Oracle America, Inc. v. Google Inc.

Filing 1082

RESPONSE (re #1078 MOTION in Limine re Evidence Allegedly Supporting Knowledge Requirement for Indirect Infringement ) filed byOracle America, Inc.. (Muino, Daniel) (Filed on 5/6/2012)

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17

MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[e-mail]
MARC DAVID PETERS (Bar No. 211725)
[e-mail]
DANIEL P. MUINO (Bar No. 209624)
[e-mail]
755 Page Mill Road, Palo Alto, CA 94304-1018
Telephone: [phone] / Facsimile: [phone]
BOIES, SCHILLER & FLEXNER LLP
DAVID BOIES (Admitted Pro Hac Vice)
[e-mail]
333 Main Street, Armonk, NY 10504
Telephone: [phone] / Facsimile: [phone]
STEVEN C. HOLTZMAN (Bar No. 144177)
[e-mail]
1999 Harrison St., Suite 900, Oakland, CA 94612
Telephone: [phone] / Facsimile: [phone]
ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[e-mail]
DEBORAH K. MILLER (Bar No. 95527)
[e-mail]
MATTHEW M. SARBORARIA (Bar No. 211600)
[e-mail]
500 Oracle Parkway, Redwood City, CA 94065
Telephone: [phone] / Facsimile: [phone]
Attorneys for Plaintiff
ORACLE AMERICA, INC.

18

UNITED STATES DISTRICT COURT

19

NORTHERN DISTRICT OF CALIFORNIA

20

SAN FRANCISCO DIVISION

21

ORACLE AMERICA, INC.

22

Plaintiff,

23

v.

24

GOOGLE INC.

25

Defendant.

26

Case No. CV 10-03561 WHA
ORACLE’S OPPOSITION TO
MOTION IN LIMINE RE
EVIDENCE ALLEGEDLY
SUPPORTING KNOWLEDGE
REQUIREMENT FOR
INDIRECT INFRINGEMENT
Dept.: Courtroom 8, 19th Floor
Judge: Honorable William H. Alsup

27
28
ORACLE’S OPPO. TO MIL RE EVIDENCE ALLEGEDLY SUPPORTING KNOWLEDGE REQUIREMENT FOR INDIRECT INFRINGEMENT
CASE NO. CV 10-03561 WHA

sf-3142247

1
2

Oracle America, Inc. opposes Google’s motion in limine to exclude certain deposition
testimony of Mr. Andy Rubin (Dkt. 1078).

3
4

INTRODUCTION
Oracle designated deposition testimony by Mr. Rubin showing that (1) Mr. Rubin was

5

aware that Sun had Java-related patents, (2) Mr. Rubin had discussions with Sun about licensing

6

those patents for Android, and (3) Mr. Rubin and Google, after failing to obtain a license from

7

Sun, deliberately avoided investigating whether Android would infringe any of those Java-related

8

patents. Mr. Rubin’s testimony is highly relevant to the issues that the jury must decide in

9

Phase 2, including whether Google should be held liable for indirect patent infringement based on

10
11

its “willful blindness” of Sun’s patents.
In Phase 2, Oracle intends to present substantial evidence – including but not limited to

12

the deposition testimony of Mr. Rubin – demonstrating that Google both had actual knowledge of

13

Sun’s patents and that Google was “willfully blind” with respect to Android’s infringement of

14

those patents. That evidence will include the fact that Mr. Tim Lindholm, who was a Project

15

Advisor for Android (TX 6 at p. 7), was one of the authors of the “The Java Virtual Machine

16

Specification” book that specifically referred to a predecessor of the ’104 patent. (TX 25 at

17

p. 389.) Furthermore, in 2005 and 2006, Mr. Rubin sought to negotiate an agreement with Sun

18

that would have specifically covered Sun’s patents, and would have provided a license for

19

Android. (TX 618 at p. 9-10.) This is not a case where an unknown company later claims

20

infringement. Google knew of Sun’s patents and sought a license that would have covered the

21

’104 and other patents. Mr. Rubin’s deliberate failure to take any steps to evaluate whether

22

Android would infringe those patents is very relevant to proving Google’s knowledge and

23

willfulness.

24

There is no basis to exclude Mr. Rubin’s testimony. That testimony, along with the other

25

evidence that Oracle has offered and will offer in Phase 2, is relevant to prove Google’s

26

knowledge and willful disregard of Sun’s and now Oracle’s intellectual property rights. There is

27

no risk of confusion or prejudice to Google, but it would be prejudicial to Oracle to prevent the

28
ORACLE’S OPPO. TO MIL RE EVIDENCE ALLEGEDLY SUPPORTING KNOWLEDGE REQUIREMENT FOR INDIRECT INFRINGEMENT
CASE NO. CV 10-03561 WHA

sf-3142247

1

1

jury from hearing such testimony from Mr. Rubin, who is in charge of Android. Google’s motion

2

should be denied.

