I/P Engine, Inc. v. AOL, Inc. et al
Filing
106
Declaration re 105 Memorandum in Support of Emily O'Brien by Google Inc., IAC Search & Media, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K, # 12 Exhibit L, # 13 Exhibit M, # 14 Exhibit N, # 15 Exhibit O, # 16 Exhibit P, # 17 Exhibit Q, # 18 Exhibit R, # 19 Exhibit S, # 20 Exhibit T, # 21 Exhibit U, # 22 Exhibit V, # 23 Exhibit W)(Noona, Stephen)
EXHIBIT P
quinn emanuel trial lawyers | san francisco
50 California Street, 22nd Floor, San Francisco, California 94111-4788 | TEL: (415) 875-6600 FAX: (415) 875-6700
WRITER'S DIRECT DIAL NO.
(415) 875-6316
WRITER'S INTERNET ADDRESS
megkammerud@quinnemanuel.com
March 2, 2012
Ken Brothers
Dickstein Shapiro LLP
1825 Eye Street NW
Washington, DC 20006
Re:
I/P Engine, Inc. v. AOL, Inc. et al.
Dear Ken:
I write to confirm our meet and confer telephone conference on March 1, 2012.
In regards to I/P Engine’s response to Interrogatory No. 3, you confirmed that although your
claim that Google has failed to state a prima facie case of non-obviousness is one basis for
objecting to this Interrogatory, you are not refusing to respond or withholding any factual
information based on this objection. You indicated that you believe the Interrogatory calls for
expert discovery, but you have agreed to supplement your response to include underlying facts
related to secondary considerations of non-obviousness in the next 30 days.
Interrogatory No. 5 asks I/P Engine to identify any product or software that practices or
embodies any claim of the patents-in-suit, including products owned by I/P Engine, Lycos, or
WiseWire. You stated that I/P Engine had provided its response to this Interrogatory and that the
fact that the response does not mention Lycos, WiseWire or I/P Engine products “is part of that
response.” You agreed that by not listing any products from Lycos, WiseWire, or I/P Engine in
the response, I/P Engine has confirmed that it does not believe any products from those entities
practice the claims of the patents.
We discussed the parties’ privilege logs and will address that issue under separate cover.
quinn emanuel urquhart & sullivan, llp
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You stated that you will not further supplement I/P Engine’s infringement contentions despite
the inadequacies we identified in our letter on February 27, 2012. We noted that we do not
believe I/P Engine’s contentions mention collaborative filtering and asked whether it was your
position that the patents do not require collaborative filtering. You stated that you believe that
you have identified what it is within Google’s advertising system that meets the requirement for
collaborative filtering in the patent claims . We asked that you point out where in the
contentions you think you have pointed to collaborative filtering. You refused to say. You also
refused to substantively engage with us as to any of the other issues we raised as to Plaintiff's
contentions in our February 27 letter.1
You also confirmed that you refuse to supplement any of your contentions on Google Search or
IAC ASL despite the fact that we have now provided technical documents as to them. Here
too, you provided no justification other than stating you felt your contentions were appropriate.
We find Plaintiff's refusal to engage us on our concerns regarding the contentions as to
AdWords, Search, and ASL now that you have the technical information very troubling. They
only further show, as we have said before, that Plaintiff has no good faith basis to proceed under
this case as required by Rule 11. As you have no basis to support your claims, we ask that
Plaintiff confirm it will drop these claims by March 7. Otherwise we will proceed to compel and
complete infringement contentions and will raise these issues with the Court.
In response to our questions about documents in Hudson Bay’s possession, you stated that
Hudson Bay has few, if any, documents that have not already been produced in this case. You
confirmed that Hudson Bay would continue to investigate, though, and was “generally
agreeable” to producing unique documents that are not privileged. We asked that I/P Engine
propose a protocol for this production, and you stated, “We’re doing what we need to do”
without offering any additional explanation.
We stated that we have never believed that there was an agreement not to collect and produce
emails. We confirmed that we are collecting emails as part of custodial searches and expect that
I/P Engine and Hudson Bay will do the same. You agreed to further investigate this issue and
provide more information as well as a proposal, with timeframes, on how to proceed by the
middle of next week.
1
As we indicated, the lack of clarity as to Plaintiff's reading of the patents prevents us from
being able to supplement our invalidity contentions, if needed, based on them. As we have no
further clarity on Plaintiff's contentions. beyond the fact that Plaintiff agreed that collaborative
filtering is required by the claims (which was somewhat helpful), there is no further art for us to
identify in our invalidity contentions today.
2
We again explained that the search term ((“Relevance”) and ((“Inventory”) or “Ads Coverage”))
retrieves too high a percentage of hits when run through custodial documents. Mr. Monterio
stated that I/P Engine would like documents including the term “relevance” as used in reference
to Quality Score and as referenced in a specific Google document and a video featuring Hal
Varian. We explained that we had already agreed to include “Quality Score” in our search term
list, which would likely encompass any documents referencing “relevance” in connection with
Quality Score. Nonetheless, I/P Engine insisted that it was necessary to include a specific
“relevance” search term given the Google document and Hal Varian video. Mr. Monterio agreed
to send me a copy of the document he was referencing. After receiving the document, we will
work with you to draft a search term that returns documents relevant to your concerns without
retrieving too high a percentage of hits.
We are continuing to review and consider the proposed terms you stated were included in I/P
Engine’s supplemental contentions and will provide an update on our review of these terms next
week. To the extent that you are aware of particular documents supporting your request to
include any of these search terms, please identify these documents to us in order to speed our
review of the terms and to support creation of the most comprehensive proposal of related search
terms.
In regards to Google’s production of certain documents from prior AdWords litigations, we will
have Google’s non-infringement reports and expert deposition transcripts processed for
production next week. We are working with certain third parties to account for their sensitivity
to producing confidential information in damages reports and related expert depositions. We
sent the last notice letter on this subject on February 24, so the third party recipient has until
March 9 to respond. We have collected the relevant damages documents and will send them for
processing immediately after March 9. Accordingly, we anticipate producing them the week of
March 12. We also anticipate producing relevant portions of the Bright Response trial transcript
at that time.
You again proposed that the parties stipulate that there are no relevant non-infringement
differences between IAC’s, Gannett’s and Target’s implementation of AdWords and Google’s
own implementation. You stated that such a stipulation would obviate the need for technical
productions from the non-Google defendants and for certain Rule 30(b)(6) depositions, and
would greatly reduce the scope of custodial production. We will review I/P Engine’s
supplemental contentions and attempt to respond to this proposal next week.
You asked that we consider a similar stipulation with regards to revenue and damages. We will
consider this option as well.
In regards to the parties’ ESI agreement, we will respond under separate cover.
We discussed language in the discovery stipulation concerning supplementation of contentions
following the issuance of a Markman order. We will send proposed language clarifying this
issue.
3
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.
Very truly yours,
Margaret P. Kammerud
4
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