Oracle America, Inc. v. Google Inc.

Filing 1132

OBJECTIONS to re #1121 Order to Final Charge to the Jury (Phase Two) by Google Inc.. (Van Nest, Robert) (Filed on 5/13/2012)

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KEKER & VAN NEST LLP
ROBERT A. VAN NEST - # 84065
[e-mail]
CHRISTA M. ANDERSON - # 184325
[e-mail]
MICHAEL S. KWUN - # 198945
[e-mail]
633 Battery Street
San Francisco, CA 94111-1809
Tel: [phone]
Fax: [phone]

KING & SPALDING LLP
DONALD F. ZIMMER, JR. - #112279
[e-mail]
CHERYL A. SABNIS - #224323
[e-mail]
101 Second Street, Suite 2300
San Francisco, CA 94105
Tel: [phone]
Fax: [phone]

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

IAN C. BALLON - #141819
[e-mail]
HEATHER MEEKER - #172148
[e-mail]
GREENBERG TRAURIG, LLP
1900 University Avenue
East Palo Alto, CA 94303
Tel: [phone]
Fax: [phone]

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Attorneys for Defendant
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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ORACLE AMERICA, INC.,

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Case No. 3:10-cv-03651 WHA

Plaintiff,

GOOGLE’S OBJECTIONS TO FINAL
CHARGE TO THE JURY (PHASE TWO)

v.
Dept.:
Judge:

GOOGLE INC.,

Courtroom 8, 19th Floor
Hon. William Alsup

Defendant.

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GOOGLE’S OBJECTIONS TO FINAL CHARGE TO THE JURY (PHASE TWO)
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I.

INTRODUCTION
Google offers these objections to, and comments on, the Court’s Final Charge to the Jury

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(Phase Two). See ECF Nos. 1121, 1121-1. Google also preserves all prior objections made to the

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jury instructions and verdict form. See RT 3652-3704 (transcript of charging conference).

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II.

OBJECTIONS TO THE FINAL CHARGE

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A.

Instruction 8

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Google had suggested at the charging conference that the Court include on its special

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verdict form the phones that are accused by Oracle of infringement. See RT 3699:3-13. The

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Court has not adopted that suggestion in its proposed special verdict form. Google believes that

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the jury should be informed in some fashion of the phones that are actually in this case, and

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therefore proposes a new sentence to add to instruction 8, following the sentence “The products

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that allegedly infringe the asserted patents are certain Android mobile devices and software and

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the Android Software Development Kit (“SDK”).” The proposed new sentence would read “The

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specific Android mobile devices accused in this case are the Nexus One, the Nexus S, the HTC

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EVO 4G, the HTC Droid Incredible, the HTC G2, the Motorola Droid, and the Samsung

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Captivate.”

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B.

Instruction 14

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Google objects to the Court’s inclusion in its jury instructions the statement that

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“[d]istributing or offering a product for free constitutes a use or sale.” That instruction is not

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supported by the case law. A sale requires transfer of a product for a price, not for free. See

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PharmaStem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342, 1359 (Fed. Cir. 2007). Use of a

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product requires that a product be put into service, not merely displayed or distributed. See

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Medical Sol’ns, Inc. v. C Change Surgical LLC, 541 F.3d 1136, 1141 (Fed. Cir. 2008). For these

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reasons, as well as for those stated in Google’s Memorandum re Jury Instructions (ECF No. 535)

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at 33-35, Google objects to the inclusion of this sentence.

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C.

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Google objects to the inclusion in these two instructions of language suggesting that

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Instructions 19 and 20

mobile service providers are potential direct infringers of the claims of the patents-in-suit. At the
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charging conference, Google pointed out that Oracle had developed no evidence during trial

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suggesting that mobile service providers were direct infringers. See RT 3677-78. Google

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therefore objects to inclusion of “mobile service providers” in either of these instructions.

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D.

