Oracle America, Inc. v. Google Inc.

Filing 500

Third MOTION in Limine to Preclude Google from Offering Evidence or Argument That Third-Party OEMs Changed Infringing Components of Android (MIL No. 3) filed by Oracle America, Inc.. Motion Hearing set for 10/24/2011 02:00 PM in Courtroom 8, 19th Floor, San Francisco before Hon. William Alsup. Responses due by 10/21/2011. Replies due by 10/28/2011. (Attachments: #1 Google Opposition)(Muino, Daniel) (Filed on 10/7/2011)

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17

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.

18

UNITED STATES DISTRICT COURT

19

NORTHERN DISTRICT OF CALIFORNIA

20

SAN FRANCISCO DIVISION

21

ORACLE AMERICA, INC.

22

Plaintiff,

23

v.

24

GOOGLE INC.

25
26
27

Defendant.

Case No. CV 10-03561 WHA
ORACLE AMERICA, INC.’S
MOTION IN LIMINE NO. 3 TO
PRECLUDE GOOGLE FROM
OFFERING EVIDENCE OR
ARGUMENT THAT THIRD-PARTY
OEMS CHANGED INFRINGING
COMPONENTS OF ANDROID
Dept: Courtroom 8, 19th Floor
Judge: Honorable William H. Alsup

28
ORACLE MOTION IN LIMINE NO. 3 TO PRECLUDE GOOGLE FROM OFFERING EVIDENCE OR ARGUMENT THAT
OEMS CHANGED INFRINGING COMPONENTS OF ANDROID
CASE NO. CV 10-03561 WHA
pa-1487213

1

Oracle moves the Court to preclude Google from offering argument or evidence at trial

2

that any changes were made to the infringing components of the Android source code by third

3

party original equipment manufacturers (OEMs). Throughout this litigation, Google has

4

steadfastly denied knowledge of any modifications made by OEMs to the infringing components

5

of Android: (1) In response to Oracle’s Interrogatory 21, Google stated that it had “no direct,

6

specific knowledge with regard to how third parties modify the accused Android source code and

7

documentation”; and (2) Google’s corporate designee, Patrick Brady, testified that he did not

8

know for certain, one way or the other, whether OEMs had changed the infringing components of

9

Android installed on Android devices. Having disclaimed any knowledge of OEM changes to the

10

infringing components, Google should be barred from offering any evidence or argument on that

11

subject at trial.

12

I.

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

GOOGLE HAS DENIED KNOWLEDGE OF OEM CHANGES TO THE
INFRINGING COMPONENTS OF ANDROID
Oracle accuses the Android platform of infringing the patents-in-suit through several key

platform components: (1) the Dalvik virtual machine, (2) the dexopt component, (3) the zygote
process, (4) the dx tool, and (5) Android’s java.security framework (collectively, the “infringing
components”). Through an interrogatory (No. 21) and a Rule 30(b)(6) deposition topic (No. 7),
Oracle sought discovery from Google regarding its knowledge of any modifications made by
third parties to the infringing components of Android. In its interrogatory answer and through the
testimony of its corporate designee, Google flatly denied any specific knowledge of whether or
not OEMs modify the infringing components of Android to be installed on their Android devices.
Instead, Google insisted that OEMs “may freely modify Android source code subject to the terms
of [the Apache License],” presumably without Google’s knowledge or oversight.
Google’s Response to Oracle’s Interrogatory 21: Oracle’s Interrogatory 21 asked Google
to “[i]dentify and describe in detail each modification made by third parties to the allegedly
infringing portions of Android source code and documentation identified by Oracle’s copyright
and patent infringement contentions, including the author of, date of, and basis for each such
modification.” (Declaration of Daniel P. Muino in Support of Oracle America, Inc.’s Motions In
ORACLE MOTION IN LIMINE NO. 3 TO PRECLUDE GOOGLE FROM OFFERING EVIDENCE OR ARGUMENT THAT
OEMS CHANGED INFRINGING COMPONENTS OF ANDROID
CASE NO. CV 10-03561 WHA
pa-1487213

