Oracle America, Inc. v. Google Inc.

Filing 502

Fifth MOTION in Limine to Exclude Evidence and Argument Contrary to Statements in Tim Lindholm's August 6, 2010 Email (MIL No. 5) 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]

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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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GOOGLE’S OPPOSITION TO
ORACLE’S MOTION IN LIMINE NO. 5
TO EXCLUDE EVIDENCE AND
ARGUMENT CONTRARY TO
STATEMENTS IN TIM LINDHOLM’S
AUGUST 6, 2010 EMAIL

Defendant.
Judge:

Hon. William Alsup

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Date Comp. Filed:

October 27, 2010

Trial Date:

October 31, 2011

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582744.01

GOOGLE’S OPPOSITION TO ORACLE’S MOTION IN LIMINE NO. 5
CASE NO. 3:10-cv-03561-WHA

I.

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INTRODUCTION

Oracle’s motion is the latest—and the most frivolous and overreaching—example of its

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improper attempts to capitalize on Google’s inadvertent production of a privileged email.

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Oracle’s motion starts out citing general law precluding a party from asserting privilege as to

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communications during discovery and then testifying about those same communications during

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trial. Yet, the motion then quickly morphs into an improper and untimely motion for summary

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judgment on liability and the purported nonexistence of non-infringing alternatives to the

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patents-in-suit. This motion in limine should be denied both because it is without support in law

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or in fact and because it is an untimely and improper summary-judgment motion—exactly the

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sort of motion the Court specifically instructed the parties not to bring.

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The Lindholm email, as it has come to be known in various pleadings before this Court,

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is a communication whose author and addressee both have sworn was prepared pursuant to and

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as a part of an investigation directed by Google’s counsel in response to patent litigation threats

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first made by Oracle on July 20, 2010. It is a bedrock example of a privileged communication

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between a Google employee and a Google lawyer.1 For the reasons detailed in Google’s Motion

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for Relief from Nondispositive Pretrial Order of Magistrate Judge (Dkt. No. 441), the Court

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should sustain Google’s objections to Magistrate Judge Ryu’s order holding the document to be

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non-privileged and ordering Google to produce it. The Court should also preclude Oracle from

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making any use of the document or its contents in this case.

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But regardless of how the Court comes out on that issue, there is no support in either law

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or logic for Oracle’s motion in limine, which attempts to bootstrap Magistrate Judge Ryu’s

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erroneous ruling into a purported basis to block Google from even “contesting” that it needed a

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license to the patents-in-suit or had non-infringing alternatives to those patents at any time—

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absolutely central issues in this case. In short, Oracle has asked for summary judgment on these

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issues, all as some kind of punishment for Google asserting privilege objections over a document

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concerning an internal legal investigation of the very claims at issue in this lawsuit.

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Because the facts surrounding the Lindholm email and the parties’ positions on its privileged
status have been briefed repeatedly in this Court (Dkt. Nos. 277, 418, 429, 441, 467, and 472),
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582744.01

GOOGLE’S OPPOSITION TO ORACLE’S MOTION IN LIMINE NO. 5
CASE NO. 3:10-cv-03561-WHA

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Neither Magistrate Judge Ryu’s discovery order nor Google’s privilege objections at Mr.

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Lindholm’s deposition provide any support for the relief sought in Oracle’s motion. Magistrate

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Judge Ryu made clear that she concluded only that the Lindholm email itself had not been

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proven to be privileged. She expressly stated that she made no finding whatsoever as to whether

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Google’s investigation or communications related to that investigation were privileged.

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Declaration of Reid Mullen in Support of Google Inc.’s Opposition to Oracle America Inc.’s

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Motions in Limine (“Mullen Decl.”) Ex. 9 (8/25/2011 Hearing Tr.) at 24:3-12. Her express

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statement to this effect is unsurprising, as Google submitted sworn declarations to this Court

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establishing that Google’s lawyers did conduct a privileged investigation in anticipation of

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potential litigation following Oracle’s July 20, 2010 threat to file this very lawsuit. Therefore,

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Google’s assertion of privilege concerning the details of that investigation and the privileged

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communications leading up to the Lindholm email was 100% proper. It gives Oracle no basis to

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demand any relief, much less the extraordinary issue sanction it seeks in its motion in limine,

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which should be denied.
II.

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Oracle’s so-called motion in limine is actually an improper motion for summary
judgment concerning the core questions of liability and availability of noninfringing alternatives, and should be denied outright.

