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Oracle v. Google - Final Copyright Filngs, Jury Instructions, Verdict Form ~mw |
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Tuesday, May 01 2012 @ 11:00 AM EDT
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The jury is out on the question of copyright liability, the judge having given them their instructions (1018 [PDF; Text]) and the (Special Verdict Form [PDF; Text]) they are to complete. There is a lot of evidence for the jury to wade through even though the questions themselves seem to be pretty basic.
In the meantime the parties are moving ahead with preparations for Phase II of the trial - patent infringement liability. Oracle has identified its first ten witnesses for Phase II - (1025 [PDF; Text])
Google, for its part, takes aim at one section of Dr. Kearl's (the court appointed damages expert) damages report, specifically that Dr. Kearl went beyond the law in determining patent damages. (1023 [PDF; Text]) The law requires those damages to be determined solely on the intellectual property at issue in the case. Google asserts that, when Dr. Kearl suggested that "no apportionment is appropriate, and that Google should be charged a royalty for the entire bundle," Dr. Kearl ignored the rule of law.
In his deposition Dr. Kearl acknowledged there may be some inconsistency, and, as Google points out, the Court previously rejected this same approach when suggested by Oracle's damages expert. Google is asking that paragraphs 97-105 of Dr. Kearl's report, the paragraphs suggesting this approach, be stricken.
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Docket
04/30/2012 - 1016 -
OBJECTIONS to re 1012 Order Oracle's Objections to the Court's Final
Charge to the Jury and Special Verdict Form (Phase One) by Oracle
America, Inc.. (Jacobs, Michael) (Filed on 4/30/2012) (Entered:
04/30/2012)
04/30/2012 - 1017 -
NOTICE OF JURY INSTRUCTIONS. Signed by Judge Alsup on April 30, 2012.
(Attachments: # 1 Special
Verdict Form)(whalc1, COURT STAFF) (Filed on 4/30/2012) (Entered:
04/30/2012)
04/30/2012 - 1018 - FINAL
CHARGE TO THE JURY AND SPECIAL VERDICT FORM. Signed by Judge Alsup on
April 30, 2012. (Attachments: # 1 Special Verdict
Form)(whalc1, COURT STAFF) (Filed on 4/30/2012) (Entered: 04/30/2012)
04/30/2012 - 1020 - Minute Entry: Jury Trial held on 4/30/2012 before
William Alsup (Date Filed: 4/30/2012). Closing Arguments held. Jury
Instructions read. Deliberations began. Further Jury Trial set for
5/1/2012 8:00 AM. (Court Reporter Kathy Sullivan; Debra Pas.) (dt, COURT
STAFF) (Date Filed: 4/30/2012) (Entered: 04/30/2012)
04/30/2012 - 1021 - MOTION
Oracle's Notice of Motion and Motion for Administrative Relief to
Supplement the Joint Exhibit List re 991 Order on Administrative Motion
to File Under Seal filed by Oracle America, Inc.. Responses due by
5/14/2012. Replies due by 5/21/2012. (Peters, Marc) (Filed on 4/30/2012)
(Entered: 04/30/2012)
04/30/2012 - 1022 -
EXHIBITS re 991 Order on Administrative Motion to File Under Seal
Exhibits 1 - 3 to Declaration of Marc David Peters in Support of
Oracle's Motion for Administrative Relief to Supplement the Joint
Exhibit List filed by Oracle America, Inc.. (Related document(s) 991 )
(Peters, Marc) (Filed on 4/30/2012) (Entered: 04/30/2012)
04/30/2012 - 1023 - MOTION
to Strike Portions of Dr. James Kearl's Expert Report (Public Version
Pursuant to Dkt. No. 935) filed by Google Inc.. Responses due by
5/14/2012. Replies due by 5/21/2012. (Attachments: # 1 Exhibit
A)(Van Nest, Robert) (Filed on 4/30/2012) (Entered: 04/30/2012)
04/30/2012 - 1024 - DOCUMENT E-FILED UNDER SEAL re 935 Order on
Administrative Motion to File Under Seal, Google's Opposition to
Oracle's Motion to Strike Portions of Dr. James Kearl's Expert Report by
Google Inc.. (Attachments: # 1 Exhibit A)(Van Nest, Robert) (Filed on
4/30/2012) (Entered: 04/30/2012)
04/30/2012 - 1025 - Witness
List by Oracle America, Inc. Rolling List of Next Ten Witnesses. (Muino,
Daniel) (Filed on 4/30/2012) (Entered: 04/30/2012)
04/30/2012 - 1026 - DOCUMENT E-FILED UNDER SEAL re 935 Order on
Administrative Motion to File Under Seal, MOTION TO EXCLUDE
PORTIONS OF RULE 706 EXPERT REPORT OF DR. JAMES KEARL by Oracle America,
Inc.. (Holtzman, Steven) (Filed on 4/30/2012) (Entered: 04/30/2012)
04/30/2012 - 1027 - DOCUMENT E-FILED UNDER SEAL re 935 Order on
Administrative Motion to File Under Seal, EXHIBITS TO DECLARATION
OF MEREDITH DEARBORN IN SUPPORT OF ORACLE AMERICA, INC.S MOTION TO
EXCLUDE PORTIONS OF THE RULE 706 EXPERT REPORT OF DR. JAMES KEARL by
Oracle America, Inc.. (Holtzman, Steven) (Filed on 4/30/2012) (Entered:
04/30/2012)
04/30/2012 - 1028 -
REDACTION to 935 Order on Administrative Motion to File Under
Seal, MOTION TO EXCLUDE PORTIONS OF THE RULE 706 EXPERT REPORT OF
DR. JAMES KEARL by Oracle America, Inc.. (Holtzman, Steven) (Filed on
4/30/2012) (Entered: 04/30/2012)
04/30/2012 - 1029 -
REDACTION to 935 Order on Administrative Motion to File Under
Seal, EXHIBITS TO DECLARATION OF MEREDITH DEARBORN IN SUPPORT OF
ORACLE AMERICA, INC.S MOTION TO EXCLUDE PORTIONS OF THE RULE 706 EXPERT
REPORT OF DR. JAMES KEARL by Oracle America, Inc.. (Attachments: # 1 Exhibit F &
H)(Holtzman, Steven) (Filed on 4/30/2012) (Entered: 04/30/2012)
04/30/2012 - 1030 - DOCUMENT E-FILED UNDER SEAL re 935 Order on
Administrative Motion to File Under Seal,,,,,,, ORACLE AMERICA, INC.S
OPPOSITION TO GOOGLES MOTION TO STRIKE PORTIONS OF DR. JAMES KEARLS
EXPERT REPORT by Oracle America, Inc.. (Holtzman, Steven) (Filed on
4/30/2012) (Entered: 04/30/2012)
04/30/2012 - 1031 - DOCUMENT E-FILED UNDER SEAL re 935 Order on
Administrative Motion to File Under Seal,,,,,,, EXHIBITS C & H TO
DECLARATION OF MEREDITH DEARBORN IN SUPPORT OF ORACLE AMERICA, INC.S
OPPOSITION TO GOOGLES MOTION TO STRIKE PORTIONS OF DR. JAMES KEARLS
EXPERT REPORT by Oracle America, Inc.. (Holtzman, Steven) (Filed on
4/30/2012) (Entered: 04/30/2012)
04/30/2012 - 1032 -
REDACTION to 935 Order on Administrative Motion to File Under
Seal, ORACLE AMERICA, INC.S OPPOSITION TO GOOGLES MOTION TO STRIKE
PORTIONS OF DR. JAMES KEARLS EXPERT REPORT by Oracle America, Inc..