1

1

Limine Nos. 1 Through 5 (“Muino Decl.”), Exhibit I, Defendant Google, Inc.’s Responses to

2

Plaintiff’s Interrogatories, Set Four, at 10.) On July 29, 2011, Google responded as follows:

3
4
5
6
7
8
9
10
11
12
13
14
15
16

Subject to the foregoing objections and the General Objections,
without waiver or limitation thereof, Google states that it has no
direct, specific knowledge with regard to how third parties modify
the accused Android source code and documentation. Google
releases Android source code to the public under the open source
Apache License, Version 2.0. Any third party may freely modify
Android source code subject to the terms of this license.
Id. at 11 (Google’s objections omitted). To date, Google has not supplemented this response.
Testimony of Google’s Corporate Designee, Patrick Brady: Topic 7 of Oracle’s Rule
30(b)(6) deposition notice to Google sought testimony regarding “[m]odifications made by third
parties to the allegedly-infringing portions of Android identified by Oracle’s copyright and patent
infringement contentions, including the author of, date of, and basis for each such modification.”
(Muino Decl. Exhibit J, Plaintiff’s Notice of Deposition of Defendant Google Inc. Pursuant to
Fed. R. Civ. P. 30(b)(6), Topics 4-9.)
On July 21, 2011, Oracle took the deposition of Google’s corporate designee on Topic 7,
Patrick Brady, Director of Android Partner Engineering.

17
18
19
20
21
22
23
24
25
26
27
28
ORACLE MOTION IN LIMINE NO. 3 TO PRECLUDE GOOGLE FROM OFFERING EVIDENCE OR ARGUMENT THAT
OEMS CHANGED INFRINGING COMPONENTS OF ANDROID
CASE NO. CV 10-03561 WHA
pa-1487213

2

1
2
3
4
5
6

But Mr. Brady

7

could not say for certain that changes had been made to the Dalvik virtual machine in that device,

8

and had no knowledge of the specifics of any such changes.

9

II.

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

GOOGLE SHOULD BE PRECLUDED FROM OFFERING EVIDENCE OR
ARGUMENT ON OEM CHANGES TO INFRINGING ANDROID COMPONENTS
This Court has previously ruled that, with respect to evidence admissible at trial, parties

“will be held to their discovery answers.” Doe v. Reddy, No. C 02-05570 WHA, 2004 U.S. Dist.
LEXIS 30792, *14-15 (N.D. Cal. Mar. 24, 2004) (Alsup, J.). In Doe v. Reddy, the Court granted
a motion in limine precluding defendant (accused of sexual relations with an underage girl) from
suggesting at trial that plaintiffs (the girl’s parents) knew about the sexual relations. Id. The
Court noted that defendant’s interrogatory responses had identified no evidence regarding
parental knowledge of the sexual relations. Id. While the response did refer to certain deposition
testimony, that testimony did not establish parental knowledge. Id. Accordingly, the Court ruled
that “Defendants will be held to their discovery answers” and “at trial no suggestion will be made
that the parents knew of the sexual relations.” Id.
Other courts in the 9th Circuit have followed this principle, limiting evidence admissible
at trial to what is disclosed in discovery. See Service Employees Int’l Union (“SEIU”) v. Roselli,
No. C 09-00404 WHA, 2010 WL 963707, at *5 (N.D. Cal. Mar. 16, 2010) (granting motion in
limine to exclude evidence based on defendant’s refusal to provide discovery on that evidence);
Tech. Licensing Corp. v. Thomson, Inc., No. CIV. S-03-1329 , 2005 U.S. Dist. LEXIS 24239, at
*16-17 (E.D. Cal. June 30, 2005) (limiting evidence at trial to information disclosed in response

26
to interrogatory). In the SEIU case, this Court granted a motion in limine to exclude evidence
27
regarding certain activities aimed at obtaining workers’ signatures, on the grounds that defendants
28
ORACLE MOTION IN LIMINE NO. 3 TO PRECLUDE GOOGLE FROM OFFERING EVIDENCE OR ARGUMENT THAT
OEMS CHANGED INFRINGING COMPONENTS OF ANDROID
CASE NO. CV 10-03561 WHA
pa-1487213