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At the outset, Oracle’s motion should be recognized for what it is—an improper motion

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A.

ARGUMENT

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for summary judgment concerning two of the core issues in this case. Specifically, Oracle seeks

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an order “preclud[ing] [Google] from contesting” that it (1) “needed a license for Java generally

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and for each and every one of the patents-in-suit;” or (2) “had no viable alternatives to the

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patents-in-suit.” Oracle further asks the Court to decree that Mr. Lindholm had “thoroughly

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investigated all alternatives to the seven patents-in-suit, and Java generally” and that Mr.

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Lindholm’s statements about the availability of alternatives “were true.” Oracle Mot.. at 3:10-

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This is exactly the kind of “categorical motions and disguised summary judgment

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Google merely references those facts to the Court and does not repeat all of them here.
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GOOGLE’S OPPOSITION TO ORACLE’S MOTION IN LIMINE NO. 5
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motions” that this Court unambiguously told the parties they could not bring. Order re Pretrial

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Filings (Dkt No. 384) at ¶ 17-18. A motion seeking to preclude Google from contesting that it

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needed a license to the patents-in-suit or had non-infringing alternatives to those patents seeks

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partial summary judgment of discrete liability and damages issues. It is not a proper motion in

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limine.
Furthermore, even if it were proper to bring a motion for summary judgment at this late

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stage (and it is not given that the deadline for such motions has long passed and Oracle submitted

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no précis letter asking permission to file one), this motion for summary judgment is baseless.

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Specifically, governing law requires that a plaintiff seeking summary judgment on such central

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issues would have to present evidence that: “‘the pleadings, depositions, answers to

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interrogatories, and admissions on file, together with affidavits, if any’” demonstrate the absence

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of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986) (quoting

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Fed. R. Civ. P. 56(a)). Oracle has not even attempted to meet this burden.
Accordingly, this motion should be denied as it is an improper motion for summary

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judgment, filed without the Court’s permission, filed after the deadline for such motions, and

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filed without any of the requisite support for such a motion.

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B.

Even if this were a proper motion in limine (and it is not), it should be denied as it is
unsupported by law, fact, or logic.

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The fundamental premise of Oracle’s motion is that Google’s privilege assertions, during
the deposition of Mr. Lindholm, regarding the internal Google investigation that led up to the
Lindholm email is sanctionable behavior. Oracle makes this argument even though the
undisputed evidence in the record makes clear that Google was conducting this investigation
entirely as a result of and in response to Oracle’s threat of patent litigation. Google’s privilege
assertions were proper and cannot justify any relief, much less findings that Google cannot
contest liability or the existence of non-infringing alternatives to the patents-in-suit. Nothing in
law or fact permits Oracle’s overreaching motion or justifies the relief it demands.
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The law cited by Oracle in no way supports the relief it seeks.

Oracle’s motion in limine cites very little law, but nothing Oracle cites supports the broad
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582744.01

GOOGLE’S OPPOSITION TO ORACLE’S MOTION IN LIMINE NO. 5
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summary-judgment-style relief it seeks by way of this motion in limine.
The cases cited by Oracle stand for the unremarkable proposition that, if a party instructs

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a witness not to disclose privileged communications during a deposition, that party cannot later

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describe those communications at trial. See Galaxy Computer Servs., Inc. v. Baker, 325 B.R.

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544, 559 (E.D. Va. 2005) (preventing party from describing attorney-written notes at trial where

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party instructed attorney not to answer questions about those notes at deposition); Memry Corp.

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v. Kentucky Oil Tech., N.V., No. C-04-03843 RMW, 2007 WL 4208317, at *9 (N.D. Cal. Nov.

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27, 2007) (excluding testimony about party’s understanding of patent claims where party refused

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to answer questions about his understanding of the claims at deposition); Columbia Pictures

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Television, Inc. v. Krypton Broad. of Birmingham, Inc., 259 F.3d 1186, 1196 (9th Cir. 2001)

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(excluding evidence of advice of counsel defense where defendant refused to answer questions

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about the advice given by counsel); Engineered Prods. Co. v. Donaldson Co., Inc., 313 F. Supp.

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2d 951, 1022-23 (N.D. Iowa 2004) (same); cf. Service Employees Int’l Union v. Roselli, No. C

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09-00404 WHA, 2010 WL 963707, at *5 (N.D. Cal. Mar. 16, 2010) (holding that party cannot

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refuse to produce evidence as irrelevant and then affirmatively rely on that evidence at trial).

