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)

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KEKER & VAN NEST LLP
ROBERT A. VAN NEST - #84065
[e-mail]
CHRISTA M. ANDERSON - #184325
[e-mail]
633 Battery Street
San Francisco, CA 94111-1809
Telephone:
415.391.5400
Facsimile:
415.397.7188

KING & SPALDING LLP
DONALD F. ZIMMER, JR. - #112279
[e-mail]
CHERYL A. SABNIS - #224323
[e-mail]
101 Second St., Suite 2300
San Francisco, CA 94105
Tel: [phone]
Fax: [phone]

KING & SPALDING LLP
SCOTT T. WEINGAERTNER (Pro Hac Vice)
[e-mail]
ROBERT F. PERRY
[e-mail]
BRUCE W. BABER (Pro Hac Vice)
1185 Avenue of the Americas
New York, NY 10036
Tel: [phone]
Fax: [phone]

IAN C. BALLON - #141819
[e-mail]
HEATHER MEEKER - #172148
[e-mail]
GREENBERG TRAURIG, LLP
1900 University Avenue
East Palo Alto, CA 94303
Tel: [phone]
Fax: [phone]

Attorneys for Defendant
GOOGLE 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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Case No. 3:10-cv-03561-WHA

ORACLE AMERICA, INC.,
Plaintiff,

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v.

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GOOGLE INC.,

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Defendant.

GOOGLE’S OPPOSITION TO
ORACLE’S MOTION IN LIMINE NO. 3
TO PRECLUDE GOOGLE FROM
OFFERING EVIDENCE OR ARGUMENT
THAT THIRD-PARTY OEMS CHANGED
INFRINGING COMPONENTS OF
ANDROID
Judge:

Hon. William Alsup

Date Comp. Filed:

October 27, 2010

Trial Date:

October 31, 2011

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582868.01

GOOGLE’S OPPOSITION TO ORACLE’S MOTION IN LIMINE NO. 3
CASE NO. 3:10-cv-03561-WHA

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INTRODUCTION
Oracle’s Motion In Limine No. 3 (“Motion”) does not provide any basis to support the

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relief it seeks. Oracle argues that since Google does not know what specific portions of Android

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code were changed with respect to third parties’ accused products, Google should be precluded

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from challenging Oracle’s assumptions and conclusory expert opinions regarding third parties’

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use of allegedly-infringing Android code. Oracle’s request is really a disguised attempt to

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relieve it of the burden of proving patent infringement, including the burden to prove that

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accused third party devices actually contain and execute the particular Android code that Oracle

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alleges to infringe the asserted patents. Oracle had the opportunity to collect the relevant

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evidence during discovery (such as by obtaining discovery from third party device

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manufacturers), but failed to do so. Oracle’s subsequent inability to support its indirect

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infringement allegations at trial is a problem wholly of its own making, and Google is well

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within its rights to highlight that failure.

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DISCUSSION
I.

Google Informed Oracle that Third Parties Make Significant Changes to Android
Google has been abundantly clear and consistent that: (1) third parties modify Android

source code, and (2) it does not have information about the specific changes.

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Early in discovery, Google informed Oracle that it did not have information about what

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code was installed on third party devices, and that Oracle would have to seek such information

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directly from those third parties in order to support its indirect infringement claims. (See, e.g.,

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Mullen Decl. Ex. 2, March 2, 2011 letter from S. Weingaertner to M. Peters.) Google’s response

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to Oracle Interrogatory No. 21 confirmed that “[a]ny third party may freely modify Android

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source code…” (Motion, Ex. I at 11.) and Google employee Patrick Brady testified at deposition

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that third party manufacturers of accused devices (e.g., Samsung and HTC) made “extensive

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changes” to the Android code. (Mullen Decl. Ex. 3, July 21, 2011 Brady Dep. at 20:14-21;

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43:22-25.) Mr. Brady testified that the changes particularly included the code implementing the

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GOOGLE’S OPPOSITION TO ORACLE’S MOTION IN LIMINE NO. 3
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accused Dalvik Virtual Machine.1 (Id. at 44:7-12; 77:25-78:4.) Google showed all its cards and

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hid nothing.
Having been aware of this issue since early in discovery, Oracle could (and should) have

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obtained the HTC and Samsung versions of Android source code via subpoena, or taken

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depositions of HTC and Samsung employees regarding their modifications to Android code.

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Oracle did neither. It appears that Oracle did not even bother to purchase the accused devices at

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the outset of the case to determine how they operate. As a result, Oracle simply failed to – and

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indeed declined to – collect any reliable evidence that the accused third party devices contain and

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execute the accused Android code.

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II.

Oracle Bears The Burden to Proof
It is not Google’s burden to prove that the accused devices do not utilize the allegedly

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infringing Android source code, rather, it is Oracle’s burden to prove that each accused device

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utilizes the allegedly infringing code. See DSU Medical Corp. v. JMS Co., Ltd., 471 F.3d 1293,

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1303 (Fed. Cir. 2006) (“the patentee always has the burden to show direct infringement for each

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instance of indirect infringement.” (emphasis added, citations omitted); Fujitsu Ltd. v. Belkin

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Intern., Inc., --- F. Supp. 2d ----, 2011 WL 1196417 (N.D. Cal. 2011) (“As with induced

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infringement, a plaintiff must also show direct infringement by a third party in order to succeed

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on a claim of contributory infringement.” (citing Anton/Bauer, Inc. v. PAG, Ltd., 329 F.3d 1343,

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1349 (Fed. Cir. 2003) (holding that the plaintiff must prove that the end users directly infringed

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its patent in order to succeed on its claim of contributory infringement))).

