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. 6

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

Google Inc. et al
(If the action is pending in another district, state where: Defendant

Eastern District of Texas

SUBPOENA TO TESTIFY AT A DEPOSITION OR TO PRODUCE DOCUMENTS IN A CIVIL ACTION
To: IP Navigation Group LLC J 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 The deposition will be recorded by this method:

Date and Time: 05/13/2010 9:00 am

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 co sequences 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, [e-mail], 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 oforganization) on (date)

; or ; or

171 I returned the subpoena unexecuted because 0 Other (specify):

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 party 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.

(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:

(B) Objections. A person commanded to produce documents or tangible things or to permit inspection may serve on the party or attorney designated in the subpoena a written objection to
inspecting, copying, testing or sampling any or all of the materials or to inspecting the premises - or to producing electronically stored information in the form or forms requested. The objection must be served before the earlier of the time specified for compliance or 14 days after the subpoena is served. If an objection is made, the following rules apply: (i) At any time, on notice to the commanded person, the serving party may move the issuing court for an order compelling production or inspection. (ii) These acts may be required only as directed in the order, and the order must protect a person who is neither a party nor a party's officer from significant expense resulting from compliance.

(3) Quashing or Modifying a Subpoena. (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 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 protect a person subject to or affected by a subpoena, the issuing court may, on motion, quash or modify the subpoena if it requires: (i) disclosing a trade secret or other confidential research, development, or commercial information; (ii) disclosing an unretained expert's opinion or information that does not describe specific occurrences in dispute and results from the expert's study that was not requested by a party; or

(i) expressly make the claim; and (ii) describe the nature of the withheld documents, communications, or tangible things in a manner that, without revealing information itself privileged or protected, will enable the parties to assess the claim. (B) Information Produced. If information produced in response to a subpoena is subject to a claim of privilege or of protection as trialpreparation material, the person making the claim may notify any party that received the information of the claim and the basis for it. After being notified, a party must promptly return, sequester, or destroy the specified information and any copies it has; must not use or disclose the information until the claim is resolved; must take reasonable steps to retrieve the information if the party disclosed it before being notified; and may promptly present the information to the court under seal for a determination of the claim. The person
who produced the information must preserve the information until the claim is resolved. (e) Contempt. The issuing court may hold in contempt a person who, having been served, fails without adequate excuse to obey the subpoena. A nonparty's failure to obey must be excused if the subpoena purports to require the nonparty to attend or produce at a place outside the limits of Rule 45(c)(3)(A)(ii).

(iii) 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.

Eugene Novikov
From: Sent: To: Subject: Eugene Novikov Tuesday, April 13, 2010 7:09 PM Eugene Novikov RE: TO-DO LIST

PUM CASE CALENDAR From : Eugene Novikov Sent : Tuesday, April 13, 2010 7:03 PM To: Eugene Novikov Subject : TO-DO LIST follow up re hard drive production compile subpoenas and send w/ 30b6 notices write memo re walling off pros attys revise PUM discovery responses based on bifurcation PUM 3rd party subpoenas look at Yahoo rogs in BR Add msj power point to the record in PA. letter re PUM rogs letter re PUM search terms Xerox JDA Eugene Novikov Quinn Emanuel Urquhart & Sullivan, LLP 50 California Street, 22nd Floor San Francisco, CA 94111 Direct: [phone] Main Phone: [phone] Main Fax: [phone] eugenenovikov aaguinnemanuel.com www.guinnemanuel.com

1

EXHIBIT A 1. DEFINITIONS
1. "IP NAV", "YOU" or "YOUR" shall mean IP Navigation Group LLC. 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.

01980 ,51452/343938 1.1

5.

"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.

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

01980 .51452/3439381.1

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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 IP NAV, 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

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

7.

The distribution of any revenues and profits received or recorded by IP NAV,

including any individuals or entities receiving such distributions , and including, but not limited

01980 .51452/3439381.1

to, any DOCUMENTS evidencing , memorializing, concerning, or documenting such distributions and recipients and the location of such DOCUMENTS.

8.

The management structure of IP NAV, 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 IP NAV 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 IP NAV, 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 IP NAV 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. IP NAV' s knowledge of Amy Rice's contention that the statements made in the

AAAI article (BR 001250 - BR 001262) are false.
14. Any investigation that IP NAV 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. IP NAV' s 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, memorializing , concerning , or documenting any such agreements, and the location of such DOCUMENTS.

