Personalized User Model LLP v. Google Inc.

Filing 237

NOTICE of Issuance of Subpoena upon Kemal Sonmez by Google Inc. (Moore, David)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
PERSONALIZED USER MODEL, L.L.P.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.
GOOGLE, INC.
Counterclaimant,
v.
PERSONALIZED USER MODEL, LLP and
YOCHAI KONIG
Counterdefendants.

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C.A. No. 09-525-LPS
JURY TRIAL DEMANDED

NOTICE OF SUBPOENA
PLEASE TAKE NOTICE that, pursuant to Rule 45 of the Federal Rules of Civil
Procedure, defendant Google Inc., will serve the attached subpoena (Exhibit 1) in the abovereferenced action.
POTTER ANDERSON & CORROON LLP
OF COUNSEL:
Charles K. Verhoeven
David A. Perlson
Joshua Lee Sohn
Margaret Pirnir Kammerud
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
50 California St.
San Francisco, CA 94111
Tel.: [phone]

By: /s/ David E. Moore
Richard L. Horwitz (#2246)
David E. Moore (#3983)
Hercules Plaza, 6th Floor
1313 N. Market Street
Wilmington, DE 19801
Tel: [phone]
[e-mail]
[e-mail]
Attorneys for Defendant Google Inc.

-and-

Andrea Pallios Roberts
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
555 Twin Dolphin Drive, Suite 560
Redwood Shores, CA 94065
Tel.: [phone]
Dated: April 5, 2011
1007702 / 34638

AO 88A (Rev. 06/09) Subpoena to Testify at a Deposition in a Civil Action

UNITED STATES DISTRICT COURT
for the
District of Oregon
Personalized User Model, LLP
)

NathanV.

)
)

Google, Inc.

Civil Action No. . A . No. 09-525 (LPS)

)

)
)

Defendant

(If the action is pending in another district, state where:
U.S.D.C. of Delaware

SUBPOENA TO TESTIFY AT A DEPOSITION IN A CIVIL ACTION

To: Kemal Sonmez, 520 NE Russell Street, Portland, OR 97212-3826 [phone]

Testimony: YOU ARE COMMANDED to appear at the time, date, and place set forth below to testify at a
deposition to be taken in this civil action. If you are an organization that is not a party in this case, you must designate
one or more officers, directors, or managing agents, or designate other persons who consent to testify on your behalf
about the following matters, or those set forth in an attachment:

Place: Teach Reporting

Date and Time:

1500 SW First Avneue, Suite 985
Portland, OR 97201

April 26, 2011

9:00 a.m.

The deposition will be recorded by this method: Video and St enographer
Production: You, or your representatives, must also bring with you to the deposition the following documents,
electronically stored information, or objects, and permit their inspection, copying, testing, or sampling of the
materiaLSEE EXHIBIT "A" ATTACHED HERETO
Date:
April 19, 2011
Location: Quinn Emanuel Urquhart & Sullivan, LLP
555 Twin Dolphin Drive, 5th Floor, Redwood Shores, CA 94065

The provisions of Fed. R. Civ. P. 45(c), relating to your protection as a person subject to a subpoena, and Rule
45 (d) and (e), relating to your duty to respond to this subpoena and the potential consequences of not doing so, are
attached.
Date: 4/4/2011
CLERK OF COURT
Signature of Clerk or Deputy Clerk

Attorney's signature

Andrea Pallios Roberts

The name, address, e-mail, and telephone number of the attorney representing (name of party)
Google, Inc.
, who issues or requests this subpoena, are:
Quinn Emanuel Urquhart & Sullivan, LLP
Email: [e-mail]
555 Twin Dolphin Drive, 5th Floor, Redwood Shores, CA 94065, [phone]
AO-88A

AO 88A (Rev. 06/09) Subpoena to Testify at a Deposition in a Civil Action (Page 2)

Civil Action No.

