Oracle America, Inc. v. Google Inc.

Filing 1125

MOTION for Summary Judgment re Copyright Damages filed by Google Inc.. Responses due by 5/29/2012. Replies due by 6/5/2012. (Attachments: #1 Declaration of David Zimmer, #2 Exhibit A, #3 Exhibit B, #4 Exhibit C, #5 Exhibit D, #6 Exhibit E, #7 Exhibit F)(Van Nest, Robert) (Filed on 5/12/2012)

Exhibit A

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MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[e-mail]
MARC DAVID PETERS (Bar No. 211725)
[e-mail]
755 Page Mill Road
Palo Alto, CA 94304-1018
Telephone: [phone] / Facsimile: [phone]

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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]

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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.

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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.

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Plaintiff,

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GOOGLE, INC.

ORACLE AMERICA, INC.’S
INITIAL DISCLOSURES

v.

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Case No. 3:10-cv-03561-WHA

Judge: Honorable William H. Alsup
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Defendant.

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ORACLE AMERICA, INC.’S INITIAL DISCLOSURES
CASE NO. 3:10-cv-03561-WHA
pa-1433184

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Pursuant to Federal Rule of Civil Procedure 26(a)(1), Plaintiff Oracle America, Inc.

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(“Oracle”) hereby makes its initial disclosures. Oracle has made a reasonable and good faith

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effort to make the initial disclosures provided herein, including providing general descriptions of

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documents, and identifying persons who may have knowledge of pertinent information, relating

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to the issues in this action. However, Oracle’s investigation of its claims and defenses in this

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action is ongoing. Other potential witnesses and/or documents may be identified and become

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significant as discovery proceeds and as the case develops, and therefore, Oracle reserves the

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right to supplement these disclosures.

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INDIVIDUALS LIKELY TO HAVE DISCOVERABLE INFORMATION
THAT ORACLE MAY USE TO SUPPORT ITS CLAIMS OR DEFENSES
(FED. R. CIV. P. 26(A)(1)(A)).

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The persons Oracle believes are likely to have discoverable information that Oracle may

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I.

use to support its claims and defenses are:

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Name, Address, Telephone
Greg Bollella
Contact through counsel for Oracle
Roger Calnan
Contact through counsel for Oracle
Andrew Carr
Contact through counsel for Oracle
Safra Catz
Contact through counsel for Oracle

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Neal Civjan
Contact through counsel for Oracle
Patrick Curran
Contact through counsel for Oracle
Bill Daly
Contact through counsel for Oracle
Don Deutsch
Contact through counsel for Oracle
Larry Ellison
Contact through counsel for Oracle

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Gustavo Galimberti
Contact through counsel for Oracle
ORACLE AMERICA, INC.’S INITIAL DISCLOSURES
CASE NO. 3:10-cv-03561-WHA
pa-1433184

Subject
Java development
Java development and distribution
Java distribution
Oracle’s business; Oracle’s acquisition of Sun;
Java business models, business plans, and
associated financial data; license discussions
between Oracle and Google
Java licensing and sales, including negotiations
with Google
Java standards, JCP, and open Java
Oracle financial data
Java standards, JCP, and open Java, Java
revenues and business
History of Oracle; Oracle’s business; Oracle’s
acquisition of Sun; Java business models and
business plans; license discussions between
Oracle and Google
Java development, Java licensing, Java
distribution and support
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Name, Address, Telephone
Craig Gering
Contact through counsel for Oracle
Ivgen Guner
Contact through counsel for Oracle
Vineet Gupta
Contact through counsel for Oracle
Steve Harris
Contact through counsel for Oracle
Jeannette Hung
Contact through counsel for Oracle
Thomas Kurian
Contact through counsel for Oracle

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Jacob Lehrbaum
Contact through counsel for Oracle
Matthew Mayerson
Contact through counsel for Oracle
Kerry McGuire
Contact through counsel for Oracle
John Pampuch
Contact through counsel for Oracle
Bill Pittore
Contact through counsel for Oracle
Nandini Ramani
Contact through counsel for Oracle
Mark Reinhold
Contact through counsel for Oracle

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Hasan Rizvi
Contact through counsel for Oracle
Susan Roach
Contact through counsel for Oracle
Bill Shannon
Contact through counsel for Oracle

