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 7 

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

TEL

January 24,2012

Via E-mail

David Peri son, Esq.
QuiIll1 Emanuel Urquhart & Sullivan, LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
January 17,2011 Meet and Confer Teleconference

Re:

Dear David:
Thank you for your letter dated January 23,2012. liP Engine writes to respond, correct, and
further clarify the meet and confer teleconference on January 17, 2012.
With respect to search terms and outstanding document productions, lIP Engine does not agree
with your characterizations, as we were familiar with the comments of your January 9, 2012
letter. The parties have preliminarily agreed for Google to conduct custodial searches for Jeff
Huber, Hal Varian, Jonathan Alferness, Bartholomew Furrow, Bryan Horling, Daniel Wright,
Matt Kulick, Jonathan McPhie, and Rishi Khaitan using at least the following agreed-upon
search terms:
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5867799 or 5,867,799 or (799 12 patent)
'664 or 6,775,664 or 6775664 or 10/045,198
'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

Los Angeles

I

New York

I

Orange County

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Silicon Valley

I

Stamford

I Washington, DC
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David Perl son, Esq.
January 24, 2012
Page 2
•
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(( collaborative filter) or (collaborative filtering)) 11 0 ((content filter) or (content
filtering) )
(hybrid 12 filter) or (hybrid 12 filtering)
Wisewire

These search terms primarily relate to Google's knowledge ofthe patents-in-suit or Plaintiff.
The first eight search terms solely relate to the patents-in-suit or Plaintiff. Seven of the next ten
search terms are relevant terms used in the patents-in-suit; unless Google uses the exact same
terms, they will not identify any documents other than those discussing the patents-in-suit. Two
of the remaining terms are directed to corporate entities associated with the patents-in-suit. The
last term, "hybrid filter" (or "hybrid filtering)" is a term proposed by Google. For this reason,
liP Engine observed during the January 17th teleconference that Google's agreed-upon search
terms primarily related to Google's knowledge and discussions of the patents-in-suit or Plaintiff,
and not to Google's own business or documents. For this reason, liP Engine asked Google how
it proposed to search for documents responsive to all of lIP Engine's document requests that
focused on issues other than Google's knowledge of the patents-in-suit or Plaintiff. Google's
accusation that lIP Engine was unprepared is both incorrect and counterproductive to the
objective of the call, which was establishing a list of helpful and useful search terms.
As lIP Engine stated during the January 17th teleconference, although liP Engine agrees to the
current list of Google custodians, it does not agree that this list is exhaustive and reserves the
right to request additional custodians if warranted on a reasonable basis based upon information,
documents, or things it discovers during a complete review of Google' s document production,
receives during discovery or obtains upon further investigation.
liP Engine further understands from the call that Defendants are complying with their discovery
obligations with respect to at least liP Engine Document Request Nos. 26-30, 33-50 and 58-63,
which correspond to non-technical related document requests independent of custodial searches
such as Defendants' relevant financial information. liP Engine expects the same with respect to
liP Engine's Document Request Nos. 64-75. liP Engine also understood that Google would
search for documents related to its discussions and/or analysis regarding the advertising systems
of other defendants and third parties (Document Request Nos. 19 and 20) based on the
previously provided applicable search terms.
Thus, what remained for discussion during our meet and confer was Google's obligations with
respect to custodial searches relying upon Google-related technical search terms (e.g., lIP Engine
Document Request Nos. 1-25, 31, 32 and 51-57). During the January 17th teleconference,
Google requested that lIP Engine provide it with another proposed list of search terms. To
further assist Google with its obligations, liP Engine provides the requested listing of proposed
search terms (below) for Google's custodial searches. liP Engine's proposed search terms
should not be interpreted as binding and/or exhaustive, and are preliminary and based upon an

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DICKSTEINS HAPI ROLLP
David Perlson, Esq.
January 24,2012
Page 3
incomplete review of Google's document production. lIP Engine provides the following list of
search terms:
Term
"Quality Score"

("LPQ" or "Landing Page
Quality") and score

QBB w/5 pCTR

"Relevance score" or
(Relevance and (Inventory or Ads
Coverage»

"Keyword spam score"

