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.

Doc. 82 Att. 9

Case 3:02-cv-01991-JSW

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KEKER & V AN NEST, LLP JOHN W. KEKER - #49092 JON B. STREETER - #101970 DARAL YN J. DURIE - #169825 ANDREA C. EVANS - #220433 710 Sansome Street San Francisco, CA 94111- 1704 Telephone: [phone] Facsimile: (415) 397- 7188

Attorneys for Defendant GOOGLE INc.

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

OVERTURE SERVICES , INc., a Delaware corporation

Case No. C 02- 01991

CRB

Plaintiff

DEFENDANT GOOGLE INc.' S FIRST REQUEST FOR PRODUCTION OF
DOCUMENTS TO PLAINTIFF OVERTURE SERVICES, INc.

GOOGLE INc. , a California corporation
Defendant.

PROPOUNDING PARTY: GOOGLE INc.
RESPONDING PARTY:

OVERTURE SERVICES, INc.
ONE

SET NO.

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Pursuant to Federal Rule of Civil Procedure 34, Defendant Google Inc. ("Google
requests that Plaintiff Overture Services, Inc. ("Overture ) respond to the following Request for
Production of Documents within 30 days of their service.

DEFINITIONS
I. "GOOGLE"

means Google, Inc. , its subsidiaries, divisions, predecessor companies

any joint venture to which it may be a party, and/or each of its employees, agents, officers
directors , representatives , consultants, accountants, and attorneys, including any person who

served in any such capacity at any time.

2. "OVERTURE SERVICES" means Overture, Inc. , its subsidiaries, divisions
predecessor companies, any joint venture to which it may be a party, and/or each of its
employees , agents, officers, directors, representatives, consultants, accountants, and attorneys

including any person who served in any such capacity at any time.

3. "The ' 361 patent" means United States Patent No. 6 269 361.
4. The term "Overture

s Paid Listing System" means any and all systems made, used

sold , or offered by sale by or on behalf of Overture that (a) it contends embody one or more of
the claims of the ' 361 patent, as well as any prior versions (including development versions) of
any such systems; (b) was available to the public at the website

http://www.goto.com and

associated web pages as of May 28 , 1998; as well as any prior versions of any such systems;

and/or (c) is or was based on a cost-per-click pricing model or structure.
5. The term "Sponsored

Search System" means any and all systems Overture contends

embody one or more of the claims ofthe ' 361 patent, as well as any systems that Overture
contends are non~infringing alternatives to such systems.

6. "DOCUMENT(S)" means and includes any kind of written, typewritten, or printed
material whatsoever, and any computer readable media, including, but without limitation, papers
agreements , contracts, notes, memoranda, presentations, presentation materials, correspondence

letters , telegrams, statements, invoices, personal diaries, records, books, maps, blueprints, forms

transcriptions and recordings, magnetic tapes, discs, printed cards, programming instructions

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assembly diagrams, schematic diagrams, data books and manuals, of which Overture has

knowledge or information, either in Overture s possession or under Overture s custody or

control , relating or pertaining in any way to the subject matters in connection with which it is
used and includes, with but without limitation, originals, all file copies, and other copies, no

matter how or by whom prepared, and all drafts prepared in connection with any such writings
whether used or not, regardless of whether the document still. exists, and regardless of who has

maintained custody of such documents.
7. The term "COMMUNICATION(S)"

means every manner or method of disclosure or

transfer or exchange of information, whether oral or by document, and whether face-to- face , by
telephone , mail, personal delivery or otherwise.
8. The term "RELATING

TO" means concerning, referring to , summarizing, reflecting,

constituting, containing, embodying, pertaining to, involved with, mentioning, discussing,

consisting of, comprising, showing, commenting upon, evidencing, describing or otherwise
RELATING TO the subject matter.

INSTRUCTIONS
Overture is required to produce all DOCUMENTS in the manner, form and

position in which they are kept in the ordinary course of business, as required by Federal Rule of
Civil Procedure Rule 34(b), including, where applicable, any index tabs, file dividers
designations or information as to the location of DOCUMENTS.

