Polaris IP, LLC v. Google Inc. et al

Filing 507

RESPONSE in Opposition re 460 MOTION in Limine Number 1 (Uncharted Prior Art References): Motion to Preclude Defendants' Reliance on or Reference to Uncharted Prior Art References (EZ Reader Manual and CBR Express Manuals) and Hearsay MOTION in Limine Number 1 (Uncharted Prior Art References): Motion to Preclude Defendants' Reliance on or Reference to Uncharted Prior Art References (EZ Reader Manual and CBR Express Manuals) and Hearsay MOTION in Limine Number 1 (Uncharted Prior Art References): Motion to Preclude Defendants' Reliance on or Reference to Uncharted Prior Art References (EZ Reader Manual and CBR Express Manuals) and Hearsay filed by AOL, LLC., Google Inc., Yahoo!, Inc.. (Attachments: # 1 Sistos Decl. ISO Defendants' Response, # 2 Branting Decl ISO Defendants' Response, # 3 Exhibit, # 4 Exhibit, # 5 Exhibit, # 6 Exhibit, # 7 Exhibit, # 8 Exhibit, # 9 Exhibit, # 10 Exhibit, # 11 Exhibit, # 12 Exhibit, # 13 Exhibit, # 14 Exhibit, # 15 Exhibit, # 16 Exhibit, # 17 Exhibit, # 18 Exhibit, # 19 Exhibit, # 20 Exhibit, # 21 Exhibit, # 22 Exhibit, # 23 Exhibit, # 24 Exhibit, # 25 Exhibit, # 26 Exhibit, # 27 Exhibit, # 28 Exhibit)(Sistos, Antonio)

Polaris IP, LLC v. Google Inc. et al

Doc. 507 Att. 11

EXHIBIT G

Dockets.Justia.com

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION BRIGHT RESPONSE, LLC F/K/A POLARIS IP, LLC NO. 2:07-CV-371-TJW-CE v. JURY GOOGLE, INC., et al. DEFENDANTS' FIRST SET OF INTERROGATORIES TO PLAINTIFF BRIGHT RESPONSE, LLC PROPOUNDING PARTY: RESPONDING PARTY: SET NUMBER: Google Inc., Yahoo! Inc., AOL LLC, America Online Inc. Bright Response, LLC First (Interrogatory Nos. 1-11)

Pursuant to Rules 26 and 33 of the Federal Rules of Civil Procedure, Defendants Google Inc. ("Google"); Yahoo! Inc. ("Yahoo"); and AOL LLC and America Online Inc. ("AOL"), request that Plaintiff Bright Response, LLC ("Bright Response" or "Plaintiff") respond to the following interrogatories in writing, under oath, and in accordance with the following instructions and definitions, within thirty (30) days from the date of service thereof. DEFINITIONS 1. "The terms "PLAINTIFF," "POLARIS," "BRIGHT RESPONSE," or "YOU"

shall refer to Plaintiff Bright Response, LLC f/k/a Polaris IP, LLC, and includes any of Polaris's past and present persons, parents, predecessors, successors, subsidiaries, affiliates, divisions, associated organizations, joint ventures, corporations, limited liability companies, partnerships, associations, sole proprietorships, owners, officers, directors, trustees, employees, staff members, agents, or other representatives, including counsel and patent agents, in any country, and prior assignees of the `947 PATENT, including, without limitation, Polaris IP, LLC, Brightware, Inc., Inference, Inc., Firepond, Inc., Silicon Valley Bank, Orion IP, LLC, Circinus IP, LLC, Chase

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Manhattan Bank, Plutus IP Holdings, LLC, and Erich Spangenberg. 2. 3. 4. 5. The term "GOOGLE" shall refer to defendant Google Inc. The term "AOL" shall refer to defendants AOL LLC and America Online, Inc. The term "YAHOO" shall refer to defendant Yahoo! Inc. The term "DEFENDANT" or "DEFENDANTS" shall refer to defendants

GOOGLE, AOL, and/or YAHOO. 6. The term "EZ Reader" shall refer to the application that was developed by

Brightware, Inc. and Chase Manhattan Bank, including without limitation the application described in Bright Response's document production BR 000658 ­ BR 000670. 7. The term the "`947 PATENT" refers to U.S. Patent No. 6,411,947, entitled

