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To read comments to this article, go here
Oracle v. Google - Both Parties Take Exception to Kearl Expert Report
Tuesday, April 03 2012 @ 08:25 AM EDT

Both Oracle and Google, not content with letting Dr. Kearl, the court-appointed damages expert, introduce his damages report and testimony without challenge, have filed Motions to exclude portions of Dr. Kearl's report. However, each party only seeks to exclude one narrow area of Dr. Kearl's testimony.

Google expresses concern that Dr. Kearl's opinion is inconsistent with governing law that a reasonable royalty be based only on the intellectual property at issue in the case. (850 [PDF; Text]) The Google objection focuses on Dr. Kearl's stated opinion that the starting place for the valuation should have been the entire IP bundle under negotiation in the 2006 Sun/Google negotiations, not just the copyrights and patent at issue in this case. Kearl's logic was that either Google knew which patents and copyrights were critical such that the real negotiated value was already limited to the value of those items, or Google didn't know which patents and copyrights were critical and Google wanted the broadest possible license in order to keep its options open. Kearl provided no factual evidence to support either of these scenarios, and it runs counter to governing law. Google only seeks to exclude this specific testimony.

Oracle, on its side, is concerned with the Google expenses related to Android that were deducted from the damages base. (845 [PDF; Text]) Oracle argues that Google has the burden of establishing those expenses and has failed to do so. Thus, Dr. Kearl should not be able to rely on the number that was provided by Google expert Dr. Cox. Oracle contends that Dr. Cox never established a basis for the expense number he used, relying on Google provided numbers and testimony from a Google employee who is not being offered as a witness at trial and whose testimony is only provided by deposition. In that deposition the Google employee admitted he could not establish that the company-provided expense numbers properly accounted for deductible Android expenses. Thus, Oracle contends, Google has not established an evidentiary basis for the Cox/Kearl expense number.

To some extent the objections of both Google and Oracle are not critical to Dr. Kearl's overall calculations. Yes, they will make some difference, but we are talking perhaps plus or minus $10 million, which in this context is not a lot.

Judge Alsup also issued two orders yesterday. The first is, by far, the more interesting of the two. In the first (843 [PDF; Text]) Judge Alsup asks each party:

In the submissions due on Tuesday please include your analysis of the CONTU report, which the Judge has now read with interest. Please also quote from any relevant passages in the committee reports following up on the CONTU report, that is, to what extent did Congress intend to adopt the report?

In addition, please include a critique of Professor Pamela Samuelson’s article in 85 Texas Law Review 1921 (2007). If there are one or two other treatises or articles you recommend, please cite them and give a sentence as to their importance.

This request has got to be good news for Google. The CONTU report was the impetus for the Copyright Act of 1976 that provided formal copyright protection for software. Interestingly, some of the recommendations of the CONTU report were not implemented by the Copyright Office. You can find a full version of the CONTU report here.

As for the article by Pamela Samuelson, the first thing you need to know is that she is probably the foremost authority on (and critic of) copyright protection of software in the country. This particular article, "Why Copyright Law Excludes Systems and Processes from the Scope of Its Protection [PDF] is right on point. It walks through the history of the idea/expression dichotomy, the adoption of copyright protection of software, why Baker v. Selden does apply, the application of Baker to software, and the implications of the application of Baker to various aspects of software. It is worth noting that Oracle, in criticizing Baker relied on Prof. Nimmer's copyright treatise, but Prof. Samuelson argues that Prof. Nimmer wrongly interpreted Baker and its application by the courts. This should be interesting.

In the other order of the day the Court directs the parties to update their witness lists on a daily basis during trial. (851 [PDF; Text])


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

Docket

04/02/2012 - 843 - REQUEST FOR FURTHER BRIEFING AND TO SUBMIT AGREED-ON TIMELINE. Signed by Judge Alsup on April 2, 2012.. (whalc1, COURT STAFF) (Filed on 4/2/2012) (Entered: 04/02/2012)

04/02/2012 - 844 - Administrative Motion to File Under Seal filed by Google Inc.. (Van Nest, Robert) (Filed on 4/2/2012) (Entered: 04/02/2012)

04/02/2012 - 845 - MOTION to Strike Notice of Motion and Memorandum of Points and Authorities in Support of Its Motion to Strike Portion of Dr. James Kearl's Expert Report filed by Google Inc.. Responses due by 4/16/2012. Replies due by 4/23/2012. (Van Nest, Robert) (Filed on 4/2/2012) (Entered: 04/02/2012)

