Oracle America, Inc. v. Google Inc.

Filing 959

MOTION ORACLE AMERICA, INC.S MOTION SEEKING A CLARIFYING INSTRUCTION AND PROFFER REGARDING APACHE HARMONY filed by Oracle America, Inc.. Responses due by 5/7/2012. Replies due by 5/14/2012. (Holtzman, Steven) (Filed on 4/22/2012)

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C A L I F O R N I A

S C H I L L E R
B O I E S ,

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MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[e-mail]
MARC DAVID PETERS (Bar No. 211725)
[e-mail]
DANIEL P. MUINO (Bar No. 209624)
[e-mail]
755 Page Mill Road, Palo Alto, CA 94304-1018
Telephone: [phone] / Facsimile: [phone]
BOIES, SCHILLER & FLEXNER LLP
DAVID BOIES (Admitted Pro Hac Vice)
[e-mail]
333 Main Street, Armonk, NY 10504
Telephone: [phone] / Facsimile: [phone]
STEVEN C. HOLTZMAN (Bar No. 144177)
[e-mail]
1999 Harrison St., Suite 900, Oakland, CA 94612
Telephone: [phone] / Facsimile: [phone]
ALANNA RUTHERFORD (Admitted Pro Hac Vice)
[e-mail]
575 Lexington Avenue, 7th Floor, New York, NY 10022
Telephone: [phone] / Facsimile: [phone]
ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[e-mail]
DEBORAH K. MILLER (Bar No. 95527)
[e-mail]
MATTHEW M. SARBORARIA (Bar No. 211600)
[e-mail]
500 Oracle Parkway, Redwood City, CA 94065
Telephone: [phone] / Facsimile: [phone]
Attorneys for Plaintiff
ORACLE AMERICA, INC.
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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Case No. CV 10-03561 WHA

Plaintiff,

ORACLE AMERICA, INC.’S MOTION
SEEKING A CLARIFYING INSTRUCTION
AND PROFFER REGARDING APACHE
HARMONY

Defendant.

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

v.
GOOGLE, INC.

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ORACLE’S MOTION REGARDING APACHE HARMONY
CASE NO. CV 10-03561 WHA

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Oracle requests that the Court give a clarifying instruction to the jury regarding Apache
Harmony to minimize jury confusion on the legal significance of Apache Harmony.
Introduction
Google has repeatedly argued to the jury that Apache Harmony had used Sun’s Java APIs and

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license,” which does not actually mean any license from Sun to Apache or Apache to Google, but

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instead confusingly refers to the standard Apache terms that Google imposes on Android licensees.

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Harmony. Further, Google repeatedly refers to its distribution of Android under an “Apache

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very simple: Apache never obtained any license from Sun permitting its use of the Java

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specifications for Harmony. As made clear by Apache itself, Apache never had a license from Sun or

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Google has also repeatedly argued, and elicited evidence, that it took the 37 accused APIs from

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that “Sun said fine.” (E.g., 4/17/2012 Trial Tr. at 251:14-252:3 (Google Opening Statement).)

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Oracle for Harmony. Apache had no rights to Java technology that it could give to Google. This not

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even a case in which there is a “cloud over Apache,” to use the Court’s phrase (4/20/2012 Trial Tr.

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1114:16-20). Apache simply had no title at all, and has publicly conceded as much: When Apache

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resigned from the JCP in protest based on its inability to obtain a license, it stated in its resignation

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that the “Java specifications are proprietary technology that must be licensed directly from the spec

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lead under whatever terms the spec lead chooses.” (TX 1045 at p. 2.)

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These arguments create a substantial risk of juror confusion and prejudice to Oracle.
Two of the three questions from the jurors have focused on Apache, but the issue is actually

Thus, Google’s use of Apache Harmony provides no defense for Google. Oracle seeks an

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instruction to the jury that will prevent confusion and clarify that Google’s use of Harmony provides

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no defense to Oracle’s copyright infringement claims.

