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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Exhibit C 1 2 3 4 5 6 7 8 9 10 11 12 13 14 DONALD F. ZIMMER, JR. (SBN 112279) fzimmer@kslaw.com CHERYL A. SABNIS (SBN 224323) csabnis@kslaw.com KING & SPALDING LLP 101 Second Street – Suite 2300 San Francisco, CA 94105 Telephone: (415) 318-1200 Facsimile: (415) 318-1300 IAN C. BALLON (SBN 141819) ballon@gtlaw.com HEATHER MEEKER (SBN 172148) meekerh@gtlaw.com GREENBERG TRAURIG, LLP 1900 University Avenue East Palo Alto, CA 94303 Telephone: (650) 328-8500 Facsimile: (650) 328-8508 SCOTT T. WEINGAERTNER (Pro Hac Vice) sweingaertner@kslaw.com ROBERT F. PERRY rperry@kslaw.com BRUCE W. BABER (Pro Hac Vice) bbaber@kslaw.com KING & SPALDING LLP 1185 Avenue of the Americas New York, NY 10036-4003 Telephone: (212) 556-2100 Facsimile: (212) 556-2222 Attorneys for Defendant GOOGLE INC. 15 UNITED STATES DISTRICT COURT 16 NORTHERN DISTRICT OF CALIFORNIA 17 SAN FRANCISCO DIVISION 18 19 ORACLE AMERICA, INC. 20 Plaintiff, 21 v. 22 GOOGLE INC. 23 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 24 25 26 27 28 CONFIDENTIAL 1 SPECIFIC OBJECTIONS AND RESPONSES 2 Google’s responses to Plaintiff’s Interrogatories are based upon Google’s current 3 information and belief as a result of reasonable searches and inquiries. Google reserves its right 4 to amend and supplement its responses as it learns additional facts. 5 INTERROGATORY NO. 4: 6 Please explain the factual and legal bases for Google’s pleading of its third affirmative 7 defense: Patent Unenforceability (Waiver, Estoppel, Laches). 8 SUPPLEMENTAL RESPONSE: 9 In addition to its General Objections, Google objects to this Interrogatory as it seeks 10 information protected by the attorney-client privilege, the work product doctrine, and/or any 11 other applicable privilege, immunity, or protection. Google further objects to this Interrogatory 12 as unduly burdensome as it is not reasonably calculated to lead to the discovery of admissible 13 information. Google further objects to the request to “explain” factual bases as vague and 14 ambiguous. Google further objects to any implication in this Interrogatory that Google has any 15 burden beyond what is required by any applicable statute or case law. Google further objects to 16 any implication that the theories of patent unenforceability included under this heading in 17 Google’s Answer and Counterclaims necessarily share common factual or legal bases. 18 Google further objects to the extent that certain factual contentions involved in the 19 pleading of these theories were made “upon information and belief” that, after a reasonable 20 opportunity for further investigation, Google would likely have evidentiary support. Google has 21 served discovery requests related to this defense but has not yet received completion of 22 production of responsive information. Google further objects on the basis that Oracle has 23 produced excessive amounts of non-responsive and irrelevant documents, produced incomplete 24 materials in a haphazard manner, withheld what are likely the most pertinent documents to many 25 defenses based on a broad privilege screen, removed “exception” documents with certain non- 26 searchable attachments for manual review (which has not been completed), and inexplicably 27 taken months to produce certain plainly relevant documents despite repeated requests and 28 7 CONFIDENTIAL DEFENDANT GOOGLE INC.’S SUPPLEMENTAL RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE, NOS. 4-16. CIVIL ACTION NO. CV 10-03561-WHA 1 assurances that it was collecting responsive documents. The combined effect of the foregoing is 2 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 4 junk e-mail. Further, Google believes due to Oracle’s approach, the most pertinent information 5 to Google’s defenses has yet to be produced by Oracle despite being over half way through fact 6 discovery. 7 Inclusion of Oracle’s allegations in the list of facts in this response does not mean that 8 Google agrees with the veracity of the allegation, but merely references the fact that particular 9 allegations were made. Google expressly maintains all objections made in responsive pleadings. 10 Google further objects to this Interrogatory as unnecessary in view of the specific disclosures 11 contemplated by the Patent Local Rules as well as premature at least because claim terms have 12 not been construed and any response herein is made in view of the lack of certainty with respect 13 to the resolution of the meaning of claim terms. 