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)

EXHIBIT A

Highly Confidential - Attorneys' Eyes Only

1

UNITED STATES DISTRICT COURT

2

NORTHERN DISTRICT OF CALIFORNIA

3

SAN FRANCISCO DIVISION

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5

--------------------------

6

ORACLE AMERICA, INC.,

7

Plaintiff,

)
)

8

vs.

)

9

GOOGLE, INC.,

)

10
11

Defendant.

No. CV 10-03561 WHA

)

--------------------------

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-- HIGHLY CONFIDENTIAL, ATTORNEYS' EYES ONLY--

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15

Videotaped Personal Capacity deposition of

16

ANDREW E. RUBIN, taken at the law offices of

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King & Spalding LLP, 333 Twin Dolphin Drive,

18

Suite 400, Redwood Shores, California,

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commencing at 8:39 a.m., on Wednesday,

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July 27, 2011, before Leslie Rockwood, RPR,

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CSR No. 3462.

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PAGES 1 - 296
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Foerster, counsel for Oracle.

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3

MS. TERAGUCHI:

Yuka Teraguchi of Morrison &

Foerster, counsel for Oracle.

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MR. HOLTZMAN:

Steve Holtzman, Boies,

5

Schiller & Flexner, counsel for Oracle America.

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MR. REBLITZ-RICHARDSON:

08:40:33

Beko

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Reblitz-Richardson, Boies, Schiller & Flexner, on behalf

8

of Oracle America.

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MS. TIPTON:

Jessica Tipton, Morrison &

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Foerster, on behalf of Oracle America.

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MS. ANDERSON:

08:40:44

Christa Anderson for Google,

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Inc., and the witness.

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MR. BABER:

Bruce Baber, King & Spalding, for

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MR. HWANG:

Renny Hwang of Google.

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THE VIDEOGRAPHER:

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The witness will be sworn in, and we can

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18
19
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Google.
08:40:49

Thank you.

proceed.
THE REPORTER:

Would you raise your right

hand, please.

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You do solemnly state that the evidence you

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shall give in this matter shall be the truth, the whole

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truth and nothing but the truth, so help you God.

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THE WITNESS:

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THE REPORTER:

Yes.
Thank you.
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A.

Okay.

2

Q.

Before Google acquired Android Inc. --

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MS. ANDERSON:

Sorry, Counsel, before you

4

start your question, could you clarify which deposition

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you're starting on?

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for today.

Because you've noticed a few things

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MR. JACOBS:

8

MS. ANDERSON:

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08:42:15

Yes.
And I just want to make sure

we're clear on the record.

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MR. JACOBS:

Fair enough.

So this is the

11

individual deposition, and I'll -- we'll be clear when we

12

08:42:22

go into 30(b)(6) territory.

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14

MS. ANDERSON:
Q.

BY MR. JACOBS:

Thank you, Counsel.
Before Google acquired

15

Android, did you conduct any review of Sun patents as

16

they might relate to your planned development of what

17

became the Android system?

18

A.

No, I didn't.

19

Q.

08:42:31

From the acquisition to the filing of the

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lawsuit by Oracle America against Google on August 12th,

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2010, did you conduct any review of Sun, later Oracle

22

America, patents as they related to Android -- the

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Android system?

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MS. ANDERSON:

And objection.

08:42:55

Just caution

the witness to the extent if responding to the question

08:43:11
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would cause you to reveal any communications with

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counsel, I instruct you not to answer on grounds of

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privilege, but otherwise, you may answer the question.

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THE WITNESS:

5

Q.

No.

BY MR. JACOBS:

Let's just spend a minute on

6

that privilege instruction.

7

do today in order to do my job is to make a clear record

8

of where you've been instructed not to answer, where

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you've followed that instruction, and where, but for the

10

instruction, there might have been testimony, so that the

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Judge can look at the record and determine clearly where

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Google, as the litigant, is taking a position on the

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08:43:23

privilege.

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One of the things I need to

08:43:36

So your counsel just instructed you not to

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answer to the extent the answer might reveal privileged

16

information, and you're following that instruction;

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correct?

18

A.

That's correct.

19

Q.

08:43:48

But for her instruction, would you have been

20

able -- would you have provided testimony on the question

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of a review of Sun, later Oracle America's patents in

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connection with Android?

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A.

08:43:59

Can you ask the question in -- I don't

understand.
Q.

