API Technologies, LLC v. Facebook, Inc. et al

Filing 183

RESPONSE to Motion re 174 MOTION to Change Venue Motion to Transfer Venue to the Northern District of California filed by API Technologies, LLC. (Attachments: # 1 Affidavit Wiley Declaration, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit 3, # 5 Exhibit 4, # 6 Exhibit 5, # 7 Exhibit 6, # 8 Exhibit 7, # 9 Exhibit 8, # 10 Exhibit 9, # 11 Exhibit 10, # 12 Exhibit 11, # 13 Exhibit 12, # 14 Exhibit 13, # 15 Exhibit 14, # 16 Exhibit 15, # 17 Exhibit 16, # 18 Exhibit 17, # 19 Exhibit 18, # 20 Exhibit 19, # 21 Exhibit 20, # 22 Exhibit 21, # 23 Exhibit 22, # 24 Exhibit 23, # 25 Exhibit 24, # 26 Exhibit 25, # 27 Exhibit 26, # 28 Exhibit 27, # 29 Exhibit 28, # 30 Exhibit 29, # 31 Exhibit 30, # 32 Exhibit 31, # 33 Exhibit 32, # 34 Exhibit 33, # 35 Exhibit 34, # 36 Affidavit Spangenberg Declaration, # 37 Affidavit Spangler Declaration, # 38 Affidavit Hepburn Declaration)(Wiley, Elizabeth)

WILEY DECLARATION EX. 5

AO 88A ( Rev. 01 /09) Subpoena to Testify at a Deposition or to Produce Documents in a Civil Action

UNITED STATES DISTRICT COURT
for the
Northern District of Texas

Bright Response LLC
Plaintiff V. )

Civil Action No. 2:07-cv-371-CE
(If the action is pending in another district, state where:

Google Inc. et al
Defendant

Eastern District of Texas

SUBPOENA TO TESTIFY AT A DEPOSITION OR TO PRODUCE DOCUMENTS IN A CIVIL ACTION
To: Clear With Computers LLC Q( Testimony: YOU ARE COMMANDED to appear at the time, date, and place set forth below to testify at a deposition to be taken in this civil action. If you are an organization that is not a party in this case, you must designate one or more officers, directors , or managing agents, or designate other persons who consent to testify on your behalf about the following matters, or those set forth in an attachment:

See Ex. A Place: U.S. Legal
5910 North Central Expressway Dallas . TX 75206-5130 Date and Time: 05/11/2010 9:00 am

The deposition will be recorded by this method:

Stenographic and video

0 Production: You, or your representatives, must also bring with you to the deposition the following documents, electronically stored information, or objects, and permit their inspection, copying, testing, or sampling of the material:

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: 04/14/2010 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. and AOL LLC , who issues or requests this subpoena, are: Eugene Novikov, Quinn Emanuel Urquhart & Sullivan , 50 California St., San Francisco , CA 94111, eugenenovikov @ quinnemanuel .com, 415.875.6600

AO 88A (Rev. 01/09) Subpoena to Testify at a Deposition or to Produce Documents in a Civil Action (Page 2)

Civil Action No. 2:07-cv-371-CE

PROOF OF SERVICE
(This section should not be filed with the court unless required by Fed. R. Civ. A 45.) This subpoena for (name of individual and title , if any) was received by me on (date)

0 I personally served the subpoena on the individual at (place)
on (date) ; or

0 I 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

0 I served the subpoena on (name of individual) designated by law to accept service of process on behalf of (name of organization) on (date) ; or

0 I returned the subpoena unexecuted because 0 Other (sped):

; or

Unless the subpoena was issued on behalf of the United States, or one of its officers 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 88A (Rev. 01/09) Subpoena to Testify at a Deposition or to Produce Documents in a Civil Action (Page 3)

Federal Rule of Civil Procedure 45 (c), (d), and (e) (Effective 12/1/07) (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 parry 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 party or attorney designated in the subpoena a written objection to

(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) 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:

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. (A) When Required. On timely motion, the issuing court must quash or modify a subpoena that:

(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 informatiomto 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, flails 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).

