Oracle America, Inc. v. Google Inc.

Filing 1015

OBJECTIONS to re #1012 Order, #1014 Objection Google's Objections to Final Charge to the Jury (Phase One) and Special Verdict Form (corrected version of Dkt. 1014) by Google Inc.. (Van Nest, Robert) (Filed on 4/29/2012)

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KEKER & VAN NEST LLP
ROBERT A. VAN NEST - # 84065
[e-mail]
CHRISTA M. ANDERSON - # 184325
[e-mail]
MICHAEL S. KWUN - # 198945
[e-mail]
633 Battery Street
San Francisco, CA 94111-1809
Tel: [phone]
Fax: [phone]

KING & SPALDING LLP
DONALD F. ZIMMER, JR. - #112279
[e-mail]
CHERYL A. SABNIS - #224323
[e-mail]
101 Second Street, Suite 2300
San Francisco, CA 94105
Tel: [phone]
Fax: [phone]

KING & SPALDING LLP
SCOTT T. WEINGAERTNER
(Pro Hac Vice)
[e-mail]
ROBERT F. PERRY
[e-mail]
BRUCE W. BABER (Pro Hac Vice)
1185 Avenue of the Americas
New York, NY 10036
Tel: [phone]
Fax: [phone]

IAN C. BALLON - #141819
[e-mail]
HEATHER MEEKER - #172148
[e-mail]
GREENBERG TRAURIG, LLP
1900 University Avenue
East Palo Alto, CA 94303
Tel: [phone]
Fax: [phone]

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Attorneys for Defendant
GOOGLE 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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Case No. 3:10-cv-03651 WHA

Plaintiff,

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v.

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GOOGLE’S OBJECTIONS TO FINAL
CHARGE TO THE JURY (PHASE ONE)
AND SPECIAL VERDICT FORM

GOOGLE INC.,

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Dept.:
Judge:

Courtroom 8, 19th Floor
Hon. William Alsup

Defendant.

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GOOGLE’S OBJS. TO FINAL CHARGE TO THE JURY (PHASE ONE) AND SPECIAL VERDICT FORM
Case No. 3:10-CV-03561 WHA
658227.01

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I.

INTRODUCTION

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Google offers these further objections and comments on the Court’s Final Charge to the

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Jury (Phase One) and Special Verdict Form. See Dkts. 1012, 1012-1. Google also preserves all

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prior objections made to the jury instructions and verdict form, including but not limited to its

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objection to instructing the jury that Oracle’s works as a whole are anything smaller than the

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works it registered. See Dkt 996; RT 2332-244 (transcript of charging conference).

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II.

OBJECTIONS TO THE FINAL CHARGE

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A.

Instruction 17

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Google understands that the Court has reserved the issue of whether the structure,

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sequence and organization of the elements of the 37 API packages are copyrightable, and that the

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Court is aware that Google argues that they are not. Google objects to the instruction to the jury

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that “the copyrights in question do cover the structure, sequence and organization of the

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compilable code,” because the jury should be instructed that the structure, sequence and

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organization of the elements of the 37 API packages is not copyrightable, for the reasons stated in

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Google’s prior filings on this subject. See Dkts. 260, 368, 562, 601, 778, 823, 831, 852, 860, 897,

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898, 955, 993.

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B.

Instruction 25

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Google requests that the Court change “virtual identity” in this instruction to “virtually

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identical,” for reasons of clarity. The Ninth Circuit case law uses the phrase “virtually identical”

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rather than “virtual identity” where necessary for proper grammar. See Apple Computer, Inc. v.

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Microsoft Corp., 35 F.3d 1435, 1442 (9th Cir. 1994) (“we conclude that only ‘thin’ protection,

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against virtually identical copying, is appropriate”).

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Google also requests that the Court change “compare to the works as whole” to “compare

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to the works as a whole” (deleting “to” and adding “a”). The Ninth Circuit requires that the

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defendant’s work as a whole be compared to the plaintiff’s work as a whole. See, e.g., Apple, 35

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F.3d at 1439 (Microsoft’s works as a whole had to be compared to Apple’s work as a whole); see

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also Dkt. 996 at 3:4-7.

