Oracle America, Inc. v. Google Inc.

Filing 1212

MOTION for Judgment as a Matter of Law - ORACLE AMERICA, INC.'S MOTION FOR JUDGMENT AS A MATTER OF LAW UNDER RULE 50(B) OR, IN THE ALTERNATIVE, FOR A NEW TRIAL - filed by Oracle America, Inc.. Motion Hearing set for 7/26/2012 08:00 AM in Courtroom 8, 19th Floor, San Francisco before Hon. William Alsup. Responses due by 7/5/2012. Replies due by 7/12/2012. (Attachments: #1 Proposed Order)(Jacobs, Michael) (Filed on 6/20/2012)

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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]
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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v.

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GOOGLE INC.

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Defendant.

Case No. CV 10-03561 WHA
ORACLE AMERICA, INC.’S
MOTION FOR JUDGMENT AS A
MATTER OF LAW UNDER
RULE 50(B) OR, IN THE
ALTERNATIVE, FOR A NEW
TRIAL
Date:
July 26, 2012
Time:
8:00 a.m.
Dept.: Courtroom 8, 19th Floor
Judge: Honorable William H. Alsup

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ORACLE AMERICA, INC.’S MOTION FOR JMOL UNDER RULE 50(B) OR, IN THE ALTERNATIVE, FOR A NEW TRIAL
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TABLE OF CONTENTS

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Page

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MEMORANDUM OF POINTS AND AUTHORITIES ................................................................ 1

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INTRODUCTION .......................................................................................................................... 1

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I.

GOOGLE INFRINGED ORACLE’S JAVA-RELATED COPYRIGHTS ........................ 2
A.

Oracle Owns The Asserted Copyrights ................................................................... 2

B.

Google Infringed By Copying Comments From Oracle Source Code ................... 3

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C.

Google Copied Java Specifications Into Android Specifications ........................... 4

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D.

Google’s Copying Is Not Fair Use .......................................................................... 6

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1.

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Google’s Use of the Copyrighted Work Is Purely Commercial ................. 6
a.

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Google’s Use Is Commercial .......................................................... 6

b.

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Google’s Use Is Not Transformative .............................................. 6

2.

The Copyrighted Work Is Creative In Nature ............................................. 8

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3.

Google Uses Valuable, Core Portions of the Copyrighted Work ............... 8

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4.

Google’s Use Harms The Potential Market For And Value Of The
Copyrighted Work....................................................................................... 9

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Judgment Should Be Granted In Oracle’s Favor On Issues That Were Not
Presented To The Jury............................................................................................. 9

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1.

Oracle Is Entitled To Judgment As A Matter Of Law On
Copyrightability .......................................................................................... 9

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2.

Google Created An Infringing Derivative Work ...................................... 16

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E.

II.

GOOGLE INFRINGED THE ASSERTED CLAIMS OF THE ’104 PATENT .............. 17
A.

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Android’s Resolve.c infringes claims 11, 39, 40, and 41 of the ’104 patent
because Dalvik bytecode instructions contain symbolic references ..................... 17
1.

A field index is a symbolic reference that is contained in a Dalvik
bytecode instruction .................................................................................. 17

2.

According to the ’104 patent, the “data” that the claimed symbolic
references refer to are actual data in a data object .................................... 19

3.

Conversion of instruction stream indices to numeric memory
locations confirms that the indices are symbolic references ..................... 19

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B.

Android dexopt infringes claims 27 and 29 of the ’104 patent ............................. 20

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III.

GOOGLE INFRINGED THE ASSERTED CLAIMS OF THE ’520 PATENT .............. 21

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IV.

GOOGLE’S EQUITABLE DEFENSES FAIL................................................................. 22

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A.

Google Has Not Met Its Burden Of Proving Equitable Estoppel ......................... 23

B.

Google Has Not Shown Laches Bars Oracle’s Infringement Claims ................... 23

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TABLE OF CONTENTS
(continued)

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Page
V.

THE COURT SHOULD GRANT JMOL ON GOOGLE’S ALTERNATIVE
DEFENSES TO PATENT INFRINGEMENT ................................................................. 24

VI.

IN THE ALTERNATIVE, ORACLE IS ENTITLED TO A NEW TRIAL ..................... 24

CONCLUSION ............................................................................................................................. 25

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TABLE OF AUTHORITIES

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Page(s)

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CASES

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A.C. Aukerman Co. v. R.L. Chaides Const. Co.,
960 F.2d 1020 (Fed. Cir. 1992) (en banc)......................................................................... 23, 24

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A&M Records, Inc. v. Napster, Inc.,
239 F.3d 1004 (9th Cir. 2001)................................................................................................... 8
Apple Computer, Inc. v. Microsoft Corp.,
35 F.3d 1435 (9th Cir. 1994)................................................................................................... 13
Atari v. Nintendo,
975 F.2d 832 (Fed. Cir. 1992) ................................................................................................. 14
Baker v. Selden,
101 U.S. 99 (1879) .................................................................................................................... 4
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569 (1994) .............................................................................................................. 7, 9
Carpet Seaming Tape Licensing Corp. v. Best Seam, Inc.,
694 F.2d 570 (9th Cir. 1982)................................................................................................... 23
Danjaq LLC v. Sony Corp.,
263 F.3d 942 (9th Cir. 2001)................................................................................................... 23
Dream Games of Ariz., Inc. v. PC Onsite,
561 F.3d 983 (9th Cir. 2009)............................................................................................... 3, 13
Edwin K. Williams & Co. v. Edwin K. Williams & Co.-East,
542 F.2d 1053 (9th Cir. 1976)................................................................................................... 4
Elvis Presley Enters. Inc. v. Passport Video,
349 F.3d 622 (9th Cir. 2003), overruled on different grounds in Flexible Lifeline Sys.
v. Precision Lift, Inc., 654 F.3d 989 (9th Cir. 2011) ......................................................... 6, 8, 9
eScholar LLC v. Otis Educ. Sys., Inc.,
2005 U.S. Dist. LEXIS 40727 (S.D.N.Y. Nov. 3, 2005) ........................................................ 16
Feist Publ’ns, Inc. v. Rural Tel. Serv. Co.,
499 U.S. 340 (1991) .................................................................................................................. 2
Fisher v. Dees,
794 F.2d 432 (9th Cir. 1986)..................................................................................................... 3

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Granite State Ins. Co. v. Smart Modular Techs., Inc.,
76 F.3d 1023 (9th Cir. 1996)................................................................................................... 10
Harper & Row Publishers, Inc. v. Nation Enters.,
471 U.S. 539 (1985) .......................................................................................................... 6, 8, 9
Health Grades, Inc. v. Robert Wood Johnson Univ. Hosp., Inc.,
634 F. Supp. 2d 1226 (D. Colo. 2009) .................................................................................... 12
In re Katz Interactive Call Processing Patent Litig.,
712 F. Supp. 2d 1080 (C.D. Cal. 2010) .................................................................................. 24
Jacobsen v. Katzer,
2009 U.S. Dist. LEXIS 115204 (N.D. Cal. Dec. 10, 2009) ...................................................... 4
Johnson Controls, Inc. v. Phoenix Control Sys., Inc.,
886 F.2d 1173 (9th Cir. 1989)............................................................................................. 4, 15
Kelly v. Arriba Soft Corp.,
336 F.3d 811 (9th Cir. 2003)..................................................................................................... 7
Lamps Plus, Inc. v. Seattle Lighting Fixture Co.,
345 F.3d 1140 (9th Cir. 2003)................................................................................................. 11
Leadsinger, Inc. v. BMG Music Publ’g,
512 F.3d 522 (9th Cir. 2008)..................................................................................................... 7
Lotus Dev. Corp v. Borland Int’l, Inc.,
49 F.3d 807 (1st Cir. 1995), aff’d by an evenly divided court, 516 U.S. 233 (1996).............. 15
Mitel, Inc. v. Iqtel, Inc.,
124 F.3d 1366 (10th Cir. 1997)............................................................................................... 15
Merch. Transaction Sys., Inc. v. Nelcela, Inc.,
2009 U.S. Dist. LEXIS 25663 (D. Ariz. Mar. 17, 2009) ........................................................ 12
Metcalf v. Bochco,
294 F.3d 1069 (9th Cir. 2002)................................................................................................... 4

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Micro Star v. Formgen Inc.,
154 F.3d 1107 (9th Cir. 1998)................................................................................................. 16
Mktg. Tech. Solutions, Inc. v. Medizine LLC,
2010 U.S. Dist. LEXIS 50027 (S.D.N.Y. Apr. 23, 2010) ......................................................... 4
Molski v. M.J. Cable, Inc.,
481 F.3d 724 (9th Cir. 2007)................................................................................................... 24

