Oracle Corporation et al v. SAP AG et al

Filing 570

MOTION to Modify the Protective Order and to Compel Deposition Testimony and Further Responses to Requests For Admissions filed by Oracle EMEA Limited, Oracle International Corporation, Oracle USA Inc., Siebel Systems, Inc.. Motion Hearing set for 1/26/2010 09:00 AM in Courtroom E, 15th Floor, San Francisco. (Attachments: # 1 Proposed Order)(Russell, Chad) (Filed on 12/11/2009) Modified on 12/16/2009 (vlk, COURT STAFF).

Oracle Corporation et al v. SAP AG et al

Doc. 570

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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: 415.393.2286 [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: 650.506.7144 [e-mail] [e-mail] Attorneys for Plaintiffs Oracle USA, Inc., Oracle International Corporation, Oracle EMEA Limited, and Siebel Systems, Inc. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA OAKLAND DIVISION

ORACLE USA, INC., et al., v. Plaintiffs,

No. 07-CV-01658 PJH (EDL) ORACLE'S MOTION TO MODIFY THE PROTECTIVE ORDER AND TO COMPEL DEPOSITION TESTIMONY AND FURTHER RESPONSES TO REQUESTS FOR ADMISSIONS Date: Time: Place: Judge: January 26, 2010 9:00 a.m. E, 15th Floor Hon. Elizabeth D. Laporte

SAP AG, et al., Defendants.

MEMORANDUM IN SUPPORT OF ORACLE'S MOTION TO MODIFY THE PROTECTIVE ORDER AND TO COMPEL, CASE NO. 07-CV-01658 PJH (EDL)
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TABLE OF CONTENTS Page NOTICE OF MOTION AND MOTION ....................................................................................... 1 RELIEF SOUGHT ......................................................................................................................... 1 MEMORANDUM OF POINTS AND AUTHORITIES ............................................................... 2 I. INTRODUCTION ............................................................................................................. 2 II. THE COURT SHOULD MODIFY THE PROTECTIVE ORDER................................... 4 A. Ninth Circuit Case Law Strongly Favors Modification ......................................... 4 B. Modification Of The Protective Order Is Appropriate Here.................................. 6 III. THE COURT SHOULD ORDER ADDITIONAL DEPOSITION TIME FOR DEFENDANT WITNESS SCOTT TRAINOR ................................................................. 9 A. Trainor's Deposition, The Un-Clawed Back Document, And The Court's Guidance At The Discovery Conference ............................................................... 9 B. Defendants' Numerous Instructions Not To Answer Were Improper ................. 13 IV. THE COURT SHOULD ORDER FURTHER RESPONSES TO ORACLE'S REQUESTS FOR ADMISSION, OR ALTERNATIVELY DEEM THEM ADMITTED..................................................................................................................... 19 A. RFAs, Second Set, Nos. 496-680, Third Set, Nos. 13-50.................................... 19 B. RFAs, Set No. 3, Nos. 13-50, Set No. 5, 4-63, 130-62........................................ 27 V. CONCLUSION ................................................................................................................ 30

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TABLE OF AUTHORITIES Page

Adolph Coors Co. v. American Insurance Co., 164 F.R.D. 507 (D. Colo. 1993) Beckman Indus., Inc. v. International Ins. Co., 966 F.2d 470 (9th Cir. 1992) CBS Interactive, Inc. v. Etilize, Inc., 257 F.R.D. 195 (N.D. Cal. 2009) Conoco Inc. v. United States Dep't. of Justice, 687 F.2d 724 (3rd Cir.1982) Foltz v. State Farm Mut. Auto. Ins. Co., 331 F.3d 1122 (9th Cir. 2003) In re Dynamic Random Access Memory Antitrust Litig., No. 02-1486, 2008 WL 4191780 (N.D. Cal. Sept. 10, 2008) (Hamilton, J.) In re Grand Jury Investigation, 974 F.2d 1068 (9th Cir. 1992) In re Grand Jury Subpoena (Mark Tork/Torrf Environmental Management), 357 F.3d 900 (9th Cir. 2004) In re Jenoptik AG, 109 F.3d 721 (Fed. Cir. 1997) United States v. ChevronTexaco Corp., 241 F. Supp. 2d 1065 (N.D. Cal. 2002) Verizon California, Inc. v. Ronald A. Katz Tech. Licensing, L.P., 214 F.R.D. 583 (C.D. Cal. 2003) Weil v. Investment/Indicators, Research and Management, Inc., 647 F.2d 18 (9th Cir. 1981) RULES California Rule of Professional Conduct 3-310(E) Fed. R. Civ. P. 26 Fed. R. Civ. P. 36 ii

22 4, 5 5, 8 10 2, 4, 7, 8 5 13 13 6 11, 16 6, 8 10

12, 13, 16 7 passim

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1

NOTICE OF MOTION AND MOTION PLEASE TAKE NOTICE THAT on January 26, 2010 at 9:00 a.m., or as soon thereafter as the matter maybe heard, in the United States District Court, Northern District of California, located at 450 Golden Gate Ave., San Francisco, CA, Courtroom E, 15th Floor, before the Hon. Elizabeth D. Laporte, Plaintiffs Oracle USA, Inc., Oracle International Corporation, Oracle EMEA Limited, and Siebel Systems, Inc. (collectively, "Oracle" or "Plaintiffs") will move for a modification of the protective order and for an order compelling Defendants to provide deposition testimony and further responses to requests for admission, as specified in the accompanying memorandum of points and authorities. This motion is based on this notice of motion and motion, the accompanying memorandum of points and authorities, the accompanying declaration of Chad Russell and attached exhibits, and upon such other matters presented to the Court at the time of the hearing. RELIEF SOUGHT Pursuant to Fed. R. Civ. Proc. 26 and 37,1 Plaintiffs seek (1) a modification of the protective order in this action to allow Discovery Material to be used in litigation between the parties in Europe; (2) an order compelling Defendants to produce Scott Trainor for an additional half day of deposition and overruling certain instructions not to testify, as enumerated in Plaintiffs' accompanying memorandum of points and authorities; (3) an order requiring Defendants to produce two documents, listed in the accompanying memorandum of points and authorities, for in camera inspection by the Court to determine if Defendants' redactions were proper; and (4) an order compelling supplemental responses to Plaintiffs' Requests for Admission Set No. 2, Nos. 496-680, Set No. 3, Nos. 13-50, and Set No. 5, Nos. 4-63, 130-62, or alternatively deeming those requests for admission admitted.

