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)

Exhibit B

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DONALD F. ZIMMER, JR. (SBN 112279)
[e-mail]
CHERYL A. SABNIS (SBN 224323)
[e-mail]
KING & SPALDING LLP
101 Second Street – Suite 2300
San Francisco, CA 94105
Telephone: [phone]
Facsimile: [phone]

IAN C. BALLON (SBN 141819)
[e-mail]
HEATHER MEEKER (SBN 172148)
[e-mail]
GREENBERG TRAURIG, LLP
1900 University Avenue
East Palo Alto, CA 94303
Telephone: [phone]
Facsimile: [phone]

SCOTT T. WEINGAERTNER (Pro Hac Vice)
[e-mail]
ROBERT F. PERRY
[e-mail]
BRUCE W. BABER (Pro Hac Vice)
[e-mail]
KING & SPALDING LLP
1185 Avenue of the Americas
New York, NY 10036-4003
Telephone: [phone]
Facsimile: [phone]
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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ORACLE AMERICA, INC.

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Plaintiff,

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v.

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GOOGLE INC.

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Defendant.

Case No. 3:10-cv-03561-WHA
Honorable Judge William Alsup
DEFENDANT GOOGLE INC.’S
RESPONSES TO PLAINTIFF’S
INTERROGATORIES, SET ONE

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copying of the memory space of the master runtime system process until the child

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runtime system process needs to modify the referenced memory space of the

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master runtime system process,” or other elements citing similar functionality.

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Google reiterates that the above contentions are being made very prematurely and in view

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of inadequate disclosures by Oracle, as well as in advance of any claim construction rulings.

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Google reserves the right to amend and supplement this response as it gains more insight into

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Oracle’s contentions, as well as after any claim construction order.

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INTERROGATORY NO. 4:

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Please explain the factual and legal bases for Google’s pleading of its third affirmative

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defense: Patent Unenforceability (Waiver, Estoppel, Laches).

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RESPONSE:

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In addition to its General Objections, Google objects to this Interrogatory as it seeks

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information protected by the attorney-client privilege, the work product doctrine, and/or any

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other applicable privilege, immunity, or protection. Google further objects to this Interrogatory

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as unduly burdensome as it is not reasonably calculated to lead to the discovery of admissible

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information. Google further objects to the request to “explain” factual bases as vague and

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ambiguous. Google further objects to any implication in this Interrogatory that Google has any

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burden beyond what is required by any applicable statute or case law. Google further objects to

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any implication that the theories of patent unenforceability included under this heading in

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Google’s Answer and Counterclaims necessarily share common factual or legal bases. Google

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further objects to extent that certain factual contentions involved in the pleading of these theories

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were made “upon information and belief” that, after a reasonable opportunity for further

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investigation, Google would likely have evidentiary support. Google has made discovery

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requests related to this defense but has not yet received responsive information. Inclusion of

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Oracle’s allegations in the list of facts in this response does not mean that Google agrees with the

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veracity of the allegation, but merely references the fact that particular allegations were made.

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Google expressly maintains all objections made in responsive pleadings. Google further objects

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to this Interrogatory as unnecessary in view of the specific disclosures contemplated by the
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DEFENDANT GOOGLE INC.’S RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE.
CIVIL ACTION NO. CV 10-03561-WHA

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Patent Local Rules as well as premature at least because claim terms have not been construed

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and any response herein is made in view of the lack of certainty with respect to the resolution of

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the meaning of claim terms.

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Subject to the foregoing objections and the General Objections, without waiver or

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limitation thereof, Google states that the following facts relevant to this defense were in its

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possession or accessible to Google at the time it pleaded this defense in its Answer and

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Counterclaims:

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Allegations contained in Oracle’s Complaint and Exhibits (Doc. #1).

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Allegations contained in Oracle’s Amended Complaint and Exhibits (Doc. #36).

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Allegations contained in presentation materials received from Oracle pursuant to Rule 408 of

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the Federal Rules of Evidence.

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The patents-in-suit and their prosecution histories.

