I/P Engine, Inc. v. AOL, Inc. et al
Opposition to 277 MOTION for Sanctions Plaintiff I/P Engine, Inc.'s Second Motion for Discovery Sanctions Regarding Untimely Discovery Responses (Public Version) filed by AOL Inc., Gannett Company, Inc., Google Inc., IAC Search & Media, Inc., Target Corporation. (Noona, Stephen)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
Civil Action No. 2:11-cv-512
AOL, INC., et al.,
DEFENDANTS' OPPOSITION TO PLAINTIFF'S SECOND MOTION FOR
Plaintiff seeks three drastic sanctions related to two updated interrogatory responses and
one production of emails that were served before the close of fact and expert discovery. First,
Plaintiff seeks a sanction that will allow its damages expert, Dr. Becker, to inflate his damages
calculation using sales outside the U.S. While both Dr. Becker and
Defendants agree (as they must) that using such sales is improper, Plaintiff argues it should be
allowed because the updated interrogatories explicitly identifying the U.S. sales figures for a
three year period were a surprise and caused prejudice. This is simply not the case.
Google produced a number of spreadsheets that identified both U.S. and worldwide
revenue over different time periods. It then had a 30(b)(6) witness testify unequivocally that one
of the spreadsheets covered U.S. revenue while another reported worldwide revenue. Dr. Becker
cited testimony from the 30(b)(6) witness and used the spreadsheets, even identifying one of the
spreadsheets as showing worldwide data. Instead of apportioning the worldwide revenues so that
he could calculate royalties based only on the U.S. revenue, however, he simply used worldwide
sales when calculating damages in the period from August 2009- March 2012 — despite knowing
this was improper. For this period, he did not attempt to calculate the U.S. sales from the
worldwide sales data. Instead, he stated that if updated sales figures became available, he would
supplement his report.
Google's production of an updated interrogatory response before the close of fact
discovery identifying U.S. revenue from 2009 to 2012 simply made explicit what Dr. Becker
already knew and could readily have calculated himself for the 2009-2012 time period. The
updated interrogatory response was not, as Plaintiff characterizes it, a complete change of
position. Nor was it a surprise that caused any prejudice. Plaintiff has stated that Dr. Becker can
easily supplement his report to account for the U.S. sales data though a simple math calculation.
Moreover, any prejudice that Plaintiff might suffer as a result of Dr. Becker being criticized for
not attempting to calculate U.S. sales can be alleviated by preventing Google from raising that
issue at trial. As there was no undue surprise, change of position or prejudice, Plaintiffs motion
to strike the updated revenue interrogatory should be denied.
Next, Plaintiff seeks to prevent Google from relying on non-infringing alternatives to the
accused system that were identified in another interrogatory that was supplemented before the
close of fact and expert discovery. While Plaintiff complains that this supplemental
interrogatory results in prejudice, again that is not the case. Plaintiffs claim of prejudice rests on
not being able to depose a Google witness on the non-infringing alternatives. But, Google
informed Plaintiff that it would present such a witness after claim construction was complete,
Plaintiff never sought a deposition, and Plaintiff asked very few questions about non-infringing
alternatives of the Google witness deposed after Defendants' expert identified him as a person
with knowledge of the topic. Moreover, Plaintiff had more than ample time between the
supplemental interrogatory and expert depositions to prepare for and ask Google's experts about
the non-infringing alternatives. In summary, Google supplemented the interrogatory after it
received the claim construction order and after Plaintiff finally provided some (albeit
incomplete) facts identifying its infringement theories. As Google could not have reasonably
provided its non-infringing alternatives until those events occurred, its supplemental responses
were timely and Plaintiff has suffered no prejudice.
Third, Plaintiff seeks to exclude emails that
Google identified and diligently produced these emails
after Plaintiffs expert identified and relied upon a document that allegedly showed the opposite
was true. It was only after Plaintiff identified that document that Google became aware that it
should question certain employees about documents they may have relevant to this topic. Once
the emails were found, they were promptly produced before the close of fact discovery.
