Oracle Challenges Court-Appointed Expert Witness for Bias

A federal judge has denied Oracle's motion to disqualify a court-appointed expert witness for bias in the company's lengthy copyright and patent infringement case against Google.

When this multi-billion dollar Oracle v. Google suit began in 2010, U.S. District Judge William Alsup appointed economic damages expert witness Dr. James Kearl, a professor of economics at Brigham Young University, to testify "… regarding the issues of damages (for copyright and patent claims)" if liability was found.¹

In 2014, after his appointment as a neutral expert under Rule 706 in Oracle v. Google, Dr. Kearl testified as an expert witness in Apple Inc. v. Samsung Electronics Co., Ltd., (No. 12-00630), in which Samsung retained him to serve as an expert economist "'solely to value specific features of Apple products' and to evaluate the royalties Apple would have paid to Samsung for a hypothetical license of the Samsung's asserted patents," Justice Alsup wrote. ²

Neither Apple nor Samsung are a party in Oracle v. Google, and neither Oracle nor Google are a party in Apple v. Samsung.

As for Oracle's claim of bias, Judge Alsup found that the company "… has not pointed to a single statement ever made by Dr. Kearl in the Apple case (or elsewhere) relating to Android or Google, or one usable to impeach any position he may take here."³

Yet Google was highly involved in Apple v. Samsung, in which Apple claimed more than $2 billion in damages. Google paid for Samsung's legal fees in connection with two of the patents in the suit, Google and Samsung had the same attorneys and Google agreed to indemnify Samsung. And at trial, Samsung argued that the case was "really about Apple versus Google's Android."⁴

Apple told the jury that Samsung's counterclaims were really just a defense strategy. Based on Dr. Kearl's analysis, Samsung asked for approximately $6 million, yet paid Dr. Kearl over $5 million. Samsung was using Dr. Kearl to make all related patents seem like they have a low value, Apple's attorneys contended.

Oracle alleged that Dr. Kearl purposely devalued Samsung's counterclaim damages, placing him clearly on the Android/Google side. Judge Alsup called those allegations "speculation" and "too flimsy" to support disqualifying him as an expert.

The Oracle v. Google lawsuit was initially a broad case of patent and copyright claims, but has narrowed to a small set of computer codes (Java API packages). Judge Alsup ruled in 2012 that those APIs were not copyrightable, but in May of last year the Court of Appeals for the Federal Circuit reversed his ruling. Google appealed to the U.S. Supreme Court, which refused the case. It was then referred back to Judge Alsup's court for a decision on whether Google's appropriation could be seen as fair use.

In its motion Oracle also said that it feared if it cross-examined Dr. Kearl on the issue of bias that the jury might view his appointment by the judge as a signal that the court has endorsed Google's side. In his denial of the motion, Justice Alsup responded: "If this 'problem' arises, the court will solve it with an admonition to the jury."⁵

Oracle has also claimed that an expert is no longer necessary as there are no longer any patent issues and the damage calculations can be simplified. Justice Alsup disagreed: "The fact that the patent claims have fallen away does not remove the need for the jury to understand the roles and relative importance of the accused items as elements of products, rather than entire products".⁶

Justice Alsup said he would reconsider removing the expert if "the surviving damage theories by both sides" become so uncomplicated that an expert is no longer needed.⁷

Courts rarely appoint expert witnesses under Rule 706, although such court-appointed experts are quite common outside the United States. While the Rule provides the court broad discretion to appoint neutral experts, the Federal Circuit has noted that courts "have remarked that Rule 706 should be invoked only in rare and compelling circumstances."⁸