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Oracle v. Google - Day 13 Filings ~mw
Thursday, May 10 2012 @ 10:30 AM EDT

The patent phase of the trial has now moved far enough along that the Court has presented its first draft of the charge to the jury (1108 [PDF; Text]) and special verdict form. (Special Verdict Form [PDF; Text]) The special verdict form, itself, is far more straightforward than the one for the copyright phase, i.e., each claim of each patent is to be assessed only as to whether it is infringed.

On the other hand, the instructions to the jury, while clear, do not anticipate the difficulty this jury (or any jury in a patent infringement case, for that matter) will have in determining whether every requirement of a claim has been satisfied by the allegedly infringing product or process. These "requirements" (or claim elements) are highly technical and will often turn on a subtle distinction in a definition of a term within a claim or description of the components of the allegedly infringing product. That is why any patent infringement trial is a roll of the dice for both parties.

Oracle has provided the Court with detailed revisions to the Court's proposed description of the structure and actions of Java. (1110 [PDF; Text]) Google, in turn, has only provided editorial corrections to the Court's description. (1111 [PDF; Text]) Google advises that it will review and comment on Oracle's proposed changes.

Finally, Oracle has filed a motion in limine to bar Mr. Wong and Mr. Poore from testifying as to certain documents that Oracle believes are irrelevant to the patent phase of the trial. (1112 [PDF; Text])

Google responds that the Oracle preemptive motion is intended to block legitimate lines of questioning. (1113 [PDF; Text]) Google suggests that, should Oracle object to the introduction of any specific exhibit, they can do so at the time it is introduced. Google also asserts this line of questioning is in direct response to evidence and argument that Oracle has already made:

Despite Oracle’s claims based on its spin on some of the documents Google has disclosed for use with these witnesses, Google will continue to focus its examinations on the lack of technical merit in Oracle’s patent case. In particular, Google will seek testimony in the form of admissions on technical issues by the Oracle witnesses in addition to any other relevant knowledge. For its part, Oracle led off its patent case with examinations of Google employees on the issue of awareness of Sun patents and investigations that Oracle apparently contends should have been performed (though Oracle has cited no precedent suggesting that such investigations are a legal requirement). That door is now wide open, and Google must be permitted to address issues that have opened with it.
As with the Google motions in limine of the past few days, don't expect the Court to grant this one.


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

Docket

05/09/2012 - 1108 - COURTS PROPOSED CHARGE TO THE JURY. Signed by Judge Alsup on May 9, 2012. (Attachments: # 1 Special Verdict Form)(whalc1, COURT STAFF) (Filed on 5/9/2012) (Entered: 05/09/2012)

05/09/2012 - 1109 - ORDER RE CHARGING CONFERENCE re 1108 Order. Signed by Judge Alsup on May 9, 2012. (whalc1, COURT STAFF) (Filed on 5/9/2012) (Entered: 05/09/2012)

05/09/2012 - 1110 - Statement Oracle's markup of the Court's Background Section by Oracle America, Inc.. (Jacobs, Michael) (Filed on 5/9/2012) (Entered: 05/09/2012)

05/09/2012 - 1111 - Statement Google Comments on the Court's Description of Java Language Principles by Google Inc. (Baber, Bruce) (Filed on 5/9/2012)

05/09/2012 - 1112 - MOTION in Limine ORACLES MOTION IN LIMINE REGARDING HINKMOND WONG AND NOEL POORE filed by Oracle America, Inc.. Motion Hearing set for 5/10/2012 07:30 AM before Hon. William Alsup. Responses due by 5/9/2012. (Norton, William) (Filed on 5/9/2012)

05/09/2012 - 1113 - RESPONSE (re 1112 MOTION in Limine ORACLES MOTION IN LIMINE REGARDING HINKMOND WONG AND NOEL POORE ) filed byGoogle Inc.. (Van Nest, Robert) (Filed on 5/9/2012) (Entered: 05/09/2012)


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

Documents

1108

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

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

No. C 10-03561 WHA

COURT’S PROPOSED CHARGE TO THE JURY
[AND SPECIAL VERDICT FORM]

Appended hereto are copies of the draft charge to the jury and special verdict form given to both sides on May 9, 2012, for discussion with the Court at charging conferences on Thursday, May 10 at 1:30 P.M. AND 3:30 P.M. Although counsel have filed numerous waves of overlapping and even contradictory proposed instructions in the past, the proposed charge is based on the way the trial has actually developed, taking into account issues that have emerged and receded and concessions by counsel. Subject to the upcoming charging conference, the Court believes the proposed charge adequately and fairly covers all issues actually still in play. Therefore, in order to give the district judge a fair opportunity to correct any error as matters now stand, counsel must, at the charging conference, bring to the judge’s attention any addition, subtraction or modification or other objections or proposal for the jury instructions. Otherwise, all such points shall be deemed waived and it will not be sufficient merely to argue after the verdict that a proposed instruction filed earlier in the proceedings somehow fell by the wayside.


Rather, any such proposal that counsel still cares about must be raised anew at the charging conference. The charging conference shall be conducted so as to give full and fair opportunity for counsel to raise any and all objections and proposals.

