Oracle America, Inc. v. Google Inc.

Filing 922

MOTION to Exclude Evidence Regarding License, Implied License, and Equitable Estoppel Defenses filed by Oracle America, Inc.. Responses due by 4/17/2012. (Attachments: #1 Exhibit A, #2 Exhibit B, #3 Exhibit C, #4 Proposed Order)(Jacobs, Michael) (Filed on 4/15/2012)

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MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[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.

CASE NO. CV 10-03561 WHA

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Plaintiff,

ORACLE AMERICA INC.’S MOTION
TO EXCLUDE EVIDENCE
REGARDING LICENSE, IMPLIED
LICENSE, AND EQUITABLE
ESTOPPEL DEFENSES

Defendant.

Date: April 16, 2012
Dept.: Courtroom 8, 19th Floor
Judge: Honorable William H. Alsup

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v.
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GOOGLE INC.

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ORACLE AMERICA INC.’S MOTION TO EXCLUDE EVIDENCE REGARDING LICENSE, IMPLIED
LICENSE, AND EQUITABLE ESTOPPEL DEFENSES
CASE NO. CV 10-03561 WHA
pa-1522957

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I.

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Pursuant to the Court’s procedure for trial motions (Dkt. 835, Dkt. 890), Oracle moves to

INTRODUCTION

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preclude Google from offering evidence regarding its license, implied license, and equitable estoppel

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defenses that Google failed to identify in its interrogatory responses.

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Google has asserted a license defense in this case, claiming that its use of the patents-in-

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suit was licensed. Google has also asserted defenses of implied license and equitable estoppel.

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Oracle propounded interrogatories seeking Google’s legal and factual bases for these defenses,

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but Google’s responses failed to provide bases for all elements. Among other things, Google did

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not identify a license to support its license defense, and did not disclose any evidence of actual or

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reasonable reliance in support of its implied license and estoppel defenses.
In particular, Google did not claim in its interrogatory responses that it was aware of,

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much less relied on, any statement by Jonathan Schwartz that purportedly excused Google’s use

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of Java API specifications and patents. Accordingly, Google should not be allowed to offer into

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evidence TX 2260 (Nov. 5, 2007 blog post by Jonathan Schwartz) or any other evidence not

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disclosed in its interrogatory responses. Indeed, on March 28, 2012, the Court asked Google

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counsel whether “somebody from Google going to testify they saw [Mr. Schwartz’s statement]

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and relied on it?” Counsel for Google was unable to identify any Google witness who will do so.

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(Mar. 28, 2012 Tr. at 91:21-92:5). Google has never identified any witness who will do so.

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Google should be held to its disclosures.

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Evidence regarding Google’s defenses that goes beyond what Google provided in its

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interrogatory responses should be excluded from trial.
II.

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ARGUMENT
A.

Oracle’s Interrogatories to Google

In its Answer to Oracle’s Complaint, Google raised a number of affirmative defenses,

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including defenses of license, implied license, and equitable estoppel. (Google’s Answer to

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Plaintiff’s Amended Complaint (Dkt. 51), pp. 9, 11-12 (Third, Eleventh, Seventeenth, Eighteenth

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Defenses).)

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ORACLE AMERICA INC.’S MOTION TO EXCLUDE EVIDENCE REGARDING LICENSE, IMPLIED
LICENSE, AND EQUITABLE ESTOPPEL DEFENSES
CASE NO. CV 10-03561 WHA
pa-1522957

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On December 2, 2010, Oracle propounded interrogatories to Google to ascertain the bases

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for these affirmative defenses (Plaintiff Oracle America’s First Set of Interrogatories, at 2-3

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(excerpts attached hereto as Exh. A)):


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In Interrogatory No. 4, Oracle asked Google to “Please explain the factual and

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legal bases for Google’s pleading of its third affirmative defense: Patent

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Unenforceability (Waiver, Estoppel, Laches).”


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In Interrogatory No. 10, Oracle asked Google to “Please explain the factual and

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legal bases for Google’s pleading of its eleventh affirmative defense: Copyright

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Unenforceability (Waiver, Estoppel, Laches).”