(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)(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;
(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 pl'otect 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. "CLEAR WITH COMPUTERS", "YOU" or "YOUR" shall mean Clear with

Computers LLC f/k/a Orion IP LLC Inc. and its agents, officers, employees, representatives and attorneys, and any and all of its predecessor or successor companies, corporations or business entities. 2. "DEFENDANTS" shall mean defendants Google Inc., America Online Inc., AOL

LLC and Yahoo, Inc.
3. "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.
4. "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.

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5.

"REFLECT," "REFLECTING," "RELATE TO," "REFER TO," "RELATING

TO," and "REFERRING TO" shall mean relating to referring to, concerning , mentioning, reflecting , pert aining to, evidencing ; involving, describing, discussing , commenting on, embodying , responding to, supporting, contradicting , or constituting ( in whole or in part ), as the context makes appropriate.

6. 6,411,947.
7.

The "`947 PATENT" or "PATENT-IN-SUIT" shall mean U.S. Patent No.

"RELATED PATENTS AND APPLICATIONS" means any Patent or Patent

Application related to the PATENT-IN-SUIT, including but not limited to Patents and Patent Applications in the same family or chain of the PATENT-IN-SUIT.

8.

The "FIREPOND PATENTS" shall mean U.S. Patent Nos. 5, 283,865 , 5,367,627,

5,493,490, 5,615,342, 5,625,776, 5,758,331, 6,169,979, 6,167,525, 6,141,658, 6,438,547, 6,453,302, 6,411,947, 6,182,059 , and 6,278,996, collectively and individually.
9. 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 , 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. 10. The phrase "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.

11. the singular.

The singular form of words shall include the plural, and the plural shall include

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II.

RULE 30(b)(6) TOPICS
1. The acquisition of the FIREPOND PATENTS by YOU, and /or any past or

present ownership interest in the FIREPOND PATENTS held by YOU , including any DOCUMENTS evidencing , memorializing , concerning , or documenting the acquisition, and the location of such DOCUMENTS.

2.

Any transfer of the FIREPOND PATENTS involving YOU, including any

DOCUMENTS evidencing , memorializing , concerning , or documenting the transfer, and the location of such DOCUMENTS.
3. Any search, analysis, investigation or opinion regarding the FIREPOND

PATENTS performed or prepared in connection with any transfer of the FIREPOND PATENTS, including, but not limited to, the transfer from Brightware , Inc. to Firepond, Inc. and the transfer from Firepond , Inc. to CLEAR WITH COMPUTERS LLC f/k/a ORION IP LLC, including any DOCUMENTS evidencing , memorializing , concerning, or documenting any such search, analysis, investigation or opinion , and the location of such DOCUMENTS. 4. The acquisition of Firepond, Inc. by Jaguar Technology Holdings LLC or any

other company affiliated with Douglas Croxall, including any DOCUMENTS evidencing, memorializing , concerning, or documenting the acquisition , and the location of such DOCUMENTS. 5. The ownership structure of CLEAR WITH COMPUTERS, including its

relationships with any parent, subsidiary or member companies, including any DOCUMENTS evidencing , memorializing , concerning , or documenting the ownership structure, and the location of such DOCUMENTS.

6.

The business operations , financial condition, revenues, profits and losses of

CLEAR WITH COMPUTERS , including, but not limited to, any DOCUMENTS evidencing, memorializing , concerning , or documenting such business operations and financials and the location of such DOCUMENTS.

01980.5 1 4 5 2/343 9333.1

7.

The distribution of any revenues and profits received or recorded by CLEAR

WITH COMPUTERS , including any individuals or entities receiving such distributions, and including , but not limited to, any DOCUMENTS evidencing , memorializing , concerning, or documenting such distributions and recipients and the location of such DOCUMENTS. 8. The management structure of CLEAR WITH COMPUTERS, including, but not

limited to, any DOCUMENTS evidencing , memorializing , concerning , or documenting such management structure and the location of such DOCUMENTS.

9.

