Oracle America, Inc. v. Google Inc.

Filing 1004

OBJECTIONS to Oracle's Objection to Jury Instruction on Equitable Defenses by Oracle America, Inc.. (Muino, Daniel) (Filed on 4/29/2012)

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MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[e-mail]
KENNETH A. KUWAYTI (Bar No. 145384)
[e-mail]
MARC DAVID PETERS (Bar No. 211725)
[e-mail]
DANIEL P. MUINO (Bar No. 209624)
[e-mail]
755 Page Mill Road, Palo Alto, CA 94304-1018
Telephone: [phone] / Facsimile: [phone]
BOIES, SCHILLER & FLEXNER LLP
DAVID BOIES (Admitted Pro Hac Vice)
[e-mail]
333 Main Street, Armonk, NY 10504
Telephone: [phone] / Facsimile: [phone]
STEVEN C. HOLTZMAN (Bar No. 144177)
[e-mail]
1999 Harrison St., Suite 900, Oakland, CA 94612
Telephone: [phone] / Facsimile: [phone]
ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[e-mail]
DEBORAH K. MILLER (Bar No. 95527)
[e-mail]
MATTHEW M. SARBORARIA (Bar No. 211600)
[e-mail]
500 Oracle Parkway, Redwood City, CA 94065
Telephone: [phone] / Facsimile: [phone]
Attorneys for Plaintiff
ORACLE AMERICA, INC.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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ORACLE AMERICA, INC.

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Plaintiff,

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v.

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GOOGLE INC.

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Defendant.

Case No. CV 10-03561 WHA
ORACLE’S OBJECTION TO JURY
INSTRUCTION ON EQUITABLE
DEFENSES
Dept.: Courtroom 8, 19th Floor
Judge: Honorable William H. Alsup

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ORACLE’S OBJECTION TO JURY INSTRUCTION ON EQUITABLE DEFENSES
CASE NO. CV 10-03561 WHA
sf-3139226

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ORACLE OBJECTS TO GOOGLE’S PROPOSED VERDICT FORM QUESTION
ON THE EQUITABLE DEFENSES
Google claims that its copyright infringement is excused under the equitable defenses of

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waiver, estoppel, implied license, and laches. At the Charging Conference on April 27, 2012,

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counsel for Google proposed that the jury be asked the following advisory verdict question,

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absent any instructions on the equitable defenses: “Has Google proven that Sun or Oracle led it

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to believe through its affirmative actions that it did not need a license for what it was doing?”

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(RT at 2444:2-6.) Oracle objects to this proposed question because it vastly understates the

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requirements for proving the equitable defenses, each of which is different. The proposed

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question may lead the jury to mistakenly conclude that Google’s infringement can be excused if

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the question can be answered in the affirmative. A significant percentage of Google’s case has

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been based on arguments about these equitable defenses, and several of these arguments ― like

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Google’s contentions regarding Apache Harmony ― have been legally incorrect. Oracle is

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concerned about the prejudice that may result if these equitable defenses now become part of the

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jury’s deliberation process in the form of a overly simplistic single question.

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If the Court chooses to take this streamlined approach rather than asking specific

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questions and providing instructions for each equitable defense, Oracle requests the following

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modification to better capture some of the common requirements of Google’s equitable defenses:

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“Has Google proven that, as a result of the affirmative acts of Sun
or Oracle, Google actually and reasonably believed that it did not
need a license for what it was doing?”

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An advisory verdict on this single question would not be a true finding on any of the

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equitable defenses. That work will have to be done by the Court in view of the full law. As

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explained briefly below, the law on each equitable defense requires a greater showing by Google

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than is reflected in the single verdict form question, as posed by Google or by Oracle.

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(1)

The equitable defense of waiver requires Google to prove that Oracle intentionally

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relinquished its known rights to the 37 API packages in Java. United States v. King Features

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Entm’t, Inc., 843 F.2d 394, 399 (9th Cir. 1988) (“Waiver is the intentional relinquishment of a

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known right with knowledge of its existence and the intent to relinquish it”); Adidas-America,
ORACLE’S OBJECTION TO JURY INSTRUCTION ON EQUITABLE DEFENSES
CASE NO. CV 10-03561 WHA
sf-3139226

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Inc. Payless Shoesource, Inc., 546 F. Supp. 2d 1029, 1074 (D. Or. 2008) (failure to act to enforce

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a right, without more, is insufficient evidence of intent to waive).

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(2)

For equitable estoppel, Google must show that (1) Oracle/Sun knew of Google’s

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infringement; (2) Oracle/Sun intended that Google rely on Mr. Schwartz’s statements regarding

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Android, or acted in such a way that Google had a right to rely on those statements; (3) Google

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was ignorant of its infringement of Oracle/Sun’s rights; and (4) Google relied on Oracle/Sun’s

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conduct or statements to its material harm. Hampton v. Paramount Pictures Corp., 279 F.2d 100,

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104 (9th Cir. 1960) (listing four elements of estoppel).

