Oracle Corporation et al v. SAP AG et al

Filing 981

Proposed Jury Instructions: Proposed Joint Curative Instructions Regarding Testimony Related to Contributory Infringement, filed by Oracle International Corporation, Oracle USA Inc., Siebel Systems, Inc., SAP AG, SAP America Inc., Tomorrownow Inc.. (Alinder, Zachary) (Filed on 11/10/2010) Modified on 11/12/2010 (jlm, COURT STAFF).

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Oracle Corporation et al v. SAP AG et al Doc. 981 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BINGHAM McCUTCHEN LLP JONES DAY DONN P. PICKETT (SBN 72257) ROBERT A. MITTELSTAEDT (SBN 060359) GEOFFREY M. HOWARD (SBN 157468) JASON McDONELL (SBN 115084) HOLLY A. HOUSE (SBN 136045) ELAINE WALLACE (SBN 197882) ZACHARY J. ALINDER (SBN 209009) 555 California Street, 26th Floor BREE HANN (SBN 215695) San Francisco, CA 94104 Three Embarcadero Center Telephone: (415) 626-3939 San Francisco, CA 94111-4067 Facsimile: (415) 875-5700 Telephone: (415) 393-2000 ramittelstaedt@jonesday.com Facsimile: (415) 393-2286 jmcdonell@jonesday.com donn.pickett@bingham.com ewallace@jonesday.com geoff.howard@bingham.com holly.house@bingham.com JONES DAY zachary.alinder@bingham.com THARAN GREGORY LANIER (SBN 138784) bree.hann@bingham.com JANE L. FROYD (SBN 220776) 1755 Embarcadero Road BOIES, SCHILLER & FLEXNER LLP Palo Alto, CA 94303 DAVID BOIES (Admitted Pro Hac Vice) Telephone: (650) 739-3939 333 Main Street Facsimile: (650) 739-3900 Armonk, NY 10504 tglanier@jonesday.com Telephone: (914) 749-8200 jfroyd@jonesday.com Facsimile: (914) 749-8300 dboies@bsfllp.com JONES DAY STEVEN C. HOLTZMAN (SBN 144177) SCOTT W. COWAN (Admitted Pro Hac Vice) FRED NORTON (SBN 224725) JOSHUA L. FUCHS (Admitted Pro Hac Vice) 1999 Harrison St., Suite 900 717 Texas, Suite 3300 Oakland, CA 94612 Houston, TX 77002 Telephone: (510) 874-1000 Telephone: (832) 239-3939 Facsimile: (510) 874-1460 Facsimile: (832) 239-3600 sholtzman@bsfllp.com swcowan@jonesday.com fnorton@bsfllp.com jlfuchs@jonesday.com DORIAN DALEY (SBN 129049) JENNIFER GLOSS (SBN 154227) Attorneys for Defendants 500 Oracle Parkway, M/S 5op7 SAP AG, SAP America, Inc., and Redwood City, CA 94070 TomorrowNow, Inc. Telephone: (650) 506-4846 Facsimile: (650) 506-7114 dorian.daley@oracle.com jennifer.gloss@oracle.com Attorneys for Plaintiffs Oracle USA, Inc., et al. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA OAKLAND DIVISION ORACLE USA, INC., et al., CASE NO. 07-CV-01658 PJH (EDL) v. Plaintiffs, PROPOSED CURATIVE INSTRUCTIONS REGARDING TESTIMONY RELATED TO CONTRIBUTORY INFRINGEMENT SAP AG, et al., Defendants. A/73554398.6/2021039-0000324170 Case No. 07-CV-01658 PJH (EDL) PROPOSED CURATIVE INSTRUCTIONS Dockets.Justia.com 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 On November 9, 2010, the Court ordered the parties to submit their respective proposals regarding a curative jury instruction on testimony relating to contributory infringement. The parties have resolved most, but not all, disputes on this issue and thus submit their competing instructions as Exhibit A and Exhibit B, attached. For the Court's convenience, the parties also attach as Exhibit C a redline comparison of the competing instructions, reflecting the ways in which the parties' proposals differ. DATED: November 10, 2010 BINGHAM McCUTCHEN LLP By: /s/ Geoffrey M. Howard Geoffrey M. Howard Attorneys for Plaintiffs Oracle USA, Inc., Oracle International Corp., and Siebel Systems, Inc. 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. DATED: November 10, 2010 JONES DAY By: /s/ Tharan Gregory Lanier Tharan Gregory Lanier Attorneys for Defendants SAP AG, SAP America, Inc., and TomorrowNow, Inc. A/73554398.6/2021039-0000324170 2 Case No. 07-CV-01658 PJH (EDL) PROPOSED CURATIVE INSTRUCTIONS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 A/73554398.6/2021039-0000324170 EXHIBIT A 3 Case No. 07-CV-01658 PJH (EDL) PROPOSED CURATIVE INSTRUCTIONS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Plaintiffs' Proposed Instruction CURATIVE INSTRUCTION TESTIMONY RELATING TO CONTRIBUTORY INFRINGEMENT On October 29, 2010, SAP AG and its wholly owned subsidiary SAP America, stipulated to their own liability in this case for contributory copyright infringement. This was a decision made and authorized by SAP AG's Executive Board ­ the highest decision-making management authority in the company. SAP's stipulation to contributory copyright infringement is included in your binder at Tab 6 (Trial Stipulation and [Proposed] Order Regarding Contributory Infringement). This stipulation is now an Order of the Court. This stipulation means that SAP America and SAP AG have admitted that (1) they knew or had reason to know of the infringing activity of TomorrowNow; and (2) they intentionally materially contributed to or induced the infringing activity. While