01980.51452/3439381.1

4

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 "BZ 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 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.

01980.51452/343 938 1.1

5

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 employed to determine whether particular PRIOR ART was or was not material, including, but

01980.51452/3439381.1

6

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.

01980 .51452/3439381.1

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UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION BRIGHT RESPONSE, LLC, Plaintiff vs. GOOGLE INC., et al, Defendants. § § § § § § § § § §

NO. 2:07-CV-371-CE JURY DEFENDANTS' NOTICE OF SUBPOENA FOR PRODUCTION OF DOCUMENTS TO IP NAVIGATION GROUP, LLC

TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD: PLEASE TAKE NOTICE THAT pursuant Rule 45 of the Federal Rules of Civil Procedure, Defendants in the above-captioned action demand, by subpoena, a copy of which is attached hereto, the production of documents from IP Navigation Group, LLC. NOTICE IS FURTHER GIVEN THAT IP Navigation Group, LLC is a non-party to the action. So far as it is known to Defendants, J. Mitchell Miller is the registered agent of IP Navigation Group, LLC, located at: J. Mitchell Miller 901 Main Street, Suite 3100 Dallas, TX 75202

The requested documents are to be produced on or before 10:00 a.m. PST on April 24, 2009 at: Quinn Emanuel Urquhart Oliver & Hedges, LLP c/o Jennifer A. Kash 50 California St., 22nd Floor

San Francisco, CA [phone] Dated: April 3, 2009 By: /s/ Jennifer A. Kash Charles K. Verhoeven, CA Bar No. 170151 LEAD ATTORNEY Jennifer A. Kash, CA Bar No. 203679 David A. Perlson, CA Bar No. 209502 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 DEFENDANTS Google, Inc., AOL LLC, and America Online, Inc. Jason C. White Howrey LLP 321 North Clark Street, Suite 3400 Chicago, Illinois 60654 [phone] [phone](Facsimile) [e-mail] Michael E. Jones State Bar No. 10929400 POTTER MINTON A Professional Corporation 110 N. College, Suite 500 (75702) P. O. Box 359

51452/2856635.2

-2-

Tyler, Texas 75710 [phone] [phone] (Facsimile) [e-mail] ATTORNEYS FOR DEFENDANTS Yahoo! Inc.

CERTIFICATE OF SERVICE I hereby certify that all counsel of record are being served via electronic mail with a copy of this document on April 3, 2009.

/s/ Britt Evangelist Britt Evangelist [e-mail] QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP 50 California Street, 22nd Floor San Francisco, California 94111 Telephone: [phone] Facsimile: [phone]

51452/2856635.2

-3-

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 IP NAVIGATION GROUP 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 IP Navigation Group LLC (hereinafter "IP Nav"). Pursuant to Rule 30(b)(6), IP Nav 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 IP Nav concerning the subjects identified in the attached Exhibit A. The deposition of IP Nav 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.

01980.51452/3439381.1

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.

01980.51452/3439381.1

2

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

01980.51452/3439381.1

3

EXHIBIT A I. DEFINITIONS 1. "IP NAV", "YOU" or "YOUR" shall mean IP Navigation Group LLC. 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.

01980.51452/3439381.1

5.

"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

01980.51452/3439381.1

2

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 IP NAV, 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

IP NAV, including, but not limited to, any DOCUMENTS evidencing, memorializing, concerning, or documenting such business operations and financials and the location of such DOCUMENTS. 7. The distribution of any revenues and profits received or recorded by IP NAV,

including any individuals or entities receiving such distributions, and including, but not limited

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to, any DOCUMENTS evidencing, memorializing, concerning, or documenting such distributions and recipients and the location of such DOCUMENTS. 8. The management structure of IP NAV, 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 IP NAV 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 IP NAV, 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 IP NAV 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. IP NAV's knowledge of Amy Rice's contention that the statements made in the

AAAI article (BR 001250 ­ BR 001262) are false. 14. Any investigation that IP NAV 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. IP NAV's 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, memorializing, concerning, or documenting any such agreements, and the location of such DOCUMENTS.

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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 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.

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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 employed to determine whether particular PRIOR ART was or was not material, including, but

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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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