"Automatic Message Interpretation and Routing System," all underlying patent applications, all continuations, continuations-in-part, divisionals, reissues, provisionals, and any other patent applications in the `947 patent family, including without limitation patent application no. 60/042,656, patent application no. 60/042,494, and patent application no. 90/009,155. 8. "DOCUMENT" shall include, without limitation, all written, graphic or otherwise

recorded material, including without limitation, microfilms or other film records or impressions, electronically stored information regardless of the form of storage medium, 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 meet ings, 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 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
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foregoing specifically includes information stored in a computer database and capable of being generated in documentary form, such as electronic mail. 9. "COMMUNICATION" shall mean, without limitation, any transmission,

conveyance or exchange of a word, statement, fact, thing, idea, DOCUMENT, instruction, information, demand or question by any medium, whether by written, oral or other means, including but not limited to, electronic communications and electronic mail. 10. The term "PERSON" shall refer to any individual, corporation, proprietorship,

association, joint venture, company, partnership or other business or legal entity, including governmental bodies and agencies. 11. "INFRINGE" and "INFRINGEMENT" means direct infringement, contributory

infringement, infringement by inducement, literal infringement, and infringement by the doctrine of equivalents. 12. "PRIOR ART" shall mean the subject matter described in 35 U.S.C. §§ 102 and

103, including but not limited to publications, patents, physical devices, prototypes, uses, sales, and offers for sale, and any DOCUMENTS or OTHER ITEMS evidencing any of the foregoing. 13. "IDENTIFY" in relation to a person means to state his or her full name and: (a)

present business address(es), position and business affiliation, and business telephone number; or, if current information is not known, (b) the last known business and home addresses, position and business affiliation, and business telephone numbers. Once any person has been identified properly, it shall be sufficient thereafter when identifying that same person to state the name only. 14. "IDENTIFY" in relation to an entity means to state the entity's: (a) full name; (b)

state of incorporation; (c) current or last known business address; and (d) current or last known telephone number. Once an entity has been identified properly, it shall be sufficient thereafter when identifying that same entity to state the name only. 15. "IDENTIFY" in relation to a DOCUMENT means to state: (a) the date the

DOCUMENT was created; (b) the author of the DOCUMENT; (c) the recipient of the
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DOCUMENT; (d) any person or entity receiving a copy of the DOCUMENT by "cc," "bcc," or otherwise; (e) a basic description of the nature of the DOCUMENT, including, if applicable; (f) the title of the DOCUMENT; and (g) whether the DOCUMENT has been or is being produced in this litigation, the dates or identifier number affixed to the DOCUMENT. DOCUMENTS to be "identified" include DOCUMENTS in POLARIS's possession, custody, or control, DOCUMENTS known by POLARIS to have existed but no longer exist, and other DOCUMENTS of which POLARIS has knowledge or information. 16. "IDENTIFY" in relation to a product or service means to state the product or

service name, commercial or trade name, manufacturer, producer, or service provider, model or version number, part number, type, description, or any other representative designation. 17. "IDENTIFY" in relation to a COMMUNICATION means: (a) to state the date of

the COMMUNICATION; (b) to identify all DOCUMENTS relating to such COMMUNICATIONS; (c) to describe the content and substance of the COMMUNICATION; (d) to identify the persons who received or were involved in the COMMUNICATION; and (e) to identify the person or persons most knowledgeable about the COMMUNICATION. 18. "REFLECT," "REFLECTING," "RELATE TO," "REFER TO," "RELATING

TO," and "REFERRING 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. 19. The term "ASSERTED CLAIMS" refers to each and every claim of the `947

PATENT that POLARIS contends at least one of the DEFENDANTS infringes. 20. The phrase "WRITTEN DESCRIPTION" shall refer to the requirement that "[t]he

specification shall contain a written description of the invention" as set forth in 35 U.S.C. §112 para. 1. 21. The phrase "ENABLING DISCLOSURE" shall refer to the requirement that

"[t]he specification shall contain a written description of...the manner and process of making and
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using [the invention], in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same..." as set forth in 35 U.S.C. §112 para. 1. 22. The phrase "BEST MODE" shall refer to the requirement that "[t]he specification

shall contain a written description of...the best mode contemplated by the inventor of carrying out his invention..." as set forth in 35 U.S.C. §112 para. 1. 23. 24. 25. "Include" and "including" shall mean including without limitation. Use of the singular also includes the plural and vice-versa. The words "or" and "and" shall be read in the conjunctive and in the disjunctive

wherever they appear, and neither of these words shall be interpreted to limit the scope of these Interrogatories. 26. tenses. INSTRUCTIONS The following instructions shall apply to each of the Interrogatories herein: 1. In answering the following Interrogatories, furnish all available information, The use of a verb in any tense shall be construed as the use of the verb in all other