If Overture cannot respond to a document request fully, after a diligent attempt to
attain the requested information, Overture must answer the document request to the extent possible , specify the portion of the document request Overture is unable to answer, and provide

whatever information Overture has regarding the unanswered portion.

In the event that any DOCUMENT called for by the requests has been destroyed
lost , discarded or is otherwise no longer in Overture ' possession, custody or control, Overture

shall identify such DOCUMENT as completely as possible, and shall specify the date of disposal
of the DOCUMENT, the manner of disposal, the reason for disposal, the person authorizing the

disposal , and the person disposing of the DOCUMENT.

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In the event any information is withheld on a claim of attorney-client privilege or
work product doctrine, Overture is required to provide a privilege log which includes at least the

following information: the nature of the information contained in the withheld DOCUMENT
the date of the DOCUMENT, its source, and subject matter, and to whom that information was
disclosed , such as would enable the privilege claim to be adjudicated, and any authority which

Overture asserts supports any claim of privilege.

REQUESTS FOR PRODUCTION OF DOCUMENTS
REQUEST FOR PRODUCTION NO.

All documents relating to the ' 361 patent, including any documents relating to the
conception and reduction to practice of any invention allegedly described therein; the
preparation , filing, and prosecution of any patent application(s) related thereto (including the
application(s) that matured into the '361 patent, continuation applications, continuation-in-part

applications , divisional applications, and foreign counterpart applications); and any documents

related to any attempt to license, enforce, or sell the ' 361 patent.
REQUEST FOR PRODUCTION NO.

All documents that support, contradict, or relate to Overture s claim that Google
infringes the ' 361 patent.

REQUEST FOR PRODUCTION NO.

All documents relating to Overture s contention that the ' 361 patent is valid, including

without limitation all evidence relating to objective indicia of non-obviousness and other alleged
evidence of alleged novelty or non-obviousness.
REQUEST FOR PRODUCTION NO.

All documents relating to any study, analysis, review, conclusions, opinions, whether
written or oral, as to the patentability, validity, novelty, obviousness, invalidity, enforceability,
non-enforceability, infringement, or non-infringement of any claim of the ' 361 patent, or to the

research, investigation or preparation of any such opinions.

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UEST FOR PRODUCTION NO.

All documents relating to any oral or written opinion of legal counsel with respect to
infringement , non-infringement, validity, invalidity, enforceability, interpretation or scope of any
claim of the ' 361 patent.

UEST FOR PRODUCTION NO.

All documents relating to the first written descnption of the subject matter of each claim
of the ' 361 patent.

UEST FOR PRODUCTION NO.

All documents relating to the first disclosure to a person other than a listed inventor of the
subject matter of each claim of the ' 361 patent.

UEST FOR PRODUCTION NO.

All documents published or publicly presented by the inventors named in the ' 361 patent.
UEST FOR PRODUCTION NO.

All documents relating to the first use or demonstration of any product, device, or method
that incorporates or embodies any of the subject matter claimed in the ' 361 patent.

UEST FOR PRODUCTION NO. 10:
All documents relating to the first sale or offer for sale of any product, device, or method

that incorporates or embodies any ofthe subject matter claimed in the ' 361 patent.

UEST FOR PRODUCTION NO. 11:
All documents relating to Overture s first knowledge of Google s alleged infringement of
the ' 361 patent.

UEST FOR PRODUCTION NO. 12:
All documents relating to any comparison ofthe
functions ,

features, or characteristics of.

Google s AdWords Program or AdWords Select Program with any claim or portion ofthe ' 361
patent.

UEST FOR PRODUCTION NO. 13:
All documents relating to any discussion or communication, whether written or oral
relating to possible infringement of the ' 361 patent, including, without limitation, recorded notes

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minutes , or memoranda of any meeting relating to whether Google s AdWords Program or

AdWords Select Program or any other Sponsored Search System infringes the ' 361 patent.

REQUEST FOR PRODUCTION NO. 14
All documents relating to any patent, literature or prior art search, study, investigation or
evaluation conducted with respect to the ' 361 Patent or any U. S. or foreign patents or patent

applications that discloses or claims any of the subject matter disclosed or claimed in the ' 361
patent.
8.

