Oracle Corporation et al v. SAP AG et al
Filing
1092
RESPONSE (re 1089 MOTION for 1292(b) Certification for Interlocutory Review MOTION for 1292(b) Certification for Interlocutory Review ) Defendants' Opposition to Oracle's Motion for 1292(b) Certification for Interlocutory Review filed bySAP AG, SAP America Inc, Tomorrownow Inc. (Attachments: # 1 Proposed Order, # 2 Appendix Appendix of Unpublished Authorities)(Froyd, Jane) (Filed on 10/7/2011)
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
Robert A. Mittelstaedt (SBN 060359)
Jason McDonell (SBN 115084)
Elaine Wallace (SBN 197882)
JONES DAY
555 California Street, 26th Floor
San Francisco, CA 94104
Telephone:
(415) 626-3939
Facsimile:
(415) 875-5700
ramittelstaedt@jonesday.com
jmcdonell@jonesday.com
ewallace@jonesday.com
Tharan Gregory Lanier (SBN 138784)
Jane L. Froyd (SBN 220776)
JONES DAY
1755 Embarcadero Road
Palo Alto, CA 94303
Telephone:
(650) 739-3939
Facsimile:
(650) 739-3900
tglanier@jonesday.com
jfroyd@jonesday.com
Scott W. Cowan (Admitted Pro Hac Vice)
Joshua L. Fuchs (Admitted Pro Hac Vice)
JONES DAY
717 Texas, Suite 3300
Houston, TX 77002
Telephone:
(832) 239-3939
Facsimile:
(832) 239-3600
swcowan@jonesday.com
jlfuchs@jonesday.com
Attorneys for Defendants
SAP AG, SAP AMERICA, INC., and
TOMORROWNOW, INC.
19
UNITED STATES DISTRICT COURT
20
NORTHERN DISTRICT OF CALIFORNIA
21
OAKLAND DIVISION
22
23
ORACLE USA, INC., et al.,
24
Plaintiffs,
25
v.
26
Case No. 07-CV-1658 PJH (EDL)
[PROPOSED] ORDER DENYING
ORACLE’S MOTION FOR 1292(b)
CERTIFICATION FOR
INTERLOCUTORY REVIEW
SAP AG, et al.,
Defendants.
27
28
SVI-98117v1
[PROPOSED] ORDER DENYING ORACLE’S MOT.
FOR 1292(b) CERT. FOR INTERLOCUTORY REVIEW
Case No. 07-CV-1658 PJH (EDL)
1
2
Having considered the papers filed by the parties in connection with Oracle International
Corp.’s (“Oracle”) Motion for 1292(b) Certification for Interlocutory Review (“Motion”):
3
IT IS HEREBY ORDERED THAT: Oracle’s Motion is DENIED.
4
28 U.S.C. § 1292(b) provides a limited exception to the rule that an appellate court should
5
not review a district court ruling until entry of final judgment. 28 U.S.C. §§ 1291 & 1292(b). A
6
district court may exercise discretion to certify a non-final order for immediate appeal if there is:
7
(1) a “controlling question of law,” (2) on which there are “substantial grounds for difference of
8
opinion,” and (3) resolution of which would “materially advance the ultimate termination of the
9
litigation.” In re Cement Antitrust Litig., 673 F.2d 1020, 1026 (9th Cir. 1982). A district court
10
must “strictly” construe the statute’s requirements and allow certification only “when exceptional
11
circumstances warrant it.” Safeway Inc. v. Abbott Labs., No. C 07-05470 CW, 2010 U.S. Dist.
12
LEXIS 61721, at *6 (N.D. Cal. June 1, 2010). No such exceptional circumstances exist here.
13
Oracle’s proposed questions for certification are not “controlling questions of law.” A
14
“question of law” is “controlling” only if resolving the question on interlocutory appeal “could
15
materially affect the outcome of litigation in the district court.” In re Cement, 673 F.2d at 1026.
