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Oracle to the Court: Could We Add a Pile of New Exhibits at the Very Last Moment, Please? ~pj
Saturday, April 14 2012 @ 05:52 PM EDT

Would it surprise you if I told you that Oracle has now filed -- on the very last business day before the trial begins on Monday in Oracle v. Google -- a motion seeking to add some new, last-minute exhibits to the joint exhibits list?

It doesn't surprise me either. : )

Guess what one of the exhibits is? Another Tim Lindholm email. Oh, and some "Tim Bray documents". Just a few items Oracle didn't get around to mentioning when the joint exhibit list was filed way back in October of 2011 or at any time since, until now.

Good thing they thought of it on the very last day, huh?

Anyway, in response to the motion, which Google says was filed "late at night one business day prior to trial commencing", Google unleashes its elephant gun, telling the court [PDF] rather plainly that Oracle's "eleventh hour motion" should be denied. Why? "Oracle has not shown diligence in seeking to supplement the exhibit list." That's the polite way to put it. Not only was it filed on the last business day before trial but *late at night* on that last day. And it's not newly discovered material, any of it.

That wouldn't be some lawyers fancy dancing, by any chance, would it? A little taste of litigation by ambush, perchance? Google seems to think so. The exhibits have been known to Oracle for a long time, there are six months between October and April, Google reminds the court, and some of the materials Oracle knew about years ago, so there's really no excuse for this last-minute switch-aroo. Oracle excuses its tardiness with excuses like they didn't get to depose Mr. Bray until November of 2011. But, as Google notes, what about between November and April of 2012? You couldn't say something?

Actually, Oracle and Google met in December, and Oracle then sent over a revised exhibits list after that and said it might want to add some more. December of 2011. Tick, tock, tick, tock. This is April. Now, months later, and without allowing time enough for Google to even read them carefully or think about what each might mean to Oracle's trial strategy, Oracle wishes to add "a few inadvertently omitted exhibits".

What might it mean? It might just be the usual crafted "Perry Mason set-up moment" we saw with SCO, trying to catch the other side with its pants down by surprising them with materials on a brand new tack they neglected to mention openly in discovery. Or, and I'm more inclined to this explanation personally, it could be Oracle isn't happy with its current position for trial, realizes things don't look so good now that it's imminent, and desperately wants to change course quickly so as not to look utterly ridiculous.

Ah! Too late, I fear, my friends. We've already read Oracle's trial brief explaining to an astonished world that one can copyright APIs, nay, more -- an API *list*, if it's "creative" enough in its selection and arrangement. Oh, and we read that part about copyrighting a computer language. I have an idea on how Oracle can redeem itself. Oracle claimed yesterday in its 4/12/2012 copyright brief that a language is capable of fixation. Give a demo at trial, please, showing us how a language can be "fixed in a tangible medium of expression" and still be usable. I'd truly love to witness that, given that copyright law does require that fixed in a tangible medium of expression bit, last I read up on it.

As Google explained in its 4/12/2012 copyright liability trial brief yesterday in this section, with its footnotes 3 and 4:

Oracle has no response to the common sense conclusion that a computer language is a system for expression, except to argue that Section 102(b) must mean something else when it says “system.”3 Oracle’s own expert, however, has described programming languages as abstractions. See id. at ix (“Programming languages provide the abstractions, organizing principles, and control structures that programmers use to write good programs.”) (emphases added).4 Thus even Oracle’s own expert places programming languages firmly on the unprotectable “idea” side of the idea/expression dichotomy....

__________
3Oracle also argues that a computer language can be “original, text-based, and capable of fixation,” and thus that it must be copyrightable. See Oracle 4/5/12 Br. [Dkt. 859] at 9. First, Section 102(b) bars copyright protection for “original works of authorship” that fall within its enumerated classes of exclusion. See 17 U.S.C. § 102(b). Thus, the fact that a system is original, text-based and fixed does not mean that Section 102(b) does not apply.

Second, a language cannot be fixed. Certainly, a description of a language (e.g., a specification) can be fixed. A computer program written using the language (e.g., the Gmail application on Android phones) or an implementation of a language (e.g., a compiler or interpreter) can be fixed. But none of those things is “the language,” any more than a dictionary “is” English, Das Boot “is” German, or a C compiler “is” the C programming language. See Baker, 101 U.S. at 102 (“But there is a clear distinction between the book, as such, and the art which it is intended to illustrate. The mere statement of the proposition is so evident, that it requires hardly any argument to support it.”); cf. René Magritte, La trahison des images.