14 Subject to the foregoing objections and the General Objections, without waiver or 15 limitation thereof, Google states that the following facts relevant to this defense were in its 16 possession or accessible to Google at the time it pleaded this defense in its Answer and 17 Counterclaims: 18 Allegations contained in Oracle’s Complaint and Exhibits (Doc. #1). 19 Allegations contained in Oracle’s Amended Complaint and Exhibits (Doc. #36). 20 Allegations contained in presentation materials received from Oracle pursuant to Rule 408 of 21 the Federal Rules of Evidence. 22 The patents-in-suit and their prosecution histories. 23 Publicly available documents with information regarding the statements and actions of 24 Oracle and its predecessor Sun Microsystems, Inc. including the information disclosed in 25 paragraphs 1 through 10 of the counterclaims asserted in Google’s Answer and 26 Counterclaims under the heading “The Java Platform and Programming Language,” as well 27 as the information produced at GOOGLE-00305323 through GOOGLE-00305769. 28 8 CONFIDENTIAL DEFENDANT GOOGLE INC.’S SUPPLEMENTAL RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE, NOS. 4-16. CIVIL ACTION NO. CV 10-03561-WHA 1 Publicly available documents with information regarding the development of the Android 2 Platform, including the information disclosed in paragraphs 11 through 17 of the 3 counterclaims asserted in Google’s Answer and Counterclaims under the heading “The Open 4 Handset Alliance and Development of the Android Platform.” 5 Facts relating to the market for Android as disclosed in paragraphs 20 through 22 under the 6 heading “Android and the Java Programming Language” of Google’s Answer and 7 Counterclaims. These facts are publicly available, see, e.g., GOOGLE-00320072 through 8 GOOGLE-00320077. 9 Google further states that, as reflected in Oracle’s Final Patent L.R. 3-1 Contentions, 10 Oracle was aware of Android pursuant to discussions with Andy Rubin prior to Android’s 11 acquisition by Google, which are believed to have occurred at least as early as 2005. Also, on 12 May 26, 2006, Oracle representatives met with Andy Rubin to discuss CDC-HI and open source. 13 See, e.g., OAGOOGLE0100029446. Google further states that Sun believed Android to 14 allegedly infringe Sun’s proprietary rights at least as early as these discussions, but no later than 15 November 15, 2007, which knowledge is properly attributed to Oracle. See Deposition of 16 Andrew E. Rubin, 26:7-11; OAGOOGLE0000240996. 17 18 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 28 9 CONFIDENTIAL DEFENDANT GOOGLE INC.’S SUPPLEMENTAL RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE, NOS. 4-16. CIVIL ACTION NO. CV 10-03561-WHA 1 alleged “incompatible implementation” that Sun had been unwilling to enforce legal rights 2 against. See OAGOOGLE0000110526_00002106. In that same presentation, Sun claims that 3 “Dalvik is essentially a fine-tuned version of Java, which Google made to avoid licensing fees,” 4 but ultimately concludes that Sun should pursue a policy that “compatibility is optional” or in 5 other words, not pursue or threaten litigation against Google. See id. Further, Sun continuously 6 touted the fact that Java is meant to be open source and free. See, e.g., 7 OAGOOGLE0000110534_00121381, Java SE Open Source: Communications and Marketing 8 Plan dated October 4, 2006 (Regarding November 6th Launch: “What we’ll say: ‘Java is Free!’”). 9 Indeed, based on this open source policy, some Sun representatives believed that they could not 10 11 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, 12 Oracle (after acquiring Sun and the patents-in-suit) waited several years before bringing suit, 13 while the Android market grew and while Google and numerous handset manufacturers and 14 other entities made significant investments in the Android Platform. Google further states that 15 Oracle’s actions cited herein, including statements and actions of its predecessor Sun 16 encouraging use of the Java programming language, form the basis of Google’s defenses 17 involving waiver, estoppel and laches. Sun’s / Oracle’s delay was unreasonable, Google 18 reasonably relied on Sun’s / Oracle’s acquiescence and delay; and, if Sun or Oracle had asserted 19 claims earlier, Google could have made different choices regarding the inclusion of certain 20 elements in Android. Sun’s / Oracle’s delay has been prejudicial to Google in several respects, 21 including that numerous relevant documents (including patent-related correspondence by the 22 inventors) were apparently not maintained by Sun / Oracle, memories of witnesses have faded, 23 and Google has been required to expend significant resources defending Oracle’s late claims. 