Oracle America, Inc. v. Google Inc.

Filing 1083

RESPONSE (re #1077 MOTION in Limine to Preclude Testimony of Timothy Lindholm ) ORACLES OPPOSITION TO GOOGLES MOTION TO PRECLUDE TESTIMONY OF TIMOTHY LINDHOLM filed byOracle America, Inc.. (Holtzman, Steven) (Filed on 5/6/2012)

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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]
ALANNA RUTHERFORD (Admitted Pro Hac Vice)
[e-mail]
575 Lexington Avenue, 7th Floor, New York, NY 10022
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.
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.

Case No. CV 10-03561 WHA

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Plaintiff,
v.

ORACLE’S OPPOSITION TO GOOGLE’S
MOTION TO PRECLUDE TESTIMONY
OF TIMOTHY LINDHOLM

GOOGLE, INC.

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Defendant.

Dept.: Courtroom 8, 19th Floor
Judge: Honorable William H. Alsup

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ORACLE’S OPP. TO GOOGLE’S MOTION TO PRECLUDE LINDHOLM TESTIMONY
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I.

INTRODUCTION

already held that “Mr. Lindholm’s background shows that he was quite knowledgeable about Java

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and Android technology as separate platforms and any potential crossover between the two platforms,

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or so a reasonable jury could find. His admission that Google needed a Java license is relevant to the

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issue of infringement.” (Dkt. No. 676 at 2 (emphasis added).) Mr. Lindholm’s deep knowledge of
Sun’s Java virtual machines, including the patents that Sun obtained on them, is also directly relevant

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of that patent. Moreover, in rejecting Google’s last attempt to conceal Mr. Lindholm, the Court

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chapter of The Java Virtual Machine Specification, which he wrote, to describing an implementation

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had specific, detailed working knowledge of the ’104 patent. Indeed, Mr. Lindholm devoted an entire

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The evidence establishes that Mr. Lindholm, an early member of the Android team at Google,

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to the Phase 2 issue of inducement.
Google’s motion should be denied.

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II.

BACKGROUND

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Mr. Lindholm worked at Sun Microsystems from 1994 to 2005, where, at the time he left, he

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held the title Distinguished Engineer. (Lindholm at RT 839:3–8.) At Sun, Mr. Lindholm worked on

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the original Java team, which was involved in creating the Java platform. (Lindholm at RT 839:9–

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13.) As Google admits, while he was employed by Sun, Mr. Lindholm co-wrote (with ex-Sun and

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now-Google employee Frank Yellin), The Java Virtual Machine Specification, both first and second

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editions. (TX 25 (first edition); TX 987 (second edition).) That book is “a definitive source for

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anyone who wants to know exactly how the Java programming language works.” (TX 25 at 14.) In

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Chapter 9 of the First Edition, Messrs. Lindholm and Yellin described “An Optimization,” which

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specifically notes: “The technique documented in this chapter is covered by U.S. Patent 5,367,685.”

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(TX 25 at 401.) As Google admits, this patent was the predecessor to the ’104 patent-in-suit. (Dkt.

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1077 at 1.) In addition, as a Distinguished Engineer at Sun, Mr. Lindholm oversaw the development

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of Sun’s efforts in the Java ME space. In short, Mr. Lindholm is very knowledgeable about the

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technology in Java virtual machines, and he knows about the patents that cover them.

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Immediately after he left Sun and joined Google in July 2005, Mr. Lindholm met with Mr.
Rubin about Android’s plans to implement a “clean room JVM” for small devices, and Mr. Lindholm
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began negotiating with his former colleagues at Sun for a “critical” Java license. (Dkt. 331

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(Lindholm Decl.); TX 140, TX 317.) Although Google has consistently tried to minimize

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Lindholm’s involvement with Android, his documents tell a different tale. (See Dkt. 676 at 2 (finding

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Lindholm’s “attorney-prepared declaration” disclaiming knowledge of Android to be

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“unpersuasive”).)
In addition to providing strategic advice about Sun’s motivations and bargaining position (see

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Advisor” for Android, and described his “main value” as being a “J2ME runtime generalist and

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role in Android’s early development also involved technical advice. Lindholm was a “Project

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and provided Rubin and others with advice about particular license clauses. (TX 213) Lindholm’s

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TX 3, TX 9, TX 125), Lindholm actually reviewed the Java license that Google considered taking

