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Google Files Motion for New Trial on Question 1 Re API SSO, Day 3, Patent Phase ~pj - Updated 7Xs - Schwartz Video on Corporate
Wednesday, May 09 2012 @ 11:07 AM EDT

Google has filed a motion [PDF] for a new trial on both question 1a and 1b, arguing that they are indivisible and that Google has rights under the Seventh Amendment for a new trial on both sides of that same coin:
Under settled Supreme Court and Ninth Circuit law, the jury's failure to reach a verdict concerning both halves of this indivisible question requires a new trial concerning both questions. To accept the infringement verdict as binding on the parties and retry only fair use would violate both the unanimity requirement and the Reexamination Clause of the Seventh Amendment.
We have Google's motion, as text. Incidentally, Professor Michael Risch, who yesterday wrote an article about the Oracle v. Google verdict today wrote a correction, after reading the expert reports for both parties. He now writes that it seems unusual that this question even went to trial, and this is what he predicts, based on Lotus v. Borland:
Based on my reading of the reports (and I admit that I could be missing something – I wasn’t in the courtroom), I think that the court will have no choice but to hold that the collection of API names is uncopyrightable – at least at this level of abstraction and claimed infringement.

To the extent that there are bits of non-functional code, I would say that’s probably fair use as a matter of law to implement a compatible system. I made a very similar argument in an article I wrote 12 years ago – long before I went into academia.

You may remember Professor Risch's paper that the US Supreme Court relied on in the famous Mayo v. Prometheus decision (see Update 2 here.)

Jump To Comments

[Update 1, Update 2, Update 3,
Update 4, Update 5, Update 6, Update 7]

Steven J. Vaughan-Nichols asked some lawyers their view on the API issue. They all agree that it would be a disaster if Oracle prevails on this. Here's an example:
Oracle would have it that APIs are like music. Yes, APIs are just made up of descriptions of inputs and outputs, but then music is just made up of notes.

To this argument, Thomas Carey, a partner at Sunstein, a major intellectual property (IP) law firm and chair of its Business Department said, “Oracle’s lawyers compared the creation of APIs to writing a piece of music, to which I say ‘Balderdash.’”

The First Circuit opinion in Lotus v. Borland found the command structure of Lotus 1-2-3 to be unprotectible under copyright because it was functional, not expressive. According to that opinion, the IP protection for functionality is to be found, if at all, under the patent laws, not under copyright.

“Is there anything more functional and less expressive than an API?” continued Carey. I don’t think so, and I suspect that you don’t either. Thus, the infringement of APIs should not be possible unless they are patented. The First Circuit [which ruled in Borland's favor in this important case over a program's menu interface] got the principle right (even if I disagree with them about the command structure of 1-2-3).”

Another attorney, Matthew Levy points out that the problem is less for programmers than for consumers, and here's what companies could do with copyrightable APIs:
But the bigger problem is for consumers. If all APIs are copyrightable, we can end up with a situation where a company builds a specialized API to control a device or other platform and then locks down the market for after-market components using copyright of the API combined with the Digital Millennium Copyright Act,” Levy concluded.
That may be Oracle's dream,in fact, but other than Oracle, I simply can't find anyone writing that this will be a wonderful advance in the law. If all the programmers and all the lawyers, other than those paid by Oracle, agree this will be a disaster, what is likely the truth? Yes. It will be a disaster.

Speaking of disasters, our reporter got sick, so you can follow the journalists covering the trial. I know, but life happens. If any of you can go tomorrow, please let me know.

Update: Say, this is interesting. James Niccolai tweeted:

Sun's 10K accepted into evidence as a jury could find it undermines McNealy's testimony that blog posts are not corp. policy, judge says
And Rachel King noticed:
Sun 10-K includes notes about co. announcements & other news that can be viewed via Investor Relations sites...and CEO BLOG
This is the Sun 10K they are writing about.

Rachel King on Oracle witness Brian Sutphin, who amazingly says this, under oath:

Sutphin says Sun CEO blog was personal & didnt represent official statements for company. (Still dangerous move for Oracle considering 10-K)
I have a question: Do CEO personal blogs use Safe Harbor Statements?

Update 7: We have the transcript [PDF] of the day now, and here's how the discussion about this went, before the jury came in, beginning on page 3 of the PDF:

MR. JACOBS: Just some housekeeping. 1129 are the demonstratives that were shown during Robert Vandette's testimony. 1130 are the demonstratives shown during Mr. Poore's testimony. And on a non-housekeeping note, we're going to be calling Mr. Sutphin today.

THE COURT: I have forgotten who he is.

MR. JACOBS: I'm sorry, Mr. Sutphin is our witness to respond to Mr. Schwartz's testimony.

THE COURT: All right.

MR. JACOBS: It will be very focused and short. We do not intend by the testimony we are eliciting to be invading the attorney-client privilege. It will be of a nature that

corresponds to the questioning of Mr. Schwartz, which Google asserted in its opposition brief did not amount to a privilege waiver.

So we thought ahead to how we're going to approach this. And Google has identified some exhibits they are going to use to cross-examine. And he'll be up, he'll be down, we'll be done with Mr. Sutphin.

THE COURT: I hear what you're saying. I'm not making any ruling on privilege. I don't know whether what you're saying would or would not waive any privilege. That's for after I hear how it all comes out.

MR. VAN NEST: Your Honor, I would object to this. I've tried to do everything I can to accommodate counsel.

Here's the situation: I agreed to everything they asked for in Phase Two. I said I won't make any reference to Mr. Schwartz' decision. I won't make any reference to the grounds. I won't make any reference to that testimony. I won't call Mr. Schwartz. I'm not going to put it in play in Phase Two.

