Oracle America, Inc. v. Google Inc.

Filing 509

DECLARATION of RUCHIKA AGRAWAL in Opposition to 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 1-1, # 2 Exhibit 1-2, # 3 Exhibit 1-3, # 4 Exhibit 1-4, # 5 Exhibit 1-5, # 6 Exhibit 1-6, # 7 Exhibit 1-7, # 8 Exhibit 1-8, # 9 Exhibit 1-9, # 10 Exhibit 1-10, # 11 Exhibit 1-11, # 12 Exhibit 1-12, # 13 Exhibit 2-1, # 14 Exhibit 2-2, # 15 Exhibit 2-3, # 16 Exhibit 2-4, # 17 Exhibit 2-5, # 18 Exhibit 2-6, # 19 Exhibit 2-7, # 20 Exhibit 2-8, # 21 Exhibit 2-9, # 22 Exhibit 2-10, # 23 Exhibit 2-11, # 24 Exhibit 2-12, # 25 Exhibit 2-13, # 26 Exhibit 2-14, # 27 Exhibit 2-15, # 28 Exhibit 2-16, # 29 Exhibit 2-17, # 30 Exhibit 3-1, # 31 Exhibit 3-2, # 32 Exhibit 3-3, # 33 Exhibit 3-4, # 34 Exhibit 3-5, # 35 Exhibit 3-6, # 36 Exhibit 3-7, # 37 Exhibit 3-8, # 38 Exhibit 3-9, # 39 Exhibit 3-10, # 40 Exhibit 3-11, # 41 Exhibit 4-1, # 42 Exhibit 4-2, # 43 Exhibit 4-3, # 44 Exhibit 5-1, # 45 Exhibit 5-2, # 46 Exhibit 5-3, # 47 Supplement 5-4)(Related document(s) 496 , 494 , 492 , 493 , 495 ) (Kamber, Matthias) (Filed on 10/7/2011)

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EXHIBIT 5-1 1 2 3 4 5 MORRISON & FOERSTER LLP MICHAEL A. JACOBS (Bar No. 111664) mjacobs@mofo.com MARC DAVID PETERS (Bar No. 211725) mdpeters@mofo.com DANIEL P. MUINO (Bar No. 209624) dmuino@mofo.com 755 Page Mill Road Palo Alto, CA 94304-1018 Telephone: (650) 813-5600 / Facsimile: (650) 494-0792 6 7 8 9 10 11 BOIES, SCHILLER & FLEXNER LLP DAVID BOIES (Admitted Pro Hac Vice) dboies@bsfllp.com 333 Main Street Armonk, NY 10504 Telephone: (914) 749-8200 / Facsimile: (914) 749-8300 STEVEN C. HOLTZMAN (Bar No. 144177) sholtzman@bsfllp.com 1999 Harrison St., Suite 900 Oakland, CA 94612 Telephone: (510) 874-1000 / Facsimile: (510) 874-1460 12 13 14 15 16 17 18 ORACLE CORPORATION DORIAN DALEY (Bar No. 129049) dorian.daley@oracle.com DEBORAH K. MILLER (Bar No. 95527) deborah.miller@oracle.com MATTHEW M. SARBORARIA (Bar No. 211600) matthew.sarboraria@oracle.com 500 Oracle Parkway Redwood City, CA 94065 Telephone: (650) 506-5200 / Facsimile: (650) 506-7114 Attorneys for Plaintiff ORACLE AMERICA, INC. 19 20 UNITED STATES DISTRICT COURT 21 NORTHERN DISTRICT OF CALIFORNIA 22 SAN FRANCISCO DIVISION 23 ORACLE AMERICA, INC. 24 Plaintiff, 25 v. 26 GOOGLE, INC. 27 Case No. 3:10-cv-03561-WHA ORACLE’S SECOND SUPPLEMENTAL PATENT LOCAL RULE 3-1 DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS Defendant. 28 ORACLE’S SECOND SUPPLEMENTAL INFRINGEMENT CONTENTIONS CASE NO. 3:10-CV-03561-WHA pa-1456177 EXHIBIT 5-1 • 1 2 Claims 1-24 of United States Patent No. 6,125,447 (“the ’447 patent”) (infringement claim chart attached as Exhibit D); • 3 4 Claims 1-21 of United States Patent No. 6,192,476 (“the ’476 patent”) (infringement claim chart attached as Exhibit E); • 5 6 Claims 1-4 and 6-23 of United States Patent No. 6,061,520 (“the ’520 patent”) (infringement claim chart attached as Exhibit F); and • 7 8 Claims 1-8, 10-17, and 19-22 of United States Patent No. 7,426,720 (“the ’720 patent”) (infringement claim chart attached as Exhibit G). 9 B. Patent Local Rule 3-1(b) — Accused Instrumentalities. 