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interpreter of the engineering/business/legal ecosystem.” (TX 321, TX 6 at 7) He gave Mr. Rubin

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technical advice on Sun’s virtual machine implementations for J2ME, including his opinions on the

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specific Sun technology that might be valuable to Android. (TX 131) Although he now claims to be

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ignorant of the technical workings of Android, his documents show that he “[g]ot a run through the

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Android technology” (TX 325) and was one of the Android team members whose participation was

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“mandatory” for a 2006 meeting in which Sun engineers would “detail their CDC stack to us, what

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it’s [sic] capabilities are, and to get feedback from us (in realtime) about how much work will have to

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be done to it to get it working for our platform,” and the Android engineers would “share with them

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an architectural view of our system, especially as it relates to the Java VM.” (TX 212.) In short, Mr.

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Lindholm was deeply involved in Android from the very beginning.

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III.

ARGUMENT
The evidence establishes that an early member of the Android team—Mr. Lindholm—had

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specific working knowledge of the ’104 patent. This highly relevant fact should not be hidden from

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the jury. Google’s argument that the prejudicial value of this fact outweighs its probative force is

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meritless. There is no prejudice. There are only directly relevant facts that Google cannot explain

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away.

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First, Mr. Lindholm’s testimony is relevant to direct infringement. The Court has already
held that
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Mr. Lindholm’s background shows that he was quite knowledgeable about Java
and Android technology as separate platforms and any potential crossover
between the two platforms, or so a reasonable jury could find. His admission that
Google needed a Java license is relevant to the issue of infringement.

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(Dkt. 676 at 2.) The Court’s statement is true not just of Mr. Lindholm’s August 6, 2010 email (TX

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10), but of the rest of Mr. Lindholm’s words and actions. Mr. Lindholm himself admits that he was

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involved for “about a year” in the Android project. (Lindholm at RT 868:20-869:1) He had deep

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working knowledge of the Java technology, including the patents it covered, and understood the

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Android technology. (TX 325, 212)

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Throughout this case, Google repeatedly mischaracterized Mr. Lindholm’s role on the
Android team in a futile effort to drag him, and his documents, out of view. For example,

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Google Claim

Lindholm Documents

Mr. Lindholm “never worked on any aspect of
Android at all.”

TX 2 (Notes of Android GPS meeting attended
by Mr. Lindholm, Mr. Rubin, and Google
founders Larry Page and Sergey Brin)

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(Statement by Google counsel, July 21, 2011
Discovery Hearing Tr. at 31:13-32:2)

TX 325 (“Got a run through the Android
technology”)

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See also TX 3, 6, 9, 10, 125, 131, 212, 213, 321
etc.

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“I don’t believe he attended any negotiating
sessions.”

TX 1 at 9 (“Google/Android, with support from
Tim Lindholm, negotiates the first OSS J2ME
JVM license with Sun”)

(Statement by Google counsel, July 21, 2011
Discovery Hearing Tr. at 33:14-23)

TX 325 (“Two Sun meetings on Android
licensing”)

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TX 140 (“As you might vaguely be aware, I have
been helping Andy Rubin with some issues
associated with his Android platform. This has
mostly taken the form of helping negotiate with
my old team at Sun for a critical license.”)

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Mr. Lindholm “had never reviewed the patents
asserted by Oracle in this lawsuit.”

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TX 25 at 401 (The Java Virtual Machine
Specification, (“The technique documented in
this chapter is covered by US Patent
5,367,685.”))

(Dkt. 492, Google MIL No. 1, at 2:2)