04/02/2012 - 847 - Declaration of Daniel Purcell in Support of Google Inc.'s Motion to Strike Portions of Dr. James Kearl's Expert Report filed byGoogle Inc.. (Van Nest, Robert) (Filed on 4/2/2012) (Entered: 04/02/2012)

04/02/2012 - 848 - ORDER RE: FURTHER SETTLEMENT CONFERENCES. Signed by Judge Paul S. Grewal on April 2, 2012. (psglc1, COURT STAFF) (Filed on 4/2/2012) (Entered: 04/02/2012)

04/02/2012 - 849 - Administrative Motion to File Under Seal ORACLE AMERICA, INC.S ADMINISTRATIVE MOTION TO FILE UNDER SEAL PORTIONS OF ORACLES MOTION TO EXCLUDE PORTIONS OF THE RULE 706 EXPERT REPORT OF DR. JAMES KEARL filed by Oracle America, Inc.. (Attachments: # 1 Declaration DECLARATION OF DEBORAH K. MILLER REGARDING THE EXPERT REPORT AND DEPOSITION OF RULE 706 EXPERT DR. JAMES KEARL, # 2 Proposed Order [PROPOSED] ORDER GRANTING IN PART ORACLE AMERICA, INC.S ADMINISTRATIVE MOTION TO FILE UNDER SEAL)(Holtzman, Steven) (Filed on 4/2/2012) (Entered: 04/02/2012)

04/02/2012 - 850 - MOTION to Strike ORACLE AMERICA, INC.S MOTION TO EXCLUDE PORTIONS OF THE RULE 706 EXPERT REPORT OF DR. JAMES KEARL filed by Oracle America, Inc.. Responses due by 4/16/2012. Replies due by 4/23/2012. (Attachments: # 1 Declaration DECLARATION OF MEREDITH DEARBORN IN SUPPORT OF ORACLE AMERICA, INC.S MOTION TO EXCLUDE PORTIONS OF THE RULE 706 EXPERT REPORT OF DR. JAMES KEARL, # 2 Exhibit EXHIBIT A, # 3 Exhibit EXHIBIT B, # 4 Exhibit EXHIBIT C, # 5 Exhibit EXHIBIT D, # 6 Exhibit EXHIBIT E, # 7 Exhibit EXHIBIT F)(Holtzman, Steven) (Filed on 4/2/2012) (Entered: 04/02/2012)

04/02/2012 - 851 - ORDER RE ROLLING, WRITTEN NOTICE OF NEXT SEVEN WITNESSES (whalc1, COURT STAFF) (Filed on 4/2/2012) (Entered: 04/02/2012)


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

Documents

843

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

REQUEST FOR FURTHER
BRIEFING AND TO SUBMIT
AGREED-ON TIMELINE

In the submissions due on Tuesday please include your analysis of the CONTU report, which the Judge has now read with interest. Please also quote from any relevant passages in the committee reports following up on the CONTU report, that is, to what extent did Congress intend to adopt the report?

In addition, please include a critique of Professor Pamela Samuelson’s article in 85 Texas Law Review 1921 (2007). If there are one or two other treatises or articles you recommend, please cite them and give a sentence as to their importance.

Also, by Monday the 9th at noon counsel shall file the agreed-on timeline to hand out to the jury.

IT IS SO ORDERED.

Dated: April 2, 2012.

/s/ William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE


845

KEKER & VAN NEST LLP
ROBERT A. VAN NEST - # 84065
[email]
CHRISTA M. ANDERSON - # 184325
[email]
DANIEL PURCELL - # 191424
[email address phone fax]

KING & SPALDING LLP
DONALD F. ZIMMER, JR. - #112279
[email]
CHERYL A. SABNIS - #224323
[email address telephone fax]

KING & SPALDING LLP
SCOTT T. WEINGAERTNER
(Pro Hac Vice)
[email]
ROBERT F. PERRY
[email]
BRUCE W. BABER (Pro Hac Vice)
[email address telephone fax]
GREENBERG TRAURIG, LLP
IAN C. BALLON - #141819
[email]
HEATHER MEEKER - #172148
[email address telephone 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-03651 WHA

GOOGLE INC.'S NOTICE OF MOTION
AND MOTION TO STRIKE PORTIONS
OF DR. JAMES KEARL'S EXPERT
REPORT

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


PLEASE TAKE NOTICE that on April 9, 2012, or as soon thereafter as counsel may be heard, Defendant Google Inc. ("Google") will, and hereby does, respectfully move to exclude portions of the opinions and testimony of Dr. James Kearl. This Motion is based on the following memorandum of points and authorities in support, the Declaration of Daniel Purcell ("Purcell Decl.") and accompanying exhibits, the entire record in this matter, and on such evidence as may be presented at the hearing of this Motion.