Moreover, Plaintiff can provide no justification for excluding Google's expert from relying upon
a similar email produced in May, more than three months before the discovery deadline.
THE LEGAL STANDARDS
Google timely supplemented its discovery responses pursuant to Federal Rule of Civil
Procedure 26(e). Plaintiff bases its motion on its misreading of a recent Federal Circuit decision,
which does not, contrary to Plaintiff s suggestion, stand for the proposition that evidence
properly produced "during the last days of fact discovery" should be excluded. (D.N. 309, 2.) In
Woods v. DeAngelo Marine Exhaust, Inc., --F . 3d --, 2012 WL 3683536, *4 (Fed. Cir. Aug. 28,
2012), defendant discovered certain drawings it believed constituted prior art and wrote an email
to plaintiff disclosing the drawings on the last day of fact discovery. Defendant never
supplemented its response to plaintiffs prior art interrogatory to include reference to the
drawings. Woods, 2012 WL 3683536 at *4, *6. The Federal Circuit noted that the timeliness of
the document production and the failure to supplement the interrogatory response were two
distinct issues. Id., *6. The Federal Circuit actually disagreed with the district court's
determination that the documents were not timely produced, noting:
The district court, by local rule or by court order, may require such production at
an earlier date. But the problem here is that there was no such local rule or court
order, save the order setting a discovery deadline of February 9, 2010. The
documents were disclosed on February 8, before the discovery deadline . . .
Id., *7. Although the Federal Circuit upheld the trial court's exclusion of the documents, its
decision was explicitly based not on timeliness grounds (the production was timely), but on
Defendant's failure to ever supplement its interrogatory response. Id., *7-8.
The Federal Circuit found that defendant met its Fed. Rule C. P. 26(e) supplementation
obligations with respect to production of the drawings, because the rule
requires only that parties supplement prior discovery responses in a timely
manner if the pan)) learns that in some material respect the disclosure or response
is incomplete or incorrect ... The rule prohibits parties who are aware of their
deficient response from holding back material items and disclosing them at the
Id., *7 (quotations omitted) (emphasis in original). Like the defendant in Woods, Google met its
discovery obligations by promptly producing documents upon learning of them. Unlike the
defendant in Woods, however, Google also fulfilled its discovery obligation to supplement its
interrogatory responses. Thus, Plaintiff s reliance on Woods is misplaced.
Plaintiffs reliance on the five-factor test in Southern States is also not appropriate. This
test is used to determine "whether a party's nondisclosure of evidence was substantially justified
or harmless" under Federal Rule of Civil Procedure 37(c). Southern States Rack and Fixture,
Inc. v. Sherwin-Williams Co., 318 F.3d 592, 596-97 (4th Cir. 2003). The Rule 37(c) exclusion
rule applies where a party has failed to make the appropriate disclosures or to supplement
discovery responses under Federal Rules of Civil Procedure 26(a) and (e). Fed. R. Civ. P.
37(c)(1). Here, Google has made all appropriate disclosures and has timely supplemented its
discovery responses, and so the exclusionary rule, and the Southern States five-factor test, are
GOOGLE'S SUPPLEMENTAL RESPONSE TO REVENUE INTERROGATORY
WAS TIMELY AND PROPER.
There Was No Surprise From Google's Updated Interrogatory Response
On August 29, 2012, prior to the close of fact discovery, Google supplemented its
response to Interrogatory No. 15 to more particularly identify the U.S. revenue for the accused
products from August 2009 to June 2012. (Ghaussy Dec., Ex. A.) The response previously
contained only worldwide data for this time period,
(See, e.g., Ghaussy Dec., Ex. C (Datta Tr.), 98:18-22.) Google also updated
the sales figures to be current through July 2012. Google then updated its response again on
September 13, 2012, solely to make it current through August 2012 for AdSense for Mobile
Search. (Id., Ex. B.) There was no element of surprise or prejudice that flows from these
While Plaintiff now argues that its expert, Dr. Becker, had every reason to believe his
reliance on the spreadsheets that contained worldwide sales was proper (D.N. 309, 7), the facts
show the opposite is true. Dr. Becker acknowledges only U.S. revenues can serve as a basis for
damages in this case. (D.N. 386, ¶ 57; D.N. 387, 104:2-5 (Becker Tr.) ("Q: [Y]ou agree that the
accused revenues in this case are the U.S. revenues of the accused products? A: Yes.").) 1
Indeed, Dr. Becker's report explicitly states that should additional U.S. revenue data be
produced, he reserved the right to supplement his report. (D.N. 386, ¶ 62.) Thus, neither he nor
Plaintiff can argue surprise when Google supplemented its response to more particularly identify
U.S. sales and make the updates current through August 2012. Six weeks prior to service of Dr.
