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 1

S USMAN G ODFREY L . L . P .
A RE GIST ERED LIMITED LIABILITY PARTNE RSHI P

SUITE 3800
1201 THIRD AVENUE

SEATTLE, WASHINGTON 98101-3000
[phone]
FAX [phone]
www.susmangodfrey.com

__________
Suite 5100
1000 Louisiana Street
Houston, Texas 77002-5096
[phone]
__________

Suite 5100
901 Main Street
Dallas, Texas 75202-3775
[phone]
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Suite 950
1901 Avenue of the Stars
Los Angeles, California 90067-6029
[phone]
__________

Kristin Malone
Direct Dial [phone]

15th Floor
560 Lexington Avenue
New York, New York 10022-6828
[phone]
__________

E-Mail [e-mail]

April 30, 2014

VIA E-MAIL
G. Blake Thompson
J. Mark Mann
MANN TINDEL THOMPSON
300 West Main Street
Henderson, TX 75652
Andy Tindel
MANN TINDEL THOMPSON
112 East Line Street, Suite 304
Tyler, TX 75702
David Perlson
Antonio Sistos
Sam Stake
Charles Verhoeven
Robert Wilson
Sean Pak
QUINN EMANUEL URQUHART & SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
Re:

Rockstar Consortium US LP & NetStar Technologies LLC v. Google, Inc.,
No. 2:13-cv-893 – Document Production

Dear Counselors:
The Court’s Discovery Order in this matter orders both parties to produce “a copy
of all documents, data compilations and tangible things in the possession, custody,
or control of the party that are relevant” to any pleaded claim or defense in this
action. Rockstar Consortium US LP and NetStar Technologies LLC (collectively,

April 30, 2014
Page 2

“Rockstar”) expect that you will produce all relevant documents in accordance
with the Court’s Order. What follows is a non-exhaustive list of the types of
documents we expect to see produced. We reserve the right to supplement this list
as the case progresses.
For purposes of this letter, the term “Accused Instrumentalities” refers to
Google’s advertising services and applications (both domestically and
internationally) including but not limited to Google Ads, Google AdWords, and
Google AdWords Express or similar functionality used in conjunction with
google.com, the Google Search app, the Android search bar, Google custom
search, Google premium search services, youtube.com; Google search services
provided to third-party websites such as Custom Search Services or AdSense for
Search; and any Google-owned property that matches advertisements based in
part on a received search term, along with Google’s search algorithm and
Google’s algorithm for providing advertisements with search results. The
Accused Instrumentalities also include any Google system that collects user data
through registration, tracking, or other means, including but not limited to Google
Plus, Doubleclick, Advertiser IDs for Android or any other system or operation
used to track user activity on any Google-owned property, the data from which is
used to provide search results and/or advertising to its users. It also includes the
computers, databases, data centers, and code versions that perform or have
performed the above activities.
The terms “document” and “documents” are used in their broadest sense
allowed by Rule 34(a) of the Federal Rules of Civil Procedure and include, but
are not limited to, any writings, drawings, graphs, charts, photographs,
phonograph records, tape recordings, notes, diaries, calendars, checkbooks,
books, papers, accounts, electronic or videotape recordings, and any computergenerated, computer-stored, or electronically-stored matter from which
information can be obtained and translated, if necessary, into reasonably useable
form.
The term “Complaint” shall mean the Complaint for Patent Infringement filed by
Rockstar Consortium US LP and NetStar Technologies LLC in this action on
October 31, 2013, and any subsequent amendments to that complaint.
The terms “Google,” “you,” or “your” mean Google, Inc. defendant in this
action, as well as any parent company owning all or part of Google, Inc. and: (i)
any Google, Inc. subsidiary (either wholly or partly-owned), subcontractor,
division, branch or department; (ii) any entity under the control of Google, Inc.;
(iii) any proprietorship, joint venture, partnership or other business cooperation
involving Google, Inc.; (iv) all Google, Inc. predecessors-in-interest,
representatives, successors-in-interest; (v) the present and former directors,

