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1 DONALD F. ZIMMER, JR. (SBN 112279)

[email protected]
2
CHERYL A. SABNIS (SBN 224323)
3 [email protected]
KING & SPALDING LLP
4 101 Second Street – Suite 2300
San Francisco, CA 94105
5 Telephone: (415) 318-1200
6 Facsimile: (415) 318-1300

7 SCOTT T. WEINGAERTNER (Pro Hac Vice)

[email protected]
8 ROBERT F. PERRY
[email protected]
9
BRUCE W. BABER (Pro Hac Vice)
10 [email protected]
KING & SPALDING LLP
11 1185 Avenue of the Americas
New York, NY 10036-4003
12 Telephone: (212) 556-2100
13 Facsimile: (212) 556-2222

14 Attorneys for Defendant

GOOGLE INC.
15
UNITED STATES DISTRICT COURT
16
NORTHERN DISTRICT OF CALIFORNIA
17
SAN FRANCISCO DIVISION
18

19 ORACLE AMERICA, INC. Case No. 3:10-cv-03561-WHA

20 Plaintiff, Honorable Judge William H. Alsup

21 v. GOOGLE INC.’S ANSWER TO
22 PLAINTIFF’S AMENDED COMPLAINT
GOOGLE INC. FOR PATENT AND COPYRIGHT
23 INFRINGEMENT AND AMENDED
Defendant.
COUNTERCLAIMS
24

25 JURY TRIAL DEMANDED

26

27

28

GOOGLE INC.’S ANSWER TO PLAINTIFF’S AMENDED COMPLAINT FOR PATENT AND

COPYRIGHT INFRINGEMENT AND AMENDED COUNTERCLAIMS
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1 GOOGLE INC.’S ANSWER TO PLAINTIFF’S AMENDED COMPLAINT FOR

2 PATENT AND COPYRIGHT INFRINGEMENT AND AMENDED COUNTERCLAIMS
3 Defendant Google Inc. (“Google”) answers the “Amended Complaint For Patent And
4 Copyright Infringement” (the “Amended Complaint”) filed on October 27, 2010 by plaintiff

5 Oracle America, Inc. (“Oracle”) as follows:

6 The Parties
7 1. Google is without knowledge or information sufficient to form a belief as to the
8 truth of the allegations of paragraph 1, and therefore denies them.
9 2. Google admits that it is a corporation organized under the laws of the State of
10 Delaware with a principal place of business at 1600 Amphitheatre Parkway, Mountain View,
11 California 94043. Google admits that it does business in the Northern District of California.
12 Google denies any remaining allegations of paragraph 2.
13 Jurisdiction and Venue
14 3. Google admits that this action purports to invoke the patent and copyright laws of
15 the United States, Titles 35 and 17, United States Code. Google admits that 28 U.S.C. §§ 1331
16 and 1338(a) confer jurisdiction as to claims arising under the patent laws and claims arising
17 under the laws of the United States upon this Court. Google denies any remaining allegations of
18 paragraph 3.
19 4. Google admits that venue is proper in the Northern District of California. Google
20 denies any remaining allegations of paragraph 4.
21 5. Google admits that this Court has personal jurisdiction over it. Google admits
22 that it has conducted and does conduct business within the State of California and within the
23 Northern District of California. Google denies any remaining allegations of paragraph 5.
24 6. Google admits that it, directly or through intermediaries, makes, distributes, offers
25 for sale or license, sells or licenses, and/or advertises its products and services in the United
26 States, in the State of California, and the Northern District of California. Google denies any
27 remaining allegations of paragraph 6.
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1 Intradistrict Assignment
2 7. Google admits the allegations of paragraph 7.
3 Background
4 8. Google is without knowledge or information sufficient to form a belief as to the
5 truth of the allegations of paragraph 8, and therefore denies them.
6 9. Google is without knowledge or information sufficient to form a belief as to the
7 truth of the allegations of paragraph 9, and therefore denies them.
8 10. Google admits that what appear to be copies of U.S. patents numbers 6,125,447,
9 6,192,476, 5,966,702, 7,426,720, RE38,104, 6,910,205 and 6,061,520 are attached to Oracle’s
10 Amended Complaint as exhibits A through G. Google is without knowledge or information
11 sufficient to form a belief as to the truth of the remaining allegations of paragraph 10, and
12 therefore denies them.
13 11. Google admits that what appear to be copies of certificates of registration
14 numbers TX 6-196-514, TX 6-066-538 and TX 6-143-306 issued by the U.S. Copyright Office
15 (the “Asserted Copyrights”) are attached to Oracle’s Amended Complaint as exhibit H. Google
16 is without knowledge or information sufficient to form a belief as to the truth of the remaining
17 allegations of paragraph 11, and therefore denies them.
18 12. Google admits that the Android Platform is an open-source software stack for
19 mobile devices that includes an operating system, middleware and applications, and that a
20 feature of Android is the Dalvik virtual machine (“VM”), which executes files in the Dalvik
21 Executable (.dex) format, and can run classes compiled by a Java language compiler that have
22 been converted into the .dex format by the “dx” tool included with Android. Google admits that
23 the Open Handset Alliance, a group of 78 technology and mobile companies that includes
24 Google, makes the information and source code for Android, including the Dalvik VM and the
25 Android software development kit (“SDK”), openly and freely available for download at
26 http://source.android.com and http://developer.android.com. Google denies any remaining
27 allegations of paragraph 12.
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1 13. Google denies the allegations of paragraph 13, and specifically denies that Google
2 has infringed or is liable for infringement of any valid and enforceable claim of the patents
3 identified in paragraph 13.
4 14. Google denies the allegations of paragraph 14.
5 15. Google denies the allegations of paragraph 15, and specifically denies that Google
6 has infringed or is liable for infringement of any valid and enforceable claim of any patents
7 asserted in this action by Oracle.
8 Count I
9 (Alleged Infringement of the ‘447 Patent)
10 16. Google incorporates by reference its responses to the allegations of paragraphs 1
11 though 15 above as its response to paragraph 16 of Oracle’s Amended Complaint.
12 17. Google admits that U.S. Patent No. 6,125,447 (“the ‘447 patent”), on its face, is
13 entitled “Protection Domains To Provide Security In A Computer System” and bears an issuance
14 date of September 26, 2000. Google further admits that what appears to be a copy of the ‘447
15 patent was attached to Oracle’s Amended Complaint as Exhibit A. Google is without knowledge
16 or information sufficient to form a belief as to the truth of any remaining allegations of paragraph
17 17, and therefore denies them.
18 18. Google denies the allegations of paragraph 18, and specifically denies that Google
19 has infringed or is liable for infringement of any valid and enforceable claim of the ‘447 patent.
20 Count II
21 (Alleged Infringement of the ‘476 Patent)
22 19. Google incorporates by reference its responses to the allegations of paragraphs 1
23 though 15 above as its response to paragraph 19 of Oracle’s Amended Complaint.
24 20. Google admits that U.S. Patent No. 6,192,476 (“the ‘476 patent”), on its face, is
25 entitled “Controlling Access To A Resource.” Google denies that the ‘476 patent bears an
26 issuance date of February 20, 2000, and states that the ‘476 patent bears an issuance date of
27 February 20, 2001. Google further admits that what appears to be a copy of the ‘476 patent was
28
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1 attached to Oracle’s Amended Complaint as Exhibit B. Google is without knowledge or