C.A. No. 09-525 (LPS)

PROOF OF SERVICE
(This section should not be filed with the court unless required by FecL R. Civ. P. 45.)
This subpoena for (name of individual and title, if any) Kemal Sonmez
was received by me on (date)
I served the subpoena by delivering a copy to the named individual as follows:
on (date)

;

or

I returned the subpoena unexecuted because:
Unless the subpoena was issued on behalf of the United States, or one of its officers or agents, I have also
tendered to the witness fees for one day's attendance, and the mileage allowed by law, in the amount of

My fees are $

for travel and $

for services, for a total of $

I declare under penalty of perjuiy that this information is true.
Date:
Server's signature
Printed name and title

Server's address

Additional information regarding attempted service, etc:

AO 88A (Rev. 06/09) Subpoena to Testify at a Deposition in a Civil Action (Page 3)

Federal Rule of Civil Procedure 45 (c), (d), and (e) (Effective 12/1/07)
(c) Protecting a Person Subject to a Subpoena.
(1) Avoiding Undue Burden or Expense; Sanctions. A party or
attorney responsible for issuing and serving a subpoena must take
reasonable steps to avoid imposing undue burden or expense on a
person subject to the subpoena. The issuing court must enforce this
duty and impose an appropriate sanction — which may include lost
earnings and reasonable attorney's fees — on a party or attorney
who fails to comply.
(2) Command to Produce Materials or Permit Inspection.
(A)Appearance Not Required. A person commanded to produce
documents, electronically stored information, or tangible things, or
to permit the inspection of premises, need not appear in person at the
place of production or inspection unless also commanded to appear
for a deposition, hearing, or trial.
(B) Objections. A person commanded to produce documents or
tangible things or to permit inspection may serve on the party or
attorney designated in the subpoena a written objection to
inspecting, copying, testing or sampling any or all of the materials or
to inspecting the premises — or to producing electronically stored
information in the form or forms requested. The objection must be
served before the earlier of the time specified for compliance or 14
days after the subpoena is served. If an objection is made, the
following rules apply:
(i) At any time, on notice to the commanded person, the serving
party may move the issuing court for an order compelling production
or inspection.
(ii) These acts may be required only as directed in the order, and
the order must protect a person who is neither a party nor a party's
officer from significant expense resulting from compliance.
(3) Quashing or Modifying a Subpoena.
(A) When Required. On timely motion, the issuing court must
quash or modify a subpoena that:
(i) fails to allow a reasonable time to comply;
(ii) requires a person who is neither a party nor a party's officer
to travel more than 100 miles from where that person resides, is
employed, or regularly transacts business in person — except that,
subject to Rule 45(c)(3)(B)(iii), the person may be commanded to
attend a trial by traveling from any such place within the state where
the trial is held;
(iii) requires disclosure of privileged or other protected matter, if
no exception or waiver applies; or
(iv) subjects a person to undue burden.
(B) When Permitted. To protect a person subject to or affected by
a subpoena, the issuing court may, on motion, quash or modify the
subpoena if it requires:
(i) disclosing a trade secret or other confidential research,
development, or commercial information;
(ii) disclosing an unretained expert's opinion or information that
does not describe specific occurrences in dispute and results from
the expert's study that was not requested by a party; or
(iii) a person who is neither a party nor a party's officer to incur
substantial expense to travel more than 100 miles to attend trial.
(C) Specibling Conditions as an Alternative. In the circumstances
described in Rule 45(c)(3)(B), the court may, instead of quashing or
modifying a subpoena, order appearance or production under
specified conditions if the serving party:
(i) shows a substantial need for the testimony or material that
cannot be otherwise met without undue hardship; and
(ii) ensures that the subpoenaed person will be reasonably
compensated.

(d) Duties in Responding to a Subpoena.
(1) Producing Documents or Electronically Stored Information.
These procedures apply to producing documents or electronically
stored information:
(A)Documents. A person responding to a subpoena to produce
documents must produce them as they are kept in the ordinary
course of business or must organize and label them to correspond to
the categories in the demand.
(B) Form for Producing Electronically Stored Information Not
Specified. If a subpoena does not specify a form for producing
electronically stored information, the person responding must
produce it in a form or forms in which it is ordinarily maintained or
in a reasonably usable form or forms.
(C)Electronically Stored Information Produced in Only One
Form. The person responding need not produce the same

electronically stored information in more than one form.
(D) Inaccessible Electronically Stored Information. The person
responding need not provide discovery of electronically stored
information from sources that the person identifies as not reasonably
accessible because of undue burden or cost. On motion to compel
discovery or for a protective order, the person responding must show
that the information is not reasonably accessible because of undue
burden or cost. If that showing is made, the court may nonetheless
order discovery from such sources if the requesting party shows
good cause, considering the limitations of Rule 26(b)(2)(C). The
court may specify conditions for the discovery.