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Param Singh
Contact through counsel for Oracle
Guy Steele
Contact through counsel for Oracle
Brian Sutphin
Contact through counsel for Oracle
Lars Bak
Google employee
ORACLE AMERICA, INC.’S INITIAL DISCLOSURES
CASE NO. 3:10-cv-03561-WHA
pa-1433184

Subject
Java development, licensing, and testing
Oracle financial data
Java sales and licensing, including negotiations
with Google
Java development, distribution, licensing,
business models, and business plans
Java development
Java development, distribution, licensing,
business models, and business plans; license
discussions between Oracle and Google
Java licensing and copyrights
Software distribution
Java business and revenues
Java VM technology
Java VM development
Java Development
Java development, distribution, licensing,
business models, business plans, patent rights
and copyrights
Java development, distribution, licensing,
business models, and business plans; license
discussions between Oracle and Google
Java development, distribution, licensing,
business models, business plans, patent rights
and copyrights
Java development, distribution, licensing,
business models, business plans, patent rights
and copyrights
Mobile Java development and business plan
Java development
Java licensing and business, including
negotiations with Google, Java business plans
Inventor of U.S. Patent No. 6,910,205

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Name, Address, Telephone
Nedim Fresko
121 Lincoln Way
San Francisco, CA 94122-2717
Li Gong
Mozilla Foundation
650 Castro Street, Suite 300
Mountain View, CA 94041-2072
[e-mail]
James Gosling
75 Fox Hollow Lane
Redwood City, CA 94062-4158
Robert Griesemer
Google employee
Richard Tuck
343 Hill Street
San Francisco, CA 94114-2916
Frank Yellin
Google employee
Representatives of Google, including witnesses
identified in Google’s initial disclosure

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Joshua Bloch
Google employee

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Dan Bornstein
Google employee

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Bill Buzbee
Google employee

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Eric Chu
Google employee
Gregorz Czajkowski
Google employee

Tim Lindholm
Google employee
Rich Miner
Google employee

Subject
Inventor of U.S. Patent Nos. 5,966,702 and
7,426,720
Inventor of U.S. Patent Nos. 6,125,447 and
6,192,476

Inventor of U.S. Patent No. RE38,104

Inventor of U.S. Patent No. 6,910,205
Inventor of U.S. Patent Nos. 5,966,702 and
6,061,520
Inventor of U.S. Patent No. 6,061,520
Android development, marketing and
distribution (including Open Handset Alliance),
business plans, infringement, profit models,
and revenues
Android development, marketing and
distribution (including Open Handset Alliance),
business plans, infringement, profit models,
and revenues
Android development, marketing and
distribution (including Open Handset Alliance),
business plans, infringement, profit models,
and revenues
Android development, marketing and
distribution (including Open Handset Alliance),
business plans, infringement, profit models,
and revenues
Java license negotiations between Google and
Sun
Android development, marketing and
distribution (including Open Handset Alliance),
business plans, infringement, profit models,
and revenues
Java license negotiations between Google and
Sun
Java license negotiations between Google and
Sun

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ORACLE AMERICA, INC.’S INITIAL DISCLOSURES
CASE NO. 3:10-cv-03561-WHA
pa-1433184

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Name, Address, Telephone
Larry Page
Google employee

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Andy Rubin
Google employee

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Eric Schmidt
Google employee

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Representatives of manufacturers and
distributors of Android devices
Alan Brenner
RIM/Blackberry employee
Ethan Beard
Facebook employee
Rich Green
Nokia employee

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Subject
Knowledge of Oracle’s Java-related intellectual
property; Android development, marketing and
distribution (including Open Handset Alliance),
business plans, infringement, profit models,
and revenues; license discussions between
Google and Oracle
Android development, marketing and
distribution (including Open Handset Alliance),
business plans, infringement, profit models,
revenues, and license negotiations between
Google and Oracle
Java development; knowledge of Oracle’s Javarelated intellectual property; Android
development, marketing and distribution
(including Open Handset Alliance), business
plans, infringement, profit models, and
revenues; license discussions between Google
and Oracle
Android distribution, revenues, infringement
Java development, distribution, licensing,
business models, business plans, patent rights
and copyrights
Java license negotiations between Google and
Sun
Java development, distribution, licensing,
business models, business plans, patent rights
and copyrights

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II.

