Oracle America, Inc. v. Google Inc.

Filing 199

Declaration of Daniel Purcell in Support of #198 Reply to Opposition/Response Daubert Motion filed byGoogle Inc.. (Attachments: #1 Exhibit A, #2 Exhibit B, #3 Exhibit C, #4 Exhibit D)(Related document(s) #198 ) (Purcell, Daniel) (Filed on 7/5/2011)

Exhibit C

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

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BOIES, SCHILLER & FLEXNER LLP
DAVID BOIES (Admitted Pro Hac Vice)
[e-mail]
333 Main Street
Armonk, NY 10504
Telephone: [phone] / Facsimile: [phone]
STEVEN C. HOLTZMAN (Bar No. 144177)
[e-mail]
1999 Harrison St., Suite 900
Oakland, CA 94612
Telephone: [phone] / Facsimile: [phone]

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ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[e-mail]
DEBORAH K. MILLER (Bar No. 95527)
[e-mail]
MATTHEW M. SARBORARIA (Bar No. 211600)
[e-mail]
500 Oracle Parkway
Redwood City, CA 94065
Telephone: [phone] / Facsimile: [phone]
Attorneys for Plaintiff
ORACLE AMERICA, INC.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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ORACLE AMERICA, INC.

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Plaintiff,

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v.

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GOOGLE INC.

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Case No. CV 10-03561 WHA
ORACLE AMERICA, INC.’S
RESPONSES AND OBJECTIONS TO
DEFENDANT GOOGLE INC.’S
FIRST SET OF REQUESTS FOR
PRODUCTION TO PLAINTIFF
ORACLE AMERICA, INC. (NOS. 1-65)

Defendant.
Dept.: Courtroom 9, 19th Floor
Judge: Honorable William H. Alsup

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ORACLE AMERICA’S RESPONSES AND OBJECTIONS TO GOOGLE’S FIRST REQUESTS FOR PRODUCTION
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PROPOUNDING PARTY:

Defendant GOOGLE INC.

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RESPONDING PARTY:

Plaintiff ORACLE AMERICA, INC.

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SET NO.:

One (Nos. 1-65)

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Pursuant to Rules 33 and 34 of the Federal Rules of Civil Procedure, Plaintiff Oracle

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America, Inc. (“Oracle”) hereby submits the following responses and objections to Defendant

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Google Inc.’s (“Google”) First Set of Requests for Production of Documents (“Requests”).

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REQUEST FOR PRODUCTION NO. 1:

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All Documents Relating to the Patents-in-Suit or the Claimed Subject Matter of the

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Patents-in-Suit, including but not limited to all Documents Relating to the prosecution of the

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Patents-in-Suit and all Documents Relating to the conception, diligence and/or reduction to

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practice of any invention(s) allegedly claimed in the Patents-in-Suit.

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RESPONSE TO REQUEST FOR PRODUCTION NO. 1:

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Oracle directs Google’s attention to Oracle’s production pursuant to Patent Local Rule 3-

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2, which includes documents that relate to the patents in suit and the technology at issue. Oracle

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will produce additional non-privileged, non attorney work-product documents found in Oracle’s

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possession, custody, or control through reasonable efforts.

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Oracle objects to this request on the grounds that “All Documents Relating to” and “the

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Claimed Subject Matter of the Patents-in-Suit” are vague. Oracle further objects to this request to

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the extent that it encompasses documents and information protected from discovery by the

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attorney-client privilege or the attorney work-product doctrine.

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REQUEST FOR PRODUCTION NO. 2:

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All Documents and Things Relating to Related Patents and/or Applications or any

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Claimed Subject Matter disclosed by any Related Patents and/or Applications, including but not

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limited to all Documents Relating to the prosecution of Related Patents.

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RESPONSE TO REQUEST FOR PRODUCTION NO. 2:

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Oracle has already produced or will produce U.S. and foreign file histories in its
possession, custody or control that can be found through reasonable efforts corresponding to:
5,367,685
ORACLE AMERICA’S RESPONSES AND OBJECTIONS TO GOOGLE’S FIRST REQUESTS FOR PRODUCTION
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RE36,204

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RE38,104

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6,513,156

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6,910,205

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5,966,702

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6,125,447

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6,192,476

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6,047,377

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6,044,467

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6,061,520

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7,293,267

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7,426,720

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To the extent Google seeks other documents or things, Oracle objects to this request on

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the grounds that it is unduly burdensome. Information relating to “Related Patents and/or

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Applications” is publicly accessible and equally available to Google. Oracle also objects to this

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request on the grounds that it is not clear exactly what Google seeks because the request does not

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describe with reasonable particularity each item or category of items to be inspected as required

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by Federal Rule of Civil Procedure 34(b)(1)(A). As to, e.g., “All Documents and Things Relating

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to Related Patents and/or Applications,” “All Documents and Things Relating to . . . any Claimed

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Subject Matter disclosed by any Related Patents and/or Applications,” and “all Documents

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Relating to the prosecution of Related Patents,” Oracle objects to this request as vague and

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overbroad. Oracle further objects to this request to the extent that it encompasses documents and

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information protected from discovery by the attorney-client privilege or the attorney work-

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product doctrine.

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REQUEST FOR PRODUCTION NO. 3:

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All Documents and Things Relating to any licenses, assignments of, grants of rights to,

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covenants not to sue for infringement of, or requests for or negotiations regarding any license of,

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assignment of, grant of rights to, or covenant not to sue for infringement of, the Patents-in-Suit,
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any Related Patents and/or Applications, or the Claimed Subject Matter disclosed in the Patents-

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in- Suit.

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RESPONSE TO REQUEST FOR PRODUCTION NO. 3:

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Oracle will produce licenses, assignments, grants of rights to, covenants not to sue for

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infringement of the asserted patents that can be found in its possession, custody, or control

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through reasonable efforts. Oracle directs Google to documents evidencing ownership of the

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patent rights at OAGOOGLE0000053760-53792 and OAGOOGLE0000056022-56028.

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To the extent Google seeks other documents or things, Oracle objects to this request on

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the grounds that it is not clear exactly what Google seeks because the request does not describe

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with reasonable particularity each item or category of items to be inspected as required by Federal

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Rule of Civil Procedure 34(b)(1)(A). As for “all documents and things relating to” such

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documents, Oracle objects to this request as overly broad, unduly burdensome, and not

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reasonably calculated to lead to admissible evidence. Oracle further objects to this request to the

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extent that it would encompass documents and information protected from discovery by the

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attorney-client privilege or the attorney work-product doctrine.

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REQUEST FOR PRODUCTION NO. 4:

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Documents and Things sufficient to Identify every device, system, or product that is or

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was marked (by Sun, by Oracle or by any other person) with the patent number of any of the

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Patents-in-Suit or any Related Patents.

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RESPONSE TO REQUEST FOR PRODUCTION NO. 4:

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Oracle is not aware of any device, system, or product expressly marked with the patent

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number of any of the Patents-in-Suit or any Related Patents as defined in Oracle’s response to

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Google’s request for production no. 2.

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REQUEST FOR PRODUCTION NO. 5:

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All Documents and Things on which Oracle relies in support of its belief, allegation, or

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contention of infringement of the Patents-in-Suit by Google, including all Documents concerning

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any opinions, studies, review, analysis, or investigation done at any time regarding whether any

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claims of the Patents-in-Suit are being or have been infringed by Google, and all documents
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sufficient to show Oracle’s basis for each element of indirect infringement, including but not

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limited to any knowledge by Google of the Patent-in-Suit and the availability of any

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noninfringing substitutes for the Accused Products.

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RESPONSE TO REQUEST FOR PRODUCTION NO. 5:

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Oracle hereby directs Google to Oracle’s Preliminary Infringement Contentions and

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produces by reference http://android.git.kernel.org; http://developer.android.com;

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http://www.android.com; http://source.android.com; http://www.openhandsetalliance.com;

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http://code.google.com/p/android-dalvik-vm-on-java; Google I/O 2008 Video, entitled “Dalvik

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Virtual Machine Internals,” presented by Dan Bornstein (Google Android Project), available at

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http://developer.android.com/videos/index.html#v=ptjedOZEXPM; Google Presentation, entitled

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“Android: Securing a Mobile Platform from the Ground Up,” presented by Rich Cannings

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(Google’s Android Team) at the Usenix 18th Security Symposium (Aug. 12, 2010), available at

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http://www.usenix.org/events/sec09/tech/; Google I/O 2010 Video, entitled “A JIT Compiler for

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Android's Dalvik VM,” presented by Ben Cheng and Bill Buzbee (Google’s Android Team),

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available at http://developer.android.com/videos/index.html#v=Ls0tM-c4Vfo.

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To the extent Google seeks other documents or things, Oracle objects to this request on

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the grounds that it is not clear exactly what Google seeks because the request does not describe

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with reasonable particularity each item or category of items to be inspected as required by Federal

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Rule of Civil Procedure 34(b)(1)(A). Oracle objects to this request as vague, overly broad,

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unduly burdensome, and not reasonably calculated to lead to admissible evidence. Oracle further

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objects to this request to the extent that it encompasses documents and information protected

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from discovery by the attorney-client privilege or the attorney work-product doctrine. Google,

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not Oracle, is in the best position to have information regarding its own documents showing

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“knowledge by Google of the Patent-in-Suit and the availability of any noninfringing substitutes

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for the Accused Products.”

