Oracle America, Inc. v. Google Inc.
Filing
497
Declaration of DANIEL PURCELL in Support of #496 MOTION in Limine No. 5, #494 MOTION in Limine No. 3, #492 MOTION in Limine No. 1, #493 MOTION in Limine NO. 2, #495 MOTION in Limine No. 4 filed byGoogle Inc.. (Attachments: #1 Exhibit 1, #2 Exhibit 2, #3 Exhibit 3, #4 Exhibit 4, #5 Exhibit 5, #6 Exhibit 6, #7 Exhibit 7, #8 Exhibit 8, #9 Exhibit 9, #10 Exhibit 10, #11 Exhibit 11, #12 Exhibit 12, #13 Exhibit 13, #14 Exhibit 14, #15 Exhibit 15, #16 Exhibit 16, #17 Exhibit 17, #18 Exhibit 18, #19 Exhibit 19, #20 Exhibit 20, #21 Exhibit 21, #22 Exhibit 22, #23 Exhibit 23, #24 Exhibit 24, #25 Exhibit 25, #26 Exhibit 26, #27 Exhibit 27, #28 Exhibit 28, #29 Exhibit 29, #30 Exhibit 30, #31 Exhibit 31, #32 Exhibit 32, #33 Exhibit 33, #34 Exhibit 34, #35 Exhibit 35, #36 Exhibit 36, #37 Exhibit 37, #38 Exhibit 38, #39 Exhibit 39, #40 Exhibit 40)(Related document(s) #496 , #494 , #492 , #493 , #495 ) (Kamber, Matthias) (Filed on 10/7/2011)
EXHIBIT 2
HIGHLY CONFIDENTIAL - ATTORNEYS' EYES ONLY
Page 1
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
________________________
ORACLE AMERICA, INC.,
Plaintiff,
vs.
)
)
) No. CV 10-03561 WHA
GOOGLE, INC.,
Defendant.
) VOLUME I
)
________________________)
HIGHLY CONFIDENTIAL - ATTORNEYS' EYES ONLY
Videotaped Patent Issues Deposition
of JOHN C. MITCHELL, Ph.D., taken at
755 Page Mill Road, Palo Alto, California,
commencing at 9:43 a.m., Tuesday,
September 6, 2011, before Leslie Rockwood,
RPR, CSR No. 3462.
PAGES 1 - 270
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A. I believe it's important to have adequate and
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attractive networking connections. Something that's not
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state-of-the-art would probably impede -- stands to
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reason something that's not state-of-the-art may impede
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sales.
11:35:25
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As an additional factor, I just would point
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out that as far as I understand -- and it should be easy
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to find more information about it -- there are various
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manufacturers of wireless networking hardware, and one
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may be substitutable for another.
11:35:47
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Q. So having a 3G air interface or above is also
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the basis for consumer demand for Android products?
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A. I think I've explained the importance of that
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factor.
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Q. Is it more or less important in the patents
11:36:04
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patents-in-suit, sir?
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A. Well, one factor that comes to mind -- and
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there may be others -- that would occur to me on
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reflection is that there is -- I believe a -- some degree
of substitutability across available networking hardware, 11:36:23 20
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whereas as I've laid out in this report, based on my
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study and evaluation to the best that I'm able to do
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this, it doesn't appear that there is reasonable
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substitutability of another platform for the platform
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that draws critically on the patents-in-suit.
11:36:50
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Q. So in your opinion, the patents-in-suit are
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more important than having a 3G air interface on an
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Android device?
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A. That's not what I said.
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Q. Well, what is your opinion? Are the
11:37:06
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patents-in-suit more important or is having a 3G air
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interface more important?
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MR. PETERS: Objection. Form.
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THE WITNESS: I believe that the -- and it
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would be possible to look into this if this is an
11:37:21
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absolutely critical issue, and maybe other people know
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more about it, but it strikes me that there are likely a
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number of different ways to assemble a phone with
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adequate networking so that an individual chip to provide
networking could be replaced with another, whereas as I
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think I tried to explain, I don't see that as being an
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aspect of the patents-in-suit in the software technology
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at issue.
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MR. PAIGE: Okay. We need to take a break to
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change the tape, please.
11:38:05
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THE VIDEOGRAPHER: This is the end of Disk
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Number 1, Volume 1. We are off the record at 11:38 a.m.
