Oracle Corporation et al v. SAP AG et al

Filing 789

Declaration of John A. Polito in Support of 785 MOTION Pursuant to 17 U.S.C. § 410(c) That Evidentiary Presumption Apply To Six Copyright Registrations MOTION Pursuant to 17 U.S.C. § 410(c) That Evidentiary Presumption Apply To Six Copyright Registrations filed byOracle EMEA Limited, Oracle International Corporation, Oracle USA Inc., Siebel Systems, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K, # 12 Exhibit L, # 13 Exhibit M, # 14 Exhibit N, # 15 Exhibit O, # 16 Exhibit P, # 17 Exhibit Q, # 18 Exhibit R, # 19 Exhibit S)(Related document(s) 785 ) (Polito, John) (Filed on 8/19/2010)

Oracle Corporation et al v. SAP AG et al

Doc. 789

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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 215695) 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] BOIES, SCHILLER & FLEXNER LLP DAVID BOIES (Admitted Pro Hac Vice) 333 Main Street Armonk, NY 10504 Telephone: [phone] [e-mail] STEVEN C. HOLTZMAN (SBN 144177) 1999 Harrison St., Suite 900 Oakland, CA 94612 Telephone: [phone] [e-mail] DORIAN DALEY (SBN 129049) JENNIFER GLOSS (SBN 154227) 500 Oracle Parkway, M/S 5op7 Redwood City, CA 94070 Telephone: [phone] Facsimile: 650.506.7114 [e-mail] [e-mail] Attorneys for Plaintiffs Oracle USA, Inc., et al. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA OAKLAND DIVISION ORACLE USA, INC., et al., No. 07-CV-01658 PJH (EDL) v. Plaintiffs,
DECLARATION OF JOHN A. POLITO IN SUPPORT OF MOTION PURSUANT TO 17 U.S.C. § 410(c) THAT EVIDENTIARY PRESUMPTION APPLY TO SIX COPYRIGHT REGISTRATIONS [EXHIBITS A-D AND F-H FILED UNDER SEAL]

SAP AG, et al., Defendants.

Date: Time: Place: Judge:

September 29, 2010 9:00 a.m. 3rd Floor, Courtroom 3 Hon. Phyllis J. Hamilton
Case No. 07-CV-01658 PJH (EDL)

DECLARATION OF JOHN POLITO IN SUPPORT OF MOTION PURSUANT TO 17 U.S.C. § 410(c) THAT EVIDENTIARY PRESUMPTION APPLY TO SIX COPYRIGHT REGISTRATIONS
Dockets.Justia.com

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I, John A. Polito, declare as follows: 1. I am an attorney licensed to practice law in the State of California and before this

Court, and an associate at Bingham McCutchen LLP, counsel of record for plaintiffs Oracle International Corporation, Oracle USA, Inc. (predecessor to Oracle America, Inc.), Oracle EMEA Ltd., and Siebel Systems, Inc. (collectively, "Oracle" or "Plaintiffs"). I have personal knowledge of the facts stated below by virtue of my representation of Oracle in this action, and if called as a witness could competently testify as to them. I make this declaration in support of Oracle's Motion Pursuant to 17 U.S.C. § 410(c). 2. For ease of use and reference and to the extent possible without losing context, for

all exhibits attached to this Declaration, only the relevant pages and information have been provided. Unless otherwise noted below for a particular document, we have provided all highlighting and/or circling in these Exhibits to further assist in identifying the information relevant to Oracle's Motion Pursuant to 17 U.S.C. § 410(c). 3. Attached as Exhibit A is a true and correct copy of the first page from the deposit

materials for the following six copyright registrations, in sequence: (1) Plaintiffs' Trial Exhibit 884, TX 6-541-029, Initial release of JD Edwards World A7.3; (2) Plaintiffs' Trial Exhibit 885, TX 6-541-047, Initial release of JD Edwards World A8.1; (3) Plaintiffs' Trial Exhibit 886, TX 6541-033, Initial release of JD Edwards EnterpriseOne XE; (4) Plaintiffs' Trial Exhibit 881, TX 6-941-989, Siebel 6.3 Initial Release and Documentation; (5) Plaintiffs' Trial Exhibit 882, TX 6941-988, Siebel 7.0.5 Initial Release and Documentation; and (6) Plaintiffs' Trial Exhibit 883, TX 6-941-990, Siebel 7.5.2 Initial Release and Documentation. 4. Each page of Exhibit A contains a statement of copyright ownership in the form

"Copyright (c)" followed by the date and the name of the owner. A box has been drawn around the statements of ownership for convenience. The named owners are: J.D. Edwards & Co., for (1) and (2); J.D. Edwards World Source Co., for (3); and, Siebel Systems, Inc., for (4), (5) and (6). 5. Attached as Exhibit B is a true and correct copy of pages 1-19, 25-26, and 31 of

Trial Exhibit 1806, a document titled "A Step Ahead: A7.3 Release Notes," dated May 1996. 1 Case No. 07-CV-01658 PJH (EDL)
DECLARATION OF JOHN POLITO IN SUPPORT OF MOTION PURSUANT TO 17 U.S.C. § 410(c) THAT EVIDENTIARY PRESUMPTION APPLY TO SIX COPYRIGHT REGISTRATIONS

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6.