mere knowledge of infringing conduct is insufficient to show contributory infringement, inaction combined with specific knowledge can in some cases constitute "material contribution." You have heard testimony from four of the five members of SAP AG's Executive Board as it was comprised at all relevant times between December 2004, when SAP AG first considered acquiring TomorrowNow, and March 2007, when Plaintiffs initiated this lawsuit. The five members of the Board between 2004 and 2007 were Mr. Kagermann, Mr. Oswald, Mr. Brandt, Mr. Agassi and Mr. Apotheker. Some of these witnesses, including Mr. Brandt, have testified that they either (1) did not know or have reason to know of the copyright infringement at issue in this case, or (2) knew of the infringement, but directed or put pressure on TomorrowNow to stop the infringement. Any testimony, question or argument that states or suggests that SAP AG (including members of its Executive Board) either did not know or have reason to know of the infringement or did not intentionally materially contribute to or induce the copyright infringement at issue in this case is inconsistent with SAP's stipulation to contributory copyright A/73554398.6/2021039-0000324170 infringement in this case. To the extent that any such testimony, question or argument is 4 Case No. 07-CV-01658 PJH (EDL) PROPOSED CURATIVE INSTRUCTIONS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 inconsistent with SAP AG's and SAP America's stipulation to liability for contributory copyright infringement, you are to disregard the testimony, question or argument. [One example of argument you should disregard is SAP counsel's statement in opening that "SAP's Board told TN not to download materials onto their own computers but to have them downloaded onto the customer's computer. That was a directive that was given by the Board. But it was not followed through on, and TN did not comply with it." One example of testimony you should disregard is Mr. Brandt's testimony that "we did everything possible in order to have them follow the correct procedure and the respect of the copyright laws."] However, you may consider evidence of the knowledge of particular board members for the limited purpose of evaluating the appropriate amount of damages in this case, and you may take that evidence into account in evaluating the credibility of any witness. Authority: Elements of Contributory Infringement: Dkt. No. 762 (Order RE Motions for Partial Summary Judgment) at 8; Ninth Circuit Manual of Model Jury Instructions, Instruction 17.21 (Civil) (modified). Stipulation: Dkt. No. 965 (Amended Trial Stipulation and [Proposed] Order No. 1 Regarding Liability, Dismissal of Claims, Preservation of Claims, Preservation of Defenses, and Objections to Evidence at Trial) at ¶ 5 ("SAP and TN retain all defenses to the alleged causation, fact or amount of or entitlement to disgorgement, actual or punitive damages or any other legal or equitable remedy.") Testimony In This Case: See, e.g., November 5, 2010 (Volume 4) Tr. 700:5-13 (W. Brandt: "it was stated very clearly in these Board meetings that TomorrowNow's operating procedures had to be changed"); 706:8-18 ("My understanding is that this was a piece of information given to the management of TomorrowNow, that the operating procedures have to be changed . . . in, as far as I can remember, at the end of the first quarter 2005"); 713:25-714:4 ("At the time in 2005, I knew about the risk, the potential risk that TomorrowNow might not follow the copyright laws and that they were not doing this in an adequate way. And we did everything possible in order to A/73554398.6/2021039-0000324170 5 Case No. 07-CV-01658 PJH (EDL) PROPOSED CURATIVE INSTRUCTIONS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 have them follow the correct procedure and the respect of the copyright laws."); 716:11-12 ("We knew that a risk existed and undertook the necessary steps to mitigate the risk.") SAP Opening Statement In This Case: "SAP's Board told TN not to download materials onto their own computers but to have them downloaded onto the customer's computer. That was a directive that was given by the Board. But it was not followed through on, and TN did not comply with it." November 2, 2010 (Volume 2) Tr. 385:5-10. A/73554398.6/2021039-0000324170 6 Case No. 07-CV-01658 PJH (EDL) PROPOSED CURATIVE INSTRUCTIONS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 A/73554398.6/2021039-0000324170 EXHIBIT B 7 Case No. 07-CV-01658 PJH (EDL) PROPOSED CURATIVE INSTRUCTIONS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants' Proposed Instruction CURATIVE INSTRUCTION TESTIMONY RELATING TO CONTRIBUTORY INFRINGEMENT On October 29, 2010, SAP AG and its wholly owned subsidiary SAP America, stipulated to their own liability in this case for contributory