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Oracle discloses and describes by category the following documents, electronically-stored

DOCUMENTS (FED. R. CIV. P. 26(A)(1)(B)).

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information, data compilations and tangible things that are or may be in the possession, custody

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or control of Oracle that Oracle currently and reasonably believes it may use to support its claims

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or defenses:

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1.

U.S. Patent No. 6,125,447 and related files.

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2.

U.S. Patent No. 6,192,476 and related files.

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3.

U.S. Patent No. 5,966,702 and related files.

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4.

U.S. Patent No. 7,426,720 and related files.

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5.

U.S. Patent No. RE38,104 and related files.

ORACLE AMERICA, INC.’S INITIAL DISCLOSURES
CASE NO. 3:10-cv-03561-WHA
pa-1433184

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U.S. Patent No. 6,910,205 and related files.

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U.S. Patent No. 6,061,520 and related files.

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U.S. Certificate of Copyright Registration for J2SE 1.4, the copyrighted

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work, and related files.
9.

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work, and related files.
10.

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U.S. Certificate of Copyright Registration for J2SE 5.0, the copyrighted

U.S. Certificate of Supplemental Copyright Registration for J2SE 5.0 and
related files.

11.

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Documents evidencing the conception, development, reduction to practice,
and design of the inventions claimed by the patents at issue.

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Documents relating to the history and development of the Java platform.

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Java releases and related documentation.

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Documents evidencing sales, distribution, deployment, and use of Java

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products.

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Java-related contracts, licenses, and pricing models.

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Sun and Oracle Java business plans and financial results.

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Documents evidencing Google’s knowledge of the Sun patent portfolio,

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including documents relating to licensing of the Java IP rights by Google

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and Google’s participation in the Java Community Process.

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Android releases and related documentation.

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Google marketing, advertising, and press releases, and statements

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regarding Android, Android devices, Android distribution and deployment,

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and revenues attributable to Android.

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Public and third-party reports, releases, and statements regarding the

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distribution and deployment of Android devices, and the impact of Android

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and Android devices on the use, distribution, and deployment of the Java

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platform and Java devices.

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ORACLE AMERICA, INC.’S INITIAL DISCLOSURES
CASE NO. 3:10-cv-03561-WHA
pa-1433184

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Documents relating to each type and category of damages described in

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Section III below, including license fees, revenue from and profitability of

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Java and related Oracle businesses, and Oracle’s and Google’s business

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models for the relevant lines of business.

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The above documents are maintained primarily at one or more Oracle locations in

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California (Santa Clara, Redwood Shores, and Menlo Park) and Broomfield, Colorado, depending

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on the location of the various individuals identified above.

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III.

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INITIAL DISCLOSURES REGARDING COMPUTATION OF DAMAGES
(FED. R. CIV. P. 26(A)(1)(C)).

Oracle has not completed its calculation for monetary damages as it will require expert

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evaluation of information in Google’s possession. When available, documents and information

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will be provided in conformity with Fed. R. Civ. P. 26(a)(2) and/or any relevant Orders entered

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by the Court.

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Based on information currently available to Oracle, Oracle seeks compensation for all

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damages caused by Google’s infringing activities, including recovery of profits Oracle would

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have made without the infringement, disgorgement of profits made by Google that are attributable

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to the infringement, and/or award of the fair market value of a license for the rights infringed.

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Such compensation may include at least (1) harm to the profits of Oracle’s Java business caused

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by Google’s infringing activities, including lost license fees; (2) harm to Oracle’s business model

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and strategy relating to Java and the importance of minimizing “forks” in Java; (3) harm to

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Oracle’s reputation and goodwill; (4) harm to Oracle profits from the sales or licenses of other

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software or hardware products reasonably related to or stemming from Oracle’s Java business; (5)

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the amount a willing buyer would have been reasonably required to pay a willing seller in a

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hypothetical negotiation for a license to the infringed intellectual property at the time of the

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infringement; and/or (6) all Google profits directly or indirectly attributable to the infringement,

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including profits from advertising, search and other revenue through use of the Android platform

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on mobile devices. Because Google’s infringement has been willful and intentional, Oracle is

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entitled to recover treble damages, pursuant to 35 U.S.C. § 284.
ORACLE AMERICA, INC.’S INITIAL DISCLOSURES
CASE NO. 3:10-cv-03561-WHA
pa-1433184

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Oracle is entitled to actual damages for Google’s use of Oracle’s copyrighted works,

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together with Google’s profits attributable to the infringement, computed by subtracting from

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Google’s gross revenue any deductions established by Google for deductible expenses or the

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elements of profit attributable to factors other than the infringed work. 17 U.S.C. § 504(b).

