Rockstar Consortium US LP et al v. Google Inc

Filing 126

MOTION to Compel by Rockstar Consortium US LP. (Attachments: # 1 Appendix of Exhibits ISO Motion to Compel, # 2 Affidavit of Amanda Bonn ISO Motion to Compel, # 3 Exhibit 1, # 4 Exhibit 2, # 5 Exhibit 3, # 6 Exhibit 4, # 7 Exhibit 5, # 8 Exhibit 6, # 9 Exhibit 7, # 10 Exhibit 8, # 11 Exhibit 9, # 12 Exhibit 10, # 13 Exhibit 11, # 14 Exhibit 12, # 15 Exhibit 13, # 16 Exhibit 14, # 17 Exhibit 15, # 18 Exhibit 16, # 19 Exhibit 17, # 20 Exhibit 18, # 21 Exhibit 19, # 22 Exhibit 20, # 23 Exhibit 21, # 24 Text of Proposed Order Granting Motion to Compel)(Bonn, Amanda)

Exhibit 8

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WRITER'S DIRECT DIAL NO.
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WRITER'S INTERNET ADDRESS
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July 29, 2014
VIA EMAIL
Ms. Amanda Bonn
Susman Godfrey LLP
1901 Avenue of the Stars
Suite 950
Los Angeles, CA 90067

Re:

Rockstar Consortium, et al. v. Google Inc., Case No. 2:13-cv-893 (E.D. Tex.)

Dear Amanda:
I write in response to your July 25 email responding to my July 16 letter.
Rockstar’s Responses to Google’s Interrogatories
Initially, your July 25 email does not state whether Rockstar will supplement its responses to
Interrogatory Nos. 10 and 11. We provided case law in my July 16 letter supporting our position
that Rockstar must provide a response to these interrogatories. Please let us know by tomorrow
whether Rockstar will do so.
Google’s Responses to Rockstar’s Interrogatories
We served supplemental responses to Interrogatory Nos. 4, 7, 8, 9, and 12 yesterday. Your
colleague, Mr. Lahad, agreed that we could have an extension until yesterday in light of our
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agreement to Rockstar’s request for an extension of time to supplement its interrogatory
responses.
As for Interrogatory Nos. 2 and 10, we agree to provide supplemental responses to the extent that
we can do so based upon Rockstar’s clarification of what it seeks with respect to each
interrogatory. We expect to be able to do so by August 19.
With respect to the list of functionalities in which Rockstar is interested that Mr. Lahad provided
on July 10 and 11 (which we understand to relate to Rockstar’s Interrogatory No. 2), we have the
following questions:


Please explain why Rockstar needs information regarding “Google’s indexing
systems, including but not limited to Knowledge Graph.” Rockstar has already
admitted that search generally is not accused, a point you do not dispute in your
July 25 email, and we do not believe that “indexing” is covered by the asserted
claims of the patent. As for Knowledge Graph, to the extent that there is a
“personalized” Knowledge Graph, that will be covered by documents relating to
Google’s personalized search services. But, the Knowledge Graph generally, is
not properly covered by the asserted claims.



Please explain what Rockstar is referring to as “Social Search.” This relates to
one of Rockstar’s document requests as well. If there is a public document that
Rockstar is relying on with respect to its requests relating to “Social Search,” we
would appreciate it if you would identify that document.



“YouTube Interest based Advertising” is not accused. While we understand that
YouTube is an accused product, interest based advertising is part of Google’s
Content Ads system, which is not accused.



Mr. Lahad’s list identifies the “___gads cookie.” Is this a typographical error? If
not, please point us to where you’ve seen reference to that cookie.

