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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1 2 3 4 5 6 7 8 9 10 11 12 13 14 KEKER & VAN NEST LLP ROBERT A. VAN NEST - #84065 CHRISTA M. ANDERSON - #184325 633 Battery Street San Francisco, CA 94111-1809 Telephone: 415.391.5400 Facsimile: 415.397.7188 KING & SPALDING LLP DONALD F. ZIMMER, JR. - #112279 CHERYL A. SABNIS - #224323 101 Second St., Suite 2300 San Francisco, CA 94105 Tel: 415.318.1200 Fax: 415.318.1300 KING & SPALDING LLP SCOTT T. WEINGAERTNER (Pro Hac Vice) ROBERT F. PERRY BRUCE W. BABER (Pro Hac Vice) 1185 Avenue of the Americas New York, NY 10036 Tel: 212.556.2100 Fax: 212.556.2222 IAN C. BALLON - #141819 HEATHER MEEKER - #172148 GREENBERG TRAURIG, LLP 1900 University Avenue East Palo Alto, CA 94303 Tel: 650.328.8500 Fax: 650.328-8508 Attorneys for Defendant GOOGLE INC. 15 UNITED STATES DISTRICT COURT 16 NORTHERN DISTRICT OF CALIFORNIA 17 SAN FRANCISCO DIVISION 18 19 Case No. 3:10-cv-03561-WHA ORACLE AMERICA, INC., Plaintiff, 20 21 v. 22 GOOGLE INC., 23 24 25 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 26 27 28 582868.01 GOOGLE’S OPPOSITION TO ORACLE’S MOTION IN LIMINE NO. 3 CASE NO. 3:10-cv-03561-WHA 1 INTRODUCTION Oracle’s Motion In Limine No. 3 (“Motion”) does not provide any basis to support the 2 3 relief it seeks. Oracle argues that since Google does not know what specific portions of Android 4 code were changed with respect to third parties’ accused products, Google should be precluded 5 from challenging Oracle’s assumptions and conclusory expert opinions regarding third parties’ 6 use of allegedly-infringing Android code. Oracle’s request is really a disguised attempt to 7 relieve it of the burden of proving patent infringement, including the burden to prove that 8 accused third party devices actually contain and execute the particular Android code that Oracle 9 alleges to infringe the asserted patents. Oracle had the opportunity to collect the relevant 10 evidence during discovery (such as by obtaining discovery from third party device 11 manufacturers), but failed to do so. Oracle’s subsequent inability to support its indirect 12 infringement allegations at trial is a problem wholly of its own making, and Google is well 13 within its rights to highlight that failure. 14 15 16 17 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. 18 Early in discovery, Google informed Oracle that it did not have information about what 19 code was installed on third party devices, and that Oracle would have to seek such information 20 directly from those third parties in order to support its indirect infringement claims. (See, e.g., 21 Mullen Decl. Ex. 2, March 2, 2011 letter from S. Weingaertner to M. Peters.) Google’s response 22 to Oracle Interrogatory No. 21 confirmed that “[a]ny third party may freely modify Android 23 source code…” (Motion, Ex. I at 11.) and Google employee Patrick Brady testified at deposition 24 that third party manufacturers of accused devices (e.g., Samsung and HTC) made “extensive 25 changes” to the Android code. (Mullen Decl. Ex. 3, July 21, 2011 Brady Dep. at 20:14-21; 26 43:22-25.) Mr. Brady testified that the changes particularly included the code implementing the 27 28 1 582868.01 GOOGLE’S OPPOSITION TO ORACLE’S MOTION IN LIMINE NO. 3 CASE NO. 3:10-cv-03561-WHA 1 accused Dalvik Virtual Machine.1 (Id. at 44:7-12; 77:25-78:4.) Google showed all its cards and 2 hid nothing. Having been aware of this issue since early in discovery, Oracle could (and should) have 3 4 obtained the HTC and Samsung versions of Android source code via subpoena, or taken 5 depositions of HTC and Samsung employees regarding their modifications to Android code. 6 Oracle did neither. It appears that Oracle did not even bother to purchase the accused devices at 7 the outset of the case to determine how they operate. As a result, Oracle simply failed to – and 8 indeed declined to – collect any reliable evidence that the accused third party devices contain and 9 execute the accused Android code. 10 II. Oracle Bears The Burden to Proof It is not Google’s burden to prove that the accused devices do not utilize the allegedly 11 12 infringing Android source code, rather, it is Oracle’s burden to prove that each accused device 13 utilizes the allegedly infringing code. See DSU Medical Corp. v. JMS Co., Ltd., 471 F.3d 1293, 14 1303 (Fed. Cir. 2006) (“the patentee always has the burden to show direct infringement for each 15 instance of indirect infringement.” (emphasis added, citations omitted); Fujitsu Ltd. v. Belkin 16 Intern., Inc., --- F. Supp. 2d ----, 2011 WL 1196417 (N.D. Cal. 2011) (“As with induced 17 infringement, a plaintiff must also show direct infringement by a third party in order to succeed 18 on a claim of contributory infringement.” (citing Anton/Bauer, Inc. v. PAG, Ltd., 329 F.3d 1343, 19 1349 (Fed. Cir. 2003) (holding that the plaintiff must prove that the end users directly infringed 20 its patent in order to succeed on its claim of contributory infringement))). 