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 6 

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]

January 13, 2012
VIA E-MAIL
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 am writing in regard to your January 10 letter concerning Google custodians and proposed
search terms.
I.

Search Terms

Your letter did not respond to any of our points regarding the overly broad search terms you had
proposed. More than a month ago we produced Google’s technical documents for the accused
systems, so Plaintiff should now be able to formulate reasonable, targeted search terms relevant
to its case. It is inappropriate for I/P Engine to refuse to supplement its infringement contentions
based on Google’s technical documents and refuse to provide search terms with any more
specificity than the names of the accused products, then assert that it is somehow “clear which
documents I/P Engine seeks.” Please respond to the detailed concerns articulated in my January
9 letter and provide a set of targeted search terms for consideration.
Further, we disagree with your assertion that Google’s proposed terms are limited to Google’s
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]

knowledge of the asserted patents. We carefully crafted our proposed terms to retrieve
documents, to the extent they exist, relevant to the concepts presented in the asserted patents.
II.

Custodians

We continue to maintain that it is highly unlikely that Jeff Huber and Hal Varian will have
information in their custodial files that would warrant a custodial search for them. However,
Google is willing to produce custodial documents from Jeff Huber and Hal Varian as well as the
Google custodians we have previously identified (Jonathan Alferness, Bartholomew Furrow,
Bryan Horling, Daniel Wright, Matt Kulick, Jonathan McPhie, and Rishi Khaitan), if I/P Engine
will agree not to seek documents from any additional Google custodians. Any custodial search
of Mr. Huber’s documents would be limited to the time period before April 2011, during which
he worked on the company’s advertising and monetization systems. Mr. Huber switched roles in
the company in April, and his current work as Vice President, Commerce and Local is irrelevant
to this litigation. Also, we believe the custodial documents searched will include documents
concerning the testing of AdWords, including the transition from DumbASS to SmartASS.
We do not, however, agree to the inclusion of Jack Ancone as a document custodian in this case.
While he has testified as Rule 30(b)(6) witness in the past on licensing issues, his day to day job
is in business development. Thus, he would not have relevant documents.
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.
Dealing with custodians and search terms is an area in which we particularly need to work
together. However, we need Plaintiff to be reasonable and practical. Again we ask that you
please go back and evaluate your search terms and revise them to be tailored to this case so we
may have a meaningful discussion on this issue.

Very truly yours,

Margaret P. Kammerud

2