24 INTERROGATORY NO. 5: 25 26 Please explain the factual and legal bases for Google’s pleading of its fourth affirmative defense: Substantial Non-Infringing Uses (Patent). 27 28 10 CONFIDENTIAL DEFENDANT GOOGLE INC.’S SUPPLEMENTAL RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE, NOS. 4-16. CIVIL ACTION NO. CV 10-03561-WHA 1 operation. To invoke the functionalities of any API (such as math.abs()), a programmer simply 2 uses the appropriate method name. In addition, the following three Java APIs are unprotectable 3 because they were released into the public domain by their author, Doug Lea: 4 java.util.concurrent, java.util.concurrent.atomic, and java.util.concurrent.locks. 5 In addition, any similarities between any protectable elements of the Asserted Works and 6 the Android Platform are, at most, de minimis and not actionable. Google has served 7 Interrogatories to obtain further details regarding Oracle’s copyright allegations and requires 8 complete responses to those Interrogatories to respond more completely to this Interrogatory. 9 Google therefore reserves the right to supplement this response accordingly. 10 11 INTERROGATORY NO. 10: Please explain the factual and legal bases for Google’s pleading of its eleventh 12 affirmative defense: Copyright Unenforceability (Waiver, Estoppel, Laches). 13 SUPPLEMENTAL RESPONSE: 14 In addition to its General Objections, Google objects to this Interrogatory as it seeks 15 information protected by the attorney-client privilege, the work product doctrine, and/or any 16 other applicable privilege, immunity, or protection. Google further objects to this Interrogatory 17 as unduly burdensome as it is not reasonably calculated to lead to the discovery of admissible 18 information. Google further objects to the request to “explain” factual bases as vague and 19 ambiguous. Google further objects to any implication in this Interrogatory that Google has any 20 burden beyond what is required by any applicable statute or case law. Google further objects to 21 any implication that the theories of copyright unenforceability included under this heading in 22 Google’s Answer and Counterclaims necessarily share common factual or legal bases. Google 23 further objects to the extent that certain factual contentions involved in the pleading of these 24 theories were made “upon information and belief,” that after a reasonable opportunity for further 25 investigation, Google would likely have evidentiary support. 26 27 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 28 25 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 2 incomplete materials in a haphazard manner, withheld what are likely the most pertinent 3 documents to many defenses based on a broad privilege screen, removed “exception” documents 4 with certain non-searchable attachments for manual review (which has not been completed), and 5 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 8 sift through large quantities of non-responsive and irrelevant documents such as personal 9 photographs and junk e-mail. Further, Google believes due to Oracle’s approach, the most 10 pertinent information to Google’s defenses has yet to be produced by Oracle despite being over 11 half way through fact discovery. 12 Inclusion of Oracle’s allegations in the list of facts in this response does not mean that 13 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. 15 Subject to the foregoing objections and the General Objections, without waiver or 16 limitation thereof, Google states that the following facts relevant to this defense were in its 17 possession or accessible to Google at the time it pleaded this defense in its Answer and 18 Counterclaims: 19 Allegations contained in Oracle’s Complaint and Exhibits (Doc. #1). 20 Facts contained or cited in Google’s Motion to Dismiss (Doc. #33). 21 Allegations contained in Oracle’s Amended Complaint and Exhibits (Doc. #36). 22 Allegations contained in Oracle’s Opposition to Google’s Motion to Dismiss (Doc. #40). 23 Publicly available information relating to the Asserted Works including the documents 24 produced at GOOGLE-00319933 through GOOGLE-00320071. 25 Publicly available documents with information regarding the statements and actions of 26 Oracle and its predecessor Sun Microsystems, Inc. including the information disclosed in 27 paragraphs 1 through 10 of the counterclaims asserted in Google’s Answer and 28 26 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 2 as the information produced at GOOGLE-00305323 through GOOGLE-00305769. 