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REQUEST FOR PRODUCTION NO. 6:

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Documents and Things sufficient to show each physical embodiment of any Claimed

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Subject Matter for each of the Patents-in-Suit and to identify by Date and other relevant details

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(including place and method of disclosure) the first public disclosure of each embodiment.

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RESPONSE TO REQUEST FOR PRODUCTION NO. 6:

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In addition to publicly available information on the internet (for example,

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developer.sun.com, java.sun.com, and www.sun.com), Oracle directs Google’s attention to

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Oracle’s production pursuant to Patent Local Rule 3-2.

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To the extent Google seeks other documents or things, Oracle objects to this request on

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the grounds that it is not clear exactly what Google seeks because the request does not describe

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with reasonable particularity each item or category of items to be inspected as required by Federal

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Rule of Civil Procedure 34(b)(1)(A). As to, e.g., “any Claimed Subject Matter for each of the

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Patents-in-Suit,” Oracle objects to this request as vague, overly broad, unduly burdensome, and

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not reasonably calculated to lead to admissible evidence. Oracle further objects to this request to

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the extent that it encompasses documents and information protected from discovery by the

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attorney-client privilege or the attorney work-product doctrine.

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REQUEST FOR PRODUCTION NO. 7:

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All Documents and Things Relating to the formation, organization and management

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structure of Oracle, including but not limited to articles, bylaws, board minutes and organizational

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charts.

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RESPONSE TO REQUEST FOR PRODUCTION NO. 7:

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Oracle will produce its articles of incorporation and bylaws, and Oracle will also produce

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a management organizational charts. Oracle directs Google to Sun’s publicly available corporate

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filings, many of which are accessible at www.sec.gov. Oracle also directs Google to its Amended

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Notice of Interested Parties and Corporate Disclosure filed in this action on September 28, 2010

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(Docket No. 28).

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To the extent Google seeks other documents or things, Oracle objects to this request on

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the grounds that it is not clear exactly what Google seeks because the request does not describe
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with reasonable particularity each item or category of items to be inspected as required by Federal

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Rule of Civil Procedure 34(b)(1)(A). As for “all documents and things relating to” such subjects,

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and board minutes specifically, Oracle objects to this request as overly broad, unduly

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burdensome, and not reasonably calculated to lead to admissible evidence. Oracle further objects

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to this request to the extent that it would encompass documents and information protected from

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discovery by the attorney-client privilege or the attorney work-product doctrine.

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REQUEST FOR PRODUCTION NO. 8:

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All Documents and Things that comprise, Identify, or otherwise Relate to any Prior Art
Relating to the Patents-in-Suit.
RESPONSE TO REQUEST FOR PRODUCTION NO. 8:

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Oracle directs Google’s attention to Oracle’s production pursuant to Patent Local Rule 3-

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2, and will produce Prior Art pursuant to this request. Oracle’s production of a documents

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pursuant to Google’s request for production no. 8 shall not constitute an admission that such

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document evidences “Prior Art” “Relating to the Patents-in-Suit” under Google’s definitions of

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same.

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To the extent Google seeks other documents or things, Oracle objects to this request on

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the grounds that it is not clear exactly what Google seeks because the request does not describe

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with reasonable particularity each item or category of items to be inspected as required by Federal

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Rule of Civil Procedure 34(b)(1)(A). As to, e.g., “All Documents and Things that comprise,

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Identify, or otherwise Relate to any Prior Art Relating to,” Oracle objects to this request as vague,

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overly broad, unduly burdensome, and not reasonably calculated to lead to admissible evidence.

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Oracle further objects to this request to the extent that it encompasses documents and information

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protected from discovery by the attorney-client privilege or the attorney work-product doctrine.

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REQUEST FOR PRODUCTION NO. 9:

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All Documents and Things sufficient to show the assignment of the Patents-in-Suit to

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Oracle as described in paragraph 10 of Oracle’s Amended Complaint.

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RESPONSE TO REQUEST FOR PRODUCTION NO. 9:

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Oracle produced responsive documents pursuant to Patent Local Rule 3-2(d).
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To the extent Google seeks other documents or things, Oracle objects to this request to the

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extent that it encompasses documents and information protected from discovery by the attorney-

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client privilege or the attorney work-product doctrine.

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REQUEST FOR PRODUCTION NO. 10:

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All Documents and Things Relating to the terms of employment, retention, or departure

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from Sun, Oracle, or Oracle Corporation of any of the named inventors of the Patents-In-Suit,

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including but not limited to any employment contracts, employee handbooks, assignments of

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intellectual property and documents relating to employment contract negotiations, employee

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reviews, exit interviews, integration interviews, and migration interviews.

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RESPONSE TO REQUEST FOR PRODUCTION NO. 10:

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Oracle will produce employment files for the named inventors that are non-privileged and

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can be found in its possession, custody, or control through reasonable efforts. In compliance with

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California’s privacy laws, Oracle will redact social-security numbers and other protected

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information. Oracle directs Google to the documents produced pursuant to the Court’s Patent

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Local Rule 3-2(d) showing Oracle’s ownership of the asserted patent rights.

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(OAGOOGLE0000053760-53792 and OAGOOGLE0000056022- 56028).

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To the extent Google seeks other documents or things, Oracle objects to this request on

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the grounds that it is not clear exactly what Google seeks because the request does not describe

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with reasonable particularity each item or category of items to be inspected as required by Federal

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Rule of Civil Procedure 34(b)(1)(A). As for “all documents and things relating to” such subjects,

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Oracle objects to this request as overly broad, unduly burdensome, and not reasonably calculated

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to lead to admissible evidence. Oracle further objects to this request to the extent that it would

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encompass documents and information protected from discovery by the attorney-client privilege

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or the attorney work-product doctrine.

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REQUEST FOR PRODUCTION NO. 11:

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All Documents and Things Relating to any Related Litigation or prior action in which Sun
or Oracle claimed infringement of the Patents-in-Suit.

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RESPONSE TO REQUEST FOR PRODUCTION NO. 11:
Oracle is not aware of any related litigation or prior action in which Sun or Oracle claimed

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infringement of the Patents-in-Suit.

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REQUEST FOR PRODUCTION NO. 12:

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All Documents and Things Relating to Java, Android, Dalvik or Google that were

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prepared for, provided to, received from, exchanged with, presented to or by, or jointly reviewed

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with Oracle Corporation and/or its counsel prior to January 26, 2010.

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RESPONSE TO REQUEST FOR PRODUCTION NO. 12:

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Oracle will meet and confer with Google to determine appropriate ESI search terms,

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which Oracle will apply to user-generated documents and data pursuant to the Parties’ ESI

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agreement.

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To the extent Google seeks other documents or things, Oracle objects to this request on

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the grounds that it is not clear exactly what Google seeks because the request does not describe

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with reasonable particularity each item or category of items to be inspected as required by Federal

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Rule of Civil Procedure 34(b)(1)(A). As to “All Documents and Things Relating to,” Oracle

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objects to this request as vague, overly broad, unduly burdensome, and not reasonably calculated

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to lead to admissible evidence. Oracle further objects to this request to the extent that it

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encompasses documents and information protected from discovery by the attorney-client

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privilege or the attorney work-product doctrine.

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REQUEST FOR PRODUCTION NO. 13:

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All Documents and Things Relating to any valuation or monetization of Sun’s intellectual

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property, by category such as patents or copyrights, or by any sub-category, including but not

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limited to any documents that were prepared for, provided to, received from, exchanged with,

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presented to or by, or jointly reviewed with Oracle Corporation and/or its counsel prior to

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January 26, 2010.

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RESPONSE TO REQUEST FOR PRODUCTION NO. 13:

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Subject to the following objections, Oracle will produce non-privileged Documents and

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Things Relating to valuation or monetization of the Patents-in-Suit and related Java technology.
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Oracle objects to Request No. 13 to the extent that it is vague, overbroad, or seeks

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documents protected by any applicable privilege or the work product doctrine. In addition,

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Oracle objects that Request No. 13 is not limited to valuation or monetization of the Patents-in-

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Suit or related technology and, therefore, not reasonably calculated to lead to admissible

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evidence.

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REQUEST FOR PRODUCTION NO. 14:

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All Documents and Things Relating to Java, Android, Dalvik, or Google that were

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prepared, created, revised, received, reviewed or compiled by Sun or by Oracle during or in

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connection with the Negotiations for the Acquisition of Sun.

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RESPONSE TO REQUEST FOR PRODUCTION NO. 14:
Oracle will meet and confer with Google to determine appropriate ESI search terms,

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which Oracle will apply to user-generated documents and data pursuant to the Parties’ ESI

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agreement.