21 Oracle largely failed to provide infringement contentions, expert reports or any other 22 evidence to support all of its indirect infringement allegations. For example, Oracle’s expert 23 report on patent infringement only addresses indirect infringement allegations with respect to just 24 three of the devices identified in Oracle’s infringement contentions (the HTC Nexus One, HTC 25 Nexus S, and Samsung Captivate). (See Mullen Decl. Ex. 4, Mitchell Report at ¶ 195; Mullen 26 27 28 1 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 2 582868.01 GOOGLE’S OPPOSITION TO ORACLE’S MOTION IN LIMINE NO. 3 CASE NO. 3:10-cv-03561-WHA 1 Decl. Ex. 5, ICs at § I.B.) Thus, Oracle has no evidence (to present at trial) of indirect 2 infringement with respect to any other devices. And even with respect to the three devices 3 addressed in Oracle’s expert report, the expert based his opinions upon unreliable circumstantial 4 evidence and presumptions that have been challenged in Google’s expert rebuttal reports.2 5 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 6 7 are generally not permitted to show up at trial with new information that was not disclosed 8 during discovery. But the issue here is very different because Oracle wants to show up at trial 9 without evidence of indirect infringement, offer up whatever argument it can muster (however 10 questionable), and then preclude Google from challenging any of Oracle’s positions so it can 11 evade its burden of proof. Oracle does not dispute the fact that third parties modify Android’s 12 source code before installing it in their devices. And neither party knows what particular 13 changes were made to the Android code before it was installed in the accused third party devices. 14 Simply based on the fact that Google does not know exactly how third parties have 15 modified the accused portions of Android source code, Oracle asks the Court to now preclude 16 Google “from offering any argument or evidence at trial that OEMs made changes to the 17 infringing components of the Android code installed on their devices.” (Motion at 5.) Oracle’s 18 position is untenable. Indeed, under this logic, Oracle should be equally barred from offering 19 any argument or evidence at trial that OEMs use Google’s version of allegedly infringing 20 Android code because Oracle has failed to present any evidence that third parties did not modify 21 those portions of code. Moreover, if Oracle’s position was indeed the law, every defendant that 22 denies knowledge of indirect patent infringement would be precluded from presenting a defense 23 at trial. 24 25 26 27 28 employees’ deposition testimony into its own interrogatory responses. 2 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. 3 582868.01 GOOGLE’S OPPOSITION TO ORACLE’S MOTION IN LIMINE NO. 3 CASE NO. 3:10-cv-03561-WHA 1 IV. A Motion in Limine is Inappropriate for the Relief Oracle Seeks 2 If Oracle’s position is that Google has no facts or evidence to counter its indirect 3 infringement claims, the proper approach would have been to move for summary judgment, not 4 raise it as a motion in limine. See Order (Dkt. No. 384) (The motions in limine must be directed 5 at excluding specific items of evidence; categorical motions and disguised summary judgment 6 motions are highly disfavored”); see also Carpenter v. Forest Meadows Owners Ass’n, No. 09- 7 cv-01918, 2011 U.S. Dist. LEXIS 82295 at *2 (E.D. Cal. July 26, 2011) (citing C & E Services, 8 Inc. v. Ashland Inc., 539 F. Supp. 2d 316, 323 (D. D.C. 2008) (a motion in limine should not be 9 used as a substitute for a motion for summary judgment)). Oracle’s requested relief is 10 inappropriate because “a motion in limine should not be used to resolve factual disputes or 11 weigh evidence.” Id. (quoting C & E Services, 539 F. Supp. 2d at 323). 12 Motions in limine are generally intended for excluding inadmissible or prejudicial 13 evidence before it is actually offered at trial. See Luce v. United States, 469 U.S. 38, 40 n. 2 14 (1984); see also Brodit v. Cabra, 350 F.3d 985, 1004–05 (9th Cir. 2003). Oracle does not argue 15 that any particular Google argument or evidence is inadmissible or prejudicial, and in regard to 16 other disputes, “[c]ourts have recognized that it is almost always better situated during the actual 17 trial to assess the value and utility of evidence.” Carpenter, 2011 U.S. Dist. LEXIS 82295 at *1 18 (citing cases). 19 * * * 20 To the extent that Oracle presents its case based on conclusory expert opinions, 21 presumptions and speculations, Google should be fully entitled to challenge that house of cards 22 at trial, and Oracle has no legal basis to preclude Google from doing so. In filing this motion, 23 Oracle concedes that it has a serious evidentiary issue with respect to its indirect infringement 24 case, namely as a result of its fatal failure to obtain sufficient third party evidence during 25 discovery. Oracle’s Motion is simply a desperate attempt to prevent Google from pointing out 26 these glaring deficiencies at trial and should be denied. 27 28 4 582868.01 GOOGLE’S OPPOSITION TO ORACLE’S MOTION IN LIMINE NO. 3 CASE NO. 3:10-cv-03561-WHA 1 Respectfully submitted, 2 3 4 5 6 Dated: October 4, 2011 KEKER & VAN NEST LLP By: s/ Robert A. Van Nest ROBERT A. VAN NEST Attorneys for Defendant GOOGLE INC. 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 5 582868.01 GOOGLE’S OPPOSITION TO ORACLE’S MOTION IN LIMINE NO. 3 CASE NO. 3:10-cv-03561-WHA

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