I/P Engine, Inc. v. AOL, Inc. et al

Filing 1005

Declaration re 1003 Opposition, (of Joshua L. Sohn) in Support of Defendants' Opposition to Plaintiff's Motion for Leave to File Supplemental Memorandum Regarding Motion to Show Cause and Motion to Strike Plaintiff's Supplemental Memorandum by AOL Inc., Gannett Company, Inc., Google Inc., IAC Search & Media, Inc., Target Corporation. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12, # 13 Exhibit 13, # 14 Exhibit 14, # 15 Exhibit 15)(Noona, Stephen)

EXHIBIT 11

Joshua Sohn
From:
Sent:
To:
Cc:
Subject:

David Perlson
Thursday, September 12, 2013 4:16 PM
Monterio, Charles
Donald C. Schultz ([e-mail]); zz-IPEngine; W. Ryan Snow ([e-mail]); QE-IP Engine; Stephen E. Noona ([e-mail])
RE: I/P Engine: Proposed Agreed Order

Charles,
It would appear we disagree as to whether the Court’s Order contemplates damages related reports. If I/P
Engine feels it can meet its burden on the appropriate ongoing royalty without an additional report, that is I/P
Engine’s choice. However, Defendants reserve their rights to argue, and intend to argue, that I/P Engine has
not and cannot. And even if I/P Engine chooses not serve an opening expert report, Defendants intend to
serve a report on damages on the dates for rebuttal reports.
Also, given your position and your previous refusal to make Dr. Becker available for deposition, please confirm
you will make Dr. Becker available for deposition as one of the 3 depositions ordered by the Court.
We note your response is silent as to whether you agree that given that I/P Engine has the burden of proof
burden to show that the new systems are not colorably different, the opening report would be from I/P Engine
and Defendants would rebut that. Please confirm you agree.
Finally, as we noted below, our agreement to extending the Court Ordered dates was part of a proposal that
would include withdrawing Plaintiff’s motion and an agreement to make clear that defendants have not violated
the Court’s Order. I/P Engine has rejected that proposal. Therefore, we do not follow your reference that I/P
Engine is considering the proposed dates made as part of a proposal from Defendants that Plaintiff has
already rejected. Given that I/P Engine has rejected the proposal, those dates are no longer on the table.
In all events, as we have indicated, we would prefer to avoid unnecessary motion practice and remain willing to
engage with I/P Engine in good faith to resolve any issues stemming from the Court’s Order. We hope that I/P
Engine does the same, including withdrawing its baseless motion.
David

From: Monterio, Charles [mailto:[e-mail]]
Sent: Wednesday, September 11, 2013 3:44 PM
To: David Perlson
Cc: Donald C. Schultz ([e-mail]); zz-IPEngine; W. Ryan Snow ([e-mail]); QE-IP Engine;
Stephen E. Noona ([e-mail])
Subject: RE: I/P Engine: Proposed Agreed Order

David,
I/P Engine disagrees that its Motion to Show Cause is without merit. Based on Defendants’ position, I/P Engine
will proceed with its pending Motion.
Additionally, I/P Engine disagrees that the Court’s Order contemplates damages-related expert reports. That
issue has already been briefed fully and the damages experts have already opined as to the impact Google’s
alleged non-infringing alternative has on the ongoing royalty rate analysis. There is no basis or new fact present
that requires new damages-related expert opinions. Nor has Google articulated one. The only inquiry made by
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the Court’s Order is whether Google’s alleged non-infringing alternative is more than colorably different from
the adjudicated infringing system – which is not a damages issue. Hence, only the technical experts have reason
to provide additional opinions.
With respect to your revised schedule, I/P Engine is considering your proposed dates.
Charles
[phone]

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From: David Perlson [mailto:[e-mail]]
Sent: Tuesday, September 10, 2013 7:17 PM
To: Monterio, Charles
Cc: Donald C. Schultz ([e-mail]); zz-IPEngine; W. Ryan Snow ([e-mail]); QE-IP Engine;
Stephen E. Noona ([e-mail])
Subject: RE: I/P Engine: Proposed Agreed Order