April 30, 2014
Page 3

officers, accountants, affiliates, attorneys, agents, employees, in-house and
outside counsel or other persons under the control of Google, Inc., regardless of
their affiliation or employment; and (vi) any other person acting or purporting to
act on behalf of Google, Inc.
The term “Nortel” means Nortel Networks Corporation and/or Nortel Networks
Inc., as well as any Nortel Networks Corporation or Nortel Networks Inc.
subsidiary (either wholly or partly-owned), subcontractor, division, branch or
department; and (ii) any entity under the control of Nortel Networks Corporation
or Nortel Networks Inc.
The term “Patents-in-Suit” refers collectively to the following patents: United
States Patent Nos. 6,098,065 (“the ’065 patent”); 7,236,969 (“the ’969 patent”);
7,469,245 (“the ’245 patent”); 7,672,970 (“the ’970 patent”); 7,895,178 (“the ’178
patent”); 7,895,183 (“the ’183 patent”); and 7,933,883 (“the ’883 patent”). When
any patent is referred to by this letter, that reference is intended to include the
application on which it issued, its entire prosecution history, and all foreign
counterparts, including foreign applications and foreign prosecution histories.
The term “Asserted Claims” refers to each of the claims of the Patents-in-Suit
identified in Rockstar’s Disclosure of Asserted Claims and Infringement
Contentions, served on March 24, 2014 (and any subsequent amendments to said
Contentions).
The terms “sale,” “sales,” “sell” or “sold” shall include sales, licenses, leases,
loans, consignments, distribution to resellers or others and all other methods of
product distribution whether direct or indirect, and whether the product is
distributed singly or in combination with or as part of another product, and
whether or not revenue was or will be received therefrom.
The term “prior art” includes by way of example and without limitation, the
subject matter described in 35 U.S.C. §§ 102 and 103, including, without
limitation, publications, physical devices, prototypes, uses, sales, and offers for
sale and any documents or thing evidencing any of the foregoing.
The term “agreement” means a contract, agreement, arrangement, or
understanding, formal or informal, oral or written, between two or more persons.
The term “communication” refers to any transfer of information, oral or written,
be it in the form of facts, ideas, inquiries, opinions or otherwise, by any means, at
any time or place, under any circumstances, and is not limited to transfers
between persons, but includes other transfers, such as records and memoranda to
the file.

April 30, 2014
Page 4

The phrases “relating to” and “related to” mean discussing, describing, referring
to, pertaining to, containing, analyzing, studying, reporting on, commenting on,
evidencing, constituting, setting forth, considering, recommending, concerning, or
pertaining to, in whole or in part.
The term “including” shall mean including but not limited to.
The term “person” means natural person, corporation, firm, company, sole
proprietorship, partnership, joint venture, association, institute, or other business,
legal or governmental entity or association, including any directors, officers,
employees, agents or representatives thereof.
The terms “and” and “or” shall be construed disjunctively or conjunctively as
necessary to bring within the scope of these requests all documents which might
otherwise be construed to be outside their scope.
The term “all” shall mean any and all, and the term “any” shall mean any and all,
unless the context clearly requires otherwise.
References to the singular shall include the plural, and references to the plural
shall include the singular as may be appropriate to construe the individual
document requests in the broadest form.
The masculine form of a noun or pronoun shall be considered to include within its
meaning the feminine form of the noun or pronoun, and vice versa as may be
appropriate to make the individual document requests inclusive rather than
exclusive.

1.

All documents related to the Accused Instrumentalities’ ability to
provide advertisements based on searches, including documents
related to the design, development, testing, and/or modification of this
functionality.

2.

All documents related to Google’s search algorithm (or any
predecessor version of Google’s search algorithm such as BackRub)
and the components of Google’s search algorithm from June 1996 to
the present.

3.

All documents reflecting any decision to implement changes to
Google’s search algorithm and/or components of Google’s search
algorithm (or any predecessor version of Google’s search algorithm

April 30, 2014
Page 5

such as BackRub), including any enhanced or additional functionality,
from June 1996 to the present.
4.

All documents related to the use of fuzzy logic in Google’s search
algorithm (or any predecessor version of Google’s search algorithm
such as BackRub) from June 1996 to the present.

5.

All documents related to the use of user profile data in Google’s search
algorithm (or any predecessor version of Google’s search algorithm
such as BackRub) from June 1996 to the present.

6.

All documents related to Google’s algorithm and/or method of
matching searches and/or search terms with advertisements served
with search results since the introduction of AdWords or any
predecessor version of matching search terms with advertising.