Dated: April 2, 2012

KEKER & VAN NEST LLP

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

Attorneys for Defendant
GOOGLE INC.

1


ROBERT A. VAN NEST - # 84065
[email]
CHRISTA M. ANDERSON - # 184325
[email]
DANIEL PURCELL - # 191424
[email address telephone fax]

KING & SPALDING LLP
DONALD F. ZIMMER, JR. - #112279
[email]
CHERYL A. SABNIS - #224323
[email address telephone fax]

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

GREENBERG TRAURIG, LLP
IAN C. BALLON - #141819
[email]
HEATHER MEEKER - #172148
[email address telephone 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-03651 WHA

GOOGLE'S MEMORANDUM OF POINTS
AND AUTHORITIES IN SUPPORT OF
ITS MOTION TO STRIKE PORTIONS OF
DR. JAMES KEARL'S EXPERT REPORT

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


At his deposition last week, the Court's appointed Rule 706 damages expert, Dr. James R. Kearl, acknowledged that one narrow aspect of his expert opinion is inconsistent with governing law (and this Court's prior orders) regarding the requirement that a reasonable royalty be based only on the intellectual property at issue in this case. Accordingly, Google files this conditional and limited motion to strike to confirm that Dr. Kearl will not be allowed to offer such testimony in the damages phase of trial.

In his March 20, 2012 report, Dr. Kearl began his damages calculation (as Oracle's expert Dr. Iain Cockburn had done) by looking at the 2006 negotiations between Sun and Google for a technology partnership including a bundle of intellectual-property rights. Dr. Kearl calculated the percentage of the value of the total 2006 Sun bundle attributable to the intellectual property in suit: the '104 patent (2.38% of the total bundle), the '520 patent (.07% of the bundle), and the 37 purportedly copyrighted API packages (together 1.9% of the bundle). Kearl Report ¶ 111 & n.63; /id./ at Table 7. Google is not moving to strike Dr. Kearl's apportionment analysis.

But before apportioning the bundle, Dr. Kearl also opined that, as a matter of economics, no apportionment is appropriate, and that Google should be charged a royalty for the entire bundle — not merely the intellectual property in suit. Kearl Report W 97-105. [REDACTED] Id. [REDACTED] Id. Dr. Kearl opined that, if Google knew during the 2006 negotiations which of the Sun patents and copyrights ultimately would be useful to Android, the negotiation over the bundle would really have been a negotiation over that specific IP. (There is no evidence that Google knew anything specific about the contents of the Sun bundle in 2006, and Dr. Kearl cites none.) Alternatively, Dr. Kearl opined that, if Google did not know which of the Sun patents and copyrights would be useful to Android, it may have wanted to keep open multiple options as to how to design Android or to buy insurance against future infringement claims by Sun. Id. ¶¶ 100-103. [REDACTED]

1


[REDACTED] Id. ¶ 104 (emphases added).

At deposition, Dr. Kearl readily conceded that his economic judgment was in tension with the requirements of the law and the Court's prior orders:

[REDACTED]
Purcell Decl. Ex. A (Kearl Depo.) at 157:7-158:6 (emphases added).

Indeed, the Court previously disapproved of exactly this same reasoning when Oracle and Dr. Cockburn employed it in their first damages report last summer. There, Dr. Cockburn calculated damages for Google's purported use of "Java," without separating out the asserted patents and copyrights from the remainder of Oracle's various Java platforms not at issue. The Court rejected that sort of broad-brush analysis, ruling that it "runs afoul of controlling law." July 22, 2011 Order [Dkt. 230] at 5.

The reasonable royalty to be calculated is "a reasonable royalty for the use made of the invention by the infringer." 35 U.S.C. 248 (emphasis added). Java was not the invention. Only the claims asserted were the invention.

Therefore, the hypothetical license must be limited to the asserted claims — excluding the rest of the Java platform. That "[t]he intellectual property at issue here was generally bundled into the technologies that Sun licensed on a portfolio

2


basis" because "Sun's practice was to license Java, not to license individual patents," does not change this statutory requirement (Weingaertner Exh. A at ¶ 132). An opinion that the hypothetical negotiation would have resulted in a Java license simply fights the hypothetical.
July 22, 2011 Order [Dkt. 230] at 5-6 (emphases in original).