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(3)

To claim an implied license, Google must prove that Oracle/Sun affirmatively

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granted permission to Google to use the 37 API packages at issue and that the entire course of

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conduct between Oracle/Sun and Google over the relevant time period led Google to reasonably

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infer Oracle/Sun’s consent. Effects Assocs. v. Cohen, 908 F.2d 555, 558-559 (9th Cir. 1990)

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(finding an implied license where plaintiff created the copyrighted work at defendant’s request

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and handed it over to him, “intending defendant copy and distribute it”); Wang Labs., Inc. v.

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Mitsubishi Elecs. Am., Inc., 103 F.3d 1571, 1581 (Fed. Cir. 1997) (“The primary difference

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between the estoppel analysis in implied license cases and the analysis in equitable estoppel cases

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is that implied license looks for an affirmative grant of consent or permission to make, use, or

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sell: i.e., a license”) (internal citations omitted; emphasis added).

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(4)

Lastly, for the equitable defense of laches, Google must prove that (1) Oracle/Sun

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unreasonably delayed filing the lawsuit; (2) the delay was inexcusable, and (3) Google has

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suffered material prejudice due to Oracle/Sun’s delay. Danjaq LLC v. Sony Corp., 263 F.3d 942,

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952-56 (9th Cir. 2001) (three-part analysis of “delay,” “reasonableness of the delay,” and

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“prejudice”); Winn v. Opryland Music Group, Inc., 22 Fed. Appx. 728, 729 (9th Cir. 2001)

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(same). Additionally, “laches is not available in a case of willful infringement, when the

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infringing conduct occurs ‘with knowledge that the defendant’s conduct constitutes copyright

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infringement.” Winn, 22 Fed. Appx. at 729; Danjaq, 263 F.3d at 956-57 (willfulness exception to

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laches “remains the law of this circuit”).

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ORACLE’S OBJECTION TO JURY INSTRUCTION ON EQUITABLE DEFENSES
CASE NO. CV 10-03561 WHA
sf-3139226

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The proposed single advisory verdict question, even in the modified form that Oracle

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proposes, obviously does not capture all elements of the equitable defenses. Omitted from the

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question, inter alia, are the requirements that (1) Oracle intentionally relinquish its known rights

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in the 37 API packages (waiver), (2) Oracle/Sun intended that Google rely on Oracle/Sun’s

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conduct or statements (estoppel), (3) Google actually relied on Oracle/Sun’s conduct or

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statements to its material detriment (estoppel), (4) Oracle/Sun affirmatively granted Google

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permission to use the 37 API packages without a license (implied license), (5) any delay in suit

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was unreasonable and caused Google to suffer prejudice (laches); and (6) that a finding of willful

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infringement may negate Google's ability to claim laches.

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Oracle is concerned that a jury interrogatory in either proposed format may mislead the

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jury into believing that Google’s infringing conduct could be excused on facts that would fall well

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short of the actual requirements for the equitable defenses Google asserts. Further, because the

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interrogatory omits necessary elements of Google’s defenses, it would appear to be of limited

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value to the Court. That is, if the Court does pose this question to the jury, the answer could

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provide the jury’s view on the particular question posed, but would not be sufficient to support an

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advisory verdict in Google’s favor on any specific equitable defense. Hence its usefulness to the

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Court in making its own decision on each of Google’s equitable defenses seems questionable at

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best.

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CONCLUSION

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For these reasons, the Court should not include Google’s proposed advisory verdict

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question. The Court must decide these equitable defenses, and its decision will be aided by the

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evidence presented at trial. Giving the jury the proposed, over-simplified question creates a

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//

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//

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ORACLE’S OBJECTION TO JURY INSTRUCTION ON EQUITABLE DEFENSES
CASE NO. CV 10-03561 WHA
sf-3139226

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substantial risk of jury confusion, diverting attention from the factual issues the jury must decide.

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If the question is given, it should be in the modified form set forth above.

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Dated: April 29, 2012

MORRISON & FOERSTER LLP
By: _/s/ Daniel P. Muino
Daniel P. Muino
MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[e-mail]
MARC DAVID PETERS (Bar No. 211725)
[e-mail]
DANIEL P. MUINO (Bar No. 209624)
[e-mail]
755 Page Mill Road
Palo Alto, CA 94304-1018
Telephone: [phone]
Facsimile: [phone]
BOIES, SCHILLER & FLEXNER LLP
DAVID BOIES (Admitted Pro Hac Vice)
[e-mail]
333 Main Street
Armonk, NY 10504
Telephone: [phone]
Facsimile: [phone]
STEVEN C. HOLTZMAN (Bar No. 144177)
[e-mail]
1999 Harrison St., Suite 900
Oakland, CA 94612
Telephone: [phone]
Facsimile: [phone]
ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[e-mail]
DEBORAH K. MILLER (Bar No. 95527)
[e-mail]
MATTHEW M. SARBORARIA (Bar No.
211600)
[e-mail]
500 Oracle Parkway
Redwood City, CA 94065
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiff
ORACLE AMERICA, INC.

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ORACLE’S OBJECTION TO JURY INSTRUCTION ON EQUITABLE DEFENSES
CASE NO. CV 10-03561 WHA
sf-3139226

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