Pursuant to Fed. R. Civ. Proc. 37(a)(1) and Civil L.R. 37-1, Oracle's counsel affirms that they have conferred with opposing counsel in a good faith effort to reach agreement about these matters. See Declaration of Chad Russell in Support of Oracle's Motion to Modify the Protective Order and to Compel Deposition Testimony and Further Responses to Requests for Admissions ("Russell Decl.") at ¶¶ 2-13. 1
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MEMORANDUM OF POINTS AND AUTHORITIES INTRODUCTION Pursuant to the Court's instructions at the November 17, 2009 discovery conference, Oracle submits this memorandum of points and authorities in support of their motion to modify the protective order and to compel further deposition testimony and responses to requests for admissions. Oracle's motion covers three issues: Modifying the protective order. In December 2008, Judge Hamilton dismissed J.D. Edwards Europe Ltd. ("JDEE") as a Plaintiff in this case, holding that its copyright infringement claims were extraterritorial and thus could not be brought in a U.S. court. See Order Granting Motion to Dismiss in Part and Denying It in Part (Dec. 15, 2008) (Dkt. 224) at 56. JDEE's copyright infringement claims were based on the same basic set of facts as the other Plaintiffs' infringement claims that remain in this case, see Third Amended Complaint ¶ 38 (Dkt. 182); the only difference is the Court's determination that for JDEE, certain of the infringement at issue occurred outside the U.S. Oracle now moves to amend the protective order to allow it to use discovery materials obtained in this action to sue Defendants in Europe, where these non-U.S. claims may properly be asserted. Ninth Circuit case law "strongly favors access to discovery materials to meet the needs of parties engaged in collateral litigation." Foltz v. State Farm Mut. Auto. Ins. Co., 331 F.3d 1122, 1131 (9th Cir. 2003). "Allowing the fruits of one litigation to facilitate preparation in other cases advances the interests of judicial economy by avoiding the wasteful duplication of discovery." Id. Here, the discovery taken in this action is directly relevant to the claims Oracle may assert against Defendants in Europe, and any confidentiality concerns Defendants may have can be accommodated by maintaining the non-disclosure and confidentiality obligations in the existing protective order. Under Ninth Circuit precedent, this motion should be granted and the protective order modified. Scope of Defendant Witness Scott Trainor's Testimony. Oracle also moves to reopen the deposition of Defendant witness Scott Trainor for an additional half day of testimony. As Oracle explained at the November discovery conference, Defendants improperly instructed 2
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Trainor not to testify on numerous occasions based on meritless privilege and work product claims. Contrary to the Court's guidance at the discovery conference, Defendants have continued to refuse to withdraw their instructions or make Trainor available for further deposition, necessitating this motion to compel. Oracle also seeks in camera review of two Trainor documents to determine whether Defendants have redacted them properly.2 Requests for Admission. Oracle propounded a series of Requests for Admission ("RFAs") to Defendants related to the numerous fixes and updates that Defendant TomorrowNow, Inc. ("SAP TN") generated for customers using Oracle's software. These RFAs were necessary because Oracle's earlier attempts to negotiate a stipulation concerning SAP TN's general business process based on Defendants' 30(b)(6) deposition testimony were not successful. As the Court is aware, Oracle alleges that SAP TN provided thousands of fixes and updates to customers that infringed Oracle's copyrights, among other claims. Oracle had sought, and the Court had encouraged the parties to develop, a stipulation concerning the process by which SAP TN developed those fixes and updates to streamline the presentation of evidence at trial. SAP TN's unwillingness to enter into an appropriate stipulation forced Oracle to seek specific admissions about the steps involved in generating specific fixes and updates, again in an effort to facilitate the presentation of evidence concerning SAP TN's business model. However, Defendants refused to answer nearly all of these RFAs, claiming that terms such as "copy," "fix," "update," and "generic environment," though defined in the RFAs and used regularly by Defendants' employees both on the job and in depositions, were too vague to understand. Defendants denied other RFAs concerning SAP TN's business processes on the ground that the necessary information was not "readily obtainable." However, when Oracle
2