7.

All documents reflecting any decision to implement changes to
Google’s algorithm and/or method of matching searches and/or search
terms with advertisements, including any enhanced or additional
functionality, served with search results.

8.

All documents related to determining “PageRank,” including but not
limited to documents related to the use, design, development, testing,
and/or modification of any functionality used to determine
“PageRank.”

9.

All documents related to Google ad selection or ad targeting (including
but not limited to Google SmartASS, Smart Ads, or any predecessor or
later versions).

10.

All documents related to Google’s AdMixer, including but not limited
to documents related to the use, design, development, testing, and/or
modification of any functionality for the AdMixer.

11.

All documents related to Google matching searches and/or search
terms with advertisements served with search results.

12.

All documents related to the creation and/or implementation of
AdWords, AdWords Express, Google Custom Search, and AdSense
for Search, including code (including executable or compatible code),
product specifications, flowcharts, models, drawings, promotional
literature, advertising, engineering design, engineering analysis and
testing.

April 30, 2014
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13.

All documents related to Google’s use of data it collects through
Google Plus, Google Play, Doubleclick, Google Display Network,
Android, Advertiser IDs for Android (or any predecessor version of
Advertiser IDs for Android), or any other system or method in
returning search results or advertisements served with search results.

14.

All documents related to Google’s use of data it collects regarding a
user’s (a) prior searches, (b) search results, (c) links a user clicks on,
(d) advertisements served with search results, (e) advertisements a user
clicks on, or (f) any other data gleaned about a user from its use of
Google search or of the advertisements served with search results.

15.

All documents related to the design and/or development of any
Accused Instrumentality, including but not limited to AdWords,
AdSense for Search, Google Custom Search, AdWords Express, and
Google Search.

16.

All documents related to any marketing strategies or presentations for
any Accused Instrumentality including but not limited to AdWords,
AdSense for Search, Google Custom Search, AdWords Express, and
Google Search.

17.

All documents related to the importance of any Accused
Instrumentality to Google and/or to Google’s revenues or profits.

18.

All documents related to how Google uses the data it collects in the
request immediately above in serving any advertisement, including but
not limited to advertisements with Google’s search results (through
AdWords, AdWords Express, Android, youtube.com, or any other
product), Google-owned websites (through gmail or any other
properties), third-party websites (through AdSense for Search,
AdSense for Content, syndicated search, Google Display Network,
Google custom search, Google premium search, Doubleclick, Android,
or any other product ), Doubleclick, or Android.

19.

All documents showing the differences in click-through-rate or any
other metric for measuring the success of advertisements between
using user-specific and/or location-specific information to return
search results or advertisements and not using user-specific and/or
location-specific information.

20.

All videos or any other documents relating to how the Accused
Instrumentalities operate or the importance of the Accused

April 30, 2014
Page 7

Instrumentalities, including but not any videos by any senior Google
executives or Hal Varian.
21.

All documents and/or presentations related to descriptions of how the
Accused Instrumentalities work, including but not limited to
presentations such as “ The Life of a Dollar” or any other presentations
that Google uses internally to educate its employees on any aspect of
the Accused Instrumentalities.

22.

All documents or presentations about the Accused Instrumentalities
provided to the Board or to any senior management group or Google
officer or related to such documents or presentations.

23.

All documents related to any holdback studies or A/B testing for
searches and/or advertisements.

24.

All summaries of holdback studies or A/B testing for searches and/or
advertisements.

25.

All documents related to how Google prices an advertisement to serve
with search results, including but not limited to any smart pricing.

26.

All documents related to how Google decides to serve a particular
advertisement in AdWords, AdWords Express, AdSense for Search,
Google Custom Search, AdSense for Content, Doubleclick, or Google
Display Network.

27.

All documents related to how Google prices an advertisement served
through AdSense for Content, Google Display Network, or
Doubleclick, including but not limited to any smart pricing.

28.

All documents related to any transfer pricing agreements and/or
intellectual property agreements between Google, Inc. and any other
Google-affiliated company.

29.

All documents related to any revenue sharing agreements for
advertisements served with search results on third-party sites.

30.

All documents related to how Google serves advertisements and
search results on third party sites.

31.

All dashboard information for any Accused Instrumentality since
January 1, 2007.