4 Oracle’s expert has further described designing a programming language as requiring decisions regarding what ideas to leave out. See id at 3 (“A single application also helps with one of the most difficult parts of language design: leaving good ideas out.”). And he has described studying programming languages as requiring “the study of conceptual frameworks for problem solving, software construction, and development.” Id. at 5 (emphasis added).

I can create a new system of accounting, and I can write a book about my system, describing it in minute detail. You can't copy my book, because it's copyrightable and copyrighted. But you *can* still use my described system of accounting. It's a system. An idea. And you can't copyright that. The seminal case, Baker v. Selden, already established that back in 1879, when the US Supreme Court ruled:
There is no doubt that a work on the subject of bookkeeping, though only explanatory of well known systems, may be the subject of a copyright, but then it is claimed only as a book. Such a book may be explanatory either of old systems or of an entirely new system, and, considered as a book, as the work of an author, conveying information on the subject of bookkeeping, and containing detailed explanations of the art, it may be a very valuable acquisition to the practical knowledge of the community. But there is a clear distinction between the book as such and the art which it is intended to illustrate. The mere statement of the proposition is so evident that it requires hardly any argument to support it. The same distinction may be predicated of every other art as well as that of bookkeeping. A treatise on the composition and use of medicines, be they old or new; on the construction and use of ploughs, or watches, or churns; or on the mixture and application of colors for painting or dyeing; or on the mode of drawing lines to produce the effect of perspective -- would be the subject of copyright; but no one would contend that the copyright of the treatise would give the exclusive right to the art or manufacture described therein. The copyright of the book, if not pirated from other works, would be valid without regard to the novelty, or want of novelty, of its subject matter. The novelty of the art or thing described or explained has nothing to do with the validity of the copyright. To give to the author of the book an exclusive property in the art described therein when no examination of its novelty has ever been officially made would be a surprise and a fraud upon the public. That is the province of letters patent, not of copyright. The claim to an invention or discovery of an art or manufacture must be subjected to the examination of the Patent Office before an exclusive right therein can be obtained, and it can only be secured by a patent from the government....

The conclusion to which we have come is, that blank account books are not the subject of copyright; and that the mere copyright of Selden's book did not confer upon him the exclusive right to make and use account-books, ruled and arranged as designated by him and described and illustrated in said book.

I love the part where it's written in such a way it sounds like they wrote that it's the province of patents to "give to the author of the book an exclusive property in the art described therein when no examination of its novelty has ever been officially made". Do I hear an Amen? The point is, if Oracle really wants to own and control an idea, it needs to do so with patents, not copyrights.

Here's the part of copyright law Google is referencing, 102(b):

(b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.
You mean like a list? You think? Like I say, it's too late. The ridicule will resound in the tech community until the mountains fall into the sea. If Oracle wins, of course, the laughter will morph into a deep and eternal hatred for destroying the software industry by blocking all innovation from anyone who isn't already filthy rich. Try to be a tech company after *that*. Seriously. Ask SCO how well that works out. And try to get folks to use Java after that for anything but taking out the garbage. No. Really. Just try.

Oracle has also filed [PDF] a Motion to Deem Facts Admitted by Google and a third motion [PDF], a Motion for Administrative Relief Regarding Statement to the Jury. Google had until Monday to reply to everything.

That's just mean, y'all. Google has filed its responses already, though, so Google's lawyers should be rested and rarin' to go on Monday, opening day of this trial, just in case someone was hoping otherwise. Not saying anybody was; just saying "if".