(Holtzman, Steven) (Filed on 4/30/2012) (Entered: 04/30/2012)
04/30/2012 - 1033 -
EXHIBITS re 935 Order on Administrative Motion to File Under Seal,,,,,,,
872 Declaration in Support, TO DECLARATION OF MEREDITH DEARBORN IN
SUPPORT OF ORACLE AMERICA, INC.S OPPOSITION TO GOOGLES MOTION TO STRIKE
PORTIONS OF DR. JAMES KEARLS EXPERT REPORT filed byOracle America, Inc..
(Related document(s) 935 , 872 ) (Holtzman, Steven) (Filed on 4/30/2012)
(Entered: 04/30/2012)
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Documents
1018
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
ORACLE AMERICA, INC.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.
No. C 10-03561 WHA
FINAL CHARGE TO THE JURY (PHASE ONE)
AND SPECIAL VERDICT FORM
1.
Members of the jury, it is now time for me to give you the final
instructions, including instructions on the law that governs this case. A copy of
these instructions will be available in the jury room for you to consult as
necessary.
It is your duty to find the facts from all the evidence and to decide whether
the side with the burden of proof has carried that burden, applying the elements of
proof required by the law, elements I will provide you in a moment. In following
my instructions, you must follow all of them and not single out some and ignore
others. You must not read into these instructions or into anything the Court may
have said or done as suggesting what verdict you should return — that is a matter
entirely up to you.
2.
The evidence from which you are to decide what the facts are consists of:
1. The sworn testimony of witnesses, whether presented in
person or by depositions;
2. The exhibits received into evidence; and
3. Any stipulated facts or facts I told you were deemed to be
evidence.
3.
Certain things, however, are not evidence, and you may not consider them
in deciding what the facts are. I will list them for you:
1. Arguments, statements and objections by lawyers are not
evidence. The lawyers are not witnesses. What they have
said in their opening statements, closing arguments and at
other times is intended to help you interpret the evidence,
but it is not evidence itself. If the facts as you remember
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them differ from the way the lawyers have stated them,
your memory of them controls.
2. A suggestion in a question by counsel or the Court is not
evidence unless it is adopted by the answer. A question by
itself is not evidence. Consider it only to the extent it is
adopted by the answer.
3. Testimony or exhibits that have been excluded or stricken,
or that you have been instructed to disregard, are not
evidence and must not be considered. In addition, some
testimony and exhibits have been received only for a
limited purpose; where I have given a limiting instruction,
you must follow it.
4. Anything you may have seen or heard when the Court was
not in session is not evidence.
4.
Evidence may be direct or circumstantial. Direct evidence is direct proof
of a fact, such as testimony by a witness about what that witness personally saw
or heard, or did. Circumstantial evidence is proof of one or more facts from
which you could find another fact. By way of example, if you wake up in the
morning and see that the sidewalk is wet, you may find from that fact that it
rained during the night. However, other evidence, such as a turned-on garden
hose, may explain the presence of water on the sidewalk. Therefore, before you
decide that a fact has been proved by circumstantial evidence, you must consider
all the evidence in the light of reason, experience and common sense. You should
consider both kinds of evidence. The law makes no distinction between the
weight to be given to either direct or circumstantial evidence. It is for you to
decide how much weight to give to any evidence.
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5.
In deciding the facts in this case, you may have to decide which testimony
to believe and which testimony not to believe. You may believe everything a witness says, or part of it or none of it. In considering the testimony of any
witness, you may take into account:
1. The opportunity and ability of the witness to see or hear or
know the things testified to;
2. The witness’ memory;
3. The witness’ manner while testifying;
4. The witness’ interest in the outcome of the case and any
bias or prejudice;
5. Whether other evidence contradicted the witness’
testimony;
6. The reasonableness of the witness’ testimony in light of all
the evidence; and
7. Any other factors that bear on believability.
6.
You are not required to decide any issue according to the testimony of a
number of witnesses, which does not convince you, as against the testimony of a
smaller number or other evidence, which is more convincing to you. The
testimony of one witness worthy of belief is sufficient to prove any fact. This
does not mean that you are free to disregard the testimony of any witness merely
from caprice or prejudice, or from a desire to favor either side. It does mean that
you must not decide anything by simply counting the number of witnesses who
have testified on the opposing sides. The test is not the number of witnesses but
the convincing force of the evidence. You should base your decision on all of the
evidence regardless of which party presented it.
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7.
A witness may be discredited or impeached by contradictory evidence or
by evidence that, at some other time, the witness has said or done something or
has failed to say or do something that is inconsistent with the witness’ present
testimony. If you believe any witness has been impeached and thus discredited,
you may give the testimony of that witness such credibility, if any, you think it
deserves.
