Oracle America, Inc. v. Google Inc.

Filing 496

MOTION in Limine No. 5 filed by Google Inc.. Responses due by 10/21/2011. Replies due by 10/28/2011. (Attachments: #1 Oracle Opposition)(Kamber, Matthias) (Filed on 10/7/2011)

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MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[e-mail]
MARC DAVID PETERS (Bar No. 211725)
[e-mail]
DANIEL P. MUINO (Bar No. 209624)
[e-mail]
755 Page Mill Road, Palo Alto, CA 94304-1018
Telephone: [phone] / Facsimile: [phone]
BOIES, SCHILLER & FLEXNER LLP
DAVID BOIES (Admitted Pro Hac Vice)
[e-mail]
333 Main Street, Armonk, NY 10504
Telephone: [phone] / Facsimile: [phone]
STEVEN C. HOLTZMAN (Bar No. 144177)
[e-mail]
1999 Harrison St., Suite 900, Oakland, CA 94612
Telephone: [phone] / Facsimile: [phone]
ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[e-mail]
DEBORAH K. MILLER (Bar No. 95527)
[e-mail]
MATTHEW M. SARBORARIA (Bar No. 211600)
[e-mail]
500 Oracle Parkway, Redwood City, CA 94065
Telephone: [phone] / Facsimile: [phone]
Attorneys for Plaintiff
ORACLE AMERICA, INC.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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ORACLE AMERICA, INC.

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Plaintiff,

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v.

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GOOGLE INC.

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Defendant.

Case No. CV 10-03561 WHA
ORACLE AMERICA, INC.’S
OPPOSITION TO GOOGLE’S
MOTION IN LIMINE NO. 5 TO
EXCLUDE EVIDENCE OBTAINED
FROM MOTOROLA MOBILITY,
INC.
Dept.: Courtroom 8, 19th Floor
Judge: Honorable William H. Alsup

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ORACLE’S OPPOSITION TO GOOGLE’S MIL NO. 5 TO EXCLUDE EVID. OBTAINED FROM MOTOROLA MOBILITY
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During fact discovery, Oracle obtained testimony and documents from Motorola Mobility,

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Inc. (“Motorola”) establishing that the infringing Android code (detailed in Oracle’s Infringement

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Contentions (“ICs”)) is present on Motorola’s Android devices. Google moves to exclude this

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evidence on the primary ground that Oracle’s ICs do not specifically name all of the Motorola

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devices. Google’s motion should be denied for at least three reasons:

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First, as Google concedes, the Motorola Droid device was specifically named in Oracle’s

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ICs. With respect to that device, the Motorola evidence confirms that the infringing Android

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code supplied by Google is installed without modification. Oracle’s ICs disclosed the infringing

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code in full detail and Oracle’s expert, Dr. Mitchell, provided a complete infringement analysis in

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his expert reports. While Dr. Mitchell did not cite the Motorola testimony in his reports and will

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not specifically reference it at trial, there is no reason the Motorola testimony cannot be presented

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on its own as evidence that the infringing code is installed on the Motorola Droid.

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Second, as Oracle noted in its précis seeking leave to file a motion for reconsideration of

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the Court’s order striking portions of Dr. Mitchell’s report, the Patent Local Rules do not require

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the ICs to name specific third-party infringing devices to support allegations of indirect

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infringement. With respect to Motorola devices other than the Motorola Droid, Oracle’s ICs

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disclose that “other mobile devices running Android” contain the infringing Android code

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detailed in the ICs. The Motorola evidence confirms that infringing components of Android are

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present on other Motorola devices. This evidence does not reveal any new infringement

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theories – it is an item of proof showing that the accused code is installed on the third-party

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devices. The fact that Oracle’s ICs did not specifically name the other Motorola devices should

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not preclude Oracle from offering the Motorola evidence to demonstrate Google’s liability for

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indirect infringement on account of those devices.

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Third, the Motorola testimony also confirms that Motorola uses the dx tool from the

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Android SDK to develop Android applications. As clearly disclosed in Oracle’s ICs, use of the

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dx tool infringes Oracle’s ’520 and ’720 patents. This testimony stands on its own to demonstrate

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that Motorola is a direct infringer of those patents, making Google an indirect infringer. Google’s

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motion does not address this testimony, even while asking for all Motorola testimony to be

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excluded. There is no basis for excluding this or any of the other Motorola testimony at trial.

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I.

