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 C

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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
SUPPLEMENTAL RESPONSES TO
PLAINTIFF’S INTERROGATORIES, SET
ONE, NOS. 4-16

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CONFIDENTIAL

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SPECIFIC OBJECTIONS AND RESPONSES

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Google’s responses to Plaintiff’s Interrogatories are based upon Google’s current

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information and belief as a result of reasonable searches and inquiries. Google reserves its right

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to amend and supplement its responses as it learns additional facts.

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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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SUPPLEMENTAL 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.

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Google further objects to the extent that certain factual contentions involved in the

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pleading of these theories were made “upon information and belief” that, after a reasonable

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opportunity for further investigation, Google would likely have evidentiary support. Google has

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served discovery requests related to this defense but has not yet received completion of

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production of responsive information. Google further objects on the basis that Oracle has

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produced excessive amounts of non-responsive and irrelevant documents, produced incomplete

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materials in a haphazard manner, withheld what are likely the most pertinent documents to many

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defenses based on a broad privilege screen, removed “exception” documents with certain non-

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searchable attachments for manual review (which has not been completed), and inexplicably

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taken months to produce certain plainly relevant documents despite repeated requests and

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CONFIDENTIAL
DEFENDANT GOOGLE INC.’S SUPPLEMENTAL RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE, NOS. 4-16.
CIVIL ACTION NO. CV 10-03561-WHA

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assurances that it was collecting responsive documents. The combined effect of the foregoing is

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that review of Oracle’s production has been exceedingly difficult as Google has to sift through

3

large quantities of non-responsive and irrelevant documents such as personal photographs and

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junk e-mail. Further, Google believes due to Oracle’s approach, the most pertinent information

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to Google’s defenses has yet to be produced by Oracle despite being over half way through fact

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discovery.

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Inclusion of Oracle’s allegations in the list of facts in this response does not mean that

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Google agrees with the veracity of the allegation, but merely references the fact that particular

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allegations were made. Google expressly maintains all objections made in responsive pleadings.

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Google further objects to this Interrogatory as unnecessary in view of the specific disclosures

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contemplated by the Patent Local Rules as well as premature at least because claim terms have

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not been construed and any response herein is made in view of the lack of certainty with respect

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to the resolution of 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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CONFIDENTIAL
DEFENDANT GOOGLE INC.’S SUPPLEMENTAL RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE, NOS. 4-16.
CIVIL ACTION NO. CV 10-03561-WHA

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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 Final Patent L.R. 3-1 Contentions,

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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. Also, on

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May 26, 2006, Oracle representatives met with Andy Rubin to discuss CDC-HI and open source.

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See, e.g., OAGOOGLE0100029446. Google further states that Sun believed Android to

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allegedly infringe Sun’s proprietary rights at least as early as these discussions, but no later than

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November 15, 2007, which knowledge is properly attributed to Oracle. See Deposition of

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Andrew E. Rubin, 26:7-11; OAGOOGLE0000240996.

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On information and belief, Sun never intended to assert patent infringement claims
against Google relating to Android and Google relied on Sun’s position. See, e.g., Steve Lohr,

19 Software War Pits Oracle v. Google, N.Y. Times, August 30, 2010 (“Sun eventually chose not to
20 sue Google, the former Sun manager said, because it decided a patent lawsuit would undercut the
21 company’s open-source efforts under Jonathan Schwartz, Sun’s chief executive who resigned in
22 February after the Oracle acquisition.”). In fact, former Sun CEO Jonathan Schwartz
23 congratulated Google when Android was announced and publicly commented that “[t]oday is an
24 incredible day for the open source community, and a massive endorsement of two of the
25 industry’s most prolific free software communities . . . .”
26 http://blogs.sun.com/jonathan/entry/congratulations_google. In addition, in an October 24, 2008
27 presentation entitled “Compatibility is Optional,” Sun cites to Android as an example of an
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CONFIDENTIAL
DEFENDANT GOOGLE INC.’S SUPPLEMENTAL RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE, NOS. 4-16.
CIVIL ACTION NO. CV 10-03561-WHA

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alleged “incompatible implementation” that Sun had been unwilling to enforce legal rights

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against. See OAGOOGLE0000110526_00002106. In that same presentation, Sun claims that

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“Dalvik is essentially a fine-tuned version of Java, which Google made to avoid licensing fees,”

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but ultimately concludes that Sun should pursue a policy that “compatibility is optional” or in

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other words, not pursue or threaten litigation against Google. See id. Further, Sun continuously

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touted the fact that Java is meant to be open source and free. See, e.g.,

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OAGOOGLE0000110534_00121381, Java SE Open Source: Communications and Marketing

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Plan dated October 4, 2006 (Regarding November 6th Launch: “What we’ll say: ‘Java is Free!’”).

