement reports. Specifically, the problems are as follows:

  • '104 Patent: Google disputes that Android contains symbolic references in the instructions. Instead, Android uses indexes into tables, which even Oracle's expert Dr. Mitchell agrees are numeric references. Because the identified Java products also do not use symbolic references in the instructions, and instead only uses indexes into tables, Google cannot agree that Oracle practices the '104 Patent.

  • '205 Patent: Google disputes that Android performs runtime optimizations that replace virtual machine instructions. The code identified by Oracle also fails to perform such optimizations, such that Google cannot agree that Java practices the '205 patent. In fact, Google elicited deposition testimony from one of the inventors that the invention disclosed in the '205 patent was not effective and therefore never implemented in any released version of a Java product.

  • '720 Patent: As highlighted in the claim construction briefing, Google contends that the asserted claims require a class loader capable of runtime compilation of source code into Java classes. Oracle argues that the class loader only need be capable of loading classes. The Java code that Oracle has identified only meets Oracle's interpretation of the asserted claims; it does not perform runtime compilation of source code into classes as Google contends. As such, Google cannot agree that the code Oracle has identified practices the '720 patent.

Notably, during the meet-and-confer procedure, Google previewed that the parties' differing positions would likely mean that Google could not stipulate as to Oracle's practice of these patents. Oracle can hardly feign surprise that Google cannot agree to stipulate as to these patents.

Now Oracle contends that, because Google did not submit the claim construction dispute to the Court, Google's experts cannot take the position that the plain meaning of the claims differs from what Oracle's experts say they mean. There is no support for Oracle's position. Nor has Oracle ever raised this complaint before, despite being aware of Google's experts' reading of the claims since last September. Simply put, Google and Oracle differ in their reading of the claims on Android, such that Google cannot stipulate that those same claims cover any Java product.

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The '520 and '720 patents. In discovery, Oracle refused to present a 30(b)(6) witness on its use of these patents, claiming — remarkably — that no one at Oracle had such knowledge. Oracle then expressly stated that it would not present any Oracle officer or employee at trial to testify as to alleged use by Oracle of these patents, while apparently purporting to reserve the right to elicit such testimony from non-Oracle personnel, or from expert witnesses. But Oracle never disclosed any expert testimony on its own alleged practice of these patents (or any of the other four asserted patents, for that matter). And when Oracle served its disclosures on Google, it took the position that it would have current Oracle employees offer testimony as to its use of these patents. When asked about this about-face in the meet and confer, Oracle's counsel took the position that this was just more convenient than offering expert testimony or the testimony of inventors. But Oracle can offer neither of those things; the inventors are not on Oracle's witness list, and its experts have disclosed no opinions relating to the practice of the patents. In essence, for "convenience," Oracle is now asking to re-open discovery many months after it has closed so that it can present self-serving testimony that it refused to provide the first time around. With both fact and expert discovery long since complete, it is too late for Oracle's change of heart; Oracle's gamesmanship on these patents should be rejected.

Beyond these crux issues lie a variety of discovery failures. These failures make Oracle's claims that it practices the remaining four patents impossible for Google to confirm and Oracle to prove at trial. As discussed in more detail in Google's Disclosure (Ex. B), these failures include:

  • The question of whether Oracle's products practice the patents is a matter of expert opinion. Yet Oracle never submitted any expert reports regarding Oracle's alleged practice of the patents.

  • Oracle has, at most, fact witnesses who cannot opine regarding its alleged practice of the asserted claims. See Fed. R. Evid. 701; Fresenius Medical Care Holdings, Inc. v. Baxter Int'l, Inc., No. 03-cv-1431-SBA, 2006 WL 1330002 at *3 (N.D. Cal. May 15, 2006) (forbidding a lay witness from comparing a device to a patent claim (citing Rules 701 and 702)). Many of those witnesses admitted that they are not qualified to opine on the asserted claims, and Oracle's counsel objected to questions about Oracle's practice of those claims as calling for expert testimony.

  • Even Oracle's purported fact witnesses aren't qualified to testify about the alleged use of particular code in particular products because they are not percipient witnesses. They have been spoon-fed by Oracle's counsel for the purpose of offering testimony about use of the asserted patents, but have no personal knowledge about which code was ultimately implemented in product versions that

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    were commercially released and actually used. As such, their testimony is not admissible. See Pacheco v. Homecomings Fin., LLC, No. 08-cv-3002, 2010 U.S. Dist. LEXIS 64400, at *10 (N.D. Cal. June 29, 2010) ("The testimony of a witness who does not have personal knowledge of the subject of his or her testimony is inadmissible." (citing Fed. R. Evid. 602)), aff'd, 2011 U.S. App. LEXIS 25826 (9th Cir. Dec. 27, 2011).

  • Finally, Oracle's Disclosures rely on information that it withheld during discovery. Specifically, Oracle's 30(b)(6) witnesses on "[e]vidence of ... actual use of the invention(s) allegedly set forth in the asserted claims" could not testify regarding Oracle's practice of any asserted claims. Oracle is bound by that testimony. See Calpine Corp. v. Ace Am. Ins. Co., No. 05-cv-00984-SI, 2007 U.S. Dist. LEXIS 75985 at *23-24 (N.D. Cal. Oct. 12, 2007) ("Where a party seeks to depose a corporation, the corporation shall designate a person to testify to matters 'known or reasonably available' to the corporation. Fed. R. Civ. P. 30(b)(6). The answers given by the person designated by the corporation in a Rule 30(b)(6) deposition are binding on the corporation." (emphasis added)).

Given these issues, Google cannot stipulate that Oracle practices the patents — it simply does not believe that to be the case based on the parties' differing reading of the claims and the failures in Oracle's discovery disclosures.

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Dated: January 27, 2011

MORRISON & FOERSTER LLP
By: /s/ Marc David Peters

MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
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BOIES, SCHILLER & FLEXNER LLP
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ORACLE CORPORATION
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[phone]
[fax]

Attorneys for Plaintiff
ORACLE AMERICA, INC.

(26)

Dated: January 27, 2011

KEKER & VAN NEST LLP

By: /s/ Eugene M. Paige

SCOTT T. WEINGAERTNER (Pro Hac Vice)
[email]
ROBERT F. PERRY
[email]
BRUCE W. BABER (Pro Hac Vice)
[email]
[address]
[phone]
[fax]

DONALD F. ZIMMER, JR. (SBN 112279)
[email]
CHERYL A. SABNIS (SBN 224323)
[email]
KING & SPALDING LLP
[address]
[phone]
[fax]

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

KEKER & VAN NEST LLP
ROBERT A. VAN NEST (SBN 84065)
[email]
CHRISTA M. ANDERSON (SBN184325)
[email]
DANIEL PURCELL (SBN 191424)
[email]
[address]
[phone]
[fax]

Attorneys for Defendant
GOOGLE INC.