2 information sufficient to form a belief as to the truth of any remaining allegations of paragraph
3 20, and therefore denies them.
4 21. Google denies the allegations of paragraph 21, and specifically denies that Google
5 has infringed or is liable for infringement of any valid and enforceable claim of the ‘476 patent.
6 Count III
7 (Alleged Infringement of the ‘702 Patent)
8 22. Google incorporates by reference its responses to the allegations of paragraphs 1
9 though 15 above as its response to paragraph 22 of Oracle’s Amended Complaint.
10 23. Google admits that U.S. Patent No. 5,966,702 (“the ‘702 patent”), on its face, is
11 entitled “Method And Apparatus For Preprocessing And Packaging Class Files” and bears an
12 issuance date of October 12, 1999. Google further admits that what appears to be a copy of the
13 ‘702 patent was attached to Oracle’s Amended Complaint as Exhibit C. Google is without
14 knowledge or information sufficient to form a belief as to the truth of any remaining allegations
15 of paragraph 23, and therefore denies them.
16 24. Google denies the allegations of paragraph 24, and specifically denies that Google
17 has infringed or is liable for infringement of any valid and enforceable claim of the ‘702 patent.
18 Count IV
19 (Alleged Infringement of the ‘720 Patent)
20 25. Google incorporates by reference its responses to the allegations of paragraphs 1
21 though 15 above as its response to paragraph 25 of Oracle’s Amended Complaint.
22 26. Google admits that U.S. Patent No. 7,426,720 (“the ‘720 patent”), on its face, is
23 entitled “System And Method For Dynamic Preloading Of Classes Through Memory Space
24 Cloning Of A Master Runtime Process” and bears an issuance date of September 16, 2008.
25 Google further admits that what appears to be a copy of the ‘720 patent was attached to Oracle’s
26 Amended Complaint as Exhibit D. Google is without knowledge or information sufficient to
27 form a belief as to the truth of any remaining allegations of paragraph 26, and therefore denies
28
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1 them.
2 27. Google denies the allegations of paragraph 27, and specifically denies that Google
3 has infringed or is liable for infringement of any valid and enforceable claim of the ‘720 patent.
4 Count V
5 (Alleged Infringement of the ‘104 Reissue Patent)
6 28. Google incorporates by reference its responses to the allegations of paragraphs 1
7 though 15 above as its response to paragraph 28 of Oracle’s Amended Complaint.
8 29. Google denies that U.S. Patent No. RE38,104 (“the ‘104 reissue patent”) is
9 entitled “Method And Apparatus For Resolving Data References In Generate Code.” Google
10 admits that the ‘104 reissue patent, on its face, is entitled “Method And Apparatus For Resolving
11 Data References In Generated Code” and bears an issuance date of April 29, 2003. Google
12 further admits that what appears to be a copy of the ‘104 reissue patent was attached to Oracle’s
13 Amended Complaint as Exhibit E. Google is without knowledge or information sufficient to
14 form a belief as to the truth of any remaining allegations of paragraph 29, and therefore denies
15 them.
16 30. Google denies the allegations of paragraph 30, and specifically denies that Google
17 has infringed or is liable for infringement of any valid and enforceable claim of the ‘104 reissue
18 patent.
19 Count VI
20 (Alleged Infringement of the ‘205 Patent)
21 31. Google incorporates by reference its responses to the allegations of paragraphs 1
22 though 15 above as its response to paragraph 31 of Oracle’s Amended Complaint.
23 32. Google admits that U.S. Patent No. 6,910,205 (“the ‘205 patent”), on its face, is
24 entitled “Interpreting Functions Utilizing A Hybrid Of Virtual And Native Machine Instructions”
25 and bears an issuance date of June 21, 2005. Google further admits that what appears to be a
26 copy of the ‘205 patent was attached to Oracle’s Amended Complaint as Exhibit F. Google is
27 without knowledge or information sufficient to form a belief as to the truth of any remaining
28
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1 allegations of paragraph 32, and therefore denies them.

2 33. Google denies the allegations of paragraph 33, and specifically denies that Google
3 has infringed or is liable for infringement of any valid and enforceable claim of the ‘205 patent.
4 Count VII
5 (Alleged Infringement of the ‘520 Patent)
6 34. Google incorporates by reference its responses to the allegations of paragraphs 1
7 though 15 above as its response to paragraph 34 of Oracle’s Amended Complaint.
8 35. Google admits that U.S. Patent No. 6,061,520 (“the ‘520 patent”), on its face, is
9 entitled “Method And System For Performing Static Initialization” and bears an issuance date of
10 May 9, 2000. Google further admits that what appears to be a copy of the ‘520 patent was
11 attached to Oracle’s Amended Complaint as Exhibit G. Google is without knowledge or
12 information sufficient to form a belief as to the truth of any remaining allegations of paragraph
13 35, and therefore denies them.
14 36. Google denies the allegations of paragraph 36, and specifically denies that Google
15 has infringed or is liable for infringement of any valid and enforceable claim of the ‘520 patent.
16 Count VIII
17 (Alleged Copyright Infringement)
18 37. Google incorporates by reference its responses to the allegations of paragraphs 1
19
though 15 above as its response to paragraph 37 of Oracle’s Amended Complaint.
20
38. Google is without knowledge or information sufficient to form a belief as to the
21
truth of the allegations of paragraph 38, and therefore denies them.
22
39. Google denies the allegations of paragraph 39, and specifically denies that Google
23
has infringed or is liable for any infringement of any valid and enforceable copyrights or
24

25 copyright rights of Oracle.

26 40. Google denies the allegations of paragraph 40, and specifically denies that Google

27 has infringed or is liable for any infringement of any valid and enforceable copyrights or
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1 copyright rights of Oracle. Google further denies that the document attached to Oracle’s
2 Amended Complaint as Exhibit J contains a true and correct copy of a class file from either
3
Android or “Oracle America’s Java.” Google states further that Oracle has redacted or deleted
4
from the materials shown in Exhibit J both expressive material and copyright headers that appear
5
in the actual materials, which are significant elements and features of the files in question.
6
41. Google admits that Google has made the Android Platform available to
7
companies interested in the mobile device market, including the members of the Open Handset
8

9 Alliance. Google denies the remaining allegations of paragraph 41, and specifically denies that

10 Google has infringed or is liable for any infringement of any valid and enforceable copyrights or

11 copyright rights of Oracle.

12 42. Google denies the allegations of paragraph 42, and specifically denies that Google
13 has infringed or is liable for any infringement of any valid and enforceable copyrights or
14
copyright rights of Oracle.
15
43. Google denies the allegations of paragraph 43, and specifically denies that Google
16
has infringed or is liable for any infringement of any valid and enforceable copyrights or
17
copyright rights of Oracle.
18

19 44. Google denies the allegations of paragraph 44, and specifically denies that Google

20 has infringed or is liable for any infringement of any valid and enforceable copyrights or

21 copyright rights of Oracle.