3
4

ARGUMENT
In Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2069 (2011), the Supreme

5

Court held: “Given the long history of willful blindness and its wide acceptance in the Federal

6

Judiciary, we can see no reason why the doctrine should not apply in civil lawsuits for induced

7

patent infringement under 35 U.S.C. § 271(b).” The Supreme Court articulated two basic

8

requirements for willful blindness: “(1) the defendant must subjectively believe that there is a

9

high probability that a fact exists and (2) the defendant must take deliberate actions to avoid

10

learning of that fact.” Id. at 2070. Lower courts have already applied the Global Tech willful

11

blindness standard as an alternative to direct knowledge for proving indirect infringement. See

12

McRee v. Goldman, No. 11-CV-00991-LHK, 2012 U.S. Dist. LEXIS 36793 (N.D. Cal. Mar. 19,

13

2012); Dataquill Ltd. v. High Tech Computer Corp., No. 08cv543-IEG, 2011 U.S. Dist. LEXIS

14

138565 *27 (S.D. Cal. Dec. 1, 2011) (“the Supreme Court explained that under this standard

15

actual knowledge is not required, and that the intent may be shown under the willful blindness

16

doctrine”); Fred Hutchinson Cancer Research Ctr. v. Branhaven, LLC, 2012 U.S. Dist. LEXIS

17

46990 *5 (E.D. Va. Apr. 2, 2012) (citing Global-Tech for holding that induced infringement

18

under § 271(b) “requires knowledge, or willful blindness, that the induced acts constitute patent

19

infringement”) (emphasis added).

20

Sections 271(b) and 271(c) share the same knowledge requirement, and the Court’s

21

reasoning indicates that they must share willful blindness as well. Other courts agree. See, e.g.,

22

Trading Techs. Int’l, Inc. v. BCG Partners, Inc., No. 10 C 715, 2011 U.S. Dist. LEXIS 99415, at

23

*13 (N.D. Ill. Sept. 2, 2011) (“As noted above, in Global-Tech the Supreme Court established

24

that the plaintiff must show the alleged infringer must have knowledge of the patent at issue (or at

25

least ‘willful blindness’ to the patent) and knowledge that the infringer’s product infringed on that

26

patent to prove a claim for contributory infringement (35 U.S.C. § 271(b)) and inducing

27

infringement (35 U.S.C. § 271(c)).”).

28
ORACLE’S OPPO. TO MIL RE EVIDENCE ALLEGEDLY SUPPORTING KNOWLEDGE REQUIREMENT FOR INDIRECT INFRINGEMENT
CASE NO. CV 10-03561 WHA

sf-3142247

2

1

Mr. Rubin’s testimony is relevant to establishing Google’s willful blindness, and there is

2

no basis to exclude that testimony. The testimony that Google seeks to exclude includes the

3

following points:

4

•

When questioned about the negotiations with Sun, Mr. Rubin testified that he
recalled “some discussions around patents. … there was a notion of a partnership
where we could actually license both technology, implementation, and patents,
where the patents would be used to protect the open platform.” (4/5/2011 Rubin
Tr. at 111:12-112:5.)

•

When questioned about an email where Mr. Rubin referred to the fact that Sun
owned patents, in connection with a Java-related announcement, Mr. Rubin
testified: “I assume they’re running a business, they’re inventing intellectual
property, they’re protecting it through the patent system. Through GPL, I didn't
know what they were, but I knew that it was dangerous to use the stuff without
knowing exactly what it was." (7/27/2011 Rubin Tr. at 13:5-9, 16:4-16.)

•

Despite those discussions with Sun and his awareness of Sun owning Java-related
patents, Mr. Rubin testified that he “never investigated the breadth of Sun’s
portfolio” and never conducted any review of Sun’s or Oracle’s patents as they
related to Android. (7/27/2011 Rubin Tr. at 8:14-9:4; 19:8-20; 20:5-15; 26:5-23.)

•

When questioned about an email in which he wrote that Sun “threatened to sue us
over patent violations,” Rubin testified, contrary to what he wrote in the email, “I
don’t think Sun ever threatened to sue us over patent violations.” (4/5/2011 Rubin
Tr. at 28:5-30:1, 30:13-24.)