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Murphy v. City of Long Beach,
914 F.2d 183 (9th Cir. 1990)................................................................................................... 24
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Newton v. Diamond,
388 F.3d 1189 (9th Cir. 2004)................................................................................................... 3
SAS Inst., Inc. v. S&H Computer Sys., Inc.,
605 F. Supp. 816 (M.D. Tenn. 1985) ................................................................................ 16, 17
Satava v. Lowry,
323 F.3d 805 (9th Cir. 2003)................................................................................................... 12
Sega Enters. Ltd. v. Accolade, Inc.,
977 F.2d 1510 (9th Cir. 1993)........................................................................................... 13, 14
Sheldon v. Metro-Goldwyn Pictures Corp.,
81 F.2d 49 (2d Cir. 1936) .................................................................................................... 9, 16
Sony Computer Entm’t, Inc. v. Connectix Corp.,
203 F.3d 596 (9th Cir. 2000) (“Sony II”) ................................................................................ 14
Sony Computer Entm’t Inc. v. Connectix Corp.,
48 F. Supp. 2d 1212 (N.D. Cal. 1999) (“Sony I”) .................................................................. 14
Swirsky v. Carey,
376 F.3d 841 (9th Cir. 2004)................................................................................................... 12
Three Boys Music Corp. v. Bolton,
212 F.3d 477 (9th Cir. 2000)..................................................................................................... 5
Toro Co. v. R&R Prods. Co.,
787 F.2d 1208 (8th Cir. 1986)................................................................................................. 15
Twentieth Century-Fox Film Corp. v. MCA, Inc.,
715 F.2d 1327 (9th Cir. 1983)................................................................................................. 16
Twin Peaks Prods., Inc. v. Publ’ns Int’l, Ltd.,
996 F.2d 1366 (2d Cir. 1993) .................................................................................................. 16
United States v. Necoechea,
986 F.2d 1273 (9th Cir. 1993)................................................................................................. 24

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Urantia Found. v. Maaherra,
114 F.3d 955 (9th Cir. 1997)..................................................................................................... 4
Wall Data Inc. v. L.A. Cnty. Sheriff’s Dep’t,
447 F.3d 769 (9th Cir. 2006)................................................................................................. 6, 8

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STATUTES

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17 U.S.C.
§ 101 .............................................................................................................................. 8, 15, 16
§ 107 .......................................................................................................................................... 7
§ 410(c) ..................................................................................................................................... 3

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Fed R. Civ. P.
50(a) ........................................................................................................................................ 10
50(b) ........................................................................................................................................ 10
59(a)(1)(A) .............................................................................................................................. 24

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OTHER AUTHORITIES

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9 James W. Moore et al., Moore’s Federal Practice § 50.05[1] (3d ed. 2012) ............................ 10

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12 James W. Moore et al., Moore’s Federal Practice § 59.13[3][a] (3d ed. 2012) ..................... 25

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PLEASE TAKE NOTICE that the following motion will be heard at 8:00 A.M. on July

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26, 2012, or as soon thereafter as counsel may be heard, in Courtroom 8, 19th Floor, 450 Golden

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Gate Avenue, San Francisco, California before the Honorable William H. Alsup.

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Plaintiff Oracle will and hereby does move for judgment as a matter of law under Rule

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50(b), or in the alternative, for a new trial under Rule 59 as set forth more particularly in the

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Proposed Order filed concurrently with the motion. This motion is based on this Notice of

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Motion and Motion, the following Memorandum of Points and Authorities, documents

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incorporated by reference, the entire record in this action, any matters of which the Court may

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take judicial notice, and any evidence or argument presented at the hearing or on reply.

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MEMORANDUM OF POINTS AND AUTHORITIES

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INTRODUCTION

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Google is liable for both copyright and patent infringement as a matter of law.

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Oracle proved at trial that Google copied thousands of individual elements contained in 37

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Java API packages and all of the intricate relationships among them. The witnesses for both

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parties agreed that designing these APIs took great creativity and skill.

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The jury found Google infringed Oracle’s copyrights in the structure, sequence and

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organization (“SSO”) of the 37 API packages. The jury hung on the issue of whether Google

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proved its affirmative defense of fair use, but Oracle is entitled to judgment that Google’s

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commercial, non-transformative and extensive copying of Oracle’s copyrighted works does not

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constitute fair use as a matter of law.1 Oracle is also entitled to judgment as a matter of law on

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Google’s copying of the SSO of the Java documentation. Over Oracle’s objection, the jury was

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instructed only to consider Google’s copying of the English language descriptions contained in

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the documentation under a virtual identity standard. ECF No. 1018, Jury Instruction (“JI”) 21,

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24. But it is undisputed that the SSO of the Java and Android documentation is the same as the

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Oracle recognizes granting JMOL on some of the copyright issues would require the Court to
overturn all or part of its order on copyrightability. Nonetheless, Oracle brings this motion to
preserve its rights on appeal, particularly since the Court structured the trial to accommodate the
possibility of the jury verdict being reinstated on appeal. See ECF No. 1202 at 2. Although not
required to do so, Oracle also moves for JMOL on copyrightability out of an abundance of
caution. See Section IE.1, infra.
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SSO found in the code, which the jury found Google infringed. With proper instructions, a

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reasonable jury could only have found copyright infringement of the documentation as well.

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Oracle is further entitled to judgment based on Google’s creation of a derivative work from the

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Java documentation, another issue that, over Oracle’s objection, was not submitted to the jury.

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Oracle also proved at trial that Google copied 11 individual code files. The jury found

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Google infringed its copyrights in one of those files and the Court granted Oracle’s JMOL motion

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as to eight others. ECF No. 1123. Oracle directs this motion to the two remaining files, both of

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which contained comments Google admits were copied verbatim.

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In addition, Google infringes United States Patents Nos. RE38,104 (“the ’104 patent”) and

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6,061,520 (“the ’520 patent”). Google infringes the ’104 patent in two ways: the Resolve.c

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resolution functions that are part of the Dalvik Virtual Machine infringe Claims 11, 39, 40, and 41

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and the dexopt tool that is also part of the Dalvik VM infringes Claims 27 and 29. Google

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infringes Claims 1 and 20 of the ’520 patent through the operation of the dx tool, which is part of

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the Android SDK used by developers. Given the evidence in the record, Google’s infringement

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can be determined as a matter of law, as no reasonable jury could find for Google.

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The Court should also grant judgment on Google’s defenses, as well as other affirmative
defenses on which Google did not present any evidence or oppose Oracle’s Rule 50(a) motion.

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In the alternative, Oracle asks the Court to grant its motion for a new trial.
I.

GOOGLE INFRINGED ORACLE’S JAVA-RELATED COPYRIGHTS
Oracle proved Google’s copyright infringement by showing that (1) Oracle is the owner of

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the copyrighted works and (2) Google copied protected elements from those works. ECF

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No. 1018, JI 23-24. Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).

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A.

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By Google’s choice, copyright ownership was not posed to the jury. ECF No. 1018, JI 23;

Oracle Owns The Asserted Copyrights

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RT 2392:10-2396:6. Google elected instead to present the issue as a question of law for the

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Court. RT 2392:12-2394:14. The Court denied Google’s motion that it was entitled to JMOL as

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to ownership. See ECF No. 1165. Oracle accordingly believes no issue as to ownership remains.

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Nonetheless, to be prudent, Oracle requests that the Court grant Oracle judgment as to
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ownership of the asserted works. As the Court found in denying Google’s JMOL motion, Oracle

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presented evidence that it was the owner and copyright holder of the 37 API packages and the

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eleven code files. ECF No. 1165 at 1-2. See also TX 476, RT 2233:1-17, 2239:16-23 (Reinhold).

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“A certificate of registration raises the presumption of copyright validity and ownership.”

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Dream Games of Ariz., Inc. v. PC Onsite, 561 F.3d 983, 987 n.2 (9th Cir. 2009); see also 17

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U.S.C. § 410(c). “This presumption of ownership is true even for individual works that are

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broadly registered as part of a compilation or derivative work.” ECF No. 1165 at 2 (citing United

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Fabrics Int’l, Inc. v. C&J Wear, Inc., 630 F.3d 1255, 1257-59 (9th Cir. 2011)). Google never

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presented any evidence showing Oracle is not the owner of the copyrighted works, and the Court

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found the issue of whether Oracle owns the works was a question of fact for the jury, which

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Google waived its right to contest by electing not to submit it to the jury. ECF No. 1165 at 2.

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Oracle also incorporates by reference here its proposed findings of fact and conclusions of
law and prior briefing on this issue. See ECF No. 1049 ¶¶ 1-8, 142-45; ECF No. 1093 at 2-8.

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B.

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There is no dispute that Google copied comments from two Java files Google admits the

Google Infringed By Copying Comments From Oracle Source Code

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“comments came from the copyrighted material.” ECF No. 1018, JI 27. A comparison of

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Oracle’s CodeSource.java file (TX 623.9) to Android’s CodeSourceTest.java file (TX 1039)

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shows that, except for some HTML commands, the copied comments are “syntactically . . .

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identical.” RT 1262:13-1263:4 (Mitchell). Google also copied comments identically from the

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CollectionCertStoreParameters.java file. Compare TX 623.10 with TX 1040; see RT 1253:9-10

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(Mitchell). The copied comments are quantitatively significant: they amount to about 25% of one

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Oracle file (TX 623.10), and about 2.90% of the other (TX 623.9).

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Google’s verbatim copying is immediately recognizable. No reasonable jury could find it

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was de minimis. Copying can only be de minimis “if it is so meager and fragmentary that

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[compared to the work as a whole] the average audience would not recognize the appropriation.”