Did that instruction cause you to answer the

08:44:13
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question differently than had the instruction not been

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given?

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A.

No.

4

Q.

Why did you not conduct a review of Sun,

5

later Oracle America's patents as they might relate to

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Android?

7

A.

08:44:28

Well, look, I looked at the nature of Sun's

8

business, I looked at the nature of Oracle's business.

9

I'm a computer scientist.

I graduated with a degree in

10

computer science.

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computer that, you know, used the basic language that had

12

a bytecode interpreter.

13

I had, in 1978, a Commodore PET

08:44:43

So I knew generally the area that I was

14

working in, obviously, and I didn't think there was any

15

conflict.

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any patents.

17

time.

18

Q.

So I didn't think there was a need to review

08:44:58

This stuff has existed for a very long

You were aware that Sun, later Oracle

19

America, had an extensive patent portfolio in the area of

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Java; correct?

08:45:14

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MS. ANDERSON:

22

THE WITNESS:

Objection.

Form.

I -- you know, again, I didn't

23

look specifically at the breadth of their intellectual

24

property.

25

you're going to protect your work.

I assume, you know, if you're in a business,
But also it was my

08:45:26
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assumption that this work had been there, you know,

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pretty much, you know, part of computer science that

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you're taught in college.

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5

Q.

BY MR. JACOBS:

had an extensive portfolio of Java-related patents?

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MS. ANDERSON:

7

THE WITNESS:

8
9

Q.

Objection.

08:45:39

Form.

That's not what I said.

BY MR. JACOBS:

Were you -- were you not

aware of that?

10
11

So you were aware that Sun

A.

I didn't -- I honestly didn't spend a lot of

08:45:48

time thinking about it.

155
12

(Exhibit PX305 was marked for

13

identification.)

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Q.

BY MR. JACOBS:

15

string.

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155
Exhibit 305 is an email

The last email on the string is dated

November 12, 2006.

17

08:46:39

Do you see that?

18

A.

Yes.

19

Q.

I'd like to ask you about your email to -- I

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believe to Chris DiBona, but maybe you can help interpret

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how the string should be read.

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dated November 12, 2006 that reads as follows:

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been advised that Sun will offer a link exception to GPL

24

so that you can link your app with their class libraries

25

and not have the copy left force you to Open Source your

08:46:48

It's the one from you
"I've

08:47:11
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app.

If they do not, then it's a play for a dual

2

license.

They still have patents and trademarks."

3

Do you see that?

4

A.

Uh-huh.

5

Q.

That is what you wrote; correct?

6

A.

Correct.

7

Q.

And who did you write that to?

8
9

MS. ANDERSON:
Form.

08:47:17

I just want to -- objection.

The witness should have an opportunity to review

10

the document before you begin asking a series of

11

questions about it.

12
13

If you need an opportunity, go ahead.

08:47:25

If you

don't --

14

THE WITNESS:

It's quite a detailed document,

15

but it mostly contains a forward of a press release made

16

by Sun Microsystems.

17

I was responding to the entire thread which had an alias

18

on it, which was the Open Source team, which included

19

08:47:33

Chris DiBona.

I believe I was responding -- well,

20

Q.

BY MR. JACOBS:

And who is Greg Stein?

21

A.

Greg Stein, I believe, was one of the product

22

guys on the Open Source team.

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08:47:54

Open Source, I believe.

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25

Q.

He was an evangelist for

The Open Source team is -- what is the Open

Source team?

08:48:11
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A.

It's a team of evangelists that is managed by

2

Chris DiBona, and they go out and educate people about

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Open Source, what it means to be Open Source, how Open

4

Source can benefit their businesses, and so forth.

5
6

Q.
trademarks."

You wrote:

"They still have patents and

08:48:24

Correct?

7

A.

That's correct.

8

Q.

And the "they" is Sun; correct?

9

A.

That's correct.

10

Q.

And you were saying -- you were noting this

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in order to make sure that people understood that there's

12

a range of intellectual property rights associated with

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08:48:31

the program in question; correct?

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MS. ANDERSON:

15

THE WITNESS:

16
17

Q.

BY MR. JACOBS:

Objection to form.
No, that's not correct.

08:48:47

Well, what did you mean by

"they still have patents and trademarks"?

18

A.

Well, the email was discussing -- so this is

19

in response to Sun basically announcing that they were

20

Open Sourcing parts of Java, and the conversation was

21

about Sun's dual license strategy.

