Overture Services, Inc. v. Google Inc.

Filing 102

MOTION to Compel Google to Respond to Interrogatory No. 10 filed by Overture Services, Inc.. Motion Hearing set for 1/6/2004 09:00 AM. (Attachments: # 1 Affidavit of Charles M. McMahon in Support of Overture's Motion to Compel# 2 Proposed Order)(McMahon, Charles) (Filed on 12/2/2003)

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Overture Services, Inc. v. Google Inc. Doc. 102 Att. 1 Case 3:02-cv-01991-JSW Document 102-2 Filed 12/02/2003 Page 1 of 16 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 LATHAM & WATKINS Anthony I. Fenwick (Bar No. 158667) Allon Stabinsky (Bar No. 197642) 135 Commonwealth Drive Menlo Park, California 94025 Telephone: (650) 328-4600 Facsimile: (650) 463-2600 BRINKS HOFER GILSON & LIONE Jack C. Berenzweig (Admitted Pro Hac Vice) William H. Frankel (Admitted Pro Hac Vice) Jason C. White (Admitted Pro Hac Vice) Charles M. McMahon (Admitted Pro Hac Vice) NBC Tower - Suite 3600 455 North Cityfront Plaza Drive Chicago, Illinois 60611 Telephone: (312) 321-4200 Facsimile: (312) 321-4299 Attorneys for Plaintiff OVERTURE SERVICES, INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION OVERTURE SERVICES, INC., a Delaware Corporation, Plaintiff, vs. GOOGLE INC., a California Corporation, Defendant. No. C02-01991 JSW (EDL) DECLARATION OF CHARLES M. MCMAHON IN SUPPORT OF OVERTURE'S MOTION TO COMPEL GOOGLE TO RESPOND TO INTERROGATORY NO. 10 DISCOVERY MATTER Date: Time: Courtroom: Judge: Tuesday, January 6, 2003 9:00 a.m. E, 15th Floor Hon. Elizabeth D. Laporte Dockets.Justia.com Case 3:02-cv-01991-JSW Document 102-2 Filed 12/02/2003 Page 2 of 16 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 I, Charles M. McMahon, declare as follows: 1. I am an associate at the law firm of Brinks Hofer Gilson & Lione, counsel of record for plaintiff Overture Services, Inc. ("Overture") in this matter. I make this declaration in support of Overture's Motion to Compel Google to Respond to Interrogatory No. 10. I make the following declaration based upon my personal knowledge, and I could and would testify thereto under oath if called upon to do so. BACKGROUND 2. Pursuant to Patent L.R. 3-1, Overture served Google with a copy of Overture's Disclosure of Asserted Claims and Preliminary Infringement Contentions on September 16, 2002. 3. Overture supplemented its preliminary infringement contentions on January 14 and February 28, 2003. As part of its supplemental preliminary infringement contentions, Overture identified 62 claims of the '361 patent that it alleges Google infringes. 4. Pursuant to Patent L.R. 3-3, Google subsequently served Overture with its Preliminary Invalidity Contentions. 5. Pursuant to Patent L.R. 4, the parties have engaged in the claim construction process, exchanging proposed interpretations of the disputed claim terms and filing a Joint Claim Construction Statement. (See Dkt. No. 67.) The Court has scheduled a claim construction hearing for March 24, 2004. (See Dkt. No. 98.) THE DISPUTED INTERROGATORY 6. On September 22, 2003, Overture served Google with Overture's Fourth Set of Interrogatories. A copy of Overture's Fourth Set of Interrogatories is attached as Exhibit A to this declaration. The fourth set included a single interrogatory: 10. Fully describe Google's bases for its assertion of noninfringement of the '361 patent, including an identification of each claim limitation that Google contends is not present in Google's Sponsored Search System, and a statement of whether Google's Sponsored Search System provides an equivalent to each claim limitation that Google alleges is not present in Google's Sponsored Search System. BRINKS HOFER GILSON & LIONE NBC Tower Suite 3600 455 North Cityfront Plaza Drive Chicago, Illinois 60611-5599 Telephone: (312) 321-4200 Facsimile: (312) 321-4299 DECLARATION OF CHARL ES M. M MAHON C C 02-01991 JSW (EDL) -1- Case 3:02-cv-01991-JSW Document 102-2 Filed 12/02/2003 Page 3 of 16 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 7. Google served its Objections to Overture's Fourth Set of Interrogatories (No. 10) on October 24, 2003. A copy of Google's objections is attached as Exhibit B to this Declaration. Google did not provide any substantive response to Interrogatory No. 10. Google's objections to Interrogatory No. 10 are reproduced below in their entirety: Google objects to this interrogatory and to Overture's definitions to the extent that they are vague, ambiguous, overly broad, or unduly burdensome. Google objects to this interrogatory to the extent that it seeks information that is neither relevant to the subject matter of this action nor reasonably calculated to lead to the discovery of admissible evidence. Google objects to the definitions to the extent they purport to give meaning or legal significance to a document, fact o r purported fact, whose meaning or significance is the subject of dispute between the parties. Google objects to this interrogatory to the extent that it seeks information protected from disclosure by the attorney-client privilege, the work product doctrine, or any other privilege or protection. Any inadvertent disclosure of such information shall not be deemed a waiver of any such privilege or protection. Google objects to this interrogatory to the extent that it seeks to impose obligations beyond that imposed by the Federal Rules of Civil Procedure and applicable case law. Google objects to this interrogatory to the extent that it seeks information concerning any Google's Sponsored Search System that ceased to be used prior to the issuance of the Patent-in-Suit, on July 3 1,2001. Google's response is limited to Google's Sponsored