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ECF No. 1018, JI 28; Fisher v. Dees, 794 F.2d 432, 434 n.2 (9th Cir. 1986). The extent of the

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copying “is measured by considering the qualitative and quantitative significance of the copied

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portion in relation to the plaintiff’s work as a whole.” Newton v. Diamond, 388 F.3d 1189, 1195
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(9th Cir. 2004). Even if the copied material is a “quantitatively very small part” of the work as a

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whole, “[t]he smallness alone is not enough by itself to avoid liability.” Mktg. Tech. Solutions,

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Inc. v. Medizine LLC, 2010 U.S. Dist. LEXIS 50027, at *10 (S.D.N.Y. Apr. 23, 2010).

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C.

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Over Oracle’s objection, the Court submitted to the jury only the question of whether

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Google infringed Oracle’s copyrights in its documentation by copying the English-language

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descriptions of API elements. See ECF No. 1018, JI 21; ECF No. 997 at 1-3 (Oracle written

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objections); RT 2833:15-2389:7 (charging conference). The Court did not submit the issue of

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whether the SSO of the 37 API packages was also copied into the Android specifications.

Google Copied Java Specifications Into Android Specifications

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Because the jury found Google infringed the SSO of the 37 API packages, a reasonable jury

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would have found Google infringed the indisputably identical SSO in the documentation as well.

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The selection, arrangement and structure of documentation is protectable. Urantia Found.

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v. Maaherra, 114 F.3d 955, 959 (9th Cir. 1997); see also Jacobsen v. Katzer, 2009 U.S. Dist.

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LEXIS 115204, at *9-10 (N.D. Cal. Dec. 10, 2009) (“selection, ordering and arrangement” of text

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files reflecting decoder information from model railroad manufacturers). This is true even if the

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individual elements are not protectable. Metcalf v. Bochco, 294 F.3d 1069, 1074 (9th Cir. 2002)

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(“The particular sequence in which an author strings a significant number of unprotectable

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elements can itself be a protectable element. Each note in a scale, for example, is not protectable,

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but a pattern of notes in a tune may earn copyright protection.”).

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In Baker v. Selden, the Supreme Court found the detailed description in a document of a

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system is copyrightable even if the underlying system it describes is not. Baker v. Selden, 101

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U.S. 99 (1879). Here, unlike Baker, the structure described by the Java API documentation is

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itself copyrightable because it is the structure of a computer program. Johnson Controls, Inc. v.

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Phoenix Control Sys., Inc., 886 F.2d 1173, 1175 (9th Cir. 1989). Moreover, the Ninth Circuit

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treats Baker as a “blank forms” case and holds that when such forms are integrated with text to

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convey information they are copyrightable. See, e.g., Edwin K. Williams & Co. v. Edwin K.

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Williams & Co.-East, 542 F.2d 1053, 1060-61 (9th Cir. 1976). In any event, there is no question

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under Baker that the documentation is copyrightable. That includes its original and creative SSO.
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The parties agree the selection and structure expressed in the documentation is the same as

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the selection and structure expressed in the source code. See RT 606:14-608:3 (Reinhold); ECF

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No. 1043 at 14 (Google JMOL). The jury found Google infringed the “overall structure,

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sequence and organization of the copyrighted works.” ECF No. 1089 ¶ 1. This finding was well

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supported. Experts for both parties testified the SSO of the 37 API packages in Android and Java

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is virtually identical. See RT 1244:17-1246:3 (Mitchell); RT 2214:3-9 (Astrachan) (SSO is

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“virtually identical”). Android developer Bob Lee conceded this too. RT 1174:9-12 (Lee). A

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reasonable jury could only have found Google infringed the SSO in the documentation as well.

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This question was never put to the jury, however. Instead, at Google’s request, the jury

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was asked to compare only the English language descriptions. Even so, a properly instructed jury

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would have found in Oracle’s favor. Over Oracle’s objection, the jury was asked to determine

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infringement based on whether the English language descriptions were “virtually identical” in

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Java and Android rather than “substantially similar.” See ECF No. 1018 JI 24; ECF No. 997 at 3

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(written objections); RT 2399:12-2400:5 (charging conference). Lead Android developer Bob

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Lee admitted the English-language descriptions within the Android specifications were

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paraphrased from Sun’s specifications and were therefore “substantially similar.” RT 1191:4-13,

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1175:25-1176:3 (Lee). Mr. Lee was shown three examples of this paraphrasing and

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acknowledged the same level of similarity exists across the full documentation for the 37 Java

19

API packages. RT 1175:25-1176:3 (Lee); TX 610.2, 767.

20

This admitted paraphrasing warranted judgment in Oracle’s favor of copying of the

21

English-language descriptions even under the virtual identity standard. But those descriptions

22

should have been considered together with, and in the context of, the extensively copied selection,

23

structure, sequence and organization of the API elements, even if they were not individually

24

protectable. See, e.g., Three Boys Music Corp. v. Bolton, 212 F.3d 477, 485 (9th Cir. 2000) (“It is

25

well settled that a jury may find a combination of unprotect[a]ble elements to be protect[a]ble ...

26

because ‘the over-all impact and effect indicate substantial appropriation.’”) (citation omitted).

27

For roughly 11,000 pages, the 37 Android packages are laid out in the same organization, with

28

thousands of the same names, nearly all the same packages, classes and methods with the same
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relationships among all elements, and a paraphrased English definition next to each. The Court

2

should have applied the substantial similarity standard to this range of creative expression. But

3

Oracle is entitled to JMOL under either a substantial similarity or virtual identity standard.

4

D.

5

No reasonable juror could find based on the trial evidence that Google met its burden to

6
7
8

Google’s Copying Is Not Fair Use

prove fair use, and Oracle is entitled to judgment as a matter of law on this defense.
1.

Google’s Use of the Copyrighted Work Is Purely Commercial
a.

Google’s Use Is Commercial

9

“Although not controlling, the fact that a new use is commercial as opposed to non-profit

10

weighs against a finding of fair use.” Elvis Presley Enters. Inc. v. Passport Video, 349 F.3d 622,

11

627 (9th Cir. 2003), overruled on different grounds in Flexible Lifeline Sys. v. Precision Lift, Inc.,

12

654 F.3d 989 (9th Cir. 2011).

13

Android is hugely profitable. See RT 1458:12-16; 1456:15-19 (Schmidt); RT 2225:18-

14

2226:24 (Agarwal). Google distributes Android to increase use of Google services, which

15

generate advertising revenue. RT 1458:12-16 (Schmidt). Google documents describe Android as

16

a “critical” platform for five Google business units, and a $10 billion opportunity. TX 431 at 3.

17

Google argues that it only profits indirectly from Android because it distributes the

18

software free of charge. See ECF No. 1092 at 8. This does not matter. Google’s use is clearly

19

commercial. “The crux of the profit/nonprofit distinction is not whether the sole motive of the

20

use is monetary gain but whether the user stands to profit from exploitation of the copyrighted

21

material without paying the customary price.” Harper & Row Publishers, Inc. v. Nation Enters.,

22

471 U.S. 539, 562 (1985). The first factor weighs strongly against fair use.

23
24

b.

Google’s Use Is Not Transformative

“A use is considered transformative only where a defendant changes a plaintiff’s

25

copyrighted work or uses the plaintiff’s copyrighted work in a different context such that the

26

plaintiff’s work is transformed into a new creation.” Wall Data Inc. v. L.A. Cnty. Sheriff’s Dep’t,

27

447 F.3d 769, 778 (9th Cir. 2006). “In cases where ‘use is for the same intrinsic purpose as [the

28

copyright holder’s] . . . such use seriously weakens a claimed fair use.’” Id. (quoting Worldwide
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Church of God v. Philadelphia Church of God, Inc., 227 F.3d 1110, 1117 (9th Cir. 2000)). The

2

Supreme Court explains: “The enquiry here may be guided by the examples given in the preamble

3

to § 107, looking to whether the use is for criticism, or comment, or news reporting, and the like,

4

see § 107.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578-79 (1994) (citations omitted).

5

In Leadsinger, Inc. v. BMG Music Publ’g, the Ninth Circuit rejected the defendant’s claim

6

that its karaoke machine was transformative, noting, “It is reasonable to infer that Leadsinger

7

does not add to or alter the copyrighted lyrics, which would undermine the device’s ability to

8

enable consumers to sing along with the recorded music.” 512 F.3d 522, 530 (9th Cir. 2008).

9

Ninth Circuit cases following Campbell have found transformative use where the accused

10

infringer’s work “served an entirely different function” from the original. See Kelly v. Arriba Soft

11

Corp., 336 F.3d 811, 818 (9th Cir. 2003). This is not the case here. Oracle objected to giving the

12

jury an instruction on transformative use. See, e.g., ECF No. 1005 at 4-8.

13

Unlike the parody in Campbell, Google’s use of the copied materials in Android is

14

nothing like “the examples given in the preamble to § 107.” See 17 U.S.C. § 107. Google’s

15

purpose for the Java APIs was the same as Oracle’s: to attract developers by providing them with

16

pre-written libraries of reusable code. See RT 584:10-585:5 (Reinhold); RT 1783:15-22

17

(Bornstein) (“The goal of the project was to provide something that was familiar to developers”).

