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. 14

EXHIBIT J

Dockets.Justia.com

EXHIBIT A I. 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. Croxall. 3. "JAGUAR TECHNOLOGY HOLDINGS," or "JAGUAR" shall mean Jaguar "MR. CROXALL," "CROXALL," "YOU," or "YOUR,"shall mean Douglas B.

Technology Holdings, LLC, and its agents, officers, employees, representatives and attorneys, and any and all of its parent, subsidiary, predecessor or successor companies, corporations or business entities, including without limitation Fire Transaction Sub, Inc. 4. "FIREPOND," "FPX, LLC," "FP TECHNOLOGY HOLDINGS," or "CLEAR

WITH COMPUTERS, INC.," shall mean FPX, LLC, formerly known as Firepond, Inc., FP Technology Holdings and Clear with Computers, Inc., a prior assignee of U.S. Patent No. 6,411,947, and its agents, officers, employees, representatives and attorneys, and any and all of its predecessor or successor companies, corporations or business entities. 5. "PATENT PURCHASE AGREEMENT," or "AGREEMENT," shall mean the

document titled Patent Purchase Agreement entered into on January 28, 2004 between FIREPOND and Orion IP, LLC. 6. "PURCHASED PATENTS," shall mean those patents and patent applications

sold by FIREPOND to Orion IP, LLC in the PATENT PURCHASE AGREEMENT. 7. "ANTHONY ANGOTTI," "FRED COHEN," "JULIE HSU," "ROSANNA

PICCOLO," and "AMY RICE" shall mean the named inventors of U.S. Patent No. 6,411,947. 8. "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,
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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. 9. "THING" as used herein means any physical object other than a "DOCUMENT." (a) "PERSON" refers to any individual, corporation, proprietorship,

association, joint venture, company, partnership or other business or legal entity, including governmental bodies and agencies. 10. "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. 11. 12. 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 thereof, including without limitation U.S. Patent Application No. 08/853,074 and

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U.S. Patent No. 6,182,059, 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. 13. the singular. II. INSTRUCTIONS 1. If any portion of a DOCUMENT or THING is responsive to a request, the entire The singular form of words shall include the plural, and the plural shall include

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. 5. 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) (b) appendices; (c) (d) (e) immunity. 6. In the event that any DOCUMENT or THING called for by these requests 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 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

subsequent requests has been destroyed or discarded, that DOCUMENT or THING is to be identified by stating:
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(a) (b) appendices; (c) (d)

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

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. 7. 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 1. All DOCUMENTS or THINGS that REFER or RELATE to FIREPOND's

purchase of Brightware, Inc., and/or the `947 PATENT, including without limitation all reports, summaries, valuations or other DOCUMENTS that REFER or RELATE to any due diligence investigation conducted by FIREPOND. 2. DOCUMENTS sufficient to demonstrate the positions YOU hold or have held at

FIREPOND and the dates during which YOU held those positions. 3. DOCUMENTS sufficient to demonstrate the nature, type and amount of services

provided by NMPP, Inc. to JAGUAR or YOU regarding JAGUAR's purchase of FIREPOND. 4. All reports, summaries or other results of any due diligence or other

investigation(s), conducted for JAGUAR or at YOUR direction, that REFER or RELATE to the intellectual property owned or licensed by FIREPOND or that otherwise value FIREPOND's assets. 5. DOCUMENTS sufficient to demonstrate the identities of all individuals involved

in the purchase or the negotiations for the purchase of FIREPOND by JAGUAR.
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6.

All DOCUMENTS or THINGS that REFER or RELATE to the PATENT

PURCHASE AGREEMENT, including without limitation any drafts, partial drafts or mark-ups of the AGREEMENT. 7. DOCUMENTS sufficient to demonstrate the identities of all individuals

responsible for or involved in negotiating the PATENT PURCHASE AGREEMENT on behalf of FIREPOND. 8. All DOCUMENTS or THINGS that REFER or RELATE to the value, worth or

validity of the PURCHASED PATENTS, including without limitation any valuations, charts or memos created by YOU or at YOUR direction. 9. All DOCUMENTS or THINGS that REFER or RELATE to any license granted

by Orion IP, LLC under the PURCHASED PATENTS, including without limitation any license granted to FIREPOND at the time of or subsequent to the execution of the PATENT PURCHASE AGREEMENT. 10. A copy of any and all purchase agreement(s) or other DOCUMENTS

memorializing FIREPOND's sale of Brightware, Inc., or the technology or business assets formerly owned by Brightware, Inc., to eDocs, Inc.. 11. A copy of any and all license(s) associated with or RELATED to FIREPOND's

sale of Brightware, Inc., or the technology or business assets formerly owned by Brightware, Inc., to eDocs, Inc.. 12. All transcripts of deposition or trial testimony in which YOU testified regarding

