Oracle Corporation et al v. SAP AG et al

Filing 421

MOTION to Seal Document 420 Status Report filed by Oracle EMEA Limited, Oracle International Corporation, Oracle USA Inc.. (Attachments: # 1 Proposed Order)(Hann, Bree) (Filed on 8/18/2009)

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BINGHAM McCUTCHEN LLP DONN P. PICKETT (SBN 72257) GEOFFREY M. HOWARD (SBN 157468) HOLLY A. HOUSE (SBN 136045) ZACHARY J. ALINDER (SBN 209009) BREE HANN (SBN 215695) Three Embarcadero Center San Francisco, CA 94111-4067 Telephone: [phone] Facsimile: [phone] [e-mail] [e-mail] [e-mail] [e-mail] [e-mail] DORIAN DALEY (SBN 129049) JENNIFER GLOSS (SBN 154227) 500 Oracle Parkway M/S 5op7 Redwood City, CA 94070 Telephone: [phone] Facsimile: [phone] [e-mail] [e-mail] Attorneys for Plaintiffs Oracle USA, Inc., Oracle International Corporation, and Oracle EMEA Limited

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: [phone] Facsimile: [phone] [e-mail] [e-mail] [e-mail] Tharan Gregory Lanier (SBN 138784) Jane L. Froyd (SBN 220776) JONES DAY 1755 Embarcadero Road Palo Alto, CA 94303 Telephone: [phone] Facsimile: [phone] [e-mail] [e-mail] Scott W. Cowan (Admitted Pro Hac Vice) Joshua L. Fuchs (Admitted Pro Hac Vice) JONES DAY 717 Texas, Suite 3300 Houston, TX 77002 Telephone: [phone] Facsimile: [phone] [e-mail] [e-mail] Attorneys for Defendants SAP AG, SAP AMERICA, INC., and TOMORROWNOW, INC.

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION ORACLE USA, INC., et al., Plaintiffs, v. SAP AG, et al., Defendants. Case No. 07-CV-1658 PJH (EDL) JOINT DISCOVERY CONFERENCE STATEMENT Date: August 25, 2009 Time: 11:30 a.m. Courtroom: E, 15th Floor Judge: Hon. Elizabeth D. Laporte

JOINT DISC. CONF. STATEMENT Case No. 07-CV-1658 PJH (EDL)

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Plaintiffs Oracle USA, Inc., Oracle International Corporation, and Oracle EMEA Limited (collectively, "Oracle") and Defendants SAP AG, SAP America, Inc., and TomorrowNow, Inc. (collectively, "Defendants," and with Oracle, the "Parties") submit this Joint Discovery Conference Statement. The Parties jointly request that the Court schedule sixty minutes on August 25, 2009 to discuss discovery issues. I. Extrapolation Proposal and Requests for Admission

