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 13 

DICKSTEI NS HAP I ROLLP
1825 Eye Street NW I Washington, DC 20006-5403
[phone] I FAX [phone] I dicksteinshapiro.com

TEL

March 5,2012

Via E-mail

Margaret P. Kammerud, Esq.
Quinn Emanuel Urquhart & Sullivan, LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
Re:

Google's March 1, 2012 Letter

Dear Meg:
IIP Engine writes to correct characterizations included in your letter to Ken Brothers of March 2,
2012, which was received at 7:20 p.m. EST.
With respect to IIP Engine's infringement contentions, you stated "[w]e asked that you point out
where in the contentions you think you have pointed to collaborative filtering." In response to
that question, you stated that we refused to answer and also refused to substantively engage with
you as to any issue related to IIP Engine's infringement contentions. That is not accurate. We
discussed this issue at length and explained that lIP Engine stands on its current infringement
contentions. As we explained, liP Engine believes that its contentions are sufficient. We further
noted that discovery is continuing; IIP Engine continues to receive and analyze the ongoing
production of documents by Defendants. lIP Engine reiterated its position that, when any party
is aware of additional facts relating to their claims or defenses, the party should seasonably
supplement its discovery responses. liP Engine reiterated its request that Google explain its noninfringement contentions by supplemental interrogatory response. Google acknowledged that
request but offered no further response. Thus, contrary to your characterizations, IIP Engine did
not refuse to engage.
Additionally, you stated that "Plaintiff agreed that collaborative filtering is required by the
claims." IIP Engine did not agree to such a statement; indeed, your statement is a
mischaracterization and over generalization of "the claims." During the call, IIP Engine elected
to stand on its current infringement contentions, repeatedly referred you to the language of the
contentions, declined to further characterize the claims of the patents-in-suit beyond its
statements within its infringement contentions, and declined to engage in arguments over claim
construction.
liP Engine also did not refuse to supplement any of its contentions on Google Search andlor
lAC's Ask Sponsored Listings. Consistent with lIP Engine's position that supplementation was

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DICKSTEINSHAPI ROLLP
Margaret P. Kammerud, Esq.
March 5, 2012
Page 2
appropriate when a party had new facts to disclose, liP Engine reserves its right to supplement its
infringement contentions as to Google Search and lAC's Ask Sponsored Listings. With respect
to Google Search, the parties previously have engaged in discussions regarding the functionality
of Google Search, and we have requested that Google amend its interrogatory responses
regarding Google Search. Once Google does so, lIP Engine may supplement its response. With
respect to lAC's Ask Sponsored Listings, most of those technical documents were only recently
produced, and we continue to review them for the purposes of supplementing the infringement
contentions. As for now, Google Search and lAC's Ask Sponsored Listings remain accused
products.
As to your threat to move to compel further infringement contentions, we do not understand the
basis for such a motion. The supplementation of infringement contentions was done not in
response to an interrogatory, but pursuant to an agreement that also obligated Defendants to
supplement their invalidity contentions on March 2, 2012. We have had no meet and confer
regarding any infringement contention interrogatory.
To the extent Defendants intend to move to compel based upon their agreement, Defendants
have breached the parties' agreement by failing to supplement their invalidity contentions. lIP
Engine agreed to supplement its infringement contentions in exchange for Defendants agreement
to supplement their invalidity contentions. Defendants failure to abide by their agreement
precludes them from claiming that the infringement contentions are inadequate. I
Regarding your reference to Rule 11, liP Engine's contentions have been pled in detail and are
fully supported by Google's own documents and statements.
Regarding support for lIP Engine's proposed search terms (e.g., "relevance"), we refer you to our
January 24, 2012 letter. In that letter, when IIP Engine proposed the search terms, we explained
why lIP Engine believes each term is relevant to the present litigation and cited a sample Google
document where needed. If Google requires any further explanation, please let know.

We understand from your letter that defendants are standing on their previously identified art;
however, defendants were nonetheless obligated by their agreement to supplement their
invalidity contentions on March 2 to more fully explain why they believe the prior art reads on
each of the asserted claims. liP Engine is relying upon defendants' representation that they are
not aware of additional relevant prior art related to the asserted claims.
I

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DICKSTEINS HAPI ROLLP
Margaret P. Kammerud, Esq.
March 5, 2012
Page 3
We remain willing to discuss these issues.

BeS~regar~s;
;

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---tN,Jv~ /i~/~

"eharles J. MonteriLr.
[phone]
[e-mail]
CJM/
cc:

Stephen E. Noona
David Bilsker
Kenneth W. Brothers
Jeffrey K. Sherwood
DeAnna Allen

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