(2) Claiming Privilege or Protection.
(A)Information Withheld. A person withholding subpoenaed
information under a claim that it is privileged or subject to
protection as trial-preparation material must:
(i) expressly make the claim; and
(ii) describe the nature of the withheld documents,
communications, or tangible things in a manner that, without
revealing information itself privileged or protected, will enable the
parties to assess the claim.
(B) Information Produced. If information produced in response to a
subpoena is subject to a claim of privilege or of protection as trialpreparation material, the person making the claim may notify any
party that received the information of the claim and the basis for it.
After being notified, a party must promptly return, sequester, or
destroy the specified information and any copies it has; must not use
or disclose the information until the claim is resolved; must take
reasonable steps to retrieve the information if the party disclosed it
before being notified; and may promptly present the information to
the court under seal for a determination of the claim. The person
who produced the information must preserve the information until
the claim is resolved.
(e) Contempt. The issuing court may hold in contempt a person
who, having been served, fails without adequate excuse to obey the
subpoena. A nonparty's failure to obey must be excused if the
subpoena purports to require the nonparty to attend or produce at a
place outside the limits of Rule 45(c)(3)(A)(ii).

EXHIBIT A

EXHIBIT A

I.

DEFINITIONS
1.

"PLAINTIFF," or "PERSONALIZED USER MODEL," shall mean plaintiff

Personalized User Model LLP, and its agents, officers, employees, representatives and attorneys,
and any and all of its predecessor or successor companies, corporations or business entities.
2.

"SRI," shall mean SRI International, formerly known as the Stanford Research

Institute, and includes any officers, directors, partners, associates, employees, agents, attorneys,
subsidiaries, affiliates, divisions, successors, predecessors, and any other related business
entities.
3.

"YOU" or "YOUR" shall mean Kemal Sonmez.

4.

"YOCHAI KONIG," shall mean the named inventor of U.S. Patent Nos.

6,981,040, 7,320,031, and 7,685,276, and former employee of SRI.
5.

"DOCUMENT" or "DOCUMENTS" shall include all written, graphic or

otherwise recorded material, including without limitation, microfilms or other film records or
impressions, tape recordings or computer cards, floppy disks or printouts, any and all papers,
photographs, films, recordings, memoranda, books, records, accounts, communications, letters,
telegrams, correspondence, notes of meetings, notes of conversations, notes of telephone calls,
inter-office memoranda or written communications of any nature, recordings of conversations
either in writings or upon any mechanical or electrical recording devices, including electronic
mail ("e-mail"), notes, papers, reports, analyses, invoices, canceled checks or check stubs,
receipts, minutes of meetings, time sheets, diaries, desk calendars, ledgers, schedules, licenses,
financial statements, telephone bills, logs, and any differing versions of any of the foregoing,
whether so denominated, formal, informal or otherwise, as well as copies of the foregoing which
differ in any way, including by the addition of handwritten notations or other written or printed
matter of any nature, from the original. The foregoing specifically includes information stored in
a computer database and capable of being generated in documentary form, such as electronic
mail.

01980.51575/4074497.1

1

6.

"THING" as used herein means any physical object other than a "DOCUMENT."
(a)

"PERSON" refers to any individual, corporation, proprietorship,

association, joint venture, company, partnership or other business or legal entity, including
governmental bodies and agencies.
7.

'RELATE TO" and "RELATING TO" shall mean relating to referring to,

concerning, mentioning, reflecting, pertaining to, evidencing, involving, describing, discussing,
commenting on, embodying, responding to, supporting, contradicting, or constituting (in whole
or in part), as the context makes appropriate.
8.

The "PATENTS-IN-SUIT" shall mean U.S. Patent Nos. 6,981,040, and

7,685,276.
9.

The term "RELATED PATENTS/APPLICATIONS" shall mean (1) any United

States or foreign patent or patent application related to the PATENTS-IN-SUIT by way of
subject matter or claimed priority date, (2) all parent, grandparent or earlier, divisional,
continuation, continuation-in-part, provisional, reissue, reexamination, and foreign counterpart
patents and applications of thereof, and/or (3) any patent or patent application filed by one of
more of the same applicant(s) (or his or her assignees) that refers to any of (1) or (2) herein.
II.