The documents:

04/12/2012 - 906 - Administrative Motion to File Under Seal Oracle's Motion for Administrative Relief to Supplement the Joint Exhibit List filed by Oracle America, Inc.. (Peters, Marc) (Filed on 4/12/2012) (Entered: 04/12/2012)

04/12/2012 - 907 - MOTION to Supplement the Joint Exhibit List filed by Oracle America, Inc.. Responses due by 4/16/2012. (Attachments: # 1 Proposed Order, # 2 Declaration of Marc David Peters, # 3 Exhibit A-C)(Peters, Marc) (Filed on 4/12/2012) (Entered: 04/12/2012)

04/12/2012 - 908 - MOTION to Deem Facts Admitted by Google filed by Oracle America, Inc.. Responses due by 4/16/2012. (Attachments: # 1 Proposed Order, # 2 Declaration of Marc David Peters, # 3 Exhibit 1, # 4 Exhibit 2)(Jacobs, Michael) (Filed on 4/12/2012) (Entered: 04/12/2012)

04/12/2012 - 909 - MOTION for Administrative Relief Regarding Statement to Jury filed by Oracle America, Inc.. Responses due by 4/16/2012. (Attachments: # 1 Proposed Order, # 2 Declaration Declaration of Marc Peters)(Jacobs, Michael) (Filed on 4/12/2012) (Entered: 04/12/2012)

04/13/2012 - 910 - ORDER FOR RESPONSE re 907 MOTION to Supplement the Joint Exhibit List filed by Oracle America, Inc., 909 MOTION for Administrative Relief Regarding Statement to Jury filed by Oracle America, Inc., 908 MOTION to Deem Facts Admitted by Google filed by Oracle America, Inc.. Signed by Judge Alsup on April 13, 2012. (whalc1, COURT STAFF) (Filed on 4/13/2012) (Entered: 04/13/2012)

04/13/2012 - 911 - REMINDER ON FIRST DAY OF TRIAL (whalc1, COURT STAFF) (Filed on 4/13/2012) (Entered: 04/13/2012)

04/13/2012 - 912 - RESPONSE (re 909 MOTION for Administrative Relief Regarding Statement to Jury ) filed byGoogle Inc.. (Van Nest, Robert) (Filed on 4/13/2012) (Entered: 04/13/2012)

04/13/2012 - 913 - RESPONSE (re 907 MOTION to Supplement the Joint Exhibit List ) Google Inc.' filed byGoogle Inc.. (Van Nest, Robert) (Filed on 4/13/2012) (Entered: 04/13/2012)

04/13/2012 - 914 - RESPONSE (re 908 MOTION to Deem Facts Admitted by Google ) filed byGoogle Inc.. (Van Nest, Robert) (Filed on 4/13/2012) (Entered: 04/13/2012)

04/13/2012 - 915 - Declaration of Eugene M. Paige in Support of 913 Opposition/Response to Motion filed byGoogle Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8)(Related document(s) 913 ) (Van Nest, Robert) (Filed on 4/13/2012) (Entered: 04/13/2012)

First, let's look at Oracle's last-minute masterpiece, trying to shovel some new exhibits onto the list:
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 AMERICA, INC.’S
NOTICE OF MOTION AND
MOTION FOR ADMINISTRATIVE
RELIEF TO SUPPLEMENT THE
JOINT EXHIBIT LIST

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

_________________

DOCUMENT SUBMITTED UNDER SEAL

NOTICE OF MOTION

PLEASE TAKE NOTICE THAT Oracle America, Inc. (“Oracle”) will, and hereby does, respectfully move for administrative relief to supplement the Joint Exhibit List for the trial starting on April 16, 2012. This Motion is based on the accompanying Memorandum of Points and Authorities, Declaration of Marc David Peters, and the entire record in this case.

1

MEMORANDUM OF POINTS AND AUTHORITIES

On October 7, 2011, the parties submitted a joint trial exhibit list (ECF No. 157) in anticipation of the original trial date of October 31, 2011. Pursuant to the Court’s guidelines, the parties have since coordinated to remove duplicate exhibits, correct errors, sub-divide certain large exhibits, and delete unneeded exhibits from the list (the parties will submit a corrected list in advance of trial). Oracle also proposed supplementing the exhibit list with items that would help complete the record and aid the jury in reaching its verdict. But Google rejected this proposal.

Accordingly, Oracle seeks leave to add a few discrete sets of documents to the exhibit list: (1) fourteen documents relating to John Rizzo and Tim Bray, Google witnesses who were disclosed only a few days before the original exhibit list was submitted, and not deposed until well after that time; (2) the transcript of a Google earnings conference call that took place after the original exhibit list was submitted; (3) two documents cited in Google’s damages expert reports, which were served only a few days before the exhibit list was submitted; (4) the Java class library poster that was displayed to the Court during the March 28, 2012 pre-trial conference; (5) a more complete version of the accused Android source code already on the exhibit list; (6) a more recent version of the Android code to show relevant changes over time; and (7) an internal Google email from Tim Lindholm [redacted].