2


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

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

No. C 10-03561 WHA

[DRAFT]
FINAL CHARGE TO THE JURY
AND SPECIAL VERDICT FORM

3


1.

Members of the jury, it is now my duty to instruct you on the law that applies to this case. A copy of these instructions will be available in the jury room for you to consult as necessary.

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

2.

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

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

2. The exhibits received into evidence; and

3. Any stipulated facts and pretrial discovery items read into evidence, such as the responses to the requests for admissions.

3.

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

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

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

4


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

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

4.

Evidence may be direct or circumstantial. You should consider both kinds of evidence. The law makes no distinction between the weight to be given to either direct or circumstantial evidence. It is for you to decide how much weight to give to any evidence.

5.

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

Certain charts and summaries have been shown to you in order to help explain the facts disclosed by the books, records, and other documents which are in evidence in the case. They are not themselves evidence or proof of any facts. If they do not correctly reflect the facts or figures shown by the evidence in the case, you should disregard these charts and summaries and determine the facts from the underlying evidence.

6.

Now I will address the burden of proof. In this case, the preponderance of the evidence standard applies on all sides, so whoever has the burden of proof on an issue must carry that issue by a preponderance of the evidence. When a party has the burden of proof on any issue by a preponderance of the evidence, it means you must be persuaded by the evidence that the allegation is more probably true than not true. To put it differently, if you were to put the evidence favoring a plaintiff and the evidence favoring a defendant on opposite sides of a scale, the party with the burden of proof on the issue would have to make the scale tip somewhat

5


toward its side. If the party fails to meet this burden, then the party with the burden of proof loses on the issue. Preponderance of the evidence basically means “more likely than not.”

7.

On any issue, if you find that plaintiff carried ITS burden of proof as to each element of a particular issue, your verdict should be for plaintiff on that issue. If you find that plaintiff did not carry ITS burden of proof as to each element, you must find against plaintiff on that issue.

8.

I now will turn to the law that applies to this case. As you know, in this lawsuit Oracle seeks relief from Google for allegedly infringing of claims 11, 27, 29, 39, 40, and 41 of United States Patent Number RE38,104 (“Method And Apparatus For Resolving Data References In Generated Code”); and claims 1, 8, 12, and 20 of United States Patent Number 6,061,520 (“Method and System for Performing Static Initialization”). I will refer to these claims as the “asserted claims.” The products that allegedly infringe the asserted patents are certain Android mobile devices and software and the Android Software Development Kit (“SDK”). The Android SDK is a set of development tools that a programmer can use to develop applications for Android. The Android SDK includes a set of libraries, documentation, an emulator for emulating an Android device on a computer, a debugger, and a sample set of code. Oracle claims that Google itself infringes and is also legally responsible for the infringement of Oracle’s patents by others. Google denies that it infringes and further denies that it is legally responsible for the infringement by others. Your job is to decide the issues of infringement.

9.

As you know, the patent claims are the numbered paragraphs at the end of the patent. The claims are important because they specifically define the exclusive rights granted by the patent office. The figures and the specification in the rest of the patent provide a description and/or examples of the invention and provide a context for the claims but the claims define how broad or narrow the patent holder’s rights are. It is often the case that a patent specification and its figures disclose more than the specific matter claimed as inventions, so it is important to keep straight what the specification says versus what the claims say.

6


10.

In a patent, an independent claim is one that is a stand-alone claim and does not incorporate any other claim. A dependent claim is one that depends on an earlier claim by incorporating it by reference and then adding one or more additional elements. Such incorporation imports the entirety of the incorporated claim, including all of its elements, into the dependent claims. For the ’104 patent, all asserted claims are independent claims. For the ’520 patent, claims 1 and 12 are independent claims. Claims 8 and 20 are dependent claims. Claim 8 incorporates independent claim 6. Claim 20 incorporates independent claim 18. Thus, claims 6 and 18 are incorporated into the asserted claims even though claims 6 and 18 by themselves are not asserted.

I now want to explain how this affects the logic of the issues before you. If claim 6 is not infringed, then by default claim 8 cannot be infringed. In other words, if a claim 6 element is missing from the accused method, then it also is missing, by definition, as to claim 8. If claim 6 is infringed, however, claim 8 may or may not also be infringed. This is because claim 8 adds an extra limitation.

11.

I am now going to instruct you on the meaning of some of the words and phrases in the claims of the ’104 patent. You must accept and use these meanings in your deliberations.

Intermediate form code and intermediate form object code: Both “intermediate form code” and “intermediate form object code” mean “executable code that is generated by compiling source code and is independent of any computer instruction set.”

Symbolic reference: The term “symbolic reference” means “a reference that identifies data by a name other than the numeric memory location of the data, and that is resolved dynamically rather than statically.”

Resolve and Resolving: The term “resolving” a symbolic reference means “at least determining the numerical memory-location reference that corresponds to the symbolic reference.”