Becker's report, Google's 30(b)(6) witness, Sanjay Datta, testified
1 Defendants have filed a Daubert motion to exclude Dr. Becker's flawed damages
theory. (D.N. 385.) Among the flaws identified in that motion is Dr. Becker's improper use of
worldwide revenues as a royalty base. (Id., 11-12.)
111.2 (D.N. 391, 54:22-55:18; see
also Ghaussy Dec., Ex. C, 97:25-98:11 11.11111.1111111111111
Six weeks later, Dr. Becker relied on these spreadsheets to establish revenue figures that
he would use in his royalty calculation. Dr. Becker had clearly reviewed Mr. Datta's deposition
transcript and understood that certain revenue was worldwide. For example, in exhibit SLB-5 to
his expert report, Mr. Becker identifies the spreadsheet which was Datta Exhibit 2 as Google's
worldwide revenue. (D.N. 386, SLB-5.) He also cites to Mr. Datta's testimony, stating,
"Google's corporate representative testified that updating U.S. revenue information for the
accused systems should be an easy thing to do. Should Google clarify or produce additional or
updated information after the issuance of this report, I reserve the right to revise my calculation
of the royalty base as necessary." (Id., ¶ 62.) The evidence all points to Dr. Becker knowing that
he was relying on worldwide data. Yet, he chose to wait for Google to provide an update to the
U.S. sales rather than attempting to apportion the worldwide sales to account for them. Dr.
Becker had ample data available to him to make the apportionment. He had years of data
showing the percentage of U.S to worldwide sales for the accused products. (C.f. Ghaussy Dec.,
Exs. D (Datta Tr. Ex. 2) and E (Datta Tr. Ex. 3).) He also had Google's 10Ks, which provided
insight into how to make the apportionment, and Mr. Datta also explained in his deposition that
this apportionment could be done. (Ghaussy Dec., Ex. C, 116:13-120:4.) He has also explicitly
stated that U.S. revenue is the appropriate measure of damages. (D.N. 387, 104:2-5.) Given Dr.
Becker's choice to wait for an update, the necessity for which became clear only after he chose to
simply rely on worldwide data rather than apportioning it, Google should not be penalized for
providing it to him.
This une uivocal testimony refutes Plaintiffs claim that
. (See D.N. 309, 6-7).
Plaintiff Will Not Suffer Any Prejudice As a Result of Google Updating Its
Plaintiff itself has stated, in its opposition to Defendants' Daubert motion, that Dr. Becker
"could easily adjust his royalty base" to take into account the U.S.-specific revenues. (D.N. 309,
11.) This is simply "a matter of mathematics": Dr. Becker "will be able to conduct the math
exercise and adjust the royalty base." (Id., 2.) Given the ease with which Dr. Becker can
supplement his report, Plaintiff cannot establish that Google's updated numbers prejudice
Plaintiffs ability to present its case. Dr. Becker can simply perform the revised calculation and
produce a supplemental report identifying a revised damage number that is based only on
allowable sales within the U.S. See 35 U.S.C. § 271(a); Microsoft Corp. v. AT&T Corp., 550
U.S. 437, 455 (2007) ("The presumption that United States law governs domestically but does
not rule the world applies with particular force in patent law."); NTP, Inc. v. Research in Motion
Ltd., 418 F.3d 1282, 1313 (Fed. Cir. 2005) ( "Section 271(a) is only actionable against patent
infringement that occurs within the United States.").
