Software Rights Archive, LLC v. Google Inc. et al

Filing 294

NOTICE by Software Rights Archive, LLC of Subpoena Commanding Production of Documents (Kaplan, Lee)

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

SOFTWARE RIGHTS ARCHIVE, LLC §

v. §

Plaintiff, §
§
§

§

Civil Action No. 2:07-cv-511-CE

GOOGLE INC., YAHOO! INC., §
lAC SEARCH & MEDIA, INC., AOL LLC, §
§

and LYCOS, INC. §
Defendants. §

JURY TRIAL DEMANDED

NOTICE OF SUBPOENA COMMANDING PRODUCTION OF DOCUMENTS TO HARRTY & HARRTY, LLP
PLEASE TAKE NOTICE that, pursuant to Rule 45 of the Federal Rules of Civil

Procedure, plaintiff Software Rights Archive, LLC intends to serve the attached subpoena on
Harrity & Harrity, LLP, 11350 Random Hils Road, Suite 600, Fairfax, VA 22030, commanding
the production of documents specified therein.
Respectfully Submitted,

rt¿r ~ ~!' PI
LEAD ATTORNEY

State Bar No. 11094400
SMYSER KAPLAN & VESELKA, L.L.P.

700 Louisiana, Suite 2300 Houston, Texas 77002 [phone]
[phone] (fax)

Ikaplan(fskv.com
Victor G. Hardy State Bar No. 00790821
(Admitted Pro Hac Vice) Andrew G. DiNovo State Bar No. 00790594

Adam G. Price State Bar No. 24027750 Jay D. Ellwanger State Bar No. 24036522
DiNovo PRICE ELLWANGER LLP

P.O. Box 201690 Austin, Texas 78720 [phone]
[phone] (fax)

vhardy(fdpelaw.com

O/counsel:
S. Calvin Capshaw State Bar No. 03783900 Elizabeth L. DeRieux State Bar No. 05770585
CAPSHAW DERiEUX 1127 Judson Road, Suite 220

P.O. Box 3999 Longview, TX 75606-3999 [phone]
[phone] (fax)

ccapshaw(fcapshawlaw.com
Robert M. Parker State Bar No. 15498000 Robert C. Bunt State Bar No. 00787165 Charles Ainsworth State Bar No. 0078352
PARKER, BUNT & AINSWORTH, P.c.

100 East Ferguson, Suite 1114

Tyler, Texas 75702 [phone]
[phone] (fax)

CERTIFICATE OF SERVICE

The undersigned hereby certifies that all counsel of record who are deemed to have consented to electronic service are being served with a copy of this document via the Court's
CM/ECF system per Local Rule CV-5(a)(3) on June 15th, 2010.

Lee L. Kaplan

rI¡¿~ r,~ dP

AO 88B (Rev. 06/09) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action

UNITED STATES DISTRICT COURT
for the
Eastern District of

Virginia
)
) ) ) ) )
Civil Action No. Civil Case No. 2:07 -cv-511 (CE)

Software Rights Archive, LLC

Plaintif
v.

Google Inc., Yahoo! Inc., lAC Search & Media, Inc., AOL, LLC, and Lycos, Inc.
Defendant

(If the action is pending in another district, state where:

Eastern District of Texas

SUBPOENA TO PRODUCE DOCUMENTS, INFORMTION, OR OBJECTS OR TO PERMT INSPECTION OF PREMISES IN A CIVIL ACTION
To: Paul A. Harrity, Harrity & Harrity, LLP, 11350 Random Hills Road, Suite 600, Fairfax, VA 22030

~ 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 attached Appendix A.

Place: J.M. & Associates

Date and Time:

2121 Eisenhower Ave., Ste. 200

Alexandria, VA 22314

06/30/2010 10:00 am

o 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 part may inspect, measure, survey, photograph, test, or sample the propert or any designated object or operation on it.
¡Piace
: Date and Time:

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.
The provisions of

Date: b1t; -'l (0
CLERK OF COURT

OR
Signature afClerk ar Deputy Clerk

4~t~dltA

The name, address, e-mail, and telephone number of

the attorney representing (name afparty) Software

Rights Archive, LLC , who issues or requests this subpoena, are:
Lee L. Kaplan, Smyser, Kaplan & Veselka, L.L.P., 700 Louisiana Street, Suite 2300, Houston, Texas 77002, Ikaplan~skv.com, telephone: [phone], Facsimile: [phone].