8.
Discrepancies in a witness’ testimony or between a witness’ testimony and
that of other witnesses do not necessarily mean that such witness should be
discredited. Inability to recall and innocent misrecollection are common. Two
persons witnessing an incident or a transaction sometimes will see or hear it
differently. Whether a discrepancy pertains to an important matter or only to
something trivial should be considered by you.
However, a witness willfully false in one part of his or her testimony is to
be distrusted in others. You may reject the entire testimony of a witness who
willfully has testified falsely on a material point, unless, from all the evidence,
you believe that the probability of truth favors his or her testimony in other
particulars.
9.
In determining what inferences to draw from evidence you may consider,
among other things, a party’s failure to explain or deny such evidence.
10.
Certain charts and summaries have been received into evidence. Charts
and summaries are only as good as the underlying supporting testimony or
material. You should, therefore, give them only such weight as you think the
underlying material deserves.
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11.
Now I will address the burden of proof. In this case, the preponderance of
the evidence standard applies on all sides, so whoever has the burden of proof on
an issue must carry that issue by a preponderance of the evidence. When a party
has the burden of proof on any claim by a preponderance of the evidence, it
means you must be persuaded by the evidence that the claim is more probably
true than not true. To put it differently, if you were to put the evidence favoring a
plaintiff and the evidence favoring a defendant on opposite sides of a scale, the
party with the burden of proof on the issue would have to make the scale tip
somewhat toward its side. If the party fails to meet this burden, then the party
with the burden of proof loses on the issue. Preponderance of the evidence
basically means “more likely than not.”
12.
On any claim, if you find that plaintiff carried its burden of proof as to
each element of a particular claim, your verdict should be for plaintiff on that
claim. If you find that plaintiff did not carry its burden of proof as to each
element, you must find against plaintiff on that claim. This same principle also
applies to defendants on claims for which it has the burden of proof.
13.
I will now turn to the law that applies to this case. Oracle seeks relief
against Google for alleged copyright infringement. Google denies infringing any
such copyrighted material and asserts that any use by it of copyrighted material
was protected, among other things, by a defense called “fair use,” which will be
explained below. If you find liability in this phase, we will consider the extent of
damages in the third phase of the trial. Now, I will give you an overview of
copyright law in general. Then I will give you a summary of the claims and
defenses at issue in this case. After that I will give you a further statement of the
copyright law to help you in resolving the claims and defenses.
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14.
By federal statute, copyright includes exclusive rights to copy a work,
rights that lasts for 95 years from the date of publication. The rights include the
exclusive rights to:
1. Make additional copies or otherwise reproduce the
copyrighted work or to license others to do so;
2. Recast, transform, or adapt the work, that is, prepare
derivative works based upon the copyrighted work;
3. Distribute copies of the copyrighted work to the public by
sale; and
4. Display publicly a copyrighted work.
It is the owner of a copyright who may exercise these exclusive rights to
copy. Even though someone may acquire a copy of the copyrighted work, such as
a book from a bookstore, for example, the copyright owner retains rights to
control the making of copies of the work.
15.
Copyright automatically exists in a work the moment it is fixed in any
tangible medium of expression, such as putting pen to paper. The owner of the
copyright may then register the copyright by delivering to the Copyright Office of
the Library of Congress a copy of the copyrighted work and applying via a
registration form, after which the Copyright Office will either allow or disallow
the application. By way of examples, copyrighted works can include
1. Literary works like books, periodicals and, of particular
interest here, operating manuals;
2. Musical works;
3. Photographs and drawings;
4. Motion pictures;
5. Computer programs, also of particular interest here.
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Only that part of the work comprised of original works of authorship fixed
in any tangible medium of expression from which it can be perceived,
reproduced, or otherwise communicated, either directly or with the aid of a
machine or device can be protected by copyright. To take examples, words can
be fixed on paper, and a computer program can be fixed in the memory of a
mobile phone.
16.
As stated, the owner of a copyright has the exclusive right to make copies
of all or more than a de minimis part of the copyrighted work, subject only to the right of anyone to make fair use of all or a part of any copyrighted material, all as
will be explained below.
17.
The copyright confers ownership over the particular expression of ideas in
a work but it never confers ownership over ideas themselves. For example, if a
book describes a strategy for playing a card game, the copyright prevents anyone
(but the owner) from duplicating the book itself but everyone is still free to read
the book and to use the strategy, for the idea set forth in the book, that is the
strategy, is not protected by copyright. And, everyone is entitled to write their
own book about the same game and the same strategy so long as they do not
plagiarize the earlier book. Again, the main point is that the copyright protects
the particular expression composed by the author.
Another statutory limitation on the scope of a copyright is that copyright
never protects any procedure, process, system, method of operation, concept,
principle, or discovery. Possibly such things can be claimed under the patent
system or by trade secret laws but they may not be claimed by copyright. For
purposes of your deliberations, I instruct that the copyrights in question do cover
the structure, sequence and organization of the compilable code.
8
18.
I will now turn to the claims in this case. Oracle claims Google has
infringed its copyrights in two registered works, namely, “Java 2 Standard
Edition, Version 1.4” (TX 464) and “Java 2 Standard Edition, Version 5.0” (TX
475), and the applications leading to those registrations appear at TX 3529 and
3530. Among other things, the registered copyrights generally include the
compilable code and documentation for the Java API packages. The main issues
you must decide concern these two general types of material contained therein,
namely “compilable code” and “documentation.” As used in these instructions
and the Special Verdict Form, the term API “compilable code” refers to method
names and class names, declarations, definitions, parameters, organization, and implementation (whether in the form of source code or object code) implementing
the various API functions. The “compilable code” does not include the English-language
comments you have heard about. Even though such comments are
embedded in the software program, these English-language comments do not get
compiled and are not used by the computer to perform API functions. Instead, the
English-language comments are part of what I will call the API “documentation,”
sometimes referred to as the “specification,” a term that encompasses all of the
English-language comments. The term “API documentation” includes all content
— including English-language comments as well as method names and class
names, declarations, definitions, parameters, and organization — in the reference
document for programmers. Again, please remember that although these English-language
comments appear in the software program listing, they can be extracted
for handy reference in the guides made available to programmers. So, I will be
referring to the “API compilable code” and to the “API documentation.”