10 Based on Oracle’s investigation thus far, Oracle accuses the following Accused 11 Instrumentalities of infringing the asserted claims specified above in the manner described in 12 Exhibits A-G: (i) “Android” or “the Android Platform”;2 (ii) Google devices running Android; 13 and (iii) other mobile devices running Android. Representative examples of Google devices 14 running Android include the Google Dev Phones, the Google Nexus One, and the Google Nexus 15 S.3 Representative examples of other mobile devices running Android include HTC’s EVO 4G, 16 HTC’s Droid Incredible, HTC’s G2, Motorola’s Droid, and Samsung’s Captivate. Android 17 applications, including those written by Google, when built or run will necessarily use the 18 infringing functionality in the manner described in Exhibits A-G. For example, application 19 developers like Google use the Google-provided dx tool from the Android SDK to convert .class 20 2 21 22 23 24 25 26 27 “Android” or “the Android Platform” means “Android” as referred to in Google’s Answer (Docket No. 32) at Background ¶ 12 and in Google’s Answer to Amended Complaint (Docket No. 51) at Background ¶ 12 and at Factual Background ¶¶ 11-17, and includes any versions thereof (whether released or unreleased) and related public or proprietary source code, executable code, and documentation. 3 See, e.g., JR Raphael, The Nexus S and Google: Everything There Is To Know, PCWORLD (Nov. 11, 2010), available at http://www.pcworld.com/article/210460/the nexus s and google everything there is to know. html (last visited Nov. 29, 2010) (“Today’s buzz is all about the Samsung Nexus S -- a stillunder-wraps smartphone believed to be the successor to Google’s Nexus One. According to various leaks, the Nexus S will be a ‘Google experience’ device, meaning it’ll run a stock version of Android without any of those baked-in manufacturer UIs. And, if the latest rumors prove to be true, the Samsung Nexus S will be rocking the as-of-yet-unannounced Android Gingerbread release.”). The “leaks” proved to be true: the Nexus S runs a stock version of Gingerbread. 28 ORACLE’S SECOND SUPPLEMENTAL INFRINGEMENT CONTENTIONS CASE NO. 3:10-CV-03561-WHA pa-1456177 EXHIBIT 5-1 2 1 files to a .dex file when building their applications, and thereby infringe the ’520 and ’702 2 patents. That is the intended use of the dx tool, and there is no substantial non-infringing use of 3 the dx tool. 4 Google directly infringes the asserted claims enumerated above under 35 U.S.C. § 271(a) 5 because Google, without authority, makes, uses, offers to sell, sells, or imports the Accused 6 Instrumentalities within or into the United States. Further, Google induces the infringement of 7 others under 35 U.S.C. § 271(b) because it contracts with, instructs, and otherwise induces others 8 to make, use, offer to sell, sell, or import the Accused Instrumentalities within or into the United 9 States. Google also contributes to the infringement of others under 35 U.S.C. § 271(c) because it 10 offers to sell, sells, or imports part or all of the Accused Instrumentalities within or into the 11 United States. With respect to the asserted non-method claims of the asserted patents, the 12 Accused Instrumentalities are specially made or adapted for infringement, and are not a staple 13 article suitable for substantial non-infringing use. Further, Google supplies part or all of the 14 Accused Instrumentalities in or from the United States to foreign contractors, including HTC, in 15 violation of 35 U.S.C. § 271(f). 16 Oracle is not aware of any evidence indicating that anyone, such as a Google partner, 17 OHA member, or downstream licensee, has altered the infringing portions of Google’s Android 18 or Android Platform in any way that is material to the infringement. To the contrary, all available 19 evidence suggests that device manufacturers do not alter the Android operating system in general 20 or the Dalvik virtual machine in particular; and that the changes they do make are generally 21 aimed at the kernel and device drivers (to account for the manufacturer’s particular hardware 22 platform). 