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 14

quinn emanuel

trial lawyers | san francisco

50 California Street, 22nd Floor, San Francisco, California 94111-4788 | TEL: [phone] FAX: [phone]

May 8, 2012

Charles Monterio
[e-mail]
Confidential- Outside Counsel Only
Re:

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

Dear Charles:
I write to follow up on the issues discussed during our April 26 meet and confer telephone call,
my April 27 letter, and your May 7 letter.
Deposition Dates
As you know, we have provided you with proposed dates for IAC’s witnesses. We had also
provided you a date for Mr. Alferness, Google’s witness on many of the liability and damages
topics. You indicated that you wished to take Google’s deposition after the other defendants,
and did not get back to us until May 7 about Mr. Alferness’ deposition on May 23, and even then
did not confirm the date. Mr. Alferness is no longer available on May 23. He is available June
14 to testify as to the topics set forth in my April 23 email. Please let us know promptly if that
date works for Plaintiff.
Google is willing to provide a witness on May 31 to testify in response to Damages Topic Nos. 2
and 3, consistent with its objections and response served on April 18. Please confirm promptly
that you will go forward with the deposition on May 31. If you want to take this deposition after
the depositions of the other defendants, we will look for later dates, assuming availability of the
witness. Google is willing to provide a witness on June 19 who will be designated to testify in
quinn emanuel urquhart & sullivan, llp
LOS ANGELES |

865 South Figueroa Street, 10th Floor, Los Angeles, California 90017-2543 | TEL [phone] FAX [phone]
51 Madison Avenue, 22nd Floor, New York, New York 10010-1601 | TEL [phone] FAX [phone]
SILICON VALLEY | 555 Twin Dolphin Drive, 5th Floor, Redwood Shores, California 94065-2139 | TEL [phone] FAX [phone]
CHICAGO | 500 W. Madison Street, Suite 2450, Chicago, Illinois 60661-2510 | TEL [phone] FAX [phone]
WASHINGTON, DC | 1299 Pennsylvania Avenue NW, Suite 825, Washington, District of Columbia 20004-2400 | TEL [phone] FAX [phone]
LONDON | 16 Old Bailey, London EC4M 7EG, United Kingdom | TEL [phone] FAX [phone]
TOKYO | NBF Hibiya Building, 25F, 1-1-7, Uchisaiwai-cho, Chiyoda-ku, Tokyo 100-0011, Japan | TEL [phone] FAX [phone]
MANNHEIM | Mollstraße 42, 68165 Mannheim, Germany | TEL [phone] FAX [phone]
MOSCOW | Voentorg Building, 3rd Floor, 10 Vozdvizhenka Street, Moscow 125009, Russia | TEL [phone] FAX [phone]
NEW YORK |

response to Damages Topic Nos. 13-15.
Gannett is willing to produce two witnesses, one on June 14 and one on June 15, in Quinn
Emanuel’s Washington, DC offices. One witness will testify as to Liability Topic Nos. 1-8 and
10-13, while another will testify about Damages Topic Nos. 1-3. As we have repeatedly pointed
out, Gannett lacks knowledge as to many of these topics.
We will continue to work with our clients to provide dates for the other witnesses. Please
confirm as soon as possible whether I/P Engine intends to go forward with depositions of IAC,
Gannett, and Google on the dates we proposed.
ESI Agreement
You state that you “expect Google to have the ability to produce unsent draft emails . . . that are
distinguishable from any auto-save functions.” We have told you repeatedly that Google does
not have this ability. After discussing the issue with Google, we agree that Google will process,
search and review all unsent emails (which includes autosaved emails and unsent drafts), in spite
of the burden that this production places on Google. Google reserves all rights under the
Protective Order regarding the inadvertent production of privileged information, including the
right to claw back all documents containing such information. Google continues to question the
usefulness of these emails, given that neither Google nor Plaintiff will be able to distinguish
between autosaved emails and saved unsent draft emails. Please be aware that as a result of this
issue, Google may not be in a position to authenticate these emails.
Deposition Topics
Liability Topic No. 9 to Target, Gannett, and IAC and Liability Topic No. 11 to Google:
You agreed during our April 26 meet-and-confer call to narrow the scope of these topics. In
your May 7 letter, you stated that Plaintiff “is interested in these parties’ knowledge of the
improvements, modifications or changes related to the accused systems and functionalities of
Google AdWords and Google AdSense for Search, and system features described in any asserted
contention by any party related to infringement, non-infringement, or any other issue asserted in
this litigation since January 1, 2005.” While narrower than the original language, this is still too
broad and vague to put Defendants on notice as to what is sought. In addition, Target, Gannett,
and IAC are unlikely to have knowledge of these matters. Nevertheless Defendants will produce
witnesses to testify as to their knowledge of the revised topic, as they understand it and to the
extent they have knowledge. Google designates Mr. Alferness for this topic. IAC and Gannett
designate their respective “Liability” witnesses.
Liability Topic Nos. 14-17 to IAC, Target and Gannett; Liability Topic Nos. 17-19 to
Google; Damages Topic Nos. 10-11 to IAC, Target and Gannett; Damages Topic Nos. 1718: We have explained that these questions are appropriate for contention interrogatories, not
for 30(b)(6) witnesses, and that they are premature given that the Court has not yet issued its