19.
The copyrighted Java platform has more than 37 API packages and so
does the accused Android platform. As for the 37 API packages that overlap,
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Google agrees that it uses the same names and declarations but contends that its
line-by-line implementations are different (with the exception of the rangeCheck
lines), a contention not disputed by Oracle. Instead, Oracle contends that Google
copied the structure, sequence and organization of the compilable code for the 37
API packages as a group. Google agrees that the structure, sequence and
organization of the 37 accused API packages in Android is substantially the same
as the structure, sequence and organization of the corresponding 37 API packages
in Java. Google states, however, that the elements it has used are not infringing
and, in any event, its use was protected by a statutory rule permitting anyone to
make “fair use” of copyrighted works.
20.
Now, let me tell you the law about names. The copyrights do not cover
the names, such as those given to files, packages, classes, and methods, because
under the law, names cannot be copyrighted. This applies to the name “java” as
well. Although “Java” has been registered as a trademark, there is no trademark
claim in this lawsuit. The name java cannot be copyrighted, nor can any other
name, whether one or two words or longer in length. While individual names are
not protectable on a standalone basis, names must necessarily be used as part of
the structure, sequence, and organization and are to that extent protectable by
copyright.
21.
With respect to the API documentation, Oracle contends Google copied
the English-language comments in the registered copyrighted work and moved
them over to the documentation for the 37 API packages in Android. Google
agrees that there are similarities in the wording but, pointing to differences as
well, denies that its documentation is a copy. Google further asserts that the
similarities are largely the result of the fact that each API carries out the same
functions in both systems. Google again asserts the statutory defense of fair use.
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22.
The issues just discussed center on the API packages. Apart from the API
issues, I will now describe a list of specific items that Oracle contends were
copied verbatim by Google. Specifically, Oracle contends that Google copied
verbatim certain lines of compilable code, namely the rangeCheck method in two
files, other source code as compiled into object code in seven “Impl.Java” files
and one other file and, finally, certain English-language comments in two other
files. Google responds that any verbatim copying by it was excusable under the
law as “de minimis.” For purposes of this group of infringement contentions, the
structure, sequence and organization is irrelevant and the comparison must be
made to the work as a whole as defined in a moment.
23.
Now, I will turn to the more detailed law. In order to prove infringement,
Oracle must first prove that Oracle’s work is original and that it is the owner of
the part of the work allegedly copied. For your purposes, the parties agree that
there are no issues of ownership or originality for you to decide.
24.
Oracle must also prove that Google copied all or a protected part of a
copyrighted work owned by Oracle and that the amount of copying was not de
minimis. So, there are two elements Oracle must prove to carry its burden on
infringement, namely copying of a protected part and the part copied was more
than de minimis when compared to the work as a whole. These are issues for you
to decide.
There are two ways to prove copying. One is by proof of direct copying,
as where the copyrighted work itself is used to duplicate or restate the same words
and symbols on a fresh page.
The second way is via circumstantial evidence by showing the accused
had access to the copyrighted passages in question and that there are substantial
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similarities or, in certain instances, virtual identity between the copyrighted work
and the accused work. The virtual identity test is used when the subject under
consideration is a narrow one and we would expect certain terms and phrases to
be used. This is in contrast to, for example, a fictional work in which there will
be a broad range of creativity, in which case it is necessary only to prove
substantial similarity. In this trial, you should use the substantial similarity test
for all such comparisons except for those involving the API documentation, in
which case you should use the virtual identity test. This is because the
documentation for the API packages describe narrow technical functions and it is
to be expected that some of the same words and phrases would likely be used.
25.
To determine whether the copyrighted work and the accused work are
substantially similar, or where appropriate, virtual identical, you must compare to
the works as whole. I will define the works as a whole in a moment.
However, in comparing to the works as a whole, you cannot consider
similarities to unprotectable elements of Oracle’s works. I have instructed you
about the protectable and unprotectable elements of Oracle’s work.
26.
Now, I will explain the law governing Google’s defense based on the
statutory right of anyone to make “fair use” of copyrighted works. Anyone
may use any copyrighted work in a reasonable way under the circumstances
without the consent of the copyright owner if it would advance the public interest.
Such use of a copyrighted work is called a “fair use.” The owner of a copyright
cannot prevent others from making a fair use of the owner’s copyrighted work.
For example, fair use may include use for criticism, comment, news reporting,
teaching (including multiple copies for classroom use), scholarship, or research.
Google has the burden of proving this defense by a preponderance of the
evidence.
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In determining whether the use made of the work was fair, you should
consider the following factors:
1. The purpose and character of the use, including whether
such use is of a commercial nature, for nonprofit
educational purposes, and whether such work is
transformative (meaning whether Google’s use added
something new, with a further purpose or different
character, altering the copied work with new expression,
meaning, or message). Commercial use cuts against fair
use while transformative use supports fair use;
2. The nature of the copyrighted work, including whether the
work is creative (which cuts against fair use), functional
(which supports fair use), or factual (which also supports
fair use);
3. The amount and substantiality of the portion used in
relation to the copyrighted work as a whole. The greater
the quantity and quality of the work taken, the less that fair
use applies; and
4. The effect of the use upon the potential market for or value
of the copyrighted work. Impairment of the copyrighted
work cuts against fair use.
All the factors should be weighed together to decide whether Google’s use
was fair use or not. It is up to you to decide how much weight to give each factor
but you must consider all factors. If you find that Google proved by a
preponderance of the evidence that Google made a fair use of Oracle’s work, your
verdict should be for Google on that question in the Special Verdict Form.
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27.
With respect to the infringement issues concerning the rangeCheck and
other similar files, Google agrees that the accused lines of code and comments
came from the copyrighted material but contends that the amounts involved were
so negligible as to be de minimis and thus should be excused. To be clear with respect to a different issue. The parties are in agreement that the structure, sequence, and organization of the API packages is more than de minimis.