Though Dr. Becker's report easily can be supplemented through simple math, Plaintiff
complains that it will suffer prejudice if Google's expert criticizes Dr. Becker for relying on
incorrect data, given that Dr. Becker did not have access to the U.S. data at the time he submitted
his report. (D.N. 309, 8-9.) However, Google's expert acknowledges that Dr. Becker did not
have explicit U.S. revenues for all time periods; he criticizes Dr. Becker for choosing not to
estimate U.S. revenues for those years, even though it was clear that the revenue was worldwide
and that Dr. Becker had the means to make an estimate. (D.N. 468-4, 1 162.) Dr. Becker could
have used the U.S. versus worldwide revenue from 2005-2009 as a guideline for U.S. revenues
generated from 2009-2012, or used information in Google's 10-Ks to make this apportionment.
Dr. Becker chose not to do so, and continues not to do so, and it is for this reason that Dr.
Becker's methodology is flawed.
Even if the criticism of Dr. Becker were considered prejudicial, the prejudice could be
alleviated in a much less drastic and significant way than striking Google's updated August 29
interrogatory response and allowing
in improper damages to become part
of the damages asserted in the case. For example, the Court could issue an order precluding
Google from cross examining Dr. Becker about his initial use of worldwide data, and it could
preclude Google's expert from criticizing Dr. Becker for failing to initially apportion the
worldwide revenue to include U.S. only sales. This would completely alleviate any prejudice
that Plaintiff claims it will suffer.
Last, Plaintiff claims that it has suffered prejudice because it cannot depose fact witnesses
and verify the new revenue numbers. (D.N. 309, 2,9.) As a practical matter, it would be hard to
see how Plaintiff would question the veracity of the updated numbers. For this reason, Plaintiff
had taken the opposite position earlier in the case: it stated that it wanted an updated
interrogatory response on the revenue numbers in lieu of a deposition about those numbers. (Id.,
7.) This is exactly what Plaintiff got. Moreover, to the extent Plaintiff wanted to question
witnesses about the revenue numbers, it was free to do so. The August 29 supplementation was
made in advance of Plaintiffs September 14 deposition of Defendants' expert witness on
damages. (Ghaussy Dec., ¶ 14.) Thus, Plaintiff had a full and fair opportunity to question
Google's expert about the updated U.S. revenue figures. Plaintiff also had an opportunity to
obtain discovery from Google fact witnesses on the updated numbers. Plaintiff served deposition
notices on August 31, after it had received the supplementation, for the depositions of two thirdparty witnesses. (D.N. 438-7, 438-8.) Defendants cooperated with making those witnesses
available for deposition after the close of fact discovery. (D.N. 243.) Google would also have
cooperated with allowing depositions regarding the updated financial numbers, as it did other
Google and third-party fact witnesses Plaintiff deposed as late as September 12, 18, 25 and 27.
(Ghaussy Dec., ¶ 15.)
The Remedy Plaintiff Seeks Is Unjustified
Plaintiffs expert has testified that if his damages calculation included sales outside the
U.S., then it needs to be revised. (D.N. 387, 104:21-105:7.) Google agrees. Plaintiff, on the
other hand, requests that Google's interrogatory response be stricken and worldwide sales remain
as part of the damages calculation. Plaintiff disregards the fact that this could lead to
windfall. (D.N. 387, 104:2-5 (Becker Tr.) ("Q: [Y]ou agree that the accused revenues in
this case are the U.S. revenues of the accused products? A: Yes."); Microsoft Corp., 550 U.S. at
455. There is no basis for such drastic relief.
Similarly, such a result would lead to the untenable position of forcing Dr. Becker to
admit that his damages numbers are incorrect and inflated, and would likely create jury
confusion. Google will necessarily be able to question Dr. Becker's use of the worldwide
numbers instead of the more correct U.S. numbers and his knowledge of the earlier produced
charts showing the distinction for the 2005-2009 period. To exclude the correct numbers would
be to invite a verdict that was inherently flawed.