The list of individuals employed by CLEAR WITH COMPUTERS and the terms

and conditions of such employment including, but not limited to, any DOCUMENTS evidencing , memorializing , concerning , or documenting such employment and the location of such DOCUMENTS. 10. The licensing policies and practices of CLEAR WITH COMPUTERS, including,

but not limited to, any DOCUMENTS evidencing, memorializing , concerning , or documenting such policies and practices and the location of such DOCUMENTS.
11. All licenses that have been granted by CLEAR WITH COMPUTERS for software

patents, including, but not limited to, any DOCUMENTS evidencing , memorializing, concerning , or documenting such licenses and the location of such DOCUMENTS.

12.
13.

Any products and services offered or distributed by YOU.
CLEAR WITH COMPUTERS' knowledge of Amy Rice's contention that the

statements made in the AAAI article (BR 001250 - BR 001262) are false. 14. Any investigation that CLEAR WITH COMPUTERS undertook to determine if

the statements made in the AAAI article (BR 001250 - BR 001262) are false, including all of the PERSONS contacted and all DOCUMENTS reviewed. 15. CLEAR WITH COMPUTERS' current belief as to whether any of the statements

made in the AAAI article ( BR 001250 - BR 001262) are false and identify those statements. 16. Any consulting agreements between YOU and Anthony Angotti, Fred Cohen,

Julie Hsu, Rosanna Piccolo and/or Amy Rice , including any DOCUMENTS evidencing,

01980 .51452/3439333.1

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memorializing, concerning, or documenting any such agreements, and the location of such DOCUMENTS.
17. The conception and reduction to practice, the earliest known use of the

technology, and the design and development of every embodiment of the alleged inventions of the '947 PATENT, including, but not limited to, any DOCUMENTS evidencing, memorializing, concerning, or documenting the conception and reduction to practice, the earliest known use of the technology, and the design and development of every embodiment of the alleged inventions of the '947 PATENT, the location of such DOCUMENTS, and the destruction of such DOCUMENTS. 18. The prosecution of the '947 PATENT, including, but not limited to, any

DOCUMENTS evidencing, memorializing, concerning, or documenting the prosecution of the '947 PATENT, the location of such DOCUMENTS, and the destruction of such DOCUMENTS. 19. Any efforts to develop, sell, market or distribute any embodiment of the alleged

inventions of the'947 PATENT, including, but not limited to, any DOCUMENTS evidencing, memorializing, concerning, or documenting any efforts to develop, sell, market or distribute any embodiment of the alleged inventions of the '947 PATENT, the location of such DOCUMENTS, and the destruction of such DOCUMENTS. 20. The first public demonstration, public use, exhibition, sale or offer for sale of any

product embodying any alleged invention claimed in the'947 PATENT, including EZ Reader, and including, but not limited to, any DOCUMENTS evidencing, memorializing, concerning, or documenting the first public demonstration, public use, exhibition, sale or offer for sale of any product embodying any alleged invention claimed in the '947 PATENT, the location of such DOCUMENTS, and the destruction of such DOCUMENTS. 21. The article entitled "EZ Reader: Embedded Al for Automatic Electronic Mail

Interpretation and Routing" (produced in this litigation as BR 001250 - BR 001262, hereafter "the AAAI article") published in August 1996 as part of the annual 1996 conference of the

01980 .51452/3439333.1

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Association for the Advancement of Artificial Intelligence , including the circumstances of its publication , and the use of the article in the prosecution of the `947 PATENT. 22. Any and all efforts to license the '947 PATENT, including, but not limited to, any

DOCUMENTS evidencing , memorializing , concerning , or documenting any and all efforts to license the '947 PATENT, and the location of such DOCUMENTS.
23. Any search, analysis, investigation or opinion that relates to the '947 PATENT

and RELATED PATENTS/APPLICATIONS, including but not limited to those that RELATE. TO patentability, enforceability, validity, or infringement of the '947 PATENT and/or RELATED PATENTS/APPLICATIONS, any DOCUMENTS evidencing , memorializing, concerning, or documenting any such search , analysis, investigation or opinion , and the location of such DOCUMENTS. 24. . Product( s), product design ( s) or methods produced by any person other than

