Digital Envoy Inc., v. Google Inc.,

Filing 23

Digital Envoy Inc., v. Google Inc.,

Doc. 23

Case 5:04-cv-01497-RS

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Filed 08/09/2004

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DAVID H. KRAMER, State Bar No. 168452 WILSON SONSINI GOODRICH & ROSATI Professional Corporation 650 Page Mill Road Palo Alto, CA 94304-1050 Telephone: [phone] Facsimile: [phone] Attorneys for Defendant/Counterclaimant Google Inc. P. CRAIG CARDON BRIAN R. BLACKMAN KENDALL M. BURTON SHEPPARD, MULLIN, RICHTER & HAMPTON LLP Four Embarcadero Center, 17th Floor San Francisco, CA 94111-4106 Telephone: [phone] Facsimile: [phone] Attorneys for Plaintiff/Counterdefendant Digital Envoy, Inc. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION DIGITAL ENVOY, INC., Plaintiff/Counterdefendant, v. GOOGLE INC., Defendant/Counterclaimant. ) ) ) ) ) ) ) ) ) ) ) CASE NO.: C 04 01497 RS JOINT CASE MANAGEMENT STATEMENT AND [PROPOSED] ORDER

Pursuant to Civil Local Rule 16-9(a) and Fed. R. Civ. P. 26(f), Digital Envoy, Inc. ("Digital Envoy") and Google Inc. ("Google") jointly submit this Joint Case Management Statement and [Proposed] Order.

JOINT CASE MANAGEMENT STATEMENT AND [PROPOSED] ORDER CASE NO: C 04 01497 RS
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Case 5:04-cv-01497-RS

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I.

DESCRIPTION OF THE CASE A. Brief Description of the Events Underlying the Action

This is a dispute regarding the scope of a license agreement and the consequences of a party allegedly exceeding the scope of that license. Digital Envoy developed technology that assists users in making educated guesses about the approximate geographic location of visitors to websites. Google licensed this technology from Digital Envoy in November 2000. Digital Envoy contends that Google's use of Digital Envoy's technology exceeded the authorization contained in the parties' November 2000 agreement between the parties and the amendments thereto (the "Agreement"). Digital Envoy contends that Google's allegedly unauthorized use of Digital Envoy technology constitutes a misappropriation of trade secrets, unfair competition under federal, state and common law and unjust enrichment. Google denies Digital Envoy's claims and maintains that the Agreement permits its uses of Digital Envoy's technology. Separately, Google contends that Digital Envoy's conduct in originally bringing this suit in Georgia federal court was a breach of the forum selection clause contained in the Agreement. B. Principal Factual Issues In Dispute

The factual issues in dispute may include: (1) the parties' intent with respect to the scope of the license in the Agreement at the time it was signed; (2) whether Google's use of Digital Envoy's technology was authorized by the Agreement; (3) whether either party was damaged by the conduct of the other; and (4) assuming a party was damaged, the measure and extent of such damages. C. Principal Legal Issues In Dispute

The parties dispute whether: (1) Google's conduct constitutes a misappropriation of trade secrets; (2) Google's conduct constitutes a violation of federal, state, and/or common law unfair business practices; (3) Google was unjustly enriched as a result of its conduct; (4) Digital Envoy has breached the forum selection clause in the Agreement; (5) Google is entitled to a declaratory judgment that it has not exceeded the scope of, or otherwise breached, the Agreement; (6) Google is entitled to a declaratory judgment that it has not misused Digital Envoy's intellectual
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property; (7) the doctrines of laches, waiver, estoppel, accord and satisfaction, or a statute of limitations precludes any recovery by Digital Envoy; (8) Digital Envoy has impliedly licensed Google's conduct through a course of dealing; (9) Digital Envoy's claims are preempted in whole or in part; (10) the limitation of liability clause in the Agreement limits either party's recovery, if any; (11) either party is entitled to damages and, if so, the measure of such damages; (12) Digital Envoy is entitled to entitled to recover treble damages, punitive damages or its attorneys' fees from Google; and (13) Digital Envoy is entitled to an injunction against Google. D. Other Unresolved Factual Issues

The parties are unaware of any additional factual issues in dispute at this time. E. Parties Not Served

All of the Defendants have been served at this time. F. Amendments / Additional Parties to be Joined

The parties do not anticipate joinder of any additional parties. Any amendments to the pleadings will be done by August 27, 2004 (see discovery schedule--Section III--below). G. Consent to Assignment of Magistrate Judge for Trial

The parties have consented to assignment of this case to a magistrate judge for trial. II. ALTERNATIVE DISPUTE RESOLUTION The parties have considered alternative dispute resolution ("ADR") pursuant to Civil Local Rule 16-8(b). The parties' Rule 16-8(b) ADR certifications are filed concurrently with this Joint Case Management Statement. The parties have agreed to pursue ADR through a private process, such as Judicial Arbitration & Mediation Services ("JAMS"), by December 15, 2004. III. DISCOVERY A. Proposed Schedules: Digital Envoy proposes the following schedule: ACTION Initial disclosures under Fed. R. Civ. P. 26 Last day to amend/join additional parties
JOINT CASE MANAGEMENT STATEMENT AND [PROPOSED] ORDER CASE NO: C 04 01497 RS

DUE DATE August 4, 2004 August 27, 2004 3

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ACTION Fact discovery cut-off Exchange of expert reports Exchange of rebuttal expert reports Expert discovery cut-off Dispositive motions cutoff

DUE DATE December 14, 2005 January 4, 2005 February 4, 2005 February 25, 2005 Motion: March 15, 2005 Opposition: April, 14, 2005 Reply: April 28, 2005 Hearing: May 10, 2005