16
The questions Oracle presents for certification are not “controlling,” for several reasons. First,
17
resolving Oracle’s proposed questions would not affect the Court’s grant of judgment as a matter
18
of law. As set forth in its September 1, 2011 and September 16, 2011 Orders, the Court granted
19
judgment as a matter of law on two separate grounds—Oracle is not entitled to “hypothetical”
20
license fees as actual damages because: (1) Oracle failed to prove that it actually lost any
21
licensing opportunities, and (2) even if “hypothetical” license fees were recoverable absent proof
22
of lost licensing opportunities, Oracle failed to offer any objective evidence upon which to
23
calculate a non-speculative license price. Here, Oracle’s questions focus on whether certain
24
categories of evidence suffice to support an award of actual damages in the form of a hypothetical
25
license; they do not affect the Court’s ruling that Oracle may not recover hypothetical license fees
26
because Oracle failed to prove that it actually lost any licensing opportunities.
27
28
Second, Oracle’s questions are not controlling because they are not presented by this case.
See Hulmes v. Honda Motor Co., 936 F. Supp. 195, 209 (D.N.J. 1996) (denying certification
SVI-98117v1
-1-
[PROPOSED] ORDER DENYING ORACLE’S MOT.
FOR 1292(b) CERT. FOR INTERLOCUTORY REVIEW
Case No. 07-CV-1658 PJH (EDL)
1
where “Plaintiff has asked this court to certify for interlocutory appeal a question that it did not
2
decide”); In re Bridgestone/Firestone, Inc., Tires Prods. Liab. Litig., 212 F. Supp. 2d 903, 907
3
(S.D. Ind. 2002) (denying certification where party “mischaracterize[d]” court’s ruling “[i]n an
4
effort to make this issue a question of law”). The Court did not, as Oracle’s proposed questions
5
suggest, rule that whole categories of evidence are per se insufficient to value license damages or
6
that “objective value could be proved only by particular kinds of evidence.” Mot. at 1, 5. Nor did
7
the Court rule that an award based on certain categories of evidence or falling “within the
8
reasonable range of hypothetical-license damages established” by these categories of evidence
9
must be set aside as speculative and/or excessive. Id. at 2. Rather, the Court held that the
10
particular evidence that Oracle presented at trial failed to establish an objective, non-speculative
11
license price and did not allow the jury to assess fair market value without undue speculation.
12
Thus, a ruling by the Ninth Circuit that certain categories of evidence can suffice to price a
13
hypothetical license would not alter the Court’s holding that the subjective evidence Oracle
14
presented at trial failed to support a non-speculative license amount. Such an opinion also would
15
not affect the Court’s discretionary new trial ruling that the award grossly exceeded actual harm
16
to Oracle in the form of lost customers.
17
Finally, to the extent that Oracle seeks appellate review of this Court’s determination that
18
the trial evidence offered to value a hypothetical license was purely subjective, Oracle’s proposed
19
questions fail to even qualify as “questions of law.” Under Section 1292(b), a “question of law”
20
means a “pure question of law,” “not a mixed question of law and fact or an application of law to
21
a particular set of facts.” Brizzee v. Fred Meyer Stores, Inc., CV-04-1566-ST, 2007 U.S. Dist.
22
LEXIS 99155, at *10-11 (D. Or. Dec. 10, 2007); Keystone Tobacco Co. v. U.S. Tobacco Co., 217
23
F.R.D. 235, 238-39 (D.D.C. 2003) (denying certification, as “crux of an issue decided by Court
24
[was] fact-depend[e]nt” and appellate review “could only result in the court of appeals improperly
25
wading into the factual pond of an ongoing matter”). Certification is appropriate only where a
26
party seeks review of “an abstract legal issue,” Brizzee, 2007 U.S. Dist. LEXIS 99155, at *11, not
27
simply a court’s “application of the governing law to the relevant facts of this case.” Hulmes, 936
28
F. Supp. at 210; Ahrenholz v. Bd. of Trs. of Univ. of Ill., 219 F.3d 674, 676-77 (7th Cir. 2000).
SVI-98117v1
-2-
[PROPOSED] ORDER DENYING ORACLE’S MOT.