Rockstar’s Responses to Google’s Document Requests
Rockstar had indicated that it would provide more information regarding its proposed privilege
log that identifies documents by categories. It has not done so. At this point, we do not agree to
a privilege log that that does not enter each document individually. Thus, we will expect that
Rockstar will provide a privilege log that identifies all of the information about withheld or
redacted documents to which Google is entitled.
Google’s Responses to Rockstar’s Document Requests
On July 16, Rockstar asked that Google provide additional categories of metadata not required
by the E-Discovery Order: author, type/extension, file name, date created, and date modified.
Initially, the parties negotiated the E-Discovery Order for weeks and Rockstar did not request
this additional metadata. Nevertheless, based upon Rockstar’s agreement that this will be
mutual, Google will agree to provide the requested metadata for its future productions.
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Your July 25 email also raises the issue of whether the parties are obligated to collect postComplaint documents. In the first instance, we disagree with Rockstar’s position. The EDiscovery Order provides—and Rockstar agreed to this language—“The parties further agree
that the parties to this action and their subsidiaries need not search documents or ESI created
after the filing of the complaint.” First, we do not intend to exclude from Google’s production of
financial data financial information post-dating the Complaint. Further, will Rockstar commit to
producing communications that post-date the Complaint with Rockstar’s members, like Apple
and Microsoft?
We provided a supplemental list of “most significant” email custodians yesterday.
We respond to the specific document requests covered in your email below.
Request Nos. 9, 10, and 11: We disagree with the account in your July 25 email regarding what
was discussed regarding these topics in the parties’ July 8, 9, and 10 meet and confers. And, in
your July 10 email, you discussed Request No. 11 separately from Request Nos. 9 and 10. We
refer you to my July 16 letter regarding our recollection of what was discussed with respect to
each of these Requests during our meet and confers. In any event, based upon the explanation in
your July 25 email, Rockstar is seeking technical design documents, testing or development
documents, marketing or other business strategy documents, and other documents regarding the
importance of the accused systems to Google. Google will search for and produce (to the extent
it has not already done so) technical design documents, testing or development documents,
marketing or other business strategy documents regarding the accused functionalities located in a
reasonably, diligent search.
To the extent that there are documents regarding the “importance” of the accused systems in
these categories, Google will produce them as well. Again, Google cannot agree to separately
search for documents regarding the “importance” of the accused systems to Google, as there is
not a reasonable way to search for such documents, as we’ve previously explained.
Request No. 12: We disagree with the account in your July 25 email regarding what was
discussed regarding this topic in the parties’ July 8, 9, and 10 meet and confers. We refer you to
my July 16 letter regarding our recollection of what was discussed. We have already indicated
that we would investigate whether documents related to the creation of the Accused
Instrumentalities which talk about the importance of them can be located in a reasonably,
diligent search. If we locate such documents, we will produce them. To the extent that you
believe our account of the meet and confer is incorrect, we would appreciate it if you would
advise us regarding the additional types of documents you believe Google would also search for.
It is not clear from your July 10 email, which lumps this request with Nos. 13, 15, and 16, and it
is not articulated in your July 25 email either.
Request No. 13: When we discussed this request on our meet and confer on July 8 or 9, Rockstar
explained that it is seeking technical documents and presentations regarding how Google uses
data collected from Google Plus, Google Play, Doubleclick, Google Display Network, Android,
and Advertiser IDs for Android, in any system returning search results or search results and ads
and any other system. In actuality, as written, we believe that Request No. 13 only covers the
former; it is Request No. 14 that covers the latter. Thus, with respect to Request No. 13, Google
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will produce documents located in a reasonably diligent search, to the extent that they have not
already been produced.
Request No. 14: As we understand this request based on Rockstar’s clarifications, Rockstar is
seeking information regarding what information Google uses in other, non-accused products,
based on search and ads. As explained in my July 16 letter, we disagree that documents
regarding information Google uses in other, non-accused products based on search ads is
relevant to this case.
Request Nos. 15 and 16: As stated in my July 16 letter, when we met and conferred Rockstar
confirmed that what it seeks in these Requests is covered in prior requests discussed above.
Indeed, in your July 10 email, you addressed Request Nos. 12, 13, 15, and 16 together, implying
that they are duplicative. You don’t deny this in your July 25 email. You state, however, that
you believe that this request covers technical design documents and specifications, testing or
development documents, marketing or other business strategy documents, documents showing
why these systems are important to Google, and documents relating to the creation of these
products and their benefits. Thus, it appears these requests are duplicative of what is covered by
Request Nos. 9, 10, and 11, with the exception that Request No. 9, 10, and 11 are directed at
Google’s advertising systems. Assuming that is the only difference between these requests,
Google will search for documents responsive to Request Nos. 15 and 16 and produce what is
located in a reasonably, diligent search, to the extent it has not done so already.
To the extent that there are documents regarding the “importance” of the accused systems in
these categories, Google will produce them as well. Google, however, does not agree to
separately search for documents regarding the “importance” of the accused systems to Google, as
there is not a reasonable way to search for such documents, as we’ve previously explained
Request No. 17: We disagree with the account in your July 25 email regarding what was
discussed regarding this topic in the parties’ July 8, 9, and 10 meet and confers. We refer you to
my July 16 letter regarding our recollection of what was discussed. In any event, we indicated
that we would investigate whether we can locate such documents. We are doing so. We will
produce what is located in a reasonably, diligent search.
Request No. 18: Your statement regarding this request is incorrect. As explained in my July 16
letter, Rockstar explained that the reference in this request to “the request immediately above”
references No. 14. With this clarification, however, it appears that Request No. 18 is duplicative
entirely of Request No. 14, as clarified by Rockstar. We asked that Rockstar explain how they
differ. Your July 25 email ignores this request. It is premature for Rockstar to move to compel
Google to produce documents responsive to this request when Rockstar has refused to articulate
what this request seeks.
Request No. 19: We agreed to look into Rockstar’s request with respect to dashboard
information. I again reiterate that Rockstar’s request misunderstands how Google’s dashboard
works. A dashboard is a manner through which someone at Google may access certain types of
information in Google’s logged data. Google also sometimes will run tests of logged data.
Rockstar asked us to check and see what documents might exist relating to dashboards and/or
testing of the accused functionalities. Google will search for documents relating to test results of
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launched changes to the accused functionalities and will produce what is located in a reasonably,
diligent search. We further remind you that in my June 18 letter, we stated that documents
responsive to this request may be included in Google’s prior production, and that additional
documents may also be located in Google’s searches of custodial data. With respect to
dashboard information, we will respond to Rockstar’s interrogatory seeking that information in
due course.
Request No. 22: We understood this request as seeking presentations or documents provided to
the Board discussing changes to the operation of Smart Ads, search, and search plus ads.
Rockstar is further seeking presentations or documents provided to senior management groups—
Rockstar identified the EMG—or officers. We expressed the concern, articulated in my June 18
letter, that this is very broad because it asks for any document provided to one of these entities or
individuals. In your July 25 email, you state that this request is not limited to presentations or
documents “provided to” the Board, EMG, or officers. Rather, Rockstar states this request
includes documents presented to, created by, or in the possession of such individuals. This does
not resolve our concerns regarding the breadth and burden with this request. Google has already
agreed to produce, to the extent it has not done so already, documents discussing the operation of
the Accused Instrumentalities, which includes presentations to the extent they exist. Google will
search the non-email custodial ESI of Product Managers for the Accused Instrumentalities to try
to locate such documents. Moreover, Google has identified such Product Managers as “most
significant” custodians such that Rockstar can request that their emails be searched if it so
chooses. It is duplicative and burdensome to require Google to specifically search for such
documents in the files of Google’s very senior employees when there is no reason to believe that
have documents that are substantively different than the technical leads responsible for the
accused functionalities.
Request Nos. 23 and 24: We disagree with the account in your July 25 email regarding what was
discussed regarding this topic in the parties’ July 8, 9, and 10 meet and confers. We refer you to
my July 16 letter regarding our recollection of what was discussed. In any event, Google will
search for documents relating to test results of launched changes to the accused functionalities
and will produce what is located in a reasonably, diligent search. Additional documents may be
located in Google’s searches of custodial data. With respect to dashboard information, we will
respond to Rockstar’s interrogatory seeking that information in due course.
Request No. 25: In my July 16 letter, I explained that, in this request, Rockstar is seeking high
level documents explaining how ads are priced and what goes on in the back-end for payment to
Google in connection with ads. I stated that we are still unsure about what Rockstar means by
how ads are “priced.” To the extent we understand your phrasing, Ads are “priced” in the
auction by determination of actual CPC. Google has produced documents relating to the auction
already. Thus, we asked for clarification regarding what Rockstar is seeking. If your concern is
that Google is only producing documents “sufficient to show” because that is all that is required
by P.R. 3-4(a), we’ve already explained that Google’s P.R. 3-4(a) production was not limited to
documents “sufficient to show.” If Rockstar is seeking documents relating to something other
than the auction, then please explain to us what Rockstar seeks. We cannot provide a response if
you do not answer our questions about Rockstar’s voluminous requests.