Oracle's Position: As the Court knows, the Parties have been unable to stipulate to facts regarding Defendants' copying and use of Oracle's intellectual property. After more than a year of such efforts, Defendants now refuse to answer Requests for Admission that, if accurately answered, would serve a similar purpose. They would alleviate the burden on both Parties to collect and analyze the extensive evidence regarding TN's downloading and use of Oracle's software on an individual fix-by-fix basis over time, and still provide Oracle with admissible evidence. Regarding the stipulation, Defendants continue to block this effort to summarize TN's general processes, despite the Court's recognition that "the incentive for the Defendants to stipulate" is efficiency and alleviation of discovery and evidence burdens: "that is to say the alternative is to spend a huge amount, more money and time on unearthing every fact." See Exhibit A (excerpt from Transcript of November 25, 2008 Discovery Conference) at 34:18-22. Oracle's third proposed stipulation on this topic took months of meet and confer efforts to develop. That proposal was attached as Exhibit A to the February 9, 2009 Joint Discovery Conference Statement (under seal), and Defendants rejected it. In response to Oracle's request, Defendants agreed on April 21, 2009 to provide a list of the facts to which they are willing to stipulate. They provided this document on July 14, 2009. See Exhibit B (July 14, 2009 extrapolation proposal including cover email) (filed under seal). There are three significant problems with Defendants' proposal, which focuses on stipulated testimony. First, Defendants continue to insist that they will agree to nothing until they learn how Oracle will use the stipulated facts in its damages analysis. Id. The Court has rejected the logic of that position. See Exhibit C (excerpt from Transcript of February 13, 2009 Discovery 1
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Conference) at 9:14-25 ("And I guess I find that puzzling, to tell you the truth, because . . . I have trials where the[re] are stipulated facts and you can use them any way you want, because by the virtue of they're stipulated they're true."). Next, Defendants limit each part of their proposal by stating it "shall not be used to suggest, imply or infer in any way that these service activities were always performed using this practice." Exhibit B at 4:7-9; 6:12-14. As the Court suggested, a stipulated fact should be available to both Parties for any purpose, including argument. Finally, even though Defendants were supposed to provide a list of the facts to which they would agree to stipulate, they stated in their cover email that Oracle was not empowered to accept Defendants' proposal and, more, that "Defendants do not and will not agree to even [their own] attached draft proposed stipulation." Id. In other words, despite having had Oracle's third proposal for over six months, and despite having provided Oracle with a document stating some facts, Defendants have not actually agreed to anything. The inability to arrive at a stipulation led Oracle to serve a set of RFAs directed to the same facts at issue, TN's business practices, which the Court has suggested as an alternative. See Exhibit A at 34:2-6 ("we could go the RFA route"). Among others, Oracle propounded RFAs asking Defendants to admit to certain specific uses of Customer Connection, as well as to certain detailed statements about TN's development process. For each step of the process addressed, Oracle asked Defendants to admit the step occurred: (a) each time; (b)the majority of the time; (c) some of the time; and/or (d) at least once. The variety of options for each step would have permitted Defendants to select the most accurate frequency, in keeping with the Court's suggestions about compromising through variations in language. See Exhibit A at 41:21-43:15; Exhibit C at 11:2-12:11, 18:10-20. The descriptions of the steps were taken from Defendants' witnesses' testimony and documents. Defendants, however, refused to admit to any of these RFAs, even though they cannot credibly refuse given their witnesses' testimony and the documents they have produced. For example, even though TN's Rule 30(b)(6) designee for PeopleSoft environments, Catherine Hyde, testified that she created the environment HG75103C "using some customer software" and that it was "used to support HG702 customers," Defendants denied four Requests asking them to admit, 2
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alternatively, that TN created environments from customer software for each fix, the majority of fixes, some fixes, or even once. Exhibit D at 50:16-51:15 (Hyde 30(b)(6) excerpts). At least two of these denials are not credible in light of Ms. Hyde's testimony, and while Oracle can use that testimony at trial, it has employed the RFAs to leverage Ms. Hyde's testimony into broader application in lieu of a stipulation. Oracle sent Defendants a meet and confer letter on August 10 about these RFA deficiencies, and hopes that Defendants will reconsider their responses. However, Defendants cannot continue to block all of Oracle's inquiries into these important facts. Whether by stipulation or RFA, they must admit to those facts about TN's business practices and processes that are not reasonably in dispute. If Defendants do not reconsider, Oracle will seek the Court's assistance with a motion to compel further responses to the RFAs. Defendants' Position: Defendants remain willing to negotiate a stipulation but have consistently maintained that they must have some objective measure to weigh the cost/benefit of relieving Oracle of its burden of proof. Unless and until Oracle provides Defendants with some information as to how it intends to use the stipulation with respect to its damages calculations, Defendants must continue to hold Oracle to its full burden of proof on each and every element of each and every one of its claims. Oracle's version of the "facts" on which it seeks a stipulation differ somewhat from what Defendants contend are the facts. Oracle's only response to that factual dispute is to point to testimony which Oracle claims proves some of the facts on which it seeks a stipulation. If Oracle already has testimony establishing certain facts, then it does not need a stipulation on those facts. Thus, the major points of the parties' disagreement with respect to the proposed stipulation are: (a) the "facts" themselves; and (b) how any "agreed facts" would be used by Oracle in its damages calculations. Defendants have consistently maintained that their negotiations regarding the stipulation are Rule 408 compromise and settlement negotiations. As with any Rule 408 negotiations, all parties involved need to know what they are giving up in exchange for what they are receiving. And, as noted above, Oracle continues to refuse to provide Defendants with critical information necessary to evaluate the downside risks of relieving Oracle of its burden of proof. 3
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Oracle has propounded over 700 requests for admission, almost all of which are objectionable on multiple grounds. Oracle is attempting to use these voluminous requests for admission to continue to seek Defendants' acquiescence to Oracle's version of the "facts". Defendants' basic disagreement with Oracle regarding the "facts" themselves (which is one of the two primary obstacles preventing substantial forward progress on the extrapolation/stipulation) is one of the reasons Defendants have denied many of Oracle's requests for admission. That said, as Oracle notes above, Oracle has pointed Defendants to several specific requests for admission and has asked Defendants to reconsider their answers to those requests. Defendants are in the process of reviewing Oracle's correspondence regarding those specific requests and intend to continue the meet and confer process on this issue. II. Pre-2005 Damages Related Discovery

