Function Media, L.L.C. v. Google, Inc. et al

Filing 120

MOTION for Protective Order to Preclude Depositions by Google, Inc.. (Attachments: # 1 Affidavit in Support, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F, # 8 Exhibit G, # 9 Exhibit H, # 10 Exhibit I, # 11 Exhibit J, # 12 Exhibit K, # 13 Exhibit L, # 14 Exhibit M, # 15 Exhibit N, # 16 Exhibit O, # 17 Exhibit P, # 18 Exhibit Q, # 19 Exhibit R, # 20 Text of Proposed Order)(Anderson, Carl)

IN THE UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION FUNCTION MEDIA, L.L.C.,

V.

Civil Case No. 2:007-C V-279 (TJW)

GOOGLE INC. AND YAHOO!, INC.

GOOGLE INC.'S INITIAL DISCLOSURES

Google provides its initial disclosures pursuant to Federal Rule of Civil Procedure 26(a)(1) and the Court's January 24, 2008 Discovery Order based on the information reasonably available to Google at this time. Google reserves its right to supplement these disclosures, including after Google completes its review and analysis of Function Media's voluminous infringement contentions. By making these disclosures, Google does not intend to waive any applicable privilege or work product protection and expressly reserves its right to object to the production of any of the information identified herein on those grounds. Google also reserves its right to object to the admissibility of any of the information disclosed below. Subject to these reservations, Googl e provides the following information: A. Names of the Parties

The correct name of Google is "Google Inc." (no comma). Google believes that the correct names have been used for the other parties as set forth in the complaint.

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B.

Potential Parties

Google is continuing its investigation into this issue and reserves the right to identify any additional parties to this suit on or before the deadline for adding parties set forth in the Court's January 24, 2008 Docket Control Order. C. Google's Legal Theories and Factual Bases 1. Failure to State a Claim

Because (a) Google has not directly or indirectly infringed, nor contributed to or induced the infringement of, either literally or by the doctrine of equivalents, any valid and enforceable claim of any of the patents-in-suit, (b) Google has not committed any acts in violation of 35 U.S.C. § 271, (c) the patents-in-suit are invalid for failing to satisfy the conditions of patentability found in 35 U.S.C. §sS 102, 103, and 112, and (d) at least two of the patents-in-suit are unenforceable, Plaintiff's First Amended Complaint fails to state a claim upon which relief can be granted. 2. Noninfringement

Google has not and does not directly or indirectly infringed, nor contributed to or induced the infringement of, either literally or by the doctrine of equivalents, any valid and enforceable claim of U.S. Patent Nos. 6,446,045, 6,829,587, 7,240,025, and 7,249,059 (collectively the "patents-in-suit'), and has not committed any acts in violation of 35 U.S.C. § 271. Google does not directly or indirectly infringe any valid or enforceable claim of the patents-in-suit because not all of the limitations as properly construed are performed or present in the alleged infringing instrumentalities offered or alleged to be offered by Google, either literally or under the doctrine of equivalents. Google's claim construction positions will be specified as required under the Local Patent Rules and the Court's January 24, 2008 Docket Control Order.

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3.

Invalidity

The patents-in-suit are invalid for failing to satisfy the conditions of patentability found in 35 U.S.C. §§ 102, 103, and 112. Google's invalidity contentions will be specified as required under the Local Patent Rules and the Court's January 24, 2008 Docket Control Order. 4. Inequitable Conduct

U.S. Patent Nos. 7,240,025 and 7,249,059 are unenforceable pursuant to 37 C.F.R. § 1.56 and the doctrine of inequitable conduct for the reasons stated in Google's September 24, 2007 Answer, Defenses, and Counterclaims in Response to Plaintiffs First Amended Complaint. 5. Claim's Barred

As shown in the prosecution history of the patents-in-suit, Google alleges that Plaintiff's claims are barred in whole or in part based on prosecution history estoppel and/or prosecution history disclaimer. 6. Cost of Defense

Google should receive its attorneys fees and defense costs because this case is exceptional in that the patents-in-suit are not infringed, invalid, and at least two of the asserted patents are unenforceable due to inequitable conduct. D. Individuals Likely to Have Discoverable Information

At this time, Google believes the following individuals are likely to have discoverable information that Google may use to support its claims and/or defenses. Some of the individuals identified below are Google employees or were Google employees during the relevant time period when they may have gained knowledge regarding the identified subjects. Plaintiffs may contact them only through Google's attorneys of record.