18

Google’s argument that it “transformed” Java by creating the first full smartphone stack to use the

19

Java APIs is simply false. Oracle licenses the Java APIs in its Java ME products for exactly this

20

purpose. Smartphones including the RIM Blackberry, the Danger Sidekick/Hiptop, and the Nokia

21

Series 60 incorporate Oracle’s licensed technology. RT 959:20-23 (Swetland); 1585:21-23

22

(Rubin); 300:18-19 (Ellison); 383:6-9 (Kurian); 1102:3-10 (Cizek); 1922:22-25 (Gering).

23

The difference between Android and these other platforms is not expressive

24

transformation but business strategy. If Google’s position were accepted, the idea of

25

“transformation” would severely undermine copyright protection: anyone claiming to have a

26

better business model for distributing the copyrighted work would be able to claim “fair use.”

27

That Google licenses Android under the Apache “open source” license while Oracle licenses Java

28

both commercially and under a different open source license―the GPL―“transforms” nothing.
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2

2.

The Copyrighted Work Is Creative In Nature

Copyright law specifically protects computer programs. 17 U.S.C. § 101. The Ninth

3

Circuit has held that while “software products are not purely creative works, copyright law

4

nonetheless protects computer software.” Wall Data, 447 F.3d at 780. In that case, the court

5

found the “nature of the work” factor weighed against fair use where the software products “were

6

developed over several years, and required a multi-million dollar investment….” Id. Oracle

7

presented undisputed evidence of both at trial. See, e.g., RT 687:21-688:24 (Reinhold).

8

Moreover, witnesses from both sides testified that designing APIs was a creative

9

endeavor. See, e.g., RT 513:12-18; 513:21-514:12; 515:14-23 (Screven); 627:21-628:1

10

(Reinhold); 741:9-742:3; 747:5-9; 748:7-13; 752:5-14; 831:17-832:4 (Bloch); 1220:6-12;

11

1238:11-1239:12; 1240:16-20 (Mitchell); 1775:3-16 (Bornstein); RT 2209:7-8 (Astrachan); TX

12

1090 (Astrachan Dep.). This factor also weighs against fair use.

13
14

3.

Google Uses Valuable, Core Portions of the Copyrighted Work

In analyzing the third factor, courts look at the quantitative and qualitative significance of

15

the material taken in relation to the plaintiff’s work. Harper & Row, 471 U.S. at 564-65 (1985)

16

(finding infringement based on copying of 300 words of Gerald Ford’s memoirs).

17

Google engineers testified they selectively copied what they thought were the best APIs

18

for a mobile platform, the “good stuff” from Java. See RT 1782:6-1785:4 (Bornstein); RT

19

981:22-982:21 (Lee); TX 1067 (Lee Dep.). But unlike Harper & Row, Google copied thousands

20

of elements from the 37 API packages and their entire SSO. RT 1248:11-1249:25 (Mitchell); RT

21

2191:9-2192:3 (Astrachan). Google’s expert agreed these declarations would “replicate every

22

structural and organizational element” of the 37 packages in suit. RT 2191:17-20 (Astrachan).

23

Google copied not just the heart of Oracle’s work, but its spine and much of its skeletal structure.

24

Google’s argument that it copied only what was necessary for compatibility is legally and

25

factually incorrect. When an intended use is commercial, courts give little weight to the claim

26

that a defendant only copied what was necessary for its intended use. In Elvis Presley, the Ninth

27

Circuit found no fair use for television performance excerpts in an Elvis biography, despite

28

acknowledging that “[i]t would be impossible to produce a biography of Elvis without showing
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some of his most famous television appearances for reference purposes.” 349 F.3d at 629. That

2

Google added its own implementation of the method bodies is no excuse. “[N]o plagiarist can

3

excuse the wrong by showing how much of his work he did not pirate.” Harper & Row, 471 U.S.

4

at 565 (quoting Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d Cir. 1936)).

5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

4.

Google’s Use Harms The Potential Market For And Value Of The
Copyrighted Work

Courts balance the first and the fourth fair use factors. “[I]f the purpose of the new work
is commercial in nature, ‘the likelihood [of market harm] may be presumed.’” Elvis Presley, 349
F.3d at 631 (quoting A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1016 (9th Cir. 2001)).
In assessing this factor, it is necessary to “consider not only the extent of market harm caused by
the particular actions of the alleged infringer, but also ‘whether unrestricted and widespread
conduct of the sort engaged in by the defendant . . . would result in a substantially adverse impact
on the potential market’ for the original.” Campbell, 510 U.S. at 590. Courts look not at harm to
the market for potential derivative works as well. See id. at 592-93.
Android’s infringement has substantially harmed the actual and potential market for
Oracle’s Java mobile products. There are 750,000 Android-compatible device activations each
day, and each of those devices contains the 37 API packages from Java. RT 1017:4-16 (Morrill).
Android phones compete directly with Java smart phones (such as the RIM Blackberry). RT
1922:22-25 (Gering); see also RT 2062:5-12 (McNealy). Furthermore, Google has fragmented
Java and undercut its “write once, run anywhere” promise. TX 172 (email from Bornstein to
Rubin describing Android as a “fork” of Java); RT 2287:13-2288:5 (Mitchell); see also RT
984:22-24; 981:19-21 (Lee); 1010:1-7 (Morrill) (Android is not Java compatible). Android is
diverting licensing revenue to which Oracle is entitled for its Java mobile products. This factor
also weighs strongly against fair use.
E.

Judgment Should Be Granted In Oracle’s Favor On Issues That Were Not
Presented To The Jury
1.

Oracle Is Entitled To Judgment As A Matter Of Law On
Copyrightability

The issue of copyrightability of the 37 API packages was determined by the Court, not the
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jury. Accordingly, no motion for JMOL is required. See Fed R. Civ. P. 50(a)-(b); Granite State

2

Ins. Co. v. Smart Modular Techs., Inc., 76 F.3d 1023, 1030-31 (9th Cir. 1996) (Rule 52 governed

3

equitable estoppel claim tried to court because “Rule 50(a) applies only to issues tried by a jury”);

4

9 James W. Moore et al., Moore’s Federal Practice § 50.05[1] (3d ed. 2012). Nonetheless, out of

5

an abundance of caution, Oracle requests JMOL on copyrightability here. Oracle incorporates by

6

reference its proposed findings of fact and conclusions of law on copyrightability, and its

7

response to Google’s proposed findings. See ECF No. 1049 ¶¶ 1-57, 142-165; ECF No. 1081 at

8

1-16, 37-55. Oracle also incorporates by reference the prior briefing on copyrightability. This

9

includes ECF Nos. 339, 611, 780, 824, 833, 853, 859, 900, 956, 986, 1118, 1138, 1191 and 1197.

10

The evidence presented at trial on copyrightability was overwhelming. As noted in

11

section I.D.2 above, fact and expert witnesses from both sides testified that designing APIs is a

12

creative and challenging task. Nobody testified to the contrary.

13

The API packages themselves are expressed in a detailed and complex structure, with

14

many hierarchies and interdependencies. These were illustrated in part in TX 1028, the Java API

15

package poster used by developers when programming for J2SE version 5.0. This poster reflects

16

only the high level class and interface relationships for some of the API packages in version 5.0.

17

RT 599:15-600:3 (Reinhold). The types of relationships shown at trial included the following: (1)

18

classes can have one or more subclasses, each of which inherits the methods and fields of the

19

classes above it in the hierarchy (RT 1225:10-16 (Mitchell)); (2) interfaces are used to relate

20

different classes that share common characteristics (RT 589:13-17, 590:5-23, 601:22-25

21

(Reinhold)); (3) methods can contain parameters that are defined in other classes located within,

22

or outside, the package in which the method is found (RT 1239:24-1240:8 (Mitchell)); (4) classes

23

and subclasses can be contained within the hierarchy of one package but defined in another (RT

24

601:14-24 (Reinhold)); (5) interfaces are often arranged hierarchically in a manner similar to

25

classes (RT 1219:14-23 (Mitchell)).

26

The detailed expression of this structure cannot possibly be just an idea, as Google has

27

sometimes claimed. Nor is it driven or constrained by function. Very little structure is required

28

for the APIs to operate with the virtual machine or computer. If function were the only concern,
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all of the classes could have been placed in a one giant package. RT 619:13-23 (Reinhold). A

2

primary purpose of the structure, sequence and organization of the APIs is to make them easy to

3

learn and easy for developers to use. RT 619:24-620:6 (Reinhold); RT 741:2-742:2 (Bloch); TX

4

624 at 4. Aesthetics matter. RT 752:5-14 (Bloch).

5

The many creative choices exercised by API designers extend not just to the selection and

6

structure of classes and methods to carry out a given API, but also to the decision whether to

7

include a particular API package in the library in the first place. There is no requirement that any

8

particular API be included, or that any specific method or class be included within that API. The

9

Java API packages have grown dramatically, from the seven API packages that were included in

10

the first release, to the 166 packages included with version 5.0, to 209 packages included with

11

version 7.0. RT 631:19-25 (Reinhold). The individual API packages themselves have also

12

significantly expanded over time. See, e.g., RT 1243:13-1244:16 (Mitchell) (growth of java.util).

