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To read comments to this article, go here
Oracle v. Google - Motions In Limine Filed Over the Weekend ~mw
Monday, May 07 2012 @ 11:30 AM EDT

As we look forward to the patent liability phase of the trial, even while awaiting the final word from the jury on the copyright liability phase, motions in limine to exclude certain evidence or testimony are flying back and forth. The first was Oracle's motion in limine to suppress further testimony from Jonathan Schwartz (1061 [PDF; Text]), and Google has now responded (1074 [PDF; text]).

Oracle argues that Schwartz's comments are of no evidentiary value with respect to Sun having no grounds to sue Google and Google's failure at trial to lay groundwork demonstrating a corporate decision by Sun, supported by legal advice, not to sue. Google's response can be characterized as, "You are too late since you didn't object to the testimony when it was being given in Phase I." Remind you a little of Oracle's position on the Lindholm emails?

That doesn't mean that Schwartz's testimony cannot be countered by Oracle. Schwartz spoke for Sun at a particular time. Was Schwartz's/Sun's position at the time Schwartz made those statements binding on future Sun/Oracle management? No. Does it excuse Google's actions? Possibly. Google argues that it provides a laches defense [Sun knew of the patent infringement and, despite that knowledge, elected not to assert the patents, leaving Google in the position of accruing potential liability while believing Sun would not sue. Laches limits the past damages a party may seek and possibly, injunctive relief; it does not affect the issue of liability.]

Google, in turn, has filed several motions in limine of its own. The first (1076 [PDF; Text]) seeks to suppress testimony of Peter Kessler. Kessler is an Oracle engineer who is expected to provide testimony regarding the practice of the '104 patent. Google objects on three grounds: (1) Kessler was never disclosed as a witness with respect to Google's practice of the '104 patent in Android/Dalvik; (2) Kessler was only disclosed as a witness with respect to Oracle's practice of the '104 patent; and (3) Oracle's objections during Kessler's deposition that would have allowed Google to pursue the line of questioning to which Oracle now proposes to offer Kessler as a witness.

Oracle requires 15 pages to respond to this 4-page motion by Google. (1084 [PDF; Text]]) Oracle's response: (1) they did disclose Kessler as a witness; (2) Google also disclosed Kessler as a witness; (3) Kessler is being offered as a fact witness on benchmark testing; and (4) the privilege that Oracle asserted at deposition did not concern benchmark testing and related Android and Java source code modifications, the subjects on which he will be asked to testify at trial. Oracle insists that any restraint on Kessler's testimony at deposition was self-imposed by Google by Google's failure to ask about the nature of Kessler's infringement analysis.

Google also seeks to limit the testimony sought by Oracle from Tim Lindholm. (1077 [PDF; Text]). Google is concerned that Oracle will seek testimony from Lindholm about his knowledge of one or more of the asserted patents during the time Lindholm worked for Sun. Google argues such testimony would be irrelevant because Lindholm has "no technical responsibility for any aspect of the accused software [while at Google]." That is, Oracle cannot show that the knowledge Lindholm may have obtained while at Sun was communicated to Google after Lindholm joined Google because Lindholm had no awareness of the technical approach being taken by Google with respect to Android.

Oracle's response is that Lindholm clearly had knowledge of at least one of the Sun patents asserted (the '104 patent) and that Lindholm admitted that Google needed a license to Java. (1083 [PDF; Text]). The problem with that line of reasoning is the same problem Oracle has had all along regarding the famous Lindholm emails, i.e., the timing of those emails. Lindholm wrote the emails in 2010, not years earlier when Android was being developed and launched. At best Lindholm may have disclosed to Google management in 2010 the knowledge that he gained when he was at Sun, but even that is not clear. What is clear is that there is no evidence to indicate that Lindholm disclosed such information to Google prior to 2010, if he, in fact, specifically disclosed it even then.

In a third motion in limine Google seeks to suppress any line of questioning of Andy Rubin related to Google's efforts to ascertain the applicability of Oracle's (Sun's) patent portfolio with respect to Android. (1078 [PDF; Text]) Google is understandably concerned that Oracle is going to try to create the impression that Google had an affirmative duty to ascertain which, if any, Sun patents might be infringed by an Android implementation. The purpose of this line of questioning would be to establish indirect infringement by Google. [Note: Google maintains that it never directly infringed the patents in question and that Oracle is relying on a showing that, by distributing Android, Google induced others to infringe the patents. In order to pursue that rationale, Oracle carries the burden of showing that Google had knowledge of the Oracle/Sun patents at the time it was shipping Android.]

Oracle, for its part, admits it is going to try to use the testimony of Lindholm and Rubin to establish that Google had knowledge of the asserted patents. (1082 [PDF; Text]) The problem is that the Rubin testimony given at deposition evidenced a general awareness of Sun patents, but not a specific awareness of the asserted patents. Oracle hopes to impute that awareness of the specific patents from Tim Lindholm. What isn't clear is what evidence Oracle has that Lindholm ever communicated his knowledge to Rubin or anyone else at Google, certainly not before 2010.

The final Google motion in limine seeks to suppress testimony from some Google engineers and from Oracle technical expert, Dr. Mitchell, regarding the Android Compatibility Test Suite ("CTS"). (1080 [PDF; Text]) Google is concerned that such testimony will be used to mislead the jury into believing the CTS provides evidence of infringement of the '104 patent. Google argues that the CTS has no such evidentiary value because it only tests Android devices for appropriate output responses; it does not test for the source code actually used to produce those responses.

Oracle responds that the CTS provides evidence of the presence of certain functionality in Android, functionality Oracle argues is covered by its asserted patents. (1085 [PDF; Text]) However, it is hard to see how a test that only seeks responses that may prove the presence of functionality demonstrates infringement of the Oracle claims covering such functionality unless such claims are so broad as to preclude anything but an infringing implementation. The potential problem with that line of reasoning is that any claim that broad would potentially run afoul of the limitations under law of seeking patent protection for an abstract idea or an algorithm in all of its applications.

We note that in the proceedings to date the Court has demonstrated a general reluctance to suppress testimony.

In light of these motions it is worth noting that the parties have submitted to the Court a proposed stipulation with respect to the '104 patent. (1075 [PDF; Text]). According to the proposed stipulation:

  • Google would withdraw its invalidity defense with respect to the '104 patent;
  • If Oracle proves infringement of the '104 patent in Phase 2:

    • Google would stipulate for Phase 3 (the damages phase) that Oracle's products practice the '104 patent; and
    • Oracle would stipulate that they did not mark those products for the '104 patent.

The effect of this stipulation would be to limit the accruing of damages with respect to the '104 patent to the time from which Oracle gave actual notice of infringement (2010).

In the last of the major filings from the weekend, each party takes a whack at the proposed findings of fact of the other:

Google's Response to Oracle's Proposed Findings of Fact - 1079 [PDF]

Oracles's Response to Google's Proposed Findings of FAct - 1081 [PDF]


***********

Docket

05/05/2012 - 1073 - Witness List by Oracle America, Inc. Rolling List of Next Ten Witnesses. (Muino, Daniel) (Filed on 5/5/2012) (Entered: 05/05/2012)

05/05/2012 - 1074 - RESPONSE (re 1061 MOTION in Limine CONCERNING TESTIMONY BY JONATHAN SCHWARTZ ) filed byGoogle Inc.. (Van Nest, Robert) (Filed on 5/5/2012) (Entered: 05/05/2012)

05/06/2012 - 1075 - STIPULATION WITH PROPOSED ORDER regarding '104 patent filed by Google Inc., Oracle America, Inc.. (Peters, Marc) (Filed on 5/6/2012) (Entered: 05/06/2012)

05/06/2012 - 1076 - MOTION in Limine re Peter Kessler Testimony re Android Code Modifications filed by Google Inc.. Responses due by 5/21/2012. Replies due by 5/29/2012. (Van Nest, Robert) (Filed on 5/6/2012) (Entered: 05/06/2012)

05/06/2012 - 1077 - MOTION in Limine to Preclude Testimony of Timothy Lindholm filed by Google Inc.. Responses due by 5/21/2012. Replies due by 5/29/2012. (Van Nest, Robert) (Filed on 5/6/2012) (Entered: 05/06/2012)

05/06/2012 - 1078 - MOTION in Limine re Evidence Allegedly Supporting Knowledge Requirement for Indirect Infringement filed by Google Inc.. Responses due by 5/21/2012. Replies due by 5/29/2012. (Attachments: # 1 Exhibit A, # 2 Exhibit B)(Van Nest, Robert) (Filed on 5/6/2012) (Entered: 05/06/2012)

05/06/2012 - 1079 - RESPONSE to re 1049 Proposed Findings of Fact by Google Inc.. (Van Nest, Robert) (Filed on 5/6/2012) (Entered: 05/06/2012)

05/06/2012 - 1080 - MOTION in Limine to Exclude Evidence Regarding Compatibility Testing Suite filed by Google Inc.. Responses due by 5/21/2012. Replies due by 5/29/2012. (Attachments: # 1 Declaration of Truman Fenton, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F)(Van Nest, Robert) (Filed on 5/6/2012) (Entered: 05/06/2012)

05/06/2012 - 1081 - RESPONSE to re 1047 Proposed Findings of Fact Oracle's Responses to Google's Proposed Findings of Fact and Conclusions of Law by Oracle America, Inc.. (Jacobs, Michael) (Filed on 5/6/2012) (Entered: 05/06/2012)

05/06/2012 - 1082 - RESPONSE (re 1078 MOTION in Limine re Evidence Allegedly Supporting Knowledge Requirement for Indirect Infringement ) filed byOracle America, Inc.. (Muino, Daniel) (Filed on 5/6/2012) (Entered: 05/06/2012)

05/06/2012 - 1083 - RESPONSE (re 1077 MOTION in Limine to Preclude Testimony of Timothy Lindholm ) ORACLES OPPOSITION TO GOOGLES MOTION TO PRECLUDE TESTIMONY OF TIMOTHY LINDHOLM filed byOracle America, Inc.. (Holtzman, Steven) (Filed on 5/6/2012) (Entered: 05/06/2012)

05/06/2012 - 1084 - RESPONSE (re 1076 MOTION in Limine re Peter Kessler Testimony re Android Code Modifications ) filed byOracle America, Inc.. (Peters, Marc) (Filed on 5/6/2012) (Entered: 05/06/2012)

05/06/2012 - 1085 - RESPONSE (re 1080 MOTION in Limine to Exclude Evidence Regarding Compatibility Testing Suite ) filed byOracle America, Inc.. (Peters, Marc) (Filed on 5/6/2012) (Entered: 05/06/2012)


***********

Documents

1073

MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[email]
KENNETH A. KUWAYTI (Bar No. 145384)
[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. Brady, Patrick (by video and/or live)
2. Camargo, Rafael (by video)
3. Kessler, Peter
4. Lindholm, Tim
5. McFadden, Andy
6. Mitchell, John
7. Morrill, Dan (by video)
8. Poore, Noel
9. Rubin, Andy (by video and/or live)
10. Vandette, Bob
Dated: May 5, 2012

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

By: /s/ Daniel P. Muino

Attorneys for Plaintiff
ORACLE AMERICA, INC.