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Oracle’s theories of infringement regarding Android devices were fully disclosed in its

FACTS

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ICs. In both its Preliminary ICs of December 2, 2010, and the Supplemental ICs of April 1, 2011,

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Oracle disclosed in full detail (roughly 480 pages) its theories regarding the precise Android code

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that infringes each element of the asserted patent claims. The ICs articulated Oracle’s claims

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against Google for both direct and indirect infringement. (Declaration of Ruchika Agrawal in

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Support of Oracle America, Inc.’s Oppositions to Google's Motions In Limine Nos. 1 Through 5

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(“Agrawal Decl.”) Ex. 5-1 at 3, 7-8 (Oracle’s ICs dated April 1, 2011).) With respect to indirect

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infringement, Oracle’s ICs identified the categories of direct infringers, including manufacturers

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of Android devices, application developers, service providers, and end users. (Id. at 7.) The ICs

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specifically identified the Motorola Droid as an accused instrumentality, together with “other

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mobile devices running Android.” (Id. at 2.) Oracle’s ICs also disclosed information

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demonstrating that Android devices are installed with the infringing code supplied by Google.

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(Id. at 3-5.) Among other things, the ICs quoted a statement from Motorola about the Motorola

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Droid: “All Droid source consists entirely of code found at the Android repo site.” (Id. at 4.)

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To obtain further evidence that the infringing Android code is installed on Motorola’s

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Android devices, Oracle sought documents and testimony from Motorola. On April 12, 2011,

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Oracle served a subpoena on Motorola requesting documents relating to Motorola’s Android

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devices. Motorola produced a single document on June 15, 2011, a log of changes that Motorola

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had made to the Android code in general, but not necessarily to any of the infringing components

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of Android.

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On July 14, 2011, Oracle served a subpoena on Motorola seeking a witness under Fed. R.

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Civ. P. 30(b)(6) to testify regarding (1) the installation of the infringing Android code on

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Motorola’s Android devices, and (2) Motorola’s use of the Android dx tool to develop

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applications. (Agrawal Decl. Ex. 5-3.) After Motorola refused to provide a witness, Oracle

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moved to compel compliance with the subpoena on August 5, 2011. At the direction of Judge
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Samuel Der-Yeghiayan of the Northern District of Illinois, Motorola ultimately produced a

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witness in response to Oracle’s subpoena on September 8, 2011.

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II.

ARGUMENT
A.

Oracle’s ICs Specifically Identified The Motorola Droid, On Which
Infringing Android Code Was Installed

Oracle’s ICs fully disclosed Oracle’s infringement theories with respect to the Motorola

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Droid. As Google concedes, the Motorola Droid was specifically named as an accused

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instrumentality in Oracle’s ICs. (Agrawal Decl. Ex. 5-1 [Oracle’s ICs, April 1, 2011] at 2.)

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Oracle’s ICs disclosed (1) the manner in which the infringing components of Android practice the

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asserted claims of the patents-in-suit, and (2) the fact that those infringing components are

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installed on the Motorola Droid. (Id. at 5-7 [Oracle’s ICs, April 1, 2011] at 3-4)

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The Motorola testimony provides additional evidence that Motorola installed the
infringing Android components on the Motorola Droid.

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While the Motorola testimony was not cited in

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Oracle’s ICs, the Patent Local Rules did not require it to be. The testimony is not the basis of a

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new infringement theory, it is evidence that Oracle’s disclosed theories are accurate (i.e., that the

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infringing Android code is installed on the Droid device). As the Court observed in its
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September 26, 2011 Order, the Patent Local Rules “did not require identification of every

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evidentiary item of proof showing that the accused element did in fact practice the limitation. . . .

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That a particular document or source code file was not cited in a party’s infringement disclosures

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does not automatically preclude the party from using that document or file to support a theory that

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was timely disclosed.” (ECF No. 464 at 4.)

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Google argues that the Motorola evidence was somehow obtained too late in the discovery

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process to be used at trial. In fact, the evidence was sought and obtained within the extended fact

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discovery period. Oracle served its document subpoena on April 12, 2011, more than four

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months before the extended fact discovery cut-off of August 15, 2011. Oracle served its

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deposition subpoena on July 14, 2011. Although Motorola did not provide a witness until

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September 8, 2011 (after forcing Oracle to move to compel the testimony), the parties stipulated

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to and the Court approved an extension of fact discovery to September 11, 2011, for the

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completion of the Motorola deposition. (ECF No. 381.) Accordingly, the Motorola discovery

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was completed within the extended fact discovery period. Google’s counsel attended the

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deposition, and hence Google can claim no prejudice from its timing.

