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

Filing 109

Memorandum in Opposition re 99 MOTION to Compel Plaintiff IP Engine, Inc.'s Motion to Compel Defendants' Compliance with this Court's Scheduling Order, or Alternatively, Motion for Protective Order filed by Gannett Company, Inc., Google Inc., IAC Search & Media, Inc., Target Corporation. (Noona, Stephen)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION

I/P ENGINE, INC.
Plaintiff,
v.

Civil Action No. 2:11-cv-512

AOL, INC., et al.,
Defendants.

OPPOSITION BRIEF TO PLAINTIFF’S MOTION TO COMPEL COMPLIANCE WITH
THE COURT’S SCHEDULING ORDER
I.

INTRODUCTION
Plaintiff’s Motion to Compel Compliance With This Court’s Scheduling Order should

never have been filed and should be denied. Indeed, it rests on three critically false premises.
First, Plaintiff’s motion assumes that this Court will not group similar terms to reach the
limit of ten (10) terms in construing terms under the Court’s Scheduling Order. Not only does
this make logical sense, but it makes practical sense as well. This Court has grouped similar
terms in the past and, if it were to agree to do so here, there would be no dispute.
Second, Plaintiff’s motion incorrectly asserts that Defendants have proposed far beyond
ten (10) claim term issues for construction. But just today Defendants provided to Plaintiff the
following list of ten claim construction issues that remain for the Court to resolve:
1. “relevance to a query” / “relevance to at least one of the query and the first user” /
“informons relevant to a query” / “information relevant to a query”
2. “scanning a network” / “a scanning system”

3. “collaborative feedback data” / “[feedback system for] receiving information found to
be relevant to the query by other users”
4. “individual user” / “first user”
5. “combining”
6. “demand search”
7. “informon”
8. Antecedent basis issue for 7 term dyads
9. Separate systems issue
10. Order of steps for ‘420 claim 25 and ‘664 claim 26
Defendants indicated they intended to work with Plaintiff on numbers 1 and 7 to try to reach
agreement on those terms as well, thus bringing the number of issues even lower. After
Defendants negotiated in good faith until after 6 p.m. ET to attempt to solve the remaining
issues, Defendants requested an extension of one day to see if the parties could finalize a
resolution rather than engage in motion practice. Plaintiff refused. Indeed, at every turn,
Defendants’ efforts to narrow the issues has been met with resistance. Compromises are met
with threats, and getting Plaintiff to take any position at all on many terms has taken numerous
calls, emails, and letters. Even today, a few days before the claim construction brief is due,
Plaintiff still withholds constructions and positions for some terms.
Furthermore, I/P Engine’s motion is based on the third false premise that the Court’s
Scheduling Order requires that each party initially may only identify for construction 10 words in
the claims. To the contrary, Paragraph 13(b) states that the “parties shall simultaneously
exchange a list of claim terms to be construed, identifying any claim element that the party
contends should be governed by 35 U.S.C. §112(6)”, and Paragraph 13(c) goes on to state that

the “parties will simultaneously exchange a preliminary proposed construction of each claim
term the parties collectively have identified for claim construction purposes”. (Dkt. 90, 5
(emphasis added).) This makes perfect sense. Parties exchange proposed constructions in
advance of Markman briefs so they can determine which terms raise a legitimate claim
construction dispute, thus requiring construction by the Court, and which terms do not—a
process that typically results in substantial narrowing of the issues for presentation to the Court.
In any event, as the parties have always agreed that they must meet and confer to establish a list
of ten disputed terms for the Court’s construction, there is nothing to compel.
As “alternative” relief, Plaintiff asks that it be “excused” from disclosing proposed
constructions. But Plaintiff has already, through self-help, refused to provide constructions for
most terms when the parties were supposed to exchange constructions. Despite the impropriety
of this self-help, and the inadequacy of Plaintiff’s proposed terms and constructions, Defendants
tried to work with Plaintiff to establish what Defendants believe is a list of ten disputed terms for
the Court’s construction. So just as there is nothing to compel, there is no issue on which a
protective order could properly be sought – or on which one is even needed.
If anyone is entitled to relief it is Defendants for having to proceed through most of the
claim construction process without Plaintiff’s constructions of its own patents, having its
practical solutions rejected in favor of motions practice, and having to waste time responding to
Plaintiff’s specious motion rather than focus on the substantive issues in the case.
II.