13

Compare TX 2564 at 615 with TX 610.2 (showing java.util had only 10 classes and 113 methods

14

in 1996 compared to 49 classes and 762 methods in version 5.0). Dr. Reinhold testified that Sun

15

and Oracle did not have to create so many Java API packages, but did so “in order to – to

16

encourage the adoption of the Java platform by adding more and more facilities to make it an

17

attractive platform for developers to use.” Id. at RT 632:1-6 (Reinhold). Other software

18

platforms, like C, have much less extensive APIs. See id. at RT 632:7-20 (Reinhold).

19

The Court should also grant JMOL for Oracle on the copyrightability of the selection and

20

arrangement of the names in the 37 Java APIs. Both parties testified that API designers

21

thoughtfully selected thousands of names for aesthetic purposes and consistency. RT 628:2-21

22

(Reinhold); TX 624 (Bloch presentation) at 17 (“Code should read like prose.”); RT 746:20-

23

748:13 (Bloch). The names are organized within the same complex and creative structure as the

24

API elements they label. See Lamps Plus, Inc. v. Seattle Lighting Fixture Co., 345 F.3d 1140,

25

1147 (9th Cir. 2003) (combination of unprotectable elements is eligible for copyright protection

26

“if those elements are numerous enough and their selection and arrangement original enough that

27

their combination constitutes an original work of authorship.”). Many cases have held the

28

selection and arrangement of individually unprotectable elements within a software program,
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including names, can be copyrightable. See, e.g., Merch. Transaction Sys., Inc. v. Nelcela, Inc.,

2

2009 U.S. Dist. LEXIS 25663, at *58 (D. Ariz. Mar. 17, 2009); see also Health Grades, Inc. v.

3

Robert Wood Johnson Univ. Hosp., Inc., 634 F. Supp. 2d 1226, 1238 (D. Colo. 2009) (declining

4

to find short phrase that was original expression uncopyrightable).

5

Google did not establish at trial that the doctrines of merger and scenes a faire apply to

6

bar copyrightability of APIs. The Court warned Google on summary judgment that it would have

7

to present evidence as to each specific element of the APIs it contended was unprotectable. ECF

8

No. 433 at 9. Google did not present sufficient evidence at trial to establish any particular method

9

declaration was a scene a faire or was the only possible way to express a given function.

10

Nor could it have. It is apparent, given the complexity of the structure and the many

11

possibilities for selection, that there are countless ways to design and express the Java API

12

packages, so the doctrine of merger does not apply. See Satava v. Lowry, 323 F.3d 805, 812 n.5

13

(9th Cir. 2003) (“Under the merger doctrine, courts will not protect a copyrighted work from

14

infringement if the idea underlying the copyrighted work can be expressed in only one way, lest

15

there be a monopoly on the underlying idea”). Dr. Reinhold testified that “In anything except the

16

most trivial API design, there are so many choices to be made I wouldn’t even know how to start

17

counting them.” RT 627:21-628:1 (Reinhold); see also id. at 2228:2-16 (discussing complexity

18

of java.nio design). Professor Mitchell agreed, emphasizing that API design starts with a “clean

19

slate.” RT 1240:9-20. It took almost two years to design the APIs for java.nio and its related

20

sub-packages, and the specification went through over 30 separate drafts. RT 623:17-626:13,

21

627:21-629:6 (Reinhold). No Google witness disputed any of these points.

22

Google also did not put on any evidence at trial sufficient to establish scenes a faire.

23

“Under the scenes a faire doctrine, when certain commonplace expressions are indispensable and

24

naturally associated with the treatment of a given idea, those expressions are treated like ideas

25

and therefore not protected by copyright.” Swirsky v. Carey, 376 F.3d 841, 850 (9th Cir. 2004).

26

The evidence showed APIs solving the same kinds of problems can be designed very differently.

27

Dr. Reinhold gave the example of the java.util.logging API package, contrasting it with a

28

competing open source Java logging API called Log4J. RT 630:11-631:18 (Reinhold). Dr.
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Mitchell discussed how data collections are handled in different ways in APIs in Java, C++ and

2

Smalltalk, and how even within Java, the design of the Java.util package has changed

3

significantly over time. RT 1240:23-1244:16 (Mitchell).

4

It is undisputed that Google could have written its own different APIs to provide the

5

functionality of the Java APIs. RT 2213:8-10 (Astrachan). This is proven by the fact that Google

6

did write many of its own APIs when it wanted to. RT 2213:17-19 (Astrachan). Even at the

7

individual method level, Google could have used different method names, different parameter

8

names, a different parameter sequence, or thrown exceptions in a different order or not at all and

9

still accomplished the same task. See, e.g., RT 1249:2-12 (Mitchell); ECF No. 1191 at 2-3; ECF

10

No. 1118 at 12-13; TX 984 at 302-04. But this case was never about any one individual method

11

or group of methods. It was about Google’s nearly identical copying of the selection, sequence,

12

structure and organization of thousands of methods and other API elements. Even if Google were

13

correct that the declaration of an individual method is uncopyrightable, Google selected and

14

implemented thousands of Oracle’s declarations in the same SSO in which Oracle wrote them.

15

“[A] claim of copyright infringement can be based on infringement of a combination of

16

unprotected elements.” Dream Games, 561 F.3d at 988. In addition, even if Google could prove

17

merger, it would still be liable for its “nearly identical copying.” Apple Computer, Inc. v.

18

Microsoft Corp., 35 F.3d 1435, 1444 (9th Cir. 1994).

19

Google also contended at trial that the 37 API packages are simply a “functional

20

requirement for compatibility.” This is not the correct legal standard. Google relies on Sega and

21

Sony, both of which are reverse engineering fair use cases with clearly distinguishable facts.

22

Google has also not shown the Java APIs are merely “functional requirements.” All

23

computer programs are functional, as is the source code that expresses them. Claiming something

24

is functional, without more, says nothing. The Ninth Circuit did not conduct a detailed analysis

25

of this issue in Sega because the question of infringement in the final product was reserved by

26

Sega and left for remand. See Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1528 (9th Cir.

27

1993). But the decision shows that in determining whether an element of a computer program is

28

a mere functional requirement the court will look to the level of creative expression involved.
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That is what the court used to distinguish the S-E-G-A 20 byte initialization code from the

2

“original program” in Atari v. Nintendo, 975 F.2d 832, 840 (Fed. Cir. 1992). Sega, 977 F.2d at

3

1524 n.7 (emphasis in original). As discussed above, the API package designs are highly

4

expressive, not merely functional, and their design is important to developer comprehension.

5

Similarly, in Sony, the Ninth Circuit and district court opinions both emphasize that Sony

6

did not accuse the final product of infringement. See, e.g., Sony Computer Entm’t Inc. v.

7

Connectix Corp., 48 F. Supp. 2d 1212, 1217 (N.D. Cal. 1999) (“Sony I”) (“Sony’s copyright

8

infringement claim is based on a theory of intermediate infringement.”) (emphasis added); Sony

9

Computer Entm’t, Inc. v. Connectix Corp., 203 F.3d 596, 904 (9th Cir. 2000) (“Sony II”) (“nor

10

does Sony contend that Connectix’s final product contains infringing material”). As a result,

11

neither decision analyzes what was copied in the final product at all, and there is no indication in

12

the opinions that what was copied contained creative expression or was similar to the APIs here.

13

Google also uses the term “compatibility” very differently from the Ninth Circuit in Sega.

14

The API packages are not like a hardware interface that Google had to adopt if it wanted to use

15

the Java programming language. As noted above, Google designed many of its own API

16

packages, and the experts agreed that Google could have designed its own corresponding 37 API

17

packages if it wanted to. Only about 60 classes must be present in the APIs for the Java language

18

to function, and for most of these there is no requirement that the class contain any particular

19

method or methods — the language simply expects that a class by that name will exist. RT

20

684:16-685:2 (Reinhold); RT 2196:1-4 (Astrachan); TX 1062; TX 984. Google copied far more.

21

It also copied far more than would have been required for compatibility with the APIs, copying,

22

for example, thousands of parameter names and throws clauses. See RT 1248:11-1249:12

23

(Mitchell); ECF No. 1191 at 3.

24

Moreover, the evidence showed Android is not compatible with Java. See, e.g., RT

25

1007:6-11 (Morrill) (Android not compatible); TX 383 at 8 (Android FAQs); RT 1331:16-1332:2

26

(Mitchell); RT 2221:11-2222:3 (Astrachan) (entry point must be changed); RT 2287:9-22

27

(Mitchell) (bytecode); ECF No. 1118 at 18-19 (listing example categories of Java applications

28

that will not run on Android). Dan Bornstein testified that achieving compatibility was not even a
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goal for Google. RT 1783:15-22. And Google presented no evidence that copying the 37 API

2

packages allowed the meaningful re-use of any significant amount of pre-existing code. By

3

implementing a partial version of Java, Google harmed compatibility, not furthered it.

