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 4

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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]

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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]

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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
ICONFIND, INC.,

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

v.
GOOGLE INC.,
Defendant.

PLAINTIFF’S OBJECTIONS AND
RESPONSES TO GOOGLE INC.’S
FIRST SET OF INTERROGATORIES
(NOS. 1-8)

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Plaintiff, IconFind Inc. ("IconFind"), hereby submits its Objections and Responses to the

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First Set of Interrogatories (Nos. 1-8) propounded by Defendant, Google Inc. ("Google"), as

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follows:

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General Objections
1.

To the extent any of Defendant's discovery requests call for documents or

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information subject to the attorney client privilege and/or work product immunity, they are

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objected to on that basis.

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identified in a withheld document list that will be exchanged with Defendant's list of withheld

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documents.

Any documents withheld from production on either basis will be

IconFind objects to identifying documents withheld on the basis of the attorney

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client privilege and/or work product immunity that were created or prepared after the filing of

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this lawsuit.

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2.

Certain of Defendant's discovery requests seek documents and information

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which contain confidential and proprietary business or technical information or trade secrets of

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IconFind.

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the entry of a protective order adequate to protect IconFind's rights in such information and

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documents.

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properly requested documentation or information will be provided.

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3.

Therefore, IconFind objects to providing such documents and information without

Upon entry of an appropriate order, and unless subject to another objection,

IconFind objects to Defendant's discovery requests to the extent they are not

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sufficiently limited or reasonably calculated to lead to discovery of admissible evidence, and/or

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are overly broad or unduly burdensome. IconFind is willing, however, to confer with Defendant

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in an effort to resolve any disagreements between the parties relating to the scope, breadth and

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relevancy of Defendant's discovery requests.

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4.

IconFind objects to Defendant's discovery requests to the extent that they are

repetitive, overlapping or duplicative.

Where applicable, IconFind has attempted to identify

PLAINTIFF’S OBJECTIONS AND RESPONSES TO GOOGLE INC.’S
FIRST SET OF INTERROGATORIES (NOS. 1-8)

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documents in response to Defendant's discovery requests, and IconFind has made a good faith

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effort to identify such documents and/or categories of documents as provided in Rules 33 and

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34, Fed.R.Civ.P.

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5.

In those instances where the response to Defendant's discovery requests can best

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be derived from the records of IconFind or from an examination, audit or inspection of such

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records, and the burden of deriving or ascertaining the answer is substantially the same for

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IconFind and Defendant, IconFind will specify the records from which a complete answer may

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be ascertained and afford Defendant's counsel a reasonable opportunity to audit, inspect and

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copy such records or provide categorized copies of such records in accordance with Federal

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Rule of Civil Procedure 33(d).

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6.

IconFind objects to Defendant's discovery requests to the extent they request

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documents and/or information already in Defendant's possession or which are equally available

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to IconFind and Defendant from other sources.

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7.

Where a discovery request includes words and concepts indicative of a legal

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conclusion, by responding to the request and/or stating that it will produce documents its

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possession or identify documents, IconFind does not represent that such legal conclusions

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apply.

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8.

Discovery requests calling for or pertaining to ultimate conclusions are

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premature and are necessarily limited by the present lack of discovery.

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requesting the full basis for any contention are premature at this stage of the litigation.

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Discovery responses will be supplemented as appropriate and as provided in Rule 26(e),

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Fed.R.Civ.P

Interrogatories

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IconFind objects to Defendant's definitions and instructions to the extent they are

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inconsistent with the appropriate Federal Rule of Civil Procedure, such as Rules 26, 33 and 34,

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PLAINTIFF’S OBJECTIONS AND RESPONSES TO GOOGLE INC.’S
FIRST SET OF INTERROGATORIES (NOS. 1-8)

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and the Local Rules of the Court. IconFind will rely upon the Federal Rules of Civil Procedure,

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the Local Rules and governing case law with respect to the definitions, instructions and

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responses.

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To the extent that specific objections are cited in a specific response, those specific

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citations are provided because they are believed to be particularly applicable to the specific

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requests and are not to be construed as a waiver of any other objection applicable to information

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falling within the scope of the request.

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INTERROGATORIES
INTERROGATORY NO. 1:

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Identify the PRIORITY DATE of each claim in the PATENT-IN-SUIT and all relevant
data and documents (identified by Bates number) to support this assertion.