Attached as Exhibit C is a true and correct copy of pages 1-22 of the file

EAP7.pdf, found on Oracle's production disc ORCL099 (Bates No. ORCL00400059). Exhibit C is titled "JD Edwards World, Programmer's Guide, Version A7.3 to 9.1," dated August 8, 2007. 7. Attached as Exhibit D is a true and correct copy of ORCL00255051, titled

"Release Notes for J.D. Edwards EnterpriseOne 8.12." 8. Attached as Exhibit E is a true and correct copy of pages 107-109 of Plaintiffs'

Amended Trial Exhibit List, Dkt. 761, redacted to show only Plaintiffs' Trial Exhibits 17961834. These 39 trial exhibits are copies of JD Edwards documentation and release notes. The earliest entry by date, Plaintiffs' Trial Exhibit 1816, titled "The Rolling Letter First Issue," is dated February 15, 1989, and includes a discussion of J.D. Edwards World A2.2. Several entries date from September 2000, concurrent with the release of J.D. Edwards EnterpriseOne XE. See, e.g., Plaintiffs' Trial Exhibit 1796, dated September 2000 and titled "Net Change for Distribution from PeopleSoft EnterpriseOne B73.3.1 to Xe." 9. Attached as Exhibit F is a true and correct copy of an excerpt of

ORCL00602083, a spreadsheet listing the dates, descriptions and resources associated with Service Action Requests (SARs) for J.D. Edwards from 1991 to 2000. Exhibit F contains entries for up to 10 SARs for each year, by Date Opened. The complete spreadsheet contains entries for over 49,000 SARs. 10. Attached as Exhibit G is an excerpt, beginning on page 2036, of Plaintiffs' Trial

Exhibit 2128, titled "Siebel eBusiness Applications, Siebel Release Notes, Siebel 2000, Version 6.3." Internal page numbers for this excerpt are iii to vii, 1-1 to 1-5 and 4-57 to 4-58. 11. Attached as Exhibit H is a true and correct copy of pages 1-15 and 32-33 from

ORCL00526435, titled "Siebel Maintenance Release Guide, Version 8.0.0.x, Rev K," and dated June 2009. 12. I directed, supervised the preparation of and performed quality control upon the

document entitled "FRE 1006 Summary - Selected Siebel Documentation and Release Notes" ("Siebel Summary"), a true and correct copy of which is attached here as Exhibit I. The Siebel Summary describes 208 release notes and other product documentation for Siebel software. The 2 Case No. 07-CV-01658 PJH (EDL)
DECLARATION OF JOHN POLITO IN SUPPORT OF MOTION PURSUANT TO 17 U.S.C. § 410(c) THAT EVIDENTIARY PRESUMPTION APPLY TO SIX COPYRIGHT REGISTRATIONS

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earliest entry by date and by version is titled "Siebel Enterprise Applications, Release Notes, Siebel 98, Version 4.0.1," version 4.0.1, dated March 1998. The latest entry by date and by version is titled "Siebel CRM Fix Pack Guide," version 7.5.3.17, dated October 2007. 13. The source documents for the Siebel Summary are: (a) Plaintiffs' Trial Exhibit

2127, a document titled "HTML documentation for Siebel 7.5.2 - Selected Files" that is 739 pages in length; (b) Plaintiffs' Trial Exhibit 2128, a document titled "Release notes for Siebel 4.0.1 through 7.0.4 - Selected Files" that is 2151 pages in length; and, (c) Plaintiffs' Trial Exhibit 2129, a document titled "Patch and maintenance release guides for Siebel 4.0.2.54 through 7.5.3 - Selected Files" that is 919 pages in length. These three documents have been produced to Defendants as trial exhibits. All of these documents, in turn, were created from the files comprising the Database of Documentary Customer Support Materials for Siebel Software, produced as ORCL206 (Bates No. ORCL00527756). 14. As the documents described in ¶ 13, above, are too voluminous to be conveniently

