Overture Services, Inc. v. Google Inc.

Filing 186

Declaration of Ravind S. Grewal in Support of 183 Motion to Compel Production of Documents and Testimony Re Prosecution of '361 Patent filed by Google Inc.. (Attachments: # 1 Exhibit A# 2 Exhibit B# 3 Exhibit C# 4 Exhibit D)(Related document(s) 183 ) (Grewal, Ravind) (Filed on 7/6/2004)

Overture Services, Inc. v. Google Inc.

Doc. 186 Att. 3

Case 3:02-cv-01991-JSW

Document 186-4

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EXHIBIT C

Dockets.Justia.com

~'" :j.,~~

:: .

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UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION

OVERTURE SERVICES, INC., a Delaware corporation,

Plaintiff,
vs.
GO OGLE INC.,

) No. CO2- 01991 CRB

corporation,

a California

Defendant.

CERTIFIED

COpy
CONfiDENTiAL

i)1~",,

CONFIDENTIAL

DEPOSITION OF ELAINE K. LEE
San Francisco, California

Friday, July 18, 2003

Reported by:
RACHEL FERRIER
CSR No. 6948
Job No. 44447

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graduate studies at Davis?
09: 17

I was a systems engineering intern at Sun

Microsystems from about May 1998 through August 1998.
09: 17

Was that a summer position?

09:17

It was kind of -- it was not really a summer

position, but it was an intern -- classified as an
intern position , so -09: 17

That I S a temporary position 7Temporary, right.

09:18

You are an employee of Sun

Microsystems, but you are not a full- time employee.

09:18

What did you do after ending that internship?
I took a job as an associate attorney at Brinks
Hofer Gilson & Lione in Chicago.

09:18

09: 18

When did you start work there?

09:18 09:18
09: 18 09: 18

About probably September of 1998.
When did you leave Brinks?

January of 2000.
When you started working at Brinks , were you assigned to any particular group or practice area?

09: 18

I was in the I guess patent -- patent area.

You know, I focused on patents and also I focused on I
guess the electrical computer area.

But I wasn '

t -- I

think if there was an assignment, I think that was

it.

09: 18
09: 18

Okay.
Okay?

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09: 43
09: 43

Sure.
Is there anything that you can remember about

any of the work that any of them had done that led you

to conclude they should be listed as inventors, any of

them?
09: 44
I don

' t recall.

I can only -- I don

I t recall

what specific contributions each inventor made.

09: 44

Okay.

Have you ever become aware that any

errors were made in terms of identifying the inventors
of what issued as the ' 361 patent?

09: 44

No.

During my prosecution of this, I was not

aware of any inventor errors.

09: 44

Have you subsequently become aware of any

inventor errors?
09: 44
I believe an inventor may have been
I -- I don' t know the substance of that.

added, but

09: 44

Okay.

DO you have any understanding as to why

inventors may have been added?

09: 45 09: 45

No.
Do you know who those purported inventors are?

09: 45

I recall that one was named -- one was Tom

Soulanille.
09:45
You had spoken with Tom Soulanille in -- strike

that.
09: 45
You had spoken with Tom Soulanille in

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conjunction with drafting the original patent
application; is that right?

09: 45 09: 45

Right.
Do you have any recollection of what it was

that you and Mr. Soulanille had discussed?

09: 45

It was basically a very high- level technical
discussion of what Go To was -- you know, about GoTo' s

engineering efforts.

09: 45

Okay.

Do you remember any specific technical

feature that you discussed with him?

09: 45

We didn' t discuss any inventions, any -- you

know, any specific technical features in
a very high- level discussion.

detail.

It was

09: 46

Do you recall whether you spoke to
Mr. Soulanille once or more than once?

09:46
09: 46

At least once.

Did you consider the question, in connection
wi th drafting the patent application, whether

Mr. Soulanille should be listed as an inventor?

09: 46 09: 46

Yes, I believe I did.

What conclusion did you reach?
I believe that he -- as the claims as I had
drafted -- I don t -- I don '

09:46

t

recall, but I just recall

discussing it with him.

09: 46

Okay.

Well, does the fact that he wasn' t

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listed as one of the inventors in the original patent

application lead you to believe that you had reached the conclusion that he should not be so listed?

09: 46

I can

't

really answer that.