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Publicly available documents with information regarding the statements and actions of

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Oracle and its predecessor Sun Microsystems, Inc. including the information disclosed in

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paragraphs 1 through 10 of the counterclaims asserted in Google’s Answer and

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Counterclaims under the heading “The Java Platform and Programming Language,” as well

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as the information produced at GOOGLE-00305323 through GOOGLE-00305769.

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Publicly available documents with information regarding the development of the Android

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Platform, including the information disclosed in paragraphs 11 through 17 of the

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counterclaims asserted in Google’s Answer and Counterclaims under the heading “The Open

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Handset Alliance and Development of the Android Platform.”

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Facts relating to the market for Android as disclosed in paragraphs 20 through 22 under the

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heading “Android and the Java Programming Language” of Google’s Answer and

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Counterclaims. These facts are publicly available, see, e.g., GOOGLE-00320072 through

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GOOGLE-00320077.

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Google further states that, as reflected in Oracle’s Patent Local Rule 3-1 disclosures,

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Oracle was aware of Android pursuant to discussions with Andy Rubin prior to Android’s

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acquisition by Google, which are believed to have occurred at least as early as 2005. Google
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DEFENDANT GOOGLE INC.’S RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE.
CIVIL ACTION NO. CV 10-03561-WHA

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further states that Oracle was aware of Android and the Open Handset Alliance, at least as early

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as November 2007, as reflected by Jonathan Schwartz’s public comments congratulating Google

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and the Open Handset Alliance on the announcement of Android. Nevertheless, Oracle waited

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several years before bringing suit, while the Android market grew and while Google and

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numerous handset manufacturers and other entities made significant investments in the Android

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Platform. Google further states that Oracle’s actions, including statements and actions of its

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predecessor Sun encouraging use of the Java programming language, form the basis of Google’s

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defenses involving waiver, estoppel and laches. Google has a reasonable belief that the

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discovery it requested will reveal additional evidence to support this defense and reserves the

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right to supplement this response accordingly.

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INTERROGATORY NO. 5:

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Please explain the factual and legal bases for Google’s pleading of its fourth affirmative

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defense: Substantial Non-Infringing Uses (Patent).

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RESPONSE:

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In addition to its General Objections, Google objects to this Interrogatory as it seeks

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information protected by the attorney-client privilege, the work product doctrine, and/or any

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other applicable privilege, immunity, or protection. Google further objects to this Interrogatory

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as unduly burdensome as it is not reasonably calculated to lead to the discovery of admissible

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information. Google further objects to the request to “explain” factual bases as vague and

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ambiguous. Google further objects to any implication in this Interrogatory that Google has any

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burden beyond what is required by any applicable statute or case law. Inclusion of Oracle’s

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allegations in the list of facts in this response does not mean that Google agrees with the veracity

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of the allegation, but merely references the fact that particular allegations were made. Google

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expressly maintains all objections made in responsive pleadings. Google further objects to this

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Interrogatory as unnecessary in view of the specific disclosures contemplated by the Patent Local

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Rules as well as premature at least because claim terms have not been construed and any

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response herein is made in view of the lack of certainty with respect to the resolution of the

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meaning of claim terms.
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DEFENDANT GOOGLE INC.’S RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE.
CIVIL ACTION NO. CV 10-03561-WHA

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and design constraints); elements that have entered the public domain; and/or elements that are

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subject to a limited number of forms of expression due to functional or other considerations. In

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addition, any similarities between any protectable elements of the Asserted Works and the

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Android Platform are, at most, de minimis and not actionable. Google has served Interrogatories

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to obtain further details regarding Oracle’s copyright allegations and requires complete responses

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to those Interrogatories to respond more completely to this Interrogatory. Google therefore

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reserves the right to supplement this response accordingly.

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INTERROGATORY NO. 10:

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Please explain the factual and legal bases for Google’s pleading of its eleventh

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affirmative defense: Copyright Unenforceability (Waiver, Estoppel, Laches).

