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Oracle v. Google - Final Copyright Filngs, Jury Instructions, Verdict Form ~mw
Tuesday, May 01 2012 @ 11:00 AM EDT

The jury is out on the question of copyright liability, the judge having given them their instructions (1018 [PDF; Text]) and the (Special Verdict Form [PDF; Text]) they are to complete. There is a lot of evidence for the jury to wade through even though the questions themselves seem to be pretty basic.

In the meantime the parties are moving ahead with preparations for Phase II of the trial - patent infringement liability. Oracle has identified its first ten witnesses for Phase II - (1025 [PDF; Text])

Google, for its part, takes aim at one section of Dr. Kearl's (the court appointed damages expert) damages report, specifically that Dr. Kearl went beyond the law in determining patent damages. (1023 [PDF; Text]) The law requires those damages to be determined solely on the intellectual property at issue in the case. Google asserts that, when Dr. Kearl suggested that "no apportionment is appropriate, and that Google should be charged a royalty for the entire bundle," Dr. Kearl ignored the rule of law.

In his deposition Dr. Kearl acknowledged there may be some inconsistency, and, as Google points out, the Court previously rejected this same approach when suggested by Oracle's damages expert. Google is asking that paragraphs 97-105 of Dr. Kearl's report, the paragraphs suggesting this approach, be stricken.


***********

Docket

04/30/2012 - 1016 - OBJECTIONS to re 1012 Order Oracle's Objections to the Court's Final Charge to the Jury and Special Verdict Form (Phase One) by Oracle America, Inc.. (Jacobs, Michael) (Filed on 4/30/2012) (Entered: 04/30/2012)

04/30/2012 - 1017 - NOTICE OF JURY INSTRUCTIONS. Signed by Judge Alsup on April 30, 2012. (Attachments: # 1 Special Verdict Form)(whalc1, COURT STAFF) (Filed on 4/30/2012) (Entered: 04/30/2012)

04/30/2012 - 1018 - FINAL CHARGE TO THE JURY AND SPECIAL VERDICT FORM. Signed by Judge Alsup on April 30, 2012. (Attachments: # 1 Special Verdict Form)(whalc1, COURT STAFF) (Filed on 4/30/2012) (Entered: 04/30/2012)

04/30/2012 - 1020 - Minute Entry: Jury Trial held on 4/30/2012 before William Alsup (Date Filed: 4/30/2012). Closing Arguments held. Jury Instructions read. Deliberations began. Further Jury Trial set for 5/1/2012 8:00 AM. (Court Reporter Kathy Sullivan; Debra Pas.) (dt, COURT STAFF) (Date Filed: 4/30/2012) (Entered: 04/30/2012)

04/30/2012 - 1021 - MOTION Oracle's Notice of Motion and Motion for Administrative Relief to Supplement the Joint Exhibit List re 991 Order on Administrative Motion to File Under Seal filed by Oracle America, Inc.. Responses due by 5/14/2012. Replies due by 5/21/2012. (Peters, Marc) (Filed on 4/30/2012) (Entered: 04/30/2012)

04/30/2012 - 1022 - EXHIBITS re 991 Order on Administrative Motion to File Under Seal Exhibits 1 - 3 to Declaration of Marc David Peters in Support of Oracle's Motion for Administrative Relief to Supplement the Joint Exhibit List filed by Oracle America, Inc.. (Related document(s) 991 ) (Peters, Marc) (Filed on 4/30/2012) (Entered: 04/30/2012)

04/30/2012 - 1023 - MOTION to Strike Portions of Dr. James Kearl's Expert Report (Public Version Pursuant to Dkt. No. 935) filed by Google Inc.. Responses due by 5/14/2012. Replies due by 5/21/2012. (Attachments: # 1 Exhibit A)(Van Nest, Robert) (Filed on 4/30/2012) (Entered: 04/30/2012)

04/30/2012 - 1024 - DOCUMENT E-FILED UNDER SEAL re 935 Order on Administrative Motion to File Under Seal, Google's Opposition to Oracle's Motion to Strike Portions of Dr. James Kearl's Expert Report by Google Inc.. (Attachments: # 1 Exhibit A)(Van Nest, Robert) (Filed on 4/30/2012) (Entered: 04/30/2012)