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In Interrogatory No. 15, Oracle asked Google to “Please explain the factual and

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legal bases for Google’s pleading of its seventeenth and eighteenth affirmative

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defenses: License and Implied License.”

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Google responded to these interrogatories on January 6, 2011. (Defendant Google Inc.’s

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Responses to Plaintiff’s Interrogatories, Set 1 (excerpts attached hereto as Exh. B).) Google’s

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disclosure regarding the license, implied license, and estoppel defenses was limited to a scant few

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lines:

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

In response to Interrogatories 4 and 10, Google stated: “Google further states that

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Oracle’s actions cited herein, including statements and actions of its predecessor

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Sun encouraging use of the Java programming language, form the basis of

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Google’s defenses involving waiver, estoppel and laches.” Google cited no

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evidence establishing any reliance by Google on Oracle or Sun’s alleged actions.

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

In response to Interrogatory 15, Google stated: “Upon information and belief,

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Google expects discovery to reveal that at least some alleged direct infringers are

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licensed to use that program [javac].” Google did not identify any licenses

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supporting its defenses.

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Google supplemented its responses on April 25, 2011, but did not add any evidence

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establishing reliance by Google on Oracle or Sun’s actions and did not identify any alleged

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ORACLE AMERICA INC.’S MOTION TO EXCLUDE EVIDENCE REGARDING LICENSE, IMPLIED
LICENSE, AND EQUITABLE ESTOPPEL DEFENSES
CASE NO. CV 10-03561 WHA
pa-1522957

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licenses. (Google Inc.’s Supplemental Responses to Plaintiff’s Interrogatories, Set One, Nos. 4-

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B.

Google Should Be Held To Its Interrogatory Response On License

Google asserted a license defense in its Answer, but provided no identification in its

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interrogatory response of what license was being asserted. Google’s response vaguely states that

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“Oracle’s allegations are directed toward one or more functionalities that are likely licensed by

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alleged direct infringers for at least some Accused Instrumentalities.” (Exh. B at 40.) Google did

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not expand on this in its supplemental responses. Thus, Google has never disclosed any factual or

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legal bases for its license defense. Google cannot claim that it is a licensed user of the patents-in-

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suit without producing evidence of such a license.
As the Court has previously counseled, the parties risk having defenses knocked out if

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they fail to fully disclose their bases in response to interrogatories. (See Tr. of Apr. 6, 2011

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Hearing (Dkt. 110), at 7.) At trial, Google should be limited to only what it disclosed in its

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response to Oracle’s interrogatory concerning its license defense.

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C.

Google Should Be Held To Its Interrogatory Response On Implied
License

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To prove a defense of implied license, Google must establish that the entire course of

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conduct between Oracle and Google created an implied license. McCoy v. Mitsuboshi Cutlery, 67

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F.3d 917, 920 (Fed. Cir. 1995). This in turn requires that Oracle’s conduct be such that Google

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reasonably inferred that Oracle consented to Google’s use of the patents or copyrights. See e.g.,

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Wang Labs., Inc. v. Mitsubishi Elecs. Am., Inc., 103 F.3d 1571, 1581-82 (Fed. Cir. 1997). Google

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acknowledges this requirement in its proposed jury instructions. (See Parties’ Joint Proposed Jury

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Instructions (Dkt. 539), at 145 (“Google must establish by a preponderance of the evidence that

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the entire course of conduct between Sun and/or Oracle and Google over the relevant time period

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led Google reasonably to infer consent by Sun and/or Oracle to Google’s making, using, or

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selling products that Oracle now claims infringe the patents at issue.”) Further, Google must not

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only establish that it inferred consent from the words or actions of Sun and Oracle – Google must

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ORACLE AMERICA INC.’S MOTION TO EXCLUDE EVIDENCE REGARDING LICENSE, IMPLIED
LICENSE, AND EQUITABLE ESTOPPEL DEFENSES
CASE NO. CV 10-03561 WHA
pa-1522957

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establish that it in fact acted, in a way it otherwise would not have, as a result of those words or

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actions. Google’s disclosures contain no reference to any such evidence.