The only reason for this, according to them, is they want a complete commitment as to Phase Three, also. And what I said about that was it's not that I'm not willing to commit to Phase Three, but I would at least like to know what Phase Three is going to look like before I make that commitment.

And so what they said in response was, well, no,

we've got a witness availability issue. And I said, well, I've been accommodating witness availability issues the whole case.

We had Mr. McNealy in here. We moved Mr. Bornstein all around. We've done all that. I don't think just because of a witness availability issue, on a question like this, we should be injecting Mr. Sutphin into Phase Two and then possibly requiring me to call Mr. Schwartz back to respond, and all that. We really don't want to do that.

I've agreed for everything they've asked for on Phase Two. Given the fact this is likely going to amount to a waiver and I'm going to be asking for documents, and so on, I really think this is something the Court should prohibit in light of the fact that I'm willing to make a commitment and have made a commitment not to raise the Schwartz issue.

And this is only being tendered now based on some witness availability issue, not anything that requires relevant testimony in Phase Two. So I would object to having this witness called now. I think we ought to finish out Phase Two. If he's available end of the day tomorrow and they want to call him at the end of all our Phase Two evidence, that would be a different thing. They want to inject him the middle of sort of the key evidence in Phase Two. This is highly objectionable. I have done I can to accommodate them.

THE COURT: Well, the fact remains that at right in everything your

instance, Mr. Schwartz did say that they thought there were no grounds on which to sue. Even if you don't argue it, the jury may remember it -- it was dramatic testimony -- and hold that against the plaintiff.

So I see that point by Oracle. On the other hand, I see your point that this could open up privilege.

Now, I want to say, I am not blessing Mr. Jacobs' approach ahead of time. If the privilege gets opened, then the privilege gets opened.

I cannot give you a blank check on that, Mr. Jacobs. I hear what you're saying that you don't plan to do it, but that's not enough. You might do it anyway, inadvertently, or due to the way the questioning goes.

So that's for a future hour. I won't say future day. Later on this morning we'll have to address that.

But don't blame the judge if it turns out that this backfires in some way. So I'm not going to -- the answer is, I'm not going to preclude this.

I ask this question just out of curiosity. If you do bring back Mr. -- you said something yesterday that I've been thinking about. If you do bring back Mr. Schwartz, are you then going to put in the fact that the 10-Ks called him out in his blog as a corporate-sponsored way to speak to the public?

MR. VAN NEST: Sure. I mean, that --

THE COURT: Mr. Jacobs, I'm going to allow that in.

So you be aware that if you put your part in, in order to undermine what Mr. Schwartz says about whether or not they had grounds to sue, and Mr. Schwartz comes back, it's fair game for Mr. Schwartz to rebut what you said in reply with Mr. -- who was it, McNealy? Was that it?

MR. VAN NEST: McNealy.

THE COURT: McNealy said that he was not a corporate Did Mr. McNealy sign those 10-Ks? Do you know?

MR. JACOBS: I don't know, Your Honor. I think that the chairman typically doesn't. But I'm not positive.

THE COURT: Somebody ought to look and see.

MR. VAN NEST: Well --

THE COURT: If Mr. McNealy signed those 10-Ks that flat out say that Mr. Schwartz's blog was a communication to the public, you have just as much right to put that in as -- it doesn't even matter whether Mr. McNealy, it's just coloration if he did.

But you have just as much right to put that in to straighten out what was said on that subject as Mr. Jacobs has to put in what he wants to put in.

And I do think both sides might wisely decide to reach a deal on this and not go down this path.

But I cannot -- I feel, as the judge, I cannot prevent you, both sides, from slugging it out in High Noon

style, Gary Cooper style, just the way you have been doing it. And one of you will be carried out of town with bullet holes in them when the trial is over. Maybe both of you.

(Laughter)

THE COURT: And just like the shootout at the O.K. Corral, or whatever analogy you want to use. So if you two want to litigate the case that way, it is relevant enough that I will let you do it.

I also can see reasonable lawyers deciding you are going to focus on the technicalities of the claim limitations and get this part over with.

Mr. Van Nest, I cannot grant your motion.

MR. VAN NEST: Your Honor, I just note that I have Trial Exhibit 971 here. I ask that it be moved into evidence on stipulation. It's the 10-K. It was signed by both McNealy and Schwartz. It's on their exhibit list.

I don't need to call Mr. Schwartz for the purpose of getting this in. We've been stipulating to these the whole trial. I have it. It's exhibit 971.

THE COURT: All right. You're moving 971 in. Any objection?

MR. JACOBS: Let me see it, Bob.

THE COURT: Now, be careful on this, because the way you've said it is that if he concedes this you will not call Schwartz. I don't know if you meant that or not.

MR. VAN NEST: That's not quite what I said.

THE COURT: All right.

MR. VAN NEST: I don't think I need Mr. Schwartz to get this in. That's what I said.

THE COURT: The 10-K.

MR. VAN NEST: That's right. Depends on what Mr. Sutphin says.

THE COURT: Be clear because Mr. Jacobs may be understanding you to say that if he stipulates to this one coming in, you will not call Mr. Schwartz. And if that's what you intend to say, fine. But let's be clear on it. Is that what you intend to say?

MR. VAN NEST: No.

THE COURT: All right. So this is a separate standalone. You're moving in one exhibit. Is there any objection to this?

MR. JACOBS: Give me a minute, Your Honor.

MR. VAN NEST: This is an exhibit on their list, Your Honor.

MR. JACOBS: Your Honor, I object on the following The purpose for which Mr. Van Nest wishes to use this an official imprimatur on blog postings. The jury will be confused about the requirements filings to the SEC. And, ultimately, we may have to governing ask the Court for a legal instruction on this point.