22 45. Google denies the allegations of paragraph 45.

23 46. Google denies the allegations of paragraph 46.
24
47. Google denies the allegations of paragraph 47.
25

26 Prayer For Relief

27 These paragraphs set forth the statement of relief requested by Oracle to which no

28 response is required. Google denies that Oracle is entitled to any of the requested relief and
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1 denies any allegations contained in the Prayer For Relief to which a response is required.
2 Jury Demand
3 Oracle’s demand that all issues be determined by a jury trial does not state any allegation,
4 and Google is not required to respond. To the extent that any allegations are included in the
5 demand, Google denies these allegations.
6

7 Google denies each and every allegation of Oracle’s Amended Complaint not specifically
8 admitted or otherwise responded to above. Google specifically denies that Google has infringed
9 or is liable for infringement of any valid and enforceable patents of Oracle. Google further
10 denies that Google has infringed or is liable for infringement of any valid and enforceable
11 copyrights or copyright rights of Oracle. Google further specifically denies that Oracle is
12 entitled to any relief whatsoever of any kind against Google as a result of any act of Google or
13 any person or entity acting on behalf of Google.
14 Defenses
15 First Defense – No Patent Infringement
16 1. Google does not infringe, has not infringed (directly, contributorily, or by
17 inducement) and is not liable for infringement of any valid and enforceable claim of U.S.
18 Reissue Patent No. RE38,104 (“the ‘104 reissue patent”), and U.S. Patent Nos. 5,966,702 (“the
19 ‘702 patent”), 6,061,520 (“the ‘520 patent”), 6,125,447 (“the ‘447 patent”), 6,192,476 (“the ‘476
20 patent”), 6,910,205 (“the ‘205 patent”), and 7,426,720 (“the ‘720 patent”) (collectively “the
21 Patents-in-Suit”).
22 2. No claim of the Patents-in-Suit can be properly construed to cover any of
23 Google’s products.
24 Second Defense – Patent Invalidity
25 3. Each of the Patents-in-Suit is invalid under 35 U.S.C. § 101 because one or more
26 claims are directed to abstract ideas or other non-statutory subject matter.
27

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1 4. Each of the Patents-in-Suit is invalid because it fails to meet the “conditions for
2 patentability” of 35 USC §§ 101, 102, 103, and/or 112 because the alleged invention thereof
3 lacks utility; is taught by, suggested by, and/or, obvious in view of, the prior art; and/or is not
4 adequately supported by the written description of the patented invention.
5 5. The ‘104 reissue patent is invalid under 35 U.S.C. §§ 251 and 252 on the grounds
6 that the reissue patent enlarged the scope of one or more claims of the original patent more than
7 two years from the grant of the original patent.
8 Third Defense – Patent Unenforceability (Waiver, Estoppel, Laches)
9 6. Each of the Patents-in-Suit is unenforceable because, as is explained more fully in
10 Google’s counterclaims below, Oracle’s delay in bringing suit was unreasonable and
11 inexcusable, and Google has suffered material prejudice due to the delay.
12 7. Each of the Patents-in-Suit is unenforceable because, as is explained more fully in
13 Google’s counterclaims below, upon information and belief, the statements and actions of Oracle
14 and its predecessor Sun Microsystems, Inc. (“Sun”) were such that it was reasonable to infer that
15 Oracle did not intend to enforce its patents, Google relied on the misleading conduct, and Google
16 will be materially prejudiced if Oracle is allowed to proceed with its claim.
17 8. Each of the Patents-in-Suit is unenforceable because, as is explained more fully in
18 Google’s counterclaims below, upon information and belief, Oracle knowingly waived any right
19 it may have to enforce the Patents-in-Suit.
20 9. The ‘104 reissue patent is unenforceable because the applicant exercised
21 unreasonable delay and neglect in bringing forward claims that were broader than those in the
22 original application by waiting over four years to file a broadening reissue and prosecuting the
23 reissue application for almost nine years after the original patent issued.
24 Fourth Defense – Substantial Non-Infringing Uses (Patent)
25 10. Any and all products or actions accused of infringement have substantial uses that
26 do not infringe and do not induce or contribute to the alleged infringement of the asserted claims
27 of the Patents-in-Suit.
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1 Fifth Defense – Limitation On Patent Damages

2 11. Oracle’s claim for damages, if any, against Google for alleged infringement of the
3 Patents-in-Suit are limited by 35 U.S.C. §§ 286, 287 and 288.
4 Sixth Defense – Misuse
5 12. Oracle's claims against Google for alleged infringement of the Patents-in-Suit are
6 barred by the doctrine of misuse because, as is explained more fully in Google’s counterclaims

7 below, upon information and belief, Oracle and its predecessor Sun have attempted to

8 impermissibly expand the scope of the Patents-in-Suit by requiring licensees to license items not

9 covered by Oracle’s alleged intellectual property in order to receive a license to Oracle’s alleged

10 intellectual property.

11 Seventh Defense – Exceptional Case

12 13. This is an exceptional case under 35 U.S.C. § 285, and accordingly, Google is
13 entitled to its attorneys’ fees incurred in defending against Counts I through VII of Oracle’s

14 Amended Complaint.

15 Eighth Defense – Use By The United States

16 14. Oracle’s claims for relief against Google are barred by 35 U.S.C. § 1498 in that,
17 upon information and belief, the accused subject matter is used or manufactured by or for the

18 United States, including but not limited to the Department of Defense.

19 Ninth Defense – No Copyright Infringement

20 15. Google has not infringed, does not infringe (either directly or indirectly), and is
21 not liable for infringement of any valid copyright or copyright rights of Oracle, including,
22 without limitation, any copyright rights in the works that are the subject of the Asserted
23 Copyrights.
24 Tenth Defense – Elements Not Protected by Copyright
25 16. Oracle’s copyright claims are barred to the extent that Oracle claims rights to
26 elements of Oracle software or other works that are functional, are not original, or are otherwise
27 not protectable by copyright and/or are not protected by the Asserted Copyrights.
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1 Eleventh Defense – Copyright Unenforceability (Waiver, Estoppel, Laches)

2 17. Oracle’s Asserted Copyrights are unenforceable because, as is explained more
3 fully in Google’s counterclaims below, Oracle’s delay in bringing the suit was unreasonable and
4 inexcusable, and Google suffered material prejudice due to the delay.
5 18. Oracle’s Asserted Copyrights are unenforceable because, as is explained more
6 fully in Google’s counterclaims below, upon information and belief, Oracle’s and Sun’s

7 statements and actions were such that it was reasonable to infer that Oracle did not intend to