28.
Copying that is considered “de minimis” is not infringing. Copying is “de
minimis” only if it is so meager and fragmentary that compared to the work as a
whole the average audience would not recognize the appropriation. You must
consider the qualitative and quantitative significance of the copied portions in
relation to the work as a whole. The burden is on Oracle to prove that the copied
material was more than de minimis.
The relevant comparison is the copied portion contrasted to the work as a
whole, as drawn from the copyrighted work, not contrasted to the accused
infringer’s work as a whole. For example, if an infringing excerpt is copied from
a book, it is not excused from infringement merely because the infringer includes
the excerpt in a much larger work of its own.
29.
In your deliberations, you will need to make certain comparisons to the
“work as a whole.” It is my job to isolate and identify for you the “work as a
whole.” You must take my identification as controlling if and when this comes
up in your deliberations. This issue arises when (1) comparing Oracle’s work and
Android’s work for similarity under both substantial similarity and virtual identity
standards, (2) deciding whether Google copied only a de minimis amount of
Oracle’s work, and (3) evaluating the third factor of fair use: the amount and
substantiality of the portion used in relation to the copyrighted work as a whole.
14
Although you have seen that the copyright registrations cover a large
volume of work, the entire registered work is not the work as a whole for these
purposes. This may seem odd to you, so let me give an example. An entire
magazine issue may be copyrighted but a specific article advertisement or
photograph may be the relevant work as a whole, depending on what was
allegedly copied.
For purposes of this case, I have determined that the “work as a whole”
means the following: For purposes of Question No. 1 in the Special Verdict
Form, the “work as a whole” constitutes all of the compilable code associated
with all of the 166 API packages (not just the 37) in the registered work. This
excludes the virtual machine. Similarly, for the purposes of Question No. 2 in the
Special Verdict Form, the “work as a whole” means the contents (including name,
declaration and English-language comments) of the documentation for all of the
166 API packages (not just the 37) in the registered work. For purposes of
Question No. 3, the “work as a whole” is the compilable code for the individual file except for the last two files listed in Question No. 3, in which case the “work
as a whole” is the compilable code and all the English-language comments in the
same file.
30.
Unless you find fair use, de minimis, or non-infringement in Google’s
favor, Google had no right to copy any elements of the Java platform protected by
copyright unless it had a written license to do so from Sun or Oracle or had a
written sub-license to do so from a third party who had a license from Sun or
Oracle conferring the right to grant such sub-licenses. The burden would be on
Google to prove it had any such express license or sublicense rights. But in this
trial it makes no such contention. Put differently, if Google claims a license from
a third party, Google has the burden to prove that the third party itself had the
proper right and authority from Sun or Oracle as to any of the copyrights owned
15
by Sun or Oracle and used by Google, for Google could acquire from the third
party no greater right than the third party had in the first place. Similarly, if
Google contends that Oracle or Sun had dedicated elements protected by
copyright to the public domain for free and open use, the burden would be on
Google to prove such a public dedication but the parties agree that that issue is for
me to decide, not for you as the jury to decide. This statement of the law
regarding licenses is simply to put some of the evidence you heard in context.
31.
When you begin your deliberations, you should elect one member of the
jury as your foreperson. That person will preside over the deliberations and speak
for you here in court. I recommend that you select a foreperson who will be good
at leading a fair and balanced discussion of the evidence and the issues.
You will then discuss the case with your fellow jurors to reach agreement
if you can do so. Your verdict as to each claim and as to damages, if any, must be
unanimous. Each of you must decide the case for yourself, but you should do so only after you have considered all of the evidence, discussed it fully with the
other jurors, and listened to the views of your fellow jurors.
Do not be afraid to change your opinion if the discussion persuades you
that you should. Do not come to a decision simply because other jurors think it is
right. It is important that you attempt to reach a unanimous verdict but, of course,
only if each of you can do so after having made your own conscientious decision.
Do not change an honest belief about the weight and effect of the evidence simply
to reach a verdict.
I will give you a special verdict form to guide your deliberations.
16
32.
Some of you have taken notes during the trial. Whether or not you took
notes, you should rely on your own memory of what was said. Notes are only to
assist your memory. You should not be overly influenced by the notes. When
you go into the jury room, the Clerk will bring in to you the trial exhibits received
into evidence to be available for your deliberations. The Clerk will also provide
you with an index to them.
33.
As I noted before the trial began, when you retire to the jury room to
deliberate, you will have with you the following things:
1. All of the exhibits received into evidence;
2. An index of the exhibits if the lawyers are able to stipulate
as to its form;
3. A work copy of these jury instructions for each of you;
4. A work copy of the verdict form for each of you; and
5. An official verdict form.
When you recess at the end of a day, please place your work materials in
the brown envelope provided and cover up any easels with your work notes so
that if my staff needs to go into the jury room, they will not even inadvertently see
any of your work in progress.
34.
A United States Marshal will be outside the jury-room door during your
deliberations. If it becomes necessary during your deliberations to communicate
with me, you may send a note through the marshal, signed by your foreperson or
by one or more members of the jury. No member of the jury should ever attempt
to communicate with me except by a signed writing, and I will respond to the jury
concerning the case only in writing or here in open court. If you send out a
question, I will consult with the lawyers before answering it, which may take
17
some time. You may continue your deliberations while waiting for the answer to
any question. Remember that you are not to tell anyone — including me — how
the jury stands, numerically or otherwise, until after you have reached a
unanimous verdict or have been discharged. Do not disclose any vote count in
any note to the Court.
35.
Now that you are going to begin your deliberations, however, you must
stay until 4:00 P.M. You may, of course, take a reasonable lunch break. The
Court recommends that you continue to start your deliberations by 8:00 A.M. If
you do not reach a verdict by the end of today, then you will resume your
deliberations tomorrow and thereafter.
It is very important that you let the Clerk know in advance what hours you
will be deliberating so that the lawyers may be present in the courthouse at any
time the jury is deliberating.
36.
You may only deliberate when all of you are together. This means, for
instance, that in the mornings before everyone has arrived or when someone steps
out of the jury room to go to the restroom, you may not discuss the case. As well,
the admonition that you are not to speak to anyone outside the jury room about
this case still applies during your deliberation.