04/30/2012 - 1025 - Witness List by Oracle America, Inc. Rolling List of Next Ten Witnesses. (Muino, Daniel) (Filed on 4/30/2012) (Entered: 04/30/2012)

04/30/2012 - 1026 - DOCUMENT E-FILED UNDER SEAL re 935 Order on Administrative Motion to File Under Seal, MOTION TO EXCLUDE PORTIONS OF RULE 706 EXPERT REPORT OF DR. JAMES KEARL by Oracle America, Inc.. (Holtzman, Steven) (Filed on 4/30/2012) (Entered: 04/30/2012)

04/30/2012 - 1027 - DOCUMENT E-FILED UNDER SEAL re 935 Order on Administrative Motion to File Under Seal, EXHIBITS TO 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 by Oracle America, Inc.. (Holtzman, Steven) (Filed on 4/30/2012) (Entered: 04/30/2012)

04/30/2012 - 1028 - REDACTION to 935 Order on Administrative Motion to File Under Seal, MOTION TO EXCLUDE PORTIONS OF THE RULE 706 EXPERT REPORT OF DR. JAMES KEARL by Oracle America, Inc.. (Holtzman, Steven) (Filed on 4/30/2012) (Entered: 04/30/2012)

04/30/2012 - 1029 - REDACTION to 935 Order on Administrative Motion to File Under Seal, EXHIBITS TO 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 by Oracle America, Inc.. (Attachments: # 1 Exhibit F & H)(Holtzman, Steven) (Filed on 4/30/2012) (Entered: 04/30/2012)

04/30/2012 - 1030 - DOCUMENT E-FILED UNDER SEAL re 935 Order on Administrative Motion to File Under Seal,,,,,,, ORACLE AMERICA, INC.S OPPOSITION TO GOOGLES MOTION TO STRIKE PORTIONS OF DR. JAMES KEARLS EXPERT REPORT by Oracle America, Inc.. (Holtzman, Steven) (Filed on 4/30/2012) (Entered: 04/30/2012)

04/30/2012 - 1031 - DOCUMENT E-FILED UNDER SEAL re 935 Order on Administrative Motion to File Under Seal,,,,,,, EXHIBITS C & H TO DECLARATION OF MEREDITH DEARBORN IN SUPPORT OF ORACLE AMERICA, INC.S OPPOSITION TO GOOGLES MOTION TO STRIKE PORTIONS OF DR. JAMES KEARLS EXPERT REPORT by Oracle America, Inc.. (Holtzman, Steven) (Filed on 4/30/2012) (Entered: 04/30/2012)

04/30/2012 - 1032 - REDACTION to 935 Order on Administrative Motion to File Under Seal, ORACLE AMERICA, INC.S OPPOSITION TO GOOGLES MOTION TO STRIKE PORTIONS OF DR. JAMES KEARLS EXPERT REPORT by Oracle America, Inc.. (Holtzman, Steven) (Filed on 4/30/2012) (Entered: 04/30/2012)

04/30/2012 - 1033 - EXHIBITS re 935 Order on Administrative Motion to File Under Seal,,,,,,, 872 Declaration in Support, TO DECLARATION OF MEREDITH DEARBORN IN SUPPORT OF ORACLE AMERICA, INC.S OPPOSITION TO GOOGLES MOTION TO STRIKE PORTIONS OF DR. JAMES KEARLS EXPERT REPORT filed byOracle America, Inc.. (Related document(s) 935 , 872 ) (Holtzman, Steven) (Filed on 4/30/2012) (Entered: 04/30/2012)


***********

Documents

1018

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

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

No. C 10-03561 WHA

FINAL CHARGE TO THE JURY (PHASE ONE)
AND SPECIAL VERDICT FORM


1.

Members of the jury, it is now time for me to give you the final instructions, including instructions on the law that governs this case. A copy of these instructions will be available in the jury room for you to consult as necessary.

It is your duty to find the facts from all the evidence and to decide whether the side with the burden of proof has carried that burden, applying the elements of proof required by the law, elements I will provide you in a moment. In following my instructions, you must follow all of them and not single out some and ignore others. You must not read into these instructions or into anything the Court may have said or done as suggesting what verdict you should return — that is a matter entirely up to you.

2.

The evidence from which you are to decide what the facts are consists of:

1. The sworn testimony of witnesses, whether presented in person or by depositions;

2. The exhibits received into evidence; and

3. Any stipulated facts or facts I told you were deemed to be evidence.

3.

