Oracle America, Inc. v. Google Inc.

Filing 1130

RESPONSE (re #1126 MOTION TO DEFER PHASE THREE PENDING RESOLUTION OF REMAINING LIABILITY ISSUES ) Google's Memorandum in Opposition to Oracle's Motion to Defer Phase Three filed byGoogle Inc.. (Baber, Bruce) (Filed on 5/13/2012)

1 ROBERT A. VAN NEST (SBN 84065)
[e-mail]
2 CHRISTA M. ANDERSON (SBN 184325)
3 [e-mail]
DANIEL PURCELL (SBN 191424)
4 [e-mail]
KEKER & VAN NEST LLP
5 633 Battery Street
San Francisco, CA 94111-1809
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Telephone: [phone]
7 Facsimile: [phone]

SCOTT T. WEINGAERTNER (Pro Hac Vice)
[e-mail]
ROBERT F. PERRY
[e-mail]
BRUCE W. BABER (Pro Hac Vice)
[e-mail]
KING & SPALDING LLP
1185 Avenue of the Americas
New York, NY 10036-4003
Telephone: [phone]
Facsimile: [phone]

IAN C. BALLON (SBN 141819)
8 DONALD F. ZIMMER, JR. (SBN 112279)
[e-mail]
[e-mail]
9 CHERYL A. SABNIS (SBN 224323)
HEATHER MEEKER (SBN 172148)
[e-mail]
[e-mail]
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KING & SPALDING LLP
GREENBERG TRAURIG, LLP
1900 University Avenue
11 101 Second Street – Suite 2300
San Francisco, CA 94105
East Palo Alto, CA 94303
12 Telephone: [phone]
Telephone: [phone]
Facsimile: [phone]
Facsimile: [phone]
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Attorneys for Defendant
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GOOGLE 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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Case No. 3:10-cv-03561-WHA
ORACLE AMERICA, INC.
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Plaintiff,

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v.

22 GOOGLE INC.
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Honorable Judge William Alsup
GOOGLE’S MEMORANDUM IN
OPPOSITION TO ORACLE’S MOTION
TO DEFER PHASE THREE

Defendant.

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GOOGLE’S MEMORANDUM IN OPPOSITION TO ORACLE’S MOTION TO DEFER PHASE THREE
CIV. NO. CV 10-03561-WHA

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Until yesterday, Oracle had been unyieldingly persistent in urging that its copyright
claims, based on its registrations for the entire Java platform, were in fact thirteen separate
copyright claims, each based on a separate “work as a whole.” 1 Oracle was successful in its
arguments and got what it wanted. As Oracle requested, the Court submitted Oracle’s multiple
infringement claims to the jury based on Oracle’s having taken scissors to its work and having
isolated the smaller units that would maximize its chances of proving its claims. Each of the
claims was based on a different, specifically-defined “work as a whole” – thirteen of them in all.
Now, in another about-face, Oracle argues that its copyright claim has collapsed back
into “a single claim,” pleaded in “a single count” of its Amended Complaint. Dkt. 1126 at 1, 3.
To avoid trying to prove damages based on the limited infringement results to date and unwilling
to accept that statutory damages are its sole available remedy for those results, Oracle engages in
double-speak. In its five-page motion, Oracle first argues that the infringements based on nine
lines of code and eight test files that have never appeared on handsets relate to “distinct elements
of the Java platform.” Dkt. 1126 at 2. On the next page, however, Oracle asserts that the
damages as to those elements “are not separate” from any damages that may later be awarded in
the event Oracle prevails in the future on the as yet unresolved SSO infringement claim. Dkt.
1126 at 3.
Oracle cannot have it both ways. The issues relating to the nine files – the nine “works”
that form the basis of the infringement findings favorable to Oracle – cannot at the same time be
both “distinct” and “not separate” from the SSO issues.2 Oracle argues that the jury “found
infringement” on rangeCheck (from a single J2SE file, Arrays.java) but did not find infringement

