Overture Services, Inc. v. Google Inc.

Filing 106

Reply Memorandum re 102 MOTION to Compel Google to Respond to Interrogatory No. 10 filed by Overture Services, Inc.. (McMahon, Charles) (Filed on 12/23/2003)

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Overture Services, Inc. v. Google Inc. Doc. 106 Case 3:02-cv-01991-JSW Document 106 Filed 12/23/2003 Page 1 of 4 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 ROBERT T. HASLAM (#71134) ROBERT D. FRAM (#126750) M. PATRICIA THAYER (#90818) S. ELIZABETH MITCHELL (#187053) ANDREW C. BYRNES (#191516) HELLER EHRMAN WHITE & MCAULIFFE LLP 333 Bush Street San Francisco, California 94104-2878 Telephone: (415) 772-6000 Facsimile: (415) 772-6268 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) 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 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) OVERTURE'S REPLY IN SUPPORT OF ITS MOTION TO COMPEL GOOGLE'S RESPONSE TO INTERROGATORY 10 Dockets.Justia.com Case 3:02-cv-01991-JSW Document 106 Filed 12/23/2003 Page 2 of 4 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. INTRODUCTION Google provides no legitimate reason why it should not respond to Interrogatory No. 10 at this time. Indeed, Google concedes one of its three objections completely, and the remaining objections lack merit. Accordingly, Google should be required to provide a complete response to Interrogatory 10 at this time. ARGUMENT Google Concedes That Interrogatory 10 is Not Unduly Burdensome Google's opposition does not even address its objection that Interrogatory No. 10 is unduly burdensome. Accordingly, it seems Google wisely concedes that responding to the interrogatory does not present an undue burden. II. Google's Prematurity Argument is Without Merit Google's prematurity argument is undermined by the very cases that Google cites for support. Google argues that Interrogatory No. 10 is a contention interrogatory, which purportedly should be deferred until the end of discovery. One of the cases Google cites, however, explicitly recognizes that at least part of Interrogatory 10 does not seek contention discovery and therefore may not be deferred. See B. Braun Med. Inc. v. Abbot Labs., 155 F.R.D. 525, 527 (E.D. Penn. 1994) (interrogatory seeking an identification of each claim element or limitation that is absent from the accused system is not a contention interrogatory). Thus, Google must at least identify which claim limitations are absent from Google's Sponsored Search System. The other case Google cites explicitly recognizes that even some contention interrogatories are best answered early in the pretrial period because they help to clarify and narrow the disputed issues for discovery. See In re Convergent Techs. Secs. Litig., 108 F.R.D. 328, 337 (N.D. Cal. 1985) (it is unwise to create a rigid rule deferring all contention interrogatories to the end of discovery because some kinds of contention interrogatories can clarify and narrow the issues in litigation early in the pretrial period). Interrogatory 10 is a perfect example of an interrogatory that, if answered now, would narrow the issues for further discovery. Given an explanation of the bases for Google's OVERTURE'S REPLY RE MOTION TO COMPEL GOOGLE'S RESPONSE TO INTERROGATORY 10 C 02-01991 JSW (EDL) 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 -1- Case 3:02-cv-01991-JSW Document 106 Filed 12/23/2003 Page 3 of 4 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 assertion of non-infringement, Overture will be able to focus its discovery efforts on the truly disputed issues. This will save Overture significant time and effort reviewing Google's voluminous source code. It also will save both parties time and effort in preparing for and attending future depositions and exchanging written discovery. Requiring Google to answer Interrogatory 10 at this time also is consistent with Rule 11 of the Federal Rules of Civil Procedure. See O'Connor v. Boeing North Am., Inc., 185 F.R.D. 272, 281 (C.D. Cal. 1999) (quoting In re One Bancorp Securities Litigation, 134 F.R.D. 4, 8 (D. Me. 1991). As the court in One Bancorp Securities Litigation explained in the context of disputed contention interrogatories: Consistent with Rule 11 of the Federal Rules of Civil Procedure, plaintiffs must have had some factual basis for the allegations in their complaint. Plaintiffs must answer [defendant's] interrogatories with such information as they now possess; fur thermore, plaintiffs should supplement their responses to reflect new information developed as their own discovery progresses. One Bancorp Securities Litigation, 134 F.R.D. 4, 8 (D. Me. 1991). Likewise, Rule 11 requires that defendant Google must have had some factual basis for the allegations in its answer and counterclaims. Google should be required to answer Interrogatory 10 with such information as it now possesses, and should supplement that answer to reflect new information as discovery progresses. III. Google Has Not Shown That Interrogatory 10 Includes Discrete Subparts Google provides little more than conclusory assertions that Interrogatory No. 10 improperly includes multiple discrete subparts. First, Google asserts that Interrogatory 10 is compound because it requires Google to explain its noninfringement position for all 67 patent claims. Google does not dispute, however, that these alleged "subparts" are both "logically and factually subsumed within and necessarily related to the primary question," that is, why Google believes it does not infringe the '361 patent. See Kendall v. GES Exposition Servs., Inc., 174 F.R.D. 684, 685 (D. Nev. 1997). Rather, Google attempts to confuse the issue by basing its arguments on hypothetical interrogatories that cover all contentions or all defenses. Such interrogatories are not at issue here. OVERTURE'S REPLY RE MOTION TO COMPEL GOOGLE'S RESPONSE TO INTERROGATORY 10 C 02-01991 JSW (EDL) 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 -2- Case 3:02-cv-01991-JSW Document 106 Filed 12/23/2003 Page 4 of 4 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 The interrogatory at issue covers one specific allegation--Google's allegation that it does not infringe the '361 patent. Overture is entitled to an explanation of Google's bases for this allegation, and Overture should not be required to serve "dozens" of separate interrogatories to get a complete explanation. Second, Google distinguishes between literal infringement and infringement under the doctrine of equivalents, arguing that each of these components constitutes a discrete subpart. Although literal infringement and infringement under the doctrine of equivalents also are part of the common non-infringement theme, and therefore constitute a single question for purposes of Rule 33(a), 1 this prong of Google's argument is hardly worth debating. If it will bring closure to this dispute, Overture is willing to count Google's explanation of literal non-infringement and non-infringement under the doctrine of equivalents as two separate interrogatories. Each of these responses, however, should address all 67 of the claims that Google apparently alleges it does not infringe. CONCLUSION For the reasons set forth in Overture's motion and in this reply, Overture respectfully requests that the Court order Google to provide a complete response to Interrogatory No. 10 at this time. Dated: December 23, 2003 By: /s/ Charles M. McMahon Charles M. McMahon BRINKS HOFER GILSON & LIONE 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. 1 See id., 181 F.R.D. at 444 (quoting 8A CHARLES A. WRIGHT, ARTHUR R. MILLER & RICHARD L. MARCUS, FEDERAL PRACTICE AND PROCEDURE 2168.1, at 261 (2d ed. 1994)). OVERTURE'S REPLY RE MOTION TO COMPEL GOOGLE'S RESPONSE TO INTERROGATORY 10 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

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