(27)

[See PDF for attestation]

(28)

1 To avoid burdening the Court with additional paper, the parties agreed not to submit deposition transcripts and other materials with this filing, but are prepared to file copies of the cited documents promptly if the Court wishes.
2 Google also asserts generally that the 30(b)(6) witnesses are not "qualified" because they could not answer questions directed to "Oracle's actual practice of the patent claims." (GoogleResponse at 3.) These types of questions are improper because they call for a legal conclusion that depends on the legal construction of the patent. As noted above, Dr. Kessler and the other 30(b)(6) witnesses all properly testified as to the products that practiced the technology described in the patents. This is how Oracle will present its evidence at trial, as Oracle informed the Court on Nov. 30, 2011. (ECF No. 634.) Oracle's experts, as part of their testimony regarding infringement and validity, will discuss the technology within the scope of the claims (as informed by the Court's claim constructions). The Java engineers will testify as to which Oracle products include the relevant technologies.
3 Mr. Pampuch was designated on two other topics that also related solely to JavaOS, Topic 13, which concerned Oracle's production of JavaOS documents, and Topic 14, which concerned the retention of JavaOS 1.0 source code. (See Pampuch Dep. 12:12-18; Google 7/9/2011 and 7/18/2011 30(b)(6) Deposition Notices.) No deposition was taken with respect to the '702 patent under Google's overbroad topic 11 ("evidence of conception, reduction to practice or actual use" of the inventions of all the asserted claims).
4 See, e.g., Oracle Java Archive, http://www.oracle.com/technetwork/java/archive-139210.html (downloadable executables); Java 2 SE 1.4.2 ClassLoader API documentation, available at http://docs.oracle.com/javase/1.4.2/docs/api/java/lang/ClassLoader.html (documentation showing creation of protection domains and association with classes).

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

Appendix A
Oracle’s Disclosure of Products
Practicing Patent Claims

MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[email
MARC DAVID PETERS (Bar No. 211725)
[email]
DANIEL P. MUINO (Bar No. 209624)
[email]
[address, phone, fax]

BOIES, SCHILLER & FLEXNER LLP
DAVID BOIES (Admitted Pro Hac Vice)
[email]
[address, phone, fax]
STEVEN C. HOLTZMAN (Bar No. 144177)
[email]
[address, phone, fax]

ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[email]
DEBORAH K. MILLER (Bar No. 95527)
[email]
MATTHEW M. SARBORARIA (Bar No. 211600)
[email]
[address, phone, fax]

Attorneys for Plaintiff
ORACLE AMERICA, INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

____________________

ORACLE AMERICA, INC.

Plaintiff,

v.

GOOGLE, INC.

Defendant.

_________________

Case No. CV 10-03561 WHA

ORACLE’S DISCLOSURE OF PRODUCTS
PRACTICING PATENT CLAIMS

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

Pursuant to the Court’s December 6, 2011 Supplemental Order Regarding Patenting Marking (Dkt. No. 641) and the agreement between the parties as set forth in their December 30, 2011 Joint Statement Regarding Supplemental Order Regarding Patenting Marking (Dkt. No. 661), Plaintiff Oracle America, Inc. (“Oracle”) hereby submits the following disclosure regarding Oracle products, Oracle-licensed products, Sun products, and Sun-licensed products (“Oracle Products”) that practice or have practiced the asserted claims of the patents-in-suit (“claims-in-suit”).

I. DISCLOSURE OF ORACLE PRODUCTS PRACTICING ASSERTED CLAIMS

Oracle here identifies instrumentalities, source code citations and/or documentation, fact witnesses who possess information supporting Oracle’s contentions regarding Oracle Products that practice the claims-in-suit, and a summary of testimony Oracle intends to elicit at trial from those witnesses regarding those products’ practice of the claims-in-suit. The identified products have numerous releases and versions – including for various platforms (x86, SPARC, etc.) – that do not vary substantively as to their implementation of the patented techniques at issue. Accordingly, the citations below are exemplary, not exhaustive, and are intended to guide Google’s evaluation of the use of the patented inventions in Oracle Products. The identification of particular witnesses in association with particular products below represents Oracle’s present intention; Oracle reserves the right to substitute witnesses with respect to the Oracle products, in accordance with the Joint Final Pretrial Statement, to accommodate the needs of the trial and the witnesses’ schedules.

1

A. The ’104 Patent

The following Oracle Products practice the asserted claims of the ’104 patent, as exemplified by the identified source code citations and/or documentation:

Identified
Instrumentality
Source Code Citations/
Documentation
Testifying Fact Witness And
Summary
JDK 1.0 and subsequent
versions

JRE 1.1.1 and
subsequent versions

HotSpot 1.0 and
subsequent versions

JDK 1.0 version:
classinitialize.c
interpreter.c

JDK 1.1 version:
classinitialize.c
executeJava.c
interpreter.c

JDK 1.2 version:
classinitialize.c
executeJava.c
interpreter.c

HotSpot version:
interpreterRuntime.cpp
templateTable.cpp
templateTable_sparc.cpp

Peter Kessler will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’104 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’104 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions. He will describe the major components of the JDK, including the Java SE class libraries and Java Virtual Machine (JVM), as well as the inclusion of and transition to the HotSpot virtual machine.

Peter Kessler will testify that the identified versions of JRE encompass the JDK and therefore implement the asserted claims in the same way.

Java SE for Embedded 1.4.2_11 and subsequent versionssee above and belowRobert Vandette will testify that the identified versions of Java SE Embedded are based on Java SE and the HotSpot virtual machine sources and therefore implement the asserted claims in the same way. He will testify that some releases used the CDC virtual machine technology (known as CVM), and therefore implement the asserted claims in the same way. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not

2

Identified
Instrumentality
Source Code Citations/
Documentation
Testifying Fact Witness And
Summary
.. vary substantively as to the features that implement the claimed invention
J2EE 1.2 (later called
Java EE) and
subsequent versions
see aboveMark Reinhold will testify that the identified versions of Java EE are bundled with Java SE and the JDK and therefore implement the asserted claims in the same way. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions.
Java Real Time 1.0
and subsequent
versions
see aboveJohn Pampuch will testify that the identified versions of Java Real Time are based on JDK 1.4 and HotSpot (and subsequent versions) and therefore implement the asserted claims in the same way. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions.
CDC RI 1.0 and CDC
HI 1.0 and
subsequent versions
of each

CDC AMS 1.0,
1.0_1, and 1.0_2
(Personal Basis
Profile and Personal
Profile versions)

Personal Profile RI
1.0 and subsequent
versions

Personal Profile HI
1.1.1

Personal Basis

constantpool.c
constantpool.h
executejava_split1.c (or
executejava_standard.c or
executejava.c)
interpreter.h
quicken.c
Noel Poore will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’104 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’104 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions.