copyright infringement. This was a decision made and authorized by SAP AG's Executive Board ­ the highest decision-making management authority in the company. SAP's stipulation to contributory copyright infringement is included in your binder at Tab 6 (Trial Stipulation and [Proposed] Order Regarding Contributory Infringement). This stipulation is now an Order of the Court. This stipulation means that SAP America and SAP AG have admitted that (1) they knew or had reason to know of the infringing activity of TomorrowNow; and (2) they intentionally induced or materially contributed to the infringing activity. While mere knowledge of infringing conduct is insufficient to show contributory infringement, inaction can in some cases constitute "material contribution." You have heard testimony from four of the five members of SAP AG's Executive Board as it was comprised at all relevant times between December 2004, when SAP AG first considered acquiring TomorrowNow, and March 2007, when Plaintiffs initiated this lawsuit. The five members of the Board between 2004 and 2007 were Mr. Kagermann, Mr. Oswald, Mr. Brandt, Mr. Agassi and Mr. Apotheker. Some of these witnesses, including Mr. Brandt, have testified that they either (1) did not know or have reason to know of the copyright infringement at issue in this case, or (2) knew of the infringement, but directed or put pressure on TomorrowNow to stop the infringement. Any testimony, question or argument that states or suggests that SAP AG (including members of its Executive Board) either did not know or have reason to know of the infringement or did not materially contribute to the copyright infringement at issue in this case is inconsistent with SAP's stipulation to contributory copyright infringement in this case. To the extent that any such testimony, question or argument is inconsistent with the pretrial stipulation A/73554398.6/2021039-0000324170 to liability for contributory copyright infringement, you are to disregard the testimony, question 8 Case No. 07-CV-01658 PJH (EDL) PROPOSED CURATIVE INSTRUCTIONS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 or argument. However, you may consider evidence of the knowledge of particular board members to the extent it is offered to address Plaintiffs' hypothetical license calculation; you may only consider this evidence for the limited purpose of evaluating the amount of Plaintiffs' damages claim. Authority: Elements of Contributory Infringement: Dkt. No. 762 (Order RE Motions for Partial Summary Judgment) at 8; Ninth Circuit Manual of Model Jury Instructions, Instruction 17.21 (Civil) (modified). Stipulation: Dkt. No. 965 (Amended Trial Stipulation and [Proposed] Order No. 1 Regarding Liability, Dismissal of Claims, Preservation of Claims, Preservation of Defenses, and Objections to Evidence at Trial) at ¶ 5 ("SAP and TN retain all defenses to the alleged causation, fact or amount of or entitlement to disgorgement, actual or punitive damages or any other legal or equitable remedy.") Testimony In This Case: See, e.g., November 5, 2010 (Volume 4) Tr. 700:5-13 (W. Brandt: "it was stated very clearly in these Board meetings that TomorrowNow's operating procedures had to be changed"); 706:8-18 ("My understanding is that this was a piece of information given to the management of TomorrowNow, that the operating procedures have to be changed . . . in, as far as I can remember, at the end of the first quarter 2005"); 713:25-714:4 ("At the time in 2005, I knew about the risk, the potential risk that TomorrowNow might not follow the copyright laws and that they were not doing this in an adequate way. And we did everything possible in order to have them follow the correct procedure and the respect of the copyright laws."); 716:11-12 ("We knew that a risk existed and undertook the necessary steps to mitigate the risk.") A/73554398.6/2021039-0000324170 9 Case No. 07-CV-01658 PJH (EDL) PROPOSED CURATIVE INSTRUCTIONS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 A/73554398.6/2021039-0000324170 EXHIBIT C 10 Case No. 07-CV-01658 PJH (EDL) PROPOSED CURATIVE INSTRUCTIONS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Redline Between the Parties' Instructions CURATIVE INSTRUCTION TESTIMONY RELATING TO CONTRIBUTORY INFRINGEMENT On October 29, 2010, SAP AG and its wholly owned subsidiary SAP America, stipulated to their own liability in this case for contributory copyright infringement. This was a decision made and authorized by SAP AG's Executive Board ­ the highest decision-making management authority in the company. SAP's stipulation to contributory copyright infringement is included in your binder at Tab 6 (Trial Stipulation and [Proposed] Order Regarding Contributory Infringement). This stipulation is now an Order of the Court. This stipulation means that SAP America and