Oracle has also contended that Defendant witness Georg Schraeder's testimony as a Rule 30(b)(6) witness was inadequate, as the witness lacked adequate information to testify on behalf of SAP concerning the subjects in the Rule 30(b)(6) deposition notice concerning SAP's knowledge of SAP TN's use of Oracle database software. In the parties' meet and confer, Oracle offered to accept written responses to a list of questions that Schraeder was unable to answer. Defendants agreed to provide those responses by December 23, 2009. Accordingly, at this time Oracle does not raise Schraeder's deposition in this motion to compel. However, Oracle reserves the right to move to compel if Defendants' written responses are inadequate. 3
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asked Defendants to then separately admit this same information was not "readily obtainable" ­ to close Defendants off from introducing evidence at trial which they have refused to provide now ­ Defendants denied those requests as well. Defendants have essentially refused to provide Oracle with meaningful written discovery on how SAP TN developed the fixes and updates it delivered to customers based on unsupportable and contradictory objections. Either the information is readily obtainable or it is not; Defendants cannot have it both ways. The Court should order Defendants to amend their responses to these RFAs or deem them admitted. Fed. R. Civ. P. 36(a)(4). II. THE COURT SHOULD MODIFY THE PROTECTIVE ORDER A. Ninth Circuit Case Law Strongly Favors Modification At the November 17, 2009 discovery conference, the Court indicated it was inclined to grant Oracle's request to modify the protective order. See Russell Decl., ¶ 3 & Ex. A at 68:4-6 ("I would think of granting your request. In other words, I ­ I don't really see any harm to letting this be used."). Such a ruling would accord with Ninth Circuit precedent, which "strongly favors access to discovery materials to meet the needs of parties engaged in collateral litigation." Foltz, 331 F.3d at 1131. Indeed, under Ninth Circuit law, "[w]here reasonable restrictions on collateral disclosure will continue to protect an affected party's legitimate interests in privacy," a request to modify a protective order to allow discovery to be used in collateral litigation "should generally be granted." Id. (citing Beckman Indus., Inc. v. International Ins. Co., 966 F.2d 470, 475 (9th Cir. 1992)). Foltz sets forth a two-step inquiry for courts in deciding whether to modify a protective order to allow discovery materials to be used in collateral litigation. First, the party seeking the modification "must demonstrate the relevance of the protected discovery to the collateral proceedings and its general discoverability therein." Id. at 1132. That means that "the court that entered the protective order should satisfy itself that the protected discovery is sufficiently relevant to the collateral litigation that a substantial amount of duplicative discovery will be avoided by modifying the protective order." Id. The relevance determination does not require a ruling by a European court that the discovery in this action would be relevant to a 4
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lawsuit in Europe: "No circuits require the collateral litigant to obtain a relevance determination from the court overseeing the collateral litigation prior to requesting the modification of a protective order from the court that issued the order." Id. Rather, once the district court makes "only a rough estimate of relevance," the "only issue it determines is whether the protective order will bar . . . access to the discovery already conducted." Id. at 1132-33. Second, the district court "must consider other factors in addition to the relevance of the protected discovery to the collateral litigation. In particular, it must weigh the countervailing reliance interest of the party opposing modification against the policy of avoiding duplicative discovery." Id. "However, `[r]eliance will be less with a blanket [protective] order, because it is by nature overinclusive." Id. (quoting Beckman, 966 F.2d at 475). "[A] party seeking protection of the court via a blanket protective order typically does not make the `good cause' showing required by Rule 26(c) with respect to any particular document. Thus, reliance on a blanket protective order . . . without more, will not justify a refusal to modify." Id. Instead, "`[a]ny legitimate interest . . . in continued secrecy as against the public at large can be accommodated'" by placing in the modified protective order "`the same restrictions on use and disclosure contained in the original protective order.'" Id. (quoting United Nuclear Corp. v. Cranford Ins. Co., 905 F.2d 1424, 1428 (10th Cir. 1990)). Courts applying Ninth Circuit law have liberally modified protective orders to allow discovery materials to be used in collateral proceedings, whether by parties to the original case or by parties to the collateral proceeding that intervened in the original case to seek modification of the protective order. E.g., In re Dynamic Random Access Memory Antitrust Litig., No. 02-1486, 2008 WL 4191780, *2-3 (N.D. Cal. Sept. 10, 2008) (Hamilton, J.) (modifying protective order so that the prohibited "use" of discovery materials in California antitrust actions would not prohibit use of those materials by plaintiffs in two securities cases filed in Idaho because "the same illegal price-fixing conspiracy that is at the center of the DRAM MDL litigation [is] squarely at the heart of the collateral action complaints"); CBS Interactive, Inc. v. Etilize, Inc., 257 F.R.D. 195, 205-06 (N.D. Cal. 2009) (modifying protective order to allow plaintiff to use discovery obtained in federal patent infringement case to pursue trade 5
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secret misappropriation claims against the same defendant in state court); Verizon California, Inc. v. Ronald A. Katz Tech. Licensing, L.P., 214 F.R.D. 583 (C.D. Cal. 2003). The Federal Circuit's decision in In re Jenoptik AG, 109 F.3d 721 (Fed. Cir. 1997), in which the court applied Ninth Circuit law, is illustrative. Plaintiff Therma-Wave sued Defendant Jenoptik in California for patent infringement. Id. at 722. In addition, "[i]n Germany, Therma-Wave brought an action for infringement of a German counterpart of one of the patents at issue in the California action." Therma-Wave requested the district court in the California action to modify the protective order to allow deposition testimony obtained in discovery to be used in the German court. The district court granted the motion. Id. Jenoptik then petitioned the Federal Court for a writ of mandamus, and the Court of Appeals applied Ninth Circuit law to review the propriety of the district court's order. Id. at 723 ("The Ninth Circuit, whose law we applied in this petition, has considered whether it is appropriate for a district court to modify a protective order to permit confidential materials to be used in a different proceeding."). The Federal Circuit denied the writ petition, noting that "`Ninth Circuit precedent strongly favors disclosure to meet the needs of parties in pending litigation.'" Id. (quoting Beckman, 966 F.2d at 475). Because the plaintiff agreed to be bound by the disclosure restrictions in the protective order concerning the discovery to be used in the German court, and the district court requested that the German court "continue to treat the documents as confidential," "the district court did all that it could." Id. B. Modification Of The Protective Order Is Appropriate Here Under these precedents, the Court should modify the protective order to allow the parties to use discovery materials produced in this case in litigation between the parties in Europe. First, the relevance requirement is plainly satisfied. As the Court is aware, Oracle originally attempted to assert in this case some of the claims it must now bring in Europe. Specifically, Oracle's Third Amended Complaint added J.D. Edwards Europe Ltd. ("JDEE") as a plaintiff, alleging that "JDEE is a nonresident Irish private limited company" that "licenses certain intellectual property, including enterprise software programs used around the world." Third Amended Complaint ¶ 38 (Dkt. 182). JDEE joined in the cause of action for copyright 6
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infringement, alleging all the same facts the other Plaintiffs did. Id. ¶¶ 147-62. The Court dismissed JDEE from the case on the ground that "the only right in U.S. copyrights that JDEE possesses is the right to distribute some of the software products outside of the U.S.," so "the only infringement that could have occurred as to JDEE would be infringement of its right to distribute extraterritorially." Order Granting Motion to Dismiss in Part and Denying It in Part (Dec. 15, 2008) (Dkt. 224) at 6. Because "[f]ederal copyright laws do not have extraterritorial application," the Court reasoned that it lacked jurisdiction over JDEE's claim. Id. at 5-6. JDEE can cure this jurisdictional defect by refiling its claims in Europe under European law. It remains true, however, that the facts giving rise to those claims are the same, or heavily overlap with, the facts giving rise to the other Plaintiffs' claims in this case. Oracle has broadly alleged "a conspiracy, led by German software conglomerate SAP AG, to engage in and cover-up corporate theft of Oracle intellectual property on the grandest scale." Fourth Amended Complaint ¶ 1 (Dkt. 418). The only distinction the Court drew between JDEE and the other Plaintiffs concerned where the specific acts of infringement occurred ­ inside or outside the U.S. Given the near identity of JDEE's claims to the ones presently asserted in this case, it is clear that "the protected discovery is sufficiently relevant to the collateral litigation that a substantial amount of duplicative discovery will be avoided by modifying the protective order." Foltz, 331 F.3d at 1132. Second, Defendants' reliance interest in the current prohibition in the protective order from using discovery materials for collateral litigation is minimal because the order is a "blanket" protective order in the sense in which the Ninth Circuit uses that term. Under the protective order in this case, the producing party designates discovery material as confidential or highly confidential and does not have to file a motion pursuant to Federal Rule of Civil Procedure 26(c) on a document-by-document basis to have the Court determine that the material is confidential. Protective Order ¶ 6 (June 7, 2007) (Dkt. 32). To be sure, the protective order prescribes standards the parties are to follow in making their confidentiality designations, see id. ¶¶ 3-4, and indiscriminate designations are inconsistent with the terms of the order. However, under Ninth Circuit law, this is still considered a blanket protective order because the "party 7
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seeking the protection of the court . . . does not make the `good cause' showing required by Rule 26(c) with respect to any particular document." Foltz, 331 F.3d at 1133. "[T]he protective order allows a party or a non-party producing or disclosing a particular document to initially determine whether such item is confidential without court intervention. As such, the protective order is akin to a blanket protective order . . . `as the party resisting disclosure generally has not made a particularized showing of good cause with respect to any individual document.'" Verizon California, 214 F.R.D. at 586 (quoting San Jose Mercury News, Inc. v. United States District Court ­ Northern District, 187 F.3d 1096, 1103 (9th Cir. 1999)). Indeed, the "blanket" nature of the protective order here is evidenced by the hundreds of thousands of pages of SAP TN documents and testimony which Defendants continue to maintain are "confidential" or "highly confidential," even though SAP TN is no longer in business. The protective order in this case is therefore similar to the ones in CBS Interactive, 257 F.R.D. at 200, and Verizon California, 214 F.R.D. at 584, which likewise allowed the parties to designate certain discovery materials as confidential or highly confidential. In both cases the courts deemed those to be blanket protective orders under Ninth Circuit law because the parties ­ not the Court ­ made the initial confidentiality designations. And in both cases the courts found that the reliance interests were too minimal to oppose modification to allow discovery materials to be used in collateral litigation. CBS Interactive, 257 F.R.D. at 206 ("Mere reliance on a blanket protective order does not justify a refusal to modify it when a reasonable request for disclosure has been made."); Verizon California, 214 F.R.D. at 586. Moreover, Defendants' reliance interest, minimal as it is, can be easily accommodated. The Ninth Circuit has instructed that the disclosing party's privacy interests can be accommodated by placing in the modified protective order "`the same restrictions on use and disclosure contained in the original protective order.'" Foltz, 331 F.3d at 1133 (quoting United Nuclear Corp., 905 F.2d at 1428). Oracle's proposed order granting the present motion does exactly that. The proposed order states: "For purposes of paragraphs 8, 9, 10, 11, 12 and 14 of the June 7, 2007 Protective Order, the terms `this Action' and `this litigation' shall include litigation in Europe between the Parties or their affiliates arising out of similar factual 8
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allegations." [Proposed] Order Granting Oracle's Motion to Modify the Protective Order and to Compel Deposition Testimony and Responses to Requests for Admissions, submitted herewith. That modification simply alters the permitted uses of Discovery Material to cover European litigation while preserving all the other restrictions on use and disclosure that are in the protective order as it exists now, satisfying Ninth Circuit precedent. Accordingly, the Court should modify the protective order to allow Oracle to use discovery materials in related European litigation between the parties. III. THE COURT SHOULD ORDER ADDITIONAL DEPOSITION TIME FOR DEFENDANT WITNESS SCOTT TRAINOR A. Trainor's Deposition, The Un-Clawed Back Document, And The Court's Guidance At The Discovery Conference On October 13, 2009, Oracle deposed Scott Trainor, former in-house counsel for PeopleSoft and current in-house counsel for SAP. See Russell Decl., ¶ 14 & Ex. H at 9:10-18, 22:15-23:4, 24:11-26:21 (describing his job history). While at SAP, Trainor drafted SAP TN's form support services agreement and negotiated contracts between SAP TN and its customers. Id. at 17:18-21, 60:8-10; 65:16-66:4; 71:23-72:18; Russell Decl., ¶ 27 & Ex. U.3 It appears that SAP was using Trainor ­ who had engaged in confidential and privileged communications and analyses regarding the meaning of the PeopleSoft license agreements while he was at PeopleSoft ­ to persuade customers that handing over copies of their PeopleSoft software to SAP TN did not violate their PeopleSoft license agreements. See, e.g., Russell Decl., ¶ 24 & Ex. R at SAPOR00682292 (Section 9A) (Trainor telling customer Waste Management, "Our rights to use the PeopleSoft software come entirely by way of the WM license with PeopleSoft."). Accordingly, Oracle attempted to depose Trainor about how he negotiated contract terms with prospective
3