Not only does section 248 require that any reasonable royalty be tied to "the use made of the invention" at issue in the case, myriad federal appellate opinions bar plaintiffs from recovering damages for related or ancillary intellectual property that is not asserted in litigation or used by the defendant. Two years ago, in RestQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860 (Fed. Cir. 2010), the Federal Circuit held that "[a]t all times, the damages inquiry must concentrate on compensation for the economic harm caused by infringement of the claimed invention." Id. at 869 (emphasis added). In its July 22, 2011 Order, the Court cited this language from RestQNet, explaining that the Federal Circuit meant that "[t]he hypothetical license therefore must be tailored to the amount and type of infringement that actually occurred" and that "[t]he reasonable royalty must compensate for the infringing features, but not for non-infringing ones." July 22, 2011 Order [Dkt. 230] at 8 (emphasis added); see also, e.g., Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1332 (Fed. Cir. 2009) (hypothetical negotiation analysis must "elucidate how the parties would have valued the patented feature during the hypothetical negotiation") (emphasis added); Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152, 159 (6th Cir. 1978) ("the relevant facts" in a hypothetical negotiation analysis include (1) "what plaintiffs property was"; (2) "to what extent defendant has taken it"; and (3) "its usefulness and commercial value as shown by its advantages over other things and by the extent of its use").

The Court reaffirmed this analysis in its January 9, 2012 Order partially granting Google's motion to strike the second Cockburn report, making clear that "[i]f the $100 million offer in 2006 is used as the starting point," as Dr. Kearl has also done here, "then a fair apportionment of the $100 million as between the technology in suit and the remainder of the technology then offered must be made." Jan. 9, 2012 Order [Dkt. 685] at 8. Similarly, the Court's March 13, 2012 Order partially granting Google's motion to strike the third Cockburn's report also required apportionment and struck aspects of Dr. Cockburn's report for apportionment problems. Mar. 13,

3


2012 Order [Dkt. 785] at 3-5 (striking the upper bound of Dr. Cockburn's apportionment under a "group-and-value approach"); id. at 10-11 (requiring deduction from total value of 2006 Sun bundle to account for value of unasserted copyrights); id. at 11-13 (striking Dr. Cockburn's "independent significance approach" for failing to follow the apportionment guidelines in January 9, 2012 Order).

The opinions in paragraphs 97 through 105 of Dr. Kearl's report are inconsistent with the law and this Court's orders. To the extent Dr. Kearl plans to offer them at trial, they would be only confusing, not helpful, to the jury in calculating a legally permissible measure of damages in this case. Google respectfully asks the Court to exclude those opinions.

Dated: April 2, 2012

KEKER & VAN NEST LLP

By: /s/ Robert A. Van Nest
Robert A. Van Nest

Attorneys for Defendant
GOOGLE INC.

850

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 telephone fax]

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

ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[email]
DEBORAH K. MILLER (Bar No. 95527)
[email]
MATTHEW M. SARBORARIA (Bar No. 211600)
[email address telephone 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 AMERICA, INC.’S MOTION TO
EXCLUDE PORTIONS OF THE RULE 706
EXPERT REPORT OF DR. JAMES
KEARL

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


NOTICE OF MOTION AND MOTION TO STRIKE

PLEASE TAKE NOTICE that Plaintiff Oracle America, Inc. (“Oracle”) hereby moves to exclude portions of the opinions and testimony of the court-appointed Rule 706 expert Dr. James Kearl. This motion is based on the following memorandum of points and authorities, the declaration of Meredith Dearborn and accompanying exhibits, the entire record in this matter, and on such evidence as may be presented at any hearing on this Motion, on a date to be determined by the Court, as well as any other ground the Court deems just and proper.

STEVEN C. HOLTZMAN

By: /s/Steven C. Holtzman
Steven C. Holtzman

Attorneys for Plaintiff
ORACLE AMERICA, INC.

1


MEMORANDUM OF POINTS AND AUTHORITIES

I. INTRODUCTION

Oracle moves to strike one aspect of the copyright infringer’s profits analysis by the Courtappointed damages expert, Dr. James Kearl.

On infringer’s profits Google bears the burden of proving its deductible expenses for Android. The only costs that Google may deduct are those that actually contributed to sales of the infringing work. Dr. Kearl has not tried to determine whether Google’s claimed Android expenses are in fact attributable to Android, or whether they contributed to infringing sales of Android. Instead, he adopts the figures that Google’s copyright damages expert, Dr. Alan Cox, used in the infringer’s profits calculation in his October 2012 damages report.

