Performance Pricing, Inc. v. Google Inc. et al

Filing 248

First MOTION to Compel the Deposition of Michelle Lee by Performance Pricing, Inc.. (Attachments: # 1 Text of Proposed Order, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit 3, # 5 Exhibit 4, # 6 Exhibit 5, # 7 Affidavit Cho Declaration)(Cho, Christin)

EXHIBIT 2

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

PERFORMANCE PRICING, INC., Plaintiff, v. GOOGLE INC.; AOL LLC; MICROSOFT CORP.; YAHOO! INC.; IAC SEARCH & MEDIA, INC.; AND A9.COM, INC. Defendants. Civil Action No. 2-07CV-432-LED JURY TRIAL REQUESTED

DEFENDANT GOOGLE INC.'S FIRST SUPPLEMENTAL INITIAL DISCLOSURES Pursuant to Rules 26(a)(1) and (e) of the Federal Rules of Civil Procedure and paragraph 1(a) through (g) of the Court's Discovery Order, Defendant Google Inc. ("Google") hereby makes the following disclosures. Google bases the following disclosures on information currently and reasonably available. Google reserves the right to supplement these disclosures, as necessary, pursuant to Rule 26(e) of the Federal Rules of Civil Procedure, and to rely on the testimony of any person it subsequently identifies as having knowledge relevant to this dispute. Google's current understanding of the accused product is based on Plaintiff Performance Pricing, Inc.'s ("Performance Pricing") Disclosure of Asserted Claims and Infringement Contentions served on June 9, 2008 in which Performance Pricing disclosed that it is accusing certain features of Google AdWords of infringing U.S. Patent No. 6,978,253 ("the `253 patent"). A. Correct Names of the Parties

The correct name of Defendant Google is Google Inc. On information and belief, the correct name of Plaintiff Performance Pricing is Performance Pricing, Inc., the correct name of
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Defendant AOL is AOL LLC, the correct name of Defendant Microsoft is Microsoft Corp., the correct name of Defendant Yahoo! is Yahoo! Inc., the correct name of Defendant IAC is IAC Search and Media, Inc., and the correct name of Defendant A9 is A9.com, Inc. B. Potential Parties

Wayne W. Lin and PricePlay, Inc. are potential additional parties to this action. Mr. Lin is the named inventor of the `253 patent and PricePlay is a company he founded. Both Mr. Lin and PricePlay may have an ownership interest in the '253 patent. C. Legal Theories and Factual Bases of Google's Claims and Defenses 1. Invalidity

The `253 patent is invalid for failing to satisfy one or more requirements for patentability under the patent laws of the United States, as set forth in Title 35 of the United States Code, including without limitation, the requirements set forth in sections 101, 102, 103, and 112. Google will provide details of its invalidity positions in Defendants Invalidity Contentions, which will be prepared pursuant to Patent Rule 3-3 and served on July 30, 2008. 2. Non-Infringement

Google has not infringed any valid and enforceable claim of the `253 patent. Properly construed, no valid and enforceable claim of the `253 patent covers, either literally or under the doctrine of equivalents, any features of Google AdWords. Facts supporting Google's noninfringement contentions may include, but are not limited to, the structure, characteristics, and operation of the accused features of Google AdWords, the `253 patent and its prosecution history, and any admissions by Performance Pricing regarding the `253 patent.

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3.

Prosecution History Estoppel

The claims of the `253 patent are so limited by the prior art, by their terms, and/or by representations made to the United States Patent and Trademark Office during prosecution of the application which resulted in the `253 patent, that none of the claims of the patent are infringed by Google. 4. Unclean Hands

On information and belief, the claims of the `253 patent are unenforceable due to Plaintiff's unclean hands. 5. Lack of Standing

On information and belief, Plaintiff lacks the standing necessary to assert the claims of the `253 patent against Google. D. Persons Having Knowledge of Relevant Facts

Based on Google's current understanding of the claims asserted by Performance Pricing, Google identifies the following individuals as having knowledge of relevant facts: Name and Contact Information (if known) Wayne W. Lin c/o Performance Pricing's counsel of record, Dovel & Luner 201 Santa Monica Boulevard Suite 600 Santa Monica, CA 90401 Connection with the Case Named inventor of the `253 patent. Substance of Known Information Issues relating to the `253 patent's prosecution history; prior art; invalidity; conception; reduction to practice; construction of the claims in the `253 patent; embodiments of the `253 patent; Performance Pricing's claimed damages.

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Name and Contact Information (if known) PricePlay, Inc. 3743 Irvine Blvd. 175 Irvine, CA 92602

Connection with the Case Company purporting to offer products covered by the `253 patent.

Substance of Known Information Issues relating to construction of the claims in the `253 patent; conception, development, design, and reduction to practice of the inventions disclosed in the `253 patent; Performance Pricing's claimed damages. Issues relating to the `253 patent's prosecution history; prior art; invalidity; conception; reduction to practice; construction of the claims in the `253 patent; embodiments of the `253 patent; Performance Pricing's licensing practices; Performance Pricing's claimed damages. Issues relating to the `253 patent's prosecution history; prior art; invalidity; conception; reduction to practice; construction of the claims in the `253 patent; embodiments of the `253 patent; Performance Pricing's licensing practices; Performance Pricing's claimed damages.