3

Identified
Instrumentality
Source Code Citations/
Documentation
Testifying Fact Witness And
Summary
Profile RI 1.0 and
subsequent versions

Personal Basis
Profile HI 1.1.1

Foundation Profile
1.0 and subsequent
versions

CDC ToolKit 1.0 or
Java ME SDK 3.0
EA and subsequent
versions

..
CLDC RI 1.0 and 1.1

WTK 1.0 or Java ME
SDK 3.0 EA and
subsequent versions

CLDC HI 1.0 and
subsequent versions

Oracle Java Wireless
Client (formerly Sun
Java Wireless Client)
1.0 and subsequent
versions

For CLDC RI and WTK listed
versions:
bytecodes.c
cache.c
cache.h
interpret.c
interpret.h

For CLDC HI and Oracle Java
Wireless Client listed
versions:
Interpreter_c.cpp
TemplateTable.cpp
TemplateTable.hpp
TemplateTable_arm.cpp
TemplateTable_i386.cpp
TemplateTable_sh.cpp
TemplateTable_thumb2.cpp

Mark Reinhold will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’104 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’104 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions.
PersonalJava 1.0 and
subsequent versions

EmbeddedJava 1.0
and subsequent
versions

JavaOS 1.0 (and
variants, including
Java PC) and
subsequent versions

classinitialize.c
executeJava.c
interpreter.c
John Pampuch will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’104 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’104 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not

4

Identified
Instrumentality
Source Code Citations/
Documentation
Testifying Fact Witness And
Summary
. .vary substantively as to the features that implement the claimed inventions.
Java Card connected
platform 3.0 and
subsequent versions
bytecodes.c
infrequent_bytecodes.c
execute.c
John Pampuch will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’104 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’104 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions.

B. The '205 Patent

The following Oracle Products practice the asserted claims of the ’205 patent, as exemplified by the identified source code citations and/or documentation:

Identified
Instrumentality
Source Code Citations/
Documentation
Testifying Fact Witness And
Summary
JDK 1.2 and
subsequent versions

JRE 1.2 and
subsequent versions

HotSpot 1.0 and
subsequent versions

HotSpot 1.0 version:
instanceKlass.cpp
interp_masm_sparc.cpp
interpreter_sparc.cpp
interpreterRuntime.cpp
linkResolver.cpp
methodOop.cpp
methodOop.hpp
nmethod.hpp
rewriter.cpp
templateTable.cpp
templateTable_sparc.cpp
vm_operations.cpp

Another example:
bytecode.hpp
globals.hpp
instanceKlass.cpp

Peter Kessler will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’205 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’205 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions. He will describe the major components of the JDK, including the Java SE class libraries and Java Virtual Machine (JVM), as well as the

5

Identified
Instrumentality
Source Code Citations/
Documentation
Testifying Fact Witness And
Summary
.rewriter.cpp
templateTable.cpp
templateTable_i486.cpp

HotSpot 2.0 version:
ciEnv.cpp
interpreter_sparc.cpp
methodOop.cpp
methodOop.hpp
templateTable.cpp
templateTable_sparc.cpp

Another example:
bytecode.hpp
globals.hpp
instanceKlass.cpp
rewriter.cpp
templateTable.cpp
templateTable_i486.cpp

JDK 1.3 to 1.6 example:
templateTable_i486.cpp

JDK 7 example:
templateTable_x86_32.cpp

JDK 8 example:
instanceKlass.cpp
rewriter.cpp
templateTable.cpp
templateTable_x86_32.cpp

inclusion of and transition to the HotSpot virtual machine.

Peter Kessler will testify that the identified versions of JRE encompass the JDK and therefore implement the asserted claims in the same way.

Java SE for
Embedded 1.4.2 and
subsequent versions
see above and belowRobert Vandette will testify that the identified versions of Java SE Embedded are based on Java SE and the HotSpot virtual machine sources and therefore implement the asserted claims in the same way. He will testify that some releases used the CDC virtual machine technology (known as CVM), and therefore implement the asserted claims in the same way. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not

6

Identified
Instrumentality
Source Code Citations/
Documentation
Testifying Fact Witness And
Summary
.. vary substantively as to the features that implement the claimed inventions.
J2EE 1.2 (later called
Java EE) and
subsequent versions
see aboveMark Reinhold will testify that the identified versions of Java EE are bundled with Java SE and the JDK, and therefore implement the asserted claims in the same way. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions.
Java Real Time
System 1.0 and
subsequent versions
see above John Pampuch will testify that the identified versions of Java Real Time are based on JDK 1.4 and HotSpot (and subsequent versions) and therefore implement the asserted claims in the same way. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions.
CDC HI 1.1.1 and
subsequent versions

Personal Profile HI
1.1.1

Personal Basis
Profile HI 1.1.1

CDC AMS 1.0,
1.0_1, and 1.0_2
(Personal Basis
Profile and Personal
Profile versions)

classcreate.c
executejava_standard.c
interpreter.h
jitcompile.c
jitemitter_cpu.c
jitgrammarrules.jcs
jit_common.c
jit_common.h
jit_cpu.S
Noel Poore will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’205 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’205 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions.
CLDC HI 1.1 and
subsequent versions

CLDC RI 1.1.1

InterpreterRuntime.cpp
Method.cpp
Method.hpp
SharedStubs_arm.cpp
SharedStubs_i386.cpp
Mark Reinhold will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’205 patent. He will explain the function and

7

Identified
Instrumentality
Source Code Citations/
Documentation
Testifying Fact Witness And
Summary
. SharedStubs_sh.cpp
SharedStubs_thumb2.cpp
TemplateTable.cpp
TemplateTable.hpp
TemplateTable_arm.cpp
TemplateTable_i386.cpp
TemplateTable_sh.cpp
TemplateTable_thumb2.cpp
operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’205 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions.

C. The '702 Patent

The following Oracle Products practice the asserted claims of the ’702 patent, as exemplified by the identified source code citations and/or documentation:

Identified
Instrumentality
Source Code Citations/
Documentation
Testifying Fact Witness And
Summary
JavaOS 1.1 (and
variants, including
Java PC)
class.c
ClassClass.java
ClassConstant.java
classinitialize.c
classloader.c
ConstantPool.java
DoubleValueConstant.java
FieldConstant.java
FileLoader.java
FMIrefConstant.java
InterfaceConstant.java
JavaOSVM.java
Jld.java
Main.java
MethodConstant.java
MultiClass.java
NameAndTypeConstant.java
SingleValueConstant.java
UnicodeConstant.java
John Pampuch will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’702 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’702 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions.
Java Card platform
2.1 and subsequent
versions
PackageConverter.java
ClassConverter.java
JcConstantPool.java
John Pampuch will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’702 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the

8

Identified
Instrumentality
Source Code Citations/
Documentation
Testifying Fact Witness And
Summary
..’702 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions.

D. The '476 Patent

The following Oracle Products practice the asserted claims of the ’476 patent, as exemplified by the identified source code citations and/or documentation:

Identified
Instrumentality
Source Code Citations/
Documentation
Testifying Fact Witness And
Summary
JDK 1.2 and
subsequent versions

JRE 1.2 and
subsequent versions

ProtectionDomain.java
Permission.java
BasicPermission.java
AccessController.java
SecurityManager.java
Mark Reinhold will testify regarding how the identified instrumentalities practice the claim-in-suit of the ’476 patent. In doing so, he will refer to the identified source code citations and documentation to explain how the identified instrumentalities practice the claim-in-suit of the ’476 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions. He will describe the major components of the JDK, including the Java SE class libraries and Java Virtual Machine (JVM).

Mark Reinhold will testify that the identified versions of JRE encompass the JDK and therefore practice the patented techniques of the claim-in-suit in the same way.