YOU, whether or not currently available, that embody the inventions described in the '947 PATENT, including , but not limited to, any DOCUMENTS evidencing, memorializing, concerning , or documenting such product(s), product design(s) or methods, and the location of such DOCUMENTS. 25. Agreements between YOU and any third party concerning the subject matter

disclosed in the '947 PATENT, including , but not limited to, any DOCUMENTS evidencing, memorializing , concerning , or documenting such agreements , and the location of such DOCUMENTS. 26. Any and all PRIOR ART with respect to the '947 PATENT that was at any time

known , made known to, or considered by YOU, Anthony Angotti, Fred Cohen, Julie Hsu, Rosanna Piccolo or Amy Rice including, but not limited to, any DOCUMENTS evidencing, memorializing , concerning, or documenting such PRIOR ART, and the location of such DOCUMENTS. 27. The method or system employed to disclose PRIOR ART to the attorney

prosecuting the applications that lead to the '947 PATENT, and/or the method or system

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employed to determine whether particular PRIOR ART was or was not material , including, but not limited to, any DOCUMENTS evidencing , memorializing, concerning, or documenting such method or system , and the location of such DOCUMENTS.

28.

Any PRIOR ART investigation conducted before the filing of or during the

prosecution of the applications that lead to the '947 PATENT, including, but not limited to, any DOCUMENTS evidencing, memorializing , concerning , or documenting such investigation, and . the location of such DOCUMENTS:
29. Any and all secondary indicia of non-obviousness of the '947 PATENT,

including , but not limited to, any DOCUMENTS evidencing , memorializing , concerning, or documenting such secondary indicia of non-obviousness, and the location of such DOCUMENTS. 30. The Declaration of Amy Rice produced in this litigation as RICE001403-1406,

and all circumstances surrounding its creation and execution.

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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. "ORION," "CLEAR WITH COMPUTERS, LLC," "YOU," or "YOUR" shall

mean Clear with Computers, LLC, formerly known as Orion IP, LLC, 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. 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. 5.
51452/2681487.1

"THING" as used herein means any physical object other than a "DOCUMENT." 1

(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. 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.
51452/2681487.1

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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: (a) (b) appendices; (c) (d) the DOCUMENT's or THING's subject matter; the date of destruction or discard, manner of destruction or discard, and 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

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.

51452/2681487.1

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III.

REQUESTS FOR PRODUCTION 1. 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 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, 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.) 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., Clear with Computers Inc., Circinus IP LLC, Polaris IP LLC, 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. 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, Brightware, Inc., Silicon Valley Bank, Firepond Inc., Clear with Computers Inc., Circinus IP LLC, Polaris IP LLC, and/or BRIGHT RESPONSE LLC.

51452/2681487.1

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5.

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, Brightware, Inc.'s, Silicon Valley Bank's, Firepond Inc's, Clear with Computers Inc.'s, Circinus IP LLC's, Polaris IP LLC's, or BRIGHT RESPONSE LLC's 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 technology owned or promoted by YOU or ANTHONY ANGOTTI, FRED COHEN, JULIE HSU, ROSANNA PICCOLO, AMY RICE, Brightware, Inc., Silicon Valley Bank, Firepond Inc., Clear with Computers Inc., Circinus IP LLC, Polaris IP LLC, or BRIGHT RESPONSE LLC. 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 or ANTHONY ANGOTTI, FRED COHEN,
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JULIE HSU, ROSANNA PICCOLO, AMY RICE, Brightware, Inc., Silicon Valley Bank, Firepond Inc., Clear with Computers Inc., Circinus IP LLC, Polaris IP LLC, or BRIGHT RESPONSE LLC. 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 or ANTHONY ANGOTTI, FRED COHEN, JULIE HSU, AMY RICE, Brightware Inc., Silicon Valley Bank, Firepond Inc., Clear with Computers Inc., Clear with Computers LLC, Orion IP LLC, Circinus IP LLC, Polaris IP LLC, or BRIGHT RESPONSE LLC. 12. All communications with any persons or entities in addition to YOU that have

owned the `947 PATENT or RELATED PATENTS/APPLICATIONS. 13. All DOCUMENTS sent by YOU to any other persons or entities that have

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

have owned the `947 PATENT. 15. 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. 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 under 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

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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, FRED COHEN, JULIE HSU, ROSANNA PICCOLO, AMY RICE, Brightware Inc., Silicon Valley Bank, Firepond Inc., Inference Corp., Clear with Computers Inc., Circinus IP LLC, Polaris IP LLC, BRIGHT RESPONSE LLC, Chase Manhattan 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.