2

Markman order. We are currently reviewing the case law cited in your May 7 letter, and will
respond separately.
Liability Topic No. 15 and Damages Topic Nos. 4 and 6 to IAC, Target, and Gannett, and
Liability Topic No. 15 and Damages Topic Nos. 1, 2, 7, and 10 to Google: These topics,
which focus on non-infringing alternatives or design-arounds, are premature given that no
Markman order has issued. Defendants are willing to produce a witness in response to topics
regarding non-infringing alternatives and design-arounds after the Court issues its Markman
order.1
Damages Topic No. 5 to IAC, Target, and Gannett; Damages Topic No. 8 to Google: In your
May 7 letter, you narrowed the scope of these topics. Defendants will provide witnesses to
testify generally to these topics as revised in your May 7 letter. IAC and Gannett designate their
respective “Damages” witnesses. Google designates Mr. Alferness in response to this topic.
Damages Topic No. 6 to IAC, Target, and Gannett; Damages Topic No. 10 to Google:
During our meet-and-confer call, you narrowed the scope of these topics to information
regarding “comparisons and evaluations directed to the differences between the average revenue
per search, gross and net revenue, ad search results quality, and conversion rates of Google
AdWords and Google AdSense for Search, and of the non-infringing alternatives.” Google will
provide a witness to testify generally as to the comparisons and evaluations directed to the
differences between revenue per search, revenue, and conversion rate for the two systems, to the
extent this information exists. Google will also provide a witness to testify generally about
whether, and if so, how, Google compares ad search results quality in the systems, to the extent
Google understands how Plaintiff is using that term. Although non-Google Defendants are
unlikely to have knowledge of this topic, Target, Gannett, and IAC will each provide a witness.
Should the defendant not have any knowledge, we will inform you in advance. IAC and Gannett
designate their “Damages” witnesses.
Damages Topic No. 7 to IAC, Target, and Gannett: During our meet-and-confer call, you
clarified that this topic seeks any knowledge the non-Google Defendants might have about
license agreements related to AdWords or AdSense for Search, including Google’s licensing
policies and strategies for these products, based on their dealings with Google. As we have
explained, we do not believe that IAC, Target, or Gannett have such knowledge. Nonetheless,
these defendants will provide a witness as to this topic. IAC and Gannett designate their
respective “Liability” witnesses.
Damages Topic No. 8 to IAC, Target, and Gannett: This topic seeks information about
agreements relating to search advertising patents to which these Defendants are parties. You
have explained that the purpose of this is to review comparable licenses for damages purposes.
1

Please note that Defendants maintain their objection that Liability Topic No. 15 is a
contention topic.
3

We do not believe that this is a sufficient basis for seeking such information. However, as a
compromise, IAC, Target, and Gannett will provide a witness to testify about any license
agreement the specific defendant produces in this case. IAC and Gannett designate their
respective “Liability” witnesses.
Damages Topic No. 9 to Target, Gannett, and IAC; Damages Topic No. 16 to Google: We
requested that you provide case law to support your position that Defendants are required to
provide information as to indemnification, but your May 7 letter did not cite any case law on this
topic. We continue to await this case law.
Liability Topic Nos. 5 and 8 to Google: These topics seek, among other things, information
about DumbAds. We disagree with your position that DumbAds is relevant to this litigation; we
have previously agreed to produce a witness to testify generally about the system architecture of
SmartAds. During the course of our discussion, you clarified that, as to DumbAds, you are
specifically interested in information related to the use of Quality Score. If Plaintiff revises these
topics to clarify that, as to DumbAds, it is only interested in information related to the use of
Quality Score, Google will attempt to provide a witness in response to the appropriately
narrowed topics. However, please be aware that, due to the passage of time, Google may no
longer have extensive knowledge regarding the DumbAds system. To answer the question in
your May 7 letter, Google’s designee to testify on the topic of the system architecture of
SmartAds will be Mr. Alferness.
Liability Topic Nos. 6 and 7 to Google: You clarified that you wanted a witness to explain
whether the specific video named in the topics using the words “Relevance” and “Landing Page”
referred to the same thing as the specific listed internal document using the words “Relevance”
and “LPQ Score.” We still do not believe that this explanation makes sense, or is reasonable.
Subject to its objections, Google will produce Mr. Alferness to testify generally as to the
meaning of the terms “LPQ Score” and “Relevance score” as used in G-IPE-0146189. Please
confirm that you agree to narrow your topic accordingly.
Damages Topic No. 9 to Google: You explained that this topic seeks information regarding
testing of the implementation of Quality Score, including any testing related to whether the use
of an advertising system with Quality Score was more valuable than other systems. Based on
your explanation, and subject to its objections, Google will provide Mr. Alferness to testify
generally as to the kinds of testing performed as to Quality Score, to the extent this information
exists.
Inventor Depositions
We have responded under separate cover regarding the issue of inventor depositions, which we
are continuing to discuss, including during our meet and confer this morning.
*

*

4

*

Please note that Defendants are providing witnesses subject to all objections that they have
previously made and consistent with the responses they have previously served. Any agreement
to produce a witness on a particular topic shall not be deemed an admission that any Defendant
has any relevant knowledge concerning a particular topic.
As always, we remain willing to meet and confer to resolve any discovery issues, and hope that
you similarly remain willing to work together on these issues in a timely and efficient manner.

Sincerely,

Jen Ghaussy
cc:

[e-mail]
[e-mail]

01980.51928/4734654.4

5