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RESPONSE:

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In addition to its General Objections, Google objects to this Interrogatory as it seeks

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information protected by the attorney-client privilege, the work product doctrine, and/or any

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other applicable privilege, immunity, or protection. Google further objects to this Interrogatory

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as unduly burdensome as it is not reasonably calculated to lead to the discovery of admissible

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information. Google further objects to the request to “explain” factual bases as vague and

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ambiguous. Google further objects to any implication in this Interrogatory that Google has any

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burden beyond what is required by any applicable statute or case law. Google further objects to

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any implication that the theories of copyright unenforceability included under this heading in

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Google’s Answer and Counterclaims necessarily share common factual or legal bases. Google

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further objects to extent that certain factual contentions involved in the pleading of these theories

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were made “upon information and belief,” that after a reasonable opportunity for further

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investigation, Google would likely have evidentiary support. Google has made discovery

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requests related to this defense but has not yet received responsive information. Inclusion of

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Oracle’s allegations in the list of facts in this response does not mean that Google agrees with the

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veracity of the allegation, but merely references the fact that particular allegations were made.

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Google expressly maintains all objections made in responsive pleadings.

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Subject to the foregoing objections and the General Objections, without waiver or
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DEFENDANT GOOGLE INC.’S RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE.
CIVIL ACTION NO. CV 10-03561-WHA

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limitation thereof, Google states that the following facts relevant to this defense were in its

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possession or accessible to Google at the time it pleaded this defense in its Answer and

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Counterclaims:

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Allegations contained in Oracle’s Complaint and Exhibits (Doc. #1).

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Facts contained or cited in Google’s Motion to Dismiss (Doc. #33).

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Allegations contained in Oracle’s Amended Complaint and Exhibits (Doc. #36).

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Allegations contained in Oracle’s Opposition to Google’s Motion to Dismiss (Doc. #40).

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Publicly available information relating to the Asserted Works including the documents

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produced at GOOGLE-00319933 through GOOGLE-00320071.

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Publicly available documents with information regarding the statements and actions of

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Oracle and its predecessor Sun Microsystems, Inc. including the information disclosed in

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paragraphs 1 through 10 of the counterclaims asserted in Google’s Answer and

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Counterclaims under the heading “The Java Platform and Programming Language,” as well

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as the information produced at GOOGLE-00305323 through GOOGLE-00305769.

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Publicly available documents with information regarding the development of the Android

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Platform, including the information disclosed in paragraphs 11 through 17 of the

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counterclaims asserted in Google’s Answer and Counterclaims under the heading “The Open

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Handset Alliance and Development of the Android Platform.”

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Facts relating to the market for Android as disclosed in paragraphs 20 through 22 under the

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heading “Android and the Java Programming Language” of Google’s Answer and

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Counterclaims. These facts are publicly available, see, e.g., GOOGLE-00320072 through

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GOOGLE-00320077.

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Google further states that, as reflected in Oracle’s Patent Local Rule 3-1 disclosures,

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Oracle was aware of Android pursuant to discussions with Andy Rubin prior to Android’s

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acquisition by Google, which are believed to have occurred at least as early as 2005. Google

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further states that Oracle was aware of Android and the Open Handset Alliance, at least as early

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as November 2007, as reflected by Jonathan Schwartz’s public comments congratulating Google

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and the Open Handset Alliance on the announcement of Android. Nevertheless, Oracle waited
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DEFENDANT GOOGLE INC.’S RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE.
CIVIL ACTION NO. CV 10-03561-WHA

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several years before bringing suit, while the Android market grew and while Google and

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numerous handset manufacturers and other entities made significant investments in the Android

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Platform. Google further states that Oracle’s actions, including statements and actions of its

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predecessor Sun encouraging use of the Java programming language, form the basis of Google’s

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defenses involving waiver, estoppel and laches. Google has a reasonable belief that the

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discovery it has requested will reveal additional evidence to support this defense and reserves the

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right to supplement this response accordingly.

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Google further states that, upon information and belief, Oracle knew at least as early as
May 2005 that elements of the Android Platform were made publicly available by the Apache

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Software Foundation under the terms of the Apache Software License version 2.0 and were

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necessary to allow for interoperability. Upon information and belief, Oracle has never pursued

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any claim against the Apache Software Foundation or accused the materials created by the

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Apache Harmony Project of infringement and it is a publicly known fact that many members of

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the software development community have relied upon the availability of software code

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embodied in the Apache Harmony Project materials under the terms of the Apache Software

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License version 2.0 and used or distributed that code under those terms. Google has a reasonable

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belief that the discovery it has requested will reveal additional evidence to support this defense

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and reserves the right to supplement this response accordingly.