Defendants' Position: Oracle continues to refuse to provide certain financial and customer-specific data for the pre-2005 period (i.e., the period prior to Oracle's acquisition of PeopleSoft). This data includes customer-specific financial reports and cancellation reports that Oracle has produced for the post-acquisition time period. Oracle contends that the data is available only on "legacy" PeopleSoft systems and that it would be unduly burdensome to retrieve it. Oracle has also refused to provide Rule 30(b)(6) testimony on numerous damagesrelated topics for the pre-2005 period on the ground that it does not have the historical knowledge to do so and has no obligation to obtain it. These topics include PeopleSoft financial records, pricing policies, and support policies, about which Oracle has disclaimed knowledge. Oracle contends that its customer contract files provide sufficient information to calculate damages for the pre-2005 period. Defendants disagree because the contract files are incomplete as well. These gaps in Oracle's production of pre-2005 data, along with its claimed lack of knowledge of PeopleSoft financial and other records make it impossible to calculate damages for the pre-2005 period. Defendants will continue to meet and confer with Oracle, but will seek the Court's guidance at the discovery conference on the burden issue and Oracle's position that it is not obligated to provide Rule 30(b)(6) testimony regarding the records of the predecessors-ininterest to the plaintiff entities. 4
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Oracle's Position: Legacy Customer Reports: The facts regarding Oracle's production of pre-2005 customer contracts ­ and the importance for purposes of proving damages of such production ­ are different from what Defendants state. First, Oracle has produced pre-2005 customer-specific financial reports where it could from its active systems; for example, it has produced Analytics License Reports, which contain all historical software licenses for lost customers that were still on support at the time of the PeopleSoft acquisition. Oracle has not produced summary reports with pre-2005 data only in cases where the customer was not active at the time of the PeopleSoft acquisition (i.e., it had already left for TN), because in that situation there is no legacy PeopleSoft system up and running from which such reports can be produced. As Oracle has explained to Defendants in meet and confer, and as Oracle witnesses have attested, PeopleSoft and JDE legacy contract data was not migrated to Oracle's current systems and thus there is no comparable automatic searching or querying ability such as was used to create the summary reports for active customers. Thus, locating historic pre-2005 customer-specific information on the system would require individual, manual searching and sorting, made all the more difficult by the inexact naming and numbering of associated customers. Indeed, it is the matching of customer names and identification numbers to contracts and report fields that has proven the most time consuming part of the specific customer damages efforts. To obtain the legacy data for any given customer, Oracle would have to upload and then access the legacy system, spend unknown hours researching that customer (and its associated alternative names, numbers, and locations), assess which material found (if any) is material and relevant to the actual customer at issue, and then take any found data and either manually transcribe it to a piece of paper or enter it into a different computer system for production. Second, and critically, even without summary reports it is possible to calculate damages for the pre-2005 period (or for any period). That is because the customer's historic contracts contain the necessary information to calculate those damages. Indeed, summary reports are no more than convenient compilations of the underlying contract data; however, they are not necessary to doing the calculations. Indeed, Oracle's damages experts are cross-checking the 5
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Oracle summary reports where they have been automatically available and produced against the underlying contracts Oracle produced even for more current customers (as well as against the TN contracts Defendants produced and the customer's records produced pursuant to subpoenas) to validate damages calculations. This is exactly what Defendants' experts are doing, per recent declarations. So there is no established need for customer reports run from legacy data that would justify the significant burden on Oracle in trying to reactive retired systems to create them. Legacy Cancellation Reports. Oracle has produced numerous pre-existing legacy PeopleSoft and JDE service renewal and cancellation reports when found in custodial productions, which Defendants have used extensively as deposition exhibits. These historic reports do not exist in any centralized repository. The underlying legacy database from which those legacy PeopleSoft reports were run does not now have reporting functionality. Thus, there is not an active system from which legacy PeopleSoft or JDE cancellation reports can currently be run, as Oracle witnesses have also attested. *** Defendants have never disputed the associated burden with their request for duplicative legacy data. Because this data is neither necessary nor reasonably accessible, Oracle believes both Parties should rely on Oracle's and Defendants' customer contracts, financial reports, and cancellation reports, as Oracle has done. Defendants have yet to explain why this is an inadequate solution or what exactly they are missing. However, Oracle will continue to meet and confer with Defendants on this issue. Oracle's Objections to Providing 30(b)(6) Testimony on Legacy PS or JDE Records. Defendants first complained about Oracle's objections to Defendants' Rule 30(b)(6) notice to Oracle USA, Inc on August 13, and no meet and confer has yet occurred. Oracle objected to providing Rule 30(b)6) testimony on pre-2005 PeopleSoft and JDE financial records, pricing policies, and support policies because documents, not memories of individual witnesses, explain these years of pricing and policies far better. Moreover, Defendants have taken extensive individual testimony on these topics, from current Oracle employees who were legacy PeopleSoft and/or JDE employees. These include Rick Cummins, Robbin Henslee, Buffy Ransom, and Beth 6
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Shippy. In its objections to Defendants' Third 30(b)(6) notice to Oracle USA, Inc., Oracle expressly pointed Defendants to that testimony, as well as to the extensive documents Oracle has produced from those custodians on those topics. In their August 13 letter, Defendants indicate they will accept designations of testimony from these witnesses as to Siebel, if applicable, and also agree to accept Bates-numbers in lieu of testimony for certain topics such as pricing terms and increases. Oracle will meet and confer with Defendants as requested in their August 13 letter to see what, if anything, the individual witnesses did not attest to as to PeopleSoft and JDE pricing and policies that is not otherwise contained in documents and whether anyone else in Oracle's current employ would know more. III. Deposition Dates and Witnesses