BACKGROUND
A.

The Parties’ Exchange of Terms for Construction under Paragraph 13(b) of
the Scheduling Order

Paragraph 13(b) of the Court’s Scheduling Order states that the parties must exchange a
list of claim terms for construction. (Dkt. 90, 5.) On March 14, 2012, pursuant to the

Scheduling Order, the parties exchanged proposed lists of terms to be construed. (Declaration of
Joshua L. Sohn in Support of Defendants’ Opposition (“Sohn Decl.”), Exs. 1, 2.) Plaintiff’s list
included just four terms: “scanning a network,” “informon,” “relevance,” and “combining.” (Id.,
Ex. 1.) Plaintiff argues that Defendants listed “more than 40 different claim terms” in its March
14 submission. (Dkt. 100, 1.) This is false. Plaintiff is only able to arrive at this number by
separately counting terms from Defendants’ list that present the same issue for construction.1
For instance, Defendants sought construction for the patents’ “relevance” limitations:
“informons relevant to a query,” “information relevant to a query,” “relevance to a query,” and
“relevance to at least one of the query and the first user.” These terms present a common issue
for resolution by the Court (namely, how the patents define relevance) and thus may be grouped
together for purposes of claim construction.
In actuality, Defendants’ initial list of proposed terms raised at most fifteen issues for
possible construction. (Sohn Decl., Ex. 2.)
B.

The Parties’ Meet-and-Confer Efforts Following Their Exchange of Terms
for Construction

After the parties exchanged their lists of proposed terms for construction on March 14,
Plaintiff complained about the number of terms Defendants had proposed. (Id., Ex. 3.) As it
does now, Plaintiff argued that because the Court will only construe ten terms, the parties may
only propose ten terms in their exchange of terms for construction. (Id., 1.)
As Defendants pointed out in their response, though the Court will only construe ten
terms, “this does not mean that the parties are required to discuss only ten terms.” Rather, “[t]he
process provided in the Scheduling Order specifically allows the parties the time and opportunity
to meet and confer regarding their list of terms and proposed constructions” so that they may
1

Moreover, the asserted claims of the patents-at-issue – as is commonly the case for
patents – contain multiple small variants on the same general claim limitations.

eventually reach agreement on a final list of ten terms for the Court to construe. (Sohn Decl., Ex.
4, 1-2.) Again, neither Paragraphs 13(b) nor 13(c) put a limit on the number of claim terms to be
proposed or construed by the parties. (Dkt. 90, 5.)
After the parties met and conferred on March 19, Defendants sought to further narrow the
disputed issues by dropping eight terms from their list. (Sohn Decl., Ex. 5, 10-11.) Defendants
reiterated their position that many of their remaining proposed terms could be grouped together
for purposes of claim construction, and proposed a revised list of eleven term groups.
Defendants also offered, as part of the parties’ meet and confer process between March
14 and March 20, to postpone the deadline under Paragraph 13(c) in order to give Plaintiff more
time to prepare proposed constructions and evidence in support. (Id., 6.) Specifically,
Defendants proposed that the parties delay their exchange of proposed constructions until Friday,
March 23, and delay their exchange of supporting evidence until Wednesday, March 28. (Id.)
Plaintiff rejected that offer. (Id.) Rather than provide a meaningful response, Plaintiff again
repeated its request for Defendants to identify a list of “top 10 claim terms” and announced that
the parties were at an impasse. (Id., 5.)
C.