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GOOGLE’S OBJS. TO FINAL CHARGE TO THE JURY (PHASE ONE) AND SPECIAL VERDICT FORM
Case No. 3:10-CV-03561 WHA
658227.01

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C.

Instruction 26

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Google objects to the lack of a fifth factor in the fair use instructions and the failure to

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indicate that the four specified factors are not exhaustive, for the reasons given in Google’s

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comments on the Court’s prior proposed charge to the jury, and at the charging conference. See

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Dkt. 996 at 1:16-27; RT 2410:5-8, 2410:21-2411:6, 2412:20-2413:21.

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D.

Instruction 30

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At the charging conference, Google agreed that there was no jury issue regarding public

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dedication, although there is an issue for the Court on this issue. See RT 2425:9-2426:15. At that

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time, however, the proposed verdict form did not include a question regarding Google’s equitable

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defenses. See Dkt. 994-1. The sentence regarding public dedication was also not followed, at the

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time, by the next sentence in the final charge that refers to Google’s contentions.

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Because the verdict form now does include a question regarding Google’s equitable

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defenses, see Dkt. 1012-1 at 3 (Question 4), there now is a jury issue regarding public dedication.

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Namely, because Sun dedicated the Java language, including the APIs, to the public, Sun engaged

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in conduct that it knew or should have known would reasonably lead Google to believe that it

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would not need a license to use the structure, sequence and organization of the APIs at issue.

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Google therefore objects to the two clauses on lines 18-20 of Instruction 30 in the final charge

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that state, “but the parties agree that there is no such issue for you to decide. Again, Google

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makes no such contention in this trial . . . .” Dkt. 1012:18-20. Google requests that these two

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clauses be deleted. The first is incorrect, because the jury is now being asked to decide, on an

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advisory basis, an equitable question that relates to the issue of public dedication. The second is

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incorrect because Google does make such a contention in this trial, although Google’s contention

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relates to issues that are for the Court to decide.

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Google also renews its objections to this entire instruction. See RT 2418:18-23, 2419:162422:25, 2423:14-2424:7.

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GOOGLE’S OBJS. TO FINAL CHARGE TO THE JURY (PHASE ONE) AND SPECIAL VERDICT FORM
Case No. 3:10-CV-03561 WHA
658227.01

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III.

ERRORS IN THE FINAL CHARGE AND VERDICT FORM

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A.

Instruction 26

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At the charging conference, Google requested that “The public” be changed to “Anyone,”

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and the Court agreed to this change, without any objection from Oracle. See RT 2407:9-12. The

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final charge does not reflect this change. Google renews its request that “The public” be changed

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to “Anyone” in Instruction 26.

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B.

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The final charge does not have page numbers.

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C.

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Page numbers in the Final Charge

Introduction to the Verdict Form

The Court may want to change the first line of the verdict form so that it states that the
jury’s “answers” must be unanimous.

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D.

Question 3 in the Verdict Form

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The jury could misread Question 3, and conclude that an answer of “Yes” means “yes, the

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use was de minimis.” Google requests that the Court add a parenthetical, below the “Yes” on this

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question, stating, “(infringing),” and that a similar parenthetical, stating “(not infringing)” be

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added below the “No” on this question.

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E.

Question 4 in the Verdict Form

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For clarity, Google requests that on line 15 of Question 4, that the phrase “Your answer

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will be used . . .” be changed to “Your answers to Questions 4A and 4B” in order to ensure that

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the jury understands that only Question 4 relates to an issue to be decided by the Court. For the

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same reason, Google requests that the phrase “These interrogatories” at the start of the second

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sentence of that same paragraph, starting on line 15, be changed to “Questions 4A and 4B.”

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Dated: April 29, 2012

KEKER & VAN NEST LLP

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By:

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/s/ Robert A. Van Nest
ROBERT A. VAN NEST
Attorneys for Defendant
GOOGLE INC.

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GOOGLE’S OBJS. TO FINAL CHARGE TO THE JURY (PHASE ONE) AND SPECIAL VERDICT FORM
Case No. 3:10-CV-03561 WHA
658227.01