Oracle America, Inc. v. Google Inc.

Filing 985

Statement Google's Comments on the Court's April 25 Draft Special Verdict Form by Google Inc.. (Van Nest, Robert) (Filed on 4/25/2012)

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KEKER & VAN NEST LLP
ROBERT A. VAN NEST - # 84065
[e-mail]
CHRISTA M. ANDERSON - # 184325
[e-mail]
DANIEL PURCELL - # 191424
[e-mail]
633 Battery Street
San Francisco, CA 94111-1809
Telephone:
415 391 5400
Facsimile:
415 397 7188

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-03561 WHA
GOOGLE’S COMMENTS ON THE
COURT’S APRIL 25 DRAFT SPECIAL
VERDICT FORM
Dept.:
Judge:

Courtroom 8, 19th Floor
Hon. William Alsup

Defendant.

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GOOGLE’S COMMENTS ON THE COURT’S APRIL 25 DRAFT SPECIAL VERDICT FORM
Case No. 3:10-CV-03561 WHA
654411.01

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The parties have met and conferred regarding the draft special verdict form that the Court
gave to counsel today. The parties have been unable to reach agreement.
Google believes the verdict form can be simplified substantially and still address all the

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issues that the jury needs to decide.
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The parties do not yet know how the Court will instruct the jury on the “work as a whole”

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issues relating to the different claims made by Oracle, or on other important issues such as (1) the

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standards of substantial similarity as opposed to virtual identity; (2) the burden of proof as to the

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de minimis issues; and (3) what, if any, assumptions the jury should make regarding the

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copyrightability of the SSO of the 37 API packages when considering the de minimis issues.
Subject to Google’s right to propose further modifications to the special verdict form once

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Google knows how the Court plans to proceed with the instructions, Google comments and
suggests that the draft verdict form should be modified as follows:
General Comments: Google suggests that all references in the verdict form to “37 APIs”

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should be changed to “37 API packages.” Although different witnesses have used different

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terminology to refer to the portions of the parties’ software that is at issue, the phrase “API

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packages” correctly identifies the 37 portions at issue.

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Google also believes that use of the word “copied” in the verdict form prejudices Google.
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As Google has recently briefed, the Supreme Court, the Ninth Circuit and many other courts have

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repeatedly stated that “not all copying is copyright infringement.” See Google April 22 Brief,

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Dkt. No. 955 at 1213. Suggesting to the jury that any finding of any “copying” ends the

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infringement inquiry is inconsistent with that well-established law.

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Question 1A: The jury does not need to answer two questions to decide the infringement
issue as to the SSO of the 37 API packages. As drafted, Question 1A reads as if Oracle needs to

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prove two separate things: (1) that the APIs as group “had” an overall SSO and (2) that Google
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GOOGLE’S COMMENTS ON THE COURT’S APRIL 25 DRAFT SPECIAL VERDICT FORM
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“copied” that SSO. Neither part asks the correct question. The API packages do have “an” SSO

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of some kind, and it is therefore not clear what the first part of the question will mean to jurors.

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In light of Google’s stipulation that the SSO of the 37 accused API packages in Android is

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substantially the same as the SSO of the corresponding 37 API packages in Java, the second part
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is unnecessary.
The issue for the jury to decide is whether the use in Android of the overall SSO of the 37

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accused API packages as a group infringes, i.e., whether it is sufficient to meet the standard of

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substantial similarity or virtual identity when the works are compared as a whole. The following

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revised Question 1A will frame the issue correctly:
1.

As to the 37 API packages in question taken as a group:

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A.

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organization of the 37 API packages in Android infringes Oracle’s copyrights?
Yes (for Oracle) ________

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Has Oracle proven that the overall structure, sequence and

No (for Google) ________

(If you answered “no” to Question 1A, then skip to Question 2)

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Question 1B: Google’s only comment on question 1B is that the word “constituted”

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could be changed to “is,” so as to simplify the question. The revised Question 1B would read as
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follows:
B.

If so, has Google proven that its use of the overall structure, sequence

and organization is a fair use?
Yes (for Google) ________

No (for Oracle) ________

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Questions 2A and 2B: Questions 2A and 2B are unnecessary. Oracle included no claim

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like the one that is the subject of Question 2A in its “Statement Of Issues” filed on April 12.
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GOOGLE’S COMMENTS ON THE COURT’S APRIL 25 DRAFT SPECIAL VERDICT FORM
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(Dkt. No. 899). Further, there has been no proof of any copyrighted work consisting of an

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individual API package implementation.