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Despite Google’s efforts to pretend that Mr. Lindholm had no meaningful involvement with Android,
and had never even reviewed (much less written a chapter of a book about) the patents-in-suit, the
jury is entitled to draw exactly the inference that the Court previously identified: that he was “quite
knowledgeable about Java and Android technology as separate platforms and any potential crossover
between the two platforms.” (Dkt. 676 at 2.)
Moreover, Google’s insistence that Lindholm was not involved in “designing or coding the
Android software” and had no “technical responsibilities” for Android, even if that were true, would
not be relevant. Lindholm knew that Sun had a specific patent, that patent aided performance, that
patent read on Sun’s Java virtual machine, and the successor to that patent is the patent-in-suit. In
addition, Mr. Lindholm knew that Android was implementing a Java virtual machine. (TX 1, at 9.)
Mr. Lindholm’s detailed knowledge of the specific Java and Android technology and his admissions
in 2006 that a license was “critical,” are relevant to a finding of infringement. Google cannot exclude
that relevant evidence by relitigating an issue that the Court has already decided against it.
Second, Google is simply wrong that the “difference” in claim language between the ’104 and
’685 has any bearing on infringement, or on the relevance of Mr. Lindholm’s knowledge of the ’685.
Google observes only that the claims “differ,” but does not discuss which direction the differences
cut. (Dkt. 1077 at 2, 3.) That is because Google itself has insisted that every claim of the ’104 is
broader than the claims in the ’685. (See Dkt. No. 311 at 2 (précis “All the claims of the ‘104 patent
are broader than the claims of the ’685 patent.”).) As a result, if a method or apparatus is covered by
the ’685, Google has taken the position that the same method or apparatus would be also necessarily

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covered by the ’104.1 This sort of issue is precisely what testimony at trial should sort out. Mr.

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Lindholm’s knowledge of the ’685 patent is therefore unquestionably relevant, and not misleading.

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Third, in addition to its relevance for direct infringement, Mr. Lindholm’s knowledge of the

predecessor to the ’104—which he identified specifically and described in detail in a book he

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published—is unquestionably relevant to an essential element of one of Oracle’s claims.

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Fourth, Google is simply incorrect that the standard for inducement would require Oracle to

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Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2068 (2011). Mr. Lindholm’s knowledge of the

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nonetheless “requires knowledge that the induced acts constitute patent infringement.” Global-Tech

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Google had knowledge of the patents-in-suit by number, but inducement under 35 U.S.C. § 271(b)

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’104 patent is relevant to Oracle’s claims of inducing infringement. Oracle need not show that

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show that Google was “made aware of the patents-in-suit” by Mr. Lindholm. As the Supreme Court

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held in Global-Tech, willful blindness suffices. Global-Tech, 131 S. Ct. at 2069. Mr. Lindholm

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knew that (at least one) patent existed on technology that Android was building. He likely knew that

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there were hundreds more. Mr. Lindholm was a member of the Android team, advising Mr. Rubin on

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technology to incorporate into Android’s JVM. The jury should be entitled to draw an inference from

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the admitted failure by Mr. Rubin, Mr. Lindholm, and the rest of the Android team to conduct any

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further inquiry at all that Google took deliberate actions to avoid learning of any patents that it was

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likely to infringe. Id. at 2071 (describing standard for willful blindness in the context of

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inducement); see also ePlus Inc. v. Lawson Software, Inc., Civil No. 3:09-cv-620, 2011 WL 3584313,

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at *4–5 (E.D. Va. Aug. 11, 2011) (instructing jury that “[k]nowledge of the patent may be established

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by a finding that Lawson had actual knowledge of the patent or that Lawson deliberately disregarded

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a known risk that ePlus had a protective patent.”).

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Fifth, Mr. Lindholm’s actual knowledge of the predecessor patent to the ’104 is nothing like

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Mr. Schmidt’s prior testimony before Congress. Mr. Schmidt’s outdated articulation of a policy

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position on what Sun then advocated the law ought to be has no bearing on any claim or fact to be

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1 Google’s request to file a summary judgment motion for invalidity based on the broadening re-issue
was denied (Dkt. 327), and Google no longer asserts any invalidity defense.

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decided by the jury. In contrast, Mr. Lindholm’s knowledge goes directly to essential elements of

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Oracle’s infringement and inducement claims—specific knowledge of a patent by an expert on the

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technology who was later employed by Google and worked in an advisory role on Android. Google’s

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argument is simply that both pieces of evidence are more than ten years old. By Google’s absurd

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logic, the ’104 patent itself should be excluded, as it was first issued in 1994.

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IV.

CONCLUSION
Mr. Lindholm’s testimony is relevant to Phase 2, notwithstanding the fact that it may also be

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should be denied.

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substantial; its prejudicial effect is nil. Google’s motion to preclude Mr. Lindholm’s testimony

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relevant to willful infringement in Phase 3. The probative value of Mr. Lindholm’s testimony is

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Dated: May 6, 2012

BOIES, SCHILLER & FLEXNER LLP
By: /s/ Steven C. Holtzman
Steven C. Holtzman
Attorneys for Plaintiff
ORACLE AMERICA, INC.

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