3

1

refused to answer questions about those activities during discovery. SEIU, 2010 WL 963707, at

2

*5. The Court observed, “having avoided disclosing in discovery the materials sought by

3

plaintiffs regarding defendants’ post-trusteeship activities on grounds of relevancy, it would be

4

unfair sandbagging to allow defendants to now assert those same materials as a defense to

5

plaintiffs’ claims.” Id.

6

In this case, Google’s interrogatory response disclaimed any specific knowledge of OEM

7

modifications of Android code. Although Google’s response was served after the deposition of

8

Mr. Brady on Topic 7, Google did not incorporate Mr. Brady’s testimony into its response. So

9

Google has disclosed nothing at all in response to Oracle’s interrogatory regarding OEM changes

10

to Android. Accordingly, Google should be precluded from suggesting at trial that OEMs

11

changed the infringing components of Android, since it disclosed no evidence on this subject in

12

its interrogatory response. Doe v. Reddy, 2004 U.S. Dist. LEXIS 30792, at *14.

13

Furthermore, even if Mr. Brady’s testimony were counted as disclosure on this subject, he

14

too disclaimed specific knowledge of OEM modifications to the infringing components of

15

Android.

16
17
18
19
20
21
22
23

Mr. Brady’s testimony provides no basis for Google to argue that OEMs made changes to
the infringing components of Android.
The preclusion of argument and evidence regarding OEM changes to Android should

24

extend to Google’s experts, who should not be permitted to speculate regarding modifications to

25

the Android code without a factual basis. For instance, Google’s expert, David August, stated in

26

his report that “device manufacturers often modify the source code.” (Muino Decl. Exhibit L

27

¶ 108 (Expert Report of David I. August, Ph.D. Regarding the Non-Infringement of U.S. Patent

28

No. 6,910,205).) Yet, Mr. August offered no basis for this statement other than an excerpt from

ORACLE MOTION IN LIMINE NO. 3 TO PRECLUDE GOOGLE FROM OFFERING EVIDENCE OR ARGUMENT THAT
OEMS CHANGED INFRINGING COMPONENTS OF ANDROID
CASE NO. CV 10-03561 WHA
pa-1487213

4

1

the deposition of Mr. Brady.1 (Id. Ex. M at 131:2-9.) While Mr. Brady did testify regarding

2

certain OEM changes to the Android code in general, he disclaimed any specific knowledge of

3

OEM changes to the infringing components of Android. Accordingly, Mr. Brady’s testimony

4

provides no basis on which Mr. August, or any other Google expert, may opine on purported

5

OEM changes to the Android code.

6

III.

7

CONCLUSION
For the foregoing reasons, Oracle requests that the Court preclude Google, its attorneys,

8

witnesses, and experts, from offering any argument or evidence at trial that OEMs made changes

9

to the infringing components of the Android code installed on their devices.

10
11

Dated: September 24, 2011

12

MICHAEL A. JACOBS
MARC DAVID PETERS
DANIEL P. MUINO
MORRISON & FOERSTER LLP

13
By: /s/ Daniel P. Muino

14
15

Attorneys for Plaintiff
ORACLE AMERICA, INC.

16
17
18
19
20
21
22
23
24
25
1

26
27

Mr. August acknowledged that he has not examined any third party devices, nor has he
conducted any research into how third party manufacturers might modify the source code.
(Muino Decl. Exhibit M at 128:10-129:4, 130:10-19 (September 16, 2011 Deposition of David I.
August).)

28
ORACLE MOTION IN LIMINE NO. 3 TO PRECLUDE GOOGLE FROM OFFERING EVIDENCE OR ARGUMENT THAT
OEMS CHANGED INFRINGING COMPONENTS OF ANDROID
CASE NO. CV 10-03561 WHA
pa-1487213

5