The Parties’ Exchange of Proposed Constructions and Plaintiff’s Motion to
Compel

Pursuant to Paragraph 13(c) of the Scheduling Order, the parties exchanged proposed
constructions on the afternoon of March 21. Defendants’ submission contained constructions for
the 11 issues it identified for construction. (Sohn Decl., Ex. 6.) Plaintiff provided little in the
way of constructions. In fact, it did not provide constructions for most of Defendants’ issues.
(Id., Ex. 7.) Instead, Plaintiff offered constructions for a smaller number of isolated words that
were contained within Defendants’ term list. (Id.) After engaging in this self-help, Plaintiff filed
its Motion to Compel the same day. (Dkt. 99.)

D.

Defendants’ Continued Efforts To Comply with the Court’s Scheduling
Order and Agree to a List of Ten Terms for the Court’s Construction

In the days following their March 21 exchange, Defendants continued to work towards
creating a final list of ten terms for the Court’s construction despite Plaintiff’s failure to provide
constructions for most terms. On March 22, for instance, Defendants sent Plaintiff an email
stating that “Plaintiff’s Preliminary Proposed Claim Terms and Proposed Constructions reflects
several areas of apparent agreement (or near-agreement) between Plaintiff and Defendants,
raising the possibility that the parties could significantly narrow their list of claim terms in
dispute.” (Id., Ex. 5, 3). Defendants then enumerated the areas where the parties appeared to
have similar proposed constructions. Defendants also asked Plaintiff to respond to questions for
which Defendants needed clarification. (Id., 3-5.) In this same email, Defendants also agreed to
one of Plaintiff’s proposed constructions. (Id., 3.) Plaintiff responded on March 23, but did not
answer all of the questions raised by Defendants. (Id.) Plaintiff’s March 29 letter again left
questions unanswered. (Id., Ex. 8; Ex. 9; Ex. 10, 2.)
The parties met and conferred on April 4, 2012. During that meet and confer and in
subsequent correspondence, Defendants made efforts to narrow their list of disputed terms
further in an effort to reach agreement on a list of ten or fewer terms for the Court’s construction.
(Sohn Decl., ¶ 17.) For instance, Defendants agreed not to seek construction of “searching [for
information relevant to a query associated with a first user].” Defendants agreed to seek
construction of the word “combining,” as Plaintiff requested, rather than the larger phrases
Defendants initially proposed. (Id.) Defendants also agreed to drop two phrases containing
“scanning a network” and to instead just construe the term “scanning a network,” as Plaintiff
requested. (Id.) Incredibly, in return for Defendants’ offering to construe the terms that Plaintiff
requested, which were different than what Defendants had initially suggested, Plaintiff accused

Defendants of violating the Court’s Scheduling Order because Defendants offered different
constructions for these different terms. (Id., Ex. 15, 3.) Of course, it is commonplace for parties
to alter constructions throughout and as a result of the meet and confer process as they try to
reduce the scope of disputes – indeed, this is the point of meet and confer. Plaintiff's allegation
is also ironic given the evolving nature of Plaintiff's own constructions and the fact that Plaintiff
itself provided constructions for almost no terms at all on the date provided in the Court’s
Scheduling Order. (Id., Ex. 7.)
As part of the parties’ correspondence following the meet and confer on April 4, the
parties agreed to extend the deadline for Defendants’ response to Plaintiff’s Motion until April 9.
(Dkt. 108.) On April 9, the parties further discussed their claim construction issues during a
meet and confer. (O’Brien Decl., ¶ 2.) Defendants noted that they believed, as shown in the list
above in the introduction, the parties already had no more than 10 issues for the Court to address.
(Sohn Decl., Ex. 14.) Defendants further noted that they hoped to be able to reach agreement on
Plaintiff’s proposals for the terms “informon” and “user,” as well as for the relevance terms.
(O’Brien Decl., ¶ 2.) Counsel for Defendants agreed to discuss with their clients, and get back to
Plaintiff as soon as possible. (Id.) Given the hour, however, the Defendants could not do that,
and also get their Opposition on file that night. Thus, Defendants asked if Plaintiff would be
willing to agree to a one or two day extension of time for Defendants’ opposition to Plaintiff’s
motion, in order to focus their attention on resolving the claim construction issues and providing
proposals, rather than finalize their Opposition to Plaintiff’s motion. (Id.) Defendants pointed
out this extension would not prejudice Plaintiff, as no ruling on Plaintiff’s motion would be