Pre-trial conference Trial Google proposes the following schedule: ACTION Initial disclosures under Fed. R. Civ. P. 26 Last day to amend/join additional parties Fact discovery cut-off (re: license defense) Motion for Summary Judgment (re: license defense)

June 2005 July 2005

DUE DATE August 4, 2004 August 27, 2004 October 15, 2004 Motion: November 19, 2004 Opposition: December 23, 2004 Reply: January 21, 2005 Hearing: February 9, 2005 Upon denial of Motion for Summary Judgment (if applicable). May 20, 2005 June 24, 2005 July 22, 2005 August 19, 2005 September 23, 2005 November 2005 4
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Commencement of fact discovery re: liability and damages Fact discovery cut-off: Exchange of expert reports Exchange of rebuttal expert reports Expert discovery cut-off Dispositive motion cutoff Pre-trial conference
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ACTION

DUE DATE December 2005

Other Discovery Issues 1. Interrogatories

The parties agree to the limits on interrogatories set forth in the Federal Rules of Civil Procedure. Each party reserves the right to seek leave of the Court to obtain additional interrogatories. 2. Depositions

The parties agree to the limits on depositions set forth in the Federal Rules of Civil Procedure. Each party reserves the right to seek leave of the Court to obtain additional deposition days or hours. 3. Bifurcation of Discovery a. Google's Position

Google submits that it would be appropriate to bifurcate discovery in this matter, allowing only for discovery concerning the parties' agreement and Google's license defense in a brief, initial stage. Google expects such bifurcation would allow the parties to avoid substantial and potentially unnecessary discovery expense, as it believes it will prevail on a motion for summary judgment based on its license defense on the issue at the close of the first phase of discovery. Should Digital Envoy's claims survive Google's summary judgment motion, the parties could then take up discovery on Digital Envoy's liability and damages theories. As Digital Envoy has not agreed to such a stipulation, Google will be filing a motion seeking to bifurcate discovery in this manner. b. Digital Envoy's Position

Digital Envoy does not consent to bifurcating discovery and opposes Google's request to impose such a restriction on the discovery process. Bifurcating discovery will add to discovery expense due to the increased length of discovery and multiple depositions of each witness since there would be no clear demarcation between license defense witnesses and witnesses bearing on
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the remaining issues in this case. Bifurcating discovery will delay Digital Envoy's access to judicial resolution of its claims without substantial justification. Bifurcating discovery will also invite additional disputes between the parties regarding whether any particular interrogatory, request for production or deposition question falls within the bifurcated discovery boundary, and create an additional layer of consideration during the initial dispositive motion phase as to whether Digital Envoy was given a fair opportunity during the restricted discovery period to defend against the motion. Google's position serves its own purpose but does not promote the efficient administration of justice and is prejudicial to Digital Envoy. IV. TRIAL SCHEDULE A. Trial Date

Google believes that this matter should be tried before a jury in December 2005. Digital Envoy believes that this matter should be tried before a jury in July 2005. B. Length of Trial

The parties anticipate a two-week trial. V. MISCELLANEOUS PROVISIONS C. Service of Court Filings

The parties agree to serve all pleadings and other papers on one another by overnight mail and to serve briefs and affidavits, exclusive of exhibits, by facsimile. Google agrees to serve Digital Envoy's Atlanta counsel via facsimile and overnight mail and to serve Digital Envoy's California counsel via facsimile. D. Modification To This Schedule

All schedules proposed herein are premised on discovery proceeding expeditiously and without protracted disputes over production of documents and witnesses. In the event of such protracted disputes, all parties reserve their right to seek to modify the schedules set forth herein. E. Protective Order

The parties agree to submit a Stipulation and [Proposed] Order governing production of confidential information produced in this case.

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Respectfully Submitted: Dated: August 9, 2004 WILSON SONSINI GOODRICH & ROSATI Professional Corporation David H. Kramer 650 Page Mill Road Palo Alto, CA 94304 Telephone: [phone] Facsimile: [phone] /s/ David H. Kramer David H. Kramer Attorneys for Google Inc. Dated: August, 9, 2004 SHEPPARD, MULLIN, RICHTER & HAMPTON LLP P. Craig Cardon Brian R. Blackman Kendall M. Burton Four Embarcadero Center, 17th Floor San Francisco, CA 94111-4106 Telephone: [phone] Facsimile: [phone] MCGUIRE WOODS, L.L.P Timothy H. Kratz (admitted Pro Hac Vice) Luke Anderson (admitted Pro Hac Vice) 1170 Peachtree Street, N.E., Suite 2100 Atlanta, Georgia 30309 Telephone: [phone] Facsimile: [phone] /s/ P. Craig Cardon P. Craig Cardon Attorneys for Digital Envoy, Inc. [PROPOSED] ORDER The Joint Case Management Statement and Proposed Order is hereby adopted as the Case Management Order for this case. By: By:

DATED:

Honorable Richard Seeborg United States Magistrate Judge

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JOINT CASE MANAGEMENT STATEMENT AND [PROPOSED] ORDER CASE NO: C 04 01497 RS

CERTIFICATION I, David H. Kramer, am the ECF User whose identification and password are being used to file this Joint Case Management Statement and [Proposed] Order. In compliance with General Order 45.X.B, I hereby attest that both parties have concurred in this filing.

DATED: August 9, 2004

WILSON SONSINI GOODRICH & ROSATI Professional Corporation

By:

/s/ David H. Kramer David H. Kramer Attorneys for Google Inc

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