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. 13

EXHIBIT I

Dockets.Justia.com

AO 88B (Rev. 01 /09) Subpoena to Produce Documents , Information , or Objects or to Permit Inspection of Premises

UNITED STATES DISTRICT COURT
for the
District of Minnesota

Bright Response, LLC
Plaintiff V.

Civil Action No. 2:07-CV-371-CE }
} } (If the action is pending in another district, state where: Eastern District of Texas

Google Inc., et al.
Defendant

SUBPOENA TO PRODUCE DOCUMENTS , INFORMATION , OR OBJECTS OR TO PERMIT INSPECTION OF PREMISES To: FPX LLC, 11 Civic Center Plaza #310, Mankato , MN 56001
i(Production: YOU ARE COMMANDED to produce at the time, date, and place set forth below the following documents , electronically stored information , or objects , and permit their inspection , copying, testing, or sampling of the material : See Ex. A.

Place : Leonard , Street & Deinard , 150 South Fifth St., Minneapolis , MN 55402

Date and Time: 09/11 /2009 10:00 am

0 Inspection of Premises: YOU ARE COMMANDED to permit entry onto the designated premises, land, or other property possessed or controlled by you at the time, date, and location set forth below, so that the requesting party may inspect, measure, survey , photograph, test, or sample the property or any designated object or operation on it. Place:

Date and Time:

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:

08/27/2009 CLERK OF CO URT OR
Signature of Clerk or Deputy Clerk Attorney's signature

The name, address, e-mail, and telephone number of the attorney representing (name ofparty) Google, Inc., America Online, Inc., AOL LLC , who issues or requests this subpoena, are: Eugene Novikov, 50 California St., 22nd Fir ., San Francisco , CA 94111, eugenenovikov @ quinnemanuel.com, 415.875.6308.

AO 88B ( Rev. 01 /09) Subpoena to Produce Documents , Information , or Objects or to Permit Inspection of Premises ( Page 2)

Civil Action No. 2:07-CV-371-CE PROOF OF SERVICE
(This section should not befiled with the court unless required by Fed. R. Cit. P. 45.) This subpoena for (name ofindividual and title, if any) was received by me on (date) 0 1 personally served the subpoena on the individual at (place)
on (date)

; or

Q 1 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

C] I served the subpoena to (name ofindividual)
designated by law to accept service of process on behalf of (name oforganization) on (date)

or ; or

0 I returned the subpoena unexecuted because

0 other (sped):

Unless the subpoena was issued on behalf of the United States, or one of its officers or agents, 1 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 $

0.00

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:

AO 89B (Rev, 01109) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises (Page 3)

Federal Rule of Civil Procedure 45 (c), (d), and (e) (Effective 12/1107)
(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.

(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) 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. (Al 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)(13)(iii), the person may be commanded to attend a trial by traveling from any such place within the state where the trial is held;

(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).

(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) Specifying 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.

EXHIBIT A

1.

DEFINITIONS
1. "PLAINTIFF," or "BRIGHT RESPONSE," shall mean plaintiff Bright Response,

LLC, and its agents, officers, employees, representatives and attorneys , and any and all of its predecessor or successor companies , corporations or business entities. 2. "FPX," "YOU," or "YOUR" shall mean FPX , LLC, and its agents, officers,

employees, representatives and attorneys , and any and all of its predecessor or successor companies , corporations or business entities. 3. "ANTHONY ANGOTTI," "FRED COHEN," "JULIE HSU," "ROSANNA

PICCOLO," and "AMY RICE" shall mean the named inventors of U.S. Patent No . 6,411,947. 4. "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. "THING" as used herein means any physical object other than a "DOCUMENT."

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(a)

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

association, joint venture, company, partnership or other business or legal entity, including governmental bodies and agencies. 6. "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.

7.
8.

The. "`947 PATENT" shall mean U.S. Patent No. 6,411,947.
The term "RELATED PATENTS/APPLICATIONS" shall mean (1) any United

States or foreign patent or patent application related to the `947 PATENT 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. 9. the singular. The singular form of words shall include the plural, and the plural shall include

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 .5145213070341.1

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S.

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)
appendices;

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

the subject matter(s) of the document; the nature of the privilege or immunity asserted; and any additional facts upon which you would base your claim of privilege or 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) (b) appendices; the author(s), addressee ( s) and any indicated or blind copyee(s); the DOCUMENT's or THING' s date, number of pages and attachments or

(c)
(d)

the DOCUMENT's or THING's subject matter;
the date of destruction or discard; manner of destruction or discard, and

reason for destruction or discard; (e) discard; and (f) whether any copies of the DOCUMENT or THING presently exist and, if the PERSONS who were authorized to carry out such destruction or

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.

III.