Clayton J. Haines c/o Performance Pricing's counsel of record, Dovel & Luner 201 Santa Monica Boulevard Suite 600 Santa Monica, CA 90401

Director of Performance Pricing

Paul R. Ryan c/o Performance Pricing's counsel of record, Dovel & Luner 201 Santa Monica Boulevard Suite 600 Santa Monica, CA 90401

Director of Performance Pricing

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Name and Contact Information (if known) Robert L. Harris c/o Performance Pricing's counsel of record, Dovel & Luner 201 Santa Monica Boulevard Suite 600 Santa Monica, CA 90401

Connection with the Case Director of Performance Pricing

Substance of Known Information Issues relating to the `253 patent's prosecution history; prior art; invalidity; conception; reduction to practice; construction of the claims in the `253 patent; embodiments of the `253 patent; Performance Pricing's licensing practices; Performance Pricing's claimed damages. The prosecution of the `253 patent; prior art; invalidity; conception; reduction to practice; construction of the claims in the `253 patent. Past design, development, and operation of Google AdWords. Design, development, and operation of Google AdWords; prior art; invalidity; non-infringement; damages. AOL Search Marketplace; damages.

Neal M. Cohen Vista IP Law Group, LLP 2040 Main Street 9th Floor Irvine, CA 92614

Prosecuting attorney of the `253 patent

Clayton Bavor c/o Google's counsel of record Quinn Emanuel Urquhart Oliver & Hedges, LLP 50 California Street, 22nd Floor San Francisco, CA 94111 Andrew Silverman c/o Google's counsel of record Quinn Emanuel Urquhart Oliver & Hedges, LLP 50 California Street, 22nd Floor San Francisco, CA 94111 Karen Aviram c/o Google's counsel of record Quinn Emanuel Urquhart Oliver & Hedges, LLP 50 California Street, 22nd Floor San Francisco, CA 94111

Google employee and former Product Manager for Google AdWords' Ads Quality. Google employee.

Google employee.

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Name and Contact Information (if known) Shane Antos c/o Google's counsel of record Quinn Emanuel Urquhart Oliver & Hedges, LLP 50 California Street, 22nd Floor San Francisco, CA 94111 Evan Sidarto c/o Google's counsel of record Quinn Emanuel Urquhart Oliver & Hedges, LLP 50 California Street, 22nd Floor San Francisco, CA 94111 Michelle Lee c/o Google's counsel of record Quinn Emanuel Urquhart Oliver & Hedges, LLP 50 California Street, 22nd Floor San Francisco, CA 94111 Advanced Information Systems P.O. Box 1236 Midland, MI 48641 Amazon.com 1200 12th Ave., Ste. 1200 Seattle, WA 98144 Phone: [phone] Fax: [phone] AOL LLC 22000 AOL Way Dulles, VA 20166

Connection with the Case Google employee.

Substance of Known Information Business and financial aspects of Google AdWords; damages.

Google employee.

Business and financial aspects of Google AdWords; damages.

Google employee.

Google patent licensing practices and policies relating to AdWords; damages. Prior art to the `253 patent, including U.S. Patent No. 6,783,028 Prior art to the `253 patent.

Potential prior art witness.

Potential prior art witness.

Potential prior art witness.

Prior art to the `253 patent, including the "You Guessed It!" game offered by Compuserve, and individual advertisement auctions offered by Netscape Prior art to the `253 patent, including U.S. Patent No. 4,850,007

AT&T New York, NY

Potential prior art witness.

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Name and Contact Information (if known) Bell Laboratories Murray Hill, NJ Broadvision Los Altos, CA Concept Shopping, Inc. Lisle, IL Daniel M. Miller 53 Highland Rd. Mahopac, NY 10541 Dwight A Merriman AlleyCorp 40 West 20th Street 6th Floor New York, NY 10011 eBay Inc. 2145 Hamilton Avenue San Jose, CA 95125 Expanse Networks, Inc. Doyletown, PA IBM Corporation 1 New Orchard Road Armonk, New York 10504 Incentech, Inc. Abilene, TX Infospace, Inc. 601 108th Avenue NE Bellevue, WA 98004

Connection with the Case Potential prior art witness. Potential prior art witness. Potential prior art witness. Potential prior art witness Potential prior art witness

Substance of Known Information Prior art to the `253 patent, including U.S. Patent No. 4,850,007 Prior art to the `253 patent, including U.S. Patent No. 5,710,887 Prior art to the `253 patent, including U.S. Patent No. 6,389,401 Prior art to the `253 patent, including U.S. Patent No. 6,064,981 Prior art to the `253 patent, including U.S. Patent No. 7,039,599 Prior art to the `253 patent. Prior art to the `253 patent, including U.S. Patent No. 6,324,519 Prior art to the `253 patent, including U.S. Patent Nos. 6,151,589 and 7,089,194 Prior art to the `253 patent, including U.S. Patent No. 6,516,302 Prior art to the `253 patent, including the Dogpile metasearch site

Potential prior art witness. Potential prior art witness Potential prior art witness.

