Oracle America, Inc. v. Google Inc.
Filing
1078
MOTION in Limine re Evidence Allegedly Supporting Knowledge Requirement for Indirect Infringement filed by Google Inc.. Responses due by 5/21/2012. Replies due by 5/29/2012. (Attachments: #1 Exhibit A, #2 Exhibit B)(Van Nest, Robert) (Filed on 5/6/2012)
1
2
3
4
5
6
7
8
9
10
11
12
KEKER & VAN NEST LLP
ROBERT A. VAN NEST - # 84065
rvannest@kvn.com
CHRISTA M. ANDERSON - # 184325
canderson@kvn.com
DANIEL PURCELL - # 191424
dpurcell@kvn.com
633 Battery Street
San Francisco, CA 94111-1809
Telephone:
415 391 5400
Facsimile:
415 397 7188
KING & SPALDING LLP
DONALD F. ZIMMER, JR. - #112279
fzimmer@kslaw.com
CHERYL A. SABNIS - #224323
csabnis@kslaw.com
101 Second Street, Suite 2300
San Francisco, CA 94105
Tel: 415.318.1200
Fax: 415.318.1300
KING & SPALDING LLP
SCOTT T. WEINGAERTNER
(Pro Hac Vice)
sweingaertner@kslaw.com
ROBERT F. PERRY
rperry@kslaw.com
BRUCE W. BABER (Pro Hac Vice)
1185 Avenue of the Americas
New York, NY 10036
Tel: 212.556.2100
Fax: 212.556.2222
IAN C. BALLON - #141819
ballon@gtlaw.com
HEATHER MEEKER - #172148
meekerh@gtlaw.com
GREENBERG TRAURIG, LLP
1900 University Avenue
East Palo Alto, CA 94303
Tel: 650.328.8500
Fax: 650.328.8508
13
14
Attorneys for Defendant
GOOGLE INC.
15
UNITED STATES DISTRICT COURT
16
NORTHERN DISTRICT OF CALIFORNIA
17
SAN FRANCISCO DIVISION
18
ORACLE AMERICA, INC.,
19
Plaintiff,
20
v.
21
Case No. 3:10-cv-03561 WHA
MOTION IN LIMINE RE EVIDENCE
ALLEGEDLY SUPPORTING
KNOWLEDGE REQUIREMENT FOR
INDIRECT INFRINGEMENT
GOOGLE INC.,
22
Defendant.
Dept.:
Judge:
Courtroom 8, 19th Floor
Hon. William Alsup
23
24
25
26
27
28
MIL RE EVIDENCE ALLEGEDLY SUPPORTING KNOWLEDGE REQ. FOR INDIRECT INFRGT.
Case No. 3:10-CV-03561 WHA
661965.01
1
I.
2
3
4
5
6
7
8
9
10
11
12
The patents that Oracle has asserted in this case contain method claims that in many
instances are allegedly infringed not by Google itself, but by developers or end users of open
source software originally created by Google. In order to prove that Google is liable for such
alleged infringement by others (and to collect damages for any such alleged indirect
infringement), the law requires Oracle to show that Google knew of the specific patents on which
Oracle is suing at the time of the alleged infringement by those other persons. It is not sufficient
to show that Google knew generally that Sun or Oracle had patents, nor to show that Google
could have looked at Sun’s or Oracle’s portfolios and determined that they contained patents that
might cover the relevant functionality. And the inconvenient -- and undisputed -- truth is that
Oracle never informed Google of the patents Google was allegedly infringing until July 20, 2010
-- mere weeks before this lawsuit was filed.
13
14
15
16
17
18
19
20
21
22
INTRODUCTION
Because of its decision to wait until the eleventh hour to reveal the patents that were
allegedly infringed, Oracle has no proof of an essential element of its claims for alleged indirect
infringement occurring before that time. Accordingly, it is now seeking to muddy the waters by
designating deposition testimony from Google executive Andy Rubin stating, in substance, that
Google had not researched Sun’s patent portfolio in the years leading up to this lawsuit. Oracle
undoubtedly wishes to introduce such testimony in order to confuse the jury into believing that
whether Google investigated Sun’s patents at some point in the past is relevant to the question
whether Google had the requisite knowledge and state of mind to support liability for indirect
infringement. But that is not the law. Accordingly, the testimony that Oracle seeks to offer from
Mr. Rubin’s deposition should be excluded under Federal Rule of Evidence 402 and/or 403.
23
II.
ARGUMENT
24
A.