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INTERROGATORY NO. 11:

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Please explain the factual and legal bases for Google’s pleading of its twelfth affirmative

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defense: Fair Use.

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RESPONSE:

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In addition to its General Objections, Google objects to this Interrogatory as it seeking

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information protected by the attorney-client privilege, the work product doctrine, and/or any

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other applicable privilege, immunity, or protection. Google further objects to this Interrogatory

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as unduly burdensome as it is not reasonably calculated to lead to the discovery of admissible

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information. Google further objects to the request to “explain” factual bases as vague and

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ambiguous. Google further objects to any implication in this Interrogatory that Google has any
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DEFENDANT GOOGLE INC.’S RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE.
CIVIL ACTION NO. CV 10-03561-WHA

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INTERROGATORY NO. 15:
Please explain the factual and legal bases for Google’s pleading of its seventeenth and

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eighteenth affirmative defenses: License and Implied License.

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RESPONSE:

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In addition to its General Objections, Google objects to this Interrogatory as an explicit

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multiple-part Interrogatory going to two different defenses and the following objections refer to

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both distinct requests. Google further objects to this multi-part Interrogatory as seeking

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information protected by the attorney-client privilege, the work product doctrine, and/or any

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other applicable privilege, immunity, or protection. Google further objects to this multi-part

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Interrogatory as unduly burdensome as it is not reasonably calculated to lead to the discovery of

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admissible information. Google further objects to the request to “explain” factual bases as vague

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and ambiguous. Google further objects to any implication in this multi-part Interrogatory that

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Google has any burden beyond what is required by any applicable statute or case law. Google

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further objects to extent that certain factual contentions involved in the pleading of these

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defenses were made “upon information and belief” that, after a reasonable opportunity for further

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investigation, Google would likely have evidentiary support. Google has served discovery

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requests related to these defenses but has not yet received responsive information. Inclusion of

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Oracle’s allegations in the list of facts in this response does not mean that Google agrees with the

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veracity of the allegation, but merely references the fact that particular allegations were made.

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Google expressly maintains all objections made in responsive pleadings. Google further objects

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to this multi-part Interrogatory as unnecessary with respect to the defenses as they pertain to

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patent in view of the specific disclosures contemplated by the Patent Local Rules.

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Subject to the foregoing objections and the General Objections, without waiver or

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limitation thereof, Google states that the following facts relevant to this defense were in its

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possession or accessible to Google at the time it pleaded these defenses in its Answer and

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Counterclaims:

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Allegations contained in Oracle’s Complaint and Exhibits (Doc. #1).

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Facts contained or cited in Google’s Motion to Dismiss (Doc. #33).
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DEFENDANT GOOGLE INC.’S RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE.
CIVIL ACTION NO. CV 10-03561-WHA

1

Allegations contained in Oracle’s Amended Complaint and Exhibits (Doc. #36).

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Allegations contained in Oracle’s Opposition to Google’s Motion to Dismiss (Doc. #40).

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Publicly available information relating to the Asserted Works including the documents

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produced at GOOGLE-00319933 through GOOGLE-00320071.

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Allegations contained in presentation materials received from Oracle pursuant to Rule 408 of

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the Federal Rules of Evidence.

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The patents-in-suit and their prosecution histories.

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Publicly available documents with information regarding the statements and actions of

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Oracle and its predecessor Sun Microsystems, Inc. including the information disclosed in

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paragraphs 1 through 10 of the counterclaims asserted in Google’s Answer and

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Counterclaims under the heading “The Java Platform and Programming Language,” as well

12

as the information produced at GOOGLE-00305323 through GOOGLE-00305769.

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Publicly available documents with information regarding the development of the Android

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Platform, including the information disclosed in paragraphs 11 through 17 of the

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counterclaims asserted in Google’s Answer and Counterclaims under the heading “The Open

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Handset Alliance and Development of the Android Platform.”