examined by the Court, I directed and supervised preparation of the Siebel Summary for the convenience of the Court. Plaintiffs will provide the documents upon which the Siebel Summary is based, should the Court or Defendants so request. The parties have stipulated that attorneys may prepare evidentiary summaries pursuant to Fed. R. Evid. 1006. 15. Each of the trial exhibits summarized by the Siebel Summary comprises a series

of files, separated by slipsheets. At my direction, three lists were assembled: each contained the page number and title of every document (excluding slipsheets and, for Plaintiffs' Trial Exhibit 2127, excluding documents appearing to consist solely of a title together with links to other documents) within Plaintiffs' Trial Exhibits 2127, 2128 and 2129. For Plaintiffs' Trial Exhibit 2127, I directed that the version number "7.5.2" be recorded for each list entry, based on the title of the exhibit. For Plaintiffs' Trial Exhibits 2128 and 2129, I directed that the version number or numbers and the publication date be recorded for each list entry, to the extent this information was readily apparent on the first page or pages of each document. I combined these three lists and sorted by version, then by date within version, and then by title within date to create the Siebel Summary. 3
Case No. 07-CV-01658 PJH (EDL)

DECLARATION OF JOHN POLITO IN SUPPORT OF MOTION PURSUANT TO 17 U.S.C. § 410(c) THAT EVIDENTIARY PRESUMPTION APPLY TO SIX COPYRIGHT REGISTRATIONS

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16.

Oracle has produced copies of software embodying each of the 111 registered

works in suit, together with all reasonably available documentation and release notes. 17. The 19 copyrights in suit for modules of J.D. Edwards World A6.1 listed below

were registered as unpublished works:
Registration Number Registration Date Title of the work

Accounts Payable program Accounts Receivable program Capacity Requirements Planning program Configuration Management program EDI Interface (6) program Enterprise Facility Planning program Equipment Management (5) program Financial Modeling, Budgeting & Allocations program Financial Reporting (FASTR) program General Ledger & Basic Financial program Inventory Management program Master Production Scheduling program Product Data Management program Purchase Order Processing program Sales Order Processing/Sales Analysis program Shop Floor Control program Warehouse Management program WorldCASE Development Environment program WorldCASE Foundation Environment (3) program

March 7, 1995 March 7, 1995 March 7, 1995 March 7, 1995 March 7, 1995 March 7, 1995 March 7, 1995 March 7, 1995 March 7, 1995 March 7, 1995 March 7, 1995 March 7, 1995 March 7, 1995 March 7, 1995 March 7, 1995 March 7, 1995 March 7, 1995 March 7, 1995 March 7, 1995

TXu 619-320 TXu 619-312 TXu 619-307 TXu 619-305 TXu 619-304 TXu 619-311 TXu 619-309 TXu 619-321 TXu 619-318 TXu 619-310 TXu 619-314 TXu 619-306 TXu 619-317 TXu 619-316 TXu 619-315 TXu 619-303 TXu 619-313 TXu 619-308 TXu 619-319
Case No. 07-CV-01658 PJH (EDL)

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DECLARATION OF JOHN POLITO IN SUPPORT OF MOTION PURSUANT TO 17 U.S.C. § 410(c) THAT EVIDENTIARY PRESUMPTION APPLY TO SIX COPYRIGHT REGISTRATIONS

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18.

One J.D. Edwards copyright in suit, TXu1-607-455, Database of Documentary

Customer Support Materials for J.D. Edwards Software, was registered as an unpublished work on July 1, 2009. 19. All 30 remaining J.D. Edwards copyrights in suit that are not listed in ¶¶ 3, 17 or

18, above, were registered as published works and were registered within five years of first publication. 20. One Siebel copyright in suit, TXu1-607-453, Database of Documentary Customer

Support Materials for Siebel Software, was registered as an unpublished work on July 1, 2009. 21. All four Siebel copyrights in suit that are not listed in ¶¶ 3 or 20 were registered

as published works and were registered within five years of first publication. 22. Attached as Exhibit J is a true and correct copy of pages 1-10, 52-57, 63, 90-92,

and 109-115 of Plaintiffs' Trial Exhibit 895, dated March 1999 and titled "J.D. Edwards Manager Handbook." A blank form employee agreement dated February 1996, found at ORCL00213676, contains a provision titled "Rights to Work Product" that includes both a workfor-hire acknowledgment (stating that "J.D. Edwards shall be solely entitled to all the benefits arising from . . . all work [and] work products") and an agreement to assign rights in work product. A blank form contractor agreement, found at ORCL00213693 to 699, includes workfor-hire acknowledgments (Art. II, § 3.3(a) and Art. IV, § 3) and agreements to assign rights in work product (Art. IV, §§ 1, 3). 23. Attached as Exhibit K is a true and correct copy of Plaintiffs' Trial Exhibit 891,

dated June 2000 and titled "Employee Proprietary Information, Inventions, and Non-Solicitation Agreement." This blank form employee agreement includes both a work-for-hire acknowledgment (§ 2.6) and an assignment of and agreements to assign rights in work product (§§ 2.3, 2.7). 24. Attached as Exhibit L is a true and correct copy of Plaintiffs' Trial Exhibit 902,

dated April 2003 and titled "JD Edwards Employee Proprietary Information, Inventions and Non-Solicitation Agreement template." This blank form employee agreement includes both a 5
Case No. 07-CV-01658 PJH (EDL)

