Oracle Corporation et al v. SAP AG et al

Filing 1088

ORDER by Judge Hamilton denying 1086 Motion to Stay; extending deadline for Oracle to accept or reject remittitur; vacating hearing dates; and setting briefing schedule. (pjhlc1, COURT STAFF) (Filed on 9/16/2011)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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ORACLE USA, INC., et al.,

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For the Northern District of California

United States District Court

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Plaintiffs,

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v.

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SAP AG, et al.,

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No. C 07-1658 PJH
ORDER

Defendants.
_______________________________/

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The court is in receipt of a motion filed by plaintiffs Oracle USA, Inc., et al. (“Oracle”)

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for a stay of all proceedings in this court pending resolution of Oracle’s motion for an order

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certifying the September 1, 2011 order granting judgment as a matter of law for

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interlocutory review pursuant to 28 U.S.C. § 1292(b), and any subsequent appellate

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proceedings, and an accompanying request for an order shortening time to hear the motion

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for a stay. Defendants SAP AG (“SAP”) do not oppose the motion for an order shortening

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time, although it appears that SAP may oppose the motion for a stay.

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The court finds that the motion to stay is premature, as no decision has yet been

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made on the motion for leave to file a request for interlocutory appeal. Accordingly, the

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motion is DENIED, and the noticed hearing date (September 28, 2011) is VACATED.

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Moreover, the only “proceeding” pending in this court (apart from the motion for

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certification of the request for interlocutory review) is the deadline imposed in the

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September 1, 2011 order for Oracle to accept or reject the remittitur.

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The court has no objection to extending the deadline for Oracle to accept or reject

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the remittitur, and does so now. The deadline shall be extended until after this court has

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fully considered Oracle’s request for an order certifying a request for interlocutory review,

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and has determined what if any question(s) may be certified; and for an additional 30 days

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beyond the date the Ninth Circuit either approves or denies any such application.

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Further, in the event that the September 1, 2011 order was not entirely clear as to

clarification. The court did not hold as a matter of law – as is suggested by Oracle’s motion

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for § 1292(b) certification – that copyright damages based upon the amount a willing buyer

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would reasonably have paid a willing seller under a hypothetical license are available only if

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For the Northern District of California

the reasons for granting judgment as a matter of law, the court offers the following

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United States District Court

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the copyright owner provides evidence of actual licenses it entered into or would have

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entered into for the infringed works, and/or actual “benchmark” licenses entered into by any

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party for comparable use of the infringed or comparable works.

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Rather, the court held, first, that the Copyright Act allows recovery of either statutory

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damages, or “actual damages suffered by [the copyright owner] as a result of the

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infringement,” plus “any profits of the infringer that are attributable to the infringement and

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are not taken into account in computing the actual damages.” See 17 U.S.C. § 504(a), (b).

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And with regard to “actual damages suffered by [the copyright owner] as a result of the

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infringement,” the court held that evidence provided by Oracle was not sufficient to support

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an award of hypothetical license damages because it failed to provide objective evidence of

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what a willing buyer would have paid, and because it failed to provide evidence sufficient to

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allow the jury to assess fair market value without undue speculation.

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In that context, the court noted that under Ninth Circuit case law, one way to

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establish an objective, non-speculative license price is by providing evidence of licenses

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previously negotiated for comparable use of the infringed work, and benchmark licenses for

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comparable uses of comparable works. See September 1, 2011, Order at 10-15.

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In light of the above, Oracle may wish to reframe the question or questions as to
which it seeks leave to file a motion for interlocutory review. Any revised motion shall be
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filed no later than September 23, 2011. SAP’s opposition, if any, shall be filed no later than

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October 7, 2011, and may include an alternative formulation of the question or questions

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that to be submitted for the requested interlocutory review. Any reply to the opposition

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shall be filed no later than October 14, 2011. The court will decide the motion on the

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papers. Accordingly, the January 11, 2011 hearing date is VACATED.

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IT IS SO ORDERED.

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Dated: September 16, 2011
______________________________
PHYLLIS J. HAMILTON
United States District Judge

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For the Northern District of California

United States District Court

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