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UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

BRIGHT RESPONSE, LLC F/K/A POLARIS IP, LLC v. GOOGLE INC., et al. NO. 2:07CV-371-TJW-CE NOTICE OF 30(b)(6) DEPOSITION OF CLEAR WITH COMPUTERS LLC f/k/a/ ORION IP LLC.

You are hereby notified that, pursuant to Federal Rules of Civil Procedure 30(b)(6), on a date and time to be agreed upon, and at a mutually agreeable location, Defendants Google Inc., Yahoo Inc., America Online Inc., and AOL LLC will take the deposition upon oral examination of Clear with Computers LLC f/k/a/ Orion IP LLC (hereinafter "Clear with Computers"). Pursuant to Rule 30(b)(6), Clear with Computers shall designate one or more of its officers, directors, managing agents or other persons to testify on its behalf as to matters known or reasonably available to Clear with Computers concerning the subjects identified in the attached Exhibit A. The deposition of Clear with Computers will be taken before a notary public or other officer authorized by law to administer oaths, and will be recorded by stenographic and videographic means. Provisions for real time review via LiveNote or other similar means may also be made available. Said deposition shall proceed from day-to-day until complete, Saturdays, Sundays and Holidays excepted.

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DATED: April 14, 2010

Respectfully submitted, By /s/ David Perlson David A. Perlson, CA Bar No. 209502 LEAD ATTORNEY Charles K. Verhoeven, CA Bar No. 170151 Quinn Emanuel Urquhart Oliver & Hedges, LLP 50 California Street, 22nd Floor San Francisco, CA 94111 Telephone: [phone] Facsimile: [phone] [e-mail] [e-mail] [e-mail] Jennifer Parker Ainsworth TX Bar No. 00784720 Wilson, Robertson & Cornelius, P.C. P.O. Box 7339 Tyler, Texas 75711 Telephone: [phone] Facsimile: [phone] [e-mail] ATTORNEYS FOR DEFENDANT Google Inc.

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CERTIFICATE OF SERVICE I hereby certify that this document is being served upon counsel for Plaintiff and Yahoo via e-email on this date. Date: April 14, 2010 /s/ Eugene Novikov

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EXHIBIT A I. DEFINITIONS 1. "CLEAR WITH COMPUTERS", "YOU" or "YOUR" shall mean Clear with

Computers LLC f/k/a Orion IP LLC Inc. and its agents, officers, employees, representatives and attorneys, and any and all of its predecessor or successor companies, corporations or business entities. 2. "DEFENDANTS" shall mean defendants Google Inc., America Online Inc., AOL

LLC and Yahoo, Inc. 3. "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. 4. "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.

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"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. 6. 6,411,947. 7. "RELATED PATENTS AND APPLICATIONS" means any Patent or Patent The "`947 PATENT" or "PATENT-IN-SUIT" shall mean U.S. Patent No.

Application related to the PATENT-IN-SUIT, including but not limited to Patents and Patent Applications in the same family or chain of the PATENT-IN-SUIT. 8. The "FIREPOND PATENTS" shall mean U.S. Patent Nos. 5,283,865, 5,367,627,

5,493,490, 5,615,342, 5,625,776, 5,758,331, 6,169,979, 6,167,525, 6,141,658, 6,438,547, 6,453,302, 6,411,947, 6,182,059, and 6,278,996, collectively and individually. 9. 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, 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. 10. The phrase "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. 11. the singular. The singular form of words shall include the plural, and the plural shall include

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II.

