Oracle & Google Squabble Over Expert Witnesses

SAN FRANCISCO (CN) - Oracle and Google on Wednesday asked a federal judge to keep the other's expert witnesses from testifying before a jury in a second copyright trial set to kick off next month.

Google says Oracle's economics expert took an overly broad approach when he analyzed the market harm caused by Google's use of copyrighted Java code in its Android operating system.

Oracle, in turn, claims Google's computer scientist impermissibly opines on economic issues and adopts stances on legal matters that were rejected by an appeals court.

Attorneys for both tech titans made their cases to U.S. District Judge William Alsup during a hearing Wednesday morning.

Economist Dr. Adam Jaffe failed to hone in on the relevant portion of Oracle's Java code used in Android and instead looked at Android's overall effect on the entire Java platform, Google attorney Robert Van Nest told the judge.

"He's looking at all of Android and applying it to all of Java," Van Nest said. "He's not limiting himself to the two Java platforms in this suit."

Even though Jaffe acknowledges that Android includes several valuable elements that have nothing to do with the infringing Java code, he simply "throws his hands in the air" and makes no effort to focus his analysis on the infringing code, Van Nest said.

Oracle attorney Lisa Simpson said Google wants to "have it both ways" by pushing for only the copyrighted code to be analyzed for one factor of the fair-use test — market harm — while also saying Android must be looked at as a whole when evaluating another factor — the purpose and character of use.

"For the first factor, they want to look at the entirety of Android, but when it comes down to the fourth factor, they don't want to look at all of Android," Simpson said. "They want to look at a tiny piece of Android."

The real question centers around the market value of the copyrighted works at issue, Alsup said.

"What could you have sold the copyrighted work for before and afterwards?" Alsup asked.

Whether Oracle could have "hit a home run" in the smartphone market the way Google did with Android is dubious, Alsup suggested, because that involves huge amounts of investments beyond the Java code.

"In Silicon Valley, I've seen a lot of people have successes, then had people come out of the woodwork saying, 'They stole our idea,'" Alsup said. "Maybe they did steal your idea."

Simpson replied that Sun, the company acquired by Oracle, was hitting a home run when Google launched the Android system in 2008 because Java was in over 80 percent of cellphones at the time.

The Oracle attorney cited a 1988 Ninth Circuit ruling affirmed by the Supreme Court, Stewart v. Abend, which found the fair-use test must look at the entire "Rear Window" film, not just the portion of the film based on the plaintiff's short story.

Van Nest countered the court was only asked to focus on the entire film in that case, even though Alfred Hitchcock testified in a deposition that the movie was "at least 20 percent" of the original story "It Had to Be Murder."

"What they're relying on is not on what the defendant's witness, Mr. Hitchcock, testified. It's the similarity between the movie and work," Van Nest said. "The movie as a whole was very similar to the copyrighted work."

When it comes to Android and the infringing Java platforms, "a very small amount of material was embedded in a very large work with many other features, none of which are accused of infringement," Van Nest said.

Google's Expert Witness

Oracle attorneys also sought to block several portions of testimony by Google's expert witness, computer scientist Dr. Owen Astrachan, from reaching the jury. The company says Astrachan offers impermissible opinions on economic issues and contradicts a Federal Circuit ruling on whether Android's use of Java code was necessary and transformative.

Because Astrachan has no background in economics and used no economic methodology to back up his conclusions, that portion of his testimony should be excluded, Oracle attorney Anette Hurst told the judge.

"He is a computer scientist who offers technical opinions on the fourth factor," Google attorney Matthias Kamber replied.

Astrachan's testimony stems from his opinion that Google could have used Sun's open-source JDK version of the Java platform in 2007 instead of using Java Standard Editions 1.4 and 5.0 taken from the open source Apache Harmony, Kamber said.

Hurst replied that emails show Google had explicitly rejected using Open JDK.

"They cannot have experts testify to facts refuted by the record," Hurst said.

In deciding whether Google's use of the copyrighted code was fair use, the first factor of the fair-use test involves deciding whether and to what extent the new work is "transformative."

Citing a 1994 Supreme Court ruling, Campbell v. Acuff-Rose Music Inc., which held that 2 Live Crew's rap parody of the song "Pretty Woman" was fair use, Hurst said a work can only be considered transformative when it alters or changes the original work, not when it simply adds an original work to a larger work.

Hurst said Astrachan's testimony flies in the face of the Federal Circuit's finding that Google was wrong in claiming its use of the Java code was transformative simply because it incorporated other elements in its Android system.

Asking the judge to forbid Google from presenting evidence that Android was transformative would essentially "cut them off at the knees," Alsup said.

Kamber argued the Federal Circuit never decided whether the work was transformative or fair use and specifically remanded the case for that issue to be decided by a jury.

"Google says the use is transformative. Oracle says no," Kamber said. "The Federal Circuit said the record lacks sufficient findings to determine fair use."

Earlier in the hearing, Alsup lamented his role as a gatekeeper ruling on every nuanced dispute over what testimony the jury should be allowed to hear and knowing both sides will likely tell the appeals court he was wrong in some way.

"Both sides have experts," Alsup said. "Do I have to go through and excise every detail of expert testimony on a granular level?"

Alsup concluded he would do so because that's his job.

The judge ended the hearing after more than three hours of debate.

In May 2012, a jury found Google had infringed Oracle's copyrights but could not decide whether the code in question was "fair use."

Alsup later found Oracle's Java programming interfaces were not eligible for copyrighting, but the Federal Circuit reversed his ruling in May 2014. The U.S. Supreme Court refused to hear an appeal of the ruling in June 2015.

A new jury is set to decide whether the copyrighted code in question is "fair use" in a second trial scheduled to begin May 9.

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Oracle & Google Squabble Over Expert Witnesses

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