Defendants clawed-back and redacted the document cited here ­ TN-OR00852363 ­ after Trainor's deposition, on October 21, 2009. Russell Decl., ¶ 5 & Ex. C. The unredacted portions show Trainor on an email about SAP TN's "AGREEMENT DRAFT FOR REVIEW." Id. Oracle believes the redactions are improper. However, Oracle does not have access to clawedback and redacted portions of the document and is not permitted to have taken notes or to reference the substance in any way per Court order. Oracle therefore requests that the Court require Defendants to provide it in unredacted form for in camera review to determine if the redactions are proper given Trainor's other testimony cited in this Motion. 9
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SAP TN customers and how he maintained his ethical obligations to PeopleSoft. During the deposition, two privilege-related issues arose, which Oracle described to the Court in the last discovery conference statement. See Joint Discovery Conference Statement (Nov. 12, 2009) (Dkt. 548) at 23-25. For both of these issues, Defendants have the burden to show that the privileges they are claiming apply. Weil v. Investment/Indicators, Research and Management, Inc., 647 F.2d 18, 25 (9th Cir. 1981) ("As with all evidentiary privileges, the burden of proving that the attorney-client privilege applies rests not with the party contesting the privilege, but with the party asserting it."); Conoco Inc. v. United States Dep't. of Justice, 687 F.2d 724, 730 (3rd Cir.1982) ("The burden of demonstrating that a document is protected as work-product rests with the party asserting the doctrine."). The first privilege issue concerned Exhibit 1683, an email exchange with Trainor concerning SAP TN's ability to obtain PeopleSoft and J.D. Edwards software from customers through the customers' license agreements. When Oracle introduced Exhibit 1683 at the deposition, Defendants clawed it back and prevented further questioning about the document. Russell Decl., ¶ 14 & Ex. H at 151:25-152:7. Then, a month later, pursuant to a letter from Oracle calling the clawback improper, Defendants returned Exhibit 1683 ­ undoing the clawback ­ but they refused to make Trainor available for additional questions about the exhibit. Russell Decl., ¶ 7 & Ex. E. Defendants asserted: "[W]e believe that a further deposition of Mr. Trainor is not warranted. There is virtually no likelihood that any material additional testimony would be elicited in such a deposition." Id. 4 Defendants' position is unsupportable. They blocked the questioning of an important witness by invoking the attorney-client privilege, later determined (again) the document at issue was not privileged, but are still trying to block the questioning, now without any basis at all. Moreover, Defendants' assertion that Exhibit 1683 does not warrant additional
4