likely before the parties file their Opening Markman brief just a few days later. Nevertheless,
Plaintiff refused, forcing Defendants to file this Opposition.2 (Id.)
III.

ARGUMENT
A.

There is Nothing for This Court to “Compel” Defendants to Do

Plaintiff’s Motion “requests that the Court compel Defendants to comply with paragraph
13(c) of the scheduling order by identifying the top ten claim terms to be construed.” (Dkt. 100,
11.) But this requested relief is both improper and unnecessary. It is improper because
Paragraph 13(c) imposes no limit on the number of terms that may be exchanged between the
parties. And it is unnecessary because the parties’ exchange of constructions under Paragraph
13(c) has long since passed.
1.

Plaintiff’s Motion is Impractical and Ineffective

Plaintiff’s requested relief is impractical from a timing standpoint. Pursuant to the
briefing schedule in the Court’s Local Rules, Plaintiff’s Motion may not even be fully briefed
and ripe for decision until after the parties’ opening Markman briefs are due on April 12. (See
Local Rule 7(F)(1); Federal Rules of Civil Procedure 6(a) and 6(d); Dkt. 90, ¶ 13(e); Dkt. 108.)
Thus, by the time the Court rules on Plaintiff’s Motion, the parties will likely already have filed
Markman briefs presenting ten terms for the Court’s construction.
2.

Defendants Have Respected the Court’s Scheduling Order

Plaintiff disingenuously argues that Defendants are “challenging this Court’s Scheduling
Order.” (Dkt. 100, 9.) To the contrary: Defendants respect the Scheduling Order and the
Court’s authority to manage its docket. Nothing in Paragraphs 13(b) and 13(c) of the Scheduling
2

Even after Defendants told Plaintiff that they could not engage in further meeting and
conferring on the claim construction terms the evening of April 9 because they needed to focus
on finishing this brief, Plaintiff continued to press for agreement on its proposed constructions
and also misrepresent the statements made by Defendants’ counsel regarding those constructions.
(O’Brien Decl., ¶ 3.)

Order places a limit on the number of claim terms or proposed constructions to be exchanged.
(Dkt. 90, 5.) As noted above, the exchange of proposed constructions is the mechanism by
which the parties can identify the extent to which they do or do not have a dispute for their
proposed terms. The parties can then meet and confer to identify the ten terms for which they
have a fundamental dispute, in order to present this final, narrowed list to the Court for
construction. See 02 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1362
(Fed. Cir. 2008) (holding that the court construes terms when “the parties present a fundamental
dispute regarding the scope of a claim term”).
Defendants have at all times attempted to engage in that process in good faith. The
fundamental problem here is that Plaintiff refuses to engage in the process of determining which
terms are in dispute.
3.

Defendants’ List of Terms is Reasonable

Plaintiff fails to acknowledge that Defendants’ list of proposed constructions comprises
just ten terms, each presenting a single claim construction issue for resolution. (Sohn Decl., Ex.
14.) Defendants’ decision to present certain term groups (rather than individual terms) for
construction is both reasonable and efficient; this Court has allowed such grouping before for
similar terms. For instance, it makes perfect sense to construe the terms “relevance to a query” /
“relevance to at least one of the query and the first user” / “informons relevant to a query” /
“information relevant to a query” together, given that these terms present the common issue of
what the patents mean when they state that an entity is relevant to another entity. It likewise
makes sense to construe the terms “informons” “the informons” / “users” “such users / “a query”
“the query” / “a feedback system” “the feedback system” / “a scanning system” “the scanning
system” / “a first user” “the first user” / “a content-based filter system” “the content-based filter