Companies submit materials as part of their 10-Ks, and refer to -- and their regular updates, in order to avoid any complaint that public statements by company officials have not been adequately disclosed to the investing public. That doesn't necessarily put an official imprimatur on Mr. Schwartz's blog postings.

We have blog postings, for example, that are -- from Mr. Schwartz, that are April Fools Day postings, descriptions of pranks. And so while some of his blog postings do talk about the company's business, and it was probably advisable, I imagine, for Sun to make this kind of, in an abundance of caution, securities disclosure, that doesn't mean that a blog posting that says "We welcome Android because it will put rockets on Java" represents a formal statement of Sun's position on whether Android is -- passes legal muster.

That kind of confusion about securities law and implications of securities filings and why companies make securities filings is something we can avoid because this this doesn't need to come into evidence to make the point Google is trying to make, which is that Mr. Schwartz was, in a blog posting before Android was actually publicly released, welcomed Android to the Java community.

So, on those grounds, we would object to it coming in. It's prejudicial and gives rise to jury confusion and ancillary issues.

THE COURT: May I see the page? Hand it up to me, please, the 10-K that has the relevant language.

Is this in the appropriate time frame? Meaning the time frame where the blog in question appeared. Mr. Van Nest?

MR. VAN NEST: I'm looking at the dates, Your Honor. This was on Oracle's exhibit list. I'm looking for the date.

Guys, help me out here. Where does the date appear?

MR. BOIES: It's a funny thing. It's on the front page.

(Counsel confer off the record.)

MR. VAN NEST: June 30, 2008, Your Honor. So, yes.

THE COURT: Here is the relevant statement. This is in part 1 of the 10-K, Item 1, Business under General. And then there is a paragraph that says -- that addresses ways in which investors, the investing public, is notified of material events. Quote:

"We periodically webcast company announcements, product launch events and executive presentations which can be viewed via our Investor Relations web site. Additionally, we provide notifications of our material news including SEC filings, investor events, press releases, and CEO blogs as part of the Official Investor Communications

section of our Investor Relations web site."
Closed quote.

So that a reasonable jury could find that that undermines Mr. McNealy's testimony to the effect that Mr. Schwartz's blog, as CEO, was not speaking on behalf of the company. It's up to the jury to make that call, not for the judge. But this is -- this is in the ballpark of a reasonable response to that. So the objection is overruled.

Now, is this a self-authenticating document?

MR. VAN NEST: Yes, Your Honor. It was on their exhibit list. It's an admission by a party. It's signed by Mr. McNealy and Mr. Schwartz, on page 96.

THE COURT: How could it be on their -- how could it be on their exhibit list as a party admission? They're the party. I don't get that part.

But, it was on their list?

MR. VAN NEST: Yes.

THE COURT: What's the exhibit number?

MR. VAN NEST: 971.

THE COURT: All right. 971 is received in evidence. The objections that have been made are overruled. I'm returning this page to Mr. Van Nest.

(Trial Exhibit 971 received in evidence.)

So there you have it. If you look at the trial exhibits [PDF] for this phase of the trial, you find this exhibit:
971 - 6/30/2008 - Sun Microsystems, Inc. Form 10‐K for the year ending June 30, 2008, available at http://www.sec.gov/Archives/edgar/data/709519/000119312508187118 /d10k.htm

Update 2: Speaking of Jonathan Schwartz, here's an op ed piece he did back in 2009, on openness, which Sun highlighted and linked to from its corporate website:

In fact, the Internet's most valuable brands are all free – Amazon, Google, EBay, Skype, Yahoo!, Facebook, Hi5, MySpace, Baidu, etc. Those brands reach more people and have greater affinity than just about any other consumer brands. And in the technology marketplace, Linux, Java, MySQL, Firefox, Apache, Eclipse, NetBeans, OpenOffice.org, OpenSolaris, the same applies – free is a universal price, requires no currency translation, and reaches the longest tail of the market.

That is why we, at Sun, have invested so aggressively in open. Free distribution and access to source code is our investment in the global developer community. We invest with our code, our ideas and time, and we promote and encourage derivatives. We're reaching people we'd otherwise never reach – by earning their attention and engagement. Together, the community of developers builds on our ideas, improves and expands their potential and grows the ecosystem. Open drives innovation, innovation drives preference, preference drives adoption. The largest companies in the world are now seeing the appeal and benefit of living outside closed, proprietary systems.

And now we're turning our focus on bringing these resources to bear -- more than 20 years of innovation and 4,000 developers -- to the Cloud Computing market. We announced just last week that we're building the Sun Cloud, atop open source platforms - from ZFS and Crossbow, to MySQL and Glassfish. By building on open source, we're able to avoid proprietary storage and networking products, alongside proprietary software.

Second, we announced the API's and file formats for Sun's Cloud will all be open, delivered under a Creative Commons License. That means developers can freely stitch our and their cloud services into mass market products, without fear of lock-in or litigation from the emerging proprietary cloud vendors.

I don't suppose you brainiacs know if there is any overlap between these APIs and the ones in this litigation. That'd be interesting, in that he released them not under the GPL but under a Creative Commons license. Of course, it also shows Sun's attitude toward APIs.

Scott McNealy used to talk about openness too, not that you could tell it from his testimony in this trial, but here he is in 2006, in Sun's Executive Boardroom newsletter he wrote at the time, this entry titled, "The Economics of Sharing":

Business models throughout the 20th century were about protectionism. The empires of the era were built on the premise that knowledge, ideas, and processes, "the crown jewels," were always something to be locked in deep dark corners of the enterprise. A whole category of lawyers developed whose sole mission was to construct layer upon layer of protection, insulation, and propriety around those gems.

