Oracle America, Inc. v. Google Inc.

Filing 1806

ORDER ON GOOGLE'S MOTION IN LIMINE NO. 1 REGARDING DR. CHRIS F. KEMERER'S DEFINITION OF "API" re #1557 MOTION in Limine No. 1 to Exclude Certain Testimony from Expert Report of Dr. Chris F. Kemerer filed by Google Inc.. Signed by Judge Alsup on 5/3/16. (whalc1, COURT STAFF) (Filed on 5/3/2016)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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ORACLE AMERICA, INC.,

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For the Northern District of California

United States District Court

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No. C 10-03561 WHA

Plaintiff,
v.
GOOGLE INC.,
Defendant.
/

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ORDER ON GOOGLE’S
MOTION IN LIMINE NO. 1
REGARDING DR. CHRIS F.
KEMERER’S DEFINITION
OF API

INTRODUCTION

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In this copyright infringement action involving Java and Android, defendant moves to

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exclude the report and testimony of plaintiff’s expert on damages. For the following reasons,

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the motion is DENIED IN PART.

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STATEMENT
Oracle proffers Dr. Chris F. Kemerer’s expert report and opinions to show whether and

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to what extent Google’s copying of the declaring code and structure, sequence, and organization

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(SSO) of 37 Java Application Programming Interface packages affected the Java and Android

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platforms (Kemerer Rpt. ¶ 1). Kemerer concluded in relevant part to this motion that Google’s

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copying is critical to Android’s success, and has negatively impacted Oracle’s business, due to

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the “stability” and “centrality” of the 37 Java API packages at issue (id. ¶¶ 12–13, 15).

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Google objects to Kemerer’s report and opinions as to stability and centrality, and to his

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definition and usage of the term “API.” This order addresses only the latter objection. A

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supplemental order on the admissibility of Kemerer’s stability and centrality opinions is

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forthcoming.

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ANALYSIS
Relevant evidence may be excluded if its probative value is substantially outweighed by

time, or needlessly presenting cumulative evidence. Fed. R. Evid. 403. District courts have

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wide discretion in striking the balance under this rule. United States v. Smith, 61 F.3d 914, 914

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(9th Cir. 1995); United States v. Mohamed, 410 F. Supp. 2d 913, 917 (S.D. Cal. Jan. 26, 2005)

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For the Northern District of California

a danger of unfair prejudice, confusing the issues, misleading the jury, undue delay, wasting

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United States District Court

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(citing United States v. Layton, 767 F.2d 549, 554 (9th Cir. 1985)).

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1.

KEMERER’S DEFINITION AND USAGE OF THE TERM “API.”

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Google objects to what it characterizes as Kemerer’s conflation of two different

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definitions of the term “API.” According to Google, the first definition of API used by Kemerer

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— which is accurate and relevant to this case — is the declaring code and SSO of the Java API

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packages at issue (see Kemerer Dep. at 67). The second definition of API used by Kemerer is a

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general description of “tools” or “mechanism[s]” to “access some other resource” (see id. at 67,

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68). This second definition is based on an “API economy business model” that is different from

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how APIs have been described “in the context of this lawsuit” (see id. at 67). In light of these

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different possible definitions of “API,” Google argues, Kemerer’s use of the term “throughout

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his report without making any material distinction between [the two definitions]” amounted to

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“deliberate conflation of these concepts . . . intended to mislead jurors into believing that the

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API declarations/SSO at issue in this case are generally proprietary in the same fashion as

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implementing code or [other resources] accessed through APIs.” In other words, Google’s

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objection is essentially that, because the term “API” has been used as shorthand in this case to

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refer to the specific declaring code and SSO copied by Google, Kemerer’s opinions about

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proprietary value and industry customs as to APIs in general might inflate the jury’s perception

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of the value of the copied declaring code and SSO. Thus, Google contends, Kemerer’s opinions
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about the API economy in general should be excluded as more prejudicial than probative under

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Federal Rule of Evidence 403.

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Oracle responds that Kemerer’s report was “crystal clear” about what Google actually

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copied, as contrasted with the broader definition of APIs in general. Oracle further argues that

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to the extent that Kemerer discusses industry customs relating to APIs in general, it is only to

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rebut claims by Google’s own experts that copying at least the declaring code from APIs is an

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established norm in the computing industry. The reasoning of this rebuttal is ostensibly that,

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since APIs in general help developers and programmers avoid “having to write their own code

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from scratch,” and “[c]ontrol of APIs and other software development tools . . . encourages
innovation and investment by companies like Sun and Oracle to create new software,” Google’s

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For the Northern District of California

United States District Court

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experts are incorrect in claiming that industry norms freely permit or expect even partial

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unlicensed copying of APIs (see Kemerer Rpt. ¶ 30; Def.’s MIL #1 at 7–8).