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Google objects to the inclusion of language stating that the jury could find Google liable

Instruction 21

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for inducing infringement if it “knew or should have known of the asserted patent.” At the

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charging conference, counsel for Oracle stated that both parties had proposed such language in

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their instructions. RT 3679:23-24. In fact, Google had proposed such language for the third

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prong of the test, that is, “knew or should have known that its actions would cause direct

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infringement by another.” ECF No. 535 at 115. The Model Patent Jury Instructions for the

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Northern District of California, as revised November 3, 2011 (after the parties had submitted their

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original proposals on jury instructions), also support Google’s position here. Specifically, Model

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Instruction 3.9 does not include a “knew or should have known” standard in any of the three

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enumerated elements, and notes that an accused infringer “cannot be liable for inducement unless

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it actually believed it was highly probable its actions would encourage infringement of a patent

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and took intentional acts to avoid learning the truth.” The focus of imputed knowledge there is on

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the actions taken, not on knowledge of the patent. Accordingly, Google objects to inclusion of

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the “knew or should have known” language in the second prong of the test (page 8, line 21). That

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language should be “knew of the asserted patent.” Google would not object to inclusion of the

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“knew or should have known” language in the third prong of the test (page 8, line 22).

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E.

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Google objects the Court’s inclusion of an instruction on so-called “willful blindness.” As

Instruction 23

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explained at the charging conference, see RT 3682-3692, there are insufficient facts in the record

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to support a jury finding that Google was willfully blind as to the patents-in-suit. The facts that

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Oracle has adduced come nowhere near the standard set by Global-Tech Appliances, Inc. v. SEB

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S.A., 131 S. Ct. 2060 (2011). Instead, this case is similar to Apeldyn Corp. v. AU Optronics

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Corp., No. 08-CV-568-SLR, 2011 U.S. Dist. LEXIS 134759 (D. Del. Nov. 15, 2011), where the

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court granted summary judgment of no indirect infringement because the underlying facts were
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insufficient to support a conclusion that the accused infringer had been willfully blind. None of

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the cases cited by Oracle support a finding of willful blindness on facts of this sort. Google

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further objects to this instruction to the extent that it does not clearly state that Google’s state of

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mind must have exceeded negligence or deliberate indifference, and that the actions it took to

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avoid learning of any relevant facts must have been active, not passive. See Global-Tech; N.D.

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Cal. Model Patent Jury Instruction 3.9 (“It is not enough that [accused infringer] was merely

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indifferent to the possibility that it might encourage infringement of a patent. Nor is it enough

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that [accused infringer] took a risk that was substantial and unjustified.”); ECF No. 1120

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(requesting such language); ECF No. 1078 (explaining why willful blindness not met by facts of

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case); ECF No. 535 at 42-43 (containing original briefing on the issue).

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III.

POTENTIAL REVISIONS TO THE FINAL CHARGE

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A.

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Google suggests that the phrase “asserted patents” on page 4, line 11 be changed to

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“asserted claims,” which was defined in the previous sentence. The term “asserted patents” is not

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otherwise defined in the instructions, and the current phrasing may cause jury confusion as to

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whether they could find infringement of non-asserted claims of the asserted patents.

Instruction 8

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B.

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For the same reasons set forth in III.A, Google suggests changing the phrase “a claim of

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Instruction 14

the asserted patents,” which is found on page 6, line 14, to “an asserted claim.”
Google further suggests that the phrase “you must compare that the accused product,”
found at page 6, line 20, contains a typo and should be “you must compare the accused product.”
Finally, Google suggests that the word “requirement,” found on page 6, lines 21 and 24,

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be changed to “limitation,” the term that is used in instruction 13, on page 6, line 7.

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Dated: May 13, 2012

KEKER & VAN NEST LLP

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By:

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/s/ Robert A. Van Nest
ROBERT A. VAN NEST
Attorneys for Defendant
GOOGLE INC.

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GOOGLE’S OBJECTIONS TO FINAL CHARGE TO THE JURY (PHASE TWO)
Case No. 3:10-CV-03561 WHA
665283.01