7


You must accept these definitions as established for purposes of your deliberations and verdict. You may, however, consider all of the evidence in the case as to whether or not the accused product or method meets these definitions. If a witness has based his view on meanings of the terms contrary to my stated definitions, you should discount that part of his testimony accordingly.

12.

Oracle has the burden of proof on infringement. Oracle must persuade you that it is more likely than not that Google has directly infringed, induced or contributed to the infringement of the asserted claims.

13.

A patent’s claims define what is covered by the patent. A product or method directly infringes a patent if it is covered by at least one claim of the patent.

14.

Oracle accuses Google of direct infringement. Deciding whether a claim has been directly infringed is a two-step process. The first step is to decide the meaning of the patent claim. I have already instructed you as to the meaning of some of the terms in the asserted patent claims. The second step is to decide whether Google has made, used, sold, or offered for sale within the United States a product or method covered by a claim of the asserted patents. If it has, it directly infringes. You, the jury, make this decision.

You must consider each of the asserted claims of the patent individually, and decide whether Google directly infringes that claim.

To decide whether an accused products and methods directly infringe a claim of the asserted patent, you must compare that the accused product or method with that particular patent claim and determine whether every requirement of any particular claim is included in the accused product or method. If so, then the maker, user, and seller of the product or method directly infringe that claim. If, however, the accused product or method does not meet every requirement in the particular asserted claim, then the maker, user, and seller do not directly

8


infringe that claim. You must decide infringement for each asserted claim separately. Oracle must prove infringement of the claim by a preponderance of the evidence.

15.

If all elements of an asserted claim have been proven, it is not a defense to infringement that the accused product or method includes an additional element not called out in the patent claim. For infringement to be proven, the element must be present as per the claim language. For example, if a patented method claim calls out three steps to paint a wall, it would be infringed by a method including the same three steps in the claim and it would be no defense that a fourth step is also done.

16.

To prove direct infringement, it is not necessary to prove that any infringement was intentional or willful. Innocent direct infringement would still be infringement. The fact, if true, that the accused product or method was independently developed without any copying of the patent owner’s product or method is not a defense. All that matters for purposes of direct infringement is whether all limitations of the claim reside in the accused product or method.

If Google’s product or method does not itself include every element in the patent claim, Google cannot be liable for direct infringement merely because other parties later supplied the missing elements, unless Google directed or controlled the acts by those parties.

17.

To assist you on the infringement issue, counsel gave you a handout that identified the limitations in dispute and underlined in red the elements disputed. Oracle contends that the accused products and methods satisfies all the limitations of the asserted claims.

18.

Induced infringement and contributory infringement are two different types of indirect infringement. A patented product or method is indirectly infringed by a party who either induces another party directly infringe. Only if one party directly infringes can another party be found to indirectly infringe. That is, indirect infringement by one party must be based on direct infringement by another party.

9


19.

In this case, Google is accused of indirect infringement based on alleged direct infringement by mobile device manufacturers, mobile service providers, developers, and end-users of Android. There are no mobile device manufacturers, mobile service providers, developers, and end-users of Android named as defendants in this case. Yet, you must decide whether the mobile device manufacturers, mobile service providers, developers, and end-users of Android directly infringe the asserted claims. I have already instructed you about the test for direct infringement. This question of direct infringement is a prerequisite to the question whether Google indirectly infringes the asserted claims.

20.

Oracle alleges that Google has contributed to and actively induced infringement of the asserted patents by others. Specifically, Oracle alleges the following:

  • Google contributed to and actively induced infringement of the ’104 patent by device manufacturers, mobile service providers, developers, and end-users.
  • Google contributed to and actively induced infringement of the ’520 patent by device manufacturers and developers.

21.

For Oracle to carry its burden of proof on induced infringement, it must show that Google actively induced another to directly infringe the asserted claims. Specifically, Oracle must show the following three elements: (1) that Google intentionally took action that actually induced direct infringement by another; (2) that Google knew of the asserted patent; and (3) that Google knew its action would cause direct infringement by another.

If you find that there has been no direct infringement by another, then there was no infringement in the first place and no need for you to address the question of induced infringement.

22.

For Oracle to carry its burden of proof on contributory infringement, it must show the following four elements: (1) that the asserted claims were directly infringed by another; (2) that

10


Google supplied an important component of the infringing product or method; (3) that the component had no substantial non-infringing use; and (4) that Google supplied the component with knowledge of the asserted patents and knowledge that the component was especially made or adapted for use in an infringing manner.

If you find that there has been no direct infringement by another, of course, then there was no infringement in the first place and no need for you to address the question of contributory infringement.

23.

For both induced and contributory infringement, the knowledge requirement can be satisfied by showing that Google had actual knowledge or that Google was willfully blind. In order to show that Google willfully blinded itself to a fact, Oracle must show that:

1. Google subjectively believed that there was a high probability that a fact exists; and

2. Google took deliberate actions to avoid learning of that fact.

24.

I will again give you a special verdict form to guide your deliberations. Although the special verdict form analyzes the questions in numerical order, you may consider the questions out of sequence so long as your answers conform to the directions on the form concerning which questions you must ultimately answer and which are only conditional depending on your other answers.