1074

KEKER & VAN NEST LLP
ROBERT A. VAN NEST - # 84065
[email]
CHRISTA M. ANDERSON - # 184325
[email]
MICHAEL S. KWUN - # 198945
[email address telephone fax]

KING & SPALDING LLP
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 OPPOSITION TO ORACLE
AMERICA, INC.’S MOTION IN LIMINE
CONCERNING TESTIMONY BY
JONATHAN SCHWARTZ

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


I. INTRODUCTION

This motion is Oracle’s attempt to shut the barn door after the horse has already gone. Despite its title, it is not a motion in limine at all. Instead, it is a belated motion to strike and request for a curative instruction involving testimony that entered the record more than a week earlier, and that Google expressly relied on in its closing argument. Not only is the motion untimely, but the Court should also deny it because of the prejudice Google would suffer if the requested relief were granted now.

Obviously, Oracle would like to entirely disclaim Jonathan Schwartz’s actions and decisions during years he was Sun’s CEO, because Sun and Schwartz publicly announced and pursued policies and strategies that are inconsistent with restrictions that Oracle (the so-called “new sheriff in town”) now wants to impose. But nothing about Oracle’s about-face makes the affirmative decisions and actions of Sun’s former CEO any less relevant, or somehow demotes them to being merely “personal” – rather than corporate – decisions and actions.

In this case, the fact that Sun’s CEO made an affirmative decision not to sue Google, in conjunction with his public announcement and private confirmation of Sun’s support for Android, is highly relevant to Google’s equitable defenses. Google is also entitled to argue that his decision as CEO supports findings in its favor on non-infringement, damages and willfulness in Phases 2 and 3 – just as Google has already argued to the jury, without any objection from Oracle, that those decisions and comments support findings in its favor on copyright issues. With regard to Mr. Schwartz’s additional testimony that “[w]e didn’t feel we had any grounds” to pursue litigation against Google, nothing in that statement reflects or discloses communications from Sun’s legal counsel about the merits of the action Oracle has now brought. Mr. Schwartz could, as a layperson, easily conclude the common sense view that Sun would have no grounds to sue Google for using precisely what Sun had actively encouraged the world to use, including the Java language and its APIs.

For all the above reasons, Oracle’s motion should be denied.

1


II. ARGUMENT

A. This Motion is a Disguised Motion to Strike, and Is Therefore Untimely.
As the Supreme Court has noted, the term “motion in limine” is used “in a broad sense to refer to any motion, whether made before or during trial, to exclude anticipated prejudicial evidence before the evidence is actually offered.” Luce v. U.S., 469 U.S. 38, 40 at n.2 (1984) (emphasis). As a result, despite its title, Oracle’s motion is not a motion in limine, but rather an untimely motion to strike, because the evidence at issue is already part of the trial record and indeed has already been offered to the jury in closing argument in the copyright phase, without any objection from Oracle.

Any evidence received in Phase 1 is automatically part of the trial record for later phases and thus may be referenced in any subsequent openings and closings:

Evidence and stipulations presented in an earlier phase will count as part of the trial record for all later phases and may be referenced in openings and closings for later phases . . . . Witnesses will not be permitted to return to a subsequent phase to repeat testimony already given by them in an earlier phase. The jury will have already heard it.
Final Pretrial Order (ECF# 675) at 3:11-15.

Oracle suggests that some of the evidence at issue entered the record through a partially non-responsive answer to an otherwise unobjectionable question, but if that were the case, Oracle’s only recourse would have been a motion to strike. See Rutter Group Prac. Guide Fed. Civ. Trials & Ev. Ch. 8 at § 8:4671 (“A motion to strike is the only remedy available where testimony is given before a proper objection can be made or ruled upon. For example: . . Witness gives nonresponsive answer to otherwise unobjectionable question (i.e., witness volunteers information not asked).”) It is far too late for Oracle to seek that relief.

Under the Federal Rules of Evidence, a party can preserve a claim of error as to the admission of evidence only if the party “timely objects or moves to strike.” Fed. R. Evid. 103 (emphasis added). A motion to strike is waived unless it is made at the earliest possible opportunity after the ground for objection becomes apparent. See Durham v. U.S., 403 F.2d 190, 197 & n.15 (9th Cir. 1968) (“Failure to object as soon as the applicability of the objection is known is said to constitute a waiver of the objection, which thereafter may be properly

2


denied. . . . A motion to strike is governed by this rule where the evidence involved should have been objected to when offered, as was the case here.”) (Citations omitted); see also San Antonio Cmty. Hosp. v. So. Cal. Dist. Council of Carpenters, 125 F.3d 1230, 1238 (9th Cir.1997) (concluding that the failure to raise a hearsay objection until the close of direct examination waived the objection).

Here, Oracle’s request for relief is manifestly untimely. It did not seek relief the moment Mr. Schwartz gave the testimony in question, as it should have, or at any point during his examination, or before the Court released him from Google’s subpoena and excused him from further testimony, or even when Google referred to his testimony in its closing argument. Instead, it waited more than a week after Mr. Schwartz had left the stand to bring its motion. This constitutes a waiver. “The requirement of timely and specific objections serves to ensure that the nature of the error [is] called to the attention of the judge, so as to alert him [or her] to the proper course of action and enable opposing counsel to take corrective measures.” Jerden v. Amstutz, 430 F.3d 1231, 1236 (9th Cir. 2005) (internal citations and quotations omitted; alterations in original).

Had Oracle raised any of its objections to Mr. Schwartz’s testimony at the time – and had the Court sustained those objections – Google could have counteracted any negative impression a curative instruction might have had on the jury by conducting further questioning to reinforce the points that Mr. Schwartz, as Sun’s CEO, had full authority to decide that it was not in Sun’s best interest to pursue litigation against Google as a business matter, that he made that affirmative decision on Sun’s behalf, and that he did not require permission from Sun’s board of directors, Scott McNealy, or anyone else to do so. Instead of moving to strike, Oracle chose to crossexamine Mr. Schwartz to attempt to establish that he was not qualified to give a legal assessment of the strength of any potential legal claims, and that his decisionmaking was driven by judgments about what would be best for Sun as a matter of business strategy, rather than assessments of the strengths of any potential legal claims. RT at 2014:7-18. Oracle then allowed the testimony to enter the record and even sat by without objection as Google relied on that

3


evidence in its closing argument. RT at 2519:4-25. Having featured that evidence in its Phase 1 closing, Google would be severely prejudiced if the Court were to instruct the jury to disregard that evidence now.

This motion is untimely and the Court should deny it for that reason alone.

B. Oracle’s Objections Also Fail on Their Merits
Oracle’s attempt to downplay the significance of Mr. Schwartz’s actions and decisions runs counter to its CEO’s own testimony. As Larry Ellison acknowledged, while Mr. Schwartz was Sun’s CEO, he was ultimately responsible for all decisionmaking at Sun, setting corporate policy and also for deciding how the company would conduct its negotiations, including with companies like Google. RT 310:21-311:6. Although Oracle asserts that “the suggestion that Oracle had decided not to sue is clearly against the weight of the evidence presented in this case,” Motion at 2:5-6, that statement is flatly contradicted by Mr. Schwartz’s testimony that, as CEO, he made the decision that Sun would not pursue litigation against Google over Android. RT at 2002:5-7. As CEO, his decision certainly trumps that of a salesperson like Leo Cizek, even though the latter may have taken it upon himself to make remarks that he was in no position to carry out.

Oracle also incorrectly argues that the fact that Mr. Schwartz never communicated his decision to Google, and the fact that Sun engaged in negotiations with Google after the SDK release, somehow fatally undermine Google’s defenses. That is not the case, however. In Baker Mfg. Co. v. Whitewater Mfg. Co., 430 F.2d 1008, 1013 (7th Cir. 1970), the Seventh Circuit reversed a district court’s denial of a claim of laches, specifically noting that, “[t]he fact that Baker did not suggest that it was abandoning its claim of infringement is irrelevant. The important fact is that at no time did it notify Whitewater in any manner that it was pressing its claim.Id. at 1013 (emphasis added). Here, Sun and Google had numerous discussions after Android’s release. None of these discussions involved Sun asserting infringement by Android and demanding payment without any further consideration being offered by Sun. Instead, each was a negotiation over further partnerships where Sun would offer its commercial products for

4


incorporation into Android. Nothing about such garden-variety business negotiations could have put Google on notice that Sun intended to assert legal claims against Android for the specific and narrow alleged intellectual property rights asserted in this case. Mr. Schwartz’s testimony that he had decided not to sue Google because he had no basis for doing so is entirely consistent with his subsequent actions, and supports the conclusion that the totality of Sun’s conduct and statements indicated a lack of intent to assert an infringement claim.

This evidence at issue is also relevant to Phase 2 and Phase 3 in other respects. Google is entitled to argue that the fact that Sun consciously considered and then decided not to sue for lack of grounds is evidence that Sun knew full well that the pending claims are indeed meritless as applied to Android – or at a minimum (for willfulness purposes) do not present an objectively high likelihood of infringement. Again, it is no surprise that Sun and its CEO reached the conclusion that Sun had no grounds to sue given Sun’s business strategy to make numerous aspects of the Java platform freely available for all to use in the hopes of spreading the adoption of the Java language, as well as Sun’s repeated and direct encouragement of the distribution and use of the Android platform over the years.

Finally, Oracle is wrong to argue that Mr. Schwartz’s statement that “[w]e didn’t feel we had any grounds” either reflects privileged communications or impermissible legal opinion by a lay witness. At trial, Oracle had a chance to ferret out whether Mr. Schwartz’s statement was based on privileged communications, but Oracle never asked those questions and never raised the issue in a timely fashion. Further, it would have been entirely reasonable for Mr. Schwartz to have concluded on Sun’s behalf that Sun had no grounds to sue (regardless of any legal advice received) where Sun had “given Java to the world,” made the Java language and Java APIs freely available, encouraged independent implementations of the Java platform and open sourced Sun’s own implementation of the Java platform.1

____________________________

1 If Oracle is correct, however, that Mr. Schwartz’s testimony implicates Sun’s assertions of privilege, then it was even more incumbent on Oracle to protect that privilege with a timely objection or motion to strike.

5


III. CONCLUSION

For the foregoing reasons, Google respectfully requests that the Court deny Oracle’s motion and refuse its request to excise from the jury trial evidence that is squarely and fairly before the jury on important issues in this case.

Dated: May 5, 2012

KEKER & VAN NEST LLP

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

Attorneys for Defendant
GOOGLE INC.

6



1076

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

KING & SPALDING LLP
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

MOTION IN LIMINE RE PETER
KESSLER TESTIMONY RE ANDROID
CODE MODIFICATIONS

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


I. INTRODUCTION

Google moves to exclude testimony by Oracle engineer Peter Kessler regarding alleged use of the ’104 patent in Android’s Dalvik virtual machine source code and modifications that Oracle engineers allegedly made to source code. The issue is whether Mr. Kessler, who was never disclosed by Oracle as a witness who would provide opinion testimony, can provide such expert testimony on behalf of Oracle. He cannot, for at least three reasons. First, Oracle disclosed a different engineer, Mr. Vandette, to testify on the topic of Google’s alleged use of the ’104 patent and the steps he took to turn off the allegedly infringing features in Android. Second, the only testimony for which Oracle disclosed Mr. Kessler was Oracle’s—not Google’s—practice of the asserted claims of the patents in suit. Third, at deposition, Oracle blocked questioning regarding the very topic for which it now apparently intends to present Mr. Kessler, asserting privilege.