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Google also suggests that Oracle should be precluded from using the Motorola evidence

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because Oracle’s infringement expert, Dr. Mitchell, did not cite that evidence in his reports. That

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Dr. Mitchell will not be testifying specifically regarding the Motorola testimony does not mean it

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cannot be presented on its own as factual evidence for the jury’s consideration. Oracle intends to

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present this testimony as evidence that the infringing Android code supplied by Google was

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installed on the Motorola Droid. There is no reason this testimony, properly obtained through the

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discovery process, should be excluded.

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B.

Oracle’s ICs Properly Disclosed Oracle’s Indirect Infringement
Theories With Respect To Other Motorola Devices

As set forth in Oracle’s précis seeking leave to file a motion for reconsideration of the

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Court’s order striking portions of Dr. Mitchell’s report (ECF No. 479), the Patent Local Rules do

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not require ICs to name specific third-party infringing devices in support of allegations of indirect

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infringement. Oracle’s ICs disclosed, in detail, the infringing components of Android code, and
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asserted that Google indirectly infringes the patents-in-suit by supplying those same components

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for installation on third-party Android devices. While Oracle’s ICs did not specifically list

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Motorola devices other than the Motorola Droid, that should not preclude Oracle from asserting

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indirect infringement against Google for supplying the infringing code.

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Patent Local Rule 3-1 is “designed to require parties to crystallize their theories of the

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case early in the litigation and to adhere to those theories once they have been disclosed.”

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Network Caching Tech., LLC v. Novell, Inc., No. C-01-2079 VRW, 2003 U.S. Dist. LEXIS 9881,

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at *12 (N.D. Cal. Mar. 21, 2003) (quoting LG Elecs., Inc. v. Q-Lity Computer, Inc. v. Asustek

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Computer, Inc., 211 F.R.D. 360, 367 (N.D. Cal. 2002)). Patent LR 3-1 does not require, however,

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plaintiffs to “produce evidence of infringement.” Id. That ICs are due well in advance of the

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close of discovery is an additional reason why Patent LR 3-1 cannot require the disclosure of all

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items of proof.

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Patent LR 3-1(b), which applies to direct infringement, requires an identification of the

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accused instrumentalities that is “as specific as possible.” Patent LR 3-1(b). For indirect

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infringement, Patent LR 3-1(d) requires only “an identification of any direct infringement and a

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description of the acts of the alleged indirect infringer that contribute to or are inducing that direct

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infringement.” Patent LR 3-1(d). Patent LR 3-1(d) does not require the ICs to name specific

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third-party infringing devices to support allegations of indirect infringement.

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Here, Oracle’s ICs extensively disclosed Oracle’s theories of how the infringing

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components of Android practice the asserted patent claims. The ICs disclosed that these

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infringing Android components are installed on specified Android devices and “other mobile

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devices running Android.” (Agrawal Decl. Ex. 5-1 [Oracle’s ICs, April 1, 2011] at 2.) The ICs

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further stated that third parties directly infringe the asserted patent claims because they “copy,

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sell, distribute, re-distribute, and use products that embody or incorporate” the infringing

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components of Android. (Id. at 7.) In this way, Oracle clearly disclosed its theory of indirect

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infringement.

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The Motorola evidence is an item of proof substantiating the indirect infringement theory
articulated in Oracle’s ICs. It does not add new theories of infringement, but supports the
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theories already disclosed in the ICs. Accordingly, there is no basis for excluding this evidence

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from trial.

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C.

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Google’s Motion Fails To Identity Any Reasons To Exclude Evidence
of Motorola’s Use of the DX Tool From the Android SDK

Google’s motion seeks to exclude all Motorola testimony, yet it fails to identify, or even

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acknowledge, any reason to exclude the testimony regarding Motorola’s development of Android

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applications. Oracle’s ICs disclosed its theories of infringement regarding the dx tool of the

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Android SDK. Oracle disclosed that use of the dx tool infringes Oracle’s ’520 and ’720 patents.

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By supplying the dx tool in the Android SDK for use by third parties, Google is liable as an

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indirect infringer.

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Motorola’s testimony stands on its own to demonstrate that Motorola

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is a direct infringer of the ’520 and ’720 patents, making Google an indirect infringer of those

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patents.

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III.

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For the reasons stated above, the Court should deny Google’s motion to exclude the

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CONCLUSION

Motorola testimony and documents from trial.

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Dated: October 4, 2011

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

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ORACLE’S OPPOSITION TO GOOGLE’S MIL NO. 5 TO EXCLUDE EVID. OBTAINED FROM MOTOROLA MOBILITY
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