JAGUAR's purchase of FIREPOND, the intellectual property acquired by FIREPOND during its purchase of Brightware, Inc., or the PATENT PURCHASE AGREEMENT, including without limitation a transcript of your deposition testimony given in the case styled Orion IP, LLC v. Hyundai, No. 6:05-cv-322 (E.D. Tex.). 13. All DOCUMENTS or THINGS that REFER or RELATE to the `947 PATENT

or any RELATED PATENTS/APPLICATIONS, including without limitation any DOCUMENTS that RELATE to the prosecution, valuation, sale or assignment of the `947
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PATENT or RELATED PATENTS/APPLICATIONS and including without limitation any opinions, analyses and/or investigations of infringement of such patents. 14. All DOCUMENTS or THINGS that REFER or RELATE to any attempts to

license, purchase, assign 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. E. F. G. H. I. Bright Response, LLC f/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.) Firepond, Inc. v. Egain Communications, Case No. 0:03-cv-03363 (Dist. of Minn.) Firepond, Inc. v. Banter, Inc., Case No. 0:03-cv-02940 (Dist. of Minn.) Firepond, Inc. v. Serviceware Tech, Inc., Case No. 0:03-cv-04917 (Dist. of Minn.) Firepond, Inc. v. RightNow Technology, Case No. 0:03-cv-03165-(Dist. Of Minn.) Orion IP, LLC v. RightNow Technology, Case No. 0:04-cv-1215 (Dist. of Minn.)

15.

All DOCUMENTS or THINGS that REFER or RELATE to any compensation,

both monetary and/or non-monetary, that YOU, ANTHONY ANGOTTI, FRED COHEN, JULIE HSU, ROSANNA PICCOLO, AMY RICE, Erich Spangenberg, NMPP, Inc., JAGUAR, Brightware, Inc., Silicon Valley Bank, FIREPOND, Orion IP, LLC, Clear with Computers, LLC, Polaris IP, LLC, Circinus IP, LLC, Plutus IP Holdings, Plutus IP, LLC, TechDev Holdings, LLC or BRIGHT RESPONSE and any listed company's parent, subsidiary, predecessor or successor companies paid or received in connection with the assignment,

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license, sale, or transfer of any rights in or to the `947 PATENT or RELATED PATENTS/APPLICATIONS. 16. All DOCUMENTS or THINGS that REFER or RELATE to YOUR,

ANTHONY ANGOTTI's, FRED COHEN's, JULIE HSU's, ROSANNA PICCOLO's, AMY RICE's, Erich Spangenberg's, JAGUAR's, Brightware, Inc.'s, Silicon Valley Bank's, FIREPOND's, Clear with Computers, LLC's, Orion IP, LLC's, Circinus IP, LLC's, Polaris IP, LLC's, Plutus IP Holdings', Plutus IP, LLC's, TechDev Holdings LLC's or BRIGHT RESPONSE's 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 17. All prior art to the `947 PATENT, including publications, references, or

THINGS asserted by third parties to be 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. 18. 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 under any different names. 19. All DOCUMENTS or THINGS that REFER or RELATE to the licensing

practices of FIREPOND or JAGUAR, including but not limited to any licensing agreements. 20. All DOCUMENTS or THINGS challenging, questioning, analyzing, or otherwise

RELATING TO the patentability, validity, enforceability, or infringement of any alleged invention described, disclosed, or claimed in the `947 PATENT or RELATED PATENTS/APPLICATIONS. 21. All DOCUMENTS supporting any objective indicia of non-obviousness of any

alleged invention described, disclosed or claimed in the `947 PATENT, including, but not
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limited to, contentions of commercial success of the invention and/or products embodying the invention, long-felt but unsolved needs met by those products and/or the invention, failure of others to meet these needs, industry recognition of the invention and/or products embodying the invention, and deliberate copying of the invention or laudatory statements by accused infringers.

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