None of these documents are new to Google (most were produced by or belong to Google itself), and Google will suffer no prejudice from their inclusion on the exhibit list. Oracle has already prepared the exhibits in the prescribed form, and they are ready for use at trial. To ensure that the trial record is complete, Oracle requests leave to add these exhibits to the list.

I. JOHN RIZZO AND TIM BRAY DOCUMENTS

Google witnesses John Rizzo and Tim Bray first surfaced in this case on October 3, 2011, when they were disclosed in the reports of Google’s damages experts, Dr. Gregory Leonard and Dr. Alan Cox. Messrs. Rizzo and Bray had been interviewed by Google’s experts regarding certain facts on which the experts relied. Oracle had little opportunity to include their documents on the exhibit list submitted on October 7, four days after the expert reports were served.

1

When Google refused to make the interviewees available for deposition, Oracle moved to compel their depositions. The Court permitted Oracle to depose three interviewees (ECF 3 No. 617), and Messrs. Rizzo and Bray were deposed on November 30, 2011, fifty-four days after the submission of the exhibit list. In preparing for their depositions, Oracle uncovered fourteen documents pertinent to the case, of which Oracle used ten during the depositions:
  • Rizzo Dep. Ex. 691. GOOGLE-23-00022587. 9/3/07 email to John Rizzo et al.
  • Rizzo Dep. Ex. 692. GOOGLE-01-00065935. 2/28/07 email to John Rizzo et al.
  • Rizzo Dep. Ex. 693. GOOGLE-40-00015636. 9/1/09 email from John Rizzo.
  • Rizzo Dep. Ex. 694. 6/4/09 tweet by John Rizzo, previously available at: http://twitter.com/ThoughtBlog.
  • GOOGLE-12-00043504. 11/8/10 email, [redacted].
  • Bray Dep. Ex. 702. GOOGLE-02-00038068. 2/18/09 publicly distributed email, including email from Tim Bray.
  • Bray Dep. Ex. 703. OAGOOGLE0019406153. 7/1/07 email to Tim Bray.
  • Bray Dep. Ex. 704. GOOGLE-01-00053353. 11/22/10 email from Tim Bray.
  • Bray Dep. Ex. 705. GOOGLE-20-00063112. 6/3/10 email from Tim Bray.
  • Bray Dep. Ex. 706. Tim Bray’s blog entry on “Concur.next—Java,” available at:
    http://www.tbray.org/ongoing/When/200x/2009/10/01/C-dot-next-Java.
  • Bray Dep. Ex. 707. 8/12/10 tweet by Tim Bray, available at:
    http://twitter.com/#!/timbray/statuses/21023407881.
  • GOOGLE-13-00011023. 7/13/10 email, reflecting a comment from Tim Bray.
  • GOOGLE-37-00026997. 7/27/10 email to Tim Bray.
  • Tim Bray’s blog entry on “Sunny Boy,” available at:
    http://www.tbray.org/ongoing/When/200x/ 2004/03/15/SunnyBoy.
Should Messrs. Rizzo and Bray be called to testify at trial, these documents will be relevant to their cross-examination. The documents had no apparent relevance until Messrs. Rizzo and Bray were identified on October 3, 2011, as persons who had provided information to Google’s damages experts. The complete significance of the documents was only illuminated by the depositions on November 30, 2011. Accordingly, it was not possible for Oracle to have included these documents on the original exhibit list submitted on October 7, 2011.

Including these documents on the list will not prejudice Google. Half of the documents were produced by Google itself during discovery, and the others are public documents created by Messrs. Rizzo and Bray. See Jackson v. Herrington, 2011 U.S. Dist. LEXIS 49503, at *10 (W.D. Ky. May 6, 2011) (failure to disclose documents was harmless because opposing party had been aware of them); P & G v. Haugen, 2007 U.S. Dist. LEXIS 15795, at *10 (D. Utah Mar. 2, 2007) (allowing supplementation where “[a]ll of the omitted materials were the subject of discovery

2

were known to Plaintiffs, and many were initially provided by Plaintiffs”). Accordingly, Oracle should be allowed to add the Rizzo and Bray documents to the exhibit list.