April 30, 2014
Page 8

32.

All internal Google wiki information for any Accused Instrumentality
since January 1, 2007.

33.

All licenses and/or agreements between Google and any third party for
providing Google search services to a third party, including but not
limited to all licenses and/or agreements between Google and Yahoo!.

34.

All documents related to or supporting Google’s statement that “Ads
are matched to search results based on the terms a person uses to
search,” found at https://support.google.com/adwords/answer/
1722047?hl=en&ref_topic=3121771.

35.

All documents related to or supporting the following Google
statements:
a. “Use matching options with your keywords to help control which
searches can trigger your ad.”
b. “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.”
c. “Use the search terms report to monitor which keyword variations
triggered your ads.”

36.

All documents related to the “search terms report,” including
documents related to the use, design, development, testing, and/or
modification of the “search terms report.”

37.

All documents related to or supporting Google’s statement that
“AdWords allows you to target customers in the geographic locations
you’ve chosen, so your ads can appear in the areas where you do
business.”

38.

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.

39.

All documents related to the Accused Instrumentalities’ abilities to
match advertisements based on a user’s IP address, device location, or
user-selected location.

April 30, 2014
Page 9

40.

All documents related to the “PREF” cookie, including but not limited
to documents related to the use, design, development, testing, and/or
modification of the “PREF” cookie.

41.

All documents related to the Advertising IDs in Android, including but
not limited to documents related to the use, design, development,
testing, and/or modification of the Advertising ID and any predecessor
or successor versions.

42.

All documents related to conversion cookies “used to help advertisers
determine how many times people on their ads end up purchasing their
products,” including but not limited to documents related to the use,
design, development, testing, and/or modification of same.

43.

All documents related any cookies used in advertising (“advertising
cookies”), including but not limited to documents related to the use,
design, development, testing, and/or modification of advertising
cookies.

44.

All documents related 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.

45.

All documents related to AdWords’ “language targeting” feature,
including but not limited to documents related to the use, design,
development, testing, and/or modification of the “language targeting”
feature.

46.

All documents related to “Google Instant predictions” or any
functionality in the Accused Instrumentalities to predict searches as a
user types, including but not limited to documents related to the use,
design, development, testing, and/or modification of the “Instant
predictions” or similar functionality.

47.

All documents related to “Personalized Search,” including but not
limited to documents related to the use, design, development, testing,
and/or modification of “Personalized Search.”

48.

All documents related to “Query Understanding” that “gets to the
deeper meaning of the words you type” as described at
http://www.google.com/insidesearch/howsearchworks/algorithms.html

April 30, 2014
Page 10

, including but not limited to documents related to the use, design,
development, testing, and/or modification of “Query Understanding”
functionality.
49.

All documents related to the placement of advertisements alongside,
above, or below the search results, including but not limited to code
(including executable or compatible code), product specifications,
flowcharts, models, drawings, promotional literature, advertising,
engineering design, engineering analysis and documents related to the
use, design, development, testing, and/or modification of this
functionality.

50.

All documents related to Google’s algorithms used to look up search
terms in Google’s index to find appropriate pages, as described at
https://www.google.com/intl/en/insidesearch/howsearchworks/crawlin
g-indexing.html and http://www.google.com/insidesearch/howsearch
works/thestory/.

51.

All documents related to Google’s “Search Lab,” including but not
limited to guidelines, evaluations, analyses, methodologies,
summaries, presentations, and reports.

52.

All documents related to Google’s ability to present advertisements
based on (a) recent, previous searches, (b) Google Web History, (c)
websites visited that belong to businesses that advertise with Google,
(d) non-personally identifying information in a Google account, such
as age or gender, (e) previous interaction with Google’s
advertisements or advertising services, (f) language; and (g) location.

53.

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.”

54.

All documents related to the “Social Search” functionality, including
but not limited to documents related to the use, design, development,
testing, and/or modification of “Social Search.”

55.

All documents related to the “Ads Preferences Manager,” including
but not limited to documents related to the use, design, development,
testing, and/or modification of the “Ads Preferences Manager.”

April 30, 2014
Page 11

56.

All documents related to “AdWords Express” functionality, including
but not limited to documents related to the use, design, development,
testing, and/or modification of “AdWords Express.”

57.