8 enforce its copyrights, Google relied on the misleading conduct, and Google will be materially
9 prejudiced if Oracle is allowed to proceed with its claim.
10 19. Oracle’s Asserted Copyrights are unenforceable because, as is explained more
11 fully in Google’s counterclaims below, upon information and belief, Oracle knowingly waived
12 any right it may have to enforce its Asserted Copyrights.
13 Twelfth Defense – Fair Use
14 20. Oracle’s claims for copyright infringement are barred by the doctrine of fair use
15 pursuant to 17 U.S.C. § 107 in view of the nature of the works asserted by Oracle and covered by
16 the Asserted Copyrights, the amount (if any) and substantiality of the portions of such works
17 used by Google in relation to the works as a whole, the purpose and character of any use thereof
18 made by Google, and the effect, if any, of such use on the potential market for the works.
19 Thirteenth Defense – De Minimis Copying
20 21. Oracle’s claims for copyright infringement are barred by the doctrine of de
21 minimis copying, as any protectable portions of the works that are the subject of the Asserted
22 Copyrights used by Google have been de minimis.
23 Fourteenth Defense – No Intent to Induce Copyright Infringement
24 22. Google has not engaged in purposeful, culpable expression or conduct designed or
25 intended to result in others infringing Oracle’s Asserted Copyrights and thus is not liable under
26 Oracle’s inducement claims.
27

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1 Fifteenth Defense – Independent Creation

2 23. The Android Platform, including the Android operating system, the Android
3 Software Development Kit and the Dalvik Virtual Machine, was created independently and
4 without reference to any works protected by the Asserted Copyrights.
5 Sixteenth Defense – Third Party Liability
6 24. Any use in the Android Platform of any protected elements of the works that are
7 the subject of the Asserted Copyrights was made by third parties without the knowledge of
8 Google, and Google is not liable for such use.
9 Seventeenth Defense – License
10 25. Upon information and belief, users of the Android Platform, including, without
11 limitation, manufacturers and software developers, are licensed to use the Patents-in-Suit and the
12 copyrights in the works that are the subject of the Asserted Copyrights.
13 Eighteenth Defense – Implied License
14 26. Upon information and belief, as is explained more fully in Google’s
15 counterclaims below, Oracle’s and Sun’s statements and actions were such that it was reasonable

16 to infer that users of the Android Platform, including, without limitation, manufacturers and
17 software developers, had permission to use the Patents-in-Suit and the Asserted Copyrights.
18 Nineteenth Defense – Unclean Hands
19 27. Oracle’s claims against Google are barred because, upon information and belief,
20 Oracle has come to the Court with unclean hands due to its practice of requiring licensees of its
21 purportedly open software to pay for licenses to items not covered by Oracle’s alleged
22 intellectual property in order to receive a license under Oracle’s alleged intellectual property.
23 Twentieth Defense – No Injunctive Relief
24 28. Oracle has not suffered any irreparable injury, Oracle has an adequate remedy at
25 law, and injunctive relief would be contrary to the public interest, and Oracle is not entitled to
26 injunctive relief.
27

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1 AMENDED COUNTERCLAIMS
2 As and for its amended counterclaims against plaintiff Oracle America, Inc., Google
3 respectfully shows as follows:

4 The Parties
5 1. Google Inc. (“Google”) is a corporation organized and existing under the laws of
6 the State of Delaware, with its principal place of business at 1600 Amphitheatre Parkway,
7 Mountain View, California 94043.
8 2. Upon information and belief, Oracle America, Inc. (“Oracle”) is a corporation
9 organized and existing under the laws of the State of Delaware, with its principal place of
10 business at 500 Oracle Parkway, Redwood City, California 94065. Upon information and belief,
11 Oracle is a wholly-owned subsidiary of Oracle Corporation (“Oracle Corp.”), a corporation
12 organized and existing under the laws of the State of Delaware, with its principal place of
13 business at 500 Oracle Parkway, Redwood City, California 94065.
14 Jurisdiction and Venue
15 3. Subject to Google’s defenses and denials, Google alleges that this Court has
16 jurisdiction over the subject matter of these Counterclaims under, without limitation, 28 U.S.C.
17 §§ 1331, 1338(a), 1367, 2201, and 2202, and venue for these Counterclaims is proper in this
18 district.
19 4. This Court has personal jurisdiction over Oracle.
20 Factual Background
21 A. The Java Platform and Programming Language
22 1. Upon information and belief, the Java programming language and the Java
23 platform – a software platform that includes a runtime environment that enables programs
24 written in the Java programming language to execute – were developed by Sun Microsystems,
25 Inc. (“Sun”) in the mid-1990s. While they are distinct elements, the term “Java” is commonly
26 used to refer to the programming language, the runtime environment, as well as the platform.
27

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1 2. The Java programming language was designed to use a syntax that was similar to
2 well-known, existing object-oriented languages at the time, such as C++. Instead of compiling
3 programs into machine-executable code that could only be run on a particular computer system,
4 the Java platform implemented a well-known technique wherein programs written in the Java
5 programming language were compiled into intermediate instructions called “bytecode” that
6 could only be executed on a computer that implements a Java “virtual machine.” The virtual
7 machine, typically a program, receives the bytecode and can convert it into instructions

8 appropriate for the particular computer upon which the virtual machine was running, and then

9 execute those instructions on that computer. So long as there is a Java virtual machine available

10 for a given computer system, any program compiled from the Java programming language into

11 Java bytecode could theoretically run on the Java virtual machine for that computer. Sun’s Java

12 virtual machines implement a stack-oriented architecture, where data and parameters are loaded

13 onto data structures in the computer’s memory called “stacks,” and instructions are then executed

14 using the data and parameters from the stack.

15 3. Upon information and belief, the Java platform comprises many different
16 components, including utilities to assist with the development of source code written in the Java

17 programming language, a Java compiler that converts Java programming language statements to

18 Java bytecode, a Java runtime environment consisting of Java virtual machines written to operate

19 on a number of different computer platforms and a set of standard class libraries that can be

20 accessed and reused by Java platform applications to perform common software functions, such

21 as writing to files or sorting data.

22 4. Upon information and belief, Sun developed and distributed the Java Standard
23 Edition (“Java SE”), along with other editions of the Java platform. Each of these editions of the

24 Java platform contain a development environment, a Java compiler, Java virtual machine, a set

25 of standard class libraries, and documentation files describing the functionality and operation of

26 the specific Java platform edition. Though there are many similarities between each of these

27 editions, one of the significant differences is that each edition provides a different set of standard

