Oracle America, Inc. v. Google Inc.
798 F. Supp. 2d 1111
N.D. Cal.2011Background
- Oracle sued Google for patent and copyright infringement related to Java and Android.
- Dr. Iain Cockburn served as Oracle's damages expert, proposing a hypothetical license valuation.
- The court previously construed the asserted patents and copyrights and outlined the dispute over scope.
- Google moved to exclude Cockburn's report and testimony as unreliable and improperly scoped.
- The court granted in part Google's motion to strike Cockburn's damages analysis, focusing on core methodological flaws.
- The order discusses timing of the damages report and potential implications for trial strategy.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Record support and scope of damages | Cockburn based on Java/Android scale and record facts. | Lacks identified claims; overbroad and untimely. | Report inadequate; lack of record support and mis-specified scope. |
| Claims versus Java/Android as a whole | Damages tied to overall platforms; portfolio licensing. | Royalty must reflect asserted claims only. | Invalid to treat Java/Android as whole; must focus on asserted claims. |
| Entire market value rule | Android drives overall value; apply EMVR. | EMVR requires showing the infringing features drive value. | EmVR not established; require apportionment to infringing features. |
| Date of hypothetical negotiation | Use infringement start date for negotiation. | Date varies by claim; must be tailored. | Date must align with when infringement began per claims; not simply first sale. |
| Use of Nash bargaining solution | Nash solution informs royalties. | Nash method unreliable for this case. | Nash approach excluded; Georgia-Pacific factors govern. |
Key Cases Cited
- Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011) (limits on entire market value rule; need for meaningful apportionment)
- Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F.Supp. 1116 (S.D.N.Y. 1979) (framework for calculating reasonable royalty factors)
- Minco, Inc. v. Combustion Eng'g, Inc., 95 F.3d 1109 (Fed. Cir. 1996) (principles for hypothetical negotiations and royalty determinations)
- Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572 (Fed. Cir. 1996) (time of infringement for hypothetical negotiation)
- ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860 (Fed. Cir. 2010) (focus on compensation for actual infringement; limits of royalty models)
- Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (Supreme Court, 1993) (gatekeeping standard for admissibility of expert testimony)
- Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) (duty to compensate for actual infringement losses; focus on hypothetical licensing)
- Uniloc USA, Inc. v. Microsoft Corp. (duplicate for emphasis), 632 F.3d 1292 (Fed. Cir. 2011) (see above)