II. GOOGLE 3Q 2011 EARNINGS CONFERENCE CALL TRANSCRIPT

Oracle seeks to add the transcript of Google’s Third Quarter 2011 Earnings Conference Call, which took place on October 13, 2011, six days after submission of the exhibit list. See Google, Inc. Class A GOOG Q3 2011 Earnings Call Transcript, available at: http://www.morningstar.com/ earnings/PrintTranscript.aspx?id=31456567. During the call, Larry Page and Susan Wojcicki, both listed on the parties’ witness lists, discussed Android’s rapid growth. The transcript will be relevant to the examinations of Mr. Page and Ms. Wojcicki at trial.

Substantial justification exists for adding the transcript to the exhibit list, because the document did not exist at the time the parties submitted the original list on October 7, 2011. Moreover, introducing the transcript at trial would not harm Google, as Google obviously was aware of the transcript and knows its relevance to the present case.

III. DOCUMENTS CITED BY GOOGLE’S DAMAGES EXPERTS

A. Sun Community Source License (OAGOOGLE0100036648)

Oracle seeks to add the Sun Community Source License agreement between Sun and Danger, Inc., which Oracle produced to Google at OAGOOGLE010036648. [REDACTED]

Google’s damages expert, Dr. Gregory Leonard, relied on the Sun-Danger license in his October 3, 2011 analysis. (ECF No. 559, Ex.1 at 45-46.) Likewise, Professor James Kearl relied on the license in his March 21, 2012 expert report. (ECF No. 850-6 at 34-37.) Consequently, the significance of this license has increased in the time since the original exhibit list was filed October 7, 2011. At trial, the license will help the jury understand the basis of these experts’ reports. See Tater-Alexander v. Amerjan, 2011 U.S. Dist. LEXIS 42818, at *7 (E.D. Cal. Apr. 20,

3

2011) (granting motion to add exhibits that “might help the jury understand the case” where addition “will neither prejudice Plaintiff nor inconvenience the court”).

B. April 20, 2006 Email cited in Leonard report (GOOGLE-01-00065722)

Oracle seeks to add an April 20, 2006 email chain that Google expert Dr. Leonard reviewed in connection with his damages analysis. (ECF No. 559, Ex. 1, App. B at 24.) The document was disclosed in his expert report of October 3, 2011. Inclusion of this Google-produced email on the exhibit list would not prejudice Google and would give the jury a better context for understanding Dr. Leonard’s damages analysis.

IV. JAVA CLASS LIBRARY POSTER

Oracle seeks to add a publicly-available poster entitled “The Java Class Libraries Java 2 Platform Standard Edition 5.0.” Oracle used this poster during the March 28, 2012 pre-trial conference to illustrate the selection, arrangement, and structure of the Java APIs. Inclusion of this poster on the list would not prejudice Google, as the information it contains is taken from the Java APIs, with which Google is familiar. Moreover, the poster would help the jury to understand the complex structure and organization of the Java APIs.

V. ANDROID FILES REFERENCED IN MITCHELL COPYRIGHT REPORT

Oracle seeks to add better copies of the individual Android source code files referenced in the copyright report of Professor Mitchell, Oracle’s copyright and patent infringement expert.

Upon review of the Oracle Java and Android source code, Professor Mitchell identified eight Android source code files that bore significant textual similarities to the corresponding Oracle Java code. (ECF No. 397 ¶ 244.) He further found two Android files containing comments that are nearly identical to the comments in corresponding Java files. (Id. ¶ 249.) Professor Mitchell created a chart with a side-by-side comparison of the Android and Java code and comments for each of the ten literally copied Android files (these were attached to his report as Exhibits J through S). The charts contain excerpts from Android materials that Google produced in February 2011.

Professor Mitchell’s Exhibits J through S are already on the exhibit list as Exhibits 698-707. Google objected to them as violating the best evidence rule under the Fed. R. Evid. 1002.