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RESPONSE:

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See General Objection Nos. 1, 3, 6, 7 and 8. IconFind objects to this interrogatory to the

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extent that it seeks information protected by the attorney-client privilege and/or work-product

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doctrine. IconFind objects to the phrase "priority date” as vague and ambiguous.

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Subject to and without waiving the above objections and comments and as it understands

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this interrogatory, in the spirit of cooperation and to proceed with discovery in an expeditious

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manner, IconFind states that the effective filing date to which each claim of the ‘459 Patent is

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entitled to is at least as early as August 9, 2001.

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IconFind’s Initial Infringement Contentions, served via electronic transmission to Google on July

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1, 2011.

IconFind also incorporates by reference

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IconFind’s investigation into the subject matter of this interrogatory is ongoing. IconFind

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will supplement its response to this interrogatory, if necessary, as fact and expert discovery

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progresses in accordance with Fed. R. Civ. P. 26(e).

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PLAINTIFF’S OBJECTIONS AND RESPONSES TO GOOGLE INC.’S
FIRST SET OF INTERROGATORIES (NOS. 1-8)

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INTERROGATORY NO. 2:

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For each claim of the PATENT-IN-SUIT, IDENTIFY the date of conception, the date of
reduction to practice of its subject matter, all acts you contend represent diligence occurring
between the dates of conception and reduction to practice, each person involved in such
conception, diligence and/or reduction to practice, where the invention was first reduced to
practice, when, where, and to whom the invention was first disclosed, and IDENTIFY each
person, including third parties, who worked on the development of the alleged invention(s)
described and claimed in the PATENT-IN-SUIT, describing each person's role (e.g., producer,
developer, tester, technician. researcher, etc.) and the dates and places each such person assisted,
supervised, or was otherwise so involved.

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RESPONSE:

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See General Objection Nos. 1, 3, 6, 7 and 8. IconFind objects to this interrogatory to the

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extent that it seeks information protected by the attorney-client privilege and/or work-product

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doctrine.

IconFind also objects to the following phrases as vague and ambiguous: "diligence,”

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“conception” and “reduction to practice.”

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documents relating to the parties’ respective legal contentions and allegations concerning the

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chronology of the development of the subject matter of the ‘459 Patent.

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circumstances and to the extent this interrogatory calls for IconFind's contentions concerning the

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actual dates of conception and reduction to practice (issues that are relevant to Google’s

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invalidity claims on which they bear the ultimate and initial burden of persuasion and production

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(see, e.g., Innovative Scuba Concepts v. Feder Industries, 26 F.3d 1112, 1115 (Fed. Cir. 1994)),

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IconFind objects to providing such contentions at this time since Google has failed to proffer

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sufficient evidence of their alleged invalidity claim(s).

This interrogatory also seeks information and

Under such

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Subject to and without waiving the above objections and comments and as it understands

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this interrogatory, in the spirit of cooperation and to proceed with discovery in an expeditious

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manner, IconFind answers that the patent-in-suit is statutorily presumed valid and the burden is

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on Google to challenge validity by clear and convincing evidence.

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was born and remains valid unless and until proven otherwise by clear and convincing evidence

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In other words, the patent

PLAINTIFF’S OBJECTIONS AND RESPONSES TO GOOGLE INC.’S
FIRST SET OF INTERROGATORIES (NOS. 1-8)

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of invalidity, Roper Cop. v. Litton Systems, Inc., 757 F.2d 1266, 1270 (Fed. Cir. 1985), and the

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presumption of validity is based on 35 U.S.C. § 282 of the patent statute: "a patent shall be

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presumed valid."

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rest on the party asserting such invalidity.' … This burden 'exists at every stage of the litigation.'"

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Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1346 (Fed. Cir. 2008) (citations omitted). Thus,

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the decision maker (the Court and the jury in this case) are required to begin by accepting the

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proposition that each patent-in-suit is valid and then looking to the challenger for proof to the

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contrary. Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 885 (Fed. Cir. 1984). The Federal

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Circuit recently reiterated that "the statutory presumption of validity can be overcome only by

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showing invalidity by clear and convincing evidence, even where allegedly invalidating prior art

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was not before the patent office" … and that "[u]ntil changed by the Supreme Court or this court

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sitting en banc, that is still the law."