23 The manufacturers’ websites confirm this. Google advertises the Nexus S as “Pure 24 Google” and “The new Android phone from Google.”4 Samsung states that “Beacuse Nexus S is 25 google experience device, source codes are opened by Google. So, You can find source code for 26 27 4 http://www.google.com/nexus/#/index 28 ORACLE’S SECOND SUPPLEMENTAL INFRINGEMENT CONTENTIONS CASE NO. 3:10-CV-03561-WHA pa-1456177 EXHIBIT 5-1 3 1 the Nexus S at Android Open Source Project site.”5 With respect to Samsung’s Captivate, as far 2 as Oracle has been able to determine, for those Android source code files identified in Exhibits A- 3 G that were present in the source code archive for Samsung’s Captivate, those files were identical 4 to those from Google’s Éclair version of Android.6 With respect to the source code for the 5 Motorola Droid, Motorola states “All Droid source consists entirely of code found at the Android 6 repo site.”7 With respect to the particular HTC-manufactured devices listed above, the only 7 source code provided by HTC8 was for the Linux kernel, WebKit and BlueZ, and there was none 8 for Dalvik, the core libraries, or development tools. 9 Developers have no reason to modify the infringing tools provided by Google for 10 developing Android applications, and Google discourages them from doing so. Google’s 11 Android SDK license states: 12 3.3 Except to the extent required by applicable third party licenses, you may not copy (except for backup purposes), modify, adapt, redistribute, decompile, reverse engineer, disassemble, or create derivative works of the SDK or any part of the SDK. Except to the extent required by applicable third party licenses, you may not load any part of the SDK onto a mobile handset or any other hardware device except a personal computer, combine any part of the SDK with other software, or distribute any software or device incorporating a part of the SDK.9 13 14 15 16 17 Google actively discourages modifications to core Android features through a variety of 18 licensing schemes. For example, Google prohibits anyone from using the Android trademark on 19 a device unless the device is determined to be “Android compatible.” Through this requirement, 20 Google ensures that Android devices sold by others will function in the same manner as if they 21 22 23 5 http://opensource.samsung.com/ There was just one exception: the Captivate version of the file fork.c in the Linux kernel was identical to the default linux 2.6.29 fork.c; there were minor differences with respect to the version of fork.c in http://android.git.kernel.org/?p=kernel/linux-2.6.git. These differences had no relation to the infringement by Android that is detailed in Exhibits A-G. 6 24 25 26 7 https://opensource.motorola.com/sf/sfmain/do/viewProject/projects.droid http://developer.htc.com/ 9 http://developer.android.com/sdk/terms.html 8 27 28 ORACLE’S SECOND SUPPLEMENTAL INFRINGEMENT CONTENTIONS CASE NO. 3:10-CV-03561-WHA pa-1456177 EXHIBIT 5-1 4 1 (“Cupcake”), 1.6 (“Donut”), 2.0/2.1 (“Éclair”), 2.2 (“Froyo”), and 2.3 2 (“Gingerbread”); 3 • the ’447 patent (infringement claim chart previously served as Exhibit D): infringed 4 by all versions of Android subsequent to Oct. 21, 2008, including Android 1.1, 1.5 5 (“Cupcake”), 1.6 (“Donut”), 2.0/2.1 (“Éclair”), 2.2 (“Froyo”), and 2.3 6 (“Gingerbread”); 7 • the ’476 patent (infringement claim chart previously served as Exhibit E): infringed 8 by all versions of Android subsequent to Oct. 21, 2008, including Android 1.1, 1.5 9 (“Cupcake”), 1.6 (“Donut”), 2.0/2.1 (“Éclair”), 2.2 (“Froyo”), and 2.3 10 11 (“Gingerbread”); • the ’520 patent (infringement claim chart previously served as Exhibit F): infringed 12 by all versions of Android subsequent to Oct. 21, 2008, including Android 1.1, 1.5 13 (“Cupcake”), 1.6 (“Donut”), 2.0/2.1 (“Éclair”), 2.2 (“Froyo”), and 2.3 14 (“Gingerbread”); and 15 • the ’720 patent (infringement claim chart previously served as Exhibit G): infringed 16 by all versions of Android subsequent to Oct. 21, 2008, including Android 1.1, 1.5 17 (“Cupcake”), 1.6 (“Donut”), 2.0/2.1 (“Éclair”), 2.2 (“Froyo”), and 2.3 18 (“Gingerbread”). 19 D. 20 In addition to the acts of direct infringement described above, Google actively contributes 21 to and induces infringement by third parties of each of the asserted claims of the asserted patents. 22 On information and belief, Google purposely and actively distributes the Accused 23 Instrumentalities to manufacturers of products and application developers with the intention that 24 they be used, copied, and distributed to consumers, who in turn use them. Google induces and 25 contributes to the infringement of the asserted claims of each asserted patent, because Google 26 encourages manufacturers, application developers, and service providers (including the members 27 of the Open Handset Alliance), as well as end users, to copy, sell, distribute, re-distribute, and use 28 products that embody or incorporate the Accused Instrumentalities. Google’s admissions in its Patent Local Rule 3-1(d) — Indirect Infringement. ORACLE’S SECOND SUPPLEMENTAL INFRINGEMENT CONTENTIONS CASE NO. 3:10-CV-03561-WHA pa-1456177 EXHIBIT 5-1 7 1 Amended Counterclaims prove its intent and encouragement of others. (See, e.g., Google’s 2 Amended Counterclaims ¶¶ 6-7, 13.) Google contributes to the infringement of others because it 3 offers to sell, sells, or imports part or all of the Accused Instrumentalities within or into the 4 United States. With respect to the asserted non-method claims of the asserted patents, the 5 Accused Instrumentalities are specially made or adapted for infringement, and are not a staple 6 article suitable for substantial non-infringing use. 7 By providing infringing code and discouraging (and even preventing) modifications, 8 Google further demonstrates the intent necessary for indirect infringement. As discussed below, 9 Google has actual knowledge of Oracle’s patents and its infringement is willful. 10 E. 11 Oracle asserts that each element or limitation of each asserted claim of each asserted Patent Local Rule 3-1(e) — Nature of Infringement. 12 patent is literally present in the Accused Instrumentalities, except where explicitly indicated. To 13 the extent that any element or limitation of the asserted claims is not found to have literal 14 correspondence in the Accused Instrumentalities, Oracle alleges, on information and belief, that 15 any such elements or limitations are present under the doctrine of equivalents in the Accused 16 Instrumentalities. 17 F. 18 The ’104 reissue patent has a priority date of Dec. 22, 1992, being a continuation of Patent Local Rule 3.1(f) — Priority Dates. 19 08/755,764 (filed Nov. 21, 1996) resulting in RE36,204 which is a Reissue of 07/994,655 (filed 20 Dec. 22, 1992) which is U.S. Patent No. 5,367,685. 21 22 The ’205 patent is a continuation of U.S. Pat. No. 6,513,156, having a priority date of Jun. 30, 1997, the filing date of U.S. patent application number 08/884,856. 23 24 25 26 27 28 ORACLE’S SECOND SUPPLEMENTAL INFRINGEMENT CONTENTIONS CASE NO. 3:10-CV-03561-WHA pa-1456177 EXHIBIT 5-1 8

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