DECLARATION OF JOHN POLITO IN SUPPORT OF MOTION PURSUANT TO 17 U.S.C. § 410(c) THAT EVIDENTIARY PRESUMPTION APPLY TO SIX COPYRIGHT REGISTRATIONS

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work-for-hire acknowledgment (§ 2.6) and an assignment of and agreements to assign rights in work product (§§ 2.3, 2.7). 25. Attached as Exhibit M is a true and correct copy of Plaintiffs' Trial Exhibit 901,

titled "Siebel Systems, Inc. Proprietary Information and Inventions Agreement." The document is hand-dated August 6, 1995. This employee agreement includes both a work-for-hire acknowledgment (§ 2(b)) and an assignment of, and agreement to assign, rights in work product (§ 2(b), (d)). 26. Attached as Exhibit N is a true and correct copy of Plaintiffs' Trial Exhibit 900,

titled "Siebel Systems, Inc. Proprietary Information and Inventions Agreement." The document is hand-dated May 1, 1996. This employee agreement includes both a work-for-hire acknowledgment (§ 2(b)) and an assignment of, and agreement, to assign rights in work product (§ 2(b), (d)). 27. Attached as Exhibit O is a true and correct copy of Plaintiffs' Trial Exhibit 899,

titled "Siebel Systems, Inc. Proprietary Information and Inventions Agreement." The document is hand-dated January 8, 2001. This redacted employee agreement includes both a work-for-hire acknowledgment (§ 2(b)) and an assignment of and agreements to assign rights in work product (§ 2(b), (d)). 28. Attached as Exhibit P is a true and correct copy of Plaintiffs' Trial Exhibit 897,

titled "Siebel Systems, Inc. Proprietary Information and Inventions Agreement." The document is hand-dated October 4, 2004. This redacted employee agreement includes both a work-for-hire acknowledgment (§ 2(b)) and an assignment of, and agreement to assign, rights in work product (§ 2(b), (d)). 29. Attached as Exhibit Q is a true and correct copy of Plaintiffs' Trial Exhibit 4806,

titled "Certificate of Recordation of JDE Companies OIC Asset Transfer Agreement." Plaintiffs' Trial Exhibit 4806 was recorded with the United States Copyright Office, bears the Volume and Document No. 3569-435, and bears the United States Copyright Office seal and signature of the Register of Copyrights. 6
Case No. 07-CV-01658 PJH (EDL)

DECLARATION OF JOHN POLITO IN SUPPORT OF MOTION PURSUANT TO 17 U.S.C. § 410(c) THAT EVIDENTIARY PRESUMPTION APPLY TO SIX COPYRIGHT REGISTRATIONS

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30.

Attached as Exhibit R is a true and correct copy of Plaintiffs' Trial Exhibit 4807,

titled "Certificate of Recordation of PeopleSoft/JDE LLC OIC Asset Transfer Agreement." Plaintiffs' Trial Exhibit 4807 was recorded with the United States Copyright Office, bears the Volume and Document No. 3569-436, and bears the United States Copyright Office seal and signature of the Register of Copyrights. 31. Attached as Exhibit S is a true and correct copy of Plaintiffs' Trial Exhibit 3079,

titled "Certificate of Merger of JD Edwards & Company into JD Edwards LLC." Plaintiffs' Trial Exhibit 3079 was recorded with the State of Delaware "Certificate of Merger" for J.D. Edwards & Co. and J.D. Edwards & Co., LLC. The document bears the "file" no. 3685048 and the seal of the State of Delaware, as well as the certification and signature of the Secretary of State of the State of Delaware.

I declare under penalty of perjury under the laws of the United States that the foregoing facts are true and correct, and that this Declaration was executed on August 19, 2010, in San Francisco, CA.

/s/ John A. Polito John A. Polito

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Case No. 07-CV-01658 PJH (EDL)

DECLARATION OF JOHN POLITO IN SUPPORT OF MOTION PURSUANT TO 17 U.S.C. § 410(c) THAT EVIDENTIARY PRESUMPTION APPLY TO SIX COPYRIGHT REGISTRATIONS