There was no surprise when Google updated its revenue numbers. Google's 30(b)(6)
witness had already testified that the earlier data included worldwide sales. Dr. Becker
acknowledged this in Exhibit SLB-5 to his report, and in his statements within the report. Thus,
the only possible justification for striking the updated interrogatory response would be based on
a prejudice that cannot be alleviated. Such prejudice does not exist. Dr. Becker can easily
supplement his report to include the proper revenue base, and Google can be prevented from
raising his original inclusion of worldwide sales data in his damages calculation. For these
reasons, Plaintiffs request to strike the updated interrogatory response and prevent any reliance
on the actual U.S. sales figures should be denied.
GOOGLE'S SUPPLEMENTARY RESPONSE TO NON-INFRINGING
ALTERNATIVES INTERROGATORY WAS TIMELY AND PROPER.
Google's Supplementation was Necessary Given Plaintiff's Delay in
Disclosing its Infringement Contentions
Google served its supplementary interrogatory response identifying additional noninfringing alternatives on August 30, 2012, five days before the close of fact discovery.
Plaintiffs argument that this response should be excluded fails, given that it was Plaintiffs delay
in providing consistent and complete infringement contentions that caused the August 30
As with Plaintiffs motion to exclude Defendants' prior art, which was denied, here again
Plaintiff complains about Google's identification of evidence when this identification was made
to respond to Plaintiffs own new theories. (See D.N. 275, 1 (Order denying Plaintiffs motion
for discovery sanctions).) On November 7 and 11, 2011, Plaintiff served infringement
contentions for certain of the accused products based on publicly available information. (D.N.
105, 3.) A month later, Google produced over 200,000 pages of technical documents concerning
the accused products, and in January, Defendants requested that Plaintiff supplement its
infringement contentions to account for the technical documents. (Id.) After meeting and
conferring, Plaintiff agreed and served supplemental infringement contentions, which were still
incomplete, in February 2012. (Id., 3-4.) When Plaintiff refused to supplement its deficient
contentions, Defendants Google and IAC Search & Media, Inc. moved to compel complete
infringement contentions, because Plaintiffs contentions did not put Defendants on notice of the
claims against them. (Id., 4-6.) In May, the Court granted the motion in part, ordering Plaintiff
to supplement its infringement contentions by July 2. (D.N. 156, 2.) On June 4, the Court held a
Markman hearing, during which Plaintiff identified some features of the accused products that
met the collaborative data element of the asserted patents. (D.N. 220, 7-8.) The Court issued its
Markman order on June 18. (Id.) On July 2, Plaintiff served supplemental infringement
contentions asserting several new infringement theories. For example, Plaintiff for the first time
asserted that other aspects of Google's accused systems
met the content-based
filtering limitation in Claims 10(c), 25(c) of the '420 Patent and Claims 1(d) and 26(e) of the '664
3 Plaintiff served supplemental interrogatory responses and also supplemented its expert
infringement report on September 4, 2012, the last day of fact discovery. Plaintiffs motion does
not seek to exclude Google's September 20 supplementation of the same non-infringing
alternative interrogatory, presumably because it recognizes that this supplementation was made
only to respond to Plaintiffs new infringement expert report served September 4.
Patent.4 (Id., 9-10.) On July 25, Plaintiffs infringement expert submitted his report, which
identified that Plaintiff was alleging that "Defendants' systems infringe the asserted claims
whenever they filter advertisements in response to a search query from a user using pCTR."