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Background
Before 2007, the Apache Software Foundation (“Apache”) began a project to develop an

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independent Java SE implementation, which it named Harmony. Apache used the specifications set

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forth on Sun’s website to implement the Java APIs in Harmony. (4/17/2012 Trial Tr. at 251:15-16

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(Google opening).) Use of those specifications for an independent implementation requires a

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specification license, and if any distribution of the independent implementation is sought, a TCK is
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ORACLE’S MOTION REGARDING APACHE HARMONY
CASE NO. CV 10-03561 WHA

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license is required. (TX 610.2) Apache sought a TCK license from Sun for Harmony, which Sun

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refused to grant without a field of use restriction that would prohibit any use in mobile devices. In

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April 2007, Apache posted on its website a letter to Sun’s Jonathan Schwartz in which Apache

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criticized Sun for refusing to grant Apache a TCK license for Harmony. (TX 917.) Apache stated

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that Sun was offering a TCK license for Harmony, but Sun’s insistence that its licenses include “field

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of use”1 restrictions, prevented Apache from accepting the license. (Id.)
The disagreement and negotiations between Sun and Apache continued for a number of years,
and in the end Apache never received any license from Sun for Harmony. (4/17/2012 Trial Tr. at

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396:8-9 (Kurian); 4/18/2012 Trial Tr. at 527:18-20 (Screven); 4/19/2012 Trial Tr. at 829:6-10 (Lee).)

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Apache resigned from the JCP in protest based on its inability to obtain that license, and stated in its

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resignation that the “Java specifications are proprietary technology that must be licensed directly

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from the spec lead under whatever terms the spec lead chooses.” (TX 1045 at p. 2.) Apache then

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later retired the Harmony project. (4/18/2012 Trial Tr. at 530:2-5 (Screven testimony).2)

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Oracle’s Concern
Google’s presentation of evidence related to Apache Harmony will confuse and mislead the

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jury and prejudice Oracle. Consistent with settled copyright law, the parties have agreed that Google

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“cannot excuse what would otherwise be copyright infringement by claiming that it copied, with or

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without a license, from a third party, who in turn had copied from Oracle. (Dkt. 539 at 61 (Google’s

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Proposed Jury Instruction No. 18); compare id. at 60 (Oracle Proposed Jury Instruction No. 18).)

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Google’s repeated invocation of Apache Harmony and the “Apache license” risks leading the jury

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into legal error and confusion. Accordingly, clarification from the Court is both necessary and

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proper.

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In its opening, Google featured a May 2007 internet publication that quoted Sun’s Jonathan
Schwartz as stating “there is no reason that Apache cannot ship Harmony today.” (TX 2341.) When

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1 Field of use restrictions prevented Harmony from being used on devices other than computers, such
as mobile phones. (4/18/2012 Tr. at 524:19-25 (Screven)).

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2 See http://harmony.apache.org/subcomponents/drlvm/ (“Apache Harmony is retired at the Apache

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Software Foundation”).
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ORACLE’S MOTION REGARDING APACHE HARMONY
CASE NO. CV 10-03561 WHA

Apache or anyone else would “call it Java.” Indeed, the article repeats much of the licensing dispute

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between Sun and Apache recounted above. Immediately following the quote cited by Google, the

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article states, “That is technically true but Apache officials said that to do so with the TCK

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restrictions in place would actually go against the Apache Software license.” (TX 2341.)
Oracle is also concerned that Google is conflating and confusing three separate issues

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regarding “Apache” in general: (1) Apache’s use of Sun’s Java specifications for Harmony; (2)

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Google’s use of code from Apache Harmony; and (3) Google distribution of Android under the

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Apache license. In its 10-minute presentation to the jury, Google’s counsel stated that:

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is not a press release. In the article, there is no mention by Mr. Schwartz or anyone else whether

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(4/20/2012 Tr. at 1123:17-1124:5.) That characterization of the exhibit was inaccurate. The exhibit

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from a press release where Mr. Schwartz said you can ship as long as you don’t call it Java.”

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questioned by the Court about that article, Google’s counsel characterized the article as “an excerpt

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Third piece of importance evidence, you know now Apache was out there using these
APIs, the same Structure, Selection and Organization they are claiming now, and they
have been out there for years. …
Apache was out there selling -- now, there’s an Apache license that Apache gives.
When Mr. Rubin is here next week, you'll hear that Google is distributing Android
under the Apache license, which allows you to use all the APIs, some of the APIs,
none of the APIs. The Apache license is what Google has been distributing under.
But the key point of Apache is not its license. The key point is, Sun was fully aware
that here is somebody out there making these libraries and APIs available and they
didn’t do anything about it.
(4/20/2012 Tr. at 940:16-941:9.) There is no dispute that Google offers Android under an Apache-

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style license, and that Apache used the Java specifications for Harmony, and that Google used
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Harmony code for Android. But those are separate issues, and Google’s presentation risks
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confusion.3 Indeed, the form of license under which Apache distributed Harmony and under which

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Google distributes Android is irrelevant to any issue in this case. Google’s repeated reference to
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3 Indeed, the Court previously noted the risk of juror confusion when two different pieces of evidence

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coincidentally are described the same way. (Mar. 7, 2012 Hearing Tr. at 56:16-57:6 (warning that
jurors would be confused by the fact that Java engineers grouped the patents in the Sun Java mobile
technology portfolio into 22 categories, and then identified the top 22 patents overall).