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Facts relating to the market for Android as disclosed in paragraphs 20 through 22 under the

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heading “Android and the Java Programming Language” of Google’s Answer and

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Counterclaims. These facts are publicly available, see, e.g., GOOGLE-00320072 through

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GOOGLE-00320077.

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Google further states that, as presently understood, Oracle’s allegations are directed

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toward one or more functionalities that are likely licensed by alleged direct infringers for at least

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some Accused Instrumentalities. Because Oracle has not specified with precision the Accused

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Instrumentalities and alleged direct infringers, Google cannot respond more completely to this

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Interrogatory. By way of example, certain of Oracle’s allegations with regard to the ‘520 patent

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include its own program, javac, as a component of the allegation. Upon information and belief,

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

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that program. Until Oracle identifies on a claim by claim basis the identity of alleged direct
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DEFENDANT GOOGLE INC.’S RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE.
CIVIL ACTION NO. CV 10-03561-WHA

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infringers performing each step of each claim and Google receives information regarding

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Oracle’s licenses, Google cannot respond more completely to this Interrogatory.

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Google further states that in the absence of an explicit license to asserted patents and

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copyrights, Google and other purported infringers are entitled to an implied license based on

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Oracle’s actions, including statements and actions of its predecessor Sun. Google has a

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reasonable belief that the discovery it has served will reveal additional evidence to support this

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defense and reserves the right to supplement this response accordingly.

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Google further states that, upon information and belief, Oracle knew at least as early as
May 2005 that elements of the Android Platform were made publicly available by the Apache

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Software Foundation under the terms of the Apache Software License version 2.0 and were

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necessary to allow for interoperability. Upon information and belief, Oracle has never pursued

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any claim against the Apache Software Foundation or accused the materials created through the

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Apache Harmony Project of infringement and it is a publicly known fact that many members of

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the software development community have relied upon the availability of software code

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embodied in the Apache Harmony materials under the terms of the Apache Software License

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version 2.0 and used or distributed that code under those terms. Google has a reasonable belief

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that the discovery it has requested will reveal additional evidence to support this defense and

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reserves the right to supplement this response accordingly.

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INTERROGATORY NO. 16:

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Please explain the factual and legal bases for Google’s pleading of its nineteenth

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affirmative defense: Unclean Hands.

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RESPONSE:

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In addition to its General Objections, Google objects to this Interrogatory as it seeking

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information protected by the attorney-client privilege, the work product doctrine, and/or any

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other applicable privilege, immunity, or protection. Google further objects to this Interrogatory

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as unduly burdensome as it is not reasonably calculated to lead to the discovery of admissible

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information. Google further objects to the request to “explain” factual bases as vague and

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ambiguous. Google further objects to any implication in this Interrogatory that Google has any
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DEFENDANT GOOGLE INC.’S RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE.
CIVIL ACTION NO. CV 10-03561-WHA

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DATED: January 6, 2011

KING & SPALDING LLP

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By: /s/ Scott T. Weingaertner

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SCOTT T. WEINGAERTNER (Pro Hac Vice)
[e-mail]
ROBERT F. PERRY
[e-mail]
BRUCE W. BABER (Pro Hac Vice)
[e-mail]
1185 Avenue of the Americas
New York, NY 10036-4003
Telephone: [phone]
Facsimile: [phone]
DONALD F. ZIMMER, JR. (SBN 112279)
[e-mail]
CHERYL A. SABNIS (SBN 224323)
[e-mail]
KING & SPALDING LLP
101 Second Street – Suite 2300
San Francisco, CA 94105
Telephone: [phone]
Facsimile: [phone]
IAN C. BALLON (SBN 141819)
[e-mail]
HEATHER MEEKER (SBN 172148)
[e-mail]
GREENBERG TRAURIG, LLP
1900 University Avenue
East Palo Alto, CA 94303
Telephone: [phone]
Facsimile: [phone]

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ATTORNEYS FOR DEFENDANT
GOOGLE INC.

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DEFENDANT GOOGLE INC.’S RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE.
CIVIL ACTION NO. CV 10-03561-WHA