From time to time, forward thinkers posed the idea that less protection and insulation would be more beneficial — that building communities and sharing intellectual resources could accelerate innovation and growth. That communities could create whole new marketplaces that would create new economic opportunities.

This concept has been slow to take off given the traditional opportunity costs associated with sharing your ideas. How do you connect interested groups, and how will they interact? How do you safely distribute and receive knowledge? How do you derive value from these communities if you're not attaching a price tag to the price of entry? And for those beholden to the Street, when and how much value will sharing create for shareholders? For most, it has simply been easier and more intuitive to go it alone and keep the crown jewels locked up.

While that model may have worked in the Industrial Age and flourished in the Information Age, it will be the kiss of death in the Participation Age.

The Participation Age Is Happening

For years...actually decades...you've heard me tout "The Network is the Computer." That barriers to the global network will drop like flies. That far-flung marketplaces will be compressed into a single, seamless body. That the network will stitch everything and everyone together. And more recently, that we're moving into the Participation Age. Look around you...it's happening.

Several million new users are joining the online world each week. Online business grows exponentially year after year. Just look at the consumer spending part of the economy — ComScore reports that U.S. non-travel spending online during this 2005 holiday season reached $19.6 billion, up 25 percent from the previous year, with total online spending for 2005 hitting $143.2 billion. That's an increase of 22 percent over 2004. Looking ahead, Forrester Research is predicting that annual North American online consumer sales, including auctions and travel, will grow at a 14 percent clip to hit $329 billion in 2010. This is a market that didn't exist 20 years ago and now enables hundreds of billions in transactions. That's the power of the network. That's the Participation Age.

The dawn of the Participation Age has triggered the need to rethink business models. The global network has rendered the practice of business protectionism and the art of hoarding knowledge and innovation as outdated. Moreover, the Participation Age is enabling companies to build communities, harness the power of groups to spur innovation, launch new marketplaces, and drive value with those.

As those of us in the technology industry are finding, the currency of the Participation Age is trust. And trust is built through sharing and authenticity. Analysts such as Frank Gens at IDC contend that the "go it alone" model will fade and that companies should adjust their business practices to mirror the sharing model. As professor Yochai Benkler at Yale University wrote in his recent paper "Sharing Nicely," this structure works because sharing and cooperation benefits all — including the person who shares in the first place.

Consider the way Google and eBay work. As everyone knows, these companies give away — or share — services, yet both are growing and profitable. The reason? They've built communities that trust their services and always come back for more.

Being Competitive in the Participation Age

What can sharing get you? Think beyond simple revenue. Think loyalty, think brand extension, think shared innovations. We're seeing the sharing model take hold in various areas in technology. Open source software is on the rise. Developer communities focused on Java technology, NetBeans, Linux, and other technologies have revolutionized the industry. User collaboration and jointly developed innovations are driving stronger product development, more attractive products, greater demand, rising loyalty... and yes, increased sales and profitability.

Being competitive in the Participation Age requires that companies evolve their cultures and rethink their business models. Easier said than done, but keep three guiding principles in mind:

  • Share: Blend internal assets with those outside the four walls. That means sharing things you value — like intellectual property, best practices, employee time and more. Even your thoughts — think blogs, podcasts and wikis.
  • Build trust and foster communities: Adopt a transparent and shared approach to business. New business opportunities will arise that you, the trusted player, will be in the best position to leverage.
  • Engage and collaborate: Seize opportunities to listen to and interact with the communities you create. Solicit input and recommendations. Respond to requests. Close the gap among your critical audiences, influencers, and decision-makers across your organization and you will be rewarded for your attention.

Shifting your business to leverage the sharing strategy isn't easy and won't happen overnight. Cultural evolution on the fly isn't sustainable, nor is it authentic. That said, the communities you seek to develop will recognize your efforts and help you if you're straightforward with them. Instinctively, they will trust your intentions and respond, guiding your organization through the process. That trust and engagement will spark collaboration, innovation and, in the end, value.

As the economic advantage of sharing becomes clear, I challenge you to look at your company's future a bit differently — share, participate, and profit by building a community!

Scott McNealy
CEO and Chairman
Sun Microsystems, Inc.
chairman@sun.com

Update 3: Well, well, what have we here? Sun CEO Jonathan Schwartz on corporate blogging, being interviewed in April of 2008 by CNET. Here's the CNET blurb:

Sun CEO speaks out on corporate blogging

At the Web 2.0 Expo in San Francisco, Sun CEO Jonathan Schwartz shares his views on the future of business blogging. The chief executive is credited for pioneering the corporate blog as a tool to reach customers, employees, and others, but he predicts the novelty of his methods will soon wear off.

So at the time, the world indeed viewed his blog as a corporate blog, and so did he. He was "credited for pioneering the corporate blog." And he talks about using his blog to communicate with the marketplace, and he mentions that Sun's General Counsel did a Sun blog too. Oracle makes it hard to find it now, but it did happen. I used to link to his blog, Mike Dillon, back when there was litigation between Sun and NetApp. Here's where you can find it now, and notice it too was also hosted on Sun's website.

Mr. Dillon in July 2007 wrote a blog entry, "We're Trying Something Different" -- to which one can only inquire 'who is the "we" here?' -- on the SEC and corporate blogs:

We're trying something different...

Tuesday July 24, 2007

On Monday, July 30th, we will release our fourth quarter and fiscal year 2007 financial results.

The standard process for this type of event is to first prepare a press release that has been reviewed by legal, finance, external auditors and the Audit Committee of the board. The press release is then sent to any number of private agencies (we pay a fee for this) that in turn disseminate the information to their paying subscribers. At about the same time, we then post the information on our external website and file the press release with a Form 8-K on Edgar. About 30 minutes after that, we hold our quarterly call with analysts.