MEU

MBU

Rationale
IIP Engine seeks information related to the "Quality Score"
referenced on G-I/P Engine-0146189, e.g., how it is
calculated, how it is represented, how it is used in the
AdWords system, and how it is discussed at Google.
IIP Engine seeks information related to the "LPQ score"
that is referenced on G-IIP Engine-0146189, e.g., how it is
determined, represented, and discussed at Google. This
score is used in "quality score" for disabling.
IIP Engine seeks information related to the "QBB pCTR"
that is referenced on G-I/P Engine-0146189, e.g., how it is
determined, represented, and discussed at Google. This
score is used in "quality score" for disabling.
IIP Engine seeks information related to the "Relevance"
score that is referenced on G-IIP Engine-0146189, e.g.,
how it is determined, represented, and discussed at Google.
It appears (based on the capitalization), that "Relevance
score" is not a defined term at Google, so lIP Engine seeks
documents mentioning the Inventory or Ads Coverage
teams, who appear to be responsible for generating the
quality score (but, of course, would not necessarily include
their team name on documents). It appears that the
Relevance score is determined by a system independent of
the Quality Score calculations. IIP Engine is open to any
suggestions by Google on how to best locate documents
explaining how the score referenced on page G-I/P Engine0146189 is determined and represented.
lIP Engine seeks information related to the "Keyword spam
score" that is referenced on G-I/P Engine-0146189, e.g.,
how it is determined, represented, and discussed at Google.
This score is used in "quality score" for disabling.
liP Engine seeks information related to the "MEU" that is
referenced on G-IIP Engine-0146187, e.g., how it is
determined, represented, and discussed at Google.
liP Engine seeks information related to the "MBU" that is
referenced on G-IIP Engine-0146187, e.g., how it is
determined, represented, and discussed at Google.

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DICKSTEI NS HAP I ROLLP
David Perl son, Esq.
January 24, 2012
Page 4
Term
Disabling and Ads

..

"Ads Quality"

SmartASS and DumbASS
SmartAss and pCTR
"Ad Shard"
"Empirical Media"
Adwords and "User Feedback"
(Click-through or clickthrough or
CTR or "click through") and
(Adwords)
"Virtuous Circle"
"Relevance" and "holy grail"
"Conversion rate"
"revenue per search"
coverage
depth
"cost per click" or CPC

' >
Rationale
lIP Engine seeks information on "Disabling" in the ads
system, as discussed on pages G-lIP Engine-O 146186 to GlIP Engine-0146190.
lIP Engine seeks information on the "Ads Quality" team,
which is described as "a group of over 100 Googlers who
focus on maintaining (and improving) the relevance of our
ads. In particular, we focus on search ads, as distinguished
from content ads." G-UP Engine-0146186. This appears to
be the team directly responsible for the "relevance"
calculation.
IIP Engine seeks information on the similarities and
differences, and testing results between these two systems.
IIP Engine seeks information on how SmartAss computes a
pCTR.
IIP Engine seeks information on the architecture and use of
"Ad Shards" as described on G-IIP Engine-0008819.
UP Engine seeks any Google discussions on the Empirical
Media company.
UP Engine seeks information on where Google utilizes
"user feedback" in AdW ords.
liP Engine seeks information on where Google utilizes
"CTR" in AdWords.

UP Engine seeks information relevant to Google's use of
this term.
IIP Engine seeks information relevant to Google's use of
this term.
IIP Engine seeks information relevant to Google's use of
this term.
IIP Engine seeks information relevant to Google's use of
this term.
IIP Engine seeks information relevant to Google's use of
this term.
liP Engine seeks information relevant to Google's use of
this term.
liP Engine seeks information on where Google utilizes
"CPC" in AdWords.

IIP Engine reserves the right to reasonably request additional custodians andlor search terms
based upon information, documents, or things it discovers during a complete review of Google's