All documents related to “YouTube Interest-based Advertising”
functionality, including but not limited to documents related to the use,
design, development, testing, and/or modification of “YouTube
Interest-based Advertising.”

58.

All documents related to “AdWords for video” functionality, including
but not limited to documents related to the use, design, development,
testing, and/or modification of “AdWords for video.”

59.

All documents related to “pay-per-click,” “cost-per-click,” and “actual
cost-per-click” functionality, including but not limited to documents
related to the use, design, development, testing, and/or modification of
same.

60.

All documents related to determining “click-through rates,” including
but not limited to documents related to the use, design, development,
testing, and/or modification of any functionality used to determine
“click-through rates.”

61.

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.”

62.

All documents related to determining whether an advertisement gets
“top” or “other” placement on an original or subsequent search results
page, including but not limited to documents related to the use, design,
development, testing, and/or modification of any functionality used to
determine whether an advertisement gets “top” or “other” placement
on original or subsequent search results pages.

63.

All documents related to determining “Quality Score” including but
not limited to documents related to the use, design, development,
testing, and/or modification of any functionality used to determine
“Quality Score.”

64.

All documents related to ad shards, including but not limited to
documents related to the storage, function, use, design, development,
testing, and/or modification of any functionality for ad shards.

April 30, 2014
Page 12

65.

All documents related to determining click-through rates or predicted
click through rates or quality score 2, including but not limited to how
predicted click through rates or quality score 2 is determined or to the
use, design, development, testing, and/or modification of any
functionality used to determine click-through rates, predicted clickthrough rates or quality score 2.

66.

All documents related to “display URL” and “destination URL,”
including but not limited to any documents related to the use, design,
development, testing, and/or modification of same.

67.

Any presentations about Google’s Ad System, Google Front End, Ads
Database, Adwords Front End, or Adwords Back End.

68.

All documents from the analytics and/or strategic insight group(s)
regarding performance, improvement, or testing regarding search
results and/or advertisements.

69.

All documents concerning the marketing, advertising, or promotion of
the Accused Instrumentalities to existing or potential advertisers,
search partners, licensees, or other third-parties.

70.

All documents that refer or relate to strategic plans, business plans,
business strategies, licensing plans, licensing proposals, licensing
forecasts, prospectuses, market surveys, marketing strategies, market
analyses, and/or marketing forecasts of customer demand for the
Accused Instrumentalities, including both internal documents and any
schedules or reports by third-party industry analysts, research firms,
trade associations, or similar entities.

71.

All documents mentioning or concerning any of the Patents-in-Suit or
their applications or foreign counterparts – including parents,
divisional, continuation, or continuation-in-part applications, whether
or not they matured into patents, or any patent or patent application
held by or assigned to Rockstar.

72.

The file histories and patents for any patent or patent application that
describes the Accused Products, including but not limited to any
declaration, affidavit, or testimony submitted to the Patent and
Trademark Office or any other governmental agency regarding the
Accused Instrumentalities.

April 30, 2014
Page 13

73.

All documents mentioning or related to Nortel, including but not
limited to all documents related to the auction for Nortel’s intellectual
property assets.

74.

All documents related to Google’s bid for Nortel’s intellectual
property assets, including but not limited to how Google valued
Nortel’s portfolio, any document related to “Ranger,” who Google
partnered with in the auction, how much Google was responsible for of
the Ranger bid, why Google decided to bid, how it decided on its
stalking horse bid number, all bids that it made whether alone or
partnered with another person or entity, and how it decided to bid the
amounts it did.

75.

All documents related to the winning bidder in the Nortel auction,
including but not limited to all documents related to Rockstar as the
term relates to the winning bidder in the Nortel auction.

76.

All documents related to Rockstar Consortium LLC, Rockstar
Consortium Inc., Rockstar Bidco, Rockstar Consortium US LP, or
NetStar Technologies LLC.

77.

All documents related to any meetings between Google and Nortel in
2010.

78.

All documents concerning your knowledge of any of the Patents-inSuit, including documents indicating when you first became aware of
any of the Patents-in-Suit, and all documents concerning your
knowledge of any patent or patent application held by or assigned to
Rockstar.

79.

