IconFind, Inc. v. Google, Inc.
Filing
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STATEMENT of Parties (Joint Statement) re Discovery Disagreement by Plaintiff IconFind, Inc. re 60 Notice - Other. (Attachments: # 1 Exhibits A and B, # 2 Exhibits C and D)(Baxter, Daniel)
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WILKE, FLEURY, HOFFELT, GOULD & BIRNEY, LLP
Thomas G. Redmon (SBN 47090)
TRedmon@wilkefleury.com
Daniel L. Baxter (SBN 203862)
DBaxter@wilkefleury.com
400 Capitol Mall, 22nd Floor
Sacramento, CA 95814
Phone: (916) 441-2430
Fax: (916) 442-6664
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NIRO, HALLER & NIRO
Raymond P. Niro (Admitted Pro hac vice)
RNiro@nshn.com
Raymond P. Niro, Jr. (Admitted Pro hac vice)
RNiroJr@nshn.com
Brian E. Haan (Admitted Pro hac vice)
BHaan@nshn.com
Anna B. Folgers (Admitted Pro hac vice)
AFolgers@nshn.com
181 West Madison, Suite 4600
Chicago, IL 60602-4515
Phone: (312) 236-0733
Fax: (312) 236-3137
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Attorneys for Plaintiff, IconFind, Inc.
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IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF CALIFORNIA
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ICONFIND, INC.,
Case No. 2:11-cv-00319-GEB-JFM
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Plaintiff,
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JOINT STATEMENT RE DISCOVERY
DISAGREEMENT
v.
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GOOGLE INC.,
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Defendant.
Hearing Date: July 28, 2011
Time: 11:00 a.m.
8th Floor Courtroom
Before the Honorable Judge John F. Moulds
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Pursuant to Local Rule 251, the Parties hereby submit to the Court a Joint Statement re
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Discovery Disagreement. The Parties seek the Court’s guidance on the disputed issues of
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whether: (a) Google has properly calculated Iconfind’s interrogatories; as exceeding twenty-
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JOINT STATEMENT RE DISCOVERY DISAGREEMENT
(Case No. 11-00319 GEB JFM)
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five; and, if so, (b) IconFind should be granted leave to serve additional interrogatories than the
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twenty-five interrogatories provided for by Federal Rule of Civil Procedure 33(d).
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A.
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On February 3, 2011, IconFind filed this suit in the United States District Court for the
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Eastern District of California for infringement of its United States Patent No. 7,181,459 B2,
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entitled "Method Of Coding, Categorizing, And Retrieving Network Pages And Sites," which
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issued on February 20, 2007 (“the ’459 Patent”). On May 17, 2011, IconFind served on Google
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its First Set of Interrogatories Nos. 1-16 and First Set of Request for Production Nos. 1-45. (Ex.
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A).
Details of the conference or conferences;
On May 26, 2011, Google informed IconFind of its position that its interrogatories, as
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originally served, materially exceeded the limit of twenty-five set forth in Fed.R.Civ.P. 33(a)(1)
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– as calculated by Google – and requested IconFind to advise whether it would retract its
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interrogatories and re-serve them. Google advised IconFind that if it was unwilling to retract and
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re-serve its interrogatories, Google would respond to the first twenty-five only and object to the
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remaining interrogatories as over the limit. The parties participated in a meet and confer on this
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issue on May 31, 2011. During the meet and confer, Google informed IconFind of the bases for
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its count of IconFind’s interrogatories as originally served. IconFind responded that given
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Google’s position, additional interrogatories beyond the limit set forth in Rule 33 would be
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necessary and requested Google to stipulate instead to seventy-five interrogatories. Google
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declined to so stipulate and stated that the parties had already agreed that only 25 interrogatories
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were necessary. Google reiterated its position that if agreement could not be reached, it would
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only answer the first 25 interrogatories and object to the remainder. In an effort to expedite
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obtaining relevant discovery, IconFind, without admitting that Google’s objections have any
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merit, withdrew (and reserved the right to re-serve) Interrogatory Nos. 2, 6, 7, and 9-16. (Ex. B).
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JOINT STATEMENT RE DISCOVERY DISAGREEMENT
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Google on June 20, 2011 served its responses to Interrogatory Nos. 1, 3-5, and 8 (maintaining its
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objections that these interrogatories were compound). (Ex. C).
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B.
Statement of nature of the action and its factual disputes insofar as they are
pertinent to the matters to be decided and the issues to be determined at the
hearing;
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This is an action for infringement of United States Patent No. 7,181,459 B2. IconFind
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has accused Google of infringement of at least claims Google has infringed and continues to
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infringe at least claims 1, 6, 9, 16, 17, 19, 20, 21, 22, 29, 30 and 31 of the '459 patent under 35
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U.S.C. § 271(a) through Google's use, ownership and operation of websites in which it
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incorporates and facilitates Creative Commons licenses, including but not limited to Google
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Knol, Google Books and Google Picasa. (Complaint, ¶ 7, Dkt. No. 1).