25

When you retire to the jury room to deliberate, you will soon receive the following things:

1. All of the exhibits received into evidence;

2. An index of the exhibits;

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

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

5. An official verdict form.

11


Remember that none of these items are evidence except the exhibits.

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

26.

In your deliberations it is usually premature to take a straw vote early on. This is due to the risk of jury members expressing a premature opinion and then, out of pride, digging in their heels. Rather it is usually better to discuss the evidence, pro and con, on the various issues before proceeding to take even a straw vote. In this way, all the viewpoints will be on the table before anyone expresses a vote. These are merely recommendations, however, and it is entirely up to you to decide on how you wish to deliberate.

27.

A United States Marshal will be outside the jury-room door during your deliberations. If it becomes necessary during your deliberations to communicate with me, you may send a note through the Marshal, signed by your foreperson or by one or more members of the jury. No member of the jury should ever attempt to communicate with me except by a signed writing, via the Marshal, and I will respond to the jury concerning the case only in writing or here in open court. If you send out a question, I will consult with the lawyers before answering it, which may take some time. You may continue your deliberations while waiting for the answer to any question. Remember that you are not to tell anyone — including me — how the jury stands, numerically or otherwise, until after you have reached a unanimous verdict or have been discharged. Do not disclose any vote count in any note to the Court.

28.

You have been required to be here each day from 7:45 A.M. to 1:00 P.M. Now that you are going to begin your deliberations, however, you are free to modify this schedule within reason. For example, if you wish to continue deliberating in the afternoons after a reasonable lunch break, that is fine. The Court does, however, recommend that you continue to start your

12


deliberations by 8:00 A.M. If you do not reach a verdict by the end of today, then you will resume your deliberations tomorrow [CHECK] and thereafter.

It is very important that you let us know via note what hours you will be deliberating so that we may conform our schedule to yours.

29.

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

30.

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

Dated: [ONLY SIGN AND DATE AFTER INSTRUCTION READ TO THE JURY]

______________________________
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

13



Special Verdict Form

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

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

No. C 10-03561 WHA

SPECIAL VERDICT FORM

YOUR ANSWERS MUST BE UNANIMOUS.

Direct Infringement

1. Has Oracle proven by a preponderance of the evidence that Google directly infringes claims 11, 27, 29, 39, 40, and 41 of United States Patent Number RE38,104?

Yes
(Infringing)
No
(Not Proven)
CLAIM 11:________________
CLAIM 27:________________
CLAIM 29:________________
CLAIM 39:________________
CLAIM 40:________________
CLAIM 41:________________


2. Has Oracle proven by a preponderance of the evidence that Google directly infringes claims 1, 8, 12, and 20 of United States Patent Number 6,061,520?

Yes
(Infringing)
No
(Not Proven)
CLAIM 1:________________
CLAIM 8:________________
CLAIM 12:________________
CLAIM 20:________________

Indirect Infringement

3. Has Oracle proven by a preponderance of the evidence that Google has induced or contributed to any infringement of claims 11, 27, 29, 39, 40, and 41 of United States Patent Number RE38,104? (Answer this question only as to the claim(s) for which you found “yes” in Question No. 1)

Yes
(Infringing)
No
(Not Proven)
CLAIM 11:________________
CLAIM 27:________________
CLAIM 29:________________
CLAIM 39:________________
CLAIM 40:________________
CLAIM 41:________________

2

4. Has Oracle proven by a preponderance of the evidence that Google has induced or contributed to any infringement of claims 1, 8, 12, and 20 of United States Patent Number 6,061,520? (Answer this question only as to the claim(s) for which you found “yes” in Question No. 2)

Yes
(Infringing)
No
(Not Proven)
CLAIM 1:________________
CLAIM 8:________________
CLAIM 12:________________
CLAIM 20:________________

Dated: May ___, 2012.

________________________________
FOREPERSON

3



1109

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

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

No. C 10-03561 WHA

ORDER RE CHARGING
CONFERENCE

The judge forgot that he needs to be somewhere on Friday afternoon and that the Court day will be cut slightly short on Friday, and therefore the charging conference will have to be on Thursday as per the accompanying drafting instructions.

IT IS SO ORDERED.

Dated: May 9, 2012.

/s/William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE



1110

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 MARKUP OF COURT’S
BACKGROUND SECTION

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


Oracle respectfully submits this markup of the Court’s proposed background section, after having consulted with its technical staff. Two versions are attached for the Court’s convenience: both redline and clear text.

The Court asked about the difference between statements and expressions. This short description explains the difference between the two:



An expression is a (typically) small piece of program text that instructs the computer to calculate a single value (e.g., 1 + 3, 2 * pi * r, Math.max(a, b)). A statement can be just an expression, or it can be a control structure that contains one or more expressions or other statements. For example, an “if” statement expresses a conditional action:

if (x > y)

System.out.println("greater");
This statement includes an expression (x > y) and another statement (System.out.println("greater")). It instructs the computer to compare the two variables x and y and then print the word “greater” if x is indeed greater than y. Statements are run in the sequence written. Statements are what tell the computer to do work.

