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

Filing 118

Memorandum in Support re 117 MOTION to Compel Plaintiff I/P Engine's Motion to Compel Defendant Google, Inc.'s Custodial Document Production filed by I/P Engine, Inc.. (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, # 16 Exhibit 16, # 17 Exhibit 17, # 18 Exhibit 18, # 19 Exhibit 19, # 20 Exhibit 20, # 21 Exhibit 21, # 22 Proposed Order)(Sherwood, Jeffrey)

Exhibit 10 

quinn emanuel trial lawyers | san francisco
50 California Street, 22nd Floor, San Francisco, California 94111-4788 | TEL: [phone] FAX: [phone]

WRITER'S DIRECT DIAL NO.
[phone]
WRITER'S INTERNET ADDRESS
[e-mail]

February 24, 2012

Charles Monterio Jr.
Dickstein Shapiro LLP
1825 Eye Street NW
Washington, DC 20006
Re:

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

Dear Charles:
I write to confirm our meet and confer telephone conference on February 21, 2012.
The parties have come to an agreement that Google will produce documents from nine
custodians: Jeff Huber (limited to the time period before April 2011), Hal Varian, Jonathan
Alferness, Bartholomew Furrow, Bryan Horling, Daniel Wright, Matt Kulick, Jonathan McPhie,
and Rishi Khaitan. In order to seek production from any additional Google custodians, I/P
Engine must petition the Court, upon a showing of distinct need.
Google is running test searches on the term (“Relevance score” or (“Relevance” and
(“Inventory” or “Ads Coverage”))) and terms related to competitive products. We will report
back the results of such tests and seek additional focus for terms as necessary.
We also will review I/P Engine’s supplemental infringement contentions in relation to the terms
listed in my February 13, 2012 letter that initially appeared to lack any link to this litigation. To
the extent that terms appear relevant in relation to the supplemental infringement contentions, but
remain too broad, we will confer with you about the best means of narrowing their scope and
reaching an appropriate agreement. To the extent that terms still appear unrelated or tenuously
related to this litigation, we will seek further clarification from you.
quinn emanuel urquhart & sullivan, llp
LOS ANGELES | 865 South Figueroa Street, 10th Floor, Los Angeles, California 90017-2543 | TEL [phone] FAX [phone]
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CHICAGO | 500 W. Madison Street, Suite 2450, Chicago, Illinois 60661-2510 | TEL [phone] FAX [phone]
LONDON | 16 Old Bailey, London EC4M 7EG, United Kingdom | TEL [phone] FAX [phone]
TOKYO | NBF Hibiya Bldg., 25F, 1-1-7, Uchisaiwai-cho, Chiyoda-ku, Tokyo 100-0011, Japan | TEL [phone] FAX [phone]
MANNHEIM | Erzbergerstraße 5, 68165 Mannheim, Germany | TEL [phone] FAX [phone]

You inquired about the production of Google license agreements. Google produced license
agreements on February 10, 2012.
The parties agreed that Google will produce documents from only the seven prior AdWords
litigations listed in Mr. Perlson’s February 3, 2012 letter. Google already has produced all
deposition transcripts from these cases from current and former Google employees regarding
aspects of the technology similar to those accused in this case. Google also will produce noninfringement and damages expert reports from these cases as well as expert deposition transcripts
concerning both liability and damages. In addition, Google will produce Google-specific
portions of the Bright Response trial transcript. To the extent that Plaintiff identifies as relevant
to this case other specific documents from these litigations, Google and I/P Engine will meet and
confer in good faith concerning the production of such targeted documents, provided that any
such request from I/P Engine would be specific and include justification for seeking the
underlying materials.
In response to my February 8, 2012 letter regarding I/P Engine’s privilege log, you stated that
Smart Search Labs and I/P Engine are the same company and that Labrador Search Corporation
and Innovate/Protect are the same company. You also stated that I/P Engine was in the process
of preparing a letter responding to the other concerns articulated in our letter.
In regards to Google’s subpoena to Hudson Bay, you stated that you would respond this week to
Mr. Sohn’s February 17, 2012 letter on that subject. You indicated a desire to avoid overlap in
documents productions, and we agreed that we do not need to receive duplicate documents from
different entities. You also confirmed that Hudson Bay never owned the patents-in-suit.
You stated that you and Mr. Brothers understood that the parties had an agreement to defer
production of email. You said that you understood that the parties would participate in a future
meet and confer on the subject. Specifically, you stated that I/P Engine had an expectation that
all parties were searching documents and emails, but not producing emails at this time. You
indicated that I/P Engine has produced documents associated with emails, but not the emails
themselves. However, you confirmed that I/P Engine recently collected emails for review. We
indicated we did not agree there was such an agreement not produce emails and would get back
to you with our position on the issue.
The parties agreed that they remain at an impasse as to the sufficiency of I/P Engine’s responses
to Interrogatory Nos. 1 and 9. You stated that you would address our concerns about I/P
Engine’s remaining interrogatory responses, as detailed in Ms. O’Brien’s February 17, 2012
letter, by letter later this week.

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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
01980.51928/4613115.1

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