Overture Services, Inc. v. Google Inc.

Filing 82

DECLARATION in Support re 70 (Christine P. Sun) Opposition to Overture's Motion for Protective Order filed by Google Inc.. (Attachments: # 1 Exhibit A# 2 Exhibit B# 3 Exhibit C# 4 Exhibit D# 5 Exhibit E# 6 Exhibit F# 7 Exhibit I# 8 Exhibit J# 9 Exhibit K# 10 Exhibit L# 11 Exhibit M# 12 Exhibit N# 13 Exhibit O# 14 Exhibit P# 15 Exhibit Q# 16 Exhibit R)(Related document(s) 70 ) (Sun, Christine)

Overture Services, Inc. v. Google Inc.

Case 3:02-cv-01991-JSW
JAN-21-2003 12:
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Doc. 82 Att. 10

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312 321 4299

BRINKS
Cbarles M. McMahOrl
312'321'4782 crn cmahonrg;brink~h ofer.com

HOFER GilSON
&lIONE
A PlaF~~IONAl CORPORPJION

January 21

, 2003

f'RD~rnY ATTO~IY$ INTtLLECI'UAL

NBC '(OWER' Sum

3600
. S 5 99

via facsimile

455 N. C,TYFWIIT PuIlo O\IV~
CHtCN;O, ILI,INOI~ 60611

[phone]

www. brlnbhof"r. com
FAX a12' S21. 4~99
TlLEl'HONE 312,321.

4200

Christine P. Sun, Esq.

, SAN JO!;E CA
INi:IIANMOUS. IN

KBKER& VANNEST, LL.P.
710 Sansorne Street San Francisco , CA 94111- 1704
Re:

ANN ARBOR, MI
ARUNOTOH. VA

~erture Services, Inc. v. Googte Inc., Civ. No. CO2-01991 (N.D. Cal.)

Dear Christine;
T write in response to the concerns you have raised regarding Overture s discovery objections. In an effort to resolve these disputes , as described below , Overture will produce certain documents and information notwithstanding its continuing objections.

Overture has not withheld, and has no current plans to withhold , any documents or information on the basis that such documents or information are confidential or proprietary. Since Overture served its objections to Google s first round of discovery requests, the court entered a Stipulated Protective Order , as wen as a Supplemental Protective Order re Outside Counsel Only Source Code. Overture has produced confidential and proprietary documents and information pursuant to the tenus of those orders. However, Overture reserves its right to seek further protective orders from the court if it determines that particular documents or infonnation merit additional protection.
We do not believe the cases you cited support your positions regarding the disclosure ofinforrnation created after the filing date of this lawsuit or information related to pending patent applications. However , in an effort to resolve this dispute , Overture will produce certain documents responsive to particular requests, as described below.
You are COITect in your characterization of the parties ' agreement to defer discovery ofinfonnation that is related only to damages. We disagree , however, with your assertions that particular damages docll1l:1ents and information are relevant to other issues in this case. Nevertheless , as part of our effort to resolve this dispute , Overture will produce certain categories of documents and infonnation at this time ~ as described below.

Dockets.Justia.com

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Christine P. Sun , Esq,
January 21 ,

2003

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Response to RFP No. 13
In further response to this request, and to the extent such documents can be located after a reasonable search, Overture will produce responsive, relevant, non-privileged documents that relate to possible infringement 'ofthe ' 361 patent by Sponsored Search
Systems other than Google s AdWords Program or AdWords Select Program.

Response to RFP Nos. 16As a preliminary matter, we again confinn that Overture has not withheld, and does not intend to withhold, documents related to Overture's cost-per-c1ick beta system on the basis that such documents are not related to the conception or reduction to practice ofthe inventions claimed in the ' 361 patent. Overture also has not withheld any relevant, nonprivileged documents related to the conception and reduction to practice ofthose inventions. Indeed , such documents were included in both Overture s preliminary production pursuant to Patent LR. 3-2 and its more recent productioD responsive to Google s document requests.
You assert that other technical documents sought by RFP Nos- 16, such as
technical documents related to Overture s CUlTent sponsored search system, should be produced on the: basis that they are relevant to the commercia! success offue patented

invention. However, if necessary, it win be Overture s burden to establish the commercial success of the invention. Accordingly, Overture will produce sufficient documents and information to establish that the current sponsored search system is covered by the ' 361 patent, and that the claimed invention is responsible for Overture's commercial success.