Potential prior art witness Potential prior art witness.

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Name and Contact Information (if known) Intel Corporation 2200 Mission College Blvd Santa Clara, CA 95054

Connection with the Case Potential prior art witness.

Substance of Known Information Prior art to the `253 patent, including U.S. Patent Nos. 5,752,238 and 5,724,521 Prior art to the `253 patent, including U.S. Patent No. 5,721,827 Prior art to the `253 patent, including U.S. Patent No. 7,039,599 Prior art to the `253 patent, including U.S. Patent No. 6,269,343 Prior art to the `253 patent, including U.S. Patent No.6,064,981 Prior art to the `253 patent, including U.S. Patent No. 5,890,718 Prior art to the `253 patent Prior art to the `253 patent, including U.S. Patent No. 5,916,024 Prior art to the `253 patent, including U.S. Patent No. 5,966,699 Prior art to the `253 patent, including U.S. Patent No. 4,869,500 Prior art to the `253 patent

James Logan 18 Castle Hill Road Windham, NH 03087 Kevin O'Connor O'Connor Ventures [e-mail] MobShop, Inc. 208 Utah Street Suite 310 San Francisco, CA 94103 Neil A. Barni 2220 Canton Lofts #103 Dallas, TX 75201 Ok-Sun Byon 108-202 Parktown 52 Sunae-dong, Bundang-gu, Songnam-shi, Kyonggi-do 463-020, Rep. of Korea Priceline.com 800 Connecticut Avenue Norwalk, CT 06854 Response Reward Systems, LLC 2165 55th Avenue Vero Beach, FL 32966 Richard Zandi 34 Ridge Rd. Chappaqua, NY 10515 Rodstock Leisure Limited Wigna, United Kingdom Shoe Carnival, Inc. 7500 East Columbia Street Evansville, IN 47715

Potential prior art witness.

Potential prior art witness Potential prior art witness. Potential prior art witness Potential prior art witness.

Potential prior art witness. Potential prior art witness. Potential prior art witness. Potential prior art witness. Potential prior art witness.

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Name and Contact Information (if known) Thomas Mureko, Jr. 643 N. Abingdon St. Arlington, VA 22203 Vulcan Inc. 505 Fifth Ave S Suite 900 Seattle, WA 98104 Walker Asset Management Limited Partnership Four High Ridge Park Stamford, CT 06905 Walker Digital Management, LLC 5 High Ridge Park, Suite 1B Stamford, CT 06905 Yahoo! Inc. 701 First Avenue Sunnyvale, CA 94089

Connection with the Case Potential prior art witness Potential prior art witness.

Substance of Known Information Prior art to the `253 patent, including U.S. Patent No. 6,578,014 Prior art to the `253 patent, including U.S. Patent Nos. 6,604,089 and 7,146,330 Prior art to the `253 patent, including U.S. Patent No. 5,779,549 Prior art to the `253 patent, including U.S. Patent No. 6,161,059 Prior art to the `253 patent, including any Goto.com pay-perclick systems and U.S. Patent No. 6,631,372

Potential prior art witness. Potential prior art witness. Potential prior art witness.

In addition to the above-listed individuals, Google incorporates by reference the individuals disclosed by Performance Pricing, AOL, Microsoft, Yahoo, IAC, and A9 pursuant to Fed. R. Civ. Pro. 26 as if set forth fully herein. Google expressly reserves the right to supplement this response pursuant to Fed. R. Civ. Pro. 26(e) as its investigation continues. E. Any Indemnity and Insuring Agreements

Google is not aware at this time of any indemnity or insuring agreements under which any person or entity may be liable to satisfy part or all of any judgment entered in this action against Google, or to indemnify Google for payments made to satisfy any such judgment. F. Settlement Agreements

Google is not aware at this time of any settlement agreement related to the subject matter of this action.

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G.

Statement of Any Party to the Litigation

At the present time, Google has no statements other than those disclosed above and those that may be produced in documents pursuant to the schedule set forth in the Court's Docket Control Order. H. Testifying Experts

Google has not yet determined whom its testifying experts will be in this matter. Google will provide this information no later than the deadline set by the Court's docket control order. DATED: February 24, 2009 Respectfully 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 Emily C. O'Brien 50 California Street, 22nd Floor San Francisco, California 94111 Telephone: [phone] Facsimile: [phone] [e-mail] [e-mail] [e-mail] [e-mail] [e-mail] BECK REDDEN & SECREST, L.L.P. David J. Beck Michael Ernest Richardson One Houston Center 1221 McKinney St. Suite 4500 Houston, Texas 77010-2010 Telephone: [phone] Facsimile: [phone] [e-mail] [e-mail]
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Attorneys for Defendant Google 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 February 24, 2009.

/s/ Emily C. O'Brien Emily C. O'Brien, pro hac vice [e-mail] QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP 50 California Street, 22nd Floor San Francisco, California 94111 Telephone: [phone] Facsimile: [phone]

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