II. ARGUMENT

A. Oracle disclosed Mr. Vandette—not Mr. Kessler—to testify about Google’s
use of the ’104 patent and the steps taken to disable that functionality in the
Dalvik source code.
The demonstrative slides disclosed by Oracle to Google in connection with Mr. Kessler’s testimony fall into two categories: (1) side-by-side comparisons of Android’s Dalvik source code in modified and unmodified form; and (2) slides related to “Use of the ’104 Patent in the Dalvik Sources” (as reflected in the titles). This does not square with Oracle’s disclosures pursuant to Rule 26(a)(2)(C) of the Federal Rules of Civil Procedure. Those disclosures, dated July 29, 2011, include three Oracle employees designated to offer opinion testimony: Mssrs. Landau, Poore, and Vandette. Each is disclosed regarding Dalvik code modifications and benchmark performance testing related to particular patents. The disclosure for Mr. Vandette stated, in relevant part:

Mr. Vandette is a current employee of Oracle who may present testimony on the subject of performance benchmark analysis and testing. Mr. Vandette may testify about the performance benchmark analysis and testing he conducted to measure the benefits Android obtains from practicing United States Patent Nos. RE38,104 (“the ’104 patent”) and 6,910,205 (“the ’205 patent”). Mr. Vandette may also testify about the performance benchmark analysis and testing he conducted to

1


measure the benefits Java SE Embedded obtains from practicing the ’205 patent. Mr. Vandette may also provide testimony regarding the ways in which Android practices the ’104 and ’205 patents, and the steps he took to turn off the patented features to measure the performance hits to Android.
Oracle America, Inc.’s Disclosures Pursuant to Fed. R. Civ. P. 26(a)(2)(C) (July 29, 2011) (emphases added). In short, Oracle disclosed Mr. Vandette to testify about Android’s alleged use of the ’104 patent and the steps he allegedly took to modify the Android source code for his benchmark tests. And while Oracle supplemented its Rule 26(a)(2)(C) disclosure on February 7, 2012, that supplemented disclosure only added Mr. Reinhold, not Mr. Kessler.

Based on the demonstrative slides, it seems Oracle wants to change horses. The problem is, Oracle never disclosed Mr. Kessler as an employee expert regarding Android’s alleged use of the ’104 patent and the steps he took to modify the Android source code for his benchmark tests. Because Mr. Kessler was not so disclosed—in contrast to Mr. Vandette, who was explicitly disclosed—Oracle should be precluded from eliciting from Mr. Kessler testimony regarding Android’s alleged use of the ’104 patent and the steps taken to modify the Android source code.

B. Mr. Kessler was only disclosed to testify about Oracle’s use of the ’104 patent.
In addition to Oracle’s failure to disclose Mr. Kessler as an employee expert to testify about Android’s use of the ’104 patent and the steps taken to modify the Android source code—and its actual disclosure of someone else on those topics—Oracle’s witness list also failed to disclose Mr. Kessler regarding these topics. According to Oracle’s witness list, “Mr. Kessler is an Oracle engineer. He may testify regarding Oracle’s products that practice the asserted claims of the patents-in-suit.” (Dkt. No. 525-2 at 8 (emphasis added).) He is not disclosed regarding Google’s alleged use of the ’104 patent or modifications to Android source code. As such, he should be precluded from testifying on those issues.

C. Oracle asserted privilege regarding the topics for which it now intends
Mr. Kessler to testify.
If the lack of proper disclosures are not sufficient grounds to exclude Mr. Kessler’s proposed testimony, the fact that Oracle asserted privilege over the very topics for which Mr. Kessler is now being offered should be. As reflected in the demonstrative slides, the main topic

2


for which Oracle intends to use Mr. Kessler is “Use of the ’104 Patent in the Dalvik Sources.” In other words, alleged infringement of the ’104 patent by Android. But when asked whether he did an infringement analysis for the ’104 patent, Oracle limited the answer to a simple yes or no question.

Q. Have you ever done an infringement analysis on Android products for the ’104 patent?

Mr. Norton: You may answer that question a yes or no.

A: Yes.

See Kessler Dep. 71:13-17. Oracle would not even allow questioning as to the timing of this analysis, instructing the witness not to answer.

Q. When did you conduct these infringement analyses?

MR. NORTON: I'll object and instruct the witness not to answer the question on grounds of attorney-client privilege and work product.

Q. Will you follow that instruction?

A. Yes, I will.

Id. at 73:5-12. Given its refusal to allow discovery into Mr. Kessler’s infringement analysis of the ’104 patent, Oracle cannot now offer Mr. Kessler to testify at trial regarding “Use of the ’104 Patent in the Dalvik Sources.”

III. CONCLUSION

For the foregoing reasons, the Court should grant a motion in limine prohibiting Mr. Kessler from testifying regarding Android’s alleged practice of the ’104 patent and the steps taken to modify the Android source code.

Dated: May 6, 2012

KEKER & VAN NEST LLP

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

Attorneys for Defendant
GOOGLE INC.

3



1084

MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[email]
KENNETH A. KUWAYTI (Bar No. 145384)
[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’S OPPOSITION TO
MOTION IN LIMINE RE PETER
KESSLER TESTIMONY RE
ANDROID CODE MODIFICATIONS

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


Oracle opposes Google’s attempt to prohibit testimony on the performance benefits of Oracle’s ’104 patent through its motion to exclude Oracle engineer Peter Kessler’s testimony for the following reasons: (1) Dr. Kessler is a disclosed witness on Oracle’s and Google’s respective witness lists, and Google itself disclosed Dr. Kessler to testify on the very topics it now disputes; (2) Dr. Kessler is being offered as a fact witness to testify regarding benchmark testing that he personally participated in; and (3) the one privilege assertion that Oracle made at Dr. Kessler’s deposition did not concern “Oracle’s benchmarking tests and related Android and Java source code modifications.” There is no reason to prevent Dr. Kessler from testifying on this subject.

I. ARGUMENT

A. Google and Oracle Both Disclosed Dr. Kessler To Testify About
Benchmarking Testing and Source Code Modifications
Both Oracle and Google disclosed Dr. Kessler on their witness lists to testify about benchmarking tests and source code modifications. Google disclosed Dr. Kessler on its witness list and described his expected subjects of testimony as follows:

Mr. Kessler may testify concerning Oracle’s alleged conception, reduction to practice, and use of U.S. Patent Nos. 6,910,205 and RE38,104, including but not limited to in the JDK; and Oracle’s benchmarking tests and related Android and Java source code modifications. He may also testify concerning documents on the exhibit list that are either authored by him or were sent to him.
(ECF No. 525-3 (Google’s Trial Witness Disclosure) at 6.) In disclosing Dr. Kessler, Google waived its right to bring the very objection that is now the subject of its motion. 8A Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 2054 (3d ed.). Furthermore, Oracle’s own disclosures listed Dr. Kessler as a potential witness and reserved Oracle’s rights to call him as a live witness. ECF No. 525-2 (Oracle’s Trial Witness Disclosure) at 8, 11.)

Google is mistaken when it argues that Dr. Kessler will testify regarding “use of the ’104 Patent in the Dalvik sources.”1 Instead, he will testify to facts of which he has firsthand knowledge: performance benchmarking and related Android and Java source code modifications.

__________________________

1 Google mistakenly inferred from a title of a demonstrative showing Android source code modifications that Dr. Kessler’s testimony would be more expansive. (Mot. at 1). Oracle made clear, however, that the slide was withdrawn and would not be used. Oracle’s attempts to resolve the dispute over the subject matter of Dr. Kessler’s testimony were not successful. See correspondence attached as Exhibits A and B.

1


Because Dr. Kessler was disclosed by Google as a potential witness on these topics, Google cannot claim either lack of knowledge or surprise that his testimony would encompass those areas.

B. It is Proper for Dr. Kessler to Testify as a Fact Witness about an
Investigation He Performed
Second, none of Dr. Kessler’s testimony will be expert opinion testimony. He is a fact witness who will be testifying to an investigation he did within the scope of his employment. It is irrelevant which experts Oracle disclosed on related topics. “[T]he fact that [Kessler] has specialized knowledge, or that he carried out the investigation because of that knowledge, does not preclude him from testifying pursuant to Rule 701, so long as the testimony was based on the investigation and reflected his investigatory findings and conclusions, and was not rooted exclusively in his expertise in [engineering].” Sec. & Exch. Comm'n v. Sabhlok, C-08-4238 EMC, 2010 WL 2944255, at *4 (N.D. Cal. July 23, 2010) (quoting Bank of China, New York Branch v. NBM LLC, 359 F.3d 171, 181 (2d Cir. 2004)).

C. The One Privilege Instruction that Oracle Made during Dr. Kessler’s
Deposition Does Not Relate to the Issue for which Oracle Will Call
Him
Third, Oracle did not prohibit Dr. Kessler from testifying on any topic about which Oracle will question him at trial. Indeed, Google’s own citations to Dr. Kessler’s deposition testimony make that point. As the first question-and-answer in Google’s motion shows (Mot. at 3), Dr. Kessler answered the question put to him; there was no instruction not to answer. The only question Dr. Kessler was instructed not to answer was when the infringement analysis he conducted took place. (Mot. at 3.) Google never asked what infringement analysis Dr. Kessler conducted, and Google’s failure to ask such a question means that it cannot now assert that Oracle refused to allow discovery. Dr. Kessler did not have to answer questions that Google did not ask.

In any event, the subject of the one question (“When did you conduct these infringement analyses?”) is materially different from the subject about which Dr. Kessler will testify: performance benchmarking. Having failed to ask follow-up questions on the topic both Oracle

2


and Google believe Dr. Kessler is qualified to discuss and are within the realm of his employment, Google cannot now argue that such testimony is prohibited.

II. CONCLUSION

Dr. Kessler will testify regarding subject matters for which he was disclosed and for which he is a fact witness. Google was aware of the subject matters to be covered by Dr. Kessler’s testimony and indeed, inquired (or had the opportunity to inquire) as to all of them at his deposition. Google’s belated motion to prohibit his testimony is an attempt to do an end-run around the Court’s denial of Google’s motion in limine regarding performance testing by preventing an Oracle lay witness from testifying about his participation in measuring the benefits that the accused functionality brings to Android.

Dated: May 6, 2012

MORRISON & FOERSTER LLP

By: /s/ Marc David Peters

Attorneys for Plaintiff ORACLE AMERICA, INC.

3


[EXHIBITS NOT REPRODUCED]



1077

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

KING & SPALDING LLP
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

MOTION IN LIMINE TO PRECLUDE
TESTIMONY OF TIMOTHY LINDHOLM

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


I. INTRODUCTION

Oracle intends to call Timothy Lindholm in Phase 2 of the ongoing trial as its lead-off witness. Apparently, Oracle will seek to elicit testimony from Mr. Lindholm about alleged awareness of patents from his work at Sun Microsystems in the 1990s, long prior to his joining Google in 2005. Yet Mr. Lindholm had no responsibility for, or awareness of, the design of Android. Any testimony elicited about his knowledge from Sun in the 1990s would be highly prejudicial and confusing to the jury, and would have no probative value on any issue of patent infringement. Like the Congressional testimony of Sun’s Chief Technology Officer stating that “interface specifications are not protectable under copyright” from the same time period, Mr. Lindholm’s testimony, at least as to his awareness of Sun/Oracle patents from the 1990s, should be precluded.