Charles: We receive your proposal as a compromise to resolve and moot Plaintiff’s pending motion and
respond without prejudice to the Defendants’ rights. As we have stated in the past and explained to the Court,
Plaintiff’s motion is entirely without merit and should be withdrawn with prejudice. There should be no need for
Defendants to agree to anything further to have Plaintiff withdraw its frivolous motion. Also, as an update, we
are on track to produce non-privileged custodial email identified from our reasonable search as detailed in our
Response to Plaintiff’s motion by September 13, as we committed to do.
In any event, we do not wish the burden the Court with unnecessary motion practice. And as we indicated
before, we have no objection to reasonable extensions of the Court Ordered dates to resolve Plaintiff’s motion
so long as it’s clear that defendants have not violated the Court’s Order. Here is our proposal—which
contemplates I/P Engine withdrawing its motion and a clear statement that defendants have not violated the
Court’s Order, uses the actual language from the Court’s Order, and adjusts some of the later dates due to the
holidays:
Expert Witness Reports Due by Plaintiff
Expert Rebuttal Reports Due by Defendants
The parties shall file opening briefs and any supporting evidence,
not to exceed fifteen (15) pages, addressing whether New
AdWords is not more than a colorable variation of the adjudicated
product.
The parties may file responsive briefs, not to exceed ten (10)
pages.
The parties shall meet [and confer] to negotiate an appropriate
ongoing royalty rate, using 20.9% of U.S. AdWords revenues as
the appropriate royalty base.
If the parties are unable to come to an agreement, the parties shall
schedule a settlement conference with the United States
Magistrate Judge assigned to this case
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October 25, 2013
November 22, 2013
December 13, 2013

January 6, 2014
January 10, 2014
January 31, 2014

Evidentiary hearing.

The Court, if necessary,
may schedule an
evidentiary hearing in
which the parties may
present appropriate
evidence and offer
arguments in support.

Obviously, we would incorporate all of this into and enter an agreed order and notify the Court of the
withdrawal of the motion.
We note your proposed Agreed Order provides dates that the “the parties shall serve Technical Expert Witness
Reports” and “the parties shall serve Technical Expert Rebuttal Reports.” This is not what the Court’s Order
says. Further, the Court made clear, as the law provides, that it is Plaintiff’s burden to show that the new
systems are not colorably different. Given that I/P Engine has the burden of proof, the opening report would
be from I/P Engine and Defendants would rebut that. And while Plaintiff limits the reports to “technical issues,”
the Court did not so limit the reports. Rather, right before the Court provides its schedule, the Order made
clear that the question of what the ongoing royalty damages was not resolved in the Order. Of course, that the
Court ordered the parties to meet and confer regarding an appropriate ongoing royalty rate shows this as well.
To the extent that Plaintiff believes that either (1) Defendants must provide an opening report on issues for
which it does not bear the burden of proof, or (2) that damages reports are not contemplated by the Court’s
Order, please promptly explain the basis for this view.
Additionally, we do not agree to the discovery (interrogatory and additional deposition time) beyond that
ordered by the Court.
Please let us know if you would like to discuss further.
David

From: Monterio, Charles [mailto:[e-mail]]
Sent: Tuesday, September 10, 2013 1:00 PM
To: QE-IP Engine; Stephen E. Noona ([e-mail])
Cc: Donald C. Schultz ([e-mail]); zz-IPEngine; W. Ryan Snow ([e-mail])
Subject: I/P Engine: Proposed Agreed Order

Meg,
In an effort to resolve I/P Engine’s Motion to Show Cause, I/P Engine proposes the attached Agreed Order.
Please let us know if Defendants are agreeable by COB ET Wednesday, September 11.
Charles J. Monterio, Jr.
Associate
Dickstein Shapiro LLP
1825 Eye Street NW | Washington, DC 20006
Tel [phone]| Fax [phone]
[e-mail]
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This email message, including any attachments, is intended solely for the use of the addressee(s) named above. This communication may contain privileged
and/or confidential material. If you are not the intended recipient, you have received this communication in error, and any review, use, printing, copying, or other
dissemination of this email message is strictly prohibited. If you are not the intended recipient, please notify the sender immediately by reply email message or
notify our email administrator at [e-mail] and permanently delete and destroy the original message and any and all copies, including
printouts and electronic copies on any computer system.
Dickstein Shapiro LLP
www.DicksteinShapiro.com

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