Java SE for
Embedded 1.4.2_11
and subsequent
versions
see above and belowRobert Vandette will testify that the identified versions of Java SE Embedded are based on Java SE and the HotSpot virtual machine sources and therefore implement the asserted claims in the same way. He will testify that some releases used the CDC virtual machine technology (known as CVM), and therefore implement the asserted claims in the same

9

Identified
Instrumentality
Source Code Citations/
Documentation
Testifying Fact Witness And
Summary
..way. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions.
J2EE 1.2 (later called
Java EE) and
subsequent versions
see aboveMark Reinhold will testify that the identified versions of Java EE are bundled with Java SE and the JDK and therefore implement the asserted claims in the same way. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions.
Java Real Time
System 1.0 and
subsequent versions
see aboveJohn Pampuch will testify that the identified versions of Java Real Time are based on JDK 1.4 and HotSpot (and subsequent versions) and therefore implement the asserted claims in the same way. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions.
CDC RI 1.0 and
CDC-HI 1.0, and
subsequent versions

CDC AMS 1.0, 1.0_1,
and 1.0_2 (Personal
Basis Profile and
Personal Profile
versions)

Personal Profile RI
1.0 and subsequent
versions

Personal Profile HI
1.1.1

Personal Basis Profile
RI 1.0 and subsequent
versions

ProtectionDomain.java
Permission.java
BasicPermission.java
AccessController.java
SecurityManager.java
Noel Poore will testify that the identified versions of the listed instrumentalities are based on JDK 1.3 and 1.4, and therefore practice the patented techniques of the claim-in-suit of the ’476 patent in the same way. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions.

10

Identified
Instrumentality
Source Code Citations/
Documentation
Testifying Fact Witness And
Summary
Personal Basis Profile
HI 1.1.1

Foundation Profile
1.0.2 and subsequent
versions

CDC Toolkit 1.0 and
Java ME SDK 3.0 EA
and subsequent
versions

..
Java Card connected
platform 3.0 and
subsequent versions
ProtectionDomain.java
Permission.java
BasicPermission.java
AccessController.java
John Pampuch will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’476 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’476 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions.

E. The '520 Patent

The following Oracle Products practice the asserted claims of the ’520 patent, as exemplified by the identified source code citations and/or documentation:

Identified
Instrumentality
Source Code Citations/
Documentation
Testifying Fact Witness And
Summary
CLDC HI 1.1.3
and subsequent
versions

CLDC RI 1.1.1 and
subsequent
versions

BytecodeOptimizer.cpp
BytecodeOptimizer.hpp
Bytecodes.hpp
TemplateTable.cpp
Mark Reinhold will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’520 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’520 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions.

11

Identified
Instrumentality
Source Code Citations/
Documentation
Testifying Fact Witness And
Summary
Java Card platform
2.1 and subsequent
versions
ClinitConverter.java
ClassConverter.java
JcConstantPool.java
John Pampuch will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’520 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’520 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions.

F. The '720 Patent

The following Oracle Products practice the asserted claims of the ’720 patent, as exemplified by the identified source code citations and/or documentation:

Identified
Instrumentality
Source Code Citations/
Documentation
Testifying Fact Witness And
Summary
CDC AMS 1.0, 1.0_1,
1.0_2 (Personal Basis
Profile and Personal
Profile versions)
ansi_java_md.c
mtask.c
Warmup.java
mtask.html
Erez Landau will testify in support of Oracle’s contention that the identified instrumentalities practice the asserted claims of the ’720 patent. He will explain the function and operation of the features of the products, with reference to source code and documentation, that implement the asserted claims of the ’720 patent. He will further testify that although the identified instrumentalities have a number of releases and versions, these do not vary substantively as to the features that implement the claimed inventions.

Dated: January 6, 2012

MICHAEL A. JACOBS
MARC DAVID PETERS
MORRISON & FOERSTER LLP

By:/s/ Marc David Peters

Attorneys for Plaintiff
ORACLE AMERICA, INC.

12

CERTIFICATE OF SERVICE

[see PDF]

13-14

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

Appendix B

Google’s Response to Oracle’s Position on
Alleged Practice of the Asserted Patent Claims

ROBERT A. VAN NEST (SBN 84065)
[email]
CHRISTA M. ANDERSON (SBN 184325)
[email]
KEKER & VAN NEST LLP
[address, phone, fax]

DONALD F. ZIMMER, JR. (SBN 112279)
[email]
CHERYL A. SABNIS (SBN 224323)
[email]
KING & SPALDING LLP
[address, phone, fax]

SCOTT T. WEINGAERTNER (Pro Hac Vice)
[email]
ROBERT F. PERRY
[email]
BRUCE W. BABER (Pro Hac Vice)
[email]
KING & SPALDING LLP
[address, phone, fax]

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

Attorneys for Defendant
GOOGLE INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

__________________

ORACLE AMERICA, INC.

Plaintiff,

v.

GOOGLE INC.

Defendant.

________________

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

Honorable Judge William Alsup

GOOGLE’S RESPONSE TO ORACLE’S
POSITION ON ALLEGED PRACTICE OF
THE ASSERTED PATENT CLAIMS

Google provides the following response to Oracle’s Disclosure of Products Practicing Patent Claims (“Oracle’s Disclosures”) pursuant to the Court’s December 6, 2011 Supplemental Order Regarding Patenting Marking (Dkt. No. 641) and the parties’ Joint Statement (Dkt. No. 661).

Pursuant to paragraph 2 of the Joint Statement, Google contends that Oracle cannot prove at trial that any of the products identified in Oracle’s Disclosures practice any of the 26 asserted patent claims. Oracle’s Disclosures indicate that it intends to prove at trial its alleged practice of the patents by way of testimony that it refused to provide during discovery. Moreover, Oracle has not identified any qualified fact or expert witnesses who can testify with respect to its contentions. Accordingly, Google cannot stipulate that any of the enumerated Oracle products practice any of the patents claims. And should the Court or jury find that any of the enumerated products do practice any of the patents claims, Oracle is not entitled to past damages pursuant to 35 U.S.C. § 287, for the reasons set forth in Google’s Motion for Summary Judgment on this issue (Dkt. No. 552).

I. GENERAL OBJECTIONS REGARDING ORACLE’S DISCLOSURES

First, according to the Joint Statement (Dkt. 661 and ¶ 1), “Oracle [is expected to] provide source code citations and/or other documentation supporting Oracle’s contentions that the Oracle Products practice the asserted claims.” But Oracle has neither provided source code citations nor identified any documentation in support of its contentions. Instead, Oracle simply provides a laundry list of names of various source code files, with no indication as to what code in those files allegedly performs the claimed functionality (much less how). This approach has hampered Google in evaluating the technical merits of Oracle’s contentions with respect to many of the asserted claims.

Second, Oracle’s Disclosures reflect an intention by Oracle to present at trial testimony that (i) its witnesses were unable to, or refused to, provide at Rule 30(b)(6) depositions, and (ii) it affirmatively represented that it would not present at trial.