GOOGLE INC.'S INITIAL DISCLOSURES - Page 3

Name

Contact Information

Subjects Patents-in-suit, prosecution, conception, reduction to practice, design, development, embodiments, licensing, commercial success, predecessors in interest, and related issues Patents-in-suit, prosecution, conception, reduction to practice, design, development, embodiments, licensing, commercial success, predecessors in interest, and related issues Patents-in-suit, predecessors in interest, and related issues Patents-in-suit, prosecution, conception, reduction to practice, design, development, embodiments, licensing, commercial success, predecessors in interest, and related issues Patents-in-suit, prosecution, conception, reduction to practice, design, development, embodiments, licensing, commercial success, predecessors in interest, and related issues Prior art, prosecution of patentsin-suit, and related issues Prosecution of patents-in-suit, and related issues Prior art, prosecution of patentsin-suit, and related issues Prior art, prosecution of patentsin-suit _______________________________

Virtual Cities, LLC and/or Known to plaintiff Virtual Cities Inc.

O.N.S., Inc.

Known to plaintiff

Michael Coker, E;q. Lucinda Stone

Known to plaintiff Known to plaintiff

Michael Dean

Known to plaintiff

Kenneth S. Roberts, Esq. Henry Croskell, Esq. Orrick, Herrington & Sutcliffe LLP Arnold Behrman

Known to plaintiff Known to plaintiff Known to plaintiff

301 Pleasant Valley Rd. Morganville, NJ 07751 _________________________ [phone]

DoubleClick Inc. (current Prior art A company recently acquired by and former employees and Google Inc., contact may be related entities, e.g., made through counsel for Google NetGravity, L90) Inc. Microsoft Corporation One Microsoft Way Prior art, Internet Explorer APIs, (current and former commerce server products Redmond, WA 98025 employees and related [phone] entities, e.g., Accipiter, Atlas, Engage, Go Toast) ____________________________ ____________________________

GOOGLE INC.'S INITIAL DISCLOSURES - Page 4

Name CMGI Corporate (current and former employees and related entities, e.g., Accipiter, AdForce, AdKnowledge, Engage, ClickOver, Flycast Communications, FocalLink Media Services) Mozilla Foundation

Contact Information 11000 Winter Street, Suite 4600 Waltham, MA 02451 [phone]

Subjects Prior art

1981 Landings Drive Building K Mountain View, CA 94043
[phone]

Mozilla FireFox APIs

Association for Computing Machinery (ACM) IEEE

1515 Broadway New York, NY 10036 [phone] 3 Park Avenue, 17th Fl. New York, NY 10016 [phone] 125 Park Avenue New York, NY 10017 [phone] 116 East 27' Street, 7W Floor New York, NY 10016 [phone] 116 Sheridan Avenue The Presidio of San Francisco San Francisco, CA 94129 [phone] 437 Madison Avenue New York, NY 10022 [phone] 701 First Street Sunnyvale, CA 94089 [phone]

Prior art

Prior art

WPP Group plc (current and former employees and related entities, e.g., 24/7 Media, Real Media Internet Advertising Bureau Internet Archive

Prior art

Prior art Prior art

Omnicom Group (current and former employees and related entities, e.g. BBDO) Yahoo! Inc. (current and former employees and related entities, e.g. Overture Services, GoTo.com , etc.) Match.com (current and former employees and related entities, e.g. Electric Classifieds, Inc. Amazon.com , Inc. (current and former employees and related entities) Travelocity.com , L.P.