25
26
Oracle must show knowledge of the patents-in-suit in order to establish
liability for indirect infringement
It is black-letter law that “[a] patent owner must prove the defendant’s knowledge of the
27
infringed patent to prove indirect infringement by inducement or contribution.” Avidyne Corp. v.
28
L-3 Comm’ns Avionics Sys., Inc., No. 05-11098-GAO, 2012 U.S. Dist. LEXIS 43149 (D. Mass.
1
MIL RE EVIDENCE ALLEGEDLY SUPPORTING KNOWLEDGE REQ. FOR INDIRECT INFRGT.
Case No. 3:10-cv-03561 WHA
661965.01
1
Mar. 29, 2012), at *2 (granting summary judgment of no indirect infringement by an accused
2
infringer for the time prior to receipt of notice by way of a cease and desist letter). Here, the
3
evidence is undisputed that Oracle never provided Google with notice of the patents Google was
4
allegedly infringing prior to a July 20, 2010 meeting between representatives of the companies.
5
There will be evidence introduced in Phase 2 regarding Oracle’s failure to provide notice to
6
Google of the specific patents that Oracle alleged were infringed. However, there is already
7
evidence in the record on this point from Phase 1. Oracle’s own President and Chief Financial
8
Officer confirmed during her trial testimony that Google was not provided with notice of the
9
patents Oracle alleged Google was infringing prior to the July 2010 meeting:
10
Q. And did Mr. Eustace have a response?
11
A. He -- he asked -- he asked specifically, what IP? And I said the lawyers would
follow up with their lawyers on that. And we made a -- a financial proposal, and
he was supposed to respond back to us in a little while.
12
13
RT 2314:3-7 (Catz). Because it is undisputed that Oracle did not give notice of these patents to
14
Google prior to the July 20, 2010 meeting, Oracle wishes to confuse the jury into thinking that
15
Google had an affirmative duty to seek out information on patents held by others in order to avoid
16
liability for indirect infringement. But it was not Google’s burden to look into Oracle’s patent
17
holdings; it was Oracle’s duty to put Google on notice of patents that it claimed to be infringed.
18
Allowing Oracle to introduce a repeated series of questions regarding any investigation of
19
potential patent infringement by Google (or the lack thereof) could only serve to mislead the jury
20
into thinking that such testimony is relevant to any of the issues they are to decide. It is not.
21
Moreover, inquiries into what investigation Google conducted into patent infringement
22
allegations naturally runs a risk of trenching on privileged communications, something that the
23
Court held in its January 4, 2012 motion in limine order should not be brought into the case
24
without a specific proffer and approval in advance. ECF No. 676 at 6.
25
B.
26
Since Oracle cannot show that Google had actual knowledge of either of the two patents-
27
in-suit prior to July 2010, Oracle will likely argue that the Court should instruct the jury that they
28
could determine that the knowledge requirement is satisfied if it finds that Google was “willfully
The evidence proffered by Oracle would not suffice to prove willful blindness
2
MIL RE EVIDENCE ALLEGEDLY SUPPORTING KNOWLEDGE REQ. FOR INDIRECT INFRGT.
Case No. 3:10-cv-03561 WHA
661965.01
1
blind” with respect to the patents. But the case law will not support such a notion. In the case
2
that recently approved the possibility of willful blindness substituting for actual knowledge,
3
Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011), the accused infringer had
4
“purchased an SEB fryer in Hong Kong and copied all but its cosmetic features.” Id. at 2064.
5
The Hong Kong device did not bear any U.S. patent markings, and the accused infringer
6
subsequently hired a patent attorney to conduct a right-to-use study without “telling the attorney
7
that its design was copied directly from SEB’s.” Id. Such an active attempt to avoid knowledge
8
of infringement is a far cry from the testimony that Oracle seeks to put before the jury here.
9
Samples of the questions posed by Oracle’s counsel, which Oracle now seeks to introduce into
10
evidence, include: “Why did you not conduct a review of Sun, later Oracle America’s patents as
11
they might relate to Android?” (Rubin July 27 Dep. Tr. at 10:4-6) (portions designated by Oracle
12
attached hereto as Exhibit A) and “To the best of your knowledge, between Google’s acquisition
13
of Android and the filing of the lawsuit in this action, did Google ever investigate Sun’s, later
14
Oracle America’s patent portfolio as it might relate to Android?” (Id. at 19:20-24). Leaving
15
aside the questions of privileged communications lurking in such queries, putting on such
16
evidence is no more than an attempt to make the jury think that the shoe is on the other foot with
17
respect to the burden of proving Google’s knowledge of the patents-in-suit. Elsewhere, Oracle’s
18
counsel questioned Mr. Rubin about an email suggesting that Sun had threatened to sue over
19
patent violations. (Rubin April 5 Tr. at 28:5-30:24) (portions designated by Oracle attached
20
hereto as Exhibit B). Those questions, however, were never tied to the specific patents-in-suit
21
here. Again, the net effect would be to raise questions in the mind of the jury as to Google’s
22
knowledge of the patents-in-suit, while there is no evidence suggesting that the testimony had any
23
connection with these specific patents.