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ORACLE’S MOTION REGARDING APACHE HARMONY
CASE NO. CV 10-03561 WHA

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these irrelevant licenses could foster the misperception that Apache—and by extension Google—had

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a license from Sun.

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Apache acknowledged publicly – and Google has not disputed – that Apache had not obtained

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distribute Harmony, “users wouldn’t be assured that they had all necessary IP rights from the spec’s

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contributors.” (TX 1047 ).

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The webpage containing Apache’s April 10, 2007 letter to Sun recognized that Apache

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917), Apache also posted a FAQ (TX 1047), which stated in pertinent part that if Apache chose to

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needed a TCK “to demonstrate compatibility with the Java SE 5 specification, as required by the Sun

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specification license for Java SE 5.” (TX 917.) Sun’s specification license permitted development

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and distribution of an “Independent Implementation of the Specification” but required that any such

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implementation pass the TCK and stated: “The foregoing license is expressly conditioned on your

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IP rights from Sun. In connection with the letter that Apache posted to its website in April 2007 (TX

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any license from Sun for Harmony, and warned that users of Harmony would not have all necessary

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not acting outside its scope. No license is granted hereunder for any other purpose.” (TX 610.1).

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Apache never passed the TCK for Harmony, and Apache had no license.

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The statement attributed to Mr. Schwartz in Trial Exhibit 2341 is consistent with Apache’s

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own statements, which confirm that Apache could comply with Sun’s TCK terms and ship, but until

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then, Apache had not obtained the necessary IP rights from Sun and any users – such as Google –

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would be at risk. As recently as December 2010, when Apache resigned from the JCP Executive

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Committee, Apache recognized that the “Java specifications are proprietary technology that must be

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licensed directly from the spec lead under whatever terms the spec lead chooses.” (TX 1045 at p. 2.)

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Oracle’s Request For Relief

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To address the potential confusion and prejudice caused by Google’s arguments regarding

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Apache Harmony, and also possibly to streamline the next phase of this trial and prevent the

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introduction of unnecessary and confusing evidence, Oracle believes that a clarifying instruction to

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the jury regarding the Apache Harmony issues is warranted. Oracle proposes the following:

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You have heard testimony regarding a project called Apache Harmony, and you have
also heard testimony regarding an Apache license. These are two separate issues, and
I will provide some clarification on those two issues now.
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ORACLE’S MOTION REGARDING APACHE HARMONY
CASE NO. CV 10-03561 WHA

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Harmony was a project by the Apache Software Foundation to develop an
independent implementation of Sun’s Java specification. The parties do not dispute
that the Apache Software Foundation used Sun’s Java specifications for Harmony.
There is also no dispute that the Apache Software Foundation sought a TCK license
from Sun for Harmony, but Sun refused to grant one.

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There has been evidence that Google used code from Harmony for Android. Because
Sun never granted the Apache Software Foundation a TCK license for Harmony, you
may not find that Google’s use of Harmony conveyed to Google any rights to use
Sun’s Java specifications, or provides Google with any defense to copyright
infringement, if you find that such infringement occurred.

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You have also heard about the “Apache license.” The Apache license is a type of
open source license that Google chose for its distribution of Android. It is not a
license under which Sun made Java intellectual property rights available. Google’s
distribution of Android under an Apache-type license is separate from the issue of
Apache Harmony. The fact that Google distributes Android under an Apache license
has nothing to do with Google’s use of code from Harmony, and also does not
provide Google with any defense to copyright infringement, if you find that such
infringement occurred.

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Dated: April 22, 2012

BOIES, SCHILLER & FLEXNER LLP
By: Steven C. Holtzman
Steven C. Holtzman
Attorneys for Plaintiff
ORACLE AMERICA, INC.

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ORACLE’S MOTION REGARDING APACHE HARMONY
CASE NO. CV 10-03561 WHA