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(Recess.)
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THE VIDEOGRAPHER: This is the beginning of
Disk Number 2, Volume 1. We are back on the record at
11:59:13 25
Page 80
11:59 a.m.
You may proceed.
Q. BY MR. PAIGE: Welcome back, Professor
Mitchell.
A. Thank you.
11:59:22
Q. You say that the Oracle employees Landau,
Poore and Vandette conducted certain experiments at your
direction; correct?
A. I believe that's what it says in that report.
Q. Why did you choose to use Oracle employees
11:59:37
rather than an independent consulting firm?
A. I believe that I asked if it was possible to
get someone to help with some kinds of experiments like
that or perhaps someone asked me if I knew students, and
I suggested that perhaps someone who works for Oracle
11:59:56
could be one possibility of doing that.
Q. Are there no consulting firms capable of
doing the type of work that those employees did?
A. There may be. I didn't -- I didn't research
that.
12:00:16
Q. Did you think it might be better to have
someone independent rather than a partisan with a stake
in the matter doing these experiments?
MR. PETERS: Objection. Form.
THE WITNESS: I didn't really even make that 12:00:28
Page 81
judgment. It didn't strike me that this would be an
issue where partisanship or opinion would have much
bearing on it. What I believe those engineers have done
is modify the system in various ways that's easily
documented and run the system with certain measurements
12:00:49
afterwards. I think the results there are probably
concrete and can be evaluated objectively.
Q. BY MR. PAIGE: Did you design the experiments
conducted by Landau, Poore and Vandette?
A. I believe I did to a certain degree. That
12:01:10
is, the experiments are to the -- as far as I recall,
basically comparisons against the Android system or
components of it as it exists now versus some
modification. As far as I recall, those modifications
were modifications that I suggested.
12:01:36
Q. Okay. So you're the one who came up with the
actual modifications they implemented; is that right?
A. At some degree of detail, I believe so.
Q. Okay. You might not have done the actual low
level code, but you told them on a high level, "This is
12:01:52
what I'd like you to do in order to carry out this
experiment"?
A. I don't remember the exact, you know, wording
of the discussion, but I believe I handled it the same
way I would with a graduate student. I want them to feel 12:02:09
21 (Pages 78 to 81)
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invested and convinced that they're doing something
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that's correct. And I'm happy to listen to someone
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else's opinion if they think there's a better way to do
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something, but I believe that the actual experiments that
were carried out reflected my suggestions and requests on 12:02:28 5
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how to do it.
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Q. Was counsel for Oracle involved at all in
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designing the experiments?
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A. I don't believe so.
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Q. Were they generally on the phone with you
12:02:36
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when you would talk with these employees on the phone?
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A. As far as I recall, and there may be some
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instance that I've forgotten about, I believe all of
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the phone calls were from this office in an office -from a room in this office building with a speakerphone
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in the middle of the table. On many of those calls
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Peter Kessler from Oracle was present, and there may have
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been someone from the law firm as well.
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Q. Okay. And when you say this office building,
you mean Morrison & Foerster's office building here in
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Palo Alto?
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A. That's correct. The place we sit today, yep.
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Q. Okay. And Peter Kessler is not a lawyer;
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correct?
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A. That's correct. Peter Kessler is an Oracle
12:03:27
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engineer.
Q. Okay. What lawyers did participate in those
phone calls, to your recollection?
A. I don't know if participation is the right
characterization. There may have been lawyers present
12:03:39
just to set up the call or make the phone number -- make
the connection.
Q. Okay. So they didn't actually speak on any
of these calls that you had; is that right?
A. Well, I think they made an introduction. I
12:03:59
think that they -- I don't -- I didn't unilaterally
arrange or locate these employees. I don't know how they
were selected, so I was introduced to them by someone in
the firm. But from that point forward, the technical
discussion was under my control and direction.
12:04:19
Q. Okay. I'd like to focus in on the report by
Noel Poore. He did experiments on your behalf that
relate to the '520 and '702 patents; correct?
A. I believe that's correct.
Q. Okay. And his methodology -12:04:33
A. Uh-huh.
Q. -- was to take the DX tool that's found on
the Android website -A. Uh-huh.
Q. -- then run the DX tool with certain
12:04:40
modifications made to it and, thereby, estimate the
difference that the allegedly infringing functionality
made; right?