I mean, I think --

I do recall speaking with him, and I recall going
through the analysis with him and discussing it also

with several individuals involved in the patent

prosecution.
09: 47
But can you remember anything -- you said you
remember going through the analysis with Mr. Soulanille

as to whether he was someone who would be an
is that right?

inventor;

09: 47

I don '

t

recall going through the analysis

necessarily with him or -- but, we --

09: 47

Let me back up.
Do you remember considering the question whether Mr. Soulanille should be listed as an inventor?

09: 47

09: 47

I don t recall exactly, but I do recall that I

discussed technical aspects with him.

09: 47

Okay.

Well, would it be your normal practice

to -- if you spoke with an individual at a company who

was involved in some way with an invention, to evaluate
whether they were someone who ought to be listed as an

inventor?
09: 47

Sure

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specific website, but it was publicly

available.

09: 58

Okay.

And to the extent that the -- that the

GoTo system had been available on GoTo ' s websi te, would
that fall within the penumbra of what you are defining
as publicly available?

09: 58
09: 58

Yes.
Is there anything more specific that you can

recall about the information that you learned about when
it was that Go
To ~ had

a prior version of the GoTo system

available on the GoTo website or otherwise publicly

available?
09: 59 09: 59
No.
Did you conduct any investigation into the features of the system that were included within what
you have defined as this first release?

09: 59

I don

't

know if it was the first release.

09: 59 09: 59 09: 59 09: 59 09: 59

Okay.
m just saying -Fair enough.

In that case --

Okay.
-- do you recall conducting any investigation

into the features of the system that had previously been
made available on the GoTo websi te or otherwise made

publicly available?

09: 59

Yes.

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09: 59

Okay.

What do you recall learning as a result

of that investigation?

09: 59

That there -- you know, I just learned about
certain features that had been -- that were made

publicly available and that they had -- they were

working on a newer version that had some additional

features.
10:00
Okay.
Can you remember any of the specific
features that had been made publicly available

previously?
10: 00
No.
Do you remember having conversations with

10:00

anyone about whether it would be desirable to seek
patent protection for any of those features?

10: 00

Any of what features?

10:00
10:00
10: 00

The features that had previously been publicly

available.
Prior to my speaking with them?

Right.
I do recall discussing with them what can and
cannot be patented related to those features.

10:00

10:00
10: 00

Okay.
You know, and what
MS. DURIE:

jurisdictions.

10:00

And I take it, Jason, that if I ask --

well ,

let me just make a record.

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made publicly available?

10:09

MR. WHITE:

m going to object to that as being

vague with respect to " the GoTo system.
10: 09

BY MS. DURIE:
The Go To system " as we have defined

10:09

it,

pay- for- placement
10: 10

system for advertising.
Same objection.

MR. WHITE:

10: 10
10: 10

THE WITNESS:

That was publicly available?

BY MS. DURIE:

10: 10

That was publicly available, whatever it

was.

10:10

Okay.

I recall that at the time of filing I

believed that those claims encompassed new material that was not part of the GoTo system as we have defined it.
10: 10

Why is it that you remember that?

10: 10

Because I do recall discussing this at length
with various of the inventors.

10:10

Was there any reason that you drafted the
claims in such a way that they included features that
you believed were not present in the original Go

system that had been publicly released?

10:11

Yes.

One reason would be to make this

application eligible for foreign

filing.

10:11
10:11

Can you explain that to me.

If you file -- if you establish a priority date

by filing in the U. S. Patent Office before the first

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contained within this IDS?

10:36

I believe a lot of the information came
directly from Go

To employees.
Do you remember conducting or

10:36

Okay.

instructing that a search be conducted for relevant
prior art?

10: 36
10: 37

Can you specify what you mean by " search.

Well, any attempt to uncover relevant prior

art.
10:37
10:37
10:37

Relevant

Prior art.
believe we
MR. WHITE:
14 .

asked
had.

10:37

Be careful not to reveal any

attorney-client communications that you may have
THE WITNESS:

10:37
10:37

Right.
You can answer " Yes "
Okay.

MR. WHITE:
THE WI-TNESS:

or "No.

10:37

Yes.

10:37 10:37

BY MS. DURIE:

Okay.

Was that search conducted in part by

individuals at GoTo?

10:37
me.