Subsequently, Defendants agreed by email to produce Trainor again "concerning Ex. 1683," but only if Oracle would waive its other issues related to Trainor's deposition. Russell Decl., ¶ 10 & Ex. G. That is an unreasonable condition to attach to allowing deposition testimony that Defendants are plainly obligated to provide. 10
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questions is untrue. The Exhibit (which has now been produced again) is an email chain from SAP TN's vice president of sales, Bob Geib, who asked an SAP employee, Mia Lee, to have "a discussion" with a prospective customer "about the `rights' that a customer has under their PeopleSoft/J.D. Edwards agreement that ALLOWS them to have TomorrowNow perform services on JDE." Russell Decl., ¶ 25 & Ex. S at SAP-OR00677720 (all caps in original). When Lee replied that she was "coming into this midstream," Geib told her "you'll probably want to do a short briefing w/Scott Trainor to understand the positioning. It's not really a `contract' discussion from a negotiations perspective, but a `based upon my experience' conversation where we address the rights and terms of the J.D. Edwards license that makes TN consulting possible." Id. at SAP-OR00677719. Lee then followed up by forwarding the email exchange to Trainor, in a passage that Defendants have redacted. Id.5 However, the non-redacted parts of the email chain, quoted in the preceding sentences, make clear that it relates precisely to Oracle's concern that Trainor was using his experience as a former PeopleSoft employee to opine (adversely to PeopleSoft's successor's interests) on what the license agreements allowed. The second privilege issue that arose at Trainor's deposition was that Defendants gave a series of improper instructions not to testify that have no basis in the attorney-client privilege or attorney work product doctrine. Oracle provided an example of one such improper instruction in the last discovery conference statement. See Joint Discovery Conference Statement (Nov. 12, 2009) (Dkt. 548) at 24: Q. Let's turn to page 5 of the document. Under -- and this is -- actually, if you go back to page 4, you'll see the title is, paragraph 9, "Indemnity." A. Yes. Q. And that goes on for several paragraphs. Do you see that? A. I do.