system” together, since these term dyads present a common “antecedent basis” issue – i.e.,
whether the second mention of an entity in a claim must refer back to the first mention of that
entity in the claim. Indeed, Plaintiff has now agreed to group these terms in this manner.
The same logic applies to all of Defendants’ term groups – each group should be counted
as an individual term for purposes of the Scheduling Order because each group presents a single
discrete issue for claim construction. Other than the fact that the words in the phrases are not
identical, Plaintiff fails to acknowledge that those issues can and should be addressed together as
is commonly done in patent cases where, like here, the patentee has stated a similar concept in
several different ways. See Bid for Position, LLC v. AOL LLC, No. 2:07cv582, 2008 WL
5784151 at *5-6 (E.D.Va. July 11, 2008) (construing the similar phrases “information for
selecting one of the two or more positions of priority that the first bidder wishes to maintain in
the auction” and “selected one of the two or more positions of priority that the first bidder wishes
to maintain in the auction” together and finding both to have the same meaning, “information
entered by the bidder that indicates the bidder’s choice of one of the two or more positions of
priority in the auction.”).
Plaintiff’s refusal to withdraw its motion to compel also ignores the numerous
compromises that Defendants have made in meeting and conferring with Plaintiff to reach an
agreed list of ten terms. As part of the meet and confer process, Defendants have agreed to
withdraw the following proposed terms: “feedback system for receiving collaborative feedback
data from system users relative to informons considered by such users”, “filtering the combined
information for relevance to at least one of the query and the first user”, and “searching [for
information relevant to a query associated with a first user]” (Sohn Decl., ¶ 17.) Defendants also
agreed to withdraw its broader “combining”, “scanning a system”, and “scanning a network”

terms, in favor of Plaintiff’s more narrow terms. (Id.) Defendants have also agreed to Plaintiff’s
proposed constructions for “query,” and have reached a partial agreement regarding the order of
steps for claim 25 of the ‘420 Patent and claim 26 of the ‘664 Patent. (Id., Sohn Decl., ¶ 17; id.,
Ex. 5, 2; Ex. 12; Ex. 13.) Finally, the parties appear to be near agreement on the relevance terms,
“user” and “informon.” (O’Brien Decl., ¶ 2.) Despite all of these efforts, Plaintiff has refused to
withdraw its motion to compel.
Plaintiff also claims that Defendants’ list of terms is “over-inclusive as it encompasses
every element of the asserted claims,” rather than “a reasonable set of specific terms that are
vague or unexplained.” (Dkt. 100, 9-10.) It is unclear why Plaintiff chose to seek the
intervention of the Court with respect to this issue, because to the extent that Plaintiff believes
that terms in the patent are not vague or unexplained, Plaintiff is free to assert that they should be
construed according to their plain meaning.
B.

No “Protective Order” is Justified.

There is no merit to Plaintiff’s alternative request “that this Court grant a Protective
Order excusing it from Defendants’ unauthorized demand that Plaintiff disclose proposed
constructions and supporting intrinsic and extrinsic evidence for virtually every limitation in the
asserted claims.” (Dkt. 100, 11.) Because Paragraph 13(c) does not limit the number of
proposed constructions that the parties may exchange, Defendants have done nothing
“unauthorized.” The Scheduling Order sets forth a process by which the parties identify each
term they believe might require construction. Under this process, the exchange of constructions
would then reveal the extent to which the parties do or do not have a dispute. Should the parties
have a dispute over more than ten terms, the parties would then meet and confer to agree upon a
final, narrowed list to present to the Court for construction.