REQUEST FOR PRODUCTION NO. 15
All documents relating to any communication between Overture, or anyone acting on its

10. behalf,

and any customer, potential customer, distribution partner, field representative, supplier

manufacturer , or any other third party about the patentability, validity, enforceability, scope, or
infringement of any claim of the ' 361 patent.

REQUEST FOR PRODUCTION NO. 16
All documents relating to the conception, design, development, reduction to practice
testing, or operation of Overture s Paid Listing System, including, without limitation, any

engineering, design, or laboratory notebooks, drawings, block diagrams, functional
specifications , design reviews, schematics, flow charts, minutes of design reviews, declarations

publications , notes, memoranda, correspondence, invention disclosure forms, customer
specifications , source code, customer requests, or prototypes of any invention, Beta versions, or

components of Overture s Paid Listing System.

REQUEST FOR PRODUCTION NO. 17
A copy or sample of each executable version of Overture s Paid Listing System made
used , or sold by or on behalf of Overture.

REQUEST FOR PRODUCTION NO. 18
All documents related to each executable version of Overture s Paid Listing System
made , used, or sold by Overture, including source code, functional specifications, network
architectures , descriptions of co-location facilities, flowcharts, system descriptions, presentation
materials (e. , PowerPoint presentations), and other such documents.

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UEST FOR PRODUCTION NO. 19:
All documents and things sufficient to show the structure or architecture of the computer
system or software that operates, supports, or maintains Overture s Paid Listing System
including block diagrams, data structure diagrams, system architecture diagrams, and database
layouts.

UEST FOR PRODUCTION NO. 20:
All documents and things sufficient to show the performance, specifications, and

functional characteristics and capabilities of Overture s Paid Listing System.

UEST FOR PRODUCTION NO. 21:
All documents relating to agreements, licenses, permissions, term sheets, memoranda of

understanding, and letters of intent related to third-party developed technology used by Overture
as part of Overture s Paid Listing System.

UEST FOR PRODUCTION NO. 22:
Documents sufficient to identify each and every Overture officer, manager, director
agent , and employee who had responsibility for, or who are or were, involved with the design,

research , development, testing, and operation of Overture s Paid Listing System.

UEST FOR PRODUCTION NO. 23:
All documents relating to patent and patent applications, whether or not such patent
application was filed, issued, or abandoned, that claim or relate to Overture s Paid Listing
System.

UEST FOR PRODUCTION NO. 24:
All invention disclosures submitted to Overture by its employees, or any other person
relating to Overture s Paid Listing System.

UEST FOR PRODUCTION NO. 25:
All documents relating to any trade research, market research, consumer research, or
other research conducted by or on behalf of Overture m connection with its decision to desIgn,
develop, market, or operate Overture s Paid Listing System.

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UEST FOR PRODUCTION NO. 26:
. All

documents relating to any need, or to any perceived need, in the marketplace for

Overture s Paid Listing System.

UEST FOR PRODUCTION NO. 27:
All documents relating to Overture s knowledge or awareness of Google
design,

development , or operation of Google s AdWords Program or AdWords Select Program.

UEST FOR PRODUCTION NO. 28:
All documents relating to any comparison of Overture s Paid Listing System and any
other Sponsored Search System, including Google s AdWords Program or AdWords Select

Program.

UEST FOR PRODUCTION NO. 29:
All documents relating to the organizational structure of Overture , including without

limitation documents identifying departments, divisions, or business units, and persons having
managerial responsibility or an ownership interest in Overture.

UEST FOR PRODUCTION NO. 30:
All annual reports for Overture.

UEST FOR PRODUCTION NO. 31:
All documents relating to advertising plans , business plans, estimates, revenue forecasts
web traffic reports , marketing plans or efforts, promotional programs, or strategies on the part of
Overture concerning Overture s Paid Listing System, including the amount spent on marketing

and advertising plans, and the target(s) of any such marketing plans.

UEST FOR PRODUCTION NO. 32:
Copies of all advertising and promotional materials for Overture s Paid Listing System.

UEST FOR PRODUCTION NO. 33:
All documents relating to any comments received by Overture from another regarding
Overture s Paid Listing System, including, but not limited to, complaints, praise, or suggestions

regarding Overture s Paid Listing System.