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This unobjectionable proposition has nothing to do with this case and doesn’t come close

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to justifying the evidentiary sanctions against Google that Oracle requests—even if such a

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request was properly made in a motion in limine. Google has never sought, is not seeking, and

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will not seek to use the Lindholm email affirmatively to prove anything in this case. In other

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words, unlike the privilege proponents in the cases Oracle cites, Google is not attempting to use

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the attorney-client privilege “both as a sword and a shield.” Columbia Pictures, 259 F.3d at

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1196. To the contrary, Google has repeatedly asserted that the Lindholm email is undiscoverable

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and inadmissible at trial. In fact, Oracle should never be permitted to utilize the email at trial,

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even if Google were not to prevail on its motion for relief from the Magistrate Judge’s ruling.

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See discussion in Google’s Motion in Limine No. 1. Nothing in the law prevents a party from

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defending itself in a lawsuit merely because it has asserted privilege concerning its own internal

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investigation into matters at issue in that very lawsuit. To so hold would make it practically

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impossible for any client to consult with any lawyer about threatened litigation. To defend itself
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GOOGLE’S OPPOSITION TO ORACLE’S MOTION IN LIMINE NO. 5
CASE NO. 3:10-cv-03561-WHA

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in the eventual lawsuit, the client would be forced either to (a) forego a preliminary legal

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investigation entirely; or (b) conduct such an investigation, but disclose to its adversary all of the

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details about the scope, purpose, and results of that legal investigation. No court in American

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history has ever applied such a rule.

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In short, Oracle cites no law to support the draconian relief it seeks by its motion.

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Oracle’s failure to ask appropriate questions in deposition concerning the
issues on which it now seeks summary judgment does not entitle Oracle to
demand the relief sought by this motion.

Oracle next claims that Google’s assertion of privilege at Mr. Lindholm’s deposition
justifies a finding of liability and a finding of no non-infringing alternatives to the patents-in-suit.
Oracle is wrong.
First, Google was required to assert privilege objections to questions about the Lindholm
email in order to prevent waiving privilege regarding its legal investigation of Oracle’s
infringement claims. See, e.g., Perrignon v. Bergen Brunswig Corp., 77 F.R.D. 455, 459 (N.D.
Cal. 1978) (finding waiver of the privilege where counsel allowed deponent to describe
conversations with attorney). Google should not be punished for taking the steps necessary to
preserve that privilege—a privilege that Oracle has never even attempted to challenge through a
motion to compel, either before or after Mr. Lindholm’s deposition. This is particularly true
here, where the privilege status of the Lindholm email—the only document or communication
that Oracle actually has moved to compel production of—remains at issue before this Court.
Second, Google’s privilege assertions concerning the investigation and communications
leading up to the Lindholm email—the basis on which Oracle now seeks to have this Court
sanction Google—were proper. In fact, Oracle has never argued that those assertions were
improper. As the Court is aware, and as described in detail in Google’s motion for relief from
Magistrate Judge Ryu’s order, the Lindholm email is one with respect to which Google has
submitted sworn and unrebutted declarations that the email and its drafts were prepared in
connection with an investigation conducted by Google at the direction of Google’s counsel, all in
response to a threat of patent litigation by Oracle on July 20, 2010. Though Magistrate Judge
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GOOGLE’S OPPOSITION TO ORACLE’S MOTION IN LIMINE NO. 5
CASE NO. 3:10-cv-03561-WHA

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Ryu ruled that the Lindholm email itself was not privileged, she did not challenge the credibility

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of any of the declarations filed by Google establishing that the legal investigation—and

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communications related to that legal investigation—are privileged. Mullen Decl. Ex. 9 (Hearing

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Tr.) at 11:15-21, 23:23-24:19. Oracle never contested Magistrate Judge Ryu’s findings on that

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point.
Third, although Google did not and could not permit discovery into those privileged

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communications and investigation, Oracle’s counsel could have discovered certain related facts

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at Mr. Lindholm’s deposition, had he bothered to ask appropriate questions or devote any

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material time during the deposition to the matter. Specifically, Oracle’s counsel could have

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asked Mr. Lindholm the following questions calculated to elicit non-privileged information. Had

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he asked them, Mr. Lindholm would have answered to the best of his knowledge:
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Had Mr. Lindholm ever seen the patents-in-suit? [He has not, as he testified in
his recent declaration.] Mullen Decl. Ex. 10 (Declaration of Tim Lindholm) at ¶
4a.

