Oracle America, Inc. v. Google Inc.

Filing 882

RESPONSE (re #861 MOTION Administrative Relief to Deem Issues Undisputed ) filed byOracle America, Inc.. (Jacobs, Michael) (Filed on 4/9/2012)

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MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[e-mail]
KENNETH A. KUWAYTI (Bar No. 145384)
[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.

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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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ORACLE AMERICA, INC.

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Plaintiff,

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v.

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Case No. CV 10-03561 WHA
ORACLE’S OPPOSITION TO
GOOGLE’S MOTION FOR
ADMINISTRATIVE RELIEF TO
DEEM ISSUES UNDISPUTED

GOOGLE INC.

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Defendant.

Dept.: Courtroom 8, 19th Floor
Judge: Honorable William H. Alsup

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I.

INTRODUCTION

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Google’s motion proposes three statements of supposedly admitted fact that would

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presumably be read to the jury. Each is inappropriate for that purpose. The first proposal

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concerning the use of the Java programming language would cause prejudicial confusion because

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it fails to note the distinction between the programming language and what is at issue here: the

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APIs and class libraries. The second proposal concerning names misreads the Court’s summary

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judgment order and is an incomplete statement of law, not an admitted fact. The third proposal

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concerning Android’s copying of Java API source code is both inaccurate and inappropriately

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argumentative.

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II.

ARGUMENT

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A.

Google’s First Proposal—“The Java programming language is open
and free for anyone to use”—Is Confusing and Misleading

Google’s unauthorized copying of Oracle’s Java APIs and class libraries is the focus of
the copyright case. Oracle has asserted no claim regarding use of the Java programming
language. The Court has recognized the importance of that distinction to Oracle’s case and the
potential for jury confusion. (3/28/12 Hr’g Tr. at 77:16-25 (“I promise you, there are going to be
people on the jury who when they understand that you have no claim to the Java programming
language, that’s going to be the end of the line for them.”).) By addressing only the Java
programming language without addressing the APIs, Google’s proposal unfairly exacerbates that
potential for confusion.
In its Amended Counterclaims, Google acknowledged that the Java programming
language is distinct from the Java APIs and class libraries. In the first paragraph of its Amended
Counterclaims, Google admitted and alleged that the Java programming language is distinct from
the Java runtime environment: “While they are distinct elements, the term ‘Java’ is commonly
used to refer to the programming language, the runtime environment, as well as the platform.”
(Google Amended Counterclaims ¶ 1, ECF No. 51 at 13.) In the third paragraph of its Amended
Counterclaims, Google admitted and alleged that the Java runtime environment includes the Java
class libraries:

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ORACLE’S OPPOSITION TO GOOGLE’S MOTION FOR ADMINISTRATIVE RELIEF TO DEEM ISSUES UNDISPUTED
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Upon information and belief, the Java platform comprises many different
components, including utilities to assist with the development of source code written
in the Java programming language, a Java compiler that converts Java programming
language statements to Java bytecode, a Java runtime environment consisting of
Java virtual machines written to operate on a number of different computer platforms
and a set of standard class libraries that can be accessed and reused by Java platform
applications to perform common software functions, such as writing to files or sorting
data.
(Id. ¶ 3, at 14 (emphasis added).)
The statements that Google made in its pleading are judicial admissions that are
conclusively binding on Google. “Factual assertions in pleadings and pretrial orders, unless
amended, are considered judicial admissions conclusively binding on the party who made them.”
Am. Title Ins. Co. v. Lacelaw Corp., 861 F.2d 224, 226 (9th Cir. 1988); see also Gradetech, Inc.
v. Am. Emp’rs. Grp., No. C 06-02991 WHA, 2006 U.S. Dist. LEXIS 47047, at *9 (N.D. Cal. June
29, 2006) (holding fact asserted in another complaint was judicial admission).
Google now would like to blur the distinction between the Java programming language
and the APIs at issue, as it attempts to steer the Court and jury towards its desired outcome: a
finding that the Java APIs are uncopyrightable. (See Google’s 4/3 Copyright Liability Trial Brief,
ECF No. 852 at 11 (“As a purely technical matter, there is no bright line distinction between the
Java programming language and the Java language APIs.”) and 13 (“Java language programmers
treat the APIs as part of the language.”).) But its own pleadings prevent that.
To the extent necessary, the evidence at trial will also confirm that the Java language is
distinct from the APIs. Google’s copyright expert opined that “‘Java’ may refer to three very
different things: the Java programming language, the Java Application Programming Interfaces
(APIs), or software source code that references and implements the APIs.” (Astrachan Opening
Expert Report, ECF No. 262-1 ¶ 7 (emphasis added); see also id. ¶ 54 (“[D]ifferent programming
languages can be used to implement a particular API. In the case of Android, both the Java
programming language and the C programming language were used to create code to implement
the APIs at issue.”).)
If the Court is inclined to read Google’s statement to the jury, then the Court should also
inform the jury that: “The Java APIs and class libraries are distinct from the Java programming

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language.” Oracle will promptly present a motion asking the Court to do just that.
Google’s proposal is also prejudicially misleading. In Oracle’s April 3 copyright brief,

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Oracle explained how it provides the Java Development Kit for download by application

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developers, who use it to write their own Java-language programs. (ECF No. 853 at 5.) The JDK

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is made available under license, though without charge (id.), and this is the sense in which

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application developers are “free” and “open” to use the language. Indeed, many application

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developers use the tools provided in the JDK to compile the source code they write for Android

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applications, and they are permitted to do so. But the statement “[t]he Java programming

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language is open and free for anyone to use” glosses over the complexities of the licensing issues

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in this case. Oracle has been consistent: it is not asserting copyright claims based on the Java

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programming language for purposes of this case. So there is no good reason to give the jury a

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confusing instruction about the language.