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DICKSTEINSHAPI ROLLP
David Perlson, Esq.
January 24,2012
Page 5
document production, receives during discovery or obtains upon further investigation. For
example, Google has yet to identify any allegedly non-infringing alternatives in support of its
defenses. If Google does make such identifications, lIP Engine reserves the right to modify
and/or append the search terms and custodians to capture relevant information based on such
purportedly non-infringing alternatives. Further, Google has yet to produce patent licenses in
response to liP Engine's document requests or identify which, if any, allegedly comparable
licenses it intends to rely upon to support its defenses (discussed above); thus lIP Engine also
reserves the right to modify and/or append the search terms and custodians to capture relevant
information based on any such identification.
With respect to anticipated document productions, lIP Engine received lAC's document
production of January 17,2012. liP Engine understands that it should receive document
productions including deposition transcripts from prior litigations (as discussed below) and
relevant licensing agreements in the next couple of weeks. According to your January 23rd
letter, Google will produce Google revenue data this week.
liP Engine is very concerned about the slow pace of production. Based on Google's comments
during the January 17th teleconference, liP Engine understands that there are no other anticipated
Google document productions in the short term "pipeline" although there are numerous
outstanding document requests that are not dependent upon the search term discussion between
the parties. Unless Google is able to offer concrete production dates for all of its pending
productions, we intend to raise this issue at the Rule 16(b) conference on February 13,2012.
With respect to Google's Interrogatory No.1, lIP Engine reiterated that it has previously
explained its positions. liP Engine has explained why it was appropriate to review the Lycos and
Mr. Lang third party document productions in connection with activities occurring at or near the
time of the inventors' work with Lycos. liP Engine is not causing an "inappropriate delay" as
mentioned in your January 23rd letter. Instead, liP Engine intends to review the third party
documents provided by Mr. Lang and Lycos (some of which were held by Google for a week
before being produced on a pass-along basis to lIP Engine) before supplementing its response
regarding the date of conception or any reduction to practice. We currently are reviewing those
documents and will timely supplement.
Regarding Google's Interrogatory No.7, liP Engine explained that it has previously articulated
its positions. Additionally, lIP Engine noted its position that the second sentence of your January
13, 2012 letter stating "Google agreed ... it would produce technical documents on an expedited
basis in order to then receive more robust supplemental infringement contentions early in the
case based on those technical documents" was incorrect. The agreement between the parties is
articulated in the November 4th Stipulation, and is as follows: liP Engine providing its early
preliminary identified asserted claims and claim charts (see paragraphs 1,2 and 4), Defendants'
providing technical document productions for each system identified by liP Engine's claim

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DICKSTEINSHAPI ROLLP
David Perlson, Esq.
January 24, 2012
Page 6
charts (see paragraphs 3, and 6), the opening of written discovery for all parties (see paragraphs
3,5 and 7), and Defendants' agreement to not seek transfer (see paragraph 8) and to file their
Answers (see paragraph 9). There never was any discussion of "more robust supplemental
infringement contentions early in the case based on those technical documents", and the parties
did not agree in the November 4,2011 Stipulation based upon such an unarticulated expectation.
liP Engine will, however, supplement its claim charts once it has finished its review of Google's
technical documents is complete. lIP Engine has proposed a date certain for such
supplementation in its Proposed Discovery Plan, previously provided under separate cover.
Regarding Google's prior litigation documents, liP Engine is familiar with your January 13th
response and Google's avoidance oftaking a position. lIP Engine understands that Google is
producing deposition transcripts from current and former Google employees from certain (as yet
unidentified) AdWords litigations regarding aspects of the technology that Google unilaterally
considers to be similar to those accused in this case, non-infringement expert reports from those
cases, and Google-specific portions of the Bright Response trial transcript, as mentioned in its
January 13th letter. We note that Google previously agreed to produce some ofthose documents
in its email of December 21, 2011 and has yet to produce them even though more than a month
has passed. In that email, Google agreed to produce the following:
•

Deposition transcripts of current or former Google employees for the following cases:

o Paid Search Engine Tools, LLC v. Yahoo! Inc., et al., Case No. 2:07-cv-403
(TJW), United States District Court for the Eastern District of Texas, Marshall
Division
o

o

Performance Pricing, Inc. v. Google Inc., et al., Case No. 2:07-cv-432-RRR,
United States District Court for the Eastern District of Texas, Marshall Division

o

Bright Response, LLC F/KIA Polaris IP, LLC v. Google Inc., et al., Case No.
2:07-cv-371-TJW-CE, United States District Court for the Eastern District of
Texas, Marshall Division

o

PA Advisors, LLC v. Google Inc., et ai., Case No. 2:07-cv-480-DF, United States
District Court for the Eastern District of Texas, Marshall Division

o

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Bidfor Position, LLC v. AOL, LLC, et al., Case No. 2:07-cv-582-RGD/TEM,
United States District Court for the Eastern District of Virginia