4

To overcome this objection and provide a better copy of the accused code, Oracle seeks to add the ten referenced Android source code files taken directly from Google’s February 2011 production. Adding these ten Android source code files would not prejudice Google. Google has been aware of Oracle’s reliance on the ten files since July 29, 2011, when Oracle served Professor Mitchell’s expert report. Google deposed Professor Mitchell about these files and served a rebuttal expert report. Moreover, the ten exhibits were taken from Android source code that Google itself produced in February 2011. Separately listing the files on the exhibit list would allow Oracle to present the best possible evidence to the jury.

VI. ANDROID SOURCE CODE DOWNLOADED ON MARCH 12, 2012

Oracle seeks to add Android source code (version 2.2.3_r2, Froyo) downloaded from the Android website on March 12, 2012. The exhibit list already includes a version of Froyo source code (TX 46). The additional Froyo version is necessary to rebut Google’s representation that it has removed all literally copied code and comments from recently released versions of Android.

The recent pre-trial conference highlighted the parties’ “diametrically opposed” views over whether Google has removed the literally copied materials from Android. (3/28/12 Hr’g Tr. 15:15-26:2.) In August 2011, Google represented to the Court and Oracle that it had removed ten out of twelve files accused of literal code copying. (ECF No. 260 at 23.) In March 2012, Google’s counsel represented that Google had also removed the two remaining files. (3/28/12 Hr’g Tr. 10:23-11:4, 18:5-19:10.) However, the recent Android download shows that the copied code and comments still remain in the Froyo version downloadable from the Android website.

VII. APRIL 29, 2009 GOOGLE EMAIL (GOOGLE-02-00038403)

Finally, Oracle seeks to add an April 29, 2009 email [redacted]. Inclusion of this Google-produced email on the exhibit list will not prejudice Google, as Google has been aware of the evidence [redacted].

For the foregoing reasons, Oracle respectfully moves for leave to supplement the joint exhibit list with the above documents and source code.

5

Dated: April 12, 2011

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

By: /s/ Marc David Peters
Marc David Peters

Attorneys for Plaintiff
ORACLE AMERICA, INC.

6

And now for a treat, Google's elephant gun response. I believe I may say without fear of contradiction that there is no moss growing on Mr. Van Nest's brain. Better, it's clear he actually does seem to grok the tech:
KEKER & VAN NEST LLP
ROBERT A. VAN NEST - #84065
[email]
CHRISTA M. ANDERSON - #184325
[email]
MICHAEL S. KWUN - #198945
[emial]
[address, phone, fax]

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

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

IAN C. BALLON - #141819
[email]
HEATHER MEEKER - #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

GOOGLE INC’S OPPOSITION TO
ORACLE AMERICA'S MOTION TO
SUPPLEMENT THE JOINT EXHIBIT
LIST

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

I. INTRODUCTION

This Court’s procedures are designed to allow for an orderly designation and exchange of exhibits, permitting the parties to lodge their objections in a timely fashion and take into account the universe of evidence that will be available at trial, and thereafter shape their case accordingly. Oracle was well aware of the dozens of exhibits it now seeks to add many months prior to making a motion seeking to add them. Indeed, it even stated its intention to seek to add exhibits to the list last December. But rather than raising the issue of additional exhibits in a timely fashion, it chose to delay until well into the parties’ preparations for trial, and then to file a motion seeking to add a slew of exhibits late at night one business day prior to trial commencing. The record shows that Oracle has known that it wished to add exhibits to the list for months now, but never displayed any diligence in sharing with Google what those exhibits were. Oracle’s eleventh hour motion to add new materials to the trial exhibit list should be denied.

II. ARGUMENT

A. Oracle has not shown diligence in seeking to supplement the exhibit list

As Oracle correctly notes, the parties submitted their joint trial exhibit list on October 7, 2011, in anticipation of the then-current trial date of October 31, 2011. ECF No. 508. The parties have been working since that time to reduce the number of exhibits on the trial exhibit list, both by removing duplicated exhibits, and by removing exhibits that the parties no longer believe are necessary in light of changes to the contours of the case since October of 2011.