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To the extent Google seeks other documents or things, Oracle objects to this request on

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the grounds that it is not clear exactly what Google seeks because the request does not describe

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with reasonable particularity each item or category of items to be inspected as required by Federal

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Rule of Civil Procedure 34(b)(1)(A). As to “All Documents and Things Relating to,” Oracle

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objects to this request as vague, overly broad, unduly burdensome, and not reasonably calculated

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to lead to admissible evidence. Oracle further objects to this request to the extent that it

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encompasses documents and information protected from discovery by the attorney-client

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privilege or the attorney work-product doctrine.

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REQUEST FOR PRODUCTION NO. 15:

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All Documents and Things Relating to review of the Acquisition of Sun by Oracle

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Corporation, including but not limited to antitrust review, in any jurisdiction, including but not

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limited to any documents prepared for, provided to, received from, exchanged with, presented to

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or by, or jointly reviewed with any division of the United States Department of Justice, or any

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division of the European Commission, or any other private or public entity conducting a review.

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RESPONSE TO REQUEST FOR PRODUCTION NO. 15:

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Oracle will produce non-privileged records from any antitrust review that relate to the

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Java business, to the extent any can reasonably be found in its possession, custody, or control.

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To the extent Google seeks other documents or things, Oracle objects to this request on

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the grounds that it is not clear exactly what Google seeks because the request does not describe

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with reasonable particularity each item or category of items to be inspected as required by Federal

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Rule of Civil Procedure 34(b)(1)(A). As for “all documents and things relating to” such subjects,

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Oracle objects to this request as overly broad, unduly burdensome, and not reasonably calculated

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to lead to admissible evidence. Oracle further objects to this request to the extent that it would

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encompass documents and information protected from discovery by the attorney-client privilege

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or the attorney work-product doctrine.

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REQUEST FOR PRODUCTION NO. 16:

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All Documents and Things Relating to Sun’s licensing of Java, including but not limited

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to a copy of each license to any aspect or element of Java granted by Sun to any third party, all

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documents Relating to any negotiations related to each license, and any drafts of licenses.

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RESPONSE TO REQUEST FOR PRODUCTION NO. 16:

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Oracle will produce Java licenses that can be found in its possession, custody, or control
through reasonable efforts.

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To the extent Google seeks other documents or things, Oracle objects to this request on

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the grounds that it is not clear exactly what Google seeks because the request does not describe

21

with reasonable particularity each item or category of items to be inspected as required by Federal

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Rule of Civil Procedure 34(b)(1)(A). As for “all documents and things relating to” such subjects,

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Oracle objects to this request as overly broad, unduly burdensome, and not reasonably calculated

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to lead to admissible evidence. Oracle further objects to this request to the extent that it would

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encompass documents and information protected from discovery by the attorney-client privilege

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or the attorney work-product doctrine.

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REQUEST FOR PRODUCTION NO. 17:
All Documents and Things Relating to statements relevant to whether Java is, was, or

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would become open source software, including but not limited to any press releases, statements or

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disclosures to private or public entities, agencies or standard setting bodies, advertisements,

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financial disclosures, business plans, or any other document, public or private, relating to the

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open source nature of Java.

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RESPONSE TO REQUEST FOR PRODUCTION NO. 17:

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Oracle directs Google to www.jcp.org.

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To the extent Google seeks other documents or things, Oracle objects to this request on

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the grounds that it is not clear exactly what Google seeks because the request does not describe

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with reasonable particularity each item or category of items to be inspected as required by Federal

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Rule of Civil Procedure 34(b)(1)(A). As for “all documents and things relating to” such subjects,

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Oracle objects to this request as overly broad, unduly burdensome, and not reasonably calculated

14

to lead to admissible evidence. Oracle further objects to this request to the extent that it would

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encompass documents and information protected from discovery by the attorney-client privilege

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or the attorney work-product doctrine.

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REQUEST FOR PRODUCTION NO. 18:

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Documents and Things sufficient to identify each release of Java and each release of the

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Java SDK, the date of each release, and the terms of any license offered, or entered into, for each

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such release including a copy of each license, all negotiations related to each license, and any

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draft licenses.

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RESPONSE TO REQUEST FOR PRODUCTION NO. 18:

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In addition to publicly available information on the internet (for example,

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developer.sun.com, java.sun.com, and www.sun.com), Oracle directs Google’s attention to

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Oracle’s production pursuant to Patent Local Rule 3-2. Oracle also directs Google to Oracle’s

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response to Google’s request for production no. 16.

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To the extent Google seeks other documents or things, Oracle objects to this request on

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the grounds that it is not clear exactly what Google seeks because the request does not describe
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with reasonable particularity each item or category of items to be inspected as required by Federal

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Rule of Civil Procedure 34(b)(1)(A). Oracle objects to this request as vague, overly broad,

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unduly burdensome, and not reasonably calculated to lead to admissible evidence. Oracle further

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objects to this request to the extent that it encompasses documents and information protected

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from discovery by the attorney-client privilege or the attorney work-product doctrine.

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REQUEST FOR PRODUCTION NO. 19:

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Documents and Things sufficient to identify the differences between each release of Java

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and each release of the Java SDK.

9

RESPONSE TO REQUEST FOR PRODUCTION NO. 19:

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Oracle directs Google’s attention to Oracle’s production pursuant to Patent Local Rule 32.

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To the extent Google seeks other documents or things, Oracle objects to this request on

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the grounds that it is not clear exactly what Google seeks because the request does not describe

14

with reasonable particularity each item or category of items to be inspected as required by Federal

15

Rule of Civil Procedure 34(b)(1)(A). Oracle objects to this request as vague, overly broad,

16

unduly burdensome, and not reasonably calculated to lead to admissible evidence. Oracle further

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objects to this request to the extent that it encompasses documents and information protected

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from discovery by the attorney-client privilege or the attorney work-product doctrine.

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REQUEST FOR PRODUCTION NO. 20:

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Documents and Things sufficient to show the terms of any license for the creation and

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distribution of clean room implementations of each Java release offered by Sun, including but not

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limited to a copy of each license, all negotiations related to each license, and any draft licenses.

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RESPONSE TO REQUEST FOR PRODUCTION NO. 20:

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Oracle directs Google to documents produced in response to Google’s request for

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production no. 16. Oracle also directs Google to the JSPA, which is publicly available at

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www.jcp.org. Oracle also directs Google to publicly available Java agreements and licenses at:

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developer.sun.com, java.sun.com, and www.sun.com.

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1
2

REQUEST FOR PRODUCTION NO. 21:
Documents and Things sufficient to identify all test suites relating to each release of each

3

Java specification.

4

RESPONSE TO REQUEST FOR PRODUCTION NO. 21:

5

Oracle objects to this request on the grounds that it is not clear what Google seeks because

6

the request does not describe with reasonable particularity each item or category of items to be

7

inspected as required by Federal Rule of Civil Procedure 34(b)(1)(A). As to “all test suites,”

8

Oracle objects to this request as vague, overly broad, unduly burdensome, and not reasonably

9

calculated to lead to admissible evidence. Oracle further objects to this request to the extent that

10

it encompasses documents and information protected from discovery by the attorney-client

11

privilege or the attorney work-product doctrine.

12

REQUEST FOR PRODUCTION NO. 22:

13

Documents and Things sufficient to identify any intellectual property rights that are

14

essential to practice each release of each Java specification.

15

RESPONSE TO REQUEST FOR PRODUCTION NO. 22:

16

Oracle objects to this request on the grounds that it is not clear exactly what Google seeks

17

because the request does not describe with reasonable particularity each item or category of items

18

to be inspected as required by Federal Rule of Civil Procedure 34(b)(1)(A). As to “essential to

19

practice,” Oracle objects to this request as vague, overly broad, unduly burdensome, and not

20

reasonably calculated to lead to admissible evidence. Oracle further objects to this request to the

21

extent that it encompasses documents and information protected from discovery by the attorney-

22

client privilege or the attorney work-product doctrine.

23

REQUEST FOR PRODUCTION NO. 23:

24

Documents and Things sufficient to show the assignment of Sun’s intellectual property to

25

Oracle, including but not limited to any agreements, written assignments, and documents filed

26

with or exchanged with public or private entities.

27

RESPONSE TO REQUEST FOR PRODUCTION NO. 23:

28

Oracle produced the Sun Microsystems, Inc. and Oracle America, Inc. merger agreement.
ORACLE AMERICA’S RESPONSES AND OBJECTIONS TO GOOGLE’S FIRST REQUESTS FOR PRODUCTION
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1

To the extent Google seeks other documents or things, Oracle objects to this request on

2

the grounds that it is not clear exactly what Google seeks because the request does not describe

3

with reasonable particularity each item or category of items to be inspected as required by Federal

4

Rule of Civil Procedure 34(b)(1)(A). Oracle objects to this request as vague, overly broad,

5

unduly burdensome, and not reasonably calculated to lead to admissible evidence. Oracle further

6

objects to this request to the extent that it encompasses documents and information protected

7

from discovery by the attorney-client privilege or the attorney work-product doctrine.