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IconFind in its discovery requests defined the "Accused Google Instrumentality" as “each
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Google website that incorporates and facilitates Creative Commons licenses (‘the Creative
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Commons Feature’), including but not limited to Google Knol (www.knol.google.com), Google
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Books (www.books.google.com) and Google Picasa (www.picasa.google.com) and all software
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and hardware which provide and support these websites, including without limitation, databases,
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interfaces, computer networks, applications, servers, storage systems, entry systems and
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processing systems.” (Ex. A).
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Google’s position is that many of IconFind’s interrogatories contain numerous discrete
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subparts: (1) Nos. 1-5 each constitute three separate interrogatories as they relate to three
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separate Google products; (2) No. 6 constitutes at least two interrogatories, one directed to when
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Google first became aware of the ‘459 Patent and another requesting information concerning
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action taken by Google with respect to designing around the patent-in-suit; (3) No. 7 constitutes
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at least two interrogatories, one directed at Google’s contentions regarding a reasonable royalty
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and another requesting identification of documents; (4) No. 8 constitutes six interrogatories
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JOINT STATEMENT RE DISCOVERY DISAGREEMENT
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because it relates to three separate Google products, and requests that Google, for each product,
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include a non-infringement claim chart and identify persons “having knowledge relating to the
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facts provided in response to this interrogatory”; (5) Nos. 9-15 each constitute at least two
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interrogatories because they each request at least the following subparts: “identify all information
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including, but not limited to, documents considered, reviewed and/or relied upon by Google as a
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basis for the facts and assertions provided in response to this interrogatory, with reference to
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Bates numbers in accordance with Fed.R.Civ.P. 33(d)” and “identify persons having knowledge
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concerning facts provided in response to this interrogatory”; and (6) No. 16 constitutes at least
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two interrogatories because it also requests that Google identify persons with relevant
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information as well as documents to be consulted by that person in preparation for his or her
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testimony. Thus, as to interrogatories numbered 1, 3-5, and 8 (which have been answered),
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Google believes these should be counted as 18 interrogatories.
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retracted by Iconfind, Google believes these remaining interrogatories as previously propounded
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would amount to 23 additional interrogatories, bringing the total to 41.
As to the 11 interrogatories
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IconFind disagrees and seeks an order from the Court to order Google to answer retracted
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Interrogatory Nos. 2, 7, and 9-16 as originally served. (Ex. A). In regards to Interrogatory No.
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6, Iconfind concedes that this interrogatory could be interpreted as two interrogatories and will
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reserve this interrogatory after this Court rules on the current dispute. However, should the
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Court find that these interrogatories all contain discrete subparts, IconFind requests leave to
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serve an additional fifty interrogatories than provided for in Rule 33, or, seventy- so that it can
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reserve its highly relevant and proper interrogatories.
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JOINT STATEMENT RE DISCOVERY DISAGREEMENT
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Contentions of each party as to each contested issue, including a
memorandum of each party’s respective arguments concerning the issues in
dispute and the legal authorities in support thereof.
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1.
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C.
Plaintiff IconFind’s Contentions
(a) Google’s Objections to IconFind’s Interrogatories Are Unfounded
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The purpose of discovery is to make trial “less a game of blind man's bluff and more a
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fair contest with the basic issues and facts disclosed to the fullest practicable extent possible.”
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Duhn Oil Tool, Inc. v. Cooper Cameron Corp., 2010 WL 716306, *1 (N.D. Cal. Mar. 2, 2010)
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(citing United States v. Procter & Gamble, 356 U.S. 677, 68S (1958)). Federal Rule of Civil
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Procedure 26(b) establishes the scope of discovery and states in pertinent part: “[p]arties may
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obtain discovery regarding any matter, not privileged, that is relevant to the claim or defense of
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any party, including the existence, description, nature, custody, condition, and location of any
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books, documents, or other tangible things and the identity and location of persons having
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knowledge of any discoverable matter … Relevant information need not be admissible at trial if
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the discovery appears reasonably calculated to lead to the discovery of admissible evidence.”
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“The party who resists discovery has the burden to show that discovery should not be allowed,
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and has the burden of clarifying, explaining, and supporting its objections.” Duhn Oil Tool, Inc.,
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2010 WL 716306, *1 (E.D. Cal. Mar. 2, 2010) (citing Oakes v. Halvorsen Marine Ltd., 179
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F.R.D. 281, 283 (C.D. Cal. 1998)).
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Pursuant to Rule 33(a), a party may not serve on its adversary more than twenty-five
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interrogatories, including all discrete subparts. “Although the term ‘discrete subparts’ does not
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have a precise meaning, courts generally agree that ‘interrogatory subparts are to be counted as
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one interrogatory … if they are logically or factually subsumed within and necessarily related to
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the primary question.” Superior Communications v. Earhugger, Inc., 257 F.R.D. 215, 218 (C.D.
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Cal. 2009). “An interrogatory containing subparts directed at eliciting details concerning a
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‘common theme’ should generally be considered a single question.” Swackhammer v. Sprint
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Corp. PCS, 225 F.R.D. 658, 664-65 (D. Kan. 2004).