On December 13, 2011 (four months ago today), counsel for Oracle indicated to counsel for Google that Oracle might desire to add certain exhibits to the trial exhibit list. Declaration of Eugene M. Paige in Support of Google Inc.’s Opposition to Oracle America’s Motion to Supplement the Joint Exhibit List (“Paige Decl.”) ¶ 2. A few days later, the parties held an in- person meet and confer on the exhibit list at Morrison & Foerster’s Palo Alto offices. On the evening of Friday, December 16, counsel for Oracle forwarded a revised copy of the exhibit list, making certain corrections, and promising to provide the additional exhibits that Oracle wished to add “later in a separate email.” Paige Decl. Ex. 1. The next business day, counsel for Google responded with some corrections made by Google, and observed that Oracle had not yet sent the

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list of proposed additions for Google’s consideration. Paige Decl. Ex. 2.

Despite its indication that it would forward the exhibits it wished to add, and Google’s follow up request for those documents, Oracle never provided the exhibits that it had indicated it wished to add to the exhibit list in December during the ensuing several months. Three months later, with trial drawing near, counsel for Google wrote to follow up on the corrections to the exhibit list Google had provided in December. Paige Decl. Ex. 3. Oracle responded that it was working on those corrections to the list, and that it would send “a few inadvertently omitted exhibits that Oracle would like to include.” Paige Decl. Ex. 4. Finally, late at night on Wednesday, March 28, 2012 -- just three and a half weeks before trial -- Oracle for the first time provided Google with a list of some 57 exhibits it wished to add to the joint exhibit list. Paige Decl. Ex. 5. Given that Oracle had known that it wanted to add exhibits for months (without revealing what those proposed additions were) and how close the parties were to trial at that point, Google believed that it would be improper to expand the universe of documents available for trial, and declined to agree to adding to the exhibit list at that late date. The Court should preserve the orderly preparation of materials for trial and deny Oracle’s motion.

B. Oracle has known of some of these documents for a very long time, and did
not timely seek to supplement as to those that it allegedly became aware of
later

None of Oracle’s cited cases permitted supplementation of an exhibit list after such a lack of diligence. Jackson v. Herrington, 2011 U.S. Dist. LEXIS 49503 (W.D. Ky. May 6, 2011), dealt with “exhibits that Defendants have listed in their pretrial disclosures but did not list on their initial disclosures.” Id. at *8. In other words, the materials at issue were on the exhibit list, not part of a request to supplement it. Procter & Gamble Co. v. Haugen, 2007 U.S. Dist. LEXIS 15795 (D. Utah Mar. 2, 2007) did not “allow[] supplementation” of an exhibit list as Oracle claims; it denied a motion to exclude witnesses and exhibits not listed in pretrial disclosures, while expressly finding that the “failure to list the witnesses and exhibits was inadvertent.” Id. at *10. As explained below, none of the materials that Oracle now seeks to add to the exhibit list could be fairly characterized as inadvertently omitted. Moreover, even if these were merely inadvertent omissions on Oracle’s part, that would not end the inquiry: “‘inadvertently’ leaving

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the photos off the exhibit list does not show the requisite good cause. Furthermore, Defendants’ appeal to the absence of prejudice is weak because the absence of prejudice alone does not equate to good cause.” Seely v. Archuleta, 2011 U.S. Dist. LEXIS 91576, at *39-*40 (D. Colo. Aug. 17, 2011) (citation omitted) (denying motion to amend exhibit list).

1. Sun license agreement with Danger (Part III.A)

Oracle’s failure to include this document on the initial October trial exhibit list is inexplicable. Oracle does not deny that it was well aware of the document throughout the case; indeed, it attaches multiple deposition transcripts in which its counsel repeatedly questioned witnesses about the subject matter of the document, some of them from as early as May 2011. Yet its only explanation for failing to designate it in the first instance is that its significance was enhanced when two damages experts later discussed it in their reports. Oracle has been well aware of the license throughout the course of the case, and made a choice in October not to include it as among the documents it would use at trial. Oracle should not now be permitted to add this document at the eleventh hour.

2. Documents Google long ago produced (Parts III.B and VII)

Oracle offers no explanation as to why the April 20, 2006 email chain and the April 29, 2009 email chain were not included on its initial exhibit list. The April 2009 email involves a witness with whom Oracle has been concerned for some time. It was produced in discovery by Google, and was created two and a half years before Oracle submitted its exhibit list. The April 2006 email chain was likewise produced by Google and in existence more than five years prior to submission of the exhibit list.

