Oracle America, Inc. v. Google Inc.

Filing 963

RESPONSE (re #958 MOTION ORACLE AMERICA, INC.S MOTION TO ADMIT TRIAL EXHIBIT 1026 ) filed byGoogle Inc.. (Van Nest, Robert) (Filed on 4/22/2012)

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KEKER & VAN NEST LLP
ROBERT A. VAN NEST - # 84065
[e-mail]
CHRISTA M. ANDERSON - # 184325
[e-mail]
MICHAEL S. KWUN - # 198945
[e-mail]
633 Battery Street
San Francisco, CA 94111-1809
Tel: [phone]
Fax: [phone]

KING & SPALDING LLP
DONALD F. ZIMMER, JR. - #112279
[e-mail]
CHERYL A. SABNIS - #224323
[e-mail]
101 Second Street, Suite 2300
San Francisco, CA 94105
Tel: [phone]
Fax: [phone]

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

IAN C. BALLON - #141819
[e-mail]
HEATHER MEEKER - #172148
[e-mail]
GREENBERG TRAURIG, LLP
1900 University Avenue
East Palo Alto, CA 94303
Tel: [phone]
Fax: [phone]

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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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Case No. 3:10-cv-03651 WHA
GOOGLE INC.’S OPPOSITION TO
ORACLE AMERICA, INC.’S MOTION TO
ADMIT TRIAL EXHIBIT 1026
Dept.:
Judge:

Courtroom 8, 19th Floor
Hon. William Alsup

Defendant.

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GOOGLE’S OPPOSITION TO ORACLE’S MOTION TO ADMIT TRIAL EXHIBIT 1026
Case No. 3:10-CV-03561 WHA
653387.01

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Google opposes Oracle America’s motion seeking to admit Trial Exhibit 1026. This

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Exhibit, if admitted, would be far more prejudicial than probative of any issue in this case, and

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certainly of any issue in either of the liability phases of this trial. Oracle’s motion contains

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several misleading omissions that underscore precisely the concerns about prejudice and

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confusion that should keep this exhibit out of evidence under Rule 403.

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Oracle’s motion begins with a quote from the Court as it sustained Google’s objection at

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trial, noting that 1026 “will be in limbo for awhile.” (Br. at 1.) But as the Court also stated:

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“[I]t’s okay for you to say that a license was entered into and move on to something new, but to

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get into these specific details like this, I’m beginning to see the merit in the 403 objection.”

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(4/20/2012 Tr. At 1060:24-1062:2.) For good reason. Oracle’s brief confirms that the 403

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objection was correctly sustained and that the Court should uphold its exclusion.

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Oracle claims that the Danger License “confirms that Mr. Rubin sought and obtained a

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license for Danger without Danger having used any Sun source code.” (Br. at 1 (emphasis in

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original).) Specifically, Oracle refers to a paragraph in the License as support for the proposition

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that “Danger paid for a license to nothing but the Java Specifications.” This selective quote

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fundamentally mischaracterizes the exhibit. The ellipsis masks the fact that code was actually to

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be delivered by Sun under the terms of the agreement. (See TX 1026 at 31-32.) As the Danger

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License states:

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The parties acknowledge that, except for the Shared Part delivered to You by
Original Contributor [Sun Microsystems], Original Contributor has not
provided You under this License, and You assert that You have not accessed any
Original Code, Upgraded Code or other Technology.

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Id. (emphasis added). The Original Contributor is defined as “Sun Microsystems, Inc.” (id. at 17)

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and the contract defines the Shared Part as code:

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e)
“Shared Part” means those Original Code and Upgraded Code
files of the Technology which are identified as “shared” (or words of similar
meaning) or which are in any “share” directory or subdirectory thereof, except
those files specifically designated by Original Contributor as modifiable.
Id. at 18 (emphasis added). Moreover, when deposed on this topic, Mr. Rubin testified that Sun
required licensees to take the Shared Part. (TX 18 (emphasis added).) In other words, Oracle’s
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GOOGLE’S OPPOSITION TO ORACLE’S MOTION TO ADMIT TRIAL EXHIBIT 1026
Case No. 3:10-CV-03561 WHA

653387.01

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primary basis for seeking the admission of Trial Exhibit 1026 is based on an incorrect and

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misleading citation of the Exhibit. For this reason alone, Oracle’s motion should be denied.

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Whether or not anyone at Android “thought” or “knew” it “needed” a license has no

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bearing on the issue of liability in this case, and would be hopelessly confusing even in the

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damages phase. As the above quotation shows, looking at plaintiff’s brief in the most favorable

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light, even Oracle is confused. The confusion of the jurors can be expected to be far worse.

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Oracle’s argument that the Danger License shows that “Sun has required a license for API

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specifications for at least a decade” is also misleading. (Br at 3.) Nowhere in the License are

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APIs broken out for purposes of a separate license, and Oracle does not point to anything in the

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License in support of its position.1 In any event, Oracle does not deny that APIs have been

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around for many years before Java was implemented. (4/19/2012 Tr. at 699 at 14-17). That APIs

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might be mentioned as part of a larger bundle of rights is, therefore, hardly surprising. Oracle’s

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attempt to mischaracterize the Danger License as recognizing APIs as a discrete, stand-alone

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form of protectable IP reveals Oracle’s strategy to try to confuse the jury on this issue—and the

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danger of admitting Trial Exhibit 1026 into evidence.

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Oracle also fails to point out that that the Danger License apparently encompasses the

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conveyance of a trademark license under the Java brand. The Danger License states: “Has

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Trademark License been executed?: Yes”. (Tr. Ex. 1026, at 8.) This is precisely the opposite of

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the situation with Android, which never sought to market itself as Java or even Java-compliant,

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compounding the prejudice and further confusing the jury.

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Oracle also argues that the Danger license “is relevant because it rebuts Google’s

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contention that Java technology was never used for any smartphone, and that Google’s copying

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was therefore transformative and excusable as fair use.” Even if Oracle could prove that Danger

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was a successful mobile platform, Oracle should pursue that goal through testimony about the

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product itself—not through an agreement that has nothing to do with the design of the phone.

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The License is probative of none of those issues.

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To the contrary, the Danger License expressly grants rights “covering the Original Code,
Upgraded Code and Specifications.” (TX 1026 at 10.)
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GOOGLE’S OPPOSITION TO ORACLE’S MOTION TO ADMIT TRIAL EXHIBIT 1026
Case No. 3:10-CV-03561 WHA

653387.01

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Dated: April 23, 2012
By:

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KEKER & VAN NEST LLP
/s/ Robert A. Van Nest
ROBERT A. VAN NEST
Attorneys for Defendant GOOGLE INC.

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GOOGLE’S OPPOSITION TO ORACLE’S MOTION TO ADMIT TRIAL EXHIBIT 1026
Case No. 3:10-CV-03561 WHA
653387.01