This is the second document which Oracle asks that Defendants provide in unredacted form for in camera review by the Court. Given the unredacted portion of the document, the history of production of the document, and the burden on Defendants to prove privilege, such review is appropriate. For a full explanation of the history of the production of this document, see the Russell Decl. at ¶ 8. As a legal matter, the unredacted content of the document indicates that Lee was asking Trainor for business advice, not legal advice. See United States v. ChevronTexaco Corp., 241 F. Supp. 2d 1065, 1075-76 (N.D. Cal. 2002). 11
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Q. There's a bracket right after the title which begins page 5 of the agreement: We do not have access to the terms of the PeopleSoft license. We therefore need this protection. Were those your words? A. I don't know. Q. Were they SAP or TomorrowNow words? A. I -MR. McDONELL: Lack of foundation, calls for speculation. Don't disclose privileged information. THE WITNESS: I can't tell from this redline who said it. MR. PICKETT: Q. Well, this was a redline that you sent to their outside counsel for purposes of negotiating the agreement. True? A. Yes. ... Q. Now, is it true that you did not have access to the terms of PeopleSoft licenses? A. Yes. Q. You had worked with them for some time when you worked as an attorney for PeopleSoft. True? A. True. Q. And so did you compartmentalize that -- your experience? MR. McDONELL: Calls for mental impressions of an attorney. I'll instruct you not to answer on work product grounds. MR. PICKETT: Q. Did you take any steps to avoid relying on your memory of the PeopleSoft licenses in negotiating the terms of these licenses with TomorrowNow customers? MR. McDONELL: Same objection, same instruction not to answer. Russell Decl., ¶ 14 & Ex. H at 111:19-112:19, 113:6-23. Defendants' privilege instructions were improper. As a former in-house attorney for PeopleSoft, Trainor was ethically obligated not to use confidential information he gained in the course of his representation of PeopleSoft adversely to PeopleSoft. California Rule of Professional Conduct 3-310(E) states: "A member shall not, without the informed written consent of the client or former client, accept employment adverse to the client or former client where, by reason of the representation of the client or former client, the member has obtained confidential information material to the employment." (emphasis added). Here, Trainor testified that during his time at PeopleSoft his work as an attorney involved the PeopleSoft license agreements (Russell Decl., ¶ 14 & Ex. H at 113:10-12); that during his time at SAP he did not have access to the PeopleSoft license agreements (id. at 113:6-9, 132:22-133:1); and that at SAP he negotiated contracts with SAP TN's customers (id. at 17:18-21, 60:8-10). All of Trainor's work in negotiating contracts with prospective SAP TN customers was adverse to PeopleSoft's successor ­ Oracle ­ because the whole point of that effort was to take Oracle's customers. Id. at 44:19-45:14. Oracle is entitled to ask how, if at all, Trainor complied with California Rule of 12
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Professional Conduct 3-310(E) concerning the confidential information he learned while at PeopleSoft concerning the terms of PeopleSoft's license agreements. Moreover, Oracle's questions did not ask about communications Trainor had with a client, see In re Grand Jury Investigation, 974 F.2d 1068, 1071 n.2 (9th Cir. 1992) (the "essential elements" of a claim of attorney-client privilege are that legal advice is sought "from a professional legal advisor in his capacity as such . . . by the client"), nor about work product he developed in anticipation of litigation. See In re Grand Jury Subpoena (Mark Tork/Torrf Environmental Management), 357 F.3d 900, 907 (9th Cir. 2004) ("`to qualify for protection against discovery under Rule 26(b)(3), documents must have two characteristics: (1) they must be `prepared in anticipation of litigation or for trial,' and (2) they must be prepared `by or for another party or by or for that other party's representative'") (quoting In re California Pub. Utils. Comm'n, 892 F.2d 778, 780-81 (9th Cir. 1989)). Rather, Oracle asked about the steps Trainor took to comply with his ethical obligations. There was no basis for Defendants to instruct him not to answer. At the November 17, 2009 discovery conference, the Court told Defendants that their instructions were improper. The Court stated that "particularly the did you take any steps or whatever the question was ­ what steps did you take, if any, to try to avoid using things that you learned before? I would probably overrule on the objection for that. Now, I don't know what the other ones are, but I mean I just ­ I just think that those questions have to be answered." Russell Decl., ¶ 3 & Ex. A at 59:21-60:2. In light of the Court's guidance, Oracle asked Defendants to withdraw their objections and permit Trainor to testify. In a December 1, 2009 email, Defendants stated they would not withdraw these instructions not to testify, despite the Court's guidance, thus forcing Oracle to bring this motion. Russell Decl., ¶ 10 & Ex. G. B. Defendants' Numerous Instructions Not To Answer Were Improper In addition to the example cited above, Defendants gave other baseless privilege instructions throughout Trainor's deposition. The Court should overrule those objections and order Trainor to be made available to testify on these matters. Communications with Prospective Customers. Oracle questioned Trainor 13
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about Exhibit 1681, which contained a draft contract sent from Trainor to a prospective customer (who eventually signed with SAP TN) in which the redlines show him telling the customer that it was to the customer's "advantage" to give SAP TN access to PeopleSoft software. See Russell Decl., ¶ 24 & Ex. R at SAP-OR00682290 (Section 4D). Q. Do you deny that you were telling Waste Management that it was to their advantage to provide access to software? MR. McDONELL: Vague and ambiguous, lack of foundation, asked and answered. THE WITNESS: I don't recall if I drafted this, first of all. And second of all, as I read this, I don't believe it coincides with what you just concluded. Q. Why not? ... THE WITNESS: That's not how I read the "you don't want us accessing." Q. How did you read it? MR. McDONELL: Same objections and same instruction to you not to disclose privileged information. THE WITNESS: I feel like I'm going into where I'm drawing legal conclusions as I interpret this. MR. McDONELL: Okay. So I instruct you not to disclose your mental legal analysis. Russell Decl., ¶ 14 & Ex. H at 109:7-16, 111:1-11. Defendants' instruction not to answer has no merit. Oracle handed Trainor a document he sent to the customer and asked him what he was telling the customer. There was no attorney-client relationship between SAP TN and its customers. Nor can Trainor's communications with customers be described as attorney work product in anticipation of litigation.6 Misrepresentations to Customers. For the same exhibit, Oracle also asked Trainor about another of his redlines claiming that SAP TN's rights to use PeopleSoft software derive from the customer's license with PeopleSoft (now Oracle). Oracle asked Trainor if the representation he made to the customer was true, and Defendants instructed him not to answer: Q. If you take a look at paragraph 9A of the agreement, "TomorrowNow Indemnity," there's a bracket that states: This will need to be different from the license. Our rights to use the PeopleSoft software come entirely by way of the Waste Management license with PeopleSoft. Is it true that you were conveying to Waste Management the position Oracle asked Defendants in meet and confer to specify the litigation that any of the multiple "work product" claims were supposedly prepared in anticipation of. Russell Decl., ¶ 6 & Ex. D. Defendants declined to identify any such litigation. Id. at ¶ 7 & Ex. E. 14
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that TomorrowNow's rights to use the PeopleSoft software come entirely by way of the Waste Management license with PeopleSoft? MR. McDONELL: The document speaks for itself. THE WITNESS: I don't recall drafting this. However, that -- what you recited is what the document represents, yes. ... Q. Was that a true statement so far as you knew? MR. McDONELL: I have -- hold on for a second. Calls for a legal conclusion and legal analysis. I'll instruct you not to answer. Q. So you can't tell me whether it's true or not? MR. McDONELL: I've instructed you not to answer on grounds of work product. You're asking him to sit here and do legal analysis. Q. To your knowledge, did SAP or TomorrowNow ever misrepresent facts to customers during negotiation of terms? MR. McDONELL: I instruct you not to answer. It's argumentative, calling for legal conclusions and work product and potential attorney-client. And it's argumentative. I've already said that. Russell Decl., ¶ 14 & Ex. H at 113:24-114:14, 114:24-115:17 (emphasis supplied). Again, those instructions not to answer were improper. Communications between SAP TN and its customers are not privileged. Whether SAP TN was misrepresenting facts to its customers in the communications is not privileged either, because Oracle was still not asking about communications between an attorney and a client. In addition, the work product doctrine is inapplicable. There is no showing that any misrepresentations by SAP TN to prospective customers were prepared in anticipation of litigation, and indeed Defendants refused to identify any such litigation or otherwise explain their claim of work product during the meet and confer. Whether SAP TN misrepresented facts to customers during the negotiation of contract terms is just a factual question that could be asked of any witness who dealt with customers. Trainor's status as an attorney does not relieve him of the obligation to answer the same questions any percipient witness would have to answer. Indemnification Policy. Oracle asked Trainor about Exhibit 1684, a nonprivileged PowerPoint sales presentation given by Trainor and SAP TN's head of sales at training sessions they conducted for SAP salespeople. Russell Decl., ¶ 26 & Ex. T; id., ¶ 14 & Ex. H at 157:1-10. Oracle asked Trainor about the accuracy of the presentation: Q. Turning to Exhibit 1684, page ending -861, under the indemnification provision, it reads, "Key term -- no removing this." Was that true, that this was a key term for SAP, and it would not negotiate this term away? MR. McDONELL: Instruct not to answer on the grounds of attorney-client and work product. 15
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Russell Decl., ¶ 14 & Ex. H at 166:7-23. Defendants' instruction not to answer had no merit. Defendants are not claiming privilege over the actual communication between Trainor and others at SAP TN (nor could they) ­ they intentionally produced the PowerPoint slides and allowed them to be used as a deposition exhibit without objection. This is because the statement that the indemnification provision was a key term in contract negotiations was business advice to the SAP TN sales team; nothing in the PowerPoint purported to give legal advice about the effect of such a provision. See United States v. ChevronTexaco Corp., 241 F. Supp. 2d 1065, 1075-76 (N.D. Cal. 2002) ("In-house counsel may be involved intimately in the corporation's day to day business activities and frequently serve as integral players in business decisions or activities. Accordingly, communications involving in-house counsel might well pertain to business rather than legal matters. The privilege does not protect an attorney's business advice."). In any event, the question Oracle asked at the deposition was simply whether the business advice Trainor gave was true, i.e., whether it was an accurate description of SAP's business practices. That is also just a question about business practices and facts, not privileged communications or work product. Compliance with ethical obligations. Oracle asked Trainor questions about Exhibit 1181, an email from SAP TN salesperson Spencer Phillips to Raytheon, a prospective customer, that related a non-privileged conversation Phillips had with Trainor. Russell Decl., ¶ 23 & Ex. Q; id., ¶ 14 & Ex. H at 129:20-22. Phillips stated in the email that Trainor informed him what the specific language was in the PeopleSoft license agreements concerning third party access to PeopleSoft software. Id. As discussed above, this raises an ethical concern due to Trainor's prior employment as counsel for PeopleSoft. Trainor admitted in his deposition that when he had this conversation with Phillips in 2005 he was employed by SAP and did not have any access to PeopleSoft licensing agreements. Russell Decl., ¶ 14 & Ex. H at 132:22-133:1. So, it would appear that Trainor provided this information about the content of the licensing agreement based on his prior work as PeopleSoft's in-house counsel. Because he was now using that information to help SAP TN convert customers from PeopleSoft's successor, Oracle, it would appear that Trainor had violated California Rule of Professional Conduct 3-310(E). So, 16
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Oracle asked Trainor point blank if he violated the rule, and Defendants improperly instructed him to not answer: Q. You understand that you have certain ethical obligations as an attorney in the State of California. Correct? MR. McDONELL: Calls for a legal conclusion. THE WITNESS: I do. Q. And you understood that you have the obligation to keep information you learned from a former -- a client strictly confidential. True? MR. McDONELL: Depends on the circumstances. It calls for a legal conclusion. Object to the form of the question. MS. PHILLIPS: Overbroad. THE WITNESS: I do. Q. And if you revealed this type of information to Mr. Phillips, that violated your ethical obligation. True? MR. McDONELL: Object to the form of the question, and I'm going to instruct you not to answer on the grounds of attorney work product and privilege. Q. Is this information confidential? MR. McDONELL: Vague and ambiguous, overbroad, calls for a legal conclusion, calls for a legal analysis by an attorney of a legal issue collaterally related to the case. I'm going to instruct you not to answer. Q. Is it private? Is it confidential? That's not a privilege issue. MR. McDONELL: Same objections. Same instruction. MR. PICKETT: On what ground? MR. McDONELL: Privilege, work product. Russell Decl., ¶ 14 & Ex. H at 136:3-137:12. Q. If you did convey it, would you have felt comfortable conveying it, the portion that I just read? MR. McDONELL: Instruct you not to answer. Grounds of attorney-client, attorney work product, it's unduly argumentative, I object to the form of the question. Id. at 139:7-13. Those privilege instructions do not have merit. Oracle is entitled to ask whether its predecessor's former counsel complied with his ethical obligations toward PeopleSoft. And his compliance, or lack thereof, is not an inquiry into an attorney-client communication or work product. If attorneys could not be asked if they believed their conduct complied with ethical rules, how would the State Bar conduct disciplinary hearings? And again, Defendants have refused to provide any authority or explanation for this claim, which is their burden. Willfulness of copyright infringement. Oracle also asked Trainor some foundational questions concerning whether SAP or SAP TN took any steps to determine if their 17
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access to software amounted to copyright infringement: Q. Did SAP or TomorrowNow take any steps to determine whether a particular customer's allowance of access to software constituted copyright infringement? MR. McDONELL: Instruct you not to answer on grounds of legal -- privilege and work product. MR. PICKETT: It's take any steps. It's not what they did. MR. McDONELL: Stand by my instruction. Q. Did TomorrowNow or SAP ever analyze in connection with a negotiation of a contract the general topic of a customer's rights to provide access to software? MR. McDONELL: Instruct you not to answer on the grounds of attorney-client privilege and work product. Russell Decl., ¶ 14 & Ex. H at 115:21-116:11. Defendants' instructions not to answer came too early and were too sweeping. Oracle is entitled to ask whether Defendants took any steps to determine if their conduct constituted copyright infringement, and whether Defendants ever analyzed in the context of a contract negotiation the general topic of a customer's ability to provide access to software. If the answers are "no," there is nothing privileged or work product to protect ­ and the testimony would be directly relevant to the willfulness of Defendants' conduct. If the answers are "yes," Oracle can follow up by asking other foundational questions, such as whether SAP's legal department was involved; whether there were some steps not done at the direction of legal; whether any of SAP's steps or analyses were shared with customers, in which case the privilege would be waived; and so on. Furthermore, Oracle has already asked the same foundational questions of other attorney witnesses in the case and Defendants allowed the questioning. See, e.g., Russell Decl., ¶ 16 & Ex. J at 24:6-26:17. Yet this time Defendants improperly shut down these foundational questions. Accordingly, for the reasons described above, Oracle asks that the Court review in camera the two documents in question, overrule Defendants' instructions not to answer, and order Trainor to return for another half day of deposition to answer the questions outlined above, as well as reasonable follow up questions, and to testify concerning the content of Exhibit 1683 and any content of the two documents which the Court deems were improperly redacted.