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Indeed, based on this open source policy, some Sun representatives believed that they could not

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even “sue Google . . . given this [Java] is Open Source.” See OAGOOGLE0000240996.
Nevertheless, despite Sun’s publicly stated position and Google’s reliance on the same,

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Oracle (after acquiring Sun and the patents-in-suit) waited several years before bringing suit,

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while the Android market grew and while Google and numerous handset manufacturers and

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other entities made significant investments in the Android Platform. Google further states that

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

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

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involving waiver, estoppel and laches. Sun’s / Oracle’s delay was unreasonable, Google

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reasonably relied on Sun’s / Oracle’s acquiescence and delay; and, if Sun or Oracle had asserted

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claims earlier, Google could have made different choices regarding the inclusion of certain

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elements in Android. Sun’s / Oracle’s delay has been prejudicial to Google in several respects,

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including that numerous relevant documents (including patent-related correspondence by the

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inventors) were apparently not maintained by Sun / Oracle, memories of witnesses have faded,

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and Google has been required to expend significant resources defending Oracle’s late claims.

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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
defense: Substantial Non-Infringing Uses (Patent).

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CONFIDENTIAL
DEFENDANT GOOGLE INC.’S SUPPLEMENTAL RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE, NOS. 4-16.
CIVIL ACTION NO. CV 10-03561-WHA

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operation. To invoke the functionalities of any API (such as math.abs()), a programmer simply

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uses the appropriate method name. In addition, the following three Java APIs are unprotectable

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because they were released into the public domain by their author, Doug Lea:

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java.util.concurrent, java.util.concurrent.atomic, and java.util.concurrent.locks.

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

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

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

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complete responses to those Interrogatories to respond more completely to this Interrogatory.

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Google therefore reserves the right to supplement this response accordingly.

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INTERROGATORY NO. 10:
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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SUPPLEMENTAL 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 the extent that certain factual contentions involved in the pleading of these

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

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investigation, Google would likely have evidentiary support.

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Google has served discovery requests related to this defense but has not yet received
completion of production of responsive information. Google further objects on the basis that

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CONFIDENTIAL
DEFENDANT GOOGLE INC.’S SUPPLEMENTAL RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE, NOS. 4-16.
CIVIL ACTION NO. CV 10-03561-WHA

1

Oracle has produced excessive amounts of non-responsive and irrelevant documents, produced

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incomplete materials in a haphazard manner, withheld what are likely the most pertinent

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documents to many defenses based on a broad privilege screen, removed “exception” documents

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with certain non-searchable attachments for manual review (which has not been completed), and

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inexplicably taken months to produce certain plainly relevant documents despite repeated

6

requests and assurances that it was collecting responsive documents. The combined effect of the

7

foregoing is that review of Oracle’s production has been exceedingly difficult as Google has to

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sift through large quantities of non-responsive and irrelevant documents such as personal

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photographs and junk e-mail. Further, Google believes due to Oracle’s approach, the most

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pertinent information to Google’s defenses has yet to be produced by Oracle despite being over

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half way through fact discovery.

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Inclusion of Oracle’s allegations in the list of facts in this response does not mean that

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Google agrees with the veracity of the allegation, but merely references the fact that particular

14

allegations were made. 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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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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CONFIDENTIAL
DEFENDANT GOOGLE INC.’S SUPPLEMENTAL RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE, NOS. 4-16.
CIVIL ACTION NO. CV 10-03561-WHA

1

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.
Google expressly incorporates by references its response to Interrogatory No. 4. Google

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

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of Android pursuant to discussions with Andy Rubin prior to Android’s acquisition by Google,

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which are believed to have occurred at least as early as 2005. Also, on May 26, 2006, Oracle

15

representatives met with Andy Rubin to discuss CDC-HI and open source. See, e.g.,

16 OAGOOGLE0100029446. Google further states that Sun believed Android to allegedly infringe
17 Sun’s proprietary rights at least as early as these discussions, but no later than November 15,
18 2007, which knowledge is properly attributed to Oracle. See Deposition of Andrew E. Rubin,
19 26:7-11; OAGOOGLE0000240996. Google further states that Oracle was aware of Android and
20 the Open Handset Alliance, at least as early as November 2007, as reflected by Jonathan
21 Schwartz’s public comments congratulating Google and the Open Handset Alliance on the
22 announcement of Android.
23

Oracle nevertheless delayed several years before bringing suit (even though the Android

24 source code was publicly available), while the Android market grew and while Google and
25 numerous handset manufacturers and other entities made significant investments in the Android
26 Platform. Google further states that Oracle’s actions, including statements and actions of its
27 predecessor Sun encouraging use of the Java programming language and congratulating Google
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CONFIDENTIAL
DEFENDANT GOOGLE INC.’S SUPPLEMENTAL RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE, NOS. 4-16.
CIVIL ACTION NO. CV 10-03561-WHA

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on the launch of Android, form the basis of Google’s defenses of waiver, estoppel and laches.