Search Systems that have been in use since the issuance of the Patent-in-Suit. Based on discussions between counsel for Overture and Google, Google understands the term "Google's Sponsored Search System" to be limited to advertising models that are priced on a "cost-per-click" pricing model. Based on that understanding and the time limitation noted above, as well as Google's objections, Google understands the term "Google's Sponsored Search System" to be limited to its AdWords Select service ("AWS"). The interrogatory seeks "bases . . . including" claim limitations not present in AWS and a statement of whether AWS provides an equivalent to each claim limitation that is not present in AWS, thereby implying that Overture may be DECLARATION OF CHARL ES M. M MAHON C C 02-01991 JSW (EDL) -2- BRINKS HOFER GILSON & LIONE NBC Tower Suite 3600 455 North Cityfront Plaza Drive Chicago, Illinois 60611-5599 Telephone: (312) 321-4200 Facsimile: (312) 321-4299 Case 3:02-cv-01991-JSW Document 102-2 Filed 12/02/2003 Page 4 of 16 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 8. seeking further information beyond missing claim limitations and/or equivalents. Google objects to this interrogatory to the extent that it seeks any such further information, because to that extent "bases" is vague, ambiguous and unintelligible. Google objects to this interrogatory because it is premature, because the Court has not yet construed the asserted claims, and Overture has not yet served its final infringement contentions. Google objects to this interrogatory because it is compound, in that it seeks information concerning each limitation of each of the sixty-two asserted claims of the '361 patent, and also in that it seeks information concerning both the lack of literal infringement and the lack of infringement under the doctrine of equivalents. In light of the compound nature of this request, Google objects to this interrogatory in its entirety. Other than the general averments in Google's Answer and Counterclaim (see Dkt. No. 60), Google has never informed Overture of the bases for its assertion of non-infringement. Google has not identified which of the 67 claims of the '361 patent it alleges are not infringed. OVERTURE'S ATTEMPTS TO RESOLVE THIS DISPUTE INFORMALLY 9. Attached as Exhibit C is a copy of a letter dated November 4, 2003, in which counsel for Overture requested that Google withdraw its objections and provide a substantive response to Interrogatory No. 10. 10. On November 12, 2003, I participated in a telephone call with Mr. Ravind Grewal, counsel for Google, during which we discussed the parties' positions but were unable to resolve their differences. During this conversation, Mr. Grewal explained that Google's refusal to provide a substantive response is based on three specific objections: Google objects to this interrogatory and to Overture's definitions to the extent that they are vague, ambiguous, overly broad, or unduly burdensome. *** Google objects to this interrogatory because it is premature, because the Court has not yet construed the asserted claims, and Overture has not yet served its final infringement contentions. DECLARATION OF CHARL ES M. M MAHON C C 02-01991 JSW (EDL) -3- BRINKS HOFER GILSON & LIONE NBC Tower Suite 3600 455 North Cityfront Plaza Drive Chicago, Illinois 60611-5599 Telephone: (312) 321-4200 Facsimile: (312) 321-4299 Case 3:02-cv-01991-JSW Document 102-2 Filed 12/02/2003 Page 5 of 16 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 11. Google objects to this interrogatory because it is compound, in that it seeks information concerning each limitation of each of the sixty-two asserted claims of the '361 patent, and also in that it seeks information concerning both the lack of literal infringement and the lack of infringement under the doctrine of equivalents. In light of the compound nature of this request, Google objects to this interrogatory in its entirety. On November 14, 2003, I participated in a second telephone call with Mr. Grewal, during which we again discussed the parties positions but still were unable to resolve their differences. 12. Overture maintains that Interrogatory No. 10 is proper a nd that Google should immediately provide a complete response to the interrogatory. 13. Google maintains its objections to Interrogatory No. 10 and refuses to provide a substantive response. I declare under penalty of perjury under the laws of the United States of America that the foregoing is true and correct. Executed on this 10th day of October 2002 at Chicago, Illinois. /s/ Charles M. McMahon Charles M. McMahon DECLARATION OF CHARL ES M. M MAHON C C 02-01991 JSW (EDL) -4- BRINKS HOFER GILSON & LIONE NBC Tower Suite 3600 455 North Cityfront Plaza Drive Chicago, Illinois 60611-5599 Telephone: (312) 321-4200 Facsimile: (312) 321-4299 Case 3:02-cv-01991-JSW Document 102-2 Filed 12/02/2003 Page 6 of 16 Exhibit A Case 3:02-cv-01991-JSW Document 102-2 Filed 12/02/2003 Page 7 of 16 Case 3:02-cv-01991-JSW Document 102-2 Filed 12/02/2003 Page 8 of 16 Case 3:02-cv-01991-JSW Document 102-2 Filed 12/02/2003 Page 9 of 16 Case 3:02-cv-01991-JSW Document 102-2 Filed 12/02/2003 Page 10 of 16 Exhibit B Case 3:02-cv-01991-JSW Document 102-2 Filed 12/02/2003 Page 11 of 16 Case 3:02-cv-01991-JSW Document 102-2 Filed 12/02/2003 Page 12 of 16 Case 3:02-cv-01991-JSW Document 102-2 Filed 12/02/2003 Page 13 of 16 Case 3:02-cv-01991-JSW Document 102-2 Filed 12/02/2003 Page 14 of 16 Exhibit C Case 3:02-cv-01991-JSW Document 102-2 Filed 12/02/2003 Page 15 of 16 Case 3:02-cv-01991-JSW Document 102-2 Filed 12/02/2003 Page 16 of 16

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