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Oracle largely failed to provide infringement contentions, expert reports or any other

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evidence to support all of its indirect infringement allegations. For example, Oracle’s expert

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report on patent infringement only addresses indirect infringement allegations with respect to just

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three of the devices identified in Oracle’s infringement contentions (the HTC Nexus One, HTC

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Nexus S, and Samsung Captivate). (See Mullen Decl. Ex. 4, Mitchell Report at ¶ 195; Mullen

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Oracle’s suggestion that Google should have inserted Mr. Brady’s testimony into its
interrogatory response (Motion at 4) is entirely without merit, as Rule 26(e) explicitly provides
that a party need not supplement interrogatory responses with information otherwise made
known to the other party during the discovery process. Oracle certainly did not insert of all its
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Decl. Ex. 5, ICs at § I.B.) Thus, Oracle has no evidence (to present at trial) of indirect

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infringement with respect to any other devices. And even with respect to the three devices

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addressed in Oracle’s expert report, the expert based his opinions upon unreliable circumstantial

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evidence and presumptions that have been challenged in Google’s expert rebuttal reports.2

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III.

Google Is Entitled To Challenge Oracle’s Arguments
Google does not challenge the case law cited in Oracle’s Motion and agrees that parties

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are generally not permitted to show up at trial with new information that was not disclosed

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during discovery. But the issue here is very different because Oracle wants to show up at trial

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without evidence of indirect infringement, offer up whatever argument it can muster (however

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questionable), and then preclude Google from challenging any of Oracle’s positions so it can

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evade its burden of proof. Oracle does not dispute the fact that third parties modify Android’s

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source code before installing it in their devices. And neither party knows what particular

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changes were made to the Android code before it was installed in the accused third party devices.

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Simply based on the fact that Google does not know exactly how third parties have

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modified the accused portions of Android source code, Oracle asks the Court to now preclude

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Google “from offering any argument or evidence at trial that OEMs made changes to the

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infringing components of the Android code installed on their devices.” (Motion at 5.) Oracle’s

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position is untenable. Indeed, under this logic, Oracle should be equally barred from offering

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any argument or evidence at trial that OEMs use Google’s version of allegedly infringing

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Android code because Oracle has failed to present any evidence that third parties did not modify

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those portions of code. Moreover, if Oracle’s position was indeed the law, every defendant that

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denies knowledge of indirect patent infringement would be precluded from presenting a defense

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at trial.

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employees’ deposition testimony into its own interrogatory responses.
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Google also notes that the goal of Oracle’s Motion seems altogether pointless. According to
the Supreme Court in Global-Tech Appliances, Inc. v. SEB S.A., 131 S.Ct. 2060, 2068-69 (2011),
a plaintiff must show that the alleged infringer had knowledge of the patent at issue and
knowledge that the third party product infringed on that patent to prove a claim for contributory
infringement (35 U.S.C. § 271(b)) or inducement (§ 271(c)). Oracle has no evidence for either
requirement, and its motion clearly recognizes as much with respect to the latter.
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IV.

A Motion in Limine is Inappropriate for the Relief Oracle Seeks

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If Oracle’s position is that Google has no facts or evidence to counter its indirect

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infringement claims, the proper approach would have been to move for summary judgment, not

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raise it as a motion in limine. See Order (Dkt. No. 384) (The motions in limine must be directed

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at excluding specific items of evidence; categorical motions and disguised summary judgment

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motions are highly disfavored”); see also Carpenter v. Forest Meadows Owners Ass’n, No. 09-

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cv-01918, 2011 U.S. Dist. LEXIS 82295 at *2 (E.D. Cal. July 26, 2011) (citing C & E Services,

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Inc. v. Ashland Inc., 539 F. Supp. 2d 316, 323 (D. D.C. 2008) (a motion in limine should not be

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used as a substitute for a motion for summary judgment)). Oracle’s requested relief is

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inappropriate because “a motion in limine should not be used to resolve factual disputes or

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weigh evidence.” Id. (quoting C & E Services, 539 F. Supp. 2d at 323).

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Motions in limine are generally intended for excluding inadmissible or prejudicial

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evidence before it is actually offered at trial. See Luce v. United States, 469 U.S. 38, 40 n. 2

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(1984); see also Brodit v. Cabra, 350 F.3d 985, 1004–05 (9th Cir. 2003). Oracle does not argue

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that any particular Google argument or evidence is inadmissible or prejudicial, and in regard to

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other disputes, “[c]ourts have recognized that it is almost always better situated during the actual

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trial to assess the value and utility of evidence.” Carpenter, 2011 U.S. Dist. LEXIS 82295 at *1

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(citing cases).

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To the extent that Oracle presents its case based on conclusory expert opinions,

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presumptions and speculations, Google should be fully entitled to challenge that house of cards

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at trial, and Oracle has no legal basis to preclude Google from doing so. In filing this motion,

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Oracle concedes that it has a serious evidentiary issue with respect to its indirect infringement

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case, namely as a result of its fatal failure to obtain sufficient third party evidence during

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discovery. Oracle’s Motion is simply a desperate attempt to prevent Google from pointing out

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these glaring deficiencies at trial and should be denied.

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GOOGLE’S OPPOSITION TO ORACLE’S MOTION IN LIMINE NO. 3
CASE NO. 3:10-cv-03561-WHA

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Respectfully submitted,

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Dated: October 4, 2011

KEKER & VAN NEST LLP
By: s/ Robert A. Van Nest
ROBERT A. VAN NEST
Attorneys for Defendant
GOOGLE INC.

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582868.01

GOOGLE’S OPPOSITION TO ORACLE’S MOTION IN LIMINE NO. 3
CASE NO. 3:10-cv-03561-WHA