They provided -- they provided information to
I don' t know what activities they did to get that

information.
10:37
Did you independently conduct any search for

potentially relevant prior art?

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10:37

I may have conducted a search or asked that a

search be conducted, but I don '

t

recall exactly.

10:37

You don '
I don

t

remember one way or the other?
one way or the other.

10:38 10:38

I t remember

Okay.

Do you have any knowledge as to whether

anyone else at Brinks conducted such a search?

10:40
10:40

No.

Okay.

Let me show you what' s previously been

marked as Exhibit 10.

10:40
10:40

Mm- hmm.

Have you had a chance to look at Exhibit 10?

10:40 10:40

Yeah.
Have you seen it before?
I don

10:40
10:40

I t recall

exactly.

Do you have any recollection as to whether you
had ever seen Exhibit 10 as of the date that the IDS was

s upmi t ted

?

10:41

I don

t recall.

To the extent -- I mean , I do

recall looking at press releases.

10:41

Okay.

Do you have any understanding -- I will

represent to you that Exhibit 10 is not listed on the

IDS.

10:41 10:41
would be?

Okay.
Do you have any understanding as to why that

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10:41

No.
Do you know whether GoTo provided a copy of

10:41

Exhibit 10 to Brinks Hofer prior to the submission of
the IDS?

10:41
to us?

Do I know whether they provided a copy of this

10:41 10:41

Yeah.
No, I don t know.
My general practice was, I

think I asked for press releases and they provided me

with -- whatever they provided me with I filed as -- I

included in the information disclosure

statement.

10:41

So my -- you know, if I didn '

t

receive it, I

obviously can t file what I didn t receive.

10: 42

Okay.

But you don t know one way or the other

whether you did receive it; is that right?

10: 42

Right.
And I take it you also don '

10:42

t

know one way or

the other whether you conducted any independent search
for press releases?

10:42

I worked with Go To employees and they provided

me with press releases, yeah.

10:42

So is it therefore fair to say that you did not

conduct any independent search for press releases apart
from relying on the information that was provided to you
by GoTo employees?

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10:42 10:42

Apart from Go To and what was on the website.

Okay.

I would like you to -- I see that you

still have Exhibit 3 in front of
Claim 1 in front of you.

you.

I f you

could have

10: 43

Right.
And I would like to talk to you a little bit

10:43

about Claim 1 and this press release that is Exhibit 10.

10: 44

Mm- hmm.

10: 44

If you could turn to -- if you could take a

look at the -- at Claim 1, the first element after the

Comprising,

Maintaining a database including a

plurality of search listings wherein each search

listing

is associated with a bid amount and a search term.

10:44

Right.
You had previously indicated that you weren ' t
sure whether or not that element was met by the system
that had been in prior public use.

10:44

10:44
10:44

Right.
You see that the date of this press release is
May 19th, 1998?

10:44 10:44

Mm- hmm.

And the application was filed on May
1999, the patent application?

28th,

10:44 10:44

Okay.

And I'

ll represent that to you, and you can see

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the -- a year prior to the filing date of the
application or before?

11: 35 11: 35

No.
Did you draft paragraph 10?

11:36
11:36

Yes.
Paragraph 10 does not state that it' s being

offered on information and belief; correct?

11: 36

I would have to -- I don '

t

know.

11: 36
11: 36

Feel free to read

it.
information and

Okay.
bel ief " does n '

Well, the phrase, " On
t appear.

11: 36

Did you do anything to ascertain whether

Mr. Davis had personal knowledge of the matters to which
he was attesting in paragraph 10?

11: 36

I don t recall.

I would -- you know, my normal

practice

would be to make

sure

that everything that he I s

attesting to

truthful

would assume that I would

have made -- I would have made that -- made certain of

that.
II: 37

Would it be your normal practice to ask an
individual who is submitting a declaration whether they had personal knowledge of the statements that they were

making?

11:37

These statements say whether he knows or

believes something and -- I mean, whether or not

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CO NFID

something happened.

I mean, I think that. s -mean, I'

I think

everything that he said -- I

ve -- I asked him

if he s -- if he can attest to the truthfulness of those

and he said, you know, he did.

11:37

MR. WHITE:
communica tion.