Certain things, however, are not evidence, and you may not consider them in deciding what the facts are. I will list them for you:

1. Arguments, statements and objections by lawyers are not evidence. The lawyers are not witnesses. What they have said in their opening statements, closing arguments and at other times is intended to help you interpret the evidence, but it is not evidence itself. If the facts as you remember

2


them differ from the way the lawyers have stated them, your memory of them controls.

2. A suggestion in a question by counsel or the Court is not evidence unless it is adopted by the answer. A question by itself is not evidence. Consider it only to the extent it is adopted by the answer.

3. Testimony or exhibits that have been excluded or stricken, or that you have been instructed to disregard, are not evidence and must not be considered. In addition, some testimony and exhibits have been received only for a limited purpose; where I have given a limiting instruction, you must follow it.

4. Anything you may have seen or heard when the Court was not in session is not evidence.

4.

Evidence may be direct or circumstantial. Direct evidence is direct proof of a fact, such as testimony by a witness about what that witness personally saw or heard, or did. Circumstantial evidence is proof of one or more facts from which you could find another fact. By way of example, if you wake up in the morning and see that the sidewalk is wet, you may find from that fact that it rained during the night. However, other evidence, such as a turned-on garden hose, may explain the presence of water on the sidewalk. Therefore, before you decide that a fact has been proved by circumstantial evidence, you must consider all the evidence in the light of reason, experience and common sense. You should consider both kinds of evidence. The law makes no distinction between the weight to be given to either direct or circumstantial evidence. It is for you to decide how much weight to give to any evidence.

3


5.

In deciding the facts in this case, you may have to decide which testimony to believe and which testimony not to believe. You may believe everything a witness says, or part of it or none of it. In considering the testimony of any witness, you may take into account:

1. The opportunity and ability of the witness to see or hear or know the things testified to;

2. The witness’ memory;

3. The witness’ manner while testifying;

4. The witness’ interest in the outcome of the case and any bias or prejudice;

5. Whether other evidence contradicted the witness’ testimony;

6. The reasonableness of the witness’ testimony in light of all the evidence; and

7. Any other factors that bear on believability.

6.

You are not required to decide any issue according to the testimony of a number of witnesses, which does not convince you, as against the testimony of a smaller number or other evidence, which is more convincing to you. The testimony of one witness worthy of belief is sufficient to prove any fact. This does not mean that you are free to disregard the testimony of any witness merely from caprice or prejudice, or from a desire to favor either side. It does mean that you must not decide anything by simply counting the number of witnesses who have testified on the opposing sides. The test is not the number of witnesses but the convincing force of the evidence. You should base your decision on all of the evidence regardless of which party presented it.

4


7.

A witness may be discredited or impeached by contradictory evidence or by evidence that, at some other time, the witness has said or done something or has failed to say or do something that is inconsistent with the witness’ present testimony. If you believe any witness has been impeached and thus discredited,


you may give the testimony of that witness such credibility, if any, you think it deserves.

8.

Discrepancies in a witness’ testimony or between a witness’ testimony and that of other witnesses do not necessarily mean that such witness should be discredited. Inability to recall and innocent misrecollection are common. Two persons witnessing an incident or a transaction sometimes will see or hear it differently. Whether a discrepancy pertains to an important matter or only to something trivial should be considered by you.

However, a witness willfully false in one part of his or her testimony is to be distrusted in others. You may reject the entire testimony of a witness who willfully has testified falsely on a material point, unless, from all the evidence, you believe that the probability of truth favors his or her testimony in other particulars.

9.

In determining what inferences to draw from evidence you may consider, among other things, a party’s failure to explain or deny such evidence.

10.

Certain charts and summaries have been received into evidence. Charts and summaries are only as good as the underlying supporting testimony or material. You should, therefore, give them only such weight as you think the underlying material deserves.

5


11.

Now I will address the burden of proof. In this case, the preponderance of the evidence standard applies on all sides, so whoever has the burden of proof on an issue must carry that issue by a preponderance of the evidence. When a party has the burden of proof on any claim by a preponderance of the evidence, it means you must be persuaded by the evidence that the claim is more probably true than not true. To put it differently, if you were to put the evidence favoring a

plaintiff and the evidence favoring a defendant on opposite sides of a scale, the party with the burden of proof on the issue would have to make the scale tip somewhat toward its side. If the party fails to meet this burden, then the party with the burden of proof loses on the issue. Preponderance of the evidence basically means “more likely than not.”