3 Publicly available documents with information regarding the development of the Android 4 Platform, including the information disclosed in paragraphs 11 through 17 of the 5 counterclaims asserted in Google’s Answer and Counterclaims under the heading “The Open 6 Handset Alliance and Development of the Android Platform.” 7 Facts relating to the market for Android as disclosed in paragraphs 20 through 22 under the 8 heading “Android and the Java Programming Language” of Google’s Answer and 9 Counterclaims. These facts are publicly available, see, e.g., GOOGLE-00320072 through 10 11 GOOGLE-00320077. Google expressly incorporates by references its response to Interrogatory No. 4. Google 12 further states that, as reflected in Oracle’s Patent Local Rule 3-1 disclosures, Oracle was aware 13 of Android pursuant to discussions with Andy Rubin prior to Android’s acquisition by Google, 14 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 28 27 CONFIDENTIAL DEFENDANT GOOGLE INC.’S SUPPLEMENTAL RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE, NOS. 4-16. CIVIL ACTION NO. CV 10-03561-WHA 1 on the launch of Android, form the basis of Google’s defenses of waiver, estoppel and laches. 2 Sun’s / Oracle’s delay was unreasonable, Google reasonably relied on Sun’s / Oracle’s 3 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 5 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 7 maintained by Sun / Oracle, memories of witnesses have faded, and Google has been required to 8 expend significant resources defending Oracle’s late claims. 9 Google further states that, upon information and belief, Oracle knew at least as early as 10 May 2005 that elements of the Android Platform were made publicly available by the Apache 11 Software Foundation under the terms of the Apache Software License version 2.0 and that use of 12 these elements was necessary to allow for interoperability. Google further states that, upon 13 information and belief, Oracle knew at least as early as April 2004 that elements of the Java 14 platform were made publicly available by the GNU Project. Upon information and belief, Oracle 15 has never pursued any claim against the Apache Software Foundation or the GNU Project or 16 accused the materials created by the Apache Harmony Project or the GNU Classpath Project of 17 infringement and it is a publicly known fact that many members of the software development 18 community have relied upon the availability of software code embodied in the Apache Harmony 19 Project materials under the terms of the Apache Software License version 2.0, or embodied in 20 the GNU Classpath Project materials under the terms of the GNU General Public License, and 21 used or distributed that code under those terms. Google has a reasonable belief that the 22 discovery it has requested will reveal additional evidence to support this defense and reserves the 23 right to supplement this response accordingly. 24 INTERROGATORY NO. 11: 25 26 Please explain the factual and legal bases for Google’s pleading of its twelfth affirmative defense: Fair Use. 27 28 28 CONFIDENTIAL DEFENDANT GOOGLE INC.’S SUPPLEMENTAL RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE, NOS. 4-16. CIVIL ACTION NO. CV 10-03561-WHA 1 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 10 produced at GOOGLE-00319933 through GOOGLE-00320071. 11 Documents relating to third parties including statements of work, which are being withheld 12 pending third party permission to produce, and authorized contributor questionnaires 13 produced at GOOGLE-00320078 through GOOGLE-00320235. 14 Google further states that Google took reasonable steps to insure that any third parties 15 involved in the development of Android did not use or reference existing source code other than 16 materials that were in the public domain and/or openly available through permissive (or 17 equivalent) licenses. Examples of representations to this effect by such third parties are included 18 in the production cited. To the extent any third party or individual did not perform its tasks 19 according to Google’s requirements, those actions were without Google’s knowledge and are not 20 attributable to Google. Google further states that it identified third parties that contributed to the 21 development of Android in response to Interrogatory No. 1. 22 INTERROGATORY NO. 15: 23 Please explain the factual and legal bases for Google’s pleading of its seventeenth and 24 eighteenth affirmative defenses: License and Implied License. 