Prior art

Prior art

Post Office Box 25472 Dallas, TX 75225 [phone] 1200 12' Ave., 5, Ste. 1200 Seattle, WA 98144 [phone] 3150 Sabre Drive

Prior art

Prior art

Prior art

GOOGLE INC.'S INITIAL DISCLOSURES - Page 5

Name (current and former employees and related entities) Expedia, Inc. (current and former employees and related entities)

Contact Information Southlake, TX 76092 [phone] 3150 139 ` " Ave., SE Bellevue, WA 98005 [phone]

Subjects

Prior art

1500 Oliver Road, Ste. K Information Access Technologies, Inc.. (current Fairfield, CA 94534 and former employees and [phone] related entities) Newspaper National Network LP (current and former employees and related entities) Nestor, Inc. (current and former employees and related entities) ad pepper media USA, LLC (current and former employees and related entities) 20 W. 33 rd Street New York, NY 10001 [phone] 42 Oriental Street Providence, RI 02908-3238 [phone]

Prior art

Prior art

Prior art

108 West 39th Street, Suite 1000 Prior art 10018 New York [phone] Prior art

ad pepper media FrankenstraBe 150 C International N.V. (current FrankenCampus and former employees and 90461 Nurnberg 49 (0) 911/ 92 90 57-0 related entities) P.O. Box 2075 Eclipse Services (current and former employees and Upper Darby, PA 19082 [phone] related entities) 4553 Glencoe Ave., Ste: 300 AdStar, Inc. (current and Marina del Rey, CA 90292 former employees and related entities) [phone] Priceline.com , Inc. (current 800 Connecticut Ave., and former employees and Norwalk, CT 06854 related entities) Arthur Britto 2536 College Avenue, #4A Berkeley, CA 94704 [phone] 8354 Six Forks Road, #204 Raleigh, NC 27615 [phone] Represented by counsel for Google Inc. 80 Corisica Drive Newport Beach, CA 92660 [phone]

Prior art

Prior art

Prior art

Prior art

Christopher Evans

Prior art

Roy Fielding

Prior art

GOOGLE INC.'S INITIAL DISCLOSURES - Page 6

rName

Contact Information

Subjects

Sandilee Mathers

Represented by counsel for Google Inc.
2536 SantaAna,#2

Prior art

Costa Mesa, CA 92627 ________________________ [phone] Represented by counsel for Drew Schulz Google Inc. 267 Kelton Avenue San Carlos, CA 94070 _________________________ [phone] 3111 20th Street, N. C542 Robbin Zeff Arlington, VA 22201 _________________________ [phone] Tom Shields 1205 Drake Avenue Burlingame, CA 94010 _______________________ [phone] Phillip Lindsay Google Inc. 19540 Jamboree Road, 2' Fl. ________________________ Irvine, CA 92612 Mark Scheele Google Inc. 19540 Jamboree Road, 2nd Fl. ________________________ Irvine, CA 92612 Brian Axe Google Inc. 1600 Amphitheatre Parkway MountainView, CA 94043 Richard Holden Google Inc. 1600 Amphitheatre Parkway Mountain View, CA 94043 Adam Leader Google Inc. 1600 Amphitheatre Parkway MountainView, CA 94043 Angela Lai Google Inc. 1600 Amphitheatre Parkway MountainView, CA 94043 Scott Bonneau Google Inc. 76 Ninth Aye, 4th Fl. New York, NY 10011 Jeffrey Dean Google Inc. 1600 Amphitheatre Parkway Mountain View, CA 94043 Peter Kappler Google Inc. 1600 Amphitheatre Parkway Mountain View, CA 94043 Sridhar Ramaswamy Google Inc.