RULE 30(b)(6) TOPICS 1. The acquisition of the FIREPOND PATENTS by YOU, and/or any past or

present ownership interest in the FIREPOND PATENTS held by YOU, including any DOCUMENTS evidencing, memorializing, concerning, or documenting the acquisition, and the location of such DOCUMENTS. 2. Any transfer of the FIREPOND PATENTS involving YOU, including any

DOCUMENTS evidencing, memorializing, concerning, or documenting the transfer, and the location of such DOCUMENTS. 3. Any search, analysis, investigation or opinion regarding the FIREPOND

PATENTS performed or prepared in connection with any transfer of the FIREPOND PATENTS, including, but not limited to, the transfer from Brightware, Inc. to Firepond, Inc. and the transfer from Firepond, Inc. to CLEAR WITH COMPUTERS LLC f/k/a ORION IP LLC, including any DOCUMENTS evidencing, memorializing, concerning, or documenting any such search, analysis, investigation or opinion, and the location of such DOCUMENTS. 4. The acquisition of Firepond, Inc. by Jaguar Technology Holdings LLC or any

other company affiliated with Douglas Croxall, including any DOCUMENTS evidencing, memorializing, concerning, or documenting the acquisition, and the location of such DOCUMENTS. 5. The ownership structure of CLEAR WITH COMPUTERS, including its

relationships with any parent, subsidiary or member companies, including any DOCUMENTS evidencing, memorializing, concerning, or documenting the ownership structure, and the location of such DOCUMENTS. 6. The business operations, financial condition, revenues, profits and losses of

CLEAR WITH COMPUTERS, including, but not limited to, any DOCUMENTS evidencing, memorializing, concerning, or documenting such business operations and financials and the location of such DOCUMENTS.

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7.

The distribution of any revenues and profits received or recorded by CLEAR

WITH COMPUTERS, including any individuals or entities receiving such distributions, and including, but not limited to, any DOCUMENTS evidencing, memorializing, concerning, or documenting such distributions and recipients and the location of such DOCUMENTS. 8. The management structure of CLEAR WITH COMPUTERS, including, but not

limited to, any DOCUMENTS evidencing, memorializing, concerning, or documenting such management structure and the location of such DOCUMENTS. 9. The list of individuals employed by CLEAR WITH COMPUTERS and the terms

and conditions of such employment including, but not limited to, any DOCUMENTS evidencing, memorializing, concerning, or documenting such employment and the location of such DOCUMENTS. 10. The licensing policies and practices of CLEAR WITH COMPUTERS, including,

but not limited to, any DOCUMENTS evidencing, memorializing, concerning, or documenting such policies and practices and the location of such DOCUMENTS. 11. All licenses that have been granted by CLEAR WITH COMPUTERS for software

patents, including, but not limited to, any DOCUMENTS evidencing, memorializing, concerning, or documenting such licenses and the location of such DOCUMENTS. 12. 13. Any products and services offered or distributed by YOU. CLEAR WITH COMPUTERS' knowledge of Amy Rice's contention that the

statements made in the AAAI article (BR 001250 ­ BR 001262) are false. 14. Any investigation that CLEAR WITH COMPUTERS undertook to determine if

the statements made in the AAAI article (BR 001250 ­ BR 001262) are false, including all of the PERSONS contacted and all DOCUMENTS reviewed. 15. CLEAR WITH COMPUTERS' current belief as to whether any of the statements

made in the AAAI article (BR 001250 ­ BR 001262) are false and identify those statements. 16. Any consulting agreements between YOU and Anthony Angotti, Fred Cohen,

Julie Hsu, Rosanna Piccolo and/or Amy Rice, including any DOCUMENTS evidencing,

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memorializing, concerning, or documenting any such agreements, and the location of such DOCUMENTS. 17. The conception and reduction to practice, the earliest known use of the

technology, and the design and development of every embodiment of the alleged inventions of the '947 PATENT, including, but not limited to, any DOCUMENTS evidencing, memorializing, concerning, or documenting the conception and reduction to practice, the earliest known use of the technology, and the design and development of every embodiment of the alleged inventions of the '947 PATENT, the location of such DOCUMENTS, and the destruction of such DOCUMENTS. 18. The prosecution of the '947 PATENT, including, but not limited to, any