8

REQUEST FOR PRODUCTION NO. 24:

9

Documents and Things sufficient to identify and show the terms of each license to any

10

version of Sun’s Java Technology Compatibility Kit that are, or have been made, available to any

11

party.

12

RESPONSE TO REQUEST FOR PRODUCTION NO. 24:

13

As stated in response to Google’s request No. 16, Oracle will produce Java licenses,

14

which include Java TCK licenses, that can be found in its possession, custody, or control through

15

reasonable efforts. Oracle directs Google to publicly available Java agreements and licenses at

16

the following public websites: developer.sun.com, java.sun.com, www.sun.com, and

17

www.jcp.org.

18

REQUEST FOR PRODUCTION NO. 25:

19

All Documents and Things Relating to each attempt by any third party to obtain a

20

Technology Compatibility Kit from Sun to verify compatibility of a product, including but not

21

limited to all Documents related to the communications between Sun and the Apache Software

22

Foundation concerning Apache Software Foundation’s attempt to obtain a Technology

23

Compatibility Kit, all Documents detailing any field of use restrictions relating to such

24

Technology Compatibility Kit, and all Documents setting forth the criteria employed by Sun to

25

determine whether to make the Technology Compatibility Kit available.

26
27
28
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1

RESPONSE TO REQUEST FOR PRODUCTION NO. 25:

2

Oracle directs Google to Oracle’s response to Google’s request for production no. 24.

3

Oracle directs Google to publicly available communications at the following public website:

4

www.jcp.org.

5

To the extent Google seeks other documents or things, Oracle objects to this request on

6

the grounds that it is not clear exactly what Google seeks because the request does not describe

7

with reasonable particularity each item or category of items to be inspected as required by Federal

8

Rule of Civil Procedure 34(b)(1)(A). Oracle objects to this request as vague, overly broad,

9

unduly burdensome, and not reasonably calculated to lead to admissible evidence. Oracle further

10

objects to this request to the extent that it encompasses documents and information protected

11

from discovery by the attorney-client privilege or the attorney work-product doctrine.

12

REQUEST FOR PRODUCTION NO. 26:

13

All Documents and Things reflecting or Relating to any public or private comments,

14

opinions or communications of third parties regarding the licensing of Java, including but not

15

limited to Oracle Corporation comments in the Java Community Process.

16

RESPONSE TO REQUEST FOR PRODUCTION NO. 26:

17

Oracle directs Google to the publicly available JCP repositories at www.jcp.org.

18

To the extent Google seeks other documents or things, Oracle objects to this request on

19

the grounds that it is not clear exactly what Google seeks because the request does not describe

20

with reasonable particularity each item or category of items to be inspected as required by Federal

21

Rule of Civil Procedure 34(b)(1)(A). As for “all documents and things relating to” such

22

comments, Oracle objects to this request as overly broad, unduly burdensome, and not reasonably

23

calculated to lead to admissible evidence. Oracle further objects to this request to the extent that

24

it would encompass documents and information protected from discovery by the attorney-client

25

privilege or the attorney work-product doctrine.

26

REQUEST FOR PRODUCTION NO. 27:

27

All Documents and Things Relating to the ways, if any, in which Android has affected or

28

is expected to affect the demand for, utilization of or market for Java, including but not limited to
ORACLE AMERICA’S RESPONSES AND OBJECTIONS TO GOOGLE’S FIRST REQUESTS FOR PRODUCTION
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1

all Documents Relating to comments from Jonathan Schwartz, and any studies, assessments,

2

financial analyses, business plans, or projections.

3

RESPONSE TO REQUEST FOR PRODUCTION NO. 27:

4
5

Subject to the following objections, Oracle will produce non-privileged Documents and
Things responsive to this Request.

6

Oracle objects to Request No. 27 to the extent that it is vague, overbroad, or seeks

7

documents within the possession of Google or protected by any applicable privilege or the work

8

product doctrine.

9

REQUEST FOR PRODUCTION NO. 28:

10

Complete copies of each of the Asserted Works.

11

RESPONSE TO REQUEST FOR PRODUCTION NO. 28:

12

Oracle will obtain and produce copies of the deposit materials submitted to the U.S.

13

Copyright Office in connection with the applications for the asserted copyrights. Oracle also

14

directs Google to Oracle’s production pursuant to Patent Local Rule 3-2 and refers Google to

15

developer.sun.com, java.sun.com, and www.sun.com.

16

REQUEST FOR PRODUCTION NO. 29:

17

True and correct copies of the deposit materials submitted to the U.S. Copyright Office in

18

connection with (a) the applications for the Asserted Copyrights and (b) the applications for

19

registration of the copyrights in the Prior Works, in the same format (i.e., electronic or paper

20

copy) as submitted to the Copyright Office.

21

RESPONSE TO REQUEST FOR PRODUCTION NO. 29:

22

Oracle will obtain and produce copies of the deposit materials submitted to the U.S.

23

Copyright Office in connection with the applications for the asserted copyrights and the Prior

24

Works.

25

REQUEST FOR PRODUCTION NO. 30:

26

Documents and Things sufficient to identify the specific portions of, elements of or

27

materials relating to the Android platform that Oracle contends evidence infringement of one or

28

both of the Asserted Copyrights.
ORACLE AMERICA’S RESPONSES AND OBJECTIONS TO GOOGLE’S FIRST REQUESTS FOR PRODUCTION
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1

RESPONSE TO REQUEST FOR PRODUCTION NO. 30:

2

Oracle directs Google’s attention to Oracle’s pleadings, Oracle’s production pursuant to

3

Patent Local Rule 3-2 and to developer.sun.com, java.sun.com, and www.sun.com. Oracle will

4

also obtain and produce copies of the deposit materials submitted to the U.S. Copyright Office in

5

connection with the applications for the asserted copyrights.

6

Oracle also directs Google to Oracle’s Preliminary Infringement Contentions and

7

produces by reference http://android.git.kernel.org; http://developer.android.com;

8

http://www.android.com; http://source.android.com; http://www.openhandsetalliance.com;

9

http://code.google.com/p/android-dalvik-vm-on-java; Google I/O 2008 Video, entitled “Dalvik

10

Virtual Machine Internals,” presented by Dan Bornstein (Google Android Project), available at

11

http://developer.android.com/videos/index.html#v=ptjedOZEXPM; Google Presentation, entitled

12

“Android: Securing a Mobile Platform from the Ground Up,” presented by Rich Cannings

13

(Google’s Android Team) at the Usenix 18th Security Symposium (Aug. 12, 2010), available at

14

http://www.usenix.org/events/sec09/tech/; Google I/O 2010 Video, entitled “A JIT Compiler for

15

Android's Dalvik VM,” presented by Ben Cheng and Bill Buzbee (Google’s Android Team),

16

available at http://developer.android.com/videos/index.html#v=Ls0tM-c4Vfo.

17

REQUEST FOR PRODUCTION NO. 31:

18

Complete copies of all works on which the Asserted Works were based, that are included

19

in the Asserted Works (in whole or in part) or of which the Asserted Works are derivative works,

20

including but not limited to the Prior Works.

21

RESPONSE TO REQUEST FOR PRODUCTION NO. 31:

22

Oracle directs Google’s attention to Oracle’s response to Google’s request for production

23

No. 28.

24

REQUEST FOR PRODUCTION NO. 32:

25
26

Complete copies of all materials included in the Asserted Works that were created by any
Third Party Authors.

27
28
ORACLE AMERICA’S RESPONSES AND OBJECTIONS TO GOOGLE’S FIRST REQUESTS FOR PRODUCTION
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1

RESPONSE TO REQUEST FOR PRODUCTION NO. 32:

2

Oracle directs Google’s attention to Oracle’s response to Google’s request for production

3

no. 28.

4

REQUEST FOR PRODUCTION NO. 33:

5

Documents and Things sufficient to show the basis for Sun’s claim of ownership of all

6

materials created by the Third Party Authors, including any agreements with such authors or

7

transfers or assignments from such authors.

8

RESPONSE TO REQUEST FOR PRODUCTION NO. 33:

9

Oracle will obtain and produce copies of the deposit materials submitted to the U.S.

10

Copyright Office in connection with the applications for the asserted copyrights. Oracle will

11

obtain and produce copies of the copyright registration certificates and registration files for the

12

asserted copyrights.

13

REQUEST FOR PRODUCTION NO. 34:

14

Documents and Things sufficient to identify the portions of each of the Asserted Works

15

that Oracle contends were new, original, and were not included in any Prior Works or other

16

preexisting materials.

17

RESPONSE TO REQUEST FOR PRODUCTION NO. 34:

18

Oracle directs Google’s attention to Oracle’s response to Google’s request for production

19

no. 28.

20

REQUEST FOR PRODUCTION NO. 35:

21

All Documents and Things Relating to any Related Litigation or prior action in which Sun

22

or Oracle claimed infringement of any of (1) the two Asserted Copyrights or (2) the copyrights in

23

any Prior Works, including without limitation any lawsuit, interference, arbitration, mediation,

24

opposition proceeding, or any other dispute or adversarial proceeding.