As he has testified in this trial, Mr. Lindholm was not part of the Android team. [RT 862:19–23.] He played no role in designing or coding the Android software. [RT 863:7–10.] And there has been no trial or deposition testimony that any of the Android team learned about particular Sun patents from Mr. Lindholm. Based on Phase 1 evidence, it is clear that the first time the patents in suit were revealed by Oracle to Google was in July of 2010, shortly before it filed this lawsuit. [RT 2314:3-7 (Catz).]

Oracle’s aim in calling Mr. Lindholm back to trial, after having released him in Phase 1, is evidently to confuse the jury on the issue of indirect patent infringement, and even potentially willful infringement, which is not a Phase 2 issue. Other than these topics, there is no apparent basis in Oracle’s trial witness list disclosure for Mr. Lindholm to testify that has not already been exhausted by his prior testimony.1

II. BACKGROUND

In the 1990s, Mr. Lindholm co-wrote a book titled the Java™ Virtual Machine Specification. [TX 25.] Published in 1997, the book contains a reference, at the outset of its ninth chapter, to a patent that was the predecessor of the ’104 patent in suit. [TX 25 at 401 of

_________________________

1 The Court has admonished the parties on more than one occasion not to adduce testimony in a phase that is cumulative of testimony in a previous phase. [RT 2642:2–5.]

1


488.] The identified patent, U.S. 5,367,685 (“the ’685 patent”), recites different claims than the ’104 patent in suit. The ’685 patent was reissued for the first time in 1999, and at that time, the claims and scope of the ’685 patent were surrendered by operation of law. 35 U.S.C. Sec. 251. Four years later, another reissue patent, the ’104 patent, was granted. To be clear, the ’104 patent is not the same patent as the ’685, and its claims differ. Indeed, the key claim limitation for purposes of the ’104 infringement analysis in this case—instructions containing symbolic references—did not appear in the ’685 patent claims.

Notably, a second edition of the Java™ Virtual Machine Specification was published in 1999 and co-authored by Mr. Lindholm. [TX 987.] The second edition does not reference the ’685 patent or any other specific patent for that matter.

In 2005, roughly eight years after the publication of the first edition of the book, Mr. Lindholm took a job at Google. There, although he had discussions with Andy Rubin about an advisory role related to discussions with Sun regarding a co-development partnership, as he testified to in Phase 1 of the trial, he never played any substantive role in Android and had no technical or design responsibilities for Android. [RT 862:19–23.]

III. DISCUSSION

Oracle should not be permitted to elicit testimony from Mr. Lindholm about his knowledge of the ’685 patent or any other unasserted patents that he may have learned about during his days at Sun in the 1990s. At most, such testimony suggests that many years prior to joining Google, Mr. Lindholm might have been aware of a patent that is not even asserted in this suit. The relevance of this testimony is doubtful given Mr. Lindholm had no technical responsibility for any aspect of the accused software. In contrast, the risk of prejudice to Google is high because the jury would be confused and unable to properly evaluate the impact of the testimony Oracle appears poised to elicit from Mr. Lindholm. In particular, the jury may be left with the incorrect impression that Google had prior “knowledge” of a patent-in-suit.

Further, Oracle will not be able to show that the Android team or any other person at Google was made aware of the patents-in-suit as a result of Mr. Lindholm’s knowledge of patents stemming from his days at Sun. Most notably, although Mr. Rubin has been deposed five

2


times in this case (including one deposition that was specifically devoted to his awareness of patents), Oracle has yet to point to any evidence that would show that Mr. Rubin or others on the Android team became aware of any particular Sun patents through Mr. Lindholm. Oracle apparently intends to have the jury improperly impute to Google an awareness of one or more of the patents-in-suit through a trail of inferences leading well back into the 1990s to a different patent with different claims.

Further, this Court has already ruled that this type of evidence is far too remote in time. In its ruling excluding the Congressional testimony of Eric Schmidt in the 1990s that APIs are not copyrightable, the Court held:

[A]nything that happened long before 2006 is too far removed from Sun’s policy and industry custom and usage at the time of the alleged infringement. Historical information that is too old has only marginal relevance to Google’s equitable defenses. And any marginal relevance would be greatly outweighed by the unfair prejudice, waste of time, and confusion from presenting to the jury statements and documents from the last century as indicative of Sun’s policy and industry custom at the time of alleged infringement in 2006.
[DKT 676 at 6 (emphasis added).]

The Court’s reasoning applies with greater force in Mr. Lindholm’s case than it did for the testimony of Mr. Schmidt, who was then Sun’s Chief Technical Officer and spokesman on technical issues and policy and the key executive involved in driving the development of Java, making these statements at the same time Java was publicly released. The Schmidt testimony represented the position of Sun itself, a large and sophisticated organization backed by a sizeable and longstanding corporate institution. By contrast, Mr. Lindholm is a non-officer individual, and neither a representative of Sun nor of Google.

The danger of Oracle’s intended use of Mr. Lindholm is compounded by the possibility that Oracle, in its opening argument, will incorrectly and prejudicially suggest to the jury that Google was under a legal duty to search for patents and clear them for infringement prior to product launch—there is no such duty—and that a general awareness of patents without specific awareness of particular patents is sufficient to prove the intent necessary for indirect patent

3


infringement—which is also not the case.2

IV. CONCLUSION

For the foregoing reasons, the Court should preclude any mention in Oracle’s opening argument, or any attempt to elicit testimony of Mr. Lindholm’s alleged awareness of any unasserted Sun patents—including the ’685 patent.

Dated: May 6, 2012

KEKER & VAN NEST LLP

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

Attorneys for Defendant
GOOGLE INC.

______________________________

2 These issues are the subject of a separate Motion in Limine filed concurrently herewith.

4



1083

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)
[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’S OPPOSITION TO GOOGLE’S
MOTION TO PRECLUDE TESTIMONY
OF TIMOTHY LINDHOLM

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


I. INTRODUCTION

The evidence establishes that Mr. Lindholm, an early member of the Android team at Google, had specific, detailed working knowledge of the ’104 patent. Indeed, Mr. Lindholm devoted an entire chapter of The Java Virtual Machine Specification, which he wrote, to describing an implementation of that patent. Moreover, in rejecting Google’s last attempt to conceal Mr. Lindholm, the Court already held that “Mr. Lindholm’s background shows that he was quite knowledgeable about Java and Android technology as separate platforms and any potential crossover between the two platforms, or so a reasonable jury could find. His admission that Google needed a Java license is relevant to the issue of infringement.” (Dkt. No. 676 at 2 (emphasis added).) Mr. Lindholm’s deep knowledge of Sun’s Java virtual machines, including the patents that Sun obtained on them, is also directly relevant to the Phase 2 issue of inducement.

Google’s motion should be denied.

II. BACKGROUND

Mr. Lindholm worked at Sun Microsystems from 1994 to 2005, where, at the time he left, he held the title Distinguished Engineer. (Lindholm at RT 839:3–8.) At Sun, Mr. Lindholm worked on the original Java team, which was involved in creating the Java platform. (Lindholm at RT 839:9– 13.) As Google admits, while he was employed by Sun, Mr. Lindholm co-wrote (with ex-Sun and now-Google employee Frank Yellin), The Java Virtual Machine Specification, both first and second editions. (TX 25 (first edition); TX 987 (second edition).) That book is “a definitive source for anyone who wants to know exactly how the Java programming language works.” (TX 25 at 14.) In Chapter 9 of the First Edition, Messrs. Lindholm and Yellin described “An Optimization,” which specifically notes: “The technique documented in this chapter is covered by U.S. Patent 5,367,685.” (TX 25 at 401.) As Google admits, this patent was the predecessor to the ’104 patent-in-suit. (Dkt. 1077 at 1.) In addition, as a Distinguished Engineer at Sun, Mr. Lindholm oversaw the development of Sun’s efforts in the Java ME space. In short, Mr. Lindholm is very knowledgeable about the technology in Java virtual machines, and he knows about the patents that cover them.

Immediately after he left Sun and joined Google in July 2005, Mr. Lindholm met with Mr. Rubin about Android’s plans to implement a “clean room JVM” for small devices, and Mr. Lindholm

1


began negotiating with his former colleagues at Sun for a “critical” Java license. (Dkt. 331 (Lindholm Decl.); TX 140, TX 317.) Although Google has consistently tried to minimize Lindholm’s involvement with Android, his documents tell a different tale. (See Dkt. 676 at 2 (finding Lindholm’s “attorney-prepared declaration” disclaiming knowledge of Android to be “unpersuasive”).)

In addition to providing strategic advice about Sun’s motivations and bargaining position (see TX 3, TX 9, TX 125), Lindholm actually reviewed the Java license that Google considered taking and provided Rubin and others with advice about particular license clauses. (TX 213) Lindholm’s role in Android’s early development also involved technical advice. Lindholm was a “Project Advisor” for Android, and described his “main value” as being a “J2ME runtime generalist and interpreter of the engineering/business/legal ecosystem.” (TX 321, TX 6 at 7) He gave Mr. Rubin technical advice on Sun’s virtual machine implementations for J2ME, including his opinions on the specific Sun technology that might be valuable to Android. (TX 131) Although he now claims to be ignorant of the technical workings of Android, his documents show that he “[g]ot a run through the Android technology” (TX 325) and was one of the Android team members whose participation was “mandatory” for a 2006 meeting in which Sun engineers would “detail their CDC stack to us, what it’s [sic] capabilities are, and to get feedback from us (in realtime) about how much work will have to be done to it to get it working for our platform,” and the Android engineers would “share with them an architectural view of our system, especially as it relates to the Java VM.” (TX 212.) In short, Mr. Lindholm was deeply involved in Android from the very beginning.

III. ARGUMENT

The evidence establishes that an early member of the Android team—Mr. Lindholm—had specific working knowledge of the ’104 patent. This highly relevant fact should not be hidden from the jury. Google’s argument that the prejudicial value of this fact outweighs its probative force is meritless. There is no prejudice. There are only directly relevant facts that Google cannot explain away.

First, Mr. Lindholm’s testimony is relevant to direct infringement. The Court has already held that>p>

2


Mr. Lindholm’s background shows that he was quite knowledgeable about Java and Android technology as separate platforms and any potential crossover between the two platforms, or so a reasonable jury could find. His admission that Google needed a Java license is relevant to the issue of infringement.
(Dkt. 676 at 2.) The Court’s statement is true not just of Mr. Lindholm’s August 6, 2010 email (TX 10), but of the rest of Mr. Lindholm’s words and actions. Mr. Lindholm himself admits that he was involved for “about a year” in the Android project. (Lindholm at RT 868:20-869:1) He had deep working knowledge of the Java technology, including the patents it covered, and understood the Android technology. (TX 325, 212)

Throughout this case, Google repeatedly mischaracterized Mr. Lindholm’s role on the Android team in a futile effort to drag him, and his documents, out of view. For example,

Google ClaimLindholm Documents
Mr. Lindholm “never worked on any aspect of Android at all.”