24
The case law in the wake of Global-Tech has made clear that the standard for willful
25
blindness liability is not whether a company could have found patents if it had tried. For
26
example, Apeldyn Corp. v. AU Optronics Corp., No. 08-CV-568-SLR, 2011 U.S. Dist. LEXIS
27
134759 (D. Del. Nov. 15, 2011), held that an accused infringer could not be held to have been
28
willfully blind even where it was “a large company with thousands of patents,” had “a large
3
MIL RE EVIDENCE ALLEGEDLY SUPPORTING KNOWLEDGE REQ. FOR INDIRECT INFRGT.
Case No. 3:10-cv-03561 WHA
661965.01
1
intellectual property division and ample resources to monitor patents,” and had lawyers who did
2
not “collect patents issued to competitors unless asked to do so.” Id. at *28. Apeldyn
3
demonstrates that knowledge that a litigious adversary may sue for patent infringement does not
4
create a duty to affirmatively investigate the patents held by that company.
5
Even if Oracle were permitted to attempt to demonstrate that Google had knowledge of
6
the patents-in-suit through its repeated questions about Google not investigating Oracle patents
7
(and that legal theory is fatally flawed for the reasons discussed above), that still would not
8
suffice to demonstrate liability for inducement of infringement. Courts recognize that knowledge
9
a patent exists is not sufficient; the patentee must also show that the defendant intended to induce
10
infringement of that patent, which in turn requires knowledge that the induced acts constitute
11
infringement. In Mikkelsen Graphic Eng’g Inc. v. Zund America, Inc., No. 07-C-0391, 2011 U.S.
12
Dist. LEXIS 141546 (E.D. Wis. Dec. 8, 2011), the court granted summary judgment as to
13
inducement of infringement because there was insufficient evidence that the accused infringer
14
had the intent to induce acts of patent infringement. Specifically, the most the accused infringer
15
could have done “was to induce Zund to commit acts that would constitute patent infringement if
16
the patent was, at some point in the future, construed in a particular way.” Id. at *19. The same
17
is true here. The parties hotly contest whether the claims of the two patents-in-suit, properly
18
interpreted, cover what the Android SDK or Android devices do when run. Thus, even actual
19
knowledge of the patents (which Google undisputedly did not have prior to July 2010) would not
20
suffice to allow imposition of liability for inducing infringement. The testimony that Oracle
21
seeks to elicit is thus not merely confusing and prejudicial, but also insufficient to prove an
22
element of its case, and Oracle’s attempt to introduce this testimony should be rejected for this
23
reason as well.
24
III.
CONCLUSION
25
For the foregoing reasons, the Court should grant a motion in limine excluding certain
26
passages of the testimony that Oracle has designated from Mr. Rubin’s deposition transcripts.
27
Specifically, the Court should exclude from evidence the following pages and lines from Mr.
28
Rubin’s July 27, 2011 deposition: 8:14-9:4; 10:4-12:4; 13:5-9; 16:4-16; 19:8-20:15; 26:5-23; and
4
MIL RE EVIDENCE ALLEGEDLY SUPPORTING KNOWLEDGE REQ. FOR INDIRECT INFRGT.
Case No. 3:10-cv-03561 WHA
661965.01
1
28:22-29:10. The Court should also exclude the following pages and lines from Mr. Rubin’s
2
April 5, 2011 deposition: 28:5-30:1; 30:13-24; 111:12-112:5; and 112:12-25.
3
4
5
6
Dated: May 6, 2012
KEKER & VAN NEST LLP
By:
7
/s/ Robert A. Van Nest
ROBERT A. VAN NEST
Attorneys for Defendant
GOOGLE INC.
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
5
MIL RE EVIDENCE ALLEGEDLY SUPPORTING KNOWLEDGE REQ. FOR INDIRECT INFRGT.
Case No. 3:10-cv-03561 WHA
661965.01
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?