25

RESPONSE TO REQUEST FOR PRODUCTION NO. 35:

26
27

Oracle will produce the pleadings from prior litigation in which Sun or Oracle claimed
infringement of the copyrights at issue in this action.

28
ORACLE AMERICA’S RESPONSES AND OBJECTIONS TO GOOGLE’S FIRST REQUESTS FOR PRODUCTION
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1

To the extent Google seeks other documents or things, Oracle objects to this request on

2

the grounds that it is not clear exactly what Google seeks because the request does not describe

3

with reasonable particularity each item or category of items to be inspected as required by Federal

4

Rule of Civil Procedure 34(b)(1)(A). As for “all documents and things relating to any Related

5

Litigation or prior action,” Oracle objects to this request as overly broad, unduly burdensome, and

6

not reasonably calculated to lead to admissible evidence. Oracle further objects to this request to

7

the extent that it would encompass documents and information protected from discovery by the

8

attorney-client privilege or the attorney work-product doctrine.

9

REQUEST FOR PRODUCTION NO. 36:

10

All Documents Relating to any communications between Sun or Oracle with any third

11

party relating to any claim of infringement of the Asserted Works or any Prior Works, including

12

without limitation cease and desist, demand or notice letters.

13

RESPONSE TO REQUEST FOR PRODUCTION NO. 36:

14

Oracle will meet and confer with Google to determine appropriate ESI search terms,

15

which Oracle will apply to user-generated documents and data pursuant to the Parties’ ESI

16

agreement.

17

Oracle otherwise objects to this request on the grounds that it is not clear what Google

18

seeks because the request does not describe with reasonable particularity each item or category of

19

items to be inspected as required by Federal Rule of Civil Procedure 34(b)(1)(A). As to “all test

20

suites,” Oracle objects to this request as vague, overly broad, unduly burdensome, and not

21

reasonably calculated to lead to admissible evidence. Oracle further objects to this request to the

22

extent that it encompasses documents and information protected from discovery by the attorney-

23

client privilege or the attorney work-product doctrine.

24

REQUEST FOR PRODUCTION NO. 37:

25

All Documents and Things Relating to any licenses granted by Sun or Oracle that include

26

the right to use in mobile devices any of the works that are the subject of the Asserted Copyrights

27

or any Prior Works.

28
ORACLE AMERICA’S RESPONSES AND OBJECTIONS TO GOOGLE’S FIRST REQUESTS FOR PRODUCTION
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1
2
3

RESPONSE TO REQUEST FOR PRODUCTION NO. 37:
As stated in response to request No. 16 above, Oracle will produce Java licenses that can
be found in its possession, custody, or control through reasonable efforts.

4

To the extent Google seeks other documents or things, Oracle objects to this request on

5

the grounds that it is not clear exactly what Google seeks because the request does not describe

6

with reasonable particularity each item or category of items to be inspected as required by Federal

7

Rule of Civil Procedure 34(b)(1)(A). As for “all documents and things relating to” such licenses,

8

Oracle objects to this request as overly broad, unduly burdensome, and not reasonably calculated

9

to lead to admissible evidence. Oracle further objects to this request to the extent that it would

10

encompass documents and information protected from discovery by the attorney-client privilege

11

or the attorney work-product doctrine.

12

REQUEST FOR PRODUCTION NO. 38:

13

All Documents and Things Relating to or reflecting any analysis of or comparison

14

between any portion or element of Java and any portion or element of Android.

15

RESPONSE TO REQUEST FOR PRODUCTION NO. 38:

16

Oracle objects to this request on the grounds that it is not clear exactly what Google seeks

17

because the request does not describe with reasonable particularity each item or category of items

18

to be inspected as required by Federal Rule of Civil Procedure 34(b)(1)(A). As for “All

19

Documents and Things Relating to,” Oracle objects to this request as vague, overly broad, unduly

20

burdensome, and not reasonably calculated to lead to admissible evidence. Oracle further objects

21

to this request to the extent that it encompasses documents and information protected from

22

discovery by the attorney-client privilege or the attorney work-product doctrine.

23

REQUEST FOR PRODUCTION NO. 39:

24

All Documents and Things Relating to the computation, calculation, study, analysis,

25

report, investigation, or other inquiry into FRAND and/or RAND pricing for any intellectual

26

property rights related to Java or the Patents-in-Suit, including without limitation standards

27

policies and agreements, consent decrees, and other commitments to license Java or the Patents-

28

in- Suit on FRAND and/or RAND terms.
ORACLE AMERICA’S RESPONSES AND OBJECTIONS TO GOOGLE’S FIRST REQUESTS FOR PRODUCTION
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20

1
2
3
4

RESPONSE TO REQUEST FOR PRODUCTION NO. 39:
Subject to the following objections, Oracle will produce non-privileged Documents and
Things responsive to this Request.
Oracle objects to Request No. 39 to the extent that it is vague, overbroad, or seeks

5

documents protected by any applicable privilege or the work product doctrine.

6

REQUEST FOR PRODUCTION NO. 40:

7

All Documents and Things Relating to any marketing studies, marketing analyses,

8

marketing plans, business plans, or other study on techniques, plans, or tactics to increase or

9

establish market share or utilization for Java.

10
11
12
13

RESPONSE TO REQUEST FOR PRODUCTION NO. 40:
Subject to the following objections, Oracle will produce non-privileged Documents and
Things responsive to this Request.
Oracle objects to Request No. 40 to the extent that it is vague, overbroad, or seeks

14

documents protected by any applicable privilege or the work product doctrine.

15

REQUEST FOR PRODUCTION NO. 41:

16

All Documents and Things that were prepared for, provided to, received from, exchanged

17

with, presented to or by, or jointly reviewed with any Investment Banks Relating to Sun’s

18

Intellectual Property, Java or the Acquisition of Sun by Oracle Corporation.

19

RESPONSE TO REQUEST FOR PRODUCTION NO. 41:

20

Oracle will produce responsive non-privileged documents relating to the technology at

21

issue, to the extent any can reasonably be found in its possession, custody, or control.

22

REQUEST FOR PRODUCTION NO. 42:

23

All Documents and Things Relating to or reflecting any communications between Oracle

24

or Sun, on the one hand, and Google, on the other hand, Relating to the Patents-In-Suit, the

25

Asserted Copyrights, or any claim or possible claim of patent or copyright infringement by Oracle

26

or Sun against Google.

27
28
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1

RESPONSE TO REQUEST FOR PRODUCTION NO. 42:

2

Oracle will meet and confer with Google to determine appropriate ESI search terms,

3

which Oracle will apply to user-generated documents and data pursuant to the Parties’ ESI

4

agreement.

5

Oracle otherwise objects to this request on the grounds that it unduly burdensome because

6

Google is already in possession of any responsive documents. Oracle also objects on the grounds

7

that it is not clear exactly what Google seeks because the request does not describe with

8

reasonable particularity each item or category of items to be inspected as required by Federal

9

Rule of Civil Procedure 34(b)(1)(A). Oracle objects to this request as vague, overly broad,

10

unduly burdensome, and not reasonably calculated to lead to admissible evidence. Oracle further

11

objects to this request to the extent that it encompasses documents and information protected

12

from discovery by the attorney-client privilege or the attorney work-product doctrine.

13

REQUEST FOR PRODUCTION NO. 43:

14

All Documents and Things Relating to the valuation of intangible assets of Sun acquired

15

by Oracle Corporation as reflected in Oracle Corporation’s July 1, 2010 Form 10-K Annual

16

Report, including but not limited to all analyses, studies, investigations, reports, and calculations

17

Relating to the determination of the values in the table in the section entitled “Valuations of

18

Intangible Assets Acquired” on page 104 of such report.

19

RESPONSE TO REQUEST FOR PRODUCTION NO. 43:

20

Subject to the following objections, Oracle will produce non-privileged Documents and

21

Things Relating to any valuation of the Patents-in-Suit or related Java technology acquired from

22

Sun.

23

Oracle objects to Request No. 43 to the extent that it is vague, overbroad, or seeks

24

documents r protected by any applicable privilege or the work product doctrine. In addition,

25

Oracle objects that Request No. 43 is not limited to valuation of the Patents-in-Suit or related

26

technology and, therefore, not reasonably calculated to lead to admissible evidence.

27
28
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1
2

REQUEST FOR PRODUCTION NO. 44:
All Documents and Things Relating to the factual basis for Oracle’s claim for copyright

3

infringement not produced pursuant to any other request herein.

4

RESPONSE TO REQUEST FOR PRODUCTION NO. 44:

5

Oracle objects to this request on the grounds that it is not clear what Google seeks because

6

the request does not describe with reasonable particularity each item or category of items to be

7

inspected as required by Federal Rule of Civil Procedure 34(b)(1)(A). As for “all documents and

8

things relating to” the factual basis for Oracle’s claim for copyright infringement, Oracle objects

9

to this request as overly broad, unduly burdensome, and not reasonably calculated to lead to

10

admissible evidence. Oracle further objects on the grounds that “not produced pursuant to any

11

other request herein” is vague and ambiguous. Oracle further objects to this request to the extent

12

that it would encompass documents and information protected from discovery by the attorney-

13

client privilege or the attorney work-product doctrine.