5
6
7
8
9
10
11
12
13
14
15
16
17
18

This testimony, along with the other evidence that is already in the record and evidence

19

that will be offered in Phase 2, demonstrates that Google knew of Sun’s patents but decided to

20

proceed without a license. In July 2010, Oracle informed Google that Android infringed the ’104

21

and ’520 patents. One month later, Mr. Lindholm wrote that Google needed a Java license from

22

Oracle for Android. (TX 10.) Given Mr. Lindholm’s familiarity with the technology covered by

23

the ’104 patent, it is a reasonable inference that Mr. Lindholm was referring at least in part to that

24

patent when he wrote that Google needed a license from Oracle. The designated testimony by

25

Mr. Rubin’s is consistent with this other evidence, and should not be excluded. Excluding

26

Mr. Rubin’s testimony at this stage would be both premature and prejudicial to Oracle.

27
28

Mr. Rubin oversaw the development of Android, and he and others repeatedly referred to
the “JVM” or “Java Virtual Machine” that Google was developing for Android. Before Google
ORACLE’S OPPO. TO MIL RE EVIDENCE ALLEGEDLY SUPPORTING KNOWLEDGE REQUIREMENT FOR INDIRECT INFRINGEMENT
CASE NO. CV 10-03561 WHA

sf-3142247

3

1

even acquired Android, Mr. Rubin made a presentation in which he stated that Android planned

2

to include a “JVM” that would be based on “Java licensed from Sun, mods by Android.” (TX 4

3

at p. 28.) After Google acquired Android, in presentations and emails to Google’s top executives,

4

Mr. Rubin repeatedly referred to the “JVM” that the Android team was working on. (TX 1 at

5

p. 9; TX 3 at p. 2; TX 6 at p. 11; TX 7 at p. 1.) Google employees stated in internal emails that

6

“the JVM is going to be a central piece of the system we’re building” and that “the JVM is core to

7

our platform architecture and strategy.” (TX 5 at p. 3; TX 20 at p. 1.) Google employees also

8

acknowledged in internal documents that the license from Sun was “critical” for Android.

9

(TX 17 at p. 1.) After Google was unable to negotiate any deal with Sun that would provide that

10

critical license, Google decided to move forward anyways. Even then, Mr. Rubin and others

11

continued to refer to the virtual machine that they were working on as a “JVM.” (TX 151 at p.

12

5.) There were extensive negotiations between Google and Sun, and Mr. Rubin’s plan all along

13

was to build a Java-based platform with a high-performance JVM. That was exactly what he had

14

done at Danger, and what Mr. Rubin wanted to do at Google. Mr. Rubin recognized early on that

15

one option was to proceed without a license and risk making “enemies.” (TX 7 at p. 2.)

16

Mr. Rubin’s admissions that he did nothing whatsoever to evaluate what Sun patents Google

17

might infringe with Android is not only relevant but strong evidence of Google’s willfulness.

18

Google cites Apeldyn Corp. v. AU Optronics Corp., Civ. No. 08-CV-568-SLR, 2011 U.S.

19

Dist. LEXIS 134759 (D. Del. Nov. 15, 2011), but that decision provides no basis to exclude

20

Mr. Rubin’s testimony. In Apeldyn, the court cited quoted Global-Tech: a “willfully blind

21

defendant is one who takes deliberate actions to avoid confirming a high probability of

22

wrongdoing and who can almost be said to have actually known the critical facts.” Id. at *29.

23

There, in stark contrast to this case, the only evidence cited by the court was testimony that the

24

defendant would generally not review patents issued to other companies unless there was a

25

request from the internal lawyers to do so. Id.

26

Here, unlike in Apeldyn, there were years of negotiations between Google and Sun leading

27

up to Google’s release of Android, and the evidence presented during Phase 2 will demonstrate

28

that those negotiations focused on Sun’s patents. Google employees at various times referred to a
ORACLE’S OPPO. TO MIL RE EVIDENCE ALLEGEDLY SUPPORTING KNOWLEDGE REQUIREMENT FOR INDIRECT INFRINGEMENT
CASE NO. CV 10-03561 WHA

sf-3142247

4

1

license from Sun as “critical” for Android (TX 17), and Mr. Rubin made a presentation to

2

Google’s very top management regarding the deal with Sun in which he indicated that the deal

3

would result in “patent grants” by Sun for Android (TX 22 at p. 9). After launching Android,

4

Google considered buying “the rights to Java from Sun (patents, copyrights, etc)” in part because

5

the result would be “Our Java lawsuits go away.” (TX 326 at p. 2-3.) From the very beginning,

6

Google sought a license to use Sun’s patented technology. Google then proceeded to distribute

7

Android to manufacturers without any license, knowing that Sun could sue. Google’s actions,

8

and Mr. Rubin’s testimony, evidence an active intent to induce infringement by others.