18
37.
After you have reached a unanimous agreement on a verdict, your
foreperson will fill in, date and sign the verdict form and advise the Court that
you have reached a verdict. The foreperson should hold onto the filled-in verdict
form and bring it into the courtroom when the jury returns the verdict. Thank you
for your careful attention. The case is now in your hands. You may now retire to
the jury room and begin your deliberations.
Dated: April 30, 2012
/s/William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE
Special Verdict Form
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
ORACLE AMERICA, INC.,
v.
GOOGLE INC.,
Defendant.
No. C 10-03561 WHA
SPECIAL VERDICT FORM
YOUR ANSWER MUST BE UNANIMOUS.
1. As to the compilable code for the 37 Java API packages in question taken as a
group:
A. Has Oracle proven that Google has infringed the overall structure,
sequence and organization of copyrighted works?
Yes __________ No __________
(IF YOU ANSWER “NO” TO QUESTION 1A, THEN SKIP TO QUESTION NO. 2.)
B. Has Google proven that its use of the overall structure, sequence
and organization constituted “fair use”?
Yes __________ No __________
2. As to the documentation for the 37 Java API packages in question taken as a
group:
A. Has Oracle proven that Google has infringed?
Yes __________ No __________
(IF YOU ANSWER “NO” TO QUESTION 2A, THEN SKIP TO QUESTION NO. 3.)
B. Has Google proven that its use of Oracle’s Java documentation
constituted “fair use”?
Yes __________ No __________
3. Has Oracle proven that Google’s conceded use of the following was infringing,
the only issue being whether such use was de minimis:
| | Yes (Infringing) | No (Not Infringing) |
A. | The rangeCheck method in
TimSort.java and
ComparableTimSort.Java |
_______ | _______ |
B. | Source code in seven “Impl.java”
files and the one “ACL” file |
_______ | _______ |
C. | The English-language comments in
CodeSourceTest.java and
CollectionCertStoreParameters
Test.java |
_______ | _______ |
2
4. Answer the following special interrogatories only if you answer “yes” to Question
1A.
A. Has Google proven that Sun and/or Oracle engaged in conduct Sun and/or
Oracle knew or should have known would reasonably lead Google to
believe that it would not need a license to use the structure, sequence, and
organization of the copyrighted compilable code?
Yes __________ No __________
B. If so, has Google proven that it in fact reasonably relied on such conduct
by Sun and/or Oracle in deciding to use the structure, sequence, and
organization of the copyrighted compilable code without obtaining a
license?
Yes __________ No __________
Your answers to Questions 4A and 4B will be used by the judge with issues he must
decide. Questions 4A and 4B do not bear on the issues you must decide on Questions 1
to 3.
Dated:
____________________________________
FOREPERSON
3
1023
KEKER & VAN NEST LLP
ROBERT A. VAN NEST - # 84065
[email]
CHRISTA M. ANDERSON - # 184325
[email]
DANIEL PURCELL - # 191424
[email address telephone fax]
SCOTT T. WEINGAERTNER (Pro Hac Vice)
[email]
ROBERT F. PERRY
[email]
BRUCE W. BABER (Pro Hac Vice)
[address telephone fax]
KING & SPALDING LLP
DONALD F. ZIMMER, JR. - #112279
[email]
CHERYL A. SABNIS - #224323
[email address telephone fax]
IAN C. BALLON - #141819
[email]
HEATHER MEEKER - #172148
[email]
GREENBERG TRAURIG, LLP
[address telephone fax]
Attorneys for Defendant
GOOGLE INC.
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
ORACLE AMERICA, INC.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.
Case No. 3:10-cv-03561 WHA
GOOGLE INC.’S NOTICE OF MOTION
AND MOTION TO STRIKE PORTIONS
OF DR. JAMES KEARL’S EXPERT
REPORT
Dept.: Courtroom 8, 19th Floor
Judge: Hon. William Alsup
PLEASE TAKE NOTICE that on April 9, 2012, or as soon thereafter as counsel may be heard, Defendant Google Inc. (“Google”) will, and hereby does, respectfully move to exclude portions of the opinions and testimony of Dr. James Kearl. This Motion is based on the following memorandum of points and authorities in support, the Declaration of Daniel Purcell (“Purcell Decl.”) and accompanying exhibits, the entire record in this matter, and on such evidence as may be presented at the hearing of this Motion.
Dated: April 2, 2012
KEKER & VAN NEST LLP
/s/ Robert A. Van Nest
By: ROBERT A. VAN NEST
Attorneys for Defendant
GOOGLE INC.
1
KEKER & VAN NEST LLP
ROBERT A. VAN NEST - # 84065
[email]
CHRISTA M. ANDERSON - # 184325
[email]
DANIEL PURCELL - # 191424
[email address telephone fax]
SCOTT T. WEINGAERTNER (Pro Hac Vice)
[email]
ROBERT F. PERRY
[email]
BRUCE W. BABER (Pro Hac Vice)
[address telephone fax]
KING & SPALDING LLP
DONALD F. ZIMMER, JR. - #112279
[email]
CHERYL A. SABNIS - #224323
[email address telephone fax]
IAN C. BALLON - #141819
[email]
HEATHER MEEKER - #172148
[email]
GREENBERG TRAURIG, LLP
[address telephone fax]
Attorneys for Defendant
GOOGLE INC.
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
ORACLE AMERICA, INC.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.
Case No. 3:10-cv-03561 WHA
GOOGLE’S MEMORANDUM OF POINTS
AND AUTHORITIES IN SUPPORT OF
ITS MOTION TO STRIKE PORTIONS OF
DR. JAMES KEARL’S EXPERT REPORT
Dept.: Courtroom 8, 19th Floor
Judge: Hon. William Alsup
At his deposition last week, the Court’s appointed Rule 706 damages expert, Dr. James R. Kearl, acknowledged that one narrow aspect of his expert opinion is inconsistent with governing law (and this Court’s prior orders) regarding the requirement that a reasonable royalty be based only on the intellectual property at issue in this case. Accordingly, Google files this conditional and limited motion to strike to confirm that Dr. Kearl will not be allowed to offer such testimony in the damages phase of trial.