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Primarily at issue are two categories of interrogatories which seek highly relevant
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information in this case: (1) Nos. 1-5 and 8 seek information related the instrumentalities
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accused of infringement of the ‘459 Patent (Google Picasa, Google Books and Google Knol);
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and (2) Nos. 9-15 seek the complete factual basis of Google’s contentions, the identity of all
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information including, documents considered, reviewed and/or relied upon by Google as a basis
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for the facts and assertions provided in response to each interrogatory, with reference to Bates
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numbers in accordance with Fed.R.Civ.P. 33 and the identity of persons having knowledge
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concerning facts provided in response to each interrogatory. (Ex. A). The contentions at issue in
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Interrogatory Nos. 9-16 include:
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Google's Counterclaim II and Second Affirmative Defense that the “[t]he ’459
patent is invalid under 35 U.S.C. § 101” (Ex. A, Interrogatory No. 9);
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Google’s Counterclaim II and Second Affirmative Defense that the ‘459 Patent is
invalid for failure to meet the “conditions of patentability of 35 USC § 102” (Ex.
A., Interrogatory No. 10);
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Google's Counterclaim II and Second Affirmative Defense that the ’459 Patent is
invalid for failure to meet “the conditions for patentability” of 35 USC § 103 (Ex.
A, Interrogatory No. 11);
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Google's Counterclaim II and Second Affirmative Defense that the ’459 Patent is
invalid because it fails to meet the conditions for patentability of 35 USC § 112
(Ex. A, Interrogatory No. 12);
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Google's Third Affirmative Defense that “IconFind’s claim for damages, if any,
against Google for alleged infringement of the ’459 patent are limited by 35
U.S.C. §§ 286, 287, and/or 288” (Ex. A, Interrogatory No. 13);
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Google's Fourth Affirmative Defense that "[o]n information and belief,
IconFind’s claims for relief are barred, in whole or in part, by the equitable
doctrines of laches and estoppel” (Ex. A, Interrogatory No. 14); and
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Google’s Fifth Affirmative Defense that “[a]ny and all products or actions
accused of infringement have substantial uses that do not infringe and do not
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JOINT STATEMENT RE DISCOVERY DISAGREEMENT
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induce or contribute to the alleged infringement of the claims of the ’459 Patent”
(Ex. A, Interrogatory No. 15).
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Interrogatory No. 16 seeks the identity of:
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[E]ach and every person known to Google who it believes has knowledge of facts that
Google believes are pertinent or relevant to this Lawsuit (including, but not limited to,
any person whom Google intends to call as a fact witness under Fed. R. Evid. 702, 703,
or 705 and who is not retained or specifically employed to provide expert testimony in
this case by Google) by providing at least his/her name, most current or last known
address and, if known, phone numbers, a concise description of the nature of their
association with the parties and the substance of any such knowledge, and identification
of all persons and documents consulted or to be consulted by each such witness in
preparation for his or her testimony.
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(Ex. A). Accordingly, Interrogatory No. 16 sits in a category of its own to the extent is
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seeks essentially the same information that IconFind is entitled to obtain pursuant to
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Fed.R.Civ.P. 26(a).
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In regards to Category 1, Google asserts that because IconFind has accused three Google
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instrumentalities of infringement, each interrogatory that requests information concerning the
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Accused Google Instrumentality (which has been defined as including all three products),
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constitutes not one interrogatory but three. Taken to its logical conclusion, if IconFind had
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accused twenty-five Google instrumentalities of infringement of one claim of one patent,
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IconFind would be allowed to serve only one narrowly-tailored interrogatory under the
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Federal Rules.
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Committee Note to 1993 Amendment to Fed.R.Civ.P. 33(d) (“the aim [of the numerical limit] is
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not to prevent needed discovery, but to provide judicial scrutiny before parties make potentially
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excessive use of this discovery device”). Through its Category 1 interrogatories, IconFind seeks
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highly relevant information concerning the instrumentalities that it has accused Google of
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infringement. (Ex. A). For example, Interrogatory Nos. 1-3 seek information concerning the
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structure, function and operation of and the design and development history of the Accused
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JOINT STATEMENT RE DISCOVERY DISAGREEMENT
This is improper and is at odds with Fed.R.Civ.P. 33(d).
(Case No. 11-00319 GEB JFM)
See Advisory
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Google Instrumentalities which are relevant to IconFind’s claims of infringement and Google’s
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claims of non-infringement.
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information necessary to prove IconFind’s damages claims. Simply put, to accept Google’s
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argument would simply catapult form over substance to the prejudice of IconFind.
Interrogatory Nos. 4-5 seek usage statistics and financial
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Google’s reliance on Stamps.com v. Endicia, Inc., 2009 WL 2576371, *3 (C.D. Cal. May
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21, 2009), for the proposition that the Category 1 interrogatories constitute numerous and
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disecrete subparts because they are directed toward all three of the accused products is
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inappropriate.
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requested:
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In Stamps.com, the plaintiff’s non-infringement contention interrogatory
For each of the accused products with respect to which [defendants] deny [plaintiff’s]
allegations of infringement or seek a declaration of non-infringement, identify such
product by name and description, and provide a claim chart showing with specificity on a
claim by claim basis, why the product does not infringe each of the patents in suit.
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Id. at *1 (emphasis added). While the court found that this interrogatory was directed to
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distinct subjects, this interrogatory seeks information concerning infringement of not one patent-
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in-suit, which is the case here, but “over 600 claims” in twelve patents. Id. at *2, *4. In this
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case, IconFind seeks Google’s non-infringement positions for three products and twelve claims
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of one patent. Clearly this case is distinguishable.
