Oracle America, Inc. v. Google Inc.

Filing 1076

MOTION in Limine re Peter Kessler Testimony re Android Code Modifications filed by Google Inc.. Responses due by 5/21/2012. Replies due by 5/29/2012. (Van Nest, Robert) (Filed on 5/6/2012)

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KEKER & VAN NEST LLP
ROBERT A. VAN NEST - # 84065
[e-mail]
CHRISTA M. ANDERSON - # 184325
[e-mail]
DANIEL PURCELL - # 191424
[e-mail]
633 Battery Street
San Francisco, CA 94111-1809
Telephone:
415 391 5400
Facsimile:
415 397 7188

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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Plaintiff,

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v.

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GOOGLE INC.,

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Case No. 3:10-cv-03561 WHA
MOTION IN LIMINE RE PETER
KESSLER TESTIMONY RE ANDROID
CODE MODIFICATIONS
Dept.:
Judge:

Courtroom 8, 19th Floor
Hon. William Alsup

Defendant.

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MIL RE KESSLER TESTIMONY RE ANDROID CODE MODIFICATIONS
Case No. 3:10-CV-03561 WHA
661991.04

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I.

INTRODUCTION
Google moves to exclude testimony by Oracle engineer Peter Kessler regarding alleged

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use of the ’104 patent in Android’s Dalvik virtual machine source code and modifications that

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Oracle engineers allegedly made to source code. The issue is whether Mr. Kessler, who was

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never disclosed by Oracle as a witness who would provide opinion testimony, can provide such

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expert testimony on behalf of Oracle. He cannot, for at least three reasons. First, Oracle

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disclosed a different engineer, Mr. Vandette, to testify on the topic of Google’s alleged use of the

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’104 patent and the steps he took to turn off the allegedly infringing features in Android. Second,

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the only testimony for which Oracle disclosed Mr. Kessler was Oracle’s—not Google’s—

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practice of the asserted claims of the patents in suit. Third, at deposition, Oracle blocked

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questioning regarding the very topic for which it now apparently intends to present Mr. Kessler,

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asserting privilege.

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II.

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ARGUMENT
A.

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Oracle disclosed Mr. Vandette—not Mr. Kessler—to testify about Google’s
use of the ’104 patent and the steps taken to disable that functionality in the
Dalvik source code.

The demonstrative slides disclosed by Oracle to Google in connection with Mr. Kessler’s

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testimony fall into two categories: (1) side-by-side comparisons of Android’s Dalvik source code

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in modified and unmodified form; and (2) slides related to “Use of the ’104 Patent in the Dalvik

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Sources” (as reflected in the titles). This does not square with Oracle’s disclosures pursuant to

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Rule 26(a)(2)(C) of the Federal Rules of Civil Procedure. Those disclosures, dated July 29, 2011,

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include three Oracle employees designated to offer opinion testimony: Mssrs. Landau, Poore,

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and Vandette. Each is disclosed regarding Dalvik code modifications and benchmark

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performance testing related to particular patents. The disclosure for Mr. Vandette stated, in

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relevant part:

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Mr. Vandette is a current employee of Oracle who may present testimony on the
subject of performance benchmark analysis and testing. Mr. Vandette may testify
about the performance benchmark analysis and testing he conducted to measure
the benefits Android obtains from practicing United States Patent Nos. RE38,104
(“the ’104 patent”) and 6,910,205 (“the ’205 patent”). Mr. Vandette may also
testify about the performance benchmark analysis and testing he conducted to
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Case No. 3:10-cv-03561 WHA

661991.04

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measure the benefits Java SE Embedded obtains from practicing the ’205 patent.
Mr. Vandette may also provide testimony regarding the ways in which Android
practices the ’104 and ’205 patents, and the steps he took to turn off the patented
features to measure the performance hits to Android.

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Oracle America, Inc.’s Disclosures Pursuant to Fed. R. Civ. P. 26(a)(2)(C) (July 29, 2011)

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(emphases added). In short, Oracle disclosed Mr. Vandette to testify about Android’s alleged use

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of the ’104 patent and the steps he allegedly took to modify the Android source code for his

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benchmark tests. And while Oracle supplemented its Rule 26(a)(2)(C) disclosure on February 7,

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2012, that supplemented disclosure only added Mr. Reinhold, not Mr. Kessler.

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Based on the demonstrative slides, it seems Oracle wants to change horses. The problem

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is, Oracle never disclosed Mr. Kessler as an employee expert regarding Android’s alleged use of

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the ’104 patent and the steps he took to modify the Android source code for his benchmark tests.

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Because Mr. Kessler was not so disclosed—in contrast to Mr. Vandette, who was explicitly

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disclosed—Oracle should be precluded from eliciting from Mr. Kessler testimony regarding

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Android’s alleged use of the ’104 patent and the steps taken to modify the Android source code.

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B.

Mr. Kessler was only disclosed to testify about Oracle’s use of the ’104 patent.

In addition to Oracle’s failure to disclose Mr. Kessler as an employee expert to testify

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about Android’s use of the ’104 patent and the steps taken to modify the Android source code—

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and its actual disclosure of someone else on those topics—Oracle’s witness list also failed to

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disclose Mr. Kessler regarding these topics. According to Oracle’s witness list, “Mr. Kessler is

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an Oracle engineer. He may testify regarding Oracle’s products that practice the asserted claims

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of the patents-in-suit.” (Dkt. No. 525-2 at 8 (emphasis added).) He is not disclosed regarding

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Google’s alleged use of the ’104 patent or modifications to Android source code. As such, he

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should be precluded from testifying on those issues.

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C.

Oracle asserted privilege regarding the topics for which it now intends Mr.
Kessler to testify.
If the lack of proper disclosures are not sufficient grounds to exclude Mr. Kessler’s
proposed testimony, the fact that Oracle asserted privilege over the very topics for which Mr.
Kessler is now being offered should be. As reflected in the demonstrative slides, the main topic
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for which Oracle intends to use Mr. Kessler is “Use of the ’104 Patent in the Dalvik Sources.” In

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other words, alleged infringement of the ’104 patent by Android. But when asked whether he did

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an infringement analysis for the ’104 patent, Oracle limited the answer to a simple yes or no

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question.
Q. Have you ever done an infringement analysis on Android products for the
’104 patent?
Mr. Norton: You may answer that question a yes or no.
A: Yes.

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See Kessler Dep. 71:13-17. Oracle would not even allow questioning as to the timing of this
analysis, instructing the witness not to answer.
Q. When did you conduct these infringement analyses?
MR. NORTON: I'll object and instruct the witness not to answer the question on
grounds of attorney-client privilege and work product.
Q. Will you follow that instruction?
A. Yes, I will.

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Id. at 73:5-12. Given its refusal to allow discovery into Mr. Kessler’s infringement analysis of

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the ’104 patent, Oracle cannot now offer Mr. Kessler to testify at trial regarding “Use of the ’104

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Patent in the Dalvik Sources.”

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III.

CONCLUSION

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For the foregoing reasons, the Court should grant a motion in limine prohibiting Mr.

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Kessler from testifying regarding Android’s alleged practice of the ’104 patent and the steps

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taken to modify the Android source code.

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Dated: May 6, 2012

KEKER & VAN NEST LLP

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By:

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

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MIL RE KESSLER TESTIMONY RE ANDROID CODE MODIFICATIONS
Case No. 3:10-cv-03561 WHA
661991.04