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Request No. 26-27: Request No. 26 seeks documents regarding how Google decides to serve a
particular advertisement in various listed products. Google has already produced such
documents with respect to AdWords, AdWords Express, AdSense for Search, and Google
Custom Search, and will produce any additional documents located in a reasonably, diligent
search. However, this request also seeks such documents relating to AdSense for Content,
Doubleclick, and Google Display Network. Rockstar does not dispute that AdSense for Content
and Google Display Network are not accused. Moreover, although Rockstar included
Doubleclick in its list of Accused Instrumentalities, it is not used by Google’s Search Ads, and
thus is not properly accused. Similarly, Request No. 27 seeks documents related to how Google
prices an advertisement through AdSense for Content, Google Display Network, or Doubleclick.
We continue to believe such documents regarding non-accused products are not relevant.
Request No. 28: Rockstar explained that it is seeking agreements between Google companies
(such as Google Inc. and Google Ireland) to determine how much Google is licensing its own IP
for. Rockstar contends that this is relevant to the royalty rate because its patents are just as
important as Google’s patents. We disagree that these documents are relevant, but are
nevertheless still considering the request.
Request No. 29: Rockstar explained that if there is a list identifying the revenue for the top 50
revenue sharing agreements, it would be satisfied with Google’s production of such a list.
Although we do not understand the relevance of this information, we are nevertheless trying to
determine if such a list exists. To date, we have not located one or had any indication that one
exists. But, we continue to search for one.
Request No. 31: This request seeks all dashboard information for any Accused Instrumentality
since January 1, 2007. Rockstar has stated that it is interested in presentations summarizing
dashboard data, as well as information regarding what data can be accessed through the
dashboard so that Rockstar can identify what Google should produce. The latter is covered by
Rockstar’s second set of interrogatories, and we will provide a timely response to that
interrogatory. We have not yet completed our investigation, and our interrogatory response is
not due until August 11.
Request No. 32: As stated in my July 16 letter, we previously confirmed that Google has already
searched its internal wiki system for documents relevant to the Accused Instrumentalities, to the
extent Google understands Rockstar’s infringement contentions. We have since identified
additional wikis to search based upon categories of documents we discussed in our July 8, 9, and
10 meet and confers. We will produce responsive documents stored in those wikis based on a
reasonably, diligent search.
Request No. 34: We disagree with the account in your July 25 email regarding what was
discussed regarding this topic in the parties’ July 8, 9, and 10 meet and confers. We also note
that your description of what occurs differs in your July 10 and 25 emails. We refer you to my
July 16 letter regarding our recollection of what was discussed. In my July 16 letter, we
explained to you that the webpage identified in this request does not contain the language
attributed to it, and asked Rockstar if the quoted language is from an earlier version of that page.
Your July 25 email ignores this question. Do you have a copy of the webpage Rockstar relied
upon?
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In any event, we’ve agreed to produce documents, to the extent we have not already done so,
regarding the technical operation of the Accused Instrumentalities, which we believe are
responsive to this request. We asked Rockstar to explain what types of documents Rockstar is
seeking beyond technical documents discussing the operation of Search Ads. Again, your July
25 email ignores this question. Rockstar instead now demands documents regarding the
purported removal of the quoted language. But as a threshold issue Rockstar needs to explain
what types of documents other than technical operation documents it believes are called for by
this request.
Request No. 35: We disagree with the account in your July 25 email regarding what was
discussed regarding this topic in the parties’ July 8, 9, and 10 meet and confers. We refer you to
my July 16 letter regarding our recollection of what was discussed. In any event, your July 25
email explains that Rockstar is seeking technical documents and marketing documents relating to
the quoted statements. With respect to the statements “Use matching options with your
keywords to help control which searches can trigger your ad” and ““When choosing the
appropriate match type for a keyword, we typically recommend starting with broad match to
maximize your potential to show your ads on relevant searches,” Google believes that such
documents, to the extent they exist, are covered by prior requests and Google has agreed to
produce such documents. Indeed, technical documents have already been produced. Your July
25 email also refers to “other” documents. We do not know what are “other” documents.
With respect to the phrase “Use the search terms report to monitor which keyword variations
triggered your ads,” we refer you to our response to Request No. 36.
Request No. 36: We disagree with the account in your July 25 email regarding what was
discussed regarding this topic in the parties’ July 8, 9, and 10 meet and confers. We refer you to
my July 16 letter regarding our recollection of what was discussed. This request asks for Google
to produce documents relating to “search terms reports” and how they are used. As explained in
my July 16 letter, Rockstar explained that this is relevant because search terms are an element of
the asserted claims. Rockstar is trying to determine what the “search terms report” is and how it
operates. As further explained in my letter, however, Rockstar’s patents, do not cover search
terms. Thus, we continue to disagree that this material is relevant. Your July 25 email does not
address this.
Request No. 37: We disagree with the account in your July 25 email regarding what was
discussed regarding this topic in the parties’ July 8, 9, and 10 meet and confers. We refer you to
my July 16 letter regarding our recollection of what was discussed. In any event, your July 25
email explains that Rockstar is seeking technical documents and marketing documents relating to
the quoted statement. As stated in my July 16 letter, Google has already produced documents
regarding using location to target ads. Google will produce additional such documents located
after a reasonably, diligent search of custodial data, including marketing documents. Your July
25 email also refers to “other” documents. We do not know what are “other” documents.
Request No. 38: We disagree with the account in your July 25 email regarding what was
discussed regarding this topic in the parties’ July 8, 9, and 10 meet and confers. We refer you to
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my July 16 letter regarding our recollection of what was discussed. This request seeks “all
documents related to the Accused Instrumentalities’ abilities to determine a user’s physical
location, including but not limited to IP address and device location.” Google already indicated
that it produced documents regarding the Accused Instrumentalities’ use of a user’s physical
location, if any, and will produce additional documents located after a reasonably, diligent search
of custodial data. Your July 25 email asks us to clarify that Google will not limit its response to
only “GPS data.” Google will not so limit its response.
Request No. 39: We disagree with the account in your July 25 email regarding what was
discussed regarding this topic in the parties’ July 8, 9, and 10 meet and confers. We refer you to
my July 16 letter regarding our recollection of what was discussed. If “user-selected location”
means “a location that the user selects,” we will consider Rockstar’s clarification and get back to
you. We note, however, that we already indicated in my June 18 letter that as this request
relates to the Accused Instrumentalities, documents responsive to this request were included in
Google’s prior production, and that additional documents may also be located in Google’s
searches of custodial data.
Request No. 44: This request seeks all documents related to the Accused Instrumentalities’
abilities to collect and use prior purchasing information, including through Google Wallet or
otherwise, including but not limited to documents related to the use, design, development,
testing, and/or modification of this functionality. Rockstar clarified that it is seeking information
regarding the design, development, importance, and marketing of such functionality, and how it
is used in search and search plus ads. We explained in my July 16 letter that Google does not
use user-specific prior purchasing information in Search or Search Ads. Your July 25 email asks
that Google provide “a high-level overview of how Google uses any prior purchasing
information through Google Wallet or otherwise . . . and provide documents sufficient to allow
[Rockstar] to verify that.” Please explain how any use of prior purchasing information could be
relevant to the claims. We further note that in my June 18 letter, we explained that to the extent
that Rockstar is seeking documents relating to the operation of functionalities accused of
infringement, such documents (if they exist) have already been produced.
Request No. 45: We disagree with the account in your July 25 email regarding what was
discussed regarding this topic in the parties’ July 8, 9, and 10 meet and confers. We refer you to
my July 16 letter regarding our recollection of what was discussed. In any event, when trying to
evaluate Rockstar’s request regarding “language targeting,” we asked if Rockstar is
referring to what is described here: https://support.google.com/adwords/answer/1722078?hl=en?.
Your July 25 email does not respond to this question, saying that it does not want to be limited
by Google’s support pages. We’re just trying to confirm that we understand what functionality
Rockstar is interested in. We’d appreciate a response.
Request No. 49: Your July 25 email asks Google to confirm it will produce “all responsive
source code for search and search plus ads.” Google will make available for inspection the
source code relating to the accused functionalities, to the extent that Google understands what
they are based upon Rockstar’s deficient infringement contentions.