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Moreover, each accused instrumentality is merely a logical extension of each “basic
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interrogatory” of which they are a part. Chapman v. California Dep’t. of Edu., 2002 WL
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32854376, *1 (N.D. Cal. Feb. 6, 2002) (“…the question is whether … the subparts are a logical
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extension of the basic interrogatory”). The Category 1 interrogatories seeks information related
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to only one specific question.
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instrumentality is logically and factually subsumed within and necessarily related to the primary
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question asked in each interrogatory. Stamps.com, 2009 WL 2576371 at *3 (C.D. Cal. May 21,
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JOINT STATEMENT RE DISCOVERY DISAGREEMENT
(Ex. A).
The information requested for each accused
(Case No. 11-00319 GEB JFM)
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2009) (“[a]lthough the term ‘discrete subparts’ does not have a precise meaning, courts generally
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agree that ‘interrogatory subparts are to be counted as one interrogatory … if they are logically
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or factually subsumed within and necessarily related to the primary question”). The “common
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theme,” for instance, in Interrogatory No. 4 is the usage statistics of the Accused
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Instrumentalities; in Interrogatory No. 5, it is the quarterly revenues and quarterly profit of the
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Accused Instrumentalities. (Ex. A); Swackhammer v. Sprint Corp. PCS, 225 F.R.D. 658, 664-65
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(D. Kan. 2004) (“An interrogatory containing subparts directed at eliciting details concerning a
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‘common theme’ should generally be considered a single question”).
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objections to these interrogatories as containing numerous and discrete subparts should be
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As such, Google’s
denied.
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In regards to Category 2, Google asserts that because each interrogatory seeks fact
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supporting Google’s contentions, persons with knowledge of those facts, and documents
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containing those facts, that they are three separate requests. This district court held otherwise on
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this precise issue in Stamps.com v. Endicia, Inc., 2009 WL 2576371, *3 (C.D. Cal. May 21,
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2009). The plaintiff in Stamps.com served an even broader interrogatory than the Category 2
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interrogatories at issue here, seeking:
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On a claim by claim basis, state with specificity all facts and reasons known to
[defendants] that support [defendants’] allegation that each of the Patents in Suit are
invalid, identify all natural persons with knowledge of such fact or reason, and identify
all documents, references or facts that [defendants] contend render the claim invalid
either individual or in combination.
For each of the accused products with respect to which [defendants] deny [plaintiff’s]
allegations of infringement or seek a declaration of non-infringement, identify such
product by name and description, and provide a claim chart showing with specificity on a
claim by claim basis, why the product does not infringe each of the patents in suit.
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Id. at *1 (emphasis added). The court plainly stated in response to defendants’ numerous
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and discrete subparts objection: “This court finds that the requests for facts, persons with
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knowledge of those facts and documents containing those facts should be considered one
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interrogatory because they are subsumed within the primary question of facts supporting
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defendants’ infringement and invalidity contentions.” Id. at *3. The interrogatories at issue here
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are even more narrow than the interrogatories served in Stamps.com: they separately address
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each invalidity claim per legal theory (e.g. anticipation under Section 102, obviousness under
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Section 103 and indefiniteness under Section 112) and per affirmative defense, rather than
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grouping together in one interrogatory all counterclaims and affirmative defenses together
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under the umbrella of invalidity. Accordingly, the Category 2 Interrogatories properly seek
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the disclosure of facts, persons with knowledge of those facts and documents containing those
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facts and are subsumed within the primary question of what facts support Google’s contentions.
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In regards to Interrogatory No. 16, Google has not articulated a substantive position as to
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why this interrogatory constitutes multiple discrete subparts. IconFind asserts that this is due to
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the fact that this interrogatory is directed towards one logically related topic: persons with
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relevant information, their contact information and the identity of that relevant information.
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In sum, each and every one of IconFind’s interrogatories seeks highly relevant
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information that IconFind is entitled to obtain pursuant to the Federal Rules. To deny IconFind
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access to basic information, evidence and documents which are necessary to support its claims of
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infringement and to defend against Google’s counterclaims and affirmative defenses is
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prejudicial and improper. As such, the Court should deny Google’s objections and order Google
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to answer all remaining interrogatories as originally served by IconFind (with the exception of
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Interrogatory No. 6).
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(b)
Should the Court Accept Google’s Objections, IconFind Respectfully
Requests Leave To Serve An Additional Fifty Interrogatories
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Under both Rule 26(b)(2) and Rule 33(a) a court may grant leave to serve additional
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interrogatories and the “[l]eave to serve additional interrogatories shall be granted to the extent
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consistent with the principles of Rule 26(b)(2).”
The parties may also agree by written
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stipulation to the service of additional interrogatories. See Fed.R.Civ.P. 29. In this case Google
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has refused to stipulate and has instead refused to answer any interrogatory after the first twenty7
five it considered to be separate requests. While IconFind retracted several requests in an effort
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to obtain at least some discovery information from Google expeditiously, IconFind must serve
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additional interrogatories directed to the information it sought in its withdrawn interrogatories.