12.

On any claim, if you find that plaintiff carried its burden of proof as to each element of a particular claim, your verdict should be for plaintiff on that claim. If you find that plaintiff did not carry its burden of proof as to each element, you must find against plaintiff on that claim. This same principle also applies to defendants on claims for which it has the burden of proof.

13.

I will now turn to the law that applies to this case. Oracle seeks relief against Google for alleged copyright infringement. Google denies infringing any such copyrighted material and asserts that any use by it of copyrighted material was protected, among other things, by a defense called “fair use,” which will be explained below. If you find liability in this phase, we will consider the extent of damages in the third phase of the trial. Now, I will give you an overview of copyright law in general. Then I will give you a summary of the claims and defenses at issue in this case. After that I will give you a further statement of the copyright law to help you in resolving the claims and defenses.

6


14.

By federal statute, copyright includes exclusive rights to copy a work, rights that lasts for 95 years from the date of publication. The rights include the exclusive rights to:

1. Make additional copies or otherwise reproduce the copyrighted work or to license others to do so;

2. Recast, transform, or adapt the work, that is, prepare derivative works based upon the copyrighted work;

3. Distribute copies of the copyrighted work to the public by sale; and

4. Display publicly a copyrighted work.

It is the owner of a copyright who may exercise these exclusive rights to copy. Even though someone may acquire a copy of the copyrighted work, such as a book from a bookstore, for example, the copyright owner retains rights to control the making of copies of the work.

15.

Copyright automatically exists in a work the moment it is fixed in any tangible medium of expression, such as putting pen to paper. The owner of the copyright may then register the copyright by delivering to the Copyright Office of the Library of Congress a copy of the copyrighted work and applying via a registration form, after which the Copyright Office will either allow or disallow the application. By way of examples, copyrighted works can include

1. Literary works like books, periodicals and, of particular interest here, operating manuals;

2. Musical works;

3. Photographs and drawings;

4. Motion pictures;

5. Computer programs, also of particular interest here.

7


Only that part of the work comprised of original works of authorship fixed in any tangible medium of expression from which it can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device can be protected by copyright. To take examples, words can be fixed on paper, and a computer program can be fixed in the memory of a mobile phone.

16.

As stated, the owner of a copyright has the exclusive right to make copies of all or more than a de minimis part of the copyrighted work, subject only to the right of anyone to make fair use of all or a part of any copyrighted material, all as will be explained below.

17.

The copyright confers ownership over the particular expression of ideas in a work but it never confers ownership over ideas themselves. For example, if a book describes a strategy for playing a card game, the copyright prevents anyone (but the owner) from duplicating the book itself but everyone is still free to read the book and to use the strategy, for the idea set forth in the book, that is the strategy, is not protected by copyright. And, everyone is entitled to write their own book about the same game and the same strategy so long as they do not plagiarize the earlier book. Again, the main point is that the copyright protects the particular expression composed by the author.

Another statutory limitation on the scope of a copyright is that copyright never protects any procedure, process, system, method of operation, concept, principle, or discovery. Possibly such things can be claimed under the patent system or by trade secret laws but they may not be claimed by copyright. For purposes of your deliberations, I instruct that the copyrights in question do cover the structure, sequence and organization of the compilable code.

8


18.

I will now turn to the claims in this case. Oracle claims Google has infringed its copyrights in two registered works, namely, “Java 2 Standard Edition, Version 1.4” (TX 464) and “Java 2 Standard Edition, Version 5.0” (TX 475), and the applications leading to those registrations appear at TX 3529 and 3530. Among other things, the registered copyrights generally include the compilable code and documentation for the Java API packages. The main issues you must decide concern these two general types of material contained therein, namely “compilable code” and “documentation.” As used in these instructions and the Special Verdict Form, the term API “compilable code” refers to method names and class names, declarations, definitions, parameters, organization, and implementation (whether in the form of source code or object code) implementing the various API functions. The “compilable code” does not include the English-language comments you have heard about. Even though such comments are embedded in the software program, these English-language comments do not get compiled and are not used by the computer to perform API functions. Instead, the English-language comments are part of what I will call the API “documentation,” sometimes referred to as the “specification,” a term that encompasses all of the English-language comments. The term “API documentation” includes all content — including English-language comments as well as method names and class names, declarations, definitions, parameters, and organization — in the reference document for programmers. Again, please remember that although these English-language comments appear in the software program listing, they can be extracted for handy reference in the guides made available to programmers. So, I will be referring to the “API compilable code” and to the “API documentation.”