_____________________________ Prior art

_______________________________ Prior art _______________________________ Prior art ____________________________ Prior art _____________________________ Prior art _____________________________ Accused products ____________________________ Accused products

Accused products _____________________________ Accused products ____________________________ Accused products Accused products Accused products

Accused products

GOOGLE INC.'S INITIAL DISCLOSURES - Page 7

Name

Jason Miller

Contact Information 1600 Amphitheatre Parkway Mountain View, CA 94043 Google Inc. 76 Ninth Aye, 4th Fl. New York, NY 10011 Indemnity and Insurance Agreements

Subjects

Accused products

E.

Google is not aware at this time of any pertinent indemnity or insurance agreement under which an insurance business may be liable to satisfy all or part of a possible judgment in this action or reimburse for payments made to satisfy the judgment. F. Settlement Agreements

Google is not aware at this time of any pertinent settlement agreements relevant to the subject matter of this action. G. Statement of Parties

Google is not aware at this time of any pertinent statements by the parties. H. Documentary Evidence

The following documents, tangible things, and data compilations are in Google's possession, custody, or control and may be used to support its claims or defenses where reasonably accessible. Not all information falling under the categories below is reasonably accessible, in particular certain electronically stored information falling under categories 3 and 5. The information is believed to be located through Google's corporate headquarters at 1600 Amphitheatre Parkway, Mountain View, California 94043 or through its counsel of record unless otherwise specified. The patents-in-suit. 2. Files histories of the patents-in-suit.

GOOGLE INC.'S iNITIAL DISCLOSURES - Page 8

Documents and things relating to the conception, design, development, operation, and performance of Google Ad Sense, Google Ad Words, Google Print Ads, and Google My Client Center. 4. Prior art cited in the patents-in-suit, and other documents and things that may be

prior art to the patents-in-suit. Documents and things regarding Google's marketing, sales, and revenue. 6. Google's publicly available website (http://www.google.com ) contains and

indexes information pertaining to Google's history, products, services, marketing, financial performance, and prior art information (e.g. Google Groups) that may be relevant to this case and is just as easily obtained by Function Media as by Google.

Dated: March 24, 2008

Respectfully submitted, FISH & RICHARDSON P.C. By: Is/ Jason W. Wolff

GOOGLE INC.'S INITIAL DISCLOSURES - Page 9

Juanita R. Brooks - Lead Attorney (CA SBN 75934) E-mail: [e-mail] Jason W. Wolff (CA SBN 215819) E-mail: [e-mail] Fish & Richardson P.C. 12390 El Camino Real SanDiego,CA 92130 Telephone: [phone] Facsimile: [phone] Thomas B. Walsh, IV Texas Bar No. 00785173 E-mail: [e-mail] Fish & Richardson P.C. 5000 Bank One Center 1717 Main Street Dallas, TX 75201 Telephone: [phone] Facsimile: [phone] Harry L. Gillam, Jr. Texas Bar No. 07921800 E-mail: [e-mail] Melissa R. Smith Texas Bar No. 24001351 E-mail: me1issagillamsmithlaw.com GILLAM & SMITH, L.L.P. 303 South Washington Avenue Marshall, TX 75670 Telephone: [phone] Facsimile: [phone] Counsel for Defendant and Counter-Claimant GOOGLE INC.

G000LE INC.'S INITIAL DISCLOSURES - Page 10

CERTIFICATE OF SERVICE The undersigned hereby certifies that a true and correct copy of the above and foregoing document has been served by email on March 24, 2007 to counsel of record as earlier agreed between the parties. Max L. Tribble, Jr. Joseph S. Grinstein Susman Godfrey LLP 1000 Louisiana, Suite 5100 Houston, TX 77002 Douglas E. Lumish Jeffrey G. Homrig Weil, Gotshal & Manges LLP 201 Redwood Shores Parkway Redwood Shores, CA 94065 Attorneys for Plaintiff/Counterclaim Defendant FUNCTION MEDIA, L.L.C.

Attorneys for Defendant YAHOO!, INC.

Is! Jason W. Wolff

Jason W. Wolff

GOOGLE INC.'S INITIAL DISCLOSURES - Page 11