(Statement by Google counsel, July 21, 2011 Discovery Hearing Tr. at 31:13-32:2)

TX 2 (Notes of Android GPS meeting attended by Mr. Lindholm, Mr. Rubin, and Google founders Larry Page and Sergey Brin)

TX 325 (“Got a run through the Android technology”)

See also TX 3, 6, 9, 10, 125, 131, 212, 213, 321 etc.

“I don’t believe he attended any negotiating sessions.”

(Statement by Google counsel, July 21, 2011 Discovery Hearing Tr. at 33:14-23)

TX 1 at 9 (“Google/Android, with support from Tim Lindholm, negotiates the first OSS J2ME JVM license with Sun”)

TX 325 (“Two Sun meetings on Android licensing”)

TX 140 (“As you might vaguely be aware, I have been helping Andy Rubin with some issues associated with his Android platform. This has mostly taken the form of helping negotiate with my old team at Sun for a critical license.”)

3


Mr. Lindholm “had never reviewed the patents asserted by Oracle in this lawsuit.”

(Dkt. 492, Google MIL No. 1, at 2:2)

TX 25 at 401 (The Java Virtual Machine Specification, (“The technique documented in this chapter is covered by US Patent 5,367,685.”))

Despite Google’s efforts to pretend that Mr. Lindholm had no meaningful involvement with Android, and had never even reviewed (much less written a chapter of a book about) the patents-in-suit, the jury is entitled to draw exactly the inference that the Court previously identified: that he was “quite knowledgeable about Java and Android technology as separate platforms and any potential crossover between the two platforms.” (Dkt. 676 at 2.)

Moreover, Google’s insistence that Lindholm was not involved in “designing or coding the Android software” and had no “technical responsibilities” for Android, even if that were true, would not be relevant. Lindholm knew that Sun had a specific patent, that patent aided performance, that patent read on Sun’s Java virtual machine, and the successor to that patent is the patent-in-suit. In addition, Mr. Lindholm knew that Android was implementing a Java virtual machine. (TX 1, at 9.) Mr. Lindholm’s detailed knowledge of the specific Java and Android technology and his admissions in 2006 that a license was “critical,” are relevant to a finding of infringement. Google cannot exclude that relevant evidence by relitigating an issue that the Court has already decided against it.

Second, Google is simply wrong that the “difference” in claim language between the ’104 and ’685 has any bearing on infringement, or on the relevance of Mr. Lindholm’s knowledge of the ’685. Google observes only that the claims “differ,” but does not discuss which direction the differences cut. (Dkt. 1077 at 2, 3.) That is because Google itself has insisted that every claim of the ’104 is broader than the claims in the ’685. (See Dkt. No. 311 at 2 (précis “All the claims of the ‘104 patent are broader than the claims of the ’685 patent.”).) As a result, if a method or apparatus is covered by the ’685, Google has taken the position that the same method or apparatus would be also necessarily

4


covered by the ’104.1 This sort of issue is precisely what testimony at trial should sort out. Mr. Lindholm’s knowledge of the ’685 patent is therefore unquestionably relevant, and not misleading.

Third, in addition to its relevance for direct infringement, Mr. Lindholm’s knowledge of the ’104 patent is relevant to Oracle’s claims of inducing infringement. Oracle need not show that Google had knowledge of the patents-in-suit by number, but inducement under 35 U.S.C. § 271(b) nonetheless “requires knowledge that the induced acts constitute patent infringement.” Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2068 (2011). Mr. Lindholm’s knowledge of the predecessor to the ’104—which he identified specifically and described in detail in a book he published—is unquestionably relevant to an essential element of one of Oracle’s claims.

Fourth, Google is simply incorrect that the standard for inducement would require Oracle to show that Google was “made aware of the patents-in-suit” by Mr. Lindholm. As the Supreme Court held in Global-Tech, willful blindness suffices. Global-Tech, 131 S. Ct. at 2069. Mr. Lindholm knew that (at least one) patent existed on technology that Android was building. He likely knew that there were hundreds more. Mr. Lindholm was a member of the Android team, advising Mr. Rubin on technology to incorporate into Android’s JVM. The jury should be entitled to draw an inference from the admitted failure by Mr. Rubin, Mr. Lindholm, and the rest of the Android team to conduct any further inquiry at all that Google took deliberate actions to avoid learning of any patents that it was likely to infringe. Id. at 2071 (describing standard for willful blindness in the context of inducement); see also ePlus Inc. v. Lawson Software, Inc., Civil No. 3:09-cv-620, 2011 WL 3584313, at *4–5 (E.D. Va. Aug. 11, 2011) (instructing jury that “[k]nowledge of the patent may be established by a finding that Lawson had actual knowledge of the patent or that Lawson deliberately disregarded a known risk that ePlus had a protective patent.”).

Fifth, Mr. Lindholm’s actual knowledge of the predecessor patent to the ’104 is nothing like Mr. Schmidt’s prior testimony before Congress. Mr. Schmidt’s outdated articulation of a policy position on what Sun then advocated the law ought to be has no bearing on any claim or fact to be

________________________

1 Google’s request to file a summary judgment motion for invalidity based on the broadening re-issue was denied (Dkt. 327), and Google no longer asserts any invalidity defense.

5


decided by the jury. In contrast, Mr. Lindholm’s knowledge goes directly to essential elements of Oracle’s infringement and inducement claims—specific knowledge of a patent by an expert on the technology who was later employed by Google and worked in an advisory role on Android. Google’s argument is simply that both pieces of evidence are more than ten years old. By Google’s absurd logic, the ’104 patent itself should be excluded, as it was first issued in 1994.

IV. CONCLUSION

Mr. Lindholm’s testimony is relevant to Phase 2, notwithstanding the fact that it may also be relevant to willful infringement in Phase 3. The probative value of Mr. Lindholm’s testimony is substantial; its prejudicial effect is nil. Google’s motion to preclude Mr. Lindholm’s testimony should be denied.

Dated: May 6, 2012

BOIES, SCHILLER & FLEXNER LLP

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

Attorneys for Plaintiff
ORACLE AMERICA, INC.

6



1078

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

KING & SPALDING LLP
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

MOTION IN LIMINE RE EVIDENCE
ALLEGEDLY SUPPORTING
KNOWLEDGE REQUIREMENT FOR
INDIRECT INFRINGEMENT

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


I. INTRODUCTION

The patents that Oracle has asserted in this case contain method claims that in many instances are allegedly infringed not by Google itself, but by developers or end users of open source software originally created by Google. In order to prove that Google is liable for such alleged infringement by others (and to collect damages for any such alleged indirect infringement), the law requires Oracle to show that Google knew of the specific patents on which Oracle is suing at the time of the alleged infringement by those other persons. It is not sufficient to show that Google knew generally that Sun or Oracle had patents, nor to show that Google could have looked at Sun’s or Oracle’s portfolios and determined that they contained patents that might cover the relevant functionality. And the inconvenient -- and undisputed -- truth is that Oracle never informed Google of the patents Google was allegedly infringing until July 20, 2010 -- mere weeks before this lawsuit was filed.

Because of its decision to wait until the eleventh hour to reveal the patents that were allegedly infringed, Oracle has no proof of an essential element of its claims for alleged indirect infringement occurring before that time. Accordingly, it is now seeking to muddy the waters by designating deposition testimony from Google executive Andy Rubin stating, in substance, that Google had not researched Sun’s patent portfolio in the years leading up to this lawsuit. Oracle undoubtedly wishes to introduce such testimony in order to confuse the jury into believing that whether Google investigated Sun’s patents at some point in the past is relevant to the question whether Google had the requisite knowledge and state of mind to support liability for indirect infringement. But that is not the law. Accordingly, the testimony that Oracle seeks to offer from Mr. Rubin’s deposition should be excluded under Federal Rule of Evidence 402 and/or 403.

II. ARGUMENT

A. Oracle must show knowledge of the patents-in-suit in order to establish
liability for indirect infringement
It is black-letter law that “[a] patent owner must prove the defendant’s knowledge of the infringed patent to prove indirect infringement by inducement or contribution.” Avidyne Corp. v. L-3 Comm’ns Avionics Sys., Inc., No. 05-11098-GAO, 2012 U.S. Dist. LEXIS 43149 (D. Mass.

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Mar. 29, 2012), at *2 (granting summary judgment of no indirect infringement by an accused infringer for the time prior to receipt of notice by way of a cease and desist letter). Here, the evidence is undisputed that Oracle never provided Google with notice of the patents Google was allegedly infringing prior to a July 20, 2010 meeting between representatives of the companies. There will be evidence introduced in Phase 2 regarding Oracle’s failure to provide notice to Google of the specific patents that Oracle alleged were infringed. However, there is already evidence in the record on this point from Phase 1. Oracle’s own President and Chief Financial Officer confirmed during her trial testimony that Google was not provided with notice of the patents Oracle alleged Google was infringing prior to the July 2010 meeting:

Q. And did Mr. Eustace have a response?

A. He -- he asked -- he asked specifically, what IP? And I said the lawyers would follow up with their lawyers on that. And we made a -- a financial proposal, and he was supposed to respond back to us in a little while.

RT 2314:3-7 (Catz). Because it is undisputed that Oracle did not give notice of these patents to Google prior to the July 20, 2010 meeting, Oracle wishes to confuse the jury into thinking that Google had an affirmative duty to seek out information on patents held by others in order to avoid liability for indirect infringement. But it was not Google’s burden to look into Oracle’s patent holdings; it was Oracle’s duty to put Google on notice of patents that it claimed to be infringed. Allowing Oracle to introduce a repeated series of questions regarding any investigation of potential patent infringement by Google (or the lack thereof) could only serve to mislead the jury into thinking that such testimony is relevant to any of the issues they are to decide. It is not. Moreover, inquiries into what investigation Google conducted into patent infringement allegations naturally runs a risk of trenching on privileged communications, something that the Court held in its January 4, 2012 motion in limine order should not be brought into the case without a specific proffer and approval in advance. ECF No. 676 at 6.

B. The evidence proffered by Oracle would not suffice to prove willful blindness
Since Oracle cannot show that Google had actual knowledge of either of the two patents-in-suit prior to July 2010, Oracle will likely argue that the Court should instruct the jury that they could determine that the knowledge requirement is satisfied if it finds that Google was “willfully

2


blind” with respect to the patents. But the case law will not support such a notion. In the case that recently approved the possibility of willful blindness substituting for actual knowledge, Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011), the accused infringer had “purchased an SEB fryer in Hong Kong and copied all but its cosmetic features.” Id. at 2064. The Hong Kong device did not bear any U.S. patent markings, and the accused infringer subsequently hired a patent attorney to conduct a right-to-use study without “telling the attorney that its design was copied directly from SEB’s.” Id. Such an active attempt to avoid knowledge of infringement is a far cry from the testimony that Oracle seeks to put before the jury here. Samples of the questions posed by Oracle’s counsel, which Oracle now seeks to introduce into evidence, include: “Why did you not conduct a review of Sun, later Oracle America’s patents as they might relate to Android?” (Rubin July 27 Dep. Tr. at 10:4-6) (portions designated by Oracle attached hereto as Exhibit A) and “To the best of your knowledge, between Google’s acquisition of Android and the filing of the lawsuit in this action, did Google ever investigate Sun’s, later Oracle America’s patent portfolio as it might relate to Android?” (Id. at 19:20-24). Leaving aside the questions of privileged communications lurking in such queries, putting on such evidence is no more than an attempt to make the jury think that the shoe is on the other foot with respect to the burden of proving Google’s knowledge of the patents-in-suit. Elsewhere, Oracle’s counsel questioned Mr. Rubin about an email suggesting that Sun had threatened to sue over patent violations. (Rubin April 5 Tr. at 28:5-30:24) (portions designated by Oracle attached hereto as Exhibit B). Those questions, however, were never tied to the specific patents-in-suit here. Again, the net effect would be to raise questions in the mind of the jury as to Google’s knowledge of the patents-in-suit, while there is no evidence suggesting that the testimony had any connection with these specific patents.