Oracle's Position: Oracle is concerned about the pace at which Defendants provide deposition dates, as well as the timing of the dates themselves. Below is a chart summarizing when Oracle requested a date for certain outstanding witnesses, when Defendants responded, and with what date. Witness Scott Trainor Date Date of Response Requested Offering Dates June 15 June 23, then cancelled by Defendants on July 21. June 15 July 6 July 6 NONE NONE NONE Date Offered/Set Set for July 23; cancelled by Defendants on July 21 without explanation; no new date offered yet. NONE NONE NONE

Werner Brandt Desmond Harris Laura Sweetman

As the chart shows, although Oracle requested these witnesses in June or early July (and Defendants agreed in April to provide additional deposition time with Mr. Brandt), Defendants have failed to offer dates. While it is true that both Parties have many discovery obligations ­ since April, Oracle has responded or supplemented its responses to 122 interrogatories, produced 51 custodians' documents (comprising 5.5 GB of data) and 533 CDs of software, defended 17 depositions of Oracle witnesses, and scheduled 11 more ­ Defendants' delay in providing dates is impacting Oracle's ability to complete these depositions by the close of fact discovery and in time for their inclusion in expert reports. In particular, Oracle was surprised when Defendants 7
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unilaterally, and without explanation, cancelled Scott Trainor's deposition two days before it was to take place. Mr. Trainor, a former PeopleSoft attorney now working for SAP's legal department, is a crucial witness, and the last-minute cancellation (and subsequent failure to offer new dates) is troubling. So too is Defendants' position ­ told to Oracle for the first time last week ­ that key Board member and CFO Werner Brandt will not testify until November, perhaps less than a week before Oracle's damages report is due. Oracle asks for the Court to order Defendants to offer September dates for these witnesses; if Defendants are unable to provide September dates for Ms. Sweetman, Oracle asks that they agree that her deposition take place shortly before or after Gerd Oswald's October 27 deposition in London, to alleviate both Parties' travel burdens. Defendants' recitation, below, about witnesses they requested on May 13 is inaccurate in two respects. First, one of the two dates offered on July 7 was an alternate date for one witness, for whom Oracle had already offered a far earlier date that Defendants had rejected. Second, as Defendants know, the lone witness for whom Oracle has not offered a date is a former Oracle employee who resides in Germany. Oracle suggested to Defendants that the Parties consolidate their travels by scheduling all German depositions together; therefore, Oracle will encourage its former employee to agree to appear for his deposition once Defendants provide a date and location for Mr. Brandt's deposition. Since Defendants forced Oracle to reschedule certain customer depositions last May because of Defendants' counsel's schedule, Defendants must understand the need for cooperation. As for customer depositions, which Defendants refer to below, Oracle has promptly cooperated when Defendants have provided potential dates for such depositions in the past and will continue to do so. Despite Oracle's requests, Defendants have not yet told Oracle which customers, in which locations, they intend to notice for deposition, which impacts Oracle's ability to confirm its counsel's availability. Defendants' Position: As noted in Oracle's chart above, Defendants have offered dates for all but four requested witnesses: Laura Sweetman, Desmond Harris, Scott Trainor and Werner Brandt. Ms. Sweetman, a former TN executive, is a resident of England and has engaged her own counsel. Defendants have been in communication with Ms. Sweetman's counsel on several 8
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occasions and before the discovery conference hope to provide additional information to Oracle regarding Ms. Sweetman's response to Oracle request to depose her. Mr. Harris is a former TN employee that is not currently represented by outside counsel. Defendants have been unable to contact him by phone or otherwise. Defendants are continuing their efforts to contact him (including having sent him a certified letter indicating that if he does not return Defendants' counsel's calls, then Oracle will subpoena him directly) and hope to be able to provide additional information to Oracle regarding Mr. Harris before the discovery conference. Scott Trainor is an in-house lawyer at SAP and former in-house lawyer at PeopleSoft. His deposition was originally scheduled and then cancelled for reasons that implicate the attorney-client privilege. Defendants advised Oracle of that fact. Mr. Trainor now has separate counsel and Defendants are working with Mr. Trainor and his counsel to select a mutually convenient date on which to reschedule his deposition and hope to provide proposed dates to Oracle before the discovery conference. Mr. Brandt is the CFO and an executive board member of SAP, AG and has already been deposed once in this case. Defendants agreed to collect additional custodian documents from Mr. Brandt in Germany and allow Oracle to depose Mr. Brandt again on the Siebel claims. Defendants informed Plaintiffs that due to the additional document collection, which is necessarily complicated by German privacy laws, the volume of the data, the "21-day agreement" (there must be at least 21 days between a custodian's document production and that custodian's deposition), and Mr. Brandt's quarter-end obligations as CFO, Mr. Brandt is not available for deposition until early November. Defendants hope to provide a definitive date and location for Mr. Brandt's deposition prior to the discovery conference. Defendants have been cooperative in scheduling depositions. For example, when Oracle has requested earlier dates that were workable for the witness and all counsel, Defendants have complied with Oracle's requests. Moreover, what Oracle's chart does not show is that Oracle has taken a similar length of time to offer deposition dates in response to Defendants' requests and has required similar lead times. For example, on May 13 Defendants requested dates for eight witnesses. On June 18 and 19, Oracle responded with dates in July, August, and September for four witnesses; on July 7, Oracle responded with dates in August and September for two other 9
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witnesses; on August 17, Oracle responded with a date in mid-October for one witness; and Oracle has yet to provide dates for the remaining witness. Also, Defendants have a significant number of deposition hours remaining and intend to use many of those hours deposing certain TN customers. Defendants have proposed dates in September for two customer depositions and are waiting for Oracle's response. Defendants have advised Oracle that Defendants intend to take numerous customer depositions between now and the close of fact discovery and thus need Oracle's ongoing cooperation in getting those dates scheduled. If the Court offers any guidance at the discovery conference regarding deposition scheduling, then the TN customer depositions should be taken into account. IV. Updating Interrogatory Responses with Siebel Information