All correspondence and other documents expressing opinions on or
concerning the validity, invalidity, infringement, non-infringement,
enforceability, non-enforceability, or license (either express of
implied) as to any of the Patents-in-Suit or their applications or foreign
counterparts – including parents, divisional, continuation, or
continuation-in-part applications, whether or not they matured into
patents.

80.

All documents concerning the results of any prior art search directed
to, or relating to, or containing any of the Patents-in-Suit or their
applications or foreign counterparts – including parents, divisional,
continuation, or continuation-in-part applications, whether or not they

April 30, 2014
Page 14

matured into patents, or any patent or patent application held by or
assigned to Rockstar.
81.

All documents concerning or relating to any patent, license, royalty,
technology transfer, or authorization-to-use agreement that relates to
the Accused Instrumentalities, including appraisals or valuations,
including those performed for tax purposes.

82.

All documents related to any third party analysis Google has
conducted or authorized regarding the Accused Instrumentalities,
including but not limited to any study performed by Houlihan Lokey.

83.

All documents concerning any acquisition Google has made covering
any portion of the Accused Instrumentalities, including but not limited
to the acquisitions of Doubleclick, youtube, Applied Semantics, or any
company related to the provision of search/and advertisements, and
including but not limited to any third party analysis of the acquisition
such as any study performed by Houlihan Lokey.

84.

All license agreements concerning or covering all or any part of the
Accused Instrumentalities.

85.

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.

86.

All documents concerning your contentions on reasonable royalties
pursuant to 35 U.S.C. § 284 for any infringement of the Patents-inSuit.

87.

All documents concerning any analysis, opinion, or inquiry regarding
potential infringement of the claims in each of the Patents-in-Suit, or
their applications or foreign counterparts—including parents,
divisional, continuation, or continuation-in-part applications, whether
or not they matured into patents—including, but not limited to any
documents concerning or relating to pre-litigation investigations
performed by or on behalf of Google, Google’s partners, Google’s
licensors, Google’s customers, Google’s resellers, and/or Google’s
affiliates, relating to the potential infringement by any products or
systems made, used, offered for sale, and/or sold by Google, Google’s
partners, Google’s licensors, Google’s customers, Google’s resellers,

April 30, 2014
Page 15

and/or Google’s affiliates and any such investigations performed prior
to or in conjunction with the 2011 auction of Nortel’s patent assets.
88.

All documents relating to the 2011 auction of Nortel’s patent assets,
including but not limited to valuations, internal and external
communications, non-disclosure agreements, and due diligence
prepared or performed by or on behalf of Google, Google’s partners,
Google’s licensors, Google’s customers, Google’s resellers, and/or
Google’s affiliates, relating to the potential infringement by any
products or systems made, used, offered for sale, and/or sold by
Google, Google’s partners, Google’s licensors, Google’s customers,
Google’s resellers, and/or Google’s affiliates.

89.

All documents relating to any communications concerning any of the
Patents-in-Suit, or their applications or foreign counterparts—
including parents, divisional, continuation, or continuation-in-part
applications, whether or not they matured into patents—including but
not limited to communications with Google’s employees, managers,
sales force, agents, representatives, the press, or any news wire.

90.

All documents related to any time you have cited or mentioned any of
the Patents-in-Suit, or their applications or foreign counterparts—
including parents, divisional, continuation, or continuation-in-part
applications, whether or not they matured into patents, including but
not limited to in any other litigation or in any of your patent filings.

91.

All documents relating to any communications concerning Rockstar,
including but not limited to communications with Google’s
employees, managers, sales force, agents, representatives, the press, or
any news wire.

92.

All documents concerning any patent or patent application you have in
search or advertising.

93.

All documents related to and/or produced in any other lawsuit for
patent infringement involving the Accused Instrumentalities including
but not limited to any expert report, exhibits lists, admitted exhibits,
documents produced in the case, interrogatory response, deposition,
trial demonstrative, declaration, affidavit, or testimony. Such related
litigation includes, but is not limited to:
a. I/P Engine, Inc. v. AOL, Inc., et al., No. 2:11cv512 (E.D. Va.);