(D.N. 240-4 (Frieder Report), ¶ 71.) Thus, Dr. Frieder's report, in combination with Plaintiffs
July 2 supplemental infringement contentions, clarified that Plaintiff was pointing
, as meeting the limitations of the patents-in-suit. The report stated that any one of these
features is sufficient to meet the claim limitations. (Id.) It thus became apparent that, under
Plaintiffs theory of infringement, Google could design around the patents-in-suit by not using
After Google learned of Plaintiffs position, Google contacted the appropriate Google
employees to discuss Plaintiffs newly disclosed position, discussed Plaintiffs report with its
experts, and coordinated conversations between its employees and experts. (See, e.g., D.N. 4684 (Ugone Report), ¶ ¶ 14, 26, 127.) Google could not determine the non-infringing alternatives
to its product without knowing what the claim terms meant and what Plaintiff specifically
contended was infringing — information contained in the Court's Markman order (and later order
granting Defendants' motion for reconsideration) and Plaintiffs expert report. Google
investigated diligently and properly submitted its non-infringement expert report, which set forth
Google's non-infringing alternative position, on August 30. The very same day, Google
supplemented its interrogatory response to include the non-infringing alternatives identified in its
expert report. This supplementation was therefore timely.
4 Plaintiff failed to supplement its contentions as to certain of the accused products, in
violation of the Court's order. After extensive meet-and-confers between the parties, and the
threat of a motion for sanctions by Defendants, Plaintiff ultimately agreed to dismiss these
products from the case. (D.N. 203.)
Plaintiff Suffered No Prejudice From the Supplementation
Plaintiff cannot show any prejudice as a result of Google's supplemental interrogatory
response. Plaintiff attempts to create prejudice from the fact that it did not depose a Google
30(b)(6) witness concerning non-infringing alternatives. But Plaintiff fails to mention that
Google explained repeatedly that it would be willing to produce a 30(b)(6) witness on noninfringing alternatives after the Court issued its claim construction order. (D.N. 180-16, Ghaussy
Dec. Ex. G, 3 ("Defendants are willing to produce a witness in response to topics regarding noninfringing alternatives and design-arounds after the Court issues its Markman order.").) Google's
position was that the claims needed to be construed and Plaintiff needed to identify its
infringement positions before Google could identify non-infringing alternatives. It would have
been a waste of time for Plaintiff to depose Google's non-infringing alternatives witness both
before and after the claim construction order. Despite Google's offer, however, Plaintiff never
requested that Google provide a 30(b)(6) witness on non-infringing alternatives after the claim
construction order issued. 5 (Ghaussy Dec., I 13.) That Plaintiff never requested and therefore
never deposed a 30(b)(6) witness on the topic of non-infringing alternatives is Plaintiffs fault,
Furthermore, on September 12, 2012, Plaintiff did take the deposition of Google
employee Nicholas Fox, whom Dr. Ugone identified in his August 29 expert report as a person
with knowledge of Google's non-infringing alternatives. (D.N. 468-4,
I 26.) Although Mr. Fox's
deposition occurred nearly two weeks after the supplementation Plaintiff moves to exclude,
Plaintiff asked Mr. Fox very few questions about non-infringing alternatives. (Ghaussy Dec. Ex.
H (Fox Tr.), 231:7-233:17.) Plaintiff therefore had a full opportunity to question one of the
Google employees with knowledge about the non-infringing alternatives contained in the
5 Although the Court's claim construction order is dated June 15, it was sent to the
parties on June 18. (D.N. 171; Ghaussy Dec., ¶ 13.) The deposition of Mr. Alfemess occurred
on June 21, three days later. (Id.) After the order issued, Plaintiff did not request that Mr.
Alferness be designated for the non-infringing alternative topic (presumably due to the short
notice for both parties), nor did Plaintiff ever request a witness on this topic after the order.
supplemental response, but chose not to do so. Furthermore, the supplementation was made well
in advance of Plaintiffs September 22-23 deposition of Defendants' expert witness on noninfringement and the September 14 deposition of Defendants' expert witness on damages, and
Plaintiff did in fact ask questions of both experts about non-infringing alternatives. (Ghaussy
Dec., ¶ 14.) Again, Plaintiff had ample opporttmity to investigate the non-infringing alternatives,
and therefore cannot demonstrate prejudice.