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UEST FOR PRODUCTION NO. 34
All documents relating to the total revenue that Overture has earned , directly or indirectly, fTom the sale or advertisement 0 f products or services through or in conjunction with
Overture s Paid Listing System.

REQUEST FOR PRODUCTION NO. 35
All income statements relating to 0 verture s Paid Listing System.

REQUEST FOR PRODUCTION NO. 36
All balance sheets relating to Ove rture s Paid Listing System.

REQUEST FOR PRODUCTION NO. 37
All profit and loss statements relatin g to Overture s Paid Listing System.

UEST FOR PRODUCTION NO. 38
All of Overture s monthly, quarter! y, and annual audited financial statements and annual
reports , including all corresponding notes and schedules.

REQUEST FOR PRODUCTION NO. 39
All documents that identify any fees or costs incurred by Overture in the design,
development , and operation of Overture s P aid Listing System.

REQUEST FOR PRODUCTION NO. 40
Documents sufficient to establish the cost and fees to Overture of advertising, marketing,
and providing the products or services that It offers through or in conjunction with Overture
Paid Listing System.

REQUEST FOR PRODUCTION NO. 41
All documents that identify and exp lain Overture s accounting books and records as they
relate to Overture s Paid Listing System.

REQUEST FOR PRODUCTION NO. 42
All documents relating to any licens , agreements, partner agreements, or letters of
intent entered into by Overture relating to Overture s Paid Listing System , including, but not
limited to,

any licenses, agreements, partner agreements, affiliate agreements , or letters of intent.

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REQUEST FOR PRODUCTION NO. 43.
All documents relating to any inde rnnification , promise of any indemnification, or hold

harmless agreement given or received by 0 verture with respect to the ' 361 patent or any of the
claimed subject matter thereof.

REQUEST FOR PRODUCTION NO. 44:
All documents relating to any Overt ure policy, practice, guideline, or procedure with
respect to the preparation, submissIOn, dock eting, review, prosecution, or other processing of
invention disclosures,

idea disclosures, pate nt applications, and/or patents.

UEST FOR PRODUCTION NO. 45
All documents relating to any patent license(s) that Overture contends are relevant to the

issues of damages or a reasonable royalty in this case.

REQUEST FOR PRODUCTION NO. 46
All documents relating to or upon which Overture will rely in support of any amount or

rate that Overture considers to be a reasonable royalty for Google s alleged use or operation of
Overture s Paid Listing System, as it relates to the ' 361 patent.

REQUEST FOR PRODUCTION NO. 47
All documents relating to the nature , size, and scope ofthe market for, the availability of and the demand for Sponsored Search Syste ms in general or Overture s Paid Listing System in
particular.

REQUEST FOR PRODUCTION NO. 48
All documents relating to Overture s market share as a percentage of total sales in the

Sponsored Search Systems industry, whether expressed in units or dollars.

UEST FOR PRODUCTION NO. 49
All documents relating to Sponsore d Search System products or services that have been

marketed or sold in competition with Overture s Paid Listing System, including any competitive
analyses of such products or services.

REQUEST FOR PRODUCTION NO. 50
All documents relating to each product , system, or service that Overture contends is an

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acceptable non-infringing alternative to the apparatus, systems, or methods claimed in the ' 361
patent.

UEST FOR PRODUCTION NO. 51:
All documents relating to any disputes, including, without limitation, cease and desist
matters , litigation, arbitration , or administrative procedures In which Overture was or is Involved
and that relate to Overture s Paid Listing System.

UEST FOR PRODUCTION NO. 52:
All documents relating to any comments, statements, or representations made by
Overture , or any other person, about the features, performance, advantages, or disadvantages of
Google s AdWords Program or AdWords Select Program or Overture s Paid Listing System or

any comparisons between Google s AdWords Program or AdWords Select Program and
Overture s Paid Listing System.

UEST FOR PRODUCTION NO. 53:
All documents relating to any efforts made by Overture, or anyone acting on its behalf, to
solicit , convince, or persuade any of Google ' s customers , affiliates, or advertisers to advertise on

Overture s website.

