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To read comments to this article, go here
Oracle v. Google - More Questions From the Court on Copyright
Friday, March 30 2012 @ 09:25 AM EDT

One thing is for certain: Judge Alsup is not bashful about asking questions or seeking clarification of the copyright issues asserted in this case. In yet another directive to the parties, Judge Alsup seeks further clarification of the copyright issues. (838 [PDF; Text]) Specifically, he asks the following questions:

(1) Under the law, does “selection, arrangement, and structure” arise as an issue only in the context of originality and more specifically, as a way to allow protectability for otherwise noncopyrightable elements in a compilation?

(2) Is “selection, arrangement, and structure” also an exception to the rule that a system or method cannot be copyrighted? That is, if something is a system or method can it still be copyrighted so long as the system or method is the result of selection, arrangement and structure?

(3) If a method or system is copyrightable if the result of selection, arrangement, and structure, won’t that be true for all original methods and systems which by definition involve a structure, arrangement, and selection steps?

(4) For the merger doctrine, at what level of abstraction should we consider the idea/system? At a high level of abstraction (for instance, the concept of APIs generally), there are many ways to express “selection, arrangement, and structure” in creating a particular API. But for the idea/system of the 37 Java APIs, there may be only one way to express the “selection, arrangement, and structure.”

(5) Is it true that the APIs are an integral part of Java? That is, programmers write their own programs using the APIs? If the answer depends on the particular API, please specific which of the 37 asserted are integral.

(6) To what extent are computer languages (not programs, but languages) copyrightable? Patentable?

(7) From Google’s presentation at the hearing, it seems as though Sun/Oracle attempted to claim the structure/hierarchy/arrangement of APIs in the ’855 patent and ’093 patent. Would it be possible to claim the selection of classes for APIs under patent law?

(8) By claiming that Google infringes the API implementation, is Oracle alleging that Google copied something other than the “selection, arrangement, and structure” of APIs, as fixed in the specifications?

And the judge's directive is even more pointed in that he advises the parties:

Please do not hedge. Please take a firm position and then candidly state the extent to which the law supports and contradicts your position.
So what is the good judge after? I suspect he is starting to catch the ever increasing aroma of a copyright claim that has questionable substance.

Let me take a quick crack at a few of these questions. With respect to the first question, "selection, arrangement, and structure," does NOT extend protectability [under copyright] for otherwise noncopyrightable elements in a compilation. It only extends to protection to that compilation as a whole in its specific form. Any of the elements within the compilation that were not protected by copyright at the time of creation of the compilation do not magically become protected by copyright by being included in the compilation.

With respect to question 2, my take is that "selection, arrangement, and structure" (which provide the basis for a claim of copyright in a compilation) does not extend copyright protection to the system or method that may be described in that compilation. It only protects that specific expression describing the system or method. This answer would moot question 3.

In answer to question 4, the merger doctrine must be considered at each level of abstraction. The doctrine may knock out elements at the deepest level of abstraction and yet leave intact the compilation as a whole.

I will leave 5 to those of you with deeper technical knowledge than I possess (which would likely encompass just about all of you). Question 6 strikes me as fairly straightforward. In their entirety certainly a computer language is capable of copyright protection. As for patent protection, not likely. I won't attempt an answer on 7 and 8.

How the parties answer these questions (firmly and with candor) will be interesting.


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

Docket

03/29/2012 - 838 - REVISION TO DUE DATE AND REQUEST FOR FURTHER BRIEFING. Signed by Judge Alsup on March 29, 2012. (whalc1, COURT STAFF) (Filed on 3/29/2012) (Entered: 03/29/2012)

03/29/2012 - 839 - EXHIBITS re 783 Declaration in Support, of Oracle's motion to amend 205 patent infringement contentions and supplement expert reports (Exhibit B) filed byOracle America, Inc.. (Related document(s) 783 ) (Peters, Marc) (Filed on 3/29/2012) (Entered: 03/29/2012)

03/29/2012 - 840 - Witness List by Google Inc. (Supplemental) Trial Witness Disclosure Pursuant to Fed. R. Civ. P. 26(a)(3). (Van Nest, Robert) (Filed on 3/29/2012) (Entered: 03/29/2012)


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

Documents

838

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

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

No. C 10-03561 WHA

REVISION TO DUE DATE
AND REQUEST FOR
FURTHER BRIEFING

The due date for the post-hearing briefs is postponed to NOON ON TUESDAY, APRIL 3. Please address the following questions in addition to the items already requested.

(1) Under the law, does “selection, arrangement, and structure” arise as an issue only in the context of originality and more specifically, as a way to allow protectability for otherwise noncopyrightable elements in a compilation?

(2) Is “selection, arrangement, and structure” also an exception to the rule that a system or method cannot be copyrighted? That is, if something is a system or method can it still be copyrighted so long as the system or method is the result of selection, arrangement and structure?

(3) If a method or system is copyrightable if the result of selection, arrangement, and structure, won’t that be true for all original methods and systems which by definition involve a structure, arrangement, and selection steps?

(4) For the merger doctrine, at what level of abstraction should we consider the idea/system? At a high level of abstraction (for instance, the concept of APIs generally), there are many ways to express “selection, arrangement, and structure” in creating a particular API. But for the idea/system of the 37 Java APIs, there may be only one way to express the “selection, arrangement, and structure.”


(5) Is it true that the APIs are an integral part of Java? That is, programmers write their own programs using the APIs? If the answer depends on the particular API, please specific which of the 37 asserted are integral.

(6) To what extent are computer languages (not programs, but languages) copyrightable? Patentable?

