Oracle America, Inc. v. Google Inc.

Filing 1080

MOTION in Limine to Exclude Evidence Regarding Compatibility Testing Suite filed by Google Inc.. Responses due by 5/21/2012. Replies due by 5/29/2012. (Attachments: #1 Declaration of Truman Fenton, #2 Exhibit A, #3 Exhibit B, #4 Exhibit C, #5 Exhibit D, #6 Exhibit E, #7 Exhibit F)(Van Nest, Robert) (Filed on 5/6/2012)

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

ORACLE AMERICA, INC.

Case No. CV 10-03561 WHA

Plaintiff,
v.
GOOGLE INC.
Defendant.

OPENING EXPERT REPORT OF JOHN C. MITCHELL
REGARDING PATENT INFRINGEMENT
SUBMITTED ON BEHALF OF PLAINTIFF
ORACLE AMERICA, INC.
CONFIDENTIAL PURSUANT TO PROTECTIVE ORDER
Highly Confidential – Attorneys Eyes Only

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA

TRIAL EXHIBIT 712
CASE NO. 10-03561 WHA
DATE ENTERED

pa-1460906

Trial Exhibit 712, Page 1 of 387

BY

DEPUTY CLERK

suck.” The email clearly indicates that Google’s founders, no less, asked for a comprehensive
search for non-infringing alternatives in order to establish a credible bargaining position. The
email states that Google examined the alternatives, and concluded that no suitable alternatives
exist.
111.

Once Google’s decision was made to use Java, the discussion above shows the

criticality of the claimed inventions of the patents-in-suit and the unacceptable performance
consequences of eliminating them from the Android platform. As further described below for
each patent, Dan Bornstein, Google’s 30(b)(6) designee on non-infringing alternatives, was again
unable to provide acceptable non-infringing alternatives that could provide similar performance
or security.
112.

No reasonable non-infringing alternative to the ’104 patent: The ’104 patent

provides a means to store numeric references produced by resolving symbolic references and
reuse them in future executions of the corresponding instructions. This invention provides a
dramatic performance improvement because symbolic name resolution typically requires
considerable computation time, whereas using stored numeric references is much faster.
113.

I am not aware of a reasonable non-infringing alternative to the ’104 patent

suitable to the Android execution platform and that would be comparable in speed to
determining, storing, and reusing numeric references, as claimed in the ’104 patent. Android
could be made not to infringe by disabling the infringing mechanism and repeating symbolic
resolution each time the bytecode interpreter encounters a symbolic reference. But if that were
done, Android would suffer a substantial performance degradation as determined in the
performance testing conducted by Oracle Java engineer Bob Vandette at my direction, which
was based on a modified Android system that did not store the results of symbolic reference
resolution. (In Android, symbolic reference resolution may be performed by either dexopt or the
Dalvik VM; the analysis disabled both.) The analysis determined that the use of the ’104 patent
in Android improves performance by a factor of thirteen.

38
pa-1460906

Trial Exhibit 712, Page 41 of 387

with Android. From the testimony and documents I have reviewed, I conclude that, with respect
to the technology that infringes the asserted patents, Google is responsible for how downstream
users’ Android devices function and Google does know (or could know) what changes major
manufacturers do or do not make to the infringing functionality in Android. I have not seen any
evidence that Google has made changes to Android as a result of learning of the patents-in-suit
and Oracle’s infringement contentions.
186.

Google takes many steps to ensure compatibility among competing Android

products and avoid fragmentation of the Android platform. Google has a financial and technical
interest in ensuring Android applications can run on any Android device, regardless of who
manufactured it.
187.

