Rockstar Consortium US LP et al v. Google Inc

Filing 173

REPLY to Response to Motion re 126 MOTION to Compel filed by NetStar Technologies LLC, Rockstar Consortium US LP. (Attachments: # 1 Declaration of Jonathan Solomon, # 2 Declaration of John Lahad, # 3 Exhibit 1 to Declaration of John Lahad)(Nelson, Justin)

EXHIBIT 1

Justin A. Nelson
From:

John Lahad
Thursday, July 10, 2014 8:47 PM
Amanda Bonn;Andrea P Roberts; QE-Google-Rockstar;James Mark Mann; Gregory
Blake Thompson
Max L. Tribble; Justin A. Nelson; Shawn Blackburn; Parker Folse; Alexander L. Kaplan;
jrambin@capshawlaw,com; [e-mail]; [e-mail];
[e-mail]; [e-mail]; Cyndi Obuz;John Dolan; Stacy Schulze; Kristin
Malone;Tammie J. DeNio
RE: Rockstar v. Google: Follow-Up Re Document Requests

Sent:
To:
Cc

Subject:

Andrea,
rn today. Furthet to Amanda's email and our discussion, the follo*ttg is the
Good to see you
^g
summary list of functionaljties we referenced. As Amanda mentioned, we believe these to be
within the scope of our infringement contentions, the list is not meant to be exhaustive, and the list
does not narrow, limit, or otherwise modiSr the contentions. Huppy to discuss. Thanks.
Google's indexing systems, including but not limited to l(nowledge Graph
Google's F'1 RDMBS
How Google receives a search request from a user, analyzes that tequest to generate
search results, aî lyzes that request to generate ads, and then sends the search results and
ads back to the user. This includes:
o How Google determines which search results to present to a user
o How Google determines which advertisement to present to a user
o How Google targets search results and advertisements to a specific geographic
lo cation, including us er- sp ecifìed and auto-detected lo catio n
o How Google targets search results and advertisements to a specific IP address
o How Google targets search results and advertisements to a specific device
o How Google targets search tesults and advertisements to a user's age, language, or
gender
o How Google targets search results and advettisements based on a user's pdor
searches

o

How Google targets search results and advertisements based on a user's prior
selections

o

How Google targets search tesults and advertisements based on a user's Web
History
o How Google targets search results and advertisements using Social Search
o How Google modifies search results and advertisements based on user refinement
e.g., date, type of result (videos, shopping, news, etc)
o How Google stores the data idenufied above
Google's targeting functionality that allows advertisers to tâtget specifìc groups,
demographics, interests, placements, rematketing lists, content keywords, and search
keywotds

YouTubelnterest-basedAdvertising
1

The structtrre, operation, and usage of the PREF cookie
The structure, operation, and usage of the Ads Pteferences Manager
The structure, operation, and usage of the gads cookie
The structure, operation, and usage of Personahzed Search, including for signed-in and
signed-out users
The structure, operation, and usage of any "per-click" functionality, including "pay-perclick," "cost-per-click," "click through tate," "Ad Clicks," "Ad Impressions," "Ad Rank,"
"Ad Avg Position," "màx CPC," "actual CPC," and any other functionality to track ads
served or selected
The structLtre, operation, and usage of functionaltq to determine an advertisement's
"Quality Score"
Google's interface with non-Google sites, including sites that claim to be "powered by
Google" or implement any of the foregoing functionality

John P. Lall'ad

Susman Godfrey L.L.P
7t3-6s3-7859 (office)
7t3-725-3s57 (mobile)
7L3-6s4-6666 (fax)

From: Amanda Bonn
Sent: Thursday, July I0,2074 2:10 AM
To: Andrea P Roberts; QE-Google-Rockstar; James Mark Mann; Gregory Blake Thompson
Cc:'Max L. Tribble; Justin A. Nelson; John Lahad; Shawn Blackburn; Parker Folse; Alexander L, Kaplan;
[e-mail]; [e-mail]; ccapshaw@capshawlaw,com; [e-mail];
[e-mail]; Cyndi Obuz; John Dolan; Stacy Schulze; Kristin Malone; Tammie J. DeNio
Subject: Rockstar v, Google: Follow-Up Re Document Requests
Andrea,

write to follow-up on our telephonic discussions over the past two days regarding Google's responses and objections to
Plaintiffs' document requests and list of most significant custodians. Please advise if your understanding or recollection
is different from ours.
I