But Dr. Cox also conducted no examination or analysis of the allocation of expenses to Android. To determine the deductible expenses for Android, Dr. Cox relied on two things: (a) an unaudited P&L statement that his staff “received from counsel,” and (b) an interview with a Google employee, Aditya Agarwal, who had already testified – as Google’s corporate designee on Android revenues and expenses – [REDACTED]. Mr. Agarwal is not on Google’s trial witness list, and consequently cannot appear at trial to provide the factual basis for Dr. Cox’s – or Dr. Kearl’s – allocation of expenses to Android.

Dr. Kearl’s opinion is based on an assumption that Google cannot prove. Google cannot establish that its P&L statements properly account for deductible Android expenses—its corporate representative Mr. Agarwal conceded he could not answer that question. Dr. Cox cannot supply the foundation for the accounting of expenses – his sole basis is Mr. Agarwal. Mr. Agarwal cannot show up at trial with different testimony – he is not on Google’s witness list. In short, the foundation for Dr. Kearl’s opinion on expenses is like the proverbial turtle, and “it is turtles all the way down.”1

________________________________________

1 Rapanos v. United States, 547 U.S. 715, 754 n.14 (2006) (Scalia, J.). As Justice Scalia explains the allusion, “an Eastern guru affirms that the earth is supported on the back of a tiger. When asked what supports the tiger, he says it stands upon an elephant; and when asked what supports the elephant he says it is a giant turtle. When asked, finally, what supports the giant turtle, he is briefly taken aback, but quickly replies ‘Ah, after that it is turtles all the way down.’” Id.

1


Dr. Kearl cannot offer testimony on Android costs that rests on nothing more than Google’s expert’s unfounded opinion. The proof of Pursuant to Federal Rules of Evidence 702, 703, and 403, Oracle moves to strike this single aspect of Dr. Kearl’s testimony.

II. ARGUMENT

Last fall, Oracle moved to strike Dr. Cox’s opinions insofar as they relied on interviews with Google employees, one of whom was Mr. Agarwal. (Dkt. No. 558 at 6–10.) In its opposition, Google conceded that the interviewees had to establish the foundational facts at trial before its experts could testify based on those facts. (Dkt. No. 581 at 3 (“Google has already explained that it will, and accepts that it must, offer the underlying factual testimony from the percipient witnesses first, before its experts may testify based on those facts.”).) Oracle pointed out that Mr. Agarwal was not even on Google’s witness list, and thus would never be able to “offer the underlying factual testimony” at trial. (Dkt. No. 614 at 3.) In denying Oracle’s Daubert motion, the Court emphasized that Google’s experts could testify only so long as the interviewees on which its experts relied could “testify to the foundational facts with firsthand knowledge” at trial. (Dkt. No. 632 at 3 (citing Therasense, Inc. v. Becton, Dickerson & Co., No. C04-02123 WHA, 2008 WL 2323856, at *2 (N.D. Cal. May 22, 2008) (Alsup, J.).) Oracle seeks to enforce that Order. On the issue of Android expenses, Google has no competent witness who can provide the foundational facts on which Dr. Cox relied. As Dr. Kearl has no basis for his allocation of expenses other than Dr. Cox, he too has no proper factual basis for those deductions, and his opinion must be excluded on this score.

A. Google bears the burden to show that the costs it claims should be deducted
from its infringer’s profits actually contributed to Android’s profits.
In calculating infringer’s profits as a measure of copyright damages, Oracle must “present proof only of the infringer’s gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work.” 17 U.S.C. § 504(b). Google therefore has the statutory burden of proof to show its deductible costs. See Frank Music Corp. v. Metro-Goldwyn-Mayer, Inc., 772 F.2d 505, 514 (9th Cir. 1985) (“Any doubt as to the computation of costs or profits is to be resolved in favor of the plaintiff. . . . If the infringing defendant does not meet its burden of proving costs, the gross figure stands as the defendant’s profits.”) (citation

2


omitted); see also Taylor v. Meirick, 712 F.2d 1112, 1121–22 (7th Cir. 1983) (“It is too much to ask a plaintiff who has proved infringement also to do the defendant’s cost accounting.”).

The only costs that Google may deduct are those that “actually contributed to sales of the infringing work.” Frank Music, 772 F.2d at 516.2 Before deducting any category of costs from the raw revenue, a defendant must offer evidence showing how the costs contributed to the production of the infringing work.