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Request No. 51: We disagree with the account in your July 25 email regarding what was
discussed regarding this topic in the parties’ July 8, 9, and 10 meet and confers. We refer you to
my July 16 letter regarding our recollection of what was discussed. This request seeks all
documents related to Google’s “Search Lab,” including but not limited to guidelines,
evaluations, analyses, methodologies, summaries, presentations, and reports. When we
previously discussed this request, Rockstar explained that it is looking for testing information
along the lines of what the parties discussed during the July 8 meet and confer regarding
dashboard information. Your July 25 email says that this request is not limited to test results. If
Rockstar is seeking something different, please articulate what that is so that we can consider the
request.
Request No. 53: We disagree with the account in your July 25 email regarding what was
discussed regarding this topic in the parties’ July 8, 9, and 10 meet and confers. We refer you to
my July 16 letter regarding our recollection of what was discussed. This request seeks all
documents related to the “Knowledge Graph” functionality, including but not limited to
documents related to the use, design, development, testing, and/or modification of “Knowledge
Graph.” Rockstar explained that it is looking at the “Knowledge Graph” from the perspective of
user profile data. In your July 10 email, Rockstar claimed this also relates to search refinement
With respect to the former, to the extent that “Knowledge Graph” uses user profiles, such
documents would have already been produced or will be produced in response to Rockstar’s
requests relating to personalized search results. With respect to “search refinement,” we need
you to explain how you believe “Knowledge Graph” is used for “search refinement” because we
do not understand the connection.
Request No. 54: This request seeks the same types of documents relating to “Social Search.” As
stated above, can you please point us to whatever public information you are relying on to
identify “Social Search” so we can confirm we understand what you are interested in?
Request No. 55: We disagree with the account in your July 25 email regarding what was
discussed regarding this topic in the parties’ July 8, 9, and 10 meet and confers. We refer you to
my July 16 letter regarding our recollection of what was discussed. Moreover, the tone of your
email with respect to this request is not well-taken. In any event, while we continue to disagree
that “Ads Preferences Manager” is relevant, to avoid a dispute, Google will produce relevant,
responsive documents located in a reasonably, diligent search.
Request No. 57: Thank you for responding to our questions regarding this request. We have
already indicated that we are looking into Rockstar’s request with respect to (1) documents
regarding how ads are returned on YouTube in connection with searches run on YouTube. We
will produce responsive documents located in a reasonably, diligent search. As for (2),
documents regarding any use of user profile data to return ads on YouTube, we will produce
documents regarding any use of user profile data to return Search Ads on YouTube located in a
reasonably, diligent search. To the extent that YouTube uses Google’s AdSense for Content
system to display ads, we will not search for such documents as AdSense for Content is not
accused.