SAP AG have admitted that (1) they knew or had reason to know of the infringing activity of TomorrowNow; and (2) they intentionally induced or materially contributed to< or induced> the infringing activity. While mere knowledge of infringing conduct is insufficient to show contributory infringement, inaction <combined with specific knowledge >can in some cases constitute "material contribution." You have heard testimony from four of the five members of SAP AG's Executive Board as it was comprised at all relevant times between December 2004, when SAP AG first considered acquiring TomorrowNow, and March 2007, when Plaintiffs initiated this lawsuit. The five members of the Board between 2004 and 2007 were Mr. Kagermann, Mr. Oswald, Mr. Brandt, Mr. Agassi and Mr. Apotheker. Some of these witnesses, including Mr. Brandt, have testified that they either (1) did not know or have reason to know of the copyright infringement at issue in this case, or (2) knew of the infringement, but directed or put pressure on TomorrowNow to stop the infringement. Any testimony, question or argument that states or suggests that SAP AG (including members of its Executive Board) either did not know or have reason to know of the infringement or did not <intentionally >materially contribute to< or induce> the copyright infringement at issue in this case is inconsistent with SAP's stipulation to contributory copyright A/73554398.6/2021039-0000324170 infringement in this case. To the extent that any such testimony, question or argument is 11 Case No. 07-CV-01658 PJH (EDL) PROPOSED CURATIVE INSTRUCTIONS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 inconsistent with the pretrial<SAP AG's and SAP America's> stipulation to liability for contributory copyright infringement, you are to disregard the testimony, question or argument. <[One example of argument you should disregard is SAP counsel's statement in opening that "SAP's Board told TN not to download materials onto their own computers but to have them downloaded onto the customer's computer. That was a directive that was given by the Board. But it was not followed through on, and TN did not comply with it." One example of testimony you should disregard is Mr. Brandt's testimony that "we did everything possible in order to have them follow the correct procedure and the respect of the copyright laws."] >However, you may consider evidence of the knowledge of particular board members to the extent it is offered to address Plaintiffs' hypothetical license calculation; you may only consider this evidence for the limited purpose of evaluating the <appropriate >amount of Plaintiffs' damages claim.<damages in this case, and you may take that evidence into account in evaluating the credibility of any witness. > Authority: Elements of Contributory Infringement: Dkt. No. 762 (Order RE Motions for Partial Summary Judgment) at 8; Ninth Circuit Manual of Model Jury Instructions, Instruction 17.21 (Civil) (modified). Stipulation: Dkt. No. 965 (Amended Trial Stipulation and [Proposed] Order No. 1 Regarding Liability, Dismissal of Claims, Preservation of Claims, Preservation of Defenses, and Objections to Evidence at Trial) at ¶ 5 ("SAP and TN retain all defenses to the alleged causation, fact or amount of or entitlement to disgorgement, actual or punitive damages or any other legal or equitable remedy.") Testimony In This Case: See, e.g., November 5, 2010 (Volume 4) Tr. 700:5-13 (W. Brandt: "it was stated very clearly in these Board meetings that TomorrowNow's operating procedures had to be changed"); 706:8-18 ("My understanding is that this was a piece of information given to the management of TomorrowNow, that the operating procedures have to be changed . . . in, as A/73554398.6/2021039-0000324170 far as I can remember, at the end of the first quarter 2005"); 713:25-714:4 ("At the time in 2005, 12 Case No. 07-CV-01658 PJH (EDL) PROPOSED CURATIVE INSTRUCTIONS 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 I knew about the risk, the potential risk that TomorrowNow might not follow the copyright laws and that they were not doing this in an adequate way. And we did everything possible in order to have them follow the correct procedure and the respect of the copyright laws."); 716:11-12 ("We knew that a risk existed and undertook the necessary steps to mitigate the risk.") <SAP Opening Statement In This Case: "SAP's Board told TN not to download materials onto their own computers but to have them downloaded onto the customer's computer. That was a directive that was given by the Board. But it was not followed through on, and TN did not comply with it." November 2, 2010 (Volume 2) Tr. 385:5-10. > A/73554398.6/2021039-0000324170 13 Case No. 07-CV-01658 PJH (EDL) PROPOSED CURATIVE INSTRUCTIONS

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