Over the last year, we've had an excellent dialog with Commissioner Cox and the SEC concerning Reg FD. As part of this exchange, we have discussed the idea that the Internet will increasingly become the accepted platform for providing timely information of importance to shareholders and the public. To this end, our investor relations and press relations teams have been revising our Sun investor website to add additional content (such as Jonathan's Blog) that will enable investors to have greater access to information about our business. We have as part of this effort also incorporated RSS feeds so that the public can subscribe to receive information directly from Sun (obviously, at no charge).

So, what's the change? Well, on Monday, we will release our financial information first to the public via our website, RSS feeds and 8-K filing. Then, about 10 minutes later, we will release the information to the traditional private agencies and their paid subscribers.

This change may not seem major, but to be candid, it has some in our company a bit uncomfortable. After all, in the area of securities regulation, being "innovative" is not always considered positively. However, in this situation, our goal is very much aligned with the intent of Reg FD.

If you are interested in subscribing to Sun's RSS investor feed, go here.

I think it's fairly obvious that Sun's General Counsel knew about Sun's corporate blogging, participated himself, and worked with the SEC to get Sun the opportunity to innovate in this way. That link on the word 'dialog' takes you to the letter Chairman Christopher Cox of the SEC at the time sent to Schwartz about his suggestion that the SEC state that certain types of corporate blogs satisfy the non-exclusionary conditions of Regulation FD. Here's the letter from Schwartz to Cox that began the dialogue. And his reply. And here's RegFD, and please note the definition of "(1) an issuer, or person acting on its behalf" in 1b: "1) any senior official of the issuer; or (2) any other officer, employee, or agent of an issuer who regularly communicates with any of the persons described in Rule 100(b)(1)(i), (ii), or (iii), or with the issuer's security holders. By revising the definition in this manner, we provide that the regulation will cover senior management, investor relations professionals, and others who regularly interact with securities market professionals or security holders."

People really shouldn't take the stand and testify to things that can be so readily disproven. The Internet works, you know. And we were all living participants. You have to go back to pre-Internet days to tell fibs. Not that I recommend fibbing anyway, as it puts a strain on one's connection to reality. And that can't be healthy.

By the way, an old blog post by Schwartz on Oracle forking Red Hat reminded me that a number of commenters on Groklaw have pointed out that this means that Oracle began distributing GNUclasspath, APIs and all. And they still are, I'm told, so I asked for something to show me. Here's the screenshot:

I know. Oracle's current version of reality is getting curioser and curioser.

Update 4: Joe Mullin at ars technica has a rundown of the day's testimony, including this:

In a way, Jacobs' grilling of Rubin highlighted how patent law has opened a rift between the legal and engineering professions. By repeatedly asking about whether he had looked out for patents—and getting the same answer, that he hadn't—Jacobs was easily able to make Rubin appear irresponsible, like he wasn't showing the kind of due diligence he should have been.

But (as Jacobs and Oracle engineers surely know) ignoring patents has become routine at technology companies, where executives have grown to believe there's more to be lost than gained when engineers look at patents.

Next, Jacobs questioned Andy McFadden, a Google engineer who has worked on Android since the project's inception in 2005. He asked about whether Android code uses "symbolic references," which is part of the language of the two patents being asserted, 6,061,520 and RE38,104. Other witnesses included Bryan Sutphin, who worked at Oracle as a senior vice president until earlier this year. He mainly made the point that ex-Sun CEO Jonathan Schwartz's blog posts weren't considered official company statements—a point that was countered by Google's lawyers during cross-examination, who pointed out the blog was even mentioned in SEC filings.

And James Niccolai also has coverage:
Michael Jacobs, an attorney for Oracle, tried to get Rubin to contradict himself on the stand. At one point, Rubin said he was unable to recall a specific conversation with Sun because he talked with them about patents "all the time."

Jacobs jumped on the admission. Was Rubin saying he had discussions with Sun "all the time" about Java patents relating to Google's implementation of a Java?

"I think 'all the time' was colorful language by myself; it's hard to talk about patents all the time," Rubin said.

His discussions with Sun about patents were related to Sun's decision to make Java open source, Rubin said later. Google wanted to ensure Sun's plans would not leave handset makers who used the open source code vulnerable to lawsuits from Sun, he said.

Rubin also defended Google's decision not to study Sun's patents for potential infringement. Google knew virtual machines were not new, he said, and in any case there are "hundreds of millions" of patents in the world. "It's just not reasonable to go searching through all this paperwork, especially if you're an engineer. You should be a trained lawyer," Rubin said.

You know what Oracle would go for if Rubin had researched? Treble damages. Jacobs is operating on more than one level here, as lawyers are inclined to do, and in fact have to, and Rubin isn't. In fact, Niccolai says all the questions made Rubin say he felt like his head would explode:
Rubin protested at one point that the questions are about complex legal matters.

"Engineers aren't lawyers," Rubin said at one point. "Some of the questions you asked me today are so complicated my head is about to explode."

I feel for him, for sure. And I don't admire Mr. Jacobs for questions like these. But then I'm old-fashioned. The whole day has me feeling like this: if you can't win with the simple truth, you aren't supposed to win.

Rachel King has good coverage on the fair use oral argument this afternoon, with the jury dismissed for the day, including some indications that the light is beginning to dawn as the judge gets more and more familiar with Java and APIs:

Jacobs rebutted that if he approved Google’s fair use argument, it would be “devastating” to the Java business model. “If Google can do it, so can the next guy,” Jacobs added.