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1 class libraries based on the types of applications and environment at which each edition is
2 targeted.
3 5. Upon information and belief, in response to the urging of open-source advocates
4 and in the hopes of increasing the number of Java users, Sun officially announced that Java
5 would become open-source. In 2006 and 2007, Sun released some but not all of the source code
6 for Java SE (as well as the other editions of the Java Platform) under the terms of the GNU
7 Public License, version 2 (“GPLv2”) open source license. This open-source aspect of Java
8 contributed to its widespread acceptance among software developers.
9 6. Upon information and belief, Sun also released the specifications for Sun’s Java
10 platform, including Sun’s Java virtual machine, under a free-of-charge license that can be found
11 at http://java.sun.com/docs/books/jls/third_edition/html/jcopyright.html and
12 http://java.sun.com/docs/books/jvms/second_edition/html/Copyright.doc.html, respectively. The
13 license allows developers to create “clean room” implementations of Sun’s Java specifications.
14 If those implementations demonstrate compatibility with the Java specification, then Sun would
15 provide a license for any of its intellectual property needed to practice the specification,
16 including patent rights and copyrights. One example of a “clean room” implementation of Sun’s
17 Java is Apache Harmony, developed by the Apache Software Foundation. The only way to
18 demonstrate compatibility with the Java specification is by meeting all of the requirements of
19 Sun’s Technology Compatibility Kit (“TCK”) for a particular edition of Sun’s Java.
20 Importantly, however, TCKs were only available from Sun, initially were not available as open
21 source, were provided solely at Sun’s discretion, and included several restrictions, such as
22 additional licensing terms and fees. In essence, although developers were free to develop a
23 competing Java virtual machine, they could not openly obtain an important component needed to
24 freely benefit from Sun’s purported open-sourcing of Java.
25 7. Sun came under significant criticism from members of the open source
26 community, including Oracle Corp., for its refusal to fully open source Java. For example, in
27 August of 2006, the Apache Software Foundation (“ASF”), a not-for-profit corporation that
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1 provides organizational, legal, and financial support for open source software projects, attempted
2 to obtain a TCK from Sun to verify Apache Harmony’s compatibility with Java. Although Sun
3 eventually offered to open source the TCK for Java SE, Sun included field of use (“FOU”)
4 restrictions that limited the circumstances under which Apache Harmony users could use the
5 software that the ASF created, such as preventing the TCK from being executed on mobile
6 devices. In April of 2007, the ASF wrote an open letter to Sun asking for either a TCK license
7 without FOU restrictions, or an explanation as to why Sun was “protect[ing] portions of Sun’s
8 commercial Java business at the expense of ASF’s open software” and violating “Sun’s public
9 promise that any Sun-led specification [such as Java] would be fully implementable and
10 distributable as open source/free software.” However, Sun continued to refuse the ASF’s
11 requests.
12 8. Oracle Corp., as a member (along with Google and ASF) of the Executive
13 Committee (“EC”) of the Java Community Process (“JCP”), the organization tasked with
14 managing Java standards, voiced the same concerns regarding Sun’s refusal to fully open source
15 the Java platform. Later that year, in December of 2007, during a JCP EC meeting, Oracle Corp.
16 proposed that the JCP should provide “a new, simplified IPR [intellectual property rights] Policy
17 that permits the broadest number of implementations.” At that same meeting, BEA Systems –
18 which at the time was in negotiations that resulted in Oracle Corp. purchasing BEA – proposed a
19 resolution that TCK licenses would be “offered without field of use restrictions . . . enabling the
20 TCK to be used by organizations including Apache.” Oracle Corp. voted in favor of the

21 resolution.

22 9. Just over a year later, in February of 2009, Oracle Corp. reiterated its position on
23 the open-source community’s expectation of a fully open Java platform when it supported a

24 motion that “TCK licenses must not be used to discriminate against or restrict compatible

25 implementations of Java specifications by including field of use restrictions on the tested

26 implementations or otherwise. Licenses containing such limitations do not meet the

27 requirements of the JSPA, the agreement under which the JCP operates, and violate the

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1 expectations of the Java community that JCP specs can be openly implemented.”
2 10. Only two months later, in April of 2009, Oracle Corp. announced that it would be
3 acquiring Sun (renamed Oracle America after the acquisition was completed in January of 2010).
4 Since that time, and directly contrary to Oracle Corp.’s public actions and statements, as well as
5 its own proposals as an executive member of the JCP, Oracle Corp. and Sun (now Oracle
6 America) have ignored the open source community’s requests to fully open-source the Java
7 platform.
8 B. The Open Handset Alliance and Development of the Android Platform
9 11. The Android Platform (“Android”) is a freely-distributed, open-source software
10 stack for mobile devices that includes an operating system, middleware and key mobile

11 applications. Android was released in 2007 by a group of seventy-eight technology and mobile

12 companies known as the Open Handset Alliance (“OHA”) who have come together to accelerate

13 innovation in mobile devices and offer consumers a richer, less expensive, and better mobile

14 experience. The members of the OHA, which include Google, mobile operators, handset
15 manufacturers, semiconductor companies, software companies and commercialization
16 companies, are each strongly committed to greater openness in the mobile ecosystem.

17 12. The OHA believes that an open platform – a platform that provides equal access
18 to any who would choose to develop software for the platform – is essential to allow wireless

19 carriers, handset manufacturers, software developers and others to more rapidly bring innovative

20 ideas to the marketplace and to better respond to consumers’ demands. An open platform also

21 ensures that there is no threat of a central point of failure, so that no single industry player can

22 restrict or control the innovations of any other. The objective of Android is an open and shared

23 product that each contributor can freely tailor and customize. The members of the OHA,

24 including Google, have invested heavily in Android by contributing significant intellectual

25 property as well as economic and engineering resources to the development and maintenance of

26 Android.

27

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1 13. The Android platform includes, among other things, the Android Software
2 Development Kit (“SDK”) and the Dalvik Virtual Machine (“VM”). The Dalvik VM relies on a
3 version of the Linux kernel for core system services such as security, memory management,
4 process management, network stack, and driver model, and as an abstraction layer between the
5 hardware and the rest of the software stack. The core class libraries of the Dalvik VM
6 incorporate a subset of Apache Harmony, a clean room, open source implementation of Java
7 from the Apache Software Foundation. Other than the Harmony libraries, the Android platform
8 – including, without limitation, the Dalvik VM – was independently developed by the OHA.
9 14. The Android Open Source Project (“AOSP”) is tasked with the maintenance and
10 further development of Android, including incorporating code and submissions from the
11 community of developers who contribute to Android and the tens of thousands of developers
12 who create applications for Android. The goal of the Android Open Source Project (AOSP) is to
13 ensure that the open-source Android software is implemented as widely and consistently as
14 possible, to the benefit of the developer and user communities, and others involved in Android.
15 Google, along with several corporate partners and volunteer technology enthusiasts, contributes
16 resources, including engineers and financial support, to the AOSP.
17 15. The information and source code for the Android Platform is openly and freely
18 available for developers, manufacturers, or any member of the general public to download at
19 http://source.android.com and http://developer.android.com. The majority of the Android
20 software is made available under the permissive open source license terms of the Apache
21 Software License, 2.0 (“Apache 2.0”). Certain aspects of Android, such as the Linux kernel
22 patches, are made available under the GPLv2 license.
23 16. Developers are free to modify the source code of the Android platform to fit their
24 particular purpose. Android’s permissive open-source license allows a developer to adopt the
25 Android platform and freely build software and enhancements on top of the platform, while
26 maintaining the flexibility to release the software and enhancements to the public under either an
27 open source license, or alternatively under a commercial license, which would protect the
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1 developer’s proprietary investment in Android.

