Xerox Corporation v. Google Inc. et al
Filing
225
NOTICE to Take Deposition of Xerox Corporation on July 21, 2011 (Amended 30(b)(6) Notice) by Google Inc., Yahoo! Inc..(Horwitz, Richard)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
XEROX CORPORATION,
Plaintiff,
v.
GOOGLE INC., and YAHOO! INC.,
Defendants.
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C.A. No. 10-136-LPS
JURY TRIAL DEMANDED
DEFENDANTS' AMENDED NOTICE OF DEPOSITION OF PLAINTIFF XEROX
CORPORATION PURSUANT TO FED. R. CIV. PROC. 30(b)(6)
PLEASE TAKE NOTICE that, pursuant to Fed. R. Civ. P. 30(b)(6), Defendants Google
Inc. and Yahoo! Inc., by and through their attorneys, will take the oral deposition of Xerox
Corporation ("Xerox") at 9:00 a.m. on July 21, 2011 at the offices of Davis Polk, 450 Lexington
Avenue, New York, NY 10017. The deposition will take place before an officer duly authorized
by law to administer oaths and recorded testimony. The testimony will be recorded by
stenographic means and will be videotaped. The deposition will continue from day to day until
completed or adjourned. Xerox has identified and designated Michael Butler to testify on
Xerox's behalf about each numbered category in the attached Exhibit A.
POTTER ANDERSON & CORROON LLP
OF COUNSEL:
Charles K. Verhoeven
David A. Perlson
Brian C. Howard
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
Tel.: (415) 875-6600
Google-Xerox@quinnemanuel.com
Andrea Pallios Roberts
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
555 Twin Dolphin Dr., 5th Floor
Redwood Shores, California 94065
Tel.: (650) 801-5000
Google-Xerox@quinnemanuel.com
By: /s/ Richard L. Horwitz
Richard L. Horwitz (#2246)
David E. Moore (#3983)
Hercules Plaza 6th Floor
1313 N. Market Street
Wilmington, DE 19899
Tel: (302) 984-6000
rhorwitz@potteranderson.com
dmoore@potteranderson.com
Attorneys for Defendant Google Inc.
Also Filed on Behalf of Yahoo! Inc.
Dated: July 18, 2011
1020579 / 35374
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SCHEDULE 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. “Yahoo!” means Yahoo! Inc., including its present and former corporate parents,
predecessors in interest, successors in interest, shareholders, divisions, departments, subsidiaries
(including without limitation defendant Right Media), 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.
C. “Defendants” means Google and Yahoo!.
D. “Plaintiff,” or “Xerox,” shall mean plaintiff Xerox Corporation, and its agents,
officers, employees, representatives and attorneys, and any and all of its predecessor or successor
companies, corporations or business entities.
E. The "Patent-in-Suit” shall mean U.S. Patent No. 6,778,979.
F. The term “Related Patents/Applications” shall mean (1) any United States or foreign
patent or patent application related to the Patent-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.
G. 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
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.”
H. “Thing” means any tangible object other than a Document.
I. “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.
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J.
“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.
K. “Accused Product,” “accused Google product,” and/or "accused Yahoo! product"
means any Google or Yahoo! product or service identified by Xerox in its Complaint or in
response to Defendants’ interrogatories as infringing the patent-in-suit.
L. “Asserted Claim” and/or “Asserted Claims” means each claim of the patent-in-suit
alleged or believed to be infringed, as identified by Plaintiff in its responses to Google's
Interrogatory No. 2 and Yahoo’s Interrogatory No. 1.
M. “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.
N. “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.
O. “Inventor” and/or “Inventors” refers to any and/or all named inventors of patent-insuit, including Gregory T. Grefenstette and James G. Shanahan.
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Areas of Examination Pursuant to Rule 30(b)(6)
In accordance with Rule 30(b)(6), Xerox 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 Xerox regarding the subjects described below:
1. All facts and circumstances regarding any search, analysis, investigation or opinion
regarding the Patent-in-Suit and any Related Patents/Applications, including without
limitation any search, analysis, investigation or opinion regarding patentability,
unpatentability, enforceability, unenforceability, validity, invalidity, infringement, noninfringement, meaning, interpretation, construction or scope of the Patent-in-Suit or
Related Patents/Applications.