Moreover, Oracle admits that it knew of the April 2006 email on October 3, when it reviewed Dr. Leonard’s expert report. It could have contacted Google about adding it to the exhibit list shortly thereafter, or at the latest provided it to Google when the parties discussed the exhibit list in December. Oracle claims that Google will not be prejudiced since Google itself has been aware of these documents for some time. But if that were the only inquiry, there would be no reason to have an orderly exhibit list process; parties could simply put into evidence whatever documents they wished so long as they originated with their opponents. That is not the law, is not

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conducive to orderly trial preparation, and offers no reason to allow Oracle to add these documents at this late date.

3. Documents relating to Tim Bray and John Rizzo (Part I)

Oracle claims that Tim Bray and John Rizzo “first surfaced in this case on October 3, 2011.” That is not true. Oracle itself identified Mr. Bray as a “relevant custodian” in a letter of March 1, 2011, seven months prior to that date. Paige Decl. Ex. 6. And Google expressly identified Mr. Rizzo as a witness on whom it may rely to support its claims and defenses in a July 6, 2011 Amended Initial Disclosure Statement, three months before the exhibit list was submitted. Paige Decl. Ex. 7 at 7. Oracle was thus well aware of the existence of both of these witnesses, and had every opportunity to include the listed documents prior to the October exchange of exhibit lists.

Even leaving aside Oracle’s knowledge of the significance of these witnesses early on in the case, Oracle admits that it knew of the relevance of these documents no later than November 30, 2011, when it deposed Messrs. Rizzo and Bray. There is no reason that Oracle could not have made this request in a timely fashion shortly after those depositions, including at the parties’ meet and confer discussions in December of 2011 or shortly thereafter, if it truly believed these documents to be essential to its presentation at trial.

4. Additional Android Source Code (Parts V and VI)

Oracle seeks to add additional source code that Google produced in February 2011 to the exhibit list. Again, the fact that the source code that Oracle desires to use is not on the exhibit list is a problem of Oracle’s own creation. As Oracle acknowledges, this source code was relied upon by Oracle at least as early as July 29, 2011, when it served Dr. Mitchell’s expert report. Yet Oracle chose not to include that source code on the exhibit list. Instead, Oracle has included on the exhibit list source code that Google produced in July of 2011. This is the source code to which Oracle refers in its motion as Trial Exhibit 46. Mot. at 5:11-12. Google has told Oracle that it does not object to Oracle creating excerpts of exhibits that have been made a part of the exhibit list, like that July 2011 source code production. Paige Decl. Ex. 8. However, Oracle’s request to add other source code that Google had timely produced to it throughout discovery, and

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that could have been, but was not, placed on the exhibit list in a timely fashion, should be denied.

With respect to Oracle’s request to add source code that it purportedly downloaded just last month from the Internet, the asserted reason that Oracle wishes to use this belated exhibit is to contradict arguments that it claims Google will make about the removal of certain files from source code. Of course, if the material reflected in the source code is truly contrary to the testimony at trial, it could be used to impeach that testimony, and it need not be on the exhibit list in order to be used in that fashion. Therefore, Oracle has offered no justification for allowing it to add this additional source code at this late date.

5. Publicly available documents (Parts II and IV)

Oracle seeks to add a poster of the Java Class Libraries and an earnings call transcript from Google. Oracle says nothing in its motion about when the poster was published, but Google understands that a poster of this sort, published in 2004, is presently available on amazon.com. Thus, the poster was available well prior to the filing of the exhibit list, and Oracle could have included it in its initial submission if it had chosen to do so. With respect to the earnings transcript call, Oracle says only that it contains a discussion of “Android’s rapid growth.” There are surely other documents that would reflect the growth of Android on the exhibit list, and nothing to suggest that the particular earnings call -- which took place just a few days after the exhibit list had been submitted -- is of special importance. It, too, could have been brought to Google’s attention at an earlier time if Oracle really felt that it needed to include the document on the list.

For the foregoing reasons, Google respectfully requests that Oracle’s motion to add new documents to the exhibit list at this late stage in the case be denied.

Dated: April 13, 2012

KEKER & VAN NEST LLP

/s/ Robert A. Van Nest
ROBERT A. VAN NEST Attorneys for Defendant
GOOGLE INC.

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