In Frank Music, the defendant, MGM, introduced evidence at trial that segregated overhead expenses into general categories, such as general and administrative costs, sales and advertising, and engineering and maintenance. MGM then allocated a portion of these costs to the production of the infringing show, Hallelujah Hollywood, based on a ratio of the revenues from that production as compared to MGM Grand's total revenues. Id. The district court adopted the defendant’s approach, but the Ninth Circuit reversed, holding that the district court’s finding that MGM had established that its overhead contributed to the infringing show was clear error.

The court noted that settled law permitted a deduction for overhead only “when the infringer can demonstrate that [the overhead expense] was of actual assistance in the production, distribution or sale of the infringing product.” Id. (citing Kamar Int’l, Inc. v. Russ Berrie & Co., 752 F.2d 1326, 1332 (9th Cir. 1984) and Sheldon v. Metro-Goldwyn-Mayer Pictures, Co., 106 F.2d 45, 54 (2d Cir. 1939), aff'd, 309 U.S. 390 (1940)). Although the infringer need not “prove his overhead expenses and their relationship to the infringing production in minute detail,” the defendant nonetheless “bears the burden of explaining, at least in general terms, how claimed overhead actually contributed to the production of the infringing work.” Frank Music, 772 F.2d at 516. On the facts before it, although it did not doubt that “some of defendants’ claimed overhead contributed to the production of Hallelujah Hollywood,” the Court held that the defendants had

offered no evidence of what costs were included in general categories such as ‘general and administrative expenses,’ nor did they offer any evidence concerning how these costs contributed to the production of Hallelujah Hollywood. The defendants contend their burden was met when they introduced evidence of their total overhead costs allocated on a reasonable
_________________________________________

2 Although Frank Music construed an earlier version of the Copyright Act, Congress’s amendments do not affect these holdings. Later cases have continued to rely on Frank Music for this proposition. See, e.g., Folkens v. Wyland, C-01-1241 EDL, 2002 WL 1677708, at *6 (N.D. Cal. July 22, 2002).

3


basis. The district court apparently agreed with this approach. That is not the law of this circuit. Under Kamar International, a defendant additionally must show that the categories of overhead actually contributed to sales of the infringing work. 752 F.2d at 1332. We can find no such showing in the record before us.
Id. Here, therefore, Google bears the burden of demonstrating that the expenses that it seeks to deduct actually contributed to Android’s profits.

B. Google has no competent witness who can testify to the “foundational facts” on
which Dr. Cox and Dr. Kearl rely.
On April 8, 2011, Oracle deposed Mr. Adyita Agarwal, a senior financial analyst at Google, who was Google’s Rule 30(b)(6) designee on Google’s revenues and expenses relating to Android. (Declaration of Meredith Dearborn (“Dearborn Decl.”) Ex. A (Plaintiff’s Notice of Deposition of Defendant Google, Inc. Pursuant to Fed. R. Civ. P. 30(b)(6), dated March 10, 2010).) By proffering Mr. Agarwal, Google represented that he spoke for the company on “how Google accounts for Android-related revenues and expenses.” (Id., Topic 2.) [REDACTED] Google had a duty to “make a conscientious, good-faith effort to designate knowledgeable persons for Rule 30(b)(6) depositions and to prepare them to fully and unevasively answer questions about the designated subject matter.’” Bd. of Tr. of Leland Stanford Junior Univ. v. Tyco Int’l Ltd., 253 F.R.D. 524, 526 (C.D. Cal. 2008) (citations omitted). Mr. Agarwal, as Google’s 30(b)(6) deponent, had an “affirmative obligation to educate himself” on how Google accounts for Android’s revenues and expenses, because he had to be prepared to “testify to the knowledge of the corporation, not the individual.” Id. (citations omitted, emphasis in original).

[REDACTED]

4


[REDACTED]

C. Dr. Cox relied, and Dr. Kearl indirectly relies, on Mr. Agarwal and the P&L,
despite the fact that Mr. Agarwal could not confirm that all of the Android
expenses contributed to Android’s profits.
In his calculation of infringer’s profits, Dr. Cox testified that he himself did not try to determine

5


what Google expenses were properly allocable to Android. (Dearborn Decl. Ex. D (Cox Dep. 46:16– 47:21) (“I didn’t do an allocation. I just took the expenditures that Google had booked on its P&Ls for Android, having determined based on the sources that you cited that it was appropriate to do so.”) Dr. Cox is not an accountant. (Id. 145:18–21.) The “sources” on which Dr. Cox relied were limited to what appears to be a recent version of the Android P&L document, the transcript of Mr. Agarwal’s 30(b)(6) deposition cited above, and two off-the-record conversations with Mr. Agarwal. (Id. 47:3–21; 78:23-80:2).) [REDACTED] That document was produced to Oracle as part of “backup” to Dr. Cox’s reports in October, several months after the close of discovery. Dr. Cox conceded that the document was not audited, and that as far as he knew, none of the historical figures in the P&L had been audited either. (Dearborn Decl. Ex. D (Cox Dep. 80:22 –82:3).).