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Sun’s / Oracle’s delay was unreasonable, Google reasonably relied on Sun’s / Oracle’s

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acquiescence and delay; and, if Sun or Oracle had asserted claims earlier, Google could have

4

made different choices regarding the inclusion of certain elements in Android. Sun’s / Oracle’s

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delay has been prejudicial to Google in several respects, including that numerous relevant

6

documents (including complete copies of the Asserted Works themselves) were apparently not

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maintained by Sun / Oracle, memories of witnesses have faded, and Google has been required to

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expend significant resources defending Oracle’s late claims.

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Google further states that, upon information and belief, Oracle knew at least as early as

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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 that use of

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these elements was necessary to allow for interoperability. Google further states that, upon

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information and belief, Oracle knew at least as early as April 2004 that elements of the Java

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platform were made publicly available by the GNU Project. Upon information and belief, Oracle

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has never pursued any claim against the Apache Software Foundation or the GNU Project or

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accused the materials created by the Apache Harmony Project or the GNU Classpath Project of

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infringement and it is a publicly known fact that many members of the software development

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community have relied upon the availability of software code embodied in the Apache Harmony

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Project materials under the terms of the Apache Software License version 2.0, or embodied in

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the GNU Classpath Project materials under the terms of the GNU General Public License, and

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used or distributed that code under those terms. 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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INTERROGATORY NO. 11:

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26

Please explain the factual and legal bases for Google’s pleading of its twelfth affirmative
defense: Fair Use.

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CONFIDENTIAL
DEFENDANT GOOGLE INC.’S SUPPLEMENTAL RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE, NOS. 4-16.
CIVIL ACTION NO. CV 10-03561-WHA

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

2

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

3

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

4

Counterclaims:

5

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

6

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

7

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

8

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

9

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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Documents relating to third parties including statements of work, which are being withheld

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pending third party permission to produce, and authorized contributor questionnaires

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produced at GOOGLE-00320078 through GOOGLE-00320235.

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Google further states that Google took reasonable steps to insure that any third parties

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involved in the development of Android did not use or reference existing source code other than

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materials that were in the public domain and/or openly available through permissive (or

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equivalent) licenses. Examples of representations to this effect by such third parties are included

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in the production cited. To the extent any third party or individual did not perform its tasks

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according to Google’s requirements, those actions were without Google’s knowledge and are not

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attributable to Google. Google further states that it identified third parties that contributed to the

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development of Android in response to Interrogatory No. 1.

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INTERROGATORY NO. 15:

23

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.

25

SUPPLEMENTAL RESPONSE:

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27

In addition to its General Objections, Google objects to this Interrogatory as an explicit
multiple-part Interrogatory going to two different defenses and the following objections refer to

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CONFIDENTIAL
DEFENDANT GOOGLE INC.’S SUPPLEMENTAL RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE, NOS. 4-16.
CIVIL ACTION NO. CV 10-03561-WHA

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

2

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

3

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

4

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

5

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

6

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

7

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

8

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

9

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

10
11

investigation, Google would likely have evidentiary support.
Google has served discovery requests related to these defenses but has not yet received

12

completion of production of responsive information. Google further objects on the basis that

13

Oracle has produced excessive amounts of non-responsive and irrelevant documents, produced

14

incomplete materials in a haphazard manner, withheld what are likely the most pertinent

15

documents to many defenses based on a broad privilege screen, removed “exception” documents

16

with certain non-searchable attachments for manual review (which has not been completed), and

17

inexplicably taken months to produce certain plainly relevant documents despite repeated

18

requests and assurances that it was collecting responsive documents. The combined effect of the

19

foregoing is that review of Oracle’s production has been exceedingly difficult as Google has to

20

sift through large quantities of non-responsive and irrelevant documents such as personal

21

photographs and junk e-mail. Further, Google believes due to Oracle’s approach, the most

22

pertinent information to Google’s defenses has yet to be produced by Oracle despite being over

23

half way through fact discovery.

24

Inclusion of Oracle’s allegations in the list of facts in this response does not mean that

25

Google agrees with the veracity of the allegation, but merely references the fact that particular

26

allegations were made. Google expressly maintains all objections made in responsive pleadings.