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As such, should this Court agree with Google’s position, IconFind respectfully requests that this
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court grant IconFind of leave to serve an additional fifty interrogatories as consistent with the
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principals of Rule 26(b)(2).
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“In many cases, it will be appropriate for the court to permit a larger number of
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interrogatories in the scheduling order entered under Rule 26(b).” Advisory Committee Notes,
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1993 Amendments. This flexibility is consistent with the requirement that the Federal Rules of
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Civil Procedure “be construed and administered to secure the just, speedy, and inexpensive
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determination of ever action.” Fed.R.Civ.P. 1. Moreover, “[t]he aim of the [numerical limit] is
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not to prevent needed discovery, but to provide judicial scrutiny before the parties make
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potentially excessive use of the discovery device.” Safeco v. Rawstron, 181 F.R.D. 441, 443
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(C.D. Cal. 1998) (citing Advisory Committee Notes, 1993 Amendments). Patent cases, in
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particular, “where the issues are often more complex than the typical federal case for which the
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presumptive limit was developed, leave to exceed 25 interrogatories may we be appropriate.”
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Protective Optics, Inc. v. Panoptx, Inc., 2007 WL 963972, *2 (N.D. Cal. Mar. 30, 2007)
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(granting motion to compel response to contention interrogatories seeking identification of
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claims allegedly not met by the accused products); see also Collaboration Properties, Inc. v.
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Polycom, Inc., 224 F.R.D. 473 (N. D. Cal 2004) (interrogatory limit expanded to 50 in patent
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infringement suit).
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In Chapman v. California Dept. of Educ., 2002 WL 32854376 (N. D. Cal. Feb. 6, 2002),
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the court was faced with this exact issue assumed for the sake of argument that the requests were
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two separate interrogatories and sua sponte granted the plaintiff leave to serve additional
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interrogatories. In so holding, the court stated:
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Here, although the thirty-four interrogatories are over the numerical limit imposed by
Rule 33(a), the interrogatories are neither cumulative nor duplicative. The subject matter
of the interrogatories (e.g., relating to assessment of the test validity, etc.) appear
directly relevant to the issues in the case. Moreover, the request to identify documents
(the second subpart of the interrogatory) could have been propounded as a request for
production of documents under Rule 34 for which the Rule 33(a) numerical limit of
interrogatories would not apply. To limit discovery which is clearly relevant under
these circumstances would exalt form over substance. Therefore, the Court sua sponte
grants Plaintiffs leave to serve the interrogatories at issue.
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Id. at *2 (emphasis added). The same is true in this case. Iconfind is clearly entitled to
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the information it seeks through both its Category 1 and 2 interrogatories. The Category 1
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interrogatories seeks information concerning the instrumentalities accused of infringement in this
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case. The Category 2 interrogatories seek all facts that Google intends to use to support its
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counterclaim for non-infringement and invalidity and corresponding affirmative defenses.
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Additionally, these interrogatories seek the identity of the persons with knowledge of the
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interrogatory and the documents Google will use to support its contentions.
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interrogatories clearly request relevant information and Iconfind should be granted leave to serve
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additional interrogatories to obtain this information should the court find that the Category 1 and
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2 interrogatories contain numerous discrete subparts.
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These
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Moreover, had Google not unreasonably refused in contravention of the caselaw in this
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district to stipulate to the additional interrogatories requested, the parties would not have had to
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burden the court with the issue. This district court’s analysis in Stamps.com, 2009 WL 2576371
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at *3 (C.D. Cal. May 21, 2009) in regards to the cooperation expected amongst parties when
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dealing with situations such as this is telling: “[i]n any event, given that defendant …should
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have reasonably stipulated to permitting a reasonable number of excess interrogatories in this
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action involving twelve patents … the court would permit the additional interrogatories.”
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(emphasis added). This district’s sister court takes a similar approach: “reasonable parties should
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stipulate to appropriate additional interrogatories in a complex case [], rather than engage in
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motion practice.” Protective Optics, Inc. v. Panoptx, Inc., (N.D. Cal. Mar. 30, 2007). The court
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in Protective Optics, “[i]n view of Defendant’s unreasonable failure to do so,” allowed additional
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interrogatories. Id. at *2. The court in this case, in light of Google’s unreasonable refusal to
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stipulate to IconFind’s request to serve additional interrogatories where they are obviously
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necessary in light of Google’s own positions, should grant IconFind’s motion for leave.
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Accordingly, should this Court find that Google’s objections have merit, IconFind
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respectfully requests that this Court grant IconFind leave to serve an additional fifty
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interrogatories in this case.
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2.
Defendant Google’s Contentions
a.
Only The Number Of Discrete Subparts Contained In
Interrogatory Nos. 1, 3-5, And 8 Are Properly Before This
Court
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The only issue properly before this court is how many interrogatories have been served
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and answered at this point in the litigation. In order to determine that issue, the Court must
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decide how many discrete subparts are contained in IconFind’s Interrogatory Nos. 1, 3-5, and 8.
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Fed.R.Civ.P. 33(a). Google’s position is that these interrogatories amount to eighteen separate
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JOINT STATEMENT RE DISCOVERY DISAGREEMENT
(Case No. 11-00319 GEB JFM)
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interrogatories. If the Court agrees, then Iconfind has seven remaining interrogatories. The
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parties, with the Court’s guidance on this issue, can then evaluate whether or not Iconfind’s
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agreement to be bound by the twenty-five interrogatory limit must be revisited.