UEST FOR PRODUCTION NO. 54:
All documents relating-to communIcations, letters, emails, comments, statements, or

representations made by Overture that were directed to any of Google s customers or advertIsers.

UEST FOR PRODUCTION NO. 55:
All documents relating to any request or suggestion made by Overture to a third party
that such third party might or should become involved in , participate in, or join in this action, or

any conversation or discussion between Overture and another regarding such other s actual or
potential involvement, participation, or joinder in this case.

UEST FOR PRODUCTION NO. 56:
All documents relating to any document retention policy or document destruction policy
of Overture.

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UEST FOR PRODUCTION NO. 57
All documents provided to , used by, or received by any consulting or testifying experts or

fact witnesses that may be called by Overtu re to testify at a hearing or at the trial of this case.

UEST FOR PRODUCTION NO. 58
All documents relating to any expert or potential expert engaged by Overture or with
whom Overture has consulted concerning a ny matter related to this action.

REQUEST FOR PRODUCTION NO. 59
All docum~nts that may be used as e xhibits at any hearing in this case , including, but not
limited to ,

a Markman or claim constructio n hearing and trial.

REQUEST FOR PRODUCTION NO. 60
All documents sufficient to complet ely describe Overture s electronic mail, electronic
mail backup, and electronic mail deletion p olicies.

REQUEST FOR PRODUCTION NO. 61
All documents identified or used in responding to Google s First Set of Interrogatories to
Plaintiff Overture, Inc.

REQUEST FOR PRODUCTION NO. 62
All documents relating to the level of knowledge, schooling, experience, expertise, or relevant technical information of a person h aving ordinary skill in the art to which any of the
inventions claimed in the ' 361 patent pertai

REQUEST FOR PRODUCTION NO. 63
All documents relating to the meaning of the claims of the ' 361 patent, including all documents relating to any communications between you and any other person or entity relating
to the meaning of the claims , and any internal notes, analysis, or studies relating to the meaning
of the claims.

REQUEST FOR PRODUCTION NO. 64
All documents relating to any skepti cism or disbelief expressed by anyone regarding any

ofthe subject matter claimed in the ' 361 patent.

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REQUEST FOR PRODUCTION NO. 65
All documents relating to sales pres entations as to the methods, operations, or features of
Overture s Paid Listing System.

REQUEST FOR PRODUCTION NO. 66
All documents relating to training 0 f Overture employees and/or Overture customers as to
the methods, operations, or features of Overture s Paid Listing System.

UEST FOR PRODUCTION NO. 67
All documents relating to the perro rmance of Overture s Paid Listing System, including
without limitation, quality control or reliabi lity evaluations and reports, and performance
evaluations and reports.

REQUEST FOR PRODUCTION NO. 68
All documents relating to the testing of Overture s Paid Listing System.

REQUEST FOR PRODUCTION NO. 69
All documents that reflect or relate t0 projections of expected revenues , net profits
and/or sales volume for Overture s Paid Lis ting Systems.

REQUEST FOR PRODUCTION NO. 70
Documents sufficient to identify all customers or potential customers for Overture s Paid
Listing System.

UEST FOR PRODUCTION NO.
Documents sufficient to identify the titles and responsibilities of all persons who
participated in the conception , reduction to practice and/or design, development , and engineering

of any commercial embodiment of the invention claimed in the ' 361 patent.

REQUEST FOR PRODUCTION NO. 72
All documents relating to the identi fication , selection, or determination of the inventors
of the ' 361 patent.

REQUEST FOR PRODUCTION NO. 73
All documents relating to ownership, title, transfer, licensing, or assignment of the ' 361
patent , including without limitation all doc uments concerning Overture s claim of ownership of

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the ' 361 patent, all documents relating to any ownership interest that anyone other than Overture
has in the ' 361 patent, and all documents relating to any transfer of ownership interest in the ' 361

patent.

REQUEST FOR PRODUCTION NO. 74
All draft patent applications of the ' 361 patent or any u.S. or foreign patents or patent
applications that disclose or claim any of the subject matter disclosed or claimed in the ' 361

patent.