14

REQUEST FOR PRODUCTION NO. 45:

15

All Documents and Things Relating to the factual basis for Oracle’s statement that Oracle

16

“has suffered, and will continue to suffer, monetary loss to its business, reputation, and goodwill.”

17

RESPONSE TO REQUEST FOR PRODUCTION NO. 45:

18
19

Subject to the following objections, Oracle will produce non-privileged Documents and
Things responsive to this Request.

20

Oracle objects to Request No. 45 to the extent that it is vague, overbroad, or seeks

21

documents within the possession of Google or protected by any applicable privilege or the work

22

product doctrine.

23

REQUEST FOR PRODUCTION NO. 46:

24

All Documents and Things Relating to the factual basis for Oracle’s prayer for an “order

25

permanently enjoining Google. . . .”

26

RESPONSE TO REQUEST FOR PRODUCTION NO. 46:

27
28

Subject to the following objections, Oracle will produce non-privileged Documents and
Things responsive to this Request.
ORACLE AMERICA’S RESPONSES AND OBJECTIONS TO GOOGLE’S FIRST REQUESTS FOR PRODUCTION
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1

Oracle objects to Request No. 46 to the extent that it is vague, overbroad, or seeks

2

documents within the possession of Google or protected by any applicable privilege or the work

3

product doctrine.

4

REQUEST FOR PRODUCTION NO. 47:

5

All Documents and Things Relating to the factual basis for Oracle’s prayer for “statutory

6

damages and damages.”

7

RESPONSE TO REQUEST FOR PRODUCTION NO. 47:

8
9

Subject to the following objections, Oracle will produce non-privileged Documents and
Things responsive to this Request.

10

Oracle objects to Request No. 47 to the extent that it is vague, overbroad, or seeks

11

documents within the possession of Google or protected by any applicable privilege or the work

12

product doctrine.

13

REQUEST FOR PRODUCTION NO. 48:

14

All Documents and Things Relating to the factual basis for Oracle’s prayer for the trebling

15

of damages, including but not limited to, Documents forming the factual basis for Oracle’s

16

allegation of willful and deliberate infringement.

17

RESPONSE TO REQUEST FOR PRODUCTION NO. 48:

18
19

Subject to the following objections, Oracle will produce non-privileged Documents and
Things responsive to this Request.

20

Oracle objects to Request No. 48 to the extent that it is vague, overbroad, or seeks

21

documents within the possession of Google or protected by any applicable privilege or the work

22

product doctrine.

23

REQUEST FOR PRODUCTION NO. 49:

24

All Documents and Things Relating to the factual basis for Oracle’s prayer for costs and

25

attorney’s fees.

26

RESPONSE TO REQUEST FOR PRODUCTION NO. 49:

27
28

Subject to the following objections, Oracle will produce non-privileged Documents and
Things responsive to this Request.
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1

Oracle objects to Request No. 49 to the extent that it is vague, overbroad, or seeks

2

documents within the possession of Google or protected by any applicable privilege or the work

3

product doctrine.

4

REQUEST FOR PRODUCTION NO. 50:

5

Documents and Things sufficient to identify the “corresponding documents” referred to in

6

Oracle’s contention that that approximately one third of Android’s Application Programmer

7

Interface (API) packages (available at http://developer.android.com/reference/packages.html) are

8

derivative of Oracle America’s copyrighted Java API packages (available at http://download-

9

llnw.oracle.com/javase/1.5.0/docs/api/ and http://download-llnw.oracle.com/javase/1.4.2/docs/-

10

api/) and corresponding documents.

11

RESPONSE TO REQUEST FOR PRODUCTION NO. 50:

12

Oracle refers Google to http://developer.android.com/reference/packages.html;

13

http://download-llnw.oracle.com/javase/1.5.0/docs/api/; and http://download-

14

llnw.oracle.com/javase/1.4.2/docs/api/. Oracle also directs Google to

15

http://android.git.kernel.org; http://developer.android.com; http://www.android.com;

16

http://source.android.com; http://www.openhandsetalliance.com;

17

http://code.google.com/p/android-dalvik-vm-on-java; Google I/O 2008 Video, entitled “Dalvik

18

Virtual Machine Internals,” presented by Dan Bornstein (Google Android Project), available at

19

http://developer.android.com/videos/index.html#v=ptjedOZEXPM; Google Presentation, entitled

20

“Android: Securing a Mobile Platform from the Ground Up,” presented by Rich Cannings

21

(Google’s Android Team) at the Usenix 18th Security Symposium (Aug. 12, 2010), available at

22

http://www.usenix.org/events/sec09/tech/; Google I/O 2010 Video, entitled “A JIT Compiler for

23

Android's Dalvik VM,” presented by Ben Cheng and Bill Buzbee (Google’s Android Team),

24

available at http://developer.android.com/videos/index.html#v=Ls0tM-c4Vfo. Oracle also directs

25

Google to developer.sun.com, java.sun.com, and www.sun.com, and the deposit materials

26

produced in response to Google’s request for production no. 28.

27

Oracle objects to this request on the grounds that it is not clear exactly what Google seeks

28

because the request does not describe with reasonable particularity each item or category of items
ORACLE AMERICA’S RESPONSES AND OBJECTIONS TO GOOGLE’S FIRST REQUESTS FOR PRODUCTION
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25

1

to be inspected as required by Federal Rule of Civil Procedure 34(b)(1)(A). Oracle objects to this

2

request as vague, overly broad, unduly burdensome, and not reasonably calculated to lead to

3

admissible evidence. Oracle further objects to this request to the extent that it encompasses

4

documents and information protected from discovery by the attorney-client privilege or the

5

attorney work-product doctrine.

6

REQUEST FOR PRODUCTION NO. 51:

7

All Documents identified by Oracle in response to Google Inc.’s First Set of

8

Interrogatories to Oracle served in this Action.

9

RESPONSE TO REQUEST FOR PRODUCTION NO. 51:

10

Oracle will produce documents identified in its responses to Google’s First Set of

11

Interrogatories that may reasonably be located in its possession, custody or control and are not

12

publicly available.

13

REQUEST FOR PRODUCTION NO. 52:

14

All Documents and Things Relating to Java, Android, Dalvik, or Google that were

15

prepared, created, revised, received, reviewed or compiled by Sun during or in connection with

16

any negotiations Relating to the potential acquisition of Sun by any third party.

17

RESPONSE TO REQUEST FOR PRODUCTION NO. 52:

18

Oracle will meet and confer with Google to determine appropriate ESI search terms,

19

which Oracle will apply to user-generated documents and data pursuant to the Parties’ ESI

20

agreement.

21

To the extent Google seeks other documents or things, Oracle objects to this request on

22

the grounds that it is not clear exactly what Google seeks because the request does not describe

23

with reasonable particularity each item or category of items to be inspected as required by Federal

24

Rule of Civil Procedure 34(b)(1)(A). As to “All Documents and Things Relating to,” Oracle

25

objects to this request as vague, overly broad, unduly burdensome, and not reasonably calculated

26

to lead to admissible evidence. Oracle further objects to this request to the extent that it

27

encompasses documents and information protected from discovery by the attorney-client

28

privilege or the attorney work-product doctrine.
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1

REQUEST FOR PRODUCTION NO. 53:

2

All Documents and Things Relating to MULTICS, Hydra System, KEYKOS, “capability-

3

based systems,” “protection domains,” or “protected domains” that were known to or were in the

4

possession, custody or control of the prosecuting attorneys of, named inventors of, or any Sun

5

employee working on technology related to the subject matter of, U.S. Patent Nos. 6,192,476 and

6

6,125,447 prior to the latest issue date of the patents.

7

RESPONSE TO REQUEST FOR PRODUCTION NO. 53:

8
9

Oracle does not have custodial data for named inventor Li Gong of U.S. Patent Nos.
6,192,476 and 6,125,447. Oracle will meet and confer with Google to determine appropriate ESI

10

search terms, which Oracle will apply to user-generated documents and data pursuant to the

11

Parties’ ESI agreement.

12

To the extent Google seeks other documents or things, Oracle objects to this request on

13

the grounds that it is not clear exactly what Google seeks because the request does not describe

14

with reasonable particularity each item or category of items to be inspected as required by Federal

15

Rule of Civil Procedure 34(b)(1)(A). As for “All Documents and Things Relating to,” Oracle

16

objects to this request as vague, overly broad, unduly burdensome, and not reasonably calculated

17

to lead to admissible evidence. Oracle further objects to this request to the extent that it

18

encompasses documents and information protected from discovery by the attorney-client

19

privilege or the attorney work-product doctrine. Oracle further objects to this request to the

20

extent it seeks documents and things not in Oracle’s possession, custody, or control.