Response to RFP No. 23
As stated above, we do not believe that the cases you cited support your positions regarding the disclosurc of patents and pa~~t appUcations. Nevertheless, as a compromise we are willing to produce copies of Overture s U.S. patent applications that claim priority to
the ' 361 patent.

Response to RFP No. 24
We disagree with your assertion that invention disclosures for inventions other than
those claimed in the ' 361 patent are relevant to this case. Overture maintains its objections

to producing such documents.

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Christine P. Sun, Esq. 2003
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Response to RFP Nos, 25 and 26
We confmn that Overture has not withheld ) and does not intend to withhold, any relevant , non-privileged documents related to Overture s decision to introduce its cost-perclick beta system, or to any perceived need for such a system in the marketplace , to the
extent that term is Wlderstood.

Response to RFP No. 28
In further response to this request, and to the extent that such documents can be located after a reasonable search , Overture win produce responsive, releva:ot , non"privileged documents that relate to comparisons of Overture s Paid Listing System, to the extent that we understand that tenn, and other Sponsored Search Systems.

Response to RFP Nos. 30-

, 47- 49,

77,

, and 95

In further response to these requests , to the extent that such documents Call be located after a reasonable search, Overture will produce relevant , non-privileged documents that are responsive to RFP Nos. 30- , 47- , 70, 77 , 94, and 95 , to the extent that we understand these requests. Overture , however, will defer production of documents related to revenue forecasts and marketing spending, as well as documents responsive to RFP Nos. 34- 41 and 69. Such documents relate only to damages under the terms of the parties ' agreement , and therefore will be produced during the damages phase of discovery.
Overture maintains its objection that , to the extent RFP No. 42 can be understood , it is overly broad, unduly burdensome , and not reasonably calculated 10 lead to the discovery of admissible evidence. Because Overture s entire business is related to sponsored search systems , this request effectively seeks all licenses , agreements , partner agreements , and letters of intent ever entered into by Overture. As a compromise , to the extent such documents can be located after a reasonable seatch , Overture will produce responsive relevant , non-privileged licenses, agreements , partner agreements , and letters of intent concerning the ' 361 patent, as well as agreements concerning sponsored search services

provided by Overture to its affiliates.

Response to RFP No. 51
Overture maintains its objection that, to the extent this request can be understood , it is overly broad, unduly bu,dcnsomc, and not reasonably c;alculated to lead to the discovery admissible evidence. Again, because Overture s entire business is related to sponsored search systems , this request effectively seeks documents related to all disputes in which

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Christine P. Sun, Esq. 2003

Response to RFP No. 73
We disagree with your assertions regarding this request, but we are willing to compromise. To the extent such documents can be located after a reasonable search Overture will produce responsive, relevant , non-privileged documents.

Response to RFP Nos. 84 and 86
Again , we do not believe that the cases you cited support your positions regarding the disclosure of patents and patent applications. Nevertheless , as described above with respect to RFP No. 23, we are willing to produce copies of Overture s u.S. patent applications that claim priority to the ' 361 patent.

Response to RFP No. 92
Overture maintains its objection that, to the extent this request can be understood, it is overly broad , unduly burdensome, and not rf:asonably calculated to lead to the discovery admissible evidence. Again, because Overture s entire business is related to sponsored search systems, this request effectively seeks documents related to every actual or potential agreement to which Overture has c:ycr been a party. As a compromise , to the extent such documents can be located after a reasonable search , Overture will produce responsive rekvant, non-privileged agreements involving the ' 361 patent.

Response to RFP No. 96
In further re sponse to this request, to the extent that such documents can be located after a reasonable search, Overture will produce responsive , relevant, non-privileged documents.

Response to RFP No. 97
In further response to this request, to the extent that such documents can be located after a reasonable search , Overture will produce responsive, relevant, non-privileged documents;

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Christine P. Sun, Esq. January 21 , 2003
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With respect to all of the document requests and interrogatories described above Overture specifically maintains its objection to producing documents protected by the the work- product doctrine. or attorney- client priyilege
If you have any questions or would like to discuss these matters , please call me.

Best Regards

. Charles M,

McMahon

TOTAL P. 08