9

Ultimately, Google is seeking to exclude Mr. Rubin’s testimony and other evidence

10

because that evidence is fundamentally inconsistent with the story that Google wants to tell the

11

jury. The parties exchanged openings, and Google’s opening includes the following assertion:

12

“Google independently developed Android not knowing of the Sun patents.” That assertion is

13

false, and the testimony by Mr. Rubin – and the trial testimony of Mr. Lindholm – is relevant to

14

showing that any lack of knowledge was based on Google’s deliberate decision to proceed

15

without any investigation, knowing that it might make “enemies” doing so, and that it would

16

eventually face “Java lawsuits.”

17

Google’s final argument is that Mr. Rubin’s testimony should be excluded because that

18

testimony would not suffice to show that Google “intended to induce infringement of the patent,

19

which in turn requires knowledge that the induced acts constitute infringement.” (Dkt. 1078 at

20

p. 5.) There are two flaws with this argument.

21

First, there is no requirement that Mr. Rubin’s testimony in itself establish each and every

22

element of Oracle’s claims. Google seeks exclusion on the basis that Mr. Rubin’s testimony is

23

“insufficient to prove an element of its [Oracle’s] case” (Dkt. 1078 at p. 5), but that is not the

24

question on this motion. The only question on this motion is whether Mr. Rubin’s testimony is

25

relevant to any of the issues in Phase 2, and if so whether it should nonetheless be excluded under

26

Rule 402 or 403. As explained above, Mr. Rubin’s testimony is relevant to proving willful

27

blindness. There is no risk of confusion of prejudice with that testimony. Whether that testimony

28
ORACLE’S OPPO. TO MIL RE EVIDENCE ALLEGEDLY SUPPORTING KNOWLEDGE REQUIREMENT FOR INDIRECT INFRINGEMENT
CASE NO. CV 10-03561 WHA

sf-3142247

5

1

proves some other element is immaterial, and provides no basis to exclude this otherwise relevant

2

testimony.

3

Second, Google’s argument is nothing more than an untimely and meritless attempt to

4

seek judgment as a matter of law on Oracle’s inducement claim. Google’s argument focuses less

5

on the designated testimony and more on the legal standard for proving inducement. Under

6

Google’s proposed standard, an inducement claim would fail in every case where the parties

7

“hotly contest” infringement. (Dkt. 1078 at p. 5.) Google contends that it could not even be

8

liable for inducing infringement after July 2010, when Oracle specifically identified the ’104 and

9

’520 patents. That is not the law. Regardless, Oracle will offer evidence showing that Google

10

knew of the ’104 patent but nonetheless enabled and encouraged the broad adoption of Android

11

by handset manufacturers.

12

Oracle also opposes Google’s motion on the basis that it is procedurally improper, leading

13

to unnecessary briefing. The Court’s Jury Trial Guidelines establish a process for designating and

14

objecting to deposition testimony. For Mr. Rubin’s testimony, the parties followed the Court’s

15

procedure up to the point when Google announced at 3 pm today that it would be filing this

16

motion in limine. Google had already served its objections and counter-designations, and the next

17

step according to the Court’s rules was for Oracle to evaluate those objections, to “meet and

18

confer as reasonable,” and for Oracle to then “provide the Court with the final packet, with any

19

objected-to portions highlighted and annotated” as required by the Court’s rules. The parties used

20

the Court’s required procedures for all deposition testimony played during Phase 1, and Oracle

21

sees no reason to change that now.

22
23
24
25
26
27

//

28

//
ORACLE’S OPPO. TO MIL RE EVIDENCE ALLEGEDLY SUPPORTING KNOWLEDGE REQUIREMENT FOR INDIRECT INFRINGEMENT
CASE NO. CV 10-03561 WHA

sf-3142247

6

1
2

CONCLUSION
The evidence that will be presented in this next phase, including the testimony of

3

Mr. Rubin, clearly fit the standard set in Global-Tech and other decisions regarding indirect

4

patent infringement. There is no basis to exclude Mr. Rubin’s testimony, and Oracle therefore

5

requests that the Court deny Google’s motion.

6
7

Dated: May 6, 2012

8
9
10

MICHAEL A. JACOBS
MARC DAVID PETERS
DANIEL P. MUINO
MORRISON & FOERSTER LLP
By: /s/ Daniel P. Muino

11

Attorneys for Plaintiff
ORACLE AMERICA, INC.

12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

ORACLE’S OPPO. TO MIL RE EVIDENCE ALLEGEDLY SUPPORTING KNOWLEDGE REQUIREMENT FOR INDIRECT INFRINGEMENT
CASE NO. CV 10-03561 WHA

sf-3142247

7