The case law in the wake of Global-Tech has made clear that the standard for willful blindness liability is not whether a company could have found patents if it had tried. For example, Apeldyn Corp. v. AU Optronics Corp., No. 08-CV-568-SLR, 2011 U.S. Dist. LEXIS 134759 (D. Del. Nov. 15, 2011), held that an accused infringer could not be held to have been willfully blind even where it was “a large company with thousands of patents,” had “a large

3


intellectual property division and ample resources to monitor patents,” and had lawyers who did not “collect patents issued to competitors unless asked to do so.” Id. at *28. Apeldyn demonstrates that knowledge that a litigious adversary may sue for patent infringement does not create a duty to affirmatively investigate the patents held by that company.

Even if Oracle were permitted to attempt to demonstrate that Google had knowledge of the patents-in-suit through its repeated questions about Google not investigating Oracle patents (and that legal theory is fatally flawed for the reasons discussed above), that still would not suffice to demonstrate liability for inducement of infringement. Courts recognize that knowledge a patent exists is not sufficient; the patentee must also show that the defendant intended to induce infringement of that patent, which in turn requires knowledge that the induced acts constitute infringement. In Mikkelsen Graphic Eng’g Inc. v. Zund America, Inc., No. 07-C-0391, 2011 U.S. Dist. LEXIS 141546 (E.D. Wis. Dec. 8, 2011), the court granted summary judgment as to inducement of infringement because there was insufficient evidence that the accused infringer had the intent to induce acts of patent infringement. Specifically, the most the accused infringer could have done “was to induce Zund to commit acts that would constitute patent infringement if the patent was, at some point in the future, construed in a particular way.” Id. at *19. The same is true here. The parties hotly contest whether the claims of the two patents-in-suit, properly interpreted, cover what the Android SDK or Android devices do when run. Thus, even actual knowledge of the patents (which Google undisputedly did not have prior to July 2010) would not suffice to allow imposition of liability for inducing infringement. The testimony that Oracle seeks to elicit is thus not merely confusing and prejudicial, but also insufficient to prove an element of its case, and Oracle’s attempt to introduce this testimony should be rejected for this reason as well.

III. CONCLUSION

For the foregoing reasons, the Court should grant a motion in limine excluding certain passages of the testimony that Oracle has designated from Mr. Rubin’s deposition transcripts. Specifically, the Court should exclude from evidence the following pages and lines from Mr. Rubin’s July 27, 2011 deposition: 8:14-9:4; 10:4-12:4; 13:5-9; 16:4-16; 19:8-20:15; 26:5-23; and

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28:22-29:10. The Court should also exclude the following pages and lines from Mr. Rubin’s April 5, 2011 deposition: 28:5-30:1; 30:13-24; 111:12-112:5; and 112:12-25.

Dated: May 6, 2012

KEKER & VAN NEST LLP

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

Attorneys for Defendant
GOOGLE INC.

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1082

MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[email]
KENNETH A. KUWAYTI (Bar No. 145384)
[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’S OPPOSITION TO
MOTION IN LIMINE RE
EVIDENCE ALLEGEDLY
SUPPORTING KNOWLEDGE
REQUIREMENT FOR
INDIRECT INFRINGEMENT

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


Oracle America, Inc. opposes Google’s motion in limine to exclude certain deposition testimony of Mr. Andy Rubin (Dkt. 1078).

INTRODUCTION

Oracle designated deposition testimony by Mr. Rubin showing that (1) Mr. Rubin was aware that Sun had Java-related patents, (2) Mr. Rubin had discussions with Sun about licensing those patents for Android, and (3) Mr. Rubin and Google, after failing to obtain a license from Sun, deliberately avoided investigating whether Android would infringe any of those Java-related patents. Mr. Rubin’s testimony is highly relevant to the issues that the jury must decide in Phase 2, including whether Google should be held liable for indirect patent infringement based on its “willful blindness” of Sun’s patents.

In Phase 2, Oracle intends to present substantial evidence – including but not limited to the deposition testimony of Mr. Rubin – demonstrating that Google both had actual knowledge of Sun’s patents and that Google was “willfully blind” with respect to Android’s infringement of those patents. That evidence will include the fact that Mr. Tim Lindholm, who was a Project Advisor for Android (TX 6 at p. 7), was one of the authors of the “The Java Virtual Machine Specification” book that specifically referred to a predecessor of the ’104 patent. (TX 25 at p. 389.) Furthermore, in 2005 and 2006, Mr. Rubin sought to negotiate an agreement with Sun that would have specifically covered Sun’s patents, and would have provided a license for Android. (TX 618 at p. 9-10.) This is not a case where an unknown company later claims infringement. Google knew of Sun’s patents and sought a license that would have covered the ’104 and other patents. Mr. Rubin’s deliberate failure to take any steps to evaluate whether Android would infringe those patents is very relevant to proving Google’s knowledge and willfulness.

There is no basis to exclude Mr. Rubin’s testimony. That testimony, along with the other evidence that Oracle has offered and will offer in Phase 2, is relevant to prove Google’s knowledge and willful disregard of Sun’s and now Oracle’s intellectual property rights. There is no risk of confusion or prejudice to Google, but it would be prejudicial to Oracle to prevent the

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jury from hearing such testimony from Mr. Rubin, who is in charge of Android. Google’s motion should be denied.

ARGUMENT

In Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2069 (2011), the Supreme Court held: “Given the long history of willful blindness and its wide acceptance in the Federal Judiciary, we can see no reason why the doctrine should not apply in civil lawsuits for induced patent infringement under 35 U.S.C. § 271(b).” The Supreme Court articulated two basic requirements for willful blindness: “(1) the defendant must subjectively believe that there is a high probability that a fact exists and (2) the defendant must take deliberate actions to avoid learning of that fact.” Id. at 2070. Lower courts have already applied the Global Tech willful blindness standard as an alternative to direct knowledge for proving indirect infringement. See McRee v. Goldman, No. 11-CV-00991-LHK, 2012 U.S. Dist. LEXIS 36793 (N.D. Cal. Mar. 19, 2012); Dataquill Ltd. v. High Tech Computer Corp., No. 08cv543-IEG, 2011 U.S. Dist. LEXIS 138565 *27 (S.D. Cal. Dec. 1, 2011) (“the Supreme Court explained that under this standard actual knowledge is not required, and that the intent may be shown under the willful blindness doctrine”); Fred Hutchinson Cancer Research Ctr. v. Branhaven, LLC, 2012 U.S. Dist. LEXIS 46990 *5 (E.D. Va. Apr. 2, 2012) (citing Global-Tech for holding that induced infringement under § 271(b) “requires knowledge, or willful blindness, that the induced acts constitute patent infringement”) (emphasis added).

Sections 271(b) and 271(c) share the same knowledge requirement, and the Court’s reasoning indicates that they must share willful blindness as well. Other courts agree. See, e.g., Trading Techs. Int’l, Inc. v. BCG Partners, Inc., No. 10 C 715, 2011 U.S. Dist. LEXIS 99415, at *13 (N.D. Ill. Sept. 2, 2011) (“As noted above, in Global-Tech the Supreme Court established that the plaintiff must show the alleged infringer must have knowledge of the patent at issue (or at least ‘willful blindness’ to the patent) and knowledge that the infringer’s product infringed on that patent to prove a claim for contributory infringement (35 U.S.C. § 271(b)) and inducing infringement (35 U.S.C. § 271(c)).”).

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Mr. Rubin’s testimony is relevant to establishing Google’s willful blindness, and there is no basis to exclude that testimony. The testimony that Google seeks to exclude includes the following points:

  • When questioned about the negotiations with Sun, Mr. Rubin testified that he recalled “some discussions around patents. … there was a notion of a partnership where we could actually license both technology, implementation, and patents, where the patents would be used to protect the open platform.” (4/5/2011 Rubin Tr. at 111:12-112:5.)
  • When questioned about an email where Mr. Rubin referred to the fact that Sun owned patents, in connection with a Java-related announcement, Mr. Rubin testified: “I assume they’re running a business, they’re inventing intellectual property, they’re protecting it through the patent system. Through GPL, I didn't know what they were, but I knew that it was dangerous to use the stuff without knowing exactly what it was." (7/27/2011 Rubin Tr. at 13:5-9, 16:4-16.)
  • Despite those discussions with Sun and his awareness of Sun owning Java-related patents, Mr. Rubin testified that he “never investigated the breadth of Sun’s portfolio” and never conducted any review of Sun’s or Oracle’s patents as they related to Android. (7/27/2011 Rubin Tr. at 8:14-9:4; 19:8-20; 20:5-15; 26:5-23.)
  • When questioned about an email in which he wrote that Sun “threatened to sue us over patent violations,” Rubin testified, contrary to what he wrote in the email, “I don’t think Sun ever threatened to sue us over patent violations.” (4/5/2011 Rubin Tr. at 28:5-30:1, 30:13-24.)
This testimony, along with the other evidence that is already in the record and evidence that will be offered in Phase 2, demonstrates that Google knew of Sun’s patents but decided to proceed without a license. In July 2010, Oracle informed Google that Android infringed the ’104 and ’520 patents. One month later, Mr. Lindholm wrote that Google needed a Java license from Oracle for Android. (TX 10.) Given Mr. Lindholm’s familiarity with the technology covered by the ’104 patent, it is a reasonable inference that Mr. Lindholm was referring at least in part to that patent when he wrote that Google needed a license from Oracle. The designated testimony by Mr. Rubin’s is consistent with this other evidence, and should not be excluded. Excluding Mr. Rubin’s testimony at this stage would be both premature and prejudicial to Oracle.