According to Google engineer Dan Morrill, Google makes “compatibility a strict

prerequisite for access to Android Market and the right to use the Android name.”
(http://android-developers.blogspot.com/2010/05/on-android-compatibility.html (last visited
Aug. 8, 2011).) Although Android source code is open source and in theory OEMs are free to
modify Android as they please, in practice they are not because of Google’s compatibility
requirements. Google does not permit Android devices to be branded as “Android” devices,
have access to the Android Market, or include Google applications unless the devices comply
with the Compatibility Definition Document (CDD), which “defines in gory detail exactly what
is expected of Android devices.” (http://android-developers.blogspot.com/2010/05/on-androidcompatibility.html (last visited Aug. 8, 2011); see also http://source.android.com/faqs.html (last
visited Aug. 8, 2011); GOOGLE-17-00119695 at 695; GOOGLE-17-00016798 at 798.) From
this one can conclude that if a device is branded “Android,” then it operates as it would if it were
running stock Android from Google, at least with respect to the infringing functionality that I
have identified.
188.

In order to promote compatibility and help device manufacturers satisfy the CDD,

Google provides its Compatibility Test Suite (CTS), which is a collection of test cases that
checks the performance of Android devices and for compliance with the required functional

62
pa-1460906

Trial Exhibit 712, Page 65 of 387

behaviors. (See http://source.android.com/compatibility/cts-intro.html (last visited Aug. 8,
2011).) The test cases check for correct functioning of the Dalvik virtual machine, the Android
application framework, the Java core libraries (including the java.security code), and so on. (See
http://static.googleusercontent.com/external_content/untrusted_dlcp/source.android.com/en/us/co
mpatibility/android-cts-manual-r4.pdf (last visited Aug. 8, 2011).) In my experience,
smartphone manufacturers that were making substantial investments in their product lines would
not want to make changes to Google’s code at the framework level or below, which would risk
incompatibility that could be very difficult to discover, unless there was a very compelling
reason. If there were such a reason, such as a critical bug fix or a substantial performance
improvement, I would expect that Google offers incentives for contributing those changes
upstream, where they would become part of the next Android version. I am not aware of any
changes that any smartphone manufacturer has made to Android that affected the functionality
that infringes the patents-in-suit, as I describe below.
189.

Manufacturers would be much more likely (in fact they all do) to make changes or

additions to the Android UI or applications for their smartphones, because these changes can be
used to differentiate from other manufacturers’ products without risk of breaking the operating
system. (7/12/2011 Morrill Dep. 142:19-143:24.) Changes to these portions of Android would
not affect my infringement analysis.
190.

Other than fixing bugs, I would not expect there to be any benefit for device

manufacturers to change the source code for low-level, internal Android code, such as Dalvik,
the .dex file optimizer, the application framework, and zygote. Much of the Android code is
very complex, and because Google has already provided a functioning system that will pass the
CTS, there is little to be gained from altering most of it. According to Dan Morrill, “Android is
not a specification, or a distribution in the traditional Linux sense. It’s not a collection of
replaceable components. Android is a chunk of software that you port to a device. For the most
part, Android devices are running the same code.” (http://androiddevelopers.blogspot.com/2010/05/on-android-compatibility.html (last visited Aug. 8, 2011); see

63
pa-1460906

Trial Exhibit 712, Page 66 of 387

XIII. CONCLUSION
767.

For the foregoing reasons, it is my opinion that Android infringes:

•

Claims 11, 12, 15, 17, 22, 27, 29, 38, 39, 40, and 41 of United States Patent
No. RE38,104;

•

Claims 1, 2, 3, and 8 of United States Patent No. 6,910,205;

•

Claims 1, 6, 7, 12, 13, 15, and 16 of United States Patent No. 5,966,702;

•

Claims 1, 4, 8, 12, 14, and 20 of United States Patent No. 6,061,520;

•

Claims 1, 4, 6, 10, 13, 19, 21, and 22 of United States Patent No. 7,426,720;

•

Claims 10 and 11 of United States Patent No. 6,125,447; and

•

Claims 13, 14, and 15 of United States Patent No. 6,192,476

It is also my opinion that Google is liable for direct and indirect infringement in the manner
described above.
768.

For the forgoing reasons, it is my opinion that the patents-in-suit form the basis

for consumer demand for Android by developers and end-users.
769.

For the forgoing reasons, it is my opinion that once Google decided to adopt the

Java execution model in Android, the patents-in-suit became necessary to Android achieving
satisfactory performance and security.

Dated: August 8, 2011
John C. Mitchell

384
pa-1460906

Trial Exhibit 712, Page 387 of 387