19.

The copyrighted Java platform has more than 37 API packages and so does the accused Android platform. As for the 37 API packages that overlap,

9


Google agrees that it uses the same names and declarations but contends that its line-by-line implementations are different (with the exception of the rangeCheck lines), a contention not disputed by Oracle. Instead, Oracle contends that Google copied the structure, sequence and organization of the compilable code for the 37 API packages as a group. Google agrees that the structure, sequence and organization of the 37 accused API packages in Android is substantially the same as the structure, sequence and organization of the corresponding 37 API packages in Java. Google states, however, that the elements it has used are not infringing and, in any event, its use was protected by a statutory rule permitting anyone to make “fair use” of copyrighted works.

20.

Now, let me tell you the law about names. The copyrights do not cover the names, such as those given to files, packages, classes, and methods, because under the law, names cannot be copyrighted. This applies to the name “java” as well. Although “Java” has been registered as a trademark, there is no trademark claim in this lawsuit. The name java cannot be copyrighted, nor can any other name, whether one or two words or longer in length. While individual names are not protectable on a standalone basis, names must necessarily be used as part of the structure, sequence, and organization and are to that extent protectable by copyright.

21.

With respect to the API documentation, Oracle contends Google copied the English-language comments in the registered copyrighted work and moved them over to the documentation for the 37 API packages in Android. Google agrees that there are similarities in the wording but, pointing to differences as well, denies that its documentation is a copy. Google further asserts that the similarities are largely the result of the fact that each API carries out the same functions in both systems. Google again asserts the statutory defense of fair use.

10


22.

The issues just discussed center on the API packages. Apart from the API issues, I will now describe a list of specific items that Oracle contends were copied verbatim by Google. Specifically, Oracle contends that Google copied verbatim certain lines of compilable code, namely the rangeCheck method in two files, other source code as compiled into object code in seven “Impl.Java” files and one other file and, finally, certain English-language comments in two other files. Google responds that any verbatim copying by it was excusable under the law as “de minimis.” For purposes of this group of infringement contentions, the structure, sequence and organization is irrelevant and the comparison must be made to the work as a whole as defined in a moment.


23.

Now, I will turn to the more detailed law. In order to prove infringement, Oracle must first prove that Oracle’s work is original and that it is the owner of the part of the work allegedly copied. For your purposes, the parties agree that there are no issues of ownership or originality for you to decide.

24.

Oracle must also prove that Google copied all or a protected part of a copyrighted work owned by Oracle and that the amount of copying was not de minimis. So, there are two elements Oracle must prove to carry its burden on infringement, namely copying of a protected part and the part copied was more than de minimis when compared to the work as a whole. These are issues for you to decide.

There are two ways to prove copying. One is by proof of direct copying, as where the copyrighted work itself is used to duplicate or restate the same words and symbols on a fresh page.

The second way is via circumstantial evidence by showing the accused had access to the copyrighted passages in question and that there are substantial

11


similarities or, in certain instances, virtual identity between the copyrighted work and the accused work. The virtual identity test is used when the subject under consideration is a narrow one and we would expect certain terms and phrases to be used. This is in contrast to, for example, a fictional work in which there will be a broad range of creativity, in which case it is necessary only to prove substantial similarity. In this trial, you should use the substantial similarity test for all such comparisons except for those involving the API documentation, in which case you should use the virtual identity test. This is because the documentation for the API packages describe narrow technical functions and it is to be expected that some of the same words and phrases would likely be used.

25.

To determine whether the copyrighted work and the accused work are substantially similar, or where appropriate, virtual identical, you must compare to the works as whole. I will define the works as a whole in a moment.

However, in comparing to the works as a whole, you cannot consider similarities to unprotectable elements of Oracle’s works. I have instructed you about the protectable and unprotectable elements of Oracle’s work.

26.