But Alsup continued to demonstrate his understanding of the makeup of the Java packages, remarking that along with names, methods in APIs are not copyrightable because if a developer wants a particular function, there is only one possibility.

“Oracle doesn’t have a monopoly on that,” Alsup continued. “If you want to have a function, that is the only way to write it.”

And so Bloomberg tells us that the judge denied Oracle's motion asking the judge to rule that Google had no fair use defense:
Oracle asked Alsup for a judgment in its favor on fair use after a jury found that Google infringed parts of its Java programming language and deadlocked on whether the copying constituted fair use. Liability rests on whether there was fair use, Alsup said after the jury reached a verdict May 7.

“I don’t think it would be right,” Alsup said at a hearing today in San Francisco. The decision could pave the way for a new trial on the question of whether Google’s infringement makes it liable for as much as $1 billion in damages for using parts of Java to develop Android without paying for a license.

I wonder when the media will notice that the $1 billion figure is now as unlikely as the original $6 billion figure?

And Caleb Garling has a disturbing piece on the testimony of John Mitchell, Oracle's paid expert:

Taking the stand on Wednesday, John Mitchell spent the better part of the afternoon taking questions from Oracle’s lead counsel Mike Jacobs and walking the jury through extensive diagrams and software code in an effort to show that Google has indeed infringed on these two patents. Mitchell also discussed a number of tests he ran on the Android code prior to the trial, saying that these prove infringement.

Although Mitchell is paid by Oracle, the jury has been instructed to view his testimony as fact. Google will cross-examine Mitchell on Thursday, and after Oracle rests its case, it will have the chance to call its own paid expert witness.

I don't think that can be right. If the jury had been told that, it would be grounds for appeal, I would think, on its face. The jury is supposed to weigh all testimony and decide who they believe. That's why they call it the "battle of the experts". So if the jury were told that Dr. Mitchell's testimony must be accepted as truth, that'd be a first. But then, we have seen some odd things in this trial, so I can't say it didn't happen, just that I'd be mighty surprised. But logic alone tells us that it makes no sense. Are they to take Google's expert as telling all truth too? If so, there is a dilemma, in that the two experts contradict one another.

Update 5: We have the trial exhibits entered this day, 2012-05-09:

  • 0005.pdf [Email from Tim Lindholm to Andy Rubin sent 2005-08-05@12:49. Subject Re: Fwd: Java VM for Android. Last mail in a thread discussing possible choices of VM]
  • 0020.pdf [Email from "horowitz" to Leslie Hawthorn; Subject: Nedim; Regarding Google hiring Nedim Fresko from Sun]
  • 0027.pdf [Activity reports from Andy McFadden; Covering period Jan 8, 2007 - Jan 2, 2008]
  • 0258.pdf [Email from Andy McFadden to Jason PArks; android-dalvik@google.com; Subject: [dalvik] Optimized stuff]
  • 0292.pdf [Andy McFadden's input for an annual employment review. Covers the period 1-Jan-2007 to 31-Aug-2007.]
  • 0294.pdf [Top level activity reports in same format as 0027.pdf. Covers period July 18, 2005 - May 5, 2008. On initial inspection this is a superset of 0027.pdf apart from the first 15 lines of 0027.]
  • 0302.pdf [Email from hr-help@google.com to fadden@googl.com; Subject Googlee Perf Confirmation. Confirmation of receipt of Andy McFadden's Employment review information The body appears to be the same or very similar to 0292.pdf]
  • 0955.pdf [Resumé of Andrew McFadden.]
  • 0971.pdf [Sun Microsystems Inc Form 10K. ANNUAL REPORT PURSUANT TO SECTION 13 OR 15(d) OF THE SECURITIES EXCHANGE ACT OF 1934. For the fiscal year ended June 30, 2008]

Update 6: All the trial exhibits are now available as PDFs here. Some are also done as text. Look for the date nearest the day, as they are listed by the date they were entered, which could be a day or so after the date of their use in the courtroom.

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

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

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

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

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

Attorneys for Defendant
GOOGLE INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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

Case No. 3:10-cv-03561 WHA

GOOGLE INC.'S NOTICE OF MOTION,
MOTION, AND MEMORANDUM OF
POINTS AND AUTHORITIES IN
SUPPORT OF ITS MOTION FOR A NEW
TRIAL ON ORACLE'S CLAIM THAT
GOOGLE IS LIABLE FOR
INFRINGEMENT OF ORACLE'S
COPYRIGHT ON THE STRUCTURE,
SEQUENCE AND ORGANIZATION OF
THE COMPILABLE CODE FOR THE 37
JAVA API PACKAGES

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

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NOTICE OF MOTION AND MOTION

PLEASE TAKE NOTICE that pursuant to Fed. R. Civ. P. 591 Defendant Google Inc. ("Google") will, and hereby does, respectfully move for a new trial on Oracle's claim that Google is liable for infringement of Oracle's copyright on the structure, sequence and organization of the compilable code for the 37 Java API packages. This Motion is based on the attached memorandum of points and authorities as well as the entire record in this matter.

Dated: May 8, 2012

KEKER & VAN NEST LLP

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

Attorneys for Defendant
GOOGLE INC.

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MEMORANDUM OF POINTS AND AUTHORITIES

I. INTRODUCTION

Question 1 of the Special Verdict Form provided to the jury in this case included two sub- questions regarding Google's alleged liability for copyright infringement based on the structure, sequence and organization of the compilable code in the 37 Java API packages. First, the jury was asked in question 1A: "Has Oracle proven that Google has infringed the overall structure, sequence and organization of copyrighted works?" Second, the jury was asked in question 1B: "Has Google proven that its use of the overall structure, sequence and organization constituted 'fair use'?" Dkt. No. 1089. Although the jury concluded that Oracle had proven that Google infringed the overall structure, sequence and organization of the copyrighted works, the jury did not reach a unanimous verdict as to whether Google had proven the affirmative defense of fair use. Under settled Supreme Court and Ninth Circuit law, the jury's failure to reach a verdict concerning both halves of this indivisible question requires a new trial concerning both questions. To accept the infringement verdict as binding on the parties and retry only fair use would violate both the unanimity requirement and the Reexamination Clause of the Seventh Amendment.