Rather than engage in this process in good faith, Plaintiff instead chose to engage in
obstructionist self-help.3 Plaintiff refused to provide constructions for the terms that Defendants
proposed on March 21, as required by the Court’s Scheduling Order. Instead, Plaintiff provided
constructions for a small subset of words in isolation. (Sohn Decl., Ex. 7.) For example,
Plaintiff provided a construction for the word “relevance,” rather than a construction of the terms
“informons relevant to a query,” “information relevant to a query”“relevance to a query,”
“relevance to at least one of the query and the first user,” or “relevance to at least one of the
query and the first user.” (Id., Ex. 6, 2; Ex. 7, 4.)
Despite the impropriety of Plaintiff’s self-help, Defendants have repeatedly attempted to
engage with Plaintiff to harmonize the parties’ lists and arrive at ten terms to present to the Court
for construction. In addition to withdrawing proposed claim terms entirely, Defendants also
agreed to withdraw the broader claim terms for construction that Defendants initially proposed –
and believed to be appropriate – in favor of more narrow terms proposed by Plaintiff. (Sohn
Decl., ¶ 12; id., Ex. 11.) Defendants agreed to and provided constructions for narrower claim
terms at Plaintiff’s request. (Id., Ex. 11.) As detailed above, Plaintiff responded by accusing
Defendants of violating the Scheduling Order, and asserting that these constructions should be
withdrawn or else Plaintiff will go to the Court on this issue as well. (Id., Ex. 15, 3.)

3

Plaintiff’s unreasonable refusal to engage in the process of claim construction is part of
a pattern of behavior throughout this litigation. Plaintiff refused to respond to interrogatories
posing basic questions critical to Defendants’ defenses, like conception and reduction to practice
dates. As a result of Plaintiff’s repeated refusals, Defendants were forced to move to compel
Plaintiff to provide these dates. (Dkt 87.) Plaintiff similarly refused to provide adequate and
sufficient infringement contentions despite Defendants’ extensive early technical production.
Again, Defendants Google and IAC Search were forced to move to compel Plaintiff to provide
sufficient infringement contentions. (Dkt 104.)

Defendant has repeatedly attempted in good faith to reach a solution that takes into
account the spirit of the Court’s Scheduling Order while presenting to the Court the key claim
construction terms central to the patents in suit. Plaintiff’s continued pattern of refusing to
engage in good faith with Defendants to reach a compromise on claim construction is improper,
and should not be rewarded. Just as there is nothing to compel, there is no issue for which
Plaintiff needs or deserves a protective order.
IV.

CONCLUSION
For the foregoing reasons, Plaintiff’s Motion should be denied. Given the Plaintiff’s lack

of reasonable cooperation and the additional cost heaped upon the Defendants, any relief
awarded should be awarded to the Defendants. As such, this Court should award the Defendants
all relief reasonable and just under the circumstances.
DATED: April 9, 2012

/s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
[e-mail]
Counsel for Google Inc.,
Target Corporation,
IAC Search & Media, Inc.,
Gannet Co., Inc. and AOL, Inc.
David Bilsker
David A. Perlson
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, California 94111
Telephone: [phone]
Facsimile: [phone]
[e-mail]

[e-mail]
Counsel for Google Inc.,
Target Corporation,
IAC Search & Media, Inc.,
Gannet Co., Inc.

CERTIFICATE OF SERVICE
I hereby certify that on April 9, 2012, I will electronically file the foregoing with the
Clerk of Court using the CM/ECF system, which will send a notification of such filing (NEF) to
the following:
Jeffrey K. Sherwood
Kenneth W. Brothers
DICKSTEIN SHAPIRO LLP
1825 Eye Street NW
Washington, DC 20006
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
Donald C. Schultz
W. Ryan Snow
Steven Stancliff
CRENSHAW, WARE & MARTIN, P.L.C.
150 West Main Street, Suite 1500
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
[e-mail]
Counsel for Plaintiff, I/P Engine, Inc.

Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
[e-mail]
Counsel for Google Inc.,
Target Corporation,
IAC Search & Media, Inc.,
Gannet Co., Inc. and AOL, Inc.

/s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
[e-mail]