April 30, 2014
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b. Function Media, LLC v. Google, Inc., No. 07-cv-00279 (E.D.
Tex.);
c. British Telecommunications PLC v. Google, Inc., No. 1:11-cv01249-UNA (D. Del.);
d. Xerox Corp. v. Google, Inc., et al., No. 1:10-cv-00136 (D. Del.);
e. Personalized User Model v. Google, Inc., No. 1:09-cv-525 (D.
Del.);
f. Microsoft Corp. et al. v. GeoTag Inc., No. 1:11-cv-00175 (D.
Del.);
g. Any lawsuit between Google and Overture Services and/or Yahoo!
regarding United States Patent No. 6,269,361;
h. Bid for Position LLC v. Google, Inc. et al., No. 2:07cv00582 (E.D.
Va.);
i. Any lawsuit accusing Google search of infringement in whole or in
part; and
j. Any lawsuit accusing Google AdWords, Adwords for Mobile, or
Adsense for Search of infringement in whole or in part.
94.

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.

95.

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.

96.

All documents concerning the location of Google’s servers and data
centers, both in the United States and internationally.

97.

All documents concerning how Google serves search results to a user
within the United States.

98.

All documents concerning how Google serves search results to a user
outside the United States.

99.

All documents concerning how Google serves advertisements to a user
within the United States.

100.

All documents concerning how Google serves advertisements to a user
outside the United States.

April 30, 2014
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101.

All documents concerning how Google stores information related to
the Accused Instrumentalities for users within the United States.

102.

All documents concerning how Google stores information related to
the Accused Instrumentalities for users outside the United States.

103.

All documents concerning the location of Google’s search index or
database for users within the United States.

104.

All documents concerning the location of Google’s search index or
database for users outside the United States.

105.

All documents concerning the location of where Google stores
AdWords-related information for users within the United States.

106.

All documents concerning the location of where Google stores
AdWords-related information for users outside the United States.

107.

All documents concerning the location of Google’s SmartASS or any
other ad selection or ad targeting technology for users within the
United States.

108.

All documents concerning the location of Google’s SmartASS or any
other ad selection or ad targeting technology for users outside the
United States.

109.

All documents related to the interaction between Google’s servers and
data centers in the United States and Google’s servers and data centers
outside the United States, including all documents showing any
relationship between any “master” server or database and any
subservient or servant servers or databases.

110.

All documents furnished to or shown to any fact witness contacted,
interviewed, or consulted by Google or its agents or attorneys in
connection with this litigation.

111.

All communications with non-party witnesses.

112.

All documents concerning any analyses or efforts by Google to designaround the Patents-in-Suit.

113.

All documents referring or relating to statements made by Google,
including communications between Google and any prospective

April 30, 2014
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customers or business partners, referring or relating to the actual or
contemplated capabilities of the Accused Instrumentalities.
114.

All documents sufficient to identify all current and former customers,
clients, licensees, and/or users of the Accused Instrumentalities.

115.

All documents concerning past sales, research or development, present
sales, research, licenses or development, and projected or
contemplated future sales, research, license or development of any of
the Accused Instrumentalities.

116.

All documents sufficient to show all sales, revenue, costs, and profit
information for the Accused Instrumentalities, broken down by
quarter, including all documents sufficient to explain any acronyms or
terminology employed by Google’s accounting system. To the extent
possible, this information should be as specific as possible, and at a
minimum should be broken down by Accused Instrumentality and by
country from which the revenue is received, since July 1, 2000.

117.

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.

118.

All documents relating to Google’s market share in the Accused
Instrumentalities’ markets since 1998.

119.

All documents relating to Google’s policies or practices concerning
Google’s entry into license, royalty, technology transfer, or
authorization-to-use agreements since 1998.

120.

All documents evidencing Google’s licenses, royalties, technology
transfers, or authorization-to-use agreements related to Search.

121.

All documents evidencing Google’s licenses, royalties, technology
transfers, or authorization-to-use agreements related to Ads.

122.

All documents relating to any agreement to enter into a license,
royalty, technology transfer, or authorization-to-use agreement that
relates to any Accused Instrumentality.

123.

All documents that refer or relate to any prior art reference that you
believe anticipate or render obvious any of the Patents-in-Suit.

April 30, 2014
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124.

All documents that refer or relate to any document that Google
believes is relevant to the construction or interpretation of any claim of
any of the Patents-in-Suit.

125.

All documents that reference Rockstar or any Rockstar employee by
name.

126.

All documents that reference Nortel or any Nortel employee by name.

