Personalized User Model LLP v. Google Inc.

Filing 274

NOTICE of Issuance of Subpoena on Utopy Inc. 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 in the above-referenced
action.

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]
Andrea Pallios Roberts
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
555 Twin Dolphin Drive, Suite 560
Redwood Shores, CA 94065
Tel.: [phone]

POTTER ANDERSON & CORROON LLP

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.

Dated: May 26, 2011
1014468 / 34638

2

AO 88A (Rev. 01/09) Subpoena to Testify at a Deposition or to Produce Documents in a Civil Action

UNITED STATES DISTRICT COURT
for the
Northern District of California
Personalized User Model, LLC
Plaint(
V.

Civil Action No. 1:09-cv-525 (LPS)

Google Inc.
(If the action is pending in another district, state where:
Defendant

District of Delaware

SUBPOENA TO TESTIFY AT A DEPOSITION
OR TO PRODUCE DOCUMENTS IN A CIVIL ACTION
To: Utopy Inc.
1550 Bryant St., Suite 400, San Francisco, CA 94103
Qi 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:
See Attachment A
Place: Quinn Emanuel Urquhart & Sullivan
50 California Street, 22nd Floor
San Francisco, CA 94111

Date and Time:
06/09/2011 9:00 am

The deposition will be recorded by this method: stenosra•hic and video. ra ohic
[7:3 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
material:

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: 511.-Cof

II
CLERK OF COURT
OR
Signature of Clerk or Deputy Clerk

ala9
Attorney's signature

Google Inc.
The name, address, e-mail, and telephone number of the attorney representing (name of party)
, who issues or requests this subpoena, are:
Andrea Pallios Roberts, Quinn Emanuel Urquhard & SuIllivan LLP, 555 Twin Dolphin Dr., 5th Floor, Redwood Shores,
CA 94065, [e-mail] ; 650-801-5000

AO 88A (Rev. 01/09) Subpoena to Testify at a Deposition or to Produce Documents in a Civil Action (Page 2)

Civil Action No. 1:09-cv-525 (LPS)
PROOF OF SERVICE
(This section should not be filed with the court unless required by Fed. R. Civ. P. 45.)

This subpoena for (name of individual and title, if any)
was received by me on (date)
CI I personally served the subpoena on the individual at (place)

on (date)

;

or

O I left the subpoena at the individual's residence or usual place of abode with (name)
, a person of suitable age and discretion who resides there,
on (date)

, and mailed a copy to the individual's last known address; or
, who is

O I served the subpoena on (name of individual)
designated by law to accept service of process on behalf of (name of organization)
on (date)

; or
; or

O I returned the subpoena unexecuted because
0 Other (speci)51):

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 perjury that this information is true.

Date:
Server's signature

Printed name and title

Server's address

Additional information regarding attempted service, etc:

0.00

AO 88A (Rev. 01/09) Subpoena to Testify at a Deposition or to Produce Documents 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 Modiffing 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) Specing 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).

ATTACHMENT A
DEFINITIONS
As used in this notice of deposition, the following terms have the meaning indicated:
A. “Google” means Google Inc., including its present and former corporate parents,
predecessors in interest, successors in interest, shareholders, divisions, departments, subsidiaries,
branches, affiliates, and its present and former officers, directors, executives, employees,
partners, agents, principals, attorneys, trustees, representatives, and other persons acting or
purporting to act on its behalf.
B. “You” or “Utopy” shall mean Utopy, Inc., predecessor-in-interest to the Patents-inSuit, and its agents, officers, employees, representatives and attorneys, and any and all of its
predecessor or successor companies, corporations or business entities.
C. The “Patents-in-Suit” shall mean U.S. Patent No. 6,981,040 (“the ‘040 patent”) and
U.S. Patent No. 7,685,276 (“the ‘276 patent”).
D. 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.
E. “PUM” shall mean Plaintiff and Counterdefendant Personalized User Model, L.L.P.
F. The term “Document” is used in its broadest sense to include everything that is
contemplated by Rules 26 and 34 of the Federal Rules of Civil Procedure, including without
limitation any written, recorded or tangible graphic matter, or any other means of preserving

01980.51575/4159203.1

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data, expression, facts, opinions, thought, images, or other information of any kind, including
without limitation all non-identical copies, drafts, out takes, subsequent versions, worksheets and
proofs, however created or recorded, including without limitation audio tapes, annotations,
calendars, correspondence, data or information of any kind recorded on compact disks, digital
video diskettes, or any other type or form of diskettes for use with computers or other electronic
devices, or any hard drive, diary entries, electronic recordings of any kind, e-mail, memoranda,
notes, photographs, reports, telephone slips and logs, video cartridges and videotapes, and sites,
databases, or other means of information storage or retrieval on the Internet or the World Wide
Web. The term “Document” also includes, but is not limited to, documents stored in electronic
form, such as electronic mail, computer source code, object code and microcode, and documents
stored on any media accessible by electronic means. A comment or notation appearing on any
Document that is not part of the original text is to be considered a separate “Document.”
G. “Thing” means any tangible object other than a Document.
H. “Person” or “Entity” includes not only natural Persons, but also, without limitation,
firms, partnerships, associations, corporations, and other legal entities, and divisions,
departments, or other units thereof.
I.