2. All facts and circumstances regarding any prior art investigation regarding the Patent-inSuit and any Related Patents/Applications, other than such investigation conducted in
connection with the preparation and prosecution of the Patent-in-Suit and any Related
Applications in the United States Patent and Trademark Office or any foreign patent
office.
3. All facts and circumstances regarding any challenges, whether formal or informal, to the
validity or enforceability of the Patent-in-Suit and/or Related Patents/Applications.
4. Reaction by the industry and the public regarding the alleged invention(s) described in
the Patent-in-Suit, if any.
5. All facts and circumstances related to Xerox's allegation, if any, that either Defendant
copied the alleged invention(s).
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6. All facts and circumstances related to Xerox's assertion, if any, that the Patent-in-Suit
and/or any Asserted Claims enjoyed commercial success.
7. All facts and circumstances related to whether the Patent-in-Suit and/or any Asserted
Claims solved a long-felt, but unresolved need.
8. Any failure of others to determine a solution to any long-felt need but unresolved need
solved by the Patent-in-Suit and/or any Asserted Claims ..
9.
All facts and circumstances related to whether the prior art teaches away from any
solution in the Patent-in-Suit and/or any Asserted Claims.
10. Any skepticism expressed as to any solution in the Patent-in-Suit and/or any Asserted
Claims to any long-felt need but unresolved need.
11. All facts and circumstances related to whether the Patent-in-Suit and/or any Asserted
Claims thereof achieved any award or acclaim.
12. Yutaka Yamauchi’s role in the DocSouls program, including any role he had in the
invention of the Patent-in-Suit and/or Asserted Claims, including without limitation work
he performed on latent semantic indexing, vector space models, or other methods of
categorizing document content.
13. Xerox's attempts to design, create, distribute or market any software that generated search
queries from document content or formulated search queries to restrict a search at an
information retrieval system to a specific category of documents within that system,
including any attempts to generate capital (internally or externally) for that purpose. This
topic includes, but is not limited to Xerox's DocSouls program.
14. Xerox's attempts to license or sell the Patent-in-Suit and/or DocSouls technology,
including but not limited to:
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a. Xerox's relationship with Elsevier Science regarding the Patent-in-Suit and/or
DocSouls;
b. Xerox's relationship with "DocSouls NewCo," as referenced in XRX00400808,
regarding the Patent-in-Suit and/or DocSouls;
c. Xerox's relationship with Inxight Software regarding the Patent-in-Suit and/or
DocSouls;
d. The identity of every entity that has taken a license to the Patent-in-Suit and the
date of such license; and
e. The identity of every entity that Xerox has offered to license or sell the Patent-inSuit and all facts and circumstances as to why any such entities did not license or
purchase the Patent-in-Suit.
15. Xerox's relationship with IPValue Management, Inc. (“IPValue”) as it relates to the
Patent-in-Suit or the DocSouls program, including but not limited to:
a.
The terms of any related agreements between Xerox and IPValue;
b. The nature of the work IPValue performed on Xerox’s behalf;
c. All information or instructions Xerox provided to IPValue in connection with
IPValue’s work relating to the Patent-in-Suit and/or DocSouls program; and
d.
Any and all recommendations, analysis or advice, IPValue provided to Xerox
relating to the Patent-in-Suit and/or DocSouls program, including as it relates to
validity, infringement, or any other issue related to this litigation.
16. Xerox's internal evaluations and assessments of the Patent-in-Suit and/or any Asserted
Claims, including but not limited to:
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a. All facts and circumstances relating to Xerox's evaluation and assessment of the
Invention Proposal Form(s) for the Patent-in-Suit, any Asserted Claims, and/or
the alleged invention(s) disclosed therein;
b. All facts and circumstances relating to the Technology Assessment Program's
(TAP) evaluation and assessment of the Patent-in-Suit, any Asserted Claims,
and/or the alleged invention(s) disclosed therein;
c. All facts and circumstances relating to the Patent Management Committee's
evaluation and assessment of the Patent-in-Suit, any Asserted Claims, and/or the
alleged invention(s) disclosed therein; and
d. All facts and circumstances relating to any evaluation or assessment of the Patentin-Suit, any Asserted Claims, and/or the alleged invention(s) disclosed therein by
COMIP.