In his March 20, 2012 report, Dr. Kearl began his damages calculation (as Oracle’s expert Dr. Iain Cockburn had done) by looking at the 2006 negotiations between Sun and Google for a technology partnership including a bundle of intellectual-property rights. Dr. Kearl calculated the percentage of the value of the total 2006 Sun bundle attributable to the intellectual property in suit: the ‘104 patent (2.38% of the total bundle), the ‘520 patent (.07% of the bundle), and the 37 purportedly copyrighted API packages (together 1.9% of the bundle). Kearl Report ¶ 111 & n.63; id. at Table 7. Google is not moving to strike Dr. Kearl’s apportionment analysis.
But before apportioning the bundle, Dr. Kearl also opined that, as a matter of economics, no apportionment is appropriate, and that Google should be charged a royalty for the entire bundle—not merely the intellectual property in suit. Kearl Report ¶¶ 97-105. Dr. Kearl reasoned that “none of the experts has cited to any evidence that Sun ever negotiated licenses for individual patents or for small subsets of its IP portfolio.” Id. ¶ 99. “To the contrary, it appears that Sun’s negotiations with various parties were always for a Java IP portfolio, often only vaguely specified.” Id. Dr. Kearl opined that, if Google knew during the 2006 negotiations which of the Sun patents and copyrights ultimately would be useful to Android, the negotiation over the bundle would really have been a negotiation over that specific IP. (There is no evidence that Google knew anything specific about the contents of the Sun bundle in 2006, and Dr. Kearl cites none.) Alternatively, Dr. Kearl opined that, if Google did not know which of the Sun patents and copyrights would be useful to Android, it may have wanted to keep open multiple options as to how to design Android or to buy insurance against future infringement claims by Sun. Id. ¶¶ 100-103. “Setting aside what the law may require,” Dr. Kearl wrote, “my best economic advice is that there are good economic reasons why value of the in suit IP in this matter is the 2006 value
1
of a hypothetical negotiation for the entire Java ME IP portfolio.” Id. ¶ 104 (emphases added).
At deposition, Dr. Kearl readily conceded that his economic judgment was in tension with the requirements of the law and the Court’s prior orders:
Q. Doesn't the hypothetical negotiation in this case presuppose a negotiation over just the intellectual property in suit?
A. I understand that is what the law requires. This opinion simply says that doesn't make a lot of sense to an economist, but—and Judge Alsup asked for my best economic view, so here it is.
Q. So I know the answer to this question already, but you have reviewed Judge Alsup's orders in this case?
A. I have.
Q. I'm sure you have read them carefully?
A. I've read them carefully.
Q. You have reviewed the transcripts of the various hearings inform damages experts in this case?
A. I have.
Q. Do you perceive any tension between your opinion in section K of your report and any of Judge Alsup’s orders or statements?
[Objections to form]
THE WITNESS: I can imagine there will be some tension, yes.
Purcell Decl. Ex. A (Kearl Depo.) at 157:7-158:6 (emphases added).
Indeed, the Court previously disapproved of exactly this same reasoning when Oracle and Dr. Cockburn employed it in their first damages report last summer. There, Dr. Cockburn calculated damages for Google’s purported use of “Java,” without separating out the asserted patents and copyrights from the remainder of Oracle’s various Java platforms not at issue. The Court rejected that sort of broad-brush analysis, ruling that it “runs afoul of controlling law.” July 22, 2011 Order [Dkt. 230] at 5.
The reasonable royalty to be calculated is “a reasonable royalty for the use made of the invention by the infringer.” 35 U.S.C. 248 (emphasis added). Java was not the invention. Only the claims asserted were the invention.
Therefore, the hypothetical license must be limited to the asserted claims—excluding the rest of the Java platform. That “[t]he intellectual property at issue here was generally bundled into the technologies that Sun licensed on a portfolio
2
basis” because “Sun’s practice was to license Java, not to license individual patents,” does not change this statutory requirement (Weingaertner Exh. A at ¶ 132). An opinion that the hypothetical negotiation would have resulted in a Java license simply fights the hypothetical.
July 22, 2011 Order [Dkt. 230] at 5-6 (emphases in original).
Not only does section 248 require that any reasonable royalty be tied to “the use made of the invention” at issue in the case, myriad federal appellate opinions bar plaintiffs from recovering damages for related or ancillary intellectual property that is not asserted in litigation or used by the defendant. Two years ago, in RestQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860 (Fed. Cir. 2010), the Federal Circuit held that “[a]t all times, the damages inquiry must concentrate on compensation for the economic harm caused by infringement of the claimed invention.” Id. at 869 (emphasis added). In its July 22, 2011 Order, the Court cited this language from RestQNet, explaining that the Federal Circuit meant that “[t]he hypothetical license therefore must be tailored to the amount and type of infringement that actually occurred” and that “[t]he reasonable royalty must compensate for the infringing features, but not for non-infringing ones.” July 22, 2011 Order [Dkt. 230] at 8 (emphasis added); see also, e.g., Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1332 (Fed. Cir. 2009) (hypothetical negotiation analysis must “elucidate how the parties would have valued the patented feature during the hypothetical negotiation”) (emphasis added); Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152, 1159 (6th Cir. 1978) (“the relevant facts” in a hypothetical negotiation analysis include (1) “what plaintiff’s property was”; (2) “to what extent defendant has taken it”; and (3) “its usefulness and commercial value as shown by its advantages over other things and by the extent of its use”).
The Court reaffirmed this analysis in its January 9, 2012 Order partially granting Google’s motion to strike the second Cockburn report, making clear that “[i]f the $100 million offer in 2006 is used as the starting point,” as Dr. Kearl has also done here, “then a fair apportionment of the $100 million as between the technology in suit and the remainder of the technology then offered must be made.” Jan. 9, 2012 Order [Dkt. 685] at 8. Similarly, the Court’s March 13, 2012 Order partially granting Google’s motion to strike the third Cockburn’s report also required apportionment and struck aspects of Dr. Cockburn’s report for apportionment problems. Mar. 13,
3
2012 Order [Dkt. 785] at 3-5 (striking the upper bound of Dr. Cockburn’s apportionment under a “group-and-value approach”); id. at 10-11 (requiring deduction from total value of 2006 Sun bundle to account for value of unasserted copyrights); id. at 11-13 (striking Dr. Cockburn’s “independent significance approach” for failing to follow the apportionment guidelines in January 9, 2012 Order).
