Overture Services, Inc. v. Google Inc.

Filing 177

Proposed Order re 175 Motion to Compel Production by Google Inc.. (Grewal, Ravind) (Filed on 6/29/2004)

Overture Services, Inc. v. Google Inc.

Doc. 177

Case 3:02-cv-01991-JSW

Document 177

Filed 06/29/2004

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KEKER & VAN NEST, LLP JOHN W. KEKER - #49092 DARALYN J. DURIE - #169825 CHRISTINE P. SUN - #218701 710 Sansome Street San Francisco, CA 94111-1704 Telephone: [phone] Facsimile: [phone] Attorneys for Defendant and Counterclaimant GOOGLE INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION

OVERTURE SERVICES, INC., Plaintiff and Counterdefendant, v. GOOGLE INC., Defendant and Counterclaimant.

Case No. C 02-01991 JSW (EDL) [PROPOSED] ORDER GRANTING GOOGLE INC.'S MOTION TO COMPEL PRODUCTION OF DOCUMENTS AND TESTIMONY RE: PROSECUTION OF THE `361 PATENT

328822.01

[PROPOSED] ORDER GRANTING GOOGLE INC.'S MOTION TO COMPEL PRODUCTION OF DOCUMENTS AND TESTIMONY RE: PROSECUTION OF THE `361 PATENT CASE NO. C 02-01991 JSW (EDL) Dockets.Justia.com

Case 3:02-cv-01991-JSW

Document 177

Filed 06/29/2004

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The hearing on Defendant and Counterclaimant Google Inc.'s ("Google") Motion to Compel Production of Documents And Testimony Re: Prosecution of the `361 Patent came on regularly for hearing on August 3, 2004 at 9:00 a.m. before this Court. Upon consideration of the papers filed in support of and in opposition to the Motion to Compel, and the arguments of counsel in connection therewith, as well as the relevant papers and pleadings in this action, the Court finds: 1. Plaintiff and Counterdefendant Overture Services, Inc. ("Overture") has waived the attorney-client privilege over any and all communications related to the prosecution of U.S. Patent 6,269,361 ("the `361 patent") by voluntarily disclosing the substance of such communications on that subject matter. See Weil v. Inv. Indicators, 647 F.2d 18, 24 (9th Cir. 1981); ACLARA Biosciences, Inc. v. Caliper Tech. Corp., 2001 WL 777083,*6 (N.D. Cal. June 16, 2000). 2. Brinks, Hofer, Gilson & Lione ("Brinks Hofer"), prosecution counsel for the `361 patent, has not met its burden of establishing that its attorney work product related to the `361 patent was created in anticipation of litigation. See Connor Peripherals, Inc. v. Western Digital Corp., 1993 WL 726815, *4 (N.D. Cal. June 8, 1993). The Court further finds that Brinks Hofer has voluntarily revealed the prosecuting attorneys' mental impressions about the events that are at the core of Google's inequitable conduct allegations. Thus, to the extent that work product immunity applies to information related to the `361 prosecution, Brinks Hofer's disclosure has placed such information directly at issue and Google's need for production of that information is compelling. See Bio-Rad Labs., Inc. v. Pharmacia, Inc., 130 F.R.D. 116, 122 (N.D. Cal. 1990); ACLARA Biosciences, Inc., 2001 WL 777083 at *9. 3. Google has met its burden of making a prima facie showing that inventor Darren Davis and attorney John Rauch committed fraud on the patent office during the prosecution of `361 patent. See Starsight Telecast, Inc. v. Gemstar Dev. Corp., 158 F.R.D. 650, 655 (N.D. Cal. 1994). Good cause appearing therefore, IT IS HEREBY ORDERED THAT: 1. Overture shall produce any and all communications within its possession, custody, or 1
[PROPOSED] ORDER GRANTING GOOGLE INC.'S MOTION TO COMPEL PRODUCTION OF DOCUMENTS AND TESTIMONY RE: PROSECUTION OF THE `361 PATENT CASE NO. C 02-01991 JSW (EDL)

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Case 3:02-cv-01991-JSW

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control between and among Brinks Hofer and Overture (including GoTo.com) related to the prosecution of the `361 patent, including but not limited to any and all documents summarizing or reflecting such communications, by no later than August 31, 2004. 2. Overture shall permit any and all testimony about the communications between and among Brinks Hofer and Overture (including GoTo.com) related to the prosecution of the `361 patent. 3. Overture shall produce any and all work product of Brinks Hofer within its possession, custody, or control related to the prosecution of the `361 patent by no later than August 31, 2004. 4. Overture shall permit any and all testimony about the work product of Brinks Hofer related to the prosecution of the `361 patent. 5. Overture shall make James Naughton available for a second day of deposition and permit Google to obtain testimony that is consistent with Order. 6. In the alternative, Overture shall produce any and all communications between Mr. Rauch and Mr. Davis within its possession, custody, or control for an in camera inspection by the Court, so that the Court may determine if those communications were made in furtherance of fraud, by no later than August 31, 2004. IT IS SO ORDERED. Dated:

Honorable Elizabeth D. Laporte Magistrate Judge of the United States District Court, Northern District of California

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328822.01

[PROPOSED] ORDER GRANTING GOOGLE INC.'S MOTION TO COMPEL PRODUCTION OF DOCUMENTS AND TESTIMONY RE: PROSECUTION OF THE `361 PATENT CASE NO. C 02-01991 JSW (EDL)