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it's effectively useless to Open Source something under

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GPL and use it in embedded devices like cell phones

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because there's this trick in the GPL which is of viral

25

nature.

08:48:58

Because with GPL,

08:49:17
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access, and then forcing people to come back to Sun

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because the threat of a suit, if you adopt their stuff,

3

was real.

4

Q.

When you wrote "they still have patents and

5

trademarks," what was in your mind about what patents Sun

6

had?

7

A.

08:51:39

Look, like I said before, I assume they're

8

running a business, they're inventing intellectual

9

property, they're protecting it through the patent

10

system.

Through GPL, I didn't know what they were, but I

11

knew that it was dangerous to use the stuff without

12

knowing exactly what it was.

13

08:51:53

So effectively you have to go back to Sun,

14

ask them what they considered their intellectual property

15

and, you know, try to figure out what the trick was if

16

you wanted to use the technology.

17
18

Q.

08:52:06

Now, by that time, by 2006, you had applied

for patents over the course of your carrier; correct?

19

A.

Yes.

20

Q.

You had applied for a patent -- for several

21

08:52:15

patents while you were at Danger; correct?

22

A.

Yes.

23

Q.

And since Google acquired Android, you've

24
25

applied for patents; correct?
A.

Google has applied for patents with my name

08:52:29
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intellectual property?

2

MS. ANDERSON:

3

THE WITNESS:

Objection.

Form.

Well, look, I mean, so this

4

article looks great.

5

analysts are making speculations about Sun's business.

6

This is dated 2008.

7

they're related at all.

8

Q.

I haven't read it.

My email is 2006.

BY MR. JACOBS:

All sorts of
08:55:04

I don't think

But my question is:

As of

9

November 12th, 2006, when you wrote "they," referring to

10

Sun, "still have patents," were you aware that Sun had a

11

broad and deep portfolio of intellectual property?

12

MS. ANDERSON:

13

THE WITNESS:

Objection.

Form.

Yeah, I was not.

14

Q.

BY MR. JACOBS:

15

A.

I didn't know how -- I didn't know the

16

08:55:18

You were not?
08:55:26

breadth of Sun's portfolio.

17

Q.

Were you aware that -- sorry.

18

A.

I never investigated the breadth of Sun's

19

portfolio.

20

Q.

To the best of your knowledge, between

21

Google's acquisition of Android and the filing of the

22

lawsuit in this action, did Google ever investigate

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Sun's, later Oracle America's patent portfolio as it

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08:55:35

might relate to Android?

25

MS. ANDERSON:

Objection.

Again caution to

08:55:53
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the witness to the extent that responding to this

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question would cause you to reveal any communications

3

with counsel, I instruct you not to answer on grounds of

4

privilege.

5

But otherwise, you may answer.
THE WITNESS:

Yeah, of the parts of Google

6

that I manage and I operate, the -- there was no

7

instruction to go investigate the breadth of Sun's patent

8

portfolio.

9

Q.

08:56:04

10
11

instruction.
A.

BY MR. JACOBS:

You referred to an

You said there was no instruction?
Yeah.

08:56:17

Me as managing a division with Google

12

didn't instruct anybody to go off and do something.

I

13

have no knowledge of somebody underneath me going off and

14

doing something to investigate the breadth of Sun's

15

portfolio.

16

Q.

08:56:32
The -- and you're following your counsel's --

17

I just need to do this privilege thing again.

18

following your counsel's instruction?

19

A.

Yeah.

You're

Obviously, like I don't have insight

20

into every -- you know, every team at Google.

21

large organized teams so they don't report to me.

22

there's another team that goes off and does something, I

23

may not know about it.

24
25

Q.

These are

08:56:43

If

So but for your counsel's instruction, would

your answer have been different to my question?

08:56:56
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answer the question?

2

THE WITNESS:

3
4

Q.

BY MR. JACOBS:

Yes, I am.
The lawsuit was filed on

October 12, 2010 -- excuse me, August -- start over.

5

The lawsuit was filed on August 12, 2010.

6

After the lawsuit was filed, did you conduct any review

7

of Oracle America's patent portfolio in connection with

8

09:02:43

Android development?

9

MS. ANDERSON:

Objection to the extent that

10

responding to this question would cause you to reveal any

11

communications with counsel, I instruct you not to answer

12

on grounds of privilege.