4

Lastly, Google did not present sufficient evidence to show the APIs are a “method of

5

operation” or “system” under section 102(b). The sweeping approach that “methods of

6

operation” are uncopyrightable taken by the First Circuit in Lotus v. Borland has never been

7

adopted by any other circuit. The Tenth Circuit expressly declined to follow Lotus. Mitel, Inc. v.

8

Iqtel, Inc., 124 F.3d 1366, 1372 (10th Cir. 1997). In determining whether the nonliteral

9

components of a program are protectable, the Ninth Circuit looks at “whether, on the particular

10

facts of each case, the component in question qualifies an the expression of an idea, or an idea

11

itself.” Johnson Controls, 886 F.2d at 1175.

12

Lotus also incorrectly defines “method of operation” as “a means by which a person

13

operates something.” This is very close to the definition of computer program under the

14

Copyright Act, which is “a set of statements or instructions to be used directly or indirectly in a

15

computer in order to bring about a certain result.” 17 U.S.C. § 101. It threatens to swallow the

16

rule whole. The Java APIs also do not fit the Lotus definition of “method of operation” because

17

they are not “a means by which a person operates something.” The Lotus court viewed the Lotus

18

1-2-3 menu command hierarchy as a “method of operation” because the commands were the

19

actual keystrokes that a person would type to use the Lotus 1-2-3 program. Lotus Dev. Corp v.

20

Borland Int’l, Inc., 49 F.3d 807, 809 (1st Cir. 1995), aff’d by an evenly divided court, 516 U.S.

21

233 (1996); see id. at 815. Those are not the facts here. On a computer or an Android phone,

22

there is no key or touchscreen menu labeled “HandshakeCompletedEvent,” or “getCipherSuite(),”

23

or anything corresponding to the thousands of other Java API elements.

24

Google also never proved the APIs are a “system.” It never even defined what it meant by

25

“system” at trial. But even if the APIs could be labeled a system at a higher level of abstraction,

26

their particular expression is still protected by copyright. Toro Co. v. R&R Prods. Co., 787 F.2d

27

1208, 1212 (8th Cir. 1986) (expression of parts numbering system copyrightable if original).

28
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1
2

2.

Google Created An Infringing Derivative Work

The Android source code for the 37 API packages was derived from Oracle’s copyrighted

3

API specifications. Former Android engineer Bob Lee admitted Google consulted the Java API

4

specifications when developing Android. RT 982:25-983:3 (Lee); see also RT 981:7-21 (Lee).

5

Google’s outside contractor, Noser, was hired to implement core libraries based on the Java API

6

specifications. RT 985:3-6 (Lee). Dan Bornstein confirmed his team used the Java specifications

7

to derive information for implementing the APIs in Android. RT 1836:19-1837:2 (Bornstein).

8
9

A “derivative work” is defined as “a work based upon one or more preexisting works,
such as a translation . . . or any other form in which a work may be recast, transformed, or

10

adapted.” 17 U.S.C. § 101. Ninth Circuit law supports Oracle’s derivative works claim. See,

11

e.g., Micro Star v. Formgen Inc., 154 F.3d 1107, 1112 (9th Cir. 1998) (seller of new levels for

12

video game infringed by copying “story” of plaintiff’s video game even though it did not copy

13

computer art files); see also Twin Peaks Prods., Inc. v. Publ’ns Int’l, Ltd., 996 F.2d 1366, 1373-

14

74 (2d Cir. 1993) (detailed recounting of plot elements of television series was infringement).

15

The Java API specifications are the detailed description of the class libraries. They are

16

like a detailed plot outline, and are just as protectable. See Sheldon, 81 F.2d at 55-56 (“The play

17

is the sequence of the confluents of all these means, bound together in an inseparable unity; it

18

may often be most effectively pirated by leaving out the speech, for which a substitute can be

19

found, which keeps the whole dramatic meaning.”) (emphasis added); see also Twentieth

20

Century-Fox Film Corp. v. MCA, Inc., 715 F.2d 1327 (9th Cir. 1983) (reversing decision as to

21

whether plots of Star Wars and Battlestar Galactica were sufficiently similar to support

22

infringement claim). Courts have applied the reasoning in Sheldon to cases involving computer

23

programs. See, e.g., eScholar, LLC v. Otis Educ. Sys., Inc., 2005 U.S. Dist. LEXIS 40727, at *25

24

(S.D.N.Y. Nov. 3, 2005) (comparing copyright protection of structure of computer program to

25

plot elements in Sheldon). Micro Star applied a similar analysis. 154 F.3d at 1112.

26

Likewise, in SAS Inst., Inc. v. S&H Computer Sys., Inc., the court held defendant created

27

an infringing derivative work that was “based on” the SAS software by copying its structure even

28

though there were relatively few examples of line-by-line copying, emphasizing that: “to the
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1

extent that it represents copying of the organization and structural details of SAS, such copying

2

pervades the entire S&H product.” 605 F. Supp. 816, 830 (M.D. Tenn. 1985) (emphasis added).

3

The reasoning of these cases applies equally to Google’s copying here. But Google’s

4

copying was much more extensive. Google expert Owen Astrachan conceded that the Android

5

source code was “based on the specification” (RT 2219:7-18 (Astrachan)), and that the copied

6

method declarations in Android are like the “sub-sub-sub-chapter headings” in the SSO. Id. at

7

2215:2-5; see also RT 1253:16-18 (Mitchell) (“[T]he narrative is reflected in the source code

8

because the source code is a program that in a sense carries out that narrative, does what the

9

explanation requires for this method.”). As in SAS, Google’s deliberate copying of the SSO

10

“pervades the entire” 37 Android API packages. SAS, 605 F. Supp. at 830. Over Oracle’s

11

objection, the jury was not given an instruction on the creation of a derivative work in the

12

Android code from the Java documentation. See RT 2434:2-2435:17 (charging conference).

13

II.

14
15
16
17
18
19

GOOGLE INFRINGED THE ASSERTED CLAIMS OF THE ’104 PATENT
A.

Android’s Resolve.c infringes claims 11, 39, 40, and 41 of the ’104 patent
because Dalvik bytecode instructions contain symbolic references

The only dispute as to infringement by Android’s Resolve.c is whether Dalvik bytecode
instructions contain “symbolic references.” RT 4106:21-22 (Jacobs); RT 4154:6-11 (Van Nest).
1.

A field index is a symbolic reference that is contained in a Dalvik
bytecode instruction

A field index in a Dalvik bytecode instruction meets the Court’s definition of “symbolic

20

reference.” The Court construed the term “symbolic reference” as “a reference that identifies data

21

by a name other than the numeric memory location of the data, and that is resolved dynamically

22

rather than statically.” ECF No. 137 at 22.

23

A field index—also called field@CCCC generally or “01” in specific examples of field

24

indices in the trial testimony—is a reference to data to be obtained in accordance with a

25

corresponding numerical reference, and identifies that data by a name other than the numeric

26

memory location of the data. RT 3228:14-3229:25 (McFadden); RT 3303:2-3304:20 (Mitchell).

27

In order to obtain data from the data object containing the value of the field, the Dalvik VM uses

28

the resolver functions of Resolve.c to resolve the field index to a numeric memory location that is
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1

then used to obtain the value. RT 3646:24-3647:25 (McFadden); RT 3308:18-3309:24

2

(Mitchell). The Dalvik VM resolves type indices, method indices, and string indices in much the

3

same way as field indices, and these indices are symbolic references for the same reason. See RT

4

3239:17-21 (McFadden); 3310:4-3311:1 (Mitchell); TX 736 at 2.

5

The Dalvik bytecode instruction that was the focus of both parties’ evidence and argument

6

is the IGET instruction, which corresponds to the “LOAD ‘y’” instruction in the ’104 patent. RT

7

3297:10-3302:2 (Mitchell); RT 3956:2-3961:6 (August). The IGET instruction (together with the

8

IPUT instruction) “[performs] the identified object instance field operation with the identified

9

field, loading or storing into the value register.” TX 735 at 6 (emphasis added). The IGET

10

instruction contains three operands—vA, vB, and field@CCCC—where the third operand

11

field@CCCC is the field index. TX 735 at 6; RT 3221:8-10 (McFadden). The field index in the

12

IGET instruction identifies the field from which the data is to be obtained by IGET. Mr.

13

McFadden testified:

14

Q. Can you explain what the iget instruction is?

15

A. That is the instance field get instruction. What that means is there is an object
somewhere and you need to get a piece of data out of it. The data is stored in
fields. So what this instruction does is it finds the instance of the object and
retrieves the data from the specified field.

16
17
18

RT 3221:2-7 (McFadden); see also RT 3968:10-15 (August). Thus even Google’s witness’s

19

testimony established that the “data” that the IGET instruction specifies and retrieves is data from

20

the instance of an object.

21

Every Google witness confirmed the field index contained in Dalvik’s IGET instruction is

22

not the numeric memory location of the value of the data from the instance of an object. Messrs.