Mr. Rubin oversaw the development of Android, and he and others repeatedly referred to the “JVM” or “Java Virtual Machine” that Google was developing for Android. Before Google

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even acquired Android, Mr. Rubin made a presentation in which he stated that Android planned to include a “JVM” that would be based on “Java licensed from Sun, mods by Android.” (TX 4 at p. 28.) After Google acquired Android, in presentations and emails to Google’s top executives, Mr. Rubin repeatedly referred to the “JVM” that the Android team was working on. (TX 1 at p. 9; TX 3 at p. 2; TX 6 at p. 11; TX 7 at p. 1.) Google employees stated in internal emails that “the JVM is going to be a central piece of the system we’re building” and that “the JVM is core to our platform architecture and strategy.” (TX 5 at p. 3; TX 20 at p. 1.) Google employees also acknowledged in internal documents that the license from Sun was “critical” for Android. (TX 17 at p. 1.) After Google was unable to negotiate any deal with Sun that would provide that critical license, Google decided to move forward anyways. Even then, Mr. Rubin and others continued to refer to the virtual machine that they were working on as a “JVM.” (TX 151 at p. 5.) There were extensive negotiations between Google and Sun, and Mr. Rubin’s plan all along was to build a Java-based platform with a high-performance JVM. That was exactly what he had done at Danger, and what Mr. Rubin wanted to do at Google. Mr. Rubin recognized early on that one option was to proceed without a license and risk making “enemies.” (TX 7 at p. 2.) Mr. Rubin’s admissions that he did nothing whatsoever to evaluate what Sun patents Google might infringe with Android is not only relevant but strong evidence of Google’s willfulness.

Google cites Apeldyn Corp. v. AU Optronics Corp., Civ. No. 08-CV-568-SLR, 2011 U.S. Dist. LEXIS 134759 (D. Del. Nov. 15, 2011), but that decision provides no basis to exclude Mr. Rubin’s testimony. In Apeldyn, the court cited quoted Global-Tech: a “willfully blind defendant is one who takes deliberate actions to avoid confirming a high probability of wrongdoing and who can almost be said to have actually known the critical facts.” Id. at *29. There, in stark contrast to this case, the only evidence cited by the court was testimony that the defendant would generally not review patents issued to other companies unless there was a request from the internal lawyers to do so. Id.

Here, unlike in Apeldyn, there were years of negotiations between Google and Sun leading up to Google’s release of Android, and the evidence presented during Phase 2 will demonstrate that those negotiations focused on Sun’s patents. Google employees at various times referred to a

4


license from Sun as “critical” for Android (TX 17), and Mr. Rubin made a presentation to Google’s very top management regarding the deal with Sun in which he indicated that the deal would result in “patent grants” by Sun for Android (TX 22 at p. 9). After launching Android, Google considered buying “the rights to Java from Sun (patents, copyrights, etc)” in part because the result would be “Our Java lawsuits go away.” (TX 326 at p. 2-3.) From the very beginning, Google sought a license to use Sun’s patented technology. Google then proceeded to distribute Android to manufacturers without any license, knowing that Sun could sue. Google’s actions, and Mr. Rubin’s testimony, evidence an active intent to induce infringement by others.

Ultimately, Google is seeking to exclude Mr. Rubin’s testimony and other evidence because that evidence is fundamentally inconsistent with the story that Google wants to tell the jury. The parties exchanged openings, and Google’s opening includes the following assertion: “Google independently developed Android not knowing of the Sun patents.” That assertion is false, and the testimony by Mr. Rubin – and the trial testimony of Mr. Lindholm – is relevant to showing that any lack of knowledge was based on Google’s deliberate decision to proceed without any investigation, knowing that it might make “enemies” doing so, and that it would eventually face “Java lawsuits.”

Google’s final argument is that Mr. Rubin’s testimony should be excluded because that testimony would not suffice to show that Google “intended to induce infringement of the patent, which in turn requires knowledge that the induced acts constitute infringement.” (Dkt. 1078 at p. 5.) There are two flaws with this argument.

First, there is no requirement that Mr. Rubin’s testimony in itself establish each and every element of Oracle’s claims. Google seeks exclusion on the basis that Mr. Rubin’s testimony is “insufficient to prove an element of its [Oracle’s] case” (Dkt. 1078 at p. 5), but that is not the question on this motion. The only question on this motion is whether Mr. Rubin’s testimony is relevant to any of the issues in Phase 2, and if so whether it should nonetheless be excluded under Rule 402 or 403. As explained above, Mr. Rubin’s testimony is relevant to proving willful blindness. There is no risk of confusion of prejudice with that testimony. Whether that testimony

5


proves some other element is immaterial, and provides no basis to exclude this otherwise relevant testimony.

Second, Google’s argument is nothing more than an untimely and meritless attempt to seek judgment as a matter of law on Oracle’s inducement claim. Google’s argument focuses less on the designated testimony and more on the legal standard for proving inducement. Under Google’s proposed standard, an inducement claim would fail in every case where the parties “hotly contest” infringement. (Dkt. 1078 at p. 5.) Google contends that it could not even be liable for inducing infringement after July 2010, when Oracle specifically identified the ’104 and ’520 patents. That is not the law. Regardless, Oracle will offer evidence showing that Google knew of the ’104 patent but nonetheless enabled and encouraged the broad adoption of Android by handset manufacturers.

Oracle also opposes Google’s motion on the basis that it is procedurally improper, leading to unnecessary briefing. The Court’s Jury Trial Guidelines establish a process for designating and objecting to deposition testimony. For Mr. Rubin’s testimony, the parties followed the Court’s procedure up to the point when Google announced at 3 pm today that it would be filing this motion in limine. Google had already served its objections and counter-designations, and the next step according to the Court’s rules was for Oracle to evaluate those objections, to “meet and confer as reasonable,” and for Oracle to then “provide the Court with the final packet, with any objected-to portions highlighted and annotated” as required by the Court’s rules. The parties used the Court’s required procedures for all deposition testimony played during Phase 1, and Oracle sees no reason to change that now.

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CONCLUSION

The evidence that will be presented in this next phase, including the testimony of Mr. Rubin, clearly fit the standard set in Global-Tech and other decisions regarding indirect patent infringement. There is no basis to exclude Mr. Rubin’s testimony, and Oracle therefore requests that the Court deny Google’s motion.

Dated: May 6, 2012

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

By: /s/ Daniel P. Muino

Attorneys for Plaintiff
ORACLE AMERICA, INC.

7



1080

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

KING & SPALDING LLP
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 MOTION IN LIMINE TO
EXCLUDE EVIDENCE REGARDING
COMPATIBILITY TESTING SUITE

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


I. MOTION AND RELIEF REQUESTED

Under Federal Rules of Evidence 402, 403, and 702, defendant Google Inc. (“Google”) hereby moves the Court for an order excluding in limine testimony by 1) Google employees Patrick Brady and Daniel Morrill concerning the use and purpose of the Android Compatibility Test Suite (“CTS”) as well as testimony by 2) Oracle’s patent infringement expert, Dr. John Mitchell, that relies upon the CTS to establish infringement of the ’104 patent.

As an initial matter, the CTS has no relationship to the ’520 patent. (Ex. A, U.S. Patent No. 6,061,520 at col. 9, ll. 53.)1 The ’520 patent relates to a class preloader utilized by an application developer and Oracle accused the Android Software Development Kit of infringing. It is undisputed that the CTS includes no tests directed at the Android Software Development Kit and is completely irrelevant to any question of infringement of the ’520 patent. Accordingly, this motion focuses on the Dalvik virtual machine, which is accused of infringing claims of the ’104 patent.

II. DISCUSSION

The Android Compatibility Test Suite (“CTS”) is a software application that runs on a desktop computer and can run various tests on an Android-based device that is plugged into the computer via a USB cable. (TX 3347.) Third party manufacturers typically modify the Android source code before installing it on their devices (TX 2802 at 1), and the CTS tests are intended to check for the presence and correct behavior of various components in the Android software, but can not evaluate how those components actually function. (Ex. B, Brady 30(b)(6) Depo. Tr. 90:12–25.) In other words, the CTS tests compatibility by comparing the expected output with the actual output of the handset being tested. The CTS does not examine the actual source code used to build software that resides on the handset.

Dr. Mitchell’s opening expert report on patent infringement includes opinions that the CTS provides evidence of infringement by third party devices. (Ex. C, Mitchell Report, ¶ 188) Oracle has elicited testimony at deposition and may present fact or expert testimony at trial regarding the Android Compatibility Test Suite (“CTS”) in an attempt to mislead the jury into

____________________________

1 Exhibits are attached to and supported by the attached declaration of Truman Fenton.

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believing that if a third-party device successfully passes the CTS test, it implies that the device contains the specific portions of Android source code accused of infringing the ’104 patent.

First, it is undisputed that the CTS is incapable of testing for how a device’s virtual machine actually processes symbolic references in Dalvik executable files, which will be the focus of the trial with respect to the alleged infringement of the ’104 patent. Because of this, the CTS is not relevant to the question of whether a virtual machine on a device infringes the asserted claims of the ’104 patent. The infringement analysis must focus on the specific elements of the asserted claims, which will turn on internal implementation details of the accused Dalvik virtual machine. Those implementation details not visible to the “black box” testing harness of the CTS.

Second, Oracle’s own infringement expert, Dr. Mitchell, does not even contend that the CTS can shed light on the infringement analysis. If the CTS were capable of doing so, we would have expected to see discussion of how the CTS could do so in his opening expert report on infringement. Dr. Mitchell examined the source code for the CTS software and understands how the CTS operates. (Ex. D, Mitchell Dep. at 61:1–2.) In his opening report on patent infringement, Dr. Mitchell relied on the CTS to confirm the existence of certain APIs he claimed to infringe certain claims of the ’476 and ’447 patents. (Ex. E, Appendix A to Mitchell Report, § 2.F (re ’447 and ’476 patents).) Those two patents are, of course, no longer in the case. Dr. Mitchell never suggested that the CTS could confirm that an accused device infringes the ’104 patent or would in any way be relevant to the infringement analysis of the ’104 patent.

Second, Oracle does not contend that the CTS could or does test for the performance of the symbolic resolution process claimed in the ’104 patent. None of the fact or expert witnesses in the case have testified that this is possible. The CTS is an “automated testing harness” that tests for behavioral compatibility. (TX 3347 at 2 (“Types of test cases”).) The only relevant requirement for compatibility is that the device be able to execute Dalvik code. (TX 2802 at 31.) Specifically, “[a] compatible Android device must support the full Dalvik Executable (DEX) bytecode specification and Dalvik Virtual Machine semantics.” (Id.) The testing performed by the CTS treats the handset’s virtual machine as a “black box” and gathers no information about how the virtual machine executes the DEX bytecode or conforms to the Dalvik Virtual Machine

2


semantics. (Ex. B, Brady 30(b)(6) Depo. Tr. 90:12–25.) Thus, not only is there is no evidence that the CTS would detect whether the symbolic resolution process in a device functions in the allegedly infringing manner, there is no evidence that the CTS could detect any performance change that depends on whether the symbolic resolution process operates in the allegedly infringing manner.

Indeed, Dr. Mitchell explains that the Dalvik virtual machine can be modified to properly execute Android applications without infringing the ’104 patent by disabling a particular internal function. (Ex. C, Mitchell Patent Rpt. at ¶ 113.) According to Dr. Mitchell, that modified Dalvik virtual machine will still execute Dalvik executable files; it would simply take more time to do so. Dr. Mitchell does not explain whether the alleged performance decrease due to the modifications is sufficient to cause the CTS to fail, but even if it did the CTS would be unable to determine if the cause were due to the code modifications or some other software or hardware limitation.