127.

All documents that reference Richard Skillen by name.

128.

All documents that reference Frederick Livermore by name.

129.

All documents that support your contention in Paragraphs 32 and 33 of
your Answer that Google did not wilfully infringe the Patents-in-Suit.

130.

All documents that support or relate to your contention in Paragraph
37 of your Answer that Google has not infringed, induced the
infringement of, or contributed to the infringement of any of the
Patents-in-Suit.

131.

All documents that support or relate to your contention in Paragraph
38 of your Answer that the Patents-in-Suit are invalid and
unenforceable under 35 U.S.C. § 101.

132.

All documents that support or relate to your contention in Paragraph
39 of your Answer that the Patents-in-Suit are invalid and
unenforceable under 35 U.S.C. § 102.

133.

All documents that support or relate to your contention in Paragraph
40 of your Answer that the Patents-in-Suit are invalid and
unenforceable under 35 U.S.C. § 103.

134.

All documents that support or relate to your contention in Paragraph
41 of your Answer that the Patents-in-Suit are invalid and
unenforceable for failure to satisfy the conditions of 35 U.S.C. § 112.

135.

All documents that support or relate to any contention by Google that
any of the Patents-in-Suit are invalid, were not legally issued, and/or
are not enforceable.

April 30, 2014
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136.

All documents that support or relate to your contention in Paragraph
42 of your Answer that Plaintiffs’ claims for damages is limited by 35
U.S.C. §§ 286, 287, and/or 288.

137.

All documents that support or relate to your contention in Paragraph
43 of your Answer that Plaintiffs’ claim of patent infringement is
barred by prosecution history disclaimer.

138.

All documents that support or relate to your contention in Paragraph
44 of your Answer that Plaintiffs’ claims are barred by the doctrines of
estoppel, laches, disclaimer, patent misuse, and/or waiver.

139.

All documents that support or relate to your contentions in Paragraphs
45 to 231 of Your Answer that the Patents-in-Suit are unenforceable
by reason of inequitable conduct.

140.

All documents that support or relate to your contention in Paragraph
232 of your Answer that Plaintiffs’ claim of patent infringement is
barred under the doctrine of unclean hands.

141.

All documents that support or relate to any of Google’s affirmative
defenses.

142.

All documents referring or relating to any patents, publications,
documents, events, suggestions, arguments or contentions that have
been asserted by any person as prior art or as affecting the validity or
enforceability of any of the Patents-in-Suit or of any foreign
counterparts thereof.

143.

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.

144.

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.

145.

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.

April 30, 2014
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146.

All organizational charts for any part of your company engaged in the
design, development, or sale of the Accused Instrumentalities.

147.

Documents sufficient to show the relationship between the different
corporate entities owned or controlled by Google.

148.

All documents, including past and present organizational charts, that
list or identify the persons who have or had responsibility for the
following functions relating to the Accused Instrumentalities:
(a)

conception or implementation;

(b)

marketing;

(c)

advertising;

(d)

sales;

(e)

design;

(f)

engineering;

(g)

research and development;

(h)

patent activities;

(i)

international operations

(j)

licensing of technology; and

(k)

acquisition of technology through third party business
entities.

149.

All documents (such as purchase price allocations) that describe or
discuss the value of patents, intellectual property rights, or technology
that you acquired through the purchase, acquisition, or change of
control of any third-party business entity, so long as the patent,
intellectual property right, or technology relates to the Accused
Instrumentalities.

150.

All documents related to any Interrogatory served on you or any
response you provide to any Interrogatory.

151.

All documents related to any 30(b)(6) topic.

April 30, 2014
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152.

All document retention policies or any other policies concerning the
preservation of documents, including email and chat transcripts, issued
by or on behalf of Google, Google’s partners, Google’s licensors,
Google’s customers, Google’s resellers, and/or Google’s affiliates in
effect from August 1, 2000 to present.

153.

All litigation holds or similar documents concerning the preservation
of documents, including email and chat transcripts, issued by or on
behalf of Google, Google’s partners, Google’s licensors, Google’s
customers, Google’s resellers, and/or Google’s affiliates in
anticipation of litigation with Rockstar or any related or affiliated
entity.

We are happy to discuss the production of these documents with you at any time.

Sincerely,

Kristin Malone