Rule 3,4 Production:
We have expressed a concern that Google is often improperly seeking

to rely on its Rule 3.4 production-which

is a

"sufficient to show" production-to satisfy its obligation to produce documents. Many of our document requests call for
other categories of documents that we expect would likely not have been captured by Google's Rule 3.4 production. We
ask that Google please confirm that as to such requests, Google will agree to produce responsive, non-privileged
documents per any limitations we have offered as set forth below. lf Google is refusing to search for responsive, nonprivileged documents beyond its Rule 3.4 production-which we believe violates the Court's ESI Order and Discovery
Order-please advise why.
Agreement:
ln order to facilitate production of documents in response to many requests, we have agreed to preliminarily limit our
requests to seeking documents regarding current versions of Google's search and documents concerning historical
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versions as they relate to user profile data and as necessary to prove how Google searches at a "medium-view" technical
level since the first allegation of infringement in 2007. We also have agreed to limit our request for technical
documentation of other products such as AdSense for Content, Google Play, and Android to how Google incorporates
user profile data (broadly defined) into the methodology for returning ads. We also have agreed to provide you with a
summary list of functionalities we believe are within the scope of our lnfringement Contentions and where we
specifically expect to see documents (technical, code, marketing, importance of the product/functionality, etc,) both

historicalandcurrent. ThislistisnotmeanttobeanexhaustivedescriptionofourlnfringementContentionsortowaive
or change anything in the sum or substance of our lnfringement Contentions; rather, it is intended as a summary merely
to aid Google's search for responsive documents. Once Google has produced such documents, we reserve our right to
seek further documents. We believe this agreement-including Google's agreement to produce the responsive, nonprivileged documents as limited above-applies to our Requests Nos. 2, 3, 8'
Requests l-, 5, 6. and

7: Google

agrees

to produce responsive, non-privileged documents

Request No. 4: Withdrawn
Request Nos. 9-l-O: Google agrees to produce responsive, non-privileged documents The types of documents we expect
to be produced would include technical design documents and specifications showing how the systems work; testing or
development documents; marketing or other business strategy documents; and other documents showing how such
systems work and why they are important to Google. You have indicated you will check with your client and get back to
us on whether Google agrees to produce responsive, non-privileged documents.
uest No. l-l-: You have indicated you will check with your client and get back to us on whether Google agrees to
produce responsive, non-privileged documents.
Req

Request Nos, 12-L3, L5-16: The types of documents we expect to be produced would include technical design
documents and specifications showing how the systems work; 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, We expect the types of documents responsive to this request would
include not only the type of technical documents included in Google's Rule 3.4 production, but may also include things
like Power Point presentations or other responsive ESl, You have indicated you will check with your client and get back
to us on whether Google agrees to produce responsive, non-privileged documents,
Request No, L4: We have clarified that this reguest seeks not only documents about how Google uses the listed data in
Accused lnstrumentalities, but also how it may use such data in other products, which may be relevant to damages or to
the importance of the patented features to Google's business. You have indicated you will check with your client and get
back to us on whether Google agrees to produce responsive, non-privileged documents.
Request No. 17: This request seeks documents regarding the importance or significance of the Accused lnstrumentalities
to Google's revenue. We would expect documents responsive to this request to include, for example, marketing
presentations, presentations regarding board financials, documents regarding historicalimplementation of AdWords in
the pre-lPO period, and the like. To facilitate searching for such documents, we are willing to agree to limit the search to
documents or presentations presented to, prepared by, or in the possession of the Director-levelexecutives, Executive
Management Group ("EMG") level executives (or whatever term Google now uses or has used for such senior
management group), and group-lead managers. You have indicated you willcheck with your client and get back to us on
whether Google agrees to produce responsive, non-privileged documents,
Request No. L8: This request meant to refer to Request No. 14 in stating "information immediately above," You have
indicated you now understand the request and will check wíth your client and get back to us on whether Google agrees
to produce responsive, non-privileged documents,
Request No, L9: This request seeks documents relating to the impact on revenue (regarding click-through rates or any
other metric for measuring success) that the incorporation of user profile data into Google's search and search plus
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advertising functionalities may have had. The types of documents responsive to this request would include, for example,
documents regarding the click-through rate before and after user-profile data was implemented, any documents
analyzing that issue, any documents discussing the importance or significance of the Accused lnstrumentalities to
changes in click-through rates or other metrics by which Google measures success of an advertisement, and the like. You
have indicated you will check with your client and get back to us on whether Google agrees to produce responsive, nonprivileged documents.
Request No, 20: Go ogle agrees to produce responsive, non-privileged documents (including video),
Request No. 2l-: Goo gle agrees to produce responsive, non-privileged documents after we produce the agreed-upon
summary list of functionalities
Request No. 22: We agree to limit this request to documents presented to, created by, or in the possession of the Board
of Directors, members of the EMG (or equivalent), or officers, as located pursuant to the ESI Order. You have indicated
you will check with your client and get back to us on whether Google agrees to produce responsive, non-privileged
documents.
Request Nos. 23-24: You have indicated that you had questions regarding holdback studies or AIB testing for searches
and/or advertisements and how to locate and produce them without undue burden. We have suggested that, to our
knowledge, there is a department or group within Google responsible for such studies or testing, and that it would not
be unduly burdensome for Google to identify such studies or testing relating to Accused lnstrumentalities, particularly
upon our production of the agreed-upon list of functionalities. You have indicated you will check with your client and get
back to us on whether Google agrees to produce responsive, non-privileged documents,
Request Nos. 25 and 27: We are requesting documents describing how Google prices advertisements, what goes on in
the back-end that creates the payment, how functionalities relating to the creation of a fee record and creation and
extraction of a toll, and the like. We are not demanding documents regarding pricing of particular advertisements or
every record of every fee for an ad that Google has ever charged, Understanding the scope of our request, you have
indicated you will check with your client and get back to us on whether Google agrees to produce responsive, non-