REQUEST FOR PRODUCTION NO. 75
All documents relating to any decision as to what prior art references to cite or not to cite
during the prosecution of the ' 361 patent or any u.S. or foreign patents or patent applications
that disclose or claim any of the subject matter disclosed or claimed in the ' 361 patent.

REQUEST FOR PRODUCTION NO. 76
All documents relating to publications , papers, presentations, or speeches authored in

whole or in party by Overture or any of its employees concerning any of the subject matter
claimed in the ' 361 patent.

REQUEST FOR PRODUCTION NO. 77
All documents provided by Overture at any conference , symposium seminar, exhibition
convention , or trade show at which any product, device, apparatus, or method that allegedly
embodies , or falls within the scope of, any of the subject matter claimed in the ' 361 patent was

discussed , referred to, advertised, displayed, demonstrated, or shown, including without

limitation any such advertisements , brochures, articles, pamphlets, price lists, product
specifications , or other promotional or marketing material.

REQUEST FOR PRODUCTION NO. 78
All documents relating to any abandonment , suppression, or concealment, of any ofthe
inventions claimed in the ' 361 patent.

REQUEST FOR PRODUCTION NO. 79
All documents relating to any communication between Overture any other person or
entity relating to the ' 361 patent, including without limitation , any demand letters, notice letters

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presentations , claim charts, licenses, or correspondence in which any person or entity was
accused of,

notified of, or charged with infringing or possibly infringing the ' 361 patent.

REQUEST FOR PRODUCTION NO. 80
All documents relating to any communications with any audit form or auditor concerning
the ' 361 patent.

REQUEST FOR PRODUCTION NO.
All documents relating to proposed, contemplated, or actual statements or explanations to
anyone , including but not limited to customers, or prospective customers, regarding this
litigation.

REQUEST FOR PRODUCTION NO. 82
All discussions relating to any meetings of Overture s board of directors which discuss or
mention the ' 361 patent, including without limitation minutes of any board meetings at which the

361 patent was discussed or mentioned.

REQUEST FOR PRODUCTION NO. 83
All documents relating to the amount of damages adequate to compensate Overture for
Google s alleged infringement of the ' 361 patent.

REQUEST FOR PRODUCTION NO. 84
Any and all documents relating to any patent or patent application issued to , owned by or
assigned to Overture, including but not limited to the ' 361 patent, and including documents

relating to any communication with any third party about any specific Overture patent or patent
application or about Overture patents or patent applications in general.

REQUEST FOR PRODUCTION NO. 85
All documents provided to any prospective investor in Overture , prospective acquiror of
Overture , prospective lender to Overture, or any other kind of prospective business partner with

Overture , in order to satisfy any due diligence obligations, including specifically any reports

descriptions or analysis of pending or contemplated litigation or of Overture s patents or other
intellectual property.

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UEST FOR PRODUCTION NO. 86:
All audits ,

analyses , evaluations, reviews or other reports relating to Overture s patents or

other intellectual property.

UEST FOR PRODUCTION NO. 87:
All documents relating to any request or suggestion made by Overture to a third party
that such third party might or should become a licensee to the ' 361 patent.

UEST FOR PRODUCTION NO. 88:
Any and all documents relating to or which constitute prior art to ' 361 patent.

UEST FOR PRODUCTION NO. 89:
Any and all documents relating to any investigation or analysis of whether any product
made , used or sold by Google, any process or method used by Google, or any service directly or

indirectly provided by Google, infringes the ' 361 patent.

UEST FOR PRODUCTION NO. 90:
Any and all documents relating to any perceived need or belief on the part of Overture

that Google might need a license to any of Overture s patents, including but not limited to the
361 patent.

UEST FOR PRODUCTION NO. 91:
Any and all documents relating to any opinions, written or oral, as to the patentability,

validity, novelty, obviousness, invalidity, enforceability, non-enforceability, infringement, or
non- infringement of any claim ofthe ' 361 patent, or to the research, investigation or preparation

of any such opinions, or which were considered in formulating any such opinions.

UEST FOR PRODUCTION NO. 92:
Any and all documents relating to any actual or proposed agreement between Overture

and any third party concerning Overture s Paid Listing Systems.