Third, the Federal Rules of Evidence provide that “[a] witness may not testify to a matter

1

unless evidence is introduced sufficient to support a finding that the witness has personal knowledge of the matter.” (Id. at Rule 602 (emphasis added).) “‘Personal knowledge’ means knowledge of a fact perceived by the senses, by one who has had an opportunity to observe, and must have actually observed the fact.” Rosebrock v. Beiter, No. 10-cv-01878, 2011 U.S. Dist. LEXIS 61758, at *4 (C.D. Cal. May 26, 2011) (quoting Tilei v. Wan, No. 1:06-CV-00776, 2011 U.S. Dist. LEXIS 5686 (E.D. Cal. Jan. 13, 2011)). Oracle proposes to present employees to testify as fact witnesses regarding its patents and the alleged use of particular code in particular products with respect to which they have not had experience outside the context of this litigation that would qualify them as percipient witnesses. None of them are named inventors or were otherwise involved with the creation of the code at issue during the time period at issue. Instead, the proposed testimony will have been carefully spoon-fed by Oracle’s counsel for the sole purpose of offering what is in effect attorney argument from the witness stand. Whether or not the identified witnesses may have worked in Oracle’s large Java products group, they were not the engineers who implemented the source code purportedly related to the asserted patent claims. Nor do they have personal knowledge about which code was ultimately implemented in product versions that were commercially released and actually used. As a result, the identified witnesses are not qualified from their ordinary business experience as fact witnesses for any of the topics summarized throughout Oracle’s Disclosures, and their testimony is not admissible. See Pacheco v. Homecomings Fin., LLC, No. 08-cv-3002, 2010 U.S. Dist. LEXIS 64400, at *10 (N.D. Cal. June 29, 2010) (“The testimony of a witness who does not have personal knowledge of the subject of his or her testimony is inadmissible.” (citing Fed. R. Evid. 602)), aff’d, 2011 U.S. App. LEXIS 25826 (9th Cir. Dec. 27, 2011).

Moreover, even if they had percipient testimony to offer, the employees identified by Oracle cannot opine as fact witnesses on Oracle’s practice of the 26 asserted claims. See Fed. R. Evid. 701 (providing that if a “witness is not testifying as an expert, the witness’ testimony in the form of opinions or inferences is limited to those opinions or inferences which are (a) rationally based on the perception of the witness, (b) helpful to a clear understanding of the witness’

2

testimony or the determination of a fact in issue, and (c) not based on scientific, technical, or other specialized knowledge within the scope of Rule 702.” (emphasis added)).

Fourth, Oracle cannot offer these witnesses to provide expert opinion regarding its alleged practice of asserted patent claims (which requires application of claim language to commercial products), because it did not submit timely expert reports disclosing them as prepared to offer such testimony as required by the Federal Rules and the Court. See generally Fed. R. Civ. P. 26(a)(2)(B); Case Management Order, Dkt No. 56 at ¶ 11 (“[a]t trial, the direct testimony of experts will be limited to the matters disclosed in their reports.”). Moreover, these witnesses openly admitted during depositions that they were not qualified to opine on the asserted patent claims. (Pampuch Dep. at 119:17-22, 125:12-126:23, 127:15-128:22, 134:5-9 and 146:12-13; Kessler Dep. at 52:13-19, 58:20-21, 59:13-60:18; Poore Dep. at 25:22-13, 34:20-35:3; Vandette Dep. at 74:12-77:5, 88:7; Landau Dep. at 50:14-51:7). In fact, Oracle’s counsel objected to questions about Oracle’s actual practice of the patent claims on the grounds that it called for expert testimony. (See, e.g., Kessler Dep. at 60:5-6, 60:16-17, 60:25, 61:15-20, 79:9- 12.) And Oracle cannot claim that they are merely laying the foundation for its expert witnesses to opine as to the use of the patented methods in Oracle products, because none of those retained experts have expressed any opinion on the subject in their expert reports.

II. TECHNICAL AND EVIDENTIARY OBJECTIONS REGARDING THE ASSERTED
CLAIMS

A. The ‘104 Patent

Google maintains that the products listed by Oracle cannot be proven at trial to practice the asserted claims of the ‘104 patent. Oracle’s Disclosures do not provide the information required by the Joint Statement (Dkt. 661 and ¶ 1) because they include only generic descriptions of testimony to be offered and fail to actually cite any source code or documentation. As such, Google is unable to accurately evaluate and respond to Oracle’s Disclosures. Furthermore, Oracle cannot offer testimony at trial regarding the subject matter in its disclosures because its designated Rule 30(b)(6) witness refused to provide that information during discovery, and its

3

witnesses are not qualified fact witnesses on the topics identified in Oracle’s Disclosures. In addition, Oracle failed to submit any expert report regarding its alleged practice of the patent, and may not offer any such testimony opining on its practice of the asserted claims.

As a threshold matter, Oracle failed to produce a witness capable of supporting its contentions that Oracle has practiced asserted claims of the’104 patent. Oracle designated Peter Kessler as its 30(b)(6) witness regarding “[e]vidence of conception, reduction to practice, and actual use of the invention(s) allegedly set forth in the asserted claims” (emphasis added) in connection with the ‘104 patent. Although Dr. Kessler claimed at his deposition that the JDK, JRE, and HotSpot products implemented some form of symbolic resolution for class names, method names, and field names, he could not identify a single function or source code file demonstrating actual use. And for all of the other Oracle products now identified in Oracle’s Disclosures as practicing the ‘104 patent (e.g., J2EE, CDC, CLDC, etc.), he could not even testify whether these products implemented symbolic resolution or where. (Kessler Dep. at 193:21-195-14; see also id. at 201:1-203:1.) In addition, Dr. Kessler could not identify whether specific source code was even released in commercial versions of Oracle products. (See id.)

In short, Dr. Kessler was unable to—or refused to—testify at deposition regarding the very facts that Oracle now indicates it wishes him to offer at trial. Moreover, despite being identified as Oracle’s Rule 30(b)(6) witness on the topic, he could not—or refused to—testify regarding other products allegedly implementing the ‘104 patent—testimony that Oracle now seeks to present through other witnesses. (See id.) This is wholly improper. Oracle is bound to the 30(b)(6) testimony of its Rule 30(b)(6) designee and cannot offer testimony at trial that it withheld during discovery. See Calpine Corp. v. Ace Am. Ins. Co., No. 05-cv-00984-SI, 2007 U.S. Dist. LEXIS 75985 at *23-24 (N.D. Cal. Oct. 12, 2007) (“Where a party seeks to depose a corporation, the corporation shall designate a person to testify to matters ‘known or reasonably available’ to the corporation. Fed. R. Civ. P. 30(b)(6). The answers given by the person designated by the corporation in a Rule 30(b)(6) deposition are binding on the corporation.” (emphasis added)); San Francisco Bay Area Rapid Transit Dist. v. Spencer, No. 04-cv-04632-SI,

4

2006 U.S. Dist. LEXIS 73135 at *2 (N.D. Cal. Sept. 25, 2006) (same); Gales v. WinCo Foods, 09-cv-05813-CRB, 2011 U.S. Dist. LEXIS 96125 at *16, n. 3 (N.D. Cal. Aug. 26, 2011) (“As a 30(b)(6) witness, her testimony is a sworn corporate admission binding on the corporation.”); Lam v. City & County of San Francisco, No. 08-cv-04702 PJH-LB, 2011 U.S. Dist. LEXIS 135538 at *2 (N.D. Cal. Nov. 17, 2011) (“the scope of the deposition in the notice is the minimum about which the witness must be prepared to testify. And a corporation has a duty under Rule 30(b)(6) to provide a witness who is knowledgeable in order to provide binding answers on behalf of the corporation.” (citations omitted)).