“Infringement” refers to any form of infringement actionable under United States

law, including without limitation, direct infringement, contributory infringement, inducement to
infringe, literal infringement, and infringement under the doctrine of equivalents.
J. “Accused Product” and/or “accused Google product” means Google Search, Google
AdWords, Google AdSense for Content, Google News, and Google Reader.
K. “Asserted Claim” and/or “Asserted Claims” means Claims 1, 11, 21, 22, and 34 of the
‘040 patent and Claims 1, 3, 5, 6, 7, 14, 21, 22, 23, and 24 of the ‘276 patent.

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L. “Relates to,” “Relating to” and “Related to” mean describing, discussing, evidencing,
concerning, reflecting, comprising, illustrating, containing, embodying, constituting, analyzing,
stating, identifying, referring to, commenting on, connected with, substantiating, establishing,
memorializing, proving, disproving, contradicting, mentioning, regarding, reflecting, dealing
with, in any way pertaining to, or supporting, directly or indirectly.
M. “Communication” means any occurrence whereby data, expression, facts, opinions,
thought or other information of any kind is transmitted in any form, including without limitation
any conversation, correspondence, discussion, e-mail, fax, meeting, memorandum, message,
note, or posting or other display on the Internet or the World Wide Web.
N. “Inventor” and/or “Inventors” refers to any and/or all named inventors of Patents-inSuit, including Yochai Konig, Roy Twersky, and Michael Berthold.
Areas of Examination Pursuant to Rule 30(b)(6)
In accordance with Rule 30(b)(6), Utopy is required to designate one or more of its
officers, directors, managing agents, or other persons to testify on its behalf with respect to
matters known or reasonably available to Utopy regarding the subjects described below:
1. All facts and circumstances relevant to the issues in this case about which David Konig
has knowledge, including, but not limited to, his knowledge of the following:
a. The facts and circumstances regarding the conception, reduction to practice
(actual or constructive), any alleged diligence in reduction to practice and/or
cessation of attempted reduction to practice of each of the Asserted Claims of the
patents-in-suit, on a claim-by-claim basis, including without limitation: (i) all
corroborating evidence thereof, including without limitation the identity of the
author and dates of creation, last modification, and printing of any documents

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relating to the alleged conception and reduction to practice; and (ii) all persons
who contributed in any way to the conception or reduction to practice of any of
the Asserted Claims of the patents-in-suit.
b. The content of the document titled patent.doc and attached to the email produced
bearing document control number PUM 0086526, as well as the claimed
corruption of said document.
c. An explanation of how each document identified by PUM as relating to the date
of conception of any Asserted Claim establishes the date and substance of each
element and/or limitation of the Asserted Claims.
d. The best mode contemplated by the named inventors for carrying out the alleged
invention(s) of the Patents-in-Suit on or prior to June 20, 2000.
e. The facts and circumstances regarding any search, analysis, investigation or
opinion regarding the Patents-in-Suit and any Related Applications, including
without limitation any search, analysis, investigation or opinion regarding
patentability, unpatentability, enforceability, unenforceability, validity, invalidity,
infringement, non-infringement, meaning, interpretation, construction or scope of
the Patents-in-Suit or Related Applications.
f. The facts and circumstances regarding any prior art investigation regarding the
Patents-in-Suit and any Related Applications.
g. The facts and circumstances regarding any challenges, whether formal or
informal, to the validity or enforceability of the Patents-in-Suit and/or Related
Applications.