23

McFadden and Bornstein testified it was not. RT 3614:22-3615:16 (Bornstein); 3761:19-3762:6

24

(McFadden). Google’s expert Dr. August likewise testified likewise. RT 3970:20-3971:3

25

(August). Indeed, “the Dalvik IGET instruction never contains the numerical memory location of

26

the actual field data that it is supposed to get.” RT 3761:14-18 (McFadden) (emphasis added).

27
28

Accordingly, no reasonable jury could conclude that the field index in a Dalvik IGET
instruction is not a symbolic reference to the “actual field data that it is supposed to get.” Under
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the Court’s construction, for the field index in the IGET instruction to be a symbolic reference, it

2

is enough that it identifies—”specifies,” in Mr. McFadden’s words—data to be obtained, by

3

something other than the data’s location.

4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25

2.

According to the ’104 patent, the “data” that the claimed symbolic
references refer to are actual data in a data object

That data from an instance object is the “data” that the claimed symbolic reference refers
to, and not some other data, follows from the claim language of the ’104 patent, because that is
the data that is “obtained” or “thereafter used” in the asserted claims. RT 3311:23-3312:19
(Mitchell); RT 3759:12-3760:23 (McFadden); RT 3954:12-18 (August); 3958:1-3959:4 (August);
TX 4015, 7:12-13, 12:16-18, 12:30-31, 12:44-45. Actual data in a data object is what is identified
by an exemplary symbolic reference (“y”) in the specification. TX 4015, 1:65-67 (“[A]n
instruction that accesses or fetches y, such as the Load instruction 14’ illustrated in FIG. 1,
references the variable y by the symbolic name ‘y’.”) (emphasis added); Fig. 1B (illustrating
“data object” containing actual values 23 and 17). The experts agreed the purpose of the LOAD
instruction described in the patent is to obtain the value from the data object. RT 3298:20-24
(Mitchell); RT 3960:25-3961:6 (August). The symbolic reference is to the data obtained, not
some other information, such as information used to resolve the symbolic reference (which is not
even illustrated in the figure).
Under the Court’s claim construction, a symbolic reference “identifies data.” In Android,
actual field data in an instance object is “data,” as Google’s expert testified. RT 4002:5-16
(August). The actual field data in an instance object is “data” in the Court’s claim construction,
and the field index is the symbolic reference that identifies that data, by a name other than the
numeric memory location of the data. Thus the jury’s verdict was not reasonable.
3.

Conversion of instruction stream indices to numeric memory locations
confirms that the indices are symbolic references

That JMOL of infringement should be granted is confirmed by the fact that Dalvik’s field

26

indices are resolved to numeric references. If they were numeric references and not symbolic

27

references, there would be no need to convert them to numeric references. But the indices are

28

resolved. Google engineer McFadden, who wrote the Dalvik source code at issue, confirmed this
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1

at trial. RT 3236:6-11 (McFadden). Mr. McFadden’s source code comments also establish that

2

the Dalvik resolving functions convert an index contained in the instruction stream into a pointer:

3

When a class, method, field, or string constant is referred to from Dalvik bytecode,
the reference takes the form of an integer index value. This value indexes into an
array of type_id_item, method_id_item, field_id_item, or string_id_item in the
DEX file. The first three themselves contain (directly or indirectly) indexes to
strings that the resolver uses to convert the instruction stream index into a pointer
to the appropriate object or struct.

4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

TX 46.14 at 1 (emphases added). Mr. McFadden confirmed this was an accurate description, and
that if the instruction stream index were the numeric memory location, it would already be a
pointer and there would be no need to convert it. RT 3234:22-3235:13, 3236:12-19 (McFadden).
B.

Android dexopt infringes claims 27 and 29 of the ’104 patent

Oracle is also entitled to JMOL on infringement of ’104 patent claims 27 and 29 by
Android’s dexopt. Google’s engineers testified that dexopt resolves symbolic references into
numerical references. See, e.g., RT 3769:8-12 (McFadden). There were only two disputed issues
regarding infringement: whether Dalvik dexopt bytecode instructions contain symbolic references
and whether dexopt resolves symbolic references dynamically rather than statically. See, e.g., RT
3841:2-19 (August). The first issue is the same as that with respect to Android’s Resolve.c and
should be resolved in Oracle’s favor as discussed above. With respect to the second issue, the
evidence at trial showed that dexopt resolves symbolic references dynamically, not statically.
Mr. McFadden admitted that the resolution process depends on the conditions actually
existing on the handset. RT 3769:13-17 (McFadden); see also RT 3255:20-25 (McFadden)
(admitting need to run dexopt when performing system update because memory layout could
change). Dr. Mitchell agreed. RT 3330:24-3331:21 (discussing McFadden testimony). That is
sufficient under the ordinary meaning of “dynamic.”
Undisputed testimony established that dexopt is performed with a running Dalvik virtual
machine. RT 3580:21-23 (Bornstein). When asked whether “dexopt process[es] the dex files
when the Dalvik Virtual machine is running,” Google expert David August responded,
“Sometimes.” RT 3988:14-3989:23 (August). That dexopt runs at “runtime” is another
sufficient, although not necessary, basis on which to show dynamic reference resolution. Dexopt
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must process dex files while the Dalvik Virtual Machine is running because it needs information

2

only available at runtime, as Google’s internal documentation confirmed. TX 105 at 2-3.

3

Responding to a customer question asking why dexopt had to run at runtime rather than compile

4

time, a Google engineer said it was “normal behavior” and quoted from that documentation to

5

provide an explanation as to “why some of these optimizations can only be performed at

6

runtime.” TX 1094.

7

The ordinary meaning of “dynamic” does not require “at runtime.” Mr. McFadden

8

admitted that dexopt is dynamic if “dynamic” means “depending on conditions on the handset

9

which can change from time to time.” See, e.g., RT 3769:23-3770:1 (McFadden). But even if

10

“dynamic” did require resolution “at runtime,” no reasonable jury could find that dexopt did not

11

run at runtime. The Court should grant JMOL in Oracle’s favor.

12

III.

GOOGLE INFRINGED THE ASSERTED CLAIMS OF THE ’520 PATENT

13

Oracle proved Google’s dx tool infringes Claims 1 and 20 of the ’520 patent.

14

As stated in the patent handouts, Google concedes all steps of Claims 1 and 20 are

15

performed except the “simulating execution” step. TX 1106 at 7-8. But the indisputable

16

evidence is that “simulating execution” is performed by the dx tool; indeed the author of the dx

17

tool expressly described it as such in the source code comments. RT 3547:20-21 (Bornstein); TX

18

46.16 at line 37 (“Class which knows how to simulate the effects of executing bytecode”).

19

Google’s code also demonstrates that the dx tool performs these “simulating execution”

20

steps. A code file called “Simulator.java” within the dx tool simulates execution of Java

21

bytecodes to convert them to Dalvik bytecodes. The engineer comments in the code state that

22

Simulator.java is a class designed to “simulate the effects of executing bytecode.” TX 46.16 at

23

lines 37-43, 86-105. The file calls upon the parseInstruction and parseNewarray methods to assist

24

with understanding the instructions. TX 46.16 at line 99; TX 46.17 at lines 211, 887; see also RT

25

3341:17-3344:7 (Mitchell). As a result of Simulator.java and the methods it invokes, the

26

bytecode instructions are examined without being executed, their static initialization is

27

determined, and a shorter “fast instruction” is generated to replace the long list of bytecode

28

instructions. Id. This precisely matches the “simulating execution” step of the asserted claims.
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1

Google’s expert, Dr. Parr, conceded the dx tool does “identify the static initialization of

2

the array” by examining the “bytecodes of the clinit method against a memory” and “without

3

executing the bytecodes.” RT 3793:2-5, 3807:10-14, 3820:12-22, 3821:16-23, 3822:17-3823:13

4

(Parr). With those concessions, he acknowledged the sole remaining issue was whether the dx

5

tool process for identifying static initializations could be characterized as “simulating execution.”

6

To avoid the effect of these admissions, Google imported additional, non-existent

7

limitations into the claims. First, Dr. Parr claimed the dx tool cannot be simulating execution of

8

bytecodes because it does not manipulate a stack to determine static initializations of arrays. RT

9

3794:15-3795:21, 3801:19-21 (Parr). But as Dr. Parr conceded, the asserted claims do not

10

mention stack manipulation. TX 4011, 9:47-62, 12:3-7; RT 3794:20-23 (Parr); see also RT

11

4032:23-4033:8 (Mitchell). Nor was the term “simulating execution” construed to require stack

12

manipulation. “Stack manipulation” is an express limitation of dependent Claim 3, establishing

13

that the limitation is not a requirement of “simulating execution” in independent Claim 1.

14

Second, Dr. Parr argued that the dx tool identifies static initializations through pattern

15

matching, which he contends is distinguishable from “simulating execution” of bytecodes. RT

16

3798:22-3799:3. But there is nothing in the claim language or patent specification stating

17

“simulating execution” cannot be achieved through pattern matching. Indeed, because Android’s

18

pattern matching determines the effect of executing the static initialization bytecodes without

19

actually executing them, no reasonable jury could find the dx tool did not simulate execution.