UEST FOR PRODUCTION NO. 93:
Any and all documents relating to any potential agreement between Overture and Google

negotiations intended to lead to such an agreement, including documents relating to internal
Overture discussions relating to any such negotiations , or proposed agreement, or any Google

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technology or product.

UEST FOR PRODUCTION NO. 94:
Any and all documents relating to any report, evaluatIOn, review or study concerning or

mentioning the competitive standing or market share of Google compared to Overture.

UEST FOR PRODUCTION NO. 95:
Any and all documents relating to any report, evaluation, review, or study concerning or
mentIOning the habits or preferences of customers in using or choosing among any product or

service offered or developed by Google.

UEST FOR PRODUCTION NO. 96:
Any and all documents relating to any report, evaluation, review, or study concerning or

mentioning the habits or preferences of customers in using or choosing among any product or
service offered or developed by Overture.

UEST FOR PRODUCTION NO. 97:
Any and all documents relating to any report, evaluation, review, or study concerning or
mentioning the features, strengths or weaknesses of any product or service offered or developed

by Overture In companson to any product or service offered or developed by Google.

UEST FOR PRODUCTION NO. 98:
Any and all documents relating to any lost profits or price erosion claimed by Overture as
a result of any alleged infringement by Google of the ' 361 patent.

UEST FOR PRODUCTION NO. 99:
Any and all documents relating to any report, evaluation, review, or study concerning the
development of or growth in any market for any invention embodi~d by any claim in the
patent.
' 361

UEST FOR PRODUCTION NO. 100:
Any and all documents presented to or used in connection with any presentation to
Overture s internal personnel, including without limitation Overture s management personnel

relating to Overture s Paid Listing Systems.

UEST FOR PRODUCTION NO. 101:

297555.

GOOGLE INe.' S FIRST REQUEST FOR PRODUCTION OF DOCUMENTS CASE NO. C 02-01991 CRB

Case 3:02-cv-01991-JSW

Document 82-10

Filed 08/11/2003

Page 18 of 21

Documents sufficient to show the names of all individuals employed by Overture from
1998 to the present.
REQUEST FOR PRODUCTION NO.

101

All documents relating to the prosecution of U.S. Patent Application Serial Number
09/322 677.

Dated: September 20 , 2002

KEKER & V AN NEST, LLP

By:

.J:

~t..
EV

Attorneys for Defendant GOOGLE INc.

297555.

. GOOGLE INe.' S FIRST REQUEST FOR PRODUCTION OF DOCUMENTS CASE NO. C 02-01991 CRB

?.
Case 3:02-cv-01991-JSW Document 82-10

,//
Page 19 of 21

Filed 08/11/2003

PROOF OF SERVICE
I am employed in the City and County of San Francisco, State of California in the office
of a member of the bar of this court at whose direction the following service was made. I am

over the age of eighteen years and not a party to the within action. My business address is Keker & Van Nest, LLP, 710 Sansome Street, San Francisco, California 94111.
On September 20, 2002 , I served the following document(s):

DEFENDANT GOOGLE INC. S FIRST REQUEST FOR PRODUCTION OF DOCUMENTS TO PLAINTIFF OVERTURE SERVICES, INC.
by FACSIMILE TRANSMISSION (IKON) AND UNITED STATES MAIL, by placing a true and correct copy with IKON Office Solutions, the firm s in- house facsimile transmission center provider, for transmission on this date. The transmission was reported as complete and without error. Additionally, the original was placed in a sealed envelope addressed as shown below. I am readily familiar with the practice of Keker & Van Nest, LLP for collection and processing of correspondence for mailing. According to that practice, items are deposited with the United States Postal Service at San Francisco, California on that same day with postage thereon fully prepaid. I am aware that, on motion of the party served, service is presumed invalid if the postal cancellation date or the postage meter date is more than one day after the date of deposit for mailing stated in this affidavit.

