IconFind, Inc. v. Google, Inc.

Filing 97

[DISREGARD - Attorney to Re-File per Judge's Request] BRIEF Opening Claim Construction Brief by Google, Inc.. (Attachments: # 1 Declaration Kenneth Maikish Declaration, # 2 Exhibit 1 to Maikish Declaration, # 3 Exhibit 2 to Maikish Declaration, # 4 Exhibit 3 to Maikish Declaration, # 5 Exhibit 4 to Maikish Declaration, # 6 Exhibit 5 to Maikish Declaration, # 7 Exhibit 6 to Maikish Declaration, # 8 Exhibit 7 to Maikish Declaration, # 9 Exhibit 8 to Maikish Declaration, # 10 Exhibit 9 to Maikish Declaration, # 11 Exhibit 10 to Maikish Declaration, # 12 Exhibit 11 to Maikish Declaration, # 13 Exhibit 12 to Maikish Declaration, # 14 Exhibit 13 to Maikish Declaration, # 15 Exhibit 14 to Maikish Declaration)(Maikish, Kenneth) Modified on 5/22/2012 (Michel, G).

EXHIBIT 12

WILKE, FLEURY, HOFFELT, GOULD & BIRNEY, LLP
Thomas G. Redmon (SBN 47090)
[e-mail]
Daniel L. Baxter (SBN 203862)
[e-mail]
400 Capitol Mall, 22nd Floor
Sacramento, CA 95814
Phone: [phone]
Fax: [phone]
NIRO, HALLER & NIRO
Raymond P. Niro (Admitted Pro hac vice)
[e-mail]
Raymond P. Niro, Jr. (Admitted Pro hac vice)
[e-mail]
Brian E. Haan (Admitted Pro hac vice)
[e-mail]
Anna B. Folgers (Admitted Pro hac vice)
[e-mail]
181 West Madison, Suite 4600
Chicago, IL 60602-4515
Phone: [phone]
Fax: [phone]
Attorneys for Plaintiff, IconFind, Inc.
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF CALIFORNIA
ICONFIND, INC.,

Case No. 2:11-cv
cv-00319-GEB-JFM
Plaintiff,

v.
GOOGLE INC.,
Defendant.

PLAINTIFF’S RESPONSE TO GOOGLE
INC.’S FIRST SET OF REQUESTS FOR
ADMISSION

Pursuant to the Federal Rules of Civil Procedure 26 and 36, IconFind, Inc. (“IconFind”)
responds to Google Inc.’s (“Google”) First Set of Request For Admission (No. 1) as follows:
GENERAL OBJECTIONS
The following General Objections apply to Google’s Requests for Admission and are
incorporated by reference as part of IconFind’s response to each of those Requests.
1.

IconFind objects to Google Requests for Admission to the extent that they attempt

to impose duties upon IconFind greater than those required by the Federal Rules of Civil
Procedure, and any rule or Order of this Court.
2.

IconFind objects to Google’s Requests for Admission to the extent that they are

vague, ambiguous and reasonably subject to more than one interpretation, do not identify with
particularity the information sought, include relative terms without a basis for comparison,
include terms or figures without providing a contextual basis, or are otherwise
incomprehensible.
3.

IconFind objects to Google’s Requests for Admission to the extent that they are

cumulative or overly burdensome, and to the extent they are directed toward unasserted claims
or are otherwise irrelevant or not reasonably calculated to lead to admissible evidence.
4.

IconFind objects to Google’s Requests for Admission to the extent that they

encompass an unlimited or unspecified time period.
5.

IconFind objects to Google’s Requests for Admission to the extent that they call

for legal conclusions, admissions of law, conclusions as to ultimate issues in the case, the
application of legal principles, or expert opinions.
6.

IconFind objects to Google’s Requests for Admission to the extent that they are

not sufficiently phrased to allow an admission or a denial without explanation.
7.

IconFind objects to Google’s Requests for Admission to the extent that they seek

PLAINTIFF’S RESPONSE TO GOOGLE INC.’S FIRST SET OF REQUESTS FOR ADMISSION

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admissions regarding communications or information protected by the attorney-client privilege,
work product doctrine, or any other applicable privilege or protection.
8.

IconFind objects to Google’s Requests for Admission to the extent that they call

for speculation.
9.

Nothing in these General Objections or Responses should be construed as waiving

any rights or objections or admitting the relevance, materiality, or admissibility into evidence of
the subject matter or facts contained in any Request or IconFind’s response thereto.
Additionally, IconFind’s Specific Objections in Response to a Request should not be construed
as a waiver or restriction of any other General Objection applicable to the information falling
within the scope of such Request.
10.

IconFind has based its responses on information presently available to IconFind.

IconFind reserves the right to supplement or amend its responses and to present evidence
discovered hereafter at trial.
REQUESTS FOR ADMISSION
REQUEST FOR ADMISSION NO. 1:
Admit that an image on a webpage is not a “page” (as the term “page” is used in the ‘459
patent).
RESPONSE:
See General Objections 1-10. IconFind objects to this request to the extent it calls for
information protected by the attorney-client privilege or work product doctrine. IconFind further
objects to this request to the extent it requires assumptions or conclusions regarding claim
construction and, accordingly, calls for legal conclusions and/or the determination of ultimate
issues and is therefore improper under Rule 36. Lane No. 1 v. Lane Masters Bowling Inc., 2001
WL 1097861, *10 (N.D.N.Y. Mar. 22, 2011) (finding requests for admission improper because
PLAINTIFF’S RESPONSE TO GOOGLE INC.’S FIRST SET OF REQUESTS FOR ADMISSION

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“each of those seven requests calls for the making of legal conclusions and/or the determination
of ultimate issues by either (1) asking whether a patent is valid … or (2) asking whether
infringement has occurred”); Tulip Computers Int'l, B. V. v. Dell Computer Corp., 210 F.R.D.
100, 108 (D. Del. 2002) ("[R]equests that seek legal conclusions are not allowed under Rule 36
... As a result, determining whether a patent is valid would call for a legal conclusion although
dependent on factual inquiries. ... Similarly, determining whether a product or process infringes
or whether infringement has occurred involves the requirement of claim construction, which is a
legal determination within the province of the court."); Phillip M. Adams & Associates, LLC v.
Dell, Inc., 2007 WL 128962, *2 (D. Utah Jan. 11, 2007) (denying motion to compel response to
request for admission which asked Plaintiff to admit or deny that certain elements of one of the
patents in suit are disclosed by a prior patent in suit; stating, “Dell is correct that its requests for
admission seek factual information, but that factual information rests on legal analysis (from
Adams) and on legal conclusions of claim construction (from the Court)”); Fulhorst v. United
Techs. Auto., Inc., 1997 WL 873548, *3 (D. Del. Nov. 17, 1997) (denying motion to compel
responses to requests for admission as improperly seeking the admission of a legal conclusion
because “Defendant asks Plaintiff to assume that the allegedly infringing device is used in a
certain manner, and then asks Plaintiff to admit that the device, if used in such a manner,
infringes on Plaintiff's patent. Determining whether infringement has occurred involves, in the
first instance, claim construction, which is a legal conclusion drawn by a court”) (citing
Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996));

Med. Graphics Corp. v.

Sensormedics Corp., 1995 WL 523636, *14, n. 12 (D. Minn. Jun. 2, 1995) (“SensorMedics also
argues that MedGraphics is bound by its response to the defendant's requests for admissions (as
well as other statements) to the effect that the '764 patent does not ‘cover’ devices which
measure only expiratory flow. Given the Court's obligation to construe the meaning of the claim
PLAINTIFF’S RESPONSE TO GOOGLE INC.’S FIRST SET OF REQUESTS FOR ADMISSION

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in light of the claim language, the specification and the prosecution history, Markman, 1995 WL
146983, at * 11, it is not clear that the Court is bound by such a statement.”); Pittway Corp. v.
Fyrnetics, Inc., 1992 WL 12564602, *12 (N.D. Ill. Jun. 4, 2991) (rejecting requests for
admission which called for the admission that specific “patents are prior art to the patent in suit”
because they were “an effort to seek bald legal conclusions”); Naxon Telesign Corp. v. GTE
Information Systems, Inc., 1980 WL 57937, *2 (N.D. Ill. Oct. 3, 1980) (denying request to
*2-3
compel responses to requests for admission “each of which quotes selected language from the
Naxon patent and asks that it be admitted that various elements disclosed in Unkles satisfy that
quoted language. In combination those Requests seek to obtain an admission of the ultimate legal
conclusion in the case rather than admissions ‘of fact or of the application of law to fact.’”);
accord Streck, Inc. v. Research & Diagnostic Sys., Inc., 2009 U.S. Dist. LEXIS 130784, at *7-9
(D. Neb. June 1, 2009) (finding requests for admission that “require the defendants to assume
that Streck’s patents and claims are valid and enforceable – ultimate issues in the case” – to be
improper under Rule 36); Accord Golden Valley Microwave Foods, Inc. v. Weaver Popcorn
Co., Inc., 130 F.R.D. 92, 96 (N.D. Ind. Jan. 17, 1990) (denying request to compel responses to
requests for admission because “requests seeking a bald legal conclusion that certain patent
claims are invalid runs counter to the proscription of FRCP Rule 36(a)”).
Subject to the foregoing objections, IconFind states that this Request is improper under
Rule 36 and therefore invalid.

Dated: July 25, 2011

Respectfully submitted,

NIRO, HALLER & NIRO
Raymond P. Niro (Pro hac vice)
[e-mail]
Raymond P. Niro, Jr. (Pro hac vice)

/s/ Anna B. Folgers
WILKE, FLEURY, HOFFELT, GOULD &
BIRNEY, LLP
Thomas G. Redmon (SBN 47090)
[e-mail]

PLAINTIFF’S RESPONSE TO GOOGLE INC.’S FIRST SET OF REQUESTS FOR ADMISSION

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[e-mail]
Brian E. Haan (Pro hac vice)
[e-mail]
Anna B. Folgers (Pro hac vice)
[e-mail]

Daniel L. Baxter (SBN 203862)
[e-mail]
Attorneys for Plaintiff, IconFind, Inc.

PLAINTIFF’S RESPONSE TO GOOGLE INC.’S FIRST SET OF REQUESTS FOR ADMISSION

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CERTIFICATE OF SERVICE
CE
The undersigned hereby certifies that on August 1, 2011 the foregoing
PLAINTIFF’S RESPONSE TO GOOGLE INC.’S FIRST SET OF REQUESTS FOR
ADMISSION
was served upon the following counsel of record via electronic transmission.
Michael J. Malecek
[e-mail]
Kenneth Maikish
[e-mail]
Kaye Scholer LLP
Two Palo Alto Square, Suite 400
3000 El Camino Real
Palo Alto, California 94306
Telephone: [phone]
Facsimile: [phone]
Attorneys for Defendant Google Inc.
I certify that all parties in this case are represented by counsel who are CM/ECF participants.

/s/
Anna B. Folgers
Attorneys for Plaintiff

PLAINTIFF’S RESPONSE TO GOOGLE INC.’S FIRST SET OF REQUESTS FOR ADMISSION