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See, e.g., Oracle’s March 9 Copyright Brief (Dkt. 780) at 1 (“The copyrighted works at
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issue are (a) 37 Java API design specifications and implementations and (b) 11 Java software
25 code files.”), 3 (identifying eleven individual code files), 13-14 (arguing that individual code
files were relevant “works as a whole”).
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“Distinct” means “distinguishable to the eye or the mind as discrete; separate.” See
Merriam-Webster Online Dictionary, at www.merriam-webster.com (emphasis added). See also
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Dictionary.com, at dictionary.reference.com (“distinct” means “distinguished as being not the
28 same; not identical; separate.”).
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GOOGLE’S MEMORANDUM IN OPPOSITION TO ORACLE’S MOTION TO DEFER PHASE THREE
CIV. NO. CV 10-03561-WHA

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on the test files (or the documentation) or resolve all issues relating to the SSO – all of which
were submitted to the jury in phase one as separate issues relating to “distinct elements of the
Java platform.” Dkt. 1126 at 2-3; see also Dkt. 1089 at 2 (jury verdict deciding issues of
“infringement” as to documentation and allegedly copied code and comments). In view of the
Court’s order granting Oracle JMOL on the test files (Dkt. 1123), the liability issues as to both
rangeCheck and the test files have been resolved. Those claims are ripe for a damages
determination. 3
Having made its bed, Oracle must now lie in it. Oracle’s claims based on the nine files
can only be treated for damages purposes as separate from the other claims that were submitted
to the jury. Those other claims – both (a) the ones that Oracle has lost on (the claims relating to
the documentation that was the subject of Question 2 of the verdict and the files with “copied”
comments that were the subject of Question 3.C), and (b) the one that remains to be decided (the
SSO claim that was the subject of Question 1) – were, at Oracle’s request, based on other
“works.” 4 As a result, the claims that have been decided and the one that remains unresolved
are not based on the same “set of facts.” Compare Liberty Mut. Ins. Co. v. Wetzel, 424 U.S. 737,
743 (1976) (finding interlocutory order on liability not final or appealable under 28 U.S.C.
§ 1291 when claim “advanced a single legal theory which was applied to only one set of facts”
and relief had not been decided).
Nor does citation to case law under Rule 42 regarding bifurcation help Oracle. The Ninth
Circuit has often confirmed that Rule 42(b) “confers broad discretion upon the district court.”
Hangartner v. Provident Life and Accident Ins. Co., 373 F.3d 998, 1021 (9th Cir. 2004) (quoting

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The rangeCheck and test file claims are therefore unlike the SSO claim, as to which
findings disposing of both Oracle’s claim and Google’s intertwined fair use defense have not
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been made and as to which a new trial is therefore needed on both issues. See Google Motion
25 For New Trial, Dkt. 1105.
With the exception of the nine lines of rangeCheck code, there is no overlap between the
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“works” that form the basis of the infringement findings favorable to Oracle and the “work” that
27 is the subject of the unresolved SSO claim. Although rangeCheck is a nine-line private method
in code that implements an element of an accused API package, the unresolved SSO claim is
28 based on elements of the packages other than the implementing code.
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GOOGLE’S MEMORANDUM IN OPPOSITION TO ORACLE’S MOTION TO DEFER PHASE THREE
CIV. NO. CV 10-03561-WHA

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Zivkovic v. S. Cal. Edison Co., 302 F.3d 1080 (9th Cir. 2002)). The Court has exercised this
discretion in this case by ordering the three-phase trial. The most prudent course is to remain
consistent with that decision and permit the current jury to complete as much work as possible in
resolving all damages issues that are ripe for decision and can properly be decided now. Those
issues include all damages issues relating to rangeCheck and the test files, and any patent
damage issues that may be appropriate once the jury has reached its phase two verdict. The
current jury is familiar with rangeCheck and the test files, and it would complicate unnecessarily
the work of any future jury that needs to be empanelled to decide the SSO claim if that jury had
to also decide the separate damages issues relating to rangeCheck and the test files. Judicial
economy and principles of sound trial management counsel strongly in favor of not disturbing
the current trial plan.5
In support of its motion, Oracle repeats the same flawed argument it has made in support
of its un-election of statutory damages and its quixotic pursuit of an award of profits for the
rangeCheck method and the eight test files. Oracle argues that if phase three is not deferred, two
different juries will need to “determine the amount of Google’s Android revenues.” Dkt. 1126 at
1; see also id. at 4 (“juries would have to start with the amount of Android revenues”; each trial
would require proof of “Google’s Android revenues”).
For the reasons set forth in Google’s motion for summary judgment on copyright
damages, filed on May 12, 2012 (Dkt. 1125), Oracle cannot begin any quest for profits based on
rangeCheck and the test files with “Google’s Android revenues”; Oracle cannot prove any causal
connection between the infringements that have been found and any revenue whatsoever; and
Oracle has never disclosed any such damages theory. The theory is therefore not only legally
baseless, it comes too late – as a last-ditch afterthought at best. It certainly cannot form the basis