Careful not to reveal any specific

11:37 11:37 11:37
11: 37

THE WITNESS: BY MS. DURIE:

Sure.

Let me ask you again.
Would it be your normal practice to ascertain whether a declarant had person~l knowledge of the truth
of the statements that he was making in the declaration?

11:37

I would ask him to ascertain that the
statements he ' s making are truthful.

11:38

Okay.

Would you -- would it be your practice

to ask a declarant whether he had personal knowledge of

the matters to which he was attesting in order to make a determination as to whether those matters should be
stated on information and belief?

11: 38

If he has personal knowledge that -- you know,
that information -- statements he was making on

information and -- you know, it' s just if he has -whatever he has personal knowledge to, he should -- you
know, he can attest

to.

11: 38

Okay.

And so --

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11:38

Everything -- all the statements that he should
make are truthful.

11:38

Okay.

But you would then, I take it, try to

find out what things he could say based on his own --

truthfully say based on his own personal knowledge and

what things he could truthfully say based on information
and belief, as your general practice?

11:39

Sure, to the -- yeah.

11:39

Okay.

Do you have any reason to believe that

you deviated from that general practi0e here?

11: 39

No.
Do you remember having discussions with anyone
else at GoTo. com about whether they would be competent

11:39

to submit a declaration in support of a petition to make

special?
11: 39
MR. WHITE:

Just a " Yes " or "

" answer to that

question right now.

11:39 11:39 11:39
11: 39

THE WITNESS: BY MS. DURIE:

Could you repeat the question.

Sure.
Do you recall having discussions with anyone else at GoTo about whether they would be competent to submit a declaration in support of the petition to make

special?
11:39
Yes.

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11:42

Right, if they had that knowledge based on
information and belief.

11:42

Okay.

So if Mr. Davis had told you that he

didn ' t

have personal knowledge of the features of the

GoTo system more than a year prior to the filing date,

based on your practice, do you believe that you would
have drafted Exhibit 10

I mean, paragraph 10 of his

declaration to reflect that the statements were being
made on information and belief?

11:42
11: 42

MR. WHITE:
THE WITNESS:

Objection; calls for speculation.
Can you ask the question again.

11:42

BY MS. DURIE:

11:42

Sure.
MS. DURIE:

11:42
11: 42 11: 42

Can you read it back.

(Record read by Reporter as follows:

Question:
he didn '

So if Mr. Davis had told you that

t

have personal knowledge of the

features of the GoTo system more than a year prior to the filing date, based on your

practice, do you believe that you would have

drafted

. paragraph 10 of his declaration

to reflect that the statements were being made
on information and belief?"

11: 43

MR. WHITE:
THE WITNESS:

Same objection.

11:43

I may have drafted statement 10

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differently.
11:43
BY MS. DURIE:

Whether I would have said it' s on

information and belief, I don '

t

know.

ll:43

Okay.

In Mr. Davis s declaration, he states

that he s made a rigid comparison of the claims of the

patent application and the potentially infringing

systems.
11:43 11:43 11:43
Mm- hmm.

What is a rigid comparison?
I guess my understanding - would be that you look

at the claim elements and you also compare it -- you

compare it to the system -- the
11: 44

system.

Was it your understanding that any of the
claims in the patent application as it then -- as it existed as of the date of the petition to make special

were limited to a system that charged advertisers on a

cost- per-click
II :44
11: 44

basis?

m sorry, can you repeat the question.

Sure.
Was it your understanding at the time you
submitted the petition to make special that any of the

ll:44

claims of the patent application, as it then

existed,

were limited to a system that charged advertisers on a

cost- per-click
11:45
MR. WHITE:

basis?

Objection; calls for a legal

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I, the undersigned, a Certified Shorthand

Reporter ' of

the State of California, do hereby

certify:

That the foregoing proceedings were taken

before me at the time and place herein set forth; that
any witnesses in the foregoing proceedings, prior to testifying, were placed under oath; that a verbatim
record of the proceedings was made by me using machine shorthand which was thereafter transcribed under my

direction; further, that the foregoing is an accurate
transcription thereof.

I further certify that I am neither

financially interested in the action nor a relative or

employee of any attorney of any of the

parties.

IN WITNESS HEREOF, I have this date
subscribed my name.

Dated:

AUG 0 5 2003

RA

FERRIER CSR No. 6948