A. I believe that's a correct characterization.
Could I look at the report just to remind
12:04:57
myself what's in it and how he carried out his
experiments?
(Exhibit Google 420 was marked for
identification.)
THE WITNESS: I can read this further, but in 12:06:22
the interest of time, if you'd like to proceed.
Q. BY MR. PAIGE: I would like to proceed.
For the '702 patent he had three different
ways he estimated the effect of not using the allegedly
infringing functionality; right?
12:06:33
A. That's the way I remember it, and it's also
identified that way on page 304 of his report. He lists
methodology experiment one, experiment two, experiment
three.
Q. Okay. And the first methodology involved
12:06:54
modifying the DX tool in order to prevent it from
carrying out the allegedly infringing functionality of
moving duplicates; right?
A. Yes. That's what the report says in
paragraph 15.
12:07:06
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Q. Okay. And for the '520 patent, he had one
way of disabling the alleged play execution of static
arrays; right?
A. I can check to make sure if you'd like, but
that's also my recollection.
12:07:18
Q. Okay. So that way Mr. Poore could compare
what the size of the code looked like when the DX tool
allegedly play executed and what the size of the code
looked like when the DX tool did not use play execution;
right?
12:07:34
A. I believe that's the basic idea.
Q. Okay. And if you could turn to page 15 of
his report, the code following paragraph 65, that's what
Mr. Poore found when it was allegedly play executed;
correct?
12:07:56
A. I don't recall the exact context for this
paragraph. If you just give me a second, I'll look at
the page or so before just to remind myself what this is
saying.
Okay. I think I'm with you. I think that
12:09:22
what he means by normal execution is the unmodified DX
tool and its output.
Q. Okay. What you would consider the infringing
DX tool; correct?
A. That's correct.
12:09:35
22 (Pages 82 to 85)
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I declare under the penalty of perjury
2 under the laws of the State of California that the
3 foregoing is true and correct.
4
Executed on _____________________, 2011,
5 at _______________________, _____________________.
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___________________________________
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SIGNATURE OF THE WITNESS
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1
INDEX
2
3 TUESDAY, SEPTEMBER 6, 2011
4
5 WITNESS
EXAMINATION
6
7 JOHN C. MITCHELL, PH.D. Patent Issues Volume 1
8
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By Mr. Paige
5
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By Mr. Weingaertner
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STATE OF CALIFORNIA ) ss:
COUNTY OF MARIN
)
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I, LESLIE ROCKWOOD, CSR No. 3462, do hereby
4
certify:
5
That the foregoing deposition testimony was
6
taken before me at the time and place therein set forth
7
and at which time the witness was administered the oath;
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That testimony of the witness and all
9
objections made by counsel at the time of the examination
10
were recorded stenographically by me, and were thereafter
11
transcribed under my direction and supervision, and that
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the foregoing pages contain a full, true and accurate
13
record of all proceedings and testimony to the best of my
14
skill and ability.
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I further certify that I am neither counsel
16
for any party to said action, nor am I related to any
17
party to said action, nor am I in any way interested in
18
the outcome thereof.
19
IN WITNESS WHEREOF, I have subscribed my name 20
this 7th day of September, 2011.
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__________________________________
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LESLIE ROCKWOOD, RPR, CSR NO. 3462
25
Page 269
DEPOSITION EXHIBITS
JOHN C. MITCHELL, PH.D., VOLUME 1
NUMBER
DESCRIPTION
IDENTIFIED
Exhibit Google 418 U.S. Patent Number
31
6,061,520, 5/9/00
Exhibit Google 419 Opening Expert Report
42
of John C. Mitchell
Regarding Patent
Infringement, 8/8/11
Exhibit Google 420 Summary and Report of
84
Noel Poore, 8/6/11
Exhibit Google 421 Appendix A
87
Exhibit Google 422 Expert Report of Terence 128
Parr, Ph.D., Regarding the
Non-Infringement of U.S.
Patent No. 6.061,520,
8/25/11
Exhibit Google 423 Expert Report of Terence 134
Parr, Ph.D., Regarding
the Non-Infringement of
U.S. Patent No. 6,061,520
Exhibit Google 424 Reply Expert Report
138
of John C. Mitchell
Regarding Patent
Infringement, 9/1/11
68 (Pages 266 to 269)
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