Oracle's Position: As part of the Parties' joint stipulation to amend the case schedule, which Judge Hamilton signed on June 11, the Parties agreed that "each side may identify 20 interrogatory responses that it would like updated in scope consistent with the additional Siebel discovery permitted or required elsewhere in this Order." Docket Item 325 at 6:21-24. This provision was necessary to ensure the Parties had sufficient written discovery regarding Siebel, given the fact that both Parties had already used most of their available interrogatories. (The stipulation did not impose any limitation on how the Parties could use those remaining interrogatories.) For example, the stipulation and order's explicit reference to updated responses indicates that the Parties were referring to extant interrogatories, to which Oracle or Defendants had already responded, though without Siebel-related information. Based on this understanding, when selecting its 20 interrogatory responses for Defendants to update, Oracle did not include interrogatories from its Fourth Set,1 as it was not served until May 20, after the Parties had already submitted their stipulation to Judge Hamilton. The Parties could not have believed during negotiations that the 20 updated interrogatories would be drawn from a set not yet served, and the stipulation did not purport to set out all the Siebel discovery available to the Parties. Nor is Defendants' position, below, that Siebel was not part of the case until August 14 supported by the Prior to and independent of the Parties' stipulation to amend the case schedule, each side was entitled to serve 125 interrogatories. Oracle's Fourth Set drew from this number. Defendants have served all 125 interrogatories. 10
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facts. Defendants stipulated to Siebel's inclusion on May 12, and Judge Hamilton made clear on May 28 that she would confirm that stipulation, as reflected in her June 11 order. Moreover, Defendants asked Oracle witnesses about Siebel as early as their second deposition, in August 2008 (because Oracle had referred to Siebel as early as the Second Amended Complaint). Oracle was therefore surprised when Defendants' eventual responses to the Fourth Set refused to provide Siebel-related information where appropriate, contending that Oracle is limited to 20 total interrogatories relating to Siebel in total ­ despite not having been served, much less answered, when the Parties agreed to update 20 existing interrogatory answers. To preserve its rights, on August 12, Oracle provided a revised list of 20 interrogatories to Defendants. However, it believes Defendants are obligated to answer all interrogatories from the Fourth Set, as well as any subsequently-served interrogatories, with Siebel-related information where appropriate. Oracle believes this is a matter the Court can resolve without motion practice. If Defendants must answer the newly-served interrogatories with Siebel-related information, on which Oracle believes no limitation was imposed by the stipulation, then the Court can give that guidance. Alternatively, if the Court agrees with Defendants' interpretation, then Oracle requests leave to withdraw and reserve the interrogatories in question. Regarding the Siebel Rule 30(b)(6) testimony referred to below by Defendants, Oracle has not refused to produce a witness on any reasonable line of inquiry. Defendants noticed Oracle witnesses for 131 sub-topics. Oracle objected to 61, generally on the same grounds it had objected to their PeopleSoft and JDE predecessors and, as to 49 of those 61, because the subtopics were not relevant to Siebel. It then agreed to provide a witness as to 30, designated existing applicable testimony as to another 27, and offered other responsive information as to 13 after meet and confer. It is in these 13 where Oracle suggested another form of production would be appropriate given the number of Siebel customers involved. Defendants' Position: Defendants disagree with Oracle's construction of the parties' agreement and Judge Hamilton's resulting June 11th Order relating to interrogatory discovery for Siebel. One primary purpose of the parties' agreement to permit Oracle to add Siebel into the case was to define the extent of discovery and resulting burdens regarding that new issue. 11
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Moreover, Oracle's position regarding this interrogatory issue is at odds with Oracle's refusal to provide Siebel Rule 30(b)(6) testimony on a number of topics on the ground that there are only 16 customers at issue therefore extensive discovery is not warranted. In other words, Oracle is simultaneously asserting that the discovery it seeks regarding Siebel should be unlimited and the discovery it has to provide to Defendants regarding Siebel should be restricted. The interrogatories Oracle served on May 20th were no different than those previously served in that Defendants responded to them referencing the product lines that were at issue in the case at the time the response was due. The Siebel products were not formally at issue in this case until Friday August 14, 2009, when Judge Hamilton granted Oracle's motion to amend its complaint. Thus, the interrogatories served on May 20th are no different than those Oracle previously served. Defendants agree that if the parties are unable to reach an appropriate compromise before the discovery conference, then this is an issue that can be resolved during the conference without the need for motion practice. V. Admissibility of TN-Authored SAS Records

Oracle's Position: As discussed at the August 4 hearing on Oracle's motion to compel, and as the Court is generally aware, Defendants have repeatedly, and heavily, relied on the SAS database for their responses to interrogatories and requests for production. Unlike substantive discovery responses, this reliance on SAS may not provide Oracle with presumptively admissible evidence. Given the breadth and frequency of Defendants' reliance on SAS, Oracle believes it is therefore appropriate for the Parties to stipulate that all TN-authored documents and statements, and all TN-authored data regarding environments, downloads, and TN's service process in general, contained in SAS, are admissible at trial. Without such a stipulation, Oracle will be unfairly prejudiced by Defendants' choice to rely on SAS in their discovery responses. Further, such a stipulation is to Defendants' advantage as well, since they presumably agree that the TNauthored documents in SAS are authentic and admissible, given their frequent reliance on them in lieu of narrative interrogatory responses, and intend to make use of the same documents themselves at trial.

