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

Filing 111

Declaration re 109 Memorandum in Opposition, by Joshua Sohn by 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 4

quinn emanuel

trial lawyers | san francisco

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

March 16, 2012

Charles Monterio
[e-mail]

Re:

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

Dear Charles:
I write in response to your March 15, 2012 letter regarding the list of proposed claim terms to be
construed. The Court set a March 14, 2012 deadline for the parties to exchange a list of
proposed claim terms to be construed, a date the parties had agreed to. Defendants fully
complied with this obligation.
The Court’s Scheduling Order does state that it will construe no more than 10 terms. However,
this does not mean that the parties are required to discuss only 10 terms. As the Federal Circuit
has found, “[w]hen the parties present a fundamental dispute regarding the scope of a claim term,
it is the court’s duty to resolve it.” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521
F.3d 1351, 1362-3 (Fed. Cir. 2008). As you know, Plaintiff has accused Defendants of
infringing fourteen claims from two patents. Defendants reviewed those claims, and proposed a
list of terms they believe need to be construed.1 Presumably, Plaintiff did the same in proposing
its list. The Scheduling Order further provides that the parties exchange their proposed
constructions by March 21, 2012, and that the parties submit their opening claim construction
briefs by April 12, 2012.

1

We note that many of the terms proposed by Defendants are related and therefore may
be construed, either by the parties or the Court, together.
quinn emanuel urquhart & sullivan, llp
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The 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, in order
to determine if there is a dispute regarding these terms, or if the parties will be able to agree to
constructions for terms in the patents. We do not know at this time if the parties will have a
dispute regarding all of Defendants' proposed terms. As a result of the meet and confer process,
we expect that the parties will be able to reach agreement on the final list of ten terms for the
Court to construe. It appears from your letter that you do not believe that the parties will be able
to do so. However, we will not agree to Plaintiff’s demand that the Defendants modify the list of
terms by close of business today to add only six terms to Plaintiff’s original list of four.
We will not respond to the rhetorical accusations in your letter.
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,

Emily C. O’Brien
cc:
[e-mail]
[e-mail]
01980.51928/4657276.1

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