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On May 17, 2011, Iconfind served eighteen interrogatories consisting of more than
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twenty-five discrete subparts. Rather than answering the first twenty-five interrogatories and
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objecting to the remaining interrogatories and thereby foreclosing IconFind’s ability to prioritize
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its discovery requests, Google, in good faith and exactly as Moore’s Federal Practice suggests,1
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alerted IconFind to its positions and allowed it to re-serve its prioritized requests. IconFind
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elected to retract eleven interrogatories. Google responded to the five unretracted interrogatories
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(which amount to eighteen interrogatories). (Ex. C). Only interrogatories that are served and
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cause a responding party to undertake the burden of preparing and serving responses are counted
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toward the numerical interrogatory limit for purposes of Rule 33(a). Walker v. Lakewood
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Condominium Owners Ass'n, 186 F.R.D. 584, 587 (C.D. Cal. 1999); Benas v. Baca, No. 00-
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11507, 2003 WL 21697750, at *1 (C.D. Cal. July 16, 2003). Because Google did not undertake
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the burden of preparing and serving responses to Interrogatories 2, 6, 7, and 9-16, those
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interrogatories do not count toward the numerical limit agreed to by IconFind in the Joint
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Statement (Dkt. 47) and prescribed by Rule 33(a).
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The parties properly seek the Court’s guidance on the number of discrete subparts
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contained in the five unretracted interrogatories. Beyond seeking this guidance, IconFind also
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seeks an advisory opinion on whether it would be over the agreed limit of twenty-five had it not
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retracted Interrogatories 2, 6, 7, and 9-16. IconFind also prematurely requests that this Court
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triple the number of interrogatories allotted to it before it has even reached the agreed limit of
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7-33 Moore's Federal Practice - Civil § 33.30 ("[T]he better rule is to require the
responding party to answer the first 25 interrogatories, and object to the remainder.").
JOINT STATEMENT RE DISCOVERY DISAGREEMENT
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twenty-five. Google respectfully requests that this Court address only the issue properly before
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it. IconFind’s additional requests should be denied.
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b.
Interrogatory Nos. 1-5, and 8 Constitute Three Discrete
Subparts Because They Are Directed At Distinct Products
Interrogatory Nos. 1-5 and 82 contain three discrete subparts each because they are
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directed at three distinct subjects — three separate and distinct products. See Collaboration
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Props., Inc. v. Polycom, Inc., 224 F.R.D. 473, 474-75 (N.D. Cal. 2004) (ruling that an
7
interrogatory directed at twenty-six different accused products has twenty-six discrete subparts
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because “a party cannot avoid the numerical limits by asking questions about distinct subjects,
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but numbering the questions as subparts.” (quoting 7-33 Moore's Fed. Prac.-Civ. § 33.30[2]
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(Magistrate Judge Chen’s emphasis))); Stamps.com v. Endicia, Inc., No. 06-7499, 2009 WL
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2576371, at *3 (C.D. Cal. May 21, 2009) (ruling that “interrogatories seeking facts relating to
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separate patents or separate accused products seek information concerning distinct subjects and,
13
therefore, constitute separate interrogatories” (emphasis added)).
Magistrate Judge Austin
14
recently used interrogatories directed at multiple products as an example of interrogatories
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containing discrete subparts. Singleton v. Hedgepath, No. 08-95, 2011 WL 1806515, at *7 (E.D.
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Cal. May 10, 2011) (citing Collaboration Props.).
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Despite IconFind’s conclusory argument that the information requested for each accused
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instrumentality is “logically and factually subsumed within and necessarily related to the primary
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question,” the fact remains that these interrogatories request three distinct sets of information. In
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answering the interrogatories that ask Google to identify documents associated with the accused
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Interrogatory No. 8 actually consists of six discrete subparts because it falls into
Category 1 (interrogatories requesting information related to all three accused products) and
Category 2 (interrogatories requesting identification of facts, documents and persons with
knowledge of those facts). Google presents these arguments in different sections for clarity.
JOINT STATEMENT RE DISCOVERY DISAGREEMENT
(Case No. 11-00319 GEB JFM)
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products (1, 3-5 and 8), Google will identify three independent sets of document. The three
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accused products are not related in any material way apart from the fact that they are all accused
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of infringement by IconFind. Each was developed by different groups of engineers at a different
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time for a different purpose. In order to answer these interrogatories, Google attorneys will have
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to speak with three different sets of engineers and will need to pull data and documents from
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various product-specific resources. IconFind’s decision to label them in the singular (“Accused
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Google Instrumentality”) does not make them a single product, or even a group of related
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products.
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IconFind also asserts that Google’s position is incorrect because if, hypothetically,
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IconFind had accused twenty-five products it would only be allowed to ask one interrogatory. In
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Collaboration Props., where twenty-six products were accused, Judge White imposed a fifty
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interrogatory limit and Magistrate Judge Chen found that interrogatories directed at all accused
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products contained twenty-six discrete subparts.
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completely irrelevant to the facts of this case, it has also been decided in favor of Google’s
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position in prior case law.