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B.

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Google’s Second Proposal—“The names of the Java language API
files, packages, classes, and methods are not protected by copyright
law”—Misreads The Court’s Order and Is a Statement of Law, not
Fact

The Court should reject Google’s second proposal for two reasons. First, it misreads the
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Court’s summary judgment order. In its summary judgment order, the Court held that a
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collection of names could be eligible for copyright protection:
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In finding that the names of the various items appearing in the disputed API package
specifications are not protected by copyright, this order does not foreclose the
possibility that the selection or arrangement of those names is subject to copyright
protection. See Lamps Plus, Inc. v. Seattle Lighting Fixture Co., 345 F.3d 1140, 1147
(9th Cir. 2003) (“[A] combination of unprotectable elements is eligible for copyright
protection only if those elements are numerous enough and their selection and
arrangement original enough that their combination constitutes an original work of
authorship.”) (emphasis added).

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(ECF No. 433 at 8.) By including only the first part and not the second, Google’s proposal will

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mislead the jury.

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Oracle will be arguing at trial that the selection, structure, and organization of thousands

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of names in the APIs and class libraries are protected by copyright and that Google copied them.

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The first is a legal issue; the second is a fact that Google has admitted. It would be prejudicial

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error to simply instruct the jury that “the names are not protected by copyright,” which risks being
ORACLE’S OPPOSITION TO GOOGLE’S MOTION FOR ADMINISTRATIVE RELIEF TO DEEM ISSUES UNDISPUTED
CASE NO. CV 10-03561 WHA
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misinterpreted to apply to the selection and arrangement of the names. The proposal is also

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prejudicial because it refers to the APIs as the “Java language APIs.” That is not how Oracle

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describes the APIs. It is a term of Google’s invention to try to link the APIs to the language. But

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Google has conclusively admitted that the APIs and class libraries are not part of the language.

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Second, Google’s proposal is a statement of law, and not a statement of fact. That Google

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cites no Oracle statement in its brief (ECF No. 861 at 2-3) is conclusive: it is not an admitted fact.

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The Court will ultimately determine what legal principles are relevant to the jury’s deliberations

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and the proper expression of those principles in jury instructions. And because the instructions

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will focus on the claims that are presented to the jury, it is unlikely that Google’s proposal—

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which addresses a claim that the Court has ruled out of the case (subject to appeal)—will be a

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proper subject of instruction.

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C.

Google’s Third Proposal—“Aside from a nine-line function that
Oracle accuses Google of copying, Oracle does not contend that
Android’s source code in any of the accused APIs was copied from the
source code used in the Java platforms”—Is Inaccurate and
Argumentative

Google’s third issue is contested as well as wrong. First, the evidence will show that
Google copied thirteen lines, because Google copied comments as well as functional code.
Second, Google engineers consulted Oracle’s API specifications and source code when

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working on Android. The jury could well find that the Android source code was copied from

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Oracle source code. Google admits that Android has the same API elements and the same

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structure, selection, and arrangement of them as Java does:

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THE COURT: Which part is the same?

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MR. KWUN: What’s known as the declaration or the method signature, which is the
part at the top. Actually, in there there might be some very, very slight differences.
But for present purpose we can say they are the same.

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(3/28/12 Hr’g Tr. at 40:16-20.)
THE COURT: So, as I understand you, you concede that, at least as to these 37 APIs,
you do use the same structure, selection, and arrangement?
MR. KWUN: Yes, Your Honor.

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(Id. at 49:23-50:1.) Google may well have lifted the API elements and their structure, selection,

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and arrangement from Oracle’s source code, which it demonstrably had access to.

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Oracle did not admit that except for “nine lines” there was no source code copying. Quite
the opposite, in fact:

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THE COURT: Pose to both sides this question. And you answer it first since you’re
already here. Except for rangeCheck, the APIs that you have, the 37 APIs in Android
compared to the 37 analogs in Java, have different source code. True?

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MR. KWUN: Yes, Your Honor.

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THE COURT: Let me stop there. Agreed?

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MR. JACOBS: Yes and no, Your Honor.

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THE COURT: Okay. Explain that part.

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MR. JACOBS: The part that closely corresponds to the words and symbols that are
set forth in a specification aligns word for word.

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THE COURT: I’m just talking -- I’m only talking about the source code that gets
compiled by the computer --

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MR. JACOBS: Yes.

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THE COURT: -- at this point. So you’re saying it’s yes and no.

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MR. JACOBS: Because there is some code that literally you can line up word for
word in that code, in that source code, the noncomment source code, the compiled
source code, you can line up those words with the corresponding words in what we’re
calling the specification.

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(Id. at 38:22-39:18 (emphasis added).) At the hearing, Oracle stated that because Google’s source
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code and Oracle’s source code contain the same language, “word for word,” the source code is, in
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part, the same. Moreover, the selection, arrangement, and structure of the APIs that Google
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admitted copying could have been copied from Oracle’s source code. So the wording of
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Google’s proposal—“Oracle does not contend that Android’s source code in any of the accused
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APIs was copied from the source code used in the Java platforms”—is inaccurate. It is also
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argumentative, as it is based on Google’s argument that the API declarations are uncopyrightable.
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(ECF No. 861 at 5:5.) The Court should reject Google’s third proposal.
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Dated: April 9, 2012

MORRISON & FOERSTER LLP
By: ___/s/ Michael A. Jacobs
Attorneys for Plaintiff
ORACLE AMERICA, INC.

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ORACLE’S OPPOSITION TO GOOGLE’S MOTION FOR ADMINISTRATIVE RELIEF TO DEEM ISSUES UNDISPUTED
CASE NO. CV 10-03561 WHA
sf-3130064

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