Overture Services, Inc. v. Google Inc.

Filing 113

Declaration in Support of 112 [Plaintiff Overture Services, Inc.'s Corrected Motion to Compel Production of Damages Documents] filed by Overture Services, Inc.. (Attachments: # 1 Exhibit A# 2 Exhibit B# 3 Exhibit C# 4 Exhibit D# 5 Exhibit E# 6 Exhibit F# 7 Exhibit G# 8 Exhibit H# 9 Exhibit I# 10 Exhibit J# 11 Exhibit K# 12 Exhibit L# 13 Exhibit M# 14 Exhibit N# 15 Exhibit O# 16 Exhibit P# 17 Exhibit Q# 18 Exhibit R# 19 Exhibit S# 20 Exhibit T# 21 Exhibit U# 22 Exhibit V# 23 Exhibit W)(Related document(s) 112 ) (Byrnes, Andrew) (Filed on 1/29/2004)

Overture Services, Inc. v. Google Inc.

Doc. 113 Att. 21

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Jason C. White, Esq. Brinks Hofer Gilson & Lione NBC Tower - Suite 3600 455 N. Cityfront Plaza Drive Chicago, IL GO6 11

Re:

Overture Senices.. Jnc- v Google Inc. .

Dcar Jason: I write to respond to various concms you have raised about Google's responses to discovery propounded by Overture. At the outset, I note that the parties are still in discussions regarding a n appropriate protocol for handling the search for electronic mail stored in electronic form that may be responsive to discovery requests. As you may be aware, Jon Streeter sent a proposal to Jack Berenzwdg i mid-September about this. Sometime thereafter, there were some brief n telephone discussions about it, and around that time Charlie agreed to send me comments on Jon's proposal.
This is approximately where things stood until the December hearing on Google's motion regarding Overture's preliminary infringement contentions. Immediately after that hearing, Charlie and I agreed that X would draft a supplemental protective order regarding source code, and that he would draft something regarding email discovery. The supplemental source code protective order entered in January. I mid-February, Charlie mailed me a proposed email n discovery protocol. As I mentioned to you in ow telephone conversation earlier this afternoon, I am hoping to get back to Charlie w t a response next weekih
Once the parties have reached an agreement regarding a protocol for email discovery, I expect that both parties will need to supplement their document productions. Such supplementation may include documents responsive to Overture's first sct of document requests. I except such documents from the discussion below.

In addition, the partizhave agreed l&idei-diEovery that relates to-damages-onlyGThis includes a number of the document requests you discussed in your February 18,2003 letter. Again, my responses below are not intended to reach issues rclated to deferred d; scovery. '

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Jason C. White, Esq. March 12,2 003 Page 2 Moreover, as I am sure you understand, it is always possible that non-objec.tionabIe, nonprivilcged, responsive documents may have inadvertently been missed, notwithstanding Google's efforts to conduct a diligent search for such documents. If we locate such inadvertently omitted documents, we will of course produce them.

Possession, Custody or Control

I can confirm that Google is not withholding docummts on the gound that they are in its
custody or control, but not in its literal `ipossession."
Redacted Documents

The documents Bates-stamped GOG 551,614,647,3040, and 3300 have been redacted to remove information that reflects privileged communicationsbetween Google employees and inhouse counsd. If there are other redactions that I have faded to mention, please call them to m y attention.
Confidential or Yroprietarv Information

In light of ,thestipulated protective orders that have entered since GoogIe served responses to Overture's document requests, Google is not withholding documents bascd on their confidential or proprietary nature.
RFP NOS.1-15

I disagree with your statement that Google has produced no documents responsive to these requests. To take but the simplest example, Google has produced copies of the patent-in-suit, which is of course a document that relates to the 361 patent (FGP No. 3).