So, not only is IconFind’s hypothetical
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The purpose of the numerical limit to interrogatories is to prevent discovery that is
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unduly burdensome. See Advisory Committee Note to 1993 Amendment to Fed.R.Civ.P. 33(a)
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(“the aim [of the numerical limit ...] is to provide judicial scrutiny before parties make potentially
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excessive use of this discovery device”). Gathering the requested information on an accused
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product is burdensome, and Interrogatory Nos. 1-5, and 8 are each three times as burdensome
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because they are directed at three distinct products. Under the law, interrogatories directed at
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distinct products are properly considered as separate interrogatories.
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JOINT STATEMENT RE DISCOVERY DISAGREEMENT
(Case No. 11-00319 GEB JFM)
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c.
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Interrogatories Nos. 6-16 Each Contain Multiple Subparts
Because They Require Identification Of Facts, Documents And
Persons With Knowledge Of Those Facts
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Interrogatory Nos. 8-16 each seek identification of “all information, including but not
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limited to documents...” as well as “all persons having knowledge related to [the information
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provided in subpart 1].” Thus, each of these interrogatories contains at least two discrete
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subparts: identification of persons and identification of documents. See Superior Comm’ns v.
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Earhugger, Inc., 257 F.R.D. 215, 218 (C.D. Cal. 2009). In Superior, Interrogatory no. 1 read:
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“State all of the facts that support or undermine the allegation in YOUR answer to the
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Complaint. Identify all PERSONS who have knowledge of these facts. Identify all
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DOCUMENTS and things that RELATE or refer to those facts.” The court found that this
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interrogatory consisted of three discrete subparts: “facts; persons; and documents.” Id. (citing
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Safeco v. Rawstron, 181 F.R.D. 441, 445-48 (C.D. Cal. 1998)); U.S. ex rel. Pogue v. Diabetes
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Treatment Centers of Am., Inc., 235 F.R.D. 521, 527 (D.D.C. 2006) (Interrogatory seeking “all
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facts supporting Relator's contention that [defendant] was aware of the illegal conduct of the
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medical directors ...; asks Relator to identify each person who knew, and to explain how they
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knew, of the violations [and] requests that Relator identify all documents that support the
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contention as to each medical director” is “more accurately counted as three separate
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interrogatories.”).
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IconFind’s argument that counting each discrete subpart as an additional interrogatory
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will result in it being denied evidence and documents necessary to support its claims is an
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exaggeration. All the documents that IconFind seeks identification of in these interrogatories
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will be produced pursuant to IconFind’s Requests For Production. See Iconfind’s Requests For
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Production, attached as Exhibit D, and compare Interrogatory 8(a) to RFP 32; Interrogatory 9(a)
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to RFP 33; Interrogatory 10(a) to RFP 34; Interrogatory 11(a) to RFP 35; Interrogatory 12(a) to
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JOINT STATEMENT RE DISCOVERY DISAGREEMENT
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RFP 36; Interrogatory 13(a) to RFP 37; Interrogatory 14(a) to RFP 38; Interrogatory 15(a) to
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RFP 39. Thus, IconFind will have the names of all the people that it may want to depose from
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these interrogatories as well as all the documents it wishes to review from its requests for
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production regardless of how these interrogatories are counted.
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Similar to Nos. 8-16, Interrogatory No. 7 requests that Google (1) “describe in detail the
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complete factual basis” for its reasonable royalty calculation; (2) identify the documents relied
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on; and (3) identify all factors relevant to a hypothetical negotiation. Again, identification of
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documents and identification of facts constitute two discrete subparts. Superior Comm’ns, 257
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F.R.D. at 218. IconFind has conceded that Interrogatory No. 6 contains two discrete subparts.
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Google respectfully requests that the Court find that each of these interrogatories contain
at least two discrete subparts.
d.
IconFind’s Request For Additional Interrogatories Should Be
Denied Because It Is Unnecessary And Premature
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IconFind agreed that “[t]he limitations of the Federal Rules of Civil Procedure shall
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govern depositions, interrogatories and all other discovery, absent further agreement of the
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parties or leave of the Court.” Joint Status Report (Dkt. 47) at 6. Now, before it has even
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reached the limit to which it agreed, IconFind prematurely asks this Court to triple the number of
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interrogatories it may propound.
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Despite IconFind’s accusations, Google has not unreasonably refused to stipulate to
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additional interrogatories. First, the parties discussed the interrogatory limit months ago and
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both sides agreed that the limit supplied by the Rule 33(a) would be appropriate in this case and
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memorialized that agreement and communicated it to the Court in the Joint Status Report. Dkt.
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47. It is not unreasonable for a party to hold another party to its prior agreements. Second,
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JOINT STATEMENT RE DISCOVERY DISAGREEMENT
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IconFind has proposed tripling the number of interrogatories without providing any reason why
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that is required. Obviously, responding to 75 interrogatories is very burdensome.
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In its papers, IconFind advances a new standard for allowing additional interrogatories:
4
if the interrogatories “clearly request relevant information” then they should be allowed. This
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new standard is not supported by the Federal Rules or relevant case law.