1


[Ed. Note: We have altered the red-line coloring of the original document to make it more consistent. In the original document some insertions were in blue and some in red for no apparent reason. Likewise, in the original document some strike-throughs were in red and some in blue. To be consistent we have changed the colors used so that all insertions are in blue and underlined and all strike-throughs are in red and bracketed by [Strike][/Strike]. We hope these alterations improve the readability of the document.]


Java syntax includes separators (e.g., {, },;), operators (e.g., +, -, *, /, ), literal values (e.g., 123, ‘x’, “Foo”), and keywords (e.g., if, then, else, while, return). These carry precise predefined meanings. Java syntax also includes identifiers (e.g., x, String, java.lang.Object), which are used by developers to name specific values, fields, methods, and classes as described below. These are used to form statements, each statement being a single [strike]command executed by the Java interpreter[/strike]directive to take some action. Statements are run in the sequence written. Statements are what tell the computer to do work.

A declaration [strike]is a type of statement. It[/strike] instructs the computer to recognize a name as a variable or as a method or as a class and to reserve memory accordingly. The word “declare” is not used to precede a declaration. A declaration is a line (or more) of code that, for example, declares the variable pi to be 3.141592 or declares a class or method[strike] in its fully qualified form[/strike].

[strike]The next higher level of syntax is the method.[/strike] A method is a type of declaration. A method is a sequence of statements. Once defined, it can be invoked or “called” on” elsewhere in the program. A method is like a subroutine. When a method is called upon, arguments are usually passed over to the method. These are the inputs. The output[strike](s)[/strike] from the method are known as the return value[strike]s(s)[/strike]. An example is a method that receives two numbers as inputs and returns the greater of the two as the output. Another example is a method that receives an angle expressed in degrees and returns the cosine of that angle. Methods can be much more complicated. A method, for example, could receive the month and day and return the Earth’s declination to the sun for that month and day.

A method declaration consists of the method header and the method body. (At the trial, however, witnesses sometimes referred to the method header as the method declaration or the method signature, even though that was not technically correct, and so the Court will use the three synonymously to match the evidence [Strike]signature of the method (discussed below) as the declaration[/Strike].) A method declaration defines the entire routine to be followed when the method is called. A method call is a line of other code somewhere else in the program that calls up (or invokes) the method and specifies the arguments to be passed to the method for crunching. The return is returned for use as the program marches on after the method call.

2


A method [Strike]header, also called a method[/Strike] signature[Strike],[/Strike] consists of the name of the method and the number and types of formal parameters to the method, if any. More specifically, [Strike]the[/Strike] a method [Strike]signature[/Strike] header will contain the name of the method; the number, order, type and name of the parameters used by the method; the type of value returned by the method; the checked exceptions that the method can throw; and various method modifiers that provide additional information about the method.

A method body is a block of code that implements the method. If a method is declared to have a return type, then the method body must have a return statement and the statement must [Strike]be followed by[/Strike] include the expression to be returned when that line of code is reached. During trial, many witnesses referred to the method body as the “implementation.” It is the method body that does the heavy lifting, namely the actual work of taking the inputs, crunching them, and returning an answer. (This part was not copied from Java by Google.)

A class is another type of declaration [Strike]After a method, the next higher level of syntax is the class[/Strike]. A class [Strike]defines[/Strike] may include a collection of fields that hold data values and methods that operate on those values. Classes are a fundamental structural element in the Java programming language. All Java programs are written as [Strike]a[/Strike]one or more classes. [Strike]All[/Strike] Java statements appear within methods and all methods are implemented within classes. To write a Java program, it must be placed in a class.

A class [Strike]definition[/Strike] declaration includes the name of the class and other modifiers [Strike]functional important[/Strike] information that define the class. The body of the class includes fields and methods, constructors and initializers. Classes can have subclasses that inherit the functionality of the class itself while adding [Strike]specialized[/Strike] functionality for the subclass. When a new subclass is defined, the [Strike]definition[/Strike] declaration uses the word “extends” to alert the [Strike]computer[/Strike] compiler that the fields and methods of the [Strike]patent[/Strike] parent class are inherited [Strike]extended[/Strike] automatically into the new subclass so that only the additional fields or methods [Strike]new and specialized codes[/Strike] for the subclass need be [Strike]stated[/Strike]declared.

An interface is a special type of class, which is used to relate similar classes more flexibly than allowed by the strict subclass/superclass hierarchy. An interface contains method

3


declarations, but the declarations do not have bodies. If a class is declared to “implement” an interface, then for each method in the interface the class must either declare that method or inherit it from a superclass; a class can implement more than one interface.

Classes and interfaces can be grouped into packages in the same way we all group files into folders on our computers.

Here is a simple example that illustrates methods, classes and packages.

Package java.lang;

public class Math {

public static int max (int x, int y) {

if (x > y) return x ;

else return y ;

}
[Strike]{[/Strike]}
A typical program would have more than one method in a class. All Java programs must have [Strike]a[/Strike] at least one class. All programs, however, need not have packages, which are merely convenient ways to organize the classes.