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IV.

THE COURT SHOULD ORDER FURTHER RESPONSES TO ORACLE'S REQUESTS FOR ADMISSION, OR ALTERNATIVELY DEEM THEM ADMITTED A. RFAs, Second Set, Nos. 496-680, Third Set, Nos. 13-50 Oracle's Requests for Admissions ("RFAs") 496-680 (in Set No. 2) and 13-50 (in

Set No. 3) asked Defendants certain basic facts about SAP TN's business processes ­ essentially, to admit the extent to which SAP TN generated fixes or updates by copying Oracle updates, cross-using customer software, and using local generic environments. These RFAs go to the heart of SAP TN's business model and Oracle's core allegations that the model ­ indeed, the entire way SAP TN did business ­ was illegal. But rather than answer these RFAs, Defendants objected to the terms "copy," "fix," "update," and "generic environment" and instead provided evasive narrative responses that do not actually answer what Oracle asked. After three months of meeting and conferring about Defendants' inadequate responses, including multiple offers by Oracle to redefine these terms to avoid any possible confusion, Defendants have, with one exception noted below, refused to amend their responses to address Oracle's concerns, necessitating this motion to compel. Below Oracle explains how these four terms ­ "copy," "fix," "update," and "generic environment" ­ were defined. Then, because Defendants' responses to each of these 223 RFAs were all evasive in the same way, and because the Court has asked that the Parties address issues such as these involving multiple discovery requests by topic, Oracle provides examples of Defendants nonresponsive answers, rather than going through all 223 RFAs individually. "Copy." Oracle defined the term "copy" in its RFAs as follows: "`Copy' in the noun form shall mean a copy, duplication, clone, backup, download, restore, and/or a compressed copy, and in the verb form shall mean to copy, duplicate, clone, backup, download, and/or restore." Russell Decl., ¶ 28 & Ex. V at pp. 1-2. With that definition, Oracle propounded numerous RFAs concerning whether SAP TN developed fixes and updates by using a "copy" of an Oracle update. For example: AMENDED REQUEST FOR ADMISSION NO. 501: Admit that for the majority of Fixes or Updates listed in the first 19
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two columns of Exhibit A, TN acquired a Copy of a tax Update published by PeopleSoft or Oracle by Downloading it from Customer Connection to use in Developing the Fix or Update. Russell Decl., ¶ 29 & Ex. W at p. 290. Defendants globally objected to the definition of the term "copy" on the following grounds: "Defendants object to the definition of `Copy' as being overly broad, unduly burdensome, vague, and not reasonably calculated to lead to the discovery of admissible evidence to the extent it purports to encompass anything beyond the term as defined under U.S. copyright law. Defendants further object to Plaintiffs' use of the term `copy' in these requests as improperly shifting the burden of proof to Defendants." Id. at p. 3. With that objection, and several others, Defendants then gave the following response to RFA 501: ADMITTED on the following qualified basis: TomorrowNow reasonably believes that for the majority of the objects (meaning at least one object more than half of the total objects) associated with the master bundle records referenced in the first two columns of Exhibit A, TomorrowNow employees acquired a tax update posted by PeopleSoft by downloading that tax update from Customer Connection to use in connection with the development of the object. To the extent not admitted, this request is DENIED.