(7) From Google’s presentation at the hearing, it seems as though Sun/Oracle attempted to claim the structure/hierarchy/arrangement of APIs in the ’855 patent and ’093 patent. Would it be possible to claim the selection of classes for APIs under patent law?

(8) By claiming that Google infringes the API implementation, is Oracle alleging that Google copied something other than the “selection, arrangement, and structure” of APIs, as fixed in the specifications?

Please do not hedge. Please take a firm position and then candidly state the extent to which the law supports and contradicts your position. Please block quote the full paragraph of all relevant passages in your cites, italicizing the language of importance without using ellipses. Each side may have up to 20 pages. Complete candor is requested, for the Court needs the genuine assistance of the excellent counsel in this case. By THURSDAY AT NOON, each side may file replies up to ten pages.

IT IS SO ORDERED.

Dated: March 29, 2012.

/s/William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

2


840

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

NOTICE RE GOOGLE'S FIRST
SUPPLEMENTAL TRIAL WITNESS
DISCLOSURE PURSUANT TO FED. R.
CIV. P. 26(a)(3)

Judge: Hon. William Alsup
Dept.: courtroom 8, 19th Floor


PLEASE TAKE NOTICE that Google served the attached First Supplemental Trial Witness Disclosure Pursuant to Fed. R. Civ. P. 26(a)(3) on February 23, 2012. As stated in the Supplemental Disclosure, each of the witnesses disclosed therein was identified in the February 3, 2012 Expert Report of Dr. Iain M. Cockburn as conducting review and analysis of patents in connection with Dr. Cockburn's third expert report. Each of the individuals was deposed in February 2012 pursuant to a Court order authorizing the depositions.

Dated: March 29, 2012

KEKER & VAN NEST LLP

/s/ Robert A. Van Nest
By: ROBERT A. VAN NEST

Attorneys for Defendant
GOOGLE INC.

1

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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

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

GOOGLE'S FIRST SUPPLEMENTAL
TRIAL WITNESS DISCLOSURE
PURSUANT TO FED. R. CIV. P. 26(a)(3)

Judge: Hon. William Alsup
Dept.: courtroom 8, 19th Floor


Pursuant to Fed. R. Civ. P. 26(a)(3), (e) and the Court's Guidelines for Trial and Final Pretrial Conference in Civil Jury Cases, Google supplements its October 7, 2011 lit of witnesses for trial of this matter. Each of the individuals disclosed in this Supplemental Disclosure was identified in the February 3, 2012 Expert Report of Dr. Iain M. Cockburn as conducting review and analysis of patents in connection with Dr. Cockburn's third expert report. Each of the individuals was deposed in February 2012 pursuant to a Court order authorizing the depositions.

Google may call each of these witnesses, all of whom are current Oracle employees. As required by the Court's Guidelines, Google has identified non-cumulative testimony in the summaries below by italicizing that testimony.1

NameManner of
Presentation
Substance of Trial Testimony
Kessler, PeterLive or by
deposition
Mr. Kessler may testify concerning Oracle's alleged conception, reduction to practice, and use of U.S. Patent Nos. 6,910,205 and RE38,104, including but not limited to in the JDK; Oracle's benchmarking tests and related Android and Java source code modifications; work he performed in connection with Dr. Iain Cockburn's third expert report; and issues related to Java or Android technology. He may also testify concerning documents on the exhibit list that are either authored by him or were sent to him.
Plummer,
Christopher
Live or by
deposition
Mr. Plummer is an Oracle engineer who may testify about work he performed in connection with Dr. Iain Cockburn's third expert report and issues related to Java or Android technology. He may also testify concerning documents on the exhibit list that are either authored by him or were sent to him
Reinhold,
Mark
Live or by
deposition
Mr. Reinhold may testify about Sun's practices and policies relating to alleged Java intellectual property rights; Sun's communications with Apache and/or communications concerning Apache Harmony; Sun's policies and practices with respect to licensing and open sourcing Java-related software and platforms; the Java Community Process; alleged "fragmentation" or "forking"; work he performed in connection with Dr. Iain Cockburn's third expert report; and issues related to Java or Android technology. He may also testify concerning documents on the exhibit list that are either authored by or were sent to him.

________________________________________

1 Peter Kessler and Mark Reinhold were disclosed in Google's October 7, 2011 witness list.

1


NameManner of
Presentation
Substance of Trial Testimony
Rose, John R.Live or by
deposition
Mr. Rose is an Oracle engineer who may testify about work he performed in connection with Dr. Iain Cockburn's third expert report and issues related to Java or Android technology. He may also testify concerning documents on the exhibit list that are either authored by him or were sent to him.
Wong,
Hinkmond
Live or by
deposition
Mr. Wong is an Oracle engineer who may testify aboutwork he performed in connection with Dr. Iain Cockburn's third expert report and issues related to Java or Android technology. He may also testify concerning documents on the exhibit list that are either authored by him or were sent to him.

In addition to the witnesses identified above and in Google's October 7, 2011 disclosure, Google may also call witnesses for rebuttal and may call witnesses identified on Oracle's witness list. Google will counter-designate testimony of various witnesses designated by Oracle pursuant to Judge Alsup's Guidelines for Trial and Final Pretrial Conference in Civil Jury Cases. Should Oracle introduce any deposition testimony it has designated for witnesses not at trial, Google will, in rebuttal, introduce the testimony they have counter-designated.

Dated: February 23, 2012

KEKER & VAN NEST LLP

/s/ Robert A. Van Nest
By: ROBERT A. VAN NEST

Attorneys for Defendant GOOGLE INC.

2


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