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Proceeding with phase three as to rangeCheck and the test files is also appropriate in
view of the possibility that the SSO claim may never be retried, either as a result of a ruling by
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the Court on the copyrightability issues and/or an appeal of such a ruling that makes a retrial
27 unnecessary. Empanelling a second jury at some time in the future to decide only damages as to
rangeCheck and the test files would be contrary to judicial economy – to say the least. See
28 Fed.R.Civ.P 42(b) (separate trials proper for “convenience” and “to expedite and economize”).
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GOOGLE’S MEMORANDUM IN OPPOSITION TO ORACLE’S MOTION TO DEFER PHASE THREE
CIV. NO. CV 10-03561-WHA

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for deferring decision by the jury or the Court on the damages, if any, to which Oracle is entitled
as a result of the limited infringements it has proven to date. And under the scenario posed by
Oracle, the different juries would in fact be determining different issues, namely the current jury
would need to determine the amount of profits (if any) attributable to the use of rangeCheck and
the test files, while the second future jury would need to determine the amount of profits (if any)
attributable to use of the SSO of the API packages.
Finally, Oracle argues that it would be prejudicial to have the jury that found no liability
on the test files now be told to consider damages as to those files. Dkt. 1126 at 5-6. This
concern can easily be addressed through the Court’s instructions to the jury on statutory
damages. “Juries are presumed to follow the court's instructions.” Aguilar v. Alexander, 125
F.3d 815, 820 (9th Cir. 1997) (citing Richardson v. Marsh, 481 U.S. 200, 211, 107 S. Ct. 1702,
95 L. Ed. 2d 176 (1987)); see also Jules Jordan Video, Inc. v. 144942 Canada Inc., 617 F.3d
1146 (9th Cir. 2010) (“There is a strong presumption that juries follow curative instructions. See
Doe ex. rel. Rudy-Glanzer v. Glanzer, 232 F.3d 1258, 1270 (9th Cir. 2000).”).
But if Oracle finds that still too risky, it could join Google in waiving the right to have the
jury decide the damages for the eight test files and rangeCheck and agree to have these issues
tried to the Court.
For all of the foregoing reasons, Oracle’s motion to defer phase three should be denied.

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GOOGLE’S MEMORANDUM IN OPPOSITION TO ORACLE’S MOTION TO DEFER PHASE THREE
CIV. NO. CV 10-03561-WHA

1 DATED: May 13, 2012

GOOGLE INC.

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By: /s/ Bruce W. Baber

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ROBERT A. VAN NEST (SBN 84065)
[e-mail]
CHRISTA M. ANDERSON (SBN 184325)
[e-mail]
DANIEL PURCELL (SBN 191424)
[e-mail]
KEKER & VAN NEST LLP
633 Battery Street
San Francisco, CA 94111-1809
Telephone: [phone]
Facsimile: [phone]
SCOTT T. WEINGAERTNER (Pro Hac Vice)
[e-mail]
ROBERT F. PERRY
[e-mail]
BRUCE W. BABER (Pro Hac Vice)
[e-mail]
KING & SPALDING LLP
1185 Avenue of the Americas
New York, NY 10036-4003
Telephone: [phone]
Facsimile: [phone]
IAN C. BALLON (SBN 141819)
[e-mail]
HEATHER MEEKER (SBN 172148)
[e-mail]
GREENBERG TRAURIG, LLP
1900 University Avenue
East Palo Alto, CA 94303
Telephone: [phone]
Facsimile: [phone]
ATTORNEYS FOR DEFENDANT
GOOGLE INC.

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GOOGLE’S MEMORANDUM IN OPPOSITION TO ORACLE’S MOTION TO DEFER PHASE THREE
CIV. NO. CV 10-03561-WHA