It was also apparent from Dr. Kessler’s deposition that he had no percipient knowledge of the functionality in Oracle’s products allegedly implementing the ‘104 patent; instead, he only knew about some source code that Oracle’s counsel directed him to in advance of his 30(b)(6) deposition, and was unable to testify regarding which code was actually released in products, as opposed to development or test code that was never implemented. (See id. at 183:23-184:2) Thus, Dr. Kessler is by no means a fact witness qualified to testify regarding the topics for which he has been identified.

From a technical standpoint, Google’s non-infringement expert, Dr. David August of Princeton University, described the claimed invention in a manner that differs from the view adopted by Oracle’s Disclosures (and its infringement contentions). (See, e.g., August 25, 2011 Expert Report of David August at ¶¶ 59-73.) Notwithstanding Oracle’s failure to provide any specific source code citations, Google is not aware of any code in the files identified by Oracle’s disclosure that practices the ‘104 patent and implements functionality within the scope of the asserted claims in accordance with Dr. August’s stated opinions. As such, Google cannot stipulate to Oracle’s practice of the claims “for all purposes and phases of trial.”

In addition, Google’s invalidity expert, Dennis Allison of Stanford University, stated in his report that:

“[T]he ‘104 patent teaches that the symbolic reference is embedded in the interpreted instruction rather than the instruction containing a reference (an address) of a descriptor or value in a constant pool. [See, e.g. FIG 8]. The claims of the ‘685 patent [from which the ‘104 patent reissued] and the specification are consistent in this description. I

5

understand that Oracle has alleged infringement of the ‘104 patent by references that are not embedded in the interpreted instruction. It is my opinion that this reading of the ‘104 patent claims is not disclosed anywhere in the original ‘685 patent.” (August 8, 2011 Expert Report of Dennis Allison at ¶¶ 244-245.)
Although Mr. Allison did not specifically address Oracle’s products, his expert report discusses the proper scope of the symbolic resolution technique set forth in the asserted claims of the ‘104 patent, and it is therefore evident that the functionality identified by Oracle with respect to its identified instrumentalities (Oracle’s Disclosures at 2-5) is beyond the scope of the ‘104 patent. In particular, rather than having symbolic references embedded in the interpreted instruction as is taught by the ‘104 patent, the instructions in each of those instrumentalities contains a reference to a descriptor or value in a constant pool.

In sum, not only does Google disagree with the technical merits of Oracle’s contentions, Oracle failed to identify a witness capable of supporting its contentions that Oracle has practiced asserted claims of the ‘104 patent. Nor has Oracle furnished an expert report regarding the alleged practice of this patent. Accordingly, Oracle cannot provide any testimony at trial (via experts or alleged fact witnesses) that opines on the practice of the asserted claims of the ‘104 patent.

B. The ‘205 Patent

Google maintains that the products listed by Oracle cannot be proven at trial to practice the asserted claims of the ‘205 patent. Oracle’s Disclosures do not provide the information required by the Joint Statement (Dkt. 661 and ¶ 1) because they include only generic descriptions of testimony to be offered and fail to actually cite any source code or documentation. Moreover, Oracle’s identification of a number of source code files is inconsistent with its identification of just a single file in response to Google Interrogatory No. 16. As such, Google is unable to accurately evaluate and respond to Oracle’s contentions. Furthermore, Oracle cannot offer testimony at trial regarding the subject matter in its disclosures because its designated Rule 30(b)(6) witness refused to provide that information during discovery, and its witnesses are not qualified fact witnesses on the topics identified in Oracle’s Disclosures. In addition, Oracle failed to submit any expert report regarding its alleged practice of the patent, and may not offer

6

any such testimony opining on its practice of the asserted claims.

There is no evidence that the functionality claimed in the ‘205 patent was ever implemented in a released product. Quite the contrary, code for the “go_native” snippets described in the ‘205 patent specification appears only in an “alpha1.5” development version of HotSpot 1.0 source code that was ultimately discarded and never released. One of the ‘205 patent’s inventors confirmed during deposition that it “[i]s not in HotSpot. We implemented it and we took it out and I believe it has never shipped in HotSpot, at least that is to the best of my recollection.” (Dep. of Robert Griesemer at 43:3-9 (emphasis added).) According to the inventor, “[t]he conclusion was that [implementing the snippets approach] was not worth the effort.” (Id. at 42:18-19.)

Oracle’s attempts to identify other functionality in its products as allegedly practicing the ‘205 patent are simply an end-run around Mr. Griesemer’s testimony that the concept behind the ‘205 patent was never practiced and “not worth the effort.” (Id.) After that deposition, Oracle responded to Google Interrogatory No. 16 by claiming that the ‘205 patent is implemented in JDK 1.2 by the fast_invokevfinal function in templateTable_i486.cpp of the HotSpot virtual machine. But the “fast_invokevfinal” routine identified by Oracle does not meet the claim elements of asserted claims 1 and 2. In any event, code and a supporting comment in the templateTable_i486.cpp file in many versions of the JDK shows suggests that the fast_invokevfinal function is disabled. As noted above, the other files now identified by Oracle were not referenced in Oracle’s interrogatory response.

Oracle presented Peter Kessler on August 4, 2011 as its designated witness for a Google 30(b)(6) deposition regarding “[e]vidence of conception, reduction to practice, and actual use of the invention(s) allegedly set forth in the asserted claims” (emphasis added) in connection with the ‘205 patent. In line with Oracle’s interrogatory response, Dr. Kessler identified only “fast_invokevfinal” in templateTable_i486.cpp for all versions of the JDK, and more broadly, for all of Oracle’s Java products. In particular, he stated “[t]here may well be other examples of my attorneys’ interpretation of the ‘205 in the source code, but the one that I know about is in

7

fast_invokevfinal.” (Kessler Dep. at 54:7-10; see also id. at 56:6-7 (“I’m not aware of any other code that we’ve asserted implements the ‘205.”); id. at 56:18-20 (“At the current time I’m only aware of Oracle asserting the ‘205 in the fast_invokevfinal.”); id. at 63:12-14 (“Oracle ... has not asserted any other code with respect to this patent”).) Furthermore, Dr. Kessler’s “understanding is that some versions of templateTable_i486.cpp practice the ‘205 and some don’t” and “Oracle cannot today identify the version of templateTable_i486.cpp ... [t]hat practices the asserted claims of the ‘205.” (See e.g., id. at 83:11-13 (emphasis added); id. at 85:13-18; id. at 96:21- 97:2.) Dr. Kessler could not testify as to whether the code allegedly practicing the ‘205 patent ever shipped in a product. (See id. at 110:21-23.) In addition, Dr. Kessler could not provide any information about the alleged implementation of the ‘205 patent in any of the other Java products identified in Oracle’s infringement contentions. (See id. at 178-181.) As such, Google cannot be expected to stipulate that the various alleged implementations of the ‘205 patent identified in Oracle’s Disclosures indeed practice the ‘205 patent.