2 17. Google does not receive any payment, fee, royalty, or other remuneration for its
3 contributions to the Android Platform.
4 C. Android and the Java Programming Language
5 18. Developers for Android can create software applications for Android-based
6 mobile devices using various programming languages, including the Java programming
7 language. For use on the Android platform, these software applications are converted into a set
8 of intermediate instructions – i.e., Dalvik “bytecode,” typically stored in files in the Dalvik
9 Executable (.dex) format – with the “dx” tool included with the Android platform. These .dex
10 files can be executed on any mobile device with a Dalvik VM. The Dalvik VM implements a
11 register-based architecture (distinct from a stack-oriented architecture), where data and
12 parameters are loaded directly into virtual machine registers. The Dalvik VM and .dex format
13 are optimized for battery-powered mobile devices that are more limited in terms of computing
14 and memory resources than desktop computers.
15 19. Although software applications for the Android platform may be written in the
16 Java programming language, the Dalvik bytecode is distinct and different from Java bytecode.
17 The Dalvik VM is not a Java VM.
18 20. The Android Platform has been a success in the mobile handset industry.
19 Although Android was a latecomer to the smartphone market – first becoming generally
20 available in late 2008 – there are currently approximately ninety different Android-based mobile
21 devices made by over twenty different manufacturers available for purchase in dozens of
22 countries. Indeed, approximately 200,000 Android-based handsets are activated every day on
23 over fifty different wireless carriers. Android Market – a store where developers can sell
24 applications (“apps”) that they create for Android-based devices – has over 80,000 apps available
25 for download.
26 21. Android’s popularity has proven to be a catalyst for the Java open source
27 community and the increased use of the Java programming language. Indeed, when Android was
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1 first released in November of 2007, Sun CEO Jonathan Schwartz confirmed this fact,
2 congratulating Android and stating that “needless to say, Google and the Open Handset Alliance
3 just strapped another set of rockets to the community’s momentum – and to the vision defining
4 opportunity across our (and other) planets.”
5 22. The success of the Android platform is due in large part to its open nature, which
6 benefits the entire open source community of consumers, developers, manufacturers, and mobile
7 operators. Android’s permissive open source license allows developers and manufacturers to
8 innovate rapidly under their own terms while simultaneously protecting their proprietary
9 intellectual property, if so desired. Because Android provides open and comprehensive access to
10 handset capabilities and developer tools, developers experience increased productivity and are
11 better able to optimize their Android applications. Mobile operators and handset manufacturers
12 benefit from the innovation, and have great flexibility to customize Android to differentiate their
13 product lines. Handset manufacturers also benefit from lower software costs and faster time-to-
14 market for handsets. Finally, and consistent with the mission of the Open Handset Alliance, all
15 of the benefits to developers, manufacturers, and mobile operators are passed on to consumers
16 who receive more innovative and cost-effective mobile devices and services, and a rich portfolio
17 of applications, that more rapidly respond to their needs and demands.
18 E. Oracle’s Amended Complaint
19 23. In its Amended Complaint, Oracle asserts that Google, by way of the Android
20 Platform and certain of its components, infringes U.S. Reissue Patent No. RE38,104 (“the ‘104
21 reissue patent”), and U.S. Patent Nos. 5,966,702 (“the ‘702 patent”), 6,061,520 (“the ‘520
22 patent”), 6,125,447 (“the ‘447 patent”), 6,192,476 (“the ‘476 patent”), 6,910,205 (“the ‘205
23 patent”), and 7,426,720 (“the ‘720 patent”) (collectively “the Patents-in-Suit”). Oracle also
24 asserts that Google infringes and induces Android users and developers to infringe the copyrights
25 in the works that are the subject of the copyright registrations that are attached to Oracle’s
26 Amended Complaint as Exhibit H (the “Asserted Copyrights”).
27

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1 24. Google does not infringe any valid and enforceable claim of the Patents-in-Suit,
2 either directly or indirectly, and does not infringe any valid copyright rights of Oracle, either
3 directly or indirectly.
4 25. Consequently, there is an actual case and controversy between the parties over the
5 patents-in-suit.
6 COUNT ONE
7 Declaratory Judgment of Non-Infringement of U.S. Reissue Patent No. RE 38,104
8 26. Google restates and incorporates by reference its allegations in paragraphs 1-25 of
9 its Counterclaims.

10 27. An actual case or controversy exists between Google and Oracle as to whether the
11 ‘104 reissue patent is infringed by Google.

12 28. A judicial declaration is necessary and appropriate so that Google may ascertain
13 its rights regarding the ‘104 reissue patent.

14 29. Google has not infringed and does not infringe, directly or indirectly, any valid
15 and enforceable claim of the ‘104 reissue patent.

16 30. This is an exceptional case under 35 U.S.C. § 285 because Oracle filed its
17 Amended Complaint with knowledge of the facts stated in this Counterclaim.

18 COUNT TWO
19 Declaratory Judgment of Invalidity of U.S. Reissue Patent No. RE 38,104
20 31. Google restates and incorporates by reference its allegations in paragraphs 1–30
21 of its Counterclaims.

22 32. An actual case or controversy exists between Google and Oracle as to whether the
23 ‘104 reissue patent is invalid.

24 33. A judicial declaration is necessary and appropriate so that Google may ascertain
25 its rights as to whether the ‘104 reissue patent is invalid.

26 34. The ‘104 reissue patent is invalid because it fails to meet the “conditions for
27 patentability” of 35 USC §§ 101, 102, 103, and/or 112 because the alleged invention thereof

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1 lacks utility; is taught by, suggested by, and/or, obvious in view of, the prior art; and/or is not
2 adequately supported by the written description of the patented invention, and no claim of the
3 ‘104 reissue patent can be properly construed to cover any of Google’s products.
4 35. The ‘104 reissue patent is invalid under 35 U.S.C. §§ 251 and 252 on the grounds
5 that the reissue patent enlarged the scope of one or more claims of the original patent more than
6 two years from the grant of the original patent.
7 36. This is an exceptional case under 35 U.S.C. § 285 because Oracle filed its
8 Amended Complaint with knowledge of the facts stated in this Counterclaim.
9 COUNT THREE
10 Declaratory Judgment of Non-Infringement of U.S. Patent No. 5,966,702
11 37. Google restates and incorporates by reference its allegations in paragraphs 1-36 of
12 its Counterclaims.
13 38. An actual case or controversy exists between Google and Oracle as to whether the
14 ‘702 patent is infringed by Google.
15 39. A judicial declaration is necessary and appropriate so that Google may ascertain
16 its rights regarding the ‘702 patent.
17 40. Google has not infringed and does not infringe, directly or indirectly, any valid
18 and enforceable claim of the ‘702 patent.
19 41. This is an exceptional case under 35 U.S.C. § 285 because Oracle filed its
20 Amended Complaint with knowledge of the facts stated in this Counterclaim.
21 COUNT FOUR
22 Declaratory Judgment of Invalidity of U.S. Patent No. 5,966,702
23 42. Google restates and incorporates by reference its allegations in paragraphs 1–41
24 of its Counterclaims.

25 43. An actual case or controversy exists between Google and Oracle as to whether the
26 ‘702 patent is invalid.

