Late on Thursday by local California time, Oracle and Google filed a joint status report (though the order had not explicitly required them to file jointly). As always, they disagree on important procedural matters, but they are agree that the next Android-Java copyright trial (at least on fair use, unless previously resolved as a matter of law, and on damages) should take about ten days and they are not far apart on when it should place: Oracle proposes April 4, 2016, while Google prefers one of the following two months, which are inconvenient for Oracle because some of its key witnesses will be busy working on the company's annual report.
Throughout this litigation, Google has been attempting to stall, a fact that apparently didn't go unnoticed by the judge. However, it has played this smart, trying to maintain at least some credibility, and I guess that's why it doesn't propose an even later trial date. If any logistical or other issues come up in the further process, Google presumably won't hesitate to advocate a postponement.
Here's the filing (this post continues below the document):
15-07-23 Joint Oracle-Google Status Report by Florian Mueller
The joint status report doesn't elaborate on the parties' disagreement with respect to Oracle's desire to supplement its complaint so as to take account of developments since the close of discovery before the spring 2012 trial. Google will separately oppose Oracle's letter seeking permission to bring a motion, and it will do so in time so that this aspect of the case can be discussed at next week's status conference.
As for the scope of the trial, the undisputedly necessary parts (provided that the trial isn't narrowed by summary judgment/judgment as a matter of law) include the "fair use" defense on which the first jury couldn't agree (and which the second jury may not even have to look at), damages, injunctive and/or declaratory relief, and an award of attorneys' fees. There's one item that Oracle wants to bring up and Google wants to keep out: willfulness. I guess Google argues that this was relevant three years ago only because there were a couple of patents in play, which no longer are. We'll know soon. Oracle is seeking willfulness enhancements, so unless the court categorically rules out willfulness enhancements, I guess willfulness, as a subject to discuss at the trial, can't be avoided. Oracle and Google have asked the court for permission to file further briefing on this one and on another scope issue:
"Google contends that its equitable defenses remain to be tried in the case, while Oracle disagrees."
I'm very interested in learning more about the parties' positions. On a few occasions during these past few years I said--and in blog posts there's always the risk of oversimplifying things--that Google's equitable defenses had failed and were no longer part of the case. The parties' joint summary states it more specifically:
"The Court further entered Final Judgment for Oracle and against Google as to Google's equitable defenses of waiver and implied license. [...] The Court did not rule on Google's equitable defenses of equitable estoppel and laches due to mootness."
The waiver and implied-license defense was all about Sun's conduct, including a blog post by then-CEO Jonathan Schwartz. The first jury found that Google might have been able to rely on what Sun said, but that it hadn't actually relied on it. On that basis, I considered Google's equitable defenses dead. (Laches--the allegation that Oracle sued too late--are a separate topic but, frankly, that's a defense I don't think anyone who watched this case ever took seriously.)
Judge Alsup's ruling on waiver and implied license was not reported on by anyone (at least not to my knowledge) other than me because it was the less spectacular part of the May 31, 2012 ruling as compared to the one on copyrightability. Even I talked about it only a couple of weeks later and quoted the following passage:
"Google's equitable defenses rest primarily on a November 2007 blog post by Sun's CEO congratulating Google on the release of Android, as well as similar positive statements by Sun executives thereafter. Congratulatory statements do not fall under the narrow circumstances proscribed by our court of appeals. Even if Google understood Oracle and/or Sun's conduct to condone use of the Java API packages, the 'course of conduct' must be assessed for an affirmative grant of such consent. None is apparent from the evidence Google presented here. Google has supplied no relevant authority that would support a finding in its favor on these facts. Furthermore, from the present record it would be impossible to determine the scope of any implied license. Under Google's theory, infringement is excused as to any aspect of Android because the whole of the platform was generally applauded by Sun. Such a finding is not supported by precedent. The parties negotiated for a real license but the talks collapsed and no license was given. It would be most bizarre to somehow find an implied license in this scenario. [emphasis added]
[...]
Google's best evidence on the issue of waiver is Jonathan Schwartz's testimony that Sun made a decision to not sue Google following the release of Android. This decision, however, is not an overt act. So long as it did not induce reliance by Google, Sun was free to change its mind and assert its rights within the statute of limitations period. The several congratulatory communications do not, as discussed above, constitute a clear indication that Oracle and/or Sun intended to relinquish its rights as to the entirety of its platform. Google concedes Oracle continued and continues to assert its rights as to other aspects of the platform such as the language specification and code [...]. Save for a total relinquishment, Google has to prove an overt act by Oracle and/or Sun relaying its intent to abandon rights as to the specific elements asserted here. The evidence is devoid of any such showing."