REQUESTS FOR PRODUCTION

01480 .5145213070341.1

1.

All DOCUMENTS or THINGS that REFER or RELATE to the `947 PATENT

or any RELATED PATENTS/APPLICATIONS, i ncluding without limitation any DOCUMENTS that RELATE to the prosecution, valuation , sale or assignment of the `947 PATENT or RELATED PATENTS/APPLICATIONS and including without limitation any opinions, analyses and/or investigations of infringement of such patents. 2. All DOCUMENTS or THINGS that REFER or RELATE to any attempts to

license or enforce the `947 PATENT, including any DOCUMENTS that RELATE to the following cases, and/or any other litigation concerning the'947 PATENT:

A. B. C. D.

Bright Response, LLCf/k/a Polaris IP, LLC v. Google, et al., Case No. 2:07-cv371 CE (E.D. Tex.) Polaris IP, LLC v. Sirius Satellite Radio, Inc., et al., Case No . 2:06-cv -103 TJW (E.D. Tex.) Polaris IP, LLC v. Oracle Corp. et al., Case No . 2:06-cv-179 TJW (E .D. Tex.) Polaris IP, LLC v. Art Technology Group, Inc., Case No. 2:07-cv-116 CE (E.D. Tex.) All DOCUMENTS or THINGS that REFER or RELATE to any compensation,

3.

both monetary and/or non-monetary, that YOU, ANTHONY ANGOTTI, FRED COHEN, JULIE HSU, ROSANNA PICCOLO, AMY RICE, Brightware , Inc., Silicon Valley Bank, Firepond Inc., Orion IP LLC, Clear with Computers Inc., Clear with Computers LLC, Polaris IP LLC, Plutus IP Holdings , Plutus IP LLC, TechDev Holdings or BRIGHT RESPONSE LLC paid or received in connection with the assignment , license , sale, or transfer of any rights in or to the `947 PATENT or RELATED PATENTS/APPLICATIONS, including in connection with the March 28, 2006 agreement among Orion IP, LLC, FP Technology Holdings , Inc. and AFG Enterprises (USA), Inc.. 4. All DOCUMENTS or THINGS that REFER or RELATE to any transaction by,

between or amongst YOU, ANTHONY ANGOTTI, FRED COHEN, JULIE HSU, ROSANNA PICCOLO, AMY RICE, Erich Spangenberg , Douglas Croxall, Jaguar Technology Holdings,

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LLC, Brightware, Inc., Silicon Valley Bank, Firepond Inc., Orion IP LLC, Clear with Computers Inc., Clear with Computers LLC, Polaris IP LLC, Plutus IP Holdings ; Plutus IP LLC, TechDev Holdings, FP Tech Holdings LLC, FP Technology Holdings, Inc., AFG Enterprises (USA), Inc., BRIGHT RESPONSE LLC, and/or and any listed company ' s parent, subsidiary , predecessor or successor companies , including the March 28, 2006 agreement among Orion IP, LLC, FP Technology Holdings , Inc. and AFG Enterprises (USA), Inc.. 5. YOU, ANTHONY ANGOTTI, FRED COHEN, JULIE HSU, ROSANNA

PICCOLO, AMY RICE, Erich Spangenberg , Douglas Croxall, Jaguar Technology Holdings, LLC, Brightware, Inc., Silicon Valley Bank, Firepond Inc., Orion IP LLC, Clear with Computers Inc., Clear with Computers LLC, Polaris IP LLC, Plutus IP Holdings , Plutus IP LLC, TechDev Holdings, FP Tech Holdings LLC, FP Technology Holdings, Inc., AFG Enterprises (USA), Inc., BRIGHT RESPONSE LLC, and /or and any listed company ' s parent, subsidiary , predecessor or successor companies' attempts to market, promote , sell or license products , services or technology related to automatically processing electronic communications, including the use of rule base and/or case base knowledge engines. 6. All agreements, licenses and covenants - not-to-sue that RELATE to the licensing

of patent rights. 7. All DOCUMENTS or THINGS that REFER or RELATE to PLAINTIFF's

change of name from Polaris IP, LLC to BRIGHT RESPONSE, LLC; including the reasons, causes and/or motivations therefor. 8. All DOCUMENTS or THINGS that REFER or RELATE to any

communications or correspondence between YOU and any other person or entity regarding the technology relating to purported inventions disclosed , described , or claimed in the `947 PATENT or RELATED PATENTS/APPLICATIONS. 9. All DOCUMENTS or THINGS that REFER or RELATE to Google's products

and services with respect to automatically processing electronic communications , including any investigations of Google ' s products and/or attempts to distinguish Google ' s products from any