INSTRUCTIONS
1.

If any portion of a DOCUMENT or THING is responsive to a request, the entire

DOCUMENT or THING shall be produced, redacting only privileged material if any.
2.

YOU are to produce the original and each non-identical copy of each

DOCUMENT or THING requested herein that is in YOUR possession, custody or control.
3.

DOCUMENTS produced pursuant to these requests shall be produced in the

original files and shall not be shuffled or otherwise rearranged. DOCUMENTS which were
stapled, clipped, or otherwise fastened together shall be produced in that form.
4.

THINGS produced pursuant to these requests shall be produced in their present

form and shall not be changed or modified in any way.

01980.51575/4074497.1

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5.

In the event that any DOCUMENT or THING called for by these requests or

subsequent requests is to be withheld on the basis of a claim of privilege or immunity from
discovery, that DOCUMENT or THING is to be identified by stating:
(a)

the author(s), addressee(s) and any indicated or blind copyee(s);

(b)

the DOCUMENT's or THING's date, number of pages and attachments or

(c)

the subject matter(s) of the document;

(d)

the nature of the privilege or immunity asserted; and

(e)

any additional facts upon which you would base your claim of privilege or

appendices;

immunity.
6.

In the event that any DOCUMENT or THING called for by these requests or

subsequent requests has been destroyed or discarded, that DOCUMENT or THING is to be
identified by stating:
(a)

the author(s), addressee(s) and any indicated or blind copyee(s);

(b)

the DOCUMENT's or THING's date, number of pages and attachments or

(c)

the DOCUMENT's or THING's subject matter;

(d)

the date of destruction or discard, manner of destruction or discard, and

appendices;

reason for destruction or discard;
(e)

the PERSONS who were authorized to carry out such destruction or

(f)

whether any copies of the DOCUMENT or THING presently exist and, if

discard; and

so, the name of the custodian of each copy.
6.

These Requests shall be deemed continuing so as to require further and

supplemental production in accordance with the Federal Rules of Civil Procedure.

01980.51575/4074497.1

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III.

REQUESTS FOR PRODUCTION
1.

All documents regarding YOCHAI KONIG's work in connection with Utopy

Inc. performed while he was employed by SRI and/or using SRI facilities, computers, or email
services.
2.

All documents regarding any awareness YOU and/or SRI had in YOCHAI

KONIG's work in connection with Utopy Inc. performed while he was employed by SRI.
3.

All documents regarding the areas and/or fields in which YOCHAI KONIG

worked while employed by SRI.
4.

All documents regarding the subject matter of SRI's research and development,

either actual or anticipated, in the period between April 1996 and August 1999.
5.

All documents regarding U.S. Patent Nos. 6,981,040, 7,320,031, and

7,685,276.
6.

Any communications between or among YOU, PLAINTIFF, YOCHAI

KONIG, Utopy Inc. or any other party regarding ownership of the PATENTS-IN-SUIT.

01980.51575/4074497.1

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IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
CERTIFICATE OF SERVICE
I, David E. Moore, hereby certify that on April 5, 2011, the attached document was
electronically filed with the Clerk of the Court using CM/ECF which will send notification to the
registered attorney(s) of record that the document has been filed and is available for viewing and
downloading.
I further certify that on April 5, 2011, the attached document was Electronically Mailed
to the following person(s):
Karen Jacobs Louden
Jeremy A. Tigan
Morris, Nichols, Arsht & Tunnell LLP
1201 North Market Street, 18th Fl.
P.O. Box 1347
Wilmington, DE 19899-1347
[e-mail]
[e-mail]

Marc S. Friedman
SNR Denton US LLP
1221 Avenue of the Americas
New York, NY 10020-1089
[e-mail]

Jimmy M. Shin
Jennifer D. Bennett
SNR Denton US LLP
1530 Page Mill Road, Ste. 200
Palo Alto, CA 94304-1125
[e-mail]
[e-mail]

Mark C. Nelson
Robert Needham
SNR Denton US LLP
2000 McKinney, Suite 1900
Dallas, TX 75201
[e-mail]
[e-mail]

/s/ David E. Moore
Richard L. Horwitz
David E. Moore
POTTER ANDERSON & CORROON LLP
[phone]
[e-mail]
[e-mail]
932168 / 34638