That response, and the other responses where Defendants use the same approach, is evasive. Defendants state that "TomorrowNow employees acquired a tax update posted by PeopleSoft by downloading that tax update from Customer Connection to use in connection with the development of the object," but what Oracle asked was whether SAP TN acquired a "copy" of a tax update. Defendants' answer carefully dances around the question, never answering whether SAP TN acquired a "copy." In a case about "copying," that matters. Worse, the last sentence of Defendants' response states that "[t]o the extent not admitted, this request is DENIED," This suggests that Defendants are in effect denying any "copying" happened, since that is what Oracle asked, yet a "download" is clearly a "copy," and Defendants conceded as much during meet and confer. Russell Decl., ¶ 11. Oracle is suing Defendants for copyright infringement, among other claims. 20
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Thus, whether SAP TN acquired a "copy" of an Oracle or PeopleSoft update as part of the process of creating fixes is central to Oracle's claims. Defendants are refusing to admit whether they acquired a "copy" of an update precisely because they do not want the jury to see that admission in writing. Defendants' objections to the definition of the term "copy" are without merit and their answers are non-responsive. Their objections that the defined term "copy" is "overly broad, unduly burdensome, vague, and not reasonably calculated to lead to the discovery of admissible evidence" or that "Plaintiffs' use of the term `copy' in these requests . . . improperly shift[s] the burden of proof to Defendants" (Russell Decl., ¶ 29 & Ex. W at p. 3) do not make any sense. SAP TN employees regularly used the word "copy" in their own documents to describe the company's business processes. For example, in an April 24, 2007 email, SAP TN manager Rod Russell explained to SAP TN developer Edward Tong some of the steps involved in developing a fix: "Here is a summary of what needs to be done . . . Copy the program from that client's source group into the fix folder you created." Russell Decl., ¶ 20 & Ex. N at TN-OR01623777 (emphasis supplied). A June 16, 2008 SAP TN document listed the steps involved in testing the delivery of individual fixes. One step was: "Apply Fix: 1) Copy PAY003.sqr from \Development Staging\CSS HRMS 8.SSI\PY07JUN\Individual Fixes\TN1214062594\SQR\Spurce1 folder to \h881COHM\sqr folder." Russell Decl., ¶ 21 & Ex. O at SAS-TN-OR-01823633-OR-00177 (emphasis supplied). When Oracle uses a common word such as "copy," goes further and defines it in the RFAs to include other common synonyms, and when Defendants themselves use that word regularly to describe their own conduct, it is not legitimate for them to claim they do not understand what it means in response to a discovery request. Moreover, Oracle is entitled to ask Defendants to admit they used a "copy" of an update, even though the word "copy" may have legal significance. Fed. R. Civ. Proc. 36(a)(1)(A) ("A party may serve on any other party a written request to admit . . . facts, the application of law to fact, or opinions about either"). Defendants are not entitled to assert a series of make-weight objections and then avoid answering the central thrust of the RFA. Cf. 21
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Adolph Coors Co. v. American Insurance Co., 164 F.R.D. 507, 518 (D. Colo. 1993) (in responding to discovery requests, a responding party is "obligated" "to put the collective heads of its lawyers and agents together, . . . to give those requests a reasonable construction"). Federal Rule of Civil Procedure 36 provides that "[i]f a matter is not admitted, the answer must specifically deny it or state in detail why the answering party cannot truthfully admit or deny it. A denial must fairly respond to the substance of the matter; and when good faith requires that a party qualify an answer or deny only a part of a matter, the answer must specify the part admitted and qualify or deny the rest." Fed. R. Civ. Proc. 36 (a)(4). Defendants' answers do not satisfy Rule 36 because they stop short of admitting that SAP TN made copies of Oracle or PeopleSoft updates, but at the same time do not (and cannot) deny that either. At the parties' final meet and confer on this issue on December 3, 2009, Defendants agreed that they would withdraw their objections to the term "copy" if Oracle changed the definition of "copy" to refer only to the word's "plain meaning." However, they conditioned that "withdrawal" on Oracle's agreeing to reduce the number of RFAs to which Defendants would amend their responses to no more than 100. Russell Decl., ¶ 13. Defendants' offer of withdrawal reveals they are not actually confused about the meaning of the term "copy," as defined in the RFAs, and they realize they have not answered the key part of the RFAs. Moreover, the alleged burden of now having to amend their responses is self-inflicted. Oracle did not ask Defendants to submit paragraph-long evasions of straightforward questions. All of the RFAs used the same definition of the term "copy," so all of Defendants' non-responsive answers present the same issue, namely that Defendants refused to state whether they used a copy. There is no logical basis for Defendants to amend their responses to some subset of RFAs that used the term "copy" but not others. Moreover, Defendants' alternative suggestion of not amending any responses and simply sending a letter stating that they withdraw their objection to the term "copy" is an even worse solution. Defendants' counsel stated that the jury typically does not even see objections and is only shown the substantive responses, id. at ¶ 13, so a letter from Defendants withdrawing an objection the jury does not see would accomplish nothing. Oracle defined the word "copy" in a straightforward manner in its RFAs. Oracle 22
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would also be willing to accept the dictionary definition of the term (as it has told Defendants). See, e.g., http://dictionary.reference.com/browse/copy ("an imitation, reproduction, or transcript of an original"). But it is unreasonable for Defendants to provide no substantive response to many of Oracle's legitimate RFAs based on a contrived argument that they do not know what the word "copy" means. Under Rule 36, "[o]n finding that an answer does not comply with this rule, the court may order either that the matter is admitted or that an amended answer be served." Fed. R. Civ. Proc. 36(a)(6). Oracle requests that the Court either deem the