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Chapman v. California Dept. of Educ., No. 01-1780, 2002 WL 32854376 (N. D. Cal. Feb. 6,
7
2002) to support its new standard. In Chapman, the Court granted the plaintiff additional
8
interrogatories because (1) the interrogatories were neither cumulative nor duplicative; and (2)
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the requests to identify documents “could have been propounded as a request for production of
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documents under Rule 34 for which the Rule 33(a) numerical limit of interrogatories would not
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apply.” Id. at *2 (emphasis added). In this case, the request for identification of documents
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requested in Interrogatory Nos. 9-15 has already been propounded as a request for production of
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documents. Thus, these interrogatories are clearly duplicative of other discovery requests. There
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is no reason to grant additional interrogatories in order to request identification of materials
15
already requested. Finally, the Chapman Court sua sponte granted additional interrogatories that
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had actually been served by the plaintiff and objected to by the defendant as over the limit.
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Plaintiff Chapman did not receive additional interrogatories before reaching the limit imposed by
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the Federal Rules or before it had actually informed the defendant of the scope of the additional
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requested discovery as IconFind now requests of this Court.
IconFind cites
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In the Joint Status Report the parties agreed to follow the Northern District of
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California’s Patent Local Rules with regard to invalidity contentions. Dkt. 47 at 5(d). Google’s
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invalidity contentions are due August 15th and require Google to exchange the same substantive
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materials requested in Interrogatory Nos. 9-12. To the extent that these interrogatories call for
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JOINT STATEMENT RE DISCOVERY DISAGREEMENT
(Case No. 11-00319 GEB JFM)
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non-privileged information, they are cumulative of the required invalidity contentions.
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Therefore, these interrogatories are unnecessary.
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IconFind claims that it is entitled to additional interrogatories beyond the agreed limit
4
because this is a complex patent case and cites other patent cases where more than twenty-five
5
interrogatories were propounded. Protective Optics, Inc. v. Panoptx, Inc., No. 05-2732, 2007
6
WL 963972 (N.D. Cal. Mar. 30, 2007) (ordering defendant to answer particular interrogatories
7
already served and objected to beyond the limit of twenty-five where fourteen separate products
8
were accused); Collaboration Props., Inc. v. Polycom, Inc., 224 F.R.D. 473 (N. D. Cal 2004)
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(limit of fifty interrogatories imposed by Judge White where twenty-six different products were
10
accused and each interrogatory aimed at the accused product counted as twenty-six discrete
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subparts). In this case, three separate products are accused of infringing one patent. This case
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does not come close to the complexity of the cited cases. Furthermore, neither case granted the
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plaintiff anything that even approached twenty-five interrogatories per accused product, as
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IconFind now requests.
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Therefore, Google respectfully requests that IconFind’s request for additional
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interrogatories be denied so that IconFind is held to the agreed limit of twenty-five. Should
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Iconfind wish to serve interrogatories exceeding the agreed to 25 limit, Google will negotiate
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with them in good faith to determine whether the interrogatories are not cumulative or otherwise
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designed merely to increase the costs of litigation.
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Respectfully submitted,
Respectfully submitted,
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/s/ Anna B. Folgers
NIRO, HALLER & NIRO
Raymond P. Niro (Pro hac vice)
RNiro@nshn.com
Raymond P. Niro, Jr. (Pro hac vice)
/s/ Kenneth M. Maikish
KAYE SCHOLER LLP
Michael J. Malecek (Pro hac vice)
michael.malecek@kayescholer.com
Kenneth M. Maikish (Pro hac vice)
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JOINT STATEMENT RE DISCOVERY DISAGREEMENT
(Case No. 11-00319 GEB JFM)
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RNiroJr@nshn.com
Brian E. Haan (Pro hac vice)
BHaan@nshn.com
Anna B. Folgers (Pro hac vice)
AFolgers@nshn.com
kenneth.maikish@kayescholer.com
Attorneys for Defendant, Google Inc.
WILKE, FLEURY, HOFFELT, GOULD &
BIRNEY, LLP
Thomas G. Redmon (SBN 47090)
TRedmon@wilkefleury.com
Daniel L. Baxter (SBN 203862)
DBaxter@wilkefleury.com
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Attorneys for Plaintiff, IconFind, Inc.
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JOINT STATEMENT RE DISCOVERY DISAGREEMENT
(Case No. 11-00319 GEB JFM)
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CERTIFICATE OF SERVICE
The undersigned hereby certifies that on July 21, 2011 the foregoing
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JOINT STATEMENT RE DISCOVERY DISAGREEMENT
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was filed with the Clerk of Court using the CM/ECF system, which will then send a notification
of such filing to the following counsel of record.
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Michael J. Malecek
Michael.malecek@kayescholer.com
Kenneth Maikish
Kenneth.maikish@kayescholer.com
Kaye Scholer LLP
Two Palo Alto Square, Suite 400
3000 El Camino Real
Palo Alto, California 94306
Telephone: (650) 319-4500
Facsimile: (650) 319-4700
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Attorneys for Defendant Google Inc.
I certify that all parties in this case are represented by counsel who are CM/ECF participants.
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/s/
Daniel L. Baxter
Attorneys for Plaintiff
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JOINT STATEMENT RE DISCOVERY DISAGREEMENT
(Case No. 11-00319 GEB JFM)
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