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h. Any reaction by the industry and the public regarding the alleged invention(s)
described in the Patents-in-Suit.
i. The first public use, exhibition, sale, or offer for sale of any product embodying
any alleged invention claimed in the Patents-in-Suit.
j. The facts and circumstances relating to how and when Utopy, PUM, and/or the
inventors first became aware of each Accused Product; any and all analyses,
examinations or investigations of each such product conducted by or for Utopy,
PUM, and/or the inventors; and an identification of documents (by Bates number)
and persons with information relating to such analysis, examination or evaluation.
k. Utopy, PUM, and/or the inventors’ investigation or analysis of any Google
product or service as to whether said product or service infringes the patents-insuit prior to the filing of the Complaint in this action.
l. Any notice (whether actual or constructive) given by Utopy, PUM, or the
inventors to Google of any alleged infringement of the Patents-in-Suit, including
any communications between Utopy, PUM, or the inventors and Google
regarding the patents-in-suit or any alleged or potential infringement of the
Patents-in-Suit.
m. The facts and circumstances relating to any pre-litigation communications
between Utopy, PUM, or the inventors and Google.
n. The preparation and prosecution of the Patents-in-Suit and any Related
Applications in the United States Patent and Trademark Office or any foreign
patent office, including without limitation the identity and role of all persons
involved in said preparation and prosecution and the content and location of all

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documents related to said preparation and prosecution, and including without
limitation the preparation and prosecution of U.S. Patent Application No.
12/692,252, filed January 22, 2010.
o. Utopy’s corporate structure and status, including without limitation its
organizational structure, ownership structure, shareholders, general partners,
limited partners, investors, decision-makers, and past and present employees.
p. Yochai Konig’s work on Utopy or personalization while employed at SRI
International, including any portions or elements of the asserted claims conceived
or reduced to practice while employed at SRI International.
q. The reasons for the formation of Utopy.
r. Any transfer or assignment of the patents-in-suit, including the transfer or
assignment of the patents-in-suit from Utopy Inc. to Levino Ltd., and the transfer
or assignment of the patents-in-suit from Levino Ltd.
s. Whether any consideration was paid for the transfers or assignments of the
patents-in-suit referenced in Topic 1(r), including to what entity or individual any
consideration was paid, and whether any of the transfers or assignments were
gifts.
t. How and by what entity or individual the transfers or assignments of the patentsin-suit referenced in Topic 1(r), including any proceeds or consideration
therefrom, were recorded and/or accounted for tax and accounting purposes, and
all documents reflecting that tax and accounting treatment.
u. Any transaction between or among Utopy Inc., Levino Ltd., Skoulino Trading Co.
Ltd., Blacksmith Ventures, Square1 Bank, and PUM.

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v. Any communications between Utopy or PUM and any third party regarding the
Patents-in-Suit, including but not limited to, communications relating to licensing
or purchasing the patents-in-suit, investing in Utopy or PUM, infringement of the
patents-in-suit, the validity or invalidity of the patents-in-suit, prior art, and any
secondary considerations of nonobviousness.
w. The involvement of Jack Ben Quesus, Reuben Ben Quesus, Shimon Twersky,
Levy Benaim, and Ari Gal in Utopy, PUM (including the management of PUM),
and this litigation.
x. The ownership, corporate structure and business operations of Levino Ltd. and
Skoulino Trading Co. Ltd, including any involvement in Utopy, PUM (including
the management of PUM), and this litigation.
y. Any consulting or other agreements between Utopy and any of the inventors.
z. Utopy’s attempts to design, create, distribute or market any software that provided
or was intended to provide personalization services, including any attempts to
generate capital for that purpose.
aa. Any products or software related to personalization that Utopy developed or
proposed to develop for Cooley Godward & Kronish LLP, Lehman Bros., or any
other clients.
bb. Utopy's decision to cease development, distribution, marketing or sale of software
that provided or was intended to provide personalization services.
cc. All facts and circumstances regarding any use by Utopy or the inventors of any
Google services as part of their attempts to create and market personalized search
products or software, or any investigation regarding such use or potential use.

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dd. Any attempts by Utopy to design, create, distribute or market any software that
provided or was intended to provide personalization services, including any
attempts to generate capital for that purpose.
ee. The procedures followed, steps taken, and persons involved in collecting and
producing documents in response to Google’s subpoena for production of
documents served on Utopy, including the collection of documents in David
Konig's custodial files.
ff. Utopy’s document retention policies, including without limitation any policies
regarding the retention of e-mails and any modification of Utopy’s document
retention or e-mail retention policies in connection with this litigation, and David
Konig's retention of documents in his custodial files.
gg. The identification of any non-privileged categories of documents or specific
documents in David Konig's custodial files that were responsive to Google’s
subpoena for production of documents but not produced by Utopy in response
thereto, whether those documents were not produced because they have been lost
or destroyed, and, if so, when such documents were lost or destroyed.

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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 May 26, 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 May 26, 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.
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
Matthew P. Larson
SNR Denton US LLP
1530 Page Mill Road, Ste. 200
Palo Alto, CA 94304-1125
[e-mail]
[e-mail]
[e-mail]

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

Christian E. Samay
SNR Denton US LLP
101 JFK Parkway
Short Hills, NJ 07078
[e-mail]

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