To invoke this method from a program, the following could be included in the program:

int a= Math.max (2, 3);

4


Java syntax includes separators (e.g., {, }, ;), operators (e.g., +, -, *, /, ), literal values (e.g., 123, ‘x’, “Foo”), and keywords (e.g., if, then, else, while, return). These carry precise predefined meanings. Java syntax also includes identifiers (e.g., x, String, java.lang.Object), which are used by developers to name specific values, fields, methods, and classes as described below. These are used to form statements, each statement being a single directive to take some action. Statements are run in the sequence written. Statements are what tell the computer to do work.

A declaration instructs the computer to recognize a name as a variable or as a method or as a class and to reserve memory accordingly. The word “declare” is not used to precede a declaration. A declaration is a line (or more) of code that, for example, declares the variable pi to be 3.141592 or declares a class or method.

A method is a type of declaration. A method is a sequence of statements. Once defined, it can be invoked or “called on” elsewhere in the program. A method is like a subroutine. When a method is called upon, arguments are usually passed over to the method. These are the inputs. The output from the method are known as the return value. An example is a method that receives two numbers as inputs and returns the greater of the two as the output. Another example is a method that receives an angle expressed in degrees and returns the cosine of that angle. Methods can be much more complicated. A method, for example, could receive the month and day and return the Earth’s declination to the sun for that month and day.

A method declaration consists of the method header and the method body. (At the trial, however, witnesses sometimes referred to the method header as the method declaration or the method signature, even though that was not technically correct, and so the Court will use the three synonymously to match the evidence.) A method declaration defines the entire routine to be followed when the method is called. A method call is a line of other code somewhere else in the program that calls up (or invokes) the method and specifies the arguments to be passed to the method for crunching. The return is returned for use as the program marches on after the method call.

5


A method signature consists of the name of the method and the number and types of formal parameters to the method, if any. More specifically, a method header will contain the name of the method; the number, order, type and name of the parameters used by the method; the type of value returned by the method; the checked exceptions that the method can throw; and various method modifiers that provide additional information about the method.

A method body is a block of code that implements the method. If a method is declared to have a return type, then the method body must have a return statement and the statement must include the expression to be returned when that line of code is reached. During trial, many witnesses referred to the method body as the “implementation.” It is the method body that does the heavy lifting, namely the actual work of taking the inputs, crunching them, and returning an answer. (This part was not copied from Java by Google.)

A class is another type of declaration . A class may include a collection of fields that hold data values and methods that operate on those values. Classes are a fundamental structural element in the Java programming language. All Java programs are written as one or more classes. Java statements appear within methods and all methods are implemented within classes. To write a Java program, it must be placed in a class.

A class declaration includes the name of the class and other modifiers information that define the class. The body of the class includes fields and methods, constructors and initializers. Classes can have subclasses that inherit the functionality of the class itself while adding functionality for the subclass. When a new subclass is defined, the declaration uses the word “extends” to alert the compiler that the fields and methods of the parent class are inherited automatically into the new subclass so that only the additional fields or methods for the subclass need be declared.

An interface is a special type of class, which is used to relate similar classes more flexibly than allowed by the strict subclass/superclass hierarchy. An interface contains method declarations, but the declarations do not have bodies. If a class is declared to “implement” an interface, then for each method in the interface the class must either declare that method or inherit

6


it from a superclass; a class can implement more than one interface.Classes and interfaces can be grouped into packages in the same way we all group files into folders on our computers.

Here is a simple example that illustrates methods, classes and packages.

Package java.lang;

public class Math {

public static int max (int x, int y) {
if (x > y) return x ;

else return y ;

}
}
A typical program would have more than one method in a class. All Java programs must have at least one class. All programs, however, need not have packages, which are merely convenient ways to organize the classes.

To invoke this method from a program, the following could be included in the program:

int a= Math.max (2, 3);
Respectfully submitted,

Dated: May 9, 2012

MORRISON & FOERSTER LLP

By: /s/ Michael A. Jacobs

Attorneys for Plaintiff ORACLE AMERICA, INC.

7



1111

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 COMMENTS ON THE
COURT’S DESCRIPTION OF JAVA
LANGUAGE PRINCIPLES

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


Google provides the following comments on the Court’s draft description of Java language principles. All of Google’s comments are in the nature of minor corrections to the Court’s text or correction of typographical errors:

Page 1, line 1: “Java punctuation” should be changed to “Java syntax”

Page 1, lines 4-5: “each statement being a single command” should be changed to “each statement being one or more commands”

Page 1, line 17: “output(s)” should be changed to “output”; “are” should be changed to “is”; and “return(s)” should be changed to “return” – so the sentence should read “The output from the method is known as the return.”

Page 2, line 11: “method body mut [sic] have” should be changed to “method body must have”

Page 2, line 17: “Java” should be changed to “J2SE”

Page 3, line 2: “patent class” should be changed to “parent class”

Page 3, line 11: the final curly bracket should be facing in the opposite direction – it should be a close bracket rather than an open bracket.

Google does not propose any additions to the Court’s description.