[REDACTED]

The sole basis for Dr. Cox’s determination that the engineering expenses in Google’s P&L are attributable to the Android platform is an interview he conducted with Mr. Agarwal. [REDACTED]

At his deposition, Dr. Cox testified that he understood that he was required to calculate which expenses were attributable to Android. (Dearborn Decl. Ex. D (Cox Dep. 69:6–10).) He also

6


acknowledged that Mr. Agarwal, the sole source identified in his report, [REDACTED] Yet he conceded that he relied on no sources other than Mr. Agarwal and the P&L to determine the allocation of expenses was appropriate, and did no diligence other than talking with Mr. Agarwal to verify the statement in his report. (See id. 79:6–80:7.)

D. Dr. Kearl relies on Dr. Cox, and did no independent analysis of his own.
[REDACTED]

E. Google will not be able to establish that the costs contributed to Android’s
profits, because it has no witness who can speak to the proper allocation of costs
to Android.
Based on the record evidence, Google will not be able to establish a key foundational fact for each element of cost it seeks to deduct—that the cost “actually contributed to sales of the infringing work.” Frank Music, 772 F.2d at 516.

First, Mr. Agarwal is not on Google’s witness list. (See Dkt. No. 525-3; Dkt. No. 840.) The court has limited each party to the witnesses disclosed in the joint proposed pretrial order. (Dkt. No. 675 ¶ 4.) Google may argue that it reserved the right to call any person on Oracle’s witness list, but Mr. Agarwal is only listed as testifying by deposition on Oracle’s list. (Dkt. 525-2 at 13.) As described above, Mr. Agarwal’s deposition provides no basis for concluding that any cost in the P&L should be allocated to Android.

Second, even if Google could call Mr. Agarwal to testify at trial, [REDACTED]

7


[REDACTED] Mr. Agarwal was not testifying based on “firsthand knowledge.” (Dkt. No. 632 at 3.) He was Google’s corporate representative. His answers bind the company as admissions, but cannot be used by Dr. Kearl or Google’s experts to fulfill or comment on Google’s burden. He cannot be permitted to [REDACTED] as a corporate designee, but suddenly remember that methodology in interviews with Google’s experts and at trial. See Calzaturficio S.C.A.R.P.A. s.p.a. v. Fabiano Shoe Co., Inc., 201 F.R.D. 33, 36 (D. Mass. 2001) (holding that interpreting Rule 30(b)(6) to require a company’s witness to prepare for the deposition is “necessary in order to make the deposition a meaningful one and to prevent the ‘sandbagging’ of an opponent by conducting a half-hearted inquiry before the deposition but a thorough and vigorous one before the trial. This would totally defeat the purpose of the discovery process.”) (citations omitted); see also Dkt. No. 676 at 7 (Omnibus Order on Motions in Limine) (“In the interest of fairness, Mr. Lindholm cannot testify on matters he refused to address during his deposition.”).

Third, Dr. Cox explained that he did no other due diligence to understand the methodology in the Android P&L document, or to determine whether the costs it lists were properly allocated to Android, other than discussing that document with Mr. Agarwal. (Dearborn Decl. Ex. D (Cox Dep 75:19–76:22).) As a consequence, even if the P&L document is admitted into evidence, neither Dr. Cox nor Dr. Kearl can testify as to whether any of its costs contributed to Android’s revenues because neither did any independent verification of their own to determine whether that allocation was correct. See Kilgore v. Carson Pirie Holdings, Inc., 205 F. App’x 367, 372 (6th Cir. 2006) (expert testimony was “not supported by sufficient data or reliable methodology” where expert relied on an article but “did not know on what research or methodology the article was based, and he admitted that he did not conduct any independent research on this subject.”).