21

REQUEST FOR PRODUCTION NO. 54:

22

All Documents and Things Relating to MULTICS, IBM 360 assembler, IBM linkers,

23

MIPS linkers, GNU gettext, GNU linkers, GCC, Plan9 linker, Microsoft ICF, Transmeta, Shade,

24

LISP, SmallTalk, ELF, “snapping,” “JIT compilation,” “dynamic translation,” “object code

25

translation,” “link snapping,” “delaying binding,” “call linkage,” dynamic linking,” “UUO

26

(unimplemented user opcode) linking,” “software interrupt instruction,” “SVC instruction,” “link

27

snapping,” “linker optimizations,” “constant folding,” “constant pooling,” or “CMS (code-

28

morphing instruction)” that were known to or were in the possession, custody or control of the
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1

prosecuting attorneys of, named inventor of, or any Sun employee working on technology related

2

to the subject matter of, U.S. Patent No. RE38,104 prior to the reissue date of the patent.

3

RESPONSE TO REQUEST FOR PRODUCTION NO. 54:

4

Oracle will meet and confer with Google to determine appropriate ESI search terms,

5

which Oracle will apply to user-generated documents and data pursuant to the Parties’ ESI

6

agreement.

7

To the extent Google seeks other documents or things, Oracle objects to this request on

8

the grounds that it is not clear exactly what Google seeks because the request does not describe

9

with reasonable particularity each item or category of items to be inspected as required by Federal

10

Rule of Civil Procedure 34(b)(1)(A). As for “All Documents and Things Relating to,” Oracle

11

objects to this request as vague, overly broad, unduly burdensome, and not reasonably calculated

12

to lead to admissible evidence. Oracle further objects to this request to the extent that it

13

encompasses documents and information protected from discovery by the attorney-client

14

privilege or the attorney work-product doctrine. Oracle further objects to this request to the

15

extent it seeks documents and things not in Oracle’s possession, custody, or control.

16

REQUEST FOR PRODUCTION NO. 55:

17

All Documents and Things Relating to MULTICS, IBM 360 assembler, IBM linkers,

18

MIPS linkers, GNU gettext, GNU linkers, GCC, Plan9 linker, Microsoft ICF, Transmeta, Shade,

19

LISP, SmallTalk, ELF, “snapping,” “JIT compilation,” “dynamic translation,” “object code

20

translation,” “link snapping,” “delaying binding,” “call linkage,” dynamic linking,” “UUO

21

(unimplemented user opcode) linking,” “software interrupt instruction,” “SVC instruction,” “link

22

snapping,” “linker optimizations,” “constant folding,” “constant pooling,” or “CMS (code-

23

morphing instruction)” that were known to or were in the possession, custody or control of the

24

prosecuting attorneys of, named inventors of, or any Sun employee working on technology

25

related to the subject matter of, U.S. Patent No. 6,061,520 prior to the issue date of the patent.

26

RESPONSE TO REQUEST FOR PRODUCTION NO. 55:

27
28

Oracle does not have custodial data for named inventors Frank Yellin and Richard Tuck
of U.S. Patent No. 6,061,520. Oracle will meet and confer with Google to determine appropriate
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1

ESI search terms, which Oracle will apply to user-generated documents and data pursuant to the

2

Parties’ ESI agreement.

3

To the extent Google seeks other documents or things, Oracle objects to this request on

4

the grounds that it is not clear exactly what Google seeks because the request does not describe

5

with reasonable particularity each item or category of items to be inspected as required by Federal

6

Rule of Civil Procedure 34(b)(1)(A). As for “All Documents and Things Relating to,” Oracle

7

objects to this request as vague, overly broad, unduly burdensome, and not reasonably calculated

8

to lead to admissible evidence. Oracle further objects to this request to the extent that it

9

encompasses documents and information protected from discovery by the attorney-client

10

privilege or the attorney work-product doctrine. Oracle further objects to this request to the

11

extent it seeks documents and things not in Oracle’s possession, custody, or control.

12

REQUEST FOR PRODUCTION NO. 56:

13

All Documents and Things Relating to MULTICS, IBM 360 assembler, IBM linkers,

14

MIPS linkers, GNU gettext, GNU linkers, GCC, Plan9 linker, Microsoft ICF, Transmeta, Shade,

15

LISP, SmallTalk, ELF, “snapping,” “JIT compilation,” “dynamic translation,” “object code

16

translation,” “link snapping,” “delaying binding,” “call linkage,” dynamic linking,” “UUO

17

(unimplemented user opcode) linking,” “software interrupt instruction,” “SVC instruction,” “link

18

snapping,” “linker optimizations,” “constant folding,” “constant pooling,” or “CMS (code-

19

morphing instruction)” that were known to or were in the possession, custody or control of the

20

prosecuting attorneys of, named inventors of, or any Sun employee working on technology

21

related to the subject matter of, U.S. Patent No. 6,910,205 prior to the issue date of the patent.

22

RESPONSE TO REQUEST FOR PRODUCTION NO. 56:

23

Oracle does not have custodial data for named inventors Lars Bak and Robert Griesemer

24

of U.S. Patent No. 6,910,205. Oracle will meet and confer with Google to determine appropriate

25

ESI search terms, which Oracle will apply to user-generated documents and data pursuant to the

26

Parties’ ESI agreement.

27

To the extent Google seeks other documents or things, Oracle objects to this request on

28

the grounds that it is not clear exactly what Google seeks because the request does not describe
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1

with reasonable particularity each item or category of items to be inspected as required by Federal

2

Rule of Civil Procedure 34(b)(1)(A). As for “All Documents and Things Relating to,” Oracle

3

objects to this request as vague, overly broad, unduly burdensome, and not reasonably calculated

4

to lead to admissible evidence. Oracle further objects to this request to the extent that it

5

encompasses documents and information protected from discovery by the attorney-client

6

privilege or the attorney work-product doctrine. Oracle further objects to this request to the

7

extent it seeks documents and things not in Oracle’s possession, custody, or control.

8

REQUEST FOR PRODUCTION NO. 57:

9

All Documents and Things Relating to MULTICS, IBM 360 assembler, IBM linkers,

10

MIPS linkers, GNU gettext, GNU linkers, GCC, Plan9 linker, Microsoft ICF, Transmeta, Shade,

11

LISP, SmallTalk, ELF, “snapping,” “JIT compilation,” “dynamic translation,” “object code

12

translation,” “link snapping,” “delaying binding,” “call linkage,” dynamic linking,” “UUO

13

(unimplemented user opcode) linking,” “software interrupt instruction,” “SVC instruction,” “link

14

snapping,” “linker optimizations,” “constant folding,” “constant pooling,” or “CMS (code-

15

morphing instruction)” that were known to or were in the possession, custody or control of the

16

prosecuting attorneys of, named inventors of, or any Sun employee working on technology

17

related to the subject matter of, U.S. Patent No. 5,966,702 prior to the issue date of the patent.

18

RESPONSE TO REQUEST FOR PRODUCTION NO. 57:

19

Oracle does not have custodial data for named inventors Nedim Fresko and Richard Tuck

20

of U.S. Patent No. 5,966,702. Oracle will meet and confer with Google to determine appropriate

21

ESI search terms, which Oracle will apply to user-generated documents and data pursuant to the

22

Parties’ ESI agreement.

23

To the extent Google seeks other documents or things, Oracle objects to this request on

24

the grounds that it is not clear exactly what Google seeks because the request does not describe

25

with reasonable particularity each item or category of items to be inspected as required by Federal

26

Rule of Civil Procedure 34(b)(1)(A). As for “All Documents and Things Relating to,” Oracle

27

objects to this request as vague, overly broad, unduly burdensome, and not reasonably calculated

28

to lead to admissible evidence. Oracle further objects to this request to the extent that it
ORACLE AMERICA’S RESPONSES AND OBJECTIONS TO GOOGLE’S FIRST REQUESTS FOR PRODUCTION
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1

encompasses documents and information protected from discovery by the attorney-client

2

privilege or the attorney work-product doctrine. Oracle further objects to this request to the

3

extent it seeks documents and things not in Oracle’s possession, custody, or control.

4

REQUEST FOR PRODUCTION NO. 58:

5

All Documents and Things Relating to LISP, SmallTalk, EMACS editor, Tex text

6

formatting system, “MMAP flag,” “fork,” or “vfork” that were known to or were in the

7

possession, custody or control of the prosecuting attorneys of, named inventor of, or any Sun

8

employee working on technology related to the subject matter of, U.S. Patent No. 7,426,720 prior

9

to the issue date of the patent.

10

RESPONSE TO REQUEST FOR PRODUCTION NO. 58:

11

Oracle does not have custodial data for named inventor Nedim Fresko of U.S. Patent No.

12

7,426,720. Oracle will meet and confer with Google to determine appropriate ESI search terms,

13

which Oracle will apply to user-generated documents and data pursuant to the Parties’ ESI

14

agreement.