In any event, aside from electronically stored emails, and subject to its stated objections, Google has produced all non-privileged responsive documents that it has been able lo locate after a diligent search, except that it appears that Google may have inadvertently omitted to produce a copy of the patent-in-suit's file history. Please let me h o w whether you want Google to produce a copy of the file history, or whether my representation, i this letter, that Google n possessed a copy of the file history prior to Overture producing it suffices.
RJ?F Nos. 1-3,6,7,12. and 59 Google has not atrempted to produce copies of documents that Overture has itself produced to GoogIe in this litigation. With that caveat asidc, I can confirm that Google is not withholding documents on the basis that those documents are more readily available from Overture or other
sources-

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Jason C. White, Esq.
March 12, 2003
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RFP Nos. 4-9, 13-1528,and 29
Pattmt L-R. 2-5 states that parties may object to discovery seeking opinions of counsel and related documents prior to the date set by h e Patent Local Rules for such disclosure - fifty days after service of a claim construction order, per Patent L.R. 3-8. Google will not identify or producc such documents until required to by Patent LR. 3-8. RFP Nos. 7-9, 16-29,32-46,48-49,53-56,58, 61, and 64-66

First, I note that Google's responses were served prior to any discussions concerning the ambiguities in Overture's definition of "GoogIe's Sponsored Search System.'' In any event, Google's search for and production of documents responsive to these RFP Nos. 7-9 was generally consistent with the notion that "Google's Sponsored Search System" means Google AdWords Select.
However, even a definition of "Google's Sponsored Search System" that is limited to Google AdWords Select is overbroad, as there are many aspects oSGoogle's system that bear no relationship to any of the features claimed by the 361 patent - even assuming, forpwrposes of discovery, a very broad construction of the claim language. In conjunction with the broadening phrase "related to," this reiiders many aspects of the document requesrs overbroad.

X will address your concerns wi& respect to certain specific requests in this group below.
,WP No. 24
It has come to my attention that Google inadvertently omitted to produce documents responsive to these requests. We will collect and review them, and produce such documents as soon as possible. However, as noted above, the request i s overbroad even if "Google's Sponsored Search System" is limited to Google Adwords Select. Nonetheless, it may be that m y disagrcement we have on this point may be moot. I will review the documents Google has, SO that I can determine whether we need to discuss narrowing the scope of this document request.

RFP No. 25
Y will look into.this matter further. However, I note that invention disclosures submitted to Google by it5 employees are, as a general matter, privileged communications regarding potential or actual patent prosecution.

WP No. 28
X will look into this matter further,but (subject to my discussion of "Overture's Sponsored Search System," below) Google has not withheld any non-privileged documents of which it is aware that are responsive to this request.

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Jason C. White, Esq. March 12,2003 Page 4
WP Nos. 28-29 and 61

Google's responses were based on the understanding that "Overture's Sponsored Search System" refers to Overture's cost-per-click text ad system, as exemplified by searches that can be conducted using the "Search the Web" form at http://www.overture.com/dhome/(or at Overture affiliate sites known to Google). Please let me know if this information resolves your concerns. R F R No. 31

I will look into this matter furfher. If there are such documents, we will produce them.
RlFP Nos. 46,47 and 48
Executed agreemtnts appear at GOB 30230-543. M n of those agreements also include ay indemnification provisions (see, cg., GOE 30356). After you have reviewed those documents, please let me know if you have further concerns.
FWP No. 5 1

,

Google has not withheld any non-privileged documents responsive to this request of which it is aware.

WP No. 58 As presently framed, this request would appear to encompass, for example, every complaint
regarding billing made by any advertiser using the Google AdWords Select systhn. As such, it is overbroad. Please Iet me know what Overture intended by this request, and I will be better able to respond to any concerns you might have.

RFP NOS.64-66
Executed agreements between Google and AOL and AsHeeves are included among the documents Bates-stamped DOE 30230-543. I will look into this matter M e r as it reIates to

AT&T.

RFP Nos. 67
Google has not withheld any non-privileged documents of which it is aware that are responsive to this request.
RFP No. 68

Google did undertake to locate a11 documents responsive to this request, but I an checking with my client again to determine whether there are m y such documents.

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Jason C. White, Esq. March 12,2003 Page 5
Interrogatories No. 3 and 4

1 believe all of your concerns are addressed in Google's supplemental responses, which were served on November 27,2002. Once you have reviewed those responses, please let me know if you still have questions.

Verifkatiom
I will provide you with verifications for Google's interrogatory responses. It may take me a few days to get these to you.

Please let me h o w if there are issues that you wouId like to address finther. Sincerely,

i

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