The opinions in paragraphs 97 through 105 of Dr. Kearl’s report are inconsistent with the law and this Court’s orders. To the extent Dr. Kearl plans to offer them at trial, they would be only confusing, not helpful, to the jury in calculating a legally permissible measure of damages in this case. Google respectfully asks the Court to exclude those opinions.
Dated: April 2, 2012
KEKER & VAN NEST LLP
/s/ Robert A. Van Nest
By: ROBERT A. VAN NEST
Attorneys for Defendant
GOOGLE INC.
4
1025
MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[email]
MARC DAVID PETERS (Bar No. 211725)
[email]
DANIEL P. MUINO (Bar No. 209624)
[email address telephone fax]
BOIES, SCHILLER & FLEXNER LLP
DAVID BOIES (Admitted Pro Hac Vice)
[email address telephone fax]
STEVEN C. HOLTZMAN (Bar No. 144177)
[email address telephone fax]
ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[email]
DEBORAH K. MILLER (Bar No. 95527)
[email]
MATTHEW M. SARBORARIA (Bar No. 211600)
[email address telephone fax]
Attorneys for Plaintiff
ORACLE AMERICA, INC.
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
ORACLE AMERICA, INC.
Plaintiff,
v.
GOOGLE INC.
Defendant.
Case No. CV 10-03561 WHA
ORACLE AMERICA, INC.’S
ROLLING LIST OF NEXT TEN
WITNESSES
Dept.: Courtroom 8, 19th Floor
Judge: Honorable William H. Alsup
Pursuant to the Court’s Order regarding rolling lists of witnesses (Dkt. 851) and the
parties’ agreement to increase the number of witnesses on the list to ten (Dkt. 884), Oracle
America, Inc. hereby files and serves its current list of its anticipated next trial witnesses:
1. Bornstein, Dan
2. Brady, Patrick
3. Camargo, Rafael (by video)
4. Kessler, Peter
5. Lindholm, Tim
6. McFadden, Andy
7. Mitchell, John
8. Morrill, Dan
9. Poore, Noel
10. Vandette, Bob
Dated: April 30, 2012
MICHAEL A. JACOBS
MARC DAVID PETERS
DANIEL P. MUINO
MORRISON & FOERSTER LLP
By: /s/ Daniel P. Muino
Attorneys for Plaintiff
ORACLE AMERICA, INC.
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Authored by: designerfx on Tuesday, May 01 2012 @ 11:10 AM EDT |
post corrections here [ Reply to This | # ]
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Authored by: designerfx on Tuesday, May 01 2012 @ 11:11 AM EDT |
newspicks thread here [ Reply to This | # ]
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Authored by: feldegast on Tuesday, May 01 2012 @ 11:13 AM EDT |
Please make links clickable
---
IANAL
My posts are ©2004-2012 and released under the Creative Commons License
Attribution-Noncommercial 2.0
P.J. has permission for commercial use.[ Reply to This | # ]
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Authored by: feldegast on Tuesday, May 01 2012 @ 11:14 AM EDT |
Thank you for your support
---
IANAL
My posts are ©2004-2012 and released under the Creative Commons License
Attribution-Noncommercial 2.0
P.J. has permission for commercial use.[ Reply to This | # ]
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Authored by: feldegast on Tuesday, May 01 2012 @ 11:17 AM EDT |
https://twitter.com/#!/Feldegast
Caleb Garling @CalebGarling
Waiting Game. Looks like the jury
won't deliberate until 4
today (Alsup offered the idea) but will go until 1.
Unless
they reach a decision--- IANAL
My posts are ©2004-2012 and released under the Creative Commons License
Attribution-Noncommercial 2.0
P.J. has permission for commercial use. [ Reply to This | # ]
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Authored by: Anonymous on Tuesday, May 01 2012 @ 11:33 AM EDT |
Under the virtual identity test, and with the following
instructions:
Similarly, for the purposes of Question No. 2 in
the
Special Verdict Form, the “work as a whole” means the
contents (including
name, declaration and English-language
comments) of the documentation for all
of the 166 API
packages (not just the 37) in the registered
work.
It looks like it would be impossible for a jury that
understood the issues to rule for infringement.
Am I missing something? If
it's that straightforward why is
it even before a jury, the facts are already
clear and
apparently agreed.[ Reply to This | # ]
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Authored by: maroberts on Tuesday, May 01 2012 @ 12:33 PM EDT |
Fellow jurors,
if we rule in favour of Oracle either in the Copyright phase or the Patent
phase, we have to sit here for more weeks on the Damages phase, whilst our
bosses are getting more and more upset at the time we take off work.
But if we rule in favour of Google on each of the first two stages, we get to
skip a third of the trial. All those voting for? It's Unanimous then!
:-)[ Reply to This | # ]
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Authored by: SilverWave on Tuesday, May 01 2012 @ 01:34 PM EDT |
BrandonBailey ‏ @BrandonBailey
Oracle seems worried jurors will consider use of Apache APIs as a justification.
Google wants them to consider it wasn't copied directly
---
RMS: The 4 Freedoms
0 run the program for any purpose
1 study the source code and change it
2 make copies and distribute them
3 publish modified versions
[ Reply to This | # ]
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Authored by: webster on Monday, May 07 2012 @ 03:36 PM EDT |
.
... was not decided. Google has moved for a mistrial on 1-a. Some jurors
thought it was fair use. If the Judge doesn't hold that API's are not
copyrightable, Google should ask the Judge to stay the judgment while they try
"fair use" again. They can't appeal it until it is all final. It is
the kind of issue that may never be unanimous. They can have an annual trial as
a monument to our legal system. Maybe some year we will have a good API
analogy.
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