Plaintiffs other complaints about discovery prejudice also ring hollow. Plaintiff states
that Dr. Becker had to issue his report without knowing Plaintiffs non-infringing alternatives
(D.N. 309, 15); however, as discussed above, Dr. Becker could have supplemented his report but
did not do so. In addition, it is common in patent cases for the plaintiffs expert report to be due
before the defendant's expert report, because the plaintiff bears the burden of proof on most
issues. Therefore it is not unusual for a plaintiff to receive the full set of non-infringing
alternatives after it submits its reports. 6
As set forth above, Plaintiff continued to notice depositions after the supplementations
and continued to take fact depositions — including of Google fact witnesses — even after the close
of fact discovery. Plaintiff had the opportunity to take more fact discovery on this issue, to ask
Google to provide a 30(b)(6) witness on non-infringing alternatives after the Markman order, and
to question a Google employee with knowledge of non-infringing alternatives about the
supplementation — and chose not to do so. Any discovery prejudice is entirely Plaintiffs own
GOOGLE'S AUGUST 29 DOCUMENT PRODUCTION WAS TIMELY AND
Google's production of emails demonstrating that
was not untimely. Like the timely produced
The discovery schedule originally provided for rebuttal gxpert reports by Plaintiff, but
Plaintiff decided to forego rebuttal expert reports in exchange for a one-week extension to the
deadline for its original reports. (D.N. 192).
drawings in Woods, the emails were not served in violation of any discovery deadline. Woods,
2012 WL 3683536 at *7• Google's diligent search for responsive documents did not uncover
these emails; they were located only after Plaintiffs expert report identified that Plaintiff was
specifically concerned with
On December 7, 2011, three months prior to the first day of discovery under the Court's
Rule 26(f) Pretrial Order, Google produced over 200,000 pages of technical documents related to
the then-accused products from its technical repositories. (D.N. 145, 4-5.) Google continued to
search for documents responsive to Plaintiffs requests throughout fact discovery, ultimately
producing almost 900,000 pages of documents in this case. (Ghaussy Dec., ¶ 17.) On July 25,
Plaintiff served the damages report of Dr. Stephen Becker. Dr. Becker relied heavily on a single
internal Google presentation suggesting
. (D.N. 386, ¶J 174-76, Ex. SLB-18.) After speaking with the author of the
presentation, Google determined that the author of that statement did not have personal
knowledge of it, and that a different Google employee would have knowledge of this issue. 7
(Ghaussy Dec. ¶ 16.) This employee gave to Google's counsel the emails at issue, which were
then promptly produced to Plaintiff. (Id.)
Plaintiffs vague requests for documents concerning "internal testing" or "increases in
revenue after incorporating a Relevance Score into a paid search advertising system" (D.N. 309,
10) were not specific or intelligible enough to put Google on notice that it needed to conduct an
investigation targeted to
, especially given that the relevant damages period in this case does
not begin prior to September 2005. (D.N. 386, Ex. SLB-1.) Google is a large company, with
many products, and many product experiments. Only after Plaintiffs expert reports identified
Plaintiff also had the opportunity to question the Google employee who provided the
information in the presentation, Gary Holt, at Mr. Holt's August 23 deposition. Mr. Holt
confirmed that he did not have personal knowledge of the information contained in the
presentation that Plaintiffs expert relied on. (Ghaussy Dec. Ex. I (Holt Tr.), 124:21-125:13.)
that Plaintiff was concerned specifically with
was Google able to focus its search and locate the documents. Once Google
discovered that documents
issue and uncovered them, it promptly produced them, meeting its Rule 26(e) obligation to
supplement. See Woods, 2012 WL 3683536 at *7.
Plaintiff implies that Google's witness Jonathan Alferness acted improperly when he
failed to testify at his deposition about the experiments discussed in the emails at issue. (D.N.
309, 10.) But the deposition testimony Plaintiff points to shows, to the contrary, Mr. Alferness
(D.N. 309-8 (Alferness Tr.), 307:23-308:11.) Plaintiff did not ask Mr. Alferness
Rather, in the exhibit to its motion, Plaintiff points to testimony where it asks whether Google
conducted experiments "before it implemented Quality Score." (Id., 308:17-19.) Plaintiffs
motion states without citation
(D.N. 309, 10 fn 2.) Not so. As Mr. Alferness testified, as a Google product manager, he
(D.N. 241-11, 14:3-11; Ghaussy Dec. Ex. J, 31:13-32:5.) That Mr.