Google has received through the CM-ECF system Oracle’s suggested changes to the Court’s draft. (Dkt. 1110). Google will review Oracle’s suggestions and will be prepared to comment on them tomorrow morning.

Dated: May 9, 2012

KEKER & VAN NEST LLP

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

Attorneys for Defendant
GOOGLE INC.

1



1112

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 MOTION IN LIMINE
REGARDING HINKMOND WONG AND
NOEL POORE

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


Google’s document disclosures for Oracle employees Noel Poore and Hinkmond Wong suggest that Google intends to question both of these witnesses about issues that are irrelevant to the patent infringement issues before the jury in Phase 2, and that pose a substantial risk of jury confusion. Pursuant to Federal Rules of Evidence 402 and 403, Oracle moves in limine to exclude the exhibits described in this motion and confine Google’s questioning of Messrs. Poore and Wong in this phase to topics relevant to the questions that the jury must decide now: Google’s infringement of Oracle’s Java patents.

Mr. Wong, an Oracle engineer, was not on the trial witness list that Google served in October. Google never sought his deposition during the entire period of fact discovery of the case. In February 2102, however, Prof. Cockburn submitted his third damages report, in which he disclosed that Mr. Wong was one of the Java engineers who assisted Mark Reinhold in the “group and value” approach to allocation of the patent portfolio. Shortly thereafter, on February 23, 2012, Google disclosed that it was adding Mr. Wong to its witness list, focusing on his relevance to the damages case. Thus, Google disclosed Mr. Wong as a witness as follows:

Mr. Wong is an Oracle engineer who may testify about work he performed in connection with Dr. lain Cockburn's third expert report and issues related to Java or Android technology. He may also testify concerning documents on the exhibit list that are either authored by him or were sent to him.
(Dkt. 840.)

Mr. Poore, in contrast, was on Google’s original witness list. Mr. Poore has already appeared and testified in Phase 2 concerning the performance testing that he did in relation to the ’520 patent.

On Tuesday, May 8, Google disclosed 28 documents for Mr. Wong and 14 documents for Mr. Poore. Many of these documents have nothing to do with the patent infringement issues that the jury needs to decide in Phase 2, and could only serve to confuse the jury.

First, many of the documents appear to be relevant to nothing at all, much less Phase 2. For example, Google’s disclosures for Mr. Wong include:

  • TX 562 (July 18, 2003 email string copying Mr. Wong on technical matters unrelated to Phase 2)

1


  • TX 541 (April 16, 2007 internal Sun email, announcing Oracle’s acquisition of SavaJe Technologies)
  • TX 2067 (April 29, 2010 internal Oracle email copying Mr. Wong in which another employee, Mr. Poore, compares the APIs in Android with the APIs in a Sun JVM implementation)
  • TX 2928 (October 1, 2010 internal Oracle email, discussing Oracle’s own JVMs, with a passing reference to competition with Android).
Second, many of the documents appear to be relevant only to damages, if relevant to anything at all. For example, Google’s disclosures for Mr. Wong include:

  • TX 557 (March 7, 2006 internal Sun email copying an email distribution list to which Mr. Wong was a member, describing Sun’s strategies for monetizing the Android transaction then contemplated with Google)
  • TX 3134 (March 8, 2007 internal Sun email reporting hearsay comments from Google that are critical of Java ME)
  • TX 2258 (November 15, 2007 internal Sun email from a Sun employee to Sun “bloggersextra. sun.com” email list, commenting on potential changes to Sun’s business model in light of Android)
  • TX 2723 (same email thread, with additional comments)
  • TX 3463 (internal Sun email sent to Mr. Wong with pasted in comments from another person’s on Sun Java business strategy in response to Android)
  • TX 2957 (September 28, 2010 internal email string commenting on Sun’s Java ME strategy)
  • TX 2462 (September 29, 2010 internal email from Mr. Wong commenting on Sun business model for Java)
  • TX 2948 (October 5, 2010 internal Oracle email discussing discussions between Oracle and RIM related to smartphones and Android).
Some, but not all, of these documents were also disclosed for Mr. Poore.

Third, and also related only to damages if anything, many of the documents are internal Sun or Oracle emails referring to internal efforts by Sun or Oracle to develop Java technology that would

2


work with Android in ways that would lessen the effect of Android’s fragmentation. Such disclosures by Google for Mr. Wong include TX 2461, TX 2709 and TX 3505.

Fourth, many documents appear to be relevant, if at all, only to show that someone at Sun had looked at some aspect of Android technology. These documents do not establish any knowledge of any infringement by Google, and even if they did, they could be relevant at most to equitable defenses, which the Court has made clear is not to be argued before the jury. (Proceedings at RT 3156:17–20. (“THE COURT: Well, I will say this. Anything that goes to an equitable defense I'm going to hear separately from the jury.”).) Such documents include TX 2416, 2460, 2461, 2464, 2929, 2949, 3438, and 3509. Again, some, but not all, of these documents were also disclosed for Mr. Poore.