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technology owned or promoted by YOU, ANTHONY ANGOTTI, FRED COHEN, JULIE HSU, ROSANNA PICCOLO, AMY RICE, Erich Spangenberg , Douglas Croxall, Jaguar Technology Holdings, LLC, Brightware, Inc., Silicon Valley Bank , Firepond Inc., Orion IP LLC, Clear with Computers Inc., Clear with Computers LLC, Polaris IP LLC, Plutus IP Holdings, Plutus IP LLC, TechDev Holdings , FP Tech Holdings LLC, FP Technology Holdings , Inc., AFG Enterprises (USA), Inc., BRIGHT RESPONSE LLC, and/ or and any listed company's parent, subsidiary , predecessor or successor companies. 10. All DOCUMENTS or THINGS that REFER or RELATE to AOL LLC or

America Online ' s products and services with respect to automatically processing electronic communications , including any investigations of AOL LLC or America Online' s products and services and/or attempts to distinguish AOL LLC or America Online' s products and services from any technology owned or promoted by YOU, ANTHONY ANGOTTI, FRED COHEN, JULIE HSU, ROSANNA PICCOLO, AMY RICE, Erich Spangenberg , Douglas Croxall, Jaguar Technology Holdings, LLC , Brightware , Inc., Silicon Valley Bank , Firepond Inc., Orion IP LLC, Clear with Computers Inc., Clear with Computers LLC, Polaris IP LLC , Plutus IP Holdings , Plutus IP LLC, TechDev Holdings , FP Tech Holdings LLC, FP Technology Holdings, Inc., AFG Enterprises (USA), Inc., BRIGHT RESPONSE LLC, and/ or and any listed company ' s parent, subsidiary , predecessor or successor companies. 11. All DOCUMENTS or THINGS that REFER or RELATE to Yahoo's products

and services with respect to the automatic processing of electronic communications , including any investigations of Yahoo's products and services and/or attempts to distinguish Yahoo's products and services from any technology owned or promoted by YOU, ANTHONY ANGOTTI, FRED COHEN, JULIE HSU, ROSANNA PICCOLO, AMY RICE, Erich Spangenberg ,. Douglas Croxall, Jaguar Technology Holdings , LLC, Brightware, Inc., Silicon Valley Bank , Firepond Inc., Orion IP LLC, Clear with Computers Inc., Clear with Computers LLC, Polaris IP LLC; Plutus IP Holdings , Plutus IP LLC, TechDev Holdings , FP Tech Holdings LLC, FP Technology Holdings, Inc., AFG Enterprises (USA), Inc., BRIGHT

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RESPONSE LLC, and/or and any listed company' s parent, subsidiary , predecessor or successor companies. 12. All communications with any persons or entities that have owned the `947

PATENT or RELATED PATENTS/APPLICATIONS. 13. All DOCUMENTS sent by YOU to any persons or entities that have owned the

`947 PATENT. 14. All DOCUMENTS received by YOU from any persons or entities that have

owned the `947 PATENT. 15. All prior art to the `947 PATENT, including publications , references, or

THINGS evaluated or asserted by third parties as prior art, or evaluated by YOU as potential prior art, including without limitation any references published in 1997 or prior, referring to automatically processing electronic communications, including the use of case base and/or rule base knowledge engines. 16. All DOCUMENTS or THINGS that REFER or RELATE to any and all versions

of software marketed as EZ Reader and/or Art*Enterprise, including any similar and/or subsequent software marketed , sold, offered, or developed undex any different names. 17. All DOCUMENTS or THINGS that REFER or RELATE to any sale or offer to

sell any and all versions of software marketed as EZ Reader and/or Art*Enterprise, including any similar and/or subsequent software marketed , sold, offered, or developed under any different names, 18. All DOCUMENTS or THINGS that REFER or RELATE to any

communications or correspondence between or among YOU, ANTHONY ANGOTTI, FRED COHEN, JULIE HSU, ROSANNA PICCOLO, AMY RICE, Erich Spangenberg , Douglas Croxall, Jaguar Technology Holdings , LLC, Brightware , Inc., Silicon Valley Bank , Firepond Inc., Orion IP LLC, Clear with Computers Inc., Clear with Computers LLC, Polaris IP LLC, Plutus IP Holdings , Plutus IP LLC, TechDev Holdings , FP Tech Holdings LLC, FP Technology Holdings , Inc., AFG Enterprises (USA), Inc., BRIGHT RESPONSE LLC, Chase Manhattan

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Bank, or any other customer or potential customer regarding any and all versions of software marketed as EZ Reader and/or Art * Enterprise , including any similar and/or subsequent software marketed, sold, offered, or developed under any different names. 19. DOCUMENTS sufficient to demonstrate any monies paid or received for the

licensing of patents. 20. Documents sufficient to demonstrate who or what entities own or control FPX

LLC.

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