Now, I will explain the law governing Google’s defense based on the statutory right of anyone to make “fair use” of copyrighted works. Anyone may use any copyrighted work in a reasonable way under the circumstances without the consent of the copyright owner if it would advance the public interest. Such use of a copyrighted work is called a “fair use.” The owner of a copyright cannot prevent others from making a fair use of the owner’s copyrighted work. For example, fair use may include use for criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research.

Google has the burden of proving this defense by a preponderance of the evidence.

12


In determining whether the use made of the work was fair, you should consider the following factors:

1. The purpose and character of the use, including whether such use is of a commercial nature, for nonprofit educational purposes, and whether such work is transformative (meaning whether Google’s use added something new, with a further purpose or different character, altering the copied work with new expression, meaning, or message). Commercial use cuts against fair use while transformative use supports fair use;
2. The nature of the copyrighted work, including whether the work is creative (which cuts against fair use), functional (which supports fair use), or factual (which also supports fair use);

3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole. The greater the quantity and quality of the work taken, the less that fair use applies; and

4. The effect of the use upon the potential market for or value of the copyrighted work. Impairment of the copyrighted work cuts against fair use.

All the factors should be weighed together to decide whether Google’s use was fair use or not. It is up to you to decide how much weight to give each factor but you must consider all factors. If you find that Google proved by a preponderance of the evidence that Google made a fair use of Oracle’s work, your verdict should be for Google on that question in the Special Verdict Form.

13


27.

With respect to the infringement issues concerning the rangeCheck and other similar files, Google agrees that the accused lines of code and comments came from the copyrighted material but contends that the amounts involved were so negligible as to be de minimis and thus should be excused. To be clear with respect to a different issue. The parties are in agreement that the structure, sequence, and organization of the API packages is more than de minimis.

28.

Copying that is considered “de minimis” is not infringing. Copying is “de minimis” only if it is so meager and fragmentary that compared to the work as a whole the average audience would not recognize the appropriation. You must consider the qualitative and quantitative significance of the copied portions in relation to the work as a whole. The burden is on Oracle to prove that the copied material was more than de minimis.

The relevant comparison is the copied portion contrasted to the work as a whole, as drawn from the copyrighted work, not contrasted to the accused infringer’s work as a whole. For example, if an infringing excerpt is copied from a book, it is not excused from infringement merely because the infringer includes the excerpt in a much larger work of its own.

29.

In your deliberations, you will need to make certain comparisons to the “work as a whole.” It is my job to isolate and identify for you the “work as a whole.” You must take my identification as controlling if and when this comes up in your deliberations. This issue arises when (1) comparing Oracle’s work and Android’s work for similarity under both substantial similarity and virtual identity standards, (2) deciding whether Google copied only a de minimis amount of Oracle’s work, and (3) evaluating the third factor of fair use: the amount and substantiality of the portion used in relation to the copyrighted work as a whole.

14


Although you have seen that the copyright registrations cover a large volume of work, the entire registered work is not the work as a whole for these purposes. This may seem odd to you, so let me give an example. An entire magazine issue may be copyrighted but a specific article advertisement or photograph may be the relevant work as a whole, depending on what was allegedly copied.

For purposes of this case, I have determined that the “work as a whole” means the following: For purposes of Question No. 1 in the Special Verdict Form, the “work as a whole” constitutes all of the compilable code associated with all of the 166 API packages (not just the 37) in the registered work. This excludes the virtual machine. Similarly, for the purposes of Question No. 2 in the Special Verdict Form, the “work as a whole” means the contents (including name, declaration and English-language comments) of the documentation for all of the 166 API packages (not just the 37) in the registered work. For purposes of Question No. 3, the “work as a whole” is the compilable code for the individual file except for the last two files listed in Question No. 3, in which case the “work as a whole” is the compilable code and all the English-language comments in the same file.

30.

Unless you find fair use, de minimis, or non-infringement in Google’s favor, Google had no right to copy any elements of the Java platform protected by copyright unless it had a written license to do so from Sun or Oracle or had a written sub-license to do so from a third party who had a license from Sun or Oracle conferring the right to grant such sub-licenses. The burden would be on Google to prove it had any such express license or sublicense rights. But in this trial it makes no such contention. Put differently, if Google claims a license from a third party, Google has the burden to prove that the third party itself had the proper right and authority from Sun or Oracle as to any of the copyrights owned

15


by Sun or Oracle and used by Google, for Google could acquire from the third party no greater right than the third party had in the first place. Similarly, if Google contends that Oracle or Sun had dedicated elements protected by copyright to the public domain for free and open use, the burden would be on Google to prove such a public dedication but the parties agree that that issue is for me to decide, not for you as the jury to decide. This statement of the law regarding licenses is simply to put some of the evidence you heard in context.