FOR 1292(b) CERT. FOR INTERLOCUTORY REVIEW
Case No. 07-CV-1658 PJH (EDL)
1
Although Oracle frames its questions in terms of abstract categories of evidence, Oracle devotes
2
much of its brief to rearguing its specific trial evidence, including whether the evidence showed
3
the parties’ “expectations” and whether Oracle’s damages expert, Paul Meyer, offered reliable
4
trial testimony valuing a lost license fee. If Oracle intends that the Ninth Circuit undertake the
5
same fact-intensive review that this Court carried out to determine whether Oracle’s specific trial
6
evidence was objective or subjective, then Oracle’s proposed questions are not “questions of law”
7
appropriate for interlocutory appeal. See Hulmes, 936 F. Supp. at 210 (“Section 1292(b) was not
8
designed to secure appellate review of ‘factual matters’ or of the application of the acknowledged
9
law to the facts of a particular case, matters which are within the sound discretion of the trial
10
11
court.”); Ahrenholz, 219 F.3d at 676-77.
Oracle also fails to show that a substantial ground for difference of opinion exists as to
12
the law governing its proposed questions. To determine if a “substantial ground for difference of
13
opinion” exists under Section 1292(b), “courts must examine to what extent the controlling law
14
is unclear.” Couch v. Telescope Inc., 611 F.3d 629, 633-34 (9th Cir. 2010). Such grounds
15
typically exist only where “the circuits are in dispute on the question and the court of appeals of
16
the circuit has not spoken on the point, if complicated questions arise under foreign law, or if
17
novel and difficult questions of first impression are presented.” Id. “That settled law might be
18
applied differently does not establish a substantial ground for difference of opinion.” Id.; see
19
also N. Carolina ex. rel. Long v. Alexander & Alexander Servs., Inc., 685 F. Supp. 114, 116
20
(E.D.N.C. 1988) (denying request where party raised only “dispute with the application of facts
21
to existing and well-settled law”). “A party’s strong disagreement with the Court’s ruling is not
22
sufficient for there to be a ‘substantial ground for difference.’” Couch, 611 F.3d at 633-34.
23
Here, clear Ninth Circuit precedent establishes that recovering lost license fees requires
24
offering objective evidence sufficient to calculate a non-speculative license price. See Jarvis v.
25
K2 Inc., 486 F.3d 526, 534 (9th Cir. 2007); Polar Bear Prods., Inc. v. Timex Corp., 384 F.3d
26
700, 709 (9th Cir. 2004); Mackie v. Rieser, 296 F.3d 909, 917 (9th Cir. 2002). The Ninth Circuit
27
rejects license awards based only on subjective evidence. See Mackie, 296 F.3d at 917; Frank
28
Music Corp. v. Metro-Goldwyn-Mayer, Inc., 772 F.2d 505, 513-14 (9th Cir. 1985) (upholding
SVI-98117v1
-3-
[PROPOSED] ORDER DENYING ORACLE’S MOT.
FOR 1292(b) CERT. FOR INTERLOCUTORY REVIEW
Case No. 07-CV-1658 PJH (EDL)
1
refusal to award license damages where plaintiffs offered “no disinterested testimony” in support
2
of alleged damages). The Court applied this controlling law and held that the subjective
3
evidence Oracle offered at trial could not support an objective non-speculative license price.