17. The reasons why no Xerox business group was interested or able to maintain and support
DocSouls.
18. Products or services offered by any person other than Google or Yahoo!, whether or not
currently offered or available, that Xerox contends are or were covered by any claim of
the Patent-in-Suit.
19. The first public use, exhibition, sale, or offer for sale of any product embodying any
alleged invention claimed in the Patent-in-Suit.
20. All facts and circumstances relating to how and when Xerox 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 Xerox and/or the inventors; and
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an identification of documents (by Bates number) and persons with information relating
to such analysis, examination or evaluation.
21. Xerox and/or the inventors' investigation or analysis of any Google or Yahoo! product or
service as to whether said product or service infringes the Patent-in-Suit prior to the filing
of the Complaint in this action.
22. All facts and circumstances relating to Xerox's decision to file this lawsuit.
23. All facts and circumstances relating to Xerox's knowledge, prior to filing this lawsuit, of
any prior art to the Patent-in-Suit, including without limitation the identity of such prior
art, the date on which it first became known to Xerox, the circumstances under which
Xerox acquired this knowledge, the identity of all persons known to Xerox to have
knowledge of the prior art, and all documents relating to such prior art.
24. Any communications between Xerox and any third party regarding the Patent-in-Suit.
25. The procedures followed, steps taken, and persons involved in collecting and producing
documents in response to either Defendant's document requests served on Xerox.
26. Xerox's document retention policies, including without limitation any policies regarding
the retention of e-mails and any modification of Xerox’s document retention or e-mail
retention policies in connection with this litigation.
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IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
CERTIFICATE OF SERVICE
I, Richard L. Horwitz, hereby certify that on July 18, 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 hereby certify that on July 18, 2011, the attached document was electronically mailed to
the following person(s)
Lawrence C. Ashby
John G. Day
Lauren E. Maguire
ASHBY & GEDDES
500 Delaware Avenue, 8th Floor
Wilmington, DE 19899
lashby@ashby-geddes.com
jday@ashby-geddes.com
lmaguire@ashby-geddes.com
Attorneys for Plaintiff Xerox Corporation
Richard J. Stark
Andrei Harasymiak
Peter A. Emmi
Scott A. Leslie
Katherine H. Kunz
Benjamin Diessel
CRAVATH, SWAINE & MOORE LLP
Worldwide Plaza
825 Eighth Avenue
New York, NY 10019
rstark@cravath.com
aharasymiak@cravath.com
pemmi@cravath.com
sleslie@cravath.com
kkunz@cravath.com
bdiessel@cravath.com
Attorneys for Plaintiff Xerox Corporation
Jack B. Blumenfeld
Maryellen Noreika
Jeremy A. Tigan
MORRIS, NICHOLS, ARSHT &
TUNNELL LLP
1201 North Market Street
Wilmington, DE 19899
jblumenfeld@mnat.com
mnoreika@mnat.com
jtigan@mnat.com
Attorneys for Defendant Yahoo! Inc.
Matthew B. Lehr
Anthony I. Fenwick
David J. Lisson
Jeremy M. Brodsky
DAVIS POLK & WARDELL LLP
1600 El Camino Real
Menlo Park, CA 94025
matthew.lehr@davispolk.com
anthony.fenwick@davispolk.com
david.lisson@davispolk.com
Jeremy.brodsky@davispolk.com
Attorneys for Defendant Yahoo! Inc.
/s/ Richard L. Horwitz
Richard L. Horwitz
David E. Moore
POTTER ANDERSON & CORROON LLP
(302) 984-6000
rhorwitz@potteranderson.com
dmoore@potteranderson.com
967858 / 35374
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