I couldn't agree more. What the parties can't agree on is whether equitable estoppel is still in the game. My feeling has been for some time--but I want to see Google's argument first because maybe I overlooked something--that the first jury's finding of non-reliance was the end of that story.
The reason why this is interesting is not so much that Google would really be likely to prevail on such a defense. The thing is that a jury can easily confuse estoppel arguments for "fair use" arguments and then be misled. Focus is Oracle's friend now, and confusion would be Google's friend.
There doesn't appear to be a fundamental disagreement on the scope of additional discovery (except whatever the supplemental complaint might require). Also, the parties aren't jumping to make another attempt at mediation. They had one in district court (Magistrate Judge Grewal found that, despite everyone's best efforts, this was simply one of the cases that had to go to trial) and another one before the Federal Circuit (I wasn't aware of that). And they probably talk to each other informally all the time. I have the feeling that mediation won't yield a result, but a firm trial date could work wonders. Maybe they can agree on the eve of the trial, or (which Judge Alsup prefers so as not to unnecessarily disrupt jurors' lives) a couple of days before.
With a view to the facts to be established by the jury, Oracle proposes a substantial narrowing based on what the Federal Circuit called "undisputed" in last year's appellate opinion:
"The issues for the new trial will be significantly narrowed if the parties agree to summaries or stipulated facts setting forth the rulings of the Federal Circuit in this matter. As to the declaring code and structure, sequence, and organization, the Federal Circuit held that it is 'undisputed' and 'conceded' that Google copied the declaring code and the structure, sequence, and organization of 37 Java API packages, and that those Java elements are entitled to copyright protection. [...] The Federal Circuit also found that Google 'concedes' and thus it is 'undisputed' that the declaring code and the structure, sequence, and organization of the API packages are 'both creative and original.' [...] The Federal Circuit concluded that 'Google concedes' and thus it 'undisputed' that 'Android is not generally compatible' and certainly not [compatible] with the JVM [Java virtual machine].' [...] And, the Federal Circuit found it 'undisputed that Google's use of the API packages is commercial,' as relevant to factor one of the fair use inquiry. [...] As to the eight decompiled files and rangeCheck, it is now the law of the case that Google has committed copyright infringement with respect to the eight decompiled Java files and the rangeCheck method.
Additional issues for the new trial can also be significantly narrowed by agreement. For example, the new trial will be expedited if the parties can agree that the versions of Android that have been released since previous expert reports in this matter, including new flavors Gingerbread, Honeycomb, Ice Cream Sandwich, Jelly Bean, KitKat, and Lollipop, are the same as prior versions Cupcake and Froyo for purposes of the copyright infringement analysis relevant here."
Google doesn't agree for now, but promises "that it will work with Oracle to reach a stipulation, where appropriate, of undisputed facts."
There's a small procedural disagreement I want to mention but I don't think it will be hard for the court to resolve. In the first trial, the court had appointed Dr. Kearl as an expert witness on damages (which U.S. courts rarely do, though in many jurisdictions, such as Germany and various other European countries, it's the norm). Patent damages are a complicated matter, but patents are no longer in play. That's why Oracle thinks there's no more need for a court-appointed damages expert at all, but if there had to be one, Dr. Kearl should not testify because he did some work for Samsung in one of the Apple litigations, and Samsung is a Google partner and Android device maker. Google proposes that the court re-engage Dr. Kearl nonetheless, and I think that's an unreasonable position to take. Of all the things Google said in the joint filing, this is the one I consider the least convincing point.
Finally, it's worth noting that Morrison & Foerster no longer appears, though Boies, Schiller &, Flexner, another firm that represented Oracle in the first trial, is listed. It was pretty clear before that Orrick's Annette Hurst had become Oracle's lead counsel and I had seen some withdrawals but thought MoFo was still involved. Maybe some MoFo lawyers are still helping Oracle in the background. I wouldn't conclude from this that Oracle blamed MoFo on the outcome of the previous proceedings in district court. A key change is that this is now a copyright-only case, which it wasn't before the appeal. Without a doubt, Mrs. Hurst has as stronger copyright background than probably any California IP litigator. Next week and on other occasions including the spring trial, she will face Keker & van Nest's Robert (Bob) van Nest, who did a great job confusing the first jury but simply couldn't defend the indefensible before the Federal Circuit, where Orrick's Joshua (Josh) Rosenkranz had a far stronger case and also appears more frequently.
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