20

The Court denied Oracle’s Rule 50(a) motion for JMOL, limiting “simulate execution” to

21

“manipulation of a stack by pushing, popping, and replacing values from the top of an operand

22

stack.” ECF No. 1201 at 10. In doing so, the Court limited the scope of Claims 1 and 20 to a

23

disclosed embodiment, in contravention of the claim language. Under the ordinary meaning of

24

“simulate execution,” Oracle is entitled to JMOL.

25

IV.

26

The Court has already granted judgment on Google’s defenses of waiver and implied

27
28

GOOGLE’S EQUITABLE DEFENSES FAIL

license. ECF No. 1203. It should also grant judgment as to equitable estoppel and laches.
Oracle incorporates by reference its proposed findings of fact and conclusions of law and
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1

prior Rule 50(a) briefing on Google’s equitable defenses. See ECF No. 1049 at 11-26, 30-35;

2

ECF No. 1081 at 16-37, 55-70.

3

A.

4

Google failed to prove any of the elements of equitable estoppel. In particular, Google

Google Has Not Met Its Burden Of Proving Equitable Estoppel

5

has no credible claim that it relied on Sun/Oracle’s conduct to its detriment or that its reliance was

6

reasonable. The jury so advised in its Phase I ruling. ECF No. 1089 ¶ 4.B. Overwhelming

7

evidence at trial showed Google was aware that Sun had copyrighted its Java source code and

8

API specifications and had patents that covered its virtual machine technology and that it faced

9

potential legal action by Sun in connection with Android. See, e.g., RT 695:11-697:19

10

(Reinhold); RT 756:9-18 (Bloch); RT 951:8-953:9 (Swetland); RT 983:4-15 (Lee); RT 1541:3-7

11

(Schmidt); RT 1356:6-19, 1689:19-25, 3204:6-3205:3 (Rubin); RT 2993:4-24 (Lindholm); TX

12

18; TX 25 at 389; TX 149; TX 273; TX 405; TX 610.1 at 1; TX 610.2; TX 980 at 6; TX 1029;

13

TX 1051 at 1; TX 2347; ECF No. 1049 ¶¶ 62-65, 130, 132; ECF No. 1081 ¶ 66. Google decided

14

on its Android development path and implemented its infringing technology regardless of any

15

Sun or Oracle statements, actions, or inactions, and Google has never proven otherwise. TX

16

1029; ECF No. 1049 ¶¶ 62-65, 96, 98, 114, 117. JMOL against Google is warranted.

17

B.

18

Google has not produced evidence to support a laches defense. To prove laches, Google

Google Has Not Shown Laches Bars Oracle’s Infringement Claims

19

must show that (1) Oracle/Sun unreasonably delayed filing the lawsuit; (2) the delay was

20

inexcusable, and (3) Google suffered material prejudice due to Oracle/Sun’s delay. Danjaq LLC

21

v. Sony Corp., 263 F.3d 942, 952-57 (9th Cir. 2001). Oracle sued Google on August 12, 2010,

22

less than two years after Google first made its Android source code available to the public (in

23

October 2008) and less than three years after Google first released the Android APIs (in

24

November 2007). RT 1041:14-16 (Morrill); RT 1546:14-16 (Schmidt); RT 1702:22-1704:9

25

(Rubin); RT 1719:10-18 (Rubin). As a result, there is no presumption of laches, and “the burden

26

is upon the defendant to show that the delay was unexcused and that the defendant suffered injury

27

as a result of the delay.” Carpet Seaming Tape Licensing Corp. v. Best Seam, Inc., 694 F.2d 570,

28

580 (9th Cir. 1982); A.C. Aukerman Co. v. R.L. Chaides Const. Co., 960 F.2d 1020, 1038 (Fed.
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1

Cir. 1992) (en banc). In 2008 and 2009, Sun engaged in licensing discussions with Google,

2

making any delay reasonable and excusable. See, e.g., RT 1071:23-1073:18 (Cizek); TX 1002;

3

TX 1029; In re Katz Interactive Call Processing Patent Litig., 712 F. Supp. 2d 1080, 1110 (C.D.

4

Cal. 2010); Aukerman, 960 F.2d at 1033. Google also made no showing of material prejudice.

5

Furthermore, laches is not available in a case of willful infringement. See id. at 1032.

6

V.

7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

THE COURT SHOULD GRANT JMOL ON GOOGLE’S ALTERNATIVE
DEFENSES TO PATENT INFRINGEMENT

Oracle moved for JMOL as to Google’s Sixth (patent misuse), Eighth (use by the U.S.)
and Nineteenth (unclean hands) defenses, as well as Google’s defense of express license. ECF
No. 1168 at 24. Google never presented these defenses at trial and did not oppose the motion.
ECF No. 1169 at 18-19. Accordingly, the Court should grant JMOL in Oracle’s favor.
VI.

IN THE ALTERNATIVE, ORACLE IS ENTITLED TO A NEW TRIAL

In the alternative, if the Court declines Oracle’s request for JMOL, Oracle requests a new
trial on the issues of: (i) Google’s copying of comments; (ii) Google’s copying from Java
documentation into Android documentation; (iii) Google’s creation of an unauthorized derivative
work; (iv) copyrightability of the 37 Java API packages; and (v) Google’s infringement of the
’104 and ’520 patents. In addition, because the jury did not reach a verdict on fair use, Oracle is
entitled to a new trial on that issue if the Court’s copyrightability order is reversed.
Following a jury trial, a court may grant a new trial “for any reason for which a new trial
has heretofore been granted in an action at law in federal court.” Fed. R. Civ. P. 59(a)(1)(A).
“Historically recognized grounds include, but are not limited to, claims ‘that the verdict is against
the weight of the evidence, that the damages are excessive, or that, for other reasons, the trial was
not fair to the party moving.’” Molski v. M.J. Cable, Inc., 481 F.3d 724, 729 (9th Cir. 2007)
(citation omitted). “[E]rroneous jury instructions, as well as the failure to give adequate
instructions, are also bases for a new trial.” Murphy v. City of Long Beach, 914 F.2d 183, 187
(9th Cir. 1990). The cumulative prejudice from multiple errors may warrant a new trial. See,
e.g., United States v. Necoechea, 986 F.2d 1273, 1282 (9th Cir. 1993). A new trial may be held
on issues not tried to the jury if it could be obtained under similar circumstances in a jury action.
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1
2

12 James W. Moore et al., Moore’s Federal Practice § 59.13[3][a] (3d ed. 2012).
Oracle is entitled to a new trial for all the same reasons it is entitled to JMOL. These

3

reasons are described in detail above and are incorporated by reference here. For the jury issues

4

these include, but are not limited to: (1) the jury’s finding of non-infringement on copied

5

comments, documentation and the ’104 and ’520 patents is against the clear weight of the

6

evidence; (2) the Court erroneously instructed the jury (a) to compare only the English language

7

descriptions of the Java and Android specifications, and (b) to apply a virtual identity standard;

8

(3) the Court erred in not submitting to the jury the issue of Google’s creation of a derivative

9

work from the Java documentation.

10

Oracle is also entitled to a new trial as to infringement of the ’104 patent based on the

11

Court’s failure to give a curative instruction and its erroneous response to the juror’s question on

12

May 22 at 10:35 a.m. In that response the Court stated, among other things, that the reference “is

13

either going to be a numeric reference or it’s going to be a symbolic reference” but “can’t be

14

both.” See RT 4352:8-4354:8; ECF No. 1189. Neither the ’104 patent nor the Court’s claim

15

construction order contain such a limitation. The jury returned its verdict shortly thereafter.

16

Oracle is entitled to a new trial on the Court’s copyrightability order on the grounds that it

17

would cause manifest injustice and contains manifest errors of law and fact. These errors include,

18

but are not limited to: (1) the finding that to carry out a given function method declarations must

19

be identical; (2) the conclusion that a method specification is an idea and its implementation is

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expression; (3) the conclusion that the Java APIs are an uncopyrightable method of operation or

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system; (4) the finding that a user must make use of Oracle’s java.lang, java.io and java.util

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packages to make worthwhile use of the language; (5) the finding that Google replicated what

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was necessary to achieve a degree of interoperability, but no more.

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Oracle reserves all other grounds as to which a new trial may be granted on appeal.

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CONCLUSION

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For the foregoing reasons, Oracle is entitled to judgment in its favor as set forth above. In
the alternative, the Court should grant Oracle’s motion for a new trial.

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ORACLE AMERICA, INC.’S MOTION FOR JMOL UNDER RULE 50(B) OR, IN THE ALTERNATIVE, FOR A NEW TRIAL
CASE NO. CV 10-03561 WHA
pa-1531017

25

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Dated: June 20, 2012

MICHAEL A. JACOBS
MARC DAVID PETERS
DANIEL P. MUINO
MORRISON & FOERSTER LLP
By: /s/ Michael A. Jacobs
Michael A. Jacobs
Attorneys for Plaintiff
ORACLE AMERICA, INC.

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ORACLE AMERICA, INC.’S MOTION FOR JMOL UNDER RULE 50(B) OR, IN THE ALTERNATIVE, FOR A NEW TRIAL
CASE NO. CV 10-03561 WHA
pa-1531017

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