Personalized User Model, LLP, v. Google Inc., Case No. 09-525-LPS, United
States District Court for the District of Delaware

Non-infringement expert reports in the above stated cases

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DICKSTEI NS HAP I ROLLP
David Perlson, Esq.
January 24,2012
Page 7
•

Expert deposition transcripts from experts on non-infringement

In our email on December 22, 2011, to further assist Google in the production of additional prior
litigation documents, liP Engine provided the following list of additional prior AdWords
litigations:
•

Paid Search Engine Tools LLC v. Google Inc. and Microsoft Corp., 08-cv-061 (TXED)

•

Paid Search Engine Tools LLC v. Google Inc. et ai., 2:11-cv-00306 (TXED)

•

Function Media LLC v. Google Inc. and Yahoo Inc., 2:07-cv-279 (TXED)

•

Overture v. Google (CDCA) 2002

•

Xerox Corp. v. Google Inc. et ai., 1:10-cv-00136 (D.Del)

•

Walker Digital LLC v. Axis Communications AB et al., 1: l1-cv-00558 (D.Del)

•

Desenberg v. Google Inc., 08-cv-l0121 (SDNY)

Although some of Google's comments during the January 17th teleconference led IIP Engine to
believe that Google does not believe all of these litigations are relevant to the issues in the
present litigation, Google has yet to identify which of these litigations are not relevant. lIP
Engine requests that Google produce documents from all of these litigations (see lIP Engine
Document Request No. 49). For all identified relevant prior AdWords litigations (the six agreedupon above plus any additional relevant ones from the second list), IIP Engine reiterates its
request for production of the following litigation documents (as requested in IIP Engine
Document Request No. 50 and in our December 16,2011 email):
•

Google discovery responses (discovery responses)

•

Dispositive pleadings (contentions)

•

All pleadings to which was attached a declaration from a current or former Google
employee (contentions)

•

All hearing and trial transcripts (trial transcripts)

•

All fact deposition transcripts of current or former Google employees (deposition
transcripts)

•

All expert reports (expert reports)

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DICKSTEINSHAPI ROLLP
David Perlson, Esq.
January 24,2012
Page 8
•

All expert deposition transcripts (deposition transcripts)

•

All judgments

•

All appellate briefs and orders (contentions)

•

All settlement agreements

•

Motions in limine pleadings

•

Pretrial orders

•

Rule 50/59 motion pleadings (contentions)

•

Daubert pleadings

Regarding third party document productions, lIP Engine received Lycos' January 10,2012
document production on January 19,2012, and awaits any received document production from
the Palo Alto Research Center, which was due January 16,2012.
With respect to our discussions regarding a deposition proposal, the parties have been unable to
reach agreement regarding the number of fact depositions. lIP Engine believes that, in addition
to a Rule 30(b)(6) deposition on liability issues, and on damages issues, it should have the right
to depose each fact witness affiliated with a defendant and who has been disclosed pursuant to
Rule 26(a) (currently 14 individuals for all defendants). Defendants will not agree to depart from
the ten deposition limit at this time, although they have indicated that they may not oppose a
request to exceed that if in their sole determination they believe such a request is reasonable. liP
Engine intends to file a motion in connection with the Rule 16(b) conference seeking leave to
take one 30(b)(6) deposition for liability for each defendant, one 30(b)(6) deposition for damages
for each Defendant, and fact depositions of each Defendant equal to the number of individuals
that the specific Defendant's 26(a)(l) disclosure lists as people likely to have discoverable
information, including any individuals disclosed in subsequent supplemental disclosures. IIP
Engine understands, based upon your January 23rd letter, that Google may oppose this motion,
although Google has not taken a definitive position. Please provide Defendants' definitive
position by no later than January 27,2012.
We discussed Lycos' most recent third party document production. As we mentioned during the
January 17th teleconference, we are investigating the nature of Lycos' comments in its January
10,2012 letter. We will respond to Google's questions under separate cover.

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DICKSTEINSHAPI ROLLP
David Perl son, Esq.
January 24, 2012
Page 9
Please do not hesitate to contact us if you have any questions.

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Charles J.
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[phone]
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cc:

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

DSMDB-3020693