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. 22

Case 3:02-cv-01991-JSW

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April 17,2003

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lSrinks Hofer Gilson & Lione NBC Tower Suite 3600 455 N. CitySont Plaza Drive Chicago, J L 6061 1

Jason C. White, Esq.

-

Re:

Overtxe Services, Inc. v. Google Inc.

Dear Jason:

I write to follow- up on our previous discussions regarding Google's discovery responses, and specifically to address the issues raised in your April 16,2003 letter.
First, regarding Overme's Interrogatory No. 3, you take issue with my letter noting that it would take longer to supplement Google's response to that interrogatory than originally expected. You note that Google's response was due seven months ago. Of course, Google did respond seven months ago, and in its response it objected to Interrogatory No. 3 on several grounds. When Overture requested that Google supplement its response to hterrogatory Nos. 3 and 4, Google did so. At that time, the only issue Overture raised was which Google advertising promgramswere "Google's Sponsored Search Systems," w t i the meaning of that term as ihn defined by Overture. Based on discussions between counsel, Overture clarified that the Overturedefined term "Google's Sponsored Search Systems" should be understood to be limited to "cost-pa-click" systems. At no time during these discussions did Overture suggest that Google's objection to the interrogatory, on the ground that it is compound, was ill-taken. Only recently did Overlure request that Google supplement its response to identify persons involved in the development of AdWords Select, and it was not until the end of last month that GoogIe agreed to supplement its response. In Iigk ofthe foregoing events, I disagree that Google's conduct is `hacceptable." With regard to prosecution histories for Google patent applications, I agreed to review Google's patent prosecution materials, to see whether it would be possible to avoid the need to address Google's concerns about the scope o f Overture's request. Unfortunately, I now believe that that discussion is necessary. As I explained during our earlier telephone call, there simply is

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a11 patcnt applications that d a t e to Google AdWords Select are relevant to the subject matter of this action or reasonably calculated to lead to the discovery of admissible evidence. Please explain why you believe these documents are all discoverable or, in the alternative, narrow the scope of the request. Please also note that, even assuming Google ultimately does agree to produce some patent prosecution documents, we do not feel it would be appropriate to produce them to your fimi or to allow your fr to review them. In reviewing the patent applications produced by im Overture, we noted that your fr is still actively serving as patent prosecution counsel for im Overture. indeed, your f r is actively prosecuting applications that claim priority to the 361 im patent application. In light of your firm's dud role as trial counsel and patent prosecution counsel, we believe that, in the event that Google produces any of its confidential patent prosecution documents, access to those documents should be limited to Overture's other trial counsel, Latham & Watkins. Regarding Request for Production Nos. 1-15 and 61, my notes fiom our March 22,2003 telephone conversation reflect that X agreed to produce a copy of the 361 prosecution history that was in Google's possession prior to Overture's production of the 361 prosecution hstory. Google produced this material on March 20,2003. My notes do not reflect furthermatters that required additional investigation. Please let me know what you had in mind regarding these requests. Request No. 24 seeks patent prosecution materials, which 7 have addressed above. All Google invention disclosures are submitted to in-house counsel, and are privileged. As such, there are no non-privileged documents responsive to Request No. 25. Aside from documents previously produced, Google is not aware of any non-privileged documents within its possession, custody or control that areresponsive to Request Nos. 28 and 29, as those requests are understood by Google, per my explanation in my March 12,2003 letter. My notes from our telephone call that day reflect that you were going to consider attmpting to clarify your definition of "Overture's Sponsored Search System." Because X have not received any further correspondence on this point, I continue to rely on the explanation of that term that I set forth in my March 12,2003 letter. Google does not produce annual reports and does not have a Mintten document retention policy. As such, there are no documents responsive to Request Nos. 31 and 65. Google supplemented its production of documents responsive to Request Nos. 46 through 48 OR March 24,2003. Please let me know if you have further concerns.
In reviewing my notes, I see that I inadvertently omitted to follow up on issues relating to Request No. 58. I will do so and get back to you-

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Jason C. White, Esq. A p d 17,2003 Page 3 Please note that the foregoing statements axe subject to the caveats I raised in my March 12,2003 letter - for exampIe, regarding the email discovery protocol. In that respect, please note that I am still awaiting a response fiom Charlie regarding the proposal I sent him by e-mail on April 3,2003.

In your April 16,2003 letter, you suggested that we discuss the issues raised by your letter today at 2:00, Pacific Time. In light ofmy letter, if you believe there are still issues that require discussion, I will be available at that time.
Sincerely,

MSWjlc

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