privileged documents.
Request No. 26: We have clarified that this request seeks documents regarding AdSense for Content, Doubleclick, and
Google Display Network because we want to know if Google is using user profile data or other information gleaned from
its search plus advertising, which may be relevant to damages, use of the data in the Accused lnstrumentalities, and
importance of the patented technology. Similarly included within the scope of this request is documents concerning
whether data gleaned from products like AdSense for Content, DoubleClick, and Google Display Network is used by
Google's search-plus-advertising products. You have indicated you will check with your client and get back to us on
whether Google agrees to produce responsive, non-privileged documents,
Request No, 28: This request relates to the international agreements between Google and its affiliated companies
regarding how they license technology, which we believe is relevant to a reasonable royalty analysis. You have indicated
you will check with your client and get back to us on whether Google agrees to produce responsive, non-privileged

documents.
Request No. 29: We are requesting that Google produce documents or presentations that identify or list the largest 50
publisher affiliates. At this point, we are not asking for the underlying revenue-sharing agreements themselves, You
have indicated you will check with your client and get back to us on whether Google agrees to produce responsive, non-

privileged documents.
Request No. 30: We have clarified that this is not a "sufficient-to-show" request. Google has agreed to produce
responsive, non-privileged documents.

4

Request No. 31: Google has indÌcated it would be unduly burdensome to produce all Dashboard information. We have
requested that Google produce documents describing what categories of Dashboard information for the Accused
lnstrumentalities are maintained so that we can further refine our request and minimize any burden. You have indicated
you will check with your client and get back to us on this proposal.
Request No. 32: Google has agreed to produce responsive, non-privileged documents,
Request No. 33: We willdefer discussion of this request untilwe discuss it with our experts,
Request No, 34: We have explained that this is not a sufficient-to-show request and expect Google to produce
responsive, non-privileged documents requested. You have indicated you will check with your client and get back to us
on whether Google agrees to produce responsive, non-privileged documents.
Request Nos. 35-37:You objected that you did not know the source of the statements orterms described in these
requests. We have sent you links to Google's websites which include these statements or terms. You have indicated you
will check with your client and get back to us on whether Google agrees to produce responsive, non-privileged
documents.
Request Nos. 38-39: We have clarified that these are not "sufficient-to-show" requests. ln addition, we have clarified
that "device location" could refer to things other than an lP address, for example, GPS coordinates, etc. Google has
agreed to produce responsive, non-privileged documents,
Request No. 40: We are requesting documents relating to the design, development, marketing, importance, and benefit
of the "PREF" cookie, which directly relates to our infringement contentions. You have indicated you willcheck with your
client and get back to us on whether Google agrees to produce responsive, non-privileged documents.
Request No.41: You suggested Google did not understand what "Advertising lDs in Android" is. We explained that
"Advertising lDs" is a term that Google itself uses to describe accused functionalities relating to search and search plus
advertising delivery in Android. You have indicated you will check with your client and get back to us on whether Google
agrees to produce responsive, non-privileged documents.
Request Nos, 42-43: As with other requests above, we clarified that we are seeking documents relating to the design,
development, testing, modification, marketing, importance, and benefits of the cookies at issue. You have indicated you
will check with your client and get back to us on whether Google agrees to produce responsive, non-privileged

