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 14 

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]

March 7, 2012

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

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

Dear Charles:
I write regarding the discussion of search terms in your letter dated March 5, 2012.
Despite your assurance that your January 24 letter explains why certain proposed terms are
relevant to this case, it remains unclear to us how a number of terms proposed in your January 24
letter are relevant to this case.
For example, in support of the proposed terms “Keyword spam score,” “MEU,” and “MBU,”
you site to a single Google document that merely mentions the terms. These terms, however, are
nowhere mentioned in I/P Engine’s contentions. Please provide additional explanation about
how they are relevant to this case and precisely what information you are seeking in regards to
the terms.
Also, the following terms do not appear in I/P Engine’s contentions, and your January 24 letter
simply states that “I/P Engine seeks information relevant to Google’s use of this term.”
Accordingly, I/P Engine has provided no explanation of their relevance to the case:
“Virtuous Circle”
(“Relevance” and “holy grail”)
quinn emanuel urquhart & sullivan, llp
LOS ANGELES | 865 South Figueroa Street, 10th Floor, Los Angeles, California 90017-2543 | TEL [phone] FAX [phone]
NEW YORK | 51 Madison Avenue, 22nd Floor, New York, New York 10010-1601 | TEL [phone] FAX [phone]
SILICON VALLEY | 555 Twin Dolphin Drive, 5th Floor, Redwood Shores, California 94065-2139 | TEL [phone] FAX [phone]
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]

“Conversion rate”
“revenue per search”
To the extent that you still wish to include these terms on the list of search terms, please provide
some explanation of their relevance to this case.
We are still investigating whether the following terms are too broad or otherwise problematic
and will address them under separate cover:
((“LPQ” or “Landing Page Quality”) and score)
(“QBB” w/5 “pCTR”)
(“Disabling” and “Ads”)
“Ad Shard”
“Empirical Media”
We also are attempting to develop a more focused term that will address I/P Engine’s interests in
proposing the term (“Relevance” and (“Inventory” or “Ads Coverage”))). We also will address
this under separate cover.
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
01980.51928/4640040.1

2

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

TEL

March 9, 2012

Via E-mail

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

Hudson Bay's Document Collection

Dear David:
Further to our meet and confer on March 1,2012, we propose the following search protocol for
Hudson Bay's document collection in response to Google's third party subpoena. We propose a
custodial search of emails and attached documents from two custodians, Alexander Berger and
y oav Roth, using the following search terms:
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5867799 OR 5,867,799 OR (799 w/2 patent)
'664 OR 6,775,664 OR 6775664 OR "101045,198"
'420 OR 6,314,420 OR 6314420 OR "09/204,149"
pat* w/4 (664 OR 420)
appl* w/4 (198 OR 149)
(Andrew OR Ken) w/3 Lang
(Donald OR Don) w/3 Kosak
Lycos
Wisewire
AOL
Google
Gannett
Target
lAC OR "Ask.com"
AdWords
AdSense
Quigo
"Advertising. com Sponsored Listings"
"Ask Sponsored Listings"
AOL w/4 ("white label" OR "white-label" OR "whitelabel")
"usatoday.com" OR usatoday

Los Angeles

I

New York

I

Orange County

I

Silicon Valley

I

Stamford

I Washington, DC
DSMDB-3037816

DICKSTEINSHAPI ROLLP
David Perlson, Esq.
March 9, 2012
Page 2

If Google is agreeable to Hudson Bay's proposal, we will continue our investigation and
collection process. We will produce any responsive, non-privileged, non-duplicative documents;
if the parties finalize the ESI stipulation, our production will be consistent with that agreement.

Be.s;yds; . 2/jJ/)
!~~~/H
'eh:arles J. Monteno Jr.
[phone]
[e-mail]
CJM/
cc:

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

DSMDB-3037816

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
LOS ANGELES |

865 South Figueroa Street, 10th Floor, Los Angeles, California 90017-2543 | TEL [phone] FAX [phone]
51 Madison Avenue, 22nd Floor, New York, New York 10010-1601 | TEL [phone] FAX [phone]
SILICON VALLEY | 555 Twin Dolphin Drive, 5th Floor, Redwood Shores, California 94065-2139 | TEL [phone] FAX [phone]
CHICAGO | 500 W. Madison Street, Suite 2450, Chicago, Illinois 60661-2510 | TEL [phone] FAX [phone]
WASHINGTON, DC | 1299 Pennsylvania Avenue NW, Suite 825, Washington, District of Columbia 20004-2400 | TEL [phone] FAX [phone]
LONDON | 16 Old Bailey, London EC4M 7EG, United Kingdom | TEL [phone] FAX [phone]
TOKYO | NBF Hibiya Building, 25F, 1-1-7, Uchisaiwai-cho, Chiyoda-ku, Tokyo 100-0011, Japan | TEL [phone] FAX [phone]
MANNHEIM | Mollstraße 42, 68165 Mannheim, Germany | TEL [phone] FAX [phone]
MOSCOW | Voentorg Building, 3rd Floor, 10 Vozdvizhenka Street, Moscow 125009, Russia | TEL [phone] FAX [phone]
NEW YORK |

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

2

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 9, 2012 letter regarding search terms. We continue to disagree
regarding the relevance of many of the terms that you propose, as well as the likelihood that the
documents collected by those terms will lead to the discovery of admissible evidence. However,
in the interest of compromise and to resolve this issue and move forward with document
production in the case, we propose the following:
As you know, Google has agreed to many search terms, as outlined in our letters of January 23,
February 13, and March 7. In addition to the terms that Google has already agreed to, Google
agrees to the following terms:
“QBB” w/5 “pCTR”
“Keyword spam score”
“Ad Shard”
“Empirical Media”
“Virtuous Circle”
“Relevance” and “holy grail”
“revenue per search”
Additionally, Google ran searches on the following terms and determined that the following
quinn emanuel urquhart & sullivan, llp
LOS ANGELES |

865 South Figueroa Street, 10th Floor, Los Angeles, California 90017-2543 | TEL [phone] FAX [phone]
51 Madison Avenue, 22nd Floor, New York, New York 10010-1601 | TEL [phone] FAX [phone]
SILICON VALLEY | 555 Twin Dolphin Drive, 5th Floor, Redwood Shores, California 94065-2139 | TEL [phone] FAX [phone]
CHICAGO | 500 W. Madison Street, Suite 2450, Chicago, Illinois 60661-2510 | TEL [phone] FAX [phone]
WASHINGTON, DC | 1299 Pennsylvania Avenue NW, Suite 825, Washington, District of Columbia 20004-2400 | TEL [phone] FAX [phone]
LONDON | 16 Old Bailey, London EC4M 7EG, United Kingdom | TEL [phone] FAX [phone]
TOKYO | NBF Hibiya Building, 25F, 1-1-7, Uchisaiwai-cho, Chiyoda-ku, Tokyo 100-0011, Japan | TEL [phone] FAX [phone]
MANNHEIM | Mollstraße 42, 68165 Mannheim, Germany | TEL [phone] FAX [phone]
MOSCOW | Voentorg Building, 3rd Floor, 10 Vozdvizhenka Street, Moscow 125009, Russia | TEL [phone] FAX [phone]
NEW YORK |

terms are too broad or otherwise problematic:
(“LPQ” or “Landing Page Quality”) and “score”
Disabling and Ads
“Relevance score” or (Relevance and (Inventory or Ads Coverage))
We would propose modifying the terms as follows:
(“LPQ” or “Landing Page Quality”) w/3 “score”
“Disabling” w/3 “Ads”
(“Relevance” or “Relevance Score”) w/5 (“Inventory” or “Ads Coverage”)
We reserve our rights as to these terms, and all terms that Google has agreed to, in the event that
they later result in burdensome numbers of hits for any custodian. Please confirm that Plaintiff is
agreeable to these minor modifications to these terms. Please also confirm that you agree to
withdraw the terms MEU and MBU in light of Google’s agreement to the terms as outlined
above.
Finally, we note that Plaintiff’s request for the term “conversion rate” is without merit. In your
request to include the term “conversion rate,” you point to a Google document regarding
“Improving your conversion rate.” As outlined in that document, conversion tracking is a
method for the advertiser to determine the amount of people clicking on its ads that actually
purchase a product. In other words, the advertiser’s ability to track its conversion of clicks on its
ad to actual sales. This feature of AdWords has not been accused of infringement, and is
unrelated to those elements of AdWords that have been accused. We therefore will not include
this term in the search list.
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]
01980.51928/4656405.1

2