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Request No. 58: This request seeks the same types of documents for “Adwords for video,” which
Rockstar says is accused. As explained in my July 16 letter, “Adwords for video” is distinct
from Search Ads. It is a functionality relating to ads shown in videos, not returning ads based on
searches for videos. Accordingly, it is far afield from what is covered in the asserted claims.
Your July 25 email states that we need to give Rockstar an “assurance” that our representation is
correct. We’re not sure what “assurance” Rockstar needs, given that we’ve already explained it
in writing. In any event, we will search for and produce documents regarding AdWords for
Video that relate to its use in Search Ads (if at all), to the extent that any are located in a
reasonably, diligent search.
Request No. 59: Your July 25 email asks us to confirm we are agreeing to produce documents.
My July 16 letter said: “As stated in our June 18 letter, we believe such documents have already
been produced. . . . Google will identify responsive documents located after a reasonably
diligent search.”
Request No. 60: In my July 16 letter, we asked Rockstar if it is looking for documents relating
to “historical clickthrough rates.” In your July 25 email, you stated yes. With this clarification,
we are looking into Rockstar’s request. We are not certain, however, what is meant by design,
development, testing, or modification with respect to historical CTR. A historical CTR is just
that.
Request No. 61: Your July 25 email misstates my July 16 letter. This request seeks all
documents related to determining “Ad Rank” or “Ad Position” including but not limited to
documents related to the use, design, development, testing, and/or modification of any
functionality used to determine “Ad Rank” or “Ad Position.” As stated in our June 18 letter, we
believe such documents have already been produced, and additional documents may be located
in Google’s searches of custodial data.
Request No. 67: Your July 25 email refers to the list of functionalities provided by Mr. Lahad on
July 10 and 11. In the first instance, Rockstar did not indicate that this list would apply to this
request when we met and conferred, or in your July 10 email. Thus, we did not know to consider
that list with respect to Request No. 67 until receiving your July 25 email. In any event, we’ve
addressed the functionalities in Mr. Lahad’s July 10 and 11 lists above. To the extent that
Rockstar seeks presentations about those functionalities (subject to the objections above), Google
will produce responsive documents located in a reasonably, diligent search, to the extent it has
not already done so.
That, however, is an entirely different request from what is sought by Request No. 67, which is
any presentations about Google’s Ad System, Google Front End, Ads Database, Adwords Front
End, or Adwords Back End. As we’ve explained, it is incredibly broad to ask for any
presentation about any aspect of Google’s Ad System, Google Front End, Ads Database,
Adwords Front End, or Adwords Back End, regardless of whether it is accused. Take “Google’s
Ad System” for example. That is the entire, complicated ads system, which could include
AdSense for Content which is not accused. Rockstar does not need all presentations about these
broad systems, nor has Rockstar ever explained why it does.