Fifth, many of the documents refer to benchmark or performance testing conducted by Mr. Vandette (who has already testified at trial) or others, on which Mr. Wong is copied only as a member of a listserv, and which concern different benchmark tests than the ones Mr. Vandette conducted. See, e.g., TX 2413, 2415, 2936, 2937. The appropriate time to introduce such documents was during the examination of Mr. Vandette, who has now returned to his home in Massachusetts. Indeed, Google did question Mr. Vandette on one of these documents at his deposition, and apparently did not like his answers. If Google is permitted to offer such documents through other witnesses, who only happened to be copied on the emails, there is a substantial risk that the jury will confuse the performance testing described in those emails with the different benchmark analyses that Mr. Vandette testified about.

Sixth, other documents appear to be included in an attempt to introduce inadmissible hearsay. For example, TX 2703 includes statements made by James Gosling, after he had ceased to be a Sun or Oracle employee, about this lawsuit. Such statements are inadmissible hearsay, are unduly prejudicial under Fed. R. Evid. 403, and even if admissible, would only go to equitable defenses, which are not for the jury in any event.

Oracle brings this motion in an effort to resolve these issues in advance, and outside the presence of the jury. Google is free to make its equitable defense case to the Court, and to make its damages case in Phase 3. But the documentary evidence (as described above) that it apparently

3


intends to use with, and the testimony it hopes to elicit from, Mr. Poore and Mr. Wong has no relevance to the jury’s Phase 2 decisions, and should be excluded at this juncture.

Dated: May 9, 2012

BOIES, SCHILLER & FLEXNER LLP

By: /s/Fred Norton
Fred Norton

Attorneys for Plaintiff
ORACLE AMERICA, INC.

4



1113

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’S
MOTION IN LIMINE REGARDING
HINKMOND WONG AND NOEL POORE

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


Oracle moves preemptively to preclude legitimate Phase 2 testimony by attacking certain of Google’s exhibits disclosed for use with two of Oracle’s witnesses. The Court should deny Oracle’s motion on several grounds:

1. Mindful of the Court’s prior direction, Google does not intend to elicit testimony on equitable issues before the jury;

2. Oracle’s motion, which seeks to block examination of witnesses on documents that have already been admitted into evidence, is premature without the broader context of the testimony;

3. Oracle may object during the taking of testimony; and

4. Though Oracle has mostly focused on emails allegedly showing awareness of patents and investigations that it claims Google should have performed, Google will continue to focus its examinations on exposing the many technical weaknesses in Oracle’s patent infringement case.

This opposition focuses on the last two of these grounds.

I. ORACLE’S NONSPECIFIC REQUEST TO “CONFINE” TESTIMONY TO
“RELEVANT” ISSUES IS UNWORKABLE.

Oracle has not asked to prevent either Mr. Poore or Mr. Wong from testifying and has no basis for doing so. Oracle’s attempt to preemptively limit the questioning of Messrs. Poore and Wong to only what it views as relevant is unworkable. To the extent that Oracle is only now objecting to Google’s supplemental witness list disclosure from February 23, 2012, that objection is untimely and not sufficiently articulated to allow Google to respond on the merits.

Despite Oracle’s claims based on its spin on some of the documents Google has disclosed for use with these witnesses, Google will continue to focus its examinations on the lack of technical merit in Oracle’s patent case. In particular, Google will seek testimony in the form of admissions on technical issues by the Oracle witnesses in addition to any other relevant knowledge. For its part, Oracle led off its patent case with examinations of Google employees on the issue of awareness of Sun patents and investigations that Oracle apparently contends should have been performed (though Oracle has cited no precedent suggesting that such investigations

1


are a legal requirement). That door is now wide open, and Google must be permitted to address issues that have opened with it.

II. ORACLE’S BROAD CATEGORIES OF DOCUMENT OBJECTIONS SHOULD
BE URGED INDIVIDUALLY IF AND WHEN EACH DOCUMENT IS OFFERED.

Oracle’s complaints appear to arise largely from a fear that the jury will learn that Oracle engineers Poore and Wong, who worked extensively on Sun/Oracle’s mobile phone efforts, spent significant time studying Android. This is not a legitimate basis for wholesale exclusion of exhibits, and at any rate, was invited by testimony elicited by Oracle.

In the case of Mr. Poore, his prior involvement with Android is relevant not only to the issues being tried in Phase 2, but was also squarely put into play when Oracle called Mr. Poore as a purported expert on alleged “performance testing” he conducted in support of Oracle’s litigation strategy. The jury is entitled to learn the details of Mr. Poore’s prior involvement with Android, and Oracle cannot heard to complain now that Mr. Poore’s prior Android experience should be kept from the jury.

Mr. Wong likewise had prior involvement studying Android. To the extent any of the presently designated exhibits may delve into or touch upon technical observations regarding Android or relevant technology, Google should be permitted to explore those observations, subject to objections made at trial by Oracle. As noted above, Google is mindful of the Court’s direction on equitable issues in Phase 2 and does not intend to elicit testimony of an equitable nature before the jury.

III. CONCLUSION

Oracle’s motion should be denied.

Dated: May 9, 2012

KEKER & VAN NEST LLP

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

Attorneys for Defendant
GOOGLE INC.

1



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