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At the August 4 hearing, the Court stated, "I do think to the extent this was about admissibility, I think you ought to address that directly by stipulation." Exhibit F (Transcript of August 4 Hearing) at 59:3-5. Oracle will provide Defendants with a proposed stipulation during the week of August 17 and will be prepared to discuss it with the Court at the August 25 Discovery Conference. Defendants' Position: As Defendants' counsel has previously indicated to the Court, Defendants are willing to consider any reasonable proposal by Oracle in this regard and will respond accordingly when and if it is received. Regardless, it is important to note that Oracle's statement above discusses a unilateral stipulation regarding the authenticity and/or admissibility of certain of Defendants' documents. To the extent that any agreement is reached regarding authenticity and/or admissibility in this case, that agreement should be bilateral and consider certain of Oracle's documents as well. VI. Oracle's Compliance with Order on Defendants' Copyright Motion to Compel

Defendants' Position: It has been two months since the Court's June 26 order on Defendants' copyright motion to compel and Oracle still has not provided the supplemental interrogatory response the Court ordered regarding derivative Registered Works. Defendants request that the Court specify a date certain that, given the limited time left for discovery, allows Defendants sufficient time for analysis and follow-up discovery. It is important to note that Oracle has produced additional inter-entity agreements after its June 29 certification (pursuant to this Court's order) that it had produced "all inter-Oracle entity agreements relating to the acquisition, assignment, or transfer of the Registered Works located after a diligent search of all locations at which such materials might plausibly exist." Oracle has characterized the additional agreements it produced after its certification as not being subject to the June 26th order. Defendants disagree that the additional agreements, which include assignment and distribution agreements among Oracle entities similar to those produced previously, are not subject to the order. One of the purposes of the motion and resulting order was to provide certainty as to the universe of applicable agreements. Oracle's continuing production of agreements defeats that 13
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purpose. Moreover, now that Judge Hamilton has permitted Oracle to include additional copyright registrations in this case, Oracle should be given a date certain to produce all responsive documents related to those new registrations. As another example of Oracle's delayed production of documents and information ordered produced by this Court, Oracle has during the past week also produced additional customerspecific financial reports for more than 50 customers after representing in May that its "April 21, 2009 supplemental production of financial reports [pursuant to this Court's April 2 order] included any and all financial reports that could be located in reasonably available databases after an extensive customer-by-customer search." Oracle has indicated that it is continuing to investigate whether there are additional reports that should have been produced as well. Defendants contend that this investigation should have been completed and the supplemental productions made a long time ago. Defendants thus request that the Court set a date certain for Oracle to produce any such reports. With regard to Oracle's statements on Defendants' production of customer-specific reports: (a) Defendants have already produced customer-specific financial reports for all TN customers for which such reports exist, including the Siebel customers recently added to the list; (b) Defendants have responded to Oracle's August 18 inquiry regarding contracts for six TN customers indicating that contracts for three of them were produced several months ago and that no contracts exist for the remaining three; and (c) Defendants' customer-specific reports are largely pre-existing documents -- to the extent any of them are "unreliable," it is a reflection of the available data and not due to any failure by Defendants to supplement. Oracle's Position: Defendants here combine two unrelated issues. First, as to the interrogatory response, the Parties and the Court agreed and understood that supplementing Interrogatory No. 13 per the Court's June 26 order would take a significant amount of time (the newly-added part of that response will be approximately 70 pages). That is why, before even issuing that order, the Court ordered the Parties to meet and confer with respect to Oracle's burden, and is also why the order currently contains no date certain. Oracle has been working diligently to collect, organize, and verify this information to be able to supplement its response 14