AO 88B (Rev. 06/09) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action (Page 2)
Civil Action No. Civil Case No. 2:07-cv-511(CE)

PROOF OF SERVICE

(This section should not be filed with the court unless required by Fed. R. Civ. P. 45.)
This subpoena for (name af individual and title, if any)

was received by me on (date)
o I served the subpoena by delivering a copy to the named person as follows:

on (date)
o I returned the subpoena unexecuted because:

; or

Unless the subpoena was issued on behalf of the United States, or one of its offcers or agents, I 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 88B (Rev. 06/09) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action(Page 3)

Federal Rule of

Civil Procedure 45 (c), (d), and (e) (Effective 12/1/07)
(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 business or must organize and label them to correspond to course of the categories in the demand. (B) Form for Producing Electronically Stored Iriormation Not Specifed 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 undue burden or cost. On motion to compel accessible because of discovery or for a protective order, the person responding must show undue that the information is not reasonably accessible because of that showing is made, the court may nonetheless burden or cost. If

(c) Protecting a Person Subject to a Subpoena.
(1) Avoiding Undue Burden or Expense; Sanctions. A par 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 par or attorney

who fails to comply.

(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 part 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 the time specified for compliance or 14 served before the earlier of 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
part may move the issuing court for an order compellng 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 part nor a part's

officer from significant expense resulting from compliance. (3) Quashing or Modifying a Subpoena. (A) 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 par nor a part's offcer

the requesting part shows Rule 26(b)(2)(C). The court may specify conditions for the discovery. (2) Claiming Privilege or Protection. (A) Iriormation Withheld A person withholding subpoenaed information under a claim that it is privileged or subject to
order discovery from such sources if good cause, considering the limitations of

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)(B)(iii), the person may be commanded to attend a trial by traveling from any such place within the state where the trial is held;
(ii) 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 part; or

protection as trial-preparation material must: (i) expressly make the claim; and the withheld documents, (ii) describe the nature of communications, or tangible things in a manner that, without privileged or protected, wil enable the revealing information itself parties to assess the claim. (B) Information Produced If information produced in response to a protection as trialprivilege or of subpoena is subject to a claim of preparation material, the person making the claim may notify any the claim and the basis for it. part that received the information of After being notified, a part must promptly return, sequester, or destroy the specified information and any copies it has; must not use or disclose the information unti the claim is resolved; must take
reasonable steps to retrieve the information if

the part disclosed it

before being notified; and may promptly present the information to the claim. The person the court under seal for a determination of 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 nonpar's failure to obey must be excused ifthe
place outside the limits of

(ii) a person who is neither a part nor a part's offcer to incur

substantial expense to travel more than 100 miles to attend triaL.

(C) Specifing 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 the serving par: specified conditions if (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 wil be reasonably compensated.

subpoena purports to require the nonpart to attend or produce at a Rule 45(c)(3)(A)(ii).

APPENDIX

A

You are requested to produce and/or permit inspection and copying of all the following documents and things! (which include electronically stored information and tangible things) as permitted under Fed. R. Civ. Proc. 45 at the time and place noted on the attached subpoena.
1. All documents and things concerning the invention, development, investigation,

application, prosecution, examination and issuance of U.S. Patent No. 6,285,999 ("the '999 Patent"), including without limitation (a) invention disclosures, (b) communications to, from,
between, or among all persons or entities involved in the invention, development, investigation,

application, prosecution, examination and issuance of the '999 Patent, including Lawrence Page,

any other inventor of the '999 Patent, Google Inc. (including all affiliates, agents, and
representatives thereof), Stanford University (including all agents and representatives thereof),
any other assignee of the '999 Patent, the prosecuting attorney( s) and persons working under

their direction, patent agent(s) and persons working under their direction, the United States Patent and Trademark Office (including all agents and Examiners thereof), and (c) internal memoranda, biling records, emails, notes, tests, diagrams, calculations, drawings, and all other
documents relating to the invention, development, investigation, application, prosecution, examination and issuance of the '999 Patent, and (d) references to any patents for which Daniel Egger is listed as an inventor or co-inventor, including U.S. Patent Nos. 5,544,352; 5,832,494;
and 6,233,571.
2. All documents and things concerning the invention, development, investigation,

application, prosecution, examination and issuance of U.S. Patent No. 6,799,176 ("the '176 Patent"), including without limitation (a) invention disclosures, (b) communications to, from,
between, or among all persons or entities involved in the invention, development, investigation,

application, prosecution, examination and issuance of the' 176 Patent, including Lawrence Page,

any other inventor of the '176 Patent, Google Inc. (including all affiiates, agents, and
representatives thereof), Stanford University (including all agents and representatives thereof),
any other assignee of the '176 Patent, the prosecuting attorney(s) and persons working under