documents.
Request No.44: We have clarified that this is not a "sufficient to show" production, nor is it merely limited to technical
documents, As with other requests above, we are ¡nterested in documents regarding the design, development, testing,
modification, marketing, importance, and benefits of the Accused lnstrumentalities' ability to collect and use prior
purchasing information (whether through Google Wallet or otherwise). You have indicated you will check with your
client and get back to us on whether Google agrees to produce responsive, non-privileged documents.
Request No. 45: We have clarified that AdWords' "language targeting" feature is directly relevant to claims reading on
language-targeting in addition to claims including user profile data. You have indicated you will check with your client
and get back to us on whether Google agrees to produce responsive, non-privileged documents.

46: We have clarified that we have asserted claims readi ng on search-refinement, which is precisely what
"Google lnstant" does. You indicated you had conducted a word-search for "Google lnstant" in our lnfringement
Contentions and did not see those words come up. We indicated that a word search was unlikely to return information
since our infringement contentions include screen-captures and that our screen captures demonstrated this
functionality, You have indicated you will check with your client and get back to us on whether Google agrees to produce
responsive, non-privileged documents.
Req uest No.

5

Request No. 47: Google agrees to produce responsive, non-privileged documents
Request No, 48: We have clarified that documents concerning the "Query Understanding" functionality are relevant to
our search refinement and user profile data claims, You have indicated you will check with your client and get back to us
on whether Google agrees to produce responsive, non-privileged documents.
Request No. 49: Google agrees to produce responsive, non-privileged documents, but indicated it believed this request
was likely duplicative of other requests. We agree this is a catch-all requests, but wanted to ensure source code was
captured insofar as Google may assert source code is not called for by PLR 3,4 or by our other requests,
Request No. 50: We agreed to limit the scope of this request to functionalities relating to ordering of search results, use
of user profile data to order search results, and searching of databases. We explained that these functionalities relate
directly to our asserted claims, including claims reading on searching a database, use of user profile data, and searchrefinement, among others, You have indicated you will check with your client and get back to us on whether Google
agrees to produce responsive, non-privileged documents.
Request No. 51: We sent you a link to a Google website that describes the "Search Lab" and includes a video called "The
Evolution of Search," which was the basis for this request. We clarified that we expect documents responsive to this
request to include those discussing the development, testing, and improvement of search plus advertisements,
including, for example, what tests have been done to improve search plus advertising functionalities, the results of those
tests, presentations regarding those tests, and the like. You have indicated you will check with your client and get back
to us on whether Google agrees to produce responsive, non-privileged documents,
Request No, 52: Google agrees to produce responsive, non-privileged documents,
Request Nos. 53-54:These requests relate to "Knowledge Graph" and "SocialSearch," which we believe are relevant to
user profile data and search refinement. We are seeking documents relatingto the design, development, testing,
modification, marketing, importance, and benefits of "Knowledge Graph" and "Social Search," You have indicated you
will check with your client and get back to us on whether Google agrees to produce responsive, non-privileged

documents.
Request No. 55: We are concerned by Google's indication that it does not understand the relevance of the "Ad
Preferences Manager," which is a coined term by Google and which we understand relates to users adjusting settings for
returning ads with search and is thus directly relevant to our asserted claims. You have indicated you will check with
your client and get back to us on whether Google agrees to produce responsive, non-privileged documents.
Request No, 56: Google agrees to produce responsive, non-privileged documents,
Request No. 57: We have clarified that this requests seeks documents concerning returning ads based on a search in
Youtube, which is directly relevant to our infringement contentions, You have indicated you will check with your client
and get back to us on whether Google agrees to produce responsive, non-privileged documents.
Request No. 58: Similarly, our understanding is that AdWords for Video returns ads based on searches for video, and is
thus directly relevant to our lnfringement Contentions. You have indicated you will check with your client and get back
to us on whether Google agrees to produce responsive, non-privileged documents.
Request Nos. 59-60: These requests relate to "pay-per-click," "cost-per-click," "actual cost-per-click," and "click-through
rates." We are seeking documents including technical and non-technical documents relating to the design, development,
testing, modification, marketing, importance, and benefits of such functions. Such documents would include, for
example, documents regarding when Google began using cost-per-click, why it did so, the advantages of cost-per-click