In short, Dr. Kessler could not testify at deposition regarding the very facts that Oracle now wishes to have him offer at trial. As a Rule 30(b)(6) witness, he was not prepared to testify regarding other products allegedly implementing the ‘205 patent for which Oracle now seeks to present testimony through other employees, and Oracle cannot offer at trial testimony completely opposite the testimony provided during discovery on its behalf by its designated Rule 30(b)(6) witness. (See cases cited above with respect to the ‘104 patent.) It was also apparent from Dr. Kessler’s deposition that he had no experience through his everyday work at Oracle with the functionality in Oracle’s products allegedly implementing the ‘205 patent; instead, he knew about some source code that Oracle’s counsel directed him to consider in advance of his 30(b)(6) deposition, and was unable to testify regarding which code was actually released in products, as opposed to development or test code that was never implemented. (See Kessler Dep. at 36-37.) Thus, Dr. Kessler is not a fact witness qualified to testify regarding the topics for which he has been identified.

From a technical standpoint, Google’s non-infringement expert, Dr. August, described

8

the claimed invention in a manner that differs from the view adopted by Oracle’s disclosures (and its infringement contentions). (See, e.g., August 25, 2011 Expert Report of David August at ¶¶ 60-73.) As such, Google cannot stipulate to Oracle’s practice of the claims “for all purposes and phases of trial.” In addition, Dr. August specifically explained that functionality such as “inline caching” and “quick instructions” is not within the scope of the claims of the ‘205 patent. (Id. at ¶¶ 82-91.) Notwithstanding Oracle’s failure to provide any specific source code citations, Google is not aware of any code in the files identified by Oracle’s disclosure that practices the ‘205 patent and implements functionality within the scope of the asserted claims, in accordance with Dr. August’s stated opinions.

In sum, not only does Google disagree with the technical merits of Oracle’s contentions, Oracle failed to identify a witness capable of supporting its contentions that Oracle has practiced asserted claims of the ‘205 patent. Nor has Oracle furnished an expert report regarding the alleged practice of this patent. Accordingly, Oracle cannot provide any testimony at trial (via experts or alleged fact witnesses) that opines on the practice of the asserted claims of the ‘205 patent.

C. The ‘702 Patent

Google maintains that the products listed by Oracle cannot be proven at trial to practice the asserted claims of the ‘702 patent. Oracle’s Disclosures do not provide the information required by the Joint Statement (Dkt. 661 and ¶ 1) because they include only generic descriptions of testimony to be offered and fail to actually cite any source code or documentation. Moreover, the selection of source code files in Oracle’s Disclosures is inconsistent with the files identified by Oracle’s 30(b)(6) designee during deposition. As such, Google is unable to accurately evaluate and respond to Oracle’s contentions. Furthermore, Oracle cannot offer testimony at trial regarding the subject matter in its disclosures because its designated Rule 30(b)(6) witness could not provide that information during discovery, and its witness is not a qualified fact witness on the topics identified in Oracle’s Disclosures. In addition, Oracle failed to submit any expert report regarding its alleged practice of the patent, and may not offer any such testimony

9

opining on its practice of the asserted claims.

Oracle’s Disclosures state that “John Pampuch will testify in support of Oracle’s contention that the identified instrumentalities [i.e., JavaOS and the Java Card platform] practice the asserted claims of the ‘702 patent” (id. at 8). But such testimony would outright contradict Mr. Pampuch’s sworn testimony given at his Rule 30(b)(6) deposition. Indeed, Mr. Pampuch explicitly conceded he was not aware if the disclosed ‘702 patent concept of “multiclass files” was ever practiced:

Q Do you know if multiclass files, having been apparently implemented, based on what you have seen ... have they ever been used?

A I have not seen -- I don’t remember any specific instance of them being used, but certainly, to the extent that they were tested, they were used.

...

Q Are you aware of any applications that were developed that did use multiclass files other than for testing purposes?

A No, not aware of any.

Q So it’s possible that multiclass files were never actually used other than for testing purposes?

A It’s possible.

Q Are you aware of anyone outside of Sun, including developers, other companies who licensed JavaOS, for example, ever having used multiclass files or created multiclass files?

A I don’t know with certainty.

Q You have never seen anything that indicates that anyone has used multiclass files; is that correct?

A No.

(Pampuch Dep. at 206:8-15; 208:7-23.) As Mr. Pampuch was Oracle’s designated Rule 30(b)(6) witness regarding “[t]he practice of the asserted claims of U.S. Patent No. 5,966,702 by JavaOS,” these answers foreclose any assertion that the ‘702 patent has been practiced. (See cases cited above with respect to the ‘104 patent.) Furthermore, this testimony was strictly with regard to “multiclass files”; with respect to one of the products claimed in Oracle’s Disclosures to practice the claims, Mr. Pampuch testified that he did not know if the Java Card platform implemented the ‘702 patent. (Pampuch Dep. at 192:10-15.)

Oracle’s Disclosures also claim that Mr. Pampuch will present testimony regarding files, such as FileLoader.java, about which he explicitly admitted having no knowledge during his

10

deposition:
Q Do you know what FileLoader.java does?

A No.

Q Do you know which portion of the claims -- of the asserted claims of the ‘702 patent would be implemented by this file?

THE WITNESS: No.

(Id. at 141:9-142:2 (objection omitted).

Overall, Mr. Pampuch could not testify on behalf or Oracle at his deposition regarding the very facts that Oracle now reveals it will seek to have him offer at trial. It was also apparent from Mr. Pampuch’s deposition that he had no experience from his everyday work at Oracle with of the functionality in Oracle’s products allegedly implementing the ‘702 patent; instead, he knew about some source code that Oracle’s counsel identified for him to consider in advance of his 30(b)(6) deposition. (See id. at 92-95; 116-117.) Mr. Pampuch is by no means a percipient witness qualified to testify regarding the items for which he has been identified.

Oracle failed to identify a witness capable of supporting its contentions that Oracle has practiced asserted claims of the ‘702 patent. Nor has Oracle furnished an expert report regarding the alleged practice of this patent. Accordingly, Oracle cannot provide any testimony at trial (via experts or alleged fact witnesses) that opines on the practice of the asserted claims of the ‘702 patent.

D. The ‘476 Patent

Oracle’s Disclosures do not provide the information required by the Joint Statement (Dkt. 661 and ¶ 1) because they include only generic descriptions of testimony to be offered and fail to cite any source code or documentation. Subject to the foregoing objections and general objections, Google is unable to agree with Oracle at this point that the identified products practice the asserted claim of the ’476 patent because it is unclear whether the referenced source code files actually create the required protection domains and permissions. Indeed, Google’s review of the cited files suggests that they do not. Google hopes to clarify Oracle’s position via meet-and-confer with Oracle.