27

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1 44. A judicial declaration is necessary and appropriate so that Google may ascertain
2 its rights as to whether the ‘702 patent is invalid.
3 45. The ‘702 patent is invalid because it fails to meet the “conditions for
4 patentability” of 35 USC §§ 101, 102, 103, and/or 112 because the alleged invention thereof
5 lacks utility; is taught by, suggested by, and/or, obvious in view of, the prior art; and/or is not
6 adequately supported by the written description of the patented invention, and no claim of the
7 ‘702 patent can be properly construed to cover any of Google’s products.
8 46. This is an exceptional case under 35 U.S.C. § 285 because Oracle filed its
9 Amended Complaint with knowledge of the facts stated in this Counterclaim.
10 COUNT FIVE
11 Declaratory Judgment of Non-Infringement of U.S. Patent No. 6,061,520
12 47. Google restates and incorporates by reference its allegations in paragraphs 1-46 of
13 its Counterclaims.
14 48. An actual case or controversy exists between Google and Oracle as to whether the
15 ‘520 patent is infringed by Google.
16 49. A judicial declaration is necessary and appropriate so that Google may ascertain
17 its rights regarding the ‘520 patent.
18 50. Google has not infringed and does not infringe, directly or indirectly, any valid
19 and enforceable claim of the ‘520 patent.
20 51. This is an exceptional case under 35 U.S.C. § 285 because Oracle filed its
21 Amended Complaint with knowledge of the facts stated in this Counterclaim.
22 COUNT SIX
23 Declaratory Judgment of Invalidity of U.S. Patent No. 6,061,520
24 52. Google restates and incorporates by reference its allegations in paragraphs 1–51
25 of its Counterclaims.

26 53. An actual case or controversy exists between Google and Oracle as to whether the
27 ‘520 patent is invalid.

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1 54. A judicial declaration is necessary and appropriate so that Google may ascertain
2 its rights as to whether the ‘520 patent is invalid.
3 55. The ‘520 patent is invalid because it fails to meet the “conditions for
4 patentability” of 35 USC §§ 101, 102, 103, and/or 112 because the alleged invention thereof
5 lacks utility; is taught by, suggested by, and/or, obvious in view of, the prior art; and/or is not
6 adequately supported by the written description of the patented invention, and no claim of the
7 ‘520 patent can be properly construed to cover any of Google’s products.
8 56. This is an exceptional case under 35 U.S.C. § 285 because Oracle filed its
9 Amended Complaint with knowledge of the facts stated in this Counterclaim.

10 COUNT SEVEN
11 Declaratory Judgment of Non-Infringement of U.S. Patent No. 6,125,447
12 57. Google restates and incorporates by reference its allegations in paragraphs 1-56 of
13 its Counterclaims.
14 58. An actual case or controversy exists between Google and Oracle as to whether the
15 ‘447 patent is infringed by Google.
16 59. A judicial declaration is necessary and appropriate so that Google may ascertain
17 its rights regarding the ‘447 patent.
18 60. Google has not infringed and does not infringe, directly or indirectly, any valid
19 and enforceable claim of the ‘447 patent.
20 61. This is an exceptional case under 35 U.S.C. § 285 because Oracle filed its
21 Amended Complaint with knowledge of the facts stated in this Counterclaim.
22 COUNT EIGHT
23 Declaratory Judgment of Invalidity of U.S. Patent No. 6,125,447
24 62. Google restates and incorporates by reference its allegations in paragraphs 1–61
25 of its Counterclaims.

26 63. An actual case or controversy exists between Google and Oracle as to whether the
27 ‘447 patent is invalid.

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1 64. A judicial declaration is necessary and appropriate so that Google may ascertain
2 its rights as to whether the ‘447 patent is invalid.
3 65. The ‘447 patent is invalid because it fails to meet the “conditions for
4 patentability” of 35 USC §§ 101, 102, 103, and/or 112 because the alleged invention thereof
5 lacks utility; is taught by, suggested by, and/or, obvious in view of, the prior art; and/or is not
6 adequately supported by the written description of the patented invention, and no claim of the
7 ‘447 patent can be properly construed to cover any of Google’s products.
8 66. This is an exceptional case under 35 U.S.C. § 285 because Oracle filed its
9 Amended Complaint with knowledge of the facts stated in this Counterclaim.
10 COUNT NINE
11 Declaratory Judgment of Non-Infringement of U.S. Patent No. 6,192,476
12 67. Google restates and incorporates by reference its allegations in paragraphs 1-66 of
13 its Counterclaims.
14 68. An actual case or controversy exists between Google and Oracle as to whether the
15 ‘476 patent is infringed by Google.
16 69. A judicial declaration is necessary and appropriate so that Google may ascertain
17 its rights regarding the ‘476 patent.
18 70. Google has not infringed and does not infringe, directly or indirectly, any valid
19 and enforceable claim of the ‘476 patent.
20 71. This is an exceptional case under 35 U.S.C. § 285 because Oracle filed its
21 Amended Complaint with knowledge of the facts stated in this Counterclaim.
22 COUNT TEN
23 Declaratory Judgment of Invalidity of U.S. Patent No. 6,192,476
24 72. Google restates and incorporates by reference its allegations in paragraphs 1–71
25 of its Counterclaims.

26 73. An actual case or controversy exists between Google and Oracle as to whether the
27 ‘476 patent is invalid.

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1 74. A judicial declaration is necessary and appropriate so that Google may ascertain
2 its rights as to whether the ‘476 patent is invalid.
3 75. The ‘476 patent is invalid because it fails to meet the “conditions for
4 patentability” of 35 USC §§ 101, 102, 103, and/or 112 because the alleged invention thereof
5 lacks utility; is taught by, suggested by, and/or, obvious in view of, the prior art; and/or is not
6 adequately supported by the written description of the patented invention, and no claim of the
7 ‘476 patent can be properly construed to cover any of Google’s products.
8 76. This is an exceptional case under 35 U.S.C. § 285 because Oracle filed its
9 Amended Complaint with knowledge of the facts stated in this Counterclaim.
10 COUNT ELEVEN
11 Declaratory Judgment of Non-Infringement of U.S. Patent No. 6,910,205
12 77. Google restates and incorporates by reference its allegations in paragraphs 1-76 of
13 its Counterclaims.
14 78. An actual case or controversy exists between Google and Oracle as to whether the
15 ‘205 patent is infringed by Google.
16 79. A judicial declaration is necessary and appropriate so that Google may ascertain
17 its rights regarding the ‘205 patent.
18 80. Google has not infringed and does not infringe, directly or indirectly, any valid
19 and enforceable claim of the ‘205 patent.
20 81. This is an exceptional case under 35 U.S.C. § 285 because Oracle filed its
21 Amended Complaint with knowledge of the facts stated in this Counterclaim.
22 COUNT TWELVE
23 Declaratory Judgment of Invalidity of U.S. Patent No. 6,910,205
24 82. Google restates and incorporates by reference its allegations in paragraphs 1–81
25 of its Counterclaims.

26 83. An actual case or controversy exists between Google and Oracle as to whether the
27 ‘205 patent is invalid.