Fourth, Google should not be permitted to have some other witness at trial support Dr. Cox’s expense calculations, and Dr. Kearl’s assumption that Dr. Cox’s calculation are correct, by testifying that the allocation of expenses on the Android P&L is correct. To permit Google to do so would undermine the purpose of discovery in at least three critical ways: (1) Google would be allowed to

8


circumvent the testimony of its 30(b)(6) designee, who was unable to provide any information that would confirm that Google correctly accounted for Android expenses; (2) Google would benefit from its failure to present a 30(b)(6) witness who could testify intelligently about Android expense allocation; and (3) Google would evade the rule that an expert must disclose the bases for his or her opinions, by citing one basis in discovery, and substituting a different one at trial, when the original basis collapses.

Thus, no witness at trial will be able to support Dr. Cox’s assumptions, or Dr. Kearl’s adoption of Dr. Cox’s assumptions, as to the allocation of costs between Android and Google’s other business units.

F. Allowing Dr. Kearl to testify as to the proper cost deductions would be improper
under Daubert and prejudicial to Oracle.
Because no witness at trial can support Dr. Cox’s assumptions as to the allocation of Android costs and Dr. Kearl relies on Dr. Cox’s assumptions, Dr. Kearl’s lacks foundation and this defect cannot be cured at trial.

An expert must base his testimony on relevant facts or data. See FED. R. EVID. 702, 703; see also Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1315 (Fed. Cir. 2011) (a damages expert must “tie the expert testimony on damages to the facts of the case.”). As this court wrote in Therasense:

The more central the “fact” issue is in the overall opinion and overall trial and the more controverted the “fact” is in the context of the case, the more due diligence an expert should exercise before merely taking a partisan’s word. At some point, as here, the supposed fact is too important and too controverted and should be addressed by witnesses with firsthand knowledge.
Therasense, 2008 WL 2323856, at *2. The proper allocation of costs has crossed this threshold of importance. Prof. Cockburn has shown that Google’s Android revenues through 2011 amount to more than [REDACTED]. After accepting that all of Dr. Cox’s cost adjustments contributed to Android’s profits, Dr. Kearl is prepared to testify that the measure of infringer’s profits damages (as of September 2011) is just (Dearborn Decl. Ex. E (Kearl Report Table 9).) Dr. Kearl assumed that the cost allocations in Dr. Cox’s report were correct; Dr. Cox assumed that Mr. Agarwal could confirm the accuracy of the cost allocation on the Android P&L; and Mr. Agarwal admitted that he had no understanding of how that

9


allocation was done in the first place. Dr. Kearl has no reliable or reasonable basis on which to rely on Dr. Cox’s opinion.

Dr. Kearl acknowledged at his deposition that [REDACTED] But the only opinion Dr. Kearl has offered in his report is that, in effect, all of the cost deductions are attributable to Android, because he has accepted Dr. Cox’s categories of deductions. (Dearborn Decl. Ex. E (Kearl Report Table 9).) The Court has repeatedly emphasized that expert testimony will be confined to the material disclosed in the reports. If an exception were made for Dr. Kearl, it would undermine the discovery process and prejudice Oracle. Google would be able to avoid the testimony of its Rule 30(b)(6) witness and the disclosed opinions of its retained expert by withholding, and then offering, more favorable evidence at trial, which Dr. Kearl would then incorporate into newly disclosed analyses at trial. Thus, Dr. Kearl can proffer no other opinion as to allocation or accounting of costs at trial.3

III. CONCLUSION

For the reasons stated above, the Court should prohibit Dr. Kearl from testifying as to the amount of Google’s cost deductions in his infringer’s profits analysis.

Dated: April 2, 2012

STEVEN C. HOLTZMAN

By: /s/Steven C. Holtzman
Steven C. Holtzman

Attorneys for Plaintiff
ORACLE AMERICA, INC.

________________________________________

3 In contrast, it is appropriate for the experts to apply their previously disclosed methodologies to updated revenue, profit, and loss data from the months between the close of discovery and trial. In that circumstance, the nature of the opinion and the character of the evidence is unchanged – the data is merely updated.

10


851

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

ORDER RE ROLLING,
WRITTEN NOTICE OF
NEXT SEVEN WITNESSES

________________________________________

Absent very good cause, a witness may be called only if the witness is on the proponent’s most-current rolling, written list of the next seven witnesses and has been on the list at least 38 (not 48) hours. Said list may be updated each day by 5 p.m. and shall include seven or fewer names. Witnesses need not be called in the sequence indicated but they must be on the mostcurrent rolling list. The list shall be delivered to all counsel and to chambers by 5 p.m. each day. If both sides agree in writing, the seven limit and the 38-hour leadtime may be changed. This does not change the document-use notice provision.

IT IS SO ORDERED.

Dated: April 2, 2012.

/s/William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE


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