Alfemess should have understood Plaintiffs question about Quality Score as a code to indicate
that Plaintiff was actually asking
is a stretch at best. Google addressed Plaintiffs contention
when Plaintiff first made the contention, i.e. in Dr.
Becker's July 25 expert report.
Furthermore, Plaintiff cannot credibly claim surprise as to the contents of the emails
themselves, because an earlier-produced email contains some of the same information. Plaintiff
points to certain paragraphs of Dr. Ugone's report that it claims rely on the emails, but these
paragraphs also rely on an email produced by Google in May 2012 ("the May Email"). (D.N.
468-4, 110 fn 466.) The May Email, sent to
. (Ghaussy Dec., Ex. K.) Therefore,
even if the Court were to exclude the emails Plaintiff has moved to exclude, Plaintiffs request
that Dr. Ugone be precluded from testifying about this information in general should be denied.
Furthermore, although the May Email was produced in May, Plaintiff has not questioned a single
one of Google's witnesses about it, nor requested any type of follow-up discovery. (Ghaussy
Dec., ¶ 12.) This demonstrates that the emails do not raise an issue of surprise. Rather, Plaintiff
simply chose not to address certain facts that show its theories are incorrect.
Plaintiffs claim of prejudice is also not convincing given Google's willingness to
conduct discovery beyond the set deadline in order to alleviate any perceived harm to Plaintiff.
For example, Google did not object to Plaintiffs deposition notices served as late as August 31,
two business days before the close of fact discovery, and cooperated with Plaintiff when it
decided to take fact witness depositions, including of Google employees, after the close of fact
discovery. Had Plaintiff wanted to seek depositions of Google employees related to these emails
— including the author of the emails — it was free to do so. It chose not to.
Google timely supplemented and updated its interrogatory responses and document
production. Google's supplemental responses and production of four emails did not cause any
cognizable prejudice to Plaintiff. To the extent any prejudice exists, it can be alleviated by
means other than excluding evidence. Google's production was timely under the circumstances
and should be allowed.
DATED: October 1, 2012
/s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: (757) 624.3000
Facsimile: (757) 624.3169
David A. Perlson
QUINN EMANUEL URQUHART &
50 California Street, 22nd Floor
San Francisco, California 94111
Telephone: (415) 875-6600
Facsimile: (415) 875-6700
Counsel for Google Inc., Target Corporation,
IAC Search & Media, Inc., and
Gannett Co., Inc.
By: /s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 W. Main Street, Suite 2100
Norfolk, VA 23510
Telephone: (757) 624-3000
Facsimile: (757) 624-3169
Robert L. Burns
FINNEGAN, HENDERSON, FARABOW, GARRETT &
Two Freedom Square
11955 Freedom Drive
Reston, VA 20190
Telephone: (571) 203-2700
Facsimile: (202) 408-4400
Cortney S. Alexander
FINNEGAN, HENDERSON, FARABOW, GARRETT &
3500 SunTrust Plaza
303 Peachtree Street, NE
Atlanta, GA 94111
Telephone: (404) 653-6400
Facsimile: (415) 653-6444
Counsel for Defendant AOL, Inc.
CERTIFICATE OF SERVICE
I hereby certify that on October 1, 2012, I will electronically file the foregoing with the
Clerk of Court using the CM/ECF system, which will send a notification of such filing (NEF) to
Jeffrey K. Sherwood
Kenneth W. Brothers
DICKSTEIN SHAPIRO LLP
1825 Eye Street NW
Washington, DC 20006
Telephone: (202) 420-2200
Facsimile: (202) 420-2201
Donald C. Schultz
W. Ryan Snow
CRENSHAW, WARE & MARTIN, P.L.C.
150 West Main Street, Suite 1500
Norfolk, VA 23510
Telephone: (757) 623-3000
Facsimile: (757) 623-5735
Counsel for Plaintiff, I/P Engine, Inc.
/s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: (757) 624.3000
Facsimile: (757) 624.3169