Third, Google has significant unrebutted evidence that the CTS is incapable of generating probative evidence on issues relevant to the ’104 patent. A Google employee named Patrick Brady testified at his deposition that the CTS performs “black box” testing of a device’s virtual machine. (Ex. B, Brady 30(b)(6) Dep. Tr. 90:12–25.) This means that the CTS provides input (in the form of Dalvik bytecode instructions) to the virtual machine and checks for the expected output, but the CTS does not check the “internal workings” of the virtual machine being tested. (Id. at 91:17–21.) Mr. Brady also testified that many handset manufacturers modified the Dalvik virtual machine and still produced handsets that passed the CTS. (Id. at 92:21–93:6.) Another Google engineer testified at his deposition that at least some Android compatible devices—meaning they passed the CTS—do not include the Dalvik virtual machine developed by Google. (Ex. F, Morrill Depo. Tr. 156:16–25.) Because the CTS only performs “black box” testing of a device’s virtual machine, test results are not probative of how that virtual machine handles internal functions such as the symbol resolution at issue with respect to the asserted claims of the ’104 patent.

Fourth, Oracle may attempt to present a case of indirect infringement based on inference

3


and innuendo. Specifically, Dr. Mitchell’s opening patent infringement expert report includes the conclusory statement that Android branding indicates that a device “operates as it would if it were running stock Android from Google, at least with respect to the infringing functionality that I have identified.” (Ex. C, Mitchell Rpt. at ¶ 187.) There is no evidence to support this conclusion, and Dr. Mitchell never explained how the CTS would be capable of distinguishing between infringing and non-infringing virtual machines. Nor has he explained how the CTS might determine whether any observed performance differential resulted from a difference relating to the patented feature versus other factors like processor speed, memory bandwidth, ahead-of-time compilation, just-in-time compilation, or other factors.

Testimony from Dr. Mitchell would be especially inappropriate in view of his response to a deposition question about the probative value of the CTS relevant to the question of infringement of, inter alia, the asserted claims of the ’104 patent:

Q. Can you tell me whether the CTS test from your review of the code tests for anything other than the security patents that are relevant to your opinions on infringement in this case?

A. You know, I'm not going to be able to recall, you know, some significant period of time after carrying out those tests exactly what's covered. My recollection is that the CTS takes considerable time, at least hours, maybe more than ten hours on some platforms to run, if I remember correctly. So I'm sure that it tests many things.

(Ex. D, Mitchell Dep. Tr. at 61:15–61:25.) Dr. Mitchell had the opportunity to explain how the CTS could be probative of infringement, but he could not or would not provide an explanation.

Fifth, even if the CTS had some limited probative value, and it does not, the potential for jury confusion and prejudice weighs against allowing this evidence in to the patent phase of the trial. This confusion and prejudice stems from how the evidence was presented and used in the copyright phase of the trial. While the mere existence of an implementation of an API was arguably relevant to copyright infringement, this is not relevant to the patent phase: introduction of evidence of the CTS in the patent phase risks confusion where the jury might believe that if a device passes the CTS, it includes the same functionality provided by Google in the form of

4


source code provided as part of the Android software distribution. This false inference could lead to an erroneous finding of patent infringement by devices on which substantive evidence of the code they run is not presented. Because it has no probative value, evidence of the CTS should be excluded in view of the prejudice that would likely flow from its introduction.

Finally, Oracle may offer evidence of the CTS not as proof of infringement, as explained above, but only to show some sort of incentive not to change the Dalvik virtual machine. This generalized testimony was already presented in phase one by Mr. Morrill. A repeat of that testimony would be inappropriate cumulative evidence. (RT 2642:2–5.) Further, any probative value of this evidence would be insignificant at best and is clearly outweighed by the significant risk of confusion and prejudice to Google on the question of patent infringement.

III. CONCLUSION

For the foregoing reasons, Google respectfully requests that the Court exclude further testimony by Google engineers Patrick Brady and Daniel Morrill on the CTS and testimony by Dr. Mitchell regarding the CTS to prove infringement of either the ‘520 patent or the ‘104 patent.

Dated: May 6, 2012

KEKER & VAN NEST LLP

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

Attorneys for Defendant
GOOGLE INC.

5



1085

MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[email]
KENNETH A. KUWAYTI (Bar No. 145384)
[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
OPPOSITION TO GOOGLE’S
MOTION IN LIMINE TO EXCLUDE
EVIDENCE REGARDING
COMPATIBILITY TESTING SUITE

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


Oracle opposes Google’s motion to exclude evidence regarding the Android Compatibility Test Suite (“CTS”).

I. THE CTS PROVIDES PROOF OF INFRINGEMENT OF THE ’104
PATENT

Google’s Compatibility Definition Document (TX 2802) requires Android devices to meet certain performance characteristics in order to be certified as Android-compatible: “Compatible implementations must ensure not only that applications simply run correctly on the device, but that they do so with reasonable performance and overall good user experience. Device implementations MUST meet the key performance metrics of an Android 2.3 compatible device,” as specified in the document. (TX 2802 at 122; see also Brady Topic 9 Dep. 121:6-128:1, attached as Exhibit A; Morrill Dep. 167:3-169:20, attached as Exhibit B.)

The CTS ensures that devices meet these characteristics through testing. Some CTS tests test the performance of Android phones—these tests are highly relevant to Oracle’s infringement claims. The fact that OEM device manufacturers must pass these tests before calling their phone “Android” suggests that they have not changed Android’s symbolic reference resolution functions, which would significantly and negatively affect performance. The Android Gingerbread source code (TX 47) includes a number of CTS performance tests:

  • 0047gingerbread23 - GOOGLE-00- 00000527ctsteststestsperformancesrcandroidperformancectsMultiAppStartu pTest.java (Tests that restart of calculator takes less time than start of calculator)
  • ,p>
  • 0047gingerbread23 - GOOGLE-00- 00000527ctsteststestsperformance2srcandroidperformance2ctsAppStartup.ja va (Tests for average MusicBrowserActivity in com.android.music startup time of less than 500 milliseconds)
  • 0047gingerbread23 - GOOGLE-00- 00000527ctsteststestsperformance3srcandroidperformance3ctsAppStartup.ja va (Tests for average BrowserActivity in com.android.browser startup time of less than 1300 milliseconds)
  • 0047gingerbread23 - GOOGLE-00- 00000527ctsteststestsperformance4srcandroidperformance4ctsAppStartup.ja va (Tests for average ui.ConversationList in com.android.mms startup time of less than 700 milliseconds)

1


  • 0047gingerbread23 - GOOGLE-00- 00000527ctsteststestsperformance5srcandroidperformance5ctsAppStartup.ja va (Tests for average AlarmClock in com.android.alarmclock startup time of less than 650 milliseconds)
The CTS thus provides circumstantial evidence that OEMs include on their devices the infringing functionality that Google provides to them.

II. THE CTS PROVIDES PROOF OF INFRINGEMENT OF THE ’520
PATENT

The Court should allow Oracle to present evidence regarding the Android CTS for the ’520 patent because the CTS directly tests the accused behavior in Android. Specifically, the CTS includes a test for the fill-array-data instruction that the Android code accused of infringement creates. (See TX 47 at 0047gingerbread23 - GOOGLE-00-00000527ctstoolsvmtests srcdotjunitopcodesfill_array_dataTest_fill_array_data.java.) That OEMs pass these tests suggests that they do not change Dalvik’s ability to execute the fill-array-data instruction, a Dalvik instruction used for array initialization. Indeed, the final step in claim 1 of the ’520 patent is “interpreting the instruction by a virtual machine to perform the static initialization of the array.” By requiring OEMs to pass the CTS to certify their devices as Android-compatible, Google actually requires them to perform a step of the patented method (a step that Google has refused to admit that its licensees perform, the Court may recall). This evidence is highly probative, and the jury should hear it.

Google’s only argument to exclude CTS evidence for the ’520 patent is that “the CTS includes no tests directed at the Android Software Development Kit.” That is flat wrong. The CTS includes tests directed to confirm the proper functioning of dx tool’s simulation of Java bytecodes that participate in static array initialization. (See, e.g., bytecode tests in 0047gingerbread23 - GOOGLE-00-00000527ctstoolsdx-testssrcdxcjunitopcodes (opcodes newarray, iastore, lastore, fastore, dastore, aastore, bastore, and sastore).) The dx tool is part of the Android SDK, and is part of the software accused of infringing the ’520 patent. If any developer or OEM were to change the dx tool, speculation for which there is no evidence, the CTS tests suggest that the manner of creating the fill-new-array instruction would not be changed.

2


III. GOOGLE’S OBJECTIONS ARE INSUFFICIENT TO EXCLUDE THIS
EVIDENCE

Google claims that Professor Mitchell did not utilize performance tests to prove infringement. In fact, Professor Mitchell refers to the performance tests of the CTS in paragraph 188 of his opening report, which Google attached to its motion as Exhibit C.

Google’s argument that testimony in this area would duplicate Phase I testimony (ECF No. 1080 at 5) is false. Mr. Morrill’s testimony during Phase I did not cover tests for the Dalvik Virtual Machine, let alone performance tests. Oracle expects Mr. Morrill’s and Mr. Brady’s testimony to confirm the presence of the patented technology.

IV. CONCLUSION

For the reasons stated above, the Court should deny Google’s motion to exclude the CTS evidence from trial.

Dated: May 6, 2012

MORRISON & FOERSTER LLP

By: /s/ Marc David Peters

Attorneys for Plaintiff
ORACLE AMERICA, INC.

3


EXHIBITS

Exhibits are not replicated here.



1075

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

Plaintiff,
v.
GOOGLE INC.
Defendant.

CASE NO. CV 10-03561 WHA

STIPULATION AND [PROPOSED]
ORDER REGARDING ’104 PATENT

Judge: Honorable William H. Alsup


STIPULATION

WHEREAS, the parties have continued to meet and confer regarding proposals for streamlining the trial, and have reached agreement regarding the ’104 patent;

NOW THEREFORE THE PARTIES HEREBY STIPULATE AND AGREE as follows:

1. Google has agreed to withdraw its invalidity defense to the ’104 patent.

2. The parties have agreed to the conditional stipulations regarding Oracle and Sun products practicing the ’104 patent set forth in the Supplemental Joint Statement of February 21, 2012 (Dkt. 721). Specifically, if Oracle proves in Phase 2 that Google infringes the ’104 patent, Google conditionally stipulates for purposes of Phase 3 (the damages phase) that the Oracle products identified in the 2/21/2012 Joint Statement practiced the asserted claims of the ’104 patent during the relevant time period. In turn, Oracle conditionally stipulates for purposes of Phase 3 that Oracle and Sun did not mark the practicing products with the ’104 patent during the relevant time period. The parties agree that these conditional stipulations relate only to Phase 3 and are triggered by a finding of patent infringement; the stipulations shall not be used as evidence or referred to in attorney argument in Phase 2 regarding patent liability.

ORDER

The foregoing stipulation is approved, and IT IS SO ORDERED.

Date:_______________________

____________________________
Honorable William H. Alsup
Judge of the United States District Court


Dated: May 6, 2012

MORRISON & FOERSTER LLP

By: /s/ Marc David Peters

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.


Dated: May 6, 2012

KEKER & VAN NEST LLP

By: /s/ Matthias A. Kamber

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

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

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

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

Attorneys for Defendant
GOOGLE INC.



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