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Google should be limited to presenting only the evidence it disclosed in its interrogatory

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response on this issue. In its response to Interrogatory No. 15, Google claimed that “in the

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absence of an explicit license to asserted patents and copyrights, Google and other purported

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infringers are entitled to an implied license based on Oracle’s actions, including statements and

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actions of its predecessor Sun.” See Google, Inc.’s Responses to Plaintiff’s Interrogatories, Set

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One, at 40. Google did not, however, provide any evidence to establish that Google reasonably

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inferred consent by Oracle to Google’s use of the patents and copyrights. See id. at 39-41.

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Indeed, Google’s response to Oracle’s Interrogatory No. 15 is without any assertion that Google

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relied upon the alleged conduct of Oracle. More recently, at the pretrial hearing, Google could

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not provide an answer when the Court queried as to whether it had a witness to testify that Google

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relied on Oracle’s conduct. (See Tr. of March 28, 2012 Hearing (Dkt. 895), at 92.)

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Google’s response, devoid as it is of any evidence of Google’s reliance, is not sufficient to

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support an implied license defense. Google should be limited at trial to the information it

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disclosed in its responses to Oracle’s interrogatory.

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D.

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Google Should Be Held To Its Interrogatory Response on Equitable
Estoppel

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To establish its equitable estoppel defenses, Google must show, inter alia, that Oracle’s

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conduct supported an inference by Google that Oracle did not intend to bring an infringement

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suit. A. C. Aukerman Co. v. R. L. Chaides Constr. Co., 960 F.2d 1020, 1042 (Fed. Cir. 1992)

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(“The patentee’s conduct must have supported an inference that the patentee did not intend to

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press an infringement claim against the alleged infringer.”). Furthermore, as Google concedes,

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this defense requires that “the infringer relies upon the misleading communication” to the

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infringer’s detriment. (See Parties’ Joint Proposed Jury Instructions (Dkt. 539), at 142.) Thus, in

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order to establish equitable estoppel, Google must show that it relied – that it continued with its

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infringement of Java copyrights and patents, rather than cease, because of the things that Oracle

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said and did.
ORACLE AMERICA INC.’S MOTION TO EXCLUDE EVIDENCE REGARDING LICENSE, IMPLIED
LICENSE, AND EQUITABLE ESTOPPEL DEFENSES
CASE NO. CV 10-03561 WHA
pa-1522957

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At trial, Google should not be permitted to present evidence on its equitable estoppel

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defenses beyond what was disclosed in its interrogatory responses. Google’s first responses to

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Oracle’s Interrogatory No. 4 and 10 provided no basis to establish that Google relied on Oracle’s

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actions or representations to its detriment. (Exh. B at 13-14.) Google failed to remedy this

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deficiency in its supplemental responses. (Exh. C at 10.) While Google did identify conduct by

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Sun or Oracle allegedly supporting its estoppel defense, it offered no evidence that Google

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actually relied on that conduct, as is required. (Id.) Google offered only a conclusory statement

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that “Google reasonably relied on Sun’s/Oracle’s acquiescence and delay.” (Id.)

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Reliance for purposes of equitable estoppel requires more than Google’s mere say so.

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Google has failed to identify a basis for equitable estoppel as a defense to either patent or

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copyright infringement. It is too late now for Google to attempt to provide a sufficient basis for

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this defense. At trial, Google should be limited to only what it disclosed in its responses to

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Oracle’s interrogatories.

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III.

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Oracle propounded several interrogatories on Google requesting Google’s bases for its

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license, implied license, and equitable estoppel defenses. Google’s responses failed to provide

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such bases. Any evidence that Google attempts to submit now which provides those bases,

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including but not limited to TX 2260, goes beyond what Google disclosed n discovery, and

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should therefore be excluded from trial.

CONCLUSION

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Dated: April 15, 2012

MORRISON & FOERSTER LLP
By: __/s/ Michael A. Jacobs________________
MICHAEL A. JACOBS
Attorneys for Plaintiff
ORACLE AMERICA, INC.

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ORACLE AMERICA INC.’S MOTION TO EXCLUDE EVIDENCE REGARDING LICENSE, IMPLIED
LICENSE, AND EQUITABLE ESTOPPEL DEFENSES
CASE NO. CV 10-03561 WHA
pa-1522957

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