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 5 

DICKSTEI NS HAP I ROLLP
1825 Eye Street NW I Washington, DC 200065403
[phone] I FAX [phone] I dicksteinshapiro.com

TEL

January 10,2012

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

Google's Proposed Custodians and Search Terms

Dear Meg:
liP Engine, Inc. ("liP Engine") received Google, Inc.'s ("Google") letter of January 9, 2012. liP
Engine believes Google's proposed search terms will not result in discovery that is adequately
responsive to lIP Engine's requests. The majority ofI/P Engine's discovery requests are focused
upon Google's accused systems, yet Google's proposed search terms are limited to nothing more
than Google's knowledge of the asserted patents. As we understand your letter, Google has
agreed to the following search terms:
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5867799 or 5,867,799 or (799 12 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)
liP Engine
(Andrew or Ken) w/3 Lang
(Donald or Don) w/3 Kosak
demand search
scan 13 search 13 network
(content based filter) or (content-based filter)
collaborative feedback data
informon
Lycos
content 12 profile
((collaborative filter) or (collaborative filtering)) /1 0 ((content filter) or (content
filtering) )
(hybrid 12 filter) or (hybrid 12 filtering)
Wisewire

Los Angeles

I

New York

I

Orange County

I Silicon Valley I

Stamford

I

Washington, DC
DSMDB-30 17041

DICKSTEINSHAPI ROLLP
Margaret P. Kammerud, Esq.
January 10,2012
Page 2

We note that virtually all of these search terms appear to relate to liP Engine's document
requests that are related to Google's knowledge of the asserted patents. We believe that it is
incumbent upon Google to comply with its obligations to search for and produce responsive
documents relating to IIP Engine's requests for testing documents, comparison documents,
damages-related documents, marketing documents, indemnification documents, etc.
Your January 9 letter asserts that IIP Engine's "broad, meaningless [proposed] search terms [are]
improper and [do] nothing to assist the parties in moving forward with discovery in a timely
manner." Google, however, has yet to propose one search term not related to Google's
knowledge of the asserted patents. You have not disputed that Google has an obligation to
produce responsive, non-privileged documents that are requested by IIP Engine and are relevant
to this litigation. lIP Engine, in good faith, proposed search terms that it believes will be helpful
based on its limited review and knowledge of Google's technical documents. Based on liP
Engine's document requests themselves and the meet and confers the parties have held thus far
regarding Google's production, it is clear which documents IIP Engine seeks. We expect Google
to comply with its discovery obligations, even as it refuses to accept IIP Engine's suggested
search terms.
With regard to proposed custodians, IIP Engine suggested three reasonable additional custodians
one of which (Mr. Jeff Huber) led the overall engineering and development for Google's
advertising products from 2003-2011. Is it Google's position that Mr. Huber, given his
immediate past role at Google, would not have information in his custodial file that is relevant to
IIP Engine's claims during the period relevant to this litigation? If so, please provide the basis
for that position. IIP Engine believes that Mr. Huber is an obvious example of an appropriate
custodian. A similar rationale applies to Mr. Jack Ancone. These two individuals were
identified as Google' s most knowledge AdWords witnesses in the Bright Response trial held just
17 months ago. IIP Engine also proposed an as of yet unidentified Head of Testing person as a
suggestion to address IIP Engine's requests for testing documents related to the 2005 transition to
the new Quality Score version of AdWords including the transition between "DumbASS" and
"SmartASS." The critical factors for identifying an appropriate custodian, however, are whether
the custodian has custody of an appropriate scope of responsive documents and an appropriate
degree of responsive knowledge. Please confirm that Google affirmatively represents that
custodians it designates are responsive to IIP Engine's requests for discovery from persons most
knowledgeable about the testing and quality assessments of Google's changes that are
contemplated and made to Google's AdWords system. As for Mr. Hal Varian, Google holds him
out as an authority on Quality Score (see e.g., IPE 0000070-79), and Google's own documents
reflect that Mr. Varian is heavily involved in the design, development, and decision making
processes related to Google's AdWords systems. See e.g., G-IPE-0000378-81, G-IPE-001584044, G-IPE-0001629, and G-IPE-0000078.

DSMDB-3017041

DICKSTEINSHAPI ROLLP
Margaret P. Kammerud, Esq.
January 10,2012
Page 3
We look forward to your response. lIP Engine remains willing to meet and confer to resolve
these issues, and likewise hopes that the parties can work together to a solution. We propose
having a meet and confer teleconference on January 11,2012. In the meantime, please do not
hesitate to contact us if you have any questions.
Bes.t

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~arles J. M~ntkio Jr.

[phone]
[e-mail]
CJM/
cc:

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

DSMDB-3017041