31.

When you begin your deliberations, you should elect one member of the jury as your foreperson. That person will preside over the deliberations and speak for you here in court. I recommend that you select a foreperson who will be good at leading a fair and balanced discussion of the evidence and the issues.

You will then discuss the case with your fellow jurors to reach agreement if you can do so. Your verdict as to each claim and as to damages, if any, must be unanimous. Each of you must decide the case for yourself, but you should do so only after you have considered all of the evidence, discussed it fully with the other jurors, and listened to the views of your fellow jurors.

Do not be afraid to change your opinion if the discussion persuades you that you should. Do not come to a decision simply because other jurors think it is right. It is important that you attempt to reach a unanimous verdict but, of course, only if each of you can do so after having made your own conscientious decision. Do not change an honest belief about the weight and effect of the evidence simply to reach a verdict.

I will give you a special verdict form to guide your deliberations.

16


32.

Some of you have taken notes during the trial. Whether or not you took notes, you should rely on your own memory of what was said. Notes are only to assist your memory. You should not be overly influenced by the notes. When you go into the jury room, the Clerk will bring in to you the trial exhibits received into evidence to be available for your deliberations. The Clerk will also provide you with an index to them.

33.

As I noted before the trial began, when you retire to the jury room to deliberate, you will have with you the following things:

1. All of the exhibits received into evidence;

2. An index of the exhibits if the lawyers are able to stipulate as to its form;

3. A work copy of these jury instructions for each of you;

4. A work copy of the verdict form for each of you; and

5. An official verdict form.

When you recess at the end of a day, please place your work materials in the brown envelope provided and cover up any easels with your work notes so that if my staff needs to go into the jury room, they will not even inadvertently see any of your work in progress.

34.

A United States Marshal will be outside the jury-room door during your deliberations. If it becomes necessary during your deliberations to communicate with me, you may send a note through the marshal, signed by your foreperson or by one or more members of the jury. No member of the jury should ever attempt to communicate with me except by a signed writing, and I will respond to the jury concerning the case only in writing or here in open court. If you send out a question, I will consult with the lawyers before answering it, which may take

17


some time. You may continue your deliberations while waiting for the answer to any question. Remember that you are not to tell anyone — including me — how the jury stands, numerically or otherwise, until after you have reached a unanimous verdict or have been discharged. Do not disclose any vote count in any note to the Court.

35.

Now that you are going to begin your deliberations, however, you must stay until 4:00 P.M. You may, of course, take a reasonable lunch break. The Court recommends that you continue to start your deliberations by 8:00 A.M. If you do not reach a verdict by the end of today, then you will resume your deliberations tomorrow and thereafter.

It is very important that you let the Clerk know in advance what hours you will be deliberating so that the lawyers may be present in the courthouse at any time the jury is deliberating.

36.

You may only deliberate when all of you are together. This means, for instance, that in the mornings before everyone has arrived or when someone steps out of the jury room to go to the restroom, you may not discuss the case. As well, the admonition that you are not to speak to anyone outside the jury room about this case still applies during your deliberation.

18


37.

After you have reached a unanimous agreement on a verdict, your foreperson will fill in, date and sign the verdict form and advise the Court that you have reached a verdict. The foreperson should hold onto the filled-in verdict form and bring it into the courtroom when the jury returns the verdict. Thank you for your careful attention. The case is now in your hands. You may now retire to the jury room and begin your deliberations.

Dated: April 30, 2012

/s/William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE



Special Verdict Form

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

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

No. C 10-03561 WHA

SPECIAL VERDICT FORM

YOUR ANSWER MUST BE UNANIMOUS.

1. As to the compilable code for the 37 Java API packages in question taken as a group:

A. Has Oracle proven that Google has infringed the overall structure, sequence and organization of copyrighted works?

Yes __________ No __________

(IF YOU ANSWER “NO” TO QUESTION 1A, THEN SKIP TO QUESTION NO. 2.)