27

Google further objects to this multi-part Interrogatory as unnecessary with respect to the

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CONFIDENTIAL
DEFENDANT GOOGLE INC.’S SUPPLEMENTAL RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE, NOS. 4-16.
CIVIL ACTION NO. CV 10-03561-WHA

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defenses as they pertain to patent in view of the specific disclosures contemplated by the Patent

2

Local Rules.

3

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

4

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

5

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

6

Counterclaims:

7

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

8

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

9

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

10

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

11

Publicly available information relating to the Asserted Works including the documents

12

produced at GOOGLE-00319933 through GOOGLE-00320071.

13

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

14

the Federal Rules of Evidence.

15

The patents-in-suit and their prosecution histories.

16

Publicly available documents with information regarding the statements and actions of

17

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

18

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

19

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

20

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

21

Publicly available documents with information regarding the development of the Android

22

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

23

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

24

Handset Alliance and Development of the Android Platform.”

25

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

26

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

27
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CONFIDENTIAL
DEFENDANT GOOGLE INC.’S SUPPLEMENTAL RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE, NOS. 4-16.
CIVIL ACTION NO. CV 10-03561-WHA

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

2

GOOGLE-00320077.

3

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

4

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

5

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

6

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

7

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

8

include its own program, javac, as a component of the allegation. In its Final Patent L.R. 3-1

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Contentions, Oracle has still not identified specific purported direct infringers and instead

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identified broad categories such as developers. Oracle has also significantly changed it

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allegations in its supplementation on April 1, although it still has not identified on a claim by

12

claim basis the identity of alleged direct infringers performing each step of each claim, making

13

Google’s investigation into this defense difficult. Further, Oracle continues to produce licenses,

14

including incomplete license portions produced in a haphazard manner. Google is still analyzing

15

these new allegations and will supplement as it receives more information regarding Oracle’s

16

licenses.

17

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

18

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

19

Oracle’s actions, including the statements, actions and inactions of its predecessor Sun as

20

referenced in Google’s answers set forth above. Google has a reasonable belief that the

21

discovery it has served but not yet received complete production of will reveal additional

22

evidence to support this defense and reserves the right to supplement this response accordingly.

23

Google further states that, upon information and belief, Oracle knew at least as early as

24

May 2005 that elements of the Android Platform were made publicly available by the Apache

25

Software Foundation under the terms of the Apache Software License version 2.0 and that use of

26

these elements was necessary to allow for interoperability. Upon information and belief, Oracle

27

has never pursued any claim against the Apache Software Foundation or accused the materials

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CONFIDENTIAL
DEFENDANT GOOGLE INC.’S SUPPLEMENTAL RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE, NOS. 4-16.
CIVIL ACTION NO. CV 10-03561-WHA

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created through the Apache Harmony Project of infringement and it is a publicly known fact that

2

many members of the software development community have relied upon the availability of

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software code embodied in the Apache Harmony materials under the terms of the Apache

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Software License version 2.0 and used or distributed that code under those terms. Google further

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states that, on information and belief, starting in 1998, Professor Doug Lea wrote a software

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package called “dl.util.concurrent,” and released it into the public domain by explicitly

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disclaiming all rights in the software. See, e.g.,

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http://gee.cs.oswego.edu/dl/classes/EDU/oswego/cs/dl/util/concurrent/intro.html Similarly, on

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information and belief, starting in 1999 and continuing through at least 2005, Oracle’s

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predecessor, Sun Microsystems, Inc., donated reference implementations for the javax.xml

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packages to the Apache Foundation under the terms of the Apache Software License version 2.0.

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See, e.g., http://mail-archives.apache.org/mod_mbox/xerces-j-

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dev/200102.mbox/[e-mail]%3E.

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Google further states that Oracle continues to produce licenses that were requested

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several months ago with the most recent production dated April 1, 2011, and Google has not had

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a meaningful opportunity to review all of the licenses. 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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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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SUPPLEMENTAL RESPONSE:

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In addition to its General Objections, Google objects to this 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 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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41
CONFIDENTIAL
DEFENDANT GOOGLE INC.’S SUPPLEMENTAL RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE, NOS. 4-16.
CIVIL ACTION NO. CV 10-03561-WHA

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License version 2.0, or embodied in the GNU Classpath Project materials under the terms of the

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GNU General Public License, and used or distributed that code under those terms. Google has a

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

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this defense and reserves the right to supplement this response accordingly.

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DATED: April 25, 2011

KING & SPALDING LLP
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]

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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]
ATTORNEYS FOR DEFENDANT
GOOGLE INC.
46
CONFIDENTIAL
DEFENDANT GOOGLE INC.’S SUPPLEMENTAL RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE, NOS. 4-16.
CIVIL ACTION NO. CV 10-03561-WHA