25 SUPPLEMENTAL RESPONSE: 26 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 28 37 CONFIDENTIAL DEFENDANT GOOGLE INC.’S SUPPLEMENTAL RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE, NOS. 4-16. CIVIL ACTION NO. CV 10-03561-WHA 1 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 28 38 CONFIDENTIAL DEFENDANT GOOGLE INC.’S SUPPLEMENTAL RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE, NOS. 4-16. CIVIL ACTION NO. CV 10-03561-WHA 1 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 28 39 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. 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 9 Contentions, Oracle has still not identified specific purported direct infringers and instead 10 identified broad categories such as developers. Oracle has also significantly changed it 11 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 28 40 CONFIDENTIAL DEFENDANT GOOGLE INC.’S SUPPLEMENTAL RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE, NOS. 4-16. CIVIL ACTION NO. CV 10-03561-WHA 1 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 3 software code embodied in the Apache Harmony materials under the terms of the Apache 4 Software License version 2.0 and used or distributed that code under those terms. Google further 5 states that, on information and belief, starting in 1998, Professor Doug Lea wrote a software 6 package called “dl.util.concurrent,” and released it into the public domain by explicitly 7 disclaiming all rights in the software. See, e.g., 8 http://gee.cs.oswego.edu/dl/classes/EDU/oswego/cs/dl/util/concurrent/intro.html Similarly, on 9 information and belief, starting in 1999 and continuing through at least 2005, Oracle’s 10 predecessor, Sun Microsystems, Inc., donated reference implementations for the javax.xml 11 packages to the Apache Foundation under the terms of the Apache Software License version 2.0. 12 See, e.g., http://mail-archives.apache.org/mod_mbox/xerces-j- 13 dev/200102.mbox/%3C3A7B534B.2017AE0F@eng.sun.com%3E. 14 Google further states that Oracle continues to produce licenses that were requested 15 several months ago with the most recent production dated April 1, 2011, and Google has not had 16 a meaningful opportunity to review all of the licenses. Google has a reasonable belief that the 17 discovery it has requested will reveal additional evidence to support this defense and reserves the 18 right to supplement this response accordingly. 19 INTERROGATORY NO. 16: 20 Please explain the factual and legal bases for Google’s pleading of its nineteenth 21 affirmative defense: Unclean Hands. 22 SUPPLEMENTAL RESPONSE: 23 In addition to its General Objections, Google objects to this Interrogatory as seeking 24 information protected by the attorney-client privilege, the work product doctrine, and/or any 25 other applicable privilege, immunity, or protection. Google further objects to this Interrogatory 26 as unduly burdensome as it is not reasonably calculated to lead to the discovery of admissible 27 information. Google further objects to the request to “explain” factual bases as vague and 28 41 CONFIDENTIAL DEFENDANT GOOGLE INC.’S SUPPLEMENTAL RESPONSES TO PLAINTIFF’S INTERROGATORIES, SET ONE, NOS. 4-16. CIVIL ACTION NO. CV 10-03561-WHA 1 License version 2.0, or embodied in the GNU Classpath Project materials under the terms of the 2 GNU General Public License, and used or distributed that code under those terms. Google has a 3 reasonable belief that the discovery it has requested will reveal additional evidence to support 4 this defense and reserves the right to supplement this response accordingly. 5 6 7 DATED: April 25, 2011 KING & SPALDING LLP By: /s/ Scott T. Weingaertner 8 9 10 11 12 13 14 SCOTT T. WEINGAERTNER (Pro Hac Vice) sweingaertner@kslaw.com ROBERT F. PERRY rperry@kslaw.com BRUCE W. BABER (Pro Hac Vice) bbaber@kslaw.com 1185 Avenue of the Americas New York, NY 10036-4003 Telephone: (212) 556-2100 Facsimile: (212) 556-2222 15 16 17 18 19 20 21 22 23 24 25 26 27 28 DONALD F. ZIMMER, JR. (SBN 112279) fzimmer@kslaw.com CHERYL A. SABNIS (SBN 224323) csabnis@kslaw.com KING & SPALDING LLP 101 Second Street – Suite 2300 San Francisco, CA 94105 Telephone: (415) 318-1200 Facsimile: (415) 318-1300 IAN C. BALLON (SBN 141819) ballon@gtlaw.com HEATHER MEEKER (SBN 172148) meekerh@gtlaw.com GREENBERG TRAURIG, LLP 1900 University Avenue East Palo Alto, CA 94303 Telephone: (650) 328-8500 Facsimile: (650) 328-8508 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

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