B. Has Google proven that its use of the overall structure, sequence and organization constituted “fair use”?

Yes __________ No __________


2. As to the documentation for the 37 Java API packages in question taken as a group:

A. Has Oracle proven that Google has infringed?

Yes __________ No __________

(IF YOU ANSWER “NO” TO QUESTION 2A, THEN SKIP TO QUESTION NO. 3.)

B. Has Google proven that its use of Oracle’s Java documentation constituted “fair use”?

Yes __________ No __________

3. Has Oracle proven that Google’s conceded use of the following was infringing, the only issue being whether such use was de minimis:

Yes
(Infringing)
No
(Not Infringing)
A.The rangeCheck method in
TimSort.java and
ComparableTimSort.Java
______________
B.Source code in seven “Impl.java”
files and the one “ACL” file
______________
C.The English-language comments in
CodeSourceTest.java and
CollectionCertStoreParameters
Test.java
______________

2


4. Answer the following special interrogatories only if you answer “yes” to Question 1A.

A. Has Google proven that Sun and/or Oracle engaged in conduct Sun and/or Oracle knew or should have known would reasonably lead Google to believe that it would not need a license to use the structure, sequence, and organization of the copyrighted compilable code?

Yes __________ No __________

B. If so, has Google proven that it in fact reasonably relied on such conduct by Sun and/or Oracle in deciding to use the structure, sequence, and organization of the copyrighted compilable code without obtaining a license?

Yes __________ No __________

Your answers to Questions 4A and 4B will be used by the judge with issues he must decide. Questions 4A and 4B do not bear on the issues you must decide on Questions 1 to 3.

Dated:

____________________________________
FOREPERSON

3



1023

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

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

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

IAN C. BALLON - #141819
[email]
HEATHER MEEKER - #172148
[email]
GREENBERG TRAURIG, LLP
[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-03561 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


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

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

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

IAN C. BALLON - #141819
[email]
HEATHER MEEKER - #172148
[email]
GREENBERG TRAURIG, LLP
[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-03561 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 ¶¶ 97-105. Dr. Kearl reasoned that “none of the experts has cited to any evidence that Sun ever negotiated licenses for individual patents or for small subsets of its IP portfolio.” Id. ¶ 99. “To the contrary, it appears that Sun’s negotiations with various parties were always for a Java IP portfolio, often only vaguely specified.” 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. “Setting aside what the law may require,” Dr. Kearl wrote, “my best economic advice is that there are good economic reasons why value of the in suit IP in this matter is the 2006 value

1


of a hypothetical negotiation for the entire Java ME IP portfolio.” 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:

Q. Doesn't the hypothetical negotiation in this case presuppose a negotiation over just the intellectual property in suit?

A. I understand that is what the law requires. This opinion simply says that doesn't make a lot of sense to an economist, but—and Judge Alsup asked for my best economic view, so here it is.

Q. So I know the answer to this question already, but you have reviewed Judge Alsup's orders in this case?

A. I have.

Q. I'm sure you have read them carefully?

A. I've read them carefully.

Q. You have reviewed the transcripts of the various hearings inform damages experts in this case?

A. I have.

Q. Do you perceive any tension between your opinion in section K of your report and any of Judge Alsup’s orders or statements?

[Objections to form]

THE WITNESS: I can imagine there will be some tension, yes.

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, 1159 (6th Cir. 1978) (“the relevant facts” in a hypothetical negotiation analysis include (1) “what plaintiff’s 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

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

Attorneys for Defendant
GOOGLE INC.

4



1025

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]

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
ROLLING LIST OF NEXT TEN
WITNESSES

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


Pursuant to the Court’s Order regarding rolling lists of witnesses (Dkt. 851) and the parties’ agreement to increase the number of witnesses on the list to ten (Dkt. 884), Oracle America, Inc. hereby files and serves its current list of its anticipated next trial witnesses:

1. Bornstein, Dan
2. Brady, Patrick
3. Camargo, Rafael (by video)
4. Kessler, Peter
5. Lindholm, Tim
6. McFadden, Andy
7. Mitchell, John
8. Morrill, Dan
9. Poore, Noel
10. Vandette, Bob
Dated: April 30, 2012

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

By: /s/ Daniel P. Muino

Attorneys for Plaintiff
ORACLE AMERICA, INC.



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