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Regarding Google’s revenue from its Android business, Google’s CEO Eric Schmidt has said

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“Trust me that revenue is large enough to pay for all of the Android activities and a whole bunch

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more.” Google will disclose information regarding its revenues and expenses attributable to

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Android during discovery. At a minimum, Oracle is entitled to statutory damages, pursuant to 17

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U.S.C. § 504(c).

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In addition, Oracle is entitled to recover the costs of suit, prejudgment interest, and

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attorney’s fees under 35 U.S.C. § 285. These costs, expenses and further relief cannot be

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computed until the conclusion of this suit.

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IV.

INITIAL DISCLOSURES REGARDING INSURANCE
(FED. R. CIV. P. 26(A)(1)(D)).

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Oracle is unaware of any insurance agreement under which an insurance business may be

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liable to satisfy all or part of a judgment in this action or to indemnify or reimburse for payments

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made to satisfy any judgment.

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Dated: December 2, 2010

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MICHAEL A. JACOBS
MARC DAVID PETERS
MORRISON & FOERSTER LLP

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By: /s/ Marc David Peters

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Attorneys for Plaintiff
ORACLE AMERICA, INC.

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ORACLE AMERICA, INC.’S INITIAL DISCLOSURES
CASE NO. 3:10-cv-03561-WHA
pa-1433184

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CERTIFICATE OF SERVICE

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I declare that I am employed with the law firm of Morrison & Foerster LLP, whose address
is 755 Page Mill Road, Palo Alto, California 94304-1018. I am not a party to the within cause,
and I am over the age of eighteen years.

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I further declare that on December 2, 2010, I served a copy of:

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ORACLE AMERICA, INC.’S INITIAL DISCLOSURES

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BY ELECTRONIC SERVICE [Fed. Rule Civ. Proc. rule 5(b)] by electronically
mailing a true and correct copy through Morrison & Foerster LLP's electronic mail
system to the e-mail address(es) set forth below, or as stated on the attached service
list per agreement in accordance with Federal Rules of Civil Procedure rule 5(b).

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Robert F. Perry
Scott T. Weingaertner
Bruce W. Baber
KING & SPALDING LLP
1185 Avenue of the Americas
New York, NY 10036-4003

Timothy T. Scott
Geoffrey M. Ezgar
Leo Spooner III
KING & SPALDING, LLP
333 Twin Dolphin Drive, Suite 400
Redwood Shores, CA 94065

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[e-mail]
[e-mail]

[e-mail]
[e-mail]
[e-mail]

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Fax:

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212.556.2222
Fax:

Donald F. Zimmer, Jr.
Cheryl Z. Sabnis
KING & SPALDING LLP
101 Second Street, Suite 2300
San Francisco, CA 94105

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[e-mail]
[e-mail]

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650.590.1900

Ian C. Ballon
Heather Meeker (App for Admission to
ND Cal to be filed)
GREENBERG TRAURIG LLP
1900 University Avenue
East Palo Alto, CA 94303

Fax: [phone]

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[e-mail]
[e-mail]
Fax:

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Joseph R. Wetzel
GREENBERG TRAURIG LLP
153 Townsend Street, 8th Floor
San Francisco, CA 94107

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[e-mail]

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650.328.8508

Fax: [phone]

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CERTIFICATE OF SERVICE
CASE NO. 3:10-cv-03561-WHA
pa-1433184

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I declare under penalty of perjury that the foregoing is true and correct.

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Executed at Palo Alto, California, this 2nd day of December, 2010.

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Richard S. Ballinger
(typed)

/s/ Richard S. Ballinger
(signature)

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CERTIFICATE OF SERVICE
CASE NO. 3:10-cv-03561-WHA
pa-1433184

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