4
Having decided, on multiple grounds, that Oracle was not entitled to recover actual damages in
5
the form of a lost license fee, the Court held that the award grossly exceeded the only evidence
6
of actual harm, in the form of lost customers. Oracle’s claim that the Court should have come to
7
a different conclusion in applying this “settled law . . . does not establish a substantial ground for
8
difference of opinion.” Couch, 611 F.3d at 633. Oracle’s attempt to manufacture substantial
9
grounds for difference of opinion by misconstruing this Court’s order as holding that objective
10
value can be proved only by certain categories of evidence must fail. See Hulmes, 936 F. Supp.
11
at 209 (denying certification where plaintiff mischaracterized order as not applying controlling
12
law). And Oracle’s reliance on inapposite patent law does not create substantial grounds for
13
difference of opinion as to the correct legal standard in this copyright case; as this Court has
14
explained on previous occasions, a reasonable royalty under patent law and a “hypothetical
15
license” under copyright law are different remedies, the calculation of which are governed by
16
different standards. See Couch, 611 F.3d at 633-45 (noting that “just because counsel contends
17
that one precedent rather than other is controlling does not mean there is such a substantial
18
difference of opinion as will support an interlocutory appeal”).
19
Lastly, Oracle fails to show that an immediate appeal will materially advance the ultimate
20
termination of this litigation. Whether an appeal “materially advances” a litigation’s termination
21
“is linked to whether an issue of law is ‘controlling’ in that the Court should consider the effect of
22
a reversal by the Ninth Circuit on the management of the case.” Mateo v. M/S Kiso, 805 F. Supp.
23
792, 800-01 (N.D. Cal. 1992), abrogated on other grounds by Brockmeyer v. May, 361 F.3d 1222
24
(9th Cir. 2004). A court should certify interlocutory appeal only when doing so “would avoid
25
protracted and expensive litigation.” In re Cement, 673 F.2d at 1026. By contrast, if that appeal
26
“delay(s) resolution of the litigation, it should not be certified.” Matsunoki Group, Inc. v.
27
Timberwork Or., Inc., No. C 08-04078 CW, 2011 U.S. Dist. LEXIS 33178, at *6 (N.D. Cal. Feb.
28
18, 2011) (denying certification because trial would be concluded in approximately five months);
SVI-98117v1
-4-
[PROPOSED] ORDER DENYING ORACLE’S MOT.
FOR 1292(b) CERT. FOR INTERLOCUTORY REVIEW
Case No. 07-CV-1658 PJH (EDL)
1
Sonoda v. Amerisave Mortg. Corp., No. C-11-1803 EMC, 2011 U.S. Dist. LEXIS 100275, at *6
2
(N.D. Cal. Sept. 7, 2011); FTC v. Swish Mktg., No. C 09-03814 RS, 2010 U.S. Dist. LEXIS
3
47948, at *10 (N.D. Cal. Apr. 14, 2010) (holding that denying certification is appropriate if
4
“interlocutory review would . . . carry with it a greater risk for delay than its promise for ultimate
5
savings of both time and resources”). Here, since Oracle’s proposed questions are not
6
“controlling” and thus would not avoid a new trial limited to lost profits/infringers’ profits, an
7
appeal would result only in the unnecessary delay, rather than material advancement, of the
8
district court proceedings.
9
*
*
*
10
For the reasons set forth above, the Court DENIES Oracle’s Motion for 1292(b)
11
Certification for Interlocutory Review of the Court’s September 1, 2011 Order (“9/1/11 Order”)
12
(ECF No. 1081). Accordingly, Oracle shall submit a statement accepting or rejecting the
13
remittitur set forth in the Court’s 9/1/11 Order no later than ______________________.
14
IT IS SO ORDERED.
15
16
17
18
19
DATED: ________________________
By:
Hon. Phyllis J. Hamilton
20
21
22
23
24
25
26
27
28
SVI-98117v1
-5-
[PROPOSED] ORDER DENYING ORACLE’S MOT.
FOR 1292(b) CERT. FOR INTERLOCUTORY REVIEW
Case No. 07-CV-1658 PJH (EDL)
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?