Jack C. Berenzweig, Esq. Brinks Hofer Gilson & Lione NBC Tower - Suite 3600 455 N. Cityfront Plaza Drive Chicago , IL 60611 Facsimile No. : [phone]

Anthony 1. Fenwick, Esq.
Latham & Watkins

135 Commonwealth Drive Menlo Park , CA 94025
Facsimile No. :
(650) 463- 2600

Executed on September 20, 2002, at San Francisco, California.
, Gabrielle J. Thormann, declare under penalty of peIjury under the laws of the State of California that the above is true and correct.

r~

. t-tfl:c:

~.a-~--:rvr1

Gabriel e J. Thormann

297555.

GOOGLE INe.' s FIRST REQUEST FOR PRODUCTION OF DOCUMENTS CASE NO. C 02-01991 CRB

** * * * * ** * ** * * *** * * * * ** ** ****** * ** ** *** *** ** *** ** * * * * * ***

***

09/20/02 ase 05 FAX [phone] C 16: 3:02-cv-01991-JSW

KEKE 82-10 Document R & VAN

NEST Filed

08/11/2003

Page 20 of 21 141001

MULTI TX/RX REPORT
TX/RX NO PGS. TX/RX INCOMPLETE TRANSACTION OK
ERROR INFORMATION

4175

( 1) (2 )

913123214299#5784 916504632600#5784

I-AW of'FICES

KEKER &. V AN NEST
LLP
710 SANSOM&: 5,",U!:ET :ilAt-IP'RANCI8CO, CA. 941 11- 1704

TELEPHONE [phone] f'"AA (415) 397-71BI!I

FACSIMilE TRANSMISSION COVER SHEET
September 20 , 2002

Tele hone
Jack C. Berenzwejg. Esq. Brinks Hofer Gilson & Lione
Anthony 1. Fenwick, Esq.
Latham & Watkins

Facsimile
(312) 3214299

[phone]

[phone]

[phone]

From
Andrea C. Evans, Esq.

Tele hone
[phone]

Code 5784/gjt

Re Overture v. Google
Number of Pages (Including ~ver);

.3

ORIGINAL WILL FOLLOW THIS TRANSMISSION

COMMENTS
Please see attached:
Defendant Google Inc. ' s First Set Of Interrogatories To Plaintiff Overture Services, Inc.
Defendant Google Inc- ' s First Request For Production Of Documents To Plaintiff Ovexture Services, Inc.

Google Inc. s Notice Of Deposition Of Overture Services, Inc. Pursuant To Fed-no ,-,,-- no

..."rn"'L:'\

Case 3:02-cv-01991-JSW

Document 82-10

Filed 08/11/2003

Page 21 of 21

LAW OFFICES

KEKER & VAN NEST
LLP
7\0 SANSOME STREET SAN FRANCISCO, CA 94\ \ \- \704 TELEPHONE (4\S) 391-5400
FAX (4\5) 397-7\88

FACSIMILE TRANSMISSION COVER SHEET
September 20, 2002

Tele hone
Jack C. Berenzweig, Esq. Brinks Hofer Gilson & Lione
[phone]

Facsimile
[phone]

Anthony 1. Fenwick, Esq. Latham & Watkins

[phone]

[phone]

From Andrea C. Evans , Esq.

Tele hone [phone]

Code 5784/gjt

Re Overture v. Google
Number of Pages (Including Cover):
ORIGINAL Will

FOllOW THIS TRANSMISSION
COMMENTS

Please see attached:
Defendant Google Inc. ' s First Set Of Interrogatories To Plaintiff Overture

Services , Inc.
Defendant Google Inc. ' s First Request For Production Of Documents To Plaintiff Overture Services , Inc.
Google Inc. ' s Notice Of Deposition Of Overture Services, Inc. Pursuant To Fed. R. Civ. P. 30(B)(6)

Operator

Time Sent

IF YOU ENCOUNTER ANY DIFFICULTIES RECEIVING THIS TRANSMISSION PLEASE CAll [phone] OR [phone]
The infonnation contained in this facsimile transmission is legally privileged and confidential and intended only for the use of the individual or entity named above. If the reader of this message is not the intended recipient, or the employee or agent responsible for delivering it to the intended recipient, you are hereby notified that any dissemination , distribution or copying of thi communication is strictly prohibited. If you receive this communication in error, please notify us immediately by telephone, and retum the original transmission to us at the above address via the U.S. Postal Service. Thank you.

290088.