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Had Mr. Lindholm ever seen any of the copyright registrations at issue in this
case? [He has not, as he testified in his recent declaration.] Id.

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Had Mr. Lindholm ever reviewed any of the source code or implementations for
the aspects of the Android platform accused by Oracle in this lawsuit? [He has
not, as he testified in his recent declaration.] Id. at ¶ 4b.

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Had Mr. Lindholm ever analyzed whether the Android platform infringes any of
the patents or copyrights asserted by Oracle in this suit? [He has not, as he
testified in his recent declaration.] Id. at ¶ 4c-d.

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Oracle’s counsel asked none of those questions. Instead, counsel asked only a handful of
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questions, all of which were designed to draw a (valid) privilege objection. Moreover, even
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though Oracle had pointed to the Lindholm email as the key reason it needed to depose Mr.
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Lindholm,2 Oracle failed to ask any questions relating to the Lindholm email until only five

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minutes were left in the time-limited, two-hour deposition. Mullen Decl. Ex. 11 (Lindholm Dep.
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Tr.) 101:14-102:3. At that point, Oracle’s lawyer had the witness read into the record the
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entirety of the Lindholm email, a process which consumed two of those five minutes. Id. at
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102:4-103:9. Oracle’s lawyer then asked the witness four times to describe the technical
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See Oracle Motion to Compel (Dkt. 277) at p. 5 n.4
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GOOGLE’S OPPOSITION TO ORACLE’S MOTION IN LIMINE NO. 5
CASE NO. 3:10-cv-03561-WHA

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alternatives he had been evaluating as part of the counsel-directed investigation leading up to his

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preparation of the Lindholm email, and what people thought of those alternatives. Id. at 103:10-

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13, 104:20-22, 105:11-13, 105:25-106:2. Google properly instructed the witness not to answer

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these questions on the basis of privilege, to the extent that responding would require Mr.

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Lindholm to reveal his communications with Google’s counsel during the investigation that led

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up to his email. Id. at 103:14-20, 104:23-105:5, 105:14-19, 106:3-7, 106:10-13. The witness

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then explained that he couldn’t answer those questions without disclosing that privileged

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information. Id. at 103:21-104:1, 105:6-10, 105:20-24, 106:14-15. Finally, Oracle’s lawyer

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asked Mr. Lindholm to explain what licensing terms he “had in mind” at the time he wrote the

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email. Again, Mr. Lindholm responded (properly) that he could not answer without disclosing

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the communications he had with Google’s lawyer as part of the company’s investigation in

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anticipation of potential litigation. Id. at 106:16-107:3.

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In sum, Oracle had no interest in asking Mr. Lindholm for non-privileged information, or

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in exhausting the universe of available non-privileged information before testing the boundaries

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of privilege. Instead, it made a calculated choice to ask the broadest possible questions, which it

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knew would draw privilege objections, undoubtedly so it could then argue for the short-cut of

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evidentiary sanctions regarding a subject protected by valid privileges. Oracle’s conduct speaks

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for itself.

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Fourth, because the Lindholm email was written in July 2010—four years after the date

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of alleged first infringement in this case, nearly three years after Android was announced, and

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nearly two years after Android first hit the market—it is not even probative of the issues on

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which Oracle seeks sanctions. The questions whether Google believed it needed a license, or

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had non-infringing alternatives, to the intellectual property at issue have to be judged as of the

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date of alleged first infringement in 2006, before Google committed to a particular course for

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Android. They certainly cannot be determined in hindsight from a very different vantage point

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four years later, after Android had already been designed, released, and adopted by handset

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manufacturers and consumers. Even if Google had done something wrong in asserting privilege

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(which it did not), the irrelevance of the underlying email is yet another reason why Oracle’s
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GOOGLE’S OPPOSITION TO ORACLE’S MOTION IN LIMINE NO. 5
CASE NO. 3:10-cv-03561-WHA

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sanction request lacks any legal or logical basis.
This Court should deny this disguised summary-judgment motion, which is meritless in
any event.

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III.

CONCLUSION

For all of the foregoing reasons, the Court should deny Oracle’s Motion in Limine No. 5.

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Dated: October 4, 2011

KEKER & VAN NEST LLP

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

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582744.01

GOOGLE’S OPPOSITION TO ORACLE’S MOTION IN LIMINE NO. 5
CASE NO. 3:10-cv-03561-WHA