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Request No. 68: We disagree with the account in your July 25 email regarding what was
discussed regarding this topic in the parties’ July 8, 9, and 10 meet and confers. We refer you to
my July 16 letter regarding our recollection of what was discussed. When we discussed this
request on July 8 or 9, Rockstar acknowledged that this is covered by prior requests regarding
testing and the dashboard. Your July 25 email now disputes this. If this request seeks unique
information, please explain what Rockstar is looking for.
Request No. 69-70: With respect to these topics, Rockstar asked Google to identify the
custodians’ files it intends to search. With respect to these topics, in addition to searching central
repositories, Google is searching the files of Adam Juda, Jonathan Alferness, Amin Charania,
Myles Sussman, Dandapandi Sivakumar, Bryan Horling, Smita Hashim, Frederick Vallaeys,
David Monsees, and Aparna Chennapragada.
Request No. 71: In our June 18 letter, we stated that responsive documents relating to the
patents-in-suit may be located in searches of custodial data. To clarify, we will produce nonprivileged documents that are located.
Request No. 72: We disagree with the account in your July 25 email regarding what was
discussed regarding this topic in the parties’ July 8, 9, and 10 meet and confers. We refer you to
my July 16 letter regarding our recollection of what was discussed. As stated in my July 16
letter, we agreed to investigate whether Google can identify non-public submissions to the PTO
regarding the Accused Instrumentalities. We’ve determined that this is extremely burdensome
because there is not a central repository for such information. It is likely stored in the various
files of Google patent attorneys, and Google’s outside counsel that prosecutes patents. It is
unduly burdensome for Google to search for such documents, and we believe the relevance of
such documents is minimal at best. In any event, Google will search for Google patents
discussing the functionalities accused of infringement, and will produce what is located in a
reasonably, diligent search.
Request Nos. 82 and 83: Although we do not agree that they are relevant, to avoid a dispute,
Google will produce acquisition documents relating to Google’s acquisitions of Doubleclick,
Applied Semantics, and Kaltix. Further, to the extent that documents related to third party
analyses of these acquisitions are located in a reasonably, diligent search, Google will produce
them.
Request No. 85: In response to this request, which seeks all documents concerning your policies
or practices concerning patent clearances, right-to-use opinions, or other mechanisms to avoid
your infringement of patents, including the Patents-in-Suit and the patents and patent
applications held by or assigned to Rockstar, we stated that if there is a written licensing policy,
we will produce it. We further noted whether we could provide this information via prior
deposition testimony (in addition to deposition testimony Rockstar will have the opportunity to
take in this case). Google will produce transcripts of prior depositions concerning Google’s
licensing policies or practices. We are working on identifying an appropriate list of prior cases
and will provide it by the end of this week.