6

over other methods, and documents showing how such functionalities work. You have indicated you will check with your
client and get back to us on whether Google agrees to produce responsive, non-privileged documents.
Request No. 61.: Google agrees to produce responsive, non-privileged documents,
Request N os. 62-63: These requests relate to Quality Score and placement of ads, David indicated yesterday that he did
not believe we had discussed Quality Score in our lnfringement Contentions. That is incorrect-please see, for example,
pages 215-216 of the '969 cha rt a nd Pages 69,72, !67, !64, 204, 2Lt of the '970 chart. However, it a ppears that Google
has agreed to produce responsive, non-privileged documents. Please confirm.
Request Nos. 64-65: Google agrees to produce responsive, non-privileged documents
Request No. 66:This relates to "Display URL" and "Designation URL," We are checking with our experts about this and
will get back to you,

presentations regarding Google's Ad System, Google Front End, Ads Database,
AdWords Front End, or AdWords Back End. These are directly relevant to our lnfringement Contentions. We have agreed
that Google may narrow its search to presentations presented to, prepared by, or in the possession of the Director-level
executives, Executive Management Group ("EMG") level executives (or whatever term Google now uses for such
persons), and group-lead managers. Such documents would include any presentations discussing the design,
development, marketing, importance, and benefits of such systems. You have indicated you will check with your client
and get back to us on whether Google agrees to produce responsive, non-privileged documents.
Req uest No. 67: This re quest seeks

Request No. 68: We clarified that we believe this re quest relates to Google's testing group, which we discussed in
relation to other requests. You have indicated you will check with your client and get back to us on whether Google
agrees to produce responsive, non-privileged documents.
Request Nos. 69-70: We agreed to limit this request to documents presented to, prepared by, or in the possession of
the Director-level executives, Executive Management Group ("EMG") level executives (or whatever term Google now
uses for such persons), and group-lead managers, You have indicated you will check with your client and get back to us
on whether Google agrees to produce responsive, non-privileged documents.
Request Nos. 7L-72: We agreed to limit these requests to documents that are not public (i.e., Google's non-public patent
applications and file histories, for now), to such documents that reference patents or applications within the Skillen
patent family, and to communications with the PTO (as opposed to the language in No. 72 regarding othergovernment
agencies). You have indicated you will check with your client and get back to us on whether Google agrees to produce
responsive, non-privileged documents.
Request Nos. 73-80: Google agrees to produce responsive, non-privileged documents, subject to the caveat that in
response to Request No, 73, Google will produce responsive, non-privileged documents relating to the auction and
communications with Nortel related to intellectual property and not all Nortel interactions across all business units
Request No. 8l-: Google has agreed to produce patent license agreements related to the Accused lnstrumentalities, We
are further seeking technology, transfer, and authorization to use agreements, You have indicated you will check with
your client and get back to us on whether Google agrees to produce such responsive, non-privileged documents.
Request Nos, 82-83: We are limiting this request to studies that relate to the accused functionalities. As an example of
the type of document we are seeking, we indicated we believe there have been studies conducted during the mergerprocess that segregate the value of Google's intellectual property and that such documents have been produced in
other cases. For example, any such studies relating to Google's acquisition of DoubleClick and Applied Semantics or
functionalities relatíng to search plus advertising would be responsive to this request. You have indicated you will check
with your client and get back to us on whether Google agrees to produce such responsive, non-privileged documents.
7

Request No.84:Google agreesto produce responsive, non-privileged documents, although it believesthis request may
be subsumed within others.