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Question 2C and 2D: For reasons similar to those stated above for Question 1A,

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Question 2C does not correctly identify the issue the jury needs to decide, and there has been no
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evidence distinguishing the documentation in any one API package from that in others.
The following set of questions is simpler and clearer, could be used with proper

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instructions regarding infringement, substantial similarity, virtual identity, and “work as a whole”

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regardless of the content of the instructions, and would be similar in format to Questions 1A and

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1B:

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2.

As to the documentation for the 37 API packages taken as a group:

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A.

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Has Oracle proven that the documentation for the 37 API packages in

Android infringes Oracle’s copyrights?

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Yes (for Oracle) ________

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No (for Google) ________

(If you answered “no” to Question 2A, then skip to Question 3)

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B.

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If so, has Google proven that its use of the documentation is a fair use?
Yes (for Google) ________

No (for Oracle) ________

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Question 3:

Question 3 can also be simplified and reduced from nine questions to one.

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Google does not assert a fair use defense as to the twelve files containing allegedly copied

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elements. The only relevant issue as to those files is not “copying”; it is whether the accused

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materials are so insignificant that their inclusion is de minimis. Depending on the Court’s ruling

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on burden of proof as to the de minimis issue, Question 3 can be stated as simply as:

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3.

[If Oracle has the burden of proof on de minimis] Has Oracle proven that the use in

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Android of any of the items listed below was more than de minimis?
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GOOGLE’S COMMENTS ON THE COURT’S APRIL 25 DRAFT SPECIAL VERDICT FORM
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A. The rangeCheck method in
TimSort.java and
ComparableTimSort.java

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B. The source code in the eight
ACL “Impl.java” files

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C. The English language comments
in CodeSourceTest.java and
CollectionsCertStoreParameters
Test.java

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Yes (for Oracle) ________

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No (for Google) ________

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or
3.

[If Google has the burden of proof on de minimis] Has Google proven that the

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use in Android of the items listed below was de minimis?
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A. The rangeCheck method in
TimSort.java and
ComparableTimSort.java

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B. The source code in the eight
ACL “Impl.java” files

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C. The English language comments
in CodeSourceTest.java and
CollectionsCertStoreParameters
Test.java

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Yes (for Google) ________

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For ease of reference, Google attaches a complete set of the above revised questions as
Exhibit A.
Dated: April 25, 2012

KEKER & VAN NEST LLP

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No (for Oracle) ________

By:

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

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GOOGLE’S COMMENTS ON THE COURT’S APRIL 25 DRAFT SPECIAL VERDICT FORM
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EXHIBIT A

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1.

A.

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As to the 37 API packages in question taken as a group:

organization of the 37 API packages in Android infringes Oracle’s copyrights?

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Has Oracle proven that the overall structure, sequence and

Yes (for Oracle) ________

No (for Google) ________

(If you answered “no” to Question 1A, then skip to Question 2)

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B.

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If so, has Google proven that its use of the overall structure, sequence

and organization is a fair use?
Yes (for Google) ________

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No (for Oracle) ________

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2.

As to the documentation for the 37 API packages taken as a group:
A.

Has Oracle proven that the documentation for the 37 API packages in

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Android infringes Oracle’s copyrights?
Yes (for Oracle) ________

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No (for Google) ________

(If you answered “no” to Question 2A, then skip to Question 3)

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B.

If so, has Google proven that its use of the documentation is a fair use?
Yes (for Google) ________

No (for Oracle) ________

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GOOGLE’S COMMENTS ON THE COURT’S APRIL 25 DRAFT SPECIAL VERDICT FORM
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3.

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was more than de minimis?

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Has Oracle proven that the use in Android of any of the items listed below

A. The rangeCheck method in
TimSort.java and
ComparableTimSort.java
B. The source code in the eight
ACL “Impl.java” files
C. The English language comments
in CodeSourceTest.java and
CollectionsCertStoreParameters
Test.java

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Yes (for Oracle) ________

No (for Google) ________

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GOOGLE’S COMMENTS ON THE COURT’S APRIL 25 DRAFT SPECIAL VERDICT FORM
Case No. 3:10-CV-03561 WHA
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