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appropriately, and for PeopleSoft and JDE, expects to do so prior to the August 25 Discovery Conference. For Siebel and Oracle's database products (the latter of which Judge Hamilton allowed to be added to Oracle's complaint on August 14, 2009), Oracle is working similarly diligently and will further supplement its response as soon as possible, and in particular, the Parties have agreed that supplementation of prior interrogatories related to Siebel should occur by September 18 and Oracle will meet that deadline. Regardless, Defendants will have these responses with more than ample time for sufficient analysis and follow-up discovery, the need for which they do not attempt to quantify. Oracle has proposed a limited amount of additional discovery for both sides in connection with the database claims, but have not received a response yet regarding that proposal. If necessary, Oracle will seek appropriate relief from Judge Hamilton or this Court. As to the June 26 Order, it specifically is limited to the inter-entity agreements "relating to the acquisition, assignment, or transfer of the Registered Works...." Docket Item 328, ¶ 3. Defendants now imply, but stop short of claiming, that the further inter-entity productions have related to "the acquisition, assignment, or transfer of the Registered Works." The further interentity agreements did not relate to "the acquisition, assignment, or transfer of the Registered Works," and Oracle's certification stands, subject to the inter-entity agreements related to the new amendments. They also say now for the first time that the intent of their copyright motion (as to which the June 26 Order related) was to receive "the universe of applicable agreements." That claim contradicts the language of the June 26 Order itself. Further, not only is that new request vague and overbroad as to what Oracle would be forced to produce in response, but it also fails to take into account the ongoing discovery about the applicable agreements, including ongoing production of Siebel and Database-related agreements. Second, as to Oracle's production of customer-specific financial reports, although that production is essentially complete, under Rule 26(e) Oracle is obligated to and does supplement its discovery responses if it learns new relevant information. Last week's production was such a supplement. Corporate affiliations are not always readily apparent when running such reports. The Parties have been supplementing when such affiliations are identified, often through a 15
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manual review and comparison of documents produced by both Parties. For example, in searching for the corporate history of relevant customer Foot Locker during the pertinent time period, Oracle learned that the entity Venator Group became Foot Locker, and accordingly went back to review, collect, and produce Venator Group's OKI3 report. Both Parties are obligated to make such supplements of their discovery responses, and Defendants have done so as well as Oracle. For example, Oracle believes Defendants should supplement their own customer-specific financial reports, as Defendants have described those reports as "not reliable" and have not produced updated versions since last amending their list of customers. As another example, on August 18, Oracle pointed out six TN customers for whom Defendants have not produced customer contracts, which Defendants should provide in a supplemental production. Given its obligations under Rule 26(e) and its need for Defendants' changing customer information to evaluate its own production, Oracle cannot predict when, if at all, it will learn new information that will require supplementation of its discovery responses. It will continue to timely meet its obligations and expects Defendants to do the same. VII. Supervisory Board Documents