No.85 To the extent the request was confusing to Google, we have clarified that we are seeking documents
concerning the policies or practices as they relate to patent clearances, right-to-use opinions, or other mechanisms to
avoid infringement of patents (and not underlying patent clearances themselves, for example). Such policies or practices
are relevant to our willfulness claims and damages claims, for example. We further indicated that this request is broader
than formal, written policies, We indicated that Google may be able to produce responsive documents consisting of its
Rule 30(b)(6) deposition testimony regarding patent clearances, licensing policies, and the like, from prior cases. You
have indicated you will check with your client and get back to us on whether Google agrees to produce such responsive,
non-privileged documents.
Reque

Request No. 86: Google agrees to produce responsive, non-privileged documents
Request Nos,87-89: Google agrees to produce responsive, non-privileged documents with the caveatthat it believes
certain documents responsive to Request No, 87 may not need to be produced until November 18, 2014. We believe the
deadline Google refers to is for producing otherwise privileged materials on which Google intends to rely on for its
defense against willfulness, but does not excuse Google from producing any responsive, non-privileged documents
earlier. Please confirm that you agree.
Request No.90: We agree to limit this request to non-public information concerning Google referencing the Skillen
patent family (and their applications) in other litigation (for example, as prior art) or to the patent office, We believe this
is clearly reasonably calculated to lead to the discovery of admissible evidence concerning Google's knowledge of the
patents-in-suit, characterization of the patents-in-suit, and validity of the patents-in-suit. You indicated you willcheck

with your client.
Request No. 9L: Google agreed to produce responsive, non-privileged documents.
Request No. 92: We are only seeking non-public patent applications and file histories for now, We suggested that you
generate a list of the titles and abstracts of patent applications you believe may fall within this category so that we can
narrow further. You indicated you would check with your client.
Request No. 93: This request seeks documents produced in prior litigation. We believe it would not be unduly
burdensome-and, indeed, would reduce the burden on Google to conduct searches from scratch-to immediately
produce documents like exhibit lists, admitted exhibits, deposition testimony, interrogatory responses, and expert
reports from other cases. ln addition, we indicated that we were interested in obtaining all documents that it produced
in such other cases to the extent that you could not segregate information such as prior art you produced. You brought
up licenses and third party consent, and we indicated that you would have to obtain such consent in this case as well,
You indicated you would check with your client and get back to us,
Request No. 94: You asked us to explain the relevance of this request, The fact that a third party may have asked Google
to indemnify it for claims relating to the Patents-in-Suit seems patently relevant to a host of issues including willfulness,
damages, and direct infringement, at the very least. You indicated you would check with your client and get back to us,
Request No. 95: This request relates to indemnification of Accused lnstrumentalities and is relevant to issues including
revenue recognition, generation, control, and any defenses Google may attempt to raise regarding divided infringement
and the like. You indicated you would check with your client and get back to us.
Request No. 96: This request goes to what sales are U.S. sales as opposed to international sales, We are requesting
documents sufficient-to-show how international data flow works. We don't need documents showing the exact location
of data centers. But we need to know, for example, for users in Asia, how does data flow when they are using Accused
B

lnstrumentalities-is it internationalto international, how is it backed up, is it ever sent to the U,S., and the like. This has
come up in other cases involving Google. You indicated you would check with your client and get back to us,
Request Nos.97-109:These claims relate to storage of data and are therefore similarto Request No.96 above, We are
seeking sufficient-to-show documentation regarding data flow, where data is stored, master-client relationships, etc,, as
called for in the requests, This has come up in other cases involving Google. You indicated you would check with your
client and get back to us.
Req uest No. 110: G oogle agrees

to produce responsive, non-privileged documents

Request No. l-l-l-: You had a question regarding our definition of "witness." We are seeking any communications
between Google and any third party (i.e., anyone other than a party or party-witness) regarding this lawsuit. You
indicated you would check with your client and get back to us.
Request No. LL2: Go ogle agrees to produce responsive, non-privileged documents
Request No. 113: This request seeks marketing and technical documents concerning the accused products and is likely
encompassed by other requests, discussed above. The request is limited to functionalities accused of infringement, We
are looking for documents regarding presentations, letters, or the like that Google has made or sent to third parties
regarding how the accused products work, what's done with them, why they're important, marketing, importance,
benefits, etc. You indicated you would check with your client and get back to us.
Request No. 1L4: Withdrawi ng for now. We may send a narrower request later
Request No. l-l-5:This is likely subsumed within other requests discussed above, exceptthat we are seeking documents
concerning projected and future activities, You indicated you would check with your client and get back to us.
Request No. l-16: Now that we are no longer asserting the '065, we don't need the request to go back so far in time. We
are requesting documents for 3 months before the incorporation of user profile data into search functionalities for now.
We may later need to come back and ask for specific information from earlier time periods. You indicated you would
check with your client and get back to us. We also indicated that we may need high-level revenue and profit
information since the introduction of the product in order to show secondary considerations of non-obviousness.
Request No. 117:The basis for our request is revenue recognition for third party payments. You indicated you would
check with your client and get back to us.