In addition, Google is unaware of evidence that the source code identified by Oracle has

11

in fact been compiled into executable instructions embodied in a computer readable medium used by Oracle and/or its licensees. Again, Oracle may be able to clarify this issue via meet and confer. As it stands, Oracle provides no information to support its contention that the witnesses identified in its Disclosures have any percipient knowledge with regard to actual embodiments.

Finally, Oracle has not furnished an expert report regarding the alleged practice of this patent. Accordingly, Oracle cannot provide any testimony at trial (via experts or alleged fact witnesses) that opines on the practice of the asserted claim of the ‘476 patent.

E. The ‘520 Patent

Google maintains that the products listed by Oracle cannot be proven at trial to practice the asserted claims of the ‘520 patent. Oracle’s Disclosures do not provide the information required by the Joint Statement (Dkt. 661 and ¶ 1) because they include only generic descriptions of testimony to be offered and fail to actually cite any source code or documentation. As such, Google is unable to accurately evaluate and respond to Oracle’s contentions. Furthermore, Oracle cannot offer testimony at trial regarding the subject matter in its disclosures because it refused to provide a Rule 30(b)(6) witness regarding this subject matter during discovery. In addition, Oracle failed to submit any expert report regarding its alleged practice of the patent, and may not offer any such testimony opining on its practice of the asserted claims.

In response to a Google 30(b)(6) deposition notice regarding “[e]vidence of conception, reduction to practice, and actual use of the invention(s) allegedly set forth in the asserted claims” (emphasis added) of the ‘520 patent, Oracle informed Google that it “cannot locate a witness currently employed by Oracle who can testify based on personal knowledge as to the conception, reduction to practice, or actual use of the inventions of the ‘520 and ‘720 patents.” (See August 9, 2011 email from Daniel P. Muino to Mark Francis.) According to the Court’s Supplemental Order (Dkt. No. 26 at ¶23(c)), “[i]f an organization cannot reasonably locate a witness to testify based on personal knowledge, there is no requirement under Rule 30(b)(6) for the organization to ‘woodshed’ or to ‘educate’ an individual to testify on the subject. If the organization does not produce any such deponent, however, the organization may not present

12

case-in-chief evidence at trial or on summary judgment on that topic from any witness it could have so designated.” As such, Oracle cannot present any case-in-chief testimony at trial regarding any alleged use of the ‘520 patent.

Furthermore, Oracle affirmatively represented to Google during discovery that it would not seek to have any Oracle employee testify at trial regarding actual use of the ‘520 patent. (See August 9, 2011 email from Daniel P. Muino to Mark Francis (“We can confirm that we will not present an Oracle employee or officer at trial to testify regarding the conception, reduction to practice, or actual use of the inventions of the ‘520 and ‘720 patents.”))

Oracle refused to present a witness in response to Google’s Rule 30(b)(6) deposition notice concerning Oracle’s contentions that it practiced asserted claims of the ‘520 patent. Nor has Oracle furnished an expert report regarding the alleged practice of this patent. Accordingly, Oracle cannot provide any testimony at trial (via experts or alleged fact witnesses) that opines on the practice of the asserted claims of the ‘520 patent.

F. The ‘720 Patent

Google maintains that the products listed by Oracle cannot be proven at trial to practice the asserted claims of the ‘720 patent. Oracle’s Disclosures do not provide the information required by the Joint Statement (Dkt. 661 and ¶ 1) because they include only generic descriptions of testimony to be offered and fail to actually cite any source code or documentation. As such, Google is unable to accurately evaluate and respond to Oracle’s contentions. Furthermore, Oracle cannot offer testimony at trial regarding the subject matter in its disclosures because it refused to provide a Rule 30(b)(6) witness regarding this subject matter during discovery. In addition, Oracle failed to submit any expert report regarding its alleged practice of the patent, and may not offer any such testimony opining on its practice of the asserted claims.

Google’s non-infringement expert, Dr. Jack Davidson of the University of Virginia, described the claimed invention in a manner that differs from the view adopted by Oracle’s disclosures (and its infringement contentions). (See, e.g., August 25, 2011 Expert Report of Jack Davidson at ¶¶ 85-89.) In particular, the source code files referenced by Oracle do not provide a

13

mechanism to compile source code during the loading process and therefore do not implement the asserted claims. As such, Google cannot stipulate to Oracle’s practice of the claims “for all purposes and phases of trial.”

Moreover, in response to a Google 30(b)(6) deposition notice regarding “[e]vidence of conception, reduction to practice, and actual use of the invention(s) allegedly set forth in the asserted claims” (emphasis added) of the ‘720 patent, Oracle informed Google that it “cannot locate a witness currently employed by Oracle who can testify based on personal knowledge as to the conception, reduction to practice, or actual use of the inventions of the ‘520 and ‘720 patents.” (See August 9, 2011 email from Daniel P. Muino to Mark Francis.) According to the Court’s Supplemental Order (Dkt. No. 26 at ¶23(c)), “[i]f an organization cannot reasonably locate a witness to testify based on personal knowledge, there is no requirement under Rule 30(b)(6) for the organization to ‘woodshed’ or to ‘educate’ an individual to testify on the subject. If the organization does not produce any such deponent, however, the organization may not present case-in-chief evidence at trial or on summary judgment on that topic from any witness it could have so designated.” As such, Oracle cannot present any case-in-chief testimony at trial regarding any alleged use of the ‘720 patent.

Furthermore, Oracle affirmatively represented to Google during discovery that it would not seek to have any Oracle employee testify at trial regarding actual use of the ‘720 patent. (See August 9, 2011 email from Daniel P. Muino to Mark Francis (“We can confirm that we will not present an Oracle employee or officer at trial to testify regarding the conception, reduction to practice, or actual use of the inventions of the ‘520 and ‘720 patents.”))

Oracle refused to present a witness in response to Google’s Rule 30(b)(6) deposition notice concerning Oracle’s contentions that it practiced asserted claims of the ‘720 patent. Nor has Oracle furnished an expert report regarding the alleged practice of this patent. Accordingly, Oracle cannot provide any testimony at trial (via experts or alleged fact witnesses) that opines on the practice of the asserted claims of the ‘720 patent.

14

DATED: January 20, 2012

KEKER & VAN NEST, LLP

By: /s/ Christa M. Anderson

ROBERT A. VAN NEST (SBN 84065)
[email]
CHRISTA M. ANDERSON (SBN 184325)
[email]
KEKER & VAN NEST LLP
[address, phone, fax]

SCOTT T. WEINGAERTNER (Pro Hac Vice)
[email]
ROBERT F. PERRY
[email]
BRUCE W. BABER (Pro Hac Vice)
[email]
KING & SPALDING LLP
[address, phone, fax]

DONALD F. ZIMMER, JR. (SBN 112279)
[email]
CHERYL A. SABNIS (SBN 224323)
[email]
KING & SPALDING LLP
[address, phone, fax]

IAN C. BALLON (SBN 141819)
[email]
HEATHER MEEKER (SBN 172148)
[email]

[address, phone, fax]

ATTORNEYS FOR DEFENDANT
GOOGLE INC.

15

CERTIFICATE OF SERVICE

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