including information in the possession, custody, or control of any of PLAINTIFF's attorneys, directors, officers, agents, employees, representatives, associates, investigators or division affiliates, partnerships, parents or subsidiaries, and persons under PLAINTIFF's control, who have the best knowledge, not merely information known to PLAINTIFF based on PLAINTIFF's own personal knowledge. If YOU cannot fully respond to the following Interrogatories after exercising due diligence to secure the information requested thereby, so state, and specify the portion of each Interrogatories that cannot be responded to fully and completely. In the latter event, state what efforts were made to obtain the requested information and the facts relied upon that support the contention that the Interrogatories cannot be answered fully and completely; and state what knowledge, information or belief PLAINTIFF has concerning the unanswered portion of any such Interrogatories.
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2.

If any information requested is claimed to be privileged or otherwise immune

from discovery, please provide all informat ion falling within the scope of the Interrogatory which is not privileged, and for each item of information contained in a document to which a claim of privilege is made, identify such document with sufficient particularity for purposes of a motion to compel, such identification to include at least the following: (a) (b) (c) the basis on which the privilege is claimed; the names and positions of the author of the information; the name and position of each individual or other person to whom the

information, or a copy thereof, was sent or otherwise disclosed; (d) (e) such information; (f) and (g) information. 3. If PLAINTIFF's response to a particular Interrogatory is a statement that whether any business or non-legal matter is contained or discussed in such the number of pages in such document or information; the date of the information; a description of any accompanying material transmitted with or attached to

PLAINTIFF lacks the ability to comply with that Interrogatory, PLAINTIFF must specify whether the inability to comply is because the particular item or category of information never existed, has been destroyed, has been lost, misplaced, or stolen, or has never been, or is no longer, in PLAINTIFF's possession, custody, or control, in which case the name and address of any person or entity known or believed by YOU to have possession, custody, or control of that information or category of information must be identified. 4. PLAINTIFF's obligation to respond to these Interrogatories is continuing and its

responses are to be supplemented to include subsequently acquired information in accordance with the requirements of Rule 26(e) of the Federal Rules of Civil Procedure.

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INTERROGATORIES INTERROGATORY NO. 1: For each claim of the `947 PATENT, describe in detail all facts RELATING TO its conception and reduction to practice, including IDENTIFYING the date of conception, the date of reduction to practice of its subject matter, all acts YOU contend represent diligence occurring between the dates of conception and reduction to practice, each person involved in such conception, diligence and/or reduction to practice, where the invention was first reduced to practice, when, where, and to whom the invention was first disclosed, and IDENTIFYING each person, including third parties, who worked on the development of the alleged invention(s) described and claimed in the `947 PATENT, describing each person's role (e.g., producer, developer, tester, technician, researcher, etc.) and the dates and places each such person assisted, supervised, or was otherwise so involved. INTERROGATORY NO. 2: IDENTIFY all patents, patent applications, publications, web sites, products, services, and methods, that predate April 3, 1997 and RELATE TO automatic message interpretation and/or routing that were at any time known, made known to, or considered by PLAINTIFF and/or the named inventors of the `947 PATENT and how and when they became known and considered by PLAINTIFF and/or the named inventors of the `947 PATENT, and IDENTIFY all PERSONS who reviewed or considered them. INTERROGATORY NO. 3: State whether PLAINTIFF contends there are secondary considerations that should be considered by the Court in connection with its determination pursuant to 35 U.S.C. § 103 of the validity of the `947 PATENT, and if the answer is anything other than an unqualified negative, identify each such secondary consideration and describe in detail PLAINTIFF'S content ions as to why each such secondary considerat ion demonstrates obviousness or non-obviousness and all facts in support thereof.

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INTERROGATORY NO. 4: IDENTIFY and describe in detail all the manners or techniques by which the `947 PATENT improved upon the PRIOR ART, added functionality that did not exist in the PRIOR ART, or provided a variation on or upgrade of the PRIOR ART and for each such claimed improvement, added functionality, or variation or upgrade, state whether PLAINTIFF contends it was a non-obvious or unpredictable improvement, addit ion of functionality, variation or upgrade and why and identify all facts in support thereof, addressing in particular whether the use of a rule-based and case-based knowledge engine for interpreting electronic messages existed or was known in the prior art or was obvious to one of ordinary skill, and, if not, whether there were any factors that would dissuade such a person from using a rule-based and case-based knowledge engine to interpret electronic messages. INTERROGATORY NO. 5: For each limitation o f each ASSERTED CLAIM of the `947 PATENT, identify, in claim chart form, the portions of the specification YOU contend provide WRITTEN DESCRIPTION support, an ENABLING DISCLOSURE, and a disclosure of the BEST MODE contemplated by the inventor. INTERROGATORY NO. 6: State PLAINTIFF's contentions as to what constituted the level of skill of a person of ordinary skill in the art of the subject matter of the `947 PATENT as of April 3, 1997. INTERROGATORY NO. 7: Describe in detail each and every investigation and/or evaluation by PLAINTIFF, or anyone on behalf of PLAINTIFF, REGARDING the validity, patentabilit y, enforceability, scope, and/or INFRINGEMENT of any claim of the `947 PATENT, including IDENTIFYING the dates such activities took place, the persons or entities involved in such activities, the nature of such activities, and whether any decision was made or action taken by or on behalf of PLAINTIFF in whole or in part as a result of such activities.