No.118: M arket share information relates to secondary indicia of non-obviousness, and we have sent you cases
to that effect. Please confirm that Google will produce responsive, non-privileged documents
Req uest

Request No. L19-22: These requests are relevant to damages issues. Please confirm that Google will produce responsive,

non-privileged documents
Request No. 1-23-125: Go ogle agrees to produce responsive, non-privileged documents
Request No. 126: We agree to limit documents regarding Nortel to those that relate to the auction, the Skillen family of
patents, discussions between Google and Nortel in 2010, and Nortel intellectual property. With respect to employees,
we are not expecting you to know every Nortelemployee, but we are expecting you to know the names that Google
interacted with in the 2010-2012 timeframe, Please confirm that Google will produce responsive, non-privileged

documents,

9

Request No, 127-142: Google agreed to produce responsive, non-privileged documents and not to limit its production to
only documents that support its contentions (as opposed to any documents that relate to the issues discussed in these
requests).
Request No. l-43:These documents are likely covered by other requests and this provision is a catch-all. We agreed to
limit it to the Accused lnstrumentalities since you dispute infringement. Please confirm that you will produce,
Request Nos. 144-145: These requests relate to secondary considerations of non-obviousness, including copying of an
alleged embodiment of the invention (Google's Accused lnstrumentalities) and praise, criticism, discussion of the
significance of the Patents-in-Suit or alleged embodiments of their invention (Google's Accused lnstrumentalities), You
expressed skepticism that copying of an alleged embodiment of an invention (i.e., copying of an Accused
lnstru menta lity) is releva nt. Please see, for exa mple, Amqzon.com, lnc. v. Barnesondnoble.com, lnc., 239 F.3d 1343, 1366
(Fed. Cir. 20Ot), in which the Federal Circuit held that copying of a commercial "embodiment of the claims" (in that case,
Amazon's 1-Click@ feature) is a relevant secondary consideration of non-obviousness, Please confirm that Google will
produce responsive, non-privileged documents.
Request Nos, 146 and 148: G oogle says it does not maintain "organizational charts." lt does, apparently, have a directory
that indicates the reporting structure within the company and the identities and locations of employees. We are seeking
such directory information for the relevant departments relating to the Accused lnstrumentalities starting with the
senior-most employees, then direct reports, seniorvice presidents, team leads (product and technical), and then one
level below that. We can follow up from there if we require anything further. You indicated you would check with your
client and get back to us.
Request No. 147:This re quest is relevant to the technology transfer agreements we have discussed elsewhere, You
indicated you would check with your client and get back to us
Request No. l-49:This request is similar to requests 82 and 83
Request No. 1-50: Google agreed to produce responsive, non-privileged documents and not to limit its response to
interrogatories expressly seeking identification of documents or documents Google chooses to cite per Rule 33(d).
Request No. 151: We agreed that this topic was premature but you understood that it calls for documents responsive to
any 30(b)(6) topics when issued.
Request No, 152: We agreed to limit this to Google's document retention policies and any other policies concerning the
preservation of documents, including emailand chattranscripts, from August 1,2000to present. You indicated you
would check with your client and get back to us.
Request No. 153:We simila rly agreed to limit this to Google. We disagree that a litigation hold is privileged and you are

following up with your client.
ln addition, we informed you of our concern that Google's list of 20 most significant custodians does neither-- it includes
fewer than 20 custodians and omits plainly significant custodians. We wish to discuss the inclusion of Larry, Sergey, the
Senior Vice Presidents for the accused products who participate in the EMG (or equivalent), the most relevant custodian
on the introduction of AdWords in 2000, the product and technical leads forthe Accused lnstrumentalities, and the
custodians involved in the Nortelauction.
We look forward to our meeting tomorrow
Rega rd s,

Amanda Bonn I Susman Godfrey LLP
10

l90l Ave. of the Stars, Suite 950 lLos Angeles, CA 90067
(T) 3 10-789-3131 I (M) 408-832-5193 abonn@,susrnangodfrey.com

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