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1 84. A judicial declaration is necessary and appropriate so that Google may ascertain
2 its rights as to whether the ‘205 patent is invalid.
3 85. The ‘205 patent is invalid because it fails to meet the “conditions for
4 patentability” of 35 USC §§ 101, 102, 103, and/or 112 because the alleged invention thereof
5 lacks utility; is taught by, suggested by, and/or, obvious in view of, the prior art; and/or is not
6 adequately supported by the written description of the patented invention, and no claim of the
7 ‘205 patent can be properly construed to cover any of Google’s products.
8 86. This is an exceptional case under 35 U.S.C. § 285 because Oracle filed its
9 Amended Complaint with knowledge of the facts stated in this Counterclaim.
10 COUNT THIRTEEN
11 Declaratory Judgment of Non-Infringement of U.S. Patent No. 7,426,720
12 87. Google restates and incorporates by reference its allegations in paragraphs 1-86 of
13 its Counterclaims.
14 88. An actual case or controversy exists between Google and Oracle as to whether the
15 ‘720 patent is infringed by Google.
16 89. A judicial declaration is necessary and appropriate so that Google may ascertain
17 its rights regarding the ‘720 patent.
18 90. Google has not infringed and does not infringe, directly or indirectly, any valid
19 and enforceable claim of the ‘720 patent.
20 91. This is an exceptional case under 35 U.S.C. § 285 because Oracle filed its
21 Amended Complaint with knowledge of the facts stated in this Counterclaim.
22 COUNT FOURTEEN
23 Declaratory Judgment of Invalidity of U.S. Patent No. 7,426,720
24 92. Google restates and incorporates by reference its allegations in paragraphs 1–91
25 of its Counterclaims.

26 93. An actual case or controversy exists between Google and Oracle as to whether the
27 ‘720 patent is invalid.

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1 94. A judicial declaration is necessary and appropriate so that Google may ascertain
2 its rights as to whether the ‘720 patent is invalid.
3 95. The ‘720 patent is invalid because it fails to meet the “conditions for
4 patentability” of 35 USC §§ 101, 102, 103, and/or 112 because the alleged invention thereof
5 lacks utility; is taught by, suggested by, and/or, obvious in view of, the prior art; and/or is not
6 adequately supported by the written description of the patented invention, and no claim of the
7 ‘720 patent can be properly construed to cover any of Google’s products.
8 96. This is an exceptional case under 35 U.S.C. § 285 because Oracle filed its
9 Amended Complaint with knowledge of the facts stated in this Counterclaim.
10
COUNT FIFTEEN
11

12 Declaratory Judgment of Non-Infringement of the Asserted Copyrights

13 97. Google restates and incorporates by reference its allegations in paragraphs 1-96 of

14 its Counterclaims.

15 98. An actual case or controversy exists between Google and Oracle as to whether the
16 Asserted Copyrights are infringed by Google.

17
99. A judicial declaration is necessary and appropriate so that Google may ascertain
18
its rights regarding the Asserted Copyrights.
19
100. Google has not infringed and does not infringe, directly or indirectly, the Asserted
20
Copyrights.
21

22 PRAYER FOR RELIEF

23 WHEREFORE, having fully responded to Oracle’s Amended Complaint and asserted its
24 Amended Counterclaims against Oracle, Google prays for judgment as follows:
25 a. A judgment dismissing Oracle’s Amended Complaint against Google with
26 prejudice;
27 b. A judgment in favor of Google on all of its Counterclaims;
28
28
GOOGLE INC.’S ANSWER TO PLAINTIFF’S AMENDED COMPLAINT FOR PATENT AND
COPYRIGHT INFRINGEMENT AND AMENDED COUNTERCLAIMS
CIVIL ACTION NO. CV 10-03561
 Case3:10-cv-03561-WHA Document51 Filed11/10/10 Page30 of 31

1 c. A declaration that Google has not infringed, contributed to the infringement of, or
2 induced others to infringe, either directly or indirectly, any valid and enforceable
3 claims of the Patents-in-Suit;
4 d. A declaration that the Patents-in-Suit are invalid;
5 e. A declaration that Google has not infringed, either directly or indirectly, any of
6 the Asserted Copyrights;
7 f. A declaration that Oracle’s claims are barred by the doctrines of laches, equitable
8 estoppel, and/or waiver;
9 g. A declaration that this case is exceptional and an award to Google of its
10 reasonable costs and expenses of litigation, including attorneys’ fees and expert
11 witness fees; and
12 h. Such other and further relief as this Court may deem just and proper.
13 DATED: November 10, 2010 KING & SPALDING LLP
14

15 By: /s/ Donald F. Zimmer, Jr. /s/

16
SCOTT T. WEINGAERTNER (Pro Hac Vice)
17 [email protected]
ROBERT F. PERRY
18 [email protected]
BRUCE W. BABER (Pro Hac Vice)
19 [email protected]
1185 Avenue of the Americas
20 New York, NY 10036-4003
Telephone: (212) 556-2100
21 Facsimile: (212) 556-2222
22 DONALD F. ZIMMER, JR. (SBN 112279)
[email protected]
23 CHERYL A. SABNIS (SBN 224323)
[email protected]
24 KING & SPALDING LLP
101 Second Street – Suite 2300
25 San Francisco, CA 94105
Telephone: (415) 318-1200
26 Facsimile: (415) 318-1300
27 ATTORNEYS FOR DEFENDANT
GOOGLE INC.
28
29
GOOGLE INC.’S ANSWER TO PLAINTIFF’S AMENDED COMPLAINT FOR PATENT AND
COPYRIGHT INFRINGEMENT AND AMENDED COUNTERCLAIMS
CIVIL ACTION NO. CV 10-03561
 Case3:10-cv-03561-WHA Document51 Filed11/10/10 Page31 of 31

1 DEMAND FOR JURY TRIAL

2 In accordance with Rule 38 of the Federal Rules of Civil Procedure and Civil L.R. 3-6(a),
3
Google Inc. respectfully demands a jury trial of all issues triable to a jury in this action.
4

5 DATED: November 10, 2010 KING & SPALDING LLP

7 By: /s/ Donald F. Zimmer, Jr. /s/

SCOTT T. WEINGAERTNER (Pro Hac Vice)
8 [email protected]
ROBERT F. PERRY
9 [email protected]
BRUCE W. BABER (Pro Hac Vice)
10 [email protected]
1185 Avenue of the Americas
11 New York, NY 10036-4003
Telephone: (212) 556-2100
12 Facsimile: (212) 556-2222

13 DONALD F. ZIMMER, JR. (SBN 112279)

[email protected]
14 CHERYL A. SABNIS (SBN 224323)
[email protected]
15 KING & SPALDING LLP
101 Second Street – Suite 2300
16 San Francisco, CA 94105
Telephone: (415) 318-1200
17 Facsimile: (415) 318-1300

18 ATTORNEYS FOR DEFENDANT

GOOGLE INC.
19

20

21

22

23

24

25

26

27

28
30
GOOGLE INC.’S ANSWER TO PLAINTIFF’S AMENDED COMPLAINT FOR PATENT AND
COPYRIGHT INFRINGEMENT AND AMENDED COUNTERCLAIMS
CIVIL ACTION NO. CV 10-03561