Oracle's Position: At his June 2, 2009 deposition, Hasso Plattner, Chairman of the SAP AG Supervisory Board, referenced two documents that are responsive to Oracle's document requests but have not been produced by Defendants. First, Mr. Plattner described a Supervisory Board meeting, at which the SAP AG Executive Board presented the TN acquisition opportunity to the Supervisory Board and at which Mr. Plattner asked the Executive Board if TN was "supported by a legal framework" and "whether [TN] has the right to access source code." Exhibit E at 17:25-18:11 (Plattner Depo.). This meeting therefore involved topics plainly relevant to the case, but Defendants did not produce any corresponding Supervisory Board meeting minutes from it. Second, Mr. Plattner testified that a one-page TN report was presented at the same Supervisory Board meeting. This document also does not appear in Defendants' production. Id. at 13:1-7; 73:2-74:3; 75:23-76:9. Oracle inquired about these documents soon after Mr. Plattner's deposition, but Defendants stated that they were unable to locate any such documents. However, after reviewing 16
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the transcript for accuracy, Mr. Plattner did not change his testimony. This creates a discrepancy between the Chairman's sworn testimony and the documents collected by Defendants, which Defendants have been unable to explain in meet and confer. Oracle requests that Defendants be required either to conduct a more exhaustive search, or provide a detailed description of why they are unable to produce documents their Chairman has said existed and that he reviewed and believed were still available. Since Defendants, below, do not claim that any such documents are archived or otherwise inaccessible, such a description should state that the documents referenced by Mr. Plattner have been lost or destroyed, if that is the case. Whether through further investigation or description, Oracle needs confirmation that Defendants' counsel have discussed the matter directly with Mr. Plattner as part of the effort to locate these critical documents; a statement from a custodian of the minutes, as offered by Defendants below, is insufficient without certification that Mr. Plattner has been directly consulted. Defendants' Position: Defendants have already informed Oracle that Defendants have attempted to determine whether the document(s) noted above ever existed, and have been unable to make that determination and/or locate such document(s). If necessary, Defendants are willing to produce a declaration from one of the custodians of the Supervisory Board meeting minutes indicating that a reasonable search has been made and that the above-cited document(s) referenced in Mr. Plattner's testimony, to the extent they ever existed, have not been located.

DATED: August 18, 2009

BINGHAM McCUTCHEN LLP

By:

/s/ Bree Hann Bree Hann Attorneys for Plaintiffs Oracle USA, Inc., Oracle International Corporation, and Oracle EMEA Limited

In accordance with General Order No. 45, Rule X, the above signatory attests that concurrence in the filing of this document has been obtained from the signatory below.

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DATED: August 18, 2009

JONES DAY

By:

/s/ Jason McDonell Attorneys for Defendants SAP AG, SAP AMERICA, INC., and TOMORROWNOW, INC.

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JOINT DISC. CONF. STATEMENT Case No. 07-CV-1658 PJH (EDL)