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INTERROGATORY NO. 8: Describe in detail all efforts to mark any product authorized or licensed under the `947 patent with the patent number of the `947 PATENT, including IDENTIFYING the beginning and end dates of any such patent marking (including the beginning or end dates of any interruption in patent marking), the seller of such marked products, and the manner of marking for each marked product, such as the location of the patent marking and/or the manner of such patent marking. INTERROGATORY NO. 9: IDENTIFY the date the EZ Reader application was first reduced to practice, including IDENTIFICATION of (a) the PERSON that performed such reduction to practice, (b) each PERSON with information RELATING TO such reduction to practice, including the substance of such information, (c) all facts that YOU contend support any diligence exercised in reducing to practice the EZ Reader application, including IDENTIFICATION of each DOCUMENT RELATING TO such diligence, each PERSON with information RELATING TO such diligence, including the substance of such information. INTERROGATORY NO. 10: IDENTIFY and describe the ownership or organization structure of all PERSONS with a past or present ownership interest, assignment interest, security interest or other interest, either in whole or in part, as a percentage or through any past and present PERSONS, parents, predecessors, successors, subsidiaries, affiliates, divisions, associated organizations, joint ventures, corporations, limited liability companies, partnerships, associations, sole proprietorships, owners, officers, directors, trustees, employees, staff members, agents, or other representatives, including counsel and patent agents, in any country, in the `947 PATENT, including each and every corporation, limited liability company, PERSON or any other entity in which POLARIS, or any other limited liability company, PERSON or any other entity, which is partially or wholly owned by any of the same PERSONS who hold an interest in POLARIS, holds an interest either directly or through any subsidiary, corporation, limited liability company, affiliate, division, associated organizations, joint venture, partnership, association, sole
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proprietorship, person or any other entity. INTERROGATORY NO. 11: IDENTIFY and fully explain the bases for your denial of DEFENDANTS' allegat ions of unenforceability in DEFENDANTS' Counterclaims for unenforceability, including your bases for denying paragraphs 14-17 and 20-23 of YAHOO's Counterclaims, paragraphs 19-20 and 2526 of GOOGLE's Counterclaims, and paragraphs 20-21 and 26-27 of AOL's Counterclaims.

DATED: November 10, 2008

Respect fully submitted, By /s/ David A. Perlson David A. Perlson QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP Charles K. Verhoeven David A. Perlson Jennifer A. Kash Antonio R. Sistos 50 California Street, 22nd Floor San Francisco, California 94111 Telephone: [phone] Facsimile: [phone] [e-mail] m [e-mail] m [e-mail] m [e-mail] Jennifer Parker Ainsworth Texas State Bar No. 00784720 WILSON, ROBERTSON & CORNELIUS, P.C. P.O. Box 7339 Tyler, Texas 75711 Telephone: [phone] Facsimile: [phone] [e-mail] m Attorneys for Defendants Google Inc. and AOL

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LLC Jason C. White Howrey LLP 321 North Clark Street, Suite 3400 Chicago, Illinois 60654 [phone] [phone](Facsimile) [e-mail] Michael E. Jones State Bar No. 10929400 POTTER MINTON A Professional Corporation 110 N. College, Suite 500 (75702) P. O. Box 359 Tyler, Texas 75710 [phone] [phone] (Facsimile) mikejo [e-mail] Attorneys for Defendant Yahoo! Inc.

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CERTIFICATE OF SERVICE I hereby certify that all counsel of record are being served via electronic mail with a copy of this document on November 10, 2008.

/s/ Jamena Pirone Jamena Pirone, pro hac vice [e-mail] m QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP 50 California Street, 22nd Floor San Francisco, California 94111 Telephone: [phone] Facsimile: [phone]

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