DOCUMENTS evidencing, memorializing, concerning, or documenting the prosecution of the '947 PATENT, the location of such DOCUMENTS, and the destruction of such DOCUMENTS. 19. Any efforts to develop, sell, market or distribute any embodiment of the alleged

inventions of the '947 PATENT, including, but not limited to, any DOCUMENTS evidencing, memorializing, concerning, or documenting any efforts to develop, sell, market or distribute any embodiment of the alleged inventions of the '947 PATENT, the location of such DOCUMENTS, and the destruction of such DOCUMENTS. 20. The first public demonstration, public use, exhibition, sale or offer for sale of any

product embodying any alleged invention claimed in the '947 PATENT, including EZ Reader, and including, but not limited to, any DOCUMENTS evidencing, memorializing, concerning, or documenting the first public demonstration, public use, exhibition, sale or offer for sale of any product embodying any alleged invention claimed in the '947 PATENT, the location of such DOCUMENTS, and the destruction of such DOCUMENTS. 21. The article entitled "EZ Reader: Embedded AI for Automatic Electronic Mail

Interpretation and Routing" (produced in this litigation as BR 001250 ­ BR 001262, hereafter "the AAAI article") published in August 1996 as part of the annual 1996 conference of the

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Association for the Advancement of Artificial Intelligence, including the circumstances of its publication, and the use of the article in the prosecution of the `947 PATENT. 22. Any and all efforts to license the '947 PATENT, including, but not limited to, any

DOCUMENTS evidencing, memorializing, concerning, or documenting any and all efforts to license the '947 PATENT, and the location of such DOCUMENTS. 23. Any search, analysis, investigation or opinion that relates to the '947 PATENT

and RELATED PATENTS/APPLICATIONS, including but not limited to those that RELATE TO patentability, enforceability, validity, or infringement of the '947 PATENT and/or RELATED PATENTS/APPLICATIONS, any DOCUMENTS evidencing, memorializing, concerning, or documenting any such search, analysis, investigation or opinion, and the location of such DOCUMENTS. 24. Product(s), product design(s) or methods produced by any person other than

YOU, whether or not currently available, that embody the inventions described in the '947 PATENT, including, but not limited to, any DOCUMENTS evidencing, memorializing, concerning, or documenting such product(s), product design(s) or methods, and the location of such DOCUMENTS. 25. Agreements between YOU and any third party concerning the subject matter

disclosed in the '947 PATENT, including, but not limited to, any DOCUMENTS evidencing, memorializing, concerning, or documenting such agreements, and the location of such DOCUMENTS. 26. Any and all PRIOR ART with respect to the '947 PATENT that was at any time

known, made known to, or considered by YOU, Anthony Angotti, Fred Cohen, Julie Hsu, Rosanna Piccolo or Amy Rice including, but not limited to, any DOCUMENTS evidencing, memorializing, concerning, or documenting such PRIOR ART, and the location of such DOCUMENTS. 27. The method or system employed to disclose PRIOR ART to the attorney

prosecuting the applications that lead to the '947 PATENT, and/or the method or system

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employed to determine whether particular PRIOR ART was or was not material, including, but not limited to, any DOCUMENTS evidencing, memorializing, concerning, or documenting such method or system, and the location of such DOCUMENTS. 28. Any PRIOR ART investigation conducted before the filing of or during the

prosecution of the applications that lead to the '947 PATENT, including, but not limited to, any DOCUMENTS evidencing, memorializing, concerning, or documenting such investigation, and the location of such DOCUMENTS. 29. Any and all secondary indicia of non-obviousness of the '947 PATENT,

including, but not limited to, any DOCUMENTS evidencing, memorializing, concerning, or documenting such secondary indicia of non-obviousness, and the location of such DOCUMENTS. 30. The Declaration of Amy Rice produced in this litigation as RICE001403-1406,

and all circumstances surrounding its creation and execution.

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