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Request No. 87: In my July 16 letter, we asked Rockstar to clarify whether it believes this
request seeks information not covered by prior requests. Your July 25 email ignores that request.
In any event, Google will produce any non-privileged documents regarding any analyses,
opinions, or inquiry of potential infringement of the patents-in-suit located in a reasonably,
diligent search.
Request No. 90: We disagree with the account in your July 25 email regarding what was
discussed regarding this topic in the parties’ July 8, 9, and 10 meet and confers. We refer you to
my July 16 letter regarding our recollection of what was discussed. As stated in my July 16
letter, we agreed to investigate whether Google can identify non-public patent filings or litigation
documents in which it has cited or mentioned any of the patents-in-suit. We’ve determined that
this is too burdensome. Google does not have a centralized repository of such documents and
thus there is not a reasonable way to search for such documents. Moreover, any relevance of
such documents is minimal, at best, and the burden of trying to locate such documents greatly
outweighs any potential relevance.
Request No. 92: This request seeks all documents concerning any patent or patent application
Google has in search or advertising. Rockstar confirmed that it does not need any public
documents; it is only interested in non-public patent applications. As explained in my July 16
letter, we do not understand why non-public patent applications in search or advertising are
relevant to the parties’ claims or defenses in this case, and it is very burdensome for Google to
search for such materials, which are not stored in a centralized repository. Moreover, given that
most filings with the PTO become public within 18 months of filing, and Google is not obligated
to produce documents created after the filing of the Complaint, the likelihood of Google locating
non-public patent applications that are not privileged is very low. We do note, however, that
Google will search for Google patents discussing the functionalities accused of infringement, and
will produce what is located in a reasonably, diligent search.
Request No. 93: Google is willing to produce the following from prior litigations:


Google’s document production from Personalized User Model v. Google, with third party
confidential information removed from the production, and subject to Rockstar’s
confirmation that Google may clawback any such third party confidential information
that is inadvertently produced.



Technical deposition transcripts and cited exhibits discussing the Accused
Instrumentalities from Personalized User Model and PA Advisors v. Google



The licensing deposition transcript and cited exhibits from PA Advisors



Non-infringement reports from Personalized User Model and PA Advisors



Trial transcripts and admitted trial exhibits of Google-produced documents in
Personalized User Model.



Additional licensing deposition transcripts from prior cases. We are working on the
complete list.
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Request No. 94: This request seeks all documents relating or referring to the indemnification or
offer to indemnify, or request for indemnification by any of Google’s customers, prospective
customers, or third-parties with respect to the Patents-in-Suit. Your July 25 email asks us to
confirm if we are agreeing to search for and produce such documents. We already indicated that
we are not aware of any such documents, thus there are no documents to produce.
Request No. 95: This request seeks all documents relating or referring to the indemnification or
offer to indemnify, or request for indemnification by any of Google’s customers, prospective
customers, or third-parties with respect to the Accused Instrumentalities. This request is not
limited to the patents-in-suit. We continue to disagree that such documents are relevant.
Request No. 96-109: We are still investigating this request. We are not refusing to produce the
requested documents, as clarified in our meet and confers and prior correspondence, but are still
working to determine the best way to search for such documents.
Request No. 111: This request is covered above.
Request No. 113: In my July 16 letter, we noted that Rockstar explained that it is looking for
documents regarding the marketing and technical capabilities of the Accused Instrumentalities,
and thus likely covered by prior requests. We’ve already agreed to search for such documents.
In my July 16 letter, however, we asked that if Rockstar is seeking documents that are different
from what was already requested, Rockstar should explain what and why such documents are
relevant. Your July 25 email ignores this question.
Request No. 115: We disagree with the account in your July 25 email regarding what was
discussed regarding this topic in the parties’ July 8, 9, and 10 meet and confers. We refer you to
my July 16 letter regarding our recollection of what was discussed. Rockstar stated it is seeking
market studies, design, and research, regarding the Accused Instrumentalities. We believe we’ve
already agreed to search for such documents. Rockstar said this request additionally seeks,
however, revenue information and information regarding contemplated changes. We will
produce revenue information, and we believe we’ve already agreed to search for documents
regarding contemplated changes, to the extent that we understand that phrase.
Request No. 116: To clarify, with respect to the financial data that we produce, we will produce
post-complaint data. Further, when we met and conferred, Rockstar indicated that it “may need”
“high level” financial data. In my July 16 letter, we asked Rockstar to explain what it means by
“high level” financial data. Your July 25 email ignores this question and states that it is asking
for such “high level” information now. Please explain what you mean so we can evaluate your
request.
Request No. 117: This request seeks all documents that relate to the accounting practices used by
Google to account for the sales, expenses, and income for the Accused Instrumentalities, since
July 1, 2000. Rockstar explained that what it is looking for is information that explains whether
revenue shared with third parties is properly part of the royalty base. We are still looking into
this request.