13

THE WITNESS:

09:03:04

Otherwise, you may answer.
I mean, look, all right, you

14

asked the question before whether I have personally done

15

reviews of the legal situation, and I answered no.

16

didn't change throughout the release cycles whether I did

17

or not.

18

Q.

BY MR. JACOBS:

It

09:03:18

So and just to be clear, my

19

earlier question was before the lawsuit, and now I was

20

asking after the lawsuit, and your answer is the same:

21

You have conducted no review?

22
23
24
25

A.

09:03:30

I personally am not responsible for legal

reviews for the Android system.
Q.

Are you aware of any review that has been

conducted of the Android system in view of Oracle

09:03:43
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enhancements, especially since we've been sued by Oracle

2

America, before we go off in a particular direction?

3

MS. ANDERSON:

Objection.

Form.

And

4

instruct the witness not to answer to the extent it calls

5

for any communications or would reveal any communications

6

with any counsel on the grounds of privilege.

7

THE WITNESS:

09:04:48

I mean, generally speaking, we

8

see software development as an innovation process so we

9

don't really second-guess innovation.

We do the

10

innovation -- we do it in a way that, you know, our

11

education and training, you know, teaches us to do, and

12

our goal is just to build great products that consumers

13

love.

14
15

Q.

09:05:11
MS. ANDERSON:

Q.

BY MR. JACOBS:

19

A.

I don't know.

21
22

Objection.

Form.

And the

same privilege instruction.

18

20

So the answer to my question

is "no"?

16
17

BY MR. JACOBS:

09:05:01

Are you -You can ask that question

again.

09:05:21
Q.

Okay.

Fair enough.

Let's start over.

As you have added functionality to Android

23

over time, have you ever conveyed to anyone at Google, as

24

we're adding enhancements, we should look at Oracle

25

America's patents and decide whether we're going to go

09:05:41
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off in a particular direction or not?

2

MS. ANDERSON:

Objection and instruct the

3

witness not to answer to the extent it would cause you to

4

reveal any communications with counsel on the grounds of

5

privilege.

6

09:05:54
THE WITNESS:

I mean, generally speaking, the

7

way you do innovation isn't you don't go look at somebody

8

else's work.

9

world and make sure it's the best it can possibly be.

10
11

You just do innovation in your own little
So

the answer would be no.
Q.

BY MR. JACOBS:

09:06:05
Similarly, as you have

12

expanded the markets in which Android is applied, say, to

13

tablets, have you asked or conveyed that any such review

14

should be conducted?

15

MS. ANDERSON:

Objection.

Form.

16

same instruction on grounds of privilege.

17

THE WITNESS:

09:06:17

disclose communications with counsel.

18

And also

You shouldn't

It's true for every Android

19

release, independent of what the form factor it's

20

released in.

21

Q.

09:06:27
BY MR. JACOBS:

And by "form factor," you're

22

referring to, for example, tablets as opposed to

23

handsets?

24

A.

Yeah, you know, four-inch screens versus

25

ten-inch screens.

There's no difference, in my mind.

09:06:37
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negotiations with the execs.
Q.

And that's so that you can protect the option

of going clean room; correct?

4

A.

Yeah.

I don't want to taint myself.

5

Q.

And we've talked about your clean room, the

6

way the clean room got established and how you

7

15:57:11

communicated the rules of the clean room.

8
9

One thing we didn't talk about specifically
in the context of clean room is patent issues.

So did

10

you have an understanding that the clean room would bear

11

on the question of whether Android would infringe

12

Sun/Oracle America patents?

13

MS. ANDERSON:

Objection.

14

15:57:23

Form.

Also, caution the witness to the extent

15

responding would cause you to reveal communication with

16

counsel, I instruct you not to answer on the grounds of

17

attorney-client privilege.

18

THE WITNESS:

No.

15:57:36

Generally speaking, a

19

clean room approach doesn't protect against patents.

20

There's no expectation.

21

15:57:47

As I said previously, VM technology has been

22

around forever.

23

doing was going to be a violation of anybody's IP.

24

Q.

25

reviewing the IP?

I didn't think the stuff that we were

BY MR. JACOBS:

And so that was based without

That was kind of an intuition on your

15:57:56
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I N D E X

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WEDNESDAY, JULY 27, 2011

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WITNESS

EXAMINATION

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ANDREW E. RUBIN, Personal Capacity

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By Mr. Jacobs

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