II. ARGUMENT

The Seventh Amendment requires that, for suits at common law, "the right of trial by jury shall be preserved, and no fact tried by a jury, shall be otherwise re-examined in any Court of the United States, than according to the rules of the common law." U.S. Const. Amend VII. Thus under the Seventh Amendment's Reexamination Clause, a court cannot hold a partial retrial unless the issue to be retried is sufficiently "distinct and separable" from the issues decided by the first jury. Gasoline Products Co. v. Champlin Refining Co., 283 U.S. 494, 500 (1931). Furthermore, the Seventh Amendment requires that jury verdicts in federal court be unanimous. Murray v. Laborers Union Local No. 324, 55 F.3d 1445, 1451 (9th Cir. 1995) ("The Seventh Amendment requires jury verdicts in federal civil cases to be unanimous."); see also Fed. R. Civ. P. 48(b) ("Unless the parties stipulate otherwise, the verdict must be unanimous."). Although this does not mean that the jury must agree to every factual issue that underlies a verdict, it does mean

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that civil juries must be unanimous on all the "ultimate issues of a given case," as well as the "final verdict itself." Jazzabi v. Allstate Insurance Co., 278 F.3d 979, 985 (9th Cir. 2002).

Based on these principles, and consistent with Supreme Court and Ninth and Federal Circuit law, the Court should declare a mistrial on both the infringement and fair use questions relating to Google's alleged liability for copyright infringement based on the structure, sequence, and organization of the compilable code for the 37 Java API packages. Declaring a mistrial only as to the fair use question would violate the Seventh Amendment — both by threatening Google with a non-unanimous verdict on liability, and by having determination of the same factual question, or indivisible factual questions, made by two different juries.

A. The Seventh Amendment's unanimity requirement mandates a new trial for
both infringement and fair use.

Twice in recent years, in Jazzabi and United States v. Southwell, 432 F.3d 1050 (9th Cir. 2005), the Ninth Circuit has clearly held that a defendant has a right to a unanimous verdict on liability. Where liability depends on both acceptance of all elements of a plaintiff's claim and rejection of a defendant's affirmative defense, the jury must decide unanimously both that plaintiff has proven all claim elements and that defendant has failed to make out its affirmative defense. Jazzabi, 278 F.3d at 984. In other words, a hung jury on an affirmative defense is necessarily a hung jury on that entire liability claim because if the claim elements are submitted to a different jury than the affirmative defense, no jury has unanimously decided liability. Under the holdings of these cases, a new trial is necessary on both infringement and fair use.

In Jazzabi, the plaintiff's house burned down, after which his insurer, Allstate, rejected his fire insurance claim. Allstate admitted it had not paid out on the policy, but raised the affirmative defense that Jazzabi had burned down his own house. Jazzabi, 278 F.3d at 980-81. After the jury began deliberations, it asked the court whether it could find Allstate liable even if it did not unanimously reject Allstate's affirmative defense that Jazzabi started the fire. Id. at 981. The court instructed the jury that it should find Allstate liable so long as it did not unanimously agree with Allstate's affirmative defense — in other words, even if the jury did not unanimously reject that defense. Id.

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The Ninth Circuit reversed, holding that a defendant cannot be held liable until the jury both unanimously accepts plaintiff's proof on the claim elements and unanimously rejects the defendant's proof on its affirmative defense. Id. 985. The court held that "elements and affirmative defenses are co-equal components of the jury's liability determination: Liability cannot be established until after the jurors unanimously agree that the elements are satisfied and they unanimously reject the affirmative defenses." Id. at 984 (emphasis in original). Moreover, this result was not just good practice, it was required by the Seventh Amendment's unanimity requirement. The court noted that "civil juries must 'render unanimous verdicts on the ultimate issues of a given case'" as well as the "final verdict itself." Id. at 985 (quoting McKoy v. North Carolina, 494 U.S. 433, 449 (1990) (Blackmun, J., concurring)). To allow a jury split on an affirmative defense to impose liability "defeats the intent and rationale underlying the mandate that jury verdicts be unanimous, because liability might attach even though the jury had not unanimously agreed that a basis for liability exists." Id. (emphasis added). The Ninth Circuit held that the Seventh Amendment's unanimity requirement was implicated and barred a partial verdict even though the elements of Jazzabi's claim for breach of contract and Allstate's defense that Jazzabi had committed arson were factually independent of one another.

When it revisited the issue in Southwell, the Ninth Circuit was even clearer in extending Jazzabi to the criminal context. Southwell was charged with arson and pled the affirmative defense of insanity. Relying on Jazzabi, the Ninth Circuit concluded that in order to convict Southwell, the jury had to unanimously conclude both that Southwell was guilty of the crime, and that he was not insane. "Since a jury verdict must be unanimous, a jury united as to guilt but divided as to an affirmative defense (such as insanity) is necessarily a hung jury." 432 F.3d at 1055 (emphasis added). Again, the Ninth Circuit so held even though the elements of the crime of arson and the affirmative defense of insanity do not overlap.