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Request Nos. 119-122: Rockstar acknowledged that these are catchall requests, likely covered by
prior requests. We did not separately discuss Nos. 120, 121, and 122.
With respect to No. 119, your July 25 email clarifies that Rockstar is seeking not just technology
transfer or authorization-to-use agreements, but also policies or practices regarding such
agreements. We will investigate this request.
Request Nos. 125-126: To clarify, Google will search for responsive documents in non-email
custodial ESI. To the extent that Rockstar believes that Google should search for such
documents in custodial emails, Rockstar is welcome to include names of Rockstar and Nortel
employees in the search terms it proposes to Google.
Request No. 142: In my July 16 letter, we stated that Google will produce responsive documents
regarding prior art systems asserted by Google as prior art to the patents-in-suit that are located
in a reasonably, diligent search. Your July 25 email asks us to confirm that the response is not
limited to “prior art systems.” We have difficulty understanding what documents Rockstar is
seeking if not limited to “prior art systems.” For example, were Google to search for all
documents relating to a prior art patent, what would those documents be? Other documents
citing to that patent? The file history? The request just does not make sense to us if not limited
to “prior art systems.” But, if you feel differently, please clarify.
Request No. 143: We disagree with the account in your July 25 email regarding what was
discussed regarding this topic in the parties’ July 8, 9, and 10 meet and confers. We refer you to
my July 16 letter regarding our recollection of what was discussed. This request seeks all
documents that refer or relate to whether any invention disclosed in any of the Patents-in-Suit, or
any product that embodies or uses such an invention, has been commercially successful. We
explained that this seems odd because Rockstar needs to identify the products that embody or use
an invention. We do not believe that Google’s Accused Instrumentalities use the invention in the
patents-in-suit. Rockstar stated that is looking for documents showing that the Accused
Instrumentalities are commercially successful, and acknowledged that this is likely covered by
prior requests. In my July 16 letter, we pointed Rockstar to Google’s 10Ks, which it already
produced. In addition, Google has agreed that it will provide summary financial data regarding
the Accused Instrumentalities, which will also reflect the commercial success of Google’s
products. What other types of documents is Rockstar looking for in connection with this request,
and why is what Google already agreed to produce insufficient?
Request No. 144: We disagree with the account in your July 25 email regarding what was
discussed regarding this topic in the parties’ July 8, 9, and 10 meet and confers. We refer you to
my July 16 letter regarding our recollection of what was discussed. This request seeks all
documents that refer or relate to whether any invention encompassed in any of the Accused
Instrumentalities, or any product that embodies or uses such an invention, has been copied by
others. Rockstar explained that it is looking for internal market studies regarding copying by
Bing or Yahoo. As explained in my July 16 letter, Google does not agree that the Accused
Instrumentalities embody the asserted claims, thus any copying of the Accused Instrumentalities
is irrelevant. Moreover, even if relevant, we are not aware of an effective way to search for
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documents regarding whether Bing or Yahoo copied Google. In any event, to the extent that we
locate such documents in the extensive searches we are conducting to identify relevant
documents, we will produce what we locate.
Request No. 145: We disagree with the account in your July 25 email regarding what was
discussed regarding this topic in the parties’ July 8, 9, and 10 meet and confers. We refer you to
my July 16 letter regarding our recollection of what was discussed. This request seeks all
documents that refer or relate to whether anyone has praised, criticized, or discussed the
significance of any invention disclosed in any of the Patents-in-Suit, or any product or
instrumentality that embodies or uses any such invention. Again, we explained that this seems to
be a request for documents that would be in Rockstar’s possession, custody, or control. Rockstar
stated that this is relevant to secondary considerations, and likely covered in prior requests. We
are uncertain what documents Google could produce responsive to this request. Is Rockstar
asking Google to search for documents that praise, criticize, or discuss Google Search or Search
Ads? In any event, to the extent that we locate such documents in the extensive searches we are
conducting to identify relevant documents, we will produce what we locate.
Request Nos. 146 and 148: In response to Rockstar’s requests relating to organizational charts,
in my July 16 letter, we explained that Google has a tool in which we can enter the name of a
witness disclosed on Google’s Initial Disclosures, and the tool will identify who that person
reports up to all the way up to Larry Page, and will also identify that person’s direct reports, and
the other people who report to the same person. Rockstar has confirmed that it would like
Google to generate these reports for the Google employees on Google’s Initial Disclosures.
Your July 25 email asks us to do the same for the “specific categories of employees” Rockstar
has requested in these two requests. That is not how the tool works, however. To operate, we
need to input an employee name, not a category of employee like “conception or
implementation” as identified in your Request No. 148. The proposal that we offered is what we
can do given that Google does not maintain a traditional organizational chart.
Request No. 150: In response to this request, in my June 18 letter, we stated that to the extent any
interrogatory served on Google asks Google to identify documents, Google will identify and
produce those documents, subject to its general and specific objections, and that, to the extent
that Google cites to documents pursuant to Rule 33(d) in response to an interrogatory, it will
produce those documents. In your July 25 email, you state that this is not a sufficient response.
We do not know, however, what else Rockstar expects Google to produce. What does it mean
for a document to be “related” to an interrogatory? Does that mean that if Rockstar propounds
an interrogatory regarding finances, Google must produce a check from an ad agency because
that is “related” to revenues? Moreover, based on the interrogatories propounded thus far,
documents “related” to them would be cumulative of the categories of documents we’ve already
agreed to produce. Thus, we do not understand Rockstar’s concerns regarding the “sufficiency”
of Google’s response to this request. Can you please explain?

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As always, we remain willing to meet and confer in good faith to resolve discovery disputes.
We are available to further discuss these issues on Thursday at 2 p.m. PT.
Very truly yours,

Andrea Pallios Roberts
01980.00010/6143038.3
01980.00010/6143038.3

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