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This order agrees with Google that the value of APIs as programming and developing

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tools in general does not speak directly to the specific value of the declaring code and SSO

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copied by Google. Nor would industry expectations as to licensing or copying norms for APIs

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in general be dispositive of such expectations as to specific declaring code and SSO. However,

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Google has not presented specific evidence that Kemerer intentionally obfuscated this

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distinction to mislead the jury into inflating the value of the declaring code and SSO at issue.

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Nor has Google offered any other explanation, aside from nebulous assertions of “unfair

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prejudice” and “irrelevan[ce],” as to how testimony about industry norms relating to APIs in

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general would be so misleading to the jury as to warrant exclusion.

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To the extent that Kemerer refers to APIs in general as “intellectual property” or

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suggests they are protectable proprietary tools, Oracle correctly observes this definition simply

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reflects the Federal Circuit’s holding that the declaring code and SSO of APIs are

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copyrightable. See Oracle Am., Inc. v. Google Inc., 750 F.3d 1339, 1381 (Fed. Cir. 2014).

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There is thus nothing inherently misleading in this definition. Moreover, as Oracle notes in its

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opposition, Kemerer readily admits — and acknowledges throughout his report — that this case

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involves Google’s copying of the specific declaring code and SSO of 37 Java API packages
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(see, e.g., Kemerer Rpt. ¶¶ 1, 13, 31–50). The parties also agree that Kemerer opines as to

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industry norms relating to APIs in general only to support the proposition that APIs in general

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are not readily available — i.e., that unlicensed copying of APIs is not an accepted industry

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custom. These limitations on the scope of Kemerer’s testimony mitigate the prejudicial effect

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asserted by Google.

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This order acknowledges, however, that some possibility of misleading or confusing the

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jury still remains simply because the term “API” is used in this case both generally, and as

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shorthand for the declaring code and SSO copied by Google. Although this imprecise

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terminology, and its accompanying risk of confusion, are not unique to Kemerer’s report and
opinions, his report and opinions are not free of such defects either. This order therefore

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For the Northern District of California

United States District Court

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considers whether Kemerer’s opinions as to APIs in general are sufficiently relevant and

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probative of issues in the case to be admissible under Federal Rule of Evidence 403.

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Evidence of the proprietary value of, and industry norms related to, APIs in general is

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relevant to issues in this case in two ways. First, Kemerer’s report explains why both declaring

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code and SSO are “important in realizing the value of the Java API packages” in general

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(Kemerer Rpt. ¶¶ 25–26). Evidence of the value of APIs in general is therefore probative, albeit

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not dispositive, of the value of the specific declaring code and SSO copied by Google.

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Kemerer’s testimony as to the former is more probative than prejudicial, as long as he clearly

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identifies how he is using the term “API” and does not inappropriately conflate the value of

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APIs in general with the specific value of the declaring code and SSO at issue.

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Second, testimony regarding industry norms for APIs in general would only be

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misleading if it precipitated incorrect conclusions about different industry norms specific to the

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copied declaring code and SSO. However, Google provided no evidence — and did not even

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suggest — that industry norms for declaring code and SSO differ in any significant way from

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industry norms for APIs in general. Thus, since Google’s own experts opine about industry

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norms to show that copying the declaring code and SSO of APIs is acceptable in general,

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Kemerer may rebut such testimony by opining that industry norms as to APIs in general would

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not accept unlicensed copying. This testimony is appropriate within the context of a “battle of
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the experts” and is not more prejudicial than probative. If, however, Kemerer’s testimony at

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trial is imprecise or inappropriately conflates APIs in general with the specific declaring code

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and SSO copied by Google, Google may object at that time.

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Google’s motion as to Kemerer’s definition and usage of the term “API” is therefore
denied without prejudice to further objections Google may raise at trial.

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CONCLUSION
For the foregoing reasons, Google’s motion in limine is DENIED IN PART. A

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supplemental order on the admissibility of Kemerer’s stability and centrality opinions is

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forthcoming.

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For the Northern District of California

United States District Court

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IT IS SO ORDERED.

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Dated: May 3, 2016.

WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

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