Under Jazzabi and Southwell, Google has a Seventh Amendment right to be found liable only if a jury unanimously concludes both that Google's conduct was infringing, and that it was not fair use. Conducting a second trial concerning only fair use would deprive Google of that right. This jury did not unanimously reject Google's fair use defense. And, if a subsequent jury

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were given only the question of fair use, there would be no way to know whether that jury would unanimously conclude that Google's conduct was infringing, because the second jury would never have had to consider that question. Thus no jury would have "unanimously agreed that a basis for liability exists" because no jury would have "unanimously agree[d] that the elements are satisfied and . . . unanimously reject[ed] the affirmative defenses." Jazzabi, 278 F.3d at 984-85. The Court must therefore hold a new trial as to both infringement and fair use.

B. The Seventh Amendment's Re-Examination Clause mandates a new trial for infringement and fair use.

Under the Seventh Amendment's Re-Examination Clause, a partial retrial "may not properly be resorted to unless it clearly appears that the issue to be retried is so distinct and separable from the others that a trial of it alone may be had without injustice." Gasoline Products Co. v. Champlin Refining Co., 283 U.S. 494, 500 (1931); see also Moore's Federal Practice — Civil § 59.14 ("A specific issue may be retried when it clearly appears that (1) the issue is sufficiently distinct and separable from the others and (2) the trial of that issue alone may be held without injustice."). Here, accepting a partial verdict on infringement alone would be error for a separate reason not present in Jazzabi or Southwell — because the issues of infringement and fair use are sufficiently factually intertwined that a retrial of fair use cannot be had without also retrying infringement.

The clearest factual overlap with respect to the claim at issue here is between infringement and the third factor of the fair use analysis. In determining infringement, the jury must determine whether there are "substantial similarities" between the copyrighted work and the accused work. Final Charge to the Jury, Dkt. 1018 at 11-12. The third fair use factor asks the jury to determine an obviously similar question: the "amount and substantiality of the portion [of the copyrighted work] used in relation to the copyrighted work as a whole." Id. at 13. The jury's determination of whether there are "substantial similarities" between the copyrighted work and the accused work necessarily overlaps with the jury's determination as to the "amount and substantiality" of the portion of the copyrighted work used in the accused work in relation to the copyrighted work as a whole. Thus if one jury is asked to decide infringement and a second jury is asked to decide

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fair use, that second jury's fair use analysis would require it to re-examine the factual determinations made as part of the first jury's infringement analysis. This violates the Seventh Amendment. See Allison v. Citgo Petroleum Corp., 151 F.3d 402, 423 n.21 (5th Cir. 1998).

The Federal Circuit reached a similar conclusion in the patent context in Witco Chemical Corp. v. Peachtree Doors, Inc., 787 F.2d 1545 (Fed. Cir. 1986). In Witco, the defendants made non-infringement, invalidity, and unenforceability arguments regarding the allegedly-infringed patents. Id. at 1547. The jury found the patents valid and enforceable, but could not reach a unanimous verdict with regard to infringement. Id. The district court excused the jury for an indefinite period. Three weeks later defendants moved for a mistrial based on the hung jury. The district court recalled the same jury and gave them additional instructions, at which point they quickly found infringement. Id. The Federal Circuit reversed the infringement verdict based on coercion. Id. at 1548.

The Federal Circuit then had to decide whether to remand just the infringement verdict for retrial, or to remand the entire case. Relying on Gasoline Products, the court concluded that "it is inappropriate, in light of the evidence presented and arguments made at this trial, to have one jury return a verdict on the validity, enforceability and contract questions while leaving the infringement questions to a second jury." Id. at 1549. The court reasoned that "the arguments against infringement are indistinguishably woven with the factual underpinnings of the validity and enforceability determinations and the subject matter of the contract." Id. The court therefore vacated the entire judgment and remanded for a new trial. Id.

Other courts have similarly concluded that when two claims depend on common factual determinations, they must be tried together. In Kuehne & Nagel v. Geosource, 874 F.2d 283 (5th Cir. 1989), the court ordered a retrial on all claims even though it only reversed on one specific issue. It concluded that the "overlapping nature of the evidence in SGS' breach of contract claim against Geosource and Geosource's tortious interference claim against SGS makes us wary of retrying only Geosource's breach of contract and fraudulent inducement claims." Id. at 295. Retrial of all claims was necessary because "the new jury should be given the opportunity to view the dispute comprehensively." Id. (internal quotation marks and alterations omitted). In Matter

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of Rhone-Poulenc Rorer, Inc., 51 F.3d 1293 (7th Cir. 1995), the Seventh Circuit struck down a district court's plan to have one jury decide the issue of negligence and then have a subsequent jury decide the issues of comparative negligence and proximate causation because "[b]oth issues overlap the issue of the defendants' negligence." Id. at 1303.

Because the "factual underpinnings" of infringement and fair use are "indistinguishably woven" together, the Court must hold a retrial as to both infringement and fair use. Witco, 787 F.2d at 1549.

III. CONCLUSION

Holding a retrial solely on Google's fair use defense (question 1B) without also retrying Oracle's claim for infringement (question 1A) would violate Google's Seventh Amendment rights under both the unanimity requirement and the Reexamination Clause. Google therefore requests that the Court declare a mistrial, and order a new trial, as to both infringement and fair use as to Oracle's claim that Google is liable for infringement of its copyright on the structure, sequence, and organization of the 37 API packages.

Dated: May 8, 2012

KEKER & VAN NEST LLP

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

Attorneys for Defendant
GOOGLE INC.

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1 Google files this Rule 59 motion, directed to the issue of the effect of the jury's inability to reach a unanimous decision on question 1B, pursuant to the court's direction. RT 2890:1-6. Google reserves the right to file a further Rule 59 motion within the time allowed by the Rule on all grounds supported by the record.


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