15

To the extent Google seeks other documents or things, Oracle objects to this request on

16

the grounds that it is not clear exactly what Google seeks because the request does not describe

17

with reasonable particularity each item or category of items to be inspected as required by Federal

18

Rule of Civil Procedure 34(b)(1)(A). As for “All Documents and Things Relating to,” Oracle

19

objects to this request as vague, overly broad, unduly burdensome, and not reasonably calculated

20

to lead to admissible evidence. Oracle further objects to this request to the extent that it

21

encompasses documents and information protected from discovery by the attorney-client

22

privilege or the attorney work-product doctrine. Oracle further objects to this request to the

23

extent it seeks documents and things not in Oracle’s possession, custody, or control.

24

REQUEST FOR PRODUCTION NO. 59:

25

All Documents and Things Relating to Eiffel, SmallTalk, LISP, Objective C or

26

Cedar/Mesa that are or were known to or were in the possession, custody or control of any

27

prosecuting attorney of, or named inventors of, any of the patents-in-suit prior to the issue date, or

28

in the case of U.S. RE38,104, the reissue date, of the patent.
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1
2

RESPONSE TO REQUEST FOR PRODUCTION NO. 59:
Oracle will meet and confer with Google to determine appropriate ESI search terms,

3

which Oracle will apply to user-generated documents and data pursuant to the Parties’ ESI

4

agreement.

5

To the extent Google seeks other documents or things, Oracle objects to this request on

6

the grounds that it is not clear exactly what Google seeks because the request does not describe

7

with reasonable particularity each item or category of items to be inspected as required by Federal

8

Rule of Civil Procedure 34(b)(1)(A). As for “All Documents and Things Relating to,” Oracle

9

objects to this request as vague, overly broad, unduly burdensome, and not reasonably calculated

10

to lead to admissible evidence. Oracle further objects to this request to the extent that it

11

encompasses documents and information protected from discovery by the attorney-client

12

privilege or the attorney work-product doctrine. Oracle further objects to this request to the

13

extent it seeks documents and things not in Oracle’s possession, custody, or control.

14

REQUEST FOR PRODUCTION NO. 60:

15

All Documents and Things Relating to any research and development projects associated

16

with technology that was ultimately included or incorporated in Java, including but not limited to

17

Imagination Project, Stealth Project, Green Project, Project Oak or other similar projects.

18

RESPONSE TO REQUEST FOR PRODUCTION NO. 60:

19

Oracle will meet and confer with Google to determine appropriate ESI search terms,

20

which Oracle will apply to user-generated documents and data pursuant to the Parties’ ESI

21

agreement.

22

To the extent Google seeks other documents or things, Oracle objects to this request on

23

the grounds that it is not clear exactly what Google seeks because the request does not describe

24

with reasonable particularity each item or category of items to be inspected as required by Federal

25

Rule of Civil Procedure 34(b)(1)(A). Oracle objects to this request as vague, overly broad,

26

unduly burdensome, and not reasonably calculated to lead to admissible evidence. Oracle further

27

objects to this request to the extent that it encompasses documents and information protected

28

from discovery by the attorney-client privilege or the attorney work-product doctrine.
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1
2

REQUEST FOR PRODUCTION NO. 61:
All Documents and Things sufficient to show each public presentation, white paper,

3

conference submission, or other public communication Relating to any subject matter of any

4

patent-in-suit dated prior to the filing date of the application for the corresponding patent-in-suit.

5

RESPONSE TO REQUEST FOR PRODUCTION NO. 61:

6
7

Oracle directs Google’s attention to Oracle’s production pursuant to Patent Local Rule 3-2
and Oracle’s response to Google’s request for production no. 8.

8

Oracle objects to this request on the grounds that it is not clear exactly what Google seeks

9

because the request does not describe with reasonable particularity each item or category of items

10

to be inspected as required by Federal Rule of Civil Procedure 34(b)(1)(A). Oracle objects to this

11

request as vague, overly broad, unduly burdensome, and not reasonably calculated to lead to

12

admissible evidence. Oracle further objects to this request to the extent that it encompasses

13

documents and information protected from discovery by the attorney-client privilege or the

14

attorney work-product doctrine. Oracle further objects to this request to the extent it seeks

15

documents and things not in Oracle’s possession, custody, or control.

16

REQUEST FOR PRODUCTION NO. 62:

17

All Documents and Things Relating to a document entitled “Further” by Bill Joy,

18

including but not limited to all drafts thereof and any internal or external correspondence

19

regarding the document.

20

RESPONSE TO REQUEST FOR PRODUCTION NO. 62:

21

Oracle will meet and confer with Google to determine appropriate ESI search terms,

22

which Oracle will apply to user-generated documents and data pursuant to the Parties’ ESI

23

agreement.

24

To the extent Google seeks other documents or things, Oracle objects to this request on

25

the grounds that it is not clear exactly what Google seeks because the request does not describe

26

with reasonable particularity each item or category of items to be inspected as required by Federal

27

Rule of Civil Procedure 34(b)(1)(A). As for “All Documents and Things Relating to a document

28

entitled ‘Further’ by Bill Joy,” Oracle objects to this request as vague, overly broad, unduly
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1

burdensome, and not reasonably calculated to lead to admissible evidence. Oracle further objects

2

to this request to the extent that it encompasses documents and information protected from

3

discovery by the attorney-client privilege or the attorney work-product doctrine. Oracle further

4

objects to this request to the extent it seeks documents and things not in Oracle’s possession,

5

custody, or control.

6

REQUEST FOR PRODUCTION NO. 63:

7

All Documents and Things Relating to virtual machines other than the Java virtual

8

machine that were known to or were in the possession, custody, or control of any named

9

inventors of any of the patents-in-suit prior to the issue date, or reissue date, of the inventor’s

10

corresponding patent(s).

11

RESPONSE TO REQUEST FOR PRODUCTION NO. 63:

12

Oracle will meet and confer with Google to determine appropriate ESI search terms,

13

which Oracle will apply to user-generated documents and data pursuant to the Parties’ ESI

14

agreement.

15

To the extent Google seeks other documents or things, Oracle objects to this request on

16

the grounds that it is not clear exactly what Google seeks because the request does not describe

17

with reasonable particularity each item or category of items to be inspected as required by Federal

18

Rule of Civil Procedure 34(b)(1)(A). As for “All Documents and Things Relating to virtual

19

machines,” Oracle objects to this request as vague, overly broad, unduly burdensome, and not

20

reasonably calculated to lead to admissible evidence. Oracle further objects to this request to the

21

extent that it encompasses documents and information protected from discovery by the attorney-

22

client privilege or the attorney work-product doctrine. Oracle further objects to this request to the

23

extent it seeks documents and things not in Oracle’s possession, custody, or control.

24

REQUEST FOR PRODUCTION NO. 64:

25

All Documents and Things Relating to the subject matters identified in requests for

26

production numbers 53 through 59 above that are currently in Oracle’s possession, custody or

27

control, including all such documents in the possession, custody or control of Oracle’s counsel.

28
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1
2

RESPONSE TO REQUEST FOR PRODUCTION NO. 64:
Oracle will meet and confer with Google to determine appropriate ESI search terms,

3

which Oracle will apply to user-generated documents and data pursuant to the Parties’ ESI

4

agreement.

5

To the extent Google seeks other documents or things, Oracle objects to this request on

6

the grounds that it is not clear exactly what Google seeks because the request does not describe

7

with reasonable particularity each item or category of items to be inspected as required by Federal

8

Rule of Civil Procedure 34(b)(1)(A). As for “All Documents and Things Relating to,” Oracle

9

objects to this request as vague, overly broad, unduly burdensome, and not reasonably calculated

10

to lead to admissible evidence. Oracle further objects to this request to the extent that it

11

encompasses documents and information protected from discovery by the attorney-client

12

privilege or the attorney work-product doctrine. Oracle further objects to this request to the

13

extent it seeks documents and things not in Oracle’s possession, custody, or control.

14

REQUEST FOR PRODUCTION NO. 65:

15

All Documents Relating to any agreement or proposed agreement with any third party

16

regarding joint development of any Java programs or materials or any portions or elements of

17

Java, including all Documents relating to the negotiation of any such agreements or proposed

18

agreements.

19

RESPONSE TO REQUEST FOR PRODUCTION NO. 65:

20
21

Oracle will produce Java joint-development agreements that can be found in its
possession, custody, or control through reasonable efforts.

22

To the extent Google seeks other documents or things, Oracle objects to this request on

23

the grounds that it is not clear exactly what Google seeks because the request does not describe

24

with reasonable particularity each item or category of items to be inspected as required by Federal

25

Rule of Civil Procedure 34(b)(1)(A). As for “all documents relating to” such agreements, Oracle

26

objects to this request as overly broad, unduly burdensome, and not reasonably calculated to lead

27

to admissible evidence. Oracle further objects to this request to the extent that it would

28
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1

encompass documents and information protected from discovery by the attorney-client privilege

2

or the attorney work-product doctrine.

3
4
5
6
7
8

Dated: January 6, 2011

MICHAEL A. JACOBS
MARC DAVID PETERS
MORRISON & FOERSTER LLP
By: /s/ Richard S. Ballinger
Richard S. Ballinger
Attorneys for Plaintiff
ORACLE AMERICA, INC.

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