their direction, patent agent(s) and persons working under their direction, the United States Patent and Trademark Office (including all agents and Examiners thereof), and (c) internal memoranda, biling records, emails, notes, tests, diagrams, calculations, drawings, and all other
documents relating to the invention, development, investigation, application, prosecution, examination and issuance of the' 176 Patent, and (d) references to any patents for which Daniel Egger is listed as an inventor or co-inventor, including U.S. Patent Nos. 5,544,352; 5,832,494;
and 6,233,571.
3. All documents and things concerning the invention, development, investigation,

application, prosecution, examination and issuance of U.S. Patent No. 7,058,628 ("the '628 Patent"), including without limitation (a) invention disclosures, (b) communications to, from,
1 For the purpose of this subpoena, "documents and things" include, without limitation, information in any form,
whether in hard copy or electronic form. This includes, by way of example and not by way of limitation all of the
following: agreements, articles, accounts, agendas, calendars, charts, checks, contracts, correspondence, deal

memoranda, diaries, drafts, drawings, emails, letters, lists, logs, memoranda, messages, notes, notices, orders, papers, pleadings, press releases, publications, questionnaires, reports, resolutions, studies, testimony, trade letters,
voice mail

and all items discoverable pursuant to the Federal Rules of Civil Procedure.

1

between, or among all persons or entities involved in the invention, development, investigation,
application, prosecution, examination and issuance of

the '628 Patent, including Lawrence Page,

any other inventor of the '628 Patent, Google Inc. (including all affliates, agents, and
representatives thereof), Stanford University (including all agents and representatives thereof),
any other assignee of the '628 Patent, the prosecuting attorney(s) and persons working under

their direction, patent agent(s) and persons working under their direction, the United States Patent and Trademark Offce (including all agents and Examiners thereof), and (c) internal memoranda, biling records, emails, notes, tests, diagrams, calculations, drawings, and all other
documents relating to the invention, development, investigation, application, prosecution, the '628 Patent, and (d) references to any patents for which Daniel examination and issuance of Egger is listed as an inventor or co-inventor, including U.S. Patent Nos. 5,544,352; 5,832,494;
and 6,233,571.
4. All documents and things concerning the invention, development, investigation,

application, prosecution, examination and issuance of U.S. Patent No. 7,269,587 ("the '587 Patent"), including without limitation (a) invention disclosures, (b) communications to, from,
between, or among all persons or entities involved in the invention, development, investigation,
application, prosecution, examination and issuance of

the '587 Patent, including Lawrence Page,

any other inventor of the '587 Patent, Google Inc. (including all affiiates, agents, and
representatives thereof), Stanford University (including all agents and representatives thereof),
any other assignee of the '587 Patent, the prosecuting attorney(s) and persons working under

their direction, patent agent(s) and persons working under their direction, the United States Patent and Trademark Offce (including all agents and Examiners thereof), and (c) internal memoranda, biling records, emails, notes, tests, diagrams, calculations, drawings, and all other
documents relating to the invention, development, investigation, application, prosecution, the '587 Patent, and (d) references to any patents for which Daniel examination and issuance of Egger is listed as an inventor or co-inventor, including U.S. Patent Nos. 5,544,352; 5,832,494;
and 6,233,571.
5. All documents and things concerning the invention, development, investigation,

application, prosecution, examination and issuance of U.S. Patent No. 7,434,351 ("the '351 Patent"), including without limitation (a) invention disclosures, (b) communications to, from,
between, or among all persons or entities involved in the invention, development, investigation,
application, prosecution, examination and issuance of

the '351 Patent, including Lawrence Page,

any other inventor of the '351 Patent, Google Inc. (including all affliates, agents, and
representatives thereof), Stanford University (including all agents and representatives thereof),
any other assignee of the '351 Patent, the prosecuting attorney(s) and persons working under

their direction, patent agent(s) and persons working under their direction, the United States Patent and Trademark Office (including all agents and Examiners thereof), and (c) internal drawings, and all other
memoranda, biling records, emails, notes, tests, diagrams, calculations,

documents relating to the invention, development, investigation, application, prosecution, the '351 Patent, and (d) references to any patents for which Daniel examination and issuance of Egger is listed as an inventor or co-inventor, including U.S. Patent Nos. 5,544,352; 5,832,494;
and 6,233,571.

6. All documents and things relating to or discussing in whole or in par (1) Daniel
Egger; (2) any patents, patent applications, or publications naming Egger as an inventor or author
2

(including without limitation United States Patent Nos. 5,544,352; 5,832,494; or 6,233,571),

and/or (3) any technical or legal significance of any patents, patent applications, or publications naming Egger as an inventor or author (including without limitation United States Patent Nos.
5,544,352; 5,832,494; or 6,233,571).

3