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LEXIS 11, at *76 (Fed. Cir. 2011). Thus, IconFind has no obligation to prove the ‘459 Patent is

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valid. That burden remains on Google.

“'The burden of establishing invalidity of a patent or any claim thereof shall

Uniloc USA, Inc. v. Microsoft Corp., 2011 U.S. App.

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Therefore, courts have recognized for decades that discovery of dates of conception and

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reduction to practice by a defendant in an infringement action must be subject to such special

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safeguards: "[if one side was] called upon to give the date of invention, while the opposing side

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was not called upon for prior use dates, there might readily be instances in which this

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information might be misused." A. B. Dick Co. v. Underwood Typewriter Co., 235 F. 300, 304-

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305 (S.D.N.Y. 1916); Beacon Folding Machine Co. v. Rotary Machine Co., 23 F.2d 345, 347

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(D. Mass. 1927); see also Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1570

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(Fed. Cir. 1986).

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In order to initially qualify as prior art, "a reference must have existed as of the date of

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invention, which is normally presumed to be the filing date of the application until an earlier date

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PLAINTIFF’S OBJECTIONS AND RESPONSES TO GOOGLE INC.’S
FIRST SET OF INTERROGATORIES (NOS. 1-8)

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is proved." Bausch & Lomb, Inc. v. Barnes-Hind/Hydocurve, Inc., 796 F.2d 443, 449 (Fed. Cir.

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1986). Thus, if no prior art existed before the filing date of the patent application, then the filing

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date serves as the date of invention.

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Importantly, not until a challenger establishes that prior art existed before the filing date (i.e.,

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that the claim is not "new") through evidence that the claimed invention was publicly available

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before the filing date does it become the burden of the patentee to show that the claimed subject

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matter was invented prior to the date of publication. Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572,

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1576-1577 (Fed. Cir. 1996). Only at that time do terms such as the "date of invention," "date of

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conception" and "reduction to practice" come into play:

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Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998).

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The person "who first conceives, and, in a mental sense, first invents ... may date
his patentable invention back to the time of its conception, if he connects the
conception with its reduction to practice by reasonable diligence on his part, so
that they are substantially one continuous act." Id. Stated otherwise, priority of
invention "goes to the first party to reduce an invention to practice unless the
other party can show that it was the first to conceive the invention and that it
exercised reasonable diligence in later reducing that invention to practice."

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Id., citing Price v. Symsek, 988 F.2d 1187, 1190 (Fed. Cir. 1993). Thus, a patentee needs to

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present rebuttal evidence regarding a "date of invention" prior to the filing date only after a

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challenger has presented prima facie case of invalidity. Id.

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In short, a patent owner has two dates that can be used to establish a "date of invention."

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First, the filing of a patent application automatically serves as the date of invention (i.e.

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constructive conception and reduction to practice) of the claimed invention.

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1352; see also Yasuko Kawai v. Metlesics, 480 F.2d 880, 885, 178 U.S.P.Q. 158, 162 (CCPA

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1973) ("The act of filing the United States application has the legal effect of being,

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constructively at least, a simultaneous conception and reduction to practice of the invention");

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see Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376, (Fed. Cir. 1986)

Hyatt, 146 F.3d at

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PLAINTIFF’S OBJECTIONS AND RESPONSES TO GOOGLE INC.’S
FIRST SET OF INTERROGATORIES (NOS. 1-8)

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("constructive reduction to practice occurs when a patent application on the claimed invention is

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filed").

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Alternatively, a patent owner may present evidence based upon the "actual" invention

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date once a prima facie case of invalidity has been established.

Hybritech at 1376. Therefore,

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until and unless Google meets its evidentiary and substantive burden for its invalidity claim by

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identifying prior art that existed before the respective claimed priority dates of the patent-in-suit,

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as further elaborated below, IconFind will also rely upon the constructive reduction to practice

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established by the priority filing date until Google presents evidence to the contrary.

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IconFind notes that the actual dates of conception and reduction to practice may be earlier

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than the date set forth below depending upon Google’s position on prior art under its claim

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constructions or the constructions adopted by the Court at Google’s request as IconFind is not

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required to disclose its actual dates of conception and reduction to practice until and unless it is

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presented by Google with prima facie evidence of the existence of prior art that existed before

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the claimed priority dates. Thus, IconFind expressly reserves the right to supplement the dates of

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actual conception and reduction to practice.

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Subject to these objections, IconFind states that the subject matter of ‘459 Patent was

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conceived and developed over time prior to the filing of U.S. Provisional Patent Application No.

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60/311,379, filed on August 9, 2001, by the named inventors of the ‘459 Patent.

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continuing its investigation concerning the dates of conception and reduction to practice of the

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asserted claims and reserves the right to supplement and/or to amend its contentions on dates of

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conception and reduction to practice based on information obtained in this investigation and/or in

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discovery.

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reduced to practice no later than the filing date of U.S. Provisional Patent Application No.

IconFind is

IconFind believes that the subject matter of the asserted claims was conceived and

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PLAINTIFF’S OBJECTIONS AND RESPONSES TO GOOGLE INC.’S
FIRST SET OF INTERROGATORIES (NOS. 1-8)

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60/311,379, filed on August 9, 2001. IconFind also incorporates by reference IconFind’s Initial

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Infringement Contentions, served via electronic transmission on July 1, 2011.

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IconFind’s investigation into the subject matter of this interrogatory is ongoing. IconFind

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will supplement its response to this interrogatory, if necessary, as fact and expert discovery

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progresses in accordance with Fed. R. Civ. P. 26(e).

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INTERROGATORY NO. 3:

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Describe in detail each and every product or service ever sold or marketed by
PLAINTIFF, Lee H. Grant, or Susan A. Capizzi, or any other company controlled in whole or in
part by or affiliated with any of the foregoing, that you contend is covered by any claim of the
PATENT-IN-SUIT, by trade name, product numbers or codes, version numbers, build dates or
any other identifying characteristics, and describe in detail why you contend that each product or
service is covered by the claims of the PATENT-IN-SUIT and for each product or service,
describe the circumstances and facts related to the first disclosure (i.e. first presentation, first
demonstration, first advertisement, or first offer for sale) and the first sale of that product or
service.

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RESPONSE:

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See General Objection Nos. 1, 3, 6, 7 and 8. IconFind objects to the phrases “or any

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other company controlled in whole or in part by or affiliated with any of the foregoing” as vague

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and ambiguous. IconFind also objects to this interrogatory as vague and ambiguous to the extent

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that it requests information concerning each and every product or service ever “marketed.”

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IconFind also objects to this interrogatory as vague and ambiguous to the extent it requests

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information concerning what is “covered by the claims” of the ‘459 Patent.

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objections – and to the extent this request can be understood – as presently advised, Plaintiff, Lee

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H. Grant, nor Susan Capizzi have never “sold” a product or service “covered by the claims” of

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the ‘459 Patent.

Subject to these

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PLAINTIFF’S OBJECTIONS AND RESPONSES TO GOOGLE INC.’S
FIRST SET OF INTERROGATORIES (NOS. 1-8)

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IconFind’s investigation into the subject matter of this interrogatory is ongoing. IconFind

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will supplement its response to this interrogatory, if necessary, as fact and expert discovery

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progresses in accordance with Fed. R. Civ. P. 26(e).

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INTERROGATORY NO. 4:

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IDENTIFY all patents, patent applications, publications, web sites, products, services,
and methods that predate the PRIORITY DATE and relate to any TECHNOLOGY-IN-SUIT that
were at any time known, made known to, or considered by PLAINTIFF and/or the named
inventor[s] of the PATENT-IN-SUIT and how and when they became known and considered by
PLAINTIFF and/or the named inventor of the PATENT-IN-SUIT, and IDENTIFY all
PERSONS who reviewed or considered them.

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RESPONSE:
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See General Objection Nos. 1, 3, 6, 7 and 8. IconFind objects to this interrogatory as

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improper under Fed.R.Civ.P. 33 for including numerous discrete subparts.

IconFind objects to

this interrogatory to the extent that it seeks information protected by the attorney-client privilege
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and/or work-product doctrine.

IconFind also objects to this interrogatory as overly broad and

unduly burdensome to the extent it requests information that “relates to any technology-in-suit.”
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By identifying this information, IconFind does not represent or admit that it is “prior art,” or that

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it is, or should be considered, material to the patentability of the inventions claimed in the ‘459
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Patent in any way.

Moreover, Google’s invalidity contentions are not due to be served until

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August 15, 2011. (Dkt. No. 47). As such, IconFind reserves the right to supplement its response
and incorporate by reference Google’s invalidity contentions.

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Subject to the foregoing, IconFind identifies the following documents by bates number
pursuant to Fed.R.Civ.P. 33(d): IF000001-IF000017 and IF000018-IF000271. IconFind’s

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investigation into the subject matter of this interrogatory is ongoing.

IconFind will supplement

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its response to this interrogatory, if necessary, as fact and expert discovery progresses in
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accordance with Fed. R. Civ. P. 26(e).

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INTERROGATORY NO. 5:
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PLAINTIFF’S OBJECTIONS AND RESPONSES TO GOOGLE INC.’S
FIRST SET OF INTERROGATORIES (NOS. 1-8)

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IDENTIFY and describe in detail all the manners or techniques by which the PATENTIN-SUIT improved upon the PRIOR ART, added functionality that did not exist in the PRIOR
ART, or provided a variation on or upgrade of the PRIOR ART and for each such claimed
improvement, added functionality, or variation or upgrade, state whether PLAINTIFF contends it
was a nonobvious or unpredictable improvement, addition of functionality, variation or upgrade
and why.

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RESPONSE:

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See General Objection Nos. 1, 3, 6, 7 and 8. IconFind objects to this interrogatory to the

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extent that it seeks information protected by the attorney-client privilege and/or work-product

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doctrine.

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the extent it requests information that “relates to any technology-in-suit.” IconFind also objects

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to this interrogatory as vague and ambiguous to the extent it requests information concerning “all

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the manners or techniques by which the patent-in-suit improved upon the prior art, added

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functionality that did not exist in the prior art, or provided a variation on or upgrade of the prior

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art …” By identifying this information, IconFind does not represent or admit that it is “prior art,”

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or that it is, or should be considered, material to the patentability of the inventions claimed in the

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‘459 Patent in any way.

IconFind also objects to this interrogatory as overly broad and unduly burdensome to

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Moreover, this interrogatory is also premature because discovery has only recently

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commenced and IconFind believes that information relating to the subject matter of this

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interrogatory is in the possession, custody or control of Google.

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discovery requests on Google to obtain information that is relevant to the subject matter of this

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interrogatory, but, to date, no information has been provided. Additionally, pursuant to the Joint

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Status Report (Dkt. No. 47) in this case, Google’s invalidity contentions are not due until August

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15, 2011.

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to this interrogatory once it receives adequate responses to its discovery requests and/or Google’s

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invalidity contentions.

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IconFind has served written

Accordingly, IconFind reserves the right to supplement and/or to amend its response

IconFind further objects to this interrogatory as premature at this time to

PLAINTIFF’S OBJECTIONS AND RESPONSES TO GOOGLE INC.’S
FIRST SET OF INTERROGATORIES (NOS. 1-8)

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the extent that is seeks identification and opinions of IconFind’s expert(s) prior to the period

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provided in the parties' Joint Status Report. (Dkt. No. 47). Finally, IconFind reserves the right

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to supplement and/or to amend its response to this interrogatory based on any Court Order on

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claim construction.

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Subject to, limited by and without waiving these objections, IconFind responds as

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follows: a patent is “presumed valid” pursuant to 35 U.S.C. § 282. “’The burden of establishing

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invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.’ …

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This burden ‘exists at every stage of the litigation.’” Abbott Labs. v. Sandoz, Inc., 544 F.3d

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1341, 1346 (Fed. Cir. 2008) (citations omitted).

As such, Google bears the burden of

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establishing invalidity by clear and convincing evidence.

Google has failed to articulate, much

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less provide a factual basis for, its allegations that the patents-in-suit are invalid for obviousness.

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IconFind will respond more fully to this interrogatory if and when Google provides this

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information.

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Moreover, IconFind objects to this interrogatory to the extent it is compound and

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constitutes multiple interrogatories in an improper attempt to exceed the limitation on

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interrogatories set by the Federal Rule of Civil Procedure 33.

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confer with Google in an effort to resolve any disagreements between the parties relating to the

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scope, breadth and relevancy of Interrogatory No. 5.

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INTERROGATORY NO. 6:

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For each element of each ASSERTED CLAIM of the PATENT-IN-SUIT, identify, in
claim chart form, the portions of the specification YOU contend provide WRITTEN
DESCRIPTION support, an ENABLING DISCLOSURE, and a disclosure of the BEST MODE
contemplated by the inventor.

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IconFind is willing, however, to

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RESPONSE:
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See General Objection Nos. 1, 3, 6, 7 and 8. IconFind objects to this interrogatory to the

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extent that it seeks information protected by the attorney-client privilege and/or work-product
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PLAINTIFF’S OBJECTIONS AND RESPONSES TO GOOGLE INC.’S
FIRST SET OF INTERROGATORIES (NOS. 1-8)

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doctrine.

IconFind also objects to this as vague and ambiguous to the extent it requests

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information concerning the legal concepts of “written description support,” “enabling disclosure”

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and “best mode.”

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recently commenced and IconFind has served written discovery requests on Google to obtain

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information that is relevant to the subject matter of this interrogatory, but, to date, no information

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has been provided. Additionally, pursuant to the Joint Status Report (Dkt. No. 47) in this case,

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Google’s invalidity contentions are not due until August 15, 2011.

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reserves the right to supplement and/or to amend its response to this interrogatory once it

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receives adequate responses to its discovery requests and/or Google’s invalidity contentions.

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IconFind further objects to this interrogatory as premature at this time to the extent that is seeks

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identification and opinions of IconFind’s expert(s) prior to the period provided in the parties'

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Joint Status Report (Dkt. No. 47).

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amend its response to this interrogatory based on any Court Order on claim construction.

Moreover, this interrogatory is also premature because discovery has only

Accordingly, IconFind

Finally, IconFind reserves the right to supplement and/or to

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Subject to, limited by and without waiving these objections, IconFind responds as

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follows: a patent is “presumed valid” pursuant to 35 U.S.C. § 282. “’The burden of establishing

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invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.’ …

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This burden ‘exists at every stage of the litigation.’” Abbott Labs. v. Sandoz, Inc., 544 F.3d

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1341, 1346 (Fed. Cir. 2008) (citations omitted).

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establishing invalidity by clear and convincing evidence.

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less provide a factual basis for, its allegations that the patents-in-suit are invalid.

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respond more fully to this interrogatory if and when Google provides this information.

As such, Google bears the burden of
Google has failed to articulate, much
IconFind will

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Moreover, IconFind objects to this interrogatory to the extent it is compound and

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constitutes multiple interrogatories in an improper attempt to exceed the limitation on

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interrogatories set by the Federal Rule of Civil Procedure 33.

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IconFind is willing, however, to

PLAINTIFF’S OBJECTIONS AND RESPONSES TO GOOGLE INC.’S
FIRST SET OF INTERROGATORIES (NOS. 1-8)

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confer with Google in an effort to resolve any disagreements between the parties relating to the

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scope, breadth and relevancy of Interrogatory No. 6.

3

INTERROGATORY NO. 7:

4

State PLAINTIFF's contentions as to what constituted the level of skill of a person of
ordinary skill in the art of the subject matter of the PATENT-IN-SUIT as of the filing date of the
PATENT-IN-SUIT.

5
6

RESPONSE:

7

See General Objection Nos. 1, 6, 7, and 8. IconFind objects to this interrogatory to the

8

extent that it seeks information protected by the attorney-client privilege and/or work-product

9

doctrine. IconFind further objects to this interrogatory as premature at this time to the extent that

10

is seeks identification and opinions of IconFind 's expert(s) prior to the period provided in the

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parties' Joint Status Report. (Dkt. No. 47).

12

Subject to, limited by and without waiving these objections, IconFind responds as

13

follows: the inventions claimed in the ‘459 Patent generally describe a method for categorizing

14

network pages.

15

was the lack of a standardized categorization system for the information contained on such web

16

pages.

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network pages based upon the material on the page, including whether the pages contained

18

commercial or non-commercial information, as well as the copyright status of the material on the

19

page.

In the context of the Internet, one problem with the organization of web pages

The inventors set out to accomplish this goal by creating a method for categorizing

20

The USPTO classification for the ‘459 Patent is Class 707 (“Data Processing: Database,

21

Data Mining, and File Management or Data Structures”) Subclass 7 (“Sorting … Subject matter

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directed to data oriented accessing methods benefiting from the creation of ordered lists”).

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presently advised, IconFind states that a person of ordinary skill in the art relating to the '459

As

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PLAINTIFF’S OBJECTIONS AND RESPONSES TO GOOGLE INC.’S
FIRST SET OF INTERROGATORIES (NOS. 1-8)

- 14 -

1

Patent would have an associates degree in Computer Science or 2-3 years of work experience in

2

computer programming or an equivalent combination of academic and work experience.

3

IconFind’s investigation into the subject matter of this interrogatory is ongoing. IconFind

4

will supplement its response to this interrogatory, if necessary, as fact and expert discovery

5

progresses in accordance with Fed. R. Civ. P. 26(e).

6

INTERROGATORY NO. 8:

7

State whether PLAINTIFF, or anyone on behalf of PLAINTIFF, has requested or
conducted an investigation and/or evaluation regarding the validity, patentability, enforceability.,
scope, and/or INFRINGEMENT of any claim of the PATENT-IN-SUIT, including the dates
such activities took place, the persons or ENTITIES involved in such activities, the nature of
such activities.

8
9
10

RESPONSE:

11

See General Objection Nos. 1, 2, 5, 6, 7 and 8. To the extent this interrogatory concerns

12

whether IconFind had a basis to pursue its claims for infringement against Google, the details of

13

any pre-filing investigation by or for IconFind necessarily includes information that is subject to

14

the attorney-client privilege and contains the analyses, work product, mental impressions,

15

conclusions, opinions and legal theories of IconFind’s counsel.

16

disclose this information.

17

IconFind intends to rely on the opinions of one or more experts to address the subject matter of

18

this interrogatory.

19

with the Federal Rules of Civil Procedure and the Joint Status Report. (Dkt. No. 47).

IconFind is not obligated to

See Fed. R. Civ. P. 11, Notes to 1983 Amendment.

Furthermore,

These opinions, and the support for them, will be disclosed in accordance

20

IconFind also objects to this interrogatory to the extent it is compound and constitutes

21

multiple interrogatories in an improper attempt to exceed the limitation on interrogatories set by

22

the Federal Rule of Civil Procedure 33.

23

an effort to resolve any disagreements between the parties relating to the scope, breadth and

24

relevancy of Interrogatory No. 8.

25
26

IconFind is willing, however, to confer with Google in

PLAINTIFF’S OBJECTIONS AND RESPONSES TO GOOGLE INC.’S
FIRST SET OF INTERROGATORIES (NOS. 1-8)

- 15 -

1
Respectfully submitted,

2
3
4
5
6
7

NIRO, HALLER & NIRO
Raymond P. Niro (Pro hac vice)
[e-mail]
Raymond P. Niro, Jr. (Pro hac vice)
[e-mail]
Brian E. Haan (Pro hac vice)
[e-mail]
Anna B. Folgers (Pro hac vice)
[e-mail]

/s/Anna B. Folgers
WILKE, FLEURY, HOFFELT, GOULD &
BIRNEY, LLP
Thomas G. Redmon (SBN 47090)
[e-mail]
Daniel L. Baxter (SBN 203862)
[e-mail]
Attorneys for Plaintiff, IconFind, Inc.

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9
10
11
12
13
14
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PLAINTIFF’S OBJECTIONS AND RESPONSES TO GOOGLE INC.’S
FIRST SET OF INTERROGATORIES (NOS. 1-8)

- 16 -

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2
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4
5

CERTIFICATE OF SERVICE
The undersigned hereby certifies that on August 1, 2011 the foregoing
PLAINTIFF’S OBJECTIONS AND RESPONSES TO GOOGLE INC.’S FIRST SET OF
INTERROGATORIES (NOS. 1-8)
was served upon the following counsel of record via electronic transmission.

10

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]

11

Attorneys for Defendant Google Inc.

6
7
8
9

12

I certify that all parties in this case are represented by counsel who are CM/ECF participants.

13
14

/s/Anna B. Folgers
